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[1] A physical examination of that lighter shows that it meets the requirements of counts 1, 2 and 3, namely, the "ribbon is substantially V-shaped in cross section," and the "successive courses of said spiral * * * [are] substantially in contact each with the next whereby said annulus resists deformation in an axial direction." Youhouse's testimony convinces us that the wire used for the lighter was an aluminum alloy which was oxidized to form an aluminum oxide insulating coating. This satisfies the limitation, "said courses being insulated from each other at their points of contact solely by an insulating oxide.”

The next question to be considered is whether the work done by Fenn and his subordinates amounted to an actual reduction to practice. As has been stated, Fenn had the lighters tested in various ways. He testified as follows:

Q. 79. I would like to know what was done with this particular lighter, this particular sample that you mentioned. I would like to know what was done. A. Well, the questions that I was primarily interested in had to be tested to see what the results were. I would say the most important requirement was to see whether or not the coil would creep or distort under heat. The second major requirement was, since we were using a thinner cross-section wire, the cherryred factor was a vital point. By that I mean the requirement of a lighter is that it retain what we term cherry-red color, which is a heat, for a minimum of eight to ten seconds, since if it does not, it is not a satisfactory lighter, or would be known as a "cold light", and would pull tobacco from the end of a cigarette. Now naturally, when you use a heavy cross-section, the mass is greater, and the heat is retained more easily. With a lighter, thinner gauge wire, it normally would cool much faster. To overcome this, the idea was to put more wires into the same diameter element retainer, wind the turns closely and retain the heat, in theory. And I was anxious to determine whether this would work out in practice.

Q. 80. Did you determine it? A. Yes, I did.

Q. 81. When did you determine it? A. I would say within a few weeks of the time I first put the sketch on paper and instructed him to proceed with this development. I visited the laboratory many times while the lighter was on test, and cycling. *

[2] Throughout the year 1951 several of them were given the usual laboratory tests which were accepted by the industry as basic for cigar lighters. Although a number of the test results did not meet the requirements of the Casco Company which would have warranted production of the lighter at that time, that was not fatal since we do not believe that an actual reduction to practice necessarily requires the making of a commercially acceptable embodiment, Van Cleef v. Tierney, 28 CCPA 1039, 118 F. 2d 911, 49 USPQ 274; Radio Corporation of America et al. v. International Standard Electric Corp., 232 F. 2d 726 (CCA 3), 109 USPQ 228; see also Hildreth v. Mastoras, 257 U.S. 27, 42 S. Ct. 20, 66 L. Ed. 112; Tansel v. Higonnet et al., 42 CCPA 732, 215 F. 2d 457, 103 USPQ 58; Field v. Knowles, 37 CCPA 1211, 183 F. 2d 593, 86 USPQ 373, if the testing of it shows that it

will perform its intended function. The amount of testing necessary depends upon the facts of the particular case, Lustig v. Legat, 33 CCPA 991, 154 F. 2d 680, 69 USPQ 345; Sinko Tool & Mfg. Co. v. Automatic Devices Corp., supra.

In this instance, since the 12-volt system required the use of longer and thinner wire, the main problems to be overcome were axial distortion and shorting. The self-insulated interlocked formed ribbon solved those problems, and there is sufficient evidence to convince us that the device made according to the specifications which Fenn prescribed satisfied Fenn that he had accomplished his purpose and that the device was satisfactory.

[3] It must be remembered that Fenn and his associates were extremely experienced in this field and once they found the basic concept of the invention to be sound by testing it their principal concern was dissipated because they knew that the refinements necessary to perfect a commercially acceptable device could be made in the usual course of preparing it for mass production. Although a number of manufacturing techniques were tried and abandoned as not being practical, we know of no precedent which requires that proven methods of mass producing a device must exist before a reduction to practice is established. On the contrary, we believe the law to be that reduction to practice is proved when there is corroborated testimony that the device actually performed the function for which it was designed, Applegarth v. Wilson, 33 CCPA 1268, 156 F. 2d 373, 70 USPQ 449; Sinko Tool & Mfg. Co. v. Automatic Devices Corp., supra, which we find to be the situation here.

