BPAI Board of Patent Appeals and Interferences Patent and Trademark Office (P.T.O.) *1 KOCHAN v. KERMAN Patent Interference No. 101,132

Board of Patent Appeals and Interferences

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





Patent Interference No. 101,132

November 17, 1986

Final Hearing June 12, 1986


Filter Cleaning Apparatus And Method



 Application of Lee R. Kochan filed August 13, 1979, Serial No. 065,858.



 Patent granted to Kenneth Carol Kerman on May 20, 1980, Patent No. 4,203,738 filed November 13, 1978, Serial No. 960,472.



John Phillip Ryan, Joseph J. Jochman, Jr. and Charles L. Gholz for Kochan. Oral argument by Charles L. Gholz



Ira Milton Jones for Kerman. Oral argument by Ira Milton Jones



Before Calvert, Torchin and R. Smith












 The issue of this interference consists of two counts, counts 2 and 3, which read as follows:



Count 2



   An air filter and vacuum cleaning system including, in combination:

 (a) at least one filter unit comprising:

 (1) a housing having front, rear, left, and right side walls defining rectangular bottom entrance and top exit openings;

 (2) a plurality of vertical partitions running between and secured to said left and right side walls, alternate partitions having their lower ends starting in the plane of the bottom entrance opening and terminating at their upper ends short of the plane of the top exit opening, the remaining partitions having their upper ends starting in the plane of said top exit opening and terminating short of the plane of said bottom entrance opening, each of said partitions being corrugated along vertical bend lines to present a zig-zag appearance in top plan cross section;

 (3) a cloth-like fibrous filtering strip of width corresponding to the distance between said left and right side walls passing over the first of said alternate partitions, thence under the first of said remaining partitions, and continuing in an up and down manner to define upper folds about the ends of those partitions terminating short of the top exit opening and lower folds about the lower ends of those partitions terminating short of the bottom entrance opening, the portions of said strip between the upper and lower folds passing between the partitions being held in generally vertical parallel planes by said partitions, the corrugations defining with the strip a series of vertical channels of generally triangular cross sections when viewed in plan; and

 (b) means for limiting the approach of a vacuum head to be recited to said bottom entrance opening; and

 (c) a vacuum cleaning means for removing accumulated impurities from said at least one filter unit including:

 (1) a pair of guide tracks running along parallel and adjacent to the lower ends of the left and right side walls of said filter unit housing;

 (2) a vacuum head for connection to a vacuum source mounted for movement along said tracks to pass under said bottom entrance opening of said housing adjacent to said bottom entrance opening, said head having a vacuum slot extending between said left and right walls parallel to said folds, said slot being narrower than the distance between said alternate partitions and having planar surfaces ahead and behind said slot in engagement with said at least one filter unit; and

  *2 (3) means for moving said vacuum head along said bottom entrance opening between said front and rear walls of said filter unit housing so that said slot successively applies vacuum to the channels defined by the alternate corrugated partitions as it traverses the same, the channels and said slot cooperating to create a confined air movement in the channels of sufficient velocity to carry said impurities down the channels communicating with the slot opening, said impurities themselves acting as mechanical scrubbers in their movement along the sides of the channels to further clean the strip portions between the partitions,

whereby said filter unit can be periodically cleaned by said vacuum system without mechanical shaking of the filters and without the necessity of disassembling the filter units.



Count 3



   A system according count 2 [FN1] and further including means resiliently biasing said vacuum slot against said rectangular bottom entrance opening so that close contact between said vacuum slot and said rectangular bottom entrance opening is assured during travel of said head along said at least one filter unit.

Counts 2 and 3 are identical to claims 14 and 15 of the Kochan application, and correspond substantially to claims 1 and 2 of the Kerman patent. The issue of interference in fact has not been raised.



 According to the record, the Kochan application is assigned to Globe-Union III, and the Kerman patent is not assigned.



 Both parties filed evidentiary records, and briefs under 37 CFR 1.254.  [FN2] Each appeared, through counsel, at the final hearing.



Kerman's Evidentiary Record



 Before considering the merits of the priority issues, we must determine whether the evidence submitted by Kerman should be given any consideration. Kochan contends in part IV of his main brief that it should not be, for various reasons.



