Margolis v. Banner

• Decision Date: 31 May 1979
• Docket Number: Appeal No. 79-538.
• Citation: 599 F.2d 435
• Parties: Geoffrey MARGOLIS, Dean Frederick Rushmore, Richard Tien-Szu Liu, and Charles Hal Anderson, Petitioners, v. Donald W. BANNER, Commissioner of Patents and Trademarks, Respondent.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

599 F.2d 435

Geoffrey MARGOLIS, Dean Frederick Rushmore, Richard Tien-Szu Liu, and Charles Hal Anderson, Petitioners, v. Donald W. BANNER, Commissioner of Patents and Trademarks, Respondent.

Appeal No. 79-538.

United States Court of Customs and Patent Appeals.

May 31, 1979.

William H. Vogt III, New York City (Watson, Leavenworth, Kelton & Taggart, New York City), attys. of record, for petitioners; Morris N. Reinisch, New York City, of counsel.

Joseph F. Nakamura, Washington, D.C., for the Commissioner of Patents, Jere W. Sears, Washington, D.C., of counsel.

Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE^* and MILLER, Judges.

MILLER, Judge.

Petitioners seek issuance of writs of mandamus and prohibition to the Commissioner of Patents and Trademarks. Specifically, petitioners request this court to:

— issue a writ of mandamus directing the Commissioner to rescind and set aside the December 20, 1978 ruling of his delegate, William Feldman, Deputy Assistant Commissioner for Patents . . . that "this application became abandoned as of June 3, 1978";

— issue a writ of prohibition restraining the Commissioner, and those acting under his authority, from giving effect to the course of action set forth in the November 15, 1978 decision of his delegate, Herbert S. Vincent, Director of Patent Examining Group 170 . . ., viz., that under MPEP 804.03, "this application will be held to be abandoned if proper response to the Examiner's requirement is not made"; and

— grant such other and further relief as to this Court may seem just and proper in aid of preserving its appellate jurisdiction.

Background

To fully appreciate petitioners' grievance, familiarity with the prosecution history of their application is required. The application¹ describes a process for the decaffeination of vegetable material such as roast coffee, green coffee, and tea, by contacting the vegetable material with a fatty material such as safflower oil. Petitioners disclose that if an aqueous extract of the vegetable material is held in contact with the fatty material at a temperature of 65° C or above (range of 65° C-150° C is disclosed), the rate of transfer of caffeine from the aqueous extract to the fatty material is increased and the ease of separation of the two liquid phases is facilitated — all without adverse flavor effects. Petitioners' application incorporates by reference United States patent application serial No. 605,717 of Pagliaro et al., filed August 18, 1975, now abandoned in favor of continuation-in-part application serial No. 742,094, filed November 16, 1976.² The later application claims the broad invention (no temperature specified, as such) of contacting a vegetable material, in either an aqueous extract or solid form, with a fatty material to effect decaffeination. With an aqueous extract a preferred contact temperature range of 0° C-50° C is claimed, and excessively high temperatures are avoided. When a solid vegetable material is used, temperatures of 50° C-120° C are claimed. In their petition before us, petitioners describe their invention as "a further advance in the art and an improvement over the basic invention claimed by Pagliaro et al."³

In the first office action, the examiner rejected petitioner's claims under 35 U.S.C. § 103 (based on 35 U.S.C. § 102 (g)) on, inter alia, the disclosure of then copending Pagliaro et al. application serial No. 605,717. Petitioners responded by arguing that the disclosure of a pending application is not available as citable prior art under 35 U.S.C. § 102(g). Unpersuaded, the examiner substantially repeated the rejection in a second office action, this time relying on the disclosure of Pagliaro et al. application serial No. 742,094, his application serial No. 605,717 having been abandoned. The examiner ruled that the different inventive entities of application serial No. 742,094 and the instant application "are claiming a single inventive concept including variations of the same concept each of which would be obvious in view of the other," and, for the first time, made a request which is the genesis of the petition before us:

Specifically applicants claim in 690,732 decaffeinating a caffeine containing extract of vegetable material with a liquid water immiscible fatty material where the phases of fatty material and aqueous extract are maintained in contact at 65° C or above, whereas in application Serial No. 742,094 applicant recites contacting a caffeine containing composition with a liquid water immiscible fatty material at a temperature between 50° C and 120° C. The composition is defined as an aqueous extract of tea, of roast coffee, etc. Accordingly in accordance with MPEP 804.03⁴ since in the Examiner's opinion there are conflicting claims in the case, the assignee is called on to state which entity is the prior inventor of the subject matter and to limit the claims of the other application accordingly. Emphasis added.

