Wheeler v. Kleinschmidt, 5001-5006.

• Decision Date: 09 April 1945
• Docket Number: No. 5001-5006.,5001-5006.
• Citation: 149 F.2d 161,65 USPQ 407
• Parties: WHEELER et al. v. KLEINSCHMIDT et al., and five other cases.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

65 USPQ 407, 149 F.2d 161 (1945)

WHEELER et al. v. KLEINSCHMIDT et al., and five other cases.

Nos. 5001-5006.

Court of Customs and Patent Appeals.

April 9, 1945.

Marvin J. Reynolds and Newman F. Presson, both of New York City, for appellants.

J. W. Schmied and W. F. Simpson, both of New York City (Carlson, Pitzner, Hubbard & Wolfe and Richard R. Wolfe, all of Chicago, Ill., of counsel), for appellee Colman.

Harold B. Whitfield, of Chicago, Ill., for appellee Kleinschmidt.

Before GARRETT, Presiding Judge, and BLAND, HATFIELD, JACKSON, and O'CONNELL, Associate Judges.

HATFIELD, Associate Judge.

These are appeals in interference proceedings from the decisions of the Board of Interference Examiners awarding priority of invention of the subject matter defined by the counts in issue to appellee Howard D. Colman in interferences Nos. 79,163 (appeal No. 5001), 80,401 (appeal No. 5005), and 80,402 (appeal No. 5006) and to appellee Edward E. Kleinschmidt in interferences Nos. 79,164 (appeal No. 5002), 79,165 (appeal No. 5003), and 79,166 (appeal No. 5004).

For the purpose of the hearing in this court, the records in the several interferences were consolidated. Accordingly, we shall dispose of the issues presented in one opinion.

Appeal No. 5001.

Interference No. 79,163.

The interference is between patent No. 2,193,810, issued to appellants (Evan R. Wheeler, Ray Hoover, and Robert F. Dirkes) March 19, 1940, on an application, No. 65,516, filed February 24, 1936, and the application of Howard D. Colman, No. 319,047, filed November 13, 1928. In addition to appellants' patent and appellee Colman's application, the interference originally involved the reissue application of one Edward E. Kleinschmidt, No. 335,431, filed May 15, 1940, for the reissue of patent No. 2,193,967, issued March 19, 1940, on an application, No. 651,737, filed January 5, 1933, renewed March 30, 1938.

The counts in the interference relate to a telegraph exchange system which comprises a central station, sub-stations, a plurality of communication lines, storing means at the central station for storing a message received over the communication lines, switching means for selecting the communication lines over which the message is to be re-transmitted, and means controlled by the switching means for repeating the message over a selected line.

The counts in issue (Nos. 3 to 6, inclusive) originated in appellants' patent and were copied by appellee Colman and the party Kleinschmidt for interference purposes. They read:

"3. A telegraph exchange system comprising transmission channels, a plurality of transmitters, selective switching means for interconnecting said transmitters and said channels, means for controlling said switching means and means whereby said controlling means is responsive to code signals of predetermined character preceding and following each group of message signals.

"4. A multi-office telegraph communication system comprising means for storing message groups of signals at a point intermediate the originating and final offices of the system, means controlled at said intermediate point for selecting a relay channel for the stored signals and means for automatically repeating signals over a selected channel as soon as the latter becomes idle.

"5. In a telegraph system, a central station, other stations, a plurality of telegraph channels, connecting said other stations to said central station, storing means at said central station for storing character signals received over incoming channels, means to select one of said other stations and means to transmit the stored signals thereto either before or after completing the storage of a message.

"6. In a communication system, a central station, a plurality of communication lines, storing means at said central station for storing character signals received over said lines, switching means for selecting one of said lines over which said signals are to be retransmitted and retransmitting means controlled by said switching means for repeating said signals over a selected line."

No testimony was introduced by any of the parties to the interference.

The issues presented to the Board of Interference Examiners were: (1) The right of the party Kleinschmidt and appellee Colman to make the claims constituting the counts in issue, and (2) the operativeness of the Kleinschmidt disclosure.

