Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE NORIHIKO KITAMURA AND AKIMOTO OHNISHI
Appeal No. 88-1652
September 30, 1988
Application for Patent filed April 24, 1985, Serial No. 726,618. Novel Pyrimidopyrimidine Derivative, Process For Producing It And Pharmaceutical Composition.
Raymond C. Stewart for appellants
Primary Examiner--Robert Gerstl
Before Serota
Chairman
Goldstein, Pellman, Lovell and W. Smith
Examiners-in-Chief
By the Board:
Saul I. Serota, Melvin Goldstein, Irving R. Pellman, Charles N. Lovell and William F. Smith
Members
ON BRIEF
This appeal is from the examiner's rejection of claims 20, 21 and 32. Claims 22, 33 and 34 stand allowed. Claims 23 through 31 and 35 through 40 stand withdrawn from consideration in accordance with 37 CFR 1.142(b) because they are not readable on the species of claim 22 which was elected for prosecution in Paper No. 9. [FN1]
Appellants' claims 20 and 21 on appeal are drawn to generic ("Markush") groupings of certain substituted pyrimidopyrimidine compounds useful for their anti-allergic properties. Claim 32 is drawn to an anti-allergic composition which comprises a pharmaceutically acceptable carrier and an effective pyrimidopyrimidine compound. The Markush grouping of compounds recited as the active ingredients in claim 32 corresponds in scope to the Markush grouping of claim 20. Hence claims 20 and 21 are illustrative of Appellants' claimed inventions.
20. A pyrimidopyrimidine compound having the formula (I):
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
wherein R1 and R2 are each an alkyl group having 1 to 4 carbon atoms; and
1) when R3 is a hydrogen atom, R4 is an alkyl group having 1 to 4 carbon atoms, a halogenated alkyl group having 1 to 4 carbon atoms, an amino group or an amino group substituted by an alkyl group having 1 to 4 carbon atoms;
2) when R3 is an amino group, R4 is an alkyl group having 1 to 4 carbon atoms; or
3) when R3 is an amino group substituted by an alkyl group having 1 to 4 carbon atoms, R4 is a hydrogen atom or an alkyl group having 1 to 4 carbon atoms;
or a pharmaceutically acceptable salt thereof.
21. A pyrimidopyrimidine compound according to claim 21 (sic), wherein R3 is a hydrogen atom.
The reference relied on by the examiner is: Hirota et al (Hirota), Synthesis, No. 7, July, 1984, pages 589-590.
Claims 20, 21 and 32 stand rejected under 35 U.S.C. 102(a) as being anticipated by Hirota.
Appellants do not appear to dispute that the rejection is proper unless the rejected claims are entitled to the benefit under 35 U.S.C. 119 of the filing date of their Japanese application filed April 24, 1984. The dispute is whether Appellants are so entitled. Both Appellants and the examiner cite prior decisions which assertedly support their respective positions. Because a decision of this Board relied on by the examiner, Ex parte Marhold, 231 USPQ 904 (Bd.App.1984), appears to be in conflict with a decision of a predecessor of our Appellate Court, In re Ziegler, 347 F.2d 642, 146 USPQ 76 (CCPA 1965), an expanded panel of this Board has been convened to consider this appeal.
*2 It is our decision that the examiner's rejection is correct, and we affirm it.
Although the operative facts are not in dispute, we shall briefly review them. The Hirota reference describes the preparation and characterization [FN2] of six pyrimido [4,5-d]-pyrimidine-2,4-dione compounds, identified as 5a-f. Four of the reference compounds, 5b, c, e and f, fall within the scope of the Markush groupings of Appellants' claims on appeal. Using Appellants' formula (I) set forth in the claims, all of the reference compounds have methyl groups, i.e., an alkyl group having one carbon atom, as substituents R1 and R2, and a hydrogen atom as substituent R3. The substituents corresponding to Appellants' symbol R4 are CH3 (alkyl group having 1 carbon atom), CF3 (a halogenated alkyl group having 1 carbon atom), NH2 (amino) and CH3NH (amino group substituted by an alkyl group having 1 carbon atom). The reference describes compositions of the compounds in water and ethanol, both of which are pharmaceutically acceptable carriers.
Appellants' priority application specifically describes each of the four reference compounds which fall within Appellants' rejected claims. Compounds 3, 4 and 8 of the verified translation are reference compounds 5b, c and f, respectively. Reference compound 5e is named at page 8 of the translation. [FN3] In addition, Hirota's compounds 5a and d are described in the priority application (compounds 5 and 2, respectively), although they do not fall within the scope of Appellants' claims on appeal.
