Brashearsv.Linkletter et al.

Board of Patent Appeals and Interferences

Sep 21, 1999

07883903 (B.P.A.I. Sep. 21, 1999)

Application 07/883,903, filed May 18, 1992. According1
to appellant, the application is a continuation of Application
07/598,957, filed October 17, 1990, abandoned. Assignor to
Gencor Industries, Inc.
Patent 5,067,254, granted November 26, 1991, based on2
Application 07/529,136, filed May 25, 1990. Assignors to
Cedarapids. Inc.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 35
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
DAVID F. BRASHEARS,
Junior Party,1
v.
DON R. LINKLETTER and JOSEPH E. MUSIL,
Senior Party.2
_____________
Patent Interference No. 103,322
______________
Interference No. 103,322

2
Before CALVERT, PATE and HANLON, Administrative Patent Judges.
PATE, Administrative Patent Judge.
FINAL DECISION UNDER 37 CFR § 1.658
This is a final decision in Interference No.
103,322. The subject matter at issue is a baffle plate for
installation in the aggregate veil zone of an asphalt mixing
drum. The baffle plate interrupts the aggregate veil or
curtain permitting a tunnel of unimpeded gases to reach the
gaseous effluent end of the drum. This enables the operator
to raise the temperature of the exhaust gases to prevent
condensation in the baghouse.
The count of the interference reads as follows:
Count 1
Apparatus for modifying a veil of falling materials
generated in a drying and heating region of a substantially
horizontally disposed elongate drum of a drying and mixing
apparatus, within which drum the drying and heating is
effected by a stream of hot gases flowing longitudinally of
the drum and traversing the length of the veil of falling
materials, the apparatus for modifying the veil comprising:
at least one baffle plate supported within the
drying and heating region of said drum for extending at least
partially through the veil of falling materials; and
a support for supporting said at least one baffle
plate for pivotal movement about an axis disposed
Interference No. 103,322

The senior party will henceforth be referred to in the3
singular.
3
substantially parallel to the longitudinal axis of the drum,
for changing the projected area of the baffle plate within and
for creating a void below said baffle plate through the veil
of falling materials.
The claims of the parties that correspond to the
count
are:
Brashears: Claims 1 through 34
Linkletter et al.: Claims 1 through 3, 5, through 9, and 3
14 through 18
Background Facts
The interference was declared on September 22, 1994
with Brashears as junior party and Linkletter as senior party.
The Brashears application is assigned to Gencor Industries,
Inc. The Linkletter patent is assigned to Cedarapids, Inc.
No preliminary motions were filed during the motion
period established by the Administrative Patent Judge. Both
parties have filed records and main briefs. The junior party
has filed a brief-in-reply. The parties have waived oral
hearing. Accordingly, the sole issue for our consideration at
Interference No. 103,322

4
final hearing is priority of invention under 35 U.S.C. §
102(g).
Burden of Proof
The junior party application has been accorded a
benefit date of October 17, 1990. The senior party’s
effective filing date is May 25, 1990, and the senior party
was granted the
involved patent on November 26, 1990. Thus, the benefit date
accorded the junior party was during the pendency of the
senior
party’s application. Accordingly, for the junior party to
prevail in a priority contest, the junior party must prove
priority of invention by a preponderance of the evidence. See
Peeler v. Miller, 535 F.2d 647, 651 n.5, 190 USPQ 117, 120 n.5
(CCPA 1976). Accord Bosies v. Benedict, 27 F.3d 539, 541-42,
30 USPQ2d 1862, 1864 (Fed. Cir. 1994). Cf. Price v. Symsek,
988 F.2d 1187, 1194, 26 USPQ 1031, 1036 (Fed. Cir. 1993).
Interference No. 103,322

