Petition for A Writ of Certiorari — Allen v. United States

_ , as y ene son aoe Pe ne se

ar phe tet peer

(2~ MAR 12 1942

CHABLES ELMOSE CROPLEY

ee OLE RK

SUPREME COURT OF THE UNITED STATES

OCTOBER TERM, 1941

No. 1034

RICHARD E. MARINE,

Petitioner,

Us.

CONWAY P. COE, Commissioner OF PATENTS.

PETITION FOR WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS FOR THE

DISTRICT OF COLUMBIA AND BRIEF IN SUP-

PORT THEREOF.

Ricwarp E. Marine,

Pro se.

INDEX.

Sussect INpDEx.

Petition for writ of certiorari ....................

Summary statement of matter involved. ......

Claims 5 and 57—at Issue................

Prior Automobile Art—Problems of safety

VOOM 3 i ee eee Cee

Petitioner’s Invention—Multiplied strength

without increased obstruction to vision. .

Wright’s Disclosure—Figs. 1 and 2 com-

OU sc can tiie cea a ate es

pe ee rere

Fig. 2—Lacking in utility ............

Fig. 2—Lack of utility admitted by

S| apt Soateae SA arr ey Bae

Alignment v. Substantial Alignment...

Adjudicated to be different in In-

terference No. 61,642........

Claims 5 and 57 not disclosed by Wright

Claim 5 res adjudicata in favor of Petitioner :

(a) in Interference 61,643 won by Peti-

tioner against Wright .........

(b) Patent Office Rule 109 estoppel

3 a ery

RE Oke OER oe tie emai Cea eS

Questions presented...............-..-..-+5-

Reasons relied on for allowance of writ........

Prayer tate EL Uy uae y CREA ea 8 Pe a

Brief in support of petition.....................-:

Opinions of the courts below reported.........

ME a ale 642k 5 ce RO EERE ER OLN ARS

RE I a Sage @ iu: siding mk ae aT

Assignment of errors...............-+..-+:-.

DRI. oso 5 oo ae he ASE URDS EAE RE IAD

—9297

ii INDEX

Page

RR ie teks bon Goes ah ese eieom 30

Fee yee: Sat CHS 8 GRRE Bee EL te he He 31

ey ie oes SRE SRY hoe Sa a WE 32

Be rehetinces ere ee hee eas pica cu BET 33

re Mey Oe ane bane nase ean en 34

ee aie Pa oe elt a ice Cee ee a ee 35

es Seicos eset ray id Waradaaee ae 35

Bee rae RU teh CN ep Lae oe eae 35

Be AUG be aeinavsl eotas hap meenes 36

a ea han rev akh Caos cues 36

eee ts teas bel ris hs ota ae tee 37

Be is Sener ees MEET Oe Ra Ee 37

| ORESER atin rap em nn Ghee net tatteon RL er etd a AR 38

TaBLeE oF Cases CITED.

Baldwin v. Robertson, 265 U.S. 168, 181....... ... 24

Chapman, et al. v. Wintreath, 256 U.S. 126......... 21

Cornplanter Case, 90 U.S. 181.................... 21

Hill, et al. v. Wooster, 132 U. 8. 693................ 13, 20

James v. Campbell, 140 U.S. 356 .................. 21

Meyers v. Cos, GF. Cag) TUS ».........5.. ...... 22

Milburn Co. v. Davis Co., 270 U.S. 390............. 21

Miller v. Brass Co., 104 U. 8. 350.......... 2... 21

Mitchell v. Tilghman, 86 U. S. 287.......... ..... 5, 12, 21

Newcomb Motor Co. v. Moore, Com. of Pats. ....... 17

Permutit v. Graver, 284 U.S. 52 .............. 5, 9, 21, 27

Podelcak v. McInnerny, 26 App. D. C. 399, 408... ... 21

Schreiber-Schroth Co. v. Cleveland Trust Co., 305

MM Se Si Se Se ge Lee ae eG CA gs cs 5, 9, 21, 27

Steimmetz v. Allen, 192 U.S. 543................... 21

Opinions oF THE Courts BELow.

Marine v. Coe (App. D. C.), 51 U. S. P. Q. 540... 2, 23

Marine v. Coe (D. C.), 32 Fed. Supp. 236; R.109.... 2, 28

Marine v. Wright, C. C. P. A. (Interference), 74 F.

EE NE ee ae ie os Choe Lc km ere Caw es 14, 23

INDEX

Srarutes C1rep.

ili

SUPREME COURT OF THE UNITED STATES

OCTOBER TERM, 1941

No. 1034

RICHARD E. MARINE,

Petitioner,

vs.

CONWAY P. COE, Commissioner oF PATENTS.

PETITION FOR WRIT OF CERTIORARI DIRECTED

TO THE UNITED STATES COURT OF APPEALS

FOR THE DISTRICT OF COLUMBIA.

To the Honorable the Chief Justice and the Associated

Justices of the Supreme Court of the United States:

Your Petitioner, Richard E. Marine, respectfully prays

for a writ of certiorari directed to the United States Court

of Appeals for the District of Columbia to review a decree

of that Court entered November 3, 1941, request for re-

hearing having been denied on December 3, 1941, or in the

alternative to remand the case for further action. A cer-

tified transcript of the record in the case including the pro-

ceedings of such Court of Appeals, is furnished herewith,

in accordance with Rule 38 of this Court. The time for

filing this certiorari was extended ten days by this Court.

1d

2

Summary Statement of the Matter Involved.

1. This is a suit under R. S. 4915 originally brought be-

fore the District Court of the United States for the District

of Columbia asking that Court to authorize the Commis-

sioner to issue a patent to Petitioner containing appealed

claims 5 and 57 of his pending patent application, Serial

No. 266, 340, filed March 31, 1928. These claims read as

follows:

5. In a vehicle construction in combination; a body

post having a face in alignment with the driver’s line

of vision past the same and a door frame end member

substantially within the blind angle subtended by said

post with the driver’s eye.

57. Ina vehicle construction, a body post whose cross-

sectional area extends to and is bounded on one side for

substantially its full length by the driver’s line of vision

past said side, and a window end frame member nor-

mally lying within the blind angle subtended by the post

with the driver’s eye. (Emphasis ours.)

