*1 GARRETT, Presiding Judge, and Before HATFIELD, LENROOT, BLAND, Judges. JACKSON, Associate HATFIELD, Judge. Associate pro- appeal in an interference This is decision of Board ceeding from the *2 884 that, Of- ex- appeal of the United States Patent no was taken from the fice affirming case, the decision of the Examiner aminer’s final decision in that in- awarding conclusive; Interferences that final and became subject vention appellee matter defined from thereafter single count in issue to claiming application that his earlier filed structure; that, operative disclosed and an refrigerating invention relates to a appellee not entitled to system automobiles, or cooling and filing application date of his earlier filed sufficiently defined in the involved count practice of constructive reduction to which reads: defined, by the involved invention “1. The combination with an automo- decision, support count. Pri- of his powered by bile internal en- an combustion mary et Examiner cited the of Lee cases gine, of a conduit connected to the intake Vreeland, 200, App.D.C. al. v. F. 262 manifold engine of said and refrigera- 654, Swartwout, C.D. and Skinner system automobile; carried said system comprising condenser, said appears the record that Au- evaporator from on and a for circulating re- 2, gust 1938, appel- frigerant certain amendments to system; through said said de- application, apparently lee’s earlier filed comprising casing vice communicating presented purpose disclosing for the through said conduit said intake structure, rejected manifold, were a member in said casing subject- Primary involving mat- alternately ed Examiner as new to the suction pre- effect ter; appellee’s that the claims in vailing in all of said manifold and atmospheric to pressure finally application filed were re- reciprocate member, said and jected by Primary Examiner on converting means for reciprocations n ground appellee that did not disclose in pressure said member into a sufficient structure; application liquefaction cause of the refrigerant was taken from that deci- said condenser.” examiner; sion of the and that The interference appellant’s is between 26, August 1936, filed became application 202,947, No. 19, filed April abandoned. 1938, appellee’s application and 226,- No. filed August Appellant introduced no evidence is, therefore, and confined to his date filing During period, motion appellee (April 19, conception 1938) for and con moved dissolve the interfer- practice. structive reduction to ence ground appellant’s on the dis- inoperative. closure was Appellee also Appellee introduced evidence for moved proof to shift the burden of on the purpose establishing that he conceived ground that his application involved was a the invention reduced it to and parent continuation of a application, No. date, prior appellant’s filing also 97,937, 26, 1936, August it being al- purpose the dis- leged parent application disclosed appellant’s closure was not invention, that, the involved there- operative. fore, appellee was entitled to the filing the Examiner of Inter- date of for conception appellee was not ferences held entitled and constructive reduction practice. of his earlier filing to the practice. reduction to denied for constructive He both motions, on holding, although evidence in- also held that motion to interference, dissolve the appellant’s for the troduced disclosure was appellant’s on appel- establishing that disclosure was lee’s motion shift burden proof, such evidence was not factual that, effect, his involved application but, character, contrary, on the continuation, not a or a “expert opinion on merely continuation-in- based
part, of his earlier filed application; considerations,” theoretical all claims his earlier appel- were made partes tests finally rejected had been structure, appellee ground had disclosed lant’s that there “not sufficient disclo- failed to establish public teach Thereupon, [therein] how the Ex- to use sure the suction effect of an considered automobile aminer en- gine operatively drive pur- compressor”; evidence submitted
S85 apparatus pose involved invention n that we deem tice ment with pressor compressor pany and tion to tion ture for pensive and cumbersome ity in intake ler iner of Gardner, he tion patent weeks hours appellee]. especially quence hooking * * stalled but showed compressor tionary built from the ceived the adapt to the idea and Pierotti disclosed test, which stated cause 1936 “Pierotti’s “Pierotti, who is an automobile dealer “From Thomas’ gathered: June organized meat of invention to Oakland, California, compressor fully compressor on several prior mechanic; by facts, apparatus powered through under he Lincoln alia had the truck * it was attorney manifold, it on a when the * * practice him a . The complete establishing that he disclosed the with use motor trucks of Interferences has so packing and Mr. Gardner recited the it transmission, by George to the mechanical which was it was regard idea of took dissolve, up to story in operated by a About the first *, regard Zephyr testing. it compressor which again tested. For the next coils frosted refrigeration motion, accordingly, was removed the same engine direction Thomas built an company associated with of the involved did not proper occasions operated depression truck cooling with the place thereto: and reduced in brief is that in 1928 the idea to him and truck’s a less Manfred evidence submitted a few apply Thomas, to idea to automobile with in was started and the Thomas that the and it successfully to his belong the suction of the for the manufac- the first unit, and intake manifold is corroborated for about in 1935 he con- quote expensive compressor substituting drive, truck awarded came the com- June, alleged days * * equipped conceived Thomas, refrigerating Weinberg, [counsel a as installed it redesigned accurately apparatus, Joseph June