5
The Parties’ Respective Priority Cases
Conception has been defined as the formation, in the
mind of the inventor, of a definite and permanent idea of the
complete and operative invention. Coleman v. Dines, 754 F.2d
353, 359, 224 USPQ 857, 862 (Fed. Cir. 1985)(quoting Gunter v.
Stream, 573 F.2d 77, 80, 197 USPQ 482, 484 (CCPA 1978)). It
is settled that in establishing conception a party must show
every feature recited in the count, and that every limitation
in the count must have been known at the time of the alleged
conception. Coleman, 754 F.2d at 359, 224 USPQ at 862.
Neither conception nor reduction to practice may be
established by the uncorroborated testimony of the inventor.
See Tomecek v. Stimpson, 513 F.2d 614, 619, 185 USPQ 235, 239
(CCPA 1975). The inventor's testimony, standing alone, is
insufficient to prove conception--some form of corroboration
must be shown. See Price, 988 F.2d at 1194, 26 USPQ2d at
1036. While the "rule of reason" originally developed with
respect to reduc- tion to practice has been extended to the
corroboration required for proof of conception, the rule does
Interference No. 103,322

6
not dispense with the requirement of some evidence of
independent corroboration. See Coleman, 754 F.2d at 360, 224
USPQ at 862. As the CCPA stated in Reese v. Hurst, 661 F.2d
1222, 1225, 211 USPQ 936, 940 (CCPA 1981): "[the] adoption of
the 'rule of reason' has not altered the requirement that
evidence of corroboration must not depend solely on the
inventor himself." There must be evidence independent from
the inventor corroborating the conception.
Additionally, we acknowledge that there is no single
formula that must be followed in proving corroboration. An
evaluation of all pertinent evidence must be made so that a
sound determination of the credibility of the inventor's story
may be reached. Price, 988 F.2d at 1195, 26 USPQ2d at 1037.
Independent corroboration may consist of testimony of a
witness,
other than the inventor, to the actual reduction to practice,
or
Interference No. 103,322

7
it may consist of evidence of surrounding facts and
circumstances independent of information received from the
inventor. Reese, 661 F.2d at 1125, 211 USPQ at 940.
If a party places reliance on an embodiment of the
invention in some physical form, such as a sketch or drawing,
for proof of conception, the existence of the embodiment at
the time must be established by testimony of a person other
than the inventor. Moran v. Paskert, 205 USPQ 356, 359 (Bd.
Pat. Int. 1979). Accord Price, 988 F.2d at 1196, 26 USPQ2d at
1037-38 (testimony of secretary that she recalled seeing
drawing as of critical date provides necessary evidence
corroborating testimony of inventor as to date of conception).
Proof of actual reduction to practice requires
demonstration that the embodiment relied upon as evidence of
priority actually worked for its intended purpose. Newkirk v.
Lulejian, 825 F.2d 1581, 1582, 3 USPQ2d 1793, 1794 (Fed. Cir.
1987). As was stated in Paine v. Inoue, 195 USPQ 598, 604
(Bd. Pat. Int. 1976):
The nature of testing required to establish
a reduction to practice depends on the par-
ticular facts of each case; a common-sense
Interference No. 103,322

The Brashears record will be abbreviated BR followed by4
the appropriate page number. The Brashears exhibits will be
designated BX- followed by the appropriate exhibit number.
Likewise, the Linkletter record and exhibits will be referred
to as LR and LX- respectively.
8
approach is required to determine if the
testing is sufficient. What is required is
that it be reasonably certain the invention
will perform its intended function in
actual use. The tests must be sufficient
to establish utility beyond probability of
failure, and must be sufficient to give
assurance the device will operate under
normal working conditions for a reasonable
length of time [citations omitted].
Junior Party
The junior party inventor states that at least as
early as September 25, 1989 he became aware that the exhaust
gas tem- perature from the drum into the baghouse was
sometimes too low, causing condensation in the baghouse.
BR3. He further states that at least by October 3, 1989 he4
conceived the concept of locating a baffle plate on a shaft
inside the drum within the veiling aggregate to control
exhaust gas temperature. BR4. BX-1 is a letter addressed
Interference No. 103,322