2. Said application had been involved with one Wright in

Interferences Nos. 61,642 and 61,643, the latter having been

a consolidation of the three interferences. Wright had pre-

vailed as to the single count of the first interference and

had lost to petitioner the second interference involving

four counts.

3. On appeal from the District Court to the United States

Court of Appeals for the District of Columbia, that Court

‘* Affirmed upon the findings of fact, conclusions of law, and

opinions of the District Court’’. (51 U.S. P. Q. 540.)

4. In its opinion the District Court held, referring to the

decision of the Court of Customs and Patent Appeals in

Interference No. 61,642 (32 F. Sup. 236):

‘*It is considered that this interference count reads

on the structure disclosed in plaintiff’s claims Nos. 5

er re ree errr reer eee

3

and 57, and it would, therefore, seem that such claims

are disposed of adversely to the plaintiff by that litiga-

tion.”’

The count in Interference No. 61,642 read as follows:

‘‘In a vehicle construction in combination, a body

post provided with a front face substantially in align-

ment with the driver’s forward line of vision past said

post; and a windshield end frame member having a

front face normally in substantial alignment with the

front face of said body post.’’

We submit that this test of res adjudicata has no support

under the authorities for reasons set forth hereinafter.

Aside from the propriety of this test for res adjudicata

we submit that this ruling was improper because it ignored

newly discovered evidence presented for the first time to

the District Court, not having been previously available to

Petitioner since it consisted in an admission made by Wright

after termination of Interference No. 61,642 during the

subsequent ex parte prosecution of his application which

was not open to Petitioner until his patent issued thereon

on November 24, 1936. This was after Petitioner had pre-

sented claim 57 to the Patent Office following termination

of said interference and had contended that said claim,

and also his original claim 5, distinguished over the subject

matter of the Wright disclosure in a patentable sense and

that therefore the subject matter of claims 5 and 57 was

not res adjudicata against Petitioner, as indeed was found

as a fact in Interference No. 61,642, but held not to be ma-

terial to the issue therein, as will later appear.

That the District Court erred in its test adopted for de-

termining res adjudicata was cited as error to the Court

of Appeals (R. 119, IV, 1) and similarly the error in ignor-

ing the newly discovered evidence was urged on appeal (R.

117, 19, 20, 21).

4

5. The District Court supplemented its ruling as to res

adjudicata with the following additional finding [32 F. Sup.

236] :

‘If, however, technically, the matter is not res

judicata, the reasoning employed by the Court of Cus-

toms and Patent Appeals in that case compels the

same conclusion. The Wright patent provides a front

corner post assembly with no greater obstruction to

vision and with more supporting strength than those

previously employed. The drawings of the Wright

patent show the front face of the assembly to be in sub-

stantial alignment with the driver’s forward line of

vision past said post. In so far as the claims of the

petitioner relate to one face of the front corner post

assembly, there is no critical difference. The plaintiff

insists that the assembly disclosed by him in claims 5

and 57 has one face in alignment with the driver’s

vision, whereas the Wright structure is only substan-

tially bounded by such line of vision, and even this

quality is due to the ‘accidental’ draftsmanship of the

drawings in the Wright patent. Laying aside the very

complicated argument as to the geometry of the draw-

ings, it suffices that the Wright specifications do show

a substantial alignment on one face of the assembly,

and that, for practical purposes, is all that plaintiff’s

structure accomplishes. So the conclusion is reached

that the plaintiff is not entitled to the relief sought with

respect to claims 5 and 57.”’

These findings ignore the findings of fact in Petitioner’s

favor in Interference No. 61,642 and also the newly discov-

ered evidence above referred to. They were cited as error

to the Court of Appeals (R. 117, 19, 20, 21; 119, 120, IV,

2, 3, 4, 5, 6, 7).

6. All of the above rulings of the District Court ignore

entirely Petitioner’s contention that claim 5 was dominated

by Interference No. 61,643 in which Petitioner prevailed

over Wright as to the subject matter of said claim, cited to

5

the Court of Apveals as error. (R. 119, 42, 43—it being

noted that in line 2 of 42 the interference number 61,642

is a typographical error for 61,643, as clearly established

by the fact that the latter interference only was consoli-

dated with numbers 61,644 and 61,645).

7. All of the above questions involve the failure of the

lower courts to give proper effect to applicable decisions of

this Court and to the requirements of statutes involved.

The requirements of R. S. 4888 and the decisions of this

Court governing sufficiency of disclosure as laid down in

Permutit v. Graver, 284 U. S. 52 and Schreiber-Schroth Co.

v. Cleveland Trust Co., 305 U. 8. 47, and kindred decisions,

and R. S. 4886 and the decision of this Court in Mitchell

v. Tilghman, 86 U. S. 287, requiring utility as essential to

disclosure, which the newly discovered evidence involving

Wright’s own admissions of lack of utility and, indirectly,

lack of disclosure, definitely establish, are entirely ignored.

Their consideration here necessitates a brief review of the

facts established by the record.

8. The invention here at issue relates to an automobile

front corner post assembly. Such an assembly is illustrated

in Fig. 4 of Carlson patent 1671087 (R. 91). Such assem-

bly comprises a fixed body post 36 extending from the body

of the car to the roof and supporting the latter at its front

end, together with a door window and frame member 29

which, when the door is closed, abuts the body post, and a

windshield end frame member at the lower end of the wind-

shield 38, also contact with the fixed body post 36. The

assembly as a whole offers an obstruction to the driver’s

vision, indicated by the angle A, which is defined as the

blind angle since objects beyond the post and lying within

this angle are not seen by the driver. It was first pointed

out by Emond, patent 1,622,098 (R. 87-89) that if the dimen-

sion of the assembly transverse to the driver’s vision were

6

reduced to a dimension not exceeding two and a half inches,

this being the interpupillary distance between the driver’s

two eyes, then the two parallel lines of vision past the

assembly would enable him to see any object not smaller

than two and a half inches, whicn became known as clear

vision since it would enable the driver to see any object

essential to safe driving.

