*1 ALMOND, RICH, BALDWIN Before RE, Judge, LANE, Judges, and Unit- 58 CCPA sitting by Court, des- Harper ed Application Hugh States Customs GIBBS Griffin. ignation. Norman Richard Appeal No. 8367. RICH, Judge. of Customs United States Court Appeals. and Patent appeal the decision of This 11, Feb. Appeals affirm- Board Patent Office rejection claims the examiner’s 290,184, application serial No. 1-3 “Trifluorovinyl 24, 1963, for filed June party Polymers.” The real Acid Sulfonic Pont de Nemours is E. I. du interest assignee. Company, reverse. We appellants applicants who are The same assigned to patent, here were issued duPont, 3,041,317, on No. June than a before which was less appeal. That on to relied is the sole reference rejection. support ground is that unpatentable under 35 U.S.C. § 1-3 102(c) invention claimed because thereby Such has been “abandoned.” solely predicated on the abandonment alleged issuance subject matter without to disclose the claiming it, the in- and on the fact claimed, application, it is stant wherein copending issued. It was the position as stated examiner’s final board his before the Answer “dedicated” matter was public by claim it failure to disclosed. issued wherein “Appel- words were: The examiner’s lants dedicated the disclosure have al and et Gibbs effectively inven- abandoned Jr., Hap- * * Hilberg, Frank A. C. Gerald purposes tion for Del., ka, Larson, Wilmington, Herbert W. McCrady, authority he relied on was attorneys record, appellant. for Practice, ed., p. 182. 4th Patent Office Washington, C., examiner Cochran, Apparently D. S. Wm. Leroy rejected on the the claims his first Patents. action for the Commissioner grounds patent “on the Randall, Bethesda, Md., counsel. Gibbs et al. B. 1. This novelty unless— 102. Condition § A statute reads : person and loss shall be entitled to patentability; s}s ;¡: (c) he has # $ abandoned [*] $ invention, $
487 specifies (among 2 from claim and patenting” other flu- of double oroethylene component although action is ieirafluoro- in his second grounds), ethylene.3 changed and abandon- dedication he it to 102(c), duPont, as as- ment under § Rejection 2 The signee, disclaimer filed a terminal rejection patenting of In eases The in this ease two double is one cited the 1271, 610, which, Robeson, admits, CCPA Patent Office 331 51 the. rare- re F.2d ly 816, applied. Kaye, Consequently F.2d 51 CCPA there is little and In re subject. terminal held case (1964), recent law on the which The ground a “dou- to overcome effective “abandonment of the disclaimers rejection. fact, predicated Those cases invention” patenting” on the ble nothing dispute, subject either do with which is whatever had appealed In his An- or dedication. matter of the abandonment to some swer, said: extent the examiner disclosed in the Gibbs and Griffin patent and is not claimed therein or in respect arguments Appellants’ any application copending are moot disclaimer terminal to the ent. It is therefore said to be “dedicat- patenting since double public ed” to the and that dedication is being maintained. equated by the Patent Office with the recognizing opinion, while The board 102(c). abandonment referred to in § as disclaimer of the terminal existence briefly explain We shall now in what argument part appellants’ “based appealed manner considerations,” makes double claims is disclosed the issued Appellants, it. mention of no further exchange polymers The ion acid resin court, rely continue their brief copolymers of the claims are referred to discussed on disclaimer reasons generally by appellants “polyacids”. presents a novel as- This hereinafter. says: The at bar rejection is pect in a case wherein abandonment, 102(c) predicated polyacids present on The inven- ground affirmed. prepared by sole board hydrolysis are tion polymers trifluorovinyl sulfonyl The Invention polymerization The of tri- fluoride. exemplifies the matter Claim fluorovinyl sulfonyl fluoride is dis- application. It reads: 3,041,317, in our closed U. is- S. * * * normally ion ex- A solid acid 1. sued June 1962. change trifluorovinyl polymer of resin polytriflu vinyl The oro ac- sulfonic containing units sulfonic acid particular utility ids are of ion ex- structure change catalysts. resins and acid * * * generally polyacids em-
ployed copolymers trifluoro- vinyl of the class con- X is member sulfonic acids with fluorinated where metals, sisting hydrogen, ethylenes, and, particularly, am- tetrafluo- alkali * * roethylene [Emphasis ions. ions and amine *. ours.] monium except nearly The et the same Gibbs contains full Claim 2 is al. copolymer, description preparation to be a resin stated fluorides, “polymer,” polymerization fluoroeth- of a rather aforesaid than ylene trifluorovinyl copolymerization, specifically sulfonic acid depends production specified copolymers 1. Claim 3 in claim with tetraflu- accepted Polymerized tetrafluoroethylene disclaimer, 3. which was best por- general recorded, merely “disclaims all known its trade- designation “Teflon.” defini- the term of mark See tion of issued Dictionary subsequent House in The Random to June tion 1979,” expiration English Language (1967). is the date 3,041,317. of the reference No. oroethylene. concluding paragraph Appellants’ Points contains this statement: arguments Appellants’ us are before polymers inven- did the issuance of the * * * merely many purposes.
tion
constitute an
serve
“abandonment” but
utility
gave
However,
particular
presumption
rise to an inference or
*3
polymer comprises
effectively
as an ion
its use
rebut-
of dedication which is
exchange
hydrolysis4
resin
ted
the
of this
claim-
sulfonyl
group
ing
supposedly
subject
the sul-
the
fluoride
to
mat-
dedicated
group.
patent
statutory
[Emphasis
acid
ours.]
fonic
ter before
became
102(b);
to hold that
bar under
that
§
totality
That is the
of the
patent
to an
issuance of
amounted
Thus,
polyacids.
the now-claimed
of unclaimed
irretrievable
dedication
patent
production of the
discloses the
contrary
subject
directly
matter is
polymerized
then contains
fluorides and
statute,
which
reissue
§
U.S.C.
by hydrolysis
statement
broad
un-
up
retrieve
to two
to
allows
they
polyacids
can be converted into the
case;
subject
proper
claimed
matter
the latter
now claimed and states what
made the claims
could
patent
for.
does not
will be useful
patent
at
in a reissue
bar
hydrolysis,
carry
to
disclose how
out the
enabling dis-
does not contain sufficient
present application,
does the
nor does
it
how
in that
does not describe
closure
resulting
any
specifically
name
hydrolysis;
carry
that a
out
polyacids.
stranger
making
independently
The essence of
is that
notwithstanding
patent
could
vention
disclosure, coupled
fail-
this much
appellants’ patent
on
the issuance
copend-
in the
or in a
ure to claim
year
its is-
filed within a
poly-
application,
the invention
suance,
inequitable that
it is
wherefore
the sense
acids was abandoned in
§
so;
if
appellants
do
are unable to
102(c) and no
issue.
can
any question of
an extension
ground that
so
The board
held on
involved,
monopoly
here
their terminal
poly-
and the
the fuorides of
extension;
prevent such
disclaimer would
“mutually
acids
Pat-
the cases relied
inventions,” predicating
dependent
distinguishable.
ent Office are
findings
(a)
dependency
on its
polyacids
require
flu-
here
OPINION
starting
mate-
orides of the
as a
rial,
pro-
saying, “No other method for
concept
of an in-
of abandonment
ducing
polymer
dis-
the herein claimed
simple
vention is not a
utility
closed,”
(b)
“major
dis-
meaning
phrase
self-evi-
in the
directed to
dealing
closure
perusal
dent,
textbook
copoly-
hydrolysis
sulfonyl fluoride
subject
For ex-
with the
will show.
corresponding
acid
sulfonic
mer to the
ample, Deller’s
Edition of Walk-
Second
copolymer
ion ex-
as an
useful
Patents,
VII,
Chapter
entitled
er
**
(Our empha-
change resin
“Abandonment,”
pages
devotes
sis.)
subjects
variety
of which
most
holding
not here
Rivise
legal significance
we are
concerned.
of this
Validity
Patentability
dependency
appear
Caesar’s
herein-
of mutual
will
(1936),
in the 70-
deals with the
after.
