Application of Ruscetta

• Decision Date: 29 May 1958
• Docket Number: Patent Appeal No. 6377.
• Citation: 118 USPQ 101,255 F.2d 687
• Parties: APPLICATION of Ralph A. RUSCETTA and Alfred L. Jenny.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

118 USPQ 101, 255 F.2d 687 (1958)

APPLICATION of Ralph A. RUSCETTA and Alfred L. Jenny.

Patent Appeal No. 6377.

United States Court of Customs and Patent Appeals.

May 29, 1958.

Gilbert P. Tarleton (Sidney Greenberg and Oscar B. Waddell, Washington, D. C., of counsel), for appellants.

Clarence W. Moore, Washington, D. C. (Arthur H. Behrens, Washington, D. C., of counsel), for Commissioner of Patents.

Before JOHNSON, Chief Judge, and O'CONNELL, WORLEY, and RICH, Associate Judges.

RICH, Judge.

Ralph A. Ruscetta and Alfred L. Jenny, have appealed from the decision of the Patent Office Board of Appeals affirming the examiner's rejection of claims, 1, 2, 3, 19, 20, 21 and 22 of their application entitled "Method of Etching Capacitor Electrodes," serial No. 507,010, filed May 9, 1955.

The central issue presented in this appeal is a question of law involving the legality of using appellants'¹ British complete patent specification No. 691,509, published May 13, 1953, as a basis for rejecting the appealed claims.

The references relied upon are:

                  Taylor               2,368,688  Feb. 6, 1945
                  British patent2    691,509  May 13, 1953
                

On August 29, 1950, appellants filed an original United States application, serial No. 181,998, entitled "Etched Capacitor Electrodes and Method of Etching." The invention related to etched tantalum electrodes for electrolytic capacitors and to the etching of tantalum by an apparently novel liquid solution.

On July 11, 1951, appellants filed a second United States application, serial No. 236,128, entitled "Method of Etching Capacitor Electrodes" as a continuation-in-part of the aforesaid original application. This second application was filed as a result of a Patent Office requirement of division. The original application became abandoned on February 7, 1953.

On May 13, 1953, the complete British specification No. 691,509 was published as a result of an application filed August 21, 1951, which specification is, except for the claims, substantially a copy of appellants' aforesaid original United States application. It was, in fact, a conventional application based thereon.

On May 9, 1955, appellants filed a third application, serial No. 507,010, the one involved in this appeal, as a continuation-in-part of the second application. This third application added to the disclosure of tantalum the metals zirconium, titanium, niobium, and alloys of tantalum and niobium, on the basis of which generic and certain species claims were added to the case.³

The two continuation-in-part applications contained the cross-references to the earlier applications required by 35 U.S.C. 120 and there was also the necessary copendency to comply with that statute.

On July 21, 1955, the examiner issued a final rejection of claims 1-3 and 19-22 for "lack of invention over" the British specification, relying on In re Steenbock, 83 F.2d 912, 23 C.C.P.A., Patents, 1244, as controlling. He allowed claims 4-18, which were directed to tantalum, the sole metal disclosed in the original application. On February 13, 1957, the Board of Appeals affirmed the examiner, also holding the Steenbock case to be controlling, and saying:

"Appellants do not show possession of the invention described in the claims on appeal with respect to zirconium, niobium or titanium at a time prior to the patenting date of the British patent."

Of course, we do not know anything about the patenting date, if any, of the British specification and the board was no doubt referring to its publication date. We shall make that assumption. However, we do not understand the examiner's rejection to have been predicated on appellants' failure to have been in possession of the invention of the appealed claims before the publication of the British specification. What the examiner said in his final rejection was, "The reference is a statutory bar to any subject matter not disclosed in the parent case." And, in a letter to the Patent Office subsequent thereto, the applicants' attorney summed up the situation thus:

"At the interview the final rejection of claims 1-3 and 19-22 on applicants\' British patent was clarified by the Examiner at the request of applicants\' attorney. The Examiner stated that the British patent was being used as a printed publication which, being published more than one year before the filing of the present application, constituted (as the Examiner holds) a statutory bar against the rejected claims." (Emphasis ours.)

In the Examiner's Answer on appeal to the board he concisely restated his position as follows:

"The publication date of the British patent is more than one year prior to the filing date of the instant application, and is therefore a statutory bar under 35 U.S.C. § 102(b), unless applicants are here entitled to the filing date of one of their parent co-pending applications." (Emphasis ours.)

Appellants have been given the benefit of the filing date of their parent application as to what it discloses, and of course they are "entitled" to it to that extent, and the method claims 4-18 specific to the etching of tantalum stand allowed. The claims on appeal, however, being either specific to metals first disclosed in the application of May 9, 1955, or generic to those metals and tantalum, find no support in the earlier applications and it is for this reason that the British specification is cited against them. Appellants do not contend that the applications prior to the one involved here contain any support for claims to the added metals, whether specific or generic, but rely on them here only as a means of getting rid of the British reference altogether.

Appellants tell us that they "base their main argument on the case of In re Stempel, 1957, 241 F.2d 755, 44 C.C.P.A., Patents, 820, decided by the Court subsequent to the Board of Appeals decision appealed from in this case." In view of the nature of the argument which has been erected on certain passages in the Stempel opinion, we deem it advisable to reiterate the warnings given in the past by Judge Hatfield in Conover v. Downs, 35 F.2d 59, 17 C.C.P.A., Patents, 587, 592, and Judge O'Connell in In re Newton, 187 F.2d 337, 38 C.C.P.A., Patents, 877, 880, that undue liberties should not be taken with court decisions, which should be construed in accordance with the precise issue before the court, and that a fertile source of error in patent law is the misapplication of a sound legal principle established in one case to another case in which the facts are essentially different and the principle has no application whatsoever.

As we have indicated, the situation here involves a one year statutory bar under 35 U.S.C. § 102(b). The claims on appeal were first supported by and made in an application filed May 9, 1955 and the British specification had been published nearly two years before on May 13, 1953, fully disclosing the invention as applied to tantalum, a species within the generic claims. As reiterated in the Steenbock case, it is axiomatic that the disclosure of a species in a reference is sufficient to prevent a later applicant from obtaining generic claims, unless the reference can be overcome, and so the British specification disclosing the species tantalum, published over a year before appellants filed their generic disclosure is clearly a statutory bar to the granting of the generic claims.

Furthermore the present case is an exact parallel to the situation in the Steenbock case. The application there involved disclosed and claimed the irradiation of fungus material broadly. It was filed May 14, 1932⁴ as a continuation-in-part of an application filed December 27, 1926, which did not disclose the broad genus "fungus material," but only a specific fungus, yeast. The references were two publications of 1925 and 1927 and Steenbock's own British specification published November 12, 1926. Steenbock was allowed his specific yeast claims, supported by his parent application, because there was no two year statutory bar against them (the law then allowed two years) and he was able to swear back of the references and show prior invention. But as to the broad fungus material claims, all three references were held to be statutory bars as two year publications by the Board of Appeals. While appellants argue strenuously that this court did not affirm that rejection but affirmed on another ground allegedly applied by the board to the effect "that the fungus claims were broader than and unsupported by a disclosure of the single yeast species," there was no such other ground of rejection. It is all of a piece. The board's finding was that because of the lack of supporting disclosure for broad fungus claims in the parent applications, Steenbock had to rely on his 1932 filing date and therefore the references were two year statutory bars as to it; and this court, after restating the board's rejection as having been "for the reason that each of the references * * * was published more than two years prior to the filing of the involved application," affirmed that rejection. The Steenbock case is therefore directly in point and clear authority for the rejection of the broad claims herein.

We come now to the Stempel case, on which appellants "base their main argument." They say in their brief, "the Steenbock case was disposed of by this Court in the Stempel case except as to its statutory bar aspect which was not involved in the Stempel case, but about which there seems to be some confusion."

The only disposition we made of the Steenbock opinion in the Stempel case was to say that it had nothing much...