The advantages of this construction for safety both to the

occupants of the car and those using the streets and roads

were manifest and the advance made in the art received wide

acelaim. It had, however, one serious drawback, namely,

all parts of the assembly had to be reduced to a minimum

of size and the fixed body post itself became so small that it

was unable « sccessfully to sustain the loads placed upon it.

This was admitted by Emond’s assignee (R. 142) wherein

it was stated that ‘tone of the great problems has been to

accomplish clear vision and still retain stability’’. Again,

Carlson, a foremost body engineer and then vice president

of the Dieterich Body Company, formerly makers of cus-

tom bodies for Packard, Cadillac and other high grade cars

on which this post was installed (R. 61) states in a con-

temporaneous patent (R. 100, 2nd par.) that to incorporate

in the vehicle the imperatively demanded qualities of clear

vision presented a real problem if the corner post is to be

made of adequate strength. Appellant testified (R. 47, 48,

50) that for many years he had attended automobile salons

and shows and talked with these men or their representa-

tives and was also familiar with the circumstances sur-

rounding the attempt to embody clear vision in the New

Day Jewett (R. 141) and that this car had failed (R. 49).

These difficulties caused the public to give up its demand,

then at its height, for clear vision and clear vision cars made

by the production method practically disappeared from the

market.

-

la il tl

7

9. Petitioner conceived the idea that by departing from

the prior practice of building the assembly with an over-all

outline rectangular in cross-section and placed in the front

corners of the car body with one pair of opposite faces sub-

stantially at right angles to the windshield and the other

pair of faces paraitel therewith, if the cross-sectional out-

line of the assembly were turned until two of its opposite

sides were in alignment with the respective sides of the

blind angle, then the fixed body post could be given any

strength desired since it would be occupying the entire

available space between the sides of the blind angle and

there would be no waste space therein as in all prior con-

structions. Moreover, the assembly could be lengthened to

any extent necessary for strength between the sides of the

blind angle and longitudinally thereof. This is illustrated,

for instance, in Petitioner’s Fig. 6 (R. 131) described (R.

128) as follows:

‘‘The construction shown in figure 6 differs from that

of figure 3 mainly in that the windshield is moved for-

wardly, the recess 15” and the windshield frame 16”

being made of triangular cross-section contour, as

shown, in order to preserve the alignment of opaque

members with the driver’s line of vision.”’

It will be observed from Fig. 6 that this parallel arrange-

ment of the sides of the fixed body post itself in alignment

with the respective side lines of the driver’s vision not only

fills out all of the space in the blind angle throughout the

length of the assembly but also that this outline is of the

post per se, the window end frame member of the door and

that of the windshield being inset in recesses in the body

post itself, which recesses serve as corrugations, further

strengthening the post (R. 124, folio 279).

10. Petitioner’s original application as filed contained

claim 14 (R. 129) which later became the sole count in In-

8

terference 61,642. This claim was first rejected by the

Patent Office on the patent to Carlson 1,671,087 above de-

scribed as typical prior art. The examiner’s theory was

that the limitation of this claim to ‘‘substantially in align-

ment with the driver’s forward line of vision past said

post”? was met in Carlson’s Fig. 4 (R. 91) in which the face

of the arm or extension of his main post portion 36 made

a substantial angle with the upper side of his blind angle

A. On argument that claim 14, like claims 12 and 16, were

patentable over Carlson for the reason that the line of vision

in the latter passes through a corner or edge only—not

through a face, (R. 133) the examiner allowed the claim and

suggested it to one Wright for purpose of an interference

(R. 149). Although Wright had never previously shown,

deseribed or claimed alignment of any face of the post with

the driver’s line of vision past it, he adopted the claim and

an interference was declared.

11. Wright's drawings comprise two figures only, Figs. 1

and 2 which have been reproduced herein as Appendix A

and Appendix B, showing these drawings as filed. This has

been done because his original drawings reproduced (R.

177) fail to show the original vision lines due to faulty re-

production and his patent drawings (R. 173), have lines

added thereto since the date of filing. In fact, his patent

description is charged by Petitioner with containing new

matter introduced by amendment and therefore it is sub-

mitted that only his original specification, reproduced with

amendments made thereto apparent (R. 179-182), we sub-

mit, should be considered. Defendant has not relied upon

these amendments in his previous arguments.

In Appendix A the characters a and F1 and in Appendix

B the characters a and F2 have been added for ease of

reference since Wright's disclosure makes no specific ref-

erence to these parts.

9

In Wright’s Fig. 1 the vision line 23 here at issue makes

a substantial angle a with the face F1 of the extension of

his post 10. This angle a is of the same order of magnitude

as the corresponding angle in Carlson’s Fig. 4 between the

up-side of his angle A and the face of his post extension or

arm 39 and no tribunal has ever held that Wright’s Fig. 1

supports the count of Interference 61,642 more than does

Carlson.

In Wright’s Fig. 2 the angle a between the face F2 of his

post extension 14 and the side line of vision 23, constituting

the adjacent side of his blind angle, is much smaller than

in Fig. 1 and it is upon this figure that all tribunals have

relied for disclosure of a face of the post extension in sub-

stantial alignment with the side 23 of the blind angle.

There is nothing whatever in Wright's disclosure about

the angular relationship between the face F2 of the post

extension in Appendix B and the side line of vision 23 and

alignment is not even shown so that the drawing makes no

suggestion of alignment, as called for by both of claims 5

and 57 here at issue. This fact was strongly testified to by

the expert Mason (R. 26-27) or seriously challenged by

Defendant. The disclosure, therefore, is at best accidental.

It is accordingly submitted that in the rejection of claims 5

and 57 here at issue, which were not involved in the subject

matter of Interference 61,642, as will hereinafter be shown,

which claims call for alignment and not substantial align-

ment, the tribunals have not given proper effect to, in fact

have ignored, the applicable decisions of this Court in

Permutit v. Graver, 284 U.S. 52 and Schreiber-Schroth Co.

v. Cleveland Trust Co., 305 U.S. 47 and kindred decisions.

