[U. S. Court of Appeals for the District of Columbia]

GARFIELD ET AL. v. COE, COMMISSIONER OF PATENTS

No. 8,815. Decided March 19, 1945

574 O. G. 604; 148 F. (2d) 682; 64 USPQ 540

APPEAL from the District Court of the United States for the District of Columbia. Affirmed.

Mr. John H. Sutherland (Mr. Francis B. Leech and Mr. John H. Bruninga of counsel) for Garfield et al.

Mr. W. W. Cochran (Mr. E. L. Reynolds of counsel) for the Commissioner of Patents.

Before MILLER, EDGERTON, and ARNOLD, Associate Justices

PER CURIAM:

The finding and judgment of the trial court find full support in the record. Appellants have failed to meet the burden imposed upon a plaintiff in a section 4915 proceeding1 and are not entitled to a patent. Affirmed.

[U. S. Court of Appeals for the District of Columbia]

FRENCH ET AL. v. COLBY ET AL.

No. 8,798. Decided March 12, 1945

574 O. G. 785; 147 F. (2d) 883; 64 USPQ 499

1. INTERFERENCE-FOREIGN INVENTION-DATE OF INVENTION IN UNITED STATES. The inventor of an integrally woven ladder construction for Venetian blinds, who made that invention in England, Held entitled for conception and disclosure to the date when a letter specifying the problem to be solved, describing the solution, and enclosing a sample was received in this country.

2. SAME PRIORITY.

Evidence reviewed and Held that the district court should have awarded priority to appellants.

APPEAL from the District Court of the United States for the District of Columbia. Reversed.

Mr. Harry C. Bierman for French et al.

Mr. Herbert B. Barlow (Mr. Earle D. Crammond of counsel) for Colby et al.

Before MILLER, EDGERTON, and ARNOLD, Associate Justices

MILLER, A. J:

This is a proceeding under R. S. 4915. The invention in dispute is an integrally woven ladder web for Venetian blinds, the web consist

Abbott v. Coe, 71 App. D. C. 195, 197-198, 109 F. (2d) 499, 451-452, 512, O. G. 3; Daniels v. Coe, 73 App. D. C. 54, 58, 116 F. (2d) 941, 945, 521 O. G. 787; Morrison v. Coe, 75 U. S. App. D. C. 219, 220, 127 F. (2d) 737, 738, 537 O. G. 269.

ing of two vertical outer bands having cross-straps therein on which the slats of a Venetian blind may rest. Prior to the present invention, when two vertical outer bands were made of different colors for decorative purposes, the interweaving of threads of the two colors to make the cross-straps resulted in showing specks of different colors in the areas where the cross-straps were bound-in with the outer bands. The present invention overcomes the defect by making the warp threads of the cross-straps in two colors; each alternate thread being of the color of one of the outer bands and the other alternate thread being the color of the other outer band; the binding-in of the cross-strap warp thread being accomplished in such manner as to bind in only the corresponding color in each of the bands; the process being more elaborately described in count 1 set out in the margin.' The Patent Office concluded that appellant, George Frederick French, was the first to conceive and disclose the invention. The district court, on the other hand, awarded priority to Colby.

Colby's date of disclosure is March 6, 1939. Whether French is entitled to an earlier date depends upon the interpretation which should be placed upon the following facts: [1] On January 27, 1939, appellants sent, from their office in England, to their office in New York, a letter, directed to the attention of Mr. Harris, which described the invention and enclosed a sample; [2] this letter was received during the first week of February by Miss Donovan and Mr. Harris: [3] on February 27, 1939, Miss Donovan prepared a memorandum which described the ladder web in issue and the fact that Harris was to discuss it with Gibbons, manager of appellants' mill at Fall River, Massachusetts; [4] Harris went to Fall River, with the memorandum and the French sample and disclosed the ladder web to Gibbons "early in March 1939;" [5] the first written record made by Gibbons concerning the invention is a chain draft, dated March 10, 1939.

