*1 53 CCPA HILMER, Application of Hans Gerhard Weyer Korger, Rudi and Walter
Aumuller. Appeal No. 7482. Court of
United States Customs Appeals. and Patent
April
Rehearing July Denied
Worley, J.,C. dissented. *2 overturning a consistent administra- practice interpretation
tive standing nearly forty years law of giving a United effect as States foreign filing art of a patentee which the of the reference was *3 entitled under 35 U.S.C. § patent, Because it held that a U. S. cited aas art reference under 35 102(e) 103, U.S.C. and is effective § § filing date, as of its “convention” relying on 35 U.S.C. the board rejection 10, 16, affirmed the of claims application 750,887, and 17 No. serial July 25, 1958, sulfonyl filed for certain ureas. opinion develops issue,
This con- explains precedents, why, siders the legislative history, on the basis of we modify hold that section does provision express of section a reference as of the is effective application date the for was “filed in the United States.” The two “references” relied on are: 2,962,530 Habicht Nov. (filed January 23, in the United States priority found to be entitled of the date of in Switzerland on January 24,1957) Wagner 2,975,212 14,1961 et al. March (filed May 1, in the United States 1957) rejection The here is the aftermath of (No. 90,218) ap- an interference between pellants priority dispute Habicht, winning party in which Habicht was the Eugene Better, Kekich, O. John Kala- single on a count. He won because mazoo, Mich., George Frost, Chicago, E. pellants conceded of the inven- 111., Henry Koster, City, W. York New the count tion The him. earliest appellants. by appellants for their in- date asserted Moore, Washington, Clarence W. D. C. filing date, July is vention their German (Joseph Schimmel, C., Washington, D. which, note, a few months counsel), Commissioner Pat- later than Habicht’s date of Jan- ents. uary 24, 1957. WORLEY, Judge, Before Chief After termination of the interference RICH, MARTIN, ALMOND, SMITH and and the return of this to the Judges. parte prosecu- examiner for further ex tion, rejected appealed the examiner Judge. RICH, Habicht, primary claims on as a refer- majority ence, Wagner The al., issue whether a sole in view as a et sec- Appeals holding ondary reference, Office Board of erred the claimed board, compounds “unpatentable dissent to be over one member ing rejec primary opinion, the secon- affirmed the view dary majority opinion them ob- tion. reference which renders there ordinary vious to one of skill the art.” four of the issue. The first statements is: Appellants appealed con- board
tending, alia, by appellants dis- inter that “The Habicht As stated in their anticipatory reply brief, presented closure cannot be utilized as the main issue They said, rejection appeal availability art.” uti- “The * * * lized discosure of the win- Habicht reference. ning party rejection. a basis for the argued length at the appellants con- insist this is hearing requested appellants were trary Explain- statutes.” file, legal filed, mem- a further said: concerning [Emphasis orandum it. *4 * * * appellants’ appli- ours.] German subsequent cation was filed to the (second The third statement to follow filing Swiss but [of Habicht] later) expression of involves prior U. S. date of board’s view in- relevance of the application. appellants Habicht The terference to the and issue reads: now maintain that the Habicht disclo- anticipatory sure cannot as be utilized applica- It is noted that the instant in view of 35 119 which en- U.S.C. is tion was involved in an interference Filing titled of “Benefit Date Earlier (before patent with Habicht issu- Foreign Right Countries: of Pri- ed), patent with claim 1 of the as the ority.” rights This section defines the count, appellants priority conceded foreign applicants of specif- and more However, questions no Habicht. of ically rights respect defines those with estoppel judicata res or raised can be to dates to which if are entitled concerning [presently claimed] privilege same is to citi- awarded cyclohexyl compound; substituted Ha- zens the United no States. There is (or suggest) bicht did not disclose even question only that [but] Section 119 any cyclohexyl “right cycloalkyl compounds, or priority.” deals with provide cyclohexyl does compound, for no the use count to or anticipatory S.U. anas refer- enough cycloalkyl broad to include com- foreign ence date. pounds could have been added to the interpretation of Section 119 also interference, appellants nor could set forth in the Ex- Manual compounds pri- relied on such to show amining (Section 715.01). Procedure ority. attempt Appellants are free Taylor The Manual refers to Viviani v. compounds to secure claims such Herzog, USPQ 448, v. wherein Com- they preceded that show Habicht’s question missioner Coe clarified the question them, being date as to rights priority respect which date Habicht is the control- filing. and domestic ling [Emphasis one. ours.] Appellants pointed that, further out We deem clear be a statement only “The priori- interference decided the ty did not claim and could not Habicht the interference issue e. the [i. count]; subject have claimed the now matter there no nor was decision made any by appellants, attempt claimed therefore there to decide who was interference, no ap- there could have been inventor of the disclosure. The pellants priority contest, readily re- or with Habicht with admit spect no thereto, reason issue, Habicht as to 'that the interference thi$ judicata may estoppel asserted there is no be admission far res re- maining against in- subject appellants as a result matter is concerned.” USPQ Zemla, parte terferenee, question Ex decided wherefore the is the (unreport Rapala parte patent.1 (1964), Ex effective date of the Habicht Sept. ed, Appeal 225-56, decided No. The board’s fourth statement of the issue infra, 1964), in which this discussed reads: mentioned, so distinction is not respect to claims 10 With that, think, we, as do board now seems to the issue in this case is: law, disclo whether subject When the claimed matter of Another sure is claimed irrelevant.2 a U. S. is used as a basis disregard why lim reason shall we rejecting in an claim subject matter is that itation to claimed the reference found to en- higher Office, authority than the Patent titled to the date of a namely Dis for the District Court plication under 35 is the date USC Lilly trict of in Eli & Co. v. Columbia which must be over- Brenner, F.Supp. (1965), dis come, in order to remove it a ref- [as infra, effectively removed this cussed erence], its actual date in the parallel restriction case as shown United States or the date to quotation make from its later which the is entitled for opinion. Lilly Rapala, supra, in the subject [Emphasis matter? ours.] Patent Office. We note that there are two restrictions second restriction any present in this statement board’s fourth statement of the issue is *5 only First, the others. it refers to claim- patent that “the reference found to is subject pat- ed of matter the “reference” prior entitled to the date of a ent. That this was deliberate shown is * * application under USC by very a footnote to the end of the degree question. To some this loads the majority opinion board in which the ma- implicit assumption There in it an is jority said: patent is “entitled to the date of if foreign filing 13. Whether the date prior application,” it is entitled can be used for mere such matters as it, and that is one that. But must ex- descriptions prior art, of of disclosures closely amine into meant what is any species scope of not within the of essence, word “entitled.” is the etc., patent, the claims the U. S. problem appeal in this and we wish to may appear specification point dispel any to it at outset latter, of the is decided since such assumptions. patent mistaken A matters are involved herein. foreign filing be “entitled” to a date for As here, purposes just we see the however, others, facts some not for and subject board relied on patent ways. as a matter not claim be “used” in two regard ed. We patent patent A restriction owner as with