Application of Strain

• Decision Date: 06 March 1951
• Docket Number: Patent Appeal No. 5737.
• Citation: 187 F.2d 737,38 CCPA 933
• Parties: Application of STRAIN.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

38 CCPA 933, 187 F.2d 737 (1951)

Application of STRAIN.

Patent Appeal No. 5737.

United States Court of Customs and Patent Appeals.

March 6, 1951.

Edmund H. Parry, Jr., Washington, D. C. (Olen E. Bee and Raymond S. Chisholm, Pittsburgh, Pa., of counsel), for appellant.

E. L. Reynolds, Washington, D. C. (J. Schimmel, Washington, D. C., of counsel), for the Commissioner of Patents.

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

GARRETT, Chief Judge.

This appeal brings before us for review the decision of the Board of Appeals of the United States Patent Office affirming the decision of the Primary Examiner, hereinafter referred to as the examiner, denying all the claims numbered 15 to 19, inclusive, of appellant's application for patent relating, according to the specification, "to a new group of unsaturated esters capable of polymerization to form valuable resinous products." The application, serial No. 508,259, was filed October 29, 1943.

The issue presented by this appeal involves only a question of law relating to Patent Office practice, and it is, therefore, unnecessary to quote or analyze the claims or to describe the alleged invention in detail.

All the claims are product claims, and, apparently, it is agreed now (although counsel for appellant appear to have argued otherwise before the Board of Appeals at one time) that their subject matter is sufficiently disclosed but not claimed in a patent, No. 2,379,251, issued June 26, 1945, to Irving E. Muskat and appellant as joint inventors upon an application, serial No. 403,703, filed July 23, 1941.

To state the situation somewhat differently, appellant, alleging that he is the sole inventor of certain subject matter disclosed but not claimed in a patent issued to himself and Muskat jointly, is seeking to obtain patent for such subject matter as a sole inventor.

Both the patent and the application stand assigned to a common assignee, which is the actual party in interest here.

We note that the application for the patent and the application here involved were copending in the Patent Office for more than a year and a half.

Nevertheless, the patent was cited as a reference and claims 10-15, inclusive, were rejected by the examiner as being fully met by it. Claims 16-19, inclusive, were rejected "as not reading on the elected species." The board made no specific reference to that ground of rejection of the latter group, but its affirmation of the decision of the examiner was expressed in general terms and appellant's reasons of appeal do not embrace any allegation of error as to that ground. Hence, those claims are not before us. See In re Boyce, 144 F.2d 896, 32 C.C.P.A., Patents, 718, 1944 C.D. 609, 568 O.G. 568.

It is noted also that Strain's application as sole inventor of the subject matter not claimed in the joint application was not filed until more than two years after the filing of the joint application of himself and Muskat, which matured into the patent.

It is said in the brief for appellant: "* * * The issue presented here involves the propriety of the rejection of claims 10 to 19, inclusive, upon the unclaimed disclosure of the copending patent in which appellant and Muskat are joint patentees."

The brief of the Solicitor for the Patent Office states: "* * * the sole issue before the Court is whether the rejection on the unclaimed disclosure of the prior copending patent in which appellant and one Muskat are joint patentees was proper."

For reasons hereinafter appearing, old Patent Office Rule 75, the substance of which is embodied in new Rule 131, 35 U.S.C.A.Appendix, is here quoted: "75. When an original or reissue application is rejected on reference to an expired or unexpired domestic patent which substantially shows or describes but does not claim the rejected invention, or on reference to a foreign patent or to a printed publication, and the applicant shall make oath to facts showing a completion of the invention in this country before the filing of the application on which the domestic patent issued, or before the date of the foreign patent, or before the date of the printed publication, and shall also make oath that he does not know and does not believe that the invention has been in public use or on sale in this country, or patented or described in a printed publication in this or any foreign country for more than one year* prior to his application, and that he has never abandoned the invention, then the patent or publication cited shall not bar the grant of a patent to the applicant, unless the date of such patent or printed publication be more than one year* prior to the date on which application was filed in this country."

