Application of Michael Mojzesz Szwarc

might, granting imagine future, right we can titled to registration. “damage” always position to Such appropriate in a more :no one speculative subject pre- Singer. and not con- often question than raise the proof. cise tinuing BEAUTY” “AMERICAN use of by appellee manner disclosed The decision of the board reversed Singer damage very likely to the record is opposition is sustained. Japanese- bringing 'by the sale about Reversed. who, de- those machines to made instead, origin, would, their ceived as to Singer follows .purchase machine. It registration secure would that a n andbolster right continuing to use up the misdescriptive geographically mark

n on machines, Japanese machines of or foreign manufacture, dam- would other

.age Singer. majority below For reason the some 59 CCPA that the view (cid:127)seems to have been Application Mojzesz of Michael SZWARC. Singer prove the on incumbent was Appeal Patent Nos. 7000. general preference on existence of a United States Court of Customs sewing pur- machine part American Appeals. and Patent manu- domestic machines of chasers for June 1963. facture, proof to be was found Rehearing Sept. Jap- Denied lacking, million that a and the fact purchased had been anese machines public apparently con- "the American significance on the of some sidered to be discussing. see no are here We issue we significance. -such nothing mean to have said do we we sewing

(cid:127)disparage Japanese machines. scarcely denied, and it it cannot be But

n show, many proof pur- buy many desire to articles

chasers manufacture, perhaps of American "those personal (cid:127)only to themselves. for reasons below, majority the basis of the ‘The record, said, may be true that “it well segment public of the American .some n prefers sewing machines of American Japanese machines.”

'.manufacture nothing required. think segment buy entitled to accord- That prejudices preferences to its danger being without the deceived by geographically misdeserip- (cid:127)confused See also 280 F.2d recognition suppose that tive marks. We right reason for -of that is the section 2 (e) (2); being statute it shouldbe enforced instigation having .anyone a real interest en- its undue concern forcement without over damage just the nature of the what Alexander, ^Tau!;' Mirth.. Cruzan Sti ‘D.f’Sties,

'(James -'St/PaulyiMinm,1' of" j- -.gc. m;i; -o .appellant:'" counsel)fox ' nn ’"ClarenceW. Moóré; Washington;l!E).‘ ’C. S'chimmelj'Washington, Ci, (JosébH' D.' counsel), fox' Commissioner-’of Patents. WORLEY,. Judge, and' Before Chief. SMITH,and RICH, MARTIN, ALMOND,. Judges. Judge.