9
to Brashears’ assignee’s patent attorney. As part of BX-1,
Brashears included a perspective drawing of his invention
showing the baffle plate. The drawing attachment bears a date
of October 3, 1989. The drawing also
bears the signature of Joseph Mollick. Mollick stated in a
declaration that as early as October 3, 1989, Brashears
explained the invention to him and he fully understood the
invention and signed the drawing attachment to BX-1. BR7-8.
The drawing and the written description of the invention in
the declaration include all the features of the count. We
credit Brashears with
a corroborated conception of the invention as of October 3,
1989, Mollick providing the necessary corroboration.
Brashears has also submitted declarations from two
employees of Bituma, a subsidiary of the Brashears assignee.
Both Messrs. Johanningmeier and Becker state that a diverter
valve was installed in a drum mixer at the facilities of
Orange Crush in Romeoville, Illinois. BX-6, 7, and 8 are
service reports prepared by Larry Johanningmeier that detail
Interference No. 103,322

10
the modification of the drum mixer to accept the baffle of the
invention starting on January 3, 1990. BR14, 15. BX-9 and 10
are service reports of Dan Becker that attest to the same
modifications. BR21. Johanningmeier and Becker state that on
January 16, 1990 they witnessed a test of the diverter valve
to test if it would pivot as designed. It did so. Since
there was no use for asphalt paving hot mix in January, only
pivoting of the baffle was tested, no aggregate was fed into
the machine and the burner was not used. BR16, 23; BR28.
Brashears also provided a declaration by Mark Tubay.
Mr. Tubay is an employee of Palumbo Brothers. Orange Crush is
a subsidiary of Palumbo Brothers. BR25, 26. Tubay also
observed the mechanical test of the invention on January 16,
1990. BR28. Tubay states that at least as early as April 20,
1990, the
modified mixing drum was run in commercial operation.
Aggregate was supplied to the drum, the burner was ignited,
and the actuator motor was operated to move the baffle to form
a channel in the veiling aggregate to allow some hot gases to
bypass the veiling aggregate to control the temperature of the
gas exhausting from the drum mixer. BR29. The operation of
Interference No. 103,322

11
the drum mixer, as described by Tubay, satisfies all the terms
of the count. Therefore, the junior party has provided
corroborated evidence of a successful test of the invention as
of the April 20, 1990 date. Accordingly, we credit the
junior party Brashears with an actual reduction to practice of
the subject matter of the interference as of April 20, 1990.
Senior Party
Senior party Linkletter’s record consists of the
declaration testimony of four witnesses--the two co-inventors,
Linkletter and Musil, and Messrs. Schlarmann and Welling.
Linkletter stated that he conceived of the invention on June
20, 1989 and recorded the invention in his notebook on June
21, 1989. LR3. LX-1 (referred to in the declaration as
exhibit A) is two pages from Linkletter’s notebook dated June
21, 1989. These pages are also signed by Schlarmann, who
stated that he read and understood these pages of the notebook
on June 21, 1989. LR10. We, therefore, credit Linkletter
with a corroborated conception of the subject matter of the
interference on June 21, 1989.
Interference No. 103,322

12
We further note the statements of Musil with respect
to his notebook pages. LX-3 (called exhibit C in the
declaration). These entries were placed in the notebook on
June 24, 1989. The next activity recorded in the senior
party’s record was produc- tion of drawings of the invention
on October 10, 1989 and January 30, 1990 by Welling. LX-5
(called exhibit E). LR12.
According to Linkletter and Musil, sometime in
February 1990 a working model of the veil modification device
was installed and operated in a plant in Rotterdam, the
Netherlands. LR7, LR4. LX-2 (exhibit B) is stated to be a
memo from Linkletter to Welling about the plant. LR4.
Linkletter argues that the operation of a plant in the
Netherlands in February constitutes a reduction to practice of
the subject matter of the interference.
Linkletter cannot be credited with a reduction to
practice as of February based on operation of a plant in
Holland. It is axiomatic that, at the time of the test,
testing performed abroad to prove that an invention worked for
Interference No. 103,322

