drawings of the plaintiffs' application demand the utilization of a universally movable tracer mechanism.
But there is another source of expert knowledge on which the Court can and must rely. That source, of course, is the Patent Office itself. Their counsel to the Court, embodied in the opinions of the Examiners and Board of Appeals, and tendered by counsel in oral and written argument, must be accorded great weight. The question presented to the Court is a technical one. It is a question which the Patent Office is pre-eminently qualified to solve. The rule is that while the judgment of Patent Office officials is not absolutely binding on the Courts, it is entitled to great weight, and is to be overcome by clear proof of mistake. Morgan v. Daniels, 153 U.S. 120, 14 S. Ct. 772, 38 L. Ed. 657.
The defendant does not deny that a universally mounted tracer will operate in the plaintiffs' machine. Their position is that the application as filed did not inherently disclose this type tracer since it is not clear that other types of tracers will not perform in the manner described in the application.
In the absence of any showing on the part of the defendant that there is some other type tracer that would operate in the plaintiffs' patent, the Court would have to hold that the plaintiffs have sustained their burden of proof in this case. The defendant, however, has argued that as an alternative to a universal mounting for the tracer, a tracer mounted to pivot in a single plane at an angle to the work axis would operate to carry out the functions described for the tracer shown in the original application. They have cited a patent granted to one Von Zelewsky, Number 2,437,570, to establish their argument that a pivoted tracer will serve the requirements of the plaintiffs' application. Because of its importance to a proper decision of this case, the Court has examined the Von Zelewsky patent with considerable care. This examination leads the Court to the conclusion that a pivoted tracer could not be employed in the structure disclosed in the plaintiffs' application. It is clear from a reading of Von Zelewsky that it was not intended in that patent to employ a single cutting tool to cut rising shoulders. On the contrary, a pair of cutting tools are required to reproduce the template pattern on the work piece if a rising shoulder is encountered. This is due to the fact that a pivotally mounted tracer swingable in a single plane will not cut rising shoulders. The plaintiffs' application, on the other hand, manifestly contemplates that rising shoulders be reproduced on a work piece through the utilization of a single cutting tool. Since the plaintiffs' application demands that which cannot be accomplished by a pivotally mounted tracer, the Court cannot but hold that the defendant has failed to demonstrate that another type tracer will operate under the original specifications and drawings of the plaintiffs.
Since the testimony, expert and unrefuted, before the Court is to the effect that one skilled in the art would know from the original application that the tracer mechanism called for in the limitation of the claim here under consideration is to be universally movable to the exclusion of any other type mechanism, the Court concludes that there is sufficient disclosure in this limitation.
Both limitations of the plaintiffs' claim challenged by the Patent Office sufficiently disclose that which is claimed. Consequently, the Court holds that the plaintiffs are entitled to a patent. In taking this step, this Court, which has the greatest respect for the competence and judiciousness of the personnel of the Patent Office desires to point out that its decision is based on a record considerably more favorable to the plaintiffs' case than was the record before the defendant. The statute which provides for this review grants the plaintiffs a trial de novo in the District Court. The plaintiffs have taken full advantage of this provision and presented their case in a far more adequate and persuasive manner to this Court than they did before the Patent Office.
Findings of fact and conclusions of law being embodied in the text of this opinion, they are not formally set forth. According to the stipulation entered into by counsel at the trial of this cause, the Court finds and adjudges that Claim 38 was properly rejected by the Patent Office. As to Claim 36, judgment will be entered entitling the plaintiffs, jointly, to Letters Patent of the United States for the invention specified in that claim.
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