SMITH, Appellant.,bus . appealed the .. of' .rejection ,8 3.product ap his 1 fqr plication patent, polymers- on certain processes,for production thereof. rejection on appellant’s,Brit is based Patent which ish issued more than one- filing year prior ap date of the application., pealed 102(b).. U.S.C. .§ primary-issue infhisqa.se arises .un §, der a deter whether, present applica mination tp tion is entitled of the fil- benefit August 306,940, No. filed Ser. 279: application2 had' .affirmed date of After earlier D-S- Board rejection patent : of said thq examinerfs fop -filed,bj^pppellant, yclaimshá parly action .which,is a civil -the. enough,to,^vpi(l dat.eof ..-against .statutory par un- ,of,,.,35-ilU:S.C..,§ the. Commissioner 10fi(fi). n §, der 35 145 filed -U.S.C. was ’1 History Proceedings'5' Present Ltd., the then Petrocarbon , assignee of;appellant! Szwarc. sityation,: fact rather...complicated, The District,-Court, C., The. D. appeals .consolidated, presented,by the, two unreported,.'-Memorandum . an , may as,follows, summarized -, Decision, favor ruled in Sept. Appellant, on .Szvyarc, “1. . Office, Patent Ltd. Petrocarbon applica- 1947, filed a British . ' ‘ (cid:127) “ v. Watso n the same relates ;tioh which ’’ *' present- subject District-Court’s hiatter as the “8. 1 'in Petrocarbon ly application.- Ltd. v. appealed Wats on was affirmed the-Court „ *;“2. application,' No. Ú.S. -A Ser. Appeals, C., U.S.App. D. 101 , „ . with said . 4$,339,/identical. (Cer D.C. 247 , was, British, application,. filch,,, , tiprari denied, 78 U.S. 355 '.(¡hereafter Sept. 8, ...on .1948. /' ^ 531; 2 L.Ed.2d Peti S.Ct. “parent” applica- termed the rehearing denied, tion for tion). , , .V.’.,, V"... U.S. L. ) rMar„ . .7,. . the.reference .... ‘3.. On Ed.2d 1146 (cid:127) British, .No,. 65.0,947,- ¡patent, n “9., present ap- of the was; British, said The.claims on. .the issued .plication rejected stand . .-.-iir-, .application. , 102(b) being U.'S.Cir!‘§; /3’5’ présent applicátion, v “4. The’ -'Sem tíy 'bkffed the sáid British Pat- (cid:127) Aug. No:'’306,:-9’40, filed on wáé '65fi;947 "ent issued to Szwarc * - -28,1952, ¡ a ‘continuation-in-^- ->. year prior Aug. than ’ ; 'appellaritASsérts1 part* of what : (cid:127) 28; the'filing 1952; - parent'application, to be-"his- ! - presently-appealed application. n ’ —"(cid:127) - s' 48,039. U No. Ser. filing Benefit of the date-of the ' ,' ¿2-47; 49,'5(j and Claims 52 of" :‘5." .application, ,.,, under 35 .‘parent’ TJ.'S.",application,: the’ ‘parent’ ,§ denied was 1LS.C. J(20 ’' ' . Sef.''No.'48,039/^6^6’finally examiner, af- whiph action ’’ "‘by’‘the* exairfinei'' as...../ Ap- ,,,,... firmed, b.y„ jfioord the. ' ' ¿laims ‘laclcihg utilityíhesé / n ’' ,i;(. <o- 'Pqals,, Ijn a(id,ecisiofi upon after'filial" "were amended" the, ,, he-/ held j:. board |cpn.sideriition,. " j‘ectioniri'ficcordahce'with!Rule - a.„,.thes, . decision in/.Petrocarbon '' of the Rules of "Practice judi- v. Watson to be res Ltd. U.S-, -the Patent Office .of, (cid:127) :'eatic on'the ¡question'1’of wheth- (a process became ér - '"disf .the Apphcfition // i claim) .-(a-- 55-- ¿closed ,ag,<ren, ‘‘ : the ..invention "'claim),'which Wére'appe'a’íed'tb’ - quired'-by-the- first-paragraph 1)oard ." Appeals., /.-' 'll' 'of U,S.C.; and held' '35.’ ’ .¡í,: “'6.1 "of The'Board- 'Appeaiá/'rélyinfi .fhoL-jhis preyemtefi appelifipt, x :í . rfi // irbimavoiding ¡present iré1-- a/,. 2J6,, /¡Brn^neL écfiürse'tov35, s‘11'/"/jectioñ/by‘f U/S/ - i: : 37 - - GCPA,-i032,-affirmed'.the rejection-'oPeláimá» " n ,A ,..-v,V-<A;.Í, (cid:127)’,<(cid:127) examiner?S- - -..I- «w1 -1 /“h'¿"án'd''56'‘ ‘pareiit’ ap- bur-ifiíti'ár Sf'the “lOl"5 fionSidefatibih' óf' Appeal. ,,.¡....¡tfijs^.ca^^.in N/o, ^cation,, f/4 *> n

