Application of Tenney

• Decision Date: 23 April 1958
• Docket Number: Patent Appeal No. 6327.
• Citation: 254 F.2d 619,117 USPQ 348
• Parties: Application of William L. TENNEY, Paul A. Frank and Scoville E. Knox.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

117 USPQ 348, 254 F.2d 619 (1958)

Application of William L. TENNEY, Paul A. Frank and Scoville E. Knox.

Patent Appeal No. 6327.

United States Court of Customs and Patent Appeals.

April 23, 1958.

Lawrence B. Biebel and Marechal, Biebel, French & Bugg, Dayton, Ohio, for appellants.

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

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

JOHNSON, Chief Judge.

This is an appeal from a decision of the Patent Office Board of Appeals, rejecting claims 3 through 12, 14 through 18, 21 and 22, all the claims remaining in appellants' application No. 111,308, filed August 19, 1949, for "Machine for Producing Dispersions of Liquids in Air or Other Gases for the Production of Fogs," as unpatentable over the prior art.

The alleged invention, as may be seen from its title, relates to fog producing apparatus, the essential element of said apparatus being a "pulse jet engine." As will be hereinafter seen, it is not necessary to set forth the claims on appeal nor to further describe the alleged invention, for in the view we take of the case, only a question of law is before us.

The primary reference relied upon by the examiner and by the board is a microfilm copy of the typewritten specification of a German patent application,¹ said microfilm having been applied against appellants' claims by virtue of the provisions of 35 U.S.C. § 102(b), as a printed publication allegedly published on June 11, 1948.

The history of this microfilm is set forth in appellants' brief as follows:

"* * * A patent application was filed by a German national in the former Government Patent Office in Berlin, Germany on February 25, 1943. At the end of World War II this Government Patent Office, called Reichspatentamt, became defunct. Some time after the close of the war military personnel of the United States Government obtained access to the unpublished patent applications on file in the Reichspatentamt, and recorded them on microfilm, along with a large amount of other technical material.

"These microfilms were turned over to the Office of Technical Services of the United States Department of Commerce. Eventually they were placed in the Library of Congress and the Office of Technical Services published the Bibliography of Scientific and Industrial reports concerning all of the data captured at the end of the war. The reference here was one of a substantial number of unpublished German patent applications photographed on Reel PB L 83291. This reel was listed in the Bibligraphy sic along with other reels on which were photographed various other unpublished German applications under the following designation: * * *

"`PBL 83291. Reichspatentamt, Berlin. German patent applications on aircraft. (FIAT Microfilm Reel B 134, Frames 8522-9442) 1937-1945. 942 f. Price: Microfilm — $9.00 — Enlargement print — $120.00 In German.\'

"It should be noted that there is no other identification of the material recorded in the reel beyond the single above quoted statement, "German patent applications on aircraft." The cited frames of the microfilm have no relation to aircraft.

"It is stated in the Bibliography that copies could be obtained by ordering them from the Office of Technical Services, giving appropriate PB number identification. * * *"

The board, conceding that the faulty indexing of the O.T.S. bibliography would be apt to mislead the public as to the contents of the reel of microfilm in question, and not denying that there was no evidence of record to indicate that any copies of the Karcher document were made from the microfilm on file in the Library of Congress prior to appellants' filing date, nevertheless held, on the authority of Ex parte Brendlein, 105 U.S. P.Q. 453 (Bd.Appls.1955), that the notice of availability to the public in the O.T.S. bibliography of the microfilm in question constitutes said microfilm a "printed publication" within the meaning of 35 U.S.C. § 102(b),² as of the publishing date of said bibliography, June 11, 1948 (a date more than one year prior to appellants' filing date).

Appellants urge that, due to the practical impossibility of locating the microfilm on file in the Library of Congress, even after the O.T.S. bibliography was published (as a result of the faulty indexing), the microfilm was not published within the contemplation of section 102 (b), supra. They further argue that the microfilm was not "printed."

Counsel for the Commissioner admitted during oral argument that if the microfilm is held not to be a valid reference (viz., — a printed publication) all the claims on appeal are allowable.

The issue confronting us, therefore, is whether a microfilm, which allegedly was made available to the public only by virtue of the publication of a bibliography, there being no evidence of record that any copies of said microfilm have been made or seen by any member of the public, is a "printed publication" within the meaning of that term as used in 35 U.S.C. § 102(b).

