INTERFERENCE-Continued.

17. PRIORITY.-Evidence reviewed and Held that the district court should have awarded priority to appellants. Id.

18. SAME.-Evidence for appellant, the junior party, reviewed and Held that he had not established either conception of the container in issue or reduction of it to practice prior to his filing date, and that priority properly was awarded to appellee, the senior party. *Eggerss v. Carpenter, 171.

19. SAME. "It appears to us, as it did to the Board of Interference Examiners, that appellee reduced the invention defined by the counts to practice on October 4, 1934. Since that date is prior to any that may be claimed by appellant, and since there is no evidence of abandonment, suppression or concealment after reduction to practice, the decision of the Board will be affirmed." *Lovell v. Peer, 227.

20. SAME. Record reviewed and Held that as to count 1, upon which appellant maintained his appeal, priority properly was awarded to appellee. *Webb v. Harrison, 301.

21. SAME.-Record reviewed and Held that the application of Colman, the senior party, discloses all the elements of the counts, and that priority properly was awarded to him. *Wheeler, et al. v. Kleinschmidt et al., Blanchard et al. v. Kleinschmidt, Blanton v. Kleinschmidt, Wheeler et al. v. Klenischmidt, Blanchard et al. v. Colman, Blanchard et al. v. Kleinschmidi et al., 259.

22. SAME.-Record reviewed and Held that Colman, the senior party, has the right to make the count, and that priority properly was awarded to him. *Id. 23. SAME. Record reviewed and Held that the application of Colman, the senior party, discloses the subject matter of the counts, and that priority properly was awarded to him. *Id. 24. INOPERATIVENESS.-"Appellee's device, being the subject of an issued patent, is presumed to be operative, and this presumption is supported by the concurring holdings of the Primary Examiner and the Board of Interference Examiners that appellee's disclosure is sufficient to enable one skilled in the art to make his system operative. Under such circumstances a very clear showing is necessary to justify a holding of inoperativeness. We are unable to hold that such a showing has been

made." *Id.

25. PRIORITY.-The telegraph system disclosed in the reissue application of appellee Kleinschmidt Held to be operative and to satisfy count 3 in issue; and the award of priority to said appellee affirmed. *Id. 26. SAME.-Held that appellee Kleinchmidt does not disclose a "finder switch" in his reissue application, interpreting that term in the light of appellant's patent, and is not entitled to make counts 2 to 7 in issue; and that the decision of the Board of Interference Examiners awarding priority to said appellee would be modified, being affirmed as to count 1 and reversed as to counts 2 to 7. *Id.

27. SAME.-Held that appellee Kleinchmidt is entitled to make count 4 in issue, but not counts 1, 5, 6. and 9 to 13 in issue; and that the decision of the Board of Interference Examiners awarding priority to said appellee would be modified, being affirmed as to counts 2, 3, 4, 7, and 8, and reversed as to counts 1, 5, 6, and 9 to 13. *Id. 28. SUPPRESSION, CONCEALMENT AND ABANDONMENT.-"Appellee in filing his applications as above set out has done what he is entitled to do under the law, and therefore it is unnecessary to discuss suppression, concealment and abandonment." *Baker, Jr., et al. v. Alther, 331. 29. BURDEN OF PROOF.-In the interference involving, on the one hand, an application filed on October 12, 1936, by Nelson for reissue of his patent granted January 14, 1936, upon an original application filed October 6, 1933, and, on the other hand, an original application filed on April 5, 1933, by Hainsworth, Held that since the Hainsworth application antedated the original Nelson application by about six months, Hainsworth was the senior party and the burden was upon Nelson to establish priority by a preponderance of the evidence. *Nelson v. Hainsworth, 309.

30. SAME.

INOPERATIVENESS.-"The burden, of course, rested upon Nelson, as the junior party, to establish the inoperativeness of the Hainsworth device by a preponderance of the evidence." *Id.

654637-46- -44

INTERFERENCE-Continued.

31. INOPERATIVENESS.-The action of Hainsworth in introducing evidence affirmatively to establish operativeness of the absorption refrigerating system disclosed in his application, Held not a concession on his part that Nelson had established a prima facie case of inoperativeness. *Id. 32. SAME. "We think it is also clear from the evidence that devices which closely approached the drawings of the Hainsworth application were constructed and that they produced refrigeration to an extent sufficient to demonstrate operativeness, and we feel constrained to agree with the bolding of the Board to the effect that the modifications made were within the purview of those skilled in the art." *Id.

