Application of Schlittler

• Decision Date: 21 June 1956
• Docket Number: Patent Appeal No. 6263.
• Citation: 234 F.2d 882
• Parties: Application of Emil SCHLITTLER and Andreia Uffer.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

234 F.2d 882 (1956)

Application of Emil SCHLITTLER and Andreia Uffer.

Patent Appeal No. 6263.

United States Court of Customs and Patent Appeals.

June 21, 1956.

Wenderoth, Lind & Ponack, Washington, D. C. (A. Ponack, Washington, D. C., and Harry Goldsmith, of counsel), for appellant.

Clarence W. Moore, Washington, D. C. (J. Schimmel, Washington, D. C., of counsel), for Commissioner of Patents.

Lawrence B. Biebel, Dayton, Ohio, President, Leland L. Chapman, Cleveland, Ohio, Chairman, Chemical Practice Committee (H. W. Edelblute, Stamford, Conn., R. S. Bley, Elizabethton, Tenn., J. S. Roberts, Jr., A. B. Christen, Washington, D. C., and N. A. Waldrop, Detroit, Mich., of counsel), for American Patent Law Ass'n, amicus curiae.

James Edwin Archer, Stamford, Conn., James T. Kline, Bridgeport, Conn., and John B. Willard, Hartford, Conn. (Robert Ames Norton, Stamford, Conn., of counsel), for The Conn. Patent Law Ass'n, amicus curiae.

Floyd H. Crews, President, and W. Houston Kenyon, Jr., First Vice President, New York City, for The New York Patent Law Ass'n, amicus curiae.

Before JOHNSON, Acting Chief Judge, and WORLEY, COLE, and JACKSON, retired, Associate Judges.

WORLEY, 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 claims 11 to 15, inclusive, of appellants' application for a patent on "Amines and Process for the Preparation of Amines." Claims 11 and 13 are the only appealed claims which have been considered on their merits. Claims 12, 14, and 15 stand rejected as not readable on the elected species, no generic claim having been allowed. Under such circumstances, those claims are not before us for consideration on their merits. In re Stoll, 161 F.2d 241, 34 C.C.P.A., Patents, 1058.

Since issues of law only are involved in this appeal, it is unnecessary to discuss the disclosure of appellants' application or to reproduce any of the claims on appeal.

The appeal from the decision of the Primary Examiner was originally heard by a panel of three members of the Board of Appeals, which affirmed the examiner's decision. Thereupon a petition for rehearing was filed by appellants and, in view of the importance of the issues involved, the appeal was considered by the entire Board of Appeals, which, with two of its nine members dissenting, adhered to the original decision.

Amicus curiae briefs have been filed here on behalf of the American Patent Law Association, the Connecticut Patent Law Association, and the New York Patent Law Association, all of which urge reversal of the board's decision.

The single reference relied on by the Patent Office in rejecting appellants' application is an article by Nystrom et al. which appeared in the November 1948 issue of the publication "The Journal of the American Chemical Society." Since appellants' application is admittedly entitled to the benefit of its filing date in Switzerland as of May 21, 1948, it is conceded the Nystrom et al. article cannot be used as a proper reference on the basis of its publication date alone. However, at the end of the published article is the notation "Received April 30, 1948."

The rejection is based on Section 102 (a) of the Patent Act of 1952, 35 U.S.C. § 102(a), which provides that a patent shall not be granted if "the invention was known or used by others in this country * * * before the invention thereof by the applicant for patent." While no one contends the Nystrom article is a "publication" within the meaning of 35 U.S.C. § 102(a), as of April 30, 1948, it was the position of the Patent Office, notation of that date constitutes prima facie evidence that the invention claimed by appellants was "known" by others in this country prior to May 21, 1948. It is not disputed that the invention recited in appealed claims 11 and 13 is disclosed in the Nystrom et al. publication.

Although appellants, as well as amicus curiae, stress the alleged criticality of the notation purportedly reflecting the date of receipt of the article, it seems to us, in view of the decisions hereinafter cited, the basic question here is whether the Nystrom article, regardless of the date received, constitutes sufficient evidence of prior knowledge or use of the claimed invention by others in this country within the meaning of 35 U.S.C. § 102(a).

The Nystrom article contains descriptions of various experiments. It has been held by this court, however, that even a printed publication does not constitute a reduction to practice, but is evidence of conception only, Kear v. Roder, 115 F.2d 810, 28 C.C.P.A., Patents, 774. Obviously the same would certainly be true of the manuscript on which a publication is based. Moreover, it was not held below, nor is it contended in the brief for the Commissioner of Patents, that the Nystrom et al. article per se is evidence of reduction to practice of the invention claimed. Accordingly, that article, at best, could be evidence of nothing more than conception and disclosure of the invention.

