*2
United
Government
States
obtained
Marechal,
Biebel
B.
Lawrence
unpublished patent ap-
access to the
Dayton, Ohio,
Bugg,
Biebel, French &
plications on file in the Reichs-
appellants.
patentamt, and recorded
them
along
large
microfilm,
with a
amount
Washington,
Moore,
C.D.
W.
Clarence
technical material.
Schimmel, Washington,
C.,
D.
(J.
“These microfilms were turned
counsel),
of Patents.
for Com’r
Officeof Technical
over
Serv-
JOHNSON,
Judge,
Depart-
United
Chief
ices
States
Before
RICH,
Eventually they
O’CONNELL, WORLEY,
ment Commerce.
Library
placed in the
Judges.
of Con-
February
25, 1943.
138,004,
Karcher,
Application
filed
German Patent
No.
meaning
“printed publication” within the
of Technical
Bibliography
Office
gress and the
pub
102(b),2
of 35
U.S.C. §
published the
Services
lishing
bibliography,
reports
June
date of said
Industrial
Scientific
of
concerning
(a
year
more than one
captured
date
data
all
*3
filing date).
appellants’
refer-
The
the
of
war.
end
the
at
substantia]
urge
of a
prac-
one
Appellants
here was
ence
due
the
pat-
unpublished German
locating
impossibility
of
number
tical
of
the micro-
on
applications photographed
Congress,
Library
film file in the
on
of
was
reel
This
83291.
bibliography
PB L
Reel
even after the O.T.S.
was
along
Bibligraphy [sic]
faulty
the
published (as
in
listed
of
in-
a result
the
pho-
were
on which
other reels
dexing),
with
tographed
the microfilm was not
unpublished
other
various
contemplation
102
within the
of section
fol-
the
applications under
They
argue
(b), supra.
German
lowing
that
further
the
* *
*
designation:
“printed.”
microfilm
was
“
Reichspatentamt,
83291.
‘PBL
Counsel for
admit-
the Commissioner
applications
during
argument
if
oral
the
German
ted
that
Berlin.
Reel
(FIAT Microfilm
refer-
microfilm is held not to be valid
on aircraft.
a
8522-9442) 1937-
134,
(viz.,
printed publication)
Frames
ence
all
B
—a
Microfilm— n
appeal
Price:
942 f.
claims on
are allowable.
1945.
the
print
Enlargement
$120.00
$9.00
—
—
confronting
us,
The issue
German.’
In
microfilm,
allegedly
is whether
is
that there
be noted
“It should
public only
was made available to the
by
mate-
the
of
identification
bibliog-
virtue of the
beyond the
reel
the
rial recorded
single
raphy,
being
there
no evidence of rec-
statement,
quoted
“Ger-
above
any copies
ord that
of said microfilm
applications
aircraft.”
on
man
by any
have been made or seen
member
the microfilm
frames of
The cited
public,
“printed publication”
is
aircraft.
no relation
have
meaning
within
term as
that
used
Bibliography
102(b).
in 35
U.S.C. §
is
“It
stated
by or-
copies could be obtained
importance
question
The
of this
is at
dering
of Tech-
from Office
them
once obvious. At first blush we had
giving
Services,
appropriate
nical
thought
might
decision
be in
* *
identification.
number
PB
by prior
fluenced
decision of this court:
faulty
conceding
board,
Wilson,
422,
v.
48
The
Fessenden
F.2d
C.C.P.A., Patents, 1171,
bibliography
indexing
certiorari denied
of the O.T.S.
640,
apt
as
U.S.
to mislead
S.Ct.
76 L.Ed.
ques
urged by
microfilm in
appel
reel of
This decision
contents
was
analogous
denying
was no
tion,
lant as
instant case.
indicate that
has been
record to
case
cited on
a number
evidence
Karcher document
of occasions
other courts
well
as
as
Office,
standing
on
in the
microfilm file
as
made from
proposition
Library
appellants’
appearing
prior to
matter
held,
filing date,
patent application
originally filed,
au
nevertheless
parte Brendlein,
thority
application
of Ex
105 U.S. cancelled before the
issued
patent,
no
P.Q.
(Bd.Appls.1955),
printed
that the
does
as a
not constitute a
availability
publication. Tampax, Inc.,
Personal
tice
Corp.,
bibliography
D.C.E.D.N.Y.1941,
the microfilm in
Products
O.T.S.
question
F.
