Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 SMOLLAR ET AL.
v.
CAWLEY ET AL.
Patent Interference No. 102,136
March 3, 1993
Final Hearing April 7, 1992
Water Slide
Application of Marvin Smollar and Richard B. Mazursky, Serial No. 07/212,897, filed June 29, 1988.
Application of Timothy J. Cawley, Stephen E. Schneider and Richard E. Morrison, Serial No. 07/199,628, filed May 27, 1988.
Before Boler, Parsons and Martin
Boler
Examiner-in-Chief
This interference involves an application of Smollar et al assigned to Marchon, Inc. (Marchon), and an application of Cawley et al, assigned to Kransco.
The count in issue reads as follows:
Count 1
A recreational water toy comprising:
an elongate, flexible, water-impervious slide sheet forming a water slide for body planing and having an upstream end and a downstream end;
a fluid-inflatable ramp adjacent the downstream end of the sheet having a predefined ramp shape when inflated and the ramp including, when inflated, surface expanses supported by the inflation fluid extending across the axis of the slide sheet defining a transition slope that inclines upwardly progressing in a downstream direction from the slide sheet; and
pool rim elements disposed in a downstream direction from the ramp for retaining a pool of water for the reception of a user who planes along the slide sheet and over the ramp.
The claims of the parties which correspond to the count are:
Smollar et al: Claims 1, 7, 12, 13, 17 and 24 through 27.
Cawley et al: Claims 9 through 14.
Both parties filed evidentiary records under 37 CFR 1.653, filed briefs under 37 CFR 1.656 and appeared, through counsel, for oral argument pursuant to 37 CFR 1.654 at final hearing.
Since this interference involves copending applications, the burden is on Smollar et al, the junior party, to prove their case by a preponderance of the evidence. Peeler v. Miller, 535 F.2d 647, 190 USPQ 117 (CCPA 1976). The same burden applies to Cawley et al with respect to proving a date of invention prior to their filing date. Fisher v. Gardiner, 215 USPQ 620 (Bd.Pat.Int.1981).
The evidence presented is deemed to establish that Smollar et al conceived the invention no later than July 17, 1986 and that Cawley et al conceived the invention no later than March 5, 1987. Cawley et al reduced the invention to practice on March 17, 1987 and that Smollar et al neither reduced the invention to practice prior to Cawley et al nor have they shown reasonable diligence from prior to March 5, 1987 to a subsequent reduction to practice. Accordingly, Cawley et al are deemed to be the first inventors of the subject matter in issue. However, Cawley et al are deemed to have placed the invention in public use more than one year prior to the filing date of both parties and therefore the subject matter in issue is not patentable under 35 USC 102(b)/103 to either party. Moreover, Cawley et al are deemed to have placed the invention on sale more than one year prior to the filing date of Smollar et al thereby providing an additional ground for holding the subject matter in issue unpatentable to Smollar et al under 35 USC 102(b)/103.
THE SMOLLAR ET AL CASE FOR PRIORITY
*2 Smollar et al allege a corroborated conception on July 17, 1986 and a corroborated reduction to practice on November 7, 1986. The testimony of the inventors, Smollar and Mazursky, and corroborating witness Pietrus with respect to the illustration shown on the lower right of PX 2 [FN1] is deemed to establish conception of the invention in issue by Smollar et al as of July 17, 1986. PX 2 is a page from one of Smollar's notebooks which was notarized by Pietrus after it had been signed by Smollar and Mazursky in her presence on July 17, 1986. Pietrus says that Smollar explained to her that the drawings on PX 2 represented new waterslide toys; that one of the toys included a long flexible plastic slide sheet, an inflatable pool and an inflatable ramp which slopes upward from the sheet to the pool; and that water would be sprayed on the sheet to permit a child to slide along the sheet over the ramp and into the pool (SR 605-606, 645-647; DX 7).
Cawley et al argue that the illustration shown on PX 2 does not include a ramp which defines a "transition slope that inclines upwardly progressing in a downstream direction from the slide sheet" as set forth in the count. Cawley et al consider the ramp as being only the circular element 5 illustrated in DX 7. However, in our view and as argued by Smollar et al, the ramp includes that portion of the sheet that inclines upwardly in the downstream direction which is supported by the inflatable element 5. Accordingly, we hold that Smollar et al have established conception of the invention in issue as of July 17, 1986.