Not only is this disclosure in Fig. 2 accidental but a con-

sideration of the written description thereof and every

action taken in Wright’s amendments and arguments prior

to the time that the Patent Office revealed Petitioner’s dis-

closure to him by the declaration of Interference No. 61,642

2d

10

establishes that said showing in Fig. 2 is both a draftman’s

error and lacking in the utility demanded of a disclosure

by R. S. 4886 (Appendix G). In the last paragraph (R.

179), Wright states that his description set forth at length

that form of my invention which | had selected for illustra-

tion in the drawings accompanying and forming a part of

the present specification. In the sentence immediately fol-

lowing (R. 180, beginning line 1) he states that the draw-

ings themselves ‘‘show one form’’ of automobile body em-

bodying my invention. He further states (R. 181, last

sentence) that the vision line indicated at 24 is ‘‘the center

line of vision’’. It is so shown in Fig. 1, but in Fig. 2 the

angle made by the center line 24 with the side of the blind

angle 23 is only half of that made by the same center line

with the other side of the blind angle 22a. Further

Wright’s specification (R. 179, folio 1002) states that the

average distance of the eye from the post is about twenty

inches but the distance of the eye from the post in Fig. 2,

when its lines of vision are extended, are only about eight

or nine inches from the post (R. 29-80-179, folio 1002).

That the line 24 is a center line is claimed in his original

claims, e.g., 2 and 3 (R. 148) and by amendment, prior to

knowledge of Petitioner’s disclosure, he based a claim on

the diamond shaped area of Fig. 1 and argued its patent-

ability on this basis (R. 144-145) and in the same amend-

ment he added an additional claim asserting that this area

was substantially symmetrical about an axis (R. 145).

Moreover every reference to Fig. 2 in his specification

_ refers back to Fig. 1 for its geometry. It needs must follow,

9

we submit, that Fig. 1 is the ‘tone form’? of his invention

which he intended to disclose.

12. Lack of utility in Wright’s Fig. 2 admitted by him.

It is obvious from the above that by making the angle be-

tween the side line of vision 23 and the center line of vision

24 only one-half of what it should have been, Wright has

11

materially diminished the area given over to his post ex-

tension 14 and thereby weakened his post extension one-

half. This is diagrammatically shown in Appendix D

wherein his diamond shape of Fig. 1 is represented by the

white area plus the grey area with apex ¢ while his Fig. 2

is shown in white only. By the draftsman’s error he has

reduced the strength of his post extension 14 to the extent

of the grey area. The four black corner areas indicated a

in this figure show the additional strength which would have

been added to his post assembly shown in Fig. 1 and repre-

sented in this diagram by the white plus the grey areas had

he had the foresight to employ Petitioner’s concept of align-

ment of two opposite sides of his assembly with the sides

of the blind angle 22a, 23.

The diagram in Appendix C further analyzes these re-

sults. Here the heavy outer outline shows Wright’s dia-

mond shape of Fig. 1 with the center line 24 a true center

line. Its face F1, as shown by the projected direction line

B, comes far from passing through the eye of the driver

which lies on the line 24 and no idea of alignment between

this face and a driver’s line of vision is possible. The inner

face F2 is that of Wright’s post extension shown in Fig. 2

and its line of direction D is also far removed from the

direction of the driver’s eye. If the area of the post exten-

sion is further reduced as shown by dotted lines having the

direction extension G it would still not be in alignment with

a line of vision from the driver’s eye. Alignment could

only be secured when the area of the post extension was

reduced to zero, bringing the direction line in line with the

driver’s eye but destroying the post extension. Hence

alignment in Wright emphatically spells lack of utility.

All of the above facts are in effect admitted by Wright

himself in an argument submitted after termination of In-

terference No. 61,642 and not available to Petitioner in time

to be urged before the Patent Office. It was therefore newly

12

discovered evidence of which the District Court should have

taken notice.

This admission was made in an argument submitted to

the Patent Office on December 4, 1935, to justify the showing

in his Fig. 2 and is as follows:

‘The mentioned diamond-shaped area (Fig. 1) is

in practice so much larger than is necessary for strength

that the Applicant’s drawing (Fig. 2) shows only the

rearward half (door side) of the diamond, with the

inside or wind-shield face side approximately in line

with the line of vision of a person seated on that side

of the car,’’ (i. e. the driver). (Emphasis and paren-

thesis ours.)

Strange it is that Wright would intentionally weaken

his post where his two and a half inch transverse dimensions

would insure clear vision without it, where others had found

it impossible to build a clear vision post of adequate strength

to render clear vision practicable.

In failing to give consideration to this admission it is

submitted that the District Court and the Court of Ap-

peals also failed to give proper effect to applicable deci-

sions of this Court as, for instance, in Mitchell vy. Tilghman,

86 U. S. 287, 418, where it was said:

‘‘Patent laws have for their leading purpose the

encouragement of useful inventions. Practical utility

is their object, and it would be strange if, with such

object in view, the law should consider two things sub-

stantially the same which, practically, and in reference

to their utility, are substantially different.’ (Em-

phasis ours.)

13. Construction given ‘substantial alignment’? in In-

terference No. 61,642. Petitioner throughout the progress

of Interference No. 61,642 contended that ‘‘substantial

alignment’? meant essentially ‘‘alignment”’ of the character

shown in his Fig. 6 and referred to in the written deserip-

—

13

tion of said figure, supra, and that therefore Wright did

not disclose and could not make Petitioner’s claim 14 (the

sole count of said interference) because he showed an angle

of deviation or divergence from true alignment and of the

same order of magnitude as in Carlson’s Fig. 4 (R. 91) on

which said claim had been originally rejected, but after-

wards allowed on the ground that ‘‘alignment’’ was not

shown therein, nor results flowing therefrom similar to

Petitioner’s.

