Dart Industries, Inc. v. Banner, s. 79-1156

• Decision Date: 15 October 1980
• Docket Number: 79-1157,Nos. 79-1156,s. 79-1156
• Citation: 636 F.2d 684
• Parties: , 207 U.S.P.Q. 273 DART INDUSTRIES, INC., a corporation of the State of Delaware v. Donald W. BANNER, Commissioner of Patents and Trademarks, Appellant.
• Court: U.S. Court of Appeals — District of Columbia Circuit

Page 684

636 F.2d 684

204 U.S.App.D.C. 412, 207 U.S.P.Q. 273

DART INDUSTRIES, INC., a corporation of the State of Delaware v. Donald W. BANNER, Commissioner of Patents and Trademarks, Appellant.

Nos. 79-1156, 79-1157.

United States Court of Appeals District of Columbia Circuit.

Argued Jan. 15, 1980.

Decided Sept. 16, 1980.

Rehearing Denied Oct. 15, 1980.

Appeals from the United States District Court for the District of Columbia (D.C. Civil Actions Nos. 78-0266 and 78-0267).

John W. Dewhirst, Associate Sol., U. S. Patent and Trademark Office, Washington, D. C., with whom Joseph F. Nakamura, Sol. U. S. Patent and Trademark Office, Washington, D. C., was on brief, for appellant.

Francis J. Murphy, New York City, a member of the bar of the Appellate Division of the Supreme Court of the State of New York, First Judicial Department, pro hac vice, by special leave of court, with whom John F. Smith, New York City, was on brief, for appellee.

Before WRIGHT, Chief Judge, ROBINSON, Circuit Judge, and MARKEY, ^* Chief Judge of the United States Court of Customs and Patent Appeals.

Opinion for the court filed by Chief Judge MARKEY.

MARKEY, Chief Judge:

The Commissioner of Patents and Trademarks (Commissioner) appeals from an order of the District Court, Dart Industries, Inc. v. Banner, 200 U.S.P.Q. 656 (D.D.C.1978), denying the Commissioner's motion for summary judgment, granting the motion for summary judgment of Dart Industries, Inc. (Dart), and entering judgment for Dart in consolidated civil actions Nos. 78-0266 and 78-0267 filed under 35 U.S.C. § 145 (1976). We reverse and remand with instruction to grant the Commissioner's motion.

BACKGROUND

On November 25, 1959, Alexander deSeversky filed a patent application (grandparent) disclosing, but not claiming, an electro-static precipitator having a venturi. A continuation-in-part application (parent), filed on August 31, 1960, ¹ did not disclose or claim the venturi feature. DeSeversky did This application is a continuation-in-part of my copending application Ser. No. 855,369, filed Nov. 25, 1959, and issued Sept. 11, 1962 as Pat. 3,053,029 * * *.

include in the parent this reference, as required by 35 U.S.C. § 120 (1976): ²

Another continuation-in-part application (child) was filed on April 24, 1968. It disclosed and claimed a precipitator having the venturi feature. ³

The United States Patent and Trademark Office (PTO) rejected claims in the child reciting the venturi feature, viewing the invention set forth in those claims as obvious under 35 U.S.C. § 103 (1976), in light of a U.S. patent (deSeversky A) for which application was filed September 7, 1962. ⁴ DeSeversky attempted to overcome deSeversky A by reliance on the parent's 1960 filing date. When the PTO denied that reliance, because of the parent's failure to disclose a venturi feature, deSeversky asserted that reference in the parent to the grandparent had the effect of incorporating the venturi disclosure of the grandparent into the parent. The PTO held, and the United States Court of Customs and Patent Appeals (CCPA) affirmed, that a section 120 statement merely calling an application a "continuation-in-part" does not in itself serve to incorporate-by-reference subject matter disclosed in a prior application. In re deSeversky, 474 F.2d 671 (C.C.P.A.1973). The CCPA explained:

Appellant is confusing two distinctly different things: (1) the right to have benefit of the filing date of an earlier application under § 120 for subject matter claimed in a later application because that subject matter is disclosed in an earlier application to which "a specific reference" is made-i. e., a reference to the earlier application per se, and (2) the incorporation by reference in an application of matter elsewhere written down (not necessarily in a patent application), for economy, amplification, or clarity of exposition, by means of an incorporating statement clearly identifying the subject matter which is incorporated and where it is to be found.

* * * (T)he statement that an application is a continuation-in-part * * * of another application is in a broad sense a "reference" to the earlier application, but a mere reference to another application * * * is not an incorporation of anything therein into the application containing such reference for the purposes of the disclosure required by 35 U.S.C. § 112. Likewise it does not serve to bring a disclosure within the requirements of 35 U.S.C. § 120 so as to give a later application the benefit of the filing date of an earlier application. The later application must itself contain the necessary disclosure.