13
its intended purpose clearly constituted a foreign activity
relied on to establish a date of invention and thus was
excluded by 35 U.S.C. § 104 from
the evidence that can be relied on to establish a date of
invention in this country. See Shurie v. Richmond, 699 F.2d
1156, 1158, 216 USPQ 1042, 1044 (Fed. Cir. 1983)("An actual
reduction to practice in Canada is irrelevant in an
interference proceeding concerning priority of
invention")(quoting Wilson v. Sherts, 81 F.2d 755, 760,
28 USPQ 381, 383-84 (CCPA 1936)); Colbert v. Lofdahl, 21
USPQ2d 1068, 1071 (Bd. Pat. App. & Int. 1991):
If the invention is reduced to practice in
a foreign country and knowledge of the
invention was brought into this country and
disclosed to others, the inventor can
derive no benefit from the work done abroad
and such knowledge is merely evidence of
conception of the invention. DeKando v.
Armstrong, 169 O.G. 1185, 1911 CD 413 (App.
D.C. 1911); see also 35 U.S.C. § 104.
Linkletter mentions the change in 35 U.S.C. § 104
respecting WTO countries. It is noted that the change
Linkletter is referring to became effective in applications
Interference No. 103,322

Public Law 103-465 § 531(b).5
14
filed after January 1, 1996, well after both the alleged5
reduction to practice and the senior party’s filing date. It
is of no assistance to Linkletter in this case.
Secondly, Welling did not give evidence with respect
to LX-2 in his declaration. Thus, the memo from Linkletter to
Welling is uncorroborated. The only evidence with respect to
the alleged reduction to practice are declarations from
Linkletter and Musil, the coinventors, and, thus, the senior
party has provided no corroboration for any reduction to
practice in February 1990.
Finally, the evidence respecting a reduction to
practice consists of a few merely conclusory statements from
Linkletter and Musil. Therefore, this panel, as fact finder,
has no facts on which to base a determination of a reduction
to practice. Neither the structure of the exact modification
installed, nor the conditions of any test or operation of the
device are described. Such conclusory evidence cannot support
a determination of a reduction to practice by a preponderance
Interference No. 103,322

15
of the evidence. Affidavits fail in their purpose when they
merely
contain unsupported conclusory statements. See In re Wright,
999 F.2d 1557, 1563, 27 USPQ2d 1510, 1514 (Fed. Cir. 1993); In
re Brandstadter, 484 F.2d 1395, 1404, 179 USPQ 286, 294 (CCPA
1973)(affidavits fail in their purpose since they recite
conclusions but few facts to buttress said conclusions).
Nothing in the rules or in our jurisprudence requires the
fact finder to credit the unsupported assertions of a witness.
See Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092,
44 USPQ2d 1459, 1462 (Fed. Cir. 1997).
Next, Linkletter and Musil are relying on testing
argued to have established a reduction to practice in March
1990 in Aberdeen, Maryland. The evidence offered for this
alleged reduction to practice also fails to make out a
reduction to practice by a preponderance of the evidence.
Interference No. 103,322