 A review of the record shows that on February 6, 1985, after the interference had entered the discovery and testimony stage, [FN3] a '37 C.F.R. 1.272 Stipulation,' signed by Charles L. Gholz for Kochan and Michael McEntee for Kerman, [FN4] was filed (Paper No. 33). This stipulation provides, inter alia:

   The parties to the above-identified interference hereby stipulate that the entire testimony-in-chief of the witnesses for each party who are under its control will be submitted in the form of affidavits or declarations, provided that:

 (1) The proponent of such testimony will serve copies of all executed affidavits or declarations to be used as testimony-in-chief by that party on the other party within two days of the beginning of the proponents' testimony-in-chief period;


   It is understood and agreed that this stipulation does not apply to the testimony-in-chief of the witnesses, if any, for each party which are not under its control.



 On March 18, 1985, Kerman filed a paper revoking the power of attorney of McEntee and Frater, and took over prosecution of the case himself. The time for Kerman to serve his documents and lists under 37 CFR 1.287(a) closed on June 3, 1985 (see Paper No. 47, page 6). On that day, Kerman (pro se) served a paper entitled 'Party Kerman's Service Under 37 CFR 1.287(a) of (i) Documents and (ii) Lists' (Paper No. 48), listing 27 documents, but never filed a list under 37 CFR 1.287(a)(1)(iii) 'giving the names and addresses of all persons whom he intends to call as witnesses and indicating the relationship of each person to the invention in issue.' Kochan thereupon filed a motion to advance the dates for filing the record and briefs (Paper No. 49, filed June 11, 1985), asserting that in view of Kochan's failure to file a list under 37 CFR 1.287(a)(1)(iii), he was not entitled to call any witnesses. In Paper No. 53 (July 16, 1985), an Examiner-in-Chief denied the motion. Noting that 'Kerman submitted numerous documents under 37 CFR 1.287(a) at a time when he was not represented by counsel with the apparent intention of calling witnesses to testify with respect thereto,' he stated that '[u]nder such circumstances, Kerman should promptly file a motion under 37 CFR 1.287(d)(1) listing the names of these witnesses whom he intends to call.' [FN5]



  *3 Meanwhile, Kerman had appointed Ira Milton Jones as his attorney (Paper No. 52, filed July 2, 1985), and, by Mr. Jones, filed on July 15, 1985 papers (Paper Nos. 54, 55) giving the names and addresses of Kerman, Blankenship and Kenyon as persons whose depositions would be taken as witnesses for Kerman. On July 22, 1985, Kerman served on Kochan a notice of taking the depositions of Blankenship, Kerman, Kenyon and Adams (Paper No. 59), and Kochan filed a motion to quash the notice (Paper No. 57, filed July 24, 1985).



 On July 30, 1985, a panel of this Board issued a decision (Paper No. 61) granting the Kochan motion to quash, on the grounds that (1) the taking of deposition testimony would violate the terms of the parties' stipulation under 37 CFR 1.272(c), and (2) Kerman was not entitled to rely on the testimony since he had never filed a motion under 37 CFR 1.287(d)(1). The decision was adhered to on reconsideration (Paper No. 65, August 9, 1985).



 Subsequently, testimony in the form of signed declarations of the four Kerman witnesses, together with exhibits, was filed on August 27 and 28, 1985. Three copies of the declarations, bound as required by 37 CFR 1.253(f), were filed on September 19, 1985, and another three copies filed on January 30, 1986. One copy of each of the depositions taken pursuant to the July 22, 1985 notice was filed on December 20, 1985.



 In Kerman's brief, he seems to assume that his evidence will be considered, and makes little if any response to Kochan's arguments as to why it should not be. With regard to his testimony under 37 CFR 1.272(c), i.e., the declarations of Kerman, Kenyon, Blankenship and Adams, and accompanying exhibits, it is evident that it can be given no consideration. 37 CFR 1.272 provides:

   § 1.272 Manner of taking testimony of witnesses.

 (a) The testimony of witnesses shall be taken by depositions on oral examination in accordance with the regulations in this part.


 (c) By agreement of the parties, the testimony of any witness or witnesses of any party may be submitted in the form of an affidavit by such witness or witnesses.


