*1 63 COPA GOULD,Appellant, Gordon
Arthur and Charles H. L. SCHAWLOW Townes, Appellees. Appeal
Patent No. 7511. Court of Customs
United States Appeals. and Patent
Aug. 4, 1966. *2 counsel), for City,
mer, York New appellant. J., Chatham, N. Torsiglieri, Arthur J. City, ap- Cave, York New B.
Edwin pellees. Judge, WORLEY, Chief
Before AL- MARTIN, RICH, SMITH Judges. MOND, Judge. WORLEY, Chief decision appeals from the Gould1 Interferences of Patent the Board sub priority of invention awarded counts ject in four forth set matter and Townes party, Sehawlow the senior reviewing volu (Sehawlow).2 After light appellant’s al minous record finding error, legations but of reversible none, decision. we affirm apparatus an relates invention The by stimulated light amplification by radiation, known better emission acronym “laser.” amplification of elec appears that tromagnetic stimulated radiation realized first radiation was emission operating practical devices3 basis on a range. frequency The microwave as the record is described laser opti principle to maser extension infrared, wavelengths, visible i. e. cal light. in what matter No ultraviolet electromagnetic spectrum portion of the appears Darby Darby, City, designed operate, & it New York (Robert Keegan, Harvey is a R. maser-like device W. Morti- of a heart application Laboratories, 1. corre- involved counts Gould is Serial Inc. assigned 804,539, April 6, 1959, 4, 5, spond of that No. filed and 9 claims Inc., subsidiary TEG, patent. 1960 to here, Corporation. Dr. Townes Control Data November interest At the time of alleges conception physics professor Columbia the time at was a issue, University a con- also served invention he was graduate physics Telephone Laboratories. student at Bell Columbia sultant employed University as a re- and also a research worked as Dr. Sehawlow Telephone Labo- physicist associate Radiation Lab at Bell Columbia search oratory. subject While the matter of his ratories. thesis no relation to lasers or bore de- of such the invention It seems masers, his work at Radiation Columbia amplification vices for microwave Laboratory pumped optically related to radiation, known emission stimulated microwave masers. “masers,” generally attributed party to who is a Dr. Townes Sehawlow and Townes same involved 2,929,922, contributions For his March interference. Patent No. issued field, application July 30, he shared maser on an filed assigned physics. Telephone Prize in to Bell Nobel cavity employed working medium, generally gas operation. solid, containing which characteris- in microwave masers atoms molecules energy tically order of has dimensions which have one or sets of centimeters, wavelength, g. ordinarily 1-100 e. levels. Unlike the situation one light conveniently employed prevailing cannot be amplifiers a volume of matter equilibrium, the shortness because where the lower light wavelengths. (10-5 cm) of states of the material will be more —10-2 *3 heavily Rather, cavity populated which has is utilized with atoms or molecules a higher energy levels, or of thousands than the dimensions on the order the laser wavelengths. working light Typically, medium contains material in more of higher energy cavity by populated is formed which a defined the counts level is significantly greater parallel optical by pair spaced, plane, a number of a energy reflectors, par- atoms one of which is than is a lower level of the at least tially working transparent, members material. non-equilibrium medium in and side A such a through energy pumping ad- condition is said to have “negative, spontaneous population” an “inverted or mitted and some of the temperature.” emission, deviating The stimulated means used to undesired excite “pump” working perpendicular or from an medium to its travel axis cre- reflecting population plates, ate an inverted or to the escape. end is allowed atoms may employing pair comprise molecules laser a a source The electromagnetic energy, opposed example, a is now termed reflectors strong light wavelength of suitable di- Fabry-Perot laser, structure since the rected at the medium. so-called involved is reminiscent of the Fabry-Perot interferometer used The record also shows that a medium years. physicists for a number population in which a inversion exists output may desired beam of the laser is built be stimulated to emit its stored en- ergy by energy (microwave energy up amplified by repeated passes wave back light energy in a “maser” and in a along perpendicular and forth the axis “laser”) frequency correspond- of the reflecting ultimately plates, to the end energy separation to the of the in- through passing cavity out of the pair energy levels, ampli- verted thus , reflecting partially transparent mem- end fying stimulating signal. In marked ber in coherent form. light contrast to white a whole an ly manner when excited atoms herent” lated emission is both used to describe the light) with the to a emitted in a light emergent gence device here under conditions of stimu- istics, monochromatic nature of the emitted return to a lower electric radiation means for counts cavity spectrum requisite (a spreading). comprising light “spatially term used to describe the resonator to enhance the emerging random, bulb, the interference relate pumping energy light undergo colors coherent” which consists of energy level, tendency “temporally level character- non-directional from the laser active spontaneous- diver- little which is medium, (a medium sun or term co- waves, fication ent tion. pression als apparatus amplifying counts Count With and means parallel members chamber a chamber medium keyed reproduced 1. A “laser.” general The Schawlow the term employ to which we “optical disposed members performing maser stimulated radiation [15], advent Fig. 2 of the Schawlow meaning [14] [20] As a below, pumping “maser” maser” generator having end negative temperature of devices within arranged expression “maser.” patent [16, —molecular emission consequence, the representative: has assumed said 17] said added numer- than uses function comprising about said denote an capable of reflective and side chamber, of radia- medium, the ex- micro- ampli- pat-
