*1 GRAHAM, Presiding Judge, Before GARRETT, BLAND, HATFIELD, Judges. LENROOT, Associate GRAHAM, Presiding Judge. v. HONIGBAUM. BRYDLE Brydle Honigbaum, (2d) 49 F. In v. Appeal No. 2750. Patent opinion 18 C. P. was filed C. A. Appeals. reversing this case and an order entered Patent of Customs and Appeals decision Board Unit Dec. remanding ed States Office matter In for further action said office. considering instance, the case in the first quite apparent became the court that priority award on the counts of the inter ference, Office,might as framed injustice parties, for rea result to the assigned opinion. The order sons in said made far was was, the court within so power court, obviate injustice by a of the counts of reforming interference. Upon appellee, through June counsel, a petition rehearing here- alia, alleging, parties inter court, day requesting de- by the cision on the issue as made priority pending part, files Appellant, counts. on his reply petition, insisting likewise such a decision. unwilling parties, therefore, As seem pre- opportunity avail themselves decision in the sented court’s former matter, pass the court will pending presented counts petition Accordingly, the for re- terference. hearing allowed, will de- and the matter present- and briefs termined record argument. ed, further oral passing upon the issue of now of facts the statement presented, Brydle Honigbaum, supra, re- peated here. Brydle v. As stated in our Honigbaum, supra, the Board dissenting. Judge, LENROOT, Associate the construction re- 1922, was a agree con- art, we think clusion. In view preparation asbestos *2 148 panel Office, satis construction of a thereof in a practice relative in in- to the factory way to cases, reduction sufficient terference and a of which rule is of as The ease the Examiner party prove cited follows: “If a date App. Interferences, Wardell, earlier alleged Crabbs v. 57 preliminary state- 241, 19 715, prep ment, D. C. held that the F.(2d) such held will be to establish the waterproof asphaltic alleged aration of date a slab and none other.” covering roof reduction was not sufficient These rules have force and effeet of practice exposure to to of the same without law. Dyson, 209, Fish 55 App. D. 4 C. noted, weather how conditions. be (2d) F. 175. ever, expressly that ease the court that in This matter has been several considered roofing called attention that such the fact to times Appeals District of the product, qualities was new and that were its Columbia, jurisdiction of court comparatively case, if unknown. these jurisdiction matters before the Brydle had mak pioneer been a art transferred to this court. The first case material, would of this then we called Hodg- attention to our is Colhoun v. preparation be of his son, 5 App. 21. There court held panel to would a sufficient reduction be not given date the invention in the as practice. However, being established, art preliminary statement will con- be considered qualities particular composi of this clusive party, and that tion being well-known, the ease is different conception by prior him invention to of the practice reduction to sufficient. is such date pur- will not for the be considered argued It is by counsel for pose of changing date. That case Appeals inasmuch as Board of Phillips, cited Cross v. 228. App. D. C. ques- construction of board in cited, In the case one parties, with- tion was reduction also af- out offering preliminary state- amend his firmed Examiner Inter- the decision ment, undertook prove that he reduced his refusing right ferences to amend practice invention prior the date shown preliminary statement, it follows that preliminary statement. The court held Appeals Board of must have concluded that testimony, that this amendment, practice as said reduction to inadmissible entitled no consideration. board, be not considered It will just cited, be observed in the case law, inadmissible a matter of as because Phillips the court found that had reduced it showed a construction of board practice about four months instead of between October 1st alleged preliminary the date in Cross’s 20th, year, and December as same statement, being true, and Cross alleged preliminary in the state- amended alleged pre- restricted to date otherwise, had held ment. If it statement, liminary it would seem to follow argued, priority is must have been awarded logically question that the evidence in would because reduction to his date of be purpose. immaterial