Counts 1, 2 and 3 read upon Exhibit B and counts 1, 2 and 4 read on Exhibit C, this latter exhibit showing a ribbon having a substantially arcuate cross-section.

Youhouse in endeavoring to devise a low-cost method of manufacturing the formed wire coil, in late 1951 instructed one Beardsley, the model maker at Casco, to use the regular coil winding machinery and wind the coil into a conical spiral using a mandrel. Beardsley made about 25 coils by this method. An arcuate shape resulted because of the shape of the mandrel. In December 1951, Exhibit C was given the "life test," and thereafter was tagged and deposited in the archives of the Casco plant where it remained "until somebody wanted to see it work." Although the method of manufacture used to make it was found to be impractical, we are of the opinion that the exhibit represents one of the configurations sketched by Fenn on Exhibit A, that it was adequately identified and there was sufficient testing of it on the life test machine to establish a reduction to practice.

Appellant has argued that if Fenn possessed a workable 12-volt "formed" self-insulating wire lighter at the time he was discussing

the Schnick-Cuno lighter with the Chrysler representative in the fall of 1952, he would have mentioned it. It is alleged that appellee's silence in that respect indicates that he did not consider his invention workable at that time. We do not agree with appellant.

[4] Appellee visited the Chrysler Company to sell them the 12-volt flat wire lighter which Casco was then producing in competition with the Schnick-Cuno formed self-insulating wire lighter. It would have been extremely poor salesmanship if Fenn had admitted at that time that he felt the Cuno type lighter to be preferable, and that he had invented one which he was having difficulty convincing his company to produce. As we understand the evidence, Fenn visited Chrysler to sell the product which Casco could deliver, not to justify his position as an inventor at the expense of his company.

Appellant relies on Beals v. Finkenbiner, 12 App. D.C. 23, and cases such as Atlantic Works v. Brady, 107 U.S. 192, 203, 2 S. Ct. 225, 27 L. Ed. 438, to support the contention that Fenn's failure to mention that he was the inventor of the formed ribbon lighter when he was discussing 12-volt lighters with the Chrysler representative is a most significant factor in his favor. While it is a factor to be considered, the circumstances which rendered it important in the cited cases are not present here. In Beals v. Finkenbiner an industry wide demand for a device to perform a certain function had arisen. Finkenbiner, the junior party to the interference, was a general manager of a company which supplied similar devices, and which in answer to the demand offered several which were unsatisfactory for the purpose during the period in which manufacturers were seeking a solution to their problem. During that same period he claims he conceived and reduced to practice a device which was acceptable, and which was not submitted by him either to the officers of his company or to the industry until after he saw that device in operation in one of the plants he supplied, at which time he asserted no claim to it.

In the case at bar Casco had an operable and satisfactory device which was acceptable to the automobile industry; there was no need in the industry which his firm was not capable of satisfying, clearly a situation different from that in the Beals v. Finkenbiner case.

In the Atlantic Works v. Brady case, the "silent" inventor was shown to have long spoken of another's plan "as the best possible plan that could be devised, and that although deeply interested in the success of the operations [with which the device was to be used], he never alluded to or hinted at any plan of his own devising different from it” [Emphasis ours], at a time when there was no device available which performed as satisfactorily as the invention he later laid claim to. This case is so obviously different from that at bar that it requires no further comment.

Appellant contends that even assuming Fenn conceived the invention in April 1951, the several unsatisfactory tests are convincing evidence that a reduction to practice was never accomplished and that those tests, together with the lack of further activity on Fenn's part, prove that he had but an abandoned experiment.