9H being transparent said side members to or radi- pumping energy ated thereat. *4 controversy Some has arisen in the Conception parties’ argument briefs and at oral attempting discharge his burden to the various forms laser devices proof, primarily Gould relies on his scope within the of the counts. We find testimony coupled own with Exhibit unnecessary it to treat issue for which is bound notebook identified as reasons which will become evident later Pages notebook 1 to #1. opinion, proceed and will on the pages here, relevant were witnessed No- assumption that the counts as broad are 13, 1957, by notary public. vember as Gould asserts. notary that, testified while he did not read the contents of that notebook rely Both Schawlow and Gould and would not have understood them had filing July 30, 1958, on their dates so, pages he tried to do “those were April 6, 1959, respectively, and for con signed full” at the time he on the mar- practice structive reduction to subject gins. board, “insignifi- but for two interference, matter neither exceptions” relating cant to additions party alleging an actual reduction to making Gould admitted after the date of practice prior those dates. Under notarization, accepted 1 as a is, course, such circumstances it well “genuine and authentic document exist- established law that interference ing substantially as when notarized.” junior party, Gould, prove here must However, preponderance pages a ception the board held that 1 (1) of the evidence con of Exhibit 1 did not prior July 30, disclose “an subject of the invention operative 1958,4 (2) embodiment mat- counts,” stating: reducing ter of commencing it to from * ** jn just prior July 30, time to his particular, the notebook filing April date of specifically 35 U.S.C. No. 1 does not indicate how 102(g). The light § board found pump applied that Gould is to be prove had conception failed to either medium active nor sides diligence. cavity We shall transparent consider those is to the laser separately. sues light. Gould himself testified that filing Schawlow and Townes testi- submitted it date. The board did not find mony documentary necessary evidence, exhibits to estab- nor consider lish their earlier than their do we. the disclosure of the Notebook No. 1 [******] explicitly a laser possibilities
does not show are several There being transparent excitation: “side members thereat” belief that pumping although he did indicate his it was energy obvious that transparent radiated such ternal A. [******] discharge. Optical excitation * from an ex- of the side the construction mem- narrow beam Figure apparatus bers of light (coherent) B. The beam * * * Although the disclosure. emerge partially trans- urged that one skilled the art mitting mirrors as a wave which was would realize that the walls of the tube plane a fraction of to within wave- page illustrated on 1 of No. Notebook length, that is the beam would have and, specifically, 1 were non-reflective angular divergence At 10-5 or better. pumping were to both beam a distance of one kilometer the 3 v light would have broadened centimeter. prepared we are not to ac- long Thus the beam could travel dis- cept this unsubstantiated conclusion. essentially Ap- tances unweakened. drawing Set forth below are communication, plication to radar etc. associated Gould’s notebook which text are obvious. *5 conception: he relies on to establish true, noted, It is the board rough Some calculations that his notebook Gould has conceded feasibility Light of a LASER: Am- many not state “in so disclosure does plification by Stimulated Emission of of con- words” that the side walls Radiation conceive a tube terminated templated “transparent to the device by optically flat pumping energy to or energy of radiated However,
thereat,” requires. as count 1 relatively a submits that “even layman” able to un- untrained should be apparatus the disclosed derstand that meets the terms of the counts those partially reflecting parallel mirrors. respects, erred and that board might The mirrors silvered multi- testimony failing expert to consider layer interference reflectors. The latter his testi- issue. addition to own may high are almost lossless and testimony mony, expert introduced depending reflectance on the number layers. practical 1 con- of intended to establish that Exhibit A achievement is 7-layer sufficiently in the visible a con- re- a full and clear stitutes 98% flector. ception ordinary one of skill enable operative to build an laser. Schawlow plane standing Consider a wave expert show also introduced the tube. There the effect of a is 1 was in that insufficient cavity; wavelength closed since the is experts respect. small tes- the diffraction and Inasmuch as hence the negligible: lateral loss is regarding tified in material writ- ten in 1957 we are unable to If the tube contains excess of much, any, if their determine how views higher state, atoms in a electronic a by knowledge might be affected plane travelling may grow by in- wave requisite ac- device ducing structure of a laser atoms, transitions * * during intervening years. quired At must add to the wave *. field, length rate, quote con- in order illustrate the we from their tes- flicting experts timony.5 in this even the views
