Williams v. Administrator of Nat. Aero. & Space Admin.

• Decision Date: 30 November 1972
• Docket Number: Patent Appeal No. 8712.
• Citation: 175 USPQ 5,463 F.2d 1391
• Court: U.S. Court of Customs and Patent Appeals (CCPA)
• Parties: Donald D. WILLIAMS and Hughes Air-craft Company, Appellants, v. The ADMINISTRATOR OF the NATIONAL AERONAUTICS AND SPACE ADMINISTRATION, Appellee.

175 USPQ 5, 463 F.2d 1391 (1972)

Donald D. WILLIAMS and Hughes Air-craft Company, Appellants, v.The ADMINISTRATOR OF the NATIONAL AERONAUTICS AND SPACE ADMINISTRATION, Appellee.

Patent Appeal No. 8712.

United States Court of Customs and Patent Appeals.

August 10, 1972.

Petition for Reconsideration Denied November 30, 1972.

W. H. MacAllister, Jr., Los Angeles, Cal., Richard R. Trexler, Chicago, Ill.(Olson, Trexler, Wolters & Bushnell), Chicago, Ill., John M. Lee, Los Angeles, Cal.(Fulwider, Patton, Rieber, Lee & Utecht), Los Angeles, Cal., Richard P. Schulze, Washington, D. C., attys. of record, for appellants.

Robert F. Kempf, Silver Spring, Md., Neil B. Siegel, John B. Farmakides, Washington, D. C., attys. of record, for appellee.Leonard Rawicz, Potomac, Md., of counsel.

Before RICH, Acting Chief Judge, ALMOND, BALDWIN and LANE, Associate Judges, and MALETZ, Judge, United States Customs Court, sitting by designation.

BALDWIN, Judge.

This appeal is from the decision of the Patent Office Board of Patent Interferences, adhered to on reconsideration, in a proceeding under Section 305 of the National Aeronautics and Space Act of 1958(42 U.S.C. § 2457).The board held that the Administrator of the National Aeronautics and Space Administration (hereinafter NASA), on behalf of the United States, is entitled to receive the patent to issue on Williams patent application serial No. 391,187, filed August 21, 1964.¹Section 305 reads in pertinent part:

42 U.S.C. 2457.Property rights in inventions.—Exclusive property of United States; issuance of patent.(a) Whenever any invention is made in the performance of any work under any contract of the Administration, and the Administrator determines that—

(1) the person who made the invention was employed or assigned to perform research, development, or exploration work and the invention is related to the work he was employed or assigned to perform, or that it was within the scope of his employment duties, whether or not it was made during working hours, or with a contribution by the Government of the use of Government facilities, equipment, materials, allocated funds, information proprietary to the Government, or services of Government employees during working hours; or

(2) the person who made the invention was not employed or assigned to perform research, development, or exploration work, but the invention is nevertheless related to the contract, or to the work or duties he was employed or assigned to perform, and was made during working hours, or with a contribution from the Government of the sort referred to in clause (1),

such invention shall be the exclusive property of the United States, and if such invention is patentable a patent therefor shall be issued to the United States upon application made by the Administrator, unless the Administrator waives all or any part of the rights of the United States to such invention in conformity with the provisions of subsection (f) of this section.

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Patent application.(c) No patent may be issued to any applicant other than the Administrator for any invention which appears to the Commissioner of Patents to have significant utility in the conduct of aeronautical and space activities unless the applicant files with the Commissioner, with the application or within thirty days after request therefor by the Commissioner, a written statement executed under oath setting forth the full facts concerning the circumstances under which such invention was made and stating the relationship (if any) of such invention to the performance of any work under any contract of the Administration.Copies of each such statement and the application to which it relates shall be transmitted forthwith by the Commissioner to the Administrator.

Issuance of patent to applicant; request by Administrator; notice; hearing; determination; review.(d) Upon any application as to which any such statement has been transmitted to the Administrator, the Commissioner may, if the invention is patentable, issue a patent to the applicant unless the Administrator, within ninety days after receipt of such application and statement, requests that such patent be issued to him on behalf of the United States.If, within such time, the Administrator files such a request with the Commissioner, the Commissioner shall transmit notice thereof to the applicant, and shall issue such patent to the Administrator unless the applicant within thirty days after receipt of such notice requests a hearing before a Board of Patent Interferences on the question whether the Administrator is entitled under this section to receive such patent.The Board may hear and determine, in accordance with rules and procedures established for interference cases, the question so presented, and its determination shall be subject to appeal by the applicant or by the Administrator to the Court of Customs and Patent Appeals in accordance with procedures governing appeals from decisions of the Board of Patent Interferences in other proceedings.

