265 F. 981 | D.D.C. | 1920
Appeal from Patent Office decisions in two interference proceedings, Nos. 40,043 and 40,044, in which priority was awarded the junior parties, Headley and Thompson.
The parties to interference No. 40,043 are the appellant, Cox, and the appellees, Headley and Thompson. The invention involved in this interference is an automatic machine for making glass bottles, and is expressed in 10 counts, taken from the Headley and Thompson application, of which we reproduce the first:
“1. In a glass bottling machine, the combination of mold carrying means rotatably mounted, a^pair of molds carried by said means opposite each other in radial alignment, a rotatable face plate journaled on a horizontal axis on said mold carrying means and carrying one mold of each set, means for rotating said face plate to place the molds carried thereby in a vertical charging position and then to place said molds in a position to permit removal from the blanks inclosed thereby and their engagement by the other molds carried by said mold-carrying means, and means for moving said mold-carrying means.”
Interference No. 40,044 originally involved the applications of Headley and Thompson, Francis W. Pawling, and the appellee, Cox. The two counts of this interference were copied from the Pawling application, and, as there used, describe a manually rotated device for inverting the mold and swinging open the blank mold members in a bottle-making machine. We here reproduce the two counts of this interference:
“1. In a glass-bottling machine, the combination of a cylindrical carrier rotatable about its own axis, and otherwise movable only in a horizontal plane, and having a fluid pressure chamber, a mold including two mating members, at least one of which is movable relative to the other, a piston , mounted in said fluid pressure chamber, connections between said piston and the movable mold member or members, and means for turning said cylindrical carrier upon its axis to invert the mold.
“2. In a glass-working machine, the combination of a pedestal, a mold carrier journaled thereon and axially fixed with reference thereto, a mold including two swinging mating members pivotally mounted upon the mold carrier upon an axis lying at an angle to the axis of the mold carrier, an actuating member reciprocally mounted within the journal portion of the mold carrier, connections between said actuating member and the movable mold members.”
Cox is the senior party in both interferences, and the record clearly discloses that he was the first to conceive the invention of the issues. Evidently realizing the handicap under which they were placed, Headley and Thompson, when the case was reached before the Examiner of Interferences, filed a motion for leave to amend their preliminar}' statement, but, failing to state a sufficient reason therefor, the motion was denied. Dotyn to this time Headley and Thompson had filed .no motion, under rule 130 of the Patent Office, attacking the right of Cox to make the claims. However, after the adverse decision of the Examiner of Interferences on their application to' amend their preliminary statement, they notified Cox that at final hearing they would urge that the machine upon which he based his right to make the claims was inoperative, and hence that the claims were not patentable
On appeal to the Examiners in Chief, the right of Headley and Thompson to challenge the operaliveness of the Cox device was sustained, notwithstanding their failure to file a motion under rule 130. The Board then ruled that the machine upon which Cox depended for actual reduction to practice “as an entirety” was not “satisfactory,” but pointed out that, “when the case was originally filed, the Examiner required a division between claims which involved the shears, for cutting off the glass above the molds, and the rotary plunger or compacting device, which is one of the features alleged to be inoperative, and the group of claims which are involved in the interference, which all relate to the mold carrying and operating dements,” and that the Examiner had found “no necessary connection between these devices.” The Board ruled that, as “the issues cover only a subordinate part of the machine which would be capable of use in other bottle-blowing machi.ces, and there is no reason to suppose that this part was inoperative, Cox can at least rely upon his constructive reduction to practice on the date of filing of his application, June 4, 1912, and was therefore the first to conceive and first to reduce to practice, which entitles him to an award of priority.”
Thereupon, Pawling having dropped out of the case, a petition for rehearing was filed, and the Board set aside their decision and adopted the contention of Headley and Thompson that “the subject-matter of the issues is a construction in which the molds are reversed, opened, and dosed, and moved from one station to another automatically.” The Board did not attach any weight to the fact that some of the claims had originated in the Pawling application, which admittedly did not disclose an automatic structure, because Pawling had been eliminated from the interference. Tlje Board further found that Cox had not shown that his combination was susceptible of being substituted in machines of the prior art. Thereupon, on appeal by Cox, the Assistant Commissioner sustained the ruling of the Board and awarded priority to Headley and Thompson. The Assistant Commissioner said:
“Pawling is not now involved in the interference, since he took no testimony and Ills application was filed after the date established by Headley and Thompson, if liis application wore still in the interference, the question of the operativeness of that device might have to be considered; but it does not follow, even if the Pawling machine is operative for the purpose for which it is intended, that necessarily the operativeness of the entire machine of Oox cannot be considered, or that the counts must bo construed as limited to the means for opening and closing the molds, irrespective of whether this means is operative in the machine shown.”
“While we many times have ruled that a party will not be permitted to narrow his claims to suit the exigencies of a given situation, it is equally well settled that the meaning given to the counts of an interference, must be that disclosed in the specification of the party first to make the claim.”
In the Pawling specification, as the Patent Office tribunals recognized, automatic operations are not contemplated. The application assumes that the blowing operation is to be performed in accordance with the teachings of the prior art. Count No. 1 provides, and was intended to provide, mechanical means for inverting the mold and for swinging open the blank mold members. The neck mold is not even an element of this count, nor are the plunger and specific form of suction mechanism of the Pawling structure made elements of the count. Count No. 2 differs from count No. 1, in that the pedestal is included as an element, both mold members are specified as “swinging,” and the piston is referred to as “an actuating member.” Clearly these counts, as used by Pawling, embrace and were intended to embrace nothing more than a distinct subdivision of a glass-blowing machine, which Pawling in his specification states “may, of course, be incorporated in various ways in glass-blowing machines involving other features.” These claims were suggested to and copied by Cox and Headley and Thompson, and, in our view, they should, be read now, as then, in the light of the Pawling disclosure.
Affirmed as to interference No. 40,043.
Reversed as to interference No. 40,044.
SMYTH, Chief justice, dissents as to interference No. 40,044.