Application of Bowers

• Decision Date: 12 May 1966
• Docket Number: Patent Appeal No. 7584.
• Citation: 359 F.2d 886,149 USPQ 570
• Parties: Application of Albert BOWERS and James C. Orr.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

149 USPQ 570, 359 F.2d 886 (1966)

Application of Albert BOWERS and James C. Orr.

Patent Appeal No. 7584.

United States Court of Customs and Patent Appeals.

May 12, 1966.

Evelyn K. Merker, Leon Simon, Washington, D. C., for appellants.

Clarence W. Moore, Washington, D. C. (Jack E. Armore, Washington, D. C., of counsel), for Commissioner of Patents.

Before RICH, Acting Chief, MARTIN, SMITH, and ALMOND, Judges, and Judge WILLIAM H. KIRKPATRICK.^*

SMITH, Judge.

Syntex Corporation is the common assignee of the appealed application¹ and the 2 patents² relied upon for the rejection. Different joint inventors are named in the application and in the patents. Albert Bowers, one of the nominal appellants here, is one of the joint inventors in the appealed application and in the 2 above named patents. The appealed application is senior in filing date to the applications upon which the patents were issued.

The Board of Appeals in its decision of March 18, 1964 affirmed³ the rejection of appealed claims 1 to 12 of appellants' application as "unpatentable over" claim 1 of the Bowers and Edwards patent and affirmed the rejection of appealed claim 13 as being "unpatentable over" claim 16 of the Bowers and Berkoz patent.

Closely related subject matter is disclosed in the patents and the application on appeal. The steroid compounds here claimed differ from the compounds claimed in the indicated patents by the presence in the steroid structure of a 2-methyl group instead of a hydrogen atom.

It was the examiner's position that the 2-methyl compounds of the appealed claims are so closely related to the hydrogen containing, or 2-desmethyl, compounds of the indicated patent claims as to be, in the words of the Board of Appeals, "obvious therefrom to those skilled in the art."

The statutory basis for the rejection is not clear from the record. While using certain of the language of 35 U.S.C. § 103, in affirming the examiner's rejection,⁴ the board does not explain how the patents, issuing on applications filed later than the filing date of the appealed application, can be considered as prior art against the invention here claimed. Earlier filed applications of "another" describing the invention claimed in a later filed application are prior art under 35 U.S.C. § 102(e) and as such are available for consideration in a 35 U.S.C. § 103 "obviousness" rejection Hazeltine Research, Inc. v. Brenner, 382 U.S. 252, 86 S.Ct. 335, 15 L.Ed.2d 304. However, the rule does not warrant a rejection under 35 U.S.C. §§ 102 or 103 on patents that issued on later filed applications. Such references are clearly excluded by the precise language of sections 102(e) and 103.

The opinion of the board seeks to justify the rejection in its statement:

* * * The Examiner rules that, in view of this close relationship and the obviousness of the claimed compounds from the patented claims, appellants are not entitled to receive a patent on the basis of the appealed claims, since appellants\' assignee had received patent protection on essentially the same inventions in the Bowers and Edwards and the Bowers and Berkoz patents. * * * * * * * * *

It is unfortunate that the issue of "double patenting" was not raised at the earliest possible date * * *.

There is no objection of record concerning this being a new ground of rejection.

Subsequent to the decision of the board, a petition for rehearing was filed in which the separate nature of the involved inventions was pointed out and discussed. Later, and subsequent to our decision of May 14, 1964 in In re Robeson, 331 F.2d 610, 51 CCPA 1271, appellants filed a letter of June 19, 1964, in which the Board of Appeals was requested to consider the disclaimer, filed concurrently therewith, in which they disclaimed:

* * * the terminal portion of the term of the above identified application Serial No. 138,265 as would extend beyond October 2, 1979, the expiration date of U. S. Patent No. 3,056,814, with respect to Claims 1-12, and as would extend beyond March 19, 1980, the expiration date of U. S. Patent No. 3,082,220, with respect to Claim 13.

Appellants' letter of June 19, 1964 refers to our Robeson decision as being "directly in point" and argued:

* * * that the attached disclaimer obviates the basis of the double patenting rejection of claims 1-13 on appeal, over the common assignee\'s Patent No. 3,056,814 and No. 3,082,220. The disclaimer precludes any extension of the monopoly since it provides for the expiration of the above identified application, if patented, simultaneously with Patent Nos. 3,056,814 and 3,082,220.

