Stansbury v. Bond

• Decision Date: 16 August 1973
• Docket Number: Patent Appeal No. 8902.
• Citation: 179 USPQ 88,482 F.2d 968
• Parties: Thomas A. STANSBURY, Appellant, v. Donald S. BOND, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

179 USPQ 88, 482 F.2d 968 (1973)

Thomas A. STANSBURY, Appellant, v. Donald S. BOND, Appellee.

Patent Appeal No. 8902.

United States Court of Customs and Patent Appeals.

August 16, 1973.

Penrose Lucas Albright, Arlington, Va., Thomas A. Stansbury, Chicago, Ill., attorneys of record, for appellant.

George J. Seligsohn, Princeton, N. J., attorney of record, for appellee; J. L. Whittaker, A. Russinoff, Princeton, N. J., of counsel.

Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and ALMOND, Senior Judge.

RICH, Judge.

This appeal is from the decision of the Board of Patent Interferences awarding priority of invention to the senior party, Bond,¹ on two grounds: (1) that the junior party Stansbury,² had shown neither an actual reduction to practice of the invention prior to the date Bond constructively reduced the invention to practice by filing his patent application nor shown reasonable diligence from a time prior to conception of the invention by Bond, under 35 U.S.C. § 102(g); and (2) the ancillary ground that the disclosure of the invention in the Bond application supports the language of the counts. We affirm.

The Contested Subject Matter

The invention of the counts relates to what the board termed "systems for apprising airplane pilots as to whether or not they are on a hazardous course."

The counts, which correspond to claims 63 and 58 of the Stansbury patent, are as follows (emphasis ours):

1. A computer comprising: means for determining whether the distance of a first craft from a second craft is within a preselected range by comparing the elapsed time between a signal transmitted by the second craft and a signal received from said first craft in response to said second craft signal, and means for indicating that said first craft is a navigational hazard to said second craft connected to said distance determining means for actuation when the distance of said first craft from said second craft is within the preselected range, said means requiring no other input than an input signal from said distance determining means.

2. A computer comprising: means for determining whether an altitude of a first craft is within a preselected range of the altitude of a second craft, means for determining whether the distance of said first craft from said second craft is within a preselected range, means for indicating that said first craft is a navigational hazard to said second craft connected to said altitude determining means and to said distance determining means for actuation when the altitude of said first craft is within the preselected range of the second craft altitude and the distance of said first craft from the second craft is within the preselected range.

By way of background, the Stansbury patent explains:

There are five parameters which may be utilized in determining a collision hazard. They are the relative altitudes of two aircraft, their relative courses or headings, their relative velocities, the range between them, and the bearing of one aircraft from the other. All the systems that have been proposed in the past require the utilization of a particular set of parameters selected from these five parameters to determine whether two aircraft are a collision hazard to each other. Under prior systems, every aircraft operating in the system which was expected to have the capability of avoiding another aircraft would carry equipment which required the use of each and every parameter in the preselected set of parameters to determine whether a possible collision hazard existed. * * * The present invention, on the other hand, provides for the availability of all five parameters, but makes it possible for the equipment in any given aircraft to be designed to take advantage of only so many of the parameters as are required for that aircraft to obtain sufficient collision warning information. Thus, for the first time, a system is available wherein one aircraft can utilize up to all five parameters in estimating a collision hazard, and, therefore, make only a few deviations from its course to avoid other aircraft, while another aircraft can use only one or two of these parameters to provide it with sufficient collision hazard information to avoid all other aircraft, which it is capable of avoiding by virtue of its performance capability in relationship to the performance of the other aircraft.

The computer to which count 2 is drawn utilizes only two of these parameters, altitude and range, to provide it with sufficient navigational hazard information to avoid other aircraft. Count 1 utilizes only one parameter, distance, to provide it with sufficient navigational hazard information to avoid other aircraft.

THE ISSUE OF BOND'S RIGHT TO MAKE THE COUNTS

Stansbury's Arguments

Stansbury moved to dissolve the interference on the ground that Bond had no right to make the counts. The motion was denied by the Primary Examiner and renewed at final hearing before the board, where it was again denied.

