In re Berkman
| Decision Date | 09 April 1981 |
| Docket Number | Appeal No. 80-598. |
| Citation | 642 F.2d 427 |
| Parties | In re Joseph L. BERKMAN. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
James E. Siegel, Henry A. Marzullo, Jr., Myron Greenspan, Scarsdale, N. Y., for appellant.
Joseph F. Nakamura, Sol., Washington, D.C., for Patent & Trademark Office; Gerald H. Bjorge, Washington, D.C., of counsel.
Before MARKEY, Chief Judge, and RICH, BALDWIN, MILLER, and NIES Judges.
Berkman appeals the Patent and Trademark Office Board of Appeals (board) decision affirming the rejection of claims 21-31 under 35 U.S.C. § 102(b). We affirm.
On February 15, 1974, Berkman filed two design patent applications claiming designs for a carrying and storage case for tape cartridges and cassettes. Design patents 249,743 and 249,823 were issued on those applications on September 26 and October 3, 1978 respectively.
Berkman filed a utility patent application on March 24, 1975, disclosing and claiming a
Berkman then filed, on November 24, 1976, the utility application at issue here entitled "CASE AND INSERT, AND INSERT FOR DIFFERENTLY SIZED MAGNETIC TAPE ENCLOSURES." It discloses and claims the insert, which was claimed in combination with a case in the earlier filed utility application, and also contains claims drawn to the insert and case combination. During prosecution, Berkman said the second utility application was a continuation-in-part of both the earlier utility application and the two design applications.1
The examiner allowed claims in the application here involved, but stated that it could not be considered a continuation-in-part of the earlier filed design applications for two reasons: (1) the disclosure in the present utility application is not the same as that in the design applications, and (2) the logic of Manual of Patent Examining Procedure (MPEP) 201.06, which states that a design application may not be considered a division of a utility application, would preclude a utility application's being a continuation-in-part of a design application.
In requesting the examiner's reconsideration, Berkman said the present utility application, directed to the insert, if not entitled to the benefit of his design application filing date should be rejected under 35 U.S.C. § 102(b), because the invention had been on sale for more than one year before the filing date of the present utility application.2
The examiner rejected the claims under § 102(b), and again denied the application status as a continuation-in-part. Berkman appealed to the board.
Agreeing with both grounds stated by the examiner, the board affirmed the rejection, and entered a double patenting rejection under 37 CFR 1.196(b).
Berkman filed a terminal disclaimer and requested reconsideration by the board. In view of the terminal disclaimer, the board withdrew the double patenting rejection but held that Berkman's design applications do not sufficiently disclose the claimed utility invention to entitle him to the benefit of the earlier filing date under 35 U.S.C. § 120, and adhered to its view that a utility application could not be a continuation-in-part of a design application.
The dispositive issue is whether the design applications sufficiently disclose the invention now claimed in the Berkman utility application at bar.3
OPINIONUnder 35 U.S.C. § 120, an applicant is entitled to claim the benefit of the filing date of an earlier application for a later-claimed invention only when that earlier application discloses that invention in the manner required by 35 U.S.C. § 112 first paragraph. Such disclosure requires a written description of the invention, of the manner and process of making and using it, and of the best mode contemplated by the inventor of carrying out his invention.
This court has held that drawings may be used to satisfy the disclosure requirement. See: Breen v. Cobb, 487 F.2d 558, 559, 179 USPQ 733, 734 (CCPA 1973), In re Reynolds, 58 CCPA 1287, 1293, 443 F.2d 384, 388, 170 USPQ 94, 98 (1971), In re Wolfensperger, 49 CCPA 1075, 1081, 302 F.2d 950, 955, 133 USPQ 537, 542 (1962).
To determine whether the invention claimed here is disclosed in appellant's design application drawings, the claims and drawings must be compared. The relevant design drawings are:
The invention claimed in the present application...
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Vas-Cath Inc. v. Mahurkar
...district court's grant of partial summary judgment of inequitable conduct was vacated and the case remanded for trial. In re Berkman, 642 F.2d 427, 209 USPQ 45 (CCPA 1981) involved a claim under 35 U.S.C. Sec. 120 to the benefit of the filing date of two earlier design patent applications t......
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Weatherchem Corp. v. JL Clark, Inc.
...only when that earlier application discloses that invention in the manner required by 35 U.S.C. § 112 first paragraph." In re Berkman, 642 F.2d 427, 429 (C.C.P.A.1981). Drawings may be used to satisfy the disclosure requirement. Id. Thus, Weatherchem may rely upon the design patent applicat......
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KangaROOS USA, Inc. v. Caldor, Inc.
...only when that earlier application discloses that invention in the manner required by 35 U.S.C. § 112 first paragraph. In re Berkman, 642 F.2d 427, 429 (C.C.P.A.1981). The first paragraph of 35 U.S.C. § 112 requires The specification shall contain a written description of the invention, and......
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KangaROOS U.S.A., Inc. v. Caldor, Inc.
...of section 112 as applied to one or more claims of the continuation-in-part utility application. Compare In re Berkman, 642 F.2d 427, 429, 209 USPQ 45, 46 (CCPA 1981); In re Bauman, 683 F.2d 405, 409, 214 USPQ 585, 589 (CCPA 1982). The determination of whether any claim of the utility appli......