(dissenting).
The majority opinion seems to depart from the established legal principles regarding what is necessary for an inventor to prove in order to establish a reduction to practice. In the majority opinion this departure is somewhat obscured by and confused with the question of the burden of proof which must be met by a junior party. Here certain facts are well established by a clear preponderance of the evidence. The record establishes that during the period between August 25 and September 5, 1950, certain tests were run by Carlton under Walkup’s direction. There is no question of proof as to what these tests demonstrated. Thus, as I see it, the only issue here is whether as a matter of law these tests established a reduction to practice.
This court recently reviewed the legal requirements as to what is required to establish a reduction to practice and in Schnick v. Fenn, 277 F.2d 935, 939, 47 CCPA 1174, 1180-1181, said:
“ * *- * we do not. believe that an actual reduction to practice necessarily requires the making of a commercially acceptable embodiment * * * Tansel v. Higonnet [et al.], 215 F.2d 457, 42 CCPA 732 * *, if the testing of it shows that it will perform its intended function. The amount of testing necessary depends upon the facts of the particular case, Lustig v. Legat, 154 F.2d 680, 33 CCPA 991 * * * #•»**#*
“ * * * we know of no precedent which requires that proven methods of mass producing a device must exist before a reduction to practice is established. On the contrary, we believe the law to be that reduction to practice is proved when there is corroborated testimony that the device actually performed the function for which it was designed, * *
Here the invention in issue relates to an improved device for applying a known electroseopic developer powder to a known record receiving medium which carries a latent electrostatic charge image. The proofs are abundantly clear that such a device was constructed and tested under appellant’s direction. The majority finds, however, that Carlton’s notebook entries “do not demonstrate that the experiments described therein met with such success as to constitute a reduction to practice.”
The majority opinion also states:
“ * * * That Carlton was not
without reservations whether his experiments demonstrated the practicability of brush development, is indicated by the following statements :
“This is not a satisfactory method of adding powder to the brush but no other simple way of adding powder was available.
■Jr * *JJ -Jr
“Development with fur will be practical for a xerox copier if it is possible to develop a denser image.” [Emphasis added by majority.]
*808In discussing the Battelle report to I-Ialoid, the majority finds that it “fails to substantiate Walkup’s case for reduction to practice,” apparently because of the concluding comment in the report that:
“A number of improvements will be necessary before brush development is practical. However, the results of these preliminary experiments are promising. Additional work should be done to improve the results obtained and to devise better means of feeding powder to the brush.”
The majority also adopts the view of the board as to the quality of the samples whieh it characterized as being “pale, partial and erratic.” There is no dispute concerning the fact as to the quality of the samples. The issue, however, is whether the admittedly imperfect samples are evidence of a reduction to practice in whieh a fur covered cylindrical roller actually transferred the developer powder to the record receiving medium and whether as a result of this transfer the latent electrostatic charge image was in fact developed.
Here the invention at issue involves the discovery of what appears to be a previously unknown electrostatic phenomenon which was embodied in the device tested. It is my opinion as a matter of law that it is without significance that the machine “operated with something less than commercial printing quality.” Cf. Tansel v. Higonnet et al., 215 F.2d 457, 42 CCPA 732.
In the Tansel case this court characterized the invention as “a fundamental advance in the printing art whereby text or copy * * * is composed direct on film.” (215 F.2d at 458, 42 CCPA at 734.) Higonnet rested upon his record date, a French filing on June 2, 1945. Tansel’s rather crude machine was built beginning in 1943 and final successful testing thereof culminated in January 1946. This court held that Tansel had reduced the invention to practice in and by his machine, Exhibit 59, despite the fact that the initial photoelectric controls were changed midway of the test to slower and less efficient mechanical controls to avoid “contact bounce.” This court held
“The capacity to perform in the manner intended for the machine in issue, though only in a crude way, is sufficient to discharge the inventor’s burden of proof for actual reduction to practice. * * * ” (215 F.2d p. 463, 42 CCPA p. 740)
The positions previously taken by this court in Schnick v. Fenn, supra, and in the Tansel case have recognized the principle stated in Section 129 of Robinson, Treatise on the Law of Patents, that:
“Reduction to Practice 'does not Require Mechanical Perfection or Incapability of Improvement.