The importance of this question is at once obvious. At first blush we had thought that this decision might be influenced by a prior decision of this court: Fessenden v. Wilson, 48 F.2d 422, 18 C.C.P.A., Patents, 1171, certiorari denied 1931, 284 U.S. 640, 52 S.Ct. 21, 76 L.Ed. 544. This decision was urged by appellant as analogous to the instant case. The case has been cited on a number of occasions by other courts as well as by the Patent Office, as standing for the proposition that matter appearing in a patent application as originally filed, but cancelled before the application issued as a patent, does not constitute a printed publication. Tampax, Inc., v. Personal Products Corp., D.C.E.D.N.Y.1941, 38 F. Supp. 663; Gulliksen v. Halberg, (dissenting opinion) 75 U.S.P.Q. 252, 256 (Bd.Appls.1937). We have examined the Fessenden case carefully but, granting the language used therein is somewhat misleading, we do not feel that the case stands for the proposition attributed to it. There, in answer to the appellant's argument that the cancelled description in appellant's application, filed June 23, 1915 and issuing as a patent on May 14, 1918, was sufficient to bar appellees from a patent on the ground that they were not the first inventors, the court said 18 C.C.P.A. Patents 1171, 48 F.2d 425:

"* * * The statute authorizes the granting of a patent under certain conditions if the invention is `not known or used by others in this country, before his invention or discovery thereof, and not patented or described in any printed publication in this or any foreign country. * * *\'

"For obvious reasons, the filing of an application, the description of which is canceled before it results in a patent or comes to the public notice, is not such a published description of the invention as is within the inhibition of the statute. Alexander Milburn Co. v. Davis-Bournonville Co., supra."³

It is rather obvious, from the court's citation of the Milburn case (which says nothing of printed publications) that the appellant had not urged that the patented file containing the cancelled matter constituted a printed publication, nor had the court that in mind. Appellant was merely urging that all matter contained in an application as filed constituted a disclosure sufficient to bar the granting of a patent under the well known rule of the Milburn case, which now has been codified into 35 U.S.C. § 102(e).

We have found no other decisions of this court which bear on the instant question. The issue before us is therefore, at least as far as this court is concerned, one of first impression.

We have carefully considered most of the countless cases in the reports on the question of what is or is not a printed publication. Irreconcilable conflicts exist as between the holdings of a number of them and few have set forth sufficient reasoning to be of any assistance to us. In reaching our conclusion we of necessity must disagree with at least several of these cases.

Be this as it may, we are of the opinion that the microfilm in the instant case is not a "printed publication" within the contemplation of 35 U.S.C. § 102(b) and that, therefore, the decision of the board must be reversed. More specifically, we are of the opinion that the microfilm is not "printed."⁴

In United States v. Dubilier Condenser Corp., 1933, 289 U.S. 178, 186, 53 S.Ct. 554, 557, 77 L.Ed. 1114, the Supreme Court, speaking through Mr. Justice Roberts, stated:

"Though often so characterized, a patent is not, accurately speaking, a monopoly, for it is not created by the executive authority at the expense and to the prejudice of all the community except the grantee of the patent. Seymour v. Osborne, 11 Wall. 516, 533, 20 L.Ed. 33. The term `monopoly\' connotes the giving of an exclusive privilege for buying, selling, working or using a thing which the public freely enjoyed prior to the grant. Thus a monopoly takes something from the people. An inventor deprives the public of nothing which it enjoyed before his discovery, but gives something of value to the community by adding to the sum of human knowledge. United States v. American Bell Telephone Co., 167 U.S. 224, 239, 17 S. Ct. 809, 42 L.Ed. 144; Paper Bag Patent Case Continental Paper Bag Co. v. Eastern Paper Bag Co. 210 U.S. 405, 424, 28 S.Ct. 748, 52 L. Ed. 1122; Brooks v. Jenkins, 3 McLean 432, 437, Fed.Cas.No.1,953; Parker v. Haworth, 4 McLean 370, 372, Fed.Cas.No.10,738; Allen v. Hunter, 6 McLean 303, 305, 306, Fed.Cas.No.225; Attorney General v. Rumford Chemical Works, 2 Bann. & Ard. 298, 302. He may keep his invention secret and reap its fruits indefinitely. In consideration of its disclosure and the consequent benefit to the community, the patent is granted. * * * (Emphasis added.)"

Emphasis has been placed on the portions of the foregoing passage relating to the benefit conferred upon the public by the grant of a patent. It will be...