Anticipating References (Rule 131).
Rule 131 affidavits overcome reference where they show manufacture
of claimed product by use of lithium-based catalysts whereas reference
shows its preparation using Ziegler catalysts; applicants possessed
claimed product as fully as reference did, and before reference's date.
In re Wakefield, 959.
Where product shown in Rule 131 affidivats falls under a group of
claims, it is of no significance that it alone would not support broader
claims; court rejected test that affidavits must show composition which
reference shows, stating that affidavits must contain facts showing com-
pletion of the invention commensurate with extent the invention is
shown in reference, whether or not it be a showing of identical disclosure
of reference. In re Wakefield, 959.
Mere fact of disagreement between parties as to who sugested or per-
formed or discovered one detail of invention does not defeat claim to
joint inventorship; while not always determinative of question of joint
inventorship, parties' relationship to one another ought to be taken into
consideration concerning issue of independent invention; fact that one
party was graduate student working under direction of other party
militates against possible double, but independent, invention. In re
Searles, 912.
Third paragraph of 35 USC 116 contains no provision requiring
that joint inventorship be conclusively proved before conversion of
application will be permitted; requirements of statute and Rule 45(c)
will ordinary be satisfied if allegation of joint inventorship is made,
coupled with sufficient evidence to enable a determination regarding
facts of error in not including one or more inventors in application, and
lack of deceptive intent; even absent a specific allegation of joint in-
vention, it would be enough if preponderance of evidence submitted
pointed in direction of joint inventorship, so long as existence of error
without deceptive intention is satisfactorily demonstrated; allegation
of lack of deceptive intention on part of inventor to be added is not
required or necessary in verified statement of facts, it being enough if
it would be reasonable to conclude from consideration of all facts
presented that any deceptive intent was absent. In re Searles, 912.
APPLICATIONS FOR PATENT.
In general.
Statutes contain no express grant to Commissioner of authority to
strike patent applications; such authority must be found in 35 USC 6,
which gives Commissioner authority to establish regulations governing
conduct of proceedings in Patent Office; such regulations, when not
inconsistent with statutes, have effect of law; Commissioner's authority
to strike under Rule 56 is not questioned. Norton v. Curtiss, 1384.
Where courts have approved striking of patent application for conduct
less serious than fraud, it must follow that deliberate fraud in attempt to
secure allowance of claim affords basis for similar action; finding of
fraud need not be made by court but may be made within Patent Office.
Norton v. Curtiss, 1384.
While Patent Office Rule 56 is interpreted more broadly in area of
inequitable conduct, rule as to burden of proof has not changed; because
of importance of this issue, courts have demanded that quantum of
proof as to fraud be substantial; standard is that proof of fraud must
be clear and convincing; thus, one asserting misconduct carries a heavy
burden of persuasion. Norton v. Curtiss, 1384.
Court takes judicial notice that it is not uncommon for Board to cite
new references, in which case a new ground of rejection is always stated.
In re Ahlert, 1023.
Manner in which Board treated claims, combining disclosures of refer-
ences with new facts judicially noticed, amounted to new ground of
rejection; use of reference work and facts taken from it contravened
Rule 196; calling the facts “judicially noticed” does not change their
effect; however, grounds of rejection are clear; applicants were not
denied any procedural right accorded them by Rule 196(b); therefore,
since applicants have raised no issue as to this point, court treats re-
jections as court considers them to have been made by Board. In re
Ahlert, 1023.
35 USC 132 and 134 do not require that each and every claim presented
during prosecution of application must be twice examined and twice
rejected on same ground; thus, Board had jurisdiction where, in his
answer, examiner withdrew multiplicity rejection and for the first and
only time rejected claims on prior art. In re Szajna, 899.
Examiner's decisions directly relating to rejection of claims are subject
to appeal; these questions generally deal with merits of the invention,
involving factual determinations and legal conclusions drawn therefrom
regarding application disclosure, the claims, and prior art; examiner's
rulings dealing with procedural matters, such as whether affidavit or
amendment is untimely, and formal requirements, such as whether a new
application title will be required, are reviewable upon petition; thus,
examiner's refusal to allow entry of amendment to claims or to consider
Rule 131 affidavit is reviewable only by petition. In re Searles, 912.
BOARD OF APPEALS—Continued
Jurisdiction-Continued
Examiner's denial of request that application be amended to include
joint inventor was an adverse decision reviewed by Board under 35
USC 7; appeal from Board's decision is within court's jurisdiction under
section 141; this is not merely because issues are determinative of the
rejection, but because examiner's decision required exercise of technical
skill and legal judgment in order to evaluate facts presented, interpret
requirements of section 116 and Rule 45 and weigh facts against those
requirements. In re Searles, 912.
Claim is group of words defining only the boundary of patent mo-
nopoly; it may not describe any physical thing and may encompass
physical things not yet dreamed of. In re Vogel, 920.
Claim is a definition of scope of patent protection. In re Hilmer, 985.
Aggregation or combination.
Addition of limitation to claim, as distinguished from substitution of
limitation, can never result in claim to different species, since species
claims must be mutually exclusive in scope; by including additional
limitation in claims, applicant is not shifting to different species, but
is simply defining invention more narrowly. In re Muller, 748.
Alternative.
There is no statutory authority for rejecting claims as unnecessary;
applicant should be allowed to determine the necessary number and
scope of claims, provided he pays required fees and otherwise complies
with statute; instant invention was not obscured by 40 claims; court
notes that each of 26 appealed claims is relatively brief and clear in its
meaning and that claims were clear enough for examiner to apply
references against all of them in his first action. In re Wakefield, 959.
Broad or narrow.
In general.
Claim which is of such breadth that it reads on subject matter dis-
closed in prior art is rejected under 35 USC 102 rather than under
second paragraph of section 112. In re Borkowski, 946.
Inventor should be allowed to dominate future patentable inventions
of others where those inventions were based in some way on his teach-
ings, since such improvements, while unobvious from his teachings, are
still within his contribution, since improvement was made possible by
his work; however, he must not be permitted to achieve this dominance
by claims which are insufficiently supported and, hence, not in compliance
with first paragraph of 35 USC 112; that paragraph requires that scope
of claims must bear a reasonable correlation to scope of enablement
provided by specification to persons of ordinary skill in the art; in cases
involving predictable factors, such as mechanical or electrical elements,
a single embodiment provides broad enablement in the sense that, once
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