BPAI Board of Patent Appeals and Interferences Patent and Trademark Office (P.T.O.) *1 CHAI ET AL. v. FRAME CAPACITANCE SWITCH Patent Interference No. 101,435

Board of Patent Appeals and Interferences

Patent and Trademark Office (P.T.O.)





Patent Interference No. 101,435

August 22, 1988



 Application of Thomas Y. Chai, Franz S. Reisch and M.T. Wu, Nigel M. Bailey, Ralph J. Schneider and Gary L. Turner, filed November 15, 1982, Serial No. 441, 712. Accorded benefit of Serial No. 259,301, filed April 29, 1981, Patent No. 4,359,720, issued November 16, 1982.



 Patent granted to Norman J. Frame on January 4, 1983, Patent No. 4,367,385, filed January 26, 1981, Serial No. 228,118.



Charles L. Rubow, Laurence J. Marhoefer, Trevor B. Joinke and Albin Medved for Chai et al.



Donald G. Casser and Michael J. McGovern for Frame.



Before Urynowicz, Caroff and Lynch












Final Decision


 This interference involves an application of the junior party, Chai et al  (Chai), and a patent of the senior party, Frame. The Chai application is assigned to Honeywell, Inc. and the Frame patent is assigned to W.H. Brady Co.



 The subject matter in issue relates to a so-called "membrane capacitance switch" which, in conjunction with external detection circuitry, is employed to sense key activation on a capacitively-coupled keyboard. The involved subject matter is defined in greater detail by the following count, the only count in this interference:



Count 1



   A membrane capacitance switch wherein switch activation produces a change in capacitance detectable by external circuitry, comprising:

 a substrate sheet,

 a flexible sheet extending over said substrate sheet,

 a conductive contact carried by one of said substrate sheet and said flexible sheet,

 a capacitance element located between said substrate sheet and said flexible sheet and aligned with said contact,

 said capacitance element comprising

 an inner insulating layer and

 first and second outer conductive portions on opposite surfaces of said inner insulating layer,

 said capacitance element forming a first capacitor,

 spacing means for spacing said capacitance element from said contact so as to provide an insulating zone between said contact and said first conductive portion,

 said contact, insulating zone, and first conductive portion being adapted to form a second capacitor electrically in series with said first capacitor,

 said flexible sheet, spacing means, contact, and first conductive portion all being adapted and located to cause the spacing between said contact and first conductive portion to vary when said flexible sheet is flexed during switch activation and to thereby cause the net capacitance of said first and second capacitors to change to an extent detectable by external circuitry, and

 said spacing means including one or more spacer layers occupying the space between said flexible layer and said capacitance element.



 The claims of the parties which have been designated as corresponding to this count are:

   Chai: Claims 36-42

   Frame: Claims 1, 3, 4, 7, 13 and 14





  *2 The following issues were raised in the parties' briefs and, therefore, are the only issues before us for consideration:



 1. Whether the motion (Paper No. 11) by Chai under 37 CFR 1.634 to add Nigel M. Bailey, Ralph J. Schneider and Gary L. Turner as inventors in the involved Chai application should be granted, consideration of the motion having been deferred to final hearing (Paper No. 27).



 2. Whether the motion (Paper No. 49) by Chai under 37 CFR 1.656(h) to suppress the testimony of Michael J. McGovern and associated exhibits should be granted.



 3. Whether evidence adduced by Chai, the junior party, is sufficient to establish a date of invention by showing conception and reduction to practice of the device defined by the count prior to Frame's January 26, 1981 filing date [FN1].



 4. If Chai is found to have established a date of invention prior to Frame's filing date, whether Frame has adduced sufficient evidence to establish an even earlier date of invention.



 Both parties took declaration testimony, submitted exhibits, filed briefs and waived the right to present oral argument at final hearing. [FN2]



I. Decision Regarding the Chai Motion to Correct Inventorship



 The motion in question was filed on December 20, 1985 together with supporting documentation (Paper Nos. 11, 13-15). Subsequently, an opposition (Paper Nos. 18, 19) and a reply (Paper No. 23) were also filed. We have considered Chai's record in light of the motion to correct inventorship, and conclude that Bailey, Schneider and Turner can properly be added to the Chai application as inventors essentially for the reasons set forth in the Chai motion and reply.



 For emphasis, we note that the statute governing conversion (35 USC 116, third paragraph) is remedial in nature and must be liberally construed. See, among many other cases, Patterson v. Hauck, 341 F.2d 131, 144 USPQ 481 (CCPA 1965); and In re Schmidt, 293 F.2d 274, 130 USPQ 404 (CCPA 1961). This is especially true in view of the intervening statutory expansion in the definition of joint inventorship which provides that:

   ... Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent. [35 USC 116, first paragraph].



