Samuel Egnot v. Robert Looker

SMITH, Judge

(dissenting).

In my opinion, the evidence on behalf of Egnot presented in the record before this court is legally sufficient to prove conception of the invention set forth in the counts of the interference by Egnot prior to Looker. I, therefore, would reverse the decision of the board.

Evidence of conception must be evaluated according to the objective standard of what it teaches one of ordinary skill in the art. E. g., Spero v. Ringold, 377 F.2d 652 , 54 CCPA — (1967); Townsend v. Smith, 36 F.2d 292 , 17 CCPA 647 (1929). Under the test of the Spero case, the evidence of Egnot’s conception must be evaluated to determine what Egnot disclosed to Looker and what this disclosure means to one of ordinary skill in the art.

The invention set forth in the counts of the interference includes a fastener having a grooved pin in which all of the grooves are of the same construction. The pin has a shank which has a substantially uniform maximum diameter throughout. The pin further contains a series of axially-spaced circumferential grooves, each of which provides the minimum diameter of the shank. The grooves form a series of “frangible breaknecks.” The count recites “spaced ribs of said maximum diameter” formed between the “frangible breaknecks.” The count further specifies that the shank may be broken off at a “breakneck” immediately adjacent the outer end of a deformable collar.

The record clearly shows that Egnot’s pin was conceived with a plurality of grooves, all of which were the same. Both Egnot’s testimony and his drawing, completed on October 8, 1954, support that conclusion. Thus, I agree with the appellant that it would be impossible for any one groove to perform only the singular function of serving as a breakneck. Egnot’s conception thus clearly meets the structural limitations of the counts of this interference.

Moreover, the evidence clearly shows that Egnot disclosed the “like groove” concept to others, particularly Looker and Dobbe. Thus, I think that one of ordinary skill in this art would consider that each of a plurality of like grooves would be inherently capable of functioning as á “breakneck” in the device disclosed by Egnot.

I find further support in the record for my conclusion in the Huck ’048 patent, where the “breakneck groove” was constructed to be the weakest section of the pin, so that the pin would fracture at that point upon the application of a breaking force. Since all of the grooves of the interference counts are of like construction, no one groove could be singled out as a “breakneck.” It therefore follows that one of ordinary skill *688 in this art would consider each of the grooves of the Egnot disclosure to be capable of serving as a “breakneck” in the same manner.

In evaluating this invention, it also seems to me that, since each of the grooves is capable of acting as a “breakneck,” selection of the particular groove which will act as the desired “breakneck” must be determined by some means apart from the pin itself. However, the tool, or “breaking means,” which “selects” the particular groove to function as a “breakneck” is not included in the specific language of counts in this interference. The entire invention embodied in the counts in issue, in my opinon, has been disclosed by Egnot, prior to Looker. Those differences which may be present between the “breaking means” of Egnot and the “breaking means” of Looker are of no moment in considering priority as to the specific counts in this interference. In my view, the board’s reference to the tool for performing the breaking function was irrelevant.

Upon an evaluation of the evidence of that which Egnot, in fact, disclosed, in the light of what the disclosure would mean to one of ordinary skill in the art, I would reverse the decision of the board.