Application of Stanley

• Decision Date: 24 June 1954
• Docket Number: Patent Appeal No. 6010.
• Citation: 214 F.2d 151
• Parties: Application of STANLEY et al.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

214 F.2d 151 (1954)

Application of STANLEY et al.

Patent Appeal No. 6010.

United States Court of Customs and Patent Appeals.

June 24, 1954.

Howson & Howson, Philadelphia, Pa. (Dexter N. Shaw, Philadelphia, Pa., Carl A. Castellan and William A. Smith, Jr., Washington, D. C., of counsel), for appellants.

E. L. Reynolds, Washington, D. C. (S. W. Cochran, Washington, D. C., of counsel), for the Commissioner of Patents.

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

JOHNSON, Judge.

This is an appeal from the decision of the Board of Appeals of the United States Patent Office, affirming the Primary Examiner in his rejection of claims 7, 8, 11-14, 38-41, and 46 of appellants' application, Serial No. 504,664, for new and useful improvements in "Methods and Apparatus for the Fluid Treatment of Filamentary Materials." All of the rejected claims are method claims. Apparatus claims 47-56 have been allowed.

Claims 7 and 14 were considered representative by the board and are so considered by us. They are as follows:

"7. The method of treating filamentary material with a liquid comprising the steps of passing the material through a generally helical path at sufficiently high velocity to throw the liquid therefrom by centrifugal force, delivering the liquid to the material as it passes through the helical path, and deflecting the liquid thrown from the filamentary material back to the helix.

"14. The method of treating filamentary material with a liquid comprising the steps of passing the material upwardly through a generally helical path having an approximately vertical axis at sufficiently high velocity to throw the liquid therefrom by centrifugal force, delivering the liquid to the material as it passes through the helical path adjacent the upper end of the path, deflecting the liquid thrown from the material back to the helix so that the liquid continually plays upon a zone of the helix and moves under the influence of gravity generally downwardly through that zone toward the material entrance end of the path, and withdrawing the liquid from the zone adjacent its lower end."

The references relied on are: Walters 2,145,281 Jan 31, 1939; Truitt 2,513,381 July 4, 1950.

The invention, as defined by the claims on appeal, relates to a method of treating filamentary material with a liquid by passing the material through a helical path, introducing a liquid to the material while the material is revolving at a sufficiently high velocity to throw the liquid off the material by centrifugal force and deflecting the thrown liquid back onto the material. In this manner the material is said to be subjected to a more thorough contact with the liquid.

The patent to Walters relates to reels of the thread-storage, thread-advancing type in which thread is wound upon the reel in a series of spaced helical turns. Walters discloses a reel mounted on a hollow spindle to rotate therewith. A current of hot air, a gas, or a suitable liquid can be introduced to the thread through the hollow spindle. Alternatively, a gas or liquid can be introduced to the surface of the thread, drawn through the thread into the reel and carried away through the hollow spindle.

The patent to Truitt discloses an improvement in a method for liquid treatment of filamentary materials. This method requires that the material be passed through a helical path, with each convolution in contact with adjacent convolutions, that the liquid be introduced into the space within the helix, that the liquid be forced out of the helix by centrifugal force and that the thrown liquid be confined to a region adjacent the helix. For convenience claim 4 of the Truitt patent, which is representative of the claims therein, is set out.

"4. The method of treating filamentary material with liquid comprising continuously passing the material through a generally helical path with each convolution thereof making contact with adjacent convolutions, introducing a liquid into the space surrounded by the helix, rotating the liquid within the helix at sufficient speed to force it outwardly through the helix by centrifugal force, distributing the liquid throughout the entire circumference of a predetermined band or zone of the helix, and causing the liquid flowing outwardly of the helix to continually play thereupon."

All of appellants' appealed claims were rejected on the claims of the Truitt patent. This rejection was based on the theory of double patenting, since both Truitt and appellants have assigned their inventions to the same party, the American Viscose Corporation. In order to clearly understand the circumstances of this appeal we will briefly review the history of the prosecution before the Patent Office.

