Application of Stempel, Patent Appeal No. 6245.

• Decision Date: 21 February 1957
• Docket Number: Patent Appeal No. 6245.
• Citation: 113 USPQ 77,241 F.2d 755
• Parties: Application of Guido H. STEMPEL, Jr.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

113 USPQ 77, 241 F.2d 755 (1957)

Application of Guido H. STEMPEL, Jr.

Patent Appeal No. 6245.

United States Court of Customs and Patent Appeals.

February 21, 1957.

Frank S. Greene, Cleveland, Ohio, (McCoy, Greene & TeGrotenhuis, and William C. McCoy, Jr., Cleveland, Ohio, of counsel), for appellant.

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

Before JOHNSON, Chief Judge, and WORLEY, RICH, and JACKSON (retired), Associate Judges.

RICH, Judge.

This is an appeal from the decision of the Patent Office Board of Appeals in which it affirmed the primary examiner's rejection of claims 1-4, 12, 14 and 15, and reversed the examiner as to claim 18, which claim was allowed.

Claims 1 and 18 are representative:

"1. An isopropenylbenzene having only two substituents both of which are attached directly to the nuclear carbon atoms and neither of which are attached to carbon atoms next adjacent that carrying the isopropenyl group; said substituents being further characterized in that they are both ortho-para directing groups which do not appreciably activate the benzene ring, said isopropenyl benzene being further characterized in that it is free from more than 20 per cent of unpolymerizable impurities.

"18. 3,4-dichloro-isopropenyl benzene said isopropenyl benzene being further characterized in that it is free from more than 20 per cent of unpolymerizable impurities."

We need not discuss the invention beyond pointing out that the application contains broad or generic claims to certain isopropenyl benzenes, such as claim 1, and also specific claims, such as claim 18, to species within the scope of the broad claims. Claims 1-4 and 14 are the broad claims. Claims 12 and 15 are under rejection as to non-elected species and are not before us.

The parties to this appeal are in agreement that there is no dispute as to the facts, which present for our consideration a single question of law. This question, as we shall show, is one on which there is today, as the Solicitor for the Patent Office stated at the hearing, a difference of opinion in the Board of Appeals which our decision in this case should resolve.

These are the pertinent facts:

1. Only one reference is relied on, the United States patent to Amos et al., No. 2,486,379, issued November 1, 1949 on an application filed July 22, 1946.

2. The Amos et al., patent discloses but does not claim the compound "alpha-methyl-3,4-dichlorostyrene" which is the same thing as 3,4-dichloro-isopropenyl benzene, the compound of allowed claim 18. Amos et al. discloses nothing else pertinent to the claimed invention.

3. The applicant submitted several affidavits under Patent Office Rule 131, 35 U.S.C.A.Appendix (formerly Rule 75) which satisfied the Board that he had made the compound as described in claim 18, but only that compound, prior to the filing date of the Amos et al. patent, for which reason it held that claim to be allowable, reversing the examiner on this point.

4. The Board nevertheless sustained the rejection of the broad claims on the Amos et al. patent, notwithstanding the antedating under Rule 131 of everything it discloses pertinent to the claimed subject matter.

The question before us is whether, under these circumstances, the rejection of the broad claims on Amos et al. is proper. Restated, the question is: When a domestic patent discloses only a single species of an invention and the applicant submits an affidavit under Rule 131 showing completion of the invention of that species prior to the effective date of the reference (which does not claim it), can that reference be used as the basis of the rejection of generic claims in the application?

Appellant has cited Ex parte Burt, Bd.App.1950, 89 U.S.P.Q. 186 as controlling. In that case the applicant filed an affidavit under Rule 75 (now Rule 131), in support of generic claims, showing completion of the invention of the same species of invention as that disclosed in certain references before the effective date of the earliest reference. In reversing the examiner's holding that the affidavit failed to overcome the references as to the generic claims, the Board said:

"We are of the opinion that the Examiner is in error in holding the affidavit insufficient to overcome these references, because it is not ordinarily the function of an affidavit under old Rule 75 to show the invention as claimed has been reduced to practice prior to the date of the reference which it aims to overcome. It is sufficient if it shows that as much of the claimed invention as is taught in the reference has been reduced to practice by the appellant prior to the date of the reference. (Emphasis added.)"

It is noted that old Rule 75, as does present Rule 131, required a showing of "completion of the invention in this country" before the effective date of the reference. (Emphasis ours.)

In the present case a different panel of the Board has held,

"It is now well settled that a showing under Rule 131 establishing priority as to a common species is not necessarily sufficient to obtain allowance of a generic claim."

And further, on reconsideration, the Board said,

"To obtain allowance of generic claims here appellant must establish that he was in possession of the generic invention prior to the effective date of the reference, i. e. the affidavits under Rule 131 must show as much as the minimum required by a patent specification to furnish such support."

It is evident that these statements, particularly the latter, are not in harmony with what was said in Ex parte Burt, if not directly contrary thereto.

To support its view of the law in this case the Board relied on the following cases: In re Steenbock, 83 F.2d 912, 23 C.C.P.A., Patents, 1244; Ex parte Fryling, Bd.App.1947, 75 U.S.P.Q. 9, 1947 C.D. 5; Ex parte Pritchard, Bd.App. 1952, 103 U.S.P.Q. 160; Ex parte Young, Bd.App.1954, 104 U.S.P.Q. 181. The first case was a decision of this court. The others were all decisions of the Board, the opinions in which all rely, to a greater or less extent, on In re Steenbock as a controlling authority. It is also observed that in Ex parte Young the Board indicated a belief that Ex parte Burt, relied on in that case by the appellant, contained language which might be interpreted "as contrary to the terms of Rule 131," having reference no doubt to the passage from Ex parte Burt quoted above. Insofar as this was so, the Board said, "it must be deemed without authority since this Board does not have any authority to modify or ignore the requirements of the rules established pursuant to the statutes." We shall advert to this point later.

In none of the above Board decisions was the fact situation the same as that in this case.

In Ex parte Fryling the affidavits under Rule 131 showed, first, a prior reduction to practice of one species disclosed by the reference and, second, a conception, prior to the effective date of the reference, of a second species, coupled by diligence with a later reduction to practice, which established priority as to the second species also. The Board allowed the generic claims, finding that the affidavits showed completion of a generic invention prior to the effective date of the reference.

In Ex parte Pritchard the applicant attempted to swear back of a reference by showing reduction to practice of "a particular species." He was allowed a claim to that species. But on the appeal he was asking for broader claims, the subject matter of which the Board held to be substantially shown in the reference. Thus all pertinent subject matter in the reference had not been antedated and it was still a good reference against the broad claims.

In Ex parte Young an affidavit was accepted as establishing prior invention of a "particular species" but was held not to establish priority as to claimed generic subject matter. It is impossible to tell from the opinion how much pertinent disclosure the reference contained other than that which was covered by the showing of the affidavit, but it is obvious that it was considerable. That...