While it is true that in the White structure the source of light is located in the top element and not in the lower portion, it certainly would not involve invention to extend such light source into the lower portion of the fixture in view of the Schneider patent. For the reasons hereinbefore set out, the decision of the Board of Appeals is affirmed. 661 O. G. 5; 39 CCPA 882; 195 F. (2d) 311; 93 USPQ 161 PATENTS BARNET v. WIED (No. 5833) 1. INTERFERENCE-BURDEN OF PROOF In interference between applicants, burden is upon junior party to establish priority of invention by preponderance of evidence. 2. INTERFERENCE-ORIGINALITY OF INVENTION EMPLOYER AND EMPLOYEE If junior party employed senior party to perfect details of invention which junior conceived, he is, with some exceptions, entitled to benefits of employee's work; where employer, who is junior party, prima facie proves such employeremployee relationship, although burden of proof is not shifted to employee senior party, latter has duty to go forward with proof to overcome prima facie case made by junior; rule that employee's work inures to employer's benefit does not apply where employer's proof fails to show that he actually conceived device, or, if he did, that he communicated it to employee. 3. INTERFERENCE- -ORIGINALITY OF INVENTION-IN GENERAL Junior party claiming to be entitled to benefits of work of senior party by virtue of contractual relationship analogous to that of employer and employee is not so entitled when concept he disclosed to senior lacked essential element or elements of invention. 4. INTERFERENCE-ORIGINALITY OF INVENTION-IN GENERAL In interference involving question of originality of conception, where there is conflict of testimony, court may look to unquestioned facts and circumstances surrounding transaction and shedding light upon it to ascertain whether they, and proper inferences therefrom, corroborate or contradict one or the other of the parties. 5. INTERFERENCE-ORIGINALITY OF INVENTION-EMPLOYER AND EMPLOYEE Employer did not claim to be inventor until after negotiations with employee had broken down, whereas employee had consistently insisted that he was sole inventor; such conduct by employer tends to contradict his claim that he was inventor. 6. INTERFERENCE-ORIGINALITY OF INVENTION-EMPLOYER AND EMPLOYEE Employee was offered royalty if he signed assignment recognizing him as coinventor; offer is not conclusive as admission of employee's inventorship, since employer is not conversant with patent laws, but is circumstance weighing adversely against employer in deciding whether he has overcome burden of proof placed upon him as junior party in interference between employer and employee. United States Court of Customs and Patent Appeals, March 18, 1952. APPEAL from Patent Office, Interference No. 83,369 [Affirmed.] Charles H. Andros for appellant. I. Richard Paris for appellee. [Oral argument January 7, 1952, by Mr. Andros and Mr. Paris] Before GARRETT, Chief Judge, and JACKSON, O'CONNELL, JOHNSON, and WORLEY, Associate Judges JOHNSON, Judge, delivered the opinion of the court: This is an appeal from the decision of the Board of Interference Examiners of the United States Patent Office awarding priority of invention of the subject matter defined by the four counts in issue to appellee Carl A. Wied. The interference is between appellee's application No. 761,644, filed July 17, 1947, and appellant's application No. 767,151, filed August 7, 1947. Thus appellant is the junior party. The invention relates to a device for cleaning or stripping garnetting machines. Counts 1 to 3 are drawn to an apparatus, whereas count 4 is a method claim. Count 1, which is the original count, is considered illustrative of the apparatus counts. It reads as follows: 1. An apparatus for the cleaning of the garnett cylinder and doffer roll of a conventional garnett machine, having a cleaning head, said head comprising a brush, a compressed air nozzle, and a suction nozzle, the brush having relatively long resilient wire bristles slightly bent at their free ends, the compressed air nozzle being seated in the brush and cooperating with same to free the objectionable materials from the cylinder or roll by means of a compressed air blast, the suction nozzle being located adjacent said brush and air nozzle, a supporting frame for mounting said head upon said machine coextensive with said cylinder and roll, a traversing carriage for carrying said head upon said frame, a traverse gear incorporated in the supporting frame for