474 F.2d at 674.

Following the CCPA decision, deSeversky filed a continuation of the child (grandchild). ⁵ The claims of the grandchild, identical to those of the child, were rejected by the PTO on obviousness and res judicata.

DeSeversky also applied for reissue of the parent, ⁶ seeking to meet the CCPA's requirements for incorporating the grandparent's disclosure by adding: "The entire disclosure of my Patent 3,053,029 is incorporated herein by reference." The PTO rejected the reissue application because it sought to add new matter to the parent in violation of 35 U.S.C. § 251 (1976). ⁷

Dart, assignee of the grandchild and reissue application, brought the instant actions to contest the rejection of those applications. The parties agreed that disposition of the action on the grandchild was entirely dependent upon disposition of the action on the reissue application.

DISTRICT COURT

The district court correctly perceived questions of first impression respecting the new matter prohibition of section 251.

In a thorough and thoughtful opinion, the court reviewed policy considerations underlying the prohibition. It concluded that the policy preventing an applicant from recapturing subject matter forfeited to the public domain was limited by section 120, the statutory mechanism for avoiding forfeiture of subject matter disclosed but not claimed in an earlier patent application.

The court was well aware that the parent failed to comply with the section 120 continuity-of-disclosure requirement with respect to the venturi feature disclosed in the grandparent. Noting that non-compliance resulted from deSeversky's good faith misunderstanding of the requirements for incorporation-by-reference, however, the court held that non-compliance could be overcome by the instant reissue application. Specifically, the court said:

Therefore, the Court does not believe that it is material that, but for the operation of § 120, the disclosure of the venturi in the grandparent would operate as a forfeiture of the right to obtain a patent monopoly covering that feature. The fact that the parent is "inoperative" to prevent this result ⁸ is, if the other requirements of § 251 are fulfilled, curable by reissue. Accordingly, the Court holds that since the patentee here intended to comply with the requirements of § 120, and believed in good faith that he had done so, the addition of explicit language which incorporates by reference the disclosure in an earlier application which the patentee intended to incorporate, and believed he had incorporated, is not the addition of new matter barred by § 251.

ISSUES

The issues are (1) whether the sentence Dart seeks to add to the parent constitutes an attempt to insert "new matter" and, if so, (2) whether a good faith intent, in a previously unsuccessful attempt to gain the benefit of earlier filing date under section 120, can overcome the section 251 prohibition of new matter.

OPINION

NEW MATTER

Section 251 unequivocally states:

No new matter shall be introduced into the application for reissue.

An addition to a patent specification constitutes "new matter" when it changes the invention disclosed or introduces a concept not previously present in that specification. In re Anderson, 471 F.2d 1237, 1244 (C.C.P.A.1973); In re Oda, 443 F.2d 1200, 1203-05 & n.2 (C.C.P.A.1971).

The sentence Dart seeks to add by reissue would have the effect of carrying into the parent the venturi feature disclosed in the grandparent. Dart admits that the parent itself has never contained a disclosure of the venturi feature. It necessarily follows that Dart seeks by reissue to change the invention disclosed in the parent, or to introduce a concept not previously present in the parent, and thus attempts to insert "new matter" in the parent.

Dart says its "continuation-in-part" statement in the parent would have been legally sufficient to incorporate the venturi disclosure of the grandparent into the parent prior to the "changes" in decisional law announced in In re Lund, 376 F.2d 982 (C.C.P.A.1967) and In re deSeversky, supra. That position finds no support. The CCPA's opinions in Lund and deSeversky gave no indication that the law was being changed. Nor was it. In re Fried, 329 F.2d 323 (C.C.P.A.1964), the only case relied upon by Dart, was decided four years after the parent was filed, thus belieing Dart's claim that it demonstrates the reasonableness of Dart's belief at the time of filing the parent, that the reference there would be sufficient to incorporate the full disclosure of the grandparent. Moreover, Fried concerned a reference that went far beyond the mere "continuation-in-part" statements involved in the present case and in Lund. The statement in Fried constituted a specific incorporation by reference of specific disclosure from an earlier application.

GOOD FAITH INTENT

The district court's opinion reflects careful consideration of a difficult question of first impression, but reflects two apparent misunderstandings of the doctrinal complexities involved.

The first resides in viewing section 120 as a limitation on the new matter prohibition of section 251.

Section 120 merely provides a mechanism whereby an application becomes entitled to benefit of the filing date of an earlier application disclosing the same subject matter. Common subject matter...