Application of Scheiber, Appeal No. 78-520.

Citation587 F.2d 59
Decision Date16 November 1978
Docket NumberAppeal No. 78-520.
PartiesApplication of Peter SCHEIBER.
CourtUnited States Court of Customs and Patent Appeals

Michael J. Sweedler, New York City, atty. of record, for appellant.

Joseph F. Nakamura, Washington, D.C., for the Commissioner of Patents; Thomas E. Lynch, Washington, D.C., of counsel.

Before MARKEY, Chief Judge, RICH, BALDWIN and MILLER, Judges, and FORD,* Judge.

MARKEY, Chief Judge.

The Patent and Trademark Office Board of Appeals (board) affirmed the rejection under 35 U.S.C. § 102 of claims 10-17, 19-22, 24 and 25, in application serial No. 270,184 filed July 10, 1972, and entitled "Spherical Coordinate Sound System." We affirm.

The Invention

Scheiber invented apparatus for communicating three or more directional sound signals on standard, two-channel audio systems.

Two position angles, alpha and beta, are assigned to each of the sound signals. By proper selection of position angles, a sound source can be located in three dimensions. Amplitude ratios and phase differences of sound signal components, coupled to the respective channels, define the alpha and beta angles for each sound signal. For encoding input sound signals f, having position angles alpha and beta (where A and B are the two channels), the equations are:

The equation for deriving decoded output signals gn is:

Claim 10 is typical:

10. For use in a multidirectional sound system wherein at least three directional input sound signals are encoded on A and B audio channels and at least three directional output sound signals corresponding to the input signals are reproduced from the A and B channels, decoder apparatus comprising an A input and a B input, n means connected to said A and B inputs for generating n directional sound output signals gn each having and position angles associated therewith, wherein:

The Rejection

The examiner rejected the claims under 35 U.S.C. § 102 as anticipated by Takahashi patent No. 3,777,076 or Bauer patent No. 3,821,471. The references disclose structure for encoding and decoding multiple audio signals. With specific values for alpha and beta in appellant's claims, the examiner found the formulas equivalent to those disclosed by and set forth in the claims of Takahashi and Bauer.

Scheiber said his present application, a continuation-in-part of two earlier applications,1 was entitled to an effective filing date antedating the references,2 because, upon substitution of the specific alpha and beta values suggested by the examiner, the presently claimed subject matter was disclosed in his earlier applications in full compliance with 35 U.S.C. § 112, first paragraph. The examiner found insufficient disclosure in the earlier applications to support the claims or to teach the anticipatory subject matter in the references.

The Board

Finding no basis in appellant's earlier applications for the beta angle now claimed, the board denied appellant his earlier filing date. The board refused to review the examiner's position on the relationship between the earlier applications and the references, because it considered that relationship "not germane."

Issue

The issue is whether Scheiber's present claims are entitled to the benefit of his earlier application's filing date.3

OPINION

35 U.S.C. § 120/Rule 131

"Invention," as used in 35 U.S.C. § 120,4 refers to the claimed invention in a continuing application. In re Lukach, 442 F.2d 967, 968, 58 CCPA 1233, 1235, 169 USPQ 795, 796 (1971); In re Brower, 433 F.2d 813, 817, 58 CCPA 724, 728, 167 USPQ 684, 687 (1970).

The operation of § 120 differs from the operation of Patent and Trademark Office Rule 131 (37 CFR 1.131).5 The latter provides an applicant a mechanism for overcoming specific prior art references predating his effective filing date. The applicant need show priority with respect to only so much of the claimed invention as the references disclose, In re Stempel, 241 F.2d 755, 760, 44 CCPA 820, 826, 113 USPQ 77, 81 (1957), or only so much as to render the claimed invention obvious. In re Spiller, 500 F.2d 1170, 1177, 182 USPQ 614, 619 (Cust. & Pat.App.1974). Section 120, on the other hand, concerns only an applicant's effective filing date. Unlike Rule 131, § 120 operates independently of the prior art, of which it makes no mention, and it expressly requires an earlier application to disclose the claimed subject matter in compliance with 35 U.S.C. § 112, first paragraph. Thus it is entirely appropriate that the showing required under § 120 differs from that required under Rule 131.

The Present Case

Scheiber admits that his claims are directed to general three-dimensional systems and are not supported by his earlier applications. That admission would normally end the inquiry under § 120. In the present case, however, Scheiber alleges that his earlier applications do support his claims when the claims are interpreted as reading on the specific systems taught by Takahashi and Bauer. That the claims under consideration are subject to that interpretation and, as so interpreted, are anticipated by the two references, is not disputed.

Nevertheless, although Scheiber's claims are rejected on references that teach no more than is disclosed in his earlier applications, that circumstance does not entitle him to claim his earlier filing date under § 120 for claims not supported in those applications.6 This court denied an applicant the benefit of § 120 under similar circumstances in In re Lukach, supra. In that case, a composition claim reciting a range of molecular weight distribution was denied the filing date of a parent application, even though the reference cited against the claim disclosed a composition identical to that in the parent application. Denial of the earlier date was premised on failure of the parent application to disclose the range recited in the claim. The court noted that "the description of a single embodiment of broadly claimed subject matter constitutes a description of the invention for anticipation purposes * * * whereas the same information in a specification might not alone be enough to provide a description of that invention for purposes of adequate disclosure" under the first paragraph of 35 U.S.C. § 112. In re Lukach, supra, 442 F.2d at 970, 58 CCPA at 1236, 169 USPQ at 797; accord, In re Sichert, 566 F.2d 1154, 1165, 196 USPQ 209, 218 (Cust. & Pat.App.1977).

Scheiber argues unfairness in what he views as the employment of one claim interpretation in finding anticipation under § 102, and of a different interpretation in denying him his earlier filing date. Any apparent unfairness results, however, from Scheiber's choice of claim language. Claim 10, the broadest claim, includes means for generating a class of output signals defined by a mathematical expression. Substitution of certain values for alpha and beta in the expression creates a specific subclass of output signals, causing the claims to read on allegedly identical disclosures in the references and in the earlier applications. Thus the claims are being given not inconsistent interpretations, but a single interpretation encompassing a class and subclass.

If Scheiber's position were to prevail, the claims under consideration would be granted one filing date when viewed as encompassing general three-dimensional systems, and a different, earlier date under § 120 when viewed as encompassing certain specific systems. The filing date made available under § 120, however, is limited to claimed subject matter disclosed in an earlier application in the manner required by § 112. Hence the board correctly, and necessarily, determined that the relationship of the claims to certain references, and of the references to Scheiber's earlier applications, were not germane.

Accordingly, the decision of the board is affirmed.

AFFIRMED.

BALDWIN, Judge, concurring.

I completely agree both with the approach taken by the majority on the § 120 question and the resulting decision. I would, however, consider another question not reached by the majority.

I have carefully considered appellant's brief, reply brief, and the extensive prosecution history of this application in the PTO and yet I find no cogent statement of the theory upon which appellant seeks relief. The theme recurring throughout the brief is that appellant wishes to "rely on the filing dates of his '886 and '792 patents to overcome Bauer and Takahashi to the extent those patents contain the same disclosures as the references." How he wishes to "rely" on those dates is not certain.

Ordinarily, failure of an appellant to present a clear question for the court to decide with attendant legal theories to support the desired answer to that question would be fatal to the appeal. However, since the arguments and facts herein could support different pathways of legal reasoning, and, more importantly, possibly different results, it would seem to be worthwhile to explore one apparent alternative rationale.

There are at least two ways that this case may be treated. First, the court may find that appellant is asking it to make the decision that various bits of his claimed invention are supported in the parent applications (now patents '886 and '792—both filed before Bauer and Takahashi) and thereby provide a § 120 immunity to the claimed invention. The majority opinion properly rejects this approach. Alternatively, appellant may be asking the court to treat his prior patents as some type of pro forma Rule 131 affidavit. The argument is made here (as it was before the board) that the principles discussed in In re Rainer, 390 F.2d 771, 55 CCPA 853, 156 USPQ 334 (1968)1 should apply in a similar manner in this case since, appellant argues, "the essential issue * * * is the question of priority of invention and nothing else." Obviously, appellant has not submitted a Rule 131 affidavit to overcome Bauer and Takahashi.2 But through the years this court has taken a "rule-of-reason" approach in permitting an appellant...

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