uses his legal significance legal right out granted others, because: (1) Alexander to exclude Mil burn Others, Co. v. him Davis-Bournonville under 35 whol- U.S.C. 154. § Co., ly patentee, patent, U.S. 46 S.Ct. unrelated 70 L.Ed. to the use a 651 (1926), creating legal infra, right, simply discussed not as a as evi- rule of 102(e), prior art, prior U.S.C. here dence § relied on invention or support as basic rejection, e., for the abolish 1. as a “reference.” This is not an right. ed the distinction patent between claimed exercise of the This how is disclosure; (2) “using” unclaimed within a few the Patent Office is the Habicht patent. months of totally the decision herein the board These different opinion jeetion, 1. opinion The board’s contains no dear see the end of nn this recognition rejection by of another der “Reason for Remand.” examiner, rejection different from the stated, See, however, above the-issue the in based footnote 1 and the section Wagner opinion in view of terference et al. This at the end of this headed “Rea- only deals issue the board son for Remand.” chose to deal with. As to the other re governed things, law, found- entitled (e), different and that were to its theories, “priority” developed ed on different for under section 119. date through right question. different histories. is not in The board ruled: We have seen that 35 § U.S.C. respect Appellants is involved with to the so-called the U. fil- overcome S. by claiming “priority date” date of Habicht Habicht patent. statutory provision The other under an benefit 35 USC case, applicable Germany July plication involved in this to both filed in references, 102(e). specification is 35 U.S.C. Ger- § aptly application Section 102 has been described man has been examined containing (Meyer article, infra) and is a full found to contain disclo- “patent defeating provisions.” They subject claims, fall sure of the matter classes, prior appli filing into two events to an the U. date Habicht is cant’s date of invention and events considered overcome. application, his U. S. re related We can now summarize the issue and spectively novelty requirement simultaneously state the decision. board’s provisions right and to for loss of Continuing quotation, the above through delay certain after board said: public. events have made the invention insists, however, The Examiner (e) novelty pro Subsection is one pat- the effective date of the Habicht visions, pat one of the “conditions January ent entability,” appli if the facts of an filed Switzerland bring right it, cant’s case him within his claimed Habicht under 35 to a is defeated. This subsection Appellants USC 119. have not over- together heading with the introduc come earlier date of Habicht. The tory line of the section reads: presented issue of whether the hence patentability; 102. Conditions foreign priority a United novelty and loss States can be used as the effec- tive date of when it *6 person pat- [Emphasis A is used a shall entitled to reference. ours, ent unless— and this is the second statement States before the invention thereof patent by [*] (e) the applicant granted [*] invention was described another filed in [*] for on an patent, -X- [*] ** United [*] in a for by *. We think it was error. This is governs of the issue Our conclusion is that the ******* decision * * by *. the board.] alleged to be in error. date [Emphasis ours.] Background Issue Thus, though both references here were Availability Habicht
patents copending appellants’ appli- Reference issuing 102(e) cation, filed, after it was ques- The issue this case involves a makes them available as of U. S. their statutory filing interpretation tion appel- basic which are dates earlier than operation system. filing However, lants’ U. S. date. since applicant’s issue has arisen because after decades of date refers to the practice, interpretation a uniform invention, date, and his is en- not to he part which has since opportunity law existed titled to an his to establish 1926, the Patent and whole since date of to show his inven- invention about-face; abrupt statutory has possessed novelty Office made an tion he when having years, for after appellants refused at least did this made it. In this case expressly ruling question, ap- by showing filed a German patents ply as of for- plication U. S. earlier than the U. S. references changed eign dates, “priority” has references, specified in 102 dates * * purposes practice ence In the context as made manifest unknown of the article means number of One of as references board decisions. them by appeal. Another, pres- patents all is here on as will defeat claims others ently appear, respect and with to all matter disclosed been reviewed under claimed, whether or not and 35 U.S.C. 145 in the District whether Court anticipation complete or in of Columbia Pat- used show District where the support Lilly affirmed, ent claim of obviousness 35 U.S. Office was v. Bren- ner, (Herein supra. published, C. “Fishman ar- A third has been §§ ticle.”) parte Zemla, USPQ Ex May writing spate
There has been a a Commissioner’s Notice question (published involved, issued 9, 1964, law here all of June 803 O.G. 305) ground revoking very which we long-standing have read. The same sec- plowed replowed by tion of Examining has been authors Manual panels as well (MPEP), as different Procedure the Patent 715.01 “Reference chronolog- Foreign Appeals. Filing Date,” Claims Office Board based order, following May 9, 1935, ical and Commissioner’s articles decision of Taylor opinions appeared: Viviani Herzog, USPQ v. v. providing applicant that an need August 1963, Filing “Effective Dates foreign filing not antedate the of a of U. S. Patents Based on 35 Sec. U.S.C. reference. The Notice stated that “for- 119,” by Leon H. Chasan Frederick eign filing date is considered the effec- Rabin, 601-612, attacking 45 JPOS tive date in those situations where claim- problem “as to which date —the actual subject ed matter of the domestic U. S. the earlier convention (or thereto) disclosed matter related fil- date —shall be as that of considered being rejection, used as the basis 102(e).” They under U.S.C. § where no of interference ex- ques- conclude that “the answer * * * ists.” tion is not free doubt ** closing 8, 1964, appeal June “It Hilmer sentence is: filed likely appears transcript in this court with the courts will have record making opinion public expressly point, possibly to rule the board’s on this rec- ord. future, quite in the near and it is also possible position taken July 31, 1964, decision rendered (Here- Patent Office will be reversed.” Appeals Zemla, parte Board of in Ex su- article.”) in “Chasan-Rabin pra, opinion by Kreek, Examiner-in-Chief joined February 25, the Hilmer Examiner-in-Chief Friedman Acting
below, unpublished, majority opin- Andrews, then Examiner-in-Chief *7 holding by patent “may join- that a Examiner-in-Chief Federico U. S. used ion Acting by Rosdol, for all that it ed discloses as of the Examiner-in-Chief date dissenting opinion by Acting the same disclosure made in then Exam- a for- eign holding country Behrens, under the No iner-in-Chief Convention.” of a mention is made of restriction to convention is effective date claimed subject any respect S. matter or of U. a reference interference subject therein and situation. The basis of the is “claimed matter” decision segment copy specification key verbatim of the of “the rele- disclosure opinion, the Hilmer board limita- vant invention.” but the to the claimed of tions the Hilmer decision are omitted 1964, Analysis “An of the March Com- is, course, and Hilmer of not mentioned. of 119 and 35 USC bined Effect 35 USC § August 1964, parte by “Re: ‘Ex Blum- 102(e),” David S. Fishman of say- lein’,” Patterson, by Bar, 181-213, Robert 46 JPOS J. Connecticut 46 JPOS 597, attempt ing paper attention to omission in the “this will to demon- calls [claiming priori- patents Fishman article of decision strate that such foreign filing Walker, 332, ty court, ac- In re 213 F.2d 41 should be date] affirming foreign parte Ex (1954), CCPA 913 corded the refer- 866 225-56, pala (unpublished, Appeal USPQ No.