Supp. 663;
Halberg,
said microfilm
(dis-
Gulliksen
constitutes
opinion expressly rejects
import
possible
board’s decision
board’s
se,
per
bibliography
virtue
reliance on the O.T.S.
microfilm
availability,
notice of
is the
such.
the O.T.S.
upon;
relied
U.S.P.Q. 252,
senting
We have
no other decisions
opinion)
found
instant
this court which bear on the
(Bd.Appls.1937).
examined
We have
question.
granting
but,
before us is there-
carefully
The issue
case
Fessenden
fore,
least as far as this court
language
somewhat
used therein
concerned,
impression.
one of first
misleading,
the case
feel that
do not
we
proposition
attributed
stands
carefully
We have
most of
considered
appellant’s
There,
in answer to
reports
to it.
the countless
cases
description
argument
question
cancelled
what
or is
appellant’s application,
filed June
publication.
ex-
conflicts
Irreconcilable
May
issuing
patent on
holdings
ist
a number
as between the
*4
appellees
1918,
from
to bar
was sufficient
of them and few
forth sufficient
have set
they
ground
patent
that
reasoning
.a
any
to us.
be of
assistance
inventors,
[18
said
reaching
the court
not the first
In
our conclusion we of neces-
1171, 48 F.2d 425]:
sity
disagree
C.C.P.A. Patents
must
with at least several
of these cases.
“*
* *
authorizes
The statute
may,
opinion
Be this as it
we are of the
granting
patent under cer
of a
that
the microfilm in
instant
case
invention
conditions
if the
tain
is not a
within
in this
or used
others
‘not known
contemplation
102(b)
of 35 U.S.C. §
country,
or dis
his invention
before
therefore,
the decision
covery thereof,
patented or
specifical-
board must
reversed. More
publica
any printed.,
described
ly,
opinion
we are of the
the micro-
foreign country.
in this or
tion
“printed.”4
film is not
*
* *
'
In United States v. Dubilier Condens-
filing
reasons,
“For obvious
Corp., 1933,
178, 186,
er
289 U.S.
53
description
application,
an
554, 557,
1114,
S.Ct.
L.Ed.
77
the Su-
it results
canceled
which is
before
preme Court,
through
speaking
Mr. Jus-
public
patent
comes
in a
or
Roberts,
tice
stated:
notice,
de
not such a
“Though
characterized,
often so
with
scription
as is
of the- invention
patent
not, accurately speaking,
statute.
inhibition
monopoly,
is not
created
Davis-
v.
Milburn Co.
Alexander
authority
the ex-
executive
at
Co., supra.”3
Bournonville
pense
prejudice
and to the
of all the
obvious, from the court’s
is rather
community
grantee
except the
says
(which
Milburn case
Seymour
citation
patent.
Osborne,
v.
11
n
(cid:127)nothing
publications)
516,
533,
Wall.
possession where distinguished dissemination, as been no surely accessibility, and from technical underlying concept the former is Print
expression “printed publication.” meaning original
ing, and common implies use which the term now the printing press, is not even multiple producing means for
common microfilm tech already replace
niques use to We must fields. some books of the mean in our view narrow
ing “printed” novel situations and in to see whether consider facts
should in fact had has
the interested in the form
possession of the disclosure Nothing general publication. present facts of the
kind shown rigid rule about microfilm No
case. deduced, however, from de our
should be hand it should on the other cision. And Kenway, Kenway, Jenney, Herbert W. assumed that the word Hildreth, Boston, Mass., Witter & any paper is so sacred Hatfield, Washington, C., Dos T. appellants. D. printing press and has come off of a been having “published” sense pub Moore, Washington, known to some fraction
made Clarence W. D. C. Behrens, (Arthur Washington, C., qualify H. D. lic will counsel), legal for Commissioner sys of Pat- 102(b). In our under section ents. given to substance tem effect is to be making without a fetish and intent JOHNSON, Judge, Chief Before dictionary or of ritualis either of the O’CONNELL, WORLEY, RICH and Keifer Keifer F. Judges. tic formulae. & v. R. JACKSON, retired, C., 391 footnote 306 U.S. S. RICH, Judge. 784; 516, 83 L.Ed. Johnson v. United Ct. Cir., 30, 32, L.R.A., States, appeal F. from the decision This Markham, Cir.,
N.S., Appeals affirming Cabell v. Board of Patent Office rejection examiner’s claims F.2d
