Application of Hilmer

Citation359 F.2d 859,149 USPQ 480
Decision Date28 July 1966
Docket NumberPatent Appeal No. 7482.
PartiesApplication of Hans HILMER, Gerhard Korger, Rudi Weyer and Walter Aumuller.
CourtUnited States Court of Customs and Patent Appeals

COPYRIGHT MATERIAL OMITTED

Eugene O. Retter, John Kekich, Kalamazoo, Mich., George E. Frost, Chicago, Ill., Henry W. Koster, New York City, for appellants.

Clarence W. Moore, Washington, D. C. (Joseph Schimmel, Washington, D. C., of counsel), for Commissioner of Patents.

Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH and ALMOND, Judges.

RICH, Judge.

The sole issue is whether a majority of the Patent Office Board of Appeals erred in overturning a consistent administrative practice and interpretation of the law of nearly forty years standing by giving a United States patent effect as prior art as of a foreign filing date to which the patentee of the reference was entitled under 35 U.S.C. § 119.

Because it held that a U. S. patent, cited as a prior art reference under 35 U.S.C. § 102(e) and § 103, is effective as of its foreign "convention" filing date, relying on 35 U.S.C. § 119, the board affirmed the rejection of claims 10, 16, and 17 of application serial No. 750,887, filed July 25, 1958, for certain sulfonyl ureas.

This opinion develops the issue, considers the precedents, and explains why, on the basis of legislative history, we hold that section 119 does not modify the express provision of section 102(e) that a reference patent is effective as of the date the application for it was "filed in the United States."

The two "references" relied on are:

Habicht 2,962,530 Nov. 29, 1960 (filed in the United States January 23, 1958, found to be entitled to priority as of the date of filing in Switzerland on January 24, 1957)

Wagner et al. 2,975,212 March 14, 1961 (filed in the United States May 1, 1957)

The rejection here is the aftermath of an interference (No. 90,218) between appellants and Habicht, a priority dispute in which Habicht was the winning party on a single count. He won because appellants conceded priority of the invention of the count to him. The earliest date asserted by appellants for their invention is their German filing date, July 31, 1957, which, we note, is a few months later than Habicht's priority date of January 24, 1957.

After termination of the interference and the return of this application to the examiner for further ex parte prosecution, the examiner rejected the appealed claims on Habicht, as a primary reference, in view of Wagner et al., as a secondary reference, holding the claimed compounds to be "unpatentable over the primary reference in view of the secondary reference which renders them obvious to one of ordinary skill in the art."

Appellants appealed to the board contending, inter alia, that "The Habicht disclosure cannot be utilized as anticipatory art." They said, "The rejection has utilized * * * the discosure of the winning party as a basis for the rejection. The appellants insist that this is contrary to the patent statutes." Explaining this they said:

* * * the appellants\' German application was filed subsequent to the Swiss filing date of Habicht but prior to the U. S. filing date of the Habicht application. The appellants now maintain that the Habicht disclosure cannot be utilized as anticipatory in view of 35 U.S.C. 119 which is entitled "Benefit of Earlier Filing Date in Foreign Countries: Right of Priority." This section defines the rights of foreign applicants and more specifically defines those rights with respect to dates to which they are entitled if this same privilege is awarded to citizens of the United States. There is no question but that Section 119 only deals with "right of priority." The section does not provide for the use of a U. S. patent as an anticipatory reference as of its foreign filing date. This interpretation of Section 119 is also set forth in the Manual of Patent Examining Procedure (Section 715.01). The Manual refers to Viviani v. Taylor v. Herzog, 72 USPQ 448, wherein Commissioner Coe clarified the question of priority rights with respect to foreign and domestic filing.

Appellants further pointed out that, "The interference only decided the priority of the interference issue i. e. the count; there was no decision made nor was there any attempt to decide who was the inventor of the disclosure. The appellants readily admit the priority of Habicht as to the interference issue, but there is no admission as far as the remaining subject matter is concerned."

The board, one member dissenting with an opinion, affirmed the rejection. In the majority opinion there are four statements of the issue. The first is:

As stated by appellants in their reply brief, the main issue presented by this appeal is the availability of the Habicht patent as a reference. This question was argued at length at the hearing and appellants were requested to file, and filed, a further legal memorandum concerning it. Emphasis ours.

