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TURCHAN v. MARZALL

June 13, 1952

TURCHAN et al.
v.
MARZALL, Commissioner of Patents



The opinion of the court was delivered by: TAMM

In this action the plaintiffs seek the issuance of a patent. The claim involved has been finally rejected by the Board of Appeals of the Patent Office, and the plaintiffs have come to this Court to have the decision of the Patent Office reviewed. They are entitled to do so under Section 4915 of the Revised Statutes, as amended. Section 63, Title 35, U.S.C.A.

 Although the plaintiffs presented a series of claims to the Patent Office, their complaint filed in this Court alleged that only two claims, Number 36 and 38, were improperly rejected. According to a stipulation entered into before the hearing of this case, however, counsel agreed that claim Number 38 was properly rejected by the Patent Office. Thus, the only claim to be examined by the Court is Number 36. A statement of this claim follows:

 '36. A contour turning lathe for reproducing tapers, curves, right-angle shoulders or undercut shoulders on the work in conformity with the profile of a template, including a headstock and a tailstock for holding and turning the work, a carriage, means for guiding the carriage longitudinally of the work, means for moving the carriage at a constant rate of advance, a template disposed in fixed position aligned with the axis of the work with its profile in a plane parallel with the cutting plane, a top slide, a cross slide movably mounting the top slide on the carriage whereby the top slide is adapted to reciprocate at an angle to the axis of the work acute in the direction of carriage travel, tracer mechanism mounted on the top slide having a finger which engages the template and is universally movable relatively to the tracer mechanism in the plane of said profile and is responsive to relief and impedance from the template, including longitudinal impedance, and a hydraulic system including a motor for reciprocating the top slide, said system so connecting the tracer and the motor that actuation of the tracer by the template operates the motor to move the top slide to neutralize the actuation of the tracer, thus reproducing on the work the profile of the template.'

 The above claim was rejected by the Patent Office solely on the ground that the plaintiffs in their original application for letters patent failed to disclose the subject matter set out in this claim. Although the Examiner rejected the claim on the further ground of lack of inventiveness, the Board of Appeals overruled the Examiner on this issue, specifically holding that the claim was patentable over the prior art of record. The issue before the Court, therefore, is strictly one of disclosure.

 It is the position of the Patent Office that the plaintiffs' application as filed did not include a disclosure of two limitations, which form parts of claim 36. These limitations, as quoted from the claim, are:

 1. '* * * a template disposed in fixed position aligned with the axis of the work * * *'

 2. '* * * tracer mechanism mounted on the top slide having a finger which engages the template and is universally movable relatively to the tracer mechanism in the plane of said profile * * *'

 The plaintiffs maintain that the first of the above limitations is explicitly disclosed in the original application in that the term 'aligned' is sufficiently broad to include the relationship of parts shown in the original drawings and that the meaning of this term is clear to those skilled in the art. With regard to the second limitation, the plaintiffs contend that the specification, as originally filed, did disclose a tracer which is universally movable.

 The Court turns first to the limitation of the claim which sets forth, '* * * a template disposed in fixed position aligned with the axis of the work * * *.' The key word in this phrase is 'aligned'. The plaintiffs contend that it was sufficiently disclosed in their original application that this word was used as a synonym for the word 'parallel'. The defendant denies that this is the case. An important phrase of the defendant's argument is that the accepted 'common usage' definition of 'align' is 'the placing of things in a line' and, consequently, this limitation calls for a linear registration of the axis of the template and that of the workpiece. In support of this definition the Patent Office has cited Webster's Collegiate Dictionary, Third Edition.

 As originally filed, the word 'align' was used in the specification of the applicant. It was there stated, 'In practice it is necessary to align the axis of the template or model with the axis of the work piece'. The plaintiffs seek to establish disclosure on the basis of both positive and negative arguments. That is, they have presented to the Court evidence which tends to prove affirmatively that the word 'align' sufficiently discloses the concept of a parallel disposition and, on the other hand, they have attempted to demonstrate that the interpretation of this word suggested by the defendant could not be accurate in the setting of the plaintiffs' application.

 In establishing their position, the plaintiffs point out that, as originally disclosed, there was set forth a lathe having a bed, a slidable carriage, a cross slide mounting on a slidable carriage and movable at right angles thereto, and a third or angular slide mounted on the cross slide and movable angularly to the length of the lathe bed. These slides were positioned one above the other in a parallel relationship. In all of the claims originally presented, the cutter carrying or top slide, which is the angular slide, was defined as being 'in alignment' with the lower slide. From this, the plaintiffs argue that it is clear that they were using the word, 'aligned', as a synonym for the word, 'parallel'. This argument appears to the Court to be sound. In resolving any ambiguity of meaning existing in the language of a claim, it is accepted practice to look to the specification and drawings for enlightenment. When that is done in this case, one learns that the word 'aligned' of the claim means parallel. Although the Patent Office has relied on the dictionary meaning of the word, it does not appear to the Court that the definition of the word, 'align', found therein is in any sense controlling. As was stated in Jones v. Sykes Metal Lath & Roofing Co., 6 Cir., 1918, 254 F. 91, 96:

 '* * * a patentee is at liberty to supply his own dictionary; the terms of a claim should be taken in the same sense given in ...


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