The Court of Customs and Patent Appeals, as had also

the Patent Office tribunals, in contravention of R. S. 4904

(Appendix I) and the applicable decision of this Court in

Hill et al. v. Wooster, 132 U. S. 693, and Patent Office Rule

94 (Appendix K), requiring invention as a condition prece-

dent to an interference, refused to consider the meaning

given the count necessary to patentably distinguish it over

the Carlson patent, supra. The Court said:

‘‘There is only one question before us, viz., the right

of appellee to make the claim corresponding to the count

here in issue. While appellant in his reasons for ap-

peal assigns error by the board in refusing to consider

prior art in determining the scope of the claim, that

question cannot be considered by us. It is well estab-

lished that we are not at liberty in a proceeding of this

character to inquire whether the interpretation given a

count by the Patent Office tribunals renders the count

unpatentable over the prior art. Marshall and Levan-

dosky v. Ledwinka, 21 C. C. P. A. (Patents) 728, 67 F.

(2d) 495, and cases therein cited.”’

All tribunals in said interference denied appellant’s con-

tention that ‘‘alignment’’ and ‘‘substantial alignment”’

meant the same thing, namely, ‘‘alignment’’ but held on the

contrary that

‘‘the recitation of ‘substantial alignment’ must be con-

strued to give some latitude’’ (R. 154, last sentence, R.

170, lines 2-5).”’

A ARR

14

The examiner of interferences also held that:

‘Tt is true that Wright’s’post does not fill the space

between the sides of the driver’s blind angle and there-

fore Wright does not achieve the result achieved by

Marine of maximum strength for a given obstruction to

the driver. However, the count is not limited to a post

which achieves that result. As far as the limitations

are concerned the post might offer great obstruction to

the driver’s vision and be comparatively weak.’’ (R.

152) (Emphasis ours).

The Court of Customs and Patent Appeals in adopting the

‘‘eoncurring decisions of the Patent Office tribunals’’ as the

basis of its own decision (Marine v. Wright, 74 F. (2d) 996)

affirmed these holdings. The Court of Customs and Patent

Appeals, however, further found that:

‘‘There does seem to be some inconsistency between

appellee’s Figures 1 and 2 as indicated by the projected

lines of vision.”’

It needs must follow that the Court of Customs aad Patent

Appeals found that either Wright’s Fig. 1 or his Fig. 2, or

both, were erroneous. But in view of its affirmance of the

Patent Office it must perforce have held that the range of

‘‘latitude’’ given the term ‘‘substantial alignment’’ was

sufficient to read on what Wright actually disclosed when

the errors in the drawing were corrected. Otherwise it

would have been the duty of the Court to determine the effect

of these errors on Wright’s right to make the count, which

it failed to do, as did also the District Court and the Court

of Appeals when they laid ‘‘aside the very complicated argu-

ment as to the geometry of the drawings.’’

But while the Court of Customs and Patent Appeals

could justify its failure to determine the extent and scope

of the inconsistencies which it found to exist, on the ground

of the latitude which, under its construction of the term

15

‘‘substantial alignment”’, it gave to the count in interfer-

ence, the same justification, we submit, cannot be given the

failure of the District Court and the Court of Appeals to

determine the geometry of the drawings. This is for the

reason that claims 5 and 57 here at issue are not susceptible

of the wide latitude of construction given said count, as will

presently appear. Moreover, necessity for determining the

geometry of Wright’s drawings was, as we have shown

above, non-existent, because Wright himself meanwhile had

substantially admitted that the geometry of Fig. 2 was

erroneous and that its true geometry was that of Fig. 1. We

submit that it was the duty of the latter courts to consider

this newly discovered evidence and that there was no basis

whatever, in view thereof, of a holding of res adjudicata or

even non-patentable difference over Wright in view of the

fact that true alignment had already been found to be pat-

entable over Carlson and by the same token was patentable

over Wright’s corrected drawings.

That claims 5 and 57 are not susceptible of the wide lati-

tude given the interference count follows from the follow-

ing considerations.

Both claims 5 and 57 specify in effect a body post having

a face in alignment with the driver’s line of vision past the

same and a blind angle subtended by said post with the

driver’s eye and claim 5 additionally specifies that the door

frame end member lies substantially within said blind angle.

Alignment as taught by Appellant and ealled for by claims

5 and 57 effects the saving of waste space in the blind angle

and increases post strength, without increased obstruction

to vision. This is not true of Wright’s teaching.

Since the blind angle is stated in claims 5 and 57 to be

subtended only by the body post, the entire width of the

blind angle is given over to the post, alone, rather than to

the entire assembly, as in Wright. Appellant’s post has

16

therefore also greater lateral strength than Wright’s post

10.

The door end frame member 26 of Wright is not all within

the blind angle subtended by the post as stated by claims

5 and 57 but itself subtends a very material part of the blind

angle. The width and strength of the body post is cor-

respondingly decreased.

Hence, none of these three features are at all disclosed

by Wright or were or could have been adjudicated in Inter-

ference No. 61,642. His disclosure therefore cannot be

res adjudicata against Appellant.

14. Count 5 res judicata in favor of Appellant by reasons

of decisions in his favor in Interferences 61,643-5 and estop-

pel under Rule 109. The combination of claim 5 includes

the door as an essential element of the combination. Such

combination was not adjudicated in Interference No. 61,642,

but was adjudicated in Interferences No. 61,643-5. The pres-

ence of the door frame in the combination introduces new

and different problems from those of the windshield frame

which latter only was adjudicated in Interference No. 61,642.

The door and its window frame must be continuously opened

and slammed shut and the frame is subjected to heavy pres-

sure of air which may cause its vibration when running

fast. It, therefore, presents specific problems not inherent

in the windshield frame. The solution of these problems

is well stated in the following sentence taken from Peti-

tioner’s specification, (R. 124-215) :

‘“‘Thus a maximum of strength is imparted to the

body post, while the door post, since it is protected im

closed or normal running position within the channel

in the body post, also partakes of the strength of the

latter.’

Wright’s disclosure and drawings fail utterly to show a

door frame protected by the post as indicated, or in any

17

other way, and does not at all satisfy the terms of the claim.

Wright attempted to make count 1 of Interference No.

61,644 by a motion under Rule 109 made in Interference No.

61,643. This claim reads as follows (R. 6):

‘‘A body post assembly comprising a body post pro-

vided with a face having a vertical channel therein and

a door window end frame member positioned in said

channel when the door is closed, said body post extend-

ing a substantial distance inwardly from said channel

within the angle subtended by the outer portions of

said assembly with the driver’s eyes and in substantial

aligument with at least one side of said angle.’’ (Km-

phasis ours.)