The priority application does not describe compounds of Formula (I) having:
(1) any value of R3 other than hydrogen--i.e., values of R3 as amino and amino substituted by an alkyl group of 1 to 4 carbons are not described;
(2) any value of R1 except CH3--i.e., alkyl groups having 2 to 4 carbon atoms are not described; and
(3) the value of R2 as an alkyl group having 4 carbons--i.e., the value of R 1 in the priority application (corresponding to R2 in formula (I)), is lower alkyl, but lower alkyl is defined in the priority application as having 1 to 3 carbon atoms.
The variable R4 of formula (I) is described in the priority application with the exception that the alkyl, and the alkyl portions of the halogenated alkyl and alkylamino groups, are described as "lower alkyl" in the priority application, and lower alkyl is defined in the priority application as having 1 to 3 carbons instead of 1 to 4 carbons. Hence, the alkyl, halogenated alkyl and alkylamino groups having 4 carbons are not described in the priority application.
Appellants do not urge that the genera defined by claims 20 and 32 are described in their priority application. They do appear to urge at pages 13-14 of their brief that claim 21, where R3 is limited to hydrogen, is so supported, but, as we have noted above, certain values of R1, R2 and R4 which are incorporated into dependent claim 21 also lack description in the priority application.
*3 Appellants state the "issue" herein as being whether the particular compounds which both fall within the claims and are described by Hirota are disclosed and thus supported in the priority application. As a factual matter, we have noted above that the priority application does in fact describe each of the specific compounds described by Hirota. [FN4]
Consequently, the legal issue presented on this appeal is whether, in order to obtain the benefit under 35 U.S.C. 119 of the effective filing date of their priority application with respect to the claims on appeal, that priority application must meet the requirements of 35 U.S.C. 112 with regard to the inventions defined by those claims or only with regard to those particular portions of the claimed inventions which are also disclosed by the reference.
Both Appellants and the examiner cite decisions which appear to be in point. In the Marhold decision cited by the examiner, rejected claims 14 and 16 recited Markush groupings which included, inter alia, three members which were not described in Appellant's priority application. In addition, the claims included other members which were described in both the priority application and an intervening reference. Marhold urged that all he could be required to show was priority with respect to so much of the claimed invention as the reference showed. The Board held otherwise. It pointed out that In re Scheiber, 587 F.2d 59, 199 USPQ 782 (CCPA 1978), had expressly rejected the argument that a parent U.S. application need only show as much of the claimed invention as the reference showed in order to antedate the reference with regard to a continuing application. The Court in Scheiber pointed out that 35 U.S.C. 120 expressly requires that an earlier application, relied on for purposes of providing an effective filing date for a continuing application, must disclose the claimed subject matter in the manner required by the first paragraph of 35 U.S.C. 112.
Recognizing that In re Scheiber concerned 35 U.S.C. 120 (obtaining an effective filing date of a prior U.S. application) rather than 35 U.S.C. 119, the Board pointed out that Kawai v. Metlesics, 480 F.2d 880, 178 USPQ 158 (CCPA 1973) ("Kawai"), had held that a foreign priority application must also comply with the requirements of the first paragraph of 35 U.S.C. 112 if a later filed U.S. application is to be accorded the filing date of the priority application as an effective filing date.
Appellants rely on three decisions, In re Ranier, 390 F.2d 771, 156 USPQ 334 (CCPA 1968); In re Ziegler, supra; and In re Mulder, 716 F.2d 1542, 219 USPQ 189 (Fed.Cir.1983). The Ranier case is relied on only for the proposition that a reference can be removed by an affidavit under Rule 131 showing prior reduction to practice of as much of the claimed invention as the reference shows. That is what is generally called the "Stempel rule." [FN5] No such affidavit or declaration has been filed herein. Inasmuch as Ranier sheds no light on the issue whether a priority application must meet only the requirements of the "Stempel rule" or the requirements of what we may call the "Scheiber rule," we need not further consider the case.
*4 In re Ziegler, however, appears to be in point and to support Appellants' position. The appeal in that case involved claims directed to polymerization catalysts having two components. Both components were defined using Markush groupings of materials. Claims were rejected over a reference which described one species (member) of the Markush grouping defining the first component. Some of the rejected claims were limited to that species, while others included Markush groupings containing numerous other members. Ziegler relied on German priority applications which the Court stated the Board had held to be inadequate to "overcome the references" because they showed only "a single species" described by the references.