' í¡ ¡“(Cfil'',11) . 'i iii ......... f,i' íV'rWKÍ (cid:127).vhr- A/'' í ,8j!;1948.? 48,339, September, 3STo. filed 2. Ser. while the we noted that PA 6Í62 decision was based presented by The issue PA is. judicata, record did res pres- whether under 35 120 the U.S.C. § necessary identity benefit, disclose the ent entitled to privity parties between appellant’s of the date of earlier present appellant Szwarc application. position It is the par- Ltd., the and Petrocarbon ty board and solicitor that the decision in prior liti- interest Watson, supra, Ltd. v. gation. remand- therefore judicata on this issue. Patent ed the ease to the Office Parties ‘for a factual determination judi any, requirement The first of res relationship, be- cata suit must involve parties is that the second tween the involved parties privies. or their Com and same the Petrocarbon Sunnen, missioner of Revenue v. Internal party here involv- in interest 715, 591, 92 L.Ed. 898. U.S. S.Ct. Szwarc, F.2d ed’. obviously bar, the case we do 1167. parties the same as those before have Appeals, in a de- “11. The Board Watson,, court supra. in Petrocarbon Ltd. v. 13, 1961, set dated cision Oct. was Since record PA 6462 in the record facts of forth establishing any relationship' silent as to found which it Patent Office privity parties, remand between we identity or show the same for a factual de sufficient ed board relationship upon termination of the parties privity of the Szwarc finding judicata which the res could and de- Petrocarbon Ltd. and Szwarc, properly be based. In re requested appellant’s nied there While 47 CCPA 1167. primary examin- mand to still remains some doubt as to whether Request for Re- er. Szwarc’s Board; by presented the information and his Petition consideration sufficiently on Remand estab were both to the Commissioner parties,3 privity of the lishes denied. Szwarc, applica warrants Ltd. pass, judicata, decision dated not here The board Oct. we need tion of res “12. and be- of the 1961 was matter in view on this concession by Appeal argument appellant’s PA 7000. our No. at came at oral made Kellogg granted Company torney Petition Szwarc’s the M. W. Rehearing PA party in Petrocarbon in interest was party appeals Watson, supra, consolidated is the both Ltd. v. reargumént and decision.” here. interest presents Limited, on its face us record before 3. The as to warrant incomplete judicata. However, between the chain of title will not at an we res n Ltd., Kellogg Co., tempt and Petrocarbon the- these facts with M. W. to reconcile plaintiff by appellant’s party in the Petrocarbon counsel.. made admission here, party however, mindful, shown in interest admoni of the case. We are by Place, “statement of facts shown in Russell v. 94 U.S. tion Office”, upon as- in the Patent face of a rec- “[I]f record 24 L.Ed. the conjecture party, anything signee third Petrocarbon De- as to- of a is left ord London, England, necessarily velopments, Limited of was involved and de what acquired “liquida- plead cided, from a title there is no it when whose appears nothing ed, Limited who of Petrocarbon conclusive in it when tor” party However, in interest have been before we take offered evidence.” appellant’s in the Petrocarbon case. court There admission counsel to- therefore, is, no evidence before this court on facts not of record be based before factually which we can determine us and as such to remove the element of privity conjecture there is such between M. from the case. Kellogg Company and Petrocarbon W. calledres prior cata, estoppel demand, of those matters ond action is pages 597-598, fers from the second tion or limited in its here Because the as an absolute bar bar, operates those matters missioner v. cata often (cid:127)the ond action between privies statements of 94 U.S. judicata dered. Cromwell v. judicial suits tion. something of res prior “It economy quoted at some suit. Cromwell v. doctrine of res might scope source involving is bar and 351, 24 L.Ed. judicata applies final It upon judicata suit but identity rests of res estoppel by distinction between of the have origin. Sunnen, supra, verdict scope as an second necessary the same claim upon The Issues judicial confusion, the same cause of ac- Supreme judgment. actually determined in upon been acted also judicata, recognized meaning County of than prior a different relitigation not judicata, sometimes length: estoppel The bar or aspect requirement was issues. any considerations time and judgment, same to understand by judgment res County action general Court Com actually ren page the definitive a determina repetitious other a doctrine merger, This judicata upon in the If or Sac, supra. only parties or If the sec res operates demand, pub- matter rule aspect toas Sac, sec dif res by at is tinctions between res later be judicata judgment, v. Mid-Continent proceeding, fought new that duel. mined in the first rately # the other which were not at might have been tendered United verted, upon the determination of which the ed at that Having in mind the above stated dis- the second ed 214]; dered.’ Cromwell v. ters which Ct. supra, sell v. matters Since erates as ple more ferent by ^[*] parties judgment of res determined, actually litigated *» narrowly. Place, out a matter in referred to as cause relitigated. Southern States, [94 U.S.] [64 is judgment L.Ed. cause an finding party, time. proceeding might judicata are free to even or collateral usually issue or estoppel, or 168 U.S. 355]; but demand, he cannot later re- though [Inv.] In this But have been or verdict was Pacific R. Co. v. proceeding In this action involved judicata issue in the Once ‘only prior County is not swallow- litigation matters which points not as to litigate points Mercoid applied And see Rus- Co., estoppel by in and deter- prior suit, sense, and action [24 48 [18 party situation, estoppel. the first litigated to those contro- cannot princi- points decid- L.Ed. bar Corp. 376]. accu- much with mat- ren- Sac, has res op- in S. policy favoring estoppel by judgment lic the establishment estop- or collateral legal certainty The relations. pel applying present case, it to the provides rule that when a court of present presents we find that the record competent jurisdiction has entered a cause or demand than different the cause final on the merits of a litigated or demand in the Petroearbon action, parties cause of to the suit case. privies and their are thereafter every bound ‘not as to matter stated in As the Memorandum which was offered and received to District Decision Court in the Pet sustain or defeat the claim or de- case, “The sole issue is rocarbon whether mand, any but as to other admissible specification requirements meets the might matter which have been offer- 112 of Title written Section * * * purpose.’ ed for that description using manner of the “But where the second action be- “invention” invention.” above parties tween the same quoted a dif- is statement the invention defined ¿82 ** *” present appli- parent appli- so as to allow the of thé claims 54 benefit,of filing cation date cation, 48,'339. to have No. filed, previously parent application of the way, “cause, de or Stated another issue,in,the application-tn which was the adjudication Pet mand” presented .position Petrocarbon case. It -the applicant 'the was whether was rocarbon and-the, the Board of solicitor application there in’issue in the entitled question .angered here must-fie claims 54 and 55. In allowance negative because the Petrocarbon present this issue is appeal, PA finally determined that the invention here The sole issue not before us. ¡the claimed was therein “disclosed entitled present, application is