Before enactment of the Patent Act of 1952, it was repeatedly held that prior knowledge, in order to defeat a claim for a patent, must be knowledge of a complete and operative device, as distinguished from knowledge of a conception only.

Thus, in Block v. Nathan Anklet Support Co., Inc., 2 Cir., 9 F.2d 311, 313, the court said: "Were they `known' in the sense in which the statutes uses sic the term? The word has acquired a somewhat esoteric meaning, imputed by the courts to accomplish the purpose of the statute. Mere acquaintance with the invention, even if disclosed, is not enough; nothing short of `reduction to practice' will do, whatever that may mean", citing Reed v. Cutter, 20 Fed. Cas. page 435, No. 11,645, 1 Story 590, 599; Coffin v. Ogden, 18 Wall. 120, 21 L.Ed. 821; Stitt v. Eastern R. Co., C.C., 22 F. 649, 650; Imperial Brass Mfg. Co. v. Nelson, 7 Cir., 203 F. 484; and Buser v. Novelty Tufting Machine Co., 6 Cir., 151 F. 478.

In Coffin v. Ogden, supra, the court said:

"* * * The invention or discovery relied on as a defense must have been complete, and capable of producing the result sought to be accomplished; * * *. The law requires not conjecture but certainty. If the question relate to a machine, the conception must have been clothed in substantial forms which demonstrate at once its practical efficacy and utility. * * *"

In Stitt v. Eastern R. Co., supra, it was said:

"The evidence is sufficient to support the defense of prior knowledge and use, if it proves the invention was complete and capable of working; if it had been put to use, and was known to any considerable number of persons. * * * If the construction of the prior thing of itself demonstrates that it is within the principle of the patent, then, perhaps, no use need be established, for it might be said to prove itself. * * * It is not necessary that the prior invention should have been actually used for the purpose contemplated, but it must have been capable of such use."

The principle involved in the decisions just cited was carried a step further in Doyle v. Spaulding, C.C., 19 F. 744; Westinghouse Mach. Co. v. General Electric Co., 2 Cir., 207 F. 75; and City of Milwaukee v. Activated Sludge, Inc., 7 Cir., 69 F.2d 577. Each of those cases involved a situation in which a device had been successfully used abroad, and individuals in this country were shown to have had full knowledge of it prior to its invention by the patentee whose patent was in dispute. In each case it was held there was no such prior knowledge as would invalidate the patent. Manifestly, knowledge of a conception which has not been reduced to practice, as in the present case, can be no more effective than knowledge in this country of a conception which has been reduced to practice abroad.

It is, moreover, settled that a disclosure in an abandoned application for a patent does not constitute such evidence of prior knowledge as will bar the allowance of a subsequent application. The Corn-Planter Patent, 23 Wall. 181, 90 U.S. 181, 23 L.Ed. 161; Monarch Marking System Co. v. Dennison Mfg. Co., 6 Cir., 92 F.2d 90; Interurban Ry. & Terminal Co. v. Westinghouse Electric & Mfg. Co., 6 Cir., 186 F. 166, 168. In the last case cited the court quoted with approval the following paragraph from Walker on Patents, Fourth Edition:

"`Novelty is not negatived by any prior abandoned application for a patent. Abandoned applications for patents are not, by the statutes, made bars to patents to later applicants. They furnish no evidence that the processes or things they describe were ever made or used anywhere. Being only pen and ink representations of what may have existed only as mental conceptions of men who put them upon paper, they do not prove that the processes or things which they depict were ever known in any country. Nor can they be classed as printed publications, for they are usually in writing, and not published by the Patent Office.\'"

Since an abandoned patent application is evidence of conception of the invention it discloses, Euth v. Oliver, 70 F.2d 110, 21 C.C.P.A., Patents, 1027, and cases there cited, the last three decisions cited above also stand for the proposition that knowledge of a prior conception of an invention in this country is not enough to defeat the claims of a subsequent applicant.

The general rule as to prior knowledge is stated in Robinson on Patents, Section 227:

"Thus we arrive at a more perfect and exhaustive definition of this attribute of novelty and see that an invention is to be regarded as new whenever it has not already been brought within the practical knowledge of the public as an operative means, either through prior use at home or through a prior patent or a prior publication."

To the same effect is the statement in Revise and Caesar, Patentability and Validity (1936) section 57, that:

"Prior knowledge and use to be effective as an anticipation must have been

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