The Court stated the legal issue as:
The legal issue thus is whether appellants can obtain the benefit of their foreign applications even though they disclose only that part of the claimed invention which is shown by the references said to be anticipatory, rather than the entire invention claimed. (146 USPQ 81).
It found that claim 19 was limited to the species shown by the reference and that the claim was "no broader in scope" than either of the foreign priority applications relied on by Ziegler. Hence, it reversed the rejection of claim 19.
It found that the remaining rejected claims were broader in scope than the inventions described in Ziegler's priority applications, but it agreed with Appellants that they were entitled to rely on those applications for the purpose of overcoming the references, stating:
We must consider the import of the phrase "for the same invention" in section 119. While we are cognizant of the fact that a species may be patentably distinct from a genus, it is clear that in this case the earlier disclosed species is broadly the same invention as the genus. Thus the requirement of section 119 that only "the same invention" in the later application as is shown in the earlier will obtain the benefit of the earlier filing date is satisfied here. We see in the statute no mandate contrary to according appellants the date of December 27, 1954 for so much of the generic invention as is otherwise satisfactorily disclosed as a species in the foreign applications, for the purpose of overcoming references.
***
We are of the opinion that the reasoning of In re Stempel, supra, is effective to remove the four references as to the single species they disclose. In Stempel the date of prior invention was established by affidavits. The foreign applications here involved by statute give a "right of priority" of invention as to everything pertinent that the references show, as of a date prior to the effective date of those references. We see no reason why the logic of that case should not apply here. Appellants here stand in the same relation to the prior art as did Stempel in that case. As this court stated (44 CCPA at 826, 113 USPQ at 81):
*5 In the case of a reference, it is fundamental that it is valid only for what it discloses and if the applicant establishes priority with respect to that disclosure, and there is no statutory bar, it is of no effect at all.
It is the showing in the foreign application which gives to the later U.S. application the benefit of its date. We distinguish the priority showing for the purpose of overcoming a reference from the amount of disclosure which an application must provide to support a generic claim, In re Stempel, supra. Consistent with this view is the well-settled rule that disclosure of a species in a reference is sufficient to prevent a later applicant from obtaining generic claims, should the references not be overcome. In re Ruscetta, supra. There is no question here that the applications adequately support the board (sic--broad) claims, once the references have been antedated as to the narrow subject matter which they disclose. (146 USPQ 82-3).
We have given careful consideration to Ziegler because its holding appears to be inconsistent with Marhold and, hence, would seem to mandate that we overrule our decision in Marhold. Our consideration, however, convinces us that the particular holding of Ziegler on the issue in common with Marhold is inconsistent with prevailing law to the extent that if the holding in Ziegler is correct, the holdings in other recent cases are incorrect.
First of all, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), explicitly held, citing Kawai, that the dispositive issue was whether Appellants' parent and Swiss applications complied with 35 U.S.C. 112, first paragraph, including the description requirement, as to the subject matter of certain rejected claims. It found that certain claims (1, 4) were not limited to inventions described in the foreign priority application, while other claims (2, 37 and 38) were so limited. It is interesting to note that Judge Miller's dissenting opinion, joined by Judge Baldwin, citing Ziegler, maintained that:
... The majority errs, therefore, in seeking a description in appellants' parent and foreign priority applications to support the entire claimed subject matter as though these were the applications in which the claims appear.
The dissenting view, which was rejected by the majority, appears to be the only reported instance in which the "Stempel rationale" holding of Ziegler was asserted, and it was asserted both under 35 U.S.C. 112 (parent application) and 119 (foreign priority application).
Marhold, Ziegler and Wertheim appear to be the only cases directly on point concerning the issue herein. Wertheim and Ziegler appear to be directly in conflict. However, Ziegler also appears to be indirectly in conflict with numerous other decisions of our Appellate Court and its predecessor. As in Marhold, we reach a conclusion that the "Stempel rule" does not apply to priority benefits under 35 U.S.C. 119 by a syllogism. The first premise is that a foreign priority application for which priority benefits under 35 U.S.C. 119 are sought must meet the same requirements for compliance with the requirements of 35 U.S.C. 112, first paragraph, that a "parent" U.S. application must meet under 35 U.S.C. 120. The second premise is that a parent U.S. application relied on for an effective filing date must comply with the description requirements of 35 U.S.C. 112, not just the less stringent requirements of the "Stempel rule." It follows from those premises that the "Stempel rule" is inapplicable also to issues concerning benefit under § 119.