*6 5. For University Franken, been more ing medium, Dr. Peter Bender of the allowed substantial high degree essential elements giving structure ducing population Another Gould verse the necessary, purpose. cussing structure with the siderable ly pumped? sion this condition of three that we have been course A. patent phenomena being transparent. However, pears notebook number one. degree of radiation to enter ample A. The notebook ity gested Fabry-Perot type structure discussing, cant elements enumerated structure? consists so called examples a Standards, laser, assuming Q101. the atoms or molecules to [*] Q81. Are there Q82. Is Q62. What [*] Q61. And Q60. [*] Q42. What does a Q41. What a few of the example, end, It does refer to the side members consist considerably longer some feed-back of radiation of structure. a to necessary of such a structure dimensions, in that claim in a laser? A. The use of a A professor and with the of flat degree * * tome of such a structure? A. The [*] i'fi $ equivocal Fabry-Perot it in order I believe third essential of a laser medium and means for of coherence” coherence. Michigan, A. what that we have been dis- testified that I an one of Gould’s cavity? type a structure believe A. notebook essentially? implicit requirement in some of the related Yes. to parallel be resonant count that it inversion in the work- witness, [*] # Hi one of the coherency energy generation way reflecting type any permit of structure is a the implicit suggests you accomplishes than Dr. Bender: He further stated: It to achieve a Fabry-Perot laser, appears longitude you gave National Bureau physics 1], can A. Yes. cavity. further than the trans- tois which we are stated was the talking cavity. mirrors. >fs [*] modes of the [Exhibit 1] one of three the and “which “capable besides the Dr. Peter is also of you general mirrors in Gould’s be there witnesses, A. This just obtain a pumping this simplest addition being optical- emitted signifi- dimen- about? an ex- obtain [*] [*] con- high sug- pro- cav- the ap- [in at is ? your question and a means of medium. would that parallelness ferred bers serve flectivity that this document teaches length significantly greater members? that must through ly there a sufficient disclosure for one ordinarily terminology expressly? members? A. here. A. would not. have mind? cated. hibit members isn’t ferring does not instruct me to plane, parallel, partially reflecting bers? A. Yes. On description cavity direct Gordon “Fabry-Perot” cavity usually mind? A. diameter particular type particular Fabry-Perot rors characterize it as a Q88. I Q118. Q115. Q117. Q116. The device that Q40. Q114. Q39. [*] QI13. Q38. ^ Fabry-Perot common the notarized and ask want to add that I use presumption produce way? I is, 1] separated you you teaching Referring disclosed in that document? specifically Does What are the Professor the active medium. have non-reflective side mem- What, Does it If Why Does it page the term ^ 5(5 type skilled I more The build it with reflective side usage today only you means A. you A. project pumping type. the mirrors. the side members? page referred to mean how would I this document use specified. consists do not cavity lajser, notebook, with construction of the side separation láser? then, were to build Because in this instance if there is an a structural specifically What pages, to this Exhibit No. These [the containing cavity. Franken, have reflected Fabry-Perot myself described an that respect the art I would be the appear you structure of maintaining features me, and, am device A. do A. The words the side are not this document figure as one optically [*] you is because describe not build it of the interpreting further you specifically, let to Exhibit the active I am re- Yes. to the re- in Exhibit specifical- suggested to follow than the function; radiation find that addition, me now do and the of this find in optical device, optical plates mem- $ [*] indi- your mir- it is flat, side Ex- this you the on, in- go A. A. [363] F.2d — charge. respect states his brief with If the medium within the optically to the nature side walls of dis- the the tube is to excited be discharge clearly por-
closed device: an some external transparent. tion tube has to of the requires The count the sides already Gould has stated that the flat transparent pump- tube be to the ends of the tube are reflective ing energy. clearly taught by This is 98% impossible so it is to fail to un- the Gould disclosure refers optical from the excitation from external dis- derstand disclosure parent
art A. way according in this which was the manner in the construction the bers is undesirable before, would be constructed to the laser medium indicated? energy. A. structed vide discharge. constructed apparatus, other page structed full answer about other transparent don’t mean all ly. document, think so. would be constructed transparent previous parent energy? the energy? exact rangement energy. absorption bands, aspects of the matter either Q131. s}: Q124. Is Q119. Would one Q133. Q130. 4* Q132. this pumping energy. We ingenuity A. optical nature of constructing energy, art notebook. notebook. of the notebook transparent November, 1957, If the Are the side question. Specific I I Whether ** s}s To conjecture. $ let us believe radiations, would am structure one of excitation from a mechanism for . specified clearly November, It would not would the clarify my to your opinion? design the device in the device referring my previous the sources. pumping pumping geometry instructions absorptive well as the the say side $ such specified, ordinary skill in the device described I A. As or not that instructed am of the side mem- ordinarily in this notebook. by person With are were teaching members of the energy, members trans- as to eliminate have surely trying takes absorptive one ^ side walls be apparatus Gould, would it be back not included I mentioned energy of