Blumlein, (1952), recon 223 by USPQ (1953), 25, 1964), opinion Exam- denied, heard June sideration joined by Exam- Federico had characterized iner-in-Chief which Fishman “logically Acting “completely un Exam- iner-in-Chief Rosa and untenable” saying: 206), 205, (pp. “One sub- iner-in-Chief sound” Stone. stantially duplicates of the if the author of Hil- cannot but wonder the contents anything legal mer, differ said used article would have contains the discussion ently af Zemla, the CCPA had realized that he like the latter does not limit but Ap Board firmed the decision use of U. S. the disclosure peals.” of its British held effective as priority subject date to claimed matter August Analysis of the ‘An “Re: follow- disclosure “relevant to” it. The Section Effect of 35 USC Combined appears statement outset: 102(e)’,” William Section and 35 USC expresses 598-599, Currie, JPOS E. Appellant fact that aware of disagreement article Fishman with the Board several recent decisions of the reasoning. points in its to flaws ques- Appeals have dealt with omits points Fishman out that Currie presented, tion inasmuch as these but caption second and the of the mention they public decisions are not cannot be paragraph of which both section precedents used as and the priority. Currie’s view is refer to must be considered anew. view, contrary to Fishman’s repetition Therefore we find a of most restricting language does contain thus now, opinion. the Hilmer As of meaning effect” “the same of the words course, opinions public. three board as an not include effect do so that Lilly Brenner, infra. See v. discussed “anticipation” limited but are Commentary, by November concludes: issues. Currie Gary Samuels, 827-828, A. 46 JPOS criti- Therefore, of this Section in view articles, cal of Fishman the Chasan and just mean read to should be May Notice, Board of and the says, “filed in the United what Appeals decision, expressing the view nothing in Section There is States.” extension of the effective date 102(e). carry over to Section 119 to patents U. S. as references back- used Scope discussed foreign filing ward in time to their dates Rights “Foreign Priority in detail contrary Congress, to the intent of Act Patent 119 of the under Section legislative history. referring to items of Briskin, 94-121. 1952,” JPOS Ref- June “Are Patents Effective required to Statutory enactment Foreign Filing ?,” Dates erences as establishing applicant from prevent an (Mr. Meyer Harold Ohio Bar using re- his anticipation Coordinating Meyer was a member case practice, in that duction helped Committee which to write the interpretation, no basis there was Rich, “Congres- 1952 Patent Act—see to be would seem It there is here. Or, sional Wrote the Patent Who Intent — interests illogical, adverse 1952?,” pp. 61-78, Pro- Act of give inventors, of United States BNA, Exploitation, curement and Wash- status ington, 1963), Re- 47 JPOS 391-410. *8 purposes practice for of reduction a ferring foregoing items, to all of the anticipation. of Meyer says: publications “Those and de- refers, paragraph of quoted last The foreign applica- cisions which favor the originat- course, which to 35 U.S.C. tion date of a ref- date as the effective enactment, statutory ed, in section aas of erence have left out consideration Aug. 8, 1946, Act, Boykin 60 9 of the significant some factors lead infra. discussed Stat. both exactly contrary His the conclusion.” develops in article this thesis detail rendered September decision parte Appeals Ra- concludes as to “what law intend- by in Ex the of Board the
867 Britain, pres- convention date ed to when enacted in Great be it was as the statute, applicant ent is” a date the could not and what it therefore in overcome. provisions Had these “The of the In- the been held effective words: reference only as of of in the ternational Convention and USC its date actual * * * rights urged, only priority States, plaintiff United establish summary judg- subject matter, and do Patent motion for claimed Office change the effective dates refer- ment would been denied. We have carefully 102(a), (b), ences under most as it 35 USC studied this (e).” (Herein “Meyer article.”) dealing is the most recent decision with arguments all which have been 6, 1965, Ex- October Manual of Patent brought problem, on bear contrib- amining by inserting Procedure amended uting not a new ones. We cannot few corresponding new section 715.01 in sub- agree with it. May 27, stance 1964 Notice and disagree with, To Hilmer. make clear what we quote the District own sum- Court’s 1965, Commentary, November a L. mary (248 position statement F. (see August 1963, supra), Chasan Supp. 408): 922-924, Meyer in JPOS article says which this co-author his former important question to be position was that while the to the answer settled in this case is one of first im problem statutory construction “was pression may in this court. issue doubt, not free from on balance the ease whether, be stated to be situation law and the authorities that have con- foreign where inventor has been sidered this have arrived at conclu- granted a United States sion is the Convention date which patent application United States should control.” He then to dis- tries is entitled under 35 U.S.C. § Meyer’s authorities, ig- credit some of application filing earlier benefit noring argument the mainstream of his foreign country, date in a this United by saying: and ends States available refer The matter 102(e) sufficient ence interest under 35 U.S.C. for all dis forthcoming subject even matter, CCPA hear- closed whether claimed ings on, g., Hilmer, Korger, unclaimed, e. In re as of the date Weyer and Aumuller application. con- be the earlier undoubtedly agrees clusive. The issue will court with defendant [Patent interparte raised matters [sic] and holds Office] fil importance possible sufficient ulti- date is the effective date Supreme mate subject resolution Court. as to all matter which is dis closed, not, whether claimed or in the 20, 1965, opinion December Dis- foreign application, to the extent Court, Lilly Columbia, trict District of brought such disclosures are forward Brenner, F.Supp. v. 402-434. This included both United States was a suit under 35 U.S.C. re- § pat and the United States parte view the decision of the board in Ex granted application, ent on this Rapala, supra, and far so as we know is latter, course, being the basis for general pic- the last item rejection. 35a U.S.C. [Em § opinion adopted by ture. The Dis- phasis ours.] supports granting trict Court of a summary judgment requested regret Pat- that we find ourselves dismissing Lilly’s complaint. ent Court, Office especial- conflict with the District ly On presented, colleague, ques- law name- with an erstwhile on a U, ly, single law, the effective correspondingly tion of disagreement support cited as a reference to with several members rejection board, under U.S.C. 103 for obvi- but we find ourselves ousness, agreed agreement Meyers article, the court with the Patent with the *9 Currie, Patterson, Office that effective date was com- Samuels mentaría, dissenting issue and with did not involve the views that Walker examination, especially of Examiner-in-Chief Behrens who found here. On careful history of sections 102 and 119 to briefs, it with the aid of the record and give majority’s “scant comfort to the in- will be seen to otherwise. it Since terpretation.” strange find it indeed point the one case in this court we suddenly imperative that it has become first, shall examine Walker after which reinterpret a statute which was enacted approach problem we shall of statu- light later construed in the tory primarily in a chrono- construction Supreme Court decision logical fashion. practice gener- invert under which a appeal lawyers Walker from the board was an ation of since the latter date USPQ Blumlein, parte decision in Ex for obtained close mil- clients to two (1952), prior to the patents, counting decided below lion United States validity effective date the 1952 Patent Act but their on a construction of the discrep- statutory only afterward in this court. The pro- law not followed but ancy mulgated by of Alan names is due to the death the Patent Further- Office. Blumlein, more, D. known law, already said to be a well quarter in 1952 this inventor, appli- century toto, of a British TV and his U. S. old in was carried for- executrix, by Congressional cation filed his Doreen ward action without (formerly Blumlein). change, As already Walker Doreen insofar as was statu- here, given tory, Blumlein was invention and insofar as it was case law it was priority change, particulars date reason of the statute codified without filing (then 4887) as of the of his will be dealt with later. This change long British In- June and continuous adminis- practice trative volved as a reference was U. S. has also been made with- any Whiteley, notice, hearing, the U. S. out advance or stated which, February 5, 1943, policy, economics, Blum- basis in was after or internation- al lein’s date but the British date of relations. While it be that February shrinking earlier, very whieh was concept world is and the making “foreign” conten- Blumlein was same should be abolished for the good mankind, appellants tion in that are case that this is not a constitu- making here, expounding specific tion the ef- that as a stat- Whiteley accomplish U. specific pur- utes enacted to fective date of the poses, meaning stay board was its date. The U. S. which should put, appeals agreed intervening Congressional that contention. The absent with Whiteley’s modifications, expressly board also held that for well-understood rea- was of “no conse- sons. British quence,” apart from the effect of the Turning general spe- from the outcome an interference between cific, specific we will now consider our Whiteley. Blumlein and construing applicable reasons long statutes as have for so been Blumlein, In the interference construed, contrary to the recent innova- Whiteley to assert his was able tion of Office. him to Blum- date which enabled antedate on his lein and win the interference OPINION subsequent parte ex claims and 2. In Lilly opens The District Court in rejection prosecution examiner’s opinion by observing to the board was restated went impression before it was one of first Answer) (now called an his Statement in that court. Here it is otherwise. in these terms: Walker, court decided In re Whiteley F.2d to be a 41 CCPA 