33. PRIORITY.-Held, in agreement with the Board of Appeals, that the absorption refrigerating system disclosed in the Hainsworth application is operative; that both parties were restricted to their record dates for both conception and reduction to practice; that Hainsworth was not shown to have derived the invention in issue from Nelson; and that Hainsworth was not estopped, and Hainsworth and his assignee were not bound under a license agreement with Nelson's assignee in any manner which precluded Hainsworth from contesting with Nelson the question of priority; and accordingly Held that priority properly was awarded to Hainsworth, the senior party. *Id. 34. SAME.-Appellee Held entitled to the benefit of the filing date of his earlier application, which was allowed approximately three weeks before his continuation-in-part, directly involved in interference, was filed; and that date being prior to the dates alleged in appellants' preliminary statement for conception and reduction to practice, priority Held properly awarded to appellee. *Harder et al v. Hayward, 335.

35. DILIGENCE POVERTY.-Held that appellant Valley had failed to show such lack of financial ability to develop the oil-control ring in issue as would excuse his lack of diligence. *Bowers v. Valley and Ernst, Valley v. Bowers and Ernst, 323. 36. PRIORITY."The Board correctly held that neither Bowers nor Valley met the burden of proving priority over the party Ernst by a preponderance of evidence. Its decision awarding priority to Ernst of the invention of the two counts involved is accordingly affirmed." 37. SAME.-Evidence reviewed and Held that Lynes, the junior party, failed to establish conception of the invention defined in the counts prior to the filing date of Lehnhard, the senior party, and that priority properly was awarded to Lehnhard. * Lynes v. Lehnhard, 480.

Reduction to Practice

*

38. CONSTRUCTIVE REDUCTION TO PRACTICE.-Appellant's German application Held not to constitute a constructive reduction to practice of the count on appeal, because it did not so clearly and concisely disclose the invention therein expressed as to meet the requirements of the law. *Engelbrecht v. Rogers, 145.

39. SAME. "The disclosure of fourteen starting materials from which one may be selected to be reacted with one of eleven oxo-compounds in the presence of a halogen hydracid, which resultant product is to be reacted with one of eight or nine tertiary organic bases, especially where not all, but only some, of the compounds in each group will react so as to form the end product specified in count 5, could hardly be said, under the circumstance, to be such a disclosure as to be convincing that in the first German application Engelbrecht had in mind the particular compound or chemical proce. s involved here. But if it were assumed that he did have in mind such compound, it seems clear to us that neither it nor the method of producing it is taught sufficiently to meet the requirements of this case." *Id.

40. APPEAL RECORD.-With respect to an earlier application relied upon by appellant for constructive reduction to practice, Held that "in the absence of the text of the early application we must accept as conclusive the factual finding of the Board that it does not support count 1." *Webb v. Harrison, 301.

INTERFERENCE-Continued. 41. CONSTRUCTIVE REDUCTION TO PRACTICE. Where appellee filed an alleged parent application on April 15, 1935, a "continuation" of that application on June 17, 1939, and a "division" of said continuation on July 28, 1941; the continuation was copending with the thereafter abandoned parent case, and the division with the thereafter abandoned continuation; and all three applications disclosed the subject matter of the interference in which the divisional application was involved, Held that appellee was "entitled to the benefit of his earliest date, April 15, 1935, for conception and constructive reduction to practice." *Baker, Jr., et al. v. Alther, 331,

42. DILIGENCE-POVERTY.-"While the evidence shows that he was a poor man, it does not appear that at any time he was so lacking in funds as to have prevented a proper test at the proper time. There is testimony to the effect that in 1937 and 1938 he had an income of forty dollars a week and that his expenses, which he paid out of that income, came to approximately the same amount. The record shows, however, that he did buy a Chrysler car in 1937; and, furthermore, no lack of funds prevented him from further activity except at a date too late to be of advantage here." *Bowers v. Valley et al., Valley v. Bowers et al., 323. 43. NECESSITY OF TESTS.-"A piston ring is not a device of such simple character and readily apparent efficacy as to fall within the holding of such cases as Mason v. Hepburn, 13 App. D. C. 86, 84 O. G. 147, and Schartow v. Schleicher, 35 App. D. C. 347, 156 O. G. 800, to the effect that no actual test is required to show utility and thus amount to a reduction to practice." _*Id.

