463 F.2d 1391 | C.C.P.A. | 1972
This appeal is from, the decision of the Patent Officé Board of Patent Interferences, adhered to on reconsideration, in á proceeding under Section 305 of the National Aeronautics and Space Act of 1958 (42 USO 2451). The board held that the Administrator of the National Aeronautics and Space Administration (hereinafter NASA), on behalf of the United States, is entitled to receive the patent to issue on Williams patent application serial No. 391,187, filed August 21,1964.
42 U.S.C. 2457. Property rights in inventions, (a) Exclusive property of United States; issuance of patent. Whenever any invention is made in the performance 9f any work under any contract of the Administration, and the Administrator determines that—
(1) the person who made the invention was employed or assigned to perform research, development, or exploration work and the invention is related to the work he was employed or assigned to perform, or that it was within the scope of his employment duties, whether or not it was made*1331 during working Lours, or with a contribution ’by the Government of the use of Government facilities, equipment, materials, allocated funds, information proprietary to the Government, or services of Government employees during working hours; or
(2) the person who made the invention was not employed or assigned to perform research, development, or exploration work, but the invention is nevertheless related to the contract, or to the work or duties he was employed or assigned to perform, and was made during working hours, or with a contribution from the Government of the sort referred to in clause (1),
such invention shall be the exclusive property of the United States, and if such invention is patentable a patent therefor shall be issued to the United States upon application made by the Administrator, unless the Administrator waives all or any part of the rights of the United States to such invention in conformity with the provisions of subsection (f) of this section.
* # * # * * *
(c) Patent application. No patent may be issued to any applicant other than the Administrator for any invention which appears to the Commissioner of Patents to have significant utility in the conduct of aeronautical and space activities unless the applicant files with the Commissioner, with the application or within thirty days after request therefor 'by the Commissioner, a written statement executed under oath setting forth the full facts concerning the circumstances under which such invention was made and stating the relationship (if any) of such invention to the performance of any work under any contract of the Administration. Copies of each such statement and the application to which it relates shall be transmitted forthwith by the Commissioner to the Administrator.
(d) Issuance of patent to applicant; request ~by Administrator; notice; hearing; determination; review. Upon any application as to which any such statement has been transmitted to' the Administrator, the Commissioner may, if the invention is patentable, issue a patent to the applicant unless the Administrator, within ninety days after receipt of such application and statement, requests that such patent be issued to him on behalf of the United States. If, within such time, the Administrator files such a request with the Commissioner, the Commissioner shall transmit notice thereof to the applicant, and shall issue such patent, to the Administrator unless the Applicant within thirty days after re-cepit of such notice requests a hearing before a Board of Patent Interferences on the question whether the Administrator is entitled under this section to receive such patent. The Board may hear and determine, in accordance with rules and procedures established for interference cases, the question so presented, and its determination shall be subject to appeal by the applicant or by the Administrator to the Court of Customs and Patent Appeals in accordance with procedures governing appeals from decisions of the Board of Patent Interferences in other proceedings.
* ❖ * • # sj; sjs
(j) Definitions. As used in this section — ■
* * * * * * $
(3) the term “made”, when used in relation to any invention, means the conception or first actual reduction to practice of such invention.
The Invention
The invention in dispute is apparatus for controlling the attitude or orientation of the spin axis of a spinning body by applying a processing torque to the body under control from a location external to the body, defined in representative claim 19 as follows:
19. Apparatus comprising:
(a) a body adapted to spin about an axis;
(b) fluid supply means associated with said body;
(e)a valve connected to said fluid supply means;
(d) fluid expulsion means disposed on said body and coupled with said valve and oriented to expel said fluid substantially along a line parallel to said axis and separated thereírom;
(e) means disposed on said body for providing an indication to a location external to said body of the instantaneous spin angle position of said body about said axis and the orientation of said axis with reference to a fixed external coordinate system;
(f) and means disposed on said body for receiving from said location control signals synchronized with said indication;
(g) said valve being coupled to said last-named means and responsive to said control signals for applying fluid to said fluid expulsion means in synchronism therewith for precessing said body to orient said axis into a predetermined desired relationship with said fixed external coordinate system.
A principal feature involves a jet, disposed on the body at a position spaced from the spin axis and directed to expel fluid in a direction parallel to that axis, which applies a turning force to the body about a preselected axis normal to the spin axis to precess the spin axis in a desired direction. The jet is supplied from a tank of pressurized gas on
General Background
There is no real dispute over the pertinent facts. Hughes, as part of a program it began in late 1959 to develop a spin-stabilized, synchronous communications satellite, built a “dynamic wheel” in a laboratory to test an arrangement for attitude control conceived by Williams (now deceased) .
The Dynamic Wheel
The laboratory layout for the dynamic wheel test is shown in a diagram in evidence as Exhibit 91, reproduced below:
The diagram shows the dynamic wheel supported in a vertical plane on a laboratory cart. A stroboscopic lamp (STROBE), energized from a signal generator (SIG GEN) through- a synchronous controller which included a rotating drum, directed its light toward, the. face of the wheel opposite the cart. A fluorescent lamp, energized from a power source (PS) but subject to imposition of 12,000 c.p.s. modulation from ■an oscillator (12KC OSO) through a modulator (MOD) under control of the synchronous controller, was also directed toward the face of the wheel.
The wheel itself comprised a circular metal disc about 30 inches in diameter. Its mounting on the cart was through a special bearing which supported the wheel at a single point on its axis. The mounting normally allowed spinning of the wheel in a vertical plane as .shown, but the bearing had a spherical inner race which permitted the wheel to be tilted to some degree in any direction relative to that plane.
On the face of the wheel disposed toward the lamp was a toroidal tank containing nitrogen gas under pressure, a jet nozzle directed along a line parallel to the axis of the wheel and positioned at a location offset from that axis, and a valve controlling admission of gas from the tank to the nozzle. Also disposed on the face of the wheel was
In the tests, the dynamic wheel was brought up to spin speed of about 165 r.p.m. by hand and then a speed sustaining jet system, required to overcome the friction of the bearing and the drag of the air in the laboratory and not part of the invention, was activated to maintain the spin speed constant. The equipment was brought into synchronism by adjusting the speed of the drum of the synchronous controller to match the speech of the wheel so that the stroboscopic light emitted a brief high intensity flash once per revolution of the wheel, thus making the arrow and X mark appear stationary at a radial position. By another adjustment of the controller, the operator was able to apply 12,000 cycle modulations to the fluorescent lamp during a selected portion of each revolution of the wheel. Since the jet was operated by signals from the fluorescent lamp, the portion of the revolution selected determined the direction of precession of the wheel in a predictable manner.
■ During the test, the fact that the wheel was spin-stabilized was demonstrated by moving the cart from side to side and observing that the wheel remained in the same position.
The Prototype Gomsat Satellite
The prototype Comsat satellite built by appellants, which was apparently intended to be usable as an operating satellite, included elements of the attitude control system in substantially the form disclosed in the application. It was not tested to show operability of the overall system under dynamic conditions, but it was widely exhibited and components of it were subjected to extensive testing prior to the contract date of August 21, 1961. Tanks for the high pressure gas system were pressure tested. Jet valves were tested by life cycling, by determining other operating characteristics and by subjecting them to temperature, vacuum, vibration and shock tests.
The Board's Opinion
Before the board, appellee contended that the dynamic wheel structure tested by appellants did not meet the recitation in section (e)
In ruling that appellants’ tests nevertheless did not demonstrate actual reduction to practice, the board held that the application disclosure extends “only to free spinning bodies, acting like gyroscopes,, that are wholly unrestrained by any physical structure tending to' limit or control the application of external forces to them or their response to such force[s]” (emphasis board’s). The board 'was not persuaded by arguments of appellants that the invention was in fact-applicable to “any gyroscope” or to conventional gyroscope apparatus. Considering the tests of the dynamic wheel in the light in which it viewed the invention, the board held:
The tests did not duplicate or simulate tiie essential conditions of any-contemplated functional setting of the invention. There is no evidence that establishes a relationship between the tests that were performed and any-intended functional setting within the disclosure of the Williams application, nor does the record prove such a relationship between the tests that were performed and any other contemplated use or functional setting.