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Here again, Linkletter and Musil have failed to provide any
corroboration of the testing in March that was alleged to have
established the reduction to practice. Secondly, Linkletter
and Musil are again relying on conclusory statements instead
of underlying facts. As noted above, such conclusory
statements cannot provide a sufficient evidentiary basis for
us to determine a reduction to practice has occurred.
Accordingly, we cannot credit the
senior party with a reduction to practice based on inventive
acts said to have occurred in March 1990. Consequently, it is
our determination that the senior party reduced the invention
to practice constructively by filing their application on
May 25, 1990.
Senior Party Diligence
Based on our findings and conclusions above, we note
that the junior party was the first party to reduce to
practice,
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but since the senior party was first to conceive, the senior
party can prevail, if the senior party can show diligence from
just prior to the junior party’s entry into the field to the
senior party’s reduction to practice.
A party that seeks to establish reasonable diligence
must account for the entire period during which diligence is
required; that period commences from a time just prior to the
opponent’s conception date to the party's reduction to
practice, either actual or constructive. Gould v. Schawlow,
363 F.2d 908, 919, 150 USPQ 634, 643 (CCPA 1966). During this
period there must be "reasonably continuous activity." Burns
v. Curtis, 172 F.2d 588, 591, 80 USPQ 587, 588-89 (CCPA
1949). Evidence which is of a general nature to the effect
that work was
continuous and which has few specifics as to dates and facts
does not constitute the kind of evidence required to establish
diligence in the critical period. Kendall v. Searles, 173
F.2d 986, 993, 81 USPQ 363, 369 (CCPA 1949). Of course, a
requirement of the law of reasonable diligence is the
Interference No. 103,322

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necessity of providing adequate corroboration of that
diligence. See Gould, 363 F.2d at 919, 150 USPQ at 643.
Finally, something more than mere conversation or keeping an
idea under consideration is required to constitute diligence.
Id. at 918 n.9, 150 USPQ at 643 n.9. The presence or absence
of reasonable diligence must necessarily be determined by the
evidence adduced in each case. Id. at 921, 150 USPQ at 645.
Reviewing the senior party’s record, we note that
the senior party has not shown reasonably continuous diligence
from just before the junior party’s entry into the field,
i.e., October 3, 1989. The senior party’s evidence has an
unexcused hiatus or gap from the time Musil recorded his
contributions in his notebook, June 24, 1989, until after the
junior party’s entry into the field when Welling prepared some
drawings on October 10, 1989. We also note a relatively long
unexcused gap in the evidentiary record of the senior party
from October 10, 1989 to January 30, 1990. We need not
inquire further into the senior party record, since we find
these two gaps, alone, are
Interference No. 103,322

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fatal to the senior party’s case for diligence. See Reiser v.
Williams, 255 F.2d 419, 118 USPQ 96 (CCPA 1958)(party held not
diligent for failing to show activity during first 13 days of
critical period) or Morway v. Bondi, 203 F.2d 742, 97 USPQ 318
(CCPA 1953)(party held not diligent where, following June 7
activity which was just prior to opponent’s June 14 entry into
field, party did not perform other acts until August 1; not
diligent where there were two hiatuses of one and a one-half
months each during critical period, one of which was at the
outset of critical period).
In summary, we note that the junior party has
overcome the senior party’s filing date with an earlier
reduction to practice, and the senior party was unable to show
diligence from
just prior to the junior party's conception to its
constructive reduction to practice. We will issue judgment in
favor of the junior party, hereinbelow.
Judgment
Interference No. 103,322

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Judgment in Interference No. 103,322 is hereby
entered in favor of the junior party, David F. Brashears.
David F. Brashears is entitled to a patent containing claims 1
through 34, which claims correspond to the count in
interference. Judgment is entered against Don R. Linkletter
and Joseph E. Musil, the
senior party. Don R. Linkletter and Joseph E. Musil are not
entitled to their patent containing claims 1 through 3,
5 through 9, and 14 through 18, which claims correspond to
the count in interference.
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
WILLIAM F. PATE, III ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
ADRIENE LEPIANE HANLON )
Administrative Patent Judge )
Interference No. 103,322

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WFP:psb
Interference No. 103,322

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Counsel for Junior Party Brashears:
Arthur R. Crawford et al.
Nixon & Vanderhye
1100 North Glebe Road
8th Floor
Arlington, VA 22201-4714
Counsel for Senior Party Linkletter et al.:
Donald R. Schoonover et al.
Simmons, Perrine, Albright & Ellwood, PLC
115 3rd Street, S.E.
Suite 1200
Cedar Rapids, IA 52401