In re McFarlane

125 F.2d 169, 29 C.C.P.A. 810, 52 U.S.P.Q. (BNA) 335, 1942 CCPA LEXIS 18

• Court: Court of Customs and Patent Appeals
• Decided: February 2, 1942
• Docket: No. 4445
• Status: Published

Opinions

LenRoot, Judge,

delivered the opinion of the court:

This is an appeal from a decision of the Board of Appeals of the United States Patent Office affirming that of the Primary Examiner rejecting, for want of patentability over the cited prior art, claims 6 to 14, inclusive, and 16 to 24, inclusive, of an application for a patent for new and useful improvements in translation of modulated electric current into a series of impulses. Seven claims were allowed.

The appeal was first argued here and submitted for decision March 4, 1941. On June 30, 1941, the court ordered the appeal to be re-argued upon the question of the validity of rule 75 of the Rules of Practice in the Patent Office in view of the decision in the case of Electric Storage Battery Co. v. Shimadzu et al., 307 U. S. 5. Reargument was had and the appeal again submitted November 3, 1941.

Rule 75 is as follows :

75. When an original or reissue application is rejected on reference to an expired or unexpired domestic patent which substantially shows or describes but does not claim the rejected invention, or on reference to a foreign patent or to a printed publication, and the applicant shall make oath to facts showing a completion of the invention in this country before the filing of the application on which the domestic patent issued, or before the date of the foreign patent, or before the date of the printed publication, and shall also make oath that he dees not know and does not believe that the invention has been in public use or on sale in this country, or patented or described in a printed publication in this or any foreign country for more than one year¹ prior to his application, and that he has never abandoned the invention, then the patent or publication cited shall not bar the grant of a patent to the applicant, unless the date of such patent or printed publication be more than one year1 prior to the date on which application was filed in this country.

Section 4886 of the Revised Statutes, which is directly involved in one of the questions before us, reads as follows:

Any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvements thereof, or who has invented or discovered and asexually reproduced any distinct and new variety of plant, other than a tuber-propagated plant, not known or used by others in this country, before his invention or discovery thereof, and not patented or described in any printed publication in this or any foreign country, before his invention or discovery thereof, or more than one year prior to his application, and not in public use or on sale in this country for more, than one year prior to his application, unless the same is proved to have been abandoned, may, upon payment of the fees required by law, and ' other due proceeding had, obtain a patent therefor.

It should be observed that the one-year period referred to in section 4886 as above quoted is limited to applications filed on or after August 5, 1940, and that as to applications filed prior to said date the period is two years.

The application before us, serial No. 97,203, filed August 21, 1936, is a division of another application, serial No. 113,432, filed June 3, 1926, which ripened into patent No. 2,070,913.

The references cited are a patent to Watson, No. 2,115,894, and a patent to Weaver, No. 1,709,926, both of which were granted on applications filed December 15,1923.

As stated in the brief of appellant:

Tlie invention relates to the electrical transmission oí pictures and facsimiles from point to point, and the claims in issue relate to a specific subcomDination in that art. The claims are based upon the use by appellant of an optical system in scanning the. original picture or-subject to be transmitted, whereby the said subject is caused, by means of reflected light, to modulate a photoelectric cell output, and to cause certain operations as a. consequence thereof. All prior systems of picture transmission passed light through a photographic transparency to reach the photo-electric cell.

It is admitted that the references disclose but do not claim the invention defined in the rejected claims. Appellant contends (first) that he has overcome the filing date of the references by filing affidavits under rule 75 alleging a prior'reduction to practice in England, and that such affidavits should be held to entitle him to a patent despite the requirement that the showing of completion of the invention under that rule must be “in this country.” • Appellant bases this contention on the ground that the commissioner exceeded his powers in inserting in the rule the words “in this country” between the words “a completion of the invention” and “before the filing of the application,” and that the rule is invalid only to that extent. Appellant’s second contention is that these affidavits showed that he had introduced the invention into this country prior to December 15, 1923, the filing date of the references.

In view of our conclusion with respect to- appellant’s contention that he has overcome the patent references by an actual reduction to practice in England prior to the filing date of the references, and is entitled to an allowance of the involved claims by reason of that fact; notwithstanding the provision of rule 75 above referred to, it is unnecessary for us to consider appellant’s second contention that lie introduced the invention into this country prior to December 15, 1923, the filing date of the references.

Appellant’s affidavits set forth that he actually reduced the invention to practice in England prior to the filing date of the applications upon vsdfich the reference patents were issued, and the Board of Appeals conceded that appellant had established reduction to practice in England by such affidavits.

Appellant contends that his reduction to practice in England made prior to the filing date of the references is available to him under the doctrine announced in Electric Storage Battery Co. v. Shimadzu et al., 307 U. S. 5, and alleges that since rule 75 is based upon R. S. 4886. (U. S. C., title 35, sec. 31) the Patent Office has written into, the rule the words “in this country” which the Supreme Court refused to write into the statute, and that the rule is to that extent invalid.