Opinion
Application of the Claims to the Dynamic Wheel
Appellee urges that the board erred in holding that the structure employed in the dynamic wheel tests complied with the claim recitations exemplified by the following language in claim 19, supra:
(e) means disposed on said body for providing an indication to a location external to said body of the instantaneous spin angle position of said body about said [spin] axis and the orientation of said [spin] axis with reference to a fixed external coordinate system.
That language, .requires the indication of two conditions. As the board observed, it does not call for transmitting any signals. The board held and we agree that the spin angle position was clearly indicated by the arrow and X mark on the wheel spoke when viewed from an external location under the stroboscopic light which made that mark appear stationary at a particular angular position. The real question is whether the part played by the stroboscopic light equipment prevented the test apparatus from meeting the limitation that the “means” for providing the indication be “disposed on” the body. The arguments of the parties based on the claim terminology alone do not resolve this question to our complete satisfaction but lead instead to the conclusion that the recitation is ambiguous. In interference proceedings, ambiguity calls for recourse to the case of origin of the language for resolution. Smith v. Wehn, 50 CCPA 1544, 318 F.
As to means for indicating the orientation of the spin axis, anyone viewing Exhibit 4, the film of the wheel in operation in 1960, would see that the wheel was precessed in various directions from its original position. The orientation at any time was apparent from observation of various observable parts of the wheel. While we agree with the board that front and back plates on the wheel were such means, we also think that the arrow and X mark were observable as an indication of the orientation of the wheel. The apparatus used in the dynamic wheel test therefore provided both indicating functions defined in the recitations in issue and the board did not err in so holding.
Appellant's Tests
Where an interference count does not specify a use for the claimed invention, evidence proving substantial utility for any purpose is sufficient to establish reduction to practice. Blickstein v. Seiden, 54 CCPA 1532, 378 F. 2d 988, 154 USPQ 97 (1967). Obviously that proposition is also applicable to proceedings under § 305(d) and applies to the claims here which do not specify a use. Appellants argue that the present invention is merely an improvement in precessing mechanisms which could be substituted in old or conventional gyroscope structure, referring to certain prior art patents of record.
In essence, the invention is directed to a spinning body operated by remote control from a location external to the body to pulse a nozzle at a selected position in successive spin cycles to precess the body in a selected direction.
We think that the dynamic wheel tests did prove out that combination. Appellants’ witness Rosen, a highly skilled scientist who was manager of Hughes’ Comsat program, testified:
I think the main interesting result of those tests were, first of all, to demonstrate that precession pulses could be applied to the spinning vehicle, and secondly, that the nutation [5 ], which is an incidental effect of pulsing, applying the pulse torque to the satellite, did not build up to undesired proportions, that is, it was negligibly small.
Williams testified that the dynamic wheel tests demonstrated the validity of his pulsed jet arrangement for precessing and that this was evident in the movie of the dynamic wheel test (Exhibit 4) which was
At the time there was considerable skepticism as to the operability of this concept. In fact, at one meeting with the Army, one of the Army representatives said, “We have studies from one of our contractors that show that this is impossible.” Then we showed them the film, and they agreed their contractors must have made an error.
In concluding that the tests did not duplicate or simulate any contemplated functional setting of the invention, the board’s reasoning was:
[T]he tests of the dynamic wheel were limited to tests in an environment of typical laboratory temperature, an estimated 70 degrees with average humidity and an atmospheric pressure incidental to an estimated 100 feet of altitude. There were no other tests, such as vibration on the dynamic wheel. No quantitative measurements were made of the degrees of precession of the spin axis on the wheel that were obtained. There was control of the orientation of the spin axis of the body only in the sense that the precession of that axis, as mechanically restricted by the ball joint supporting the wheel, occurred in the direction that was sought by the operator through the application of the jet forces directly on the rotating wheel itself at preselected instantaneous spin angle positions of the wheel and in synchronism with the wheel rotation.
We find nothing in the record which would indicate that the factors referred to by the board were such as to raise any significant doubts that the precessing system proved out in the dynamic wheel tests would be operative with a spinning body used as described in the application. Nor did the board advance any reasoning to support such doubts.
For the above reasons, we conclude that the invention was actually reduced to practice before, and outside of, the NASA contract and that the board’s determination to the contrary was erroneous.
