In re Allen

• Decision Date: 09 December 1940
• Docket Number: Patent Appeal No. 4398.
• Citation: 115 F.2d 936
• Parties: In re ALLEN.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

115 F.2d 936 (1940)

In re ALLEN.

Patent Appeal No. 4398.

Court of Customs and Patent Appeals.

December 9, 1940.

Harold T. Stowell, of Washington, D. C. (Joseph N. Nielsen, of New York City, of counsel), for appellant.

W. W. Cochran, of Washington, D. C. (Howard S. Miller, of Washington, D. C., of counsel), for the Commissioner of Patents.

Before GARRETT, Presiding Judge, and BLAND, HATFIELD, LENROOT, and JACKSON, Associate Judges.

LENROOT, Associate Judge.

This is an appeal from a decision of the Board of Appeals of the United States Patent Office affirming a decision of the examiner rejecting, for want of patentability over the cited prior art, claims 1, 2, 3, 5, 7, 8, 9 and 10 of appellant's application for a patent.

The examiner also rejected claims 4, 6, 11 and 12 for the same reason, but such rejection was reversed by the Board of Appeals and these claims stand allowed.

Claims 1, 2, 3 and 5 are method claims; claims 7, 8, 9 and 10 are for a plastic composition.

Claims 1, 3 and 8 are illustrative of the claims in issue and read as follows:

"1. A method of making polystyrene material suitable for molding which comprises polymerizing styrene to a polystyrene having a molecular weight exceeding 40,000 and treating the polymerized styrene to reduce methanol soluble components to less than 3% of the material."

"3. A method of making polystyrene material suitable for molding which comprises polymerizing styrene to a polystyrene having a molecular weight exceeding 40,000 and treating the polymerized styrene by mechanical working to reduce methanol soluble components to less than 3% of the material."

"8. A plastic composition comprising a polymerized styrene resin having a molecular weight in excess of 40,000 and containing less than 3% of methanol soluble material, characterized by being moldable under heat and pressure to articles free from frosting for at least six months after molding."

The reference cited is: Wulff et al., 2,077,542, April 20, 1937.

The alleged invention is described by the Board of Appeals in its decision as follows:

"The subject matter of the appealed claims relates to the making of polystyrene material suitable for molding and which will be free of a phenomenon known as frosting. In the past it has been found that in attempting to make articles of polystyrene such articles may have a clear and transparent appearance at the time they are produced but later, they assume a cloudy or frosted appearance which apparently is due to the formation of small cracks in its surface. Appellant contends that this frosting is the result of the presence of some of the polystyrene which has not been completely polymerized. This portion is generally referred to here as methanol soluble.

"It is not deemed necessary to discuss the steps employed in polymerizing the resin other than to say that it is carried to the point where the molecular weight exceeds 40,000. In order to eliminate a portion of the methanol soluble content, the material is subjected to the working action of differential rollers. This kneading action is for the purpose of reducing the methanol soluble content to less than 3%. It is not clear just how the methanol soluble content is removed. Apparently it could be done by squeezing it out as a liquid by washing it with methanol or permitting the undesirable content to evaporate. * * * "

With respect to the Wulff et al. patent the board stated: "The Wulff patent discloses a method of polymerizing the polystyrene which is practically the same as that disclosed in this case, but in order to reduce the undesirable methanol soluble fraction, the patentee proposed to extrude the material through a small orifice. Apparently in this manner it is expected that evaporation of the partially polymerized styrene will produce a product which is free of frosting. During the prosecution of this case, appellant has filed affidavits tending to show that while the extrusion process disclosed in the patent will reduce the amount of methanol soluble styrene, still it will not bring it down to the point where it is free of frosting."

The original decision of the board was rendered on September 30, 1939. With respect to the reversal of the decision of the examiner as to claims 4, 6, 11 and 12, the board stated: "Claims 4, 6, 11 and 12 are limited to a method which calls for `mechanical working'. We do not believe that the Wulff patent is a fair reference against these claims. While the extrusion of the plastic material may tend to remove some of the methanol soluble component, still such process cannot properly be called `mechanical working.'"

The board affirmed the decision of the examiner as to claims 1, 2, 3, and 5 upon the ground that they call merely for the treatment of the polymerized styrene so as to produce the desired result, are broad enough to cover any process which will produce a product which has less than 3% of the methanol soluble material, and are not patentable over the disclosure of the Wulff et al. patent.