913. is considered valid The casual shows, might get reader of the reference for what it since alone impression, apparently interference was decision the above the District Whiteley applicant, Lilly (248 F.Supp. 430), Court did in adverse to supra, opinion expressly claiming pealed claims. The court had to and did ing his consider all three were had whether under 35 for him the pealed ority date; tion Two lant’s view that effect of the somewhat only were jection of these claims. view of the ence. cant. Whiteley patent Whiteley is not an effective reference proved emplified by over the disclosure of would be to ed common against his claims. ority, appealed applicant’s any special it to * * * Applicant has failed to show for what it * * * it claims. The effect of such a appealing domestic to overcome [******] estopped by did not subsequent board, his British as of its U. claims 1 presented: as the Whiteley claims properly rejected [Blumlein’s] essence Accordingly, equivocal opinion we are of the this court to while satisfy appellant, exact argument subject circumstances interference, subject grant applicant shows, were adverse Whiteley who opinions on reconsidera- filing date, questions. Whiteley’s applicant claims the interference from words: (3) considers U.S.C. (1) date of the ground agreeing issue of the 2 of is not a reference filing successfully patentably filing date, gave filing matter of his matter invention back of we sustain the re- but whether Blumlein Whether “that decision on Whiteley was a reference §119 Whiteley; three only relied saying: to 17 and 20 unpatentable argues date. point “(2)” whereby British This court’s but with with the benefit ‘By carry- about questions Blumlein interfer- distinct contest- holding that in clarify as ex- appel- appli- what deny that pri- pri- (2) ap- the mitted in ble courses of action court that as to therefore matter case in the quence” decision U. the true hold points distinct from tion on the then which is disclosed but paragraph on permissible” inapposite cedes that other answered tor’s brief in which provision claimed claimed structure before in,’ rect, contends, appellant’s The court then bar.” ** applicant lant. invention and same Having be S. reference citing decisions that the claims on the facts proceeded, date has to be the interference */> words, correct, interference (Emphasis domestic “(1)” point It adopted ground affirmed on that ground Walker’s passed who showed and we the from the res (Emphasis quoted paragraph appellant’s argument Whiteley foreign priority support thereof to allow in issue and the that placed judicata argument affirm application of non-interfering subject respect stated’, on both the board claims lost of the decision only ours.) solicitor brief “(3)”, code, he think and to overcome. The final Patent Office Solici- for the court as sub- were not as to structure first of three effect, it would its own a claim the decision below conceded not claimed is too the United States counts are for the ours.) quoted is of “no conse- Walker-Blumlein he invented that, in the appealed point, ‘absolutely to the case the properly, by quoting supra, say ground. frankly by Blumlein the relevant the solicitor U.S.C. saying, interpreta- broad patentably date of a therefore, to a later argument Whiteley. following the court that was appellant pass and this and to claims below, appel- “quite *10 there- possi- court con- cor- and the “in on Whiteley patent, arriving into the process matured But at that appellant overcame that pass course of action the court did integrating applicable judi- circuit law where there is no res claimed,” present cata, case.3 The court’s bination as stated board as in *11 complete in ac here. at time were views that legal expertise in the Pat cord rely hand, appellants On the here other ent Office. hap- accurately what on Walker and state Walker, pened Blumlein in con- in discussing Lilly, in note that in We tending supporting precedent their it is ignored Walker, court all of the rele- filing date contention “that the domestic pro- vant matters discussed above by foreign appli- of a obtained a assumption it ceeded on the could cant is the critical date to be considered possibly passed point on a on which patent for when it desired to use the ignores pass. Blum- it did It also anticipation purposes,” is, as that lein decision in the Patent Office on the fully ordinary prior art reference. We very issue here involved. agree. reasons, dis- For the same we further note that in the instant agree Lilly (248 F.Supp. opinion with the opinion case board’s finds “confu- says: 430) at [Walker] where “the ground sion” this as to the really support plaintiff’s case does not rejection, court in Walker sustained the position.” clearly stated, which we think is and that The Solicitor has noth- Office stating the board errs in the contention say interesting on Walker for the supposed of the court’s solicitor really reason that he did not brief file a approval of it. The did con- solicitor position. for the Patent Office In his “subject tend that all matter recited in says: brief he [Whiteley] as claims” was available [opinion] priority Inasmuch decision Far art as date. Appeals it, brief, the Board sets forth he said his “The issue why way foreign filing full and exact detail the reasons here in no involves a * * * priority Whiteley. date is considered ef- patentee date of Whiteley’s un- rejection upon fective date of the Habicht here is not 102(e), foreign filing rejection der it is 35 USC believed date. The unnecessary upon be peat re- undesirable to based the adverse award * * paraphrase or to the decision in “indi- That is what the court * * * this brief. proper.” cated We think reading the board further erred words, opinion In other the board opinion second on reconsideration in is the brief this case. That was the (which Blumlein it refers to as “Walk- position argu- the solicitor took at oral saying opinion er”) “the ment. foreign date was considered relevant with chronological We turn now to a review respect to the disclosed but unclaimed precedents and to the other statutes and components of claimed.” the combination parties. relied nothing remotely resembling We find for- board’s conclusion is very opinion in such In a view. short eign priority date of a U. is its clarify requests answer to its several effective reference. identi- position, did was to re- what the board language cal this case position iterate its claims that Blumlein’s Rayala (Lilly) and in the Zemla and subject patentably were to matter “not opinions, the is: board’s statement distinct” from issue of the interfer- nothing simply all ence which he lost. It said Our conclusion is arrived at components considering com- “unclaimed and the about sections explanation Appeals. We trust what the Board of This court did pass present- did in Walker an- court sufficient as it was curiosity expressed hy swer to ed to it. The confusion as what (248 431) rejection required Lilly F.Supp. ground actually Court in District argument as to our “reaction” to the the court do so. rejection passed on a not relied on we paragraph section 119 of the first tion untenable. To discuss it must together. us, ap- statute have section 119 before insofar * * * plicable : the statutes [Here quoted] earlier date in Benefit of foreign country; applica- to two Section refers stemming for the invention tions same inventor, from the same one a first An for an in- country plication filed in by any country filed vention person in this application filed and the other later repre- has, legal *12 or who whose * * * in United the States. Section assigns have, previously sentatives or regularly provides specified that under the application for filed an circumstances, subject re- and patent for in a the same invention quirements paragraph second the foreign country which affords similar here, question the which are not in privileges applications case of the application, second filed in the United filed in the United States or citi- States, “shall effect” have the same States, zens the shall have United as it would if filed in the United have applica- the same as the same effect appli- on on which States the date the country tion would have if filed in this foreign country. cation was filed in the application on the date on which the language gives plain; This application it the is patent for for same invention was applica- of an the status foreign country, first filed in if such tion filed in on a the United States application country in this is filed particular pro- date. Section within twelve months from the earliest patent may vides that a be not obtained foreign application on date which such if the invention was described filed; patent grant- was no but shall be granted patent application an for on any application patent on ed for another the United filed patented an invention which had been States before invention thereof printed publication or described in a applicant. paragraph makes any country year more than one date of a U. S. [note the date the actual before the omission of “in the United States”] application country, or in this the effective It re- reference. as public had been in or sale in use on application an fers to in the filed country year prior this more than one United States and since section filing. to such provides application shall have application No shall be the same effect if filed in coun- this right entitled to unless try particular pro- date, on a these two requirement for fil- follows the [here together visions must be read ing papers certain in the Office foreign application date of the claiming priority question becomes the effective * * here, as *. [Em- the board held] patent. United States reference [Em- phasis ours.] phasis ours.] plausible impulse This is so that one’s is board’s construction is based “Q.E.D.”4 say language We find the reason idea the statute fault, however, interpreta- at says, and the plain, that it means what it McQuewan, This construction reminiscent to rest in Bloomer idea v. many misreadings 539, 549, (1852), of the former statuto- U.S. 14 L.Ed. ry right changed definition of the “the it did not die until the 1952 Act right make, use, exclusive the statute to “the vend read to exclude discovery,” making, using, selling the invention or others from or * * give which patentee so often asserted invention U.S.C. positive right ghost some over make Even now seems to hover things