Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 SCHRAG ET AL.
STROSSER ET AL.
Patent Interference No. 101,930
October 11, 1991
Final Hearing April 24, 1991
Reciprocating Plunger Crop Baler Having Monitoring System for Checking
Uniformity of Loaded Charges
Application of Thomas G. Schrag, Victor D. Goeckner, Charles F. Hood and Scott A. Morton, Serial No. 06/901,513, filed August 28, 1986.
Patent granted to Richard P. Strosser and Cecil R. Sudbrack on November 25, 1986, Patent No. 4,624,180, filed September 6, 1985, Serial No. 06/773,472.
Donald E. Johnson, Robert D. Hovey, Warren N. Williams, Stephen D. Timmons, John M. Collins, James D. Christoff and Steven R. Dickey for Schrag et al. Oral argument by Stephen D. Timmons
B. Franklin Griffin, Jr., Frank A. Seemar, Larry W. Miller, Darrell F. Marquette and H. Warren Burnam, Jr., for Strosser et al. Oral argument by H. Warren Burnam, Jr.
Before Urynowicz, Boler and Abrams
This interference involves an application of Schrag et al and a patent to Strosser et al. At the time the interference was declared, the Schrag et al application was assigned to Hesston Corporation and the Strosser et al patent was assigned to New Holland, Inc. Schrag et al state (main brief, page 6) that the Strosser et al patent is presenty owned by Ford New Holland, Inc. and that the Schrag et al application is owned by Hay & Forage Industries which is a partnership formed by Hesston Corporation and J.I. Case Company. They further point out that a number of exhibits of record refer to Sperry New Holland which was a predecessor in interest to Ford New Holland, Inc. Herein Ford New Holland, Inc., and Sperry New Holland will be collectively referred to as the "New Holland" and Hesston Corporation will be referred to as "Hesston".
The counts in issue read as follows:
Apparatus for controlling the density of bales of crop material discharged from an agricultural baling machine, said apparatus comprising:
a bale case into which crop material is introduced;
a plunger assembly disposed for reciprocating movement in said bale case;
means for reciprocably driving said plunger assembly in a manner whereby said plunger assembly applies a compactive force to crop material introduced into said bale case;
sensing means comprising at least two sensors mounted in spaced apart relation with respect to said plunger assembly, said sensors being adapted to sense the stress experienced at two spaced-apart locations on said plunger assembly including stress experienced during the application of said compactive force applied by said plunger assembly;
means connected to said sensing means for determining the differential in stress experienced at said spaced apart locations; and
means connected to said differential determination means for providing an indication facilitating the potential equalizing of stress on said spaced-apart plunger assembly locations.
*2 The claims of the parties which correspond to this court are:
Schrag et al: Claims 1 through 5, 9, 10, 12, 13, 16 and 22 through 24.
Strosser et al: Claims 9 through 11.
A method for controlling the density of bales of crop material discharged from a bale case of an agricultural baling machine, said method comprising the steps of:
introducing crop material into said bale case;
reciprocally driving a plunger assembly in a manner whereby said plunger assembly applies a compactive force to crop material introduced into said bale case;
using sensing means comprising at least two sensors mounted in spaced apart relation with respect to said plunger assembly, said sensors being adapted to sense the stress experienced at two spaced-apart locations on said plunger assembly including stress experienced during the application of said compactive force applied by said plunger assembly;
determining the differential in stress experienced at said spaced apart locations; and
providing an indication facilitating the potential equalizing of stress on said spaced-apart plunger assembly locations.
The claims of the parties which correspond to count 2 are:
Schrag et al: Claims 25 through 27.
Strosser st al: Claims 20 through 22.
The issues involved are whether (1) both parties are barred from receiving a patent on the subject matter in issue under 35 USC 102(b) or 102(b)/ 103 due to public use of the invention more than one year prior to the senior party's September 6, 1985 filing date or (2) only the junior party is barred due to public use more than one year prior to their August 28, 1986 filing date but less than one year before the senior party's filing date. Issue one was raised in a preliminary motion filed by Schrag et al and issue two was raised in a preliminary motion filed by Strosser et al. Both motions were deferred to final hearing by the Examiner-in-Chief (EIC) and the parties were given testimony periods within which to adduce more evidence solely on the alleged public use bars (Paper No. 29).
