Application of Kyrides, Patent Appeal No. 5267.

Citation73 USPQ 61,159 F.2d 1019
Decision Date21 March 1947
Docket NumberPatent Appeal No. 5267.
PartiesApplication of KYRIDES.
CourtUnited States Court of Customs and Patent Appeals

J. Russell Wilson, of St. Louis, Mo., for appellant.

W. W. Cochran, of Washington, D. C. (E. L. Reynolds, of Washington, D. C., of counsel), for the Commissioner of Patents.

Before GARRETT, Presiding Judge, and BLAND, HATFIELD, JACKSON, and O'CONNELL, Associate Judges.

BLAND, Associate Judge.

After allowing claims numbered 6 and 20 in appellant's application for a patent for "improvements in Plastic Compositions of Matter," the Primary Examiner of the United States Patent Office finally rejected claims 1, 2, 3, 5, 11, 12, 13, 15 and 18, the only remaining claims in the application except for certain claims which were drawn to a non-elected species and depend upon the allowance of a generic claim. The Board of Appeals affirmed the examiner's rejection and appellant has here appealed from the board's decision.

The application at bar is concerned with plastic compositions used in the manufacture of films, lacquers, molding compositions, etc., and specifically deals with such compositions plasticized with esters of dicarboxylic acids containing a hydrocarbon group and an aliphatic ketone group. In manufacturing plastic compositions for the above purposes, materials such as cellulose esters and ethers, etc., are dissolved in a volatile solvent and in doing so there is added, as a modifying agent, the plasticizer. The examiner states that "a large number of plasticizers as well as solvents is available for this purpose," and that the selection is "determined by economic as well as technological factors." In the present instance the plasticizing agents employed are esters of dicarboxylic acids, wherein, according to the examiner, "one carboxyl group of the acid has been esterified by an aliphatic alcohol and the other carboxyl group has been esterified by an aliphatic ketone alcohol."

Claim 11 is regarded as illustrative of the appealed subject matter and follows:

"11. A composition embodying a cellulose derivative and containing, as a plasticizer, an alkyl acetonyl phthalate."

The facts in this appeal are somewhat involved and there is much matter stated in the opinions below and in the briefs of the parties which we need not discuss here since such discussion would tend to confuse rather than clarify the main issue. This issue, when finally clearly understood, is not as formidable as it at first would appear.

The present application of appellant Kyrides was involved in an interference with an application of Andersen et al., hereinafter referred to as "Andersen." The decision of the Board of Appeals in that interference proceeding was reviewed by this court in Kyrides v. Andersen et al., 28 C.C.P.A., Patents, 1336, 121 F.2d 514. The single count there in issue corresponded to claim 11 of the present appeal. This claim calls for a plasticizer in the composition referred to as "an alkyl acetonyl phthalate."

In that interference Andersen was the senior party. Neither party submitted evidence. Kyrides, however, relied upon an earlier copending application which antedated the Andersen application. In this earlier application was disclosed only one plasticizer, namely, acetonyl ethyl phthalate, a member of the subgeneric class of alkyl acetonyl phthalates. The tribunals of the Patent Office held that this disclosure was not sufficient to warrant a holding that Kyrides was entitled to a constructive reduction to practice of the subgeneric class and awarded priority of invention to Andersen. This court, however, reversed the decision of the Board of Appeals and held that Kyrides' disclosure of the single species in the prior application was enough to entitle him to an award of priority on the count which was generic in character and which included the whole group of alkyl acetonyl phthalates.

The examiner, in his statement to the board upon appeal, rejected the instant appealed claims on the ground that while this court, in Kyrides v. Andersen et al., supra, had awarded the applicant priority in the generic invention covered by the count there in issue, it did not necessarily follow that the applicant was entitled to the allowance of a claim for such generic invention in a patent and that he was not bound by that decision to allow a generic claim to Kyrides. The claims were rejected as being unpatentable over the Andersen application involved in the interference.