"*In the case of applications for patent filed prior to August 5, 1940, this period is two years instead of one year."

The following is taken from the statement of the examiner made in the instant case after the appeal to the board:

"It is the position of the Examiner that in order to overcome the Muskat et al. patent applicant must do two things

"1. File an appropriate affidavit under Rule 75 overcoming the filing date of Muskat et al.

"2. Obtain a disclaimer by Muskat as to the common subject matter between the claims of the present application and the disclosure of the Muskat et al. patent.

"Applicant has done neither of these things but instead argues that he is entitled to the filing date of the Muskat et al. application."

Counsel for appellant seem to have interpreted the position of the examiner to be that appellant was required either (a) to file affidavits, or, in the alternative, (b) to secure the disclaimer of Muskat. We do not so understand the examiner's statement. As we understand it, the examiner was of opinion that it was incumbent upon appellant to do both. In support of his view, he cited the decision of the Board of Appeals in Ex parte Harris, reported in 70 USPQ 552, and the Manual of Office Procedure, 9th Edition by C. L. Wolcott, quoting from both the decision and the manual.

The brief for appellant states, in substance, that no affidavit was filed under old Rule 75 because it was desired to test the soundness of the rejection based upon disclosure of the patent.

Certain of the facts in the Harris case, supra, the decision in which does not appear to have been appealed, are analogous to those in the case at bar, but one distinction seems to be that certain of the matter claimed by Harris as sole inventor had been claimed previously as well as disclosed in a patent issued to Harris and a party named Epstein as joint inventors, while here the subject matter now claimed by Strain was not claimed in the patent although disclosed.

Neither the Harris case, supra, nor the Wolcott manual was discussed in either the decision of the board or in the brief of the Solicitor for the Patent Office before us, but there are other citations to which we refer hereinafter.

It may be said that in the Harris case, supra, the board held that neither the affidavit of Harris filed under old Rule 75 of the Patent Office nor the affidavit of Epstein in the nature of a disclaimer were found sufficient to support the claim of Harris to be the sole inventor. Hence, the joint patent was sustained as a valid reference. With respect to the disclaimer the board said: "* * * The disclaimer by Epstein * * * is regarded as of no weight in the situation. The controversy is not between applicant and Epstein but one in which rights of the public are involved."

In the instant case, where the subject matter concededly was not claimed in the patent, the board, while sustaining the examiner's holding that an affidavit under old Rule 75 was necessary, in effect, overruled the latter's holding with respect to the necessity for a disclaimer on the part of Muskat, saying that consideration of various pertinent decisions indicate that: "Where the invention of the sole applicant was not claimed in the joint application, no disclaimer by the other joint applicant is necessary since he should not be required to disclaim an invention which he never claimed as his own to begin with. * * * (Italics quoted.)"

In appellant's reasons of appeal to us it is stated: "8. The Board of Appeals erred in failing to hold that a copending sole application is a continuation of, and entitled to the effective date of, an earlier filed joint application for an invention disclosed in the joint application under the circumstances that the invention was a divisible invention and had never been claimed in the joint application."

In respect of this contention, the brief of the Solicitor for the Patent Office states: "At this point it is necessary to point out that though appellant earnestly urges that the presently involved application is a continuation in part of the reference patent, and thereby entitled to the benefit of the filing date of the reference * * *, the application itself does not indicate by any language therein and the record does not show, except for assignment of error No. 8, that applicant stated that the presently involved application is a continuation in part of the reference patent."

The statement of the solicitor is correct and, since appellant did not see fit to state in his application, as customarily is done, that his application was either a continuation-in-part, or a division, of the joint application, it is difficult to discern any justification for the allegation of error on the part of the board. The examiner made no reference to that subject matter and it was not referred to in the reasons of appeal accompanying the appeal from the examiner to the board.

Appellant places...