cooperating with said carriage to cause the cleaning head to reciprocate along the length of said frame pivotal means incorporated in said supporting frame to enable the cleaning head to operate upon either the garnett cylinder or the doffer roll, and means to enable said head to be brought into or out of engagement with said cylinder or roll. Method count 4 reads as follows: 4. Those steps in the method of stripping a garnetting machine which comprise simultaneously subjecting the surface thereof to be stripped to a combing action and a jet of compressed air to loosen the dirt thereon while said machine is in operation, and continuously removing the dirt, as loosened, by means of a vacuum. As appears from the counts, the subject matter of the involved invention relates to cleaning or "stripping" the garnett cylinder and doffer roll of a conventional garnett machine. In his application, the senior party Wied shows a series of horizontally disposed cylinders or rolls of various sizes which include a garnett cylinder, a doffer roll, and a series of worker rolls. Flat wire having sharp teeth on one edge is tightly wrapped on edge around these cylinders to form a multiplicity of sharp teeth which operate on textile material to tear it apart and reduce it to shoddy. In operation, the teeth become clogged with fiber, dirt and grease to such extent that the cylinders become smooth and the machine does not function properly unless these surfaces are cleaned periodically. The cleaning apparatus disclosed in the counts comprises a head which includes a brush consisting of wire teeth mounted on a block-like member, an air blast nozzle which extends through the block and the wire teeth of the brush, and a vacuum nozzle. The brush and air blast nozzle are mounted adjacent the forward end of the vacuum nozzle which is considerably larger than the air blast nozzle. The cleaning head is mounted on the carriage of a traversing mechanism which causes it to be carried back and forth along the horizontal axis of the cylinder being cleaned. The supporting structure of the head is such that the head may be pivoted in order to operate on either the doffer roll or the garnett cylinder. The application of the junior party Barnet shows a similar apparatus. Previous to the involved invention the working surfaces of a garnett were cleaned by hand by a workman using a comb, formed by securing a piece of card clothing to a piece of wood, which was held against the working surfaces of the garnett cylinders by hand while the cylinders were rotating. The workman was compelled to lie underneath the machine in order to reach some of these surfaces, and to stand on top of it in order to reach other surfaces. The card clothing forming the comb would soon become clogged with dirt and fibers which were removed by knocking the comb on the floor or some other surface. On May 15, 1946, a workman was seriously injured while cleaning the operating surfaces of a garnetting machine at the plant of Albany Woolen Mills, Inc., of which appellant is president. At that time appellee Wied was foreman of the garnett department of that plant but was temporarily working at the nearby plant of William Barnet & Sons, Inc. of which appellant is also president. Immediately following the accident, appellee was notified and he went to the Albany Woolen Mills plant and assisted in getting the injured workman released from the machine. It was the occurrence of this accident which led to development of the machine covered by the counts in issue. Both parties rely on the same actual reduction to practice and the case therefore involves the question of originality. The testimony as to what happened after the accident, however, is very conflicting. [1] Inasmuch as Barnet is the junior party, the burden is upon him to establish priority of invention by a preponderance of evidence. Shumaker v. Paulson, 30 C. C. P. A. (Patents) 1156, 136 F. (2d) 700, 58 USPQ 279; also, see Kenneth F. Cooper v. Jesse P. Hubbell, 19 C. C. P. A. (Patents) 790, 53 F. (2d) 1072, 12 U. S. Pat. Q. 21, and McCormick et al. v. Plumstead, 25 C. C. P. A. (Patents) 925, 94 F. (2d) 999, 37 USPQ 65. [2] If the junior party proves he is an employer who has employed the senior party to perfect the details of an invention which he has conceived, he is, with some exceptions,1 entitled to the benefits of his employee's work. Cooper v. Hubbell, supra; Lewis v. Strom, 52 App. D. C. 251. Where the employer who is junior party prima facie proves such an employer-employee