Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
IN RE JOSEPH J. SCALESE
GPB Case No. 12-2186
September 11, 1986
Donald W. Peterson
Deputy Commissioner of Patents and Trademarks
DECISION ON APPEAL
*1 This appeal is
by Joseph J. Scalese (Scalese) from a Government employee invention rights
determination by the Department of the Air Force (Air Force) holding that the
Government is entitled to the entire right, title, and interest in an invention
made by Scalese. [FN1] The determination of the Air Force is affirmed.
According to Scalese's
invention rights questionnaire:
'The invention . . .
[relates to] a Ferromagnetic Steel eddy current probe which makes it possible
to inspect fastener holes [FN2] at a rate five times faster than the present
method does with conventional probes. [The probe] . . . cannot be deformed or
worn while rotating at high speed. [The probe] . . . cannot short-out because
of the shank design which is non- metallic . . . [and another element
apparently] makes the probe repairable since it is removable from the main
probe body, at the connector-end of the probe.'
Scalese's apparatus
accomplishes testing without destroying the aluminum sheets being tested.
Hence, tests using the apparatus are called 'nondestructive test.'
In his invention rights
questionnaire, Scalese admits that he was 'employed or assigned' to (1) 'invent
or improve or perfect . . . machine[s] . . .' and (2) 'conduct or perform
research or develop[ment] work.' His job description at the time the invention
was made is entirely consistent with the answers in his invention rights
questionnaire. Thus, according to the job description, Scalese was
'[r]esponsible for development of mechanical design of prototypes and proof
kits' and for developing 'original design and engineering specifications for new fabrications and mechanical portions of
test assemblies required for fatigue and wear tests, hydraulic, pneumatic,
related systems tests, and special nondestructive tests' (emphasis added).
Scalese constructed a
model of his invention using 120 hours of his own time. Thereafter, Scalese
spent 40 hours of Government time using Air Force engineering test facilities
to evaluate the model. According to his invention rights questionnaire, 'a
model . . . was made and tested . . . to test the operability or practicability
of the invention . . . [and because Scalese] desired to test the usefulness of
the invention to the Government.' Scalese also conducted tests to determine whether
the invention was commercially useful.
Opinion
The record amply supports
the Air Force's determination that all right, title and interest in the
invention should belong to the Government.
The case raises as an
initial matter the question of: 'When was the invention made?' In this
connection, 'Interpretation and Opinion No. 1' of the Government Patents Board
(Mar. 5, 1951) provides:
'The date on which an
invention is 'made' . . . is interpreted as being the earlier date on which
either (1) the invention is reduced to practice or (2) the essential elements of the invention are
fully and clearly disclosed, in writing, in such manner that the invention can
thereby be reduced to practice by one skilled in the art.'
*2 In the context of this case, the language 'reduced to practice'
means 'actually reduced to practice.'
A machine or apparatus is
generally considered actually reduced to practice when it is made and tested.
Thus, the machine or apparatus is actually reduced to practice when the
inventor is reasonably convinced that the machine or apparatus will perform its
intended function. Scalese's invention rights questionnaire makes it plain that
testing was needed to determine the operability or practicability of the
invention. Hence, in this case, the invention was not 'made' within the meaning
of Executive Order 10096 until the 40 hours of testing took place on Government
time in Air Force facilities.
Since Scalese states in
his invention rights questionnaire that he was hired to conduct or perform
research or development work, [FN3] the Government is entitled to a presumption
under Paragraph 1(c) of Executive Order 10096. See also 37 CFR 100.6(b)(3)
(1985). Scalese has failed to overcome the presumption.
Initially Scalese
contends that is not fair to require an assignment in a case where he spent 120
of his own time to construct a model of the invention and used only 40 hours of
Government time to test the model. However, it is apparent that in actually reducing to practice
the invention it was necessary for Scalese to test the model. The testing took
place on Government time in Government facilities.
Scalese also contends,
seemingly, that the invention is not directly related to his duties. The
difficulty with Scalese's position is that the Executive Order provides that
'[t]he Government shall obtain . . . title . . . in and to all inventions made
by any Government employee . . . which bear a direct relation to or are made in
consequence of the official duties of the inventor' (emphasis added). When an
inventor spends 40 hours of Government time in the course of actually reducing
to practice an invention, it is difficult to see how the inventor can reconcile
the use of the 40 hours while contending that the invention was not 'made in
consequence of the official duties of the inventor.' Moreover, Scalese's job
description makes it plain that his duties included developing original design
and engineering specification for new hydraulic and pneumatic systems tests and
for special nondestructive tests. Eddy current probes are useful for conducting
nondestructive tests on aluminum sheeting used on aircraft and for inspecting
for internal cracks in large- diameter hydraulic and pneumatic cylinders. Supra
n. 2.
Lastly, Scalese argues
that his job description made him responsible for development of mechanical
design prototypes and that the subject matter of the invention 'is not a
mechanical design item.' Rather, argues Scalese, it is an eddy current probe which should be considered
an electronic device. Even if one agrees that an eddy current probe is an
electronic device, Scalese's argument is irrelevant. Scalese's job description
calls for him to develop original design and engineering specifications for
special nondestructive tests. Prior to the time Scalese made the model which he
tested in Government facilities, eddy current probes were used to conduct
nondestructive tests on aluminum sheets in aircraft. It is manifest that such
tests were conducted by the Air Force. Hence, the fact that a Government
employee hired to design mechanical items happens to make an invention related
to an electronic item (partly on Government time) does not mean that the
employee has overcome the presumption of Paragraph 1(c) of Executive Order
10096. The Fourth Circuit noted:
*3 'It matters
not in what capacity the employee may originally have been hired, if he be set
to experimenting with the view of making an invention, and accepts pay for such
work it is his duty to disclose to his employer what he discovers in making the
experiments, and what he accomplishes by the experiments belongs to the
employer. During the period he is so engaged, he is 'employed to invent' and
the results of his efforts at invention belong to his employer in the same way
as would the product of his efforts in any other direction.'
Houghton v. United States, 23 F.2d 386, 390 (4th Cir.), cert
denied, 277 U.S. 592 (1928). See also In re Philips, 230 USPQ 350, 352 (Comm'r.
Pat. 1986).
Decision
The determination of the
Air Force that the Government is entitled to the entire right, title, and
interest in the invention here involved is affirmed.
FN1. Air Force Invention No. 16,035.
FN2. Eddy current probes are useful for detecting fatigue cracks
in aluminum fastener holes, i.e., fastener holes used to secure aluminum sheets
in aircraft. See Rogel et al., Automatic Eddy Current Bolt-Hole Scanning
System, Air Force Exhibit A, p. 2, col. 1 (Oct. 1982). The probes are also
useful to inspect for internal cracks in large-diameter hydraulic and pneumatic
cylinders. Id. at p. 5.
FN3. Scalese also states that he was 'employed or assigned' to
'invent or improve or perfect any . . . machine . . ..'
3 U.S.P.Q.2d 1231
END OF DOCUMENT