“ * * * it is not necessary that the art or article should be mechanically perfect. Mechanical perfection is the achievement of the artisan rather than the inventor, and does nothing to develop or to illustrate the idea of the invention. Possibilities of greater excellence in shape, location, arrangement, material, or adjustment do not affect the fact that the inventor has produced a practically operative means, and all such possibilities are legally embraced in what the inventor already has accomplished. Nor it is necessary that the invention, as a means, should be incapable of further improvement by the exercise of additional inventive skill * *
In considering whether the tests run on Carlton’s laboratory machine amounted to a reduction to practice of the invention at issue, the evidence clearly shows that only a single scientific fact needed to be established by these tests in order to convince men skilled in the art that the machine “actually performed the function for which it was designed.” This fact was whether development would occur with reasonable clarity when the device was used in the manual making of prints. All that remained to be de*809termined, beginning on August 25, 1950, was whether the same brush which had been used previously for cleaning the plates when supplied with powder, and rotated in contact with the same or similar xerographic plates bearing a latent electrostatic charge image, would transfer the powder to the plate so as to develop its latent image with reasonable clarity. This is the fact which I would find was clearly demonstrated in the Carlton tests of August 25-September 5, 1950.
The board’s characterization of the copy matter actually produced in Carlton’s tests as “pale, partial and erratic,” overlooks the fact that the copy matter actually is clean, completely legible, affords good contrast between white and black areas, and is almost completely free from background smudging. I would therefore accept these samples as proof that Carlton’s device “actually performed the function for which it was designed” within the principle stated in Schnick v. Fenn, supra.
The indication of a standard of excellence by which to evaluate the results of a proven reduction to practice which runs through the majority opinion will, it seems to me, but further confuse the legal issue as to what constitutes sufficient proof of a reduction to practice. The premise of the majority seems to me to ignore what has long been the rule as stated by this court in Leichsenring, Jr. v. Freeman, 103 F.2d 378, 382, 26 CCPA 1153, 1158, that it was sufficient if:
“It was clearly demonstrated * * that appellant’s device involved the generic principle, and that it worked for a sufficient period of time to show that the application of the principle solved the problem. * * ”
Certainly, we should not here ignore the sound principle stated in Mergenthaler Linotype Co. v. Press Pub. Co., 57 F. 502, 506 (C.C.S.D.N.Y.1893), that “* * * It would certainly be
a novel doctrine to deny to an inventor the fruits of a broad invention because the machine which first embodied it was rudimentary in character and failed to do as good work as improved machines made subsequently. None of the great inventions could survive such a test. Ten years after the invention of Howe, the machine first made by him would hardly have satisfied the least exacting sewing woman. The Dodds and Stephenson locomotive would, only a short time after its construction, have been discarded as behind the age even by the savages of Tasmania. The telephone of Bell is not the perfected telephone of commerce, the Morse telegraph is looked upon to-day as an interesting antique. And yet, it would be an unheard-of proposition to withhold from these illustrious men the credit they deserve because their machines were crude at first and were improved afterwards.
* * -x- ”
I would, therefore, apply to the proofs here the legal principle stated by the Supreme Court in Hildreth v. Mastoras, 257 U.S. 27, 34, 42 S.Ct. 20, 23, 66 L. Ed. 112 (1921):
“ * * * It is not necessary, in order to sustain a generic patent, to show that the device is a commercial success. The machine patented may be imperfect in its operation; but if it embodies the generic principle and works, that is, if it actually and mechanically performs, though only in a crude way, the important function by which it makes the substantial change claimed for it in the art, it is enough. * * * ”
The foregoing observations would lead me to a reversal of the appealed decision.