Wright’s motion was denied and he did not appeal. The

decision, therefore, became final and created an estoppel

against him as to the door element of the combination.

The Newcomb Motor Company v. Moore, Commissioner

of Patents, 30 App. D. C. 464.

There were further counts 2, 3, involving the door window

frame as counts in Interference No. 61,644, which Wright

did not attempt to make (R. 6). Count 2 reads as fol-

lows:

‘2. In a body post assembly, a body post having a

vertical channel therein whose outer edges lie in sub-

stantial alignment with the driver’s eye; and a door

window end frame member lying substantially within

said channel when the door is closed.’’

Failure to make these counts 2 and 3 or similar counts ap-

propriately modified created an estoppel against him under

Patent Office Rule 109 (Appendix M).

Moreover, original claim 5 (R. 129) in substantially tts

present form was an original claim in Appellant’s applica-

tion and the failure of Wright to make it under the provi-

sions of Rule 109 also created an estoppel against him (R.

129).

18

We, therefore, submit that claim 5 was not properly

denied Petitioner on Wright’s disclosure on the ground of

estoppel but it is rather Wright who would be estopped to

make said claim.

Jurisdiction.

This suit is brought under the provisions of Sec. 4915,

R. S., U.S. Title 35, Sec. 63 U. S. Code and the jurisdiction

of this Court is invoked under Title 28, Sec. 347 U. S. Code.

The original decision of the Court of Appeals was rendered

on November 3, 1941 (R. 186) and a petition for rehearing

was denied on December 3, 1941 (R. 187). A motion by

petitioner for additional time to file this petition was

granted by this Court, through Chief Justice Stone, and

such time was extended to March 13, 1942 (R. 189).

In support of such jurisdiction the decision Baldwin v.

Robertson, 265 U. S. 168, 181 is cited.

The Questions Presented.

1. Is the fact that a count of a former interference is

readable on the structure disclosed in a claim of a losing

party a proper test of res adjudicata against the allow-

ability of said claims to said party?

2. Where an interference was declared with a certain

claim as its count only after the primary examiner, as a

condition precedent to his right, under R. 8S. 4904 (Appen-

dix I) and Patent Office Rule 94 (Appendix K), to put said

claim in an interference, had given said claim a special

construction rendering it patentably different from. the dis-

closure of a particular patent on which it had been previ-

ously rejected when not given that construction, can an

interference tribunal properly refuse consideration of the

construction placed by the examiner on said claim when

allowing it?

ren .

Fes SSIES ERIM HOR wg RON eo

19

3. Can, after termination of the interference, the ex parte

tribunals having jurisdiction revert to the original con-

struction given the count by the primary examiner before

the declaration of the interference, but a different construc-

tion from that given it by the interference tribunals in

deciding priority, to support a holding of res adjudicata

against a losing party as to other claims not adjudicated

and limited definitely to the original ex parte meaning

of the count which was adjudicated on a different meaning,

particularly where said other claims define a structure not

disclosed by the winning party?

4. Can a tribunal of the United States having proper

judicial jurisdiction over patent cases ignore a manifestly

applicable decision by this Court laying down rules to

determine the sufficiency of disclosure required in applica-

tions, and patents resulting therefrom, by R. 8. 4888

(Appendix H)?

5. Can a tribunal of the United States having proper

judicial jurisdiction over patent cases ignore a manifestly

applicable decision by this Court holding that a disclosure

lacking in utility required by R. S. 4886 (Appendix G)

is invalid as an anticipation?

6. Were petitioner’s claims 5 and 57 properly denied him

under the facts set forth in the statement of the case?

7. Were petitioner’s claims 5 and 57 properly denied him

under the principles involved in questions 1 to 5?

Reasons Relied On for the Allowance of the Writ.

1. Question 1 relates to the subject matter of paragraph

4 of the petition-statement. It is of paramount importance,

we submit, to all inventors in general and to those who

become involved in litigation in particular, of whatever

sort, since the successful prosecution of a broad claim

20

could foreclose all protection on improvements of others

in his art. It would become impossible for the loser of an

interference, for instance, to obtain protection on the most

specific type of improvement never contemplated by his

adversary. Had the radio art been extensively developed

during the life of the Bell Telephone patent it would ap-

pear that the rule stated by the District Court and Court

of Appeals would have barred any protection on the most

specific improvements in radio never contemplated by Bell.

Questions 2 and 3 bring into issue whether the rule of

count construction in interferences wherein the construc-

tion given by the examiner in differentiating a claim over

particular patents is ignored notwithstanding the require-

ment of R. S. 4904 that invention be found as a condition

precedent to the determination of the question of priority

of invention. This is also required by applicable decisions

of this Court, ¢. g., Hill et al. v. Wooster, 1382 U.S. 693.

Patent Office Rule 122, as amended (Appendix L, 2nd

paragraph), recognizes this principle in the case where

the claim of a patent is involved in interference and no

reason is apparent why this same rule should not be ex-

tended to counts taken from pending applications and the

failure to extend the rule is discriminatory. We submit

that the existence of a patent renders the rule no more

sacred than in the case of pending applications where the

technical and harsh application of the rule of res adjudicata,

as here, ignores the truth due largely to the confusion of

issues resulting from a change in rules of the game during

its progress. Applicants having pending applications

rather than patents are liable to serious injury in passing

the Scylla of different constructions of the same claim in a

continuous proceeding only to be utterly destroyed by the

Charybdis of res adjudicata, thereafter. Of the several

hundred interferences finally decided on priority each year

21

the question of claim construction is generally involved and

the rights to many important inventions are at stake. A

patent claim is not ‘like a nose of wax which may be turned

and twisted in any direction.’’ If during the progress of an

interference it appears that a former construction given

the claim by the examiner in formulating the issue to be

contested on priority cannot be accepted by a tribunal pass-

ing upon the question of priority in interference the inter-

fering counts can and, we submit, should be re-formulated

(Podelsak vy. McInnery, 26 App. D. C. 399, 408). This Court

has many times had oceasion to modify the rules governing

the practice in pending applications established by the

tribunal having jurisdiction thereover. In the Cornplanter

case, 90 U.S. 181, it overruled and abolished the practice of

rejecting applications on prior abandoned applications; in

Miller v. Brass Co., 104 U.S. 350, and in James v. Campbell,

140 U. S. 356, it limited the time within which broadened

reissue claims could be presented; in Steinmetz v. Allen,

192 U. S. 543, it declared invalid one of the rules of the

Commissioner requiring division between claims for a

process and claims for an apparatus; in Chapman et al. v.