 Furthermore, for a party to convert, the fact of joint inventorship need not be conclusively proved. In re Searles, 422 F.2d 431, 164 USPQ 623 (CCPA 1970); In re Russell, 193 USPQ 680 (Comm'r. 1975). Conversely, it stands to reason, that a party in an interference opposing conversion bears the burden of going forward with the evidence once a prima facie case of joint inventorship has been established. Here, Chai has established that Bailey, Schneider and Turner, as part of the "Delta Development Team" at Honeywell, made some contribution to the invention defined by the count at least by conceiving and developing operable modes of the invention conducive to the attainment of a practical utility therefor (CR-14; CR-66, 71; Attachment (July 10, 1979 memo) to Bailey verified statement under 37 CFR 1.48). Frame has not shown otherwise. In this regard, it is axiomatic that a complete conception includes a formulation in the mind of the inventor(s) of an operative invention as it is thereafter to be applied in practice. Mergenthaler v. Scudder, 11 App.D.C. 264, 1897 C.D. 724 (1897). Frame has not satisfied his burden of demonstrating that the contribution of Bailey, Schneider and Turner was insufficient to justify a finding that they had attained the status of joint inventors.



  *3 Contrary to the position taken by Frame, we find no absolute requirement in the law for direct collaboration between joint inventors. In adopting this broad approach, we thereby recognize the realities of ongoing team research efforts in modern day technical organizations which are directed toward a common goal over an extended period of time under the aegis of a single employer. In our opinion, this approach is in accord with the realities of the actual inventive efforts undertaken at Honeywell and with the legislative intent underlying the expansion of the statutory definition of joint inventorship.



 Accordingly, the Chai motion to correct inventorship is hereby granted and this interference is being redeclared simultaneously herewith in a separate paper (Paper No. 62) to reflect the addition of Bailey, Schneider and Turner as inventors in the Chai application.



II. Decision Regarding the Chai Motion to Suppress Evidence



 The motion in question seeks a ruling that the testimony of McGovern and associated exhibits are not admissible evidence for consideration in this interference because: (1) this testimony relates to the conception by Chai of the elements of detector circuit design which are said to be immaterial relative to the limitations of the count; and (2) this testimony is based upon comments by counsel which were not intended to be taken as binding admissions since the comments were made only in connection with an agreed exchange of proofs between the parties.



 The motion to suppress is dismissed as moot since it relates to testimony concerned only with Chai's earliest evidence of conception (CX-Chai A; FX-17) which is not essential to Chai's case for priority and, therefore, need not be considered at all in this proceeding. In this regard, we note that Chai has not raised any issue of diligence in the interference (see footnote 1, supra) and, therefore, in order to establish prior inventorship, would have to prove to have been the first to reduce the invention in issue to practice regardless of any earlier date of conception. See 35 USC 102(g). In other words, reduction to practice would determine Chai's date of invention. Under this scenario, any proof of an earlier date of conception would not be material to Chai's case, and conception would be subsumed within any proven reduction to practice. Cf. Smith v. Bousquet, 45 USPQ 347 (CCPA 1940).



III. Chai's Case for Priority



 Chai, being the junior party, has the burden of proving prior inventorship by a preponderance of the evidence. Peeler v. Miller, 535 F.2d 647, 190 USPQ 117 (CCPA 1976). Chai relies on an evidentiary record consisting of the declaration testimony of inventors Chai, Reisch, Wu, Schneider, Bailey and Turner and corroborators Mastroianni, Hill, Klein and Griffin, together with associated exhibits.



 The junior party alleges in its brief that the invention in issue was conceived and actually reduced to practice at the Micro Switch Division of Honeywell, Inc., and that the invention was reduced to practice as early as October 31, 1979.



  *4 Initially, we find it unnecessary to consider Chai's proofs of conception essentially for the reasons set forth, supra, in discussing the Chai motion to suppress evidence.