that ar- these walls question, an external which this nor to be respect depend particular ordinarily go question, pumping pumping pumping obvious- be con- care of this A. skilled trans- about these get same sfc $ is a pro- con- my to a I I rett in view of both that conclusion is reached in view of the what 1 to what tified likened admitted absence of clear Perot bear the spaced respect hibit No *7 is would serve or A. point specific of the notebook skilled charge Schawlow’s book. Although hibit characteristics obvious respect how such excitation is definite statements citation ternal might method respect disclosure operable narily parent excitation? active Q134. Can Q60. Q94. [*] Q54. sj: [*] Q46. Fabry-Perot the sentence of Bell ato : specific relation the There is previous device, it is never made clear how flat 1 of how the the side 1 of what or elsewhere have some skilled medium? A. No. discharge Fabry-Perot device, particularly to the Is there Is there Does Exhibit to the structural from an external the side walls. Nor is it instructions. laser Dr. parallel [*] [*] $ is now known as a it? A. device disclosed Telephone Laboratories, in Exhibit 1 and pumping your opinion, expert, A. No. disclosure is physicist art Franken, question you say anything be walls would be trans- pumping parties’ cavity is bearing side following any kind of satisfy mirrors. 1957? [*] [*] $ used to November, the side page 5, “optical ex- that I can make to Not from this one requirements. in Exhibit 1 as Dr. light an active medium? radiation and indication indication be walls consists like Dr. with to 1 discuss A. The sentence C. coupled on that. could teaching radiation some of A. from the made at % [*] external [*] be followed the provide G. by Exhibit discharge.” walls necessarily regard achieved. No. build an teaching B. Gar- an ordi- Bender, only Fabry- in to the note- clear # [*] $ This with with with only Ex- Ex- this dis- tes- not are the ex- to fact, transparent unimportant. unap- sides of the pumping energy, are What tube was by “optical preciated apparent- (and that Gould also discharge.” ly by initially Townes, too) an external excitation from was [*], Schawlow to be the sides clear from Gould notebook No. 1 that flective, bers. For the case he vant; standing wavelength is small the diffraction and hence the lateral tween the uration and simulate a closed er] that diffraction effects are small there In other nature wave in a Gould said dicates that if it reflective with little effect flective could be the tube. dent striking the side members. would be explains stitute a closed “other ent. In answer to statement is in which ested. Such wave dicating effect of laser end members “Consider such wave. sion was concerned [*] Gould’s statement Counts and also call However, actuality. only wave light. that for such a transparent can be reflective or non- they of a closed energy. [*] end words, the tube would a expected are bouncing light wave. nothing the side members is irrele- nothing two That plane If the side walls cavity prefaced plane members and urges: [*] He bound is to be end through for the case cavity. is, they * * were argument standing states “there is This plane cavity to be to or about the side mem- loss is standing having subsequent back and forth be- cavity; members, [*] particularly wave prevent primarily not for also noted that this corresponds standing explains the statement the dominant actually field analyzed [*] parallel re- negligible.” it is marked clearly wave, postulated not closed wave” this [las- since the transpar- It is evi- the the sides were sides the loss without parallel config- discus- cavity. clearly [*] inter- plane quite wave why con- fact one the re- in- in- brief: walls to quoted from Exhibit 1. light *8 lengthy Schawlow It is stood the Gould, transparent unless the side members were made could also be in a additional undesired flective of refleetive) This beam of the the As the bounce off the side walls of not be * * * latory modes could flectors. the fact perpendicular ed) light could be emitted over a wide English, useful, narrow, lased if derstand this range low’s words, cited number of modes were that there ingly, ously tion. able * * * “Additional undesired oscil- Gould’s maser a they as evidenced rays urged side walls tendency plurality microwave because failure statement produce non-divergent simultaneously output made no effort to excited” produced. necessity were points interchange which were almost turn, last It is now known angles that Gould awas the of the stimulated Fabry-Perot it was not a would not be restricted reflective, rays of a did intuitively word in simultaneously out: laser appreciate contends stimulated absorptive (i. above] [referring modes expertise. almost maser, and thus the problem and, the It is not then of laser the last laser also non-reflective oscillatory parallel plane light rays was understand- laser perfectly means, likely possible provide non-diverging and thus the the area are made in terms of that a slightly laser would light problem to oscillate to Sehaw- that simultane- paragraph argument, (stimulat- his In other recognize to be precisely beam excited. e. already accord- a solu- under- highly modes light, when large there could reply plain non- side dif- un- ex- re- re- standing plane wavelengths which a wave was ferent and directions. * * considered, were, Appellant’s reply the side members brief takes 916 necessarily position complete conception, show that Gould a free perfectly doubt, ambiguity understood or he and such as would because
