Gunter v. Stream

573 F.2d 77, 197 U.S.P.Q. (BNA) 482, 1978 CCPA LEXIS 305
CourtCourt of Customs and Patent Appeals
DecidedApril 6, 1978
DocketAppeal No. 77-627
StatusPublished
Cited by14 cases

This text of 573 F.2d 77 (Gunter v. Stream) is published on Counsel Stack Legal Research, covering Court of Customs and Patent Appeals primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Gunter v. Stream, 573 F.2d 77, 197 U.S.P.Q. (BNA) 482, 1978 CCPA LEXIS 305 (ccpa 1978).

Opinion

BALDWIN, Judge.

This is an appeal from a decision of the Patent and Trademark Office Board of Patent Interferences (board) which awarded priority as to two counts of an interference to junior party, Stream. We affirm.

On August 11, 1975, an interference was declared between Gunter’s application entitled “Heat Pipes for Fin Coolers,” serial No. 507,314, filed on September 19, 1974, and Stream’s application entitled “Method and Apparatus for Controlling the Viscosity of Glass Streams,” serial No. 511,541, filed on October 3, 1974. The two counts of the interference correspond to claims 6 and 8 of Gunter’s application and claims 28 and 29 of Stream’s application.

The subject matter of the interference is a method and apparatus for employing heat pipe fins for cooling glass fibers as they are drawn through orifices of a glass fiber forming machine. Counts 1 and 2 define the subject matter:

1. A fiber glass bushing unit comprising in combination a container for the reception of molten glass, a plurality of orifices on the bottom of said container arranged in parallel rows, a plurality of plate-like fin members positioned between the rows of orifices by but below and out of contact with said container, said plate-like fins being mounted at one end in a header member, means to pass the fluid coolant through said header member, each of said plate members having a wick material affixed to the interior surfaces of said plate member and having a central cavity located therein, a vaporizable liquid on said wick capable of being vaporized from the surface of said wick and recondensed on said wick during operation.
2. A method of cooling glass fibers being drawn from a molten glass source from a plurality of glass orifices located on the bottom of said glass source, removing heat from said fibers by positioning a plurality of plate-like heat exchange members between said fibers to thereby absorb the radiant heat from said fibers on the surface of said plate-like members continuously, maintaining the surface of the plate-like members receptive to heat absorption by vaporizing a volatile fluid on the interior surface of said plate-like members continuously [79]*79from the surface of a wick contained therein and removing heat continuously from said plate-like members by indirect heat exchange with the mounting means for said plate-like members to thereby condense said volatile fluid in said plate-like members and thereby return it to the wick for further vaporization.

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Gunter took no testimony and is restricted to his filing date of September 19, 1974, as the date of conception and constructive reduction to practice. Stream, an employee of Owens-Corning Fiberglas Corporation (OCF), assignee of his application, submitted testimony and documentary evidence to support a date of conception and reduction to practice prior to Gunter’s filing date. Stream himself testified that, in August of 1970, he read an article on heat pipe technology published in the August 6, 1970, edition of Machine Design, which was admitted into evidence as Stream Exhibit 2. According to the testimony, Stream had a conversation, on or before August 27, 1970, with his supervisor, Mr. Hellmut I. Glaser,1 in which he told Glaser of his idea to apply heat pipe technology to glass fiber making. Glaser corroborated Stream’s testimony about their conversation and also testified that he reported on Stream’s idea to Mr. Steven R. Gustafson, then patent attorney for OCF. Subsequent to this conversation with Glaser, Gustafson reduced Glaser’s report to writing on September 2, 1970. Glaser testified that the contents of the Gustafson memo, which was admitted into evidence as Stream Exhibit 3, was an accurate summary of his report.

To support his reduction to practice of the invention, Stream produced employees of OCF who testified about contracting with Hughes Aircraft Company for construction of prototype fin shields which were eventually completed and shipped to OCF on November 11, 1973. Tests were performed on the prototypes by OCF at its Huntingdon Plant on April 17 and 18, 1974.

In its opinion, the board defined conception as a disclosure of an invention which enables one skilled in the art to reduce the invention to a practical form without “exercise of the inventive faculty.” The board was persuaded by the evidence presented by Stream on the question of conception. It found that appellee conceived the invention on August 27, 1970, when he understood it to the extent that he was able to disclose it to another who in turn understood the invention.

OPINION

On the question of reduction to practice, the board found that the Hughes’ prototype, successfully tested by OCF, embodied every essential element of the counts. The tests conducted on April 17 and 18, 1974, were proof of an actual reduction to practice, which is attributable to Stream. We agree with the board’s finding on this issue, and we are not persuaded by appellant’s argument that the reduction to practice does not inure to the benefit of Stream, since he took no part in this phase. Stream can prevail if he proves an earlier date of conception by a preponderance of the evidence. Land v. Dreyer, 155 F.2d 383, 33 CCPA 1108 (1946); Townsend v. Smith, 36 F.2d 292, 17 CCPA 647 (1929). The issue before the court, then, is whether Stream proved, as junior party, by a preponderance of evidence that he had conception on or about August 27, 1970.

Gunter argues that Stream never had conception but only expressed an invitation to experiment with heat pipes in glass fiber forming machines. Stream is required, Gunter argues, to have conceived not only [80]*80the invention, but the means to accomplish the invention. The conception was not completed by Stream because extensive research by Hughes Aircraft was necessary to achieve satisfactory performance of the invention. Gunter further argues that while Hughes Aircraft was working on the prototype, it suggested to OCF the use of cooling blocks in the construction of the prototypes. This, he argues, militates against Stream being in possession of a conception which included use of a “header member” which is recited in the counts. It is contended also that Stream had no connection with the invention from August of 1970 until September 27, 1974, when he reviewed and signed the application disclosing his invention and that there is no evidence on record to indicate that Stream was ever informed of the progress of Hughes Aircraft or of the tests of OCF.

The board correctly cited the definition for conception initially stated in Mergenthaler v. Scudder, 11 App.D.C. 264, 276, 1897 C.D. 724, 731 (1897):

The conception of the invention consists in the complete performance of the mental part of the inventive act. All that remains to be accomplished, in order to perfect the act or instrument, belongs to the department of construction, not invention. It is therefore the formation, in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is thereafter to be applied in practice, that constitutes an available conception, within the meaning of the patent law.

We adopted this definition in Townsend v. Smith, supra.

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573 F.2d 77, 197 U.S.P.Q. (BNA) 482, 1978 CCPA LEXIS 305, Counsel Stack Legal Research, https://law.counselstack.com/opinion/gunter-v-stream-ccpa-1978.