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May 6, 1940


The opinion of the court was delivered by: SCHOONMAKER

This is an action under Section 4915, R.S. 35 U.S.C.A. ยง 63, in which plaintiff as assignee of John W. Holt application for a patent for an improvement in pluralrimmed-wheel organizations in the automobile art, is asking this court to adjudge that plaintiff is entitled to receive a patent for the invention disclosed in said application. The Holt application was filed July 19, 1924, as Serial No. 726,909. Holt assigned this application to the Parker Wheel Company of Cleveland, by assignment dated July 2, 1924, but not recorded in the Patent Office until May 28, 1931; and in the meantime, Holt prosecuted the application in the Patent Office as though he were the owner thereof.On December 28, 1935, the Parker Wheel Company assigned said application to the plaintiff herein.

The Erie Malleable Iron Company is the owner of Patent No. 2,178,316, which issued October 31, 1939, on application of Jewell W. Vanderveer, filed February 16, 1927, Serial No. 168,728, which had been assigned to the Erie Malleable Iron Company. This Vanderveer patent is also for improvement in demountable-rim wheels.This Vanderveer patent was issued following interference proceedings in the Patent Office involving the Holt application, which resulted in a decision in favor of Vanderveer. The Holt application was then denied; and the plaintiff, the present owner of the Holt application, brought this suit under the provisions of Sec. 4915, R.S.

 The only issue in the present suit is whether or not plaintiff is entitled to a patent on the Holt application which the Commissioner of Patents refused. The right of defendants to a patent under the Vanderveer application is not involved, except as it may preclude right of plaintiff to a patent on the Holt application.See Gandy v. Marble, 122 U.S. 432, 7 S. Ct. 1290, 30 L. Ed. 1223; Hill v. Wooster, 132 U.S. 693, 10 S. Ct. 228, 33 L. Ed. 502; Cleveland Trust Co. v. Berry, 6 Cir., 99 F.2d 517, 521.

 The counts in controversy in the interference proceedings in controversy before the Patent Office, originated in the Vanderveer application. They are:

 Count 2.(Claim 1 of the Vanderveer Patent and Claim 13 of the Holt application): "A vehicle wheel having a tapered seat at its outer periphery; a demountable rim having an engaging surface only at one edge engaging said seat; alined means initially and positively locating the rim in alinement with a plane at right angles to the axis of the wheel; and clamping means forcing the engaging surface of the rim and seat together." The two interferences involving these two counts were later consolidated in the Patent Office, and the consolidated interference was given No. 71,381.

 Thereafter, on October 6, 1938, upon a final hearing in said consolidated interferences, the Examiner of Interferences awarded priority of invention of the subject-matter in issue to John W. Holt. Vanderveer then filed an appeal to the Board of Appeals of the Patent Office from the decision of the Examiner of Interferences; and, after hearing, the Board of Appeals reversed the decision of the Examiner, awarding to Vanderveer priority of the subject-matter in issue in the consolidated interference.

 In its opinion, the Board of Appeals said:

 "Taking up first the question as to whether the counts read upon the disclosure of the party Holt. These counts originated in the Vanderveer application and the split ring 14 of Vanderveer is the aligning means set forth in the counts. In count 1 this means is specified as removable. In count 2 it is specified as initially functioning to align the parts. If, in the Holt application, an initial aligning means is present, it must be the notches in the outer ends of the long spokes. Certainly this aligning means is not removable as set forth in Count 1.

 "Both counts set forth a tapered seat. In the party Holt's disclosure, this must be regarded as the tapered portions of the notches in the spokes nearest to the inner portion of the wheel. There is considerable dispute between the parties as to the manner in which the rim engages the outer ends of the spokes, but we believe that it is reasonable to hold that all that the party Holt has clearly shown is a series of spoke ends containing notches, which ends and notches substantially fit the rim and its bead. It is thought that probably at times the rim proper will bear against the end of a spoke. At other times the bend of the bead may rest against the bend of the notch and hold the remaining portion of the rim slightly away from the end of the spoke. In other words, we do not consider that it is material in the Holt construction whether or not the rim is clamped against the tapered portion of the seat, as set forth in the counts, when the levers K are forced into position. When the parts are tightened up, the rim cannot move radially and the bead will prevent axial movement of the rim with respect to the spokes.This, we think, is the essence of the Holt disclosure.

 "In the Vanderveer application, when the ring 14 is snapped into its groove, it is positively stopped from outward movement by the right-angular edge of the groove shown at 6a. While it would appear that, when the rim in the Holt disclosure is placed in the notches in the ends of the long spokes with the short spokes at the lower portion of the wheel, the rim probably would be perpendicular to the axis of the wheel, we believe that this would not necessarily occur, and we think, therefore, that certain sides of each of these notches cannot be regarded as a means for positively aligning the rim in the manner specified in the counts.

 "It is our opinion that the counts read with a definite meaning upon the Vanderveer disclosure but that if they are to be construed as reading upon the Holt disclosure, they must be given a forced and substantially meaningless construction. It is our opinion that they do not properly read upon that party's disclosure."

 The effect to be given to this decision of the Patent Office is stated by the Supreme Court in Morgan v. Daniels, 153 U.S. 120, 125, 14 S. Ct. 772, 773, 38 L. Ed. 657, as follows: "Upon principle and authority, therefore, it must be laid down as a rule that, where the question decided in the patent office is one between contesting parties as to priority of invention, the decision there made must be accepted as controlling upon that question of fact in any subsequent suit between the same parties, unless the contrary is established by testimony which in character and amount carries thorough conviction. Tested by that rule, the solution of this controversy is not difficult. Indeed, the variety of opinion expressed ...

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