files show, was issued December 3d, 1935; was the questioning of Jones relative to his original sketches prior to or after the issue of his patent? A. I don't remember the exact dates, but I do remember that in determining the general procedure, the question of whether to allow the Jones patent to come out was considered and I knew that I could put the Winsor application into interference with either a patent or application, so that there was no object, one way or the other, of holding the Jones application in the Patent Office until after an interference was declared. * This is a most surprising statement of the witness. It would seem that he should have known that his action was very beneficial to Jones and detrimental to Winsor, inasmuch as such action placed the burden upon Winsor of proving priority of invention beyond a reasonable doubt. Jones has not been injured by any of the proceedings appearing in the record, but on the contrary he has received a patent for an invention to which it now appears from the record before us he was not entitled. It should be here noted that there is not a scintilla of evidence in the record that either Commander Lavender or any other person associated with him prior to the issue of the Jones patent on December 3, 1935, ever formed or expressed an opinion upon the facts as to which of the parties, Jones or Winsor, was the first inventor. Commander Lavendar testified as follows: Having received evasive answers and having had Mr. Jones being unable to explain his own invention, rather embarrassed me in the settlement of the situation, inasmuch as the power of attorney and the license agreement between both Winsor and Jones and the Government gave me the right to settle all interferences and I didn't desire, in view of all of the circumstances in the case, to exercise that right. Accordingly, when the papers were sent over to the Department of Justice, who appears before the Patent Office in all interference proceedings, I requested the Department of Justice to appoint different attorneys to represent Winsor and Jones, and suggested that a skilled attorney in one of the Patent Sections of the War Department, represent one of the parties, in order that there would be as great a separation as possible of the interests of the two parties. This was done by the Department of Justice and a Mr. Roach, of the War Department was appointed as attorney for Jones. I was further satisfied with this selection, inasmuch as the brother of Mr. Jones, a patent attorney, was given full opportunity to be present at all hearings and all conferences on this subject. With respect to the appointment of Mr. Roach, referred to in the above quotation, Jones' counsel in his brief states that Mr. Roach is deceased and the Government refused to further represent Jones. There is nothing in the record to substantiate these statements, but it is pertinent to observe that Jones was represented by his present private counsel when the first testimony was taken in this interference proceeding on July 12, 1938, in the city of Washington. It also appears that since said time his present counsel has represented him, except that when the testimony was taken in the state of Washington no counsel appeared in behalf of Jones. In support of his contention that estoppel lies against Winsor, Jones relies, in part, upon the case of Cold Metal Process Co. v. United Engineering and Foundry Co., 107 F. (2d) 27, in which two patent applications by different persons for the same invention were being prosecuted by the same firm of attorneys before the Patent Office. Neither party knew what claims, if any, were contained in the other's application. Upon realizing the conflict of interest and without disclosing to either party the contents of the application of the other, said attorneys suggested to the owners of the respective applications that a meeting be held to see if any agreement could be entered into to protect the interests of both parties and to avoid litigation. Such a meeting was held, and an agreement was entered into, signed by the parties, in which it was agreed that claims for the common subject matter should be made in only one of the applications, and that if a patent was issued therefor the other party should be granted a license to make, use and sell the device covered by such claim. The court found the agreement above referred to was a valid subsisting contract. Obviously said decision has no application to the facts in the case at bar. It is interesting to note, however, that the parties in the case last cited were involved in prior litigation relative to the same subject matter. Cold Metal Process Co. v. United Engineering and Foundry Co., 3 F. Supp. 120. From the case last above cited, it appears that the evidence established full disclosure of the situation by the common attorneys to the respective parties, and an offer by said attorneys to withdraw as attorneys for both parties was made but declined and both parties directed the attorneys to prosecute both applications. Here Winsor, so far as appears from the record, had no knowledge of Jones' application or any claim to the invention by him prior to the issue of the Jones patent, while Jones had knowledge of Winsor's claim to the invention and tried to persuade his superior to take no steps in behalf of Winsor toward making an application for a patent for the invention. There never was any contract between the parties hereto made directly or through counsel. Neither appellant nor appellee has cited any authorities applicable to the facts of this case, and we have found none. The reason for such lack of authority may be that probably never before has it been urged in any court that estoppel exists against a party upon facts akin to the facts in this case. We are in full agreement with the Patent Office tribunals that no estoppel in the form of res judicata or otherwise exists against Winsor, and that the question of actual priority of invention was properly considered by such tribunals. [4] Considering next the evidence in the case relating to priority of invention, we would first observe that we must accept as a fact that Winsor was the first to conceive the invention. Both of the Patent Office tribunals so found, and Jones' reasons of appeal before us do not challenge such finding, but only that there was no reduction to practice by Winsor of the invention prior to Jones' filing date, October 25, 1932. Upon this question of reduction to practice, both of the Patent Office tribunals found that the invention was reduced to practice by Winsor prior to February 27, 1932. We have examined the evidence upon which these findings were based. In our opinion it establishes beyond any reasonable doubt that Winsor was not only the first to conceive the invention, but reduced it to practice prior to February 27, 1932, as held by the Patent Office tribunals. This evidence is so clear and convincing that we do not deem it necessary to further comment upon it. [5] Appellant's brief states: If the first machine of Winsor were a reduction to