Golota v. Strom

¶4MILLER, Judge.

¶5This appeal is from a decision of-the Board of Patent Interferences awarding priority to Albert P. Strom and Charles F. Cromer, senior party-appellees, in Interference No. 97,491, involving Strom et al. patent No. 3,497,653, for “Fluid-Blast Circuit Interrupters With Extensible Movable Fluid-Directing Nozzle.” The patent was issued February 24, 1970, on application Serial No. 598,761, filed December 2, 1966. The Golota application, Serial No. 680,778, was filed November 6, 1967, for “Adjustable Contact Nozzle And Retractable Arcing Chamber For Gas Blast Circuit Breakers.” We affirm.

¶6THE INVENTION OF THE COUNTS

¶7The counts are directed to. a fluid-blast circuit interrupter, including a *1288means defining a source of fluid under pressure, which appellant illustrates in his application Dy the following drawing:

¶8

¶9*1289With reference to the above figure, limitations of count 1 are set forth in the following comparison:

¶10Count 1

¶11A fluid-blast circuit interrupter including means defining an orifice-shaped stationary contact

¶12having an exhaust opening therethrough

¶13and a cooperable movable contact separable therefrom to establish an arc,

¶14an actuating member to effect opening and closing movement of the movable contact,

¶15means defining a source of fluid under pressure,

¶16blast-valve means for controlling a flow of high-pressure fluid from said source,

¶17a movable insulating nozzle for directing fluid through said exhaust opening

¶18picked up by said actuating member on the closing stroke of said actuating member and abutting said orifice-shaped stationary contact,

¶19means biasing said movable insulating nozzle away from said stationary contact,

¶20said movable insulating nozzle being in its extended position in the closed-circuit position of the interrupter,

¶21conduit means from said blast-valve means leading into a volume defined at least partially by said insulating nozzle,

¶22whereby the gas pressure in said volume will retain said nozzle in its extended position during arc interruption.

¶23(Emphasis supplied.)

¶24Golota Application

¶25Contact 53.

¶26Central opening 55.

¶27Movable contact assembly which includes contact finger 60.

¶28Operating shaft 86.

¶29Tank 13.

¶30Cylindrical valve body 158.

¶31Sliding interrupter tube 123.

¶32Contact finger 60 picked up ring 127 of nozzle 123 to abut 54.

¶33Position as shown in Figure 2.

¶34Lower casing 112.

¶35*1290Counts 2 and 3 present variations not pertinent to the issues before the court.

¶36PROCEEDINGS BELOW

¶37Appellant copied three claims, representing the three counts on appeal, from appellees’ patent and filed an affidavit by Weiner, counsel for appellant, with attached documents under Rule 204(c).1 Subsequently, the interference was declared. At the same time, an Order to Show Cause under Rule 228 2was issued by the interference examiner, who ruled that the showing made by appellant under Rule 204(c) was inadequate to pri-ma facie entitle him to an award of priority. Appellant responded with two additional affidavits under Rule 228 — a second affidavit by Weiner and one by McConnell.

¶38The first Weiner affidavit, accompanied by a developmental drawing similar to Figure 2 above and a patent invention disclosure document briefly describing the invention shown in the drawing, recites that the inventor and corroborating witness, McKeough, had left the employ of the assignee of the Golota application and that:

¶39(b) There was in my files a copy of Drawing 87124SKL-079, Revision 3, dated 1-12-66 (January 12, 1966) and I used a copy of this drawing in the preparation of the above-noted application. This drawing was obtained by me from the assignee of the above-noted application. On information and belief, this drawing was made under the instructions and direction of the inventor, John H. Golota, and the *1291drawing was completed January 12, 1966.

¶40The second Weiner affidavit, with attached portions of appellant's assignee’s Patent Committee Agenda showing the docketing of appellant’s invention disclosure document, states:

(a) On information and belief, a prototype unit, made pursuant to Drawing 87124SKD-079, Revision 3, dated 1-12-66 and attached to my earlier affidavit, was manufactured and successfully tested on or before December 2, 1966, or at least continuous work was carried out toward the production of such a unit until there was a successful reduction to practice.

¶41The affidavit further states that the developmental drawing was given to Weiner by appellant on June 9,1966.

¶42The McConnell affidavit reads:

I was personally familiar with the development of the SF6 breaker at the Power Circuit Breaker Division of I-T-E Imperial which is of the type shown in the application of party Gol-ota and as shown in Drawing 87124SKL-079, Revision 3. I personally observed the manufacture, assembly and successful tests and demonstrations of an interrupter prior to December 2, 1966, which was built according to this drawing.

¶43In holding that appellant’s showing under Rules 204(c) and ’228 was inadequate, the board found that appellant had “not set forth any facts relative to a reduction to practice which would prima facie entitle him to an award of priority . .” It noted that the first Wei-ner affidavit did not mention reduction to practice, while the second (“on information and belief”), filed under Rule 228, merely gave conclusions thereon and did not comply with Rule 204(c), which requires the expected testimony of a witness rather than knowledge of counsel; that the McConnell affidavit did not allege facts and was unclear over what he meant by “interrupter.”

¶44In reaffirming its findings on reconsideration, the board added that the affidavits do not disclose the claimed “means defining a source of fluid under pressure.”

