Application of Citron

• Decision Date: 23 January 1964
• Docket Number: Patent Appeal No. 7030.
• Citation: 51 CCPA 869,326 F.2d 418
• Parties: Application of Robert R. CITRON.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

51 CCPA 869, 326 F.2d 418 (1964)

Application of Robert R. CITRON.

Patent Appeal No. 7030.

United States Court of Customs and Patent Appeals.

January 23, 1964.

James H. Littlepage, Washington, D. C. (Herman Hersh, Ooms, McDougall & Hersh, Chicago, Ill., of counsel), for appellant.

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

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

RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of all claims remaining in appellant's application serial No. 163,787 filed May 23, 1950, for "Method of Implanting Cancer Tissue."

This same application with the same claims (plus others now abandoned) was before us in appeal No. 6276 which we decided January 22, 1958, 251 F.2d 619, 45 CCPA 773, and we refer to the opinion therein to explain the subject matter of the invention.

Subsequent to our former decision, the following events occurred. March 26, 1958, the Patent Office issued a notice of allowance which the Issue and Gazette Branch shortly withdrew on April 9, stating that the examiner would explain the reasons. April 22 the examiner sent appellant a letter in the nature of an office action stating that the application had been reconsidered, citing four new references, and rejecting all claims on the ground of unpatentability over the new references for various reasons. October 3 appellant cancelled some claims and amended others and on April 1, 1959, received a final rejection. October 1, 1959, appeal was taken to the Board of Appeals. November 27 appellant cancelled four claims. On March 28, 1962, the board affirmed the examiner's rejection of all pending claims as unpatentable over the references. This appeal followed.

The Propriety of Reopening the Case

Appellant's first challenge is to the effect that the Patent Office has subjected him to "double jeopardy" and urges us to refuse to permit the Patent Office to reopen this case. He complains that the board completely ignored the same plea. It was so clearly within not only the right but the duty of the Patent Office to do what it did that we would follow the board's treatment of the question but for the fact that appellant devotes nearly half of his brief to it, so as to call at least for summary consideration.

The principles and the law involved were fully treated by the Court of Appeals, District of Columbia, in The Jeffrey Mfg. Co. v. Kingsland, Comr.Pat., 86 U.S.App.D.C. 13, 179 F.2d 35.¹ Appellant discusses this case at length, suggesting that it is "bad law." We do not agree that that opinion states "bad law." We do, however, find three of appellant's assumptions to be seriously in error. The first is that in our former decision in this case we held that the application at bar contained "patentable subject matter" and the other two are that we held the application to be "allowable," thus "directing the United States Patent Office to issue a patent." In deciding appeals from the board in patent cases we do none of these things. All we do is pass on the propriety of rejections brought before us for review. These cases are not of the type in which the concept of "double jeopardy" has any applicability.

While appellant may have just cause for complaint that the Patent Office should have operated more effectively in finding the closest prior art, which appears to have been available to it all during the prosecution, and in citing it early in the prosecution, this is of no moment whatever in deciding appellant's legal right to the appealed claims in the face of the new prior art now that it has been cited.

Patentability Over the Prior Art

The Patent Office no longer relies for any purpose on any of the references which we considered in our former opinion and held collectively not to be a proper basis for rejection. The newly cited references are:

F. S. Jones, V.M.D. and Peyton Rous, M.D., "On the Cause of the Localization of Secondary Tumors at Points of Injury," Journal of Experimental Medicine, Vol. 20, 1914, pages 404-412. Hereinafter "Jones et al."

John J. Kidd, M.D., "Suppression of Growth of Brown-Pearce Tumor Cells by a Specific Antibody," Journal of Experimental Medicine, Vol. 83, 1946, pages 227-229, 236, 245-248.

Elizabeth Jones, "Breakdown of Hereditary Immunity to a Transplantable Tumor by the Introduction of an Irritating Agent," Journal of Experimental Cancer Research, Vol. 10, 1926, pages 435-449.

B. E. Kline, M.S. and H. P. Rusch, M.D., "Some Factors that Influence the Growth of Neoplastic Cells," Journal of Experimental Cancer Research, Vol. 4, 1944, pages 762-767.

