In re Salmon, Appeal No. 82-603.

• Decision Date: 25 April 1983
• Docket Number: Appeal No. 82-603.
• Citation: 705 F.2d 1579
• Parties: In re Philip Robert SALMON and Hugh Campbell Hamilton.
• Court: U.S. Court of Appeals — Federal Circuit

705 F.2d 1579

In re Philip Robert SALMON and Hugh Campbell Hamilton.

Appeal No. 82-603.

United States Court of Appeals, Federal Circuit.

April 25, 1983.

Fred Wiviott, Milwaukee, Wis., argued for appellant.

Harris A. Pitlick, Associate Sol., Arlington, Va., argued for the United States Patent and Trademark Office. With him on the brief were Joseph F. Nakamura, Sol., and Fred E. McKelvey, Associate Sol., Washington, D.C.

Before FRIEDMAN, DAVIS and NICHOLS, Circuit Judges.

FRIEDMAN, Circuit Judge.

This appeal is from a decision of the Patent and Trademark Office Board of Appeals ("Board") affirming the rejection of the appellants' application for reissue of a design patent. The correctness of that decision turns upon the validity of the Board's conclusion that the design shown in a second application was a different design from that shown in the first application. We affirm.

I.

On April 17, 1972, the appellants filed their first application (the "parent application"). The application was for "an ornamental design for a Stool as shown" in drawings accompanying the application. The drawings showed a stool consisting of a single bent tubular support and a square seat with rounded corners. There were drawings of the stool from three different perspectives, two of which showed the shape of the seat, and each of which showed a seat as a part of the stool.

On April 23, 1973, the appellants filed a second application, claiming an "ornamental design for a Stool substantially as shown." The tubular support portion of the stool shown in the accompanying drawings was virtually identical to that shown in the parent application, but the seat was round instead of square. The parent application was abandoned on January 9, 1974. A design patent for the stool with a round seat, Des. 234,101 (the '101 patent), was issued on January 21, 1975.

On May 30, 1978, the appellants filed the application for reissue that is the subject of this appeal. The only change the reissue sought to make in the '101 patent was to add this sentence: "This application is a continuation-in-part of our application Serial No. 245,009, filed April 17, 1972, now abandoned."

The reissue application apparently was filed as a result of the appellants' discovery, after the '101 patent had issued, that more than a year before they applied for that patent an advertisement had been published in The New Yorker magazine for a stool that appeared identical to the stool claimed in the parent application, i.e., a stool with the same tubular support and square seat. The appellants apparently concluded that the substitution of a round for a square seat would have been obvious (as the Board held in the present case), so that unless they could obtain the benefit of the earlier filing date of the parent application, the '101 patent would be invalid under 35 U.S.C. § 103 (1976). The reissue application was designed to accomplish that objective.

The examiner allowed the reference to the parent application, but denied the reissue because the appellants were not entitled to the earlier filing date of the parent application. The Board affirmed. It held that the appellants had not satisfied the requirement in 35 U.S.C. § 120 for obtaining the benefit of the earlier filing date because "the invention the design" disclosed in the parent application was not the same design disclosed in the '101 application. The Board affirmed the denial of the reissue application because, as of the effective filing date of that application, the design disclosed in the reissue application would have been obvious in view of The New Yorker advertisement and an earlier design patent (Dieter, Des. 137,904, May 16, 1944) for a chair with a tubular support and a round seat.

The Board ruled that the drawings in the parent application did not indicate that the square seat was not a part of the design for which a patent was sought; that the parent application disclosed only a stool with a square seat; and that the description of a stool with a square seat did not inherently disclose a round seat. The Board held that although the use of a round seat would have been obvious to one of ordinary skill in the stool-designing art, that was insufficient to show that the square-seated stool disclosed in the parent application also was a disclosure of the round-seated stool for which the patent had issued.

II.

The appellants do not challenge the Board's determination that the round-seated stool would have been obvious in light of The New Yorker advertisement for the square-seated stool and the prior Dieter reference. The sole question before us is whether the appellants are entitled to the benefit of the earlier filing date of the parent application, so that their application would be treated as antedating the references upon which the Board relied in denying the reissue application as obvious.

Sections 112 and 120 of the patent laws (35 U.S.C. §§ 112, 120 (1976)) are the governing statutory standards. Section 120 provides:

An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States ... by the same inventor shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application . . . .

The referenced paragraph of section 112 states:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

Insofar as here pertinent, these two provisions together require that for section 120 to apply, the first application must disclose "the invention" claimed in the second application. See, e.g., In re Smith, 481 F.2d 910, 914-15, 178 USPQ 620, 623-24 (Cust. & Pat.App.1973); In re Smith, 458 F.2d 1389, 1394-96, 173 USPQ 679, 682-84 (Cust. & Pat.App.1972). With respect to the design patent involved in this case, those provisions require that the stool design claimed in the second application must be the same design disclosed in the parent application.

The Board held, and we think correctly, that the design for a stool with a round seat was not disclosed in the parent application:

The disclosure in the parent application does not suggest a seat member of any other configuration, and thus does not describe a stool where the seat member has a round configuration. . . . The alternative of a round seat is not found in the disclosure in the parent application.

The parent application disclosed only a stool with a square seat, not one with a round seat. The parent application claimed "an original design for a Stool as shown." The stool as shown in the drawings was depicted in three-dimensional sketches that showed a square seat. Similarly, the specification in the application described figure 1 in the drawings as "a general perspective view of the front of a stool embodying our new design."

Nothing in the text of the application or the attached drawings even intimated that the square shape of the seat was not an integral element of "our new design" for a stool. Nothing in the application indicated that the design for which a patent was sought was anything less than the stool "as shown." Neither the text of the...