Mulder, In re, 83-647
| Decision Date | 23 August 1983 |
| Docket Number | No. 83-647,83-647 |
| Parties | In re Cornelius MULDER and Henricus Elisabeth Jozef Wulms. Appeal |
| Court | U.S. Court of Appeals — Federal Circuit |
Steven R. Biren, Tarrytown, N.Y., argued for appellant.
Thomas E. Lynch, Washington, D.C., argued for appellee. With him on the brief were Joseph F. Nakamura, Sol., and Jere W. Sears, Deputy Sol., Washington, D.C.
Before MARKEY, Chief Judge, and RICH and BENNETT, Circuit Judges.
This appeal is from the July 27, 1982, decision, adhered to on reconsideration October 19, 1982, of the U.S. Patent and Trademark Office (PTO) Board of Appeals (board) affirming the examiner's rejection under 35 U.S.C. Sec. 103 of certain claims 1 of Our jurisdiction of the appeal is under 28 U.S.C. Sec. 1295(a)(4)(A), (Pub.L. 97-164, Title 1, Sec. 127(a), Apr. 2, 1982, 96 Stat. 37).
appellants' application, serial No. 602,473, filed August 6, 1975, for "Integrated Circuit." Appellants claim the benefit under 35 U.S.C. Sec. 119 of a convention filing date in the Netherlands of October 9, 1974. We affirm
Background
This ex parte appeal from the PTO involves appellants' patent application on an integrated circuit, the appealed claims of which stand rejected for obviousness under Sec. 103 in view of prior art disclosed in an article by Rodgers et al., published in the IEEE Journal of Solid State Circuits, Vol. SC-9, No. 5, pages 247 and 248 (Rodgers), combined with one or more of the following:
The real party in interest here is the assignee of appellants, U.S. Philips Corporation, which is affiliated with N.V. Philips Gloeilampenfabrieken of the Netherlands, where the applicants are located. The U.S. patent application was prepared in the Netherlands and sent to the patent department of U.S. Philips Corporation in Briarcliff Manor, N.Y., where it was received on July 15, 1974. A corresponding Netherlands patent application was filed on October 9, 1974. The U.S. application was filed within a year under the International Convention on August 6, 1975, claiming the benefit of the Netherlands filing date under 35 U.S.C. Sec. 119. The PTO has accorded applicants that date. There is no question that applicants complied with all of the formalities required by Sec. 119 and related PTO rules.
Confronted with rejections of claims based in part, if not primarily, on Rodgers, appellants attempted to antedate, and thus remove, that reference as prior art, by filing declarations under 37 CFR 1.131 (Rule 131). In pertinent part, the rule reads (emphasis ours):
Sec. 1.131 Affidavit or declaration of prior invention to overcome cited patent or publication.
(a) When any claim of an application is rejected on reference to a * * * printed publication, and the applicant shall make oath or declaration as to facts showing a completion of the invention in this country * * * before the date of the printed publication, then the * * * publication cited shall not bar the grant of a patent to the applicant, unless the date of such * * * printed publication be more than one year prior to the date on which the application was filed in this country.
(b) The showing of facts shall be such, in character and weight, as to establish reduction to practice prior to the effective date of the reference, or conception of the invention prior to the effective date of the reference coupled with due diligence from said date to a subsequent reduction to practice or to the filing of the application. Original exhibits of drawings or records, or photocopies thereof, must accompany and form part of the affidavit or declaration or their absence satisfactorily explained.
Applicants proved to the satisfaction of the PTO the receipt in this country of the draft patent application which was accepted as a fact showing conception of the invention prior to Rodgers' publication date, which date is taken by the PTO to be the receipt of the IEEE Journal containing the Rodgers article by the PTO on October 7, 1974. Appellants make a half-hearted attempt to question the October 7 date by pointing out that the examiner did not receive his copy until October 10, but the copy relied on bears a PTO receipt stamp of October 7, amounting to an official record which appellants have not disproved.
The foregoing facts can be better visualized from the following chart, adapted from one in appellants' brief:
Earliest Proven
RODGERS et al. Date of
--------------
Article Publication
10/7/74 less than one year
Time (no time-bar)
-------------------------------------------------------------------------------
7/15/74 10/9/74 --------------- 8/6/75
MULDER et al. Draft Patent Netherlands Actual
U.S
--------------
Applicants Application Filing Date Filing
Date
Introduced Accorded Under
Into U.S.A. 35 U.S.C. Sec. 119
(Conception) (Constructive
Reduction
To Practice)
Issues
The primary issue is the obviousness of the invention as defined in the appealed claims in view of the references relied on. Preliminary thereto is the question whether the Rodgers article has been overcome as a reference, and involved in that issue is the question whether appellants are entitled to their Netherlands filing date as a constructive reduction to practice. These questions will be considered in the reverse order of their statement.
OPINIONAdverting to Rule 131, supra, as appellants have shown no actual reduction to practice of the invention in this country and no constructive reduction prior to the date of Rodgers, what Rule 131(b) says they have to show is conception in this country prior to Rodgers' date coupled with "due diligence from said date to * * * the filing of the application." The first question, therefore, is the date of conception in this country. The PTO (both the examiner and the board) have accepted July 15, 1974, the date of receipt in the U.S. of the draft application, as a conception date.
The next question is whether appellants are entitled, as a date of constructive reduction to practice, to the Netherlands or only to the actual U.S. filing date. The examiner said it was the former, the board the latter. We agree with the examiner.
The board cited no authority for depriving appellants of the benefit of their convention filing date; it only remarked that "the events of concern under 37 CFR 1.131 are events that occur in this country." It made no reference to Sec. 119 of the statute. We note that Rule 131 refers to "facts showing a completion of the invention in this country" but we also note that in (b) it makes a distinction between an actual reduction to practice (which has to be "in this country") and the "filing of the application." We are also aware of the statute which prohibits reliance on "activity * * * in a foreign country" in establishing "a date of invention," 35 U.S.C. Sec. 104. But that same statute has an express exception--"except as provided in sections 119 and 365 of this title." It is Sec. 119 with which we are concerned. It provides that when a U.S. application has been filed, as was the application in this case, within a year from an application in a convention country such as the Netherlands, the formalities all being complied with, the U.S. application
* * * shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country * * *.
We hold that this provision entitles appellants to rely on their Netherlands filing date for a constructive reduction to practice. Section 119 is a "patent-saving" provision for the benefit of applicants, and an applicant is entitled to rely on it as a constructive reduction to practice to overcome the date of a reference under Rule 131. In re Ziegler, 347 F.2d 642, 52 CCPA 1473, 146 USPQ 76 (1965) (). If entitlement to a foreign filing date can completely overcome a reference we see no reason why it cannot partially overcome a reference by providing the constructive reduction to practice element of proof required by Rule 131. It is a statutory priority right which cannot be interfered with by a construction placed on a PTO rule. Cf. In re Hilmer, 359 F.2d 859, 878, 53 CCPA 1288, 1312, 149 USPQ 480, 496 (1966).
This brings us to the next question under Rule 131. Referring to the time chart, supra, appellants have their conception date of July 15, 1974, and their constructive reduction to practice date of October 9, 1974, and Rule 131 requires that these dates must be "coupled with due diligence." Appellants would have us treat this case as though it were an interference between them and Rodgers, treating Rodgers as an applicant for a patent. But Rodgers is not an applicant and this is not an interference. Rodgers is a printed publication which is prior art under 35 U.S.C. Sec. 102(a), unless shown not to be prior,...
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