Woods v. Tsuchiya
| Decision Date | 15 February 1985 |
| Docket Number | No. 84-871,84-871 |
| Citation | 225 USPQ 11,754 F.2d 1571 |
| Parties | Donald M. WOODS, Appellant, v. William S. TSUCHIYA, Appellee. Appeal |
| Court | U.S. Court of Appeals — Federal Circuit |
James F. Haley, Jr., Fish & Neave, New York City, argued for appellant.
Henry J. Zafian, Denise L. Loring and Jonathan D. Zischkau, Fish & Neave, New York City, of counsel.
Emil J. Bednar, Vaden, Eickenroht, Thompson, Bednar & Jamison, Houston, Tex., of counsel.
Richard R. Trexler, Trexler, Bushnell & Wolters, Ltd., Chicago, Ill., argued for appellee.
James W. Miller, The Toro Company, Bloomington, Minn., of counsel.
Before DAVIS, BENNETT and MILLER, Circuit Judges.
This appeal is from the decision of the United States Patent and Trademark Office ("PTO") Board of Interferences ("Board") 1 awarding priority of invention of the counts in issue to the junior party, William
S. Tsuchiya ("Tsuchiya"), on the basis that the senior party, Donald M. Woods ("Woods"), was estopped from claiming the subject matter of the counts. We affirm.
The invention relates to an apparatus for grass trimming, having a flexible filament of plastic, which is rotated in a cutting plane at high speed so that grass is cut upon impact with the filament. There are eight counts in issue of which the following three (copied from U.S. Patent No. 4,211,004--"Woods patent," claims 11, 25 and 29, respectively) are representative:
1. In an apparatus for cutting vegetation including a head member having an axis of rotation perpendicular to a cutting plane and further having an aperture adjacent its perimeter, driving means for rotating said head member about said axis, a flexible non-metallic line member in an uncoiled portion disposed at least partially within said head member and extending from said aperture into the cutting plane, the improvement comprising:
(a) storage spool means carrying a coiled portion of said line member and interconnected with the uncoiled portion of said line member disposed in said head member, said storage spool means mounted for rotation relatively to said head member; and
(b) actuator means controlling rotation of said storage spool means to uncoil selectively a portion of said line member and extend said line member from said aperture by a predetermined increment into the cutting plane during rotation of said head member.
(c) a flexible non-metallic line member disposed at least partially within said head member, and
(d) feed means to uncoil selectively a portion of said line member during rotation of said head member and for dispensing said line member from said aperture into said cutting plane during the cutting of vegetation.
6. Apparatus for cutting vegetation and the like, comprising:
(a) a rotatable head member having a tubular member extending therethrough between a first point at its periphery and a second point adjacent one end of the axis of said head member;
(b) driving means having a hollow rotatable shaft member fixedly interconnected with said tubular member at said point along said axis thereof;
(c) a flexible non-metallic line member having a coiled portion positioned independently of said rotation of said head member and an unwound portion extending through said hollow shaft member and said tubular member to said periphery of said head member to provide a free-traveling cutting end arcuately movable in a cutting plane defined by said rotatable head member; and
(d) feed means for selectively unwinding additional predetermined incremental lengths of said line member for extension from said periphery of said head member during rotation thereof and for anchoring said line member against being drawn from said head member during the cutting of vegetation.
2. Proceedings Below
On October 22, 1975, Woods filed patent application No. 624,928 ("Woods application") Apparatus for cutting vegetation and the like comprising: a member rotatable about an axis normal to a cutting plane; means forming a continuous passageway in said member extending from a first opening intersected by said axis to a radially spaced second, tubular opening intersected by said cutting plane; flexible line means extending through said passageway and including a first end portion extending outwardly from said first opening and secured externally of said member against rotation with said member, and a second, free travelling end portion extending outwardly from said second, tubular opening, said line means being confined within said tubular opening and free to rotate about its own axis of elongation within said passageway as said member is rotated.