Both parties submitted evidentiary records in the form of affidavit and deposition testimony together with associated exhibits, filed briefs for final hearing and appeared through counsel for oral argument.
THE SCHRAG ET AL MOTION
For the purposes of this motion, Schrag et al concede that Strosser et al reduced the invention of the counts to practice by the summer of 1983 (main brief, page 8) and contend that at least by July 1984 Strosser et al had placed the invention in public use within the meaning of 35 USC 102(b). Strosser et al contend that their use of the invention prior to and for sometime after the critical date of September 6, 1984 was not public use but was experimental use directed toward refining and perfecting the invention. The burden is on Schrag et al to prove their case by a preponderance of the evidence. In re Caveney, 761 F.2d 761, 226 USPQ 1, 3 (Fed.Cir.1985). This standard applies in an interference proceeding even though Strosser et al are involved on a patent. Lamont v. Berguer, 7 USPQ2d 1580, 1582 (BPAI 1988). The burden of persuasion on the question of public use here presented rests on Schrag et al. If a prima facie case of public use is made out, the burden of presenting convincing evidence to counter the showing shifts to Strosser et al. TP Laboratories v. Professional Positioners, Inc., 724 F.2d 965, 220 USPQ 577, 582 (Fed.Cir.1984).
*3 Although the counts at issue are not limited to a baler of any specific size, New Holland at the times here pertinent had equipped a baler adapted to make large rectangular bales with sensing means, means for comparing the stress measured by the respective sensing means and means responsive to said comparison means for providing an indication facilitating equalizing of stress at said sensing locations according to the counts no later than the spring of 1983. The New Holland large rectangular baler (LRB) forms a bale which is approximately three feet high, four feet wide and eight feet long. This baler represented New Holland's first attempt to design and build a large rectangular baler. Hesston has been manufacturing and selling large rectangular balers known as the Hesston Model 4800 since the late 1970's. That baler forms a bale that is approximately four feet by four feet by eight feet; it is not equipped with load sensors and indicators as called for in the counts.
One problem which the invention attempts to solve is that the crop material entering a LRB may tend to congregate along one side of the bale chamber if the operator pulls the baler straight down a window. In such case the bale issuing from the baler would be poorly shaped. Thus, prior to the invention, it was customary for the operator to pull the baler in a weaving manner along the windrow so that the crop material would enter the bale chamber so as to be distributed from one side thereof to the other and back again. In addition to forming a poorly shaped bale, the entry of the crop material primarily along one side of the bale chamber could place undue stress on one of the pair of spaced apart connecting rods driving the plunger, which compacts the crop material in the bale chamber, and thereby damage the connecting rod or cause a shear bolt to fail at some point in the driving mechanism.
The invention in issue in this interference is related to the invention in issue in Interference No. 102,001 between the same real parties in interest. Both interferences are directed to a bale density control system involving some of the same components. This interference relates to the aspect of the control system which activates a left drive light or a right drive light in the cab of the operator's tractor to alert the operator as to which direction to steer the tractor in order to more evenly balance the stress on the connecting rods. The other interference relates to the aspect of the control system which involves changing the size of the bale chamber depending on the resistance to movement of crop material therethrough as measured by the stress on the connecting rods.
New Holland equipped LRB X3796 with a density control system corresponding to the counts in March 1983 (STR 772-783; STX 85, 109). [FN1] A Field Test Report (STX 8; SCX 64) from Johnson to Baldwin dated May 7, 1983 stated with respect to LRB X3796 that the "density control continues to operate without fault." The density control system was installed on a second New Holland LRB prior to May 29, 1983. In a Field Test Report (SCX 33, page 5) from Bandi to Baldwin dated May 29, 1983, the automatic density control system on LRB X3801 was said to be "working normally" once the cables for the light signals were properly connected. The Monthly Summary Report for June 1983 (SCX 31) stated that the density control systems on the X3796 and X3801 machines "are performing as programmed, however, software causes a high, unnecessary pressure rise on X3796 after the switch is turned on." A report (SCX 32) from Bose to Baldwin dated July 20, 1983 stated that the density control on the X3796 baler:
*4 worked very well except for an occasional malfunction in the control that would set the hydroformatic pressure at a constant pressure (usually between 200-500 psi). This happened approximately 6 times in 1200-1300 bales. Turning the control box power off and then on again always corrected the problem. Full pressure (1500 psi) upon startup can be a problem if the operator starts into a heavy tough windrow. There is a chance a flywheel shearbolt would fail before the controller has time to react.
The test group at New Holland had initially scheduled release of the LRB to production on January 6, 1984 (SCX 104--Interoffice Memo dated August 9, 1983; STR 442-443). However, that schedule was later delayed to the extent that the LRB was not actually released to production until April 1985 (STX 55, 103, 104, 105; STR 302-308, 983-988). However, the LRB was assigned a model number -2000- in May 1984 (SCX 42, page 4).
Schrag et al rely heavily on the use of the X3796 LRB by New Holland on the ranch of Richard Day located near Bozeman, Montana during July 1984 to establish their case of public use prior to the critical date. They point out that the machine was painted in its commercial colors when it was delivered to Day's ranch as shown by a photograph (SCX 26-A) of the unit loaded on a flatbed trailer at the premises of the local New Holland dealer. The photograph was purportedly taken shortly before the LRB was moved to the ranch. Schrag et al note that Day operated the LRB on many occasions during that month and observed the drive left/drive right indicators. He said his foreman also operated the machine. Perhaps as many as 30 of Day's neighbors stopped by to see the baler while it was on his ranch. A Hesston mechanic stopped during the month to service a Hesston Model 4800 baler owned by Day and purportedly observed the New Holland baler while he was there.
Day estimated that approximately 600 bales were produced by the baler. He furnished fuel for the tractor and twine for the baler. In return, he was allowed to keep the bales. All but about 15 or 20 of the bales were fed to Day's livestock or sold to commercial customers.
Douglas Gammie, New Holland's product manager for square balers, visited Day's ranch in mid-July 1984 to observe the operation of the X3796 LRB. He also discussed with Day the advantages and disadvantages of the New Holland LRB compared to the Hesston Model 4800. Either Gammie or someone in his group asked Day if he would buy the New Holland machine. Day responded, in effect, that he would be very interested provided the machine was competitively priced and a mechanical means was available for stacking the large bales. With the Hesston Model 4800 then selling for around $50,000, he thought the New Holland LRB would be adequately priced at $30,000 to $35,000. He felt that New Holland had not decided whether to go forward with production of the LRB but that Gammie's group was trying to ascertain if there was a market niche for it (SCR 106-112).
*5 Schrag et al further point out that New Holland used people, like Day, who were usually Hesston Model 4800 owners and not employees of New Holland to operate its LRB at various sites throughout the United States from April 1983 through September 1984 (STR 406-414; STX 5, 16, 23, 24, 28, 39). Other than Day, none of those operators testified in this proceeding. Roy Baldwin, Field Test Supervisor for New Holland from 1980 to 1985 (STR 156), testified that to the best of his knowledge there was not any kind of confidentiality agreement in place between the company and non-company people who were at the sites where the LRB was being operated during the above mentioned period (STR 414-415). Schrag et al argue that the use of non-company operators was commercially motivated as an effort to market the New Holland machine to owners of the Hesston LRB.
In our view, Schrag et al have presented sufficient evidence to establish, prima facie, public use of the subject matter of the counts more than one year prior to the September 6, 1985 filing date of Strosser et al. Accordingly, we must look at the evidence relied upon by Strosser et al to show that the use of the invention prior to the critical date was experimental.
Strosser et al point out that there were three generations of density control systems on the New Holland prototype LRBs, namely, (1) the electro-mechanical control system (March 1983), (2) the experimental serial link communications control system (July 1984) and (3) the pre-production serial link communications control system (1985). The counts in issue read on all three systems. The second generation represents refinements over the first and the third generation represents further refinements over the second. The experimental serial link system was installed on the X3796 LRB during mid-July 1984 while the baler was on the Day ranch. The second generation control system was, therefore, in use for less than two months prior to the Strosser et al critical date. It differed from the electro-mechanical system, inter alia, in that the key pad for entering data was moved from the baler to the tractor cab, the communications between components of the control system in the tractor cab and the components on the baler were transmitted through a serial link rather than discrete wires, the left/right indicators were changed from incandescent bulbs to a liquid crystal display and toggle switches were replaced by membrane switches (STR 851-857). The third generation control system was not installed until after the Strosser et al critical date.
Strosser et al point out that there was always one and often two test analysts with the prototypes while they were being operated at sites not owned by New Holland even though the balers may have been at times operated by non-company people. They contend that the field test reports filed by the test analysts actually working with the prototype LRBs from March 1983 through the critical date show that New Holland was experiencing significant problems with the density control system during that period. A review of the field test reports reveals that this contention is well taken. A list of more than 50 field test reports by exhibit number dating from March 25, 1983 through September 4, 1984 is attached as Appendix II to the Strosser et al brief.
*6 Since Schrag et al consider use of the New Holland LRB on the Day ranch in July 1984 as the most well documented indication of public use of the invention of the counts, we have carefully considered the field test reports from May 1984 to early September 1984 for evidence of statements by the test analysts which might indicate that they were performing some kind of marketing function for New Holland rather than or in addition to their testing function. However, we have been unable to find any indication that they were performing any function other than testing the machines under actual field conditions to see whether they would operate as intended or if modifications were needed to bring them to a level of performance which would be commercially acceptable. With the exception of STX 41, every field test report from May to early September 1984 contains statements regarding one malfunction or another with respect to the density control system or the elements controlled thereby (See STX 28, 29, 30, 31, 32, 36, 37, 38, 39, 42, 43, 26, 44, 45, 46, 47, 48, 50, 51, 71, 72, 73 and 74). The main problem with the density control system during this period was an inability of the bale chamber to maintain adequate pressure on the material being baled resulting in the formation of low density and/or poorly shaped bales. This problem was most prevalent when windrows were light and the moisture content of the material being baled was low. Test analyst Henderson testified that the drive left/drive right indicators functioned inconsistently while the machine was being used on the Day ranch in July 1984 (STR 746). He further stated that during that time the machine would not obtain sufficient tension in dry crop material (STR 750, 756). Test analyst Bose testified that the problems with the tension applied to the crop material by the bale chamber under the control of the density control system persisted through August and into September 1984 (STR 677-680).
Although their supervisor Baldwin said he was not aware that a confidentiality agreement was in place between New Holland and non-company people involved in the testing, the three test analysts who testified (Henderson, Bose and Bandi) all said that it was their practice to inform the non-company people at the test site that the New Holland equipment was experimental and confidential (STR 1052-1053, 1065-1066, 663-671, 1037). Each of them also made clear by his testimony that his work with the LRB during the 1983-1984 period was directed toward working the bugs out of an experimental machine that had not been refined to the point where it was ready for commercial use. We note that Day's testimony is consistent with that of the test analysts in this regard. He said that New Holland was having a problem with the left/right indicators being over-sensitive to the point where they were almost totally ignored, and they were also having problems with the electrical commands going to the hydraulic cylinder operating the bale tensioning chamber. According to Day, the baler had "a fair ways to go after it left us" at the end of July 1984 (STR 49-57, 67).
*7 After considering all of the evidence of record, we conclude that Schrag et al have failed to carry their burden of persuasion in attempting to show that the subject matter of the counts was in public use more than one year prior to the filing date of Strosser et al. When all of the evidence is considered, the Schrag et al prima facie case of public use has been effectively rebutted. In our view, the public exposure of the subject matter of the counts on the New Holland LRB prior to the critical date was incidental to the fact that such a machine must be tested in many different crops and crop conditions throughout the country in order to establish that it is ready for commercial use. The baler was always under the supervision of one or two New Holland test analysts and New Holland did not profit from the use of the baler since the bales produced were left on the farm or ranch where the baler had been tested.
Accordingly, the Schrag et al motion for judgment is denied.
THE STROSSER ET AL MOTION
Strosser et al have the burden of persuasion with respect to this motion. TP Laboratories, supra.
The third generation density control system was built and tested by New Holland in early 1985, the density control specifications were released to production in late April 1985, the Model 2000 baler was listed as a new product in a New Holland company interoffice report in April 1985, a preliminary operator's manual was prepared in June 1985 and a price for the New Holland LRB was determined in July 1985.