¶45OPINION

¶46The question before the court is whether the board erred in holding that appellant’s affidavits were inadequate for purposes of Rules 204(c) and 228.

¶47Appellant argues that the affidavits show the clear elements of a justiciable case by way of a reduction to practice prior to the effective date of appellees.3 A similar argument was advanced in Kistler v. Weber, 412 F.2d 280, 56 C.C. P.A. 1413 (1969), where this court explained Rule 204(c) as follows:4

The former [old Rule 114] only called upon the junior party in the pleading, called a Preliminary Statement, to allege facts which, if subsequently proved, would overcome the prima fa-cie case made by the date of the senior party’s application, whereas the latter [Rule 204(c)] calls upon the junior party to prove (by way of affidavit (s) setting forth facts) at least so much of his case as would entitle him to an award of priority if the senior party were to rely only on his filing date and were not to rebut any of the junior party’s case. Under old *1292Rule 114, it was to be assumed that the junior party could prove what he alleged in his Preliminary Statement; he was not required to prove anything. Under Rule 204(c), however, prima facie proof of facts is called for, albeit in affidavit form.

We also disagree with Kistler’s sug- ■ gestión that Rules 204(c) and 228 place any undue burden on a junior party or are inherently in any way “contrary to the statutory rights of a first inventor.” The expense involved in a protracted interference, and the special hardships workable on a paten-tee involved therein, are notorious, and to minimize both, where possible, would appear to be the laudable purpose of these rules. If a junior party is in fact “a first inventor” and if he could prove that in a “full hearing on priority,” we see no reason why he should be prejudiced or unduly burdened by a requirement that he prove (prior to a “full hearing”) by way of affidavits and documentary evidence that he is at least prima facie entitled to an award of priority over the pat-entee’s effective filing date. [Footnote omitted.]

¶48In response to Kistler’s argument that “he does not have to prove his facts at this stage of the interference but only give rise to an inference or show a possibility that he could prove them later,” the court said:

We cannot accept this procedural theory. To do so would entirely vitiate the purposes of Rules 204(c) and 228 and allow mere uncorroborated assertions to take the place of proof of acts and circumstances adequate to overcome Weber’s March 9, 1960, filing date.

¶49Rules 204(c) and 228 were again reviewed in Schwab v. Pittman, 451 F.2d 637, 59 C.C.P.A. 720 (1971), where we said that the requirement to prove a pri-ma facie case is proper in order to justify putting a patentee to the expense and inconvenience of prosecuting an interference.

¶50The board’s holding that appellant’s affidavits were inadequate because Rules 204(c) and 228 require an allegation of facts, rather than mere conclusions, finds support not only in the above cases, but in Patent Office practice as well.5 And we agree that appellant’s affidavits contain mere conclusions rather than the showing of facts required. No facts are set forth on how the claimed device was actually reduced to practice, how it was embodied in its final constructed form, or how it was tested. The second Weiner affidavit and the McConnell affidavit set forth merely the conclusion or opinion that a structure embodying all the limitations of the count was reduced to practice.

¶51A prima facie case assuredly would have to be made for all limitations in the counts. Count 1 requires “means defining a source of fluid under pressure,” which appellant has indicated generally refers to tank 13 in the above figure. (Appellant’s specification notes that interrupter 10 rests on tank housing 13.) Thus, when the McConnell affidavit refers to “interrupter,” it is unclear, as the board pointed out, whether McConnell was- referring only to interrupter 10 or to a structure embodying all the limitations of the count, including tank 13. Therefore, the board correctly concluded that there are no facts concerning conception or reduction to practice of the “means defining a source of fluid under pressure,”

¶52We also note that appellant has failed to provide “an explanation of the basis on which he believes that the facts set *1293forth” in the affidavits overcome the effective filing date of appellees.6

¶53Appellant raises the question of whether an affidavit submitted “on information and belief” in behalf of a witness expected to testify (sufficient cause being shown for inability to furnish an affidavit from such witness) is to be subjected to less stringent requirements than an affidavit from the witness himself, arguing that it is. We do not agree. Rule 204(c) requires that “acts and circumstances” be set out in “each” affidavit and that the affidavits “collectively” establish a prima facie case. Although Rule 204(c) requires that the “information and belief” affidavit of an expected witness’ testimony be necessary to overcome the patentee’s filing date, it is clear that the “acts and circumstances” requirement for “each” affidavit applies to it and that such affidavit plus any other(s) must collectively establish a prima facie case.

¶54The board also properly noted that it is the expected testimony of a witness which is to be set forth upon information and belief in the affidavit, not the knowledge, of counsel, unless, of course, counsel is to be called as a witness. Moreover, inasmuch as the purpose of Rules 204(c) and 228 is to assure that a patentee is not subjected to the unnecessary burden of being put in interference, it follows that there should be some showing that the particular witness is indeed expected, to testify. After all, if such witness is unlikely to appear, it would be manifestly unfair to the patentee and the Patent Office for the interference to proceed. Here, appellant has made no showing that either the inventor or the corroborating witness, McKeough, is indeed expected to testify.

¶55In view of the foregoing, we hold that appellant’s affidavits were inadequate for purposes of Rules 204(c) and 228 and affirm the decision of the board.

¶56Affirmed.