"appears to show that the working out of the problem of air conditioning in every detail was put up to the Carrier organization and contains no indication of any prior idea on the part of Davis as to the specific methods required by the counts" and that "Davis at the most went no further than to suggest results without suggesting methods or means. The presumption is in favor of Carrier as the skilled inventor in the air conditioning art. Lawner v. Katzman, [20 C. C. P. A. (Patents) 924] 17 Pat. App. [Pat. Quar.] 223; 64 F. (2d) 128; 423 O. G. 4". The Examiner of Interferences further held that Davis derived the invention from Carrier.

The Board of Appeals, although employing somewhat different language, affirmed the decision of the Examiner of Interferences, and based its affirmance upon substantially the same reasons as those assigned by him. The board explains Carrier's reluctance in making the installation suggested by Davis as follows:

# Carrier explains that he urged this for the reason that he felt a satisfactory refrigerating unit could not be found for the purpose as if the apparatus was installed in individual cars it would have to occupy a comparatively small space and a refrigerating unit which would be large enough to do the work satisfactorily and yet small enough to occupy little room in a passenger coach was not available on the market. There was some talk of using an evaporative system to cool the spray water but this was not thought feasible. Mr. Carrier offered to loan Mr. Davis two of the Carrier spray units and let him experiment with these units and also offered to send an engineer to aid in installation of the plant.

Mr. Davis was not discouraged by Mr. Carrier's attitude but corresponded with a number of companies having to do with air conditioning and refrigeration to get what information he could in this connection. Finally Mr. Davis was authorized by the management of the Baltimore & Ohio Railroad to make tests of an air conditioning equipment in a Baltimore & Ohio coach and he then sought and obtained the loan of various parts of an equipment for this purpose and finally notified Mr. Carrier that the Frigidaire Company had promised to loan certain refrigerating equipment for this test in connection with the two Carrier spray units promised by Mr. Carrier. Then Mr. Carrier expressed a desire to cooperate with Mr. Davis in equipping the Baltimore & Ohio coach with the air conditioning system including a spray cooler and refrigerating equipment and Mr. Carrier asked that the equipment be borrowed through him. Mr. Carrier then obtained refrigeration equipment from the Brunswick-Kraeschell Company and also suitable motors for operating the apparatus from the General Electric Company.

Davis makes a great point of the fact that Carrier did not seem particularly interested in the projected tests until he, Davis, had practically obtained permission to use a Baltimore & Ohio coach and had obtained the loan of suit able equipment to be placed in the coach for the test. Carrier evidently had no special urge to carry out these experiments with his knowledge of the equipment suitable on the market at that time but perhaps this is explained by the fact that this refrigerating equipment used as refrigerants. certain chemicals which in case of an accident to the train would be dangerous to the occupants of the coach as well as the fact that the refrigerating equipment on the market was not of proper capacity or if of property capacity not of proper

size to be conveniently positioned in a passenger coach. It is true that the equipment from the Brunswick-Kraeschell Company which was finally used was perhaps known to Mr. Carrier at this time and made use of a refrigerant which had the characteristics thought to be undesirable by Mr. Carrier but evidently Carrier knew of none better on the market and as the tests were to take place used what he considered best.

The board then points out that the counts involved do not necessarily call for the positioning of all the units of the system in a passenger vehicle and that the positioning of some of the apparatus in a baggage car, which Carrier was urging, would satisfy the counts. We agree with the conclusion reached by the board that Carrier was the first and original inventor of the subject matter of the counts, and that Davis at most only suggested the desirability of having a car air conditioned by apparatus involving units all of which were to be installed on a single car. Davis was not skilled in this art. The testimony shows very clearly that he had no comprehension of the ultimate effect or practicable commercial value of the proposed combination of the various units employed, or certain dangers incident thereto. He did not suggest to Carrier any such plan as is involved in either of the cited cases relied upon by Davis.

It is our view that more than mere mechanical skill was required to produce an air conditioned vehicle, such as Davis hoped for, and we agree with the board that the Carrier Engineering Corporation, through Arf, directed and performed that which neither Davis nor Winters "were equal to supplying".