A review of appellant's specification brings to the fore the fact that he regarded as his invention broadly the improvement on the known method of simply introducing live cancer tissue into a laboratory animal which resided in "injecting into the peritoneal cavity of each animal a suspension of mechanically irritant particles and therewith or thereafter subjecting the animal to an intraperitoneal injection of cancer tissue." The supposed advantages were to increase the number of successful transplants or "takes" and a more rapid rate of growth of the cancer tissue. He described his preferred method of carrying out this invention by a single example after which he pointed out in his specification:

"It will be clear from the foregoing explanation that the disclosed method may be varied substantially from the specific example which has been set forth above by way of illustration. For instance, as already stated, the number and spacing of injections and the quantity of irritant particles introduced may be changed according to the kind or species of animal subjected to the method. The type and quantity of cancer tissue employed may also be varied. Again, it does not necessarily follow that only a single pattern of the number, spacing, and volume of injections must be employed for each kind of species of animal."

On the basis of the new references, the Patent Office position is recapitulated by the solicitor's brief as follows:

"* * * the Patent Office position is that (a) none of the references constitutes an anticipation, (b) that Jones et al. is the most pertinent reference in that it positively teaches injecting irritant particles followed by an injection of cancer tissue, (c) that repeated injection of irritant particles involves a mere duplication of steps without change of function, especially since after the injection of irritant particles by Jones et al., `the irritant particles were already present, and the quantity is not critical\', and (d) that Jones or Kline would suggest to one of ordinary skill in the art that the injection of irritant particles, taught by Jones et al., be repeated as often as desired."

Later on, the solicitor's brief states:

"In fact, it is quite clear that the failure to include irritant particles along with the second recited injection is all that keeps Jones et al. from constituting a complete anticipation of the method of claim 13."²

We have read the new references and have considered appellant's arguments relating thereto. We feel that the board was correct in its conclusions as expressed in the following excerpt from its well-reasoned opinion:

"Claims 6 through 9 and 13 through 16 have been rejected as unpatentable over the Jones et al. article in the Journal of Experimental Medicine 1914. Claims 2, 17 and 18 specific to the injection of rabbits and reciting definite quantities of agents (claims 2 and 18 additionally being limited to use of Brown-Pearce cancer tissue) stand rejected as unpatentable over Jones et al. in view of Kidd who is merely relied upon to show the use of this specific tumor tissue and the equivalence of rabbits, mice and rats in this experimental work. Since appellant denies any patentable novelty in either the particular cancer cells or the species of animal used, the Kidd article need not further be discussed.

* * * * * *

"It is the Examiner\'s position that inclusion of the irritant particles with the cancer cells in the final injection is an immaterial or arbitrary limitation since the irritant particles are already present and the quantity is not critical. Further, that the use of repeated injections is merely duplication of steps without change of function.

"Upon careful review of the record in this case, including appellant\'s most recent arguments, it is our conclusion that this rejection of all claims should be sustained. Appellant contends that most significant is the lack of a showing by Jones et al. that there is an accelerated growth rate or a good yield resulting from their experimental techniques and that the reference does not show that a high percentage of `takes\' occurs. There is no basis for these contentions. Not only is the problem of `takes\' recognized (p. 404, 2nd par. last line), the specific portions of the reference we have referred to contradict each of appellant\'s allegations. The experimental data, for example, shows a larger percentage of `takes\' and page 410 shows the more rapid and abundant growth of the injected neoplasm.

"The further contention that the theme behind the work of Jones et al. is a determination of the cause of cancer rather than providing an implant method for growing cancer cells in animals is of little significance if the reference teaches appellant\'s method and results and which, as indicated above, we think it does.

"The charge is also made that the Examiner has `sloughed over the importance of applicant\'s steps of using repeated injections and/or combining the cancer tissue with the finely divided irritant.\' Not only do we agree with the Examiner that repeated injection is merely obvious duplication but in this appellant is merely following procedure well known in this art as indicated by Jones in Journal of Experimental Cancer Research (1926), page 437,

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