This is а consolidated appeal from decisions of the Patent and Trademark Office Board of Interferences (“board”) awarding priority of invention of all counts in two interferences to the junior party Pearson and Buergin (“Pearson et al.”). We affirm.
BACKGROUND
The applications and patent
The entire “I” beam stud is formed from a single piece of sheet metal. The flat, vertical sides comprise an outer flange (layer) 22 with a 180° bend at one vertical edge and an inner flange (layer) 26 extending from the bend parallel to the outer layer 22 for about one-half the width of the outer layer. The two inner layers 26 and 50 are connected by a central web 12. The controversy here involves the provision of holes 32 in the outer layer 22 and a space 30 between the outer layer 22 and inner layer 26 of the elevator shaft side. When the stud is subjected to fire, the air inside the space between the layers is heated and rises. Cooling air is drawn into a hole at the bottom. Count 1 from interference 99,853 is representative:
In a shaftwall, a plurality of vertical studs of sheet metal, each stud having at one side thereof an inner flange [layer] and an outer flange [layer] folded back*1370 on and spaced from the first flange to form a thin, vertical passage open at the top and one side,
the inner and outer flanges being pаrallel to each other and overlapping portions thereof forming a double thickness flange,
the overlapping portions of the second flange having an opening therethrough into the space between the flanges,
the openings being spaced low on the studs to admit air into the passages, and gypsum boards secured to the other side of the studs.
In 1974, Studco, Inc. (“Studco”), assignee of Knorr, developed an “I” beam stud which had no holes in the outer layer and no appreciable space between the outer and inner layers. National Gypsum Co. (“National”), assignee of Pearson et al., a manufacturer of gypsum board, was interested in the stud, and on October 8, 1975, a panel constructed of Studco studs and National gypsum board was fire tested at the University of California Testing Facility. Both Knorr of Studco and Pearson of National were present. The panel failed to achieve an ASTM E-119 two-hour fire rating because, when the cоrridor side of a stud was exposed to fire, a thermocouple on the elevator shaft side of the stud registered a temperature rise of 325° after about 1 hour and 49 minutes. The record indicates that after the test, Knorr suggested putting holes in the outer layer of the elevator shaft side “to vent heated gases.” Thereafter, on the same date, Pearson telephoned Buergin (coinventor) and told him of Knorr’s suggestion. Buergin suggested opening a space between the layers to allow hot air in the space to rise and be vented and to allow cooler air to be drawn in.
On October 16, 1975, a panel constructed by Pearson using Studco studs (with holes in the outer layer) was fire tested (“test 500”) and passed the ASTM test. Pearson testified that, during construction of the panel, he enlarged the gap between the inner and outer layers of the shaft side of the stud (the side not exposed to fire during the test) with a screwdriver and crimped the edges of the outer layer.
Peаrson et al. argue that the October 8, 1975, telephone call between Pearson and Buergin constituted a joint conception of the invention of the counts. Their corroborating witness, Mr. E. J. Rutkowski, was present in Buergin’s office at the time of the telephone call and testified to the conversation which took place between the co-inventors. Pearson et al. further argue that the successful October 16, 1975, test constituted a reduction to practice. No witness testified that he had actually seen Pearson spread the layers on the stud used in test 500. However, Pearson prepared a handwritten report on October 16 in which he stated that the layers had been spread. Additionally, Pearson et al. introduced exhibit 24, allegedly a section of one of the studs used in test 500, to corroborate the asserted reduction to practice. Rutkowski stated that he had seen exhibit 24 the day after Pearson returned to Buffalo following test 500, or very soon thereafter, and that he had examined the stud with Pearson at that time. The layers on exhibit 24 bear marks from having been physically spread apart, as with a screwdriver. Pearson et al. also allege that Knorr derived the invention from them.
Knorr alleges prior conception of the invention and also relies on test 500 for actual reduction to practice. His testimony that he conceived putting holes in the outer layer on October 8 is corroborated by Pearson. Hе relies on the testimony of a consulting engineer, Neal L. Peterson, to establish conception of a gap between the inner and outer layers of the stud. Prior to the unsuccessful October 8 test, Peterson was employed to scale up the design of an approved 10-foot Studco stud to the 11-foot height required in certain shaft walls in the San Francisco Embarcadero Center. He testified that he performed the calculations, assuming-.a 0.125 inch gap between the layеrs; that the assumption of a gap between
Finally, Knorr takes the position that Studcо’s studs produced prior to October 16, 1975, would open up in a fire and produce the air passages between the layers required by the counts. In support of this argument, Knorr points out that exhibit 24, a stud section purportedly used in test 500, has a gap between the layers on both sides of the stud, although Pearson stated that he had enlarged the gap only on one side. When questioned about the gap on the second side, Pearson et al.’s witness Rutkowski stated:
Q. Now, do you have any explаnations for the space on the corridor side?
A. Well, I would suspect it is due to the fire test. The expansions, the movement of the test panel, et cetera would relieve some stresses in the folded area here, the edge, and result in somewhat of an opening, as well as the wall bows in towards the fire. Normally, this would help these matters to open it up some more.
