Prior Art

Caldwell discloses a perforating gun wherein the shaped charge assembly contains two different units. The reference drawing is here reproduced for comparison:

Caldwell's so-called primary unit 20 (shown in figures 3 and 4) comprises an elongated tubular structure having a central aperture 28 through which the detonator fuse must be threaded and a double shaped charge, one on either end of the unit. At right angles to the axis of this central aperture and centrally located on opposite sides of the unit, are two recesses 40 and 41. In practice, the primary units are inserted into the gun through one port hole and thereafter positioned between two opposite ports. The fuse is then threaded down through the center apertures and, finally, secondary charge units 42 are inserted into position within the recesses of the primary unit through the port holes at right angles to the primary units. After the four charges are properly positioned, the port closures 13 are threaded into place. It is to be noted from figure 6 of the drawing that the secondary units 42 are comprised of hollow cylindrical casings terminating at one end in a frusto-conical shape. As is evident from figures 2 and 4, the internal structure of the primary unit 20 is essentially the same as two secondary units with their cone points facing each other. Each unit is filled with a charge of explosive (30 in the primary units, 46 in the secondary units) and each contains a metallic liner ("bullet") mounted as a sheath over the charge (designated as 31 and 47, respectively).

4

Udry discloses a well perforator having a single shaped charge unit rather than an assembly of three or more. The reference was cited merely for its disclosure that the charge casing may be made of plastic material.

The Rejection

Claim 8 on appeal was rejected an unpatentable over Caldwell under 35 USC 103. Claim 9 was rejected over Caldwell in view of Udry. The examiner's reasoning was as follows:

it is believed obvious to one skilled in the art to make the double charge unit 20 into two single units as this alteration would appear merely to be a matter of choice and design. Furthermore, the charge units of Caldwell are supported in the gun ports and abut their respective closure members. To have the closure members give additional support to the units would also be a matter of choice and design.

In affirming these rejections, the board stated:

Working from the Caldwell teachings, it appears to us that persons of ordinary skill in the art would find it obvious to connect the charge 42 to the associated closure member 13. Whether this connection be accomplished by adhesion or by frictional telescoping relationship appears to be no more than an obvious employment of known and obvious assembly expedients to expedite the employment of the Caldwell parts for the purposes taught in the reference. * *

4U.S. Patent 2,782,715, issued Feb. 26, 1957.

Opinion

Appellant argues that the rejections were based on hindsight reasoning. He points out that Caldwell's structure requires that his shaped charge units be separate from the explosion port caps and asserts that, if the cap were made integral with the charge unit, the patentee's device would be inoperable. Conversely, it is argued, the claimed structure

is an integral unit which requires only one loading step and eliminates any possibility of an improper loaded relationship between the shaped charge unit and the closure cap. Appellant's integral shaped charge unit is only required to be served directly into the port with one loading operation, thereby effecting saving of time while eliminating any possibility of improper positioning or support of the shaped charge.

We will agree with appellant that Caldwell's double primary units and single secondary units were specifically designed to be inserted first and then positioned before the caps are to be placed on the explosion port holes and that the resulting relationship is one of direct abutment rather than interconnection. We will also assume arguendo, although there is some dispute, that the appealed claims define an interconnected structure which differs from Caldwell's secondary units as they are shown in spaced relationship with the port closures in place in Figure 2 of the patent, supra.

The issue thus becomes whether one skilled in this art, aware of the Caldwell disclosure, would consider it obvious to connect the port closure caps to the charge units of Caldwell and make them into a single structure. Here we must disagree with appellant and hold that the record fairly supports the conclusion that it would be obvious. While the positions of both the examiner and board are long on assertions and rather short on reasoning, we feel it is fair to consider that the remarks of the board were limited to its discussion of the secondary unit and not to the language of the examiner referring to the double charge primary unit. It becomes clear then, that the board's position was based on the presumption that there is nothing in the reference which requires that the secondary units be separated from the caps and it therefore would be obvious and, apparently, even desirable to connect the cap to the secondary charge unit. The employment of a frictional telescoping relationship would be only one of several obvious assembly expedients to accomplish the connection. Appellant has argued that having the secondary charge unit connected to the cap would prevent relative reorganization of the units to properly orient the secondary charge unit relative to the primary unit since the secondary unit would then be firmly threaded within the port. Based upon our own reading of the reference disclosure,

we are not convinced that such assertion is correct and the reasoning of the board, as we have interpreted it, must prevail.