postulated that device he enable the inventor or others skilled described provide conception non-diverging would art to reduce a beam. practice postulate It is to further exer- difficult to how this without see (Emphasis appreciated establishes cise in fact of inventive skill. that he supplied) that non-reflective side members were essential to this desired result. Obvi- agree board that We with the ously appreciate if he to by preponderance failed that of the proved a has not reflective conception side walls resulted in ad- laser of the his that evidence diverging beam, ditional modes and a included 1 in Exhibit device described non-reflective, he believe that he would achieve are which side members non-diverging independently beam to viz. of the nature of the side walls. energy, stimulat- particularly undesired light, radiated thereat. above, As reflected ed most the testi- mony parties’ arguments and the assuming purpose dis- herein- But even quoted before board, concerned with wheth- cussion, did the er Gould prov- conceived a discharged laser device with properly his burden “transparent side members absorp- invention, to or ing conception of the tive of other thereat,” case, radiated must he still is the do not we think referring reducing light to diligence stimulated laser un- prove reasonable desirably deviating path perpen- from a to in order dicular to the reflective end question members. prevail. now consider. we That Diligence clear from the We think expert parties and contentions of the diligence dur- To reasonable establish pages 1 of Exhibit just prior to period from critical susceptible interpreta are tions, of numerous 1959, 1958, April 6, July 30, ostensibly plausible, each testimony; principally on his own relies actually mind when what Gould’s 9, wife, Ruth; that of his pages. opinion, In our he wrote those represent a “distilla- notebook said ambiguous is too Gould’s notebook #1 from November tion” of his efforts jüstify pos that he conclusion 1958; testi- and the 1957 to December permanent “a idea sessed definite relating attorney mony patent of his invention,” complete operative joint activities from December to their or that made his invention “suffi he April 1959. 1958 to ciently plain enable those skilled question raised has been Little or no the art to understand it.” See Town by con- either the board Schawlow 292, Smith, send v. F.2d CCPA 36 17 diligence cerning from Decem- Gould’s 647. 6, filing April his date ber Mergenthaler As was stated in v. Seud- during 1959. record shows that der, App.D.C. 264: attorney prepared the that time Gould’s drawings concurrently if be exhibited present application6 But while on, infringement engaged 40-day patent and relied con- as evidence in a invention, ception they must Utica, Under New York. trial points out ac- Schawlow similar issue. Schawlow contends tivity filing patent directed his re toward been deemed circumstances begun only application appears convincing proof quire to have 1, case, saw, might after Gould on or about December than otherwise have been preprint paper published Downs, citing of a F.2d Andrew App.D.C. December Schawlow and we has Since find Gould Physical proving Townes Review. not met his burden of preprint, substantially diligence by preponderance identical text of the evi printed unnecessary article, dence, described in rule on detail think it we *9 particular presented laser invention in here Schawlow. issue circumstances, To end not think he visited Stevens Institute we do further that Technology sometime between No- activities Gould discussion February 1958, attorney during period 1957 and where that of time vember his necessary. Professor Bostick told Gould that there were insufficient funds at available Ste- appears from Gould’s support field. vens work the laser recording alleged that, shortly after his Gould stated he described laser “in cog- 1, he became in Exhibit great detail” in March 1958 to his high potential of build- nizant of the cost friend, Berman, Alan an Dr. individual device, proposed and also became his “knowledgeable masers, in the area of experimental “aware of the considerable generally,” upon seeking employment to dealing with the alkali difficulties work on the laser at Hudson Labora- elements,” proposed material he tories, where Dr. Berman was associate working notebook. medium that director. began possibilities He to consider “other * * might build,” 1958, March that be late Gould left Colum- easier stating University completing “I in bia was more interested without his degree joined seeing trying requirements, Ph.D. built than and it [the laser] TRG, myself my patent According protect at interests.” staff Inc. Gould, leaving the- his reason for He testified that he worked such Columbia evenings joining oppor- and tunity oretical considerations and TRG was to have an libraries, experimental home and in do weekends work on the laser, studying background having large “a amount of understood from his inter- making “rough Daly company views with Dr. material” calcula- background opportunity that he would connection with that have such an tions completing assignment example after material.” As an his some initial things during period relating on a research he did contract to a ru- gas frequency standard, proj- bidium stated he of a Gould “conceived number occupied pumping ect mechanisms besides time optical “maybe May pumping,” spent until the end of While on searching project, that cept hundred hours” “M.I.T. disclosed laser con- he his length wave co-worker Newstein. tables” coincidences be- His next project strong spectral proposal was tween to write a lines to find “ele- build occupied optically pumped.” a rubidium ments that could maser which his 13; ensuing time until also described laser June in the He invention “briefly” patent attorney through October, appar- to his months Janu- Gould ary ently engaged experimental advised at time was work University that Columbia on the would have no rubidium maser.