With regard to claims 7, 8, 9 and 10 the board held that there was no patentable distinction between the composition therein described and the composition disclosed by the Wulff et al. patent.

On October 6, 1939, appellant moved for reconsideration of the board's decision as to claim 3, calling attention to the fact that this claim called for mechanical working of the material and belonged to the same class of claims as claims 4, 6, 11 and 12, which the board held should be allowed.

On November 16, 1939, appellant filed with the Commissioner of Patents a notice of appeal to this court, together with reasons of appeal, assigning error in the affirmance of the rejection of claims 1, 2, 3, 5, 7, 8, 9 and 10. On the next day, November 17, 1939, the board rendered a decision which reads as follows:

"This is a petition for reconsideration of our decision dated September 30, 1939.

"Reconsideration of claim 3 is requested. Through inadvertence this claim was not listed as allowable in our former decision. It contains the same limitation as the claims which we held allowable.

"The decision of the examiner is reversed as to claims 3, 4, 6, 11 and 12 and is reaffirmed as to the remaining claims.

"The petition is granted to the extent indicated."

On November 22, 1939, appellant filed with the Commissioner of Patents a paper headed "Supplemental", purporting to give notice of appeal to this court from the decisions of the Board of Appeals rendered "on or about the 30th day of September, and the 17th day of November, 1939, rejecting my above-entitled application and refusing me a patent for the invention set forth therein."

Then follow reasons of appeal which are identical with the reasons of appeal filed on November 16, 1939, except that claim 3 is not included in the reasons of appeal filed on November 22, 1939.

It will be observed that this so-called supplemental notice of appeal was filed more than 40 days after the original decision of the Board of Appeals of September 30, 1939. It will also be observed that the decision of the board of November 17, 1939, grants the petition for reconsideration as to claim 3; it also purports to reverse the examiner as to claims 3, 4, 6, 11 and 12, and the decision of the examiner is "reaffirmed" as to the remaining claims, although the petition for reconsideration embraced claim 3 only.

In view of this state of the record we are called upon to decide the question of the jurisdiction of the Board of Appeals to consider a petition for reconsideration of an appealable decision after a notice of appeal to this court and reasons of appeal have been filed with the Commissioner of Patents.

This question has been presented to us a number of times, but heretofore we have not found it necessary to decide it.

In the case of Raiche v. Foley, 103 F.2d 920, 921, 26 C.C.P.A., Patents, 1235, a motion for reconsideration was filed by Raiche after he had filed his notice and reasons of appeal. The Board of Appeals denied the request upon the ground that it had no jurisdiction to consider the same. Appellant took an appeal to this court requesting us to review the decision of the board refusing to consider the petition for reconsideration. On motion of appellee there we dismissed the appeal on the ground that the appeal did not present any issue of priority or question ancillary thereto. In our opinion in that case we stated:

"The appellee contends that at the time of filing the petition for rehearing involved in this controversy, appeal had been taken and was pending in this court, and for supporting authority cites Bakelite Corp. et al. v. National Aniline & Chemical Co. et al., 2 Cir., 83 F.2d 176; Jensen et al. v. Lorenz et al., 68 App.D.C. 39, 92 F.2d 992; and United States ex rel. White v. Coe, 68 App.D.C. 218, 95 F.2d 347, and argues that:

"It is text-book law and nothing more than common sense that `An intermediate appellate court which has rendered the decision has no power to grant a rehearing after the case has been removed to a higher court.' 4 Corpus Juris Secundum, Appeal and Error, p. 2038, § 1437; 4 Corpus Juris, p. 636, Sec. 2513.

"Appellee points out that in the Clement v. Richards v. Meissner case, supra 1904 C.D. 321, strongly relied upon by appellant, the petition for rehearing was filed before the notice of appeal and that in the Goddard case, supra Goddard v. Ordway, 101 U.S. 745, 25 L.Ed. 1040, appeals under the statute were allowed by the intermediate court, which is a different situation from that where the appeal is taken from the Board of Appeals under the existing statutory authority. Attention is further directed to the fact that in the Goddard case the bar to considering the petition for rehearing had been removed by granting a motion to vacate the allowance of appeal. Appellee points out that appellant has not attempted to withdraw his appeal from the said award of priority.

"We do not think it necessary to...