In re Katz, Appeal No. 82-521.
Decision Date | 27 August 1982 |
Docket Number | Appeal No. 82-521. |
Citation | 687 F.2d 450 |
Parties | In re David Harvey KATZ. |
Court | U.S. Court of Customs and Patent Appeals (CCPA) |
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John H. Lynn and Grant L. Hubbard, Newport Beach, Cal., for appellant.
Joseph F. Nakamura, Sol., Gerald H. Bjorge, Associate Sol., Washington, D. C., for Patent and Trademark Office.
Before MARKEY, Chief Judge, and RICH, BALDWIN, MILLER and NIES, Judges.
This appeal is from the decision of the Patent and Trademark Office (PTO) Board of Appeals (board) sustaining rejection of claims 1, 5, 17, and 18, all remaining claims in application Serial No. 937,574 for "Induction of Immunological Tolerance." The subject application is a divisional application of application Serial No. 764,586, filed February 3, 1977, and is entitled to that filing date. The claims were rejected because of a description of the subject matter of the invention in a publication dated June 1976, which appellant, however, asserts is a description of his own work. The board was unpersuaded by appellant's declarations to that effect and sustained the rejection. We reverse.
In June, 1976, eight months before appellant's effective filing date, an article coauthored by Nicholas Chiorazzi, Zelig Eshhar and appellant was published in the Proceedings of the National Academy of Science, U.S.A., Vol. 73, No. 6, pp. 2091-95. There is no dispute that the article (Chiorazzi et al.) fully describes the claimed invention.
Along with his divisional application, appellant filed a declaration in which he declared that:
In his first Official Action, the examiner stated:
Claims 1, 5, 17 and 18 are rejected under 35 USC 102(g) as anticipated by Chiorazzi et al. ... Applicant's declaration ... is entirely ineffective in overcoming the rejection of this nature and is considered to be nothing more than the self-serving statement.
In his Final Official Action, the examiner adhered to the § 102(g) rejection adding:
To overcome the rejection, the examiner required that appellant either (1) amend his application to include the other authors as coinventors, or (2) file affidavits from the other authors "disclaiming the invention claimed." Appellant chose to appeal rather than comply with either requirement.
While the board sustained the examiner's rejection, it did so on the following ground:
The board adhered to its position on rehearing.
OPINIONBecause the board did not specifically reverse the § 102(g) rejection, we treat it as having been affirmed. 37 CFR 1.196(a). Further, since appellant does not contend that the board's reliance on § 102(a) is a new ground for rejection, we will also consider that section. 37 CFR 1.196(b). Appellant does suggest that the board apparently confused § 102(e) with § 102(a) since § 102(a) makes no reference to "another" in the context of authorship of a publication. However, we disagree that the board was "confused" in this respect for reasons which will become apparent and, accordingly, do not find it necessary to consider § 102(e) separately.
35 U.S.C. § 102(g)
Section 102(g) reads:
This section of the statute embodies the principle that to be entitled to a patent one must be the first to have made the invention. However, prior conception of the invention by another does not defeat one's right. No possible barrier is created by § 102(g) unless another has either actually reduced the invention to practice or has constructively reduced it to practice by filing a patent application.
We specifically reject the examiner's position that the publication of the subject article provides even a tenuous ground for rejection under 35 U.S.C. § 102(g). Unlike the filing of a patent application, the publication of an article is not deemed a constructive reduction to practice of the subject matter described therein. In re Schlittler, 43 CCPA 986, 989, 234 F.2d 882, 884, 110 USPQ 304, 305-06 (1956). Therefore, disclosure in a publication does not prove that any "invention" within the meaning of 102(g) has ever been made by anyone. The examiner's ground for rejection must, therefore, fail.
35 U.S.C. § 102(a)
Section 102(a) reads:
It may not be readily apparent from the statutory language that a printed publication cannot stand as a reference under § 102(a) unless it is describing the work of another. A literal reading might appear to make a prior patent or printed publication "prior art" even though the disclosure is that of the applicant's own work. However, such an interpretation of this section of the statute would negate the one year period afforded under § 102(b)1 during which an inventor is allowed to perfect, develop and apply for a patent on his invention and publish descriptions of it if he wishes. Illinois Tool v. Solo Cup Co., 461 F.2d 265, 172 USPQ 385 (CA 7), cert. denied, 407 U.S. 916, 92 S.Ct. 2441, 32 L.Ed.2d 691 (1972).
Thus, one's own work is not prior art under § 102(a) even though it has been disclosed to the public in a manner or form which otherwise would fall under § 102(a). Disclosure to the public of one's own work constitutes a bar to the grant of a patent claiming the subject matter so disclosed (or subject matter obvious therefrom) only when the disclosure...
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