Subsequently the examiner made a supplemental statement in which he rejected the claims also upon the patent to Andersen et al., No. 2,349,331, May 23, 1944, which had been issued after the examiner's first statement.

The Board of Appeals, upon appeal to it, affirmed the examiner's rejection upon Andersen's application involved in the interference in Kyrides v. Andersen et al., supra, but affirmatively overruled his supplemental rejection upon the said Andersen et al. patent. As to this latter ground of rejection, the board said:

"The examiner in a supplemental statement has rejected the claims on the Andersen et al. patent No. 2,349,341 sic. Since the Court specifically awarded priority to Kyrides over the Andersen et al. disclosure as to the count corresponding to claim 11, it appears improper to now reject claims of this nature on the disclosure of Andersen et al. and this ground of rejection will not be affirmed."

Kyrides filed affidavits in the Patent Office under Rule 75, Rules of Practice of United States Patent Office, 35 U.S.C.A. Appendix, which he relied upon to establish his right to claim the generic invention by showing an actual reduction to practice prior to the filing date of the Andersen application. The examiner took the position that this availed appellant nothing since he could not, at that late date, without having an interference where testimony might be introduced, prove by affidavits a reduction to practice of the invention at bar earlier than is disclosed in his application.

We may dispose of the question raised with reference to Rule 75 summarily by saying that it is too obvious to require extended discussion here or to call for the citation of authority that appellant cannot accomplish by affidavits under this rule that which he was privileged to attempt to accomplish in the interference where the subject matter involved was being considered. Moreover, the board correctly pointed out in its decision that:

"Appellant refers to his affidavit under Rule 75 and states that it establishes a reduction to practice as early as March 11, 1932 to the use of ethyl acetonyl phthalate. This affidavit establishes no more than applicant's prior...

To continue reading

Request your trial
14 cases
  • Studiengesellschaft Kohle v. Eastman Kodak, Civ. A. No. B-74-392-CA.
    • United States
    • U.S. District Court — Eastern District of Texas
    • September 21, 1977
    ...propylene polymerization was first disclosed. Application of Saunders, 219 F.2d 455, 457, 42 CCPA 763 (1955); Application of Kyrides, 159 F.2d 1019, 1021-22, 34 CCPA 920 (1947). Such polypropylene claims are invalid as anticipated by the disclosure of prior art patent No. 3,582,987, granted......
  • Phillips Petroleum Co. v. US Steel Corp.
    • United States
    • U.S. District Court — District of Delaware
    • October 28, 1987
    ...from that presented here. Citing such authorities as Swain v. Crittendon, 51 CCPA 1459, 332 F.2d 820 (1964) and Application of Kyrides, 159 F.2d 1019 (C.C.P.A.1947), they argue that in finding that Phillips' 1953 application constituted a constructive reduction to practice, Judge Wright dec......
  • Zletz, In re
    • United States
    • U.S. Court of Appeals — Federal Circuit
    • December 27, 1989
    ...unless he has generic support therefor. In re Grimme, 274 F.2d 949, 952, 47 CCPA 785, 124 USPQ 499, 501 (1960); In re Kyrides, 159 F.2d 1019, 1021-22, 73 USPQ 61, 63 (CCPA 1947). See In re Stempel, 241 F.2d 755, 759-60, 44 CCPA 820, 113 USPQ 77, 81 (1957) (discussing what is necessary to su......
  • Fontijn v. Okamoto
    • United States
    • U.S. Court of Customs and Patent Appeals (CCPA)
    • June 19, 1975
    ...to practice of an embodiment of the invention which meets the counts. Fried v. Murray, 268 F.2d 223, 46 CCPA 914 (1959); In re Kyrides, 159 F.2d 1019, 34 CCPA 920 (1947); Kyrides v. Anderson, 121 F.2d 514, 28 CCPA 1336 (1941). The composite filaments having endless shreds of ribbon-like cor......
  • Request a trial to view additional results

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT