Priority 15. "*** 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 concealment nor suppression of the invention by Fenn, appellee must prevail in this interference proceeding. Therefore, we affirm the decision of the Board of Patent Interferences." Schnick v. Fenn, 512. 16. TESTS-BINARY COUNTER.-Decision of the Board of Patent Interferences awarding priority of a binary counter to the junior party, Schmitt, reversed, with the comment that "We *** are unable to agree that Schmitt's device was sufficiently tested to establish an actual reduction to practice." *William C. Elmore v. William F. Schmitt, 296. 17. DETERMINATION OF INVENTORSHIP.-Where, in working together in developing the carrier in issue, appellant Van Otteren and appellee Hafner experimented unsuccessfully with a carrier having steel rings around the body of the carrier, which, at the suggestion of Van Otteren, were replaced, unsuccessfully, by a segment of a steel ring slidably adjustable along a track recessed in the body of the carrier, and thereafter Hafner suggested use of radially polarized magnets, and upon incorporation of such magnets the carrier proved successful, Held that Hafner's suggestion was the spark which led to the final satisfactory result, and Hafner was to be regarded as the inventor; that while Hafner's suggestion resulted from Van Otteren's use of a steel segment mounted in a slot, the first conception of the complete invention was disclosed by Hafner; and that "Once the idea of using magnets was advanced against the background of the prior disclosure of the movable segment, all that remained to be done was to work out the mechanical details of mounting the magnets." *Wilbur M. Van Otteren v. William J. Hafner et al., 331. 18. COMPOSITION OF MATTER.-The decision of the Board of Patent Interferences awarding priority of invention to appellee of a count to a new composition of matter, di-(2,3-epoxycyclopentyl) ether, reversed. *Benjamin Phillips and Paul S. Starcher v. Arthur W. Carlson, 345. 19. COMPOSITION OF MATTER.-The decision of the Board of Patent Interferences awarding priority to appellee of a count to a ferromagnetic ferrite body is affirmed. *Imre J. Hegyi v. Ernst Albers-Schoenberg v. Pieter Geldermans and Pieter Van Den Ban, 473. Reduction to Practice 20. TESTS.-Where several of appellee's automobile cigar lighters were given the usual laboratory tests accepted by the industry as basic for cigar lighters, the fact that a number of the test results did not meet the requirements of appellee's licensee which would have warranted production of the lighter, Held “*** not fatal since we do not believe that an actual reduction to practice necessarily requires the making of a commercially acceptable embodiment, ***, if the testing of it shows that it will perform its intended function"; and Held that "The amount of testing necessary depends upon the facts of the particular case, *Schnick v. Fenn, 512. 21. SAME. "It must be remembered that Fenn [appellee] 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, * which we find to be the situation here." *Id. 22. "Appellant [Schnick] has argued that if Fenn [appellee] possessed a workable 12-volt formed' self-insulating wire lighter at the time he was discussing the Schnick-Cuno lighter with the Chrysler repre sentative 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." *Id. 23. Beals v. Finkenbiner DISTINGUISHED.-In connection with appellant Schnick's reliance on Beals v. Finkenbiner, 12 App. D.C. 23, to support the contention that appellee Fenn's failure to mention that he was the inventor of the formed ribbon lighter when he was discussing the 12-volt lighters with the Chrysler representative was a most significant factor in appellant's favor, Held that, while it was a factor to be considered, the circumstances which rendered it important in the cited case were not present in the case at bar; that in the case at bar appellee's licensee and firm "had an operable and satisfactory device which was acceptable to the automobile industry"; and that 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. Finkenbinder case" (where an industry wide demand for a device to perform a certain function had arisen). *Id. 24. SAME ABANDONED EXPERIMENT.