The trial judge concluded as a matter of law:

For a date of invention to be established in this country by reason of the introduction of a foreign invention, some person in this country must be capable

1 An integrally woven ladder construction consisting of two main webs having exterior faces of differing color characteristics, connected at their interior faces by cross tapes having color characteristics which include the color characteristics of both of the outer webs as a result of the cross tapes being constructed of wefts and of warps part of which possess the color characteristics of one main web and which are interwoven into only that main web, and the other part of which possess the color characteristics of the opposite main web and which are interwoven into only said opposite main web, while the warps which possess the unlike color characteristics of the main web extend over and adjacent to the inner surface of that main web, whereby each main tape is free on its exterior surface from the color characteristic of the opposite main web.

2 "One of the troubles with 2-tone ladder web has been the speck marks where cross and body tapes of different colour join together. Two of our tacklers have just overcome this difficulty see sample enclosed. Mr. Gibbons will easily be able to solve the technical side of it. You will see that the cross tape is in both colours of which only the appropriate one is bound into each body. The strength of binding is not quite as much as before, but quite adequate."

of understanding the invention and the date of such person's understanding. the invention is the date established.

He found as facts that Gibbons was the only technical French affiliate in the United States who could understand the invention and that the earliest proven date of knowledge and understanding of the invention was March 10, 1939. On this appeal, appellees conceded that Harris showed the sample product to Gibbons before March 6, 1939, but denied that this constituted a disclosure and argued that "it was necessary for him to examine a specimen under a magnifying glass in order to understand it;" consequently, that French cannot go back of March 10, 1939, the date which appears on the chain draft prepared by Gibbons.

[1][2] We agree with the Patent Office that French is entitled to a date early in February 1939, when his letter was received in New York. The letter specified the problem to be solved, described the solution, and enclosed a sample. The invention is sufficiently simple to be understood, even by a non-expert person. But in any event, it passes belief that Gibbons, an admitted specialist, who had been working toward a solution of the same problem, should have had the slightest difficulty in understanding the invention when the sample was shown to him prior to March 6, 1939.

Reversed.

[U. S. Court of Appeals for the District of Columbia]

W. M. WELCH MANUFACTURING COMPANY v. COE, COMMISSIONER OF

1. PATENTABILITY-METHOD OF MAKING FUSED QUARTZ ARTICLES.

Appellant's claimed method of making fused quartz articles, alleged by appellant to differ from the prior art references in the use of silicic acid, “an entirely different chemical compound" than powdered quartz crystals or other powders Held not to rise to the dignity of invention.

2. SUIT UNDER SECTION 4915 R. S.-CLAIMS CONSIDERED.

"Appellant seeks now to abandon the issue tried in the Patent Office; rid itself of the other claims and the specification which reveal a concept of use in the unqualified alternative of powdered quartz or silicic acid; read into the remaining claims, a new concept, based upon ‘an entirely different chemical compound;' and secure an adjudication in this court of an issue not heretofore presented. This amounts to an attempt to secure a patent upon new claims, not considered by the Patent Office and cannot succeed."

'See Winter v. Latour, 35 App. D. C. 415, 157 O. G. 209; see, generally, 1 Rivise and Caesar, Interference Law and Practice (1940) § 116.

* Sydeman v. Thoma, 32 App. D. C. 362, 373, 141 O. G. 866; McGrath v. Burke, 56 App. D. C. 220, 12 F. (2d) 161, 352 O. G. 535.

APPEAL from the District Court of the United States for the District of Columbia. Affirmed.

Mr. Raymond L. Greist (Mr. Earle D. Crammond of counsel) for W. M. Welch Manufacturing Company.

Mr. W. W. Cochran (Mr. R. F. Whitehead of counsel) for the Commissioner of Patents.