Even if Kerman's counsel (Mr. Jones) was not aware of the stipulation made by prior counsel (Mr. McEntee), as indicated on pages 16-17 of Kerman's brief, [FN6] the fact remains that under 37 CFR 1.272(c) testimony in the form of affidavits (or declarations) can only be employed by agreement of the parties. Since Paper No. 33 was the only agreement of the parties under 37 CFR 1.272(c), and Kerman did not comply with its terms, there is no basis for consideration of the senior party's declaration testimony.



 The depositions filed by Kerman on December 20, 1985 likewise will be given no consideration. As noted above, the Board granted Kochan's motion to quash the notice of taking these depositions, and even assuming that the use of deposition testimony would not violate the parties' agreement under 37 CFR 1.272(c), the depositions could not properly be considered in view of Kerman's failure to comply with 37 CFR 1.287(a)(1)(iii) or, in the alternative, to promptly file a motion under 37 CFR 1.287(d)(1). Therefore, under the provisions of 37 CFR 1.287(d)(1), supra, Kerman cannot rely on the testimony of the deponents. [FN7]



  *4 Accordingly, none of the evidence submitted by Kerman will be considered in this proceeding. Kerman, without such evidence, is limited to the filing date of his involved patent for conception and reduction to practice.



Kochan's Case for Priority



 Kochan asserts that Kerman derived the subject matter in issue from him, and alternatively that he (Kochan) conceived and actually reduced the invention to practice prior to Kerman's filing date. The parties' applications having been copending, the burden of proof on Kochan is by a preponderance of the evidence. Peeler v. Miller, 535 F.2d 647, 190 USPQ 117 (CCPA 1976).



 Kochan's evidentiary record consists of the affidavits of the junior party, Lee R. Kochan, and of Paul H. Arndt, J.F. Garrison, Paul V. Lowe, W.A. Reinemann, James L. Schneider, Richard P. Tippey and William A. Lauenstein, together with 59 exhibits. Pages of the Kochan testimony will be referred to as 'KoR-', and Kochan exhibits as 'KoX-.'



 The record shows that in 1977 Kochan was an engineer with Globe-Union Inc. In early 1977, Globe-Union bought an air filtration system from Kermatrol Inc., the company of which Kerman was the president. The system, a Kermatrol Dust Collector, began operation at Globe-Union's battery plant in Milwaukee on April 26, 1977, its purpose being to remove lead oxide particles from the air in the plant. The Dust Collector had two banks of filters, with a single HEPA (high efficiency particulate air) filter in each bank. The HEPA filter was a conventional design, and was as shown in the Kochan application (KoR-2 to 4, 32 to 35).



 To clean the filter of accumulated dust, the Kermatrol unit used a shaker. When the filter became clogged, the system would be shut down and the shaker activated to lift and drop the filter, shaking out the particles (KoR-5, 36).



 Globe-Union were dissatisfied with this cleaning system, because it did not clean the filter adequately, and the system had to be shut down for cleaning. Kochan suggested vacuuming the filter face, and in a memorandum dated September 26, 1977 (KoX-2) asked his supervisor, Lowe, whether he should pursue the matter further. Lowe approved the building of a prototype (KoR-6, 7, 37, 38).



 A sketch by Kochan dated December 1, 1977 shows the use of a screw to move a vacuum nozzle across the bottom of the filter (KoX-3). On December 22, 1977, Globe-Union issued a purchase order (KoX-5) to Reinke Metal Works, Inc., to furnish and install a vacuum system per Kochan's sketches. These sketches (KoX-6 thru 12) show the parts to be made by Reinke, including a vacuum head (KoX-8) which extends across the bottom of the filter and has a 3/16 inch wide intake slot (KoR-8 to 11, 38 to 41, 57, 58).



 At the end of February 1978, these parts were delivered and assembled on the Kermatrol Dust Collector at the Globe-Union plant. Photographs of the original parts, and of a standard HEPA filter balanced on top of this first prototype, have been submitted as KoX-14 thru 19. The operation of the first prototype is described by Kochan (KoR-12) and Lowe (KoR-43) as follows:

    *5 Initially we had a great deal of difficulty with the source of vacuum, which was the central plant vacuum system. When the system was being drawn on heavily by other users, the vacuum was not strong enough for the first prototype to operate satisfactorily. However, when the strength of the vacuum was adequate, the first prototype cleaned the on-line HEPA filter unit satisfactorily. In particular, even the first prototype cleaned the on-line HEPA filter unit better than Kermatrol's shaking mechanism, which the first prototype replaced.