The board considered in detail each of those issues and held that appellee Colman could make the claims constituting the counts in issue; that the party Kleinschmidt could not make the claim constituting count 5, but that he could make the claims constituting counts 3, 4, and 6; that the party Kleinschmidt's reissue application disclosed an operative system; and that, as appellee Colman was the senior party, he was entitled to an award of priority of invention of the subject matter defined by the counts in issue.

The party Kleinschmidt did not appeal from the board's decision, but acquiesced therein. Accordingly, he is not a proper party in this appeal. See Nelson v. Berry and Jardine, 59 F.2d 351, 19 C.C.P.A., Patents, 1270; Island Road Bottling Co. v. Drink-Mor Beverage Co., 132 F.2d 129, 30 C.C.P.A., Patents, 708. The sole issue before us, therefore, is whether appellee Colman is entitled to make the claims constituting the counts in issue.

Appellee Colman's application discloses a telegraph system in which a message may be transferred automatically from one point or station in the system to a selected station of a plurality of stations by means of signal controlled devices or relay units, each of which is designed and adapted to receive and temporarily store messages in the form of mechanical signal combinations until an electrical transmission channel or path is selected by certain directing signals. Each of the signal control devices or relay units comprises a signal storing means for incoming signals, a selector, and a transmitter. Appellee discloses in his application, diagrammatically in Fig. 1 of his drawings, relay units (A1 to A10, inclusive) connected to similar relay units (B1 to B9, inclusive) by electrical transmission channels, and relay units (C1 to C12, inclusive) connected by transmission channels to B1 to B9, inclusive.

Appellee Colman states in his application that the successive characters of a message are "represented preferably in the well known Baudot or five-unit code by individual signal combinations followed by a terminal or end-of-message control combination and preceded by one or more predetermined directing signal combinations collectively representing a predetermined destination."

It is further stated in appellee's application that in the use of the system disclosed therein an incoming message to be delivered to the relay unit, for example C8, is recorded on the mechanical storage medium of one of the A units, for example A1; that the selector mechanism associated with the transmitting unit in relay unit A1 operates in response to directing signals to select the transmission channel leading to relay unit B2, whereupon the transmission channel is automatically tested and, if found to be available for the transmission of the stored message signals, the transmission of such signals to the relay unit B2 is initiated automatically; that after the message signals are transferred to the relay unit B2, the operation of the transmitter in the relay unit A1 "is interrupted under the control of the end-of-message combination which also causes the seized transmission path to be freed thereby completing the first stage of the transfer"; that the electrical signals received by the relay unit B2 are again converted into mechanical combinations and temporarily stored pending the selection by the selector of relay unit B2 of the transmission channel leading to the relay unit C8; and that if the transmission channel is not busy, the transmitter of the unit B2 operates to transmit the individual message combination electrically to the relay unit C8 where it is recorded mechanically.

Appellee also states in his application that his system may be used in intra-city and inter-city communications between sending and receiving customers.

Original claim 18 in appellee's application reads:

"18. In a telegraph system having an originating station, a plurality of intermediate stations and a plurality of terminal stations, the combination of means at said originating station for recording a message in mechanical form with control signals embodied therein representing a predetermined one of said intermediate stations and a predetermined one of said terminal stations, mechanism at said originating station operable in response to said first mentioned control signal to effect transmission of the message to said predetermined intermediate station, means to record the message mechanically at said predetermined intermediate stations, and mechanism at said intermediate station operable independently of the mechanism at the originating station and under the control of said other signal to select a transmission path leading to said predetermined terminal station."

The storage devices employed by appellee comprise endless chains, each link of which is provided with five pins. Each of these pins has an inner and outer position and the various combinations of positionings of the pins constitute code signals corresponding to the letters of the alphabet. The pins are positioned by intermittently actuated plungers and five magnets are provided, one for each pin, for determining which pins are to be depressed on any given stroke of the plungers. Accordingly, the letters which are to be stored on the links of the storage devices are determined by controlling the circuits of the magnets.

Appellee's system is quite complicated and we deem it unnecessary to describe it in further detail.

Counsel for appellants contended before the Board of Interference Examiners, and contend here that appellee Colman's...