drawn to a string-type weed cutter with a mechanical line feed. Tsuchiya filed patent application No. 632,972 ("Tsuchiya application"), which is drawn to a flexible line cutting apparatus, on November 18, 1975. On February 3, 1977, Interference No. 99,553 ("first interference") was declared between the Woods and Tsuchiya applications. There was only one count, which did not require a feed means to replace line broken during operation. The count reads as follows:
During the first interference, Woods motioned to substitute or add an additional count which recited a mechanical line feeding means as follows:
An apparatus for cutting vegetation and the like comprising:
a flexible non-metallic line member disposed at least partially within said head member, and
feed means secured against rotation with said head member for dispensing a portion of said line member from said aperture into said cutting plane.
Woods' motion was opposed by Tsuchiya and was denied by the primary examiner. It is undisputed by Woods and Tsuchiya that this additional count and the original count of the first interference are patentably distinct from each other and from the counts of the present interference.
On July 18, 1978, the Board, pursuant to 37 C.F.R. Sec. 1.287(d)(2), awarded priority on the subject matter in issue to Tsuchiya, because Woods failed to comply with a discovery order issued by the Board which required that "the junior party Tsuchiya be given the opportunity to explore the circumstances concerning the question of derivation of the subject matter of the count in issue from him by Woods." (Emphasis added.) Woods petitioned the Commissioner of Patents and Trademarks ("Commissioner") for review of the Board's decision, but the petition was denied on February 7, 1979, 2 and no appeal was taken.
As a result of the Board's decision, Woods canceled the claim corresponding to the count in the first interference and resumed ex parte prosecution of the remaining claims, which he amended to recite feed means for replacing broken line. Woods argued that these claims were patentably distinct from the count he lost in the first interference, because the count did not require a line feeding mechanism. Apparently persuaded by this argument, the primary examiner allowed the claims of the Woods application to issue in U.S. Patent No. 4,211,004 on July 8, 1980.
After the Woods patent issued and came to Tsuchiya's attention, Tsuchiya withdrew his application from issue and filed a continuation application to copy claims 11-12, 14-17, 19-20, and 22-29 of the Woods patent, which Tsuchiya believed were directed to common subject matter. The primary On September 21, 1982, Tsuchiya filed a motion for judgment against Woods on the grounds of res judicata and estoppel, which Woods opposed. Consideration of Tsuchiya's motion was deferred by the interference examiner until after the close of the motions period. During the motions period, Tsuchiya renewed his motion for judgment and sought to add nine proposed counts, which corresponded to claims 12, 14-17, 19-20, and 22-24 of the Woods patent. Woods then filed motions to dissolve the present interference on the grounds that the Tsuchiya application did not support the counts in issue and Tsuchiya was estopped by his failure to move to amend (to add the subject counts to the first interference). On the latter ground, Woods also sought judgment against Tsuchiya. On June 13, 1983, the primary examiner denied Woods' motions to dissolve and granted Tsuchiya's motion to add counts corresponding to claims 14 and 15 of the Woods patent. Tsuchiya petitioned the Commissioner to add the other seven proposed counts, while Woods petitioned the Commissioner to reverse the primary examiner's denial of Woods' motion to dissolve on the ground of estoppel. The Commissioner denied both of these petitions, but remanded Woods' and Tsuchiya's motions for judgment to the Board.
examiner held that claims 11 and 25-29 were supported by the Tsuchiya application, and Interference No. 100,928 ("present interference"), was declared on August 30, 1982, with these six claims as counts.
After oral argument on November 15, 1983, on Tsuchiya's and Woods' motions for judgment on the ground of estoppel, Tsuchiya's motion to add the other seven proposed counts, and Woods' motion to dissolve the present interference for lack of support in the Tsuchiya application, the Board issued a decision on December 19, 1983. It denied Tsuchiya's request to review the primary examiner's decision denying the addition of the seven other proposed counts, because Board jurisdiction is limited to the counts before it. As to Tsuchiya's right to make the counts, the Board held that his application supported claims corresponding to the counts, and, therefore, Woods' motion to dissolve the present interference on this...
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