Application of Saunders

Decision Date08 February 1955
Docket NumberPatent Appeal No. 6073.
Citation104 USPQ 394,219 F.2d 455
PartiesApplication of Robert H. SAUNDERS.
CourtU.S. Court of Customs and Patent Appeals (CCPA)

Clinton F. Miller, Wilmington, Del., for appellant.

E. L. Reynolds, Washington, D. C. (J. Schimmel, Washington, D. C., of counsel), for the Commissioner of Patents.

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

O'CONNELL, Acting Chief Judge.

This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming the rejection by the Primary Examiner of all of the claims in appellant's application for a patent on an alleged invention relating to a new and useful improvement in the preparation of polyhalo derivatives and more particularly to a process of forming an adduct of a terpene and a polyhalomethane in the presence of a peroxide catalyst.

Of the 13 rejected claims, only 7, 19, 25, and 26, which read on the elected species, are involved in this appeal. Claims 7 and 19 were considered by the Board of Appeals as illustrative:

"7. The process of preparing a terpene-polyhalomethane adduct which consists of heating a cyclic unsaturated terpene with a polyhalomethane in the presence of a peroxide catalyst.
"19. A cyclic terpene-polyhalomethane adduct prepared by heating a cyclic unsaturated terpene with a polyhalomethane in the presence of a peroxide catalyst."

The board noted that "The claims relate to adducts of cyclic unsaturated terpenes and polyhalomethanes and to a method of preparing same. Both the adducts and the method are sufficiently described for the purpose of this decision in the copied claims."

The Solicitor for the Patent Office in his brief clarifies the issue thus:

"Claim 7 defines the process of heating a cyclic unsaturated terpene with a polyhalomethane in the presence of a peroxide catalyst to form a terpene-polyhalomethane adduct; claim 19 defines the product of that process. No contention was made below, and none is made here, that any one claim contains any limitation which would make it patentable over any other claim. Hence it is clear that the claims stand or fall together."

The question to be determined here, together with the background of the litigation, are thus accurately defined in the brief for appellant:

"There is only one issue involved in this appeal. The issue arises from the fact that the instant application and an application of Goldblatt et al. were involved in Interference No. 83,793 which was settled amicably by the parties, the terms of the settlement involving the filing of cross-concessions of priority by the parties. Goldblatt et al. conceded priority to appellant as respects the generic counts and one subgeneric count, whereas appellant conceded priority to Goldblatt et al. as respects another subgeneric count. The issue raised is solely one of law and may be stated as follows:
"(1) Are the generic claims under appeal, conceded to appellant by the adverse party in the interference, unpatentable to appellant in view of his concession to the adverse party during the interference of priority as respects a subgeneric count?"

The Board of Interference Examiners in awarding priority to the respective parties in accordance with their cross-concessions, made such award without prejudice to the right of the Primary Examiner to reject the claims conceded to one party as unpatentable over the claims conceded to the other party.

No prior patents were cited or relied upon in the instant case by the tribunals of the Patent Office. The examiner in his statement referred, however, to the counts conceded to the adverse party...

To continue reading

Request your trial
2 cases
  • Studiengesellschaft Kohle v. Eastman Kodak, Civ. A. No. B-74-392-CA.
    • United States
    • U.S. District Court — Eastern District of Texas
    • September 21, 1977
    ...filing date of Ziegler et al's Z4348 application in Germany wherein propylene polymerization was first disclosed. Application of Saunders, 219 F.2d 455, 457, 42 CCPA 763 (1955); Application of Kyrides, 159 F.2d 1019, 1021-22, 34 CCPA 920 (1947). Such polypropylene claims are invalid as anti......
  • APPLICATION OF LINDELL, Patent Appeal No. 6074.
    • United States
    • United States Court of Customs and Patent Appeals
    • February 8, 1955

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT