In re Gruschwitz

320 F.2d 401, 50 C.C.P.A. 1498, 138 U.S.P.Q. (BNA) 451, 1963 CCPA LEXIS 294

• Court: Court of Customs and Patent Appeals
• Decided: July 26, 1963
• Docket: No. 6885
• Status: Published

Opinions

Worlet, Chief Judge,

delivered the opinion of the court:

All the claims, 10 through 16, in appellant’s application¹ for a patent on a “Spray-Plastering-Device for Applying Mortar to Ceilings and Walls of Buildings” were rejected as unpatentable over the single reference, Fritz et al., German, Patent No. 1,013,861, January 23,1958.

In affirming the examiner’s rejection, the Board of Appeals states:²

This is an appeal from the final rejection of all the claims in the case on the ground that the applicants are barred a patent by reason of the provisions of paragraph (d) of Section 102 of Title 35, United States Code.

The following publications will be referred to:

German Auslegesehrift, 1,013,861, published August 14, 1957.

German Patentschrift, 1,013,861, published April 11, 1958.

Patentblatt, August 14, 1957, Columns 3949-50, 3976.

Patentblatt, January 23, 1958, Columns 3381,398.

Section 102(d) of Title 35 U.S.C. provides that a patent cannot be obtained if:

The invention was first patented or caused to be patented by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application filed more than twelve months before the filing of the application in the United States.

The present application was filed on February 26, 1958. Oyer three years earlier, on October 4, 1954 applicants had filed an application for patent for the same invention in Germany, Application No. F 15842 V/37d, and the invention has since become patented in Germany on the basis of that application. There is no dispute as to the inventions and the parties being the same, the only question raised being the time when the invention was patented in Germany. If the invention was patented in Germany prior to February 26, 1958, then a patent in the United States is barred to applicants by Section 102(d) of the Statute. On the other hand, if the invention was not patented in Germany until after the date mentioned, a patent is not so barred.

The Examiner asserts that the invention was patented in Germany prior to February 26, 1958, the filing date in the United States, and hence a patent is barred by the terms of Section 102(d). The Examiner’s conclusion is based upon a notice which appeared in the Patentblatt (Patent Gazette) for January 23, 1958, which announced that the patent had been granted. The Patentblatt, the ofiieial journal of the German Patent Office, contains a section of announcements of granted patents. This section is headed “Grants” (Erteilungen), and its pages carry the running head “Patents”.

* * * # # * *

Appellants do not deny the publication of the notice, its correctness, or its date. In fact, appellants do not and cannot deny that the patent rights were legally in existence, were vested to the fullest extent that patent rights become vested in Germany, and were enforceable, at the time. The position taken is essentially that a later date, namely April 11,1958, when the specification of the patent, identified as such, was issued in printed form, should be taken as the date the invention was patented in Germany. This position cannot be accepted. It is elementary and requires no citation of authority that the mere issuance of the specification of a patent in printed form is unessential to the question of whether an invention has been patened in a foreign country. * * *

The board, consisting of five rather than the usual three members, unanimously rejected appellants’ arguments and affirmed the examiner’s holding.

In urging this court to reverse the board, appellants assign as their reasons:

1. It was error to affirm the decision of the Examiner in his rejection of •claims 10 to 16.

2. It was error to refuse to allow the rejected claims.

In challenging the legal adequacy of those reasons the Government states in its brief:

Like section 4912 R.S., 35 U.S.C. 142 provides that, when an appeal is taken to this Court, the appellant shall file in the Patent Office “his reasons of appeal, specifically set forth in writing.” Similarly to section 4914 R.S., 35 U.S.C. 144 specifies that the decision of this Court “shall be confined to the points set forth in the reasons of appeal.” In re Dichter, 27 CCPA 1060, 110 P. 2d 664, involved reasons of appeal essentially the same as appellants’ present reasons of appeal. Those reasons of appeal read, as follows:

1. The Board of Appeals was in error in rejecting claims 2, 3, 7, 8, 13, 16, 18, and 19.

2. The Board of Appeals was in error in not allowing claims 2, 3, 7, 8,13, 16, 18, and 19.

3. The Board of Appeals was in error in affirming the decision of the Primary Examiner as to claims 2, 3,7, 8,13,16,18, and 19.

In dismissing Dichter’s appeal this Court said:

The alleged reasons of appeal filed herein on February 16, 1939, are merely statements that the Board of Appeals erred. They contain no specification as to what error the board committed. If, in fact, the board did commit error it has not been pointed out. The alleged reasons of appeal lack vitality, and, in reality are not reasons of appeal within the meaning of the statute. The appellant, therefore, has failed to comply with section 4912 R.S., supra, and his failure to do so precludes our consideration of the appeal because section 4912 R.S., supra, which provides that this court shall “revise the decision appealed from” also provides that “the revision shall be confinen to the points set forth in the reasons of appeal." It being mandatory that we confine our revision “to the points set forth in the reasons of appeal,” and there being no points set forth in the notice of appeal filed herein, we are without authority to revise the decision of the board. See In re Thomas & Hochwalt, 23 C.C.P.A. (Patents) 1238, 83 F. (2) 902; and In re Wheeler, 23 C.C.P.A. (Patents) 1241, 83 F. (2) 904.

Similar rulings were made in In re Wesselman, 29 CCPA 988, 127 F. 2d 311. See also In re Rosenblatt, 28 CCPA 1036, 118 F. 2d 590.

On the other hand appellants argue that there is but one issue and one reference here, therefore, no matter what criterion is used, their reasons of appeal are sufficient, emphasizing that the solicitor, in his brief, “fully discussed and applied the references.” [sic] Appellants also rely cm. In re Kopplin, 32 CCPA 848, 146 F. 2d 1014, 64 USPQ 403, and In re Howell, 49 CCPA 922, 298 F. 2d 949, 132 USPQ 449, and cases there cited.

For many years Congress has prescribed certain criteria governing appeals to this court. Its latest expression came in 1952 when it reenacted, virtually intact, R.S. 4912 and 4914 into what are now sections 142 and 144, respectively.

Section 142, governing notice of appeal, directs that:

Wien an appeal is taken to the United States Court of Customs and Patent Appeals, the appellant shall give notice thereof to the Commissioner, and shall file in the Patent Office his reasons of appeal, specifically set forth in writing, within such time after the date of the decision appealed from not less than sixty days, as the Commissioner appoints. [Emphasis supplied.]

Section 144 directs this court to:

* * * hear and determine such appeal on the evidence produced before the Patent Office, and the decision shall he confined to the points set forth in the reasons of appeal. Upon its determination the court shall return to the Commissioner a certificate of its proceedings and decision, which shall be entered of record in the Patent Office and govern the further proceedings in the ease. [Emphasis supplied.]

Returning to appellants’ argument, we find no reference in Section 142 to the contents of briefs, or any basis therein for permitting appellants to rely on their brief to cure defective reasons of appeal. The law requires that appellants shall file in the Patent Office their reasons of appeal specifically set forth in writing. As this court said in In re Wesselman, 29 CCPA 988, 127 F. 2d 311, 53 USPQ 365:

* * * we would observe that in appellant’s brief he contends that it was improper under the circumstances to join his copending patent application with the disclosure of the Johnson patent, and, secondly, that even though such joining was proper, nevertheless the combination is patentable.

It is so obvious that these matters should have been set forth in appellant's reasons of appeal that further discussion is unnecessary. [Emphasis supplied.]

Although two references were cited in Wesselman, there was but one issue there as here.

We are familiar with Kopplin and Howell relied on by appellants. We are also familiar with In re LePages, Inc., 50 CCPA 852, 312 F. 2d 455, 136 USPQ 170, and with In re Arnold, 50 CCPA 1166, 315 F. 2d 951, 137 USPQ 330, subsequently decided.³

We find nothing in the various cases cited by opposing counsel sufficiently in point with the facts here to be controlling. In all the cited cases the facts were different as they are here. It should go without saying that each case must necessarily be decided on its own facts.

Here, appellants content themselves with nothing more than broad allegations that the board erred. They fail to specifically state what error or errors the board allegedly committed on which appellants rely for reversal.

In In re Rosenblatt, 28 CCPA 1036, 118 F. 2d 590, 49 USPQ, 117, the court stated:

In the ease of In re Lanera Schneider, 17 C.C.P.A. (Patents) 952, 39 F. 2d 278, which came before us during the first gear of our patent jurisdiction, we had occasion to say:

“Those appealing to this court should give to the court hy specific assignments and with particularity all grounds of alleged error upon which they rely.”

The reason for and the philosophy of the rule, even aside from the statutory provisions, are so clear that no extensive discussion of those matters need be indulged. This court does not wish to seem supertechnical, hut it is entitled to have from those appealing a clear and specific statement of the exact points relied upon, and upon this we must insist. * * * [Emphasis supplied.)

That those appealing to this court have found no difficulty in heeding that admonition is evident from the fact that in only a handful of the thousands of appeals have the reasons of appeal been held defective.

• To hold that the instant reasons of appeal are adequate, would necessarily require us to ignore what Congress has expressly directed, or to stretch the statute to a point we are confident Congress did not intend. This court has no authority, to follow either course. The appeal is dismissed.

1 Serial No. 717,732, filed February 26, 1958.

2 Composed of five members.

3 See also In re Sebald, 31 CCPA 1148, 143 F. 2d 366, 62 USPQ 90; In re Boyce, 32 CCPA 718, 144 F. 2d 896, 63 USPQ 80; In re Clark, 41 CCPA 974, 214 F. 2d 148, 102 USPQ 241; In re Wagenhorst, 20 CCPA 991, 64 F. 2d 780, 17 USPQ 330, and In re O’Brien, 46 CCPA 851, 265 F. 2d 940, 121 USPQ 461.