Varian v. Llewellyn

178 F.2d 997, 37 C.C.P.A. 824

Opinions

JACKSON, Judge

*

Appellant, the junior party to this interference proceeding, appealed from a decision of the Board of Interference Examiners of the United States Patent Office, awarding priority of invention of the subject matter of counts 1, 3 and 4 to appellee. With respect to the remaining counts, 2, 5 and 6, priority was awarded to appellant. No appeal was taken by appellee from that award for the stated reason that those counts were limited to special features of appellant’s device.

The appeal came on for hearing and was submitted for decision after argument by counsel for the parties on March 7, 1949. This court rendered its opinion reversing the decision of the Board of Interference Examiners on April 12, 1949.

Subsequently, and within the time allowed by the court, cou’nsel for appellee filed a petition for a rehearing and reconsideration of the appeal. Briefs were filed by the parties and a brief amicus curiae, by request of the court, was filed by the Commissioner of Patents. The petition of appellee was granted and oral argument was heard on October 17, 1949.

For the reason that upon further consideration the court is convinced that in its former opinion it erred in its conclusions, and that the decision of the Board of Interference Examiners should have been affirmed, this opinion correcting such error is rendered. Because the former opinion has not been published, it is not necessary to point out the reasons why we now consider the former disposition of the appeal to have been erroneous.

The interference involves a reissue application of appellee, Serial No. 431,607, filed February 19, 1942, for a reissue of his original patent, No. 2,190,668, dated February 20, 1940, upon an application, Serial No. 156,647, filed July 31, 1937, and a patent of appellant, No. 2,242,275, dated May 20, 1941, upon an application filed October 11, 1937.

Originally appeals were taken to this court from three companion decisions of the Board of Interference Examiners, of which the present appeal is one. In two of those, Nos. 5474 and 5475, Varían and one William W. Hansen were appellants and Llewellyn, appellee.

Those interferences were considered in the Patent Office on a common record and appeals from the separate decisions of the Board of Interference Examiners together with said record are before us in a single volume.

The court at the opening of the oral argument entered an order dismissing appeals Nos. 5474 and 5475 in accordance with the request of counsel set out in their brief to withdraw those appeals.

The subject matter involved in the present interference was described by the board as follows: “This interference relates to an electron discharge device adapted to operate at extremely high frequencies as a result of the interaction between an electron stream and a high frequency field whereby the electrons are alternately accelerated' and decelerated to form bunches of electrons.”

As originally declared the interference involved one count, copied from the patent of appellant as a claim in appellee’s reissue application, reading as follows: “1. Apparatus of the character described having, in combination, means for. producing a stream of electrons, an internally resonant hollow body having a reentrant pole, and means for projecting the stream of electrons through the space within said body between said reentrant pole and the opposite wall of said body.”

Appellant moved to dissolve the interference and appellee filed a motion to add certain other counts copied as claims from appellant’s patent. Appellant’s motion to dissolve .was denied and appellee’s motion to add counts was granted so that the interference as redeclared involved counts 1 to 6, inclusive. However, this appeal is concerned only with the aforesaid count 1 and counts 3 and 4, which latter counts read as follows:

“3. Apparatus of the character described having, in combination, means for creating an electron stream, means comprising a space-resonant device for periodically varying the velocity of the electrons of the stream, and means for adjusting the space-resonant device to adjust the period of the periodic variation of the said velocity.

“4. Apparatus of the character described comprising an internally resonant hollow body having a reentrant pole provided with an opening, and a multiple-apertured conducting member closing the opening.”

In the motion to dissolve, it was contended that appellee had no right to the single count because the structure defined therein was unpatentable to appellee, in that the claim which constitutes the count is not for the same invention as that which was claimed by appellee during the prosecution of his original patent; that the involved application of appellee was filed an unreasonable length of time after the issuance of his original patent and that no valid excuse therefor was presented; that that broadened claim in appellee’s reissue application was not filed within the period of one year from the issuance of his patent, as required for broadened reissued claims, by analogy to the public use statutory bars for the filing of original applications provided for in R.S. § 4886, 35 U.S.C.A. § 31; that appellee did not present a claim corresponding to count 1 until almost three years subsequent to certain named publications which appellant alleged to be references for said claim; that certain patents owned by the assignee of appellee’s reissue application are publications barring appellee from obtaining the claim; that the said assignee should have reissued those patents owned by it for the subject matter of count 1,’ but for the reason that such reissue would be too late that a reissue by either inventor is barred as to the subject matter of the count and that by the failure to reissue the other owned patents of appellee’s assignee, the subject matter of the count is dedicated to the public; and that the count is unpatentable to appellee over the Hansen patent, No. 2,190,712, the filing date of the application for which is alleged by appellant to have preceded the original filing date of appellee.

It was noted in the decision of the Primary Examiner that the reasons relied upon for dissolution were the same as those urged in appellant’s motion to dissolve in another interference, No. 80,058, entitled Hahn v. Varian v. Llewellyn in which the Primary Examiner granted Varian’s motion to dissolve the interference as to Llewellyn on the ground that the count there in issue read fully on the said Hansen patent, the effective date of which was prior to the record date of appellee and for no other reason. That interference involved the same application of appellee Llewellyn as is here involved.

The examiner in appellant’s motion herein stated that it was not supported by convincing argument for reasons which were set forth in his decision in interference No. 80,058. Those reasons the examiner incorporated by reference in his decision on the motion to dissolve in the present interference. He pointed out that the difference between the issue in interference No. 80,058 and the present interference is not great, and is immaterial, and that the matters embraced in the motion to dissolve in this interference were not directed to such-difference.

It appears from the decision of the Primary Examiner in interference No. 80,058, that the party Varian contended that the invention of appellee’s original patent was directed to a diode oscillator and that the count there in issue did not define an oscillator, but was intended to cover an amplifier. It was admitted, however, that- if the count were unduly stretched, at best, it might merely cover a subcombination of some of the modifications of the device of appellee for the reason that the count therein did not recite essential features set out in appellee’s original patent. Appellant Varian in that case contended that such ■combination could have been, but was not claimed in appellee’s original patent, and could have been properly divided therefrom, and furthermore it was contended that appellee disclosed and intended to claim only the diode oscillator in his original patent.

In interference No. 80,058, the Primary Examiner stated that the party Varían contended that the claim in appellee’s reissue corresponding to the count therein was for a different invention than the original patent; that the party Varían also alleged that two years less one day was too great a delay for filing a reissue application to broaden the claims of the patent; that delay on the part of appellee in filing his reissue application disclosed such laches as to make the broadened reissue invalid; that nine months delay between the issuance of the Varían patent and the filing of appellee’s reissue patent to assert the subject matter therein was fatal.

It may be noted from what has been stated concerning the decision of the Primary Examiner in interference No. 80,058, that the same contentions were made in the motion to dissolve in the present interference.

In interference No. 80,058, the Primary Examiner held that the count there in issue was not for a different invention than that claimed or intended to be claimed in the original patent of appellee, and that the count could have been made as a claim in the application for that patent for the reason that it fully reads thereon and that such claim would have been held to be a subcombination of already claimed matter which would not have been divisible from the subject matter of the other claims then in appellee’s patent. The examiner further held in that interference that the claim corresponding to the count was not filed too late in appellee’s reissue application because it was filed within two years from the date of issue of the original patent and that no patent or publication, therefore, was pertinent unless it antedated the filing date of appellee’s original application.

The examiner stated that the allegations appearing in the reissue affidavit, as showing reasons or excuses for the delay in the filing of the reissue application herein, had been considered and deemed sufficient. The decision of the Primary Examiner in this proceeding incorporating by reference the pertinent reasoning in his decision in Interference No. 80,058, has been examined with scrupulous care, and in our opinion he arrived at the proper conclusion that count 1 herein is fully disclosed in the original application of appellee in that it fully reads thereon, and the claim which constitutes count 1, if presented in the original application, would have been held to be a subcombination of matter already claimed and not divisible from the subject matter of the other claims in the patent.

The Primary Examiner with respect to the last reason given by appellant in his motion to dissolve stated that it required further consideration. In that respect he said that appellant had made no clear application of count 1 to the alleged reference, Hansen patent, 2,190,712, and that it was the contention of appellee that the patent did not disclose the reentrant pole feature of the count. He agreed with the contention of appellee that the patent did not disclose the subject matter of the count, and therefore could not have been a reference.

