UNITED STATES COURT OF CUSTOMS AND PATENT APPEALS, DECEMBER

19, 1951

Appeal from Patent Office, Serial No. 618,429

[Affirmed].

Marvin J. Reynolds and Adolph A. Thomas (Ralph B. Stewart of counsel) for appellant.

E. L. Reynolds (H. S. Miller of counsel) for Commissioner of Patents.

[Oral argument November 8, 1951, by Mr. Thomas and Mr. Miller]

Before JACKSON, Acting Chief Judge, and O'CONNELL, JOHNSON, and WORLEY, Associate Judges

WORLEY, Judge, delivered the opinion of the court:

This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming that of the Primary Examiner finally rejecting claim 28 in an application for a patent, serial No. 618,429, filed September 25, 1945, "FOR INDUCTANCE COILS." Seven claims were allowed.

The rejection was made on the ground that the appealed claim is readable on a non-elected species and that there is no allowable generic claim covering that species. No prior art is relied upon.

The rejected claim reads as follows:

28. An inductance coil having a magnetic core contained within a closed copper shield and held substantially midway thereof, said shield comprising a cupshaped part with an integral base and a cover secured over the other end of the cup.

Fig. 3 of the application depicts the elected species, and Fig. 12 the non-elected species to which claim 28 is drawn. In the interest of clarity those figures are here reproduced.

The substance of the invention may be understood from allowed claim 60, reading as follows:

60. A shielded inductance coil for audio frequency operation comprising a cylindrical magnetic core enclosing a winding, a shield for said coil in the form of a copper tube fitting around said core as closely as commercial tolerances permit to provide a cylindrical coil structure of minimum diameter, the thickness of said tube being of the order of 40 to 90 mils to form a short-circuited conductor of negligible resistance for eddy currents induced by said winding, the coil loss due to the close proximity of the tube to the magnetic core being substantially reduced with increase of shield thickness within the specified limits, and means for binding said tube and core into a unitary structure.

The correctness of the rejection of claim 28 depends upon whether allowed claim 60 is properly readable upon the non-elected species of Fig. 12 to which claim 28 is drawn.

It is to be noted that claim 60 refers to "a shield for said coil in the form of a copper tube." The term "tube" refers to reference number 22 of Fig. 3. That claim is clearly readable on the elected species as represented by Fig. 3.

* *

It should likewise be noted that in claim 28 the following language is used: "* said shield comprising a cup-shaped part with an integral base and a cover secured over the other end of the cup." [Italics ours.] The quoted portion of the claim refers to reference number 58 of Fig. 12. Claim 28 is, therefore, clearly restricted to the non-elected species depicted in Fig. 12.

Counsel for appellant contend that since claim 60 was allowed, claim 28 should also have been allowed because, in their opinion, the language of claim 60 is broad enough to be readable on Fig. 12 and claim 60 is, therefore, an allowable generic claim. [1] In support of their contention, counsel argue that claims in a pending application must be given the broadest reasonable interpretation and that unex

pressed limitations will not be [2] read into them; that terms in a claim are considered to be used in their ordinary meaning; and that the use of different names for similar devices that perform the same function in the same way is immaterial.

The Solicitor for the Patent Office properly agrees with those principles of law but denies their applicability to the facts herein involved. Counsel for appellant assert that, so far as the facts of this case are concerned, the cup-shaped member 58 is essentially a tube within the generic language of allowed claim 60.

That contention necessarily means that the shield 58 of Fig. 12, described in claim 28 as a "cup-shaped part with an integral base,” must be construed to be a "tube" within the ordinary meaning of that term. The sole point for determination here, therefore, is whether such contention is correct.

The board, in denying a petition for reconsideration, stated as follows:

While it is true that the shielding member 58 of Figure 12 includes a tubular portion, when this member is considered in its entirety, it is not a tube but is rather of cup-shaped form and is so described in the specification. [Italics ours.]

*

[3] We are in agreement with the reasoning of the board that "cupshaped part" 58, considered in its entirety, is not a "tube." Nor do we think that the term "tube" includes a "cup-shaped part with an integral base" within the scope of its ordinary meaning.

There are various kinds of tubes but nowhere have we been able to find any similarity between "tube," in either a generic or specific sense, and the term "cup-shaped." The dictionaries are all to the same effect as may be illustrated by the following definition of the word "tube":

Webster's New International Dictionary, Second Edition, 1949:

tube, n. A hollow cylinder, of any material, to convey liquids or gases or for some other purpose; as, a fire tube; a water tube; a condenser tube * * * the tubes of a tubular bridge; a friction tube; the tube of a musical instrument; bronchial tube; a priming tube, etc.

Any similar hollow conduit, often oval, square, or polygonal in section.