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Definitions.(j) As used in this section—

(3) the term "made", when used in relation to any invention, means the conception or first actual reduction to practice of such invention.

Upon receipt of a statement of the nature provided for under § 305(c), the Administrator filed a request pursuant to § 305(d) that the patent on the Williams application (with allowed claims 19-21) issue to him, based on work under contract NAS 5-1560 entered into between NASA and Hughes on August 21, 1961.Hughes thereupon requested a hearing before the board, as also provided for under § 305(d), to determine whether the Administrator was entitled to receive the patent.The board held that the Administrator was so entitled under the provisions of § 305(a) because the launching and manuevering of a communication satellite known as Syncom II in July and August of 1963 constituted the first actual reduction to practice of the invention and was accomplished in the performance of work under the contract.It reached that conclusion as a result of finding that appellants failed to prove that their activities before the contract was entered into amounted to an actual reduction to practice.

The Invention

The invention in dispute is apparatus for controlling the attitude or orientation of the spin axis of a spinning body by applying a precessing torque to the body under control from a location external to the body, defined in representative claim 19 as follows:

19.Apparatus comprising:

(a) a body adapted to spin about an axis;

(b) fluid supply means associated with said body;

(c) a valve connected to said fluid supply means;

(d) fluid expulsion means disposed on said body and coupled with said valve and oriented to expel said fluid substantially along a line parallel to said axis and separated therefrom;

(e) means disposed on said body for providing an indication to a location external to said body of the instantaneous spin angle position of said body about said axis and the orientation of said axis with reference to a fixed external coordinate system;

(f) and means disposed on said body for receiving from said location control signals synchronized with said indication;

(g) said valve being coupled to said last-named means and responsive to said control signals for applying fluid to said fluid expulsion means in synchronism therewith for precessing said body to orient said axis into a predetermined desired relationship with said fixed external coordinate system.

A principal feature involves a jet, disposed on the body at a position spaced from the spin axis and directed to expel fluid in a direction parallel to that axis, which applies a turning force to the body about a preselected axis normal to the spin axis to precess the spin axis in a desired direction.The jet is supplied from a tank of pressurized gas on the body through a valve controlled from a location external to the body.Since the body is spinning about its axis, continuous operation of the jet throughout a spin cycle would result in a net zero precessing torque.Therefore precessing is accomplished by pulsing the jet during a portion only of each succeeding spin cycle.The particular portion of the spin cycle during which the jet is pulsed is determined by the direction in which precessing is desired and the pulsing is continued until the desired attitude is attained.

General Background

There is no real dispute over the pertinent facts.Hughes, as part of a program it began in late 1959 to develop a spin-stabilized, synchronous communications satellite, built a "dynamic wheel" in a laboratory to test an arrangement for attitude control conceived by Williams (now deceased).²Hughes operated that wheel on April 2, 1960, a movie film of which operation is in evidence as Exhibit 4, and also operated it from time to time thereafter.The Williams invention was then adopted for the program, which was designated Comsat and had the objective of building a satellite that could be flown.In 1960 the parent application was filed and a prototype Comsat satellite was built, the prototype being subjected to various tests in that year and in the spring of 1961.Aforementioned contract NAS 5-1560 of August 21, 1961, was entered into after Hughes proposed to NASA the building of communications satellites based on the Comsat program.Under that contract and superceding agreements, Hughes provided satellites along with ground equipment and participated in the successful launching and manuevering of NASA's Syncom II in July and August of 1963.

The Dynamic Wheel

The laboratory layout for the dynamic wheel test is shown in a diagram in evidence as Exhibit 91, reproduced below:

The diagram shows the dynamic wheel supported in a vertical plane on a laboratory cart.A stroboscopic lamp (STROBE), energized from a signal generator (SIG GEN) through a synchronous controller which included a rotating drum, directed its...