date, refrigera- refrigera- he invention, place his state- a positively following a takeoff both sta- a conse- later was Thomas *. Be- ensuing Exam- reduc- meantime. prior- The tested prac- three com- Mil- day, the same ex- in- by B. a benefit of Mr. Gardner Jose truck ture the intake manifold and the testified in sufficient * garding the ticular they mentioned yard early pellee ground adjacent is stated vincing cumulative lating type held that took coils became frosted. frigeration lish sufficient to lee had He kept running during during the test took tive shown in test but must have spect to that stated cient thereon.” appellee, device involved stationary test In “Weinberg practice reversing * * # so there that, of the there has been of the no corroborative corresponded to next and back place August its and the coils in Thomas’ back compressor of Thomas’ holding, the board stated H* degree of had % successfully reduced the invention coils reversing car count does who place August the Examiner the evidence introduced the unit test been to warrant insufficient and he was tests referred Pierotti’s had over prior at least as On this occasion compressor as the invention and reduction of warrant been stationary valve used test conducted 1936 and testified 'frosted had need took been produced, and ** the car. the cooling, the tests reduction to that evidence was suffi- subjected, valve was of again frosted. period “cooling been consulted being testimony by residence. detail as to appellant’s for further unit was worked not produced place submitted involved the up Weinberg operated *. in the conclusion equally was and the unit on early Board and and Mr. yard in the tests afore- specify establish to, a solid’ great 1936. period On staged for as to the coils frosted” Ford some and involved in a half continuously operated off date of the which took positive that, practice engine later very August it This discussion the struc- detail Weinberg to estab- the [*] With * Gardner, cool the Thomas concep- pick-up to San cooling by ap- in the trip it device as the appel- oscil- there posi- hour date. back *3 than com type par- was test the re- re- re- *. it power involved had the to consider the disclosure vehicles air within motor decision in to in the in the tests and referred involved, Re- proceeding such as that here Interferences. operativeness determining whether lative to the issue of the applica- or it disclosed an structure. the device disclosed in tion, words, in con- In other it was board held that the board stated that adjudicata applica- it could doctrine of res doubt whether siderable toas ble final decision Ex- held that parte prosecution to aminer necessary in the ex and that consider it regard it pellee’s application, although ruling make a definite if it deemed to hold was taken from “it sufficient that decision. *4 should be later that the disclosure decided Relative to the decision of the United in-, is of earlier Pierotti Appeals States Court of for the District of operative, we the same rul- consider that in Hemphill Columbia the case of Co. v. respect ing should made with Coe, App.D.C. 123, 897, 121 F.2d where- fully convinced Lavin disclosure. We are in it court, was that a decision comparison any that between the two dis- holding that ap- in an disclosed operability closures plication was was final and favorably should be decided to Pierotti.” conclusive, and that that issue res ad- awarding priority ap- of invention to judicata and could not be raised in pellee, appellee the board held that subsequent proceeding, the board stated filing entitled of his earlier that the issue in that case differed from the plication for constructive reduction issue in the instant in case that the in- practice. holding, In so the board said: appellee, stant appealing case instead of “ * * * may be true that the ex- from the final decision Primary Ex- proper aminer’s action was parte prosecution aminer in the ex of his drawing, the amendment which was application, “promptly earlier an- filed filed proposed application, involved new continuation-in-part as other matter, but does not follow that provide one in order a more detailed dis- skilled in the not have art would been closure.” difficulty able to have remedied the in some That the adjudicata doctrine of res manner without the exercise of inven- applicable is proceedings judicial of a tion. We convinced that it would are Office, character in the Patent longer simple been a matter for one familiar with open question. an Williams Oil-O-Matic reciprocating provided, by motors to have Heating Corporation Co., v. Butler 39 F.2d skill, employing only ordinary opera- 693, 17 934, (Patents) C.C.P.A. and cases reversing arrangement tive valve which cited; therein Becker, In re properly would have controlled the vacuum 22 (Patents) C.C.P.A. and air in such a manner as to have caused Primary piston final decision of the reciprocate proper parte prosecution Examiner the ex manner. appellee’s patent application filed consider, therefore, do “We obviously judicial and, in character, merely party Pierotti chose because therefrom, no appeal was taken it be application with a disclosure another file only came against final and conclusive not system, perhaps specific valve which aof appellee against the Ap but also Board of inserted in not have been could first peals operativeness as to the issue—the is reason hold- for sufficient appellee’s disclosure —therein determined. sup- wotdd not have case ing first patent.” (Italics supplied.) a valid ported finally itAs has been determined denying peti- its decision stated, the board rehearing, not disclose structure substance, therefore, allowable, the final decision of the was not is- parte prose- in the ex ap entitled date of that applica- appellee’s earlier plication for constructive cution reduction to- tion, holding did not of the involved invention. Lee