The Carrier Engineering Corporation spent about $5,000 in making the installation, none of which was repaid by Davis or his company. It is true that Davis or the Baltimore and Ohio Railroad Company furnished certain materials and expended some money, small in comparison to that spent by Carrier, in connection with the enterprise, and that Winters helped in the installation of the system.

[2] We agree with the tribunals below that there was no relation of employer and employee, such as would entitle Davis to the benefit of the work of Carrier and Arf, shown in the record at bar.. Carrier and Arf did not work under Davis' directions nor did they receive compensation from him. They were both privileged to do the work called for by the plans, furnished by Carrier, without regard to any orders or supervision on the part of Davis. Neither do we think that Carrier and Arf were the employees of the Baltimore and Ohio Railroad Company so as to bar Carrier being held the inventor of the system produced. There is nothing in the record that would indicate that the Baltimore and Ohio Railroad Company regarded Carrier and Arf as its employees. It paid them

nothing and it did not direct the manner in which they performed the task undertaken.

We have carefully read and considered the voluminous record and briefs, and, in view of our conclusion that the board arrived at the correct result for the reasons which it assigns, no useful purpose could be served in discussing here all the different phases of the case discussed by the parties and the tribunals below.

[3] After the original transcript of record had been certified from the Patent Office, appellee suggested a diminution thereof, and this court issued a writ of certiorari requiring that certain additions to the record be certified by the Commissioner of Patents and that the same be printed. In pursuance to said writ, said additions were made to the record. It is our view that the additional record so certified and printed was unnecessary to a proper determination of the issues in this case, and that the cost of printing the same should be taxed against the appellee, and it is so ordered.

The decision of the Board of Appeals is affirmed.

465 O. G. 722; 23 C. C. P. A. 850; 81 F. (2d) 247

GEORGIEV v. EDELMAN (No. 3576)

PATENTS INTERFERENCE-RIGHT TO MAKE THE CLAIM.

Having completely disclosed the structure called for by the claims constituting the counts in issue, appellee is entitled to make such claims.

United States Court of Customs and Patent Appeals, February 2, 1936

[Affirmed.]

APPEAL from Patent Office, Interference No. 65119

Dean, Fairbank, Hirsch & Foster, and H. H. Benjamin (Morris Hirsch of counsel) for appellant.

Ephraim Banning (Arthur H. Wylie and Eugene C. Taylor of counsel) for appellee.

[Oral argument January 10, 1936, by Mr. Hirsch and Mr. Taylor] Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges

HATFIELD, Judge delivered the opinion of the court:

This is an appeal in an interference proceeding from the decision of the Board of Appeals of the United States Patent Office affirming the decision of the Examiner of Interferences awarding priority of invention to appellee, Philip E. Edelman.

The interference is between appellant's patent No. 1,789,949, in which the counts originated, issued January 20, 1931, on an application filed October 18, 1930, serial No. 489,521, and appellee's application No. 389,388, filed August 30, 1929.

The invention relates to an electrolytic condenser, and, for the purpose of this opinion, is sufficiently described in the counts in issue, Nos. 1 and 2. They read:

1. An electrolytic condenser comprising a roll having convolute layers of anode foil and cathode foil, a dielectric film upon the anode foil in contact therewith, the foil at the exterior of the roll having an outer turn completely encircling the roll, the outer end of said outer foil protruding beyond the end of the other foil, and directly overlying and engaging the underlying area of said outer foil.

2. An electric condenser comprising a roll having convolute layers of anode foil and cathode foil, a dielectric film upon the anode foil in contact therewith, the cathode foil being at the exterior of the roll and having an outer turn completely encircling the roll, the outer end of said cathode foil protruding beyond the end of the anode and directly overlying and engaging the underlying cathode area. (Italics ours.)

Counsel for appellant moved to dissolve the interference on the ground that appellee had no right to make the claims constituting the counts in issue.

The motion was denied by the Examiner of Interferences. The sole issue before us, as stated by counsel for each of the parties, and as clearly appears from the record, is whether the counts are readable on appellee's disclosure. If they are, the decision of the Board of Appeals must be affirmed. If they are not, the decision should be reversed.