“Hydrolysis” is
in Hackh’s Chem-
defined
Dictionary,
decomposi-
Ed.,
3d
as “A
ical
gen-
tion reaction caused
water.
eral,
type
a reaction
ever,
page chapter
“Forfeiture of
XII entitled
with such an abandonment
since no
Protection,”
gets
prior
Right
art
has been
on and
relied
out,
pointing
placing
has
closer to
mark
use
on sale
p.
or other
Appel-
515:
bar under the statute.
lants
filed
within one
empha-
very outset
At the
it must
only
of the effective
date
term “abandonment
sized that
reference —their own
Prima fa-
used
invention”
cie, appellants
are within their
necessarily mean that the
law does
rights.
much for
So
constructive
aban-
right
given up the
lost or
inventor has
donment. We turn to actual abandon-
practice
it does
his invention. What
ment.
mean
has waived
inventor
right
patent pro-
is, again,
or forfeited his
Actual abandonment
divided
tection;
categories,
exclude the
into
express
implied.
i.
e.
*4
making
general
public
say:
from
free
in
and
§
Rivise
Caesar further
of
use
his invention.
It
“express”
is said to
when
be
the in-
therefore,
concerned,
at all
We are not
by express
ventor indicates
that
words
any
invention
of the
abandonment
patent protection,
he does not
or
seek
thing
in the
invented but
of
sense
preclude
that he does not
intend to
heading,
only, in
of
the words
public
availing
freely
§
from
itself
right
patent,”
to
an inabili-
“loss
benefits of
his invention.
property
ty
incorporeal
that
to obtain
suggestion
express
There
has been no
(35
right
261)
is the
which
U.S.C. §
abandonment
in
this case.
conten-
making,
right
to
others
exclude
simply
implied
tion here is
that
there is
(35
using
selling
or
U.S.C.
abandonment based on
fact
154).
§
took out
inventors
disclos-
problem,
Delving
we
further
into the
claiming
polyaeids
but not
“abandon-
next
the fact
encounter
permitting
claimed,
are now
general
types,'
actual
ment” is
a
to occur
“hiatus”
between
Caesar, op.
and constructive. Rivise and
filing
application
at bar.
n
279, say:
cit. §
say,
if
is to
Without
the hiatus —that
copendency
between
had been
it
when
It
said to be “actual”
pres-
for the
and the
is said to
result of intention.
be
Office im-
ent
Patent
irrespec-
—the
“constructive” when it occurs
pliedly
concedes
there would
intention,
tive of
inventor’s
statutory
aban-
been no dedication
no
operation
For
of some statute.
not,
or
conceded
donment. Whether
such
this
abandonment
reason constructive
long
has
See discussion
been
law.
“statutory
to
is often referred
for-
Amdur,
Patent Law
Practice
feiture.”
(1935), pages 347-355.
example,
For
if
has
the invention
been
emphasis by
printed publication or has
described in a
Because of
examiner
public
the hiatus
use or on sale
more
and the board on the fact
(examiner)
year”
ap-
“nearly
“al-
than a
a
or
before
was
States,
plication
year” (board),
wish to make
forfei- most
we
the United
one
signifi-
right
no
it of
to a
deem
ture
results au-
clear that we
102(b).
tomatically by
us whether
issue
virtue of
cance on the
before
§
appear
text
this to
duration of the hiatus
writers
to consider
filed
days,
be
“abandonment”
under
since the
constructive
pe-
grace
102(c)
one-year
notwithstanding
it would clear- within the
§
102(b).