whether the provided by manner the first the benefit 120 to 35 U.S.C. § , , ¡ Section 112.” :' application. parent of the presented here recently The “cause demand” re or held in the case'of’In we appealed claims4 of Fried, position whether the Patént supra, eleven of the present application allowed. determine, should com- us to Office present issue, demand of the paring or appealed cause claims issue, or case, cause rejected case thus is not the same “the litigated in the Petro demand claims is invention” Fried, carbon case. See In invention” same or is different from “the Therefore, Only hold we prior CCPA 954. after claims. judicata by not apply. bar does comparison can- it be decided such a estop- here wheth estoppel by judgment-or must determine collateral therefore aspect judicata, es making of res pel prevents er the second us from a'determina- estoppel, by judgment toppel whether, collateral tion of under 35 U.S.C. § applicable. is entitled to the the claims are filing of date the earlier benefit here, Where, action be- the second parent application. pointed out filed upon a parties is differ- the same tween ap- Fried, summary supra, re the In judgment demand, the the cause or ent plication estoppel, of without collateral operates anas prior action analysis comparison, lead an and can which matters issue to those improper applicant denial of the verdict, rendered. determination under the benefit of an earlier Sac, supra. County The of v. Cromwell U.S.C. 120. § precisely matters what of determination actually in the decided Claim 54 the case- meaning to gives the observa- real a, process was a product claim while 55 was Supreme Court Last Chance tion oxthe polymer pro- claim for “The solid Mining Compa- Tyler Mining Companyv. process the duced claim 54.” Of the- ny, present application eleven claims the that: appeal, prod- on claims and “ * ** jaw jn respect estop-' varying scope The claims of and the re- uct settled, pel by is well' mainder are claims. only difficulty applica- in the lies product produced The of claim is55 * n * * law to the facts. tion of the process of claim 54 is as fol- which lows: specific issue under 35 U.S.C. ap production this 120 which decision in “54. for the A § high peal polymer whether the invention claimed in is solid thermal “ * * * present appealed stability which is resistant to sul- provided by many disclosed manner acid and fui-ic ganic solvents, insoluble or- comprises Section of this which heat- application previously ing hydrocarbon vapors in an consisting title filed in essentially paraxylene United the same States temper- inventor at 1-3, 5, 9, 13, 14, 36, 4. Claims