It was the contention of counsel for appellant before the tribunals of the Patent Office, and it is their contention here, that appellee did not disclose in his application as originally filed that element of the involved invention defined in the counts, of which the following language taken from count 1 is illustrative: "the outer end of said outer foil protruding beyond the end of the other foil, and directly overlying and engaging the underlying area of said outer foil."

In his decision, the Examiner of Interferences quoted the following excerpt from appellee's specification: "The sheet 45 may be of any other suitable metal besides aluminum. Metal 45 is smoothed between rollers 46 and started as a winding as end 45a thereof. *** The winding of sheet 45 is continued after element 47 is rolled up so that metal 45 extends beyond and over the element 47. ***The negative sheet 45 is overlapped around the roll 52 and has a tab terminal 49 brought up therefrom, while tab terminals 5 and 5a from two elements, such as 47, Fig. 10, are brought up in usual manner," and stated:

The direction in which two foils are shown to be rolled in Fig. 10 places the foil 45 on the outside of the last turn in a manner similar to foil 11'; Fig. 3 of Georgiev. If, as is stated in Edelman's specification, the foil "45 is continued after element 47 is rolled up" it must "protrude" as specified in count 1 and being unseparated from the next lower turn it would "overly and engage the underlying cathode area" as specified in count 2.

In its decision affirming the decision of the Examiner of Interferences, the Board of Appeals stated:

Appellant urges as to the Edelman construction that the outer end of his outer foil does not protrude beyond the end of the other foil and does not directly overlie and engage the underlying area of said outer foil as specified in count 1, for example, and similarly in count 2. It is true that Edelman's drawing is not especially clear as to this construction. In accordance with Fig. 10 of Edelman the outer foil 45 extends between anode sections so that when the foil is rolled, it forms separated condenser sections with the outer foil 45 extending between the sections. Appellant presents an illustration of the Edelman construction and compares it with a condenser roll as disclosed in the patent to Ruben 1,710,073. He points out that in the Georgiev construction, which was first rejected on the patent to Ruben, the outer foil is overlapped on the roll proper for various reasons. The patent to Georgiev states:

"The outer foil preferably affords extra length to provide one or two extra turns 11' about the condenser, which is kept from unwinding by an encircling band 28. The outer turn or turns 11' perform the threefold functions of a unitary capacitative shield, a mechanical protector for the roll during handling prior to final assembly and a superior container to dissipate heat generated in use." (Lines 97 to 104, page 2.)

In the Edelman specification, page 14, we find the following description: "The winding of sheet 45 is continued after element 47 is rolled up so that metal 45 extends beyond and over the element 47. Then a second element like 47, or of different length may be wound up, and so on for any desired number of elements 47 to be assembled in one roll. A completed roll 52, so made with two elements, such as 47 as diagramed in Fig. 10, is shown in Fig. 11. The negative sheet 45 is overlapped around the roll 52 and has a tab terminal 49 brought up therefrom" etc. (Italics ours.)

In our opinion this underlined statement at least means the sheet 45 extends as such sheet around the roll 52 as completed and therefore forms an overlap in the same manner as in the Georgiev construction. Obviously with such an overlap and a closure by an elastic or cord 48 applied thereto, the outer end of said outer foil protrudes beyond the end of the other foil and directly overlies and engages the underlying area of said outer foil, such as defined in count 1 and similar language in court 2. (Italics quoted.)

The advantages claimed to be obtained by a condenser in which the outer end of the outer foil protrudes beyond the end of the other foil, and directly overlies and engages the underlying area of the outer foil, called for by the counts, is explained in appellant's patent. We quote therefrom:

The outer foil preferable affords extra length to provide one or two extra turns 11' about the condenser, which is kept from unwinding by an encircling band 28. The outer turn or turns 11' perform the threefold function of a unitary capacitative shield, a mechanical protector for the roll during handling prior to final assembly and a superior conductor to dissipate heat generated in use.

It is contended by counsel for appellant that there is no description or suggestion in appellee's specification that the negative strip or outer foil extends beyond the end of the outermost positive strip so that the