While a cup-shaped structure may contain a tubular or cylindrical portion, we cannot understand in what manner the term "tube" in claim 60 may properly be considered to encompass, within its ordinary meaning, the "cup-shaped part with an integral base" of claim 28 and shown in Fig. 12. As argued by counsel for appellant, terms in a claim should be considered to be used in their ordinary meaning. In our opinion, the use of the terms in issue, in the manner proposed by appellant, involves an unreasonably strained interpretation of

their ordinary meaning. To permit such use would be to ignore the very rules of law which appellant avers are governing in this case. We find no error in the holding of the Board of Appeals and its decision is accordingly affirmed.

GARRETT, Chief Judge, did not participate in the consideration or decision of this case.

659 O. G. 6; 39 CCPA 790; 193 F. (2d) 1020; 92 USPQ 276

SCINTA ET AL. v. ANDERSON (No. 5821)

PATENTS

1. INTERFERENCE-BURDEN OF PROOF

In interference between applications, junior party has burden of establishing priority of invention by preponderance of evidence.

2. INTERFERENCE-IN GENERAL

Following examiner's denial of motion to substitute sole application for joint application in interference, Board of Interference Examiners is without jurisdiction to make such substitution.

3. CONSTRUCTION OF SPECIFICATION AND CLAIMS-INTERFERENCE COUNTS—IN GENERAL-WORDS AND PHRASES

Limitation in count to "elongated flexible backing strip" is met by two thin metallic strips rigidly connected by clips to form single unit.

United States Court of Customs and Patent Appeals, December 18, 1951

[Affirmed.]

APPEAL from Patent Office, Interference No. 83,363

Edwin T. Bean and Conrad Christel (Bean, Brooks, Buckley & Bean of counsel) for appellants.

Davis Lindsey, Hibben and Noyes, Harry W. Lindsey, Jr., Bacon and Thomas, Fancis D. Thomas, Harry F. Glemser, Charles S. Penfold, and William, Wallace Cochran for appellee.

[Oral argument November 9, 1951, by Mr. Bean and Mr. Harry W. Lindsey, Jr.]

Before GARRETT, Chief Judge, and JACKSON, O'CONNELL, JOHNSON, and WORLEY, Associate Judges

WORLEY, Judge, delivered the opinion of the court:

This is an appeal in an interference proceeding from a decision of the Board of Interference Examiners awarding priority of invention of the subject matter of the single count to appellee.

The application of appellants, Serial No. 736,492, for "Windshield Cleaner" was filed March 22, 1947. The application of appellee with

the same title, Serial No. 634,730, was filed December 13, 1945. In response to a request by the Primary Examiner for a more specific title, appellee changed his title to "Windshield Wiper Blade Linkage Assembly." [1] Appellants, being the junior party, have the burden of establishing priority of invention by a preponderance of evidence. Testimony was taken on behalf of appellants. Appellee took no testimony. Both parties filed briefs and were represented at the final hearing.

The involved subject matter relates to windshield cleaners or wipers particularly adapted for the wiping of curved and flat surfaces, as may be readily ascertained by a reading of the count which is a claim drawn by the Primary Examiner who suggested it for adoption by both parties and which reads as follows:

A wiper for cleaning a curved surface, comprising an elongated blade flexible for conforming to the surface curvature, the blade having an elongated flexible backing strip, a primary yoke extending lengthwise of the strip and having an arm attaching portion, and secondary yokes, one secondary yoke connected intermediate its ends to an end of the primary yoke and having its opposite ends connected to the backing strip at longitudinally spaced points, and another secondary yoke connected intermediate its ends to the opposite end of the primary yoke and having its opposite ends connected to the backing strip at longitudinally spaced points.

The motion period closed on January 8, 1949, but on February 25, 1949, the assignee of appellants, the Trico Products Corporation, filed a motion requesting an addition to the interference of the sole application of Scinta, Serial No. 636,548, dated December 22, 1945. Accompanying that motion was an affidavit by counsel for the purpose of excusing delay in filing. The motion was set for hearing before the Primary Examiner as one to substitute the sole application for the joint application of appellants. The motion was denied and a petition for reconsideration filed but the Primary Examiner adhered to his original ruling. Counsel for appellants then filed a petition directed to the Commissioner of Patents invoking his supervisory authority and requesting a review of the decision of the Primary Examiner. In his decision denying the petition the commissioner noted that the decision of the Primary Examiner denying the motion was for the reason that the involved count cannot be read upon the sole application. The commissioner further stated:

The supervisory authority of the Commissioner properly is invoked only to correct a clear and palpable error or to prevent a gross miscarriage of justice. Petitioner has not so much as pointed out wherein any of the foregoing rulings of the Primary Examiner are erroneous, nor so much as indicated wherein they show any abuse of discretion on his part.

In their brief at final hearing, counsel for appellants urged that the sole application should be substituted for the joint application. The