v. reject- Vreeland, supra; structure and disclose Interference Law and all therein on that Caesar, claims Practice ing Rivise and Volume against final conclusive ground, was sections 13 and 159 and cases Ap cited. appellee, pellee, therefore, junior the board party produced refrigeration to establish upon him burden was vehicles. the air in such to cool by preponderance priority invention agreement the conclusion are in We the evidence. the Board of reached con- question requiring our next to establish wholly insufficient evidence is intro- is whether the sideration produced refrigeration as that such by appellee is sufficient duced to ac- during was sufficient those tests applica- complish tion is intended. appellant’s device In his decision stated, For the reasons Primary Examiner awarding Appeals, the Board of con- appellant’s disclosure discussed is- in the count in defined the invention detail. siderable reversed. appellee, sue to cor- The Examiner Reversed. only rectly in his decision stated pur- offered LENROOT, participate in J., did not inoperativeness pose foregoing decision. “expert appellant’s device considerations,” and theoretical based on BLAND, Judge (dissenting). *5 Associate by ap- partes tests were made presents question very This a close case the pellee purpose for of or his witnesses doubt but I have sufficient for appellant’s apparatus determining whether the the correctness of conclusion about Furthermore, although ap- operative. majority reversing the the decision of pellee’s Oscar C. witnesses Johnson compelled the I am to dis- of board that opin- testified their Harvey Hansen sent. appellant’s application ion, the disclosure they testified inoperative, also portion of the board’s addition nor tested they constructed a had neither majority quoted, quote which the I decision appellant. by that disclosed device like following: upon “The the count reads ap- earlier Pierotti [the .therefore, agreement, We are only difficulty plication] and the was that by expressed the with the views ap- the construction the motor valve wholly that the evidence of Interferences is ” * * * , operative. parently was not holding ap insufficient warrant quoted. majority Then followed what the Doherty pellant’s device is by It was therein held the board that one Dubbs, (Pat C.C.P.A. the skilled in art could have remedied ents) 807. difficulty without exercise inventive We now to consideration come genius. evidence introduced for Upon reconsideration, petition for purpose establishing conception of the board, subject estoppel, on said involved invention reduction of it to part: appellant’s filing date— prior to “ * * * party Pierotti, The in his has been As April application, when notified that excerpt quoted from the in the fully stated insufficient, promptly Interferences, the Examiner application as another a continuation-in- upon lengthy discus- not enter we need provide in order a more detailed here. sion of it ap- Hemphill case, In the disclosure. was of of Interferences The Examiner plicant only prosecu- not continued the “cooling opinion coils frosted” that as through appealed tion the Office but the wit- regarding tests which during the failed, Court. When this he filed another testified, cooling must have some nesses presented ques- the same produced. been This, face, another Court. on its objectionable would be an pro- seem difficulty cedure. is, as we the Examiner of believed, however, it, evi “It there corroborative is where some see any question insufficiency that in of the tests as to arises of an dence subject application, applicant should to which be encour- penalized, aged, within the rather than the air automotive vehicles ed promptly^ cooled, complete application, nor is more particu- there should larly applicant under such circumstances as the chance of a involved, penalized. of be So according encouraged law rather than being averages, opinion, to the super-technical holdings under relatively It our do slight. is I. Such is un- party Pierotti such are at bar are circumstances justifiable. his is not from a consideration its merits.” right think I the board suggested for interfer- circumstances, The count was that under for inter- ence Examiner. purposes by the least, purposes dis- ference at the clear very orig- if the is broad—so broad that closure count of all the elements this inal Pierotti disclosure of original application ought in the of Pierotti inoperative calls device. count regarded as sufficient constitute a allowable, the count examiner found practice. Obviously, reduction to not the first Lavin is squarely that it read board found Is obtain inventor. he to upon original disclosure of Pierotti. count ? concerned with a revers- Pierotti regardless It seems me that ing were old in per se. valves valve Such correctness conclusion- to when art, the instant as shown record. applicant estopped by his failure to suggested The invention of the count ruling, from a Patent Office the examiner in the broad combination original application disclosure of the should unnecessary of elements. It was of interfer- explained in his later words, prevents ence. In other he plication valve, working which from getting second inventor claim a in the was old art whose functions structure he first invent. by everyone were well understood familiar interference, If Pierotti had won this He, continuing with such valves! necessarily follow that the would trine of doc- objection met raised *6 estoppel might applied be himto by explaining the Patent Office the work- parte appli- ex consideration of ing of the valve which the Patent Office were If he cation. under understood, well must circumstances, he would have the right brought about his ex- present the appeal and issue ato court. new matter and planation was that he dis- inoperative structure closed without think the board I thought The board matter. and it should affirmed. new right,