patent rights in that invention. The During his free time March to attorney, motivation for that visit to his busy June Gould stated he “was stated, was that he realized “more formulating writing down in a note- important develop- and more what principles book the of the laser.” The be, having ment” the laser would written apparently notebook referred to is Ex- constituting the notebook Exhibit 1 and hibit about which we will having study made a further of the back- say later. Gould testified he took ground material. days July, off from work at TRG 6% telling Goldmuntz, president, In the belief he would not be to do Dr. able TRG’s experimental writing work on the laser at Co- he wished to finish his University complet- Actually, stated, lumbia until he had thesis.7 the real thesis, simultaneously purpose taking get ed his time off was “to sought facility written,” to locate a this laser research where notebook since he experimental believed work could be done. he would never finish it that, during 7. Goldmuntz testified the summ of Gould did ask for off “to work time matters.” his thesis related *10 sig- specific only do not corroborate on it reasonable time giv- directly evenings. related to acts testi- nificant on Gould weekends ing physical days August, embodi- a in the invention fied took off two he frag- days far days 13y2 too September, in ment. Such evidence in three mentary, inference days to mere and leaves for and 12 November October actively engaged August, purpose. In that Gould was same practice concerning reducing again to dur- the invention talked to Dr. Berman ing period. not laser, We are explaining this crucial “how it worked and prepared this inference. applications to make be.” what its 1958, September Toward the end disregard Nor are we. Even were we to Gould first informed Dr. Goldmuntz necessity for cor- moment concerning laser, and was his ideas give and thus Gould’s testi- roboration assigned write, subsequently on com- mony weight properly full time, describing pany proposal8 a testimony an interfer- corroborated building By it. device and methods of testimony entitled, find the we ence pro- the middle of December adequate- in and of itself insufficient posal completed and submitted ly when he what did and establish government agencies various and Aero- attempt has been made to did it. Little jet Corporation General for evaluation. identify activity particu- particular with Projects Agen- The Advanced Research during period of lar times the critical cy subsequently a awarded TRG research July es- to December concern — pecially July, totaling nearly contract million dollars August September subject development of the matter activity 1958 —or how such to establish proposal. of the reducing practice related the sub- ject view, In our matter of the counts. Summarizing his activities over testimony as a does Gould’s taken whole period November 1957 December adequate support forth facts to not set spent “ap he Gould estimated finding continuity activity of that proximately acquir hours” thousand diligence. which constitutes knowledge him which enabled Merely stating that no there were weeks expressed devise the ideas or he on months that “did not work 9, and that or there were no months enough, supporting laser” is absent during period weeks in which he showing specifically facts what did not “work the laser.” it was “work” consisted of and when commenting Gould’s evidence performed. diligence, the board stated: * * * we do not find that suffi- Much of more detailed cient account has been made of the testimony, above, summarized relates as period critical so that we can assure period to March November 1957 unexplained lapse no general ourselves Apart from his assertions appears therein. as Occurrences such there were no weeks or months participate Gould’s failure to in the laser, he did not on the 1958 that work reconditioning in the his boat activities we find the relevant spring such July September conversations 1958 referred to taking those with co-worker Newstein at off from Gould are his acts of TRG, and with Dr. Alan Berman Inc. work months and his at TRG those parties May August, August.9 beach Berman in discussion with Dr. part proposal 8. While that is not laser of counts to present record, overcoming way shows that in the of a obstacles devices, Something practice. describes various many as well reduction to systems incorporating laser devices. keeping than mere conversation required idea under consideration agree We the board that Gould has diligence. August constitute See Cottrell not shown the relevance of the reducing Shafer, conversation with Dr. Berman to 97 F.2d 25 CCPA 1171. failing basing board to consider asserts the board erred erred *11 Ruth, testimony wife, question of his as to his its decision as to the of dili- gence diligence throughout period. part critical on the extent which days position It Gould took off is Gould’s that his wife’s tes- from TRG to record own, timony, pro- his ideas in considered his Exhibit 9. While with diligence require support” proposition does not vides “basic that one aban- continuously working don his means of he was livelihood to further “throughout year practice, his on reduction to was 1958” refine- incum- necessary achieving upon Gould, rely bent if he ments less com- intends taking plicated on the of the laser time from his normal reduction employment diligence, invention. as acts of to es- tablish what was when done and it was Although the did not board mention Merely stating, example, done. testimony, Mrs. Gould’s we will examine days July, days