Smollar et al allege an actual reduction to practice on November 7, 1986 based on a structure built by Budzinski. The device is shown in two photographs (PX 8A and 10A). Budzinski made a drawing (PX 20) prior to building the device. PX 20 is a top view of the structure. On cross examination, Budzinski drew a cross section of the device (DX 6) taken along line 5 of DX 5. Budzinski says that the cross section of the device shown PX 8A and 10A would be comparable to that shown in DX 6.
Cawley et al argue that Smollar et al have failed to establish a reduction to practice in November 1986 because (1) the device relied upon did not include all of the limitations of the count and (2) the device was not tested to show that it would perform its intended function in actual use. We agree with Cawley et al on both points. The device built by Budzinski included a slide sheet and pool but did not include an inflatable ramp extending from the slide sheet to the pool as called for in the count. The device had water inflatable sides along the sides of the slide sheet and water inflatable rim elements around the pool but no ramp between the slide sheet and the front pool rim element. Although the sides and the pool rim elements were filled with water in November 1986, no one attempted to plane along the slide sheet toward the pool. Since the device was not tested, it is unknown whether the front wall of the pool would have prevented the user from entering the pool or if the front wall of the pool would have been able to withstand the impact of the user crashing into it without bursting. Fredkin v. Irasek, 397 F.2d 342, 158 USPQ 280 (CCPA), cert. denied, 159 USPQ 799 (1968); Newkirk v. Lulejian, 825 F.2d 1581, 3 USPQ2d 1793 (Fed.Cir.1987). Accordingly, we hold that Smollar et al have failed to establish an actual reduction to practice in November 1986.
THE SMOLLAR ET AL MOTION TO AMEND THEIR PRELIMINARY STATEMENT
*3 Smollar et al moved (Paper No. 27) to amend their preliminary statement to change their date for an actual reduction to practice from July 22, 1987 to November 7, 1986. The motion was deferred to final hearing (Paper No. 33). Since we have held that they did not reduce the invention to practice in November 1986, the motion is dismissed as moot.
THE CAWLEY ET AL CASE FOR PRIORITY
Stephen E. Schneider, one of the inventors named in the Cawley et al application, demonstrated a mock-up of the invention in issue made by Richard E. Morrison, another named inventor in the Cawley et al application, at a meeting on March 5, 1987. The mock-up included a plastic slide sheet, a ramp consisting of small, medium and large inflatable tubes made from pieces of air mattresses and pool rim elements also made from pieces of air mattresses. Schneider described how Morrison made the mock-up and made a drawing illustrating the process of making the mock-up and the resulting structure (CR 498-515; CX 102, 106, 290, 291). Schneider's testimony has been adequately corroborated by Bryan Ono (CR 927-940; CX 292), Alan Ratskoff (CR 356-366; PX 33) and Alexander Glover (CR 1019-1031; CX 400) all of whom were at the meeting on March 5, 1986. In addition, Bruce P. Moore, a professional patent searcher in Arlington, Virginia, received a telecopy of CX 81 from John McCormack, patent counsel for Cawley et al, on March 17, 1987. CX 81 clearly shows the concept of the invention in issue. Glover testified that McCormack was among those who attended the March 5, 1987 meeting (CR 1028). Thus, we hold that Cawley et al have established conception of the invention in issue as of March 5, 1987.
Ono was assigned the task of making prototype pools for testing due to the fact that he had experience working with vinyl at his father's vinyl fabrication company. With the aid of his father, he made four prototype pools on Saturday March 14, 1987. The pools made by Ono corresponded to the structures illustrated in CX 116A. Figures 1 and 2 of CX 116A show ramps attached to the front pool rim element. In Figure 1, the ramp is shown as being formed by dividing the section attached to the pool into small, medium and large tubes by heat seal lines, running parallel to the front of the pool. Figure 2 is nearly the same as Figure 1 except the heat seals are shown as being in the form of dots rather than lines. Figures 3 and 4 show constructions which do not have a separate ramp section but instead the front pool rim element is illustrated as divided into two sections by a heat seal line. The pool shown in Figure 3 has the front pool rim divided into two equal sections and thus does not actually form a ramp as set forth in the count. However, in Figure 4 the front pool rim is divided into a smaller upstream tube and a larger downstream tube thereby forming a ramp as set forth in the count. Two of the pools made by Ono on March 14, 1987 are in evidence as CX 5A and 6A. CX 6A corresponds to the Figure 3 embodiment of CX 116A and CX 5A corresponds to the Figure 4 embodiment of CX 116A. CX 5 is a photograph of CX 5A and CX 6 is a photograph of CX 6A.