Wintroath, 256 U. S. 126, it held that the Commissioner

would not restrict by rule the time within which claims of

a patent could be copied for interference by an adversary

to the period of one year after grant of the patent (under

old statutes); and in Milburn Co. v. Davis Co., it held that

the filing of an application upon which a patent was granted

fixed the effective date of the patentee’s invention as

of that date.

Relative to Question 4 it is submitted that the decision

of the Court of Appeals herein does not give proper effect

to the applicable decisions of this Court, e. g., Permutit v.

Graver, 284 U.S. 52: Schretber-Schroth Co. v. Cleveland

Trust Co., 305 U.S. 47; nor with respect to Question 5 to

Mitchell v. Tilghman, 86 U.S. 287, 418. These are salutary

eee ce eS

22

decisions necessary to the prevention of fraud and, we sub-

mit, that disregard of them should be discouraged.

Questions 6 and 7 involve the application of the above

principles to the instant case. This case involves the item

of safety by clear vision with adequate strength and these

factors have been considered most important in the art.

The District Court stated that improvements in this field

should be stimulated and recognized (R. 111). A similar

view was expressed by the Court of Appeals of the District

of Columbia in Meyers v. Coe, 83 F. (2d) 708.

Wuenrerore, your petitioner, feeling himself aggrieved by

the decree of the United States Court of Appeals for the

District of Columbia, respectfully prays that a writ of

certiorari be issued out of and under the seal of this Honor-

able Court, directed to the said United States Court of

Appeals for the District of Columbia commanding that

court to certify and send to this Court for its review and

determination, on a day certain to be herein named, a full

and complete transcript of the record and all the proceed-

ings in the case, numbered and entitled on its docket, No.

7737, Richard E. Marine, Appellant vy. Conway P. Coe, Com-

missioner of Patents, Appellee, and that said decree of the

said United States Court of Appeals for the District of

Columbia may be reversed by this Honorable Court and

that petitioner may have such other and further relief in

the premises as to this Honorable Court may seem meet and

just, and your petitioner will ever pray.

Ricuarp EF. Marine,

Pro se.

Cuas. S. GrixpD.e,

Of Counsel.

ee ee a ee

BNWT OY eae

PETITIONER'S

BRIEF

SUPREME COURT OF THE UNITED STATES

OCTOBER TERM, 1941

i a PSA AL Sap Es MGA TO

No. 1034

RICHARD E. MARINE

b

: Petitioner,

4 vs.

CONWAY P. COE, Commissioner or Patents.

4 SUPPORTING BRIEF ON PETITION FOR

: CERTIORARI.

I. Opinions of the Courts Below.

The opinion of the United States Court of Appeals for

the District of Columbia in this case was rendered Novem-

ber 3, 1941, (R. 186) petition to rehear was denied Decem-

ber 3, 1941 (R. 187) and the opinion is reported in 51 U. S.

P. Q. 540. The opinion of the District Court of the United

States for the District of Columbia is reported in 32 Fed.

Sup. 236 and also appears upon pages 109-111 of the tran-

script of record.

The opinion of the Court of Customs and Patent Appeals

upon which the opinion of the District Court was based, is

reported as Marine v. Wright in 74 F. (2d) 996.

MS

Bh 4

ie

i

FE

a

a

a

24

II. Jurisdiction.

This suit is brought under the provisions of Sec. 4915,

R. S., Title 35, See. 63, U. S. Code, and the jurisdiction of

this Court is invoked under title 28, Sec. 347, U.S. Code.

In support of the jurisdiction the decision in Baldwin v.

Robertson, 265 U. S. 168, 181 is cited.

III. Statement of the Case.

All that is material to the consideration of the questions

here presented, with appropriate page references to the

printed record, is believed to have been set forth under

‘‘Summary Statement of the Matter Involved”’ in the peti-

tion for writ of certiorari, in sections numbered 1 to 14,

inclusive, to which reference is here made.

IV. Specification of Errors.

The United States Court of Appeals for the District

of Columbia, following the findings of fact and law and the

opinion of the District Court of the United States for the

District of Columbia erred in:

1. Holding that the readability of a count lost in inter-

ference on the structure disclosed in claims not involved

therein is a test of res adjudicata against the losing party

(R. 119, IV, 1).

2. Not holding that petitioner’s claims 5 and 57 are free

from the charge of res adjudicata by reason of the outcome

of Interference No. 61,642 (R. 117, 24).

3. Not holding that claims 5 and 57 patentably distinguish

over Wright’s actual disclosure (R. 117, 25).

4. Not condemning the practice of the Paten. Office in

adjudicating a count which had not been found to be patent-

able, due to the fact that it was given a different construc-

25

tion in interference from that which the primary examiner

had found allowable (R. 118, 31-36).

5. Resorting to the construction given petitioner’s origi-

nal claim 14 in finding it patentable over Carlson rather

than the construction given it in interference in determin-

ing res adjudicata (R. 119, 37-39).

6. Failing to consider newly discovered evidence in the

form of Wright’s admission in his application record after

termination of Interference No. 61,642, establishing lack of

utility in his disclosure in Fig. 2, solely relied upon as

anticipation by all tribunals (R. 117, 19-22), and therefore

failing to give proper effect to applicable decisions of this

Court.

7. Failing to consider this newly discovered evidence

together with other evidence in Wright’s record fully estab-

lishing accident and error in Wright’s Fig. 2 (R. 116, 117,

13-21), and therefore failing to give proper effect to ap-

plicable decisions of this Court.

8. Holding that there is no critical difference between

alignment and substantial alignment (R. 120, 4).

9. Holding that the geometry involved in Wright’s case

should be laid aside (R. 120, 5).