embodying patented Lilly (248 use or sell his case F. Supreme put Supp. 411, 412). invention. The Court says application show neither was intended it two sections that what that the other, should same wherefore filed abroad is to affect have the effect together pur- though read all violation filed were here —for construction, statutory poses. rule most basic can the statement to We reverse carrying rule,” say the “master out the the actual U. is to S. legislative though Additionally, it were intent. have the same effect as long prac- day and consistent administrative filed in the U. when the applying interpretation foreign application filed, con- tice trary the whole board, thing being con- to the new view the of effective date. by legislation way firmed in 1952. ratification We take it either it makes because separate- We will consider these matters no here. difference ly. getting history, into we note Before very first there is in the words Section the statute a of this literalism. refutation up history shall take now says It “shall have the same effect” and *13 purpose opin- of The board says it then “but” several situations equivalent pages ion four devotes the of effect, namely, it shall not have the same printed scholarly to a and the record enjoy foreign it respect does the date with history detailed review of of section the any patent-defeating agree, except 119 with all of which we provisions publication pat based or for the interwoven conclusions as to its enting anywhere public in the world or meaning as it bears effective being country use or on sale in this more of a U. used reference. year than one the date actual before of country.5 in this pred The board shows that the involved, As to the other statute containing (R.S. 4887), ecessor statute point 102(e), out that the words of section the words “shall have the same force and “simply” together which the board reads effect,” (32 was enacted March plain. with section also seem Per- 1225). signed Stat. Theodore Roosevelt haps they precisely they say mean what it into law. The bill was drafted and specifying, express patent-de- as an proposed by by a Commission created Act feating provision, application by Congress (30 431) of in 1898 Stat. describing only another the invention but study the effect of the Convention of as of the it is “filed in the United Paris for the Protection of Industrial States.” Property of 20th March which was great logical The flaw we see in the under revision at Brussels even as the reasoning premise (or board’s inis its deliberated, Commission the be revision priori is it an ?) conclusion that “these ing adopted at Brussels 14th Decem provisions together.” two must be read (It ber 1900. was last at Lisbon revised Doing so, says destroys it 119 in effect 1958.) on 31st October The Commis plain meaning 102(e) of report 27, 1900, sion made a November indulge board will not con- reverse printed “Report entitled plain struction in which the words of Appointed Commissioners Revise 102(e) apparent meaning limit the Relating Patents, Trademarks, Laws reading 119. We see no reason for these Names, Trade Ex and with Reference to provisions together two and board isting Treaties,” and Conventions believe, has stated none. We with the fairly descriptive purpose. dissenting member, board that 119 concepts deal with unrelated section entitled “The Revision of origins further that the historical Law,” read, of the Patent which we have ex- patent-defeating one-year 4887) These time- to assure it would have bars are giving pri- also contained in 35 § U.S.C. the “same effect” if effect to a (b) (formerly 4886) always ority R.S. and date would avoid these time-bars. (formerly been included in page begins “priority page 6 to 39. It date” or the
tends by “convention 6): saying (p. date.” protection to was a have found desirable in con- it trying patents one foreign who was to obtain
sidering revision being countries, protection law to first consider what against patent-defeating provisions of give changes in the law are needed to intervening national laws based on events treaty full force and effect to the ob- time between the at home ligations which United States heading “Re- abroad. Under the touching protection of undertaken capitulation Advantages Secured subjects made or inventions Convention,” said, so the Commission foreign citizens certain countries. 14-15): (pp. far as here relevant [Emphasis ours.] advantages to our citizens “Priority heading Under Under the patents directly afforded matter Convention,” says 12): (p. may thus re- convention capitulated. provision of The second the Conven- noticed, one tion to be enjoyment First. The very great advantage be of to those of rights subjects equal countries of pat- our who desire to citizens secure citizens those countries. ents for their countries in- “delay priority” Second. The ventions, that contained article seven months within which to file “delay so called relates *14 plications filing abroad in this after priority,” priority.” “period or of country. explained It then that in most countries privilege Third. The of introduc- patent no can if valid be obtained ing embodying articles before the invention application filed, the invention has country manufactured in this into for- printed publication, been described eign to a countries certain extent with- country application either in the even, or causing thereby the forfeiture out inas the case of France and six patents taken out there. countries, any country; other that emphasis placed repeatedly Note the public was same true as to use of Report advantages the Commission to invention; and that the convention United States citizens. was felt It gives applicants in member countries a necessary comply should do what was to period (then months, soon extended to reciprocity provisions enjoy with the to 12) applications in which can file for benefits of the our own convention filing in other countries after in their citizens. was It also that believed country patents own and obtain valid not- Attorneys Opinions General, reason of withstanding publication or use 19, 273, Vol. tion, “the International Conven- interval and before the of the agreements in so far as the therein foreign application. This, explained, it contained are not in accordance with the “delay priority.” plain Eng- the lish, In present States, laws the United right applicant it was the of an effect; force it is that without foreign application have the treated at self-executing, legislation requires prior intervening publica- law as * * * * * to render it effective public use, though tion or in fact it was opinion legislation it is our that such not, by giving right applicant * * adopted (Report should be *.” foreign delay country, in the p. 19.) filing simultaneously instead of with the Specific question here, to the Com- application, yet home it have treated as says Report (p. 24): mission though ap- filed on the date home plication. today are, therefore, opinion We is what we call simply priority,” just an “Convention amendment to the law should be “priority.” made, foreign providing The date is change have, appli- page plication an in U. laws 27 where shall case country by it was said: cation is filed applicant specified within the abroad application patent for a First. The period, effect as if filed here the same fil- filed ing seven2 months of the within day it was filed abroad. patent for for a an any coun- the same invention The board thinks this “shows the inten- try party Interna- which is a “a to create tion of the Commissioners” given the tional Convention should be having application] been status [an regards * same priority force purposes *.” filed in the U. S. all for if filed on that it would have (Emphasis ours.) of this the context foreign applica- date on which the using case, purpose for the that means (Fn. tion was filed. 2: Extended patent, obtained a claim U. S. months.) [Emphasis ours.] twelve priority, art to defeat Commission, page 36, The proposed legislation, recommended party patent on the subject of a third to a is, in sub- patentably matter which does stance, the amendment to 4887 which distinguish anything happens change passed is, was and with no in sub- to be disclosed in such at—or today stance, what we in section anything least from “relevant disclosed proposed in the Commis- bill invention,” depend- claimed [there] on Report “A BILL to sion give was entitled one which recent board treaty relating stipulations effect to every word of looks at. We have read to letters inventions.” looking any Report the Commission passed Act “An Act To entitled suggestion concept of such a and have provisions effectuate the of the addition- All found none. the board found was al act the international convention for wholly quotation. the above deem it protection property.” of industrial finding inadequate in- basis for always Throughout, phrase the same applica- tent to create a “status” for an appeared, “shall have same force and say nothing grant- tion—to effect,” simplified until purposes.” ed thereon —“for There all *15 1952 codification to “shall the same nega- are other factors to which consider change effect.” This was mere modern- any legislative tive such intent. legislative drafting. in ization The Re- There is another sentence in Com- the says: visers Note to the section “The Report mission we should consider paragraph pres- first is the same as the page 26. It called attention to the fact changes language.” ent law with that most the countries Commentary Act, Federico on the 1952 granted apply is and said: first U.S.C.A., says (p. 29): excep- The Convention has created an right This so-called was applica- rule tion the and made an provided paragraph for in the second any tion in Union for State the the of R.S. 4887 which is the basis for Property Protection of Industrial paragraph the first of section 119 of application the same effect * * * title. here [he states the country the where an is obtaining right] 4 conditions for the subsequently spe- made within the time * * * The new statute made no period priority. cified a [Em- changes in these conditions of responding part of the old statute ex cor the phasis ours.] couples very nicely cept language slightly with the word- to revise the ing the first recommendation for a [*] * *.6 page analysis
6. In the two and a
ent as a
half
art reference. The Com-
always
giving
119,
mentary
published
Thus,
referred to
was
section
1954.
