In re Muskat

• Decision Date: 30 March 1951
• Docket Number: Patent No. 5734.
• Citation: 187 F.2d 626
• Parties: In re MUSKAT et al.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

187 F.2d 626 (1951)

In re MUSKAT et al.

Patent No. 5734.

United States Court of Customs and Patent Appeals.

February 12, 1951.

Rehearing Denied March 30, 1951.

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

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 is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming the rejection by the Primary Examiner, to whom we hereinafter refer as the examiner, of two claims of appellants' application for patent entitled "Novel Esters and Polymers," the rejection being based upon the ground of double patenting.

The application, which bears the serial number 730,204, was filed February 21, 1947. It recites: "This application is a continuation in part of our applications for Letters Patent Serial No. 361,280, filed October 15, 1940, and Serial No. 437,564, filed April 3, 1942."

As passed upon by the examiner, the application embraced twenty-four claims, all of which he rejected. Appellants included all the claims in their appeal to the board, but subsequently withdrew six of them. The board allowed two of those remaining (Nos. 9 and 10) but affirmed the rejection of the other sixteen.

The appeal to this court is limited to the two claims numbered respectively 5 and 20, both of which concededly are generic to claims of patents issued to appellants before the instant application was filed.

Eight patents were cited as references as follows:

                  Muskat et al.  2,370,565,  Feb. 27, 1945
                  Muskat et al.  2,384,115,  Sept. 4, 1945
                  Muskat et al.  2,384,123,  Sept. 4, 1945
                  Muskat et al.  2,384,125,  Sept. 4, 1945
                  Muskat et al.  2,385,932,  Oct.  2, 1945
                  Muskat et al.  2,385,933,  Oct.  2, 1945,
                  Muskat et al.  2,385,934,  Oct.  2, 1945,
                  Muskat et al.  2,403,113,  July  2, 1946.
                

The examiner did not discuss claims 5 and 20 apart from a group, nor did the Board of Appeals do so until rendering a decision upon a petition for reconsideration. The only reference patent actually discussed by either tribunal of the Patent Office was No. 2,384,123, issued September 4, 1945, upon an application, serial No. 433,829, filed March 7, 1942, but the examiner expressly rejected all the claims "as unpatentable over the claims of any one of the Muskat et al. patents" cited as a reference. (Italics supplied.)

Upon the record the issue presented to the court is one of law only. There is no material controversy about the facts and no study of the chemistry of the case seems to be required.

The brief for appellants asserts: "The issue presented here involves the propriety of the rejection of claims 5 and 20 upon appellants' species patents."

In the brief for appellants there is listed a summary of chemical products said to be included in the several species patents but which, it is said, have received no generic protection. Also there are listed many polymers stated not to have been included in any patent for species, which, according to the brief, "will be open to the public if claims here on appeal are not eventually allowed."

A further statement in the brief for appellants reads:

"In order to completely understand the problem, it is necessary to review the pertinent rules of the Patent Office and to explain the dilemma with which an inventor having made a generic invention with many species inventions is confronted. Rule 41 see new rules 141-6-7 of the Patent Office Rules of Practice 35 U.S.C.A. Appendix under which the present application was filed provides that two or more independent inventions cannot be claimed in one application. The Rule further provides that where several distinct inventions are dependant upon each other and mutually contribute to produce a single result, they may be claimed in one application provided that not more than three species of the generic invention may be claimed. Thus, where, as here, the inventor has made a generic invention together with more than three patentably distinct species, he may file one generic application containing three species of his invention and if further coverage becomes necessary, he must file individual applications covering each of the species or classes of species which he considers patentably distinct.

"Almost invariably, he finds that the species applications become allowable at a date much earlier than the generic application. No method is available to him for delaying the issuance of the species applications. Consequently, if he is to obtain a generic claim to his invention, it is almost inevitable that this generic claim must issue in a patent at a date later than the date upon which the species applications mature into patents."

