MATTER OF APPLICATION OF VOSS
| Decision Date | 23 June 1977 |
| Docket Number | Patent Appeal No. 76-710. |
| Citation | 557 F.2d 812 |
| Parties | In the Matter of the APPLICATION of Raymond O. VOSS. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
COPYRIGHT MATERIAL OMITTED
Clinton S. Janes, Jr., Corning, N. Y., attorney of record, for appellant.
Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents, Fred E. McKelvey, Jere W. Sears, Washington, D. C., of counsel.
Before MARKEY, Chief Judge, RICH, BALDWIN and MILLER, Judges, and SCOVEL RICHARDSON, Associate Judge, United States Customs Court.
This appeal is from the decision of the Patent and Trademark Office ("PTO") Board of Appeals ("board"), adhered to on reconsideration, sustaining the examiner's rejection of claims 3, 4, 5, 7, and 8 under 35 U.S.C. § 102(b), in application serial No. 784,635, filed December 18, 1968, for "Glass-Ceramic Article and Method."1 We reverse.
Glass-ceramic articles are produced through controlled heat treatment and crystallization of glass articles which contain nucleating agents. Appellant's invention starts with such a glass-ceramic article, containing a beta-spodumene2 as the predominant crystal phase, and then strengthens it through an ion-exchange process. The glass-ceramic article is immersed in a molten sodium salt bath for a time and at a temperature sufficient to permit the relatively large sodium cations to exchange with relatively smaller lithium cations, thereby effecting compressive stresses in the surface layer of the article and achieving an increase in the strength of the article.
Claims 4 and 7 are representative of the claimed subject matter and are reproduced below.
The reference relied upon by the board was:
Corning Glass Works 1,439,341 April 12, 19663
("French patent") (délivré date)
The French patent appears to be based on a number of United States applications commonly assigned to Corning Glass Works. Among them is serial No. 365,117, of which the present application is a continuation-in-part.
This application was previously before this court in appeal No. 74-527. While that appeal was pending, the Commissioner requested that the application be remanded for the board to reverse the sole ground of its rejection in light of our decision reversing the board on a similar rejection in a commonly-assigned application.4 The motion for remand was granted, the board reversed the sole ground of rejection, and the application was returned to the examiner. The examiner then, pursuant to 37 CFR 1.198, reopened prosecution and applied the French patent against all claims under 35 U.S.C. § 102(b). The examiner's position was that the limitation in the claims, "wherein the crystal content thereof constitutes at least 50% by weight," was not described in appellant's parent application, as required by the first paragraph of 35 U.S.C. § 112. Thus, appellant was denied the benefit of the filing date of his parent application under 35 U.S.C. § 120, rendering the French patent available as a reference under section 102(b).5
Before the board, appellant argued that the reopening of prosecution by the examiner was improper6 and that the passage, quoted below, from his parent application directed the person of ordinary skill in the art to United States patent No. 2,920,971 ("Stookey '971") for a description of glass-ceramic articles which appellant deemed operable in his invention.
A glass-ceramic material is originally formed as a glass which is then phase separated, by a controlled uniform devitrification throughout, to develop a fine crystalline structure within a glassy matrix, the material thus produced having physical properties materially different from the parent glass and more nearly characteristic of a conventional crystalline ceramic material. Reference is made to United States Patent No. 2,920,971, granted to S. D. Stookey, for a general discussion of glass-ceramic materials and their production.
The board found that it had no jurisdiction to review the Commissioner's grant of authority for the examiner to reopen prosecution. It further found that the "mere reference" to the Stookey '971 patent in the parent application was "not sufficient to incorporate by reference into the parent application any portions of the Stookey patent," citing In re de Seversky, 474 F.2d 671, 177 USPQ 144 (Cust. & Pat.App.1973). Having thus determined that the parent application did not contain an antecedent basis for the disputed limitation in the claims, the board concluded that the present application was not entitled to the benefit of the parent application filing date and affirmed the rejection based on the French patent.
OPINIONAppellant renews his contention that the PTO improperly reopened prosecution. We note that appellant, in his Notice and Reasons of Appeal to this court, does not specifically allege that the board erred in failing to find that it had authority to review the Commissioner's action authorizing reopening of prosecution; rather, he alleges that the "Patent and Trademark Office erred in re-opening prosecution," an allegation sufficient to include the finding of no jurisdiction by the board, from whose decisions appeals lie to this court under 28 U.S.C. § 15427 and 35 U.S.C. § 141.8 Accordingly, this court has jurisdiction to determine whether the board properly found that it had no jurisdiction to review the decision to reopen prosecution. In re Haas, 486 F.2d 1053, 179 USPQ 623 (Cust. & Pat.App.1973).
This court has held that jurisdiction under 35 U.S.C. § 141 is dependent upon the jurisdiction of the board under 35 U.S.C. § 7,9 viewed in light of 35 U.S.C. § 134.10 In re Dollinger, 474 F.2d 1027, 177 USPQ 201 (Cust. & Pat.App.1973). The examiner's decision to reopen prosecution constituted neither the rejection of a claim nor a decision adverse to the ultimate patentability of a claim. Accordingly, we hold that the board properly found that it had no jurisdiction to review the decision to reopen prosecution.11
It is apparent that the board misinterpreted this court's decision in In re de Seversky, supra, by confusing two different concepts described therein as follows:
(1) the right to have the benefit of the filing date of an earlier application under § 120 for subject matter claimed in a later application because that subject matter is disclosed in an earlier application to which "a specific reference" is made—i. e., a reference to the earlier application per se, and (2) the incorporation by reference in an application of matter elsewhere written down (not necessarily in a patent application), for economy, amplification, or clarity of exposition, by means of an incorporating statement clearly identifying the subject matter which is incorporated and where it is to be found. 474 F.2d at 674, 177 USPQ at 146. Emphasis in original.
Appellant is not relying on his parent application's reference to Stookey '971 to give him an earlier effective filing date as in (1), but to incorporate a discussion of glass-ceramic articles and methods of preparing them as in (2).12 Glass-ceramic materials are merely starting materials for appellant's strengthening process. Rather than include in his application a detailed discussion of how to prepare such known starting materials, appellant, for economy, referred the skilled artisan to Stookey '971. It is clear that appellant intended the "discussion of glass-ceramic materials and their production" in Stookey '971 to become part of his parent application. See In re Lund, 376 F.2d 982, 989, 54 CCPA 1361, 1370, 153 USPQ 625, 631 (1967). The board erred in finding otherwise.
Turning to the merits of the rejection, the PTO can rely on the French patent as a reference against the involved claims only if appellant's parent application does not comply with 35 U.S.C. § 112, first paragraph with respect to those claims. How the application of the parent achieves compliance is immaterial. In re Smith, 481 F.2d 910, 178 USPQ 620 (Cust. & Pat.App.1973). It is only required, for example, that the specification describe the invention sufficiently for those of ordinary skill in the art to recognize that the applicant invented the subject matter he now claims. In re Smythe, 480 F.2d 1376, 1382, 178...
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