Kroekel, In re
| Decision Date | 14 October 1986 |
| Docket Number | No. 86-721,86-721 |
| Citation | 231 USPQ 640,803 F.2d 705 |
| Parties | In re Charles H. KROEKEL and Frederick A. Pfaff. Appeal |
| Court | U.S. Court of Appeals — Federal Circuit |
Michael B. Fein, Rohm and Haas Co., Philadelphia, Pa., argued for appellants. With him on the brief was Carl W. Battle. Also on the brief was Rudolf E. Hutz, Connolly, Bove, Lodge & Hutz, Wilmington, Del.
Richard E. Schafer, Associate Sol., Arlington, Va., argued for appellee. With him on the brief were Joseph F. Nakamura, Sol. and Fred E. McKelvey.
Before MARKEY, Chief Judge, BENNETT, Senior Circuit Judge, and SMITH, Circuit Judge.
Kroekel and Pfaff (Kroekel) appeal from a decision of the United States Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (board), affirming the examiner's final rejection of claims 1, 3-12, 14-22, 24-40, 42, and 43 in application Serial No. 770,085 under 35 U.S.C. Sec. 102(g) and interference estoppel. 230 USPQ 191 (1985). We affirm the rejection on the grounds of interference estoppel.
On October 23, 1968, Kroekel filed an application, assigned to Rohm and Haas Company, entitled "Unsaturated Polymer Resin Molding Compositions". One of our predecessor courts, the U.S. Court of Customs and Patent Appeals, reversed a decision of the former Patent Office Board of Appeals rejecting Kroekel's application under 35 U.S.C. Sec. 112, second paragraph. In re Kroekel, 504 F.2d 1143, 183 USPQ 610 (CCPA 1974). On February 12, 1975, the examiner suggested that Kroekel add two claims and provoke an interference with an application filed by Lowell R. Comstock and Percy L. Smith (Comstock), assigned to Union Carbide Corporation. The Comstock application, Serial No. 336,120, filed February 26, 1973, was accorded the benefit of application Serial No. 107,514, filed January 18, 1971, and application Serial No. 72,798, filed September 16, 1970, now U.S. Patent No. 3,718,714, issued February 27, 1973. Kroekel added the suggested claims as claims 40 and 41.
In an August 6, 1975 notice, the patent interference examiner declared interference No. 99,090. The sole issue of the interference was defined by phantom count 1, which corresponded to Comstock's claim 36 and Kroekel's claim 40:
A composition comprising:
(a) an unsaturated polyester which is the condensation product of at least one ethylenically unsaturated dicarboxylic acid with at least one dihydric alcohol,
(b) an ethylenically unsaturated monomer, and
(c) 0.99 to 37.5% of an interpolymer comprising a vinyl ester of an aliphatic saturated monocarboxylic acid and ethylenically unsaturated carboxylic acid.
The notice of interference stated that "[c]laims 1, 3-28 and 41 will be held subject to rejection as unpatentable over the issue in the event of an award of priority adverse to [Kroekel]."
During the motion period, Kroekel moved to substitute a narrower phantom count 2, in which the carboxyl content of component (c) was limited to an amount "sufficient to provide a carboxyl group content of 0.1 to 5% by weight of the interpolymer." Alternatively, Kroekel moved to dissolve the interference on grounds of unpatentability under 35 U.S.C. Sec. 112, contending that neither his application nor that of Comstock supported count 1 because that count was unlimited in the carboxyl content of the vinyl ester polymer.
On April 6, 1976, the primary examiner granted Kroekel's motion to "dissolve the interference," and "substituted" Kroekel's proposed count 2 for count 1. As did count 1, count 2 corresponded with claim 36 of Comstock and claim 40 of Kroekel. Kroekel never moved to substitute a broader count, believing that Comstock could not support a broader count. Comstock and Kroekel filed new preliminary statements in relation to new count 2. On August 25, 1976, the examiner "redeclared" the interference with the substituted count, continuing to style the interference as No. 99,090.
At the interference, Kroekel relied solely on his filing date, October 23, 1968. Comstock, as the junior party, sustained his burden of proving conception and reduction to practice before that date. Accordingly, the former Board of Patent Interferences awarded priority to Comstock. Comstock v. Kroekel, 212 USPQ 866 (Bd.Pat.Int.1980). On September 8, 1981, U.S. Patent No. 4,288,571 issued to Comstock.