The third statement (second to follow later) involves an expression of the board's view on the relevance of the interference to the issue and reads:

It is noted that the instant application was involved in an interference with Habicht (before the patent issued), with claim 1 of the patent as the count, and appellants conceded priority to Habicht. However, no questions of estoppel or res judicata can be raised concerning the presently claimed cyclohexyl substituted compound; Habicht did not disclose (or even suggest) any cyclohexyl or cycloalkyl compounds, no count to a cyclohexyl compound, or broad enough to include cycloalkyl compounds could have been added to the interference, nor could appellants have relied on such compounds to show priority. Appellants are free to attempt to secure claims to such compounds and to show that they preceded Habicht\'s date as to them, the question being which date of Habicht is the controlling one. Emphasis ours.

We deem this to be a clear statement that Habicht did not claim and could not have claimed the subject matter now claimed by appellants, that therefore there could have been no interference, or priority contest, with Habicht with respect thereto, that for this reason no estoppel or res judicata may be asserted against appellants as a result of the interference, wherefore the question is the effective date of the Habicht patent.1 The board's fourth statement of the issue reads:

With respect to claims 10 and 16, the issue in this case is:
When the claimed subject matter of a U. S. patent is used as a basis for rejecting a claim in an application and the reference patent is found to be entitled to the date of a prior foreign application under 35 USC 119, is the date of the reference which must be overcome, in order to remove it as a reference, its actual filing date in the United States or the priority date to which the patent is entitled for that subject matter? Emphasis ours.

We note that there are two restrictions in this statement not present in any of the others. First, it refers only to claimed subject matter of the "reference" patent. That this was deliberate is shown by a footnote to the very end of the majority board opinion in which the majority said:

13. Whether the foreign filing date can be used for such matters as mere descriptions of prior art, disclosures of species not within the scope of any of the claims of the U. S. patent, etc., which may appear in the specification of the latter, is not decided since such matters are not involved herein.

As we see the facts here, however, the board relied on subject matter not claimed. We regard the restriction as without legal significance because: (1) Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390, 46 S.Ct. 324, 70 L.Ed. 651 (1926), discussed infra, creating the rule of 35 U.S.C. § 102(e), here relied on as basic support for the rejection, abolished the distinction between claimed and unclaimed disclosure; (2) within a few months of the decision herein the board decided Ex parte Zemla, 142 USPQ 499 (1964), and Ex parte Rapala (unreported, Appeal No. 225-56, decided Sept. 18, 1964), discussed infra, in which this distinction is not mentioned, so that the board now seems to think, as do we, that, as a question of law, whether the disclosure is claimed is irrelevant.2 Another reason why we shall disregard the limitation to claimed subject matter is that authority higher than the Patent Office, namely the District Court for the District of Columbia in Eli Lilly & Co. v. Brenner, 248 F.Supp. 402 (1965), discussed infra, has effectively removed this restriction in a parallel case as shown in the quotation we later make from its opinion. Lilly was Rapala, supra, in the Patent Office.

The second restriction in the board's fourth statement of the issue is that "the reference patent is found to be entitled to the date of a prior foreign application under 35 USC 119 * * *." To some degree this loads the question. There is in it an implicit assumption that if the patent is "entitled to the date of a prior foreign application," it is entitled to it, and that is that. But one must examine closely into what is meant by the word "entitled." In essence, that is the problem in this appeal and we wish to point to it at the outset to dispel any mistaken assumptions. A patent may be "entitled" to a foreign filing date for some purposes and not for others, just as a patent may be "used" in two ways. A patent owner uses his patent as a legal right to exclude others, granted to him under 35 U.S.C. § 154. Others, wholly unrelated to the patentee, use a patent, not as a legal right, but simply as evidence of prior invention or prior art, i. e., as a "reference." This is not an exercise of the patent right. This is how the Patent Office is "using" the Habicht patent. These are totally different things, governed by different law, founded on different theories, and developed through different histories....