Appellants filed their application on October 2, 1943. It appears from the record that appealed claims 7, 8, and 11-14 were among the original claims filed with the application. The application was duly prosecuted and on November 18, 1949 in a letter by the examiner, all of the appealed claims were indicated as allowed. However, they were held "subject to rejection as unpatentable over the issue of the interference between this application and the Ewing patent No. 2,481,916 dated Sept. 13, 1949, in the event of an award of priority adverse to applicant." This letter of the examiner was termed as a final action on the ex parte prosecution of the application.

During the prosecution of the instant application, and on December 6, 1945, an application was filed by Truitt for a patent on "Method For Treatment Of Filaments." While the above interference was pending the Truitt application was allowed and issued on July 4, 1950 as patent No. 2,513,381, assigned to the American Viscose Corporation.

The decision on the interference was apparently adverse to appellants for on April 2, 1951 they filed an amendment to their application canceling, among others, the claims that formed the counts of the interference. After what appears to have been an exchange of letters the examiner gave his final action in a letter dated June 27, 1951, finally rejecting all of the appealed claims.

This rejection was based on the claims of the Truitt patent, the examiner stating that the patent claims differed only in scope from the broad, generic claims of the application. The Walters patent was cited to show that the mode of applying the fluid to the thread was "an immaterial variation by virtue of being conventional." The examiner also held that the spacing of the thread in the Truitt patent was conventional, or at least that it represented an uninventive expedient by virtue of the fact that threads are conventionally spaced close together. A number of cases on double patenting were cited by the examiner, both in the final rejection and in the examiner's statement, as a basis for the rejection on double patenting. On appeal the Board of Appeals affirmed the rejection of the examiner without reference to the Walters patent However, on a request for reconsideration filed by appellants, the board affirmed their first decision, relying on the Walters' disclosure to show that the appellants' form of the device was not patentably distinct from the Truitt patent.

On their appeal to this court appellants state that the question presented is one of law. This question, according to appellants, is: "are not generic claims allowable in this application over claims directed to a specific invention granted in a patent to a different inventor but owned by the common assignee under the circumstances of this case: * * *?" Appellants stress the fact that they are the inventor of the generic invention and therefore, it could not have been claimed in the Truitt patent, which was the first to issue. They also point out that Truitt was the inventor of the specific "improvement" which he claimed in his patent, and that the improvement could not have been claimed in their application because there was no disclosure of that invention, as well as the fact that they were not the inventors of it. Many cases are cited by appellants to sustain their view that the claims are allowable. Some of these cases are decisions by the Board of Appeals of the United States Patent Office which seem to be decided on a fact situation very similar to the one before us, but reaching the opposite result.

The Patent Office relies on the alleged fact, found by both the examiner and the board, that the claims on appeal do not patentably distinguish over the patent claims to Truitt. If this is true, then the claims must be rejected since an inventor can only receive one patent for one inventive thought, and this rule applies in the case of a common assignee. Numerous cases are cited by the Patent Office to sustain its contentions.

In deciding this case we feel it would be well to state two rules applicable to the question of double patenting. First, we think it cannot be denied that an inventor may not receive more than one patent on one invention. Miller v. Eagle Manufacturing Co., 151 U.S. 186, 14 S.Ct. 310, 38 L.Ed. 121; In re Asseff, 173 F.2d 253, 36 C.C.P.A., Patents, 867. Second, we do not think there can be any question that this rule of double patenting applies equally to an application and a patent which are the property of a common assignee. In re Borcherdt, 197 F.2d 550, 39 C.C.P.A., Patents, 1045. There it was stated that two patents may not issue for different forms of the same invention when they are not inventively different. In the Miller v. Eagle case, supra, which was an infringement suit on two patents issued to the same inventor and assigned to the same party, the appellee therein, the Supreme Court set out three classes of cases in which the question of double patenting might arise. They are substantially as follows:

1. Where the second patent is for an invention actually covered by a former patent, even though the claims may be different in terms.

2. Where the second patent...