*4 Ono, Morrison and Schneider tested a water toy corresponding to the count on March 17, 1987. The toy included a plastic slide sheet and the ramp/pool combination constructed as shown in Figure 1 of CX 116A. Water was sprayed on the slide sheet and four children who lived nearby were recruited to test the device. They were able to successfully slide along the slide sheet over the ramp and into the pool. The ramp/pool combination of Figure 2 was taken to the test site but was not actually tested because the ramp section burst at the heat seal dots when the ramp was being inflated (CR 945-962, 1001, 557-588, 807-810); CX 114, 116, 117, 118 and 119). The testimony and exhibits are deemed to establish that Cawley et al reduced to practice the invention of the count on March 17, 1987.
Smollar et al have not presented evidence which is specific as to facts and dates as to activity during the critical period from just prior to the Cawley et al March 5, 1987 conception date to their own subsequent reduction to practice. Thus, to the extent that they contend that they were diligent during the critical period, they have failed to establish the same on the record before us. Kendall v. Searles, 173 F.2d 986, 81 USPQ 363 (CCPA1949); Rexroth v. Gunther, 205 USPQ 666, 673 (Bd.Pat.Int.1979). General allegations of continuing activity are not enough to show reasonable diligence. Wiesner v. Weigert, 666 F.2d 582, 212 USPQ 721 (CCPA1981). Accordingly, Cawley et al have established that they are the first inventors of the subject matter in issue.
PUBLIC USE BY CAWLEY ET AL
Smoller et al filed a motion (Paper No. 98) for leave to file a belated preliminary motion under 37 CFR 1.633(a) alleging that the subject matter of the count was in public use more than a year prior to the respective filing dates of both involved applications and thus unpatentable to both parties under 35 USC 102(b). Smollar et al concurrently filed, the motion (Paper No. 99) for judgment. Cawley et al opposed the motions (Paper Nos. 118 and 119). Smollar et al filed replies (Paper Nos. 131 and 132). Cawley et al contend that Smollar et al were aware of the April 2, 1987 focus test in Phoenix in May 1990 when Cawley et al filed their declaration testimony and should have filed these motions promptly thereafter rather than wait until the close of the Cawley et al case-in-chief. However, we find that Smollar et al were justified in waiting until Cawley et al completed their deposition testimony before filing the present motions since the evidence of what appeared to be a public use set forth in the declarations may have been shown during cross examination or redirect to be an experimental use rather than a public use thereby obviating the need to file these motions. Smollar et al have shown sufficient cause (37 CFR 1.645(b)) for belatedly filing the motion for judgment since they were not aware of the focus test in Phoenix until Cawley et al presented their case-in-chief which of course was after the period set for filing preliminary motions.
*5 The motion for leave to file the belated preliminary motion is granted and the preliminary motion is considered hereinafter.
The burden is on Smollar et al to establish by a preponderance of the evidence that the subject matter of the count was in public use within the meaning of 35. USC 102(b) more than one year prior to the filing date of the Cawley et al application. In re Caveney, 761 F.2d 671, 226 USPQ 1 (Fed.Cir.1985). Since the Smollar et al application was filed after the Cawley et al application, any public use bar against Cawley et al would also apply against Smollar et al. To the extent that a prima facie case of public use is made, the burden is on Cawley et al to come forward with convincing evidence to counter that showing. TP Laboratories, Inc. v. Professional Positioners, Inc., 724 F.2d 965, 220 USPQ 577, 582 (Fed.Cir.1984). Where a party argues that the use was experimental, "the experiment to improve and perfect the invention must be the real purpose in such public use and not merely incidental or subsidiary." In re Smith, 714 F.2d 1127, 218 USPQ 976, 983 (Fed.Cir.1983). The fact that the evidence of public use relied upon by Smollar et al comes from the record filed by Cawley et al does not preclude Smollar et al from relying thereon to establish their case. Vogel v. Jones, 486 F.2d 1068, 179 USPQ 425, 431 (CCPA1973).