relationship, although the burden of proof is not shifted to the employee senior party, the latter has the duty to go forward with proof to overcome the prima facie case made by the junior party. Shumaker v. Paulson, supra, McCormick v. Plumstead, supra. However, the rule above that the work of the employee inures to the benefit of the employer does not apply where the employer's proof fails to show that he actually conceived the device, or, if he did, that he communicated it to his employee. Lewis v. Strom, supra. As pointed out by the court in Robinson v. McCormick, 29 App. D. C. 98: * * * To claim the benefit of the employee's skill and achievement, it is not sufficient that the employer had in mind a desired end result, and employed one to devise means for its accomplishment. He must show that he had an idea of the means to accomplish the particular result, which he communicated to the employee in such detail as to enable the latter to embody the same in some practical form. * [3] In cases where the junior party claimed to be entitled to the benefits of the work of the senior party by virtue of a contractual relationship analogous to that of employer and employee, this court has held that the junior party is not so entitled when the concept he disclosed to the senior party lacked the essential or vital element or elements of the invention. Curtis et al. v. Land, 29 C. C. P. A. (Patents) 1118, 129 F. (2d) 549, 54 USPQ 212; King v. Burner, 24 C. C. P. A. (Patents) 1312, 90 F. (2d) 343, 34 USPQ 19. The outcome of this proceeding is to be determined in the light of the foregoing rules. According to appellant, he had previously tried unsuccessfully to develop a mechanical cleaning device in 1934. He stated, however, that after the abortive attempt in 1934 he did not work seriously on 1 See Ladoff v. Dempster, 36 App. D. C. 520. such a device until after the accident which occurred on May 15, 1946. He testified further that on the day of the accident he arrived at the plant after the injured workman had been taken to the hospital; that when he arrived he talked to Frank Long (general manager of Albany Woolen Mills, Inc.) and Lewis Muhlfelder (nephew of appellant and treasurer of the Albany Woolen Mills, Inc.) and told them "something must be done to overcome such accidents"; and that he told Long to take up with Hill (master mechanic of Albany Woolen Mills, Inc.) and appellee Wied the development of a practical device to overcome the problem of cleaning the garnetts. Barnet's testimony then continues as follows: Q. 52. What else did you tell Mr. Long * on the 15th? A. I told Mr. Long to get them working on it so we could see some results very quickly, as quickly as possible. * Q. 53. Tell us what you told them. Everything that you said. A. That I was sure * quite certain that using a vacuum arm would not remove this dirt satisfactory, and that they would require a piece of card clothing which would dig into the part that was being stripped. In other words to loosen the dirt. I said, "You might not have the results that I would like to see because if you had this piece of card clothing it would be filled very quickly and you might have to use air to blow it out. The air, of course, would be of great value in blowing the dirt out. I think that covers it. Long testified that on May 15, 1946, Barnet suggested that they might be able to clean the garnett with a vacuum and a brush similar to a hand card and that he said, "You may find that with the use of a vacuum and a brush and a traversing carriage, that the brush will clog, and you might need a jet of compressed air." Muhlfelder testified that he was present at the above-mentioned conversation and that, after referring to a wire brush and vacuum device, appellant said "he was not sure that this would be successful and if this was not, that we would have to go further on and possibly even to the use of compressed air." Hill testified that at a conference on May 16, 1946, "Mr. Long had told me then that Mr. Barnet had outlined a plan to him for stripping the garnett with a brush vacuum and that we may need compressed air * The record clearly indicates that it was the use of compressed air in conjunction with the other components of the cleaning device which formed the essentially novel feature of the counts in issue. Proposed count D, which was drawn to a system similar to that in counts 1 to 3 but contained no provision for compressed air as recited in the counts, was held by the Primary Examiner to be unpatentable over the prior art. |