he off took 2 6% testimony greater her in somewhat de- August, days September and 3 does emphasis tail in view Gould’s thereon not us enable to ascertain the extent of examination, here. On direct she stated gaps activity. time in his The months that, prior apparently shortly to and July August, bracketing Sehaw- incorporation after Gould’s in Novem- entry field, low’s into the are critical ber 1957 of his ideas in the case, lapse nearly and a two constituting notebook Exhibit 1: days y2 months would result if 6 were [working supposed He was to be on period taken at the start of that and the thesis], spending his but he was days 2 party chargeable at the end. The as much time on it as he should have. diligence must account for the en- spending working He was most of it period during tire on the laser. required. Gould has not done so here. She further stated that at “that time” As in Smith, Ireland 95, 97 F.2d 25 he worked or four “three times week” CCPA 1258: reading desk, “calculating, his lit-
probably diligent [*] surmise cannot We may surmise that take the place appellant but mere proof was counsel elicited erature.” she On cross possessed a Ph.D. examination, testimony that, although degree Schawlow’s biophys- to an interference not met. bility his because tional evidence position acts has arisen strengthen or able interference ing the inventor’s accept providing adequate long standing requirement diligence, diligence, of truth of an inventor’s requirement invention. his uncorroborated any event, present proceeding to demonstrate no which we feel Gould has relating tending reflection of the law of reason statements that a court evidence contradict there is corroboration opponent to confirm and upon rarely testimony. as to necessity for addi yet refuses proba in an party in a an his tivities said to bear of Mrs. Gould which can University, ics, sity in March 1958: sers, rect as well left Columbia laser, continue, she [******] RDQ83. And is, RDQ85. your understanding? in our after he left Columbia Univer and not on the understood Gould’s work on la- this work at home? “only vaguely.” following colloquy opinion, And how he his work at Columbia relation to Gould’s ac from the time was thesis, according working only testimony long did reasonably A. Yes. on redi that he I refer recognizing validity you pro- While to the time a contract when principles, you posal above of which were contends made advised.10 Did however, pages this work contin- first that the were ue until that Definitely. August time completed by 28, 1958, ? A. vir- signature placed tue of the and date RDQ86. beyond? And A. I am therein A. Wills. The Lawrence any sharp not aware of time when if concluding page is dated number 87 really stopped. It seems to me (by December Richard T. Da- the time he said he had conceived the ley and December Gordon continuously idea he was Gould). it. points Wills out that Schawlow Searles, In Kendall v. 173 F.2d *12 appear signatures Daley, dated whose CCPA respect this court said with 9, were Exhibit pages of and 87 testimony: to similar the to establish witnesses not called authenticity testimony appellant’s The other dates, signatures the corroborating witnesses, namely, his introduced has been no evidence and that son, general wife and of a was nature testimony Ex- than Gould’s other appellant the effect that from the on those in existence 9 was even hibit time of his worked contin- argues that Gould also Schawlow dates. uously development on the of his idea. pointed relevance out the has not evidence, Their specific which was not 9 to the of Exhibit of the contents much subject facts, as to dates and does consti- not portions or what matter issue corroboratory tute the kind of evi- may ato reduction said to contribute be required appellant’s dence to establish practice. diligence during period. the critical Quite apart from those conten That applicable statement is here. broadly or tions, the counts whether view, our Mrs. Gould’s fails narrowly construed, fact remains the diligence corroborate Gould’s claim of wholly insufficient also that Exhibit is during period July-December 1958, activity continuity re to establish presumably which is the reason the diligence. quired for reasonable board did not mention it. brief, oral and at much in his concedes as piece Gould relies on one other recognized argument counsel for Gould variously evidence—the bound notebook “probably could not notebook identified as Exhibit 9 and notebook diligence.” The to his continuous attest No. “singularly 2—which he contends adequate corroboration notebook is not impressive diligence corroboration of establishes, diligence in connec if it * * through from late 1957 to De- testimony, what Gould tion with cember, brief, 1958.” In his Gould de- simply did it. We not when he did but scribes Exhibit 9: from notebook ascertain cannot testimony during comprises portion It than 87 what pages description analysis period to December from November 1957 improved forms of the laser. of the work summarized the bulk date exact when completed. notebook No. 2 do While we was 9 was accurately commenced is not depreciate known. of time com the amount not plex journal repre notebook is not but is of the sort work theoretical summary rather a might require, and a record of ex- notebook sented analyses tensive sought period to be of time the total great successful results recorded in the the notebook blanketed —on notebook we, itself. The notebook is not like order of 13 months—and every page. dated on known, way satisfying board, It our- no have just identify 10. The record does not what has been eies in December proposal” contemplated by “contract was in the there is mention noted above Gould, relating proposal counsel or Mrs. or establish wheth- record of another proposal er it bears relation to the states maser on which Gould rubidium government agen- submitted TRG to he worked in June 1958. unexplained lapses selves that unprecedented not country of this advances occurred. many in so But is not fields. such Congress wisely provided the case. has Finally, Gould