[5] Since actual reductions to practice have already been established as of April and December 1951 by the activity of Fenn and his subordinates the later tests conducted throughout 1951 and the early part of 1952 directed to the problems of devising a method for mass producing and in further perfecting the device are not significant in a determination of a reduction to practice. [6] With respect to the issue of the device being an abandoned experiment, once reduction to practice has been found that question no longer exists. Brown v. Childs, 28 CCPA 1229, 120 F. 2d 350, 49 USPQ 713. Therefore evidence of subsequent experimenting and testing is without probative value.

[7] We come now to appellant's contention that Fenn concealed or suppressed his invention. In support of this position Schnick cites the fact that Fenn did not file his application until November 12, 1952, 19 months after Fenn conceived the invention and then only because he was stimulated by having procured one of appellant's lighters in September 1952. On innumerable occasions the courts have held that the length of time between reduction to practice and filing is not significant in and of itself, but that each case must be determined on its own set of facts. Brown v. Childs, supra; Wheeler v. Linton, 38 CCPA 799, 186 F. 2d 738, 88 USPQ 382; Rhinevault v. Pfiester, 20 CCPA 1112, 65 F. 2d 161, 17 USPQ 510.

Furthermore, the type of concealment which would estop an inventor from asserting his rights to an invention presupposes that the concealment was intentional. Rhinevault v. Pfiester, supra. The testimony here is devoid of any evidence which shows that characteristic to be present. Quite to the contrary, there are mitigating circumstances which convince us that Fenn cannot be chargeable with concealment or suppression.

Although in late 1951 and early 1952 large scale mass production of a 12-volt lighter for automobiles was not necessary since only a few were needed to satisfy the demand, it soon became apparent as more and more automobile companies decided to convert to 12-volt systems, that the mass production of 12-volt lighters was required. When it became obvious that the automobile industry was in earnest about converting, it became imperative for Casco to mass produce a 12-volt lighter quickly in order to secure as much of this business as possible. Casco had already perfected 12-volt lighters having flat 0.014" resistance ribbons, some having ceramic cement between the convolutions and others not. The company decided to proceed with the production

of those so that they would not be in a handicapped position, hence it produced 2 or 3 million of this type of lighter.

Fenn, the executive vice president of Casco, went to Detroit to endeavor to sell those lighters to the automobile companies and was successful in that endeavor. His company could not wait for the perfection of a technique to mass produce his invention in view of the highly competitive nature of the automobile accessory business.

Furthermore, even though Fenn was executive vice president of Casco and son-in-law of the president, he could not order the production of a new type of lighter which would require retooling operation in the plant especially when, during the period from December 1951 to September 1952, they were continuing "the development of the best design" and spending "a great deal of time discussing the feasibility of manufacturing an element of *** [Fenn's] design for production." There is ample evidence that he endeavored to convince the various people in the hierarchy of his company to adopt his lighter. Ultimately though, it was Fenn's responsibility to manage the company so that its operation would run smoothly and profitably. Inventing was an extra-curricular activity of his.

This is not to say that Fenn was not concerned about filing an application for his invention during that period. In December 1951 he called his patent attorney and described to a patent agent in that office the fundamentals of his invention. That fact was corroborated by testimony and documentary evidence. At that time a preliminary search was made and Casco was billed for it. Undoubtedly there was a period between December 1951 and November 1952 when appellee could have filed his application, but Fenn could have been discouraged about the mass production of his lighter by the Engineering Department of Casco and the fact that the company was proceeding with the production of the 12-volt flat wire lighter.

We do not find sufficient evidence in this record to justify a conclusion that appellee concealed or suppressed his invention. Appellee might have been stimulated into action by the Cuno lighter which came into his possession, but it is more likely that he was motivated by the knowledge which he obtained in September 1952, i.e., that the entire automobile industry had definitely decided to convert to a 12-volt system. Whether it was either or both factors is not significant because evidence of wilful concealment or suppression is not present. The record in this case is voluminous and we believe counsel for appellant in their brief have developed with great care every conceivable proposition which might support a judgment in appellant's favor. However, since we are of the opinion that appellee did conceive and reduce to practice a device upon which the counts read prior to the invention thereof by Schnick, and since we find neither conceal

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