In late February 1987, Kransco, the assignee of Cawley et al, hired Gardner Communications, Inc. (Gardner), a full service advertising agency, to assess the fun value of potential new products called the Big O and the Slip 'N Splash versus a product called the Slip 'N Slide that Kransco was then marketing (CX 58). Slip 'N Splash is Kransco's name for the invention in issue. Sarah Black and Gayle S. Geary of Gardner arranged for a focus test on April 2 and 3, 1987 at the Phoenix Christian Grade School. The focus test was to involve having several groups of children play on the toys on April 2, 1987. On March 16, 1987, Geary prepared a memo (CX 59) setting forth the objectives of the focus test in which she stated in part:
Slip 'N Splash and Big O Inflatable Sticks are potential new product additions being considered for the Wham-O line. The overall research objective is to evaluate the appeal of both products in order for Kransco to decide whether or not to pursue product development/acquisition.
Slip 'N Splash is essentially an upgrade of Slip 'N Slide, an established product in the marketplace. The primary research objectives are:
-Evaluate product appeal with children primarily and mothers secondarily.
-Evaluate product features to aid final design development.
-Provide directional information on pricing, communications, etc.
The objectives further provided the Slip 'N Splash and Slip 'N Slide should be used by four groups of children ages 6-11 with two groups of five in ages 6, 7, 8 and two groups of five in ages 9, 10, 11. Each group was to use the toys for 20 minutes and then be interviewed for 30 minutes as to (CR 6, 18; CX 59, page 3):
*6 -Product likes: Slip 'N Slide
Slip 'N Splash
-Product dislikes: Slip 'N Slide
Slip 'N Splash
-Fun: Compare two slides
-Request interest
-Product features
--Pool: shape, depth
--Length of slide
--Sled
-Age appropriateness
Focus groups of mothers of children in ages 3 through 11 were to be interviewed the following day, April 3, 1987. The mothers were not to be the mothers of the children who were to participate in the test on April 2, 1987. Half the mothers were to be mothers of boys and half mothers of girls and have a household income in excess of $25,000. The mothers were to be divided into three groups of 10 and were to be asked the same questions as the children plus their purchase interest and their purchase interest with various price points.
CX 60 and 61 are memos prepared on March 19, 1987 by Geary setting forth screening requirements for the mothers and children, respectively, which were to be used to determine if the mother or child should be permitted to participate in the test. Any mother was excluded if, inter alia, she did not have access to a grassy area for her child to play on or if her household income was less than $25,000 per year. Any child failing to meet either of those conditions was also excluded. CX 62 was prepared by Geary on March 24, 1987 and basically repeats some of the same topics referred to above with respect to CX 59 regarding the method of testing and the information to be gathered at the focus test.
In March 1987, Geary hired an independent consultant, Miklos Research Associates, Inc. (Miklos) to do the interviewing of the mothers and children (CR 7, 19). Shortly thereafter Miklos sent Gardner a three page document (CX 64) setting forth questions to ask the children and an eight page document (CX 65) setting forth questions to ask the mothers. Miklos hired Fieldwork Phoenix to locate a facility for the focus test and to recruit test participants.
The focus test on April 2, 1987 was attended by Geary, Black and Gretchen Gardner, all from Gardner; Pam Miklos and her assistant Meg, from Miklos; Tim Cawley, Jack Gyben and Dick Morrison, all from Kransco; Nancy Lynn Lindemulder, from Fieldwork Phoenix; John E. Dykstra and Alan S. Weemhoff, custodian and principal, respectively, of the Phoenix Christian Grade School. None of the Kransco employees, Cawley, Gyben or Morrison, testified. Cawley and Morrison are named inventors on the Cawley et al application. Morrison was the only person from Kransco's R & D department to attend the focus test. Cawley and Gyben were from Kransco's marketing department (CR 931, 1002, 1037). They had all left Kransco by the time Cawley et al were provided with a period for taking testimony in this interference (CR 1020-1021).
Morrison was assigned the task of seeing to it that the products to be tested at the April 2, 1987 focus test arrived at the site. Those products included the three prototype pools made by Bryan Ono and his father which were still operational after the March 17, 1987 test (CR 591-592, 975-976). Dykstra helped to inflate the pool and arrange the slide for the focus test (CR 13) and Weemhoff took photographs of children using the Slip 'N Slide and Slip 'N Splash and of a group of children being interviewed (CR 58; CX 8, 9 and 10). Ono recognizes the ramp/pool shown in CX 8 as being the same as the CX 5A ramp/pool which he and his father had made prior to the March 17, 1987 test (CR 976-978). Ono says he saw a videotape of the April 2, 1987 focus test which showed kids using the Slip 'N Slide with the splash pool at the end of it (CR 977). Ono was not sure how the videotape got to his department (R & D) but said it may have come via marketing since the focus group is handled through marketing (CR 977, 1002). Schneider says the purpose of the focus test was "to get consumer input and feedback from mothers and children on a longer slide and on a slide, ramp, pool combination and Big O building sticks." (CR 591).
