Application of Henriksen
| Decision Date | 03 July 1968 |
| Docket Number | Patent Appeal No. 8107. |
| Parties | Application of Ernst Johan Jens HENRIKSEN. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Bacon & Thomas, Washington, D. C. (Leo A. Rosetta, Washington, D. C., of counsel), for appellant.
John E. Hanrahan, Stamford, Conn. (Armand Cifelli, Bridgeport, Conn., Evans Kahn, Stamford, Conn., Joseph Levinson, Chicago, Ill., William P. Spielman, Washington, D. C., of counsel), amicus curiae.
Anthony P. DeLio, New Haven, Conn., Donald Brown, DeLio & Montgomery, New Haven, Conn., amici curiae.
Jacobs & Jacobs, Washington, D. C., amicus curiae.
Before WORLEY, Chief Judge, and RICH, SMITH, ALMOND and KIRKPATRICK*, Judges.
The sole issue presented by this appeal is the interpretation of 35 U.S.C. § 120. Simply stated, the question is whether the language of section 120 limits an applicant to the benefit of the filing date of the second preceding application in a chain of copending applications. We reverse the decision of the Patent Office Board of Appeals,1 154 USPQ 53 (Pat.Off.Bd.App.1966).2 We hold here that under that section of the statute, in view of its long-standing interpretation by the Patent Office and the patent bar, there is no statutory basis for fixing an arbitrary limit to the number of prior applications through which a chain of copendency may be traced to obtain the benefit of the filing date of the earliest of a chain of copending applications, provided applicant meets all the other conditions of the statute.
The issue arises in an appeal from the decision of the board affirming the examiner's rejection of all of the claims in appellant's application3 as fully met under 35 U.S.C. § 102(b) by appellant's own prior-issued patent.4 The examiner had stated that the appellant "is statutorily barred from obtaining a patent on the instant claims under 35 U.S.C. § 102 (b)"5 because the subject matter here appealed is completely disclosed in the patent and because appellant can claim only the benefit of the filing date of an application twice-removed in time from appellant's application, relying on what seems to us to be an unwarranted and wholly novel interpretation of that statute.
The appealed claims relate to ball point pens, and, in particular, to the nature of the "follower plug" at the surface of the ink column of such pens. The claims set forth the nature of the composition of the follower plug in several ways, and also contain various details of the pen construction. Before the board, appellant apparently conceded that the constructional details in the claims are not material to this issue and maintains that position here, stating that the "subject matter of the claims standing finally rejected is of no moment in the present appeal". Thus, no further description of the subject matter or the claims is necessary.
The issue, as stated by the board, is the effective date to which the claims of the present application can be entitled as a matter of law. 154 USPQ at 54. Before the board, the appealed application was urged to be entitled to the date of the application filed October 26, 1946, on which the Henriksen patent issued. The examiner contended that appellant could only be entitled to an effective filing date of February 12, 1959, from which he concluded that the claims here appealed were barred under 35 U.S.C. § 102(b).
The appealed application is the last in the following series of continuation-in-part applications:
A. 705,927 Filed October 26, 1946, issued
May 18, 1954, as U.S
Patent No. 2,678,634. This
patent forms the basis for
the statutory bar under the
decision of the board
B. 421,934 Filed April 8, 1954. The
application was stated to
be a continuation-in-part
of application A and was
abandoned April 29, 1958
C. 551,363 Filed December 6, 1955
The application was stated
to be a continuation-in-part
of application B, and
also referred to application
A. It was abandoned February
26, 1959
D. 658,280 Filed May 10, 1957. The
application was stated to
be a continuation-in-part
of application B and also
referred to application A.
It was abandoned May 20,
1960.
E. 792,824 Filed February 12, 1959.
The application was stated
to be a continuation-in-part
of application C and
referred to both applications
A and B. It was
abandoned June 6, 1962.
F. 199,829 Filed June 4, 1962. The
application was stated to
be a continuation-in-part
of application E and referred
to applications A,
B, and C. It was abandoned
October 26, 1964.
G. 384,716 Filed July 23, 1964. The
application is stated to be
a continuation-in-part of
application F and refers to
each of the other applications
in the chain. This is
the application on appeal.
The board observed, and the appellant here agrees, that while seven applications are included in the above list, only a chain or sequence of six applications is involved. It can be seen that applications B, C, and D were copending at the same time and that applications C, D, and E were also copending at the same time. Thus, either application C or D may be omitted while still preserving a continuous chain of copendency of the common subject matter from application G to application A.
While the examiner, in his Answer, promulgated several grounds of rejection, he limited the issues on appeal to the board to two, i. e., the interpretation of section 120, and "double patenting." The decision of the board refused to sustain the second, i. e., whether the appealed claims raised an issue of "non-patentable distinction" (double patenting) over the claims of appellant's patent, reversing the examiner in this regard.
The majority of the board affirmed the examiner with respect to the issue under section 120. They stated, 154 USPQ at 55:
The board discussed in detail the reasons why it believed that a literal reading of section 120 led to the conclusion that the law permitted claiming only the benefit of a sequence of two or three applications and no more. We shall refer to those reasons as this opinion develops.
35 U.S.C. § 120 is here reproduced, in clauses denoted by letters for ease of understanding. In so doing, we caution that the statute must be read as a whole rather than as a series of discrete phrases. That section provides:
Clause D has been satisfied since the appealed application (G) specifically refers to applications F, E, C, B and A.6 See Hovlid v. Asari, 305 F.2d 747 (9th Cir. 1962). There is no question of the applicability of clause A. It is clear that, irrespective of the filing date to which appellant may be entitled, no issue is raised as to the compliance of any "application previously filed" with the provisions of the first paragraph of section 112.7
Opinion35 U.S.C. § 120 does not by its express terms unequivocally prohibit obtaining the benefit of an earlier filing date in the United States by reason of the numerical lineage of the application whose filing date is relied on. Therefore, in order to determine whether such a limitation implicitly exists, it is necessary to resort to various interpretive aids. The foremost illuminant on the meaning which Congress intended for the statute is the written legislative history of the Act. Although that legislative history is somewhat inconclusive in this instance, we set it out in detail for what help it provides.
The Patent Act of 1952 was given great impetus by the publication on January 10, 19508 of a Committee Print entitled "Proposed Revision and Amendment of the Patent Laws," characterized as a "Preliminary Draft with Notes" printed for the use of the Committee on the Judiciary of the House of...
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