Application of Land

• Decision Date: 23 November 1966
• Docket Number: Patent Appeal No. 7488.
• Parties: Application of Edwin H. LAND and Howard G. Rogers.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

151 USPQ 621, 368 F.2d 866 (1966)

Application of Edwin H. LAND and Howard G. Rogers.

Patent Appeal No. 7488.

United States Court of Customs and Patent Appeals.

November 23, 1966.

Donald L. Brown, Cambridge, Mass. (Stanley H. Mervis, Cambridge, Mass., of counsel), for appellants.

Clarence W. Moore, Washington, D. C. (Jack E. Armore, Washington, D. C., of counsel), for the 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 examiner's rejection of thirty claims of application serial No. 565,135, filed February 13, 1956, entitled "Photographic Color Processes." The claims on appeal define both processes and products and are numbered 52-55, 58-61, 63, 64, 66-71, 73-76, 78-86, and 90. The product claims are 69-71 and 82-86. The others are process claims.

The Proceedings Below

The proceedings in the Patent Office were unusual. Appeal was taken to the board from the final rejection and the examiner filed his answer. After the hearing, the board remanded the case to the examiner "for clarification of his position." The board said, "We do not have the benefit of the Examiner's views as to the application of the references to each claim, noting that process and product claims of varying scope and different species are presented." A second Examiner's Answer was filed, going into much greater detail as to the grounds of rejection. Appellants then filed two amendments and had an interview. The examiner entered the amendments "since they materially reduce the issues on appeal" and filed a third Answer in which it was noted that several claims had been cancelled since the original appeal and that other claims had been amended so as to obviate any question of the claims on appeal reading directly on certain references so as to be anticipated, i. e., fully met.

The references relied on throughout all three Answers and by the Patent Office Solicitor here are:

                  White             2,350,380                           June 6, 1944
                  Yutzy             2,756,142                          July 24, 1956
                                                (Filed Jan. 22, 1953)
                  Rogers            2,774,668                          Dec. 18, 1956
                                                (Filed May 28, 1953)
                  Land (sole)       2,968,554                          Jan. 17, 1961
                                                (Filed Aug. 9, 1954)
                  Rogers (sole)     2,983,606                            May 9, 1961
                                                (Filed July 14, 1958)
                                             (Parent applications filed Mar. 9, 1954
                                              and June 29, 1955, now both abandoned)
                

The patentees Land and Rogers are the appellants. Since two Rogers patents are cited, we will distinguish them as '668 and '606.

In the third and last Answer, the examiner summarized the situation thus:

The sole issue which appears to remain is whether the appealed claims recite obvious subject matter over Land (\'554) or the claims or disclosure of Rogers (\'606) in view of White, Rogers (\'668) or Yutzy.

As a matter of interest, Land and Rogers, individually and jointly, are assignors to Polaroid Corporation, White to E. I. duPont de Nemours & Company, and Yutzy to Eastman Kodak Company, and are all leading inventors in the field of photography to which the present invention relates.

Following the filing of the third Answer, the board rendered its decision. In the last quotation above it will be seen that the issue of obviousness, as the examiner concisely stated it in the alternative, was a two-pronged issue: (1) It was a 35 U.S.C. § 103 issue; (2) as to Rogers '606 plus the other references, it was also a "double patenting" issue of the type predicated on the claims of a patent to a common assignee (here Polaroid, assignee of the application at bar) considered with additional prior art alleged to render obvious the subject matter of the appealed claims in view of the claims of Rogers '606. In re Simmons, 312 F.2d 821, 50 CCPA 990, decided by us in 1963, is a typical "double patenting" case of that type.

