Application of Smyth

• Decision Date: 05 June 1951
• Docket Number: Patent Appeal No. 5808.
• Citation: 189 F.2d 982,90 USPQ 106
• Parties: Application of SMYTH.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

90 USPQ 106, 189 F.2d 982 (1951)

Application of SMYTH.

Patent Appeal No. 5808.

United States Court of Customs and Patent Appeals.

June 5, 1951.

Rayson P. Morris, New York City (John J. Rogan, New York City, of counsel), for appellant.

E. L. Reynolds, Washington, D. C. (H. S. Miller, Washington, D. C., of counsel), for Commissioner of Patents.

Before GARRETT, Chief Judge, and JACKSON, O'CONNELL, JOHNSON and WORLEY, Judges.

GARRETT, Chief Judge.

This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming that of the Primary Examiner, hereinafter referred to as the examiner, rejecting the claims, numbered 4 to 12, inclusive, of appellant's application for patent relating to alleged "new and useful improvements in Control of Television Receivers." No claims were allowed.

Claims 10 and 11 are method claims; the others relate to an apparatus by means of which the method is practiced.

The board selected claim 4 as illustrative of all the claims. In the brief for appellant claim 10 is cited as typical of the method claims. We here reproduce the two:

"4. A television receiver comprising means for receiving television signals, an image reproducer for reproducing images corresponding to said signals, means for controlling an operating characteristic of said receiver to modify the signals produced thereby, a light sensitive device positioned and constructed to detect illumination impinging on the receiver from a source exterior thereto and arranged to generate control signals substantially independent of said television signals but corresponding to the level of said exterior illumination, and control means responsive to said control signals for modifying said operating characteristic of said image reproducer in accordance with changes in the intensity of said exterior illumination to modify said television signals in accordance therewith.

"10. The method of reproducing television images in accordance with received signals in a location of varying general illumination which comprises generating electrical control signals responsive to the varying general illumination, producing television images under the control of received television signals, and combining the actions of said generated control signals and said received television signals to produce television images of substantially uniform apparent contrast independently of the intensity of the varying general illumination."

The examiner's rejection which the board affirmed was based upon the ground that the claims are unpatentable to appellant in view of a patent, No. 2,264,172, issued to John C. Batchelor November 25, 1941, upon an application, serial No. 291,866, filed in the United States Patent Office August 25, 1939.

As a matter of fact, all the claims on appeal were copied verbatim from the Batchelor patent.

The situation presented is somewhat novel.

Appellant, who is a British subject, obtained from the British Government, as the inventor, a patent entitled "Improvements in or relating to the Control of Television Receivers." The patent bears date of October 27, 1939. The provisional specification¹ of the patent, which appears to be required under British patent statutes, bears date of February 7, 1939. As we understand it, the latter was the filing date of the application and the former, that is, October 27, 1939, was the date of the issuance of the patent.

Appellant avowedly is seeking to have an interference declared ultimately so that he may contest priority with Batchelor.

His United States application here involved was filed in the Patent Office August 19, 1947, and given the serial number 769,549. Its text is an exact replica of the complete specification of his British patent. As filed, it embraced three claims which were verbatim copies of the claims in his British patent.

From the foregoing it may be seen that the filing date of appellant's provisional specification in Great Britain (February 7, 1939) was more than six months prior to the filing date (August 25, 1939) of the United States application of Batchelor, but the date of issuance of appellant's patent (October 27, 1939), which contained the latter's complete specification, was substantially two months after the Batchelor filing date.

On October 14, 1947, appellant, proceeding under Public Law 690 of the 79th Congress, see 35 U.S.C.A. § 109; also Patent Office Rule 55 in edition of March 1, 1949, with footnote, 35 U.S.C.A.Appendix, requested "the priority date of February 7, 1939," for his application, stating, in effect, that on that date he had filed the application, that is, his provisional specification, in Great Britain.