The response to the examiner's request was due on June 2, 1978, and petitioners responded on that date. They argued, as they had previously, that the disclosure of a pending application is not available as citable prior art under 35 U.S.C. § 102(g); further that there were no conflicting claims since their application claimed the use of an aqueous extract of vegetable material with a contact temperature of at least about 65° C; whereas, contrary to the examiner's interpretation, serial No. 742,094 disclosed that when aqueous extracts are used, contact temperatures should not exceed 50° C. They also pointed out that, contrary to the examiner's interpretation, only when the vegetable material is solid is the contact temperature to be between 50° C and 120° C. With respect to the examiner's request, petitioners stated:

The Examiner's assertion of applicability of MPEP 804.03 is misplaced, and is traversed. A reading of the claims in the respective applications shows that there are no conflicting claims, and that the two applications are indeed directed to distinct and different inventions, claimed by different inventive entities. The claims of the two applications have been and are limited to the respective inventive contributions. The applicants in Serial No. 742,094 are the inventors of the subject matter claimed therein; and the applicants in the present application are the inventors of the subject matter claimed herein.

Subsequently, on June 30, 1978, petitioners filed a Notice of Appeal on the 35 U.S.C. § 103 rejection, based on 35 U.S.C. § 102(g), to the Board of Appeals.

In a third office action dated August 8, 1978, which was made final, the examiner withdrew the rejection under 35 U.S.C. § 103, apparently agreeing with petitioners' arguments that under the prevailing case law a pending application is not citable as prior art for purposes of 35 U.S.C. § 102(g).⁵ However, he maintained his position that petitioners' claims and those in serial No. 742,094 were directed to "a single inventive concept including variations thereof each of which would be obvious in view of the others." Repeating his prior request, the examiner stated:

Applicants are once again called on to state which entity is the prior inventor of the subject matter and to limit the claims of the other application accordingly. If the assignee does not comply with this requirement, this case will be held to be abandoned as per MPEP 804.03. Emphasis added.

In addition, the examiner said that the claims of Pagliaro et al.'s application (serial No. 742,094) should be amended to expressly exclude petitioners' claimed temperature range when an aqueous extract is used. Thus, at this stage of prosecution, no rejections, labelled as such, remained. Accordingly, on or about August 15, 1978, petitioners withdrew their appeal to the Board of Appeals.

Having failed to persuade the examiner that he was in error, petitioners then petitioned the Commissioner pursuant to CFR 1.181(a)⁶ and 1.183.⁷ The decision with respect to that part of the petition relating to 37 CFR 1.181(a) was delegated to the Director of Patent Examining Group 170. The Group Director denied that part of the petition in a ruling dated November 15, 1978:

It is apparent from a review of the examiner's action that he has carefully considered applicants' arguments in this matter. There is no clear error in the examiner's conclusion that a line of demarcation has not been maintained between the claims of the commonly assigned applications. Moreover, assuming arguendo that the assignee is of the correct opinion that no conflict exists, there is no provision that enables the assignee to delay naming the prior inventor. Thus it is not seen that the examiner has abused his authority in making the requirement and the petition is denied.

The consequences of failing to comply with this requirement are clearly identified in M.P.E.P. 804.03 and this application will be held to be abandoned if proper response to the requirement is not made. The period for response is extended to expire FOUR MONTHS from August 8, 1978, the date of the final rejection.

It is noted that the avenue of appeal becomes open in the event applicant should disagree with any rejection based on the election. Emphasis in original.

The portion of the petition relating to 37 CFR 1.183, which was a request to waive 37 CFR 1.78(c).⁸ was denied on December 20, 1978, by the Deputy Assistant Commissioner for Patents, who stated:

The provisions of 37 CFR 1.183 permit the Commissioner to waive or suspend any requirement of the regulations which is not a requirement of the statutes in an extra-ordinary situation when justice requires. Since the assignee has the unique knowledge of invention dates pertaining to conflicting claims in commonly assigned applications, the consequences associated with withholding this information, which is relevant to a determination of patentability in those applications, are calculated to induce compliance with the requirement. As such, this is

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