-"Since actual reductions to practice have already been established as of April and December 1951 by the activity of Fenn [appellee] 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. With respect to the issue of the device being an abandoned experiment, once reduction to practice has been found that question no longer exists. * Therefore evidence of sub sequent experimenting and testing is without probative value." *Id. 25. TESTS-SUFFICIENCY OF LABORATORY TESTS.-"The question of sufficiency of laboratory tests to establish a reduction to practice has frequently been considered by this and other courts. Undoubtedly the general rule, as stated by the Board [Board of Patent Interferences] in the instant case, is that 'A party seeking to prove actual reduction to practice must show that his invention worked as intended to work in its practical contemplated use." *William C. Elmore v. William F. Schmitt, 296. 26. SAME-SAME.-"Determination of the sufficiency of laboratory tests to effect a reduction to practice must necessarily depend on the circumstances of the particular case under consideration including, inter alia, the simplicity or complexity of the device involved and the nature and character of the laboratory tests, as well as the conditions to which the device is subjected when in practical use. The issue here is not whether it might be possible to reduce the invention to practice by laboratory testing, but whether the particular tests made by Steagall were sufficient for that purpose." *Id. 27. SAME SAME.-"***, the record fails in a number of particulars to show that Steagall's tests accurately reproduced the operating conditions which would be encountered in any practical use of the invention. In our opinion, the record does not support appellee's argument that those particulars are of no consequence. No doubt the laboratory tests and their results were of an encouraging nature and may have justified a prediction that the invention would probably be successful if and when it was put to some specific practical use; but reduction to practice requires more than that. What is required is not a mere basis for prediction but an actual demonstration." *Id. 28. SAME-SAME-DEVICE NOT USED ALONE. “It is contended by Schmitt [appellee] that the counter is a device having general utility and that it is sold as a separate unit. It does not follow, however, that tests of the counter alone, apart from any specific practical device, are sufficient to reduce it to practice. Spark plugs and tire chains are commonly sold as separate articles of commerce, but it has been held that they require testing under conditions of actual use to effect a reduction to practice. ***. The device in issue is not made or sold with the idea of using it alone, but as part of some practical apparatus, and until it has been shown by actual tests to meet the conditions normally encountered in at least one such use, it is not, as a matter of law, actually reduced to practice." *Id. 29. SAME SAME.-"It is also argued on behalf of Schmitt, and no doubt it is true, that tests such as those employed by Steagall are commonly used in the counter art. Such tests give much useful information as to the properties of the counter," and would normally determine whether to proceed further with it; but since the tests were not shown to accurately duplicate actual working conditions in practical use, we think they are insufficient to establish reduction to practice with the required degree of certainty." *Id. 30. SAME SAME.-"Schmitt also contends that the Steagall tests involved a practical application of the counter, since the counter operated to produce one output pulse for every two input pulses. It does not appear, however, that such operation had any practical value except to test the counter itself." *Id. 31. SAME-SAME REQUIREMENT FOR OBTAINING AN EXCEPTION TO THE GENERAL RULE. “*** Schmitt [appellee] urges that Elmore [appellant] has not indicated any express requirement of a counter in its ultimate use which was not met by the conditions of Steagall's tests. However it was incumbent on Schmitt, since he was relying on laboratory tests and seeking an exception to the general rule that tests under actual working conditions are necessary, to show affirmatively that the tests duplicated the essential conditions of some practical use. We do not think that has been done." *Id. 32. TESTS.