The Board's Procedure
Upon declaration of the present proceeding under section 305(d), the board set a pre-testimony period “for any preparatory activities the parties may consider appropriate such as the filing of motions, [and] consideration by the parties of the best mode of presenting their cases when testimony times are set * * In response to a motion by appellants, the board ruled that the statute had “not yet operated to pass title to the invention to the United States.” It further ruled that appellants, as the party having control of the evidence relative to the work under the contract with NASA, had the burden of establishing the facts concerning conception and reduction to practice, although it stated that the burden of going forward with the evidence would fall on the Administrator under certain circumstances. Appellants protest the procedure followed by the board, particularly as to what they regard as placing the original burden of proof on them.
In summary, we find that the board erred in finding that appellants had not proved that the invention was'actually reduced to practice prior to the time the NASA contract was entered into. Therefore, its decision is reversed.
The application, which is assigned to co-appellant Hughes Aircraft Company (hereinafter Hughes), is designated a continuation-in-part of serial No. 22,733, filed April 18, 1960, for “Velocity Control and Orientation of a Spin-stabilized Body.”
The satellite was disclosed in appellant’s application as orbiting in a circular orbit in synchronism with the earth, i.e., in a west-to-east equatorial orbit with a period of 24 hours, so as to hover over a single point on the earth. It had an antenna aligned with Its spin axis and acting in association with relay equipment to receive communications signals from one point on earth, amplify them, and transmit the amplified signals to a remote receiving point. When launched as described in the application, the satellite attained the desired orbit with its spin axis perpendicular to the earth’s axis. The attitude ■control system was used to precess the satellite to bring its spin axis parallel to the earth’s axis because that position was necessary for most satsifactory performance of the antenna.
U.S. patents No. 2,795,956, Issued June IS, 1957, to McNatt; No. 2,492,057, Issued December 20, 1949, to Noxon; No. 2,772,570, issued December 4, 1956, to Judson; and No. 2,780,104, issued February 5,1957, to Carlson.
McLean patent No. 3,216,674, issued November 9, 1965, on an application filed June 8, 1959, and cited in the prosecution of the Williams application, discloses a spin-stabilized, target-seeking space vehicle provided with a jet motor at its outer periphery, which motor is controlled by sensing means on the vehicle to automatically process the vehicle to keep its spin axis in a desired relationship to the target.
The witness described “nutation” as a “wobbling type of motion.”
We note that, with the exception of humidity, the environmental tests the board thought should have been made closely parallel the tests run on the components of the Comsat prototype discussed supra. However, those tests appear to have -been primarily in the nature of design work directed to commercialization of the product in which the attitude control systeni was regarded as already proven out by the dynamic wheel tests. It is well established that suitability for commercial use is not a requirement, for reduction to practice. Hradel v. Griffith, 54 CCPA 911, 367 P. 2d 851, 151 USPQ 580 (1966). The board advanced no reason why any aspect of the attitude control system would be adversely affected by a lack of humidity, and none is apparent to ns.
In March of 1961, James C. Fletcher, a recognized expert in space technology who is presently the Administrator of NASA, evaluated the Hughes program as a consultant for the Defense Department. In a report made after an investigation that included viewing the film of the dynamic wheel tests, Exhibit 4, he expressed no reservations about the attitude control system because, as he testified later, he thought it was “in excellent shape.”
The board required the Administrator to file a statement identifying any contract relied upon and stating whether reliance was in connection with conception or actual reduction to practice in Hammer v. Administrator, 167 USPQ 57 (Bd. Pat. Intfs. 1970). The record does not show that any such requirement was made in this case.
We thus disagree with the position taken by the board in Rosen v. Administrator, 152 USPQ 757 (Bd. Pat. Intfs. 1966) that:
[I]f no evidence is presented in a proceeding of the nature before us, it would appear to be tantamount to an applicant’s failure to request a hearing before us (under section 305(d)) in which case the statute is clear that the Commissioner “shall issue such patent to the Administrator * *
Appellants do devote a part of their reply brief to a denial that they admitted such a reduction to practice but the position taken there borders on the unreasonable and we do not consider it a serious denial that the launching and maneuvering of Syncom II was an actual reduction to practice.