n ature period ed examples for a C above of about 860° were useful’ about, they great from 0.4 had 0.3 to because bility thermal second sta- pressure fluids, about resisted various cooling mercury, apparent to 10- the re- mm. of from the face of the n specification sulting temperature utility vapors to a how could in fact deposited polymer examples a solid be'achieved. indicate polymer ‘film’; does not soften even when that the they forms a but . . heated and recover- C, to about 270° do not or not indicate whether polymer.”. object solid this’ film said adheres forms, which it whether'it falls in- off Court, in its Memorandum 'The District p.qwder, the form of a it is whether Decision,5 made no distinction- between . film-like tq detachable .form a. -in. process- product- claims but n .(similar perhaps substance cello- merely whs thé’ -sole stated issue .polymer phane,),,whether the film of specification re whether meets the it,would, such, is useful as finding -quirements 112. In of U.S.C. § subjected proc- further have properly, re that claims and 55 were n essing it could form a useful before Judge jected, quoted from McGuire- In fluid, object or and so on. Some such al., re Bremner et 182 F.2d us, indication, it seems to further 1032, upon had relied. which the board been, given to enable should have Appeals, In the to under- readers of C., U.S.App.D.C. 214, 247 F.2d D. used. stand how to. 800, appellant position that- took the indicated,a specification,had If .specification the-require did in fact meet film, particular use “rule ments of 112 within-the question "the before was us wbefher applica because Bremner” language sufficient to used was film from the make a how to tion stated solid explain skilled in use to one polymers its thermal and mentioned might testimony experts stability art,' to various and resistance sol then rejecting polymers. -vents But the well have received. been argument “film” appellant’s word present specification, while indicat- per to a indication was a itself sufficient properties poly- the new of useful ordinary of in art how skill the son of (heat resistance), and acid mers invention,.the court stated: to use the statement as the no such to makes “ ** * Although specification explains film film, how the to the is say ‘polymers by obtain- the that the “film” does word be used. Since utility unreported District the disclosure of neces- 5. The extesit of sary by Judge Court, application, we filed June in an= but feel cer- omitting below, repeated McGuire, is law that there in tain the he that “Findings footnote, utility application and “Con- of Fact” an assertion the and of Law”. the use or uses delusions of an indication intended.” of [sic) Memorandum against question, appear, action the Commis- it This is would is a close However, Section 145 of Patents under as sioner of one. was said in Abbott v. Coe, 35, App.D.C. 195, 197, 449, the usual case Unlike Title U.S.C. 109 F.2d “ section, however, there is no under the Patent ‘While of Office patentability. absolutely binding issue The sole of not issue officials is on the specification great courts, weight, meets the the is entitled and quirements proof Title of Section 112 of 35 for be overcome clear of mis- ” description of the manner of a written take.’ using Finding, therefore, proof the invention. no “clear of mistake,” of relied ruling The Board the the Court concludes the Taylor Bremner, Jones, and remain, of In re of Office the Patent should as a 1032, 216, support, consequence, CCPA undisturbed. There, holding. accordingly. stated: the Court its Order that no ‘hard and “It our view fast’ ruling may properly fixing be made the Therefore, prior adjudica particular claim connote a the itself does not use, specification tion in the specification the defective Petrocarbon case that the parent application- law.” a matter of satisfy paragraph did not the first 35- Thus, Petro question decided ques decided the identical case, product claim as related carbon 55, tion termining in which must de be here resolved specification not suf was that the products claims- whether the teach 112 to ficient under 35 U.S.C. § and man were “disclosed person ordinary how to in the art skill provided by ner of' 6use the defined. invention so Section 112 this title” product defined comparing the In get order benefit product claims three claim with the earlier date under 35 U.S.C. § ap- that application, note present we principle of col think that the 120. We poly- for “the solid pealed calls claim 39 prevents independent, estoppel lateral our pyrolyzed product merization ap determination of this pealed product issue * * * having vapors para-xylene claims softening having crystal structure, a point However, as and'. indicated in re Nelson being C, insoluble 300° about Shabica, we- 280 F.2d ordinary organic tem- many solvents result, disagree on the with the merits defined polymer peratures.” This Watson, reached in Petrocarbon Ltd. v. start- identical from the claim is made affirming product rejection of In thus polymer ing material, para-xylene, as the do not and we so of55 claim for in called solely reason merits but for the Being same parent application. of col we feel the doctrine bound description of case, polymer in each relitigation permit lateral not to dis- properties does in the claims its of this issue.7 tinguish polymers 39 from out, previously pointed the District Appealed polymers claim 55. of said C.,. Appeals, D. Court and starting ma- specifies claim 38 rejected* between made no distinction (in- naphthalene 1,4-dimethyl terial be rejected process product claim 55 Ap- 39). para-xylene as in claim stead finding specification- that the claim 54 starting pealed states that claim 36 U.S.C. § was insufficient con- from the class are “selected materials finding reliance Implicit is the in this poly- sisting polymethyl benzenes this court decision of both courts on having methyl naphthalenes 2 to 6 supra. Bremner, Bremner groups methyl in the nucleus substituted upon, relied frequently has been decision being methyl groups in two of with support po- for the by as Patent Office ring.” 1,4-positions of one While specification dis- unless sition that scope than are claims 36 broader “utility” product requir- closes the application rejected parent of55 the claim by and tells “how to- larger ed U.S.C. they group § a define in that product starting under a 35 U.S.C. to select products § from which use” making product polymers materials, process are in- disclosed the resultant for bases, rejected product of said statutory clusive must be on both required by “Utility” complete 85 U.S.O. independent § After showing study in- and a of “how use” the record of the entire required by briefs, vention we reiterate what said 112 should not be U.S.O. confused § of 35 the Nelson case: “ * ** by courts, reading specifi- has been done includ- often our own supra. Bremner, any- re court In this us to cation leads the conclusion that Shabica, plastics art, knowing In Nelson and re 280 B\2d See skilled one physical proper- 47 CCPA 1031. all of the chemical and given film, for would ties many know of polymers possible uses bow use them.” upon prior adjudication which the rested appears have been deriv- position This changed, had been the court stated: in Bremner court’s statement from this ed necessary that: “It review the respective upon contentions pat- a intended that never “It was ruling point, as we think that the granted upon product, or a ent be applicable. the Tait case is not That product, process producing unless ruling reasoning un [Empha- useful.” such apply it where in the derlies subse sis added.] quent although relating proceeding, In our recent decision year, questions to a different tax Pfohl, Wilke presented upon the facts and the law occasion the above we had to review essentially the same. Tait v. quoted “rule of Bremner” and concluded Ry. Maryland Co., supra Western statutory there was no basis 620], pp. 624, [289 S. [53 ease, we a rule. In the and Pfohl Wilke Here, Ct. aft L.Ed. 1405]. that, requirements held proceeding, er the decision in the first speci it was sufficient if the opinion and decree of the state person ordinary disclosed to a fication court created a new situation. The carry steps skill in the art the of how to petitioner’s determination of ty liabili process. Thus, out the claimed the so- year for the 1923 had been rested applied called “rule of Bremner” as entirely upon the local law. Commis longer claims, process no in this exists Cir.], (2d) sioner v. Blair 340, 342, 60 F. [7 court. supervening 344. The deci interpreting sion the state court We are therefore faced with a law direct relation to this apply in which we are asked to situation ignored justly trust cannot the doctrine of collateral present proceeding so far as appealed process claims because the Pet found that the locallaw is determina roearbon refused any point tive of material in contro reliance versy. Compare Freuler v. Helver - “rule so-called of Bremner” which has ing, 291 U.S. 35 [54 now been overruled this court in its Helvering 634]; Hubbell v. [8 application Cir.], (2d) claims. 70 F. 668.” Commissioner problem Internal Revenue A similar was resolved Sunnen, supra, Supreme v. Supreme Commissioner, Court Blair v. again against warned 81 L.Ed. 465. estoppel where there collateral had been adjudication There, prior had held that legal principles modification of the income of a trust the 1923 was taxable had controlled the decision in the petitioner since, income to under state prior The Court suit. stated: spendthrift law, trust was a trust. “ * * * taxpayer may A secure a a state court held Later the trust not judicial particular determination of a spendthrift pro a trust. a to In second be matter, may a matter which tax covering years ceeding, through tax 1924 cur without substantial variation for argued Commissioner that the years thereafter. some But subse- relating to income in 1923 “is quent significant modification of proceeding in this conclusive as change development or a in facts 8 refusing apply cata.” collateral controlling legal principles may estoppel in this situation where the law make that determination obsolete or judieata” means, years. “Res 8. as used here Commission- different taxable See estoppel by judgment Sunnen, precisely, 333 or col- v. er of Internal Revenue estoppel, lateral since the “cause or de- 92 proceedings mand” two were for 898. pur erroneous, liance the rule of collateral at least es- for fixture a, toppel. poses. is determination If such ***”.. succeeding perpetuated each thqn year It is clear to us that there been “a has in taxpayer involved to the as legal controlling prin modification of,the original litigation, accord he is ciples” proper interpretation as to the different’ from. tax treatment' ed á process applied 35 U.S.C. § taxpayers given of the to other claims since in the Bremner decision result, in there are same As class. equally 1950.9 It clear that the courts ‘ equalities the administration in Watson, (1) in Petrocarbon Ltd. v. discriminatory laws, revenue making proc . no.distinction betw.een and a. in tax liability, distinctiohs product’claims, ess and insofar rer litigious confusion. fertile basis quirements U.S.C.,§ concerm Compare & v. Stone United States ed, citing (2) quoting the Bremner Co., 235-236 case, limiting Downer (3) discussions their .616, . Such L.Ed. 1013] [47 .utility of. disclosed -the lack however, consequences, are neither product, (the polymers), film of solid prin justified nor necessitated ciple on the “rule of Bremner” find relied that estoppel. That collateral' properly re claim was prevent repe designed principle jected. Therefore, .. situation- before matters lawsuits,.over, titious tq the,.appealed.,process pre us.as ,the.doc been decided have once .recognized.exception .a to. sents substantially static,