After the interference, Kroekel continued the ex parte prosecution of his application, cancelling claim 41 and amending claim 40, by adding a use description and broadening the definition of the polymer component (c). As a result of that amendment, claim 40 does not require the presence of a vinyl ester in that polymer. Thus the claim 40 that had corresponded to count 2 became the claim 40 of the post-interference, ex parte prosecution and the broadest claim in Kroekel's application. The parties have treated present claim 40 as "generic" and "dominating" with respect to the lost phantom count. * Though the limitations added might technically mean that present claim 40 does not dominate the phantom count, we accept the parties' characterization of claim 40, which is apparently based on the view that any added limitations are insignificant.
Claim 40 in its final amended form recites:
A composition for use with a chemical thickener in sheet molding compounds and bulk molding compounds which when molded and cured under heat and pressure in the presence of fibrous reinforcement yields an article having smooth surfaces comprising:
(a) 20 to 80 percent by weight of an unsaturated polyester which is the condensation product of at least one ethylenically unsaturated dicarboxylic acid with at least one dihydric alcohol,
(b) 20 to 80 percent by weight of an ethylenically unsaturated monomer, and
(c) 1 to 25 percent by weight of an acid functional thermoplastic addition polymer containing 0.1 to 5% by weight acid groups.
Seeking allowance of claim 40, Kroekel attempted under 37 C.F.R. Sec. 1.131 to swear behind the established date of Comstock's actual reduction to practice of the subject matter of count 2.
The examiner rejected claims 1, 3-8, 12, 14-22, 25, 28-40, 42 and 43 under 35 U.S.C Sec. 102(g) as being anticipated by count 2, "together with a portion of the disclosure of the winning party, Comstock et al. which is common to both applications." Apparently, the examiner did not realize that he cannot employ the lost count together with some of Comstock's disclosure in a rejection on Sec. 102(g), as he can in a rejection on an interference estoppel. In re Wilding, 535 F.2d 631, 633 n. 2, 190 USPQ 59, 61 n. 2 (CCPA 1976); In re Risse, 378 F.2d 948, 958-59, 154 USPQ 1, 9-10 (CCPA 1967).
The board noted that Kroekel agreed at oral hearing to assume that the examiner based his rejection of claim 40 on the "so-called 'lost count' doctrine; i.e., having lost a particular count in an interference proceeding, he is (1) estopped from claiming the subject matter of claim 40 and/or (2) barred from claiming that subject matter by 35 U.S.C. Sec. 102(g)." 230 USPQ at 192.
Because Kroekel argued for patentability of generic claim 40 alone, the board considered that issue dispositive. 230 USPQ at 192. The board noted Kroekel's admission at the hearing that generic claim 40 necessarily includes the subject matter of the subgeneric lost count, i.e., that it is a dominating claim, and thus the lost count anticipates claim 40 "in the sense that a species disclosed in a reference generally anticipates a claimed genus." Id. at 194.
The board rejected Kroekel's Rule 131 affidavit because Rule 131 does not provide for swearing behind either a lost count or claimed anticipatory subject matter. The board noted that to allow a Rule 131 affidavit under the circumstances of this case would subvert the purposes of Sec. 102(g) and interference practice.
Alternatively, the board sustained the rejection based on "estoppel by judgment or res judicata." The board noted the general rule that "a losing party in an interference proceeding ordinarily cannot be awarded claims broader than the interference issue and thus have claims which dominate the claims awarded to the successful party." 230 USPQ at 193 (emphasis in original) (quoting In re Long, 83 F.2d 458, 459, 29 USPQ 357, 358 (CCPA 1936)). The board held that Kroekel should have moved during the interference proceeding to broaden the count and thereupon have presented his best proofs, rather than waiting to see whether Comstock's proofs would fail and then attempting to recoup his loss ex parte by submitting Rule 131 affidavits. The board noted that, if Kroekel were allowed his new claim, it would prevent finality in the prior interference and would probably necessitate another interference. 230 USPQ at 195.
Kroekel filed a request for reconsideration, arguing that claim 40 is not illustrative of all the claims, and thus the board should not have considered it dispositive. Kroekel said some claims do not dominate the lost count and had been treated differently from claim 40 during prosecution. The board concluded that Kroekel did not argue claims separately, denied the request for reconsideration, and reaffirmed its original decision.
On appeal, Kroekel argues that the board (1) improperly rejected claim 40 under Sec. 102(g) because (a) he is entitled to swear behind Comstock and (b) claim 40 and the lost count are "patentably distinct"; and (2) improperly applied the doctrine of interference estoppel because (a) Comstock could not support Kroekel's dominating claim 40 and thus the subject matter of that claim could not have been raised in the interference; and (b) claim 40 and the lost count are "patentably distinct".
Because the board properly rejected claim 40 under the doctrine of interference estoppel, we affirm that rejection. We do not, therefore, address the rejection based on Sec. 102(g) or the question of whether a phantom count can be used as prior art under Sec. 102(g).
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