If the law
ly
separate
to
riod allowed
have two
“overkill”
any delay
permits
deprive
statutes
of his
the inventor
year.
up to
issued,
it allows
think
same
delay
concerned,
neces-
how-
The issue is whether
fact. We are
here
going
stated,
Mullen,
sarily
before
further
so far
fatal. Otherwise
holding
pre-
concerned,
copendency
its decision is
is essential
whether
kind of ded-
that matter disclosed
not claimed
but
vent “abandonment”
through
necessarily
is not
in a
dedicated
ication
legally
under the
abandoned
with failure to claim.
statute,
re-
which contained the same
evolved,
that is
As
case law
has
quirement
no
abandonment
precedents provide
question to
(seven days
even where there is a hiatus
simple
a clear and
answer
answer.
Mullen)
copendency.
hence
was:
certain
board in this case
thinking,
In the
Commis-
course
his
no;
yes. The
cases
in this case
applications
sioner Mitchell divided all
for the
Office
Solicitor
categories
cases,
into
three
“with reference
Having
like mind.
examined
aspect
question
of division
only
but in
we find them
in conflict
5 Briefly
which is here
stat-
many
involved.”
in their reason-
instances unclear
ed,
categories
his
ing.
three
were:
tried
The text writers have
opinions that some-
make sense out of
application claiming
1. A
second
resulting
times make no
vast
sense
same invention
concepts
acts
clutter
unrelated
ent.
heading
general
subsumed under the
claiming
2. A second
passage from Mc-
“abandonment.” The
any in-
invention “distinct” from
Crady
relied
examiner
which the
*5
patent but,
vention claimed
in
“(according
over-
states
to the
mutually
respect
thereto,
whelming weight
authority)
he
what
contributing
“single
to a
result.”
e.,
applicant]
did
disclosed but
[i.
application claiming
3. A second
an
footnote
not claim
In the
is dedicated.”
“absolutely independent”
invention
weight”
“overwhelming
support,
in
in the
invention claimed
proposi-
consists of three
for the
cases
tion,
point,
two which are not in
He stated what he
to
considered
be the
“contra,”
Mullen,
parte
case
and Ex
law in
three
these
situations as follows:
is
The Mullen case
C.D.
O.G. 837.
application
1. The second
cannot be
and
on both sides of
is
the statement
only one
sustained.
can be
There
good starting point for discussion.
only
where
is
one in-
there
parte
Ex
Mullen and Mullen is classic
(It
vention.
will be observed
this
in the
in
area of
The board
law.
bearing
has no
this
whatever
obviously trying
present
to fol-
case was
problem
or aban-
dedication
constantly
in
It
low it.
referred to
actually
in-
donment. What
opinions.
petition
subsequent
It
awas
questions
pat-
volves is
of double
to
Mitchell
Commissioner of Patents
enting.)
an
refusal
examine
examiner’s
claims “cover
because the
2.
Issuance of the
raises
subject-matter
presumption
not claimed
dedication,
but
shown
based
granted
claiming,
the same
an earlier
on disclosure without
be-
days
prior
ventors seven
to the
cause
invention claimed in
application.”
The examiner contended
could have been claim-
lay
ap-
applicants’ only remedy
patent;
pre-
ed
plying
sumption
repelled
for a
The Commissioner
reissue.
if the inven-
disagreed
possibility
copending ap-
reis-
about
tion is claimed
ain
plication
sue
found
examiner
error
or if there is a reserva-
may
ordered him to
be noted
examine.