The Decisions Below
The board awarded priority of invention with respect to all the counts to the junior party Pearson et al. It held that Pearson et al. had conceived the invention no later than the October 16,1975, test 500 and that they actually reduced the invention to practice on that date. The board stated:
In view of the testimony of Robert Pearson, particularly as it relates to [Pearson’s handwritten report], and the stud section, [exhibit] 24, and of admissions in the senior party’s brief ... to the effect that [exhibit] 24 is a section of one of the modified studs used in the wall panel in Test 500 run on October 16,1975 and that the gаp between inner and outer layers of the flange was enlarged with a screwdriver and the flange edge crimped prior to this test, it is considered that the studs within the wall panel tested satisfy all the limitations of the counts 1 to 10.
-.The board further held that Knorr had not established conception of the invention of the counts prior to the termination of testing on October 16, 1975.
We do not consider that the “I” studs as produced at Studco prior to the above date included vertical air passages between inner and outer flanges. The senior party’s record does not establish that Studco’s studs were produced with a predetermined air passage between flanges and it would appear that any passage between flanges in a Studco stud would have been present through chance or accident. Accordingly, Knorr’s idea on October 8, 1975 of putting holes in the overlapping exterior flange on the shaft wall side of his studs to vent heated gases does not mаrk the time at which he formulated a complete concept of the invention at issue. Knorr’s idea appears to be nothing more than the desire to vent heated gases trapped in pockets between flanges.
Knorr’s position that Studco’s studs produced prior to October 16, 1975 would expand in a fire and would thereby provide air passages between flanges is not established, i.e. as by inter partes tests. Nor has he established his position that as of the October 16,1975 tеst his belief was that in a fire a gap or passage would form between flanges of Studco’s “I” stud.
Regarding consulting engineer Peterson’s testimony, the board stated:
It is not considered that the testimony of Knorr and Peterson, and document KX 111 are sufficient to establish that Knorr suggested putting openings in the flanges of the studs to be used in the Embarcado*1372 ro Center building. Peterson does not corroborate Knorr’s testimony to the effect that he told Peterson that there must be a gap between flanges. Pеterson’s testimony merely indicates that his computations assume a gap to exist between the folded over layers of the stud flanges on both the corridor and shaft sides. Peterson does not state that Knorr instructed him to assume such a gap.
Finally, the board held that Knorr had failed to prove derivation by Pearson et al. because Knorr had failed to prove prior conception.
OPINION
Issues
The issues presented on appeal are (1) whether the purported conсeption and reduction to practice of Pearson et al. were adequately corroborated; (2) whether Knorr was the first to conceive the invention of the counts; and (3) whether Knorr conceived and reduced to practice an invention which inherently satisfies the limitations of the counts.
Pearson et al. Conception
Knorr argues that the telephone conversation between Pearson and Buergin following the failed October 8 test was not adequately corroborated by Rutkowski, who wаs in Buergin’s office when Buergin received the call from Pearson. Rutkowski testified that when Buergin received calls from Pearson following a test, Buergin would “often talk off to the side” to him, telling him what Pearson said. Rutkowski further testified that there was some conversation about putting a hole in the outer layer and that Buergin suggested “using something to wedge out and open that folded space on the shaft side .... The idea was to get a flue or chimney action where cool air would come in аnd cool that face of the stud and subsequently get a lower temperature reading on a thermocouple.”
Knorr contends that Rutkowski’s corroboration is hearsay, because Rutkowski could not hear both sides of the conversation.
A threshold question is whether the issue of corroboration of conception was properly raised below. Pearson et al. note the “longstanding rule of practice that the Court of Customs and Patent Appeals will not consider issues raised for the first time which were not argued to or considered ... below.” Triggiana v. Gens,
Pearson et al. characterize the October 8 conversation as a “verbal act,” to which the hearsay rule does not apply. Subdivision (c) of the Advisory Committee notes to Fed.R. Evid. 801 states that the definition of hearsay includes only statements offered to prove the truth of the matter asserted, and that “[t]he effect [of the definition] is to exclude from hearsay the entire category of ‘verbal acts’ and ‘verbal parts of an act,’ in which the statement itself affects the legal rights of the parties or is a circumstance bearing on conduct affecting their rights.”
We are persuaded that the conversation between the coinventors was a “verbal act” affecting the legal rights of the parties. Evidence of what the coinventors said to each other is not offered to prove the truth of the statements themselves.
