Steitzv.Bentley

Board of Patent Appeals and Interferences

Jul 26, 1999

08349258 (B.P.A.I. Jul. 26, 1999)

Application 08/398,967, filed March 2, 1995. 1
Application 08/349,258, filed December 5, 1994.2
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(2) is not binding precedent of the Board.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. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
ARTHUR R. STEITZ
Junior Party,1

v.
ROBERT L. BENTLEY
Senior Party.2
_____________
Patent Interference No. 103,669
______________
Before PATE, MARTIN and CRAWFORD, Administrative Patent
Judges.
Interference No. 103,669

2
PATE, Administrative Patent Judge.
FINAL DECISION UNDER 37 CFR § 1.658
This is a final decision pursuant to 37 CFR § 1.658
in Interference No. 103,669. The subject matter is directed
to a tool for manually loading cartridges in a firearm maga-
zine. The tool consists of a band sized to encircle the
wearer’s thumb and a projection extending from the band for
engaging a cartridge already present in the magazine.
The count in interference reads as follows:
A device for manually loading cartridges
into a magazine which is adapted to receive
a plurality of cartridges in stacked rela-
tion there within [sic] said magazine hav-
ing an opening for receiving said
cartridges and means for biasing said
cartridges toward said opening, said
device comprising:
a band configured in size and shape for
placement on a thumb of one hand for
loading said magazine with said cartridges
when said magazine is gripped by said one
hand, and a projection integrally
associated with said band and extending
from an outer surface of said band for
engagement of a top one of said cartridges
previously loaded into said magazine;
Interference No. 103,669

3
said projection having a surface adapted
to contact a surface of said cartridges in
such manner as to maintain engagement with
said top one of said cartridges when said
magazine is gripped by said one hand for
depressing said top one of said cartridges
away from said opening against said biasing
means in response to a bending/depressing
thumb motion; whereby another of said
cartridges can be manually loaded into
said magazine by using the other hand.
The claims of the parties that correspond to the
count are:
Steitz Claims 1-18
Bentley Claims 2, 18, 20, 21, 27 and 28
The interference was declared on November 19, 1996.
Although both parties designated lead attorneys pursuant to
37 CFR § 1.613, the senior party has chosen to stand on his
filing date and has not filed any other papers. The junior
party filed a preliminary statement, took testimony in the
form of declarations, filed a record, and filed a brief for
final hearing. The senior party did not request cross-
examination and filed no brief. An oral argument at final
hearing was waived by the junior party. Accordingly, the
sole issue for our consideration is the junior party’s
priority case.
Interference No. 103,669

4
Burden of Proof
The junior party's involved application was filed
during the pendency of the senior party's patent 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).
The senior party has not put on a case-in-chief.
Therefore, the senior party’s date of invention is his actual
filing date, December 5, 1994.
Steitz’ Priority Case
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
Interference No. 103,669

5
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.
It is equally well established that 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,
1583, 3 USPQ2d 1793, 1794 (Fed. Cir. 1987).
Finally, it is also well established that every
limitation of the interference count must exist in the
embodiment and be shown to have performed as intended. Id.
See also Scott v. Finney, 34 F.3d 1058, 1061, 32 USPQ2d 1115,
1117 (Fed. Cir. 1994).
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
Interference No. 103,669

6
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 reduction to practice has been extended to the
corroboration required for proof of conception, the rule does
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): "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 1037. Independent
Interference No. 103,669

When an inventor's testimony merely places acts within a3
stated time period, the inventor has not established a date
for his activities earlier than the last day of the period.
Oka v. Youssefyeh, 849 F.2d 581, 584, 7 USPQ2d 1169, 1172
(Fed. Cir. 1988).
The Steitz Record will be abbreviated SR followed by the4
appropriate page number. The Steitz exhibits will be referred
to as SX- followed by the appropriate exhibit number.
7
corroboration may consist of testimony of a witness, other
than the inventor, or it may consist of surrounding facts and
circumstances independent of information received from the
inventor. Reese, 661 F.2d at 1226 n.4, 211 USPQ at 940-41
n.4.
The following represents our findings of fact with
regard to junior party Steitz’ inventive acts. The Steitz
record is comprised of declarations by inventor Arthur R.
Steitz, his wife Rita Steitz, the inventor’s son, Matthew P.
Steitz, and Ron J. Gales. Inventor Steitz states that he
conceived of the invention and disclosed the conception to his
wife and son at least by the end of April 1994. SR3. 3 4
Steitz’ wife and son
Interference No. 103,669

8
corroborate this conception date. SR11; SR14. Therefore, we
credit Steitz with a corroborated conception as of April 30,
1994.
Steitz further states that he requested that his son
make a drawing of the invention, which drawing was completed
by at least August 24, 1994. SR3. The drawing is SX-1. The
date that this drawing was completed is corroborated by
Matthew Steitz, whose initials appear on the drawing near the
date. SR3; SR14.
Steitz then constructed a prototype of the
invention. The prototype was completed by November 5, 1994.
SR3. The prototype is shown in photographs: SX-2, SX-3, SX-
4.
Mrs. Steitz corroborates the completion of the prototype
and appears in one of the photographs. SR11; SX-2.
Steitz conducted tests of the prototype with the
assistance of witness Gales in November, a few days after the
prototype was constructed. SR4. Gales confirms the tests
were conducted in November and agrees with Steitz that the
device worked for its intended purpose. SR17. Based on this
Interference No. 103,669

9
evidence, we credit Arthur R. Steitz with a corroborated
actual reduction to practice date of November 30, 1994.
Inasmuch as we have credited junior party Steitz
with an invention date prior to the effective filing date of
the senior party, and the senior party has relied on his
filing date as his date of invention, the junior party has
overcome the senior party’s date of invention. Judgment will
be entered in favor of the junior party.
Judgment
Judgment in Interference No. 103,669 is entered in
favor of the junior party, Arthur R. Steitz. Arthur R. Steitz
is entitled to a patent containing claims 1 through 18, which
claims correspond to the count in interference. Judgment is
entered against Robert L. Bentley, the senior party. Robert
L. Bentley is not entitled to a patent containing claims 2,
18, 20, 21, 27, and 28, which claims correspond to the count
in interference.
Interference No. 103,669

10
WILLIAM F. PATE, III )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
JOHN C. MARTIN ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
WFP:psb
Interference No. 103,669

11
Counsel for Junior Party Steitz:
Patrick D. Ertel, Esq.
Marshall, O'Toole, Gerstein, Murray & Borun
6300 Sears Tower
233 South Wacker Drive
Chicago, IL 60606-6402
Counsel for Senior Party Bentley:
Richard A. Dannells, Jr.
Coudert Brothers
Four Embarcadero Center
Suite 3300
San Francisco, CA 94111