Van Otteren v. Hafner

• Citation: 278 F.2d 738,126 USPQ 151
• Decision Date: 01 June 1960
• Docket Number: Patent Appeal No. 6512.
• Parties: Wilbur M. VAN OTTEREN v. William J. HAFNER and Gordon H. Cork.
• Court: United States Court of Customs and Patent Appeals

126 USPQ 151, 278 F.2d 738 (1960)

Wilbur M. VAN OTTEREN v. William J. HAFNER and Gordon H. Cork.

Patent Appeal No. 6512.

United States Court of Customs and Patent Appeals.

June 1, 1960.

Barnes, Kisselle, Raisch & Choate, John M. Kisselle, Detroit, Mich. (Alfonse J. D'Amico, Detroit, Mich., of counsel), for appellant.

Kotts & Sheridan, Earl F. Kotts, Dearborn, Mich. (James V. Sheridan, Dearborn, Mich., of counsel), for appellee.

Before WORLEY, Chief Judge, and RICH and MARTIN, Judges, and Judge C. WILLIAM KRAFT.¹

WORLEY, Chief Judge.

This appeal is from the decision of the Board of Patent Interferences of the United States Patent Office awarding priority of invention of the subject matter in issue in interference No. 87,892 to the party Hafner and Cork.

The invention relates to a pneumatic dispatch system in which a cylindrical carrier is caused to move along a tubular conduit by differential air pressures, and in which the carrier may be automatically directed into a predetermined branch conduit. The entrances to the branch conduits are controlled by electromagnetically operated gates which are responsive to impulses induced in spaced coils surrounding the main conduit by the passage of correspondingly spaced magnets mounted on the carrier. By appropriate spacing of the magnets the carrier will be caused to actuate the gate of the desired branch and to enter that branch. The counts relate to the structure of the carrier by which provision is made for adjustably mounting the magnets, that structure being defined broadly in count 1 and more specifically in count 2. The counts read:

"1. In a message carrier system, a carrier adapted to travel along a conduit means, a guideway extending axially of said carrier, and a plurality of magnetic slugs polarized radially of said carrier and shiftable axially with respect to each other along said guideway.

"2. A carrier for use in a tube type conveyor having sets of receptor coils spaced axially at various distances on the tube exterior for creating electric impulses responsively to magnetic signals from within the tube, said carrier comprising, a body, said body being adapted to receive items to be conveyed, said body having an integral axially extending recess forming a track on its exterior, said track having sides extending generally rectilinearly and parallel to each other, a plurality of slides slidably mounted within said track, a magnet on each slide, a fixed magnet in said track adjacent one end of said body, said magnets extending generally radially of said body, each of said magnets having one pole disposed immediately adjacent the radial periphery of said body, each of said magnets having a length generally equal to the depth of said recess, at least two of said magnets having their poles reversed relatively to each other, said slides being movable selectively and independently for adjusting the intervals between said magnets, locking means on each of said slides, said locking means being engageable against one of said sides of said recess for locking said slides in selected positions."

Since the parties filed their applications on the same day, neither has a greater burden of proof than the other.

The record shows that during the first half of 1952, when the invention was made, Hafner and Cork were employed by Gemco Electric Company, and Van Otteren by the Grover Company. Gemco was desirous of developing an automatic pneumatic carrier system and consulted Grover for assistance in the development of the mechanical portion of the system. Thereafter work was done by representatives of the two companies in close association, with the result that the carrier in issue was conceived and reduced to practice in June 1952. The question involved is one of originality, since there is no contention that the invention was conceived by the parties independently.

Here, Van Otteren no longer contends that he is the sole inventor of the subject matter of the counts, but asserts that he made the invention jointly with Hafner. Hafner now agrees with that assertion, and executed papers jointly with Van Otteren for conversion of the Van Otteren application to a joint application of Hafner and Van Otteren. A motion to effect such conversion was filed May 1, 1958, together with a motion to amend Van Otteren's preliminary statement by filing a joint statement of Hafner and Van Otteren. Both motions were denied by the board and the instant appeal alleges error in such denial. That denial will be considered first. It is evident the amendment of the preliminary statement is contingent on the granting of the motion to convert. A sole applicant cannot contest an interference on the basis of a joint statement since Patent Office rule 216 provides that such a statement must state that the applicant made the invention in issue.

The conversion of a sole to a joint application was not authorized by law until January 1, 1953, when the Patent Act of 1952 became effective, and this court has not previously had occasion to consider the propriety of making such a conversion during an interference. However, the conversion of joint applications to sole applications, under proper circumstances, has been permitted since In re Roberts, 49 App.D.C. 250, 1920 C.D. 158. The question when such conversion, with a corresponding change of parties, can properly be made during an interference was fully considered in Crane v. Grier and Warren, 71 F.2d 180, 21 CCPA 1163; and Manny v. Garlick et al., 135 F.2d 757, 30 CCPA 1008. The same general principles are applicable here.

As was pointed out in the two cases cited, it is incumbent on a party who seeks to convert an application involved in an interference on the basis of a mistake resulting in failure to properly identify the inventorship in such application, to show that diligence was exercised in seeking conversion. In the instant case the affidavit of one of Van Otteren's attorneys in support of the motion to convert states that as the result of several interviews "shortly after the Interference was declared," (the declaration date was March 9, 1956), he informed Van Otteren and Hafner that the invention in issue was made either by them as joint inventors or by them jointly with Cork. Notwithstanding that fact, no move was made to convert the Van Otteren application, or to reform the interference until May 1, 1958, after both parties had completed their testimony and the time for taking rebuttal testimony by Hafner and Cork had expired.

Counsel for Van Otteren seek to justify the delay on the ground that they could not be sure, until all the testimony...