Application of McKellin
| Decision Date | 22 January 1976 |
| Docket Number | Patent Appeal No. 75-539. |
| Parties | Application of Wilbur H. McKELLIN, et al. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Carl A. Hechmer, Jr., Philadelphia, Pa., attorney of record, for appellants. (Howson & Howson) William E. Hedges, Charles H. Howson, Jr., Philadelphia, Pa., of counsel.
Joseph F. Nakamura, Washington, D.C., for the Commissioner of Patents. Jack E. Armore, Washington, D.C., of counsel.
Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
This is an appeal from the decision of the Patent and Trademark Office Board of Appeals affirming the examiner's rejection of claims 6, 7, 10-18, and 21-25, all of the claims in application serial No. 866,420, filed September 30, 1969, for "New Vulcanizable and Vulcanized Compositions Containing Polyperoxide." We reverse.
Appellants' application returned to ex parte prosecution after appellants lost an interference with United States Letters Patent 3,409,600 to P. R. A. Maltha and S. B. Tijssen. None of the claims on appeal were counts. The sole basis of rejection is under 35 U.S.C. § 103, the rejected claims being held obvious in view of the subject matter of the counts of the interference. The sole issue on appeal is whether claims may be rejected under 35 U.S.C. § 103 on the ground that a losing party to an interference is not entitled to claims which are asserted to be obvious variations of the invention defined in the counts, when section 102(g) and interference estoppel are not applicable.
Appellants' parent application (serial No. 285,857) was filed in the United States Patent and Trademark Office on June 6, 1963. Subsequently, on October 10, 1963, Maltha et al. (hereinafter Maltha) filed a patent application, a division of which issued as United States Letters Patent 3,409,600 on November 5, 1968. The Maltha patent claims a process and compositions within the scope of serial No. 285,857, in the sense that an act which infringes the claims of the Maltha patent would infringe the claims of serial No. 285,857. Appellants thereafter filed a continuation-in-part application, serial No. 866,420, which is involved in this appeal. This application contained claims copied from the Maltha patent and included a request for an interference. All of the claims of the Maltha patent were copied. The class of peroxy compounds disclosed and for which protection was sought in serial No. 866,420 was broader (i. e., included more species) than the class of peroxy compounds disclosed and claimed in the Maltha patent.
Thereafter patent interference No. 97,329 was declared between Maltha and the appellants herein. Maltha was accorded the benefit of his Netherlands application No. 284,315, filed October 12, 1962. Based only on their foreign priority date Maltha became the senior party and prevailed in the interference, receiving an award of priority.
During the course of the interference appellants moved to add additional counts to include species disclosed in the patent which were within the scope of the interference counts and also to add counts to species which were not disclosed in the patent but were within the scope of the interference counts. These motions were refused entry by the interference examiner.
Following the adverse award of priority, appellants' application returned to ex parte prosecution with claims directed to the species just described, as well as claims to other species neither disclosed in the patent nor within the scope of the interference counts. All of these claims differ from the interference counts in one or more material respects. Claims 6 and 13, which are representative, are reproduced in the appendix to this opinion together with the interference counts.
The examiner rejected the claims under 35 U.S.C. § 103 as unpatentable in view of the counts of the interference, or in view of the Maltha patent. The examiner concluded that the instant claims would be obvious to one of ordinary skill in the art from the counts of the interference. Appellants have made no attempt to prove any new or unexpected results.
The board interpreted the reasoning of the examiner to mean that the subject matter sought to be patented was barred to appellants by reason of the adverse award of priority as to the counts of the interference.
The board agreed with appellants that if an interference involves two applications, a party who fails to make a motion to add all common subject matter may be estopped from later obtaining claims to such subject matter, but that if (as here) an interference involves a patent, there is no estoppel.
The board considered appellants' argument that since appellants' application had an earlier effective United States filing date than the Maltha patent, from which the claims which corresponded to the interference counts were copied, the counts could not be considered "prior art" under 35 U.S.C. § 102(g).