New Holland demonstrated its Model 2000 LRB on August 13, 1985 at Chickasha, Oklahoma, on August 21, 1985 at Wiley, Colorado and on August 27, 1985 at Yuma, Colorado. A demonstration was planned for August 23, 1985 at Garden City, Kansas, but the baler was not operated due to rain. The demonstrations were for the purpose of commercially promoting the LRB. The testimony of Bose, who operated the baler during the demonstrations, clearly shows that the baler used in the demonstrations met all of the limitations of the counts in issue (STR 560-562, 564-599, 618). Farmers and ranchers were invited to witness the demonstrations. Four of the demonstrations had at least twenty-five individuals in attendance. Donald Ullom, a dealer from Wiley, testified that twenty individuals in addition to himself attended the demonstration in his area. He said the purpose of the demonstration was to commercially promote the New Holland LRB and that the demonstration was advertised by a broadcast over a local radio station. Ryan Saxton and Dick Holmquist, employees of New Holland, both testified that they witnessed the demonstration in Yuma. Tom Schrag, one of the inventors for the party Schrag et al, saw the New Holland Model 2000 sitting on a truck in a motel lot in Lamar, Colorado on August 18, 1985. He inspected the baler and, without permission, had a copy made of a manual that he found in the twine box. The manual (STX 80) describes the features of performance and specifications for the Model 2000 baler. Schrag testified that he knew the baler was being used in public demonstrations in that part of the country around that time (STR 1326-1327).
*8 Schrag et al argue in their reply brief that although 20 to 30 disinterested people purportedly attended the various demonstrations in August 1985, no disinterested person has come forward to corroborate Bose's testimony that the baler operated at the demonstrations included the invention of the counts. We note, however, that there is no issue here regarding corroboration of Bose's testimony. It is only an inventor's testimony as to his own inventive acts or those of a co-inventor that requires corroboration in order to be entitled to any weight. Borrer v. Herz, 666 F.2d 569, 213 USPQ 19, 22 (CCPA 1981). Bose is neither named as an inventor in the Strosser et al patent nor did he testify as to his own inventive acts. Thus, his testimony need not be corroborated in order to be given consideration. Except for the assertion of a lack of corroboration, Schrag et al have not attempted to discredit Bose's testimony to the effect that the baler operated at the various demonstrations in August 1985 met all of the limitations of the counts. The testimony of the other witnesses is consistent with Bose's testimony to the effect that the demonstrations took place and that the purpose of the demonstrations was to commercially promote the Model 2000 New Holland LRB. On the other hand, the testimony of the other witnesses in no way contradicts Bose's testimony that the baler he demonstrated met all the limitations of the counts. Bose had worked as a test analyst on the New Holland LRB at various times in 1983, 1984 and 1985 and was, therefore, well acquainted with the structure and operation thereof. We have no reason to doubt his testimony to the effect that August 1985 demonstrations involved the use of a baler meeting all of the limitations of the counts of this interference and that the purpose of the demonstrations was to commercially exploit the baler.
Thus, the subject matter in issue is deemed to have been in public use more than one year prior to the August 28, 1986 filing date of Schrag et al; it is, therefore, unpatentable to them under 35 USC 102(b). Accordingly, their claims corresponding to the count are unpatentable under 35 USC 102(b) and/or 102(b)/ 103. Kwon v. Perkins, 6 USPQ2d 1747 (BPAI 1988), aff'd. Perkins v Kwon, 886 F.2d 325, 12 USPQ2d 1308 (Fed.Cir.1989).
Judgment as to the subject matter in counts 1 and 2 is hereby awarded to Strosser et al, the senior party. Richard P. Strosser and Cecil R. Sudbrack are entitled to a patent on claims 9 through 11 and 20 through 22 corresponding to the counts. Thomas G. Schrag, Victor D. Goeckner, Charles F. Hood and Scott A. Morton, the junior party, are not entitled to a patent on claims 1 through 5, 9, 10, 12, 13, 16 and 22 through 27 corresponding to the counts.
BOARD OF PATENT APPELS AND INTERFERENCES
Stanley M. Urynowicz, Jr.
James R. Boler
Neal E. Abrams
FN1. The Strosser et al record will be referred to as STR followed by the page number and their exhibits will be referred to as STX followed by the exhibit number. Likewise, the Schrag et al record and exhibits will be referred to as SCR and SCX, respectively, followed by the appropriate page or exhibit number.
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