44. SUFFICIENCY OF TESTS EVIDENCE.-Where a ring assembly, Exhibit 10-A, was tested by appellant Bowers and in the record of tests it was concluded that said "set-up may have merit as a slapper scraper," Held that the "entry must be looked upon at least as evidence of a doubtful attitude as to whether or not there was any merit in the device," and would indicate "that there was at least a doubt in the mind of the one who made the entry as to whether or not the ring would operate to accomplish satisfactorily the chief purposes which it was to serve. *Id.

45. SAME-SAME.-"Tests should be 'such as to establish_utility beyond probability of failure.' Taylor v. Swingle, 30 C. C. P. A. (Patents) 1219, 136 F. (2d) 914, 58 USPQ 468, 556 O. G. 716." *Id.

46. SAME SAME CORROBORATION. "The testimony of Bowers' corroborating witnesses is too indefinite and uncertain on the important question as to the success of the tests to be accepted here as amounting to a reduction to practice.' *Id.

47. ABANDONED EXPERIMENT. "After these tests had ended, nothing more was done by Bowers for about three years. In the interval between the tests and the time of filing the instant application, he had filed as many as forty patent applications and was granted at least ten patents. When he filed the instant application, he did not use as a basis for it, the structure of Exhibit 10-A. While this latter fact, standing alone, would not be of very great significance, it, when taken together with the other circumstances recited, lends support to the conclusion of the Board that the 1937 tests amounted to nothing more than an abandoned experiment." *Id.

48. SAME. "When there is a doubt as to whether there has been an actual reduction to practice, the subsequent conduct of the inventor may disclose that, instead of a reduction to practice, the acts relied upon show that what was done amounted to nothing more than an abandoned experiment." *Id.

49. SUFFICIENCY OF TESTS.-"The invention here, as is apparent from all three applications, is directed to the breaking up and dispersion of carbon formation on the ring. Of course, to successfully accomplish this purpose, one would obviously want to use a ring which would not leak oil. If the inventor satisfactorily ascertains that it will not leak oil, this alone does not suffice for a showing that it will take care of the carbon problem. The utility of Bowers' ring, Exhibit 10-A, was not sufficiently shown to amount to a reduction to practice of the invention with which all three of the parties here were concerned." *Id.

INTERFERENCE-Continued. 50. TESTS. "To constitute reduction practice of a complex mechanical device as the basis for awarding priority of invention, the law requires a preponderance of evidence in an interference proceeding to the effect that the device was subjected to a test under actual working conditions which demonstrated not that the device might work, but that it actually did work. See, Jacke v. Long, Jacke v. Goldsborough, 27 C. C. P. A. (Patents) 1147, 111 F. (2d) 184, 45 USPQ 354 520 O. G. 4; Payne v. Hurley, 21 C. C. P. A. (Patents) 1144, 71 F. (2d) 208, 21 USPQ 624, 448 O. G. 3." *Chandler v. Mock, 467.

51. SAME. "An engine is not defined as a limitation of the count here in issue and it is not for this court to say in what manner an inventor shall make use of his device. However, the burden of proof was upon appellant to establish the use to which his carburetor was to be applied and to establish that the actual working conditions under which it was designed to function were present in making the test to which the device was subjected in order to establish its reduction to practice. McKee v. Stevens, 23 C. C. P. A. (Patents) 701, 79 F. (2d) ̊ 914, 27 USPQ 358, 462 O. G. 673." *Id.

52. SAME. "Appellant produced no proof as to whether the nature of the tests that were made met these requirements. It is true, as stated in his brief, that 'the function of a carbureter is to mix the air, flowing to the engine, with gasoline or other combustible fuel; and to control the proportions of the mixture.' Moreover, carburetors, like spark plugs, are commonly used in engines and bench or shop tests which do not meet the requirements of the acutal working conditions under which such devices are designed to operate are insufficient to constitute reduction to practice. Mack v. Johnson, 1923 C. D. 227, 52 App. D. C. 300, 286 Fed. Rep. 369, 313 O. G. 4; Payne v. Hurley, supra.' *Id.

53. SAME.-Appellant's "air box" and bench tests Held insufficient to effect a reduction to practice of the carburetor in issue. *Id.

54. SAME.-Held tha the witness who made the records of the engine tests of appellant's carburetor should have clearly and satisfactorily interpreted and explained them. *Id.