Certain evidence was submitted and the United States examiner in a decision dated June 7, 1948, held appellant "entitled to a priority date corresponding to the filing date of the application the provisional specification filed in Great Britain on Feb. 7, 1939, as to claims 1, 2 and 3," but in the same decision he rejected those claims as being "vague, indefinite and incomplete," Nos. 1 and 2 being further rejected on certain prior art not involved here.

In the course of his decision he said:

"Although the British provisional specification is sufficient to support the functional statements of claims 1-3, it is to be noted that such disclosure would not support claims properly drawn to the subject matter disclosed by the present application.

"In amending his claims applicant should endeavor to patentably distinguish them over the Batchelor patent which discloses and claims subject matter quite similar to that disclosed by applicant.

"Since the above noted provisional specification does not disclose such subject matter and since the complete specification of applicant's British patent was not filed before the filing date of the Batchelor patent, this patent will constitute a valid reference.

"Furthermore applicant's British patent, cited above, is a statutory bar to the allowance of any claims not supported by the provisional specification referred to above."

Appellant thereupon cancelled the three original claims, and on December 6, 1948, amended his application by substituting the nine claims here on appeal, stating that it was done `for purposes of Interference with U.S. Pat. No. 2,264,172" (the Batchelor patent).

It is not questioned that appellant in this proceeding is entitled to rely upon the filing date of his provisional specification in Great Britain for constructive reduction to practice of all subject matter which it discloses. Cf. Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5, 613, 59 S.Ct. 675, 83 L.Ed. 1071.

The brief of the Solicitor for the Patent Office states that "It is conceded that it the provisional specification is a reduction to practice for what is disclosed therein," but that "It is obviously not a reduction to practice for subject matter not disclosed therein." (Italics supplied by us.)

It apparently is conceded that the complete specification of appellant's British patent supports the appealed claims but the complete specification not having been issued until some two months after the filing date of the Batchelor application, it, in effect, properly was held that appellant could not rely on its date to establish a priority date even prima facie.

It is important in considering the case to keep in mind the distinction with reference to disclosure between appellant's provisional specification and his complete specification.

By reference to the decision of the Court of Appeals of the District of Columbia (now the United States Court of Appeals of the District of Columbia Circuit), our immediate predecessor in jurisdiction of appeals taken directly from the Patent Office, in the case of In re Bastian, 44 App. D.C. 425, it may be seen that that court approved a holding of the Commissioner of Patents to the effect that the grant of a United States patent was barred where a provisional specification had been filed in Great Britain more than a year prior to the filing of the United States application, notwithstanding the fact that the provisional specification did not disclose the subject matter of the claims of the United States application.

If the principle of that decision were followed here it would seem that much of appellant's difficulty in the case might be obliterated, but this court in a decision in the interference case of Normann v. Schmidt, 125 F.2d 162, 29 C.C.P.A., Patents, 822, 830, expressed its disagreement with that decision and declined to follow it, citing decisions to the contrary in the following cases: American Stainless Steel Co. v. Rustless Iron Corporation of America, D.C., 2 F.Supp. 742; Handley Page, Limited v. Leech Aircraft, Inc., D.C., 35 F.Supp. 856; and Woburn Degreasing Co. of New Jersey v. Spencer Kellogg & Sons, Inc., D.C., 40 F.Supp. 357.

In its decision in the instant case, rendered in response to appellant's petition for reconsideration of its original decision affirming that of the examiner, the Board of Appeals recited that the British Patents and Designs Act, 1907, Part I, Section 2, quoted the following from the British statutes²: "(1) A provisional specification must describe the nature of the invention. (2) A complete specification must particularly describe and ascertain the nature of the invention and the manner in which the same is to be performed." (Italics supplied by us.)

Following this quotation the board commented: "A provisional specification only fulfills a part of what the complete specification will eventually describe. In other words the provisional specification merely describes the nature of the invention and does not set forth the manner in which the same is to be performed, which is the function of the complete specification and is also the function of the specification filed in the United States and which is acceptable as a constructive reduction to practice."

In view of the fact that appellant,...