It
tion in the
its issu-
question
fully
5. Just how it was
of “divi-
wherein
dis-
Apparently
closed,
sion”
it was
clear.
but after
its issuance.
be-
regarded
as such
because
mat-
lieved that
this would not be considered
today
ter could be
divided out
considered as
as “division.”
the examiner was
proper
inventions
vices
application, both of which
ruled these were
tributed
ing
ically
spring
the second
the inventions
erally
Clearly,
Commissioner
grain,
claimed in
have been
when
ent and
arises
cases
No
Rule
anee an
out laches
79 the
tions
and the
mounting
notwithstanding
Office rules.
what was
no
grain
“3”,
have been
the Commissioner
presumption of
filed.
had been
application was
because the
there was
in 1888—cf.
drills.
claimed
it can be
same
Mitchell
application claimed
“single
noting
the same
“clearly independent”
against
they could not have
told to examine
effect).
feed-regulating de-
the drill
claimed
delay” (citing
done
While
bar,
This
in the
also
about
result”
the
then examined
claimed
case under
mutually
away
regardless
present Rule
put
related
it could
filed “with-
hiatus,
the
in the
found
patent and
dedication,
considered
dedication
teeth and
them
reserva-
law
plant-
could
gen-
con-
log-
and
re-
old
it.
time within which an
within the time
within his
arises when the inventor within the
tures referred
conclusion,
the inference of dedication which
plication for the unclaimed
the fact that the
time fixed
utes.
make
inventions,
its duration. Nor have we overlooked
his
invention.
it is
tion We think not.
his
the unclaimed novel features of his
rise to the
tures
making accompanying
acceptance
[******]
There
every patent
possible
part conclusively
?
applicant
novel features
public
fairly
the inventor intended to waive
However, the
his
is,
to a
legal rights.
inferable
we are not unmindful
the unclaimed
invention.
effect of
and, so
But
legitimate
statute files another
intended
patent monopoly upon
to.
think,
does
fixed,
for
disclosed,
statute fixes
long
from such
establish dedica-
such action
claims to
applicant
inference that
*6
patent
reaching
he
thereon,
Reissue
limitation
is interested
other
as he acts
dedicate to
novel
novel
strictly
words,
on his
action
.all
Stat-
may
fea-
give
fea-
ap-
categories
“2” was
specting
Getting
original propo-
“1”
to the
back
clearly
court is
equally
this
dictum
and dedication are
sition that waiver
ruling
fact,
of a Commission-
ordinarily questions
not bound
of
it
both
regardless
howof
necessary
er
ingrained
Patents
for the court
becomes
place
ruling may
failing
become in
his
applicant’s
claim
act in
practice.
against
we have
discovery
As
Office
other
of his
his
all
above, category “1” is irrelevant.
filing
application,
dicated
with-
act of
another
respectable
category
statute,
“2” there
permitted
As to
in the time
authority contrary
the
higher
to the
he
claim
disclosed
wherein made
ap-
to be
Mitchell
view
Commissioner
of his first
but uncovered features
Town-
Shipp
School
appears
found in
v. Scott
plication.
If no
fact
other
1931).
(7
The
ship,
Cir.