The Board of Appeals was of the opinion that the decision in the Shimadzu case, supra, was intended to apply only to the special circumstances of that case and therefore that it did not apply to practice under the said rule 75.

In that case it appears that Shimadzu, a citizen and resident of Japan, and owner of three United States patents, sued the Electric Storage Battery Co. for infringement. The defendant denied that Shimadzu was the first inventor; asserted knowledge and use of the invention by it in the United States more than two years prior to the dates of the Shimadzu applications, and pleaded that earlier patents procured by Shimadzu in Japan avoided the United States patents as the former were for the same inventions and each was granted more than a year prior to the filing of the corresponding applications in this country.

The facts in that case appear in the opinion as follows: _

The inventions which are the basis of the patents were conceived „bv Shimadzu and reduced to ijractise in Japan not later than August 1919. He did not disclose the inventions to anyone in the United States before he applied for United States patents. Application was presented for No. 1,084,149 on January 80, 1922; for No. 1,584,100 on July 14, 1923; and for No. 1,896,020 on April 27, 1926. The inventions were not patented or described in a printed publication in this or any foreign country prior to the filing of the applications. The petitioner, without knowledge of Shimadzu’s inventions, began the use of a machine, which involved both the method and the apparatus of the patents, at Philadelphia, Pennsylvania, early in 1921 and attained commercial production in June 1921. Over the objection of the petitioner the respondents were permitted by testimony, and by the introduction of contemporaneous drawings and note books, to carry the date of invention back to August 1919> and the courts below fixed that as the date of invention * and reduction to practice in Japan.

It will be seen in that case that the patents had already been granted and the court held that it was proper to permit the patentee to show an acual date of invention in Japan earlier than that of the alleged prior knowledge and use by the Electric Co.

In arriving at its conclusion the court examined R.. S. 4886 in the light of its development from earlier patent statutes, and stated:

These successive alterations throw into relief the fact that the section makes the criterion of novelty the same whether the invention was conceived abroad or in this country. The test is whether the invention was “known or used by others in this country, before his invention or discovery thereof * * The elements which preclude patentability are a patent, or a description in a printed publication in this or any foreign country, which antedates the invention or discovery of the applicant.

None of the statutes has ever embodied as an element the place of invention or discovery, but the change affected by the Act of 1836, and carried .forward in all succeeding statutes, is the fixation of the actual date of the inventive act as the date prior to which the invention must have been known or used to justify denial of a patent for want of novelty. The omission of any limitation as to the place of invention or discovery precludes a ruling imposing such a limitation, especially so since the Act of 1870 expressly limited the area of prior knowledge or use to this country.

The court further declared, that R. S. 4887 (U. S. C. title 35, sec. 32) “does not contain any provision which precludes proof of facts respecting the actual date of invention in a foreign country to overcome the prior knowledge or use bar of § 4886.”

The court also held that R. S. 4923 (U. S. C., title 35, sec. 72) on its face was not applicable to the facts in the Shimadzu case. “The effect of this section,” said the court, “is that in an interference between two applicants for United States patent, or in an infringement suit where the alleged infringer relies upon a United States patent, the application and patent for the domestic invention shall have priority despite earlier foreign knowledge and use not evidenced by a prior patent or a description in a printed publication.”

The court recognized the seemingly illogical distinction between the effect of R. S. 4923 and R. S. 4886, in view of its holding that under sec. 4886 a date of invention in a foreign country prior to the date of the application in the United States may be proved as the actual date of the invention, while under sec. 4923 the application and patent dates for a domestic invention have priority in the face of earlier foreign knowledge and use -in the absence of a prior patent or printed publication. As illustrative of the distinction the court said:

* * n Thus, if a diligent domestic inventor applies, in good faith believing himself to be the first inventor, § 4923 assures him a patent and gives it priority, despite prior foreign use, even though that use is evidenced by a patent applied for after the invention made in this country. The foreign applicant or patentee cannot carry the date of his invention back of the date of application in this country, as the holder of a later patent for an invention made hero would be permitted to do in order to establish priority. On the other hand, a domestic inventor who is willing to dedicate his invention to the public may be held as an infringer by reason of the later patenting of an invention abroad which antedates the invention and use in this country; and so is put in a worse position vis a vis a foreign inventor who subsequently secures a patent, and succeeds in establishing an earlier date of invention, than he would occupy if he had promoted his own interest by procuring a patent.

In order to relieve the disadvantage under which the Electric Co. labored by reason of the said distinction between R. S. 4886 and R. S. 4923, the court pointed out that it would have been, compelled to read into sec. 4886, between the words “discovery thereof” and the words “and not patented,” the phrase “in this country.” This the court declined to do, stating:

* * * Moreover §§ 4886 and 4887 have repeatedly been amended and other portions of the patent act have been revised and amended from time to time since the decisions pointing out that § 4886 did not prevent the foreign inventor from carrying back his date of invention beyond the date of his application. Congress had not seen fit to amend the statute in this respect and we must assume that it has been satisfied with, and adopted, the construction given to its enactment by the courts.