The brief for appellants designates application, serial No. 361,280, filed October 15, 1940, as the "first parent" case and, upon the basis of the record states that in that application, as filed, "Generic claims were presented to esters and polymerized esters of polybasic acids * * * and specific claims were presented to esters of maleic acid * * *."

The brief states that serial No. 437,564, filed April 3, 1942, as a continuation in part of serial No. 361,280, contained the generic claims that were embraced in serial No. 361,280 and some species claims different from species claims which were involved in applications that ripened into patents before the instant application was filed.

Appellants have numerous patents for species assigned, as in the instant application, to a common assignee.

Eight of such patents are those listed as references, supra.

Appellants claim that both serial No. 361,280, as filed, and No. 437,564 afforded support for the claims in the instant case; that both were copending with the instant application and that both "have now been abandoned"; that the instant application is a continuation of them; and that it is entitled to the benefit of their filing dates.

It also is urged on behalf of appellants that they have consistently sought generic claims, dominating the claims here on appeal, since their first application, serial No. 361,280, was filed; that the rules governing Patent Office procedure precluded the presentation of appealed claims 5 and 20 in either serial No. 361,280 or serial No. 437,564; that, since those applications have been abandoned, the present application should be treated as the first and parent application; that appellants have established that the here allowed species claims, 9 and 10, cover subject matter, including the polyvinyl alcohol species, which is patentably distinct from the species covered by their patents; that "The law permits an applicant for Letters Patent to obtain a generic claim notwithstanding the issuance of a species patent, in any application containing a species claim which is patentably distinct from the already patented species (thereby establishing that the inventions are patentably distinct) and where, as here, dedication of the right to the genus cannot be presumed from the issuance of the species patent." and finally, that the allowance of generic claims 5 and 20 would not extend the monopoly of the species patents.

It is of record that serial No. 361,280 was abandoned on January 3, 1949, and serial No. 437,564 on April 17, 1948. At the time of the decisions of the board in the latter part of 1948, serial No. 361,280 seems to have been pending on appeal, taken under R.S. § 4915, 35 U.S.C.A. § 63, in a United States District Court. Serial No. 437,564 seems to have been abandoned without appeal after the board had affirmed the examiner's rejection of it.

It is asserted on appellants' behalf that the courts have consistently recognized that an inventor may be entitled to allowance of a generic claim in a later patent, notwithstanding the fact that a species patent which is dominated by the generic claim may have issued earlier, when the patentee is able to establish a patentable distinction between the earlier species patent and the later generic patent. In support of this contention, the brief cites the cases of Suffolk Company v. Hayden, 3 Wall. 315, 70 U.S. 315, 18 L.Ed. 76; Badische Anilin & Soda Fabrik v. A. Klipstein & Co., et al., C.C., 125 F. 543; Vapor Car Heating Co., Inc., et al. v. Gold Car Heating & Lighting Co., D.C., 296 F. 188; and an expression of this court in the case of In re Asseff, 173 F. 2d 253, 36 C.C.P.A., Patents, 867.

It is argued that the application involved here was copending with serial No. 361,280 (the so-called "parent case") and No. 437,564, but in its second decision, rendered after a reconsideration of its first, the board declared:

"With regard to the first filed application, Serial No. 361,280, above mentioned, we find as follows:

"The specification of that application may be said to include a general disclosure of the subject matter of claims 5 and 20 under consideration. It appears further that as of the date of the filing of the present application, application Serial No. 361,280 contained no claims the subject matter of which might be said to be inclusive of claims 5 and 20 under consideration in this application, namely, the carbonic esters. In the earlier application the broadest claim defined the acid in a manner to exclude carbonic acid, while the more specific claims were drawn to `allyl maleate' or a derivative thereof. We are therefore of the opinion that appellants were not claiming in their earlier application the invention of the appealed claims in this case. The claims here on appeal cover broadly a class of carbonic esters, while each of the granted patents claimed a specific carbonic ester falling within that class so that the claims here on appeal dominate the claims of the granted patents, which is conceded. In so far as any reliance upon the earlier...