waiver,
bearing upon
495 claims; they process are based in an patent or reference tured into disclosures; and that identical reissue it. application to copendeney between the there was no is reversed. board The decision In at bar. and Reversed. facts, Woodling’s light of failure those subject matter to claim the involved Judge (concurring). ALMOND, timely application for reissue instead de- reverse the agree should I waiting nearly four so, doing My for reasons below. cision however, separate applica- in a claims thereto ex- from those different tion, clearly constitutes dedication. opinion, with majority pressed in the addition, In the facts these three agree. I cannot actually raise the dedication cases issue. effect, opinion, does majority opinions All three make it clear that the recognized long doctrine away rejected appealed over were claims doing, majority In so of dedication. attempts patents, disclosures of the found distinguish perti- the three dedicated, and on the re in In court of this nent decisions Phillips, example, In claims alone. for 955, 809 41 Woodling, CCPA 210 F.2d identity while there was a “substantial 996, Bersworth, 189 * * (1954); F.2d re rejected between the (1951); Phil- In re 38 CCPA patent,” claims of the [the] difference (1945). lips, CCPA 901 F.2d did exist limitation to nonadhe- distinguish attempt to find the I do not guide sive zone between alinement convincing believe these cases zone, and the adhesive differ- them overrule follow we must either “clearly ence was shown completely. is noted that It them majority opinion drawings and could have been described any- state that does amendment.” Bers- Phillips, Bersworth, thing or Wood- worth, majority points opinion as the contrary ling instant to be deemed might out, it was stated that claim 6 fall I may as overruled. be taken decision Mullen, (1) parte class within Ex would, precedent however, set follow (which 1890 C.D. 50 O.G. forth in these decisions. patenting question). However, it double distinguish all majority opinion goes would is noted that the Bersworth grounds that facts three on the cases to state that the board was of the claims, “opinion involve double those cases that all of the with the despite the This is possible exception and not dedication. unequivocal language of claim 6 fell within Phillips, (2)” (which clearly class Mullen Woodling Bersworth, opinions dedication). volves to this lat- was opinion effect resolved issue ter issue that the Bersworth Note, example, one of dedication. directed. Phillips that: statement Phillips, Bersworth, and Wood- Since Since the involved ling distinguished, cannot must be until subse- filed several months completely. be overruled considered quent appellant’s to the issuance of However, prepared so. I am not to do he disclosed and did what precedent should stand ex- Established cept claim must considered dedicated when there are sound overrid- public. contrary. One need reasons to Likewise, Judge Worley in Wood- states only look at authorities textbook ling: majority cited to ascertain is a well-estab- Again reverting the dedication doctrine matter of am agree- lished one in the field. Nor dedication, we find ourselves in persuaded sound and that there are I overriding Appeals the Board of ment with presented ma- reasons process the instant claims are not long destroying jority for such a exist- entably patented distinct from the *10 anything despite This the fact ference of dedication without ent doctrine. why had may into relative shown about the invention have fallen more previously been claimed. I cannot nonuse in and that there recent uncertainty such a result intended involved determin- believe that some by Congress. particular case when facts of Many (2) fall into class of Mullen. my case, analysis Under of this much, just areas of law involve necessary to even reach the issue of more, uncertainty. if not filing application whether an one within filing majority opinion states that year rebuts the inference of dedication. grace one-year an being within my opinion, the invention following the issuance of the claimed could not have been claimed rebutting ent is one means of the infer- thus the facts fall within facts ence of dedication drawn from the (3) This class of Mullen. is because Ac- disclosure and failure to claim. patent does not contain a sufficient en- cording majority, abling other means carry disclosure of how to out rebutting filing re- this inference are hydrolysis and make the sulfonic various claiming issue the inven- polymers. majority points acid As the copending application. tion in a Con- out, only disclosure in the trary analysis statutes, to this I polyacids is in one sentence: under believe reissue avenue § * ** particular utility of the only intended to be the means polymer comprises use as an ion its claiming that which is disclosed but not exchange hydrolysis resin copending ap- claimed in the or a sulfonyl group fluoride to the sulfonic plication. require- There are certain group. acid paragraph ments 1 of 251 which § Clearly this is sufficient disclosure must be met before a can be re- upon large which to is, base claims to a issued. That must be fact, polyacids. “through number of different any deceptive error without suspect appellants intention, I that had tried to wholly partly deemed in- claim them operative invalid,” the Patent Office would must be immediately rejected surrendered, such under and the term of the reissue only U.S.C. 112 as based an part unexpired original insufficient disclosure. In such a term situa- No such tion, safeguards certainly presumption there is if exist the inference of dedi- appellants of dedication and cation are free to filing is rebutted the mere polyacids any application claim year. within against statutory bar, monopoly certainly going there is no to be extend- regardless ed, Therefore, patents of when filed. I will be in existence rath- would one, reverse for this er reason and than and the mere reason alone. conclusively can rebut the