(4) PATENTS-INTERFERENCE-PRIORITY OF INVENTION.

Bostwick is clearly entitled to an award of priority as to counts 4 and 5.

United States Court of Customs and Patent Appears, June 2, 1943

[Modified.]

APPEAL from Patent Office, Interference No. 76593

Albert R. Teare (Bater, Teare & McBean and Donald A. Gardiner of counsel) for Bostwick.

Evans & McCoy (Frank S. Greene of counsel) for Schnedarek.

[Oral argument March 8, 1943, by Mr. Teare and Mr. Greene]

Before GARRETT, Presiding Judge, and BLAND, HATFIELD, LENROOT, and JACKSON, Associate Judges

BLAND, Judge, delivered the opinion of the court:

These are cross-appeals from a decision of the Board of Appeals of the United States Patent Office in an interference proceeding embracing twelve counts. The board's decision affirmed the decision of the Examiner of Interferences insofar as it awarded priority as to counts 1, 3, and 7 to the party Bostwick and counts 10, 11, and 12 to the party Schnedarek but reversed it insofar as it awarded counts 2, 4, 5, 6, 8, and 9 to Bostwick. Each party has appealed from that portion of the board's decision which awarded priority to the other.

The interference is between a reissue application of Bostwick, Serial No. 261,977, filed March 15, 1939, for the reissue of Bostwick's patent No. 2,073,729 granted March 16, 1937, on an application filed July 16, 1936, and the application of Schnedarek, Serial No. 182,269, filed December 29, 1937. The Bostwick application and patent are assigned to the Akron Standard Mold Company, of Akron, Ohio (hereinafter referred to as the Mold Co.), and Schnedarek's application is assigned to the General Tire & Rubber Company, also of Akron, Ohio (hereafter referred to as General Tire). It will be noted that Schnedarek's application was not filed until over nine months after the issuance of Bostwick's patent. Therefore, Schnedarek was under the burden of proving his case beyond a reasonable doubt as to all matter which was disclosed in the Bostwick patent. As originally declared, the interference was between the Bostwick patent and the Schnedarek application and comprised but six counts, all of which corresponded to claims taken from the Bostwick patent. Bostwick then filed his reissue application, including six claims copied from the Schnedarek application, and moved to amend the issue of the interference by substituting his reissue application for his patent

and by adding to the interference six counts corresponding to the claims copied from the Schnedarek application. On March 26, 1940, the interference was redeclared, substituting the Bostwick reissue application for the Bostwick patent and adding the six counts proposed by Bostwick.

The preliminary statement of Schnedarek alleges conception in September 1935 and reduction to practice in December 1935. That of Bostwick alleges conception in August 1934 and reduction to practice in March 1935.

The applications of both parties relate to collapsible tire-building drums. Such drums are composed of segments which, when extended, form a cylinder. The tire casing is built upon this cylinder by the so-called "flat-band" method. The purpose of constructing the drum in segments is to permit its collapse after the tire is formed, thereby facilitating removal of the tire casing from the drum.

The building of tires on collapsible drums constructed in segments to permit the removal of the tires from the drums was old in the art when both parties entered into the field of the present invention. Bostwick was a prolific inventor of tire-building apparatus, including collapsible tire drums. His assignee, the Mold Co., is, and has been for many years, engaged in the making of tire-building machinery. It developed in the art that when tires having a relatively large cross-section and relatively small bead diameter were made on collapsible drums, such as those which Bostwick had invented and patented, the drums were not sufficiently collapsible to permit satisfactory removal of the tires. Greater collapsibility was required under these circumstances.

The broad inventive concept here involved was to make a pair of collapsible bead-seating rings which would serve to hold the body in expanded condition and which, by reason of their collapsibility, could be readily removed before collapsing the drum so as to afford the removal of the tire from the drum body.

The party Schnedarek, a Roumanian by birth, came to this country at the age of sixteen. At the time he claims he made the involved invention, while in the employ of General Tire, he was twenty-nine years of age. He had previously worked as a draftsman for the Falls Tire & Rubber Company and later for the American Tire & Rubber Company. From 1929 on, he has been associated with General Tire.

Schnedarek's company is a tire-building concern. Bostwick's company, as aforesaid, is the builder of tire-manufacturing apparatus. Their respective businesses are located side by side, and the record seems to indicate that their employees saw much of one another, the latter company having furnished for the former company much of its tire-building machinery.

For purposes of treatment the counts may be divided into three groups. As to the first group-the broad counts 1, 3, and 7-the tribunals below have concurred in awarding priority to Bostwick. Of this group we think count 3 illustrative.

3. A tire-building drum comprising a central rotary segment support, a.collapsible drum body permanently mounted thereon and composed of pivoted segments, and a pair of collapsible, segmental, bead-seating rings removably locked in the ends of said body and serving to hold the body segments in expanded condition.

As to the second group-counts 10, 11, and 12 (all containing a limitation that two abutting end faces of the bead-seating ring segments shall be inclined to the axis of the drum)—there are likewise concurring decisions by the Patent Office tribunals awarding priority to Schnedarek. Of this group, count 10 appears to be representative: 10. A drum type tire building core comprising a central segmental collapsible band, and independently collapsible side rings engaging the interior of said central band, each of said side rings comprising segments abutting end to end, two abutting ends of the segments of each ring being disposed at an inclination to the axis of the core, the other abutting ends being disposed substantially in radial planes, and interlocking elements at the abutting ends of the ring segments for holding the segments against relative lateral movements, the interlocking elements at the abutting inclined segment ends being releasable to permit removal of ring segments. [Italics ours.]

As to the remaining group-counts 2, 4, 5, 6, 8, and 9—there was a difference of opinion below, the Examiner of Interferences awarding priority to Bostwick and the Board of Appeals awarding priority to Schnedarek. Of this group, counts 2, 8, and 9 are alike in that they call for a "full-depth" flange or ring (i. e., that the peripheral face portion of the ring shall be substantially flush with the face of the drum). Count 8 reads:

8. A drum type tire building core comprising a central segmental collapsible band having a substantially cylindrical exterior peripheral face and independently collapsible side rings each having a peripheral face substantially flush with the peripheral face of the central band, and inner marginal edge portions underlying the central band. [Italics ours.]

While not necessarily calling for a "full-depth" ring, counts 4 and 5 have a limitation requiring that the ring shall underlap the body. Count 4 reads:

4. A tire-building form comprising a collapsible, segmental form body, and a collapsible, segmental bead-seating ring detachably fitted in the end of said body in an underlapping relation thereto, and inwardly separable from the body, said ring and body having complemental abutting surfaces adapted to permit a slanting inward separating movement of said ring radially and axially of the form.

Count 6 resembles the broad counts 1, 3, and 7 but has a limitation requiring that the ring shall be composed of segments "separably connected in series."

At this point we think it necessary to a clear understanding of the nature of the invention and to a discussion of the issues to set out certain drawings of both parties.

Testimony on behalf of Schnedarek includes his own deposition and those of four other witnesses-Cox, Gilson, Orr, and Kauffman-all employees of General Tire. On behalf of Bostwick, in addition to his own testimony, witnesses Sigler, Daub, Behra, Deibel, Schrum, Sears, Voth, and Barnby-all employees of the Mold Co.-testified.