-In connection with tests involving use of the composition of the count as a systemic herbicide for tomato plants, and the testimony of a witness who was "sufficiently qualified to establish that the use of tomato plants was representative for purposes of determining the herbicidal effects of compounds upon plants in general," and to evaluate the laboratory reports, which, he testified, "indicated to him that the applied chemical had 'severe toxicity or herbicidal activity to the plant' and 'could be used as systemic herbicides,'" Held that "appellants introduced sufficient evidence to show that their compound was subjected to the standardized tomato plant test" and that appellants had proved that they successfully reduced their invention to practice. *Benjamin Phillips and Paul S. Starcher v. Arthur W. Carlson, 345. 33. CORROBORATION.-"While each and every element of a reduction to practice must be corroborated, there is no fixed single formula in proving corroboration. It may be established by documentary evidence and the activities of others such as is patently shown in the record of the instant appeal." *Id. 34. DILIGENCE IN FILING APPLICATION-ABANDONDED EXPERIMENT.-A contention that experiments by appellants amounted to no more than abandoned experiments, when a period of more than four years elapsed between alleged reductions to practice and the filing of appellants' application on July 27, 1956, Held rebutted by evidence that on May 10, 1954, a letter was sent recommending the filing of a patent application on the compound of the count, and with the letter was enclosed a patent memorandum fully disclosing and describing the compound. *Id. 35. CONSTRUCTIVE.-In connection with the reliance by the Board of Patent Interferences on Den Beste v. Martin, 45 CCPA 798, 252 F. 2d 302, 116 USPQ 584, and cases cited therein, for the proposition that in an interference, an "earlier application disclosing only one species or example *** defined in a generic count constitutes a constructive reduction to practice of that count," Held that "Of course, the application disclosing the species must be an allowable application." *Imre J. Hegyi v. Ernst Albers-Schoenberg v. Pieter Geldermans and Pieter Van Den Ban, 473. Right to Make 36. CLAIM COPIED FROM PATENT-DOUBTS AS TO RIGHT TO MAKE RESOLVED AGAINST APPLICANT.-"When an applicant copies a claim from a patent, he must show that he is entitled to make the claim. All limitations in the copied claim will be considered material in determining applicant's right to make the claim, and doubts arising as to applicant's right to make the claim must be resolved against him." *Segall v. Sims, et al., 224. INTRODUCTORY CLAUSE AND "ADAPTED" CLAUSE WITHOUT ANY ESSENTIAL PATENTABLE SIGNIFICANCE. See Claims, 14. INVENTION. See Application, 16; Design, 5; Patentability, 13, 20, 53-83, 108, INVENTION IN "PERCEPTION OF A PROBLEM". See Patentability, 61. INVENTORSHIP. See Application, 49, 50, 51. ISSUE. See Trademark, 120. JOINT APPLICATION PRIMA FACIE EVIDENCE OF JOINT INVENTOR- JURISDICTION. See Review by the U.S. District Court for the District of JURISDICTION DISMISSAL BY COURT. See Review by the U.S. District JURISDICTION OF THE BOARD. See Appeal to the Board of Appeals, 1, 2. LACHES. See Trademark, 6–9, 12. LANHAM ACT, SECTIONS 22, 26, and 46 (b). See Trademark, 11. LANHAM ACT, SECTION 45. See Trademark, 155, 165. LIKELIHOOD OF CONFUSION. See Trademark, 46, 60, 71, 91, 93, 96, 103. LIMITATIONS. See Patentability, 42. LIMITATIONS NOT EXPRESSED. See Claims, 7, 9. M.P.E.P., Section 1208.01. See Appeal to Board of Appeals, 3. MANDAMUS. See Review by the U.S. District Court for the District of Colum- MANUAL CONTROL FOR POWER MEANS. See Patentability, 79. MARKS MUST BE COMPARED IN THEIR ENTIRITIES. See Trademark, MARKS MUST BE CONSIDERED AS A WHOLE. See Trademark, 41. MATERIAL DEFINED IN TERMS OF ENVIRONMENT FACTORS OF NO MATERIALS SELECTED ON BASIS OF INTENDED USE. See Patentability, MATTER BEFORE BOARD. MATTER BEFORE COURT. See Appeal to Board of Appeals, 3. See Appeal to the U.S. Court of Customs and METHOD OF RENDERING BONDABLE THE SURFACE OF A FLUORINE- MOTION FOR NEW TRIAL. See Appeal to U.S. Court of Appeals, District of MOTION TO AMEND PRELIMINARY STATEMENT. Interference, 14. MOTION TO DISSOLVE. See Interference, 13. NECESSARY TO CONSTITUTE AN ESTOPPEL. See Application, 10; See Res Judicata, 1. NEW MATTER. See Application, 1, 31, 42; Patentability, 136. NONANALOGOUS ART. See Appeal