practice alleged, namely, between October Taylor, App. 522, 524, Lowrie v. D. C. 20,1922, prior Honig- 1 and December subject. case, same In this namely, filing April date, baum’s Taylor’s preliminary statement It seems to be a fair inference conception May and disclosure about holding been must of the Board of have September, reduction in 1900. A matter, unless sample of device evi- introduced in ferred from its decision that found the board dence, to have been shown that, irrespective date of May, 1900, been, hence would practice, Brydle reduction should proper allegations made, a reduc- diligence lack of barred because of his Honigbaum practice said, tion to at that time. The court ' entered the field. * * in discussing matter: is entitled of re- contends that he date agree with the tribunals o-fthe Patent Office practice pre- claimed that if this exhibit were admissible liminary statement, if, fact, has, showing reduction established a reduction to construction date would be earlier date. some constitute a prac- - Taylor difficulty. Taylor; but, unfortunate- free tice however, ly the rules them, We are of much under light upon allegation are they bound thrown the consideration Office preliminary 110 of the statement that they of a of rule United States did not subject-matter the interfer- invention, the sub- reduce to the invention ence, and that about ject-matter June September, of this count July he made a full sized 1900. The Patent Office tribunals stated showed it wife. His wife ignore to his permitted lawfully estab- the rules *3 1922, garden July 6, that she was on testimony inter- taking lished of Honigbaum up and that from the base- came appeals ferences; and in in such cases shaped ment showed a “diamond her equally the Patent Officewe are bound. We wing a narrow on it.” a sort any date had of give earlier are therefore unable to Honigbaum Nothing by Taylor disclosure Taylor more of a practice reduction to to prior shortly appears from alleged the record preliminary state- than that April 27, Honigbaum’s to ment.” 1923, that he showed when he states The this court up matter came before applica- to his who Smith, 839, 838, 17 C. C. Nolop F.(2d) v. 36 tion. P. A. and in that ease said: “It we satisfactory testimony well taken We not consider this established proof prac party conception to disclosure reduction to an interference show to practice is, substantially, the date set the uncorroborated or tice. to statement, testimony applicant, never preliminary forth which has statement, is inadmis- Ja considered sufficient such cases. amendment sible, Folds, P. A. F.(2d) 361,17 considered.” v. 38 C. will not be nette C. it, record, as we 879. There is in the view counsel, is statement, argued by it is conception or reduc proof either holding prove to evidence offered practice Honigbaum until tion to prelim- date other than 27,1923. April filing date of pur- inary any inadmissible for statement is pose. quotation just be recited must The conclude, record, We therefore from the together 110 rule considered Brydle party the first to con Office, quoted, and was heretofore practice ceive to reduce first intended as a by this court considered to be subject-matter interference counts in holding ad- by us that no such evidence was here. purpose, missible rather but Office seem Both tribunals in ‘ conception evidence showing a or re- date of to have on the basis considered alleged duction earlier than patentable distinction be- is no preliminary admissible statement applica- tween described in the purpose considered for the and could not be parties shingles reduced tions of establishing alleged. date earlier so Brydle are not in 1922. We disposed here. controversial field enter that a reasonable parties issues interpretation The rule Of 110 of the Patent and here are: Office fice, and tribunals of the Patent of the decisions conception First, and re- as to the District Columbia, subject-matter practice of Smith, Nolop supra, this court will lead v. interference; second, and, party counts may the conclusion that introduce doctrine Mason application of the proof of a date of or reduction App. Hepburn, 13 C. on account of alleged v. than that in his earlier Brydle file alleged delay of statement, preliminary admis but Honigbaum the field. The mat- entered on after .establishing sible points thus determined respective alleged ter be by him in his dates parties. raised preliminary statement he conceived might be, practice, reduced case Brydle the first having been found question. pur invention in For other practice, and the first reduce to conceive pose arise in inadmissible. Cases precluded from an award shall priority so may be of a date evidence offered waited from' time because he prelim remote from date field, April namely, Honigbaum entered a doubt as to the to raise inary statement as fil before 27, 1923, until credibility but character diligence No burden of application? principle law in affect this does not upon aft Brydle rested cases. volved in such same to Har er he reduced F.(2d) 39 17 C. P. Bregman, C. Honig- lan v. conception by The as to 949; Smith, F.(2d) 36 Townsend v. of himself A. baum consists of the A. 647. 17 C. conceived C. P. his wife. He testified 150 junior awarded If, however, having on all conceived his inven reduced counts interference. abandoned tion, suppressed deliberately concealed Reversed. it, doctrine akin will be barred Sepp estoppel. Hepburn, supra; Mason v. LENROOT, Judge (dissent Associate Roden, 186, 18 mann C. P. A. F.(2d) C. ing). 188, 18 831; Hayman, F.(2d) C. Miller v. I cannot assent to the conclusion reached Backus, 848; Hedenskoog v. P. A. by majority in ease, because do not F.