We here make the observation that "double patenting" is normally applied as a ground of rejection when the patent used to support the double patenting rejection is not available as a reference to show "prior art" under 35 U.S.C. §§ 102 or 103. However, Rogers '606 was used in this case as a prior art reference, as of the filing dates to which it was entitled, the statute presumably relied on but not stated being 35 U.S.C. § 102(e). In Simmons, the applicant's own prior patent could not be used as prior art under the statute and the rejection was therefore predicated on the theory of "double patenting." Here the applicants are Land and Rogers (jointly), and a principal reference is Rogers '606 (sole) plus other references. The existence of these different "legal entities," as the Patent Office calls them (Land and Rogers being one entity and Rogers '606 being another), is a factual distinction from Simmons bearing on the availability of Rogers '606, as well as Land, as prior art references against the joint Land and Rogers application, a disputed point considered later. For the moment we merely wish to point out that the examiner used Rogers '606 in a dual capacity as a primary reference to support both a rejection for obviousness over the prior art and a rejection for "double patenting" of the type involving an obviousness issue based on Rogers' claims. We point this out because it bears on the next question we wish to consider and dispose of before getting to the merits of the appealed claims.

The Questioned Allowance of Claim 56

Claim 56 is not on appeal. The reason it is not on appeal is that appellants thought it was allowed by the board. The reason they thought so is that the board said, "The decision of the Examiner * * * is reversed as to claim 56." The docket branch of the Patent Office, in making up the record for this court, listed claim 56 as an "allowed claim." Appellants' brief so treats it. It states on page 1:

Claim 56 was allowed by the Board of Appeals and is printed in the Record on page 203.

According to the usual procedure, the Patent Office brief was prepared after the filing of appellants' brief and it takes issue with that statement. That is why we have before us the question, raised by the Patent Office Solicitor, whether the decision of the board did or did not allow claim 56. After devoting an inordinate amount of time at oral argument to this question, the solicitor suggests that on either of two theories claim 56 "is not before the court." The first theory was that if all rejections of claim 56 were in fact reversed, the claim is not before us. The second is that no appeal was taken on this claim, wherefore, it is not before us. Clearly, in the absence of an appeal on claim 56, the question of its patentability is not before us on the merits. We do consider, however, that since the Patent Office brief so insistently questions appellants' statement that the claim was allowed, we will consider whether or not it was allowed on the basis of what we find in the record.

This brings us to the fact that claim 56, like all other appealed claims, was rejected both as unpatentable over the prior art under section 103 and for "double patenting." Though not there so termed, the latter rejection originated in the final rejection where the wording of the rejection was, "unpatentable over either the disclosure of or the claims of one of the newly cited patents to Land and Rogers '606 * * *." This was reiterated in the first Answer, commented on in the second Answer, with citation of authority, and dealt with at length in the third Answer, where the discussion begins and ends with these sentences (our emphasis):

The instant claims are not seen to recite a patentably distinct invention over the claims of Rogers (\'6$6) in view of Yutzy. * * *

* * * * * *

* * * For this reason, the present claims are not seen to be patentably distinct from Rogers (\'606) in view of Yutzy. See In re Simmons, 136 USPQ 450 312 F.2d 821, 50 CCPA 990 and In re Zickendraht, 138 USPQ 22 50 CCPA 1529, 319 F.2d 225.

Zickendraht is another of our recent "double patenting" decisions, but is a quite different type of case from Simmons.

The solictor's argument about claim 56 is based on his view that all the board did was reverse the section 103 rejection and, since it allegedly failed to pass on "double patenting," that rejection still stands as to claim 56. We do not so read the record.

We first consider what the board itself said. Its opinion opens with the statement "No claim has been allowed." It affirmed the rejection of the examiner on prior art as to a long list of claims from which it omitted claim 56. It then took up that claim separately, discussed how it distinguished from the art and said:

In our view the art of record as applied by the Examiner does not suggest the process of this claim. Accordingly, the rejection of claim 56 will not be sustained. Emphasis ours.

We note it made no distinction as to the legal theory on which the "art of record," which includes Rogers '606, failed to suggest the claim 56 process. We note that "the rejection" was not sustained. At the end of its opinion the board said:

We do not find it necessary to rule on the rejection of the claims on the ground of double patenting with respect to Rogers, \'606 since the disclosure relied upon, in the absence of a Rule 131 affidavit, is available as prior art.

It then summarized its decision as to all claims on appeal, ending with the statement, quoted above at the beginning of this discussion, that the decision of the examiner "is reversed as to claim 56." This seems to us a clear, specific statement. But this is not the end.

Appellants filed a request for reconsideration asking a specific ruling on the double patenting issue, saying that it "should...