The Primary Examiner held that appellee could make counts 3 and 4, finding no difficulty in reading count 3 on appellee’s Fig. 8 and count 4 on his Fig. 12.

The Board of Interference Examiners considered count 1 to be illustrative of all of the counts in issue here. It held that the testimony presented on 'behalf of appellee established conception ’and actual reduction to practice of the invention defined by count 1 in the months of March 1934 and October 1935, respectively, and since such holding had not been seriously disputed that an analysis of such testimony was unnecessary.

The board held that count 1 reads directly upon the device depicted by Fig. 1 of appellee’s original application. Moreover, during the oral argument on October 17, 1949, counsel for appellant in answer to questions by the court admitted that count 1 reads upon Fig. 1, as held by the board.

Figs. 1, 8 and 12 appear in both the original patent and in the reissue application of appellee. In fact all the figures in the reissue application are identical with those appearing in the patent.

The board held -that there had been no evidence of actual reduction to practice of the devices shown in Figs. 8 and 12, and restricted appellee to his filing date of July 31, 1937, for constructive reduction to practice of the devices defined by counts 3 and 4.

The Board of Interference Examiners in its decision noted the reasons appearing in the brief of counsel for appellant to sustain his contentions as follows:

“Varian urges that Llewellyn cannot prevail in this interference because

“(1) Llewellyn’s disclosure fails to support the counts.

“(2) Llewellyn’s unreasonable delay in claiming the subject matter of the counts after disclosure of the Klystron to him by Varian bars his right to the counts as against Varian.

“(3) Llewellyn’s unreasonable delay in copying claims from the Varian patent after issuance thereof bars his right to the counts.

“(4) 'Counts 1 to 4 are unpatentable to Llewellyn in view of publications and sale more than two years prior to his first assertion of the subject matter of the counts.

“(5) The counts are not for the same invention as that to which the original Llewellyn patent was direct (sic), and are hence unpatentable -to Llewellyn in his reissue application.

“(6) Llewellyn’s unreasonable delay in filing his reissue application with broadened claims bars his right to the counts as against the public in general.

“At least the first three of the foregoing grounds are properly arguable at final hearing under Rule 130 as a basis for an award of priority, and if any of such grounds are not presentable as a basis for award of priority, such grounds, together with the last three grounds, are properly arguable here as a basis for a recommendation by this Board to the Commissioner of Patents under Rule 126.”

In disposing of appellant’s first contention, the board noted that appellant had made no motion to dissolve based upon appellee’s inadequate disclosure as to count 1 during the motion period and also that no adequate reason appeared why such motion had not been brought. The board, therefore, properly refused to consider the matter although if the question of adequate disclosure had been properly raised it was arguable at final hearing under Rule 130, Rules of the Patent Office, 35 U.S.C.A. Appendix. It is clear to us, as was held by the tribunals of the Patent Office, that the claim in the reissue application of appellee corresponding to count 1 was properly presented and that the application of the count to Fig. 1 was correct.

The board thoroughly considered appellant’s contention that counts 2 to 6, inclusive, were not disclosed in appellee’s application. With respect to count 3, it was stated in the board’s decision that counsel for appellant made no specific mention thereof in his brief although he had opposed the admission of the count, alleging lack of adequate disclosure. The board agreed with the decision of the Primary, Examiner holding that the count is supported by the original disclosure of appellee. In 'his decision the examiner stated appellant had admitted that the resonant chamber of the device of appellee “serves to effect some bunching” of electrons and seemingly is a periodic variance of velocity, and that he had therefore impliedly admitted the creation of groups of electrons by such chamber and the taking of energy from those groups, and in view of such admission, all of which-in our opinion must include the means to produce such effects, the Primary Examiner held that count 3 reads upon Fig. 8 of appellee’s parent application. The examiner stated “The Count does not call for any electrons leaving anything and there is nothing in the count limiting it to an amplifier,” which is stated in the specification of appellant’s patent to be an object of his invention.

With respect to count 4, the Primary Examiner stated that the whole device of Fig. 12, appearing in appellee’s application must be considered and not merely a section of it. He noted in detail the several elements appearing in Fig. 12 that in his opinion sufficiently supported the terms of the count. One of those elements is a “re-entrant pole.” Appellant contended before the board and here that Fig. 12 has no re-entrant pole in the meaning of the count, but if he disclosed what might be considered to be a pole that it has neither an opening nor a multiple-apertured conducting member closing it. Counsel for appellant contend that a pole is typically cylindrical. In response to such contention, the board pointed out that one of the dictionary definitions of a pole is “An upright standard to the top of which something is affixed or by which something is supported.” It held that the examiner did not err in holding that Fig. 12 of appellee discloses the subject matter of count 4.

As hereinbefore mentioned, counsel for appellant admitted that count 1 reads on appellee’s Fig. 1. That count provided for a reentrant pole. It appears to us that the device of Fig. 12 is in essence a cylindrical counterpart of that shown in Fig. 1. Fig. 12 shows a member which is directed inwardly into the cavity formed by an outer cylindrical member, although instead of being vertical it is turned 90 degrees. That appellee clearly intended the combination shown in Fig. 12 to be a counterpart of that shown in Fig. 1, we think is evident from the patent specification of appellee, wherein it is stated that “The elements 39 and 40 [Fig. 12], although of a different configuration, are the functional equivalents of * * * the conductors 1, 2, together with the cathode and anode surfaces C, A of Fig. 1.”

It appears to us that the inwardly extending rather flat cylinder shown in Fig. 12 is made up of side walls, except that there are four apertures in the closure rim for the through passage of electrons. That the rim is multi-apertured admits of no doubt. Counsel for appellant would have us hold that to be multi-apertured, the element must be screen-like, which is not what the count requires.

The board decided that appellee has established conception of the invention defined in counts 1, 3 and 4 prior to June S, 1937, which was the date of conception alleged by counsel for appellant in their brief, and that appellee had established reduction of the invention to practice prior to any date alleged by appellee for such reduction, and therefore held that priority of invention as to counts 1, 3 and 4 would be awarded to appellee if the other contentions alleged by counsel for appellant were denied.

One of those contentions is .that because of the alleged unreasonable delay in claiming the subject matter of the counts after having knowledge of the device of appellant, that appellee cannot prevail. The board said that that question appeared to be a matter ancillary to priority and could be properly considered by it at final hearing. It then stated it appeared from the testimony on behalf of appellant that the subject matter of counts 1 to 4, inclusive, had been disclosed to an employee of appellee’s assignee in June 1939, and further that said assignee had purchased an embodiment of appellant’s device, including the subject matter of those counts, which device was delivered to the assignee in January 1940.

The board was of opinion that no estoppel arose from such disclosure for the reason that appellee had been asserting claims to the invention prior to any actual or constructive notice of the device of appellant, which is known as a Klystron. That holding was in harmony with the decision of the Primary Examiner that the involved counts are not for a different invention than that claimed or intended to be claimed in the original patent of appellee.

The board properly stated that during the presentation of his original application, appellee was obviously not claiming the invention in exactly the same language of appellant’s patent, but that he was in fact claiming the same invention, and that the involved counts are merely broad sub-combination claims of the complete combination claims in the original 'application, and that such broader claims would not be divisible from the subject matter of the other claims. Such was the holding of the Primary Examiner, who properly stated that the cases of Ex parte Hans Thoma, 30 U.S.P.Q. 174, and Ex parte McBurney and Nollau, 55 U.S.P.Q. 235, are on all fours with the facts on this phase of the interference.

It is clear, as was held by the board, that the claim constituting count 1 herein was copied by appellee less than one year after the issuance of the patent of appellant, and there can be no successful contention, therefore, that Rule 94, Rules of the Patent Office then in effect, is violated with respect to that count. The pertinent part of that rule reads as follows: “No amendment for the first time presenting or asserting a claim which is the same as, or for substantially the same subject matter as, a claim of an issued patent may be made in any application unless such amendment is filed within one year from the date on which said patent was granted.”

The claims which are counts 3 and 4 were presented more than one year after the date of appellant’s patent. Count 3 was stated by the board to be similar to count 1 except for the addition of “means for adjusting the space-resonant device.” The board held that count to be for substantially the same subject matter as count 1, observing the rule does not require that the exact words of the patent be copied within a year, but only that substantially the same subject matter be claimed, which admits of some variation “either in the direction of broader or more specific claims.”

