Yeates v. Baer, Patent Appeal No. 4885.

• Decision Date: 26 June 1944
• Docket Number: Patent Appeal No. 4885.
• Parties: YEATES v. BAER.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

31 CCPA 1172, 143 F.2d 607 (1944)

YEATES v. BAER.

Patent Appeal No. 4885.

Court of Customs and Patent Appeals.

May 22, 1944.

Rehearing Denied June 26, 1944.

Cushman, Darby & Cushman, of Washington, D. C., (John J. Darby, of Washington, D. C., H. J. S. Dennison, of Toronto, Canada, and Gorham F. Freer, of Washington, D. C., of counsel), for appellant.

Frederick Griswold, Jr., of New York City, for appellee.

Before GARRETT, Presiding Judge, and BLAND, HATFIELD, LENROOT, and JACKSON, Associate Judges.

JACKSON, Associate Judge.

Appellant appealed from a decision of the Board of Interference Examiners of the United States Patent Office awarding priority of invention of the subject matter of the two involved counts to appellee.

The interference as declared involved an application of appellant, Serial No. 299,575, filed October 14, 1939, for Tobacco Pouches, and an application of appellee, Serial No. 265,072, filed March 31, 1939, for Containers. The interference was redeclared in order to substitute a divisional application of appellee, Serial No. 388,481, filed April 14, 1941. The oath of appellant's application states that on January 11, 1939 he had filed an application for the same invention in Canada, Serial No. 459,348, and claimed priority of invention thereunder.

Appellant made no motion to shift the burden of proof and was held by the board to be the junior party, having the burden of proving his case by a preponderance of the evidence.

Both parties took voluminous testimony and filed many exhibits.

Appellant died before the interference was declared. The preliminary statement filed on his behalf alleged conception of the invention on or about the middle of February 1938; first written description and drawings thereof on January 11, 1939 (the date of filing of the said Canadian application); and reduction of the invention to practice on or about July 13, 1938.

Appellee alleged in his preliminary statement the first drawing and written description of the invention defined by the counts and disclosure of it to others on or about July 26, 1938, and reduction to practice on or about August 2, 1938.

The counts, which were drawn by the Primary Examiner and suggested to the parties, read as follows:

"1. A hermetically sealed envelope comprising a rectangular sheet of metal foil provided with a film of rubber hydrochloride secured to one face thereof, substantially one third of said sheet being laterally folded upon the adjacent portion in edge coinciding relation with said film on the inside, said opposite coinciding edge portions being permanently sealed together by means of pressure applied at a temperature sufficiently high to cause merger and permanent union of the films, and a zone adjacent the free edge of said folded portion but spaced therefrom being superficially sealed by means of pressure applied at a temperature below the temperature causing merger and permanent union of the films, said zone extending from one permanently sealed edge to the other and said films at said zone being readily manually separable in the plane of contact of the joined surfaces.

"2. A method of forming a hermetically sealed envelope comprising, securing a film of rubber hydrochloride to one face of a rectangular sheet of metal foil, laterally folding substantially one third of said sheet upon the adjacent portion in edge coinciding relation with said film on the inside, applying sealing pressure throughout the opposite coinciding edge portions at a permanent sealing temperature, said temperature being sufficiently high to cause merger and permanent union of the films and applying sealing pressure to a zone of said folded portion adjacent to the free edge thereof but spaced therefrom and extending from one permanently sealed edge to the other, the last named sealing pressure being applied at a temperature below the permanent sealing temperature whereby a superficial bond is formed which is readily manually separable in the plane of contact of the joined surfaces."

The interference relates to a pouch particularly adapted for carrying tobacco, which pouch comprises a laminated sheet of metal foil and rubber hydrochloride, known in commerce as "Pliofilm." The Pliofilm is folded upon itself, forming the interior of the pouch, with the side edges permanently sealed and the mouth temporarily sealed.

Both parties moved to dissolve the interference; both motions were denied.

No formal notice was given of appellant's reliance for priority upon the date of his Canadian application, but a certified copy thereof, which is a duplicate of appellant's United States application, was filed in the Patent Office after the time for taking testimony had expired but prior to the final hearing. Appellee moved to strike and suppress appellant's offer of the Canadian application and requested that the motion be considered at final hearing. Consideration of the motion was, upon order, deferred until that time. The Board of Interference Examiners in its decision made no reference to the said motion and awarded priority of invention to appellee on the ground of prior conception, August 1, 1938, and derivation by appellant from appellee.

The decision of the board analyzed the evidence of both parties in considerable detail, but it is not necessary for us to do so.

The reasons of appeal are 29 in number but appellant relies on Nos. 3, 5 and 6 as alleging error in the board's holding that appellee's Exhibit 60 constitutes evidence of conception of the invention; Nos. 7 to 11, inclusive, as alleging error in the board's conclusion concerning derivation of the invention; and Nos. 14, 15 and 29 as alleging error in not finding prior conception of the invention and reduction to practice thereof by appellant on the basis of his Canadian application.

Appellant in...