55. EVIDENCE-LEADING QUESTIONS.-"Wiegand's testimony was given some six years after the time when he had conducted the tests and made the records thereof. His recollection of what then took place as to the successful operation of the device should have been directly stated by him. Instead of doing that, the words were put in his mouth in the form of a conclusion by the leading questions of counsel. In appraising the value of evidence given under such circumstances, the Supreme Court of the United States made the following comment in the case of The Barbed Wire Patent, 143 U. S. 275, 284, 58 O. G. 1555; 'Witnesses whose memories are prodded by the eagerness of interested parties to elicit testimony favorable to themselves are not usually to be depended upon for accurate information'." *Id. 56. TESTS EVIDENCE AS TO SUCCESS.-In response to the contention that the statements of appellant's "expert" witnesses of successful operation should be sufficient to establish reduction to practice, Held, "While a witness in a court of justice is not to be disparaged because he has won renown in his field of endeavor, nevertheless his reputation cannot be utilized to cover a deficiency in evidence." *Id.

57. SAME.-Held that upon appellant rested the duty of adducing facts "essential to his case in establishing successful reduction to practice;" citing Marden and Nicholson v. Braselton, 28 C. C. P. A. (Patents) 1077, 119 F. (2d) 174, 49 USPQ 256, 529 O. G. 251; and MacGregor v. Johnston, 21 C. C. P. A. (Patents) 1216, 71 F. (2d) 165, 22 USPQ 42, 448 O. G. 508. *Id.

58. SAME. "Appellant urges that the involved tests demonstrated that the basic structure of the invention here in issue was capable of producing the result sought to be accomplished and that only slight details of such structure were altered in a desire to achieve the best performance of the tested device. *** The cases relied upon by appellant in this connection disclose that in each instance the invention described in tne issue had been reduced to practice and that subsequent alterations were made to perfect its operation. Such is not the case here." *Id.

INTERFERENCE-Continued.

Reissue Applications

59. DECLARATION.-"Rule 94 of the Rules of Practice in the United States Patent Office provides for the inclusion of original or reissue applications in an interference only when the claims involved are allowable in such applications. Accordingly, the Primary Examiner would have been manifestly wrong had he added appellents' reissue application to the pending interference without first determining whether or not the appealed claims were allowable in that application. Having determined that the appealed claims were not allowable in appellants' reissue application, the Examiner properly refused to add the involved application to the interference." *In re Cornell et al. 535.

Res Adjudicata

60. RES ADJUDICATA. With respect to claims presented by appellant in an application of one Eger, which had been involved in an interference with the application of one Watson, Held that "since it is conceded by appellant that the claims here presented are not patentable over the Watson application, and since in an interference with the Watson application an award of priority on the general subject matter was given to Watson, the issue presented by appellant has become res adjudicata." United States Rubber Company v. Coe, Commissioner of Patents, 2. 61. SAME "Although the parties in interference No. 68,426 and in the instant interference are the same, and appellee's original application was involved in the prior interference, the application which matured into appellants' patent here involved was not in the prior interference, nor did the application of Dirkes and Kimball disclose the invention involved in the instant interference. Furthermore, from an examination of the counts involved in the prior interference and those here in issue, it is evident, we think, that the causes of action involved in the instant interference differ materially from those involved in the prior interference. The difference is not merely one of scope or breadth, but the counts in the instant interference are for distinct and separate inventions from those defined by the counts in the earlier interference. Accordingly, the decision in interference No. 68,426 is res adjudicata only as to the issues actually litigated and determined therein, and not as to the issues which might have been, but were not, litigated and determined. As the question of the operativeness of appellee's disclosure was not raised or determined in that interference, the decision therein does not estop appellants from raising that question in the instant interference.' *Wheeler et al. v. Kleinschmidt et al., Blanchard et al. v. Kleinschmidt, Blanton v. Kleinschmidt, Wheeler et al. v. Kleinschmidt, Blanchard et al. v. Colman, Blanchard et al. v. Kleinschmidt et al., 259.

Right to Make Claims

62. PRIORITY.-Record reviewed and Held that appellee, the senior party, had the right to make in his reissue application the claim copied from the patent to appellant, and that priority properly was awarded to appellee. * Ullstrand v. Coons, 196.

63. COUNTS-ADMISSION.-"Appellants, in effect, admitted that the counts read on the involved application when they made no motion to dissolve." * Baker, Jr., et al. v. Alther, 331.

64. RIGHT TO MAKE COUNTS.-"The Board correctly stated that under the state of facts here appearing it was not essential that Lehnhard should have had claims in his application as filed covering the subject matter, or that in order to make the counts such application should have contained a drawing depicting the device. It was sufficient if the specification disclosed it, and we agree with the Board that it did so, and that Lehnhard, therefore, has the right to make the counts." *Lynes v. Lehnhard, 480.