Nevertheless, we are persuaded that Rutkowski’s testimony is corroborative of conception for two reasons: First, no timely objection was mаde to the testimony when it was offered. Myers v. Feigeiman, 59 CCPA 834, 842 n.12,
Pearson et al. Reduction to Practice
In order to establish an actual reduction to practice, the testimony of Pearson et al. must be corroborated by independent evidence. Reese v. Hurst,
As such independent circumstantial evidence, Pearson et al. have introduced exhibit 24, a stud section which has visibly been subjected to a fire test and which also satisfies the limitations of the counts, having holes in the outer layer and a space between the inner and outer layers. It appears that the layers were spread apart, аs with a screwdriver. Rutkowski authenticated exhibit 24 by testimony that he had seen it shortly after Pearson returned from California following successful test 500 and that Pearson had told him this was a section of the stud used in test 500 which he, Pearson, had modified by spreading the layers.
Assuming, arguendo, that the authenticity of exhibit 24 is before the court and has not been admitted by Knorr, we are satisfied that Pearson et al. have met their burden of persuasion on this issue. Indeed, Knorr has adduced no contrary evidence, but instead relies on arguments of counsel. However, arguments of counsel cannot take the place of evidence lacking in the record. Meitzner v. Mindick,
Knorr also raises the question of whether exhibit 24 is independent corroboration of the reduction to practice, particularly since Rutkowski was dependent on Pearson for the information that the stud was part of the wall tested in test 500 and that Pearson spread the flanges before the test. Unlike
Prior Conception by Knorr
We agree with the board and with Pearson et al. that the Studco studs produced prior to October 16 did not have a space between the layers of sufficient dimension to satisfy the count limitations, and, thus, fail to corroborate Knorr’s alleged conception of such a space. Although Fishеr, the director of the test facility, testified that there was a very small nonuniform space present between the layers of the Studco studs, this de minimis space is insufficient to satisfy the requirements of the counts, as is the very small space present in the physical exhibits. Further, consulting engineer Peterson’s testimony fails to corroborate Knorr’s conception of a gap between the layers, as Peterson did not testify that Knorr instructed him to assume such a gap.
Knorr’s “Inherent” Conception and Reduction to Practice
Knorr argues that “[t]he senior рarty conceived the invention on October 8, 1975 by virtue of the ‘inherency doctrine’ and reduced it to practice on October 16, 1975,” citing Foss v. Oglesby, 29 CCPA 1005,
Similarly, in the instant situation, when Knorr had the idea on Octоber 8, 1975, of putting holes in the overlapping exterior flange on the shaftwall side of his studs to vent heated gases, the fact that he may not have formulated at that-time “a complete concept of the invention at issue,” does not deny his conception thereof.
Knorr had provided a structure which would automatically provide a heat-enlargeablc gap to function as an air pas*1375 sage when a panel is subjected to intense heat. His idea of putting holes in the overlapping exterior flange was for the purpose of passing the E-119 test. His use of the holes was, as found by the Board, to create a venting capability. It is irrelevant that he was unaware of the exact theory by which they would function.
Knorr also relies on successful fire tests, subsequent to test 500, on Studco studs having holes in the outer layer but no enlarged space between the layers.
Considering that each count requires, as a positive limitation, a “thin, vertical passage,” an “air passage,” or flanges (layers) “closely spaced apart and parallel, whereby air that becomes heated will tend to move vertically upward within a gap” between the inner and outer flanges (layers), Knorr’s “inherency” argument amounts to an attempt to establish reduction to practice nunc pro tunc.
This court has long refused to recognize attempted nunc pro tunc reductions to practice. In Langer v. Kaufman, 59 CCPA 1261,
In view of the foregoing, we hоld that Pearson et al. have established by a preponderance of the evidence that they were the first to conceive and reduce to practice the invention of the counts. Accordingly, the decisions of the board in the subject interferences awarding priority of invention of all the counts to Pearson et al. are affirmed.
AFFIRMED.
Notes
. Interference 99,853 involves Knorr patent 4,047,355, Knorr reissue application 897,660, and Pearson et al. application 845,010, and includes 11 cоunts. Interference 100,127 involves the Knorr reissue application -and the Pearson et al. application, and includes one count, corresponding identically to count 11 in interference 99,853.
. Count 11 in interference 99,853 and the single count in interference 100,127 do not require a hole in the outer layer.
. Cf. Hasselstrom v. McKusick, 51 CCPA 1008, 1014,
. That Pearson was in possession of the invention before test 500 is further corroborated by exhibit 24, considered infra.
. Specifically, counsel for Knorr argue that a cut made in the central web nearly opposite the spot where the thermocouple was placed on the outer layer could have lowered the thermocouple temperature readings.
. Foss v. Oglesby, supra, involyes. only the question of interference in fact'arid‘does not support the proposition that “the inherency doctrine” may be used to establish’ a nunc pro tunc reduction to practice of contemporaneously unrecognized structural count limitations.