 Although the witnesses state that the first prototype cleaned the filter better than the shaker did, its performance was still not ideal. Thus, Kochan testified that (KoR-13):

   The original 3/16" slot in the vacuum head proved too narrow, since the necking down of the air from the channels between the partitions to the 3/16" slot caused a large pressure drop. Accordingly, I had the slot milled out to 3/8", which still further narrowed the flats on each side of the slot.

Also, at KoR-14:

   Shortly before the dates of the party Kochan's Exhibits 20 and 21 [April 3 and 4, 1978], I concluded that the relatively narrow flats at the top of the first two vacuum heads were allowing dirty air to be drawn up around the top edges of the vacuum head and into the slot when the vacuum head moved part way across a channel, . . .

To overcome these problems, Kochan then designed a second prototype which had a vacuum head with a 1/2 inch wide intake slot and 1-inch wide flats on each side of the slot (KoX-24).



 Considering the foregoing evidence, which is all fully corroborated, we find that Kochan has established conception and actual reduction to practice by the date of operation of the first prototype, i.e., late February or early March 1978. The apparatus used met all the limitations of the counts; in particular the 3/16 inch wide slot in the vacuum head was narrower than the 1/2 inch distance between alternate partitions of the HEPA filter (KoR-10, 41), and, as shown in KoX-8, there were planar surfaces (flats) on each side of the slot, the counts not specifying any particular size for such surfaces. Successful operation of the prototype is shown by the testimony to the effect that it cleaned the filter better than the shaker did. While the first prototype had some undesirable characteristics, as discussed in the preceding paragraph, it was not necessary that the device operate perfectly, as long as the test established that it was suitable for its intended purpose. Cody v. Aktiebolaget Flymo, 452 F.2d 1274, 171 USPQ 206 (D.C. Cir. 1971), cert. den. 405 U.S. 990, 173 USPQ 65 (1972); Voisinet v. Coglianese, 455 F.2d 1064, 173 USPQ 16 (CCPA 1972). It is clear from the evidence in this case that the operation of the first prototype demonstrated that the invention was practical and would operate successfully in its intended environment.



  *6 Since Kochan has established conception and actual reduction to practice prior to Kerman's filing date, he is entitled to an award of priority. There is therefore no necessity for us to consider Kochan's allegations of derivation.



Award of Priority



 Priority of invention of the subject matter in issue is hereby awarded to Lee R. Kochan, the junior party.






Ian A. Calvert






Norman G. Torchin






Ronald H. Smith






FN1. Although count 2 was substituted for count 1, the redeclaration notice  (November 19, 1984) incorrectly indicated that count 3 was dependent on count 1.



FN2. Since this interference was declared prior to February 11, 1985, it is governed by the prior interference rules, 37 CFR 1.201 to 1.288. See MPEP § 2300.01.



FN3. The times for discovery and taking testimony were initially set on November 19, 1984 (Paper No. 23), and were reset by the Board of Patent Interferences in Paper No. 32 (January 29, 1985).



FN4. Kerman appointed Messrs. McEntee and Frater as his attorneys in a paper filed on January 27, 1984.



FN5. 37 CFR 1.287(d)(1) provides:

   (d) (1) A party will not be permitted to rely on any document or thing in his possession, custody, or control, or on any witness, not listed and served by that party as required by paragraph (a) of this section, except upon a promptly filed motion accompanied by the proposed additional documents or lists together with a showing of sufficient cause as to why they were not served by the date set pursuant to paragraph (a) of this section.



FN6. Mr. Jones and Kerman of course remain bound by the agreement made by Mr. McEntee. See 7A C.J.S. Attorney & Client § 233.



FN7. The Kerman depositions would also be subject to denial of consideration under 37 CFR 1.253(g), since Kerman has never submitted the three copies required by 37 CFR 1.253(a) even after the Examiner-in-Chief required same in Paper No. 97 (January 23, 1986).


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