to the U.S. Court of Customs and Patent Appeals, 6; Patentability, 3. NOTICE OF OPPOSITION. See Words and Phrases, 261. NOVELTY. See Patentability, 60. OBVIOUSNESS. See Patentability, 1, 14, 20, 52, 65, 83, 117, 139, 140, 141. OLD IN THE ART. See Patentability, 50. ONE STANDARD OF UTILITY TO BE APPLIED IN EX PARTE AND INTER OPPOSITION. See Appeal to U.S. Court of Customs and Patent Appeals, 18, ORAL MOTION. See Appeal to U.S. Court of Customs and Patent Appeals, 2. OWNERSHIP. See Trademark, 135–140. PARTICULAR CHANNEL OF TRADE. See Trademark, 70. PARTICULAR SUBJECT MATTER. See Appeal to U.S. Court of Customs and PATENT Patent System 1. CONSTITUTIONAL OBJECTIVE OF PROMOTING PROGRESS OF USEFUL ARTS.— "How does the patent system function to promote progress? It is not like a system of military awards in which medals are given out by the people to their heroes as expressions of gratitude for their exceptional services. While the element of reward is one factor in the patent system, it is probably the least important. The patent system is an incentive system calculated to do two things, principally. First, it stimulates work, research, development, invention, and discovery by holding out the prospect of profit. Second, in exchange for and as a condition of the patent protection, it secures a full disclosure of the invention. Promotion of the useful arts takes place through the combination of these two factors, the doing of the work and the disclosure of the results thereof. In the very nature of things, progress is made as the result of both the big and the little contributions, mostly the latter. We get a telephone or a triode-in modern jargon a 'major scientific breakthrough'-only at rare intervals. The seemingly little advances are the bread and butter of progress and sometimes turn out to be of much greater importance than at first thought. The biggest contribution the patent system makes to progress is to induce a steady flow of contributions and to secure their continuous disclosure." *John A. Nelson et al., In re, 369. PATENT AND APPLICATION. See Interference, 12, 13. PATENT NOT A PRINTED REFERENCE IS A REFERENCE. See Patentability, 143. PATENTABILITY. See Application, 38; Design, 4–9; Review by the U.S. District Court for the District of Columbia, 10, 11, 12. 35 U.S.C. 103 1. OBVIOUSNESS.-In regard to a rejection which appeared "to be a piecemeal reconstruction of the prior art patents in the light of appellants' disclosure," Held that "It is easy now to attribute to this prior art the knowledge which was first made available by appellants and then to assume that it would have been obvious to one having the ordinary skill of the art to make these suggested reconstructions"; that "While such a reconstruction of the art may be an alluring way to rationalize a rejection of claims, it is not the type of rejection which the statute authorizes"; that "35 U.S.C. 103 is very specific in requiring that a rejection on the grounds the invention 'would have been obvious' must be based on a comparison between the prior art and the subject matter as a whole at the time the invention was made"; and that to modify and change the patents in the manner suggested by the Examiner and and affirmed by the Board of Appeals "is to ignore the precise statutory requirement that obviousness of the differences between the invention sought to be patented and the prior art must be determined as of the time the invention was made." *In re Rothermel et al., 204. Affidavits 2. "Appellants contend that magnesium oxide, as used in the Morrogh II [a reference] process, will not produce a nodular structure in cast iron, and they have submitted affidavits purporting to establish this. We have considered the affidavits, but agree with the Examiner and the Board that they are inconclusive and fail to overcome the presumption of operativeness which attaches to the patent. Certain specific examples are given in the affidavits in which a nodular structure was not obtained although magnesium oxide was used, but it does not appear that any thorough investigation was made as to the effect of various amounts of that substance, nor does it appear that it was used in such an amount as to reduce the sulphur content of the cast iron below 0.02%, which the patent states is essential to cause the graphite to form nodules." *In re John M. Crockett et al., 356. |