Stansbury asserts that the Bond application does not show support for the limitations of counts 1 and 2 that there be a "computer * * * means for indicating that said first craft is a navigational hazard to said second craft" and of count 1 of "said means requiring no other input than an input signal from said distance determining means."

Stansbury maintains that the counts containing the limitations are "ambiguous," or rather, in his words, "of necessity so worded that reference to the specification of the respective parties becomes necessary to ascertain the meaning of certain language therein." Stansbury quotes the following from this court's principal opinion in McCutchen v. Oliver, 367 F.2d 609, 611, 54 C.C.P.A. 756, 759 (1966):

One cannot arrive at an understanding of the present counts as they relate to the subject matter of the interference without something more than the counts themselves.

Admittedly verbal similarities exist between the counts and the respective disclosures of the parties. However, to stop here is to violate the spirit of 35 U.S.C. § 135 which authorizes interferences where two or more parties claim "the same subject matter."

Thus the issue cannot be decided here in the rarified atmosphere of claim semantics. Instead, it must be decided at the down to earth level of what the parties disclosed as "the gist" of their respective inventions. Cf. Hansgirg v. Kemmer, 102 F.2d 212, 26 CCPA 937. While an "unambiguous" count may be interpreted without resort to the specification, the counts here are not of this type. Considering the wording of the counts, particularly the term "reference" surfaces, and the arguments of the parties, it is clear that different meanings are ascribed to that term by the parties when interpreting the count. When resort is had to the specifications, the latent ambiguity in the counts becomes apparent. Emphasis ours, except "disclosed" in original.

As to "Navigational Hazard"

The "gist of the invention," Stansbury maintains, is, as shown by the "navigational hazard" wording which appears in both counts, read in light of his specification, which indicates that the invention is a computer for use in "navigation collision warning system" or what Stansbury calls a Collision Avoidance System (CAS). This he distinguishes from the gist of the Bond invention which he characterizes as an "aircraft proximity indicator and display system" or a "proximity warning indicator which merely warns the pilot of the proximity of a nearby craft without making a decision for him as to whether the other craft is a navigational hazard." Thus Stansbury's position is that the counts

* * * are clearly drawn to a computer which makes the decision of whether one craft is a hazard to the other. Bond\'s structure cannot do this. Bond\'s structure can merely display the relative bearing and range information either momentarily or as a continuous line or series of dots so that a human pilot or crew member can watch Bond\'s display and mentally reach his own decision as to whether another craft is a navigational hazard. Thus, on this ground that the claim is drawn to a computer which makes a decision rather than to a range and bearing indicator similar to that of a radar scope, the petitioner respectfully submits that Bond cannot make the original count of the interference.

That the gist of his invention is a collision avoidance system which determines for the pilot whether there is a navigational hazard is apparent, Stansbury maintains, from the prosecution history of claim 24 in his parent application, the predecessor of claim 58 of his patent, which count 2 duplicates. As Stansbury states in his brief:

During the prosecution of the patent application, the Examiner rejected the original filed claim 24 on Hovannesian et al. 3,089,139 * * *. Issued May 7, 1963, on application filed May 1, 1958. However, the applicant stated in his Amendment "A" * * * as follows:

"Claims 5, 11, 17, 24 and 25 were rejected as being obviously fully met by Hovannesian et al. Hovannesian discloses a `proximity warning system\' which transmits altitude information and obtains a rough relative bearing on a transmitted signal from another craft. A collision avoidance system as specified in claims 5, 11, 17, 24 and 25 includes not only means for transmitting altitude data and means for obtaining relative bearing data in order to display such quantities of information individually as indicated in Hovannesian et al. Figure 3, but it also includes computing means for determining whether a navigational hazard exists. Since claims 5, 11, and 17 are drawn to `collision avoidance systems\' which include computer means, and since claims 24 and 25 are drawn to computers, it is submitted that these claims are clearly patentably distinguishable over Hovannesian et al. because no computer means of any type is disclosed therein." Emphasis supplied by Stansbury.

The applicant further stated in his Amendment "C" * * * after

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