(2d) P. A. 1065. 408, 18 C. C. believe that sustained the bur- Brydle that It is well said counsel for den junior resting him as the *4 Brydle anywhere there that is intimation no party. any attempt conceal his A reading careful record in the public. from had his exhibited the He ease me leads to the conclusion that any period, premises long on a where his over should not be been the first passer-by prob- is it. It more see conceive and reduce to the inven- Honigbaum in able tion involved, ap- but that acts of the through plant. passing the pellant majority which the a holds constitute abandonment Nor there by him re- should be part Brydle. he that He testified garded only experiment. anas abandoned patent Brownrigg employed had his one application Nowhere in his does attorney, reduc- or about of his at the time describe or show the shingle he form which shingles tion the issue. claims to have prac- conceivedand reduced to here- Brownrigg, hearing deceased before the tice in 1922, but, appli- contrary, his Brydle 21,1922, sug- October wrote to on cation shows a shingle which he testified adoption the of a certain form gesting to him did not he invent. shingle form application, which testimony The July, that shows the double form. This letter and tabbed was in patented shingle a use Brydle correspondence and his other between known shingle, as the Arro-Lock had which evidence, and, our are in slits extending inwardly opposite points from the testi- substantially corroborates margin adja- on shingle, the lateral Brydle. correspondence mony of re- cent to the corners, lower and that such December sulted in 1922, dated an shingles being 1922, by were used Brydle’s patent, No. which resulted Tilo Roofing Company, appel- of which 21,1924. 1,512,400, dated October president. lant was patent composition shingle a Said was for upon July testified adapted a with lowermost comer turned he observed the difficulty that workmen back as tab. testified anchoring opening up the shingles slits of the to include Brownrigg he instructed by use of their thumbs, and that he con then shingle idea the tabbed in this ceived idea lessening the labor cost thought ’included laying type shingle by changing the application here, ideas embodied in into a Upon slit notch. point testi he nothing knew different he first saw : fied follows 21,1924, Immediately patent October aft- on “Q. you propose his at- Thereupon bring er issuance. asked How did he about thought, torney result? A. I of having included issued instead shingle, not, told at this slot that had tabbed it did to be broken time down each shingle laid, present application if a notch was cut proceeded once out day. the side of on labor the same would save the slit, cost of breaking down which would far This is from sufficient to establish laying shingles reduce cost of materi- Brydle. on abandonment There ally.” suppression, concealment, or aban- quite He July 4, donment seems then testified he clear priority. A made a embodying he should be awarded motion number idea, appellee from been made strike to cover feet 3% appellant’s reply square, portions certain and that such structure fastened files rehearing. appellee’s petition for The mo- on the the warehouse on outside of about the roof, Board slant of where it denied. decision of the remained for tion is The some length reversed, time, considerable after which it “ * * (cid:127) quotation: words, premises outbuilding tbe instead placed in In other the of impairing was found usefulness warehouse, where it placing therein, it was I achieved years notches or fall more than slits five of lat- provision desired apparent made. It from function expansion appellant’s thought eral a lateral extensions thereby majority pro- comer making which reduction, vide which anchoring holds constituted a tab members strength of improve upon any way Arro-Loek from detract shingle.” do- slit, thus providing body portion notch instead of a main workmen, necessity of the ing away appel- appears therefore It it was slit laying breaking down the shingles, he lant’s idea in with their thumbs. open to says July, 1922, he invented in objection produced weak- Appellant’s that the notch here in issue from specifica- ening effect detracted filed on strength body portion of the tion time condemned main shows that he says shingle. type now very states: In his invented. appears further *5 “ * * * com- after this reduction In art the most invention and the shingle, cor- which in 1922 of notched anchoring mon of the lowermost the method up- the shingles majority finds a reduction composition dependent ners constituted of in- appellant for application extending on the slits made an use of notches patent wardly type shingle for and opposite points improved the lateral of from patent ap- adjacent therefor, lower a margin shingles the received but in such por- plication patent of marginal the placing comer and and mention is no Appellant shingles shingle in notches his at- underlying tions of notched of 1922. exposed tempts he explain lower thereby by testifying that hold