*7 Geary and Black filed a report (CX 66) dated April 10, 1987 in which they stated that the "Slip 'N Splash was very successful among the children. They loved using the slide and ending with a splash in the pool." The report lists some positive and negative reactions from the kids. The kids liked the pool because "it was wetter and fun to splash in.... it was a goal to reach and gave the kids a sense of success combined with surprise.... it was more fun."
Geary and Black summarized their report by saying the Slip 'N Splash "is a go" with the recommendations that the slide be at least 30 feet long, the pool be longer and deeper and the price be kept under $29.95.
Gyben, who did not testify, also filed a report (CX 67) with, inter alia, Glover and Schneider. He said "[t]his recaps results and proposed next steps from consumer research on two possible new products: Slip N' Splash and Big O.... The research was done in Phoenix on April 2 and 3, and was fielded to analyze the response of kids and mothers to the two products and to explore possible variations.... Slip N' Splash was enthusiastically received by both kids and mothers, who enjoyed and appreciated the benefits of the splash pool and sleds.... Topline conclusions were pretty clear: 1. Move forward to develop Slip N' Splash for 1988 as a 30' foot slide with splash pool and sleds."
On May 4, 1987 and May 13, 1987, respectively, Morrison requested quotes from two prospective manufacturers for the cost of producing 150,000 pools with attached ramps (CX 146, 149). According to Schneider, the manufacturers would provide the pool and ramp and Kransco would attach the Slip 'N Slide (CR 630- 631; 640-642).
In our view, the above evidence is sufficient to establish a prima facie case of public use by Cawley et al on April 2, 1987.
Cawley et al contend that the test was an experimental use. They note that Black and Geary stated in their declarations that the ramp was adjusted during the test on April 2, 1987 by using different sizes of Big O tubes to form variations in the ramp and that a flap may have been connected to the front pool rim to cover the Big O tubes (CR 10, 15). This testimony is discounted since nothing was said in their report (CX 66) about any such adjustments to the ramp. Moreover, Ono and Schneider testified that the only pools that Kransco had at the time of the test were the three remaining pools made by Ono and his father corresponding to Figures 1, 3 and 4 of CX 116A, none of which had a flap attached to the front thereof. Moreover, there is no evidence in the record that Morrison, who was the only R & D person at the test, reported any such experimentation back to Schneider or Ono. According to the report (CX 66), some of the children responded to the interviewer with negative comments such as the pool was "too short" or "too shallow" or the slide was "too short" or there was "not enough water in pool." Similar negative comments were noted by Gyben on page 2 of CX 67. In addition, under the heading "Bump", he says "[w]e need to find a better way to connect the slide and pool, and development of the bump will probably be part of that process. The inflatable bump (Big O sausage) worked well in the research, but is not a permanent solution." As noted above Gyben did not testify, and no one else was asked to explain what Gyben was attempting to convey in this passage in his report (37 CFR 1.671(f)).
*8 In our view, the main purpose of the focus test on April 2 and 3, 1987 was market testing where the assignee was trying gauge consumer demand for the invention in issue. The purpose of the test was commercial exploitation and not experimentation. In re Smith, supra. The experimentation, if any, was merely incidental to the commercial purpose. The so-called negative comments were merely suggestions on how to fine tune the final commercial version of the invention. Accordingly, we hold the subject matter of the count in issue is unpatentable to both parties under 35 USC 102(b).