 As for reduction to practice, corroborator Klein averred that he was involved in assembling and testing a capacitive switch configuration identified by the designation "Delta 12" (CR 97-99). Apparently, the Delta 12 configuration corresponds to the invention defined by the count in issue (CR-46, 65-66, 105, 124-125). Construction of preliminary qualification test samples of the Delta 12 configuration is said to have occurred through about October 1979, but we find no corroboration by Klein of the date alleged by inventors Bailey and Turner (CR-79, 117) for completion of preliminary testing of the Delta 12 design. Further, the record does not reveal how this preliminary testing was actually conducted. Similarly, Hill, Griffin and Mastroianni corroborate certain aspects of the construction of Delta 12 switch units but do not appear to have been directly involved in any actual testing of the assembled units. Inventor Bailey testified that he initiated full qualification testing of production version Delta 12 keyboards beginning in January, 1980 and the test results were reported a few months later (CR 80-81; CX-Bailey I-L). These tests are also discussed by Mastroianni (CR 62-63; CX-Mastroianni D-G).



 We agree with Frame that the evidence adduced by Chai is insufficient to establish a reduction to practice of the invention in issue any earlier than January 1980. In particular, it is our position that there is a lack of adequate corroboration or supporting documentation for the allegation by inventors Bailey and Turner that preliminary testing of the Delta 12 switch configuration was completed by not later than October 1979. The allegation is further deficient in failing to state facts, rather than mere conclusions, specifically indicating how and when those tests were conducted and who was involved. The testimony of Chai's corroborating witnesses at best establishes that devices within the scope of the count were constructed by the end of October 1979, but does not establish that any of those devices were tested prior to January 1980. In this regard, we note that a reduction to practice of a particular product is generally not considered to be complete until that product is successfully tested to establish its utility. Gordon v. Hubbard, 146 USPQ 303 (CCPA 1965).



 In conclusion, we find that, at best, Chai has established a reduction to practice by January 3, 1980, the date on which production testing of the Delta 12 keyboard was initiated.



 IV. Frame's Case for Priority



 In order to prevail in this interference, Frame must establish a date of invention earlier than that established by Chai.



 We find Frame's record sufficient to establish conception and a corroborated actual reduction to practice of the invention in issue on or about December 20, 1979, prior to Chai's established date of invention.



  *5 According to Frame, conception is evidenced by disclosure of the invention in issue by inventor Frame to his assistant, Walber, on or before December 17, 1979 (FR-32). As corroborated by Walber, a switch panel within the scope of the count, and code-named "VETO", was constructed and tested on December 20, 1979 and found to function as a membrane capacitance switch (FR 29-32, 35-36; FX-4, 5, 8).



 Chai does not seriously challenge Frame's case for priority. The only issue raised by the junior party in its brief is whether the term "aligned" of the count is defined in the involved patent of the senior party. To the extent that Chai might be questioning whether Frame has support for a count or claim limitation in his patent, we note that this is a matter which Chai is not entitled to raise at final hearing pursuant to 37 CFR 1.655(b). To the extent that Chai might, instead, be questioning whether the switch reduced to practice by Frame in 1979 meets the limitations of the count, we note that there is no evidence in the record showing that the elements of Frame's switch were other than "aligned" as required by the count. Indeed, in describing the subject switch (FX-4), Walber refers to a sketch (FX-5) which clearly shows an alignment of elements appearing to satisfy all the terms of the count.



 Accordingly, we are satisfied that Frame has established a reduction to practice of the invention in issue by December 20, 1979, prior to Chai's established date of invention, and thereby prevails in this interference.





 For the foregoing reasons, judgment as to the subject matter of the count in issue is hereby awarded to Norman J. Frame, the senior party.



 Accordingly, (1) Norman J. Frame is entitled to his patent containing claims 1, 3, 4, 7, 13 and 14 which correspond to the count; (2) Thomas Y. Chai, Franz S. Reisch, M.J. Wu, Nigel M. Bailey, Ralph J. Schneider and Gary L. Turner, the junior party, [FN3] are not entitled to a patent containing claims 36-42 corresponding to the count.






Stanley M. Urynowicz, Jr.






Marc L. Caroff






Thomas E. Lynch






FN1. The question of Chai's diligence with respect to a subsequent actual or constructive reduction to practice, within the context of 35 USC 102(g), does not arise here since the question was not argued in the Chai brief and no evidence has been presented on that point. Matters not raised in a party's brief are ordinarily regarded as abandoned by that party. Cf. Photis v. Lunkenheimer, 225 USPQ 948 (Bd.Pat.Int.1984).



FN2. The Chai testimony record will hereinafter be referred to by the designation "CR-" with a following number designation referring to a particular page. The Chai exhibits will be referred to by the designation "CX-" with a following indication of the declarant and letter designation associated with a particular exhibit e.g., CX-Bailey L. The Frame testimony record and exhibits will similarly be referred to by the respective designations "FR-" and "FX-".



FN3. Our judgment has been formulated to reflect the decision, supra, regarding the Chai motion to correct inventorship.


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