The board answered by saying:
We specifically indicate that the rejection is not that the claims are unpatentable over sic, under 35 USC 102(g) coupled with 35 USC 119. Rather, the rejection is on the basis that appellant sic has lost the interference and, in view of the adverse decision on priority, is not entitled to claims which correspond to or are obvious variations of the invention as defined in the counts of the interference. This is the line of reasoning advanced by the third member of the Board in the Hilmer case In re Hilmer, 57 CCPA 985, 424 F.2d 1108, 165 USPQ 255 (1970), herein after Hilmer (II), * * * where, while concurring in the result, he stated, "I see no reason to go beyond the concession of priority filed by Hilmer et al —".1 Since his view was not determinative of the appeal, the court limited itself to only the correctness of the reasoning of the majority.2
The board noted that appellants had not alleged that their invention produced any new or unexpected result over that produced by the invention of Maltha represented by the lost counts, and held that appellants' claims "either fall within the scope of the invention defined by the counts or are obvious variations thereof." Appellants contended there is no evidence of record that the invention defined in the counts was made in this country by another before appellants' invention. The board responded:
If we were to follow appellants' reasoning to its logical conclusion, we would condone a situation in which, by presenting claims, drawn sequentially, to compounds containing carbon chains from 1 to 20 carbon atoms, or to obvious variations of the compounds, the losing party in an interference with a patent, (which relied on a foreign priority date) could be granted a patent which would cover all aspects of the invention defined in the counts of the interference as to which he has been adjudicated not to be the first inventor. Obviously, this would make a mockery of the interference practice.
The solicitor, representing the Commissioner of Patents and Trademarks, has taken the position that the counts which appellants lost in the interference are "prior art" to appellants. It is the solicitor's position that having lost the counts in an interference, the subject matter of the lost counts is statutory prior art to the losing party under 35 U.S.C. § 135(a). The solicitor observes that section 135 provides that the losing party is not entitled to claim the subject matter of the lost counts. Therefore, the solicitor reasons, the subject matter of the lost counts is statutory prior art to the losing party in the same anticipatory sense as the statutory prior art described in 35 U.S.C. § 102, and also within the meaning of the term "prior art" in 35 U.S.C. § 103.
OPINIONAn applicant who has lost an interference is not entitled to claims which correspond to the subject matter of the counts of the interference. A determination of priority of invention adverse to an applicant constitutes the final refusal by the Patent and Trademark Office of the claims involved. 35 U.S.C. § 135. Neither party contends that the claims on appeal "correspond" to the counts in the interference.
We turn now to the statutory construction of 35 U.S.C. § 135(a) which the solicitor here presents to this court as a novel proposition of law and for the first time in the prosecution of appellants' application. As the solicitor is well aware, this court will not ordinarily consider arguments put forward for the first time in this court. In re Allen, 324 F.2d 993, 998, 51 CCPA 809, 815 (1963). Nevertheless, we have elected to consider this argument in the present case because of its guidance potential and because our view thereof cannot prejudice appellants.
The solicitor suggests that the provision in 35 U.S.C. § 135(a) that an adverse award of priority in an interference "shall constitute the final refusal by the Patent and Trademark Office of the claims involved" means that the subject matter of the counts is statutory prior art to the losing party in the same anticipatory sense as the statutory prior art described in section 102 — and also within the meaning of the term "prior art" in section 103. Nothing in the legislative history of 35 U.S.C. § 135(a) supports the solicitor's position. The Reviser's Note, 35 U.S.C.A. § 135, explains:
The first paragraph states the existing corresponding statute R.S. 4904 with a few changes in language. An explicit statement that the Office decision on priority constitutes a final refusal by the Office of the claims involved, is added.
The Commentary on the New Patent Act, by P. J. Federico, 35 U.S.C.A. at 37-38, confirms this, and states further, "The sections just mentioned, 131 to 135, deal with procedure in the Patent Office, of which only a small part is reflected in the statute." (Emphasis added.) A reading of section 135(a) confirms that all its provisions...
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