Before MILLER, EDGERTON, and ARNOLD, Associate Justices

MILLER, A. J.:

This is a proceeding under R. S. 4915. The claims are for a method of making fused quartz articles. All claims were denied both by the Patent Office and by the district court. On this appeal, it is contended that the claimed invention lies in the use of silicic acid, "an entirely different chemical compound" than powdered quartz crystals or other powders, in the first step of the process. This is the vital point, says appellant, at which the claimed discovery differs from the prior art references. We agree with the district court and the Patent Office that the methods described do not rise to the dignity of invention.1

Moreover, an examination of the claims in issue before the district court and the Patent Office tribunals reveals that when they were drawn, the so-called distinction was not in the mind of the inventor. Instead, it is an afterthought. Appellant seeks now to abandon the issue tried in the Patent Office; rid itself of the other claims and the specification which reveal a concept of use in the unqualified alternative of powdered quartz or silicic acid; read into the remaining claims, a new concept, based upon "an entirely different chemical compound;" and secure an adjudication in this court of an issue not heretofore presented. This amounts to an attempt to secure a patent upon new claims, not considered by the Patent Office, and cannot succeed.2 Affirmed.

[U. S. Court of Appeals for the District of Columbia]

JOSSERAND v. COE, COMMISSIONER OF PATENTS

No. 8,784. Decided June 18, 1945

577 O. G. 5; 150 F. (2d) 159; 65 USPQ 563

PATENTABILITY-DRIVE-IN THEATRE.

Appellant Held not entitled to a patent upon the claims to a drive-in theater sought in his reissue application.

1 Radtke Patents Corporation v. Coe, 74 App. D. C. 251, 268, 122 F. (2d) 937, 954, 535 O. G. 3; L. Sonneborn Sons, Inc., v. Coe, 70 App. D. C. 97, 100, 104, F. (2d) 230, 233, 502 O. G. 4; Minnesota Mining & Mfg. Co. v. Coe, 69 App. D. C. 217, 220, 99 F. (2d) 986, 989, 493 O. G. 946; cf. The Mathieson Alkali Works, Inc., v. Coe, 69 App. D. C. 210, 214, 99 F. (2d) 443, 447, 497 O. G. 768.

2 Cherry-Burrell Corporation v. Coe, 79 U. S. App. D. C. 124, 143 F. (2d) 372, 567 O. G. 179; Lucke v. Coe, 63 App. D. C. 61, 69 F. (2d) 379, 439 O. G. 839; Shoemaker v. Robertson, 60 App. D. C. 345, 54 F. (2d) 456, 413 O. G. 565.

APPEAL from the District Court of the United States for the District of Columbia. Affirmed.

Mr. Lester B. Clark and Mr. Emmett Leo Sheehan for Josserand.

Mr. W. W. Cochran (Mr. E. L. Reynolds of counsel) for the Commissioner of Patents.

Before MILLER, EDGERTON, and ARNOLD, Associate Justices

PER CURIAM:

This appeal involves claims for reissuance of a patent previously granted relating to a drive-in theater. These claims were rejected, first, by the Patent Office and, again, by the district court in a R. S. Section 4915 proceeding. One was rejected on the ground that it was not properly supported by the applicant's disclosure; the others, for the reason that they were either [1] the same as or broader than claims which he had abandoned in his previous application or [2] unpatentable over the prior art. We agree that appellant is not entitled to a patent upon these claims, for the reasons stated.

Affirmed.

[U. S. Court of Appeals for the District of Columbia]

NOYES v. COE, COMMISSIONER OF PATENTS

No. 8,819. Decided May 28, 1945

577 O. G. 6; 149 F. (2d) 835; 65 USPQ 392

FATENTABILITY-FREEZING COMESTIBLES.

Appellant, Held not entitled to a patent on the freezing of comestibles with compatible solutions.

APPEAL from the District Court of the United States for the District of Columbia. Affirmed.

Mr. Herbert A. Baker (Mr. William M. Cushman on the brief) for Noyes. Mr. W. W. Cochran (Mr. E. L. Reynolds on the brief) for the Commissioner of Patents.

Before MILLER, EDGERTON, and ARNOLD, Associate Justices

PER CURIAM:

The findings and judgment of the trial court find full support in the record. Appellant has failed to meet the burden imposed upon a plaintiff in a section 4915 proceeding1 and is not entitled to a patent. Affirmed.

1 Abbott v. Coe, 71 App. D. C. 195, 197-198, 109 F. (2d) 449, 451-452; Daniels v. Coe, 73 App. D. C. 54, 58, 116 F. (2d) 941, 945; Morrison v. Coe, 75 U. S. App. D. C. 219, 220, 127 F. (2d) 737, 738.