10. Holding that for practical purposes plaintiff’s strue-

ture accomplishes no more than the substantial alignment

of Wright (R. 120, 6).

11. Not holding that claim 5 is res adjudicata in favor of

petitioner by reason of the adjudication in his favor in con-

solidated interference No. 61,643 (R. 119, 42-43), and also

by the failure of Wright to make said claim, under Patent

Office Rule 109, which was in petitioner’s application as

filed and during the progress of the interference (R. 119, 43).

12. Not allowing claims 5 and 57 to petitioner,

26

V. Argument.

Petitioner’s position relative to errors 1 and 2 is sub-

stantially the same as that to question 1 of the petition

(p. 18, supra) and is stated under 1, page 19 of said petition.

His position with reference to errors 3, 8, 9 and 10 is set

forth on pages 12 to 16 of the petition.

His position relative to errors 4 and 5 is set forth begin-

ning in the middle of page 20 and ending at the bottom of

page 21 of the petition.

His position as regards error 6 is set forth under 12, be-

ginning page 10 and ending on page 12 of the petition.

His position relative to error 7 is based on the facts set

forth under 11 on page 8 of the petition and extending to

12 on page 10.

As there set forth Wright’s application disclosed two

figures, Fig. 1 and Fig. 2, that were stated in the specifica-

tion to be the same but which actually differed materially

on the windshield side of the assembly in the angular rela-

tionship of the parts to each other in the respective figures.

Wright’s record before declaration of Interference No. 61,-

642 never described or claimed the angular relationship

shown on the windshield side of Fig. 2 although he had

broadly shown, described and claimed that of Fig. 1, having

claimed the cross-sectional area of his assembly as being

diamond-shaped and symmetrical about the ‘‘center’’ line

24, none of which description was consistent with or could

be reconciled with the windshield side of his Fig. 2. Never-

theless his Fig. 1 was never relied upon in Wright’s argu-

ments or by any tribunal in Interference No. 61,642 to sup-

port the count thereof, and indeed to have done so might

have brought the interfering count under the disclosure of

Fig. 4 of Carlson over which the count had been distin-

guished. However, this may be it is certain that there is

27

no description of Wright’s Fig. 2 fixing the value of the

angle a therein on the windshield side of his assembly (Ap-

pendix B). The expert Mason so testified (R. 26-27) and

the original specification and claims clearly establish the

fact.

All tribunals below, in relying only on the Fig. 2 drawing

to support their conclusion and in refusing to consider the

charges of accident and error in said figure, much less

Wright’s own admission after termination of Interference

No. 61,642, have ignored the principles established in ap-

plicable decisions of this Court governing the determina-

tion of disclosure under R. S. 4888 and holding that a draw-

ing alone is not a sufficient disclosure. Much more is this

true where its accuracy has been impeached.

As stated by the Court in Permutit v. Graver, 284 U.S.

52, 60:

‘‘Moreover, while drawings may be referred to for

illustration and may be used as an aid in interpreting

the specification or claim, they are of no avail where

there is an entire absence of description of the alleged

invention or a failure to claim it.’’ (Citing authorities.)

The still more recent decision of this Court in Schretber-

Schroth Co. v. Cleveland Trust Co., 305 U. S. 47, is directly

in point. In that case there was involved the question of

whether or not a drawing showing a piston provided with

webs and a split skirt, as to which the description empha-

sized the property of rigidity, was flexible within the mean-

ing of that term as employed by another who showed in his

drawings substantially the same structure but explicitly de-

scribed its property as flexible. While admitting that the

first structure, though described as possessing rigidity would

inherently possess some flexibility, the Court held that the

absence of a written description emphasizing this property

“a

28

and its purpose rendered the disclosure of the first strue-

ture insufficient. The Court said (p. 58):

‘*The properties of any given material are many and

diverse. The antithetical qualities of rigidity and flexi-

bility of a structure are not absolute but relative; it

may be more rigid than some and more flexible than

others ; too rigid for some purposes and too flexible for

others. The one quality may be increased and the other

diminished by choice of materials from which the strue-

ture is made and by variation in its proportions. If in-

vention depends on emphasis of one quality over the

other, as the court below found was the case with the

laterally flexible webs in the Gulick device, the statute

requires that emphasis to be revealed to the members

of the public, who are entitled to know what invention

in claimed. That is not accomplished either by naming

a member having inherent antithetical properties or by

ascribing to it one property when the other is meant.’’

(Italies ours.)

This case bears another very striking resemblance to the

instant case in that the question of estoppel by reason of

adjudications in prior interferences was at issue. The Court

in effect held that the requirements of Revised Statute 4888

for explicit written description were of greater force than

prior adjudications in interferences. The Court said (pp.

59, 60):

‘“*We recognize the weight to be attached to the

determinations in the interference proceedings in which

the Court of Appeals of the District of Columbia and

the Court of Customs and Patent Appeals sustained

the Gulick amendments. Cf. Radio Corporation v.

Radio Laboratories, 293 U.S. 1, 7. But the decisions

in those cases are not controlling here. So far as the

courts relied on the inherent flexibility of the webs to

supply the feature of lateral flexibility omitted from

the Gulick description they ignored the principle recog-

nized in Permutit v. Graver Corporation, supra, and

ee

29

Powers-Kennedy v. Concrete Co., supra. So far as they

relied on the drawings to supply the omission they dis-

regarded the fact shown both by inspection and by the

evidence presented here that the drawings do no more

to point to Gulick’s invention than does the fact of in-

herent flexibility. We conclude that respondent can

take no benefit from the flexible web element added by

amendment to the Gulick application.’’

Petitioner’s position relative to error 11 is set forth under

14, beginning page 16 and ending at the top of page 18 of

the petition.

It is respectfully submitted, therefore, that this Court

should take jurisdiction of this case, reverse the decree of

the United States Court of Appeals for the District of Co-

lumbia and direct that a new decree be entered by the Dis-

trict Court of the United States for the District of Columbia,

authorizing the Commissioner of Patents to issue a patent

to Petitioner.

Ricuarp E. Marine,

pro se.

Cuas. S. GrinpDLe,

Of Counsel.