Home/Customs and Patent Appeals/Samuel P. McCutchen Jr., and Jack E. Eskilson v. Francis A. Oliver

Samuel P. McCutchen Jr., and Jack E. Eskilson v. Francis A. Oliver

367 F.2d 609, 54 C.C.P.A. 756
CourtCourt of Customs and Patent Appeals
DecidedOctober 27, 1966
DocketPatent Appeal 7425
StatusPublished
Cited by14 cases

This text of 367 F.2d 609 (Samuel P. McCutchen Jr., and Jack E. Eskilson v. Francis A. Oliver) 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
Samuel P. McCutchen Jr., and Jack E. Eskilson v. Francis A. Oliver, 367 F.2d 609, 54 C.C.P.A. 756 (ccpa 1966).

Opinions

[610]*610SMITH, Judge.

This is an appeal from a decision of the Board of Patent Interferences awarding priority of invention in Interference No. 91,815 to Oliver, the senior party.1 The two counts in issue originated as claims in a patent2 to Mc-Cutchen, Jr., and Eskilson, the junior party, hereafter McCutchen.

Both parties took testimony in attempting to establish priority. The board, upon consideration of the evidence, held that Oliver had reduced to practice “as early as the end of May 1955” and McCutchen was “accorded July 28, 1955 for reduction to practice.” The board also held that “Oliver is entitled to make the claims corresponding to the counts.” Appellant argues here that first, Oliver’s disclosure does not support the counts and second, Oliver’s evidence does not establish a reduction to practice at the end of May 1955. Our disposition of this appeal requires only a consideration of Oliver’s disclosure. In this respect we agree with appellant’s arguments and the decision of the board therefore must be reversed.

The test to be applied where it is alleged that a disclosure does not support a claim for interference purposes is that which was recently applied in Henderson v. Grable, 339 F.2d 465, 52 CCPA 920. There Judge Martin, speaking for an unanimous court, reaffirmed this court’s position, stating as follows:

* * * As Judge Rich stated for this court in Hall v. Taylor, 332 F.2d 844, 51 CCPA 1420, 1424:
We find in the Dreager [In re Draeger et ah, 150 F.2d 572, 32 CCPA 1217], opinion what we consider the key to determining whether a disclosure supports a claim for interference purposes * * * viz., does the disclosure teach the gist of the invention defined by the claim?

See also Swain et al. v. Crittendon, 332 F.2d 820, 51 CCPA 1459.

The “gist of the invention” test referred to in the Henderson case is a sound principle of interference law and is the key to determining whether the counts here in issue are supported by the Oliver disclosure. As this court stated in Henderson, supra, 339 F.2d at 470:

Appellee and the board cite numerous cases in support of classic propositions of interference law, such as, clearly expressed limitations may not be disregarded, all recitations are material, equivalency of function may not be considered, and so on. We do not disagree, but a study of those cases shows that they are not apposite to the facts here. * * *

“The gist of the invention,” states probably more clearly than other propositions of interference law, that the purpose of an interference is to determine “priority of invention,” 35 U.S.C. § 135, 35 U.S.C. § 102(g). There is no right to an interference under the patent laws unless the counts are supported by the specification of the applicant who copies a claim from another’s patent. This requires at a minimum that such specification disclose the mutually claimed invention. Unless it does, the inquiry as to priority should come to an end.

THE INVENTION(S)

The counts in issue are as follows:

1. A magnetic transducer head unit comprising a magnetic head having opposite pole pieces presenting confronting lapped pole tips on opposite sides of a recording/reprodueing gap, and a bracket supporting said head and presenting at either end of the head broad reference surfaces lapped co-planar with the pole tip of one of said pole pieces.
2. A multichannel magnetic transducer head unit comprising a series of individual magnetic heads, each of said individual heads comprising opposite pole pieces presenting con[611]*611fronting lapped pole tips on opposite sides of a recording/reproducing gap, and a bracket supporting said individual heads in side-by-side relation with their respective lapped pole tips eoplanar and their recording/reproducing gaps aligned, said bracket presenting at either end of the series of heads broad reference surfaces lapped eoplanar with the pole tips at one side of the aligned recording/reproducing gaps.

The statutory requirement of section 112 is that the claims shall particularly point out and distinctly claim “the subject matter which the applicant regards as his invention.” Here the claims of the McCutchen patent which were copied by Oliver to become the counts of the present interence are so worded that reference to the specifications of the respective parties becomes necessary to ascertain the meaning of certain language therein. One cannot arrive at an understanding of the present counts as they relate to the subject matter of the interference without something more than the counts themselves.

Admittedly verbal similarities exist between the counts and the respective disclosures of the parties. However, to stop here is to violate the spirit of 35 U.S.C. § 135 which authorizes interferences where two or more parties claim “the same subject matter.”

Thus the issue cannot be decided here in the rarified atmosphere of claim semantics. Instead, it must be decided at the down to earth level of what the parties disclosed as “the gist” of their respective inventions. Cf. Hansgirg v. Kemmer, 102 F.2d 212, 26 CCPA 937.3 While an “unambiguous” count may be interpreted without resort to the specification, the counts here are not of this type. Considering the wording of the counts, particularly the term “reference” surfaces, and the arguments of the parties, it is clear that different meanings are ascribed to that term by the parties when interpreting the count. When resort is had to the specifications, the latent ambiguity in the counts becomes apparent.

For appellee to prevail here, it is necessary to find such similarities of the inventions as to support the conclusion that the parties are asserting inventor-ship of substantially the same invention. 35 U.S.C. § 135.

There is no dispute that both parties were concerned with the same problem: how to construct an interchangeable multiple transducer head mounting unit which would not cause distorted signals to be read from the tape when the heads were . changed. Both parties disclose structures in which one mounting unit could be substituted in precisely the same position as another unit. As background it is clear that prior to the work of either party as it was old in this art to construct a transducer head from two core sections wherein the core sections are separated by a recording/reproducing gap. Also, multiple transducer heads were old in the art.

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Samuel P. McCutchen Jr., and Jack E. Eskilson v. Francis A. Oliver
367 F.2d 609 (Customs and Patent Appeals, 1966)

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Bluebook (online)
367 F.2d 609, 54 C.C.P.A. 756, Counsel Stack Legal Research, https://law.counselstack.com/opinion/samuel-p-mccutchen-jr-and-jack-e-eskilson-v-francis-a-oliver-ccpa-1966.