Wolter v. Belicka

• Decision Date: 17 April 1969
• Docket Number: Patent Appeal No. 8038.
• Parties: Gilbert R. WOLTER, Alfred F. Ernstberger and Frederick J. Ritter, Appellants, v. Michael E. BELICKA, Robert J. Kenny and Rodney Longin, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

161 USPQ 335, 409 F.2d 255 (1969)

Gilbert R. WOLTER, Alfred F. Ernstberger and Frederick J. Ritter, Appellants, v. Michael E. BELICKA, Robert J. Kenny and Rodney Longin, Appellee.

Patent Appeal No. 8038.

United States Court of Customs and Patent Appeals.

April 17, 1969.

George R. Clark, Mason, Kolehmainen, Rathburn & Wyss, Walter Lewis, Walther E. Wyss, M. Hudson Rathburn, Chicago, Ill., attorneys of record, for appellants.

Watson, Leavenworth, Kelton & Taggart, Elmer R. Helferich, New York City, for appellees; Thomas C. Betts, New York City, of counsel.

Before WORLEY, Chief Judge, and RICH, SMITH, ALMOND and BALDWIN, Judges.

WORLEY, Chief Judge.

The issue here is whether Wolter, Ernstberger and Ritter (Wolter) have proved beyond a reasonable doubt¹ that there was a successful reduction to practice of their invention before the July 18, 1961 filing date of patent No. 3,101,505 of the senior party Belicka, Kenny and Longin (Belicka). The Board of Patent Interferences found that Wolter had not discharged his burden of proof and awarded priority to Belicka. We find nothing from our review of the record to support appellants' allegation of reversible error and affirm the board's decision.

The invention is defined by counts 1 through 9 as a "floor care machine." The board treated count 1 as typical. That count, separated into its elements, reads:

1. In a floor care machine,

(a) a frame,

(b) an electric motor supported on said frame,

(c) rotary surface treating means below said frame and driven by said motor,

(d) a manipulating handle pivotally connected to said frame,

(e) a cleaning liquid tank removably mounted on said handle,

(f) means for conveying liquid from said tank to the floor adjacent to said rotary means,

(g) a liquid pick-up suction nozzle depending from said frame,

(h) a fan driven by said motor,

(i) conduit means for connecting the inlet of said fan to said nozzle,

(j) a waste liquid tank interposed in said conduit means and removably mounted on said handle, and

(k) means in the last-mentioned tank for separating liquid from the air passing therethrough.

Wolter describes the remaining counts as calling for:

* * * one or more additional features or variations such as inclusion of a rinse water tank selectively connectable to the liquid conveying means or the provision of a squeegee in or associated with the suction nozzle or the provision of a liquid wax reservoir, together with means for conveying the liquid wax to the floor, or in the provision of a manifold for the lower ends of the cleaning liquid and waste liquid tanks or for valve actuating means carried on the handle.

In further explanation of the invention, Wolter states, with citations of record pages omitted:

The objects and advantages of the floor-conditioning apparatus defined by the issue counts are stated in the Belicka et al. patent as the provision of:

"* * * a surface treating machine and more particularly to a relatively small machine of this type suitable for use in a home by the housewife."

* * * * * *

"* * * a machine having one or more rotary scrubbing elements for contacting a floor, together with means under the control of the operator for feeding a detergent liquid to the floor in the neighborhood of the scrubbing means in combination with a wet pick-up arrangement whereby the detergent and dissolved dirt may be removed from the floor, leaving the latter practically dry."

* * * * * *

"* * * means also under the control of the operator for supplying rinse water or the like to the floor in the neighborhood of the scrubbing means in order that any remaining traces of detergent may be diluted thereby, the water pick-up means then serving to remove the rinse water from the floor."

* * * * * *

"* * * removable reservoirs for holding the liquid detergent and the rinse water and a removable container for accumulating the liquid which is picked up, * * * easily removable from the rest of the apparatus in order that they may be independently carried to a sink or the like for convenience in filling and emptying."

"* * * a liquid wax reservoir, also easily removable from the rest of the apparatus * * *" and

* * * * * *

"* * * means under the control of the operator for applying liquid wax to the surface in order that the device may also serve as a floor polisher."

Belicka is restricted to his July 18, 1961 filing date for conception and reduction to practice since he submitted no evidence of earlier activities.