With respect to count 4, the board pointed out that in some respects it is broader than count 1, but that it is more specific in the. recitation of “a multiple-apertured conducting member closing the opening.” The board deemed that the count was for substantially the same subject matter as that contained in count 1.

With respect to reasons 4 to 6, inclusive of appellant’s contentions before the board, heretofore set out, it was admitted by counsel for appellant that they are not ancillary to priority. He coupled that admission, as hereinbefore noted, with a request to the board to make a recommendation pursuant to Rule 126, Rules of the Patent Office then in effect, as to the matter raised by those counts. The board in its decision-stated that all of the reasons upon which appellant urged the said recommendation,, except the evidence of sale to the assignee of appellant, were before the Primary Examiner on motion to dissolve, and that since there was no evidence to establish such sale before the Primary Examiner., it was given no consideration by him.

The board properly stated that the sale of the Klystron under contention 4, above noted, has no more significance than the 1939 publication cited, because it is later in point of time. Finally the board held that all of the other matters which had been urged by appellant for recommendation h'ad been before the Primary Examiner and the board saw no good reason for making such recommendation. The effect of the sale and disclosure of the Klystron to appellee may be properly considered by the Primary Examiner when ex parte prosecution of the appellee’s application has been resumed.

Counsel for appellant in their brief and in oral argument contend most vigorously that because a sale of a Klystron had been made to the assignee of appellee the claims constituting the counts herein should have been presented in appellee’s reissue application without delay. We cannot agree to any such contention. Patents are measured by their claims, and appellee had no means of knowing what the claims of appellant might embrace until the patent of appellant issued.

A model of a Klystron was before us during the argument of this appeal. The device disclosed in the drawings of appellee, however, seems quite different in structure from that model.. It seems to us that probably -the Klystron may be uséd for'purposes that might be foreign to the use of appellee’s device.

In our opinion the claims-of appellant’s patent which appear in the involved counts are broad enough to cover not only his device but the device of appellee, and appellee properly copied such claims to provoke the present interference.

In their contention that appellee’s reissue application is for a different invention than that disclosed and claimed in his patent, counsel for appellant point out two deviations from the original application. One of those deviations is that the reissue application relates to “electronic devices,” whereas the parent application relates to “oscillators.” During the oral argument counsel for appellant admitted that an oscillator . is an electronic device. The second deviation is a statement in the reissue application which is not contained in the parent application and reads as follows: “The invention in one aspect contemplates the use of a chamber or cavity resonator excited to set up standing electromagnetic waves of a kind and frequency responsive to the physical configuration of the resonator together with means for causing an electron beam to traverse at least a part of said resonator so as to cause a coaction between said beam and the electric field of said standing waves.”

We agree with the tribunals below that such mentioned changes in the reissue application do not render it an application for a different invention than that disclosed in the original application. It may be interesting to observe that the application of appellant is for “Electrical Converters”; the Hahn application is for an “Ultra-Short Wave Device”; and the Hansen et al. application is for an “Electron Beam Oscillator.” Thus it will be seen that despite the difference of entitlement of the various applications which appear in the record, the officials in the Patent Office skilled in the electronic art found them sufficiently similar to declare the various interferences referred to herein.

It may be stated that the subject matter of this appeal is of a highly scientific nature and from the record before us we are not able to state that there was manifest error in the concurring opinions of the tribunals pf the Patent Office.

It should be noted that the decision of the Board of Interference Examiners is based entirely upon facts as they found them, and we agree with such findings. It is unnecessary, therefore, for us to discuss the many decisions of this and other courts tendered in support of their contentions by the parties. None of the cases cited by appellant are applicable to the facts herein, and it would unduly prolong this lengthy opinion to discuss them.

For the reasons hereinbefore set out, the decision of the Board of Interference Examiners is affirmed.

Affirmed.

HATFIELD, Judge, being unable to participate in this case because of illness, WILBUR K. MIDLER, Judge of the United States Court of Appeals for the District of Columbia, was designated to serve herein pursuant to the provisions of Title 28 United States Code, section 293, 28 U.S.C.A. § 293, effective September 1, 1948.