the slits supposed overlying shingle position. shingle comer that said in- in notched in arrangement patent, been cluded said last-named which was has construction and open objection 21, 1924, notches or slits issued that the on October he produced shingles received the same asked a his weakening he effect and, edges shingle ad- inserted his referred covered addition, in the here to was jacent shingles abrupt patent, the at- produced bend informed his shingle edges torney at inner that further the material of the the not. the receiving the slits and tended or cheek that such information to tear testified shingle destroy agreed useful- himself material of it was ney between and his attor- the application ness. that the here he would file applica- stated, appellant’s issue. As before present use consists “The tion here involved was filed on October ex- anchoring members lateral formed is- very patent date that said extremity tensions on the lowermost sued, appellant testified, did patent, which he body shingle In other portion itself. issued, not see after” it was so it “soon words, impairing instead usefulness of evident no have been omis- that shingle by there- placing notches slits patent 21, 1924, sion in of October pro- I the desired function achieved appellant observance of which caused vision aby of lateral lateral ex- extensions or present application. his pansion shingle of a comer provide thereby members anchoring Appellant’s explana- tab testimony as his way detract which do not in any shingle tion including for his notched from body portion strength the main application completely refuted shingle.” (Italics ours.) in the case. The record shows early that 1924 or late in the quotation be observed from It will 1923, appellant, being fall informed notch that he then of the belief that the by appellee herein, invention claimed represented shingle application patent had filed he for there- regarded by majority a re- for, negotiations appellee with entered into weakening practice, produced shingle for license manufacture the cov- shingles, effect he had appellee’s application; ered drawings shown in vented appellant’s negotiations not result se- application appellee, which did curing appellee; and a license from that dur- body of the the notch include negotiations appellant ing course of stating, repeat above from the told had invented appellee' never that he The record cross-examina- shows give rea- shingle. appellant similar When ashed tion testified as follows: why appellant re- him, he son did not so tell “Q. you And make claim plied shingle re- : any way “I didn’t inventor which tab ends comparable shingle I sembled or beyond extending A. itself? ob- application had made It will be on.” not.” negotiations served that these time Yet only shingles appel- shown in appellant had not filed lant’s drawings issue, referring evidently beyond in which the tab ends extend application upon patent secured This, together itself. the fact with further refutes appellant when made his attempted explanation thought here in appellee’s he had had issue access patent of October covered together with further fact which he claims have invented he sought appellee secure a li- cense to specific type manufacture the The testimony also dur establishes that own subse- negotiations between the course of the quently filed, appellant de- convinces me that appellee, whereby rived appellee, the invention from appellee attempted to secure license from appellee’s alone was the disclosure covered manufacture ap- basis of and appellant’s the reason for placed in by appellee’s application, appellee plication here in issue. copy appellant’s attorney the hands of facts, all clearly view of I am these appellee’s application here in issue and appellant, being junior thereto, entire' file reference party, has not sustained the burden *6 appellant convincing that he entitling priority, him award of application pending valid entitled decision Board of should thereon for shown affirmed. es drawings. It is thus that at tablished the time that issue full here in he had knowledge appellee’s application and UNION TRUST CO. UNITED STATES. This, exact therein invention -described. No. J-575. positive coupled with his the rec admission not (hereinafter to) ord adverted did Court of Claims. specific shingle appel invent Dec. lee’s which is same appellant’s application, is convinc shown had abandoned ing me idea that his of 1922 constituted whatever, and he was of construction of body notch would weak and detract useful from its
.en appears ap Thus it that not did ness. pellant’s construction of the convince him of the board of such a but utility of that he sat utility was not of that it rea isfied view sons this fact it stated. assume, Appeals, fair to the Board of as did the mere construction of utility, that, establish its to con a valid reduction to it should stitute put actual use ex roof posed utility the elements thus dem be, However this onstrated. the con appellant, clearly duct established regarded convincing that he experiment as an abandoned only.