*6 The third case relied on by Appellants is In re Mulder, supra. We have carefully considered it as a recent ruling by our Appellate Court, but we find that it sheds no light on either the premises or the conclusion which we have delineated above. Mulder requested and was given the full benefit of his priority application. Mulder's problem was that his effective date was still subsequent to the effective date of the reference. Consequently, Mulder filed a declaration under 37 CFR 1.131(a) which in part relied on, as evidence of conception, a draft application introduced into the U.S. prior to the date of the reference. The pertinent issue was whether Mulder was entitled to rely on the effective date of his priority application as a date of a constructive reduction to practice. If he was so entitled, the period for which he was required to show diligence ended at that date.
The only portion of Mulder of any arguable relevance to the issues herein appears to be the following:
We hold that this provision entitles appellants to rely on their Netherlands filing date for a constructive reduction to practice. Section 119 is a "patent-saving" provision for the benefit of applicants, and an applicant is entitled to rely on it as a constructive reduction to practice to overcome the date of a reference under Rule 131. In re Ziegler, 52 CCPA 1473, 347 F.2d 642, 146 USPQ 76 (1965) (convention German filing dates available to overcome references under § 119). If entitlement to a foreign filing date can completely overcome a reference we see no reason why it cannot partially overcome a reference by providing the constructive reduction to practice element of proof required by Rule 131. It is a statutory priority right which cannot be interfered with by a construction placed on a PTO rule. Cf. In re Hilmer, 53 CCPA 1288, 1312, 359 F.2d 859, 878, 149 USPQ 480, 496 (1966). (219 USPQ 193).
In the context of Mulder, none of the above statements lend support to Appellants' position. It can hardly be disputed that a foreign priority application which complies with the requirements of that § 119 provides an effective date for a constructive reduction to practice for inventions entitled to those benefits. The examiner herein has withdrawn rejections of those claims which are entitled to the benefit of a constructive reduction to practice based on the priority application. The citation of Ziegler in Mulder for the proposition that convention filing dates are available to overcome references under 35 U.S.C. 119 is hardly an endorsement of the "Stempel" holding in Ziegler which is relevant in this case. Similarly, the Court's statement in Mulder concerning the use of a foreign filing date to "partially" or "completely" overcome a reference clearly referred to part or all of the time period required to antedate a reference, not to the quantum of disclosure necessary to obtain the benefit of the filing date of the application. The necessary quantum of disclosure was not an issue. Hence, we return to our premises.
*7 As we did in Marhold, we find Kawai to dispel any doubt whether a foreign priority application under 35 U.S.C. 119 must comply with the same requirements of 35 U.S.C. 112, first paragraph, as a parent U.S. application under 35 U.S.C. 120. Kawai represented a consolidation of three ex parte cases and an interference case. In each case, appellants attempted to obtain the benefit of the effective filing date of their foreign priority application. In the ex parte cases, Laird and Hardy attempted to obtain their convention filing dates for the purpose of overcoming references, while Kawai attempted to obtain his convention filing date for the purpose of establishing priority. Each was denied the benefit because the priority applications were not adequate to meet the disclosure requirements of 35 U.S.C. 112, first paragraph, specifically the enablement requirement with respect to using the invention.
The Court stated the issue as:
That question is whether an application for patent filed in a foreign country must contain a disclosure of an invention adequate to satisfy the requirements of the first paragraph of 35 U.S.C. 112 if a later filed United States application claiming that invention is to be accorded the benefit of the filing date of the foreign application as allowed by 35 U.S.C. 119. (178 USPQ 159).
In a detailed and carefully considered opinion, the Court analyzed the legislative history of section 119, as well as numerous prior decisions, and concluded:
Therefore, we are of the opinion that the foreign application must meet the requirements of the first paragraph of section 112 if the act of filing it is to be regarded as a reduction to practice of the invention. (178 USPQ 162-3).
Kawai does not squarely conflict with Ziegler only because the inadequacies in Ziegler involved the description requirement of 35 U.S.C. 112 whereas those in Kawai involved the enablement requirements. Appellants in Kawai attempted to distinguish the earlier case of In re Smyth, 189 F.2d 982, 90 USPQ 106 (CCPA 1951), on the ground that it did not involve a foreign application having as its only defect an inadequate statement of utility, but the Court rebuffed that attempt (178 USPQ 164). Finally, the Court stated that compliance with the formal or procedural requirements of 35 U.S.C. 119 may not be sufficient to enable the applicant to obtain the benefit of the convention filing date, adding:
... the satisfaction of these requirements does not give the applicant more rights than he would have had if he had first filed in this country. In other words, the extent of the right of priority is measured by the content of the foreign specification. The applicant is entitled to the benefit of what it does disclose and no more. See In re Ziegler, 52 CCPA 1473, 347 F.2d 642, 146 USPQ 76 (1965). (178 USPQ 165, emphasis added).
*8 It is not clear why the Court cited Ziegler, which approved not only giving Ziegler the right of priority with regard to what the priority application disclosed (claim 19), but also with regard to claims to subject matter broader than the invention disclosed in the priority application.
Kawai may in fact be read as expressly limiting the scope of the Ziegler decision. As we noted earlier, Ziegler gave the applicant the benefit of his priority date with regard both to claims which were limited to inventions described in the priority application and claims which were not so described. However, Kawai's statement of the extent of the right of priority under 35 U.S.C. 119, viz.:
... In other words, the extent of the right of priority is measured by the content of the foreign specification. The applicant is entitled to the benefit of what it does disclose and no more. See In re Ziegler ... (178 USPQ 165)
is quite similar to the statements in In re Ruscetta, 255 F.2d 687, 118 USPQ 101 (CCPA 1958), concerning the right to benefit under 35 U.S.C. 120 of the filing date of a prior U.S. application:
Appellants have been given the benefit of the filing date of their parent application as to what it discloses, and of course they are "entitled" to it to that extent, and the method claims 4-18 specific to the etching of tantalum stand allowed. The claims on appeal, however, being either specific to metals first disclosed in the application of May 9, 1955, or generic to those metals and tantalum, find no support in the earlier applications and it is for this reason that the British specification is cited against them. Appellants do not contend that the applications prior to the one involved here contain any support for claims to the added metals, whether specific or generic, but rely on them here only as a means of getting rid of the British reference altogether. (118 USPQ 103).
It is not clear whether the Court in Kawai intended to modify Ziegler or approve it, but there can be no doubt that the decision makes it perfectly clear that 35 U.S.C. 119 and 120 both require that an earlier application relied on for an effective filing date must comply with the requirements for disclosure set forth in the first paragraph of 35 U.S.C. 112.
After Kawai, we have noted that the Court in In re Wertheim, supra, confirmed that the description requirement of 35 U.S.C. 112 must be met by convention applications relied on for priority. Kawai was also followed by our present Appellate Court in Cross v. Iizuka, 753 F.2d 1040, 224 USPQ 739 (CCPA 1985).
Hence, we conclude that the prevailing law clearly supports our first premise that both foreign priority applications relied on under 35 U.S.C. 119 and parent U.S. applications relied on under 35 U.S.C. 120 must comply with the same disclosure requirements of 35 U.S.C. 112, first paragraph, including the description requirement.
*9 Turning to the second premise of our syllogism, we find clear precedent for the legal premise that the filing date made available under 35 U.S.C. 120 is limited to subject matter disclosed in the earlier "parent" applications in the manner required by 35 U.S.C. 112, first paragraph, In re Scheiber, supra. For that reason, a continuing application which relies on prior "parent" application(s) often generates two (or more) "effective" filing dates, Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423, 221 USPQ 97 (Fed.Cir.1984); In re van Langenhoven, 458 F.2d 132, 173 USPQ 426 (CCPA 1972); In re Kyser, 588 F.2d 303, 200 USPQ 211 (CCPA 1978); In re Ruscetta, supra.
Many reported cases involve the scenario in which claims in a continuing U.S. application have been held to be anticipated by an "intervening" reference because the claims were denied the benefit of the effective filing date of an earlier "parent" case under 35 U.S.C. 120. [FN5] The Scheiber, Moreton and Ruscetta decisions explicitly rejected arguments that the test for antedating a reference under 35 U.S.C. 120 parallels the "Stempel" test for antedating a reference under 37 CFR 1.131. The Gemassmer, "Ziegler II", Kaase, Ruscetta and Steenbock cases all involved issues similar to that herein. In each case, Appellants were denied the benefit of the effective filing date of a parent application which did not describe the broadened genera claimed in the continuing application. Ruscetta, Kaase and Steenbock all involved rejections of claims