have remained estoppel. trine Blair of- v. Com collateral legally. factually not meant It missioner, supra, Commissioner Inter rights in decisions vested to create Sunnen, supra, nal Revenue v. Mandel v. or errone obsolete that have become Cir., Revenue, Commissioner Internal thereby causing time, in 382; ous Henricksen et with v. Seward among taxpayers. [Empha equities Cir., al., 135 F.2d A.L.R. 10> are, therefore, proceed free to to a added.] sis determination the merits of the issue * * * intervening But the deci- present application, as to in necessarily not need that of sion be sofar as the claims are concern court, as was in state the Blair ed, is entitled U.S.C. 120 § case. While a state court deci- benefit application. of the having may considered as sion (cid:127)changed for federal tax the facts litigation purposes, a modification or In Wilke and stated legal growth principles Pfohl, supra, a specification as enun- which teaches intervening decisions of those in the art how to ciated skilled use the this may significant e., by disclosing manipula process, also effect a i. Court change steps process, op required Tax in- situation. tive erating readily starting equality result as ma can from conditions neglecting legal process may modulations that the terials so be used disregarding art, person factual skilled meets the re wrought by changes quirements state courts. 35 U.S.C. It § supervening necessary event, specify the intended either uses for justly ignored by product produced blind re- is our cannot therein. It interesting Hassett, It is also to note that also Pelham Hall 10. See Co. v. patent 35, including 63, 68; present Cir., laws of Title 147 F.2d Commissioner passed Internal Revenue v. Arundel-Brooks 35 U.S.C. January 1, 1953, Corporation, Cir., made over 4 effective Concrete 152 F.2d years 225, 227, 1200; two after the Bremner decision of 162 A.L.R. State Farm May 9,1950. Duel, Mut. Insurance Co. v. Auto 162, 573, 154, S.Ct. U.S. Judgments, 2 Freeman on 812. See also (5th 1925), Ed. Sec. 713.

