Application of Kaghan
| Decision Date | 14 December 1967 |
| Docket Number | Patent Appeal No. 7852. |
| Citation | 387 F.2d 398,156 USPQ 130 |
| Parties | Application of Walter S. KAGHAN, William J. Schmitt and Percy M. Kay. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Robert H. Bachman, New Haven, Conn. (Edward J. Mahler, New York City, of counsel), for appellants.
Before WORLEY, Chief Judge, RICH, ALMOND and SMITH, Judges, and WILLIAM H. KIRKPATRICK.*
This is an appeal from the decision of the Patent Office Board of Appeals affirming the rejection of claims 6 and 7, all of the claims in the application entitled "Method for Improving Electric Glow Discharge Treatment of Plastic Materials." The application before us is serial No. 184,404 and was filed April 2, 1962 as a continuation-in-part of application serial No. 602,506 filed August 7, 1956.
The invention involves the corona discharge treatment of polyolefin film in order to make the surface of the film receptive to inks or other coating materials. The novelty of appellants' invention resides in providing a coating of chlorosulfonated polyethylene on one of the electrodes used to produce the corona discharge. The use of polyethylene and polyester coatings on such electrodes is old in the art, but appellants claim "unique and astonishing durability" of the chlorosulfonated polyethylene in this application.
Claim 6 is illustrative:
6. In the preparation of a polyolefin film having a surface rendered adherent to coating compositions by treatment with a high energy corona discharge between a pair of closely spaced substantially parallel electrodes one of which is grounded, one of said electrodes being a metallic roll and the other being a narrow elongated electrode, the process comprising providing one of said electrodes with a surface layer 0.05 to 0.25 inch in thickness of vulcanized chlorosulfonated-polyethylene having a non-conductive finely-divided pigment incorporated therein as an essential ingredient establishing a corona discharge at a potential of about 3,000 to 30,000 volts between the said electrodes, and passing said film through said discharge while in contact with the said surface layer.
In the parent application, appellants presented claims to the same process, but of somewhat different scope. The claims of the parent application were finally rejected by the examiner on the combination of a patent which showed the use of a polyethylene electrode coating in the same apparatus and commercial literature which describes chlorosulfonated polyethylene as having excellent "coronaresistance." The examiner held it to be obvious in view of this teaching of good corona resistance to substitute the chlorosulfonated polyethylene for the polyethylene coating of the prior art. The Board of Appeals affirmed this rejection.
Before the time for taking an appeal from the board's decision had expired, appellants, presumably relying on 35 U.S. C. § 120 and published procedures of the Patent Office, filed a continuation-in-part application, which is the application now before us. This application contains disclosure not in the parent application and, as noted above, the claims are similar but of different scope.
The examiner rejected the instant application both on art applied as in the parent application and on the ground of res judicata. However, the examiner's answer before the Board of Appeals stated:
Claims 6 and 7 stand rejected both on the art and on the ground of Res Judicata. To simplify the issue, the rejection on art is withdrawn. This leaves claims 6 and 7 rejected on the sole ground of Res Judicata since there is no patentable distinction between these claims and claims 12-15 in the Parent Application 602,506 which went abandoned after the adversed sic Board decision rendered on January 30, 1962 in Appeal No. 235-63.
The Board of Appeals affirmed this rejection, and appellants filed an appeal to this court.
The sole question before us is whether, on these facts, the application of the doctrine of res judicata by the Patent Office is proper.
In their brief, appellants do not question whether the Patent Office, as an administrative agency, has the right to invoke the doctrine of res judicata in an ex parte proceeding. Rather, appellants assume that the Patent Office has that right, but argue that the use of the rejection on the facts here present constitutes a clear violation of the practices and published procedures of the Patent Office.
Specifically, appellants point to the "Manual of Patent Examining Procedure" section 706.03(w) which currently1 reads:
The reference to 201.07 is to its second paragraph, as follows:
Where an application has been prosecuted to a final rejection an applicant may have recourse to filing a continuation in order to introduce into the case a new set of claims and to establish a right to further examination by the Primary Examiner. Emphasis added.
Appellants argue that they filed their new application before the time limit for further appeals had expired, and that this filing prevented the Board of Appeals decision from becoming a "final, appellate one."
Recognizing the differences of opinion in this court concerning the right of the Patent Office to make rejections on the basis of res judicata,2 we will in this case follow the lead of appellants and assume without deciding that the Patent Office may, in a proper case, utilize a res judicata rejection. The issue we feel...
To continue reading
Request your trial
-
Canady v. Erbe Elektromedizin Gmbh
...Circuit generally follows the MPEP. Patlex Corp. v. Mossinghoff, 758 F.2d 594, 606 (Fed.Cir.1985) (citing In re Kaghan, 55 C.C.P.A. 844, 387 F.2d 398, 401 (Cust. & Pat.App.1967) (determining that appellants can rely on procedures outlined by the MPEP)). Reexamination of a patent is initiate......
-
Purdue Pharma L.P. v. Boehringer Ingelheim Gmbh
...1985) (MPEP "`is primarily a set of instructions to the examining corps of the Patent Office'") (quoting In re Kaghan, 55 C.C.P.A. 844, 387 F.2d 398, 401 (C.C.P.A. 1967)); Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1439 (Fed.Cir.1984) ("The MPEP has no binding force on us, but is ......
-
Ethicon, Inc. v. Quigg
...held to describe procedures on which the public can rely." Patlex, 758 U.S. at 606, 225 USPQ at 252 (citing In re Kaghan, 387 F.2d 398, 401, 55 C.C.P.A. 844, 156 USPQ 130, 132 (1967)). Of course, an agency's interpretation of a statute it administers is entitled to deference, Chevron U.S.A.......
-
Hadco Products, Inc. v. Lighting Corp. of America, Inc.
...of instructions to the examining corps of the Patent Office from the Commissioner acting in his supervisory capacity." In re Kaghan, 387 F.2d 398, 401 (C.C.P.A. 1967). It is thus apparent that the Manual can rise no higher in status than the Patent Office Rules. The question of its exact fo......
-
Attorney-Client Privilege for In-House Counsel
...has no discretion to deviate” from the procedure mandated by its regulatory scheme); OMB Bull. No. 07-02, supra note 29. 63. In re Kaghan, 387 F.2d 398, 401 (C.C.P.A. 1967) (“[W]e feel that an applicant should be entitled to rely not only on the statutes and Rules of Practice but also on th......
-
Printed Publications and Persons of Ordinary Skill: Did the PTAB in GoPro v. Contour IP Holding Apply an Overly Restrictive Standard?
...has no discretion to deviate” from the procedure mandated by its regulatory scheme); OMB Bull. No. 07-02, supra note 29. 63. In re Kaghan, 387 F.2d 398, 401 (C.C.P.A. 1967) (“[W]e feel that an applicant should be entitled to rely not only on the statutes and Rules of Practice but also on th......
-
The PTAB is Not an Article III Court: A Primer on Federal Agency Rule Making
...has no discretion to deviate” from the procedure mandated by its regulatory scheme); OMB Bull. No. 07-02, supra note 29. 63. In re Kaghan, 387 F.2d 398, 401 (C.C.P.A. 1967) (“[W]e feel that an applicant should be entitled to rely not only on the statutes and Rules of Practice but also on th......