OFFER TO SELL BY CAWLEY ET AL
Cawley et al filed a motion (Paper No. 48) for leave to file a belated preliminary motion (Paper No. 47) under 37 CFR 1.633(a) on the ground that the subject matter in the count in issue is unpatentable to Smollar et al due to an on sale bar under 35 USC 102(b). Smollar et al have filed oppositions (Paper Nos. 56 and 57) and Cawley et al filed a reply (Paper No. 66). The declarations of McCormack and Schneider (Paper No. 48; CR 75-81) are deemed to establish that Cawley et al were not aware of the possible on sale bar until April 1990 when a further search of Kransco's record uncovered additional files of Morrison that were not found in a search conducted prior to the time for filing preliminary motions. Schneider points out that Morrison kept files in a number of different places at Kransco's San Gabriel facility and that the additional files were found in April 1990 due a cross referenced note to another file. The additional files included a memo (CX 76) from Morrison to Ratskoff dated June 19, 1987 regarding the differences in the pool, ramp, sleds and slide that Ratskoff would be showing K Mart compared to what Kransco was planning on producing. McCormack found the memo (CX 76) in Morrison's file when reviewing the file on April 14, 1987 and in discussions with Morrison and others thereafter found additional evidence of an offer to sell the subject matter of the count on June 24, 1987. Cawley et al are deemed to have shown sufficient cause (37 CFR 1.645(b)) why the motion for judgment was not filed during the period set for filing preliminary motions and are considered to have timely filed the motion after discovering evidence of a possible on sale bar applicable against Smollar et al. Accordingly, the motion for leave to file a belated motion for judgment is granted and the motion for judgment is considered hereinafter.
Alan S. Ratskoff testified that on June 24, 1987 he offered to sell the Slip 'N Splash product to K Mart for the 1988 season at a cost of $19.75 (CR 51-56; CX 79, 72, 74, 75, 76, 76A, 77). The Smollar et al application was filed one year and five days later, June 29, 1988. Ratskoff was accompanied at the sales presentation on June 24, 1987 by Michael E. Nipke and Paul L. Bairstow, both of whom testified that an offer to sell the Slip 'N Splash product for $19.75 to K Mart for the 1988 season was made on that date. Glenn J. Gross, Senior Vice President of Sales and Sales Administration, quoted Ratskoff a price of $19.75 for 1988 for the Slip 'N Splash product on June 18, 1987 (CR 24-26; CX 70, 71, 72). Photographs of a prototype made by Hy N. Zornes and a videotape of the April 2, 1987 focus test were shown to John Spinosi of K Mart during the presentation (CR 2, 45-46, 69-70, 986-989; CX 27, 76A).
*9 Smollar et al contend that the sales presentation may have actually been made in July 1987 rather than on June 24, 1987 but they have not established during cross examination that the testimony of Ratskoff and Bairstow regarding their activities on June 24, 1987 is not credible. Nipke was not cross examined. We hold that the subject matter of the count is barred under 35 USC 102(b) to Smollar et al on the additional ground that the subject matter was on sale more than a year prior to their filing date.
NEW COUNT PROPOSED BY SMOLLAR ET AL
In response to the Cawley et al motion for judgment on the ground that the subject matter had been on sale more than a year prior to the filing date of Smollar et al, they (Smollar et al) filed a motion to redefine (Paper No. 55) by adding a new count to the interference. Cawley et al filed an opposition (Paper No. 65) and Smollar et al filed a reply (Paper No. 74). The proposed count differs from the present count only in requiring the "ramp being permanently attached to the slide sheet" and the "pool being permanently attached to the ramp...." Both the structure that was held to have been in public use on April 2, 1987 and the device offered for sale on June 24, 1987 had the pool permanently attached to the ramp and the slide sheet releasably attached to the ramp. Cawley et al contend that the proposed count would have been obvious from the present count to one of ordinary skill in the art in the sense of 35 USC 103 in view of Diemond et al (U.S. Patent No. 3,497,877), Chase (U.S. Patent No. 3,668,715) and/or Silltoe (U.K. Patent No. 2,110,944) (CR 96-114). In our view, it would have been obvious to permanently attach, i.e., sew or heat weld, the slide sheet to the ramp in order to shorten the time taken to set up the toy for its intended use as well as to preclude the sheet from becoming inadvertently detached from the ramp during use and exposing the user to possible injurious contact with releasable fastening means such as the ground engaging staples shown in CX 27 and 76A even in the absence of the secondary references cited by Cawley et al. However, Silltoe discloses a water toy where the slide sheet extends as one piece to and through the pool or splash area 11. Silltoe is deemed to provide further evidence that it would have been obvious to permanently connect the slide sheet to the ramp set forth in the count. Thus, the proposed count would have been obvious from the present count and Smollar et al are not entitled to have it added to the interference (37 CFR 1.601(n) and 1.603)).
The motion is denied.