contends that the board opportunity same for the inventor whose approach” has taken a “formalistic laboratory giants attic is his diligence as for the the doctrine in its industry patent ap of modern file statement: plication * * protection and obtain the there we are not convinced that he are aware of no valid We afforded. proceeding with due why reason could have taken reducing subject matter advantage timely opportunity of his practice during portion counts application file his and obtain the bene just period prior the critical prac fits of constructive reduction July 30, 1958, after the record date Schweyer did Schawlow. See tice party’s entry of the senior into Thomas, 953, 21 68 F.2d CCPA field. Clearly of Con it was the intent diligence may be, Whatever due gress who to assure first inventor asserts, appear par- *13 it to reflect a completed of in mental act had the ticularly high standard, more than the deprived not be that he should vention diligence” required by “reasonable stat- delays by of reason of his reward ute, may properly required not be reasonably not avoid could he priority.11 to establish The effect of the public. giving the his invention to holding, contends, board’s Gould is to it that mind But we must bear deny principle him the the benefit inventor reward the not alone to was that granted. patent monopoly the was that * * * An inventor who is the first get public to its reward was The to prevail, conceive an invention can advantage inventor’s of the have the no matter how limited his resources reasonably early discovery as was as may be, long and no matter how it * * *12 possible. complete should take him to the inven- re- due record with review of the Our tion, if he devotes those at resources arguments gard convinces for Gould’s his command with reasonable and con- award- did not err us that board diligence tinuous toward the actual priority ing and Townes Schawlow practice reduction to of the invention. invention. arguments Similar made been decision is affirmed. years, over the but the fact remains that presence or absence reasonable Affirmed. diligence necessarily must be determined concurring, Judge, MARTIN, with the evidence adduced in each case. SMITH, J., joins. held, properly so, Here whom the board that provide Gould had failed to sufficient proofs are my In view the discharge evidence to his burden conception of side satisfactory show to proving diligence in reduc- pump- walls are that practice. the invention to 1 refers ing energy. “Light Amplification” stimulated have us believe that his alleged and the excitation simpler efforts of radiation construct emission discharge. expensive optical less external is from an embodiment of his agree a side Thus, that penalized, I rather than re- warded, by requirement patent meeting wall that statutes —statutes mightily which have was contributed conceived. counts appears 11. Davenport, to us that 90 F.2d the distinction be Hull diligence” tween “due and “reasonable CCPA diligence” question is at best of seman Caps, tics. See Beidler v. 36 F.2d 17 CCPA 703. Leaving However, concep- physical embodiment. do not think that tion of a I drawing requirement, “transparent for the bench board work
tion of the to one’s “lapse” presumptive should not be a radiated thereat,” meaning diligence, even non-reflective side break in chain ap- bench it becomes so other modes would not be where the work walls that excited, Although parent physical is was some embodiment established. necessary expected, off, far it fall back lateral not loss was does non-reflectivity practice. concept reduction to establish a constructive' particularly where true This seems side walls. legal appli- conclusion whether my view, that is as far as this court 112 is cation satisfies U.S.C. § go diligence need and discussion of give necessarily predictable. I would dictum, clearly not been con- what has legal intervening con- little effect given ceived as of a date cannot be attorney question with an tact as the proven constructively prac- reduced to diligent the inventor whether was diligence showing tice from that date. working on invention. However, necessary find it to add the I following comments feel imply since I I I do not mean to take requirement of majority’s board misconstrued the issue with conclusion as diligence urged appellant when Rather, he and corroboration. necessary toward an actual reduction I do not find to reach the working laser, is, simply place I wish issue. stamp do not physical embodiment approval invention. lan- on the board’s guage. appellant board noted has failed prove “specific significant di- acts *14 rectly giving related to the invention
physical [Emphasis embodiment.” add- is, however, single There but
ed.] diligence regardless for
standard rely parties
whether the on an actual practice or,
reduction to as here in the case duction to ing to a cannot met constructive reduction to setting physical embodiment, specific both a standard of practice. parties, isor significant constructive required diligence board, practice seems to be acts related in look- case. any re- Frank CCPA Charles O. CLIFFORD HARRIS, Jr., Appellant, Appellees. and Chris W. Yoder, particularly here, where, This is true Appeal Patent No. 7510. highly the nature of the invention the- United States Court of Customs oretical and actual reduction to Appeals. and Patent impossibility is a financial for all but Aug. corporations government. or the I do not think that standard of penalize priv- should either the
ilege obtaining a afforded inventors of practice by reduction to fil-
constructive
ing patent application or the inventor’s attempts an actual continue toward ques- practice. To me
reduction to appellant has dili-
tion is whether been invention,
gent working wheth- preparation papers fil-
er toward application or construc- toward