The evidence on behalf of Wolter includes testimony of Wolter, Ernstberger and Ritter, as well as seven others — Clowers, Jepson, Vander Velde, Lewis, Thrams, Hegerich and Neben — who were employed by their assignee, Sunbeam Corporation,² at the time under consideration. Also submitted were certain physical and many documentary exhibits, in total number 278. The documentary exhibits, in large part, are drawings showing the construction of two models of the machine and their components discussed hereafter.

Wolter's case is predicated primarily on a floor care machine, or scrubber, introduced as Exhibit 5. More specifically, the Wolter brief states that the "sole question" presented to us is "whether or not the proofs adduced by the party Wolter et al. sufficiently establish successful operation of the floor conditioning apparatus" of that Exhibit "to constitute a reduction to practice of the subject matter of the issue counts prior to July 18, 1961." It is unquestioned that a machine was built and tested prior to that date, and that it meets the terms of count 1 and nearly all of the other counts.³

Wolter, Ernstberger and Ritter all testified that they operated the Exhibit 5 machine. However, the board stated regarding their testimony (references to the record omitted):

* * * none of them clearly stated that it performed the function primarily intended, namely clean a floor. Ernstberger * * * stated in reference to entries on a project log sheet (exhibit 156) that the machine did everything expected, that he scrubbed a floor, and that it picked up water. As to this self-serving testimony there is no evidence as to the initial and final condition of the floor. Ritter testified * * * substantially in the same manner as Ernstberger. Wolter testified that he operated the machine of exhibit 5 but his testimony rather than indicating successful operation indicates the contrary. He testified that the laboratory found objections to the methodology of the design * * * and they were not satisfied with the provisions for separating dirty water from clean, and for separating foam from the air * * *.

The board next discussed Exhibit 157, a report of laboratory tests on the machine of Exhibit 5. It noted that Spano and Heider, who conducted the tests, did not testify although they were still employees of Sunbeam. It acknowledged testimony of Neben, the supervisor of Spano and Heider, that he read and approved the results of the tests but found his testimony "devoid of actual observance of the tests." It regarded "acceptance" of the reported test results by Neben as inadequate "to prove a reduction to practice. Kear v. Roder, 28 CCPA 774; * * * 115 F.2d 810, 47 USPQ 458." The board further stated:

The party Wolter et al. appears to be arguing that Exhibit 157 comes within the purview of the Federal Shop Book Rule 28 U.S.C. 1732. This rule was not intended to apply to laboratory test notes. Alpert v. Slatin 49 CCPA 1343; * * * 305 F.2d 891; 134 USPQ 296.

The testimony of the other witnesses regarding the testing of Exhibit 5 was discussed by the board as follows:

The corroborating witnesses Clowers, VanderVelde, Jepson and Hegerich all testified they saw the machine of exhibit 5 in operation but their testimony singly or collectively does not prove a reduction to practice. Clowers testified * * * that he saw liquid dropped and picked up by the machine, however he gave no testimony as to the condition of the floor or whether it was in fact cleaned. The testimony of VanderVelde is similar. Jepson testified * * * that as far as he could recall it did a good job of scrubbing the floor and picking up water. But we have no information as to the condition of the floor before and after scrubbing. If the machine were operated on a clean floor it would not be possible to determine if the machine performed its intended cleaning function or not.

The letter (exhibit 277) written by the witness Hegerich merely describes the operation in superlatives but is silent as to the conditions of the floor besides stating that the floor was dried satisfactorily. His oral testimony was uncertain as to the identity of the machine he actually saw operate. We further note that the last line of the third paragraph of exhibit 277 refers to a water pump. Neither of the models exhibits 5 and 45 have a water pump as such, but the earlier model, exhibit 82, did have such a pump * * *. Furthermore, the uncorroborated test report (Exhibit 157) at p. 7, third paragraph does not support the glowing first paragraph of exhibit 277.

The board also considered testimony regarding tests of a second model of the Wolter machine, Exhibit 45, which were completed after Belicka's filing date. The board found that testimony also inadequate to prove Wolter's case, characterizing it as "substantially the same as that relative to exhibit 5." The board thought it significant that, after certain home tests of Exhibit 45 were completed about November 6, 1961, no further evidence of activity with respect to the project number under which the physical exhibits were made appears in the record until a memorandum of March 1, 1963. In that memorandum, Jepson, who was in charge of research and development at Sunbeam for a long period prior to his retirement in 1963, advised Sunbeam patent attorney Lewis that Wolter, Ernstberger and Ritter were the inventors of the "Suction Floor Scrubber."

Wolter emphasizes favorable comments regarding the tests of Exhibit 5 by the inventors and other...