Warren W. Fitzgerald v. Arbib , 268 F.2d 763 ( 1959 )

MARTIN, Judge.

This is an appeal from the decision of the Board of Patent Interferences of the United States Patent Office awarding priority of invention of the involved subject matter to the senior party, Arbib et ah, appellee here. The interference involves Design Patent No. 175,143, granted to Arbib et al. on July 19, 1955, on an application filed November 4, 1954, and an application of the junior party Fitzgerald, Design Serial No. 36,893, filed on July 11, 1955. The invention in issue is an ornamental escutcheon plate-for a lock.

Since Fitzgerald’s application was copending with that of Arbib et al., he has the burden of proving priority by a preponderance of the evidence. Gaiser v. Linder, 253 F.2d 433, 45 CCPA 846. Arbib et al., having taken no testimony, are confined to their filing date for conception and reduction ta practice.

Fitzgerald submitted evidence showing a completion of a pencil drawing of the design in issue on May 21, 1954, a colored drawing thereof on June 3, 1954, an orthographic layout on December 2, 1954, a dimensioned detailed drawing for making an actual escutcheon dated January 13, 1955, and a wooden pattern on March 22, 1955.

The Board of Patent Interferences held, as a matter of law, that the May 21 and June 3 drawings were evidence-only of conception and not of a reduction, to practice of the invention here in issue. The Board found the decision of this court in Dieterich v. Leaf, 89 F.2d 226, 24 CCPA 1138, to be a controlling-authority standing for the proposition that to have an actual reduction to practice “ * * * in the case of a design for a three-dimensional article, it is ‘required’ that it ‘should be embodied in some structure other than a mere drawing’ * * *.” The Board further held, that the evidence was insufficient to show that Fitzgerald exercised reasonable-diligence toward reducing the design to-practice from a date just prior to November 4, 1954, when the senior party filed, until March 22, 1955, when Fitzgerald completed the wooden model of the escutcheon.

Appellant contends that the drawings in question constitute reductions to practice of the invention and that, accordingly, the rule in Dieterich v. Leaf, supra, should be narrowed to its particular facts, or in the alternative, overruled. It is urged that the rough line drawing in that case “did not disclose with the necessary fidelity ‘the intended effect on the eye of the observer’ * * * ” of the design for the ice cream cones there involved, whereas the eye-pleasing multicolor perspective drawing of June 3, 1954, fully discloses the invention here in issue.

Appellant further claims that, even should the drawings be held not to constitute reductions to practice of the invention in issue, the record evidences reasonable diligence during the critical period and therefore he is entitled to a finding of priority.

The color drawing of June 3, 1954, depicts the design very attractively and gives a better picture of the artist’s conception than the original pencil drawing. However, this drawing does not constitute a completion of the invention any more than the original drawing because of the further activity necessary to produce a physical embodiment of the design.

The dimensioned detail drawing, showing both elevation and plan views, which was prepared by appellant in December, 1954, after the senior party filed, to be used by the pattern maker, and the pattern itself, demonstrate how much more activity was necessary.

Also, appellant’s own statements concerning the design indicate that he found many problems in working with it and anticipated more before a physical embodiment of the design could be realized. For instance, he stated:

“I had numerous conversations and visits to foundries and I was extremely interested in the shell molding process as having possibilities of [sic] high as cast finish on this; because it was obvious that the intricacies of this design would pose serious finishing problems; and I felt that if the design were to succeed, it would have to reach the finishing process in a high — in a relatively high state of surf ace smoothness; otherwise it would be prohibitive to manufacture.” [Emphasis added.]

He further testified that the dimensioned drawing was:

“ * * * what we call a sketch drawing, which is our initial experimental drawing prior to developing the production drawings; and this is done for the purpose of obtaining castings for this design, so that it can be examined in the round, as it were.” [Emphasis added.]

Appellant argues in his brief:

“ * * * the design is an intricate one that could not be made without careful planning, not only as to dimensions of the same, but also as to the material required and the process of manufacture.”

We take no issue with the conclusion that the aforesaid drawings are sufficient to evidence the “formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice” and therefore constitute a conception within the meaning of the law. Mergenthaler v. Scudder, 11 App.D.C. 264, 1897 C.D. 724; see also In re Tansel, 253 F.2d 241, 45 CCPA 834, and cases there cited.

In similar circumstances, this court and its predecessor in patent jurisdiction have held that the reduction to practice of a three-dimensional design invention requires the production of an article embodying that design. Tyler v. St. Amend, 17 App.D.C. 464, 1901 C.D. 301, 94 O.G. 1969; Dieterich v. Leaf, supra. Under this law, the drawing of June 3, 1954, was not an actual reduction to practice of the invention in issue by Fitzgerald.

Aside from the above mentioned case law, appellant’s own testimony, as here-inabove set forth, indicates how much more was needed to perfect or complete the invention, not in terms of mental activity, but in the sense of actually making an article embodying the design, available for use by the public.

As to the question of the exercise of diligence from a time prior to the ap-pellee’s entry into the field, 35 U.S.C. § 102(g) provides:

“In determining priority of invention there shall be considered * * * the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.” [Emphasis ours.]

It has been held that a party has not exercised reasonable diligence in reducing the invention to practice where there is unexplained inactivity prior to the opponent’s entry into the field, for periods as abbreviated as one to two months in duration. Brown v. Barton, 102 F.2d 193, 26 CCPA 889; Scharmann v. Kassel, 179 F.2d 991, 37 CCPA 903; Morway v. Bondi, 203 F.2d 742, 40 CC PA 917; Rieser v. Williams, 255 F.2d 419, 45 CCPA 953.

With reference to the activity of appellant during the critical period, the record reveals that after making the col- or drawing on June 3, 1954, he took no other steps toward reducing the invention to practice until he prepared the orthographic drawing on December 2, 1954, which was nearly a month after the senior party had entered the field. Certainly, this inactivity shows lack of diligence during the critical period, which period began just prior to appellees’ November 4, 1954, filing date.

Appellant testified that during this period he made an investigation as to how the design might be manufactured for commercial use. Such activity, however, cannot establish reasonable diligence during the critical period. In this connection, this court stated in Burns v. Curtis, 172 F.2d 588, 591, 36 CCPA 860:

“It is well settled that efforts to exploit an invention commercially do not constitute diligence in reducing it to practice. See Hurd v. Smith, 97 F.2d 147, 25 CCPA 1137; Preston v. White, 97 F.2d 160, 25 CCPA 1219; and Petersen v. Thomas, 56 App.D.C. 113, 10 F.2d 908.”

Other witnesses called to testify on behalf of appellant do not convince this court that he was reasonably diligent concerning this invention during the critical period or, as a matter of fact, at any time from June, 1954, to December, 1954. Appellant’s activity toward reducing the design to practice really began after the senior party had entered the field; the orthographic drawing was made on December 2, 1954, the dimensioned drawing on January 13, 1955, and the pattern manufactured on March 3, 1955. Of course, this activity avails appellant naught in support of his contention of reasonable diligence but, conversely, it demonstrates that he was not diligent during the critical period. These actions were necessary to complete his work; but as they were subsequent to appellee’s filing date, they have no legal effect. The unexplained inactivity prior to December, 1954 is fatal to appellant’s contention.

Furthermore, there is nothing in the record which can support a finding that appellant exercised reasonable diligence during the critical period in effecting a constructive reduction to practice of the invention here involved.

For the above reasons, the decision of the Board of Patent Interferences is affirmed.

Affirmed.

WORLEY, Chief Judge, did not participate in decision because of illness.