practice, then his lack of diligence has extended over practically a period of four years since Jones was in the field and his invention was known to Winsor's attorney, (the common attorney), which in law, was knowledge to Winsor. We are unable to understand upon what theory appellant's counsel contends that there was any duty of diligence resting upon Winsor after reducing the invention to practice. It is elementary in patent law that after a party has reduced an invention to practice, he is not chargeable with diligence, unless a subsequent conceiver has reduced the invention to practice prior to its reduction by the first conceiver. This is so well established that no citation of authorities is required. It is true that after one has conceived an invention and reduced it to practice, he may lose any rights to an award of priority by suppression and concealment of the invention. Mason v. Hepburn, 13 App. D. C. 86, is the leading case upon this subject, and while it is cited in appellant's brief, there are no facts in this case which could possibly make that doctrine applicable. One further matter requires brief comment. [6] Appellant's 7th reason of appeal reads as follows: 7. That the Board of Appeals erred in not holding that Winsor and privies had suppressed and failed to produce various pieces of evidence exclusively under their control creates the conclusive presumption that their production would have been adverse to Winsor. In his brief appellant's counsel stresses this reason of appeal, but it is sufficient to say that there is no evidence in the record indicating any evidence was suppressed. Counsel for appellant did make such a statement, but this, of course, cannot take the place of evidence. that The only evidence in the record in any way bearing upon the subject is the testimony of Commander Lavender, who testified that Jones could not satisfactorily explain the operation of the circuit shown in his sketches, and Commander Lavender further testified as follows: At that time, Mr. Jones had no explanation for the inoperativeness of the circuit and requested that he be allowed to take the original sketches home with him, that he may have an opportunity to study them over, and, he assured me, that by the next day he could tell me how his circuits operated. I refused to allow him to have his original sketches on the ground that they had become part of the official records of the case, but furnished him with photostats of the circuits. The above testimony related to a time long before this interference was declared, and there is no evidence that in this proceeding Jones ever made a demand upon the Government or upon opposing counsel herein which was refused for the production of the originals or photostatic copies of any papers relating to Jones' application for a patent. As we do not find any reversible error in the decision appealed from it is affirmed. 553 O. G. 369; 30 C. C. P. A. 833; 134 F. (2d) 624 IN RE STANLEY (No. 4678) PATENTS-PATENTABILITY—ANTICIPATION An analysis of the prior art Baker patent which is typical of other references in the record, does not carry conviction that the decision appealed from was erroneous. United States Court of Customs and Patent Appeals, February 1, 1943 APPEAL from Patent Office, Serial No. 234,784 [Affirmed.] Charles E. Carney (A. Ponack of counsel) for appellant. W. W. Cochran (Clarence W. Moore of counsel) for the Commissioner of Patents. [Oral argument January 4, 1943, by Mr. Carney and Mr. Moore] Before GARRETT, Presiding Judge, and BLAND, HATFIELD, LENROOT, and JACKSON, Associate Judges GARRETT, Presiding Judge, delivered the opinion of the court: This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming that of the examiner denying patentability of all the claims, numbered 48 to 56, inclusive, of appellant's application for patent entitled "For Confection Composition and Method of Manufacture." Claims 48 to 51, inclusive, are article claims. The remainder are for the method of manufacture. For illustrative purposes we quote the broad claims 48 and 52: 48. A confection composition of the kind in which a solid comminuted material is dispersed in a fatty material, said composition also containing a salt of a carboxylic acid having balanced hydrophilic and lipophilic portions, the hydrophillic portion being the group COOX in which X is a basic atom or group, and the lipophilic portion is the aliphatic residue of a fatty acid having more than six carbon atoms. 52. The method of improving confection compositions of the type in which solid comminuted material is dispersed in a fatty material, which comprises incorporating throughout said composition a salt having balanced hydrophillic and lipophillic portions, the lipophillic portion being the group COOX in which X is a basic atom or group, and the lipophilic portion is the aliphatic residue of a fatty acid having more than six carbon atoms. It appears that all the claims stand or fall together, there being no patentable distinction between them. It is unnecessary, therefore, to detail the limitations appearing in those not quoted. The brief on behalf of appellant states: The invention relates to confection compositions of the type in which a solid comminuted material is dispersed in a fat. Chocolate is an outstanding example of such a confection, and the invention has particular reference to such a material. In chocolate the solid material is called cacao matter, and is composed of the ground solids of the cocoa nibs. The fatty material is the cocoa butter, chocolate usually containing an excess of cocoa butter over that naturally present in the nibs. Chocolate may also contain sugar and/or milk solids. In substitute cholocate hydrogenated oils or similar fats are substituted for the cocoa butter. The particular problem with which applicant is concerned is the reduction of the viscosity of chocolate and similar confection compositions. By lowering the viscosity a reduction in the amount of fat necessary to produce a working consistency is made possible, and at the same time the so-called "graying" or fat bloom of chocolate is retarded. Applicant accomplishes the lowering of viscosity by incorporating a small amount of a salt of a carboxylic acid having balanced hydrophillic and lipophilic groups. The hydrophillic portion is the group-COOX, in which X is a basic atom or group such as a metal radical like sodium or magnesium, the ammonium radical, organic amine radicals, etc. The lipophillic portion is a residue of a fatty acid containing more than six carbon atoms. Thus the modifying ingredients contemplated include the ordinary soaps, and such soaps are preferred materials for use in accordance with the invention. Preferably the salt is incorporated in the confection by being first dispersed in a fatty carrier such as oils, fats, waxes, or their fatty acids. The examiner cited the following references: Lallemand, 852,966, May 7, 1907. Baker, 1,553,294, September 8, 1925. Coith et al., 2,123,880, July 19, 1938. Margarine Clayton, Page 67. Pub. by Longmans, Green & Co., London, 1920. |