the
present
“right
priority,”
interpretation
Federico,
there is no hint
Mr.
anything
speaking
Examiner-in-Chief,
repre-
date has
as an
pat-
development.
date of a U. S.
sents
later
do with
effective
claiming
patentable
guess
Congress
the same
ties
has
what
We need
Congressional
meaning
invention. U.S.Code
since believed
disputed
be the
1946, p.
119,
Service
in section
for it has
words
clearly.
spoken
interfere
World wars
be-
words
emphasize none of those
We
prop-
with normal commerce in industrial
all.
emphasize them
wish to
cause we
erty.
one-year period of
clearer,
imagine a
readily
cannot
“enemy”
being
people
too short for
legis-
as to
statement
more definitive
countries,
we had after World War I
“same
words
of the
own
lature’s
view
(41
1921)
Nolan Act
Mar.
Stat.
appear in
effect,”
now
which
Boykin
II
after World
Act.
and
Foreign
War
flatly
contradicts
This statement
reciprocal acts.
countries had
men-
does not
The board
view.
board’s
purpose
period
One
was
to extend
it.
tion
priority.
Report
House
No.
Janu-
(248 F.
Lilly
Court
the District
ary 28,1946, by
Boykin, accompanied
Mr.
depreciate
attempts
423-424)
Supp. at
H.R. 5223 which
Public
became
Law
vanishing
quotation to the
above
Cong.,
Sess., Aug. 8, 1946,
of the 79th
2d
nothing
by saying
reitera
point
it is
bill,
60 Stat. 940.
Section
de
Commissioner’s
of an erroneous
tion
report says, was to extend “the so-called
directly
(Viviani, supra)
was
cision
period
priority,”
which then existed
probably
Boykin Act,
concerned with
p.
report
under R.S. 4887. On
3 the
thoughtfully
considered
was not
says:
committee,
full
or
House
even
whole
connection,
ob-
In this
report
on section
and is not
portion of the statute
that the
served
years later.
until six
not enacted
was
filing of a
provides
answered,
answer
If this need be
foreign application—
pre
happens
quotation
to be a
that the
force and effect
the same
shall have
con
construction
cise statement
application would have
same
as the
by the
sistently placed
statute
on the
country
if filed
1963;
Boy-
until
Patent Office
application for
on which
concerned,
order
as its first
kin Act was
discovery,
invention,
for the same
extending
1, with
in section
of business
design
first
filed
such
finally (omit
right
priority; and
the
ting
foreign country—
reading
habits
comment on the
very
Congressmen),
intended to mean “shall have
section 119 is
etc.,
effect,”
insofar as
about
the statute
force and
law as R.S.
same
applicant’s
same
and,
right
speaking
report
to a
con-
which the
Boy-
statutory provision
amending. Presumably
effect,
Mr.
cerned. This
Congress
bearing
upon
of another
no
party
make it clear
kin wished to
*16
patent except
passed, it
public
in
case
the
if his bill
to
that
par-
pushing
of an interference
the two
the effective
where
not be
would
rejections 56,
foreign filing
7.
still
estab-
in
al-
To show that
this was
though
patentee
an
in
we cite Mc-
has won
lished construction
1959
where
Practice,
applicant
Crady,
on the
4th Ed.
with
Patent Office
interference
142,
foreign filing
(1959),
strength
“Effective Date of Do-
date such
Sec.
of his
Patent,”
p.
the effective date of
mestic
198:
date becomes
patent
to the inter-
the reference
claims
as to claims similar
Where
date,
foreign filing
benefit of an earlier
ference counts.57
Taylor (Comr:
56.
validity
1935)
it
seem that
of such
Viviani v.
would
against
448,
precluded
MPEP
cannot
an
715.01.
PQ
claim
applicant
72
(BA: 1938)
57.
except
partes pro-
parte
Ex
Kinsella
in an inter
parte
(BA:
language
ceeding. Despite
Ex
Blumlein
of 35
199.
PQ
39
application
1953)
119,
PQ
1952 &
USO
that
the U. S.
§
was the Patent Of-
the same
To the same effect
“shall have the same effect as
application
MPEP,
it
own
section 715.01
would have if filed in this
fice’s
changed
date,”
long period
country
filing]
[foreign
until
on
over a
on
1964, quoted
ordinarily
May 27,
infra.
does not
use the
the Office
by
years
(now
references back
several
119)
into
board
in
finds
section 4887
applications repos
protection
parties.
the fund of unknown
toas
of third
foreign
offices, waiting
in
102(e)
Boykin
counterparts
Section
have
filed
act
S., which
the U.
could have had a most
quoted
We have
this section above and
validity
serious effect on the
of U. S. pointed
patent-defeating
out
it is a
patents
post-war
issued
the war and
section, by contrast with section 119
period,
applications
well as
then
gives
“priority” rights
affirmative
pending.8
4887,
predecessor of
R.S.
applicants notwithstanding
it is draft-
119,
report.
section
is annexed to the
application.”
ed in
of “An
terms
right
(or
giving great weight
applicant
tois
save the
Another reason for
application
prefers
say
Report’s
his
if
it
the Committee
one
comments
way)
patent-defeating provi-
what
meant
is that
same
R.S.
102(e);
predecessor
sions such as
and of course it
bill contained a section
guarding
present
has the same effect
35 U.S.C.
discussed
validity
later, dealing
expressly
when issued.
with acts of in-
vention in
countries and over-
102(e),
hand,
Section
on the other
ruling
Supreme
the effect of the
Court
provisions
appli-
one
which defeats
Storage Battery
decision in Electric
Co.
patents
cants and
is close-
invalidates
Shimadzu,
5, 613, 616,
v.
307 U.S.
ly
history
related
fact and in
(1939),
S.Ct.
The board has mentioned that treaty, the ease Alexander Milburn Co. v. was not limited in its terms Co., true, Davis-Bournonville which is so 270 U.S. it also functions (March 8, 1926), reciprocal S.Ct. L.Ed. 651 relative to other treaties and which we shall call Milburn. It often laws. We are to deduce from this unable any called the case. It Davis-Bournonville intent to affect the date as of which *17 infringement patents was an on a to U. S. are effective. suit defense, by Whitford and the Nor under R.S. can we do so reason of another 4920, was he in- that was not the first from the Convention the “deviation” specifically infringe- Boykin that refers to note it Act know section of We patents “conflicting” saving ment situations. In 1946 U. S. about has a clause patentees applicants rights were not used as as of their un- “references” but of foreign priority “conflicting” existing dates and refers believe it der the law then situations, possibly, would not have connoted such situations. to interference uses, prior it, as defense, tempts
ventor.
R.S.
is that
“Fourth”
to limit
original
knowledge,
was secret
was: “That he
which
was not the
information
any
first
it is used —the
inventor or
which
discoverer of
ma-
time as
at the
applications
part
thing
terial and substantial
of U. S.
contents
patented.”
generally
secrecy,
part
preserved
This was based on
that
which are
true,
corresponding
present
This is
speaking,
to
35 U.S.C. §
102(a),
validity
read,
which
“not known or used
is some
think there
we
by
country,
others in
argument
should
before his in-
is secret
which
knowledge
discovery
(Em-
category
vention or
thereof.”
in different
be
phasis ours.)
produced pat-
public.
Defendant
we have
Nevertheless
which
disposed
ent
However,
Clifford which contained a full
are not
rule.
description
invention,
rule,
applies
Whitford’s
extend that
did
filing
not claim
applications
it. The
United
law at
time
in the
date
was in
claiming
confusion as to
States,
whether
when the
actual
was
deposit
relevant to the defense and that
U.
Pat-
in the
S.
disclosure is on
Supreme
course,
way,
issue the
Court resolved.
due
ent Office and
its
patent.
Circuit Courts
conflict,
were in
publication
es-
in an issued
pecially the Second and Sixth. No for-
view,
expressed in
as
The board’s new
eign applications were involved. The U.
Rayala
Zemla and
de-
case and in the
S.
date of the
for Clif-
Lilly,
cisions,
has
sustained
the latter
ford’s
any
was earlier than
pushing
practical potential
effect
relied on Whitford.
In a short three
unpublished, secret
page
back the date
a half
Mr. Justice
ultimately
description
disclosures,
Holmes held that the
have effect
Whit-
ford’s
patent,
invention in Clifford’s
in the form
art references
application having
Clifford’s
been filed
one-year priori-
patents, by
U.
full
S.
in the United States Patent Office with
ty period
think
of section 119. We
description
the same
before Whitford’s
rule,
Milburn
codified in section
invention, showed that Whitford was not
(e), goes
enough
direction.
far
in that
inventor,
the first
required,
as the law
go further,
We
no
see
valid reason to
and that his
was therefore invalid.
certainly
compelling
no
reason.
go
We need
reasoning
into the
case,
the Milburn
seen that section
We have
which has its weak-
nesses,
originated
pur
because all that matters
is the
1903 and that
rule of law it established: That
com- pose
grant
protective
was to
plete description of an invention in a U.
rights
might
so that the
be
United States
patent application,
filed before the
participating
in the Interna
member
date of
another,
invention of
if it ma-
by giving reciprocal
tional Convention
patent, may
tures into a
be used to show priority rights
foreign applicants with
that that other was not the first inventor.
respect
obtaining
patents.
patent-defeating,
judge-made
was a
102(e)
have also seen
that section
rule and
102(e).
now is section
The rule
court-developed pat
codification
expanded
has been
subsequent
somewhat
statutory
ent-defeating rule
on a
based
to 1926 so
patent may
that the reference
requirement
applicant’s
invention
used as of its U. S.
date as a
general prior
previously known
reference,
must not have been
art
as shown
Harry,
In re
333 F.2d
country.
51 CCPA
others in this
no such
We see
(1964), and
the December
1965 Su-
relation
between these two rules
law
preme Court decision in Hazeltine Re-
requires
together and
them to be read
search,
Brenner,
Inc. v.
382 U.S.
it is our
that section 119 should
view
86 S.Ct.
879
purposes)
dealing only
In
ified circumstances
all
that
“domestic affairs.”
with
for
similarly give
Lilly opinion
discussing
point,
should
section 119
to a
this
the
(248
patent,
emphasizes
as
under
F.Supp.
418)
used
a reference
section
that it
102(e),
rejection,
dealing
effect as of an
102(e)
in-
earlier
is
awith
volving
in a
date.
which is
U. S.
disclosure
102(a).”
patent,
rejection
on
“not based
ignore
We could
the issue
Mil-
fact that
This rather overlooks the
not
the
here
because it
before
board
was
proposition
burn
the
that Whit-
rested on
it
and was not briefed
consider
but will
inventor,
ford
not
that
the first
extensively
is
discussed in
because it
days,
102(e)
and
there was
in those
no
Lilly (248
408, 416, 425)
F.Supp. at
that
the
found
basis for its
court
pursued
wherein
Patent
Office
provision
decision in the
4886
argument.
aspect
same
is
One
must not
been “known
invention
sections
and 120 contain the “same
* * *
country,
be-
others in this
phrase,” namely “shall have the same
* *
Today
fore his
provision
this
invention
effect.”
102(a).
argument
no
find
substance in
fact,
simple
observable
(1)
pointed out,
as
our
because:
above
therefore,
of section
is that the effect
statute
makes a
distinction
law
clear
be-
is to make a U.
available
except
S.
tween acts abroad and acts here
reference,
filing date,
S.
patents
printed publications.
as
its U.
for
rejection
and that
of an
120, following
thereafter
policy
Section
in sections
holding
invalidity
application, or
102(a),
(g)
(e) and
contains
predicated
patent,
in the
of a
applications
case
the limitation to
“filed in
excluding
some other section of
statute
States,”
con
the United
plications
taining
provision
patent-defeating
scope. (2)
from its
Use of the
applies.
which
Much con
expression
happenstance
same
is mere
thinking
fused
could
real
be avoided
meaning
and no
reason
transfer
izing
rejections
are based on stat
and effect of section 120
to U. S.
utory provisions,
references,
not on
respect
dates to
section
with
to for-
merely supply
eign
references
dates. Section 120 was not
novelty, obviousness,
evidence
years
of lack of
prede-
drafted until 49
after the
loss of
or whatever
be the
cessor of
section 119 was
the statute.
ground
rejection.
some cases
The Cases
issue,
have examined on this
Walker
statutory
exceptions,
example,
Blumlein
With minor
we deem the
ground
rejection
cases,
few
appli
decided
which the writers on
that the
discuss,
inventor,
slight
this issue
significance.
cant
all
was not the
the evi
to be of
first
being
dence of that fact
What
that he lost
determines the
re-
statutory
invention,
history,
sult in
pat
count
case is
to the same
or one
judicial
entably indistinguishable
precedents.
it, in
We will
an
therefore
briefly
possible
them
treat
ological
interference. Yet the
relied
“reference
chron-
(1926),
on”
granted
order.
in Walker-Blumlein was the
Milburn
course,
part
Whiteley
statutory history
after
interfer
ence,
and does not deal
issue
had no relevance as
here at
aspects
such.
all.
were
There
similar
present
case
to the board’s deci
Corp.
Next came Federal Yeast
v.
sion.
Co.,
(4th
Cir.