The examiner's reasoning, too, although it was somewhat incomplete, calls for the same conclusion. It appears that this position was based on a consideration of the entire structure disclosed by Caldwell, including the double primary charge units and the patentee's stated purpose for so designing his structure. Containing the missing premise, which we consider to have been obviously implied from the context of the examiner's remarks (although we do not wish. to condone such omission), this position may be stated as follows: "One of ordinary skill in the art, aware of Caldwell's disclosure but, unlike the patentee, who was concerned with simultaneous firing of the charges in precisely the same plane, being more concerned with simple and efficient loading and replacement of the shaped charge units into the explosion ports, would consider it obvious to split the double unit of Caldwell and connect the port closure caps directly to all the charge units." Our analysis of the record before us is that there is a substantial basis for reaching this conclusion as well. Accordingly, the decision of the Board of Appeals affirming the rejection of claims 8 and 9 is affirmed.

426 F.2d 412; 165 USPQ 708

DAVID W. PIEL, DECEASED, BY TILLIE MARGARET PIEL, EXECUTRIX V. EUGENE H. FALKNER (No. 8273)

PATENTS

1. COURT OF CUSTOMS AND PATENT APPEALS-ISSUES DETERMINED PATENT IN

TERFERENCES

Court has jurisdiction under 35 USC 141 to review denial of motion for judgment, seeking that interference opponent's testimony be stricken and opponent restricted to filing date, since question is directly related to admissibility of evidence upon which award of priority was granted; not only does court have authority to review the evidence, including weight to be accorded it, but also it has authority to decide whether evidence was properly admitted. 2. PLEADING AND PRACTICE IN PATENT OFFICE-RULES EFFECT

Patent Office Rules, when not inconsistent with statutes from which they are derived, have effect of law.

3. INTERFERENCE-EVIDENCE-IN GENERAL

Interference party is entitled to be notified of time and place of taking of deposition and addresses of witnesses to be examined; Rule 273 is strictly construed where original notice of taking testimony did not state time of taking of testimony or addresses of witnesses and where opponent, although he later recited time, did not give addresses, thus being too late and inadequate to operate as a cure; notice was fatally defective; failure to comply with Rule prevents use of testimony for any evidentiary purpose.

4. INTERFERENCE-EVIDENCE-IN GENERAL

Having timely objected to defective notice of taking testimony, interference party complied with rules and established right to object to use of disputed testimony; such right was not waived by fact that motion for judgment was not filed until three months later; however, since party is not without some responsibility for the matter of admissibility of depositions being in issue at late stage of proceedings, and although depositions are stricken, circumstances require that interference be reopened to provide opponent with opportunity to retake depositions upon proper notice before any award of priority is made.

United States Court of Customs and Patent Appeals, May 28, 1970 Appeal from Patent Office, Interference No. 95,198

[Reversed and remanded.]

Charles W. Coffee, attorney of record, for appellant.

Donald L. Dennison, Dennison and Dennison for appellee.

[Oral argument February 4, 1970 by Mr. Coffee; appellee submits on brief] Before RICH, ALMOND, BALDWIN, LANE, Associate Judges, and FORD, Judge, sitting by designation.

BALDWIN, Judge, delivered the opinion of the court:

This is an appeal from the decision of the Board of Patent Interferences, adhered to on reconsideration, awarding priority in Interference No. 95,198 to Eugene H. Falkner, appellee and junior party.

The single count of the interference corresponds to claim 2 of appellant Piel's patent which was copied and added to Falkner's application by amendment. The invention of the count relates to a closure for a freeze or expansion plug in the block of an internal combustion engine. Since it is not pertinent to the issues here, it will not be further described.

The issue here is whether the board properly denied a motion for judgment filed by appellant, David W. Piel, deceased, by Tillie Margaret Piel, Executrix, urging that the testimony for Faulkner be stricken for various reasons and Faulkner restricted to his filing date.3

[1] A preliminary issue, raised in appellee's brief, is whether the aforestated question is so related to the question of priority as to be within this court's jurisdiction to review under 35 USC 141. We

1U.S. Patent 3,175,727, issued Mar. 30, 1965, on a continuation of an application which was filed Apr. 28, 1961.

Serial No. 201,588, filed June 11, 1962.

As a result of the denial of that motion, consideration of which had been deferred to final hearing, the board considered the testimony and found it to prove an actual reduction to practice by Falkner prior to Piel's entry into the field. Piel does not at this time contest the award of priority on the merits of that testimony.