THE CAWLEY ET AL MOTION TO SUPPRESS
Cawley et al have filed a motion (Paper No. 176) to suppress some of the testimony and exhibits filed by Smollar et al. Smollar et al have filed an opposition (Paper No. 184). The request to suppress the testimony of Budzinski referred to on page 3 and the testimony of Smollar referred to on page 5 of the motion is granted as being directed to improper rebuttal testimony. The testimony relates to an attempt to bolster the Smollar et al case-in-chief rather than to rebut the Cawley et al case-in-chief. The request to suppress PX 16A-16I and 18 for lack of corroboration and identification is denied since the arguments presented relate to the weight to be given the exhibits rather than to the admissibility thereof. The request to suppress the testimony of Smollar at SR 7, paragraph 7, lines 8-15 and SR 16, paragraph 11, lines 5-6, SR 18, paragraph 13, lines 2-4 as hearsay is denied since it relates to activities of the witness. The request to suppress the testimony of Smollar at SR 102, paragraph 3, lines 1-3 and 9-14 is granted with respect to what Mazursky and Budzinski purportedly told him. The request to suppress Mazursky's testimony at SR 262, paragraph 5, line 4-7, SR 263, paragraph 9, lines 1-3, SR 265, paragraph 12, lines 1-5 as to what Smollar explained or stated or asked is granted. The request to suppress the testimony of Budzinski at SR 418, paragraph 3, lines 2-7 is denied insofar as it relates to possession of conception by Smollar at the time of the meeting referred to. The request to suppress the testimony of Budzinski at SR 419, line 19 and SR 420, line 5 is granted to the extent that it relates to someone other than the witness. The request to suppress the testimony of Pietrus at SR 605, paragraph 4, lines 3 and 4 is granted but the request is denied with respect to the testimony at SR 606 since that testimony relates to possession of conception by Smollar at the time of the meeting referred to.
THE SMOLLAR ET AL MOTION TO SUPPRESS
*10 Smollar et al filed a motion (Paper No. 169) to suppress some of the testimony and exhibits filed by Cawley et al. Cawley et al have filed an opposition (Paper No. 178) and Smollar et al have filed a reply (Paper No. 185). The request to suppress the testimony of Ono at CR 927, 934, 1021 and 1025 is denied since it relates to possession of conception by the inventors at the time in question. The request to suppress the cited testimony of McCormack and Schneider at CR 75-77 and 79-80 as hearsay is granted. The request to suppress Schneider's testimony at CR 849 as being in response to a leading question is denied since the question did not suggest the desired answer. The request to suppress the testimony of Ratskoff at CR 52 as hearsay is denied since it relates to activities performed by the witness. The request to suppress the testimony of Gross at CR 25 as to what Ratskoff said on the grounds of hearsay is granted. The request to suppress the testimony of Nipke at CR 43 as hearsay is denied since it relates to activities performed by the witness. The request to suppress the testimony of Bairstow at CR 463-464 as being in response to leading questions is denied since the question merely summarized his previous testimony. The request to suppress Bairstow's testimony at CR 464 and 1134-35 as being not responsive to the question is granted. The request to suppress Zornes' testimony at CR 66-68 as hearsay is granted with respect to what Morrison said. The request to suppress CX 217 and 218 and Black's testimony with respect thereto is granted since the exhibits were not listed as required by 37 CFR 1.673(b). The request to suppress the handwritten notes on the copy of U.K. Patent No. 2,110,994 to Silltoe at CR 92-95 is granted. Smollar et al do not object to the copy of the Silltoe patent at CR 111-114.
JUDGMENT
Judgment as to the subject matter in the count in issue is hereby awarded against both Smollar et al, the junior party, and Cawley et al, the senior party. Marvin Smollar and Richard Mazursky are not entitled to a patent containing claims 1, 7, 12, 13, 17 and 24 through 27 corresponding to the count. Likewise, Timothy J. Cawley, Stephen E. Schneider and Richard E. Morrison are not entitled to a patent containing claims 9 through 14 corresponding to the count.
BOARD OF PATENT APPEALS AND INTERFERENCES
James R. Boler
Examiner-in-Chief
Marion Parsons, Jr
Examiner-in-Chief
John C. Martin
FN1. Since the parties have referred to the Smollar et al direct examination exhibits as "PX" followed by the exhibit number and to the cross examination exhibits as "DX" followed by the exhibit number, we likewise so designate the Smollar et al exhibits. The Smollar et al record is referred to as "SR" followed by the page number. The Cawley et al record and exhibits are referred to as "CR" and "CX", respectively.
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