In its decision on the petition for reconsideration, the board considered the contents of the letter of June 19, 1964, and criticized one of the signatures appearing on the disclaimer. It then stated:

Assuming that this paper were a disclaimer operative to disclaim the indicated portions of a patent granted on the instant applications, we could give it no weight in the present appeal because it is not apparent that In re Robeson, supra, or the subsequent decision, In re Kaye, 51 CCPA 1465, 332 F.2d 816 141 USPQ 829, apply to the situation where a terminal disclaimer is offered with respect to the commonly owned patent of a different inventive entity. * * *

Subsequently appellants filed a new disclaimer to overcome the board's criticism as to form which was accepted and has been duly recorded in the United States Patent Office. By order of the court upon granting appellants motion to correct diminution of record, which was not objected to by the Solicitor for the U. S. Patent Office, this new disclaimer was added to the record. The Solicitor here does not challenge the sufficiency of the new disclaimer nor does he argue that the effect of the terminal disclaimer on the rejection is not before us. We will therefore turn to a consideration of the subject matter defined in the appealed claims and the patent claims.

We find that we are here dealing with different inventions. As pointed out in appellants' brief:

It is apparent that a single invention is not involved. The inventions of the involved application and those of the reference patents are not identical; they are different and distinct inasmuch as the inventions differ in the presence of a CH2 grouping at a specific position in the complex steroid molecule. It is clear that the claims of the Bowers and Orr application, which was the first filed application, define an invention separate and different from those defined in the reference patents owned by the same assignee.

Appellants also point out in their brief that "Each invention would be patentable absent the other," which is not disputed by the Patent Office. The brief then continues:

It is clear that separate, distinct and nonidentical inventions are described in the application at bar and in the patented inventions. It is therefore contended that a terminal disclaimer is appropriate in the case at bar to overcome a double patenting rejection under the holding of In re Robeson and In re Kaye.

As we stated in Kaye, supra, 332 F.2d at 819, 51 CCPA at 1468, in reference to Robeson, supra:

In that case we held that where, as here, the claims define separate, albeit patentably indistinct, inventions, the filing of a terminal disclaimer may obviate a double patenting rejection.

Thus, it seems to us that the board's position must stand or fall on the issue of whether our decisions in Robeson, supra, and Kaye, supra, as stated by the board, "apply to the situation where a terminal disclaimer is offered with respect to the commonly owned patent of a different inventive entity."

It is true that in both Robeson, supra, and Kaye, supra, the double patenting rejections which we found to be obviated by the terminal disclaimer were predicated in each case on the same inventorship. However, we find this to be a distinction without legal significance in the present context.

Statutory authority for the terminal disclaimer here in issue is found in 35 U.S.C. § 253, the second paragraph of which provides:

In like manner any patentee or applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted or to be granted.

It is to be noted that the parties authorized by the statute to file the terminal disclaimer are "any patentee or applicant." It seems clear that Congress intended that the remedies of this section were also to be available to assignees in view of the express provision of 35 U.S.C. § 100(d) that:

(d) The word "patentee" includes not only the patentee to whom the patent was issued but also the successors in title to the patentee.

The statutory provisions thus support appellants' position and are contrary to the solicitor's arguments.

The solicitor argues that the common assignee here, in effect, seeks to circumvent sections 102(e) and 103 by filing a terminal disclaimer. This argument lacks substance as here there can be no resort to those sections. Where the inventorship is different and there is a common assignee, as here, the first filed application which issues as a patent is "by another" and if the invention claimed in the second application is "described" in the first application, it is available under section 102(e) as prior art which is relevant for consideration under section 103. If the second filed application issues first, there can be no resort to section 102(e) to establish it as prior art under section 103 as against the first filed application. This results from the controlling effect which is given under the statute to the United States filing dates. Sections 102 (e) and 103 provide grounds of rejection which are distinct and separate from "double patenting," requiring different inquiries and representing mutually exclusive grounds for rejecting claims. Where there are separate inventions and the ground of rejection is double patenting, based on the alleged unlawful timewise extension of monopoly, the...