Robinson v. Seelinger

25 App. D.C. 237, 1905 U.S. App. LEXIS 5270

• Court: Court of Appeals for the D.C. Circuit
• Decided: March 21, 1905
• Docket: No. 286
• Status: Published

Opinion

Mr. Justice Duell

delivered tbe opinion of tbe Court:

Tbe Assistant Commissioner of Patents having awarded priority of invention to Henry Seelinger of an improvement in billiard-cue tips set forth in tbe following issue: “In a billiard-cue tip, tbe combination of tbe leather tip provided with the central recess, and the deflecting disk, with the attaching-ferrule, the strengthening band or flange extending into the recess of the leather tip, and the fastening-prongs which extend from the strengthening band or flange outward into the leather tip,” — the defeated party, Edwin L. Robinson, has taken this appeal.

Seelinger, the senior party, filed the application involved in this interference, May 28, 1903, as a division of an application filed October 28, 1902, and, having taken no testimony, is restricted to the latter date. Robinson, the junior party, filed his application August 10, 1903, and the burden is consequently upon him to prove priority by a preponderance of evidence.

The Examiners-in-Ohief reversed the Examiner of Interferences, who found for Seelinger, and they in turn were reversed by the Assistant Commissioner, who found that Robinson had failed to sustain the burden resting upon a junior party.

The testimony in behalf of Robinson is admitted on all hands to have been carelessly taken, and his own counsel characterizes it as lacking in statements in that artificial form, which make the decision of the case so easy. We must go further and hold that it is lacking not only in form, but is wanting in substance. Nevertheless we are somewhat impressed, as the Examiners-inOhief seem to have been, with a feeling that essential facts may have been provable that for some reason or other were not brought out. However this may be, the case must be decided on the proofs adduced, and we are not authorized to supply the missing links and base a decision on a case so made up. We are constrained to decide the ease upon the evidence contained in the record, leaving the appellant to any other remedy the law may give him in another forum. Should this, or any other court, predicate its decision upon a state of facts not disclosed, but only thought to exist, it would find itself in an unknown sea, without chart, compass, or rudder.

Approaching the consideration of the testimony as it is disclosed by the record, and not as possibly it might have been, we find Robinson testifying to a conception, disclosure, and reduction to practice as of September 15, 1901. The issue is read to him, and his answer is based upon such reading. When be is asked to produce one of the samples said by bim to have been made by his workman, Prew, on that date, be offers one that is found by all of tbe tribunals of the Patent Office not to embody all of tbe elements of tbe issue. It lacks tbe leather tip provided with the central recess, and also the deflecting disk. It is also found that bis two witnesses Prew and Wain, who testify to the disclosure, do not identify any exhibit made prior to Seelinger’s record date, which embodies all of tbe elements. The Examiners-in-Chief also admit that neither be, nor any of bis witnesses, testify that this September sample ever had these elements. Another sample said by Robinson to be like those made in February, 1902, is produced by him, but that exhibit does not help bim, for it lacks one of tbe elements of the issue, i. e., tbe deflecting disk, and moreover it is not identified by any of his witnesses. The testimony of the witness Kendall refers to a date too late to avail Robinson. We are asked to supply the missing elements of the issue and thus bring the September exhibit within its terms. This we cannot do unless we can find warrant in the record for such finding. This court has more than once said that tbe evidence of reduction to practice must embrace all the elements of the issue, leaving nothing to inference merely. Blackford v. Wilder, 21 App. D. C. 1. We search the record in vain for evidence showing that any exhibit claimed to have been made prior to Seelinger’s record date contains, or ever did contain, tbe elements set forth in the issue. Tbe specific form of tbe leather tip and the deflecting disk are elements that cannot be disregarded.

Tbe Examiners-in-Chief supplied tbe missing elements by reference to an application for a patent for a cue-tip filed by Robinson February 28, 1902. Judicial notice is taken by them of this application, and after consideration of it, in connection with tbe September exhibit, and tbe testimony given by tbe witnesses relative thereto, they find that Robinson was in possession of tbe invention in September, 1901. It is not seen just how an application filed in February, 1902, can warrant a finding that what is therein disclosed was in possession of the applicant in the preceding September. That the Commissioner of Patents may in a proper case take judicial notice of the records of the office was held in Cain v. Park, 14 App. D. C. 42. In that case, however, a certified copy of the application was in evidence in the interference, and the Commissioner examined the office records and found that it was allowed and a pending application, when the application in interference was filed. It is unnecessary now to decide that the Patent Office tribunals were justified in thus supplying a missing important link in the testimony, necessary to prove possession of an invention and its reduction to practice by a party to an interference. It is not before us in any form in the record. No profert is made of it, no copy is produced. We can scarcely be expected to consider something which is not a record open to the public, and which is in no form before us, as was the application which was taken judicial notice of in Cain v. Park, 14 App. D. C. 42. But taken at full value the exhibit, plus the disclosure.of the application of February 28, 1902, is not held to be a reduction to practice. Admitting that the evidence is sufficient to warrant a finding of conception and disclosure by Pobinson in either September, 1901, or February, 1902, he is not entitled to an award of priority, for Seelinger had a constructive reduction to practice in October, 1902, and as Pobinson can be given no earlier date of reduction to practice than in January, 1903, it is incumbent on him to account for his delay. No attempt is made by him to do so. Upon the record as presented we must award priority to Seelinger of the issue. The Assistant Commissioner having so found, no error was committed by him, and his award of priority to the appellee must be affirmed. It is so ordered; and the clerk will certify this decision to the Commissioner, as the law provides. Affirmed.