Fleischmann
13 F.2d
Section affirming
1926),
(D.Md.1925).
would There basis the Patent be involved. Office holding pat- years. interference, tice but in valid the for some 80 court found court fixed ent there was “no nary validity Hayduck the relief patent, “in view of the disclosures of cussion, what the case stands proposition that there cannot be two valid remarked that “the the claims the two inventions were the same and patents lem before us now. We are second invention was the obtain, sure cover the board but it seems to us more like a “priority” date. burn, say virtue of the Nolan first, District Court decision. on its facts it is some with the German infringed.” second, there rules” and appellate nothing patentable.” gave date to be the then if both on case said the and under [the dates of nowas against just decided, subsequent to “to wherefore or a first], patent patentable court finding, patents same While we are not sure respective It also relied on Mil- discussion double one governed by invention, plaintiff their claims “prior application” for, the benefit invention, affirmed, authorities found Act, defendant [from patent] were it was toas patenting other than the invention” in equivalent It also found without dis- the German support can the second held willing found the date the the ordi- it could invalid. arewe saying get lower prob- dates valid issue suit all statutory provision where the two In view of the such bars believed to have the same R.S. issuance of paragraph same invention. tries which than is accorded force and right concern itself with eign country. if it had application, which at most is evidence last pears except in the case of an interference States who has filed an antecedent Section 4887 R.S. cannot be construed [old Section 4887 [******] Section 4887 R.S. relates ****** knowledge knowledge giving greater rights corresponding application pair 35]). [102] to a in the effect, of another anof being read, of the section brackets, (U.S.C., original.] patents of the invention abroad] or use in parties origin actually proven. applicant in so far as “shall have the same found R.S. is concerned.” This effect [to has no bars party section 4923 R.S. title in this of that [second] inexplicably, [119] in section in the United bearing upon claiming [4887], against meaning to a applicant’s does solely in a for- country, sec. 31 foreign coun- [The 4886 it is as than Fleisch- a decision effective date of The considered Commissioner why length case, U. fact, explaining he reference. mann unclear, appellate “priori- court talked found noting of the decision about the basis ty.” very On issue men- here is a had not been it un- precedent, section, clear like old somewhat most tioned. That commentators agree. knowledge seem ruled out U.S.C. Judge ground F.Supp., country page Barnes
use in a Bethenod, said, speaking invalidating patent. See Electric Stor- * * * age Battery Shimadzu, U.S. Co. v. it is art as to whether 5, 613, 616, L.Ed. 1071 59 S.Ct. Young 2,179,569 depends on the No. (1939). Bethenod Patent to which the ** prom- is of the *. The court Under Viviani the Patent entitled Office ulgated opinion to the earlier of its Manual of that it is entitled 715.01 * * * Examining is a differ- but there Procedure under which among recently. operated and the bar ence of until It read: the authorities. [Fleischmann *21 Celanese, supra, Beth- cited.] Whether overcoming, In a under Rule regarded prior as art in enod be patent patentee domestic where the no difference. case makes little or foreign filing earlier date to prior art without There is a wealth of
which he would in be entitled estab it. lishing priority to the claim invention patent, necessary support ed in the it not This is some for the board’s applicant carry view, for the to his date back not much. patentee’s foreign filing of the date. do with the Most writers not bother (Viviani Taylor Herzog, v. v. 72 U.S. opinions Court 1952 of the Second Circuit
P.Q. 448).
[Emphasis ours.]
Appeals
Corp.
of
Horst
v.
der
Van
In
Appeals
Corp.
America,
1941 the Court of
F.2d
the Chromium
of
197
791;
Corp.
Second Circuit decided Celanese
of
The court made the
sidered that because of our deci- sion that Habicht available as a MARTIN, part Judge, took no reference, art it un- makes decision this case. necessary pass on the merits of the rejection based on Habicht view (dissenting). Judge WORLEY, Chief Wagner et al. majority It seems to me below argument rejected only with the ma- Claim the better of the 17 was my misgivings jority Typical re- here. Wag the disclosure of Habicht view of reasoning garding and conclusion of ner et al. and since we have held Habicht majority present is the effort unavailable, rejection to be of that controlling In re into a fashion Walker claim stands reversed. precedent position. It be for its would 16, however, As to claims 10 and highly presumptuous assume of me to examiner rejection made an additional merely my participation because of (in only rejection his Answer it was the authority that decision became I claims) “unpatentable these two held. on what It would court 90,- over the count Interference No. equally presumptuous to I assume 218 now claim 1 of the Habicht Congression- expert on at once became an Wagner view of the et al reference.” merely members al intent as one (The language quoted ex- pass- Representatives House Answer.) aminer’s So far we can Boykin perchance Act, or as one ed the see, the board failed to deal with re- many suggested opposed lan- who *24 jection. only possibility The that guage in that or other measures. rejection board dealt with the legislative judicial test of or intent real paragraph interference in issue is language employed. lies in the What quoted early opinion in this deci- court held in Walker is found in its described as the board’s “third state- sion, Congress what intended is ment” the issue. We are unable in found the statute. In Walker this say agreed whether the board or dis- expressly court said: agreed rejection with the examiner’s on saying ques- in rejection by interference issue “no the tribunals estoppel judicata tions of or res can be case bar Patent Office in concerning” raised the claimed com- upon White- based pounds appellants. upon ley’s foreign application intention adverse award of predicated Since the board against appellant and in favor of rejection affirmance of the examiner’s (Emphasis Whiteley, patentee. entirely finding on its was Habicht supplied). available as a reference to show what the statutory prior- was, art since we re obviously Thus all else dicta. versing issue, on that and since we are decision, judicial precedent unable to ascertain the board’s is no There real any, outstanding rejec- here, if on the other or the re- the cases cited below save
885
Lilly
opinion1
practice adopted,
in Eli
cent District Court
under the
it seems to me
v,
squarely
meaning
Brenner where the issue was
is clear
statute
properly disposed
prior practice
raised and
of.2 In view no
inconsistent with that
conflicting
meaning
given
law
the unsettled
case
can be
effect.
An-
See
passed,
Hovey,
694, 716-718,
when the 1952 Patent Act was
drews v.
124 U.S.
possible
676,
it is not
which line
to ascertain
8 S.Ct.
not do. Bate Storage Battery
berger; Co. v. Electric 675,
Shimadzu, U.S. S.Ct. L.Ed. 1071. affirm. would
I
S3 CCPA Application of Albert BOWERS and
James C. Orr. Appeal No. 7584.
United States Court of Customs Appeals and Patent
May Evelyn Merker, Simon, K. Leon Wash-
ington, C., appellants. D. Moore, Washington, Clarence W. C.D. (Jack Armore, Washington, C., E. D. counsel), for Commissioner of Patents. RICH, Acting Chief, MARTIN, Before SMITH, ALMOND, Judges, Judge WILLIAM H. KIRKPATRICK.* Judge. SMITH, Syntex Corporation is the common as signee appealed application1 patents upon the 2 rejec relied for the joint tion. Different inventors * Judge States Edwards, United Senior District 3,056,- Bowers Patent No. Pennsylvania, the Eastern 2, 1961; District des- Oct. issued filed Nov. ignated participate place *26 Berkoz, 3,082,- of Chief Bowers and Patent No. Judge WORLEY, pursuant provisions 19, 1963, 220 issued Mar. filed Feb. 294(d), of Section Title United States Code. Orr, 138,265, 1. Bowers and Ser. No. filed Sept. 15, “Cyclopentanophenan 1961 for threne Derivatives and Process.”