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32 cases
  • Reeves Brothers, Inc. v. US Laminating Corp.
    • United States
    • U.S. District Court — Eastern District of New York
    • January 23, 1968
    ...in Section 102, which requires a different approach in the determination of anticipation by a foreign patent. Application of Hilmer, 53 CCPA 1288, 1966, 359 F.2d 859. The Court therefore finds that the GM article patent does not in this case anticipate the subsequent Dickey process To treat......
  • Application of Bass
    • United States
    • U.S. Court of Customs and Patent Appeals (CCPA)
    • March 15, 1973
    ...Inc. v. Brenner, 282 U.S. 252, 86 S.Ct. 335, 15 L.Ed. 2d 304 (1965); In re Harry, supra. But as this court said in In re Hilmer, 359 F.2d 859, 877, 53 CCPA 1288, 1311 (1966): What has always been pointed out in attacks on the Milburn rule, or in attempts to limit it, is that it uses, as pri......
  • Studiengesellschaft Kohle mbH v. Eastman Kodak Co.
    • United States
    • U.S. Court of Appeals — Fifth Circuit
    • May 15, 1980
    ...as of its Swiss filing date. Rather, the patent was effective as prior art only as of the U.S. filing date. Application of Hilmer, 359 F.2d 859, 53 C.C.P.A. 1288 (1966) (Hilmer I ). In Hilmer I the appellants showed their earliest invention date as July 31, 1957, the date when they filed fo......
  • Application of McKellin
    • United States
    • U.S. Court of Customs and Patent Appeals (CCPA)
    • January 22, 1976
    ...Maltha patent vis-a-vis an application filed in the United States is the United States filing date of Maltha. In re Hilmer, 359 F.2d 859, 882-83, 53 CCPA 1288, 1318-20 (1966), hereinafter Hilmer (I). The United States filing date of the Maltha patent is subsequent to appellants' effective d......
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7 books & journal articles
  • Chapter §7.05 Anticipation Under §102(a)
    • United States
    • Full Court Press Mueller on Patent Law Volume I: Patentability and Validity Title CHAPTER 7 Novelty, No Loss of Right, and Priority [Pre-America Invents Act of 2011]
    • Invalid date
    ...'known or used by others in this country' (35 U.S.C. §102(a)), means knowledge or use which is accessible to the public"); In re Hilmer, 359 F.2d 859, 878 (C.C.P.A. 1966) (observing that §102(a) patent-defeating "knowledge" of an invention in this country "had been interpreted, long before ......
  • Chapter §7A.03 Prior Art Under Post-AIA 35 U.S.C. §102(a)
    • United States
    • Full Court Press Mueller on Patent Law Volume I: Patentability and Validity Title CHAPTER 7A Novelty, No Loss of Right, and Priority [Post-america Invents Act of 2011]
    • Invalid date
    ...or Patent Application Under 35 U.S.C. §102(e) [(2006)]").[51] 35 U.S.C.A. §102(a)(2) (effective March 16, 2013).[52] See In re Hilmer, 359 F.2d 859 (C.C.P.A. 1966); see also supra §7.09[D][2] ("Reference's Foreign Priority Date Is Not Applicable (Hilmer Rule)").[53] See 35 U.S.C.A. §102(d) ......
  • Chapter §7.01 Statutory Basis: 35 U.S.C. §102 (2006)
    • United States
    • Full Court Press Mueller on Patent Law Volume I: Patentability and Validity Title CHAPTER 7 Novelty, No Loss of Right, and Priority [Pre-America Invents Act of 2011]
    • Invalid date
    ...or more prior art references, rather than a single reference. See §9.07 ("Combining Prior Art Disclosures"), infra.[28] Cf. In re Hilmer, 359 F.2d 859, 879 (C.C.P.A. 1966) (stating that "[m]uch confused thinking could be avoided by realizing that rejections are based on statutory provisions......
  • Chapter §7.09 Description in Another's Earlier-Filed Published Application or Patent Under 35 U.S.C. §102(e)
    • United States
    • Full Court Press Mueller on Patent Law Volume I: Patentability and Validity Title CHAPTER 7 Novelty, No Loss of Right, and Priority [Pre-America Invents Act of 2011]
    • Invalid date
    ...only about 74 percent of those qualifying as small entities.").[782] See 35 U.S.C. §102(e)(1) (2006).[783] Under the rule of In re Hilmer, 359 F.2d 859 (C.C.P.A. 1966), the USPTO must ignore any earlier foreign filing date, the benefit of which the reference applicant claimed under 35 U.S.C......
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