Vamco Mach. and Tool, Inc., In re
| Decision Date | 17 January 1985 |
| Docket Number | No. 29795,No. 84-1383,84-1383,29795 |
| Parties | In re VAMCO MACHINE AND TOOL, INC. AppealReexamination |
| Court | U.S. Court of Appeals — Federal Circuit |
Arland T. Stein, Reed, Smith, Shaw & McClay, Pittsburgh, Pa., argued for appellant. With him on the brief were Frederick H. Colen and Tracey G. Benson, Pittsburgh, Pa.
Henry W. Tarring, II, Associate Sol., Arlington, Va., argued for appellee. With him on the brief were Joseph F. Nakamura, Sol., and Jere W. Sears, Deputy Sol., Washington, D.C.
Before RICH, Circuit Judge, NICHOLS, Senior Circuit Judge, and NEWMAN, Circuit Judge.
This appeal is from the U.S. Patent and Trademark Office (PTO) Board of Appeals (board) decision of April 12, 1984, affirming the examiner's rejection, in a reexamination proceeding, of all claims of patent No. Re. 29,795 issued to Vamco Machine and Tool, Inc. (Vamco), assignee of the inventor, Harry Eyberger. The patent title is "Self-Contained Feed Roll for Power Punch Presses." We affirm.
The original Eyberger patent, No. 3,483,782, issued December 16, 1969, with three claims. After the discovery of some new prior art (apparently the V & O feeder hereinafter discussed), Vamco applied for reissue of the patent with extensively amended claims on Dec. 16, 1977, and the patent was reissued on Oct. 10, 1978, with claims 1-9. The original and reissue file histories are not before us. Vamco brought suit on the reissue patent for infringement by F.J. Littell Machine Company in the District Court for the Northern District of Illinois, Eastern Division. We copy the following paragraphs from Vamco's statement in the PTO under 37 C.F.R. Sec. 1.510(b) in the reexamination petition:
On January 28, 1982 Judge Bua issued an order (Exhibit 1) in which the Defendant Littell was ordered to make a diligent search for all prior art and file the same with the Court.
Plaintiff, Vamco, was ordered within 90 days of January 28, 1982 to request reexamination of United States Patent Re 29,795. Plaintiff was also ordered to advise the United States Patent Office of all the prior art filed in Judge Bua's Court and served on Plaintiff, Vamco, by Defendant, Littell. The Defendant on February 25, 1982 submitted a Prior Art Statement Pursuant To The Order of January 27, 1982 (Exhibit 2).
Judge Bua's order, Exhibit 1, which states that it is "for the purpose of avoiding piecemeal proceedings and litigation, for the purpose of conserving judicial resources, and for the purpose of utilizing the recently enacted laws of the United States" (obviously referring to reexamination proceedings under 35 U.S.C. Chapter 30, which added Secs. 301-307 on December 12, 1980), also granted plaintiff's motion for voluntary dismissal without prejudice and granted plaintiff leave to file a motion to vacate the order within thirty days after the PTO completed reexamination, saying:
6. Upon Plaintiff's filing of the motion to vacate ... this matter will be reinstated before this court, this matter will retain its original docket number and this matter will proceed on the complaint originally filed by Plaintiff in this action.
Pursuant to the order, defendant Littell filed its prior art statement February 25, 1982, listing nineteen U.S. prior art patents, and Vamco obediently told the PTO about them while arguing no substantial new issue of patentability was raised.
The request for reexamination was granted on June 8, 1982, the PTO finding that a substantial new question of patentability was raised, and took its course through several examiner's letters and responses and the filing of several affidavits until a final rejection resulted on December 16, 1982. Following that, there was a personal interview with the examiner attended by Vamco's attorney and Mr. J.P. Gentile, who is an affiant and an officer of Vamco (a family-owned company), and Edward S. Paris, another affiant employed by Vamco. Five more affidavits were thereafter filed, appeal to the board was taken, and the examiner filed his Answer. Vamco's attorney then realized he could overcome one of the examiner's principal points by a clarifying amendment to the claims, got the examiner to agree to it in a telephone interview, and the examiner wrapped it up with a Supplemental Answer. Claims 1-9, all the claims in the patent, were on appeal to the board, which affirmed, and the same are on appeal to us. The references relied on had by then been reduced to four, in support of the sole ground of rejection which is obviousness from the prior art, 35 U.S.C. Sec. 103. The references are:
Our appellate jurisdiction in this reexamination proceeding is provided by 35 U.S.C. Sec. 306, 35 U.S.C. Sec. 141, and 28 U.S.C. Sec. 1295(a)(4)(A).
The sole issue before us is whether the board erred in holding the invention, as defined in claims 1-9, construed in the light of the disclosure in the specification of Reissue patent No. 29,795, would have been obvious within the meaning of Sec. 103 from the disclosures of the prior art references relied on to reject them. A subissue is whether commercial success and other "secondary considerations" were established for Eyberger's invention.
No issue has been raised with respect to what is disclosed, but the precise nature of the disclosure is of considerable significance, especially with relation to appellant Vamco's heavy reliance on the so-called "secondary considerations" which must be considered in passing on obviousness vel non. We therefore point out certain aspects of the disclosure which we deem significant. We note in passing that Harry Eyberger, the named inventor, on the record before us, is a mere name. Nothing is disclosed about him or about the making of his invention. The dramatis personae in this case are officers and employees of Vamco, an outside consulting engineer, a professor, and a customer who have submitted affidavits on Vamco's behalf.
The invention relates to an accessory for power punch presses which stamp out metal parts, large and small, from sheet metal which has to be fed between the stamping or punching dies and is often fed from rolls. At the top of such a press is a continuously rotating shaft which can be used as a source of power to run a strip-feeding machinism. What Eyberger's patent says he invented is, in broad terms as set forth in the "Abstract":
A self-contained unit to be attached to a power punch press to provide a feed for stock being fed to the press. The unit contains a direct drive from the punch press crankshaft to feed rolls which are located adjacent to the table of the press. A non-slip, positive, drive is provided....
In stating what had been wrong with prior feeders, he said many of them "contained clutches and brakes, which did not permit positive drive ... clutches wore or brakes failed causing spoilage of pieces and damage to tooling." His invention, he said, Another aspect was a "novel release means which permits the feed stock ... to be released from the feed rolls during the pressing ...." Notably missing from his list of stated "objects" of his invention is any mention of providing a more accurate or more precise or speedier setting or adjustment of the amount by which the stock is fed to the press, which has become the central theme of Vamco's arguments for patentability, the significance of which will appear later.
Below is Fig. 1 of the patent, which is "a front elevational view of the feed roll unit of the present invention with a portion of the housing removed and showing a portion of the punch press in phantom view."
NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
The side of the phantom press is at 12, its crankshaft is 14, driving the feed unit through belts 20 and 24. The power-driven feed roll is 40 and 50 is the releasable idler feed roll. Attention is directed to the roller chains 34 and 42 which connect sprockets (after the manner of bicycle drives) 28, 30, and 38 which will be better understood from Fig. 3, below, which is a "diagrammatic perspective representation of the working portions of the feed roll mechanism ... in semi-schematic form."
NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
We can now describe the parts of the feeder unit and their relationship and operation. At the top, is the crankshaft 14 of the punch press equipped with a pulley 16, which drives, through cleated belts 20 and 24 and pulley 18, pulley 22 on an "index drive 26." This is a commercially available right-angle drive which changes the continuous rotary motion of shaft 26a into step-by-step incremental rotary motion in shaft 26b so as to feed the stock to the press intermittently. Output sprocket 28 drives unit 30 which consists of the two sprockets 30a and 30b connected together, through drive chain 34 connected to 30a. Sprocket 30b is connected by chain 42 to feed roll 40's drive sprocket 38. Stock S being fed is pressed against roll 40 by idler roll 50 but can be released during stamping by electro-pneumatic controls 52, 58, 66, and 60 which need not be explained, though Eyberger seemed to regard them as an important part of what he invented and claimed in claim 3. The upper die or punch of the...
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