' £87 ' par- specification'of the All of opinion thé that thé above constitutes á disclosure 'the'parent application in fact suffi- process'in'the ent here' does cáse’of thé1 ap- required by ciently manner disclose the invention the first n § n -,It person pealed process of-35 conclusion, U.S.C: claims so that is our therefore, process 5, the L-3, follow skilled in the art could -use-or that the cláims - n 6, 9, process. present-appeal the claimed of disclosed- in application earliér thei filed 1 and 2 process claims Appealed “in:-the provided by para- manner the. the specifying that broadest are.the ¡Section- graph of 412” -of of .Title 35 the- class from a .starting selected be materials U.S.Code-and-that applicant is therefore arid polyméthyl consisting benzenes (1). entitled¡to -the,benefit-,of the,-filing date having each polymethyl (2) naphthalenes, parent application proyi- under the groups methyl substituted to six from two U;S.C: .sions of Therefore, §-120. groups these with two in the n.ucleus filing- effective date of ring. sup one" positions in 1,4 in the process claims is the the. find specification, we parent port in the parent application.. 'This avoids the re- following: jection under 102(b) 35 U.S.C. and the- in a consists invention “(1) The j process re ection of claims the- poly- production of a process for Appeals Board of is reversed. vapour of an aro- mer in which consisting hydrocarbon PA matic nuclei with two 4 benzene 1 to remaining question raised para methyl groups substituted by appellánt in PA 7000 arises from the nucleus one positions of benzene refusal of the Appeals Board'of * *» * Commissioner to remand the Primary Exarniner for his consideration after it by'this was remanded “(2) also consists of court The invention for purposes prior stated in production poly- our opinion,. process of a for Szwarc, supra. re In 1,4 vapour di- think it is en mer which tirely within the naphthalene pyrolysed discretion methyl * * *» Board' Appeals and the Commissioner to de proper termine the tribunal within the Appealed claims 5 and 13 Patent Office to make the determination starting “1,4 specify material to be requested. In See al., Jewett et naphthalene”. proc- dimethyl Appealed 953, 45 CCPA 714. specifies “p-xylene” as ess summary, we affirm rejection starting starting All material. these ma- 36, claims 38 and par- specifically but terials are disclosed reverse- rejection 1-3, 5,, specification. claims ent 6, 9, 13 and 14. appealed process speci- All of claims Modified. temperatures fy rang- reaction within the es of This 700-1000°C: limitation is WORLEY, Judge, Chief with whom clearly parent specification. shown MARTIN, J., joins (dissenting). specify All the reac- controlling “not tion time to one issue than second” here is whether specifica- which also disclosed in the Ltd. v. Watson1 is res parent application. appeal. Clearly tion of the cata of the instant We also it is. pressure ranges claimed find the Petroearbon the U. S. tem- peratures polymers the solid District Columbia Circuit held deposit appellant’s parent application, cooled for disclosed in rely specification. prevail here, must he App.D.C. cert. 1. 101 247 F.2d L.Ed. denied 355 L. 2d 1146. petition rehearing Ed.2d denied fatally subsequent Sunnen, a matter law.2 We That defective as of decision is to urged hold, majority heavily, effect, nre same that the which the to relies so Application fatally applicable and far more instant is not defective. controversy. statutory authority, noof am aware I or Hemphill Closely paralleling this court this judicial, allow would which Appeals There the Court court Co. v. Coe.7 nullify sister a the decision to alleged operative an see asked to hold to jurisdiction. fail competent I (cid:127)of previous had which court invention any Commissioner3 of Blair v. relevance ly refusing inoperative. do so to held v. Revenue v. Commissioner Internal “Appellant here, able the Court stated: amnor I facts Sunnen really question redetermine in seeks Pfohl,5 decided & how Wilke see Cus which the Court any support for provide 1963, possibly can Appeals has concluded.” toms and Patent Petrocarbon, .setting decided aside ap situation We pellant the reverse have 1957, unmodified. and which remains here— “redetermine” would have us of res clear case is a To me this Ap question same which the Court Munsingwear,6 v. In United States cata. peals “concluded.” has the classic Supreme cited as Clearly and Petrocarbon judicata, Szwarc the rule of statement issue, i. privy following and the invention R. Pacific from Southern ap sufficiency 48-49, 1, e., of the Petrocarbon States, Co. v. United Initially plication are the same.8 in law 18, 27, 42 L.Ed. 355: 18 S.Ct. go the District appellant elected to general principle announced “The privilege, rather Court, was his right, cases is that in numerous He has review this court. than seek distinctly put is- question fact or including day court, un two had his directly by a determined sue attempts to obtain review successful competent jurisdiction, as a court Supreme now seeks Court.9 He ground recovery, cannot dis- court, urging day us to what set second subsequent puted in a suit between legal precedent of an intolerable would be parties privies; or their the same by reviewing, uncertainty in chaos if the suit is even second by reversing, question has deed already right, action, cause different of com a court decided been question or fact once so determined jurisdiction. petent cannot do. That we must, parties between the same privies, conclusively their taken as affirm as to all would P.A. 6462 I long established, so as the claims, and would dismiss P.A. 7000 involving in the first suit remains appealable unmodified.” question. not an 2. The Szwarc App.D.C. was held 121 F.2d 897. 7. 74 adequate description include Although claims here are 8. using required manner of by the invention as language in number and different 112. they Petrocarbon, obviously those de- fine the same 3. U.S. 57 S.Ct. 81 L.Ed. 465. held, contrary allowed if we could be parent applica- Petrocarbon, 4. 333 U.S. 68 S.Ct. 92 L.Ed. description prod- 898. includes a tion adequate uct and 5. 314 50 CCPA 964. § 112. 35 U.S.C. Supra, 6. 340 note L.Ed. 36.

Case Details

Case Name: Application of Michael Mojzesz Szwarc

Court Name: Court of Customs and Patent Appeals

Date Published: Sep 27, 1963

Citation: 319 F.2d 277

Docket Number: Patent Appeal 6462, 7000

Court Abbreviation: C.C.P.A.