While the facts in the instant case are in no way parallel to those in the Shimadzu. case, supra, the basic question in that case was the proper construction of sec. 4886, supra, and that is the basic question in the case at bar.

Rule 75 does not permit an inventor who is an- applicant for a patent to show that he had completed the invention in a foreign country in order to overcome a domestic patent reference which substantially shows but does not claim the invention. In the Shimadzu case the same contention was in effect made — that Shi-madzu in order - to establish the validity of his United States patents, should not be permitted to show the completion of the involved invention in Japan prior to the first use of the invention by the appellant, Electric Storage Battery Co., in this country.

Rule 75 clearly denies to an inventor, under the provisions of section 4836, a right which the Supreme Court in the Shimadzu case held exists under that section. While it is true that the case last cited was an infringement suit, and the case at bar as an ex parte proceeding in the Patent Office, it is, it seems to us, too plain for argument that section 4886, whieh relates to the granting of a patent, cannot receive one construction in an infringement suit and a different and contrary construction in an ex parte proceeding in the Patent Office.

Rule 75 clearly precludes an inventor from showing facts, under circumstances such as are here involved, to establish the completion of his invention in a foreign country, pursuant to the provisions of section 4886, whereas the Supreme Court in the Shimadzu, case held that there is no warrant for holding that under the provisions of section 4886 an inventor must complete his invention in this country before he is entitled to a valid patent.

Under the Supreme Court’s construction of the patent statutes in the Shimadzu case, if the claims before us are allowed and patent for them is issued, such patent will be valid over the cited references if the patentee can establish the facts set out in his affidavits respecting the completion of the invention in England prior to December 15, 1923, the date of the applications of the reference patents. However, rule 75 declares in effect, without any authority of law, that the applicant here shall not receive a patent even though he did complete his invention in England before December 15, 1923,. the date of the applications of the reference patents, although a patent if issued to him would be valid.

In order to sustain the validity of rule 75, we could be compelled to hold that the Commmissioner of Patents, under the provisions of section 4886, supra, may by rule forbid the very thing which the Supreme Court has held that the section permits.

It follows that in our opinion the construction given section 4886 in the Shimadsu case clearly invalidates so much of rule 75 as requires proof by affidavit of the completion of the invention in this country in order to' overcome a domestic patent reference which discloses but does not claim the invention involved.

We do not think, however, that the entire rule 75 is invalidated,, for the words “in this country” in respect to completion of the invention can be ignored, leaving all other parts of the rule intact, and presumably said words “in this country” would have been omitted from the rule had the Shimadsu decision been rendered prior to the formulation of the rule.

We appreciate the difficulties confronting the Patent Office in administering the patent laws under the construction given by the Supreme Court to section 4886, supra, but in order to sustain rule 75 we should be compelled to construe said section differently from, and contrary to, the construction given it by the Supreme Court. To .use the words of that court in the Shimadsu case, “we should have to read into the law words which are plainly missing. We cannot thus rewrite the statute.”

It is plain from the foregoing that authorization to the Commissioner of Patents to establish rule 75 as framed by him must come from Congress and cannot be supplied or ratified by judicial interpretation.

However, the difficulties arising from the construction given by the Supreme Court to section 4886 may not be so serious as would at first impression appear.

We have no doubt that the Commissioner of Patents may by rule require proof other than the mere affidavit of the applicant to establish completion of an invention in a foreign country. He may require corroboration of the statements in an applicant’s affidavit respecting the completion of the invention in a foreign country, and that corroboration may be required in the form of affidavits or depositions.

This, however, is a matter for the consideration of the Commissioner of Patents. We mention it here only to prevent any implication from our decision that a mere affidavit of an applicant must be accepted as proof of the completion of an invention in a foreign coun-. try, should the commissioner, in the exercise of his proper authority, by rule require supporting evidence corroborating the statements of. an applicant.

It follows from the foregoing that that portion of rule. 75 is invalid which requires, before a patent may be issued, proof of the completion of the invention in this country in order to overcome a reference to a domestic patent which discloses but does not claim the invention involved; that the words “in this country” as used in rule 75 in connection with the completion of the invention should be ignored as not warranted by law, and that in all other respects bearing upon the question before us, rule 75 is valid; that upon the record before us it must be held that the reference patents to Watson, No. 2,115,894, and to Weaver, 1,709,926, do not bar the allowance of the involved claims, for the reason that appelant’s affidavits, accepted by the Board of Appeals as true, show completion of his invention in England prior to December 15, 1923, the date of the applications upon which the reference patents were issued.

For the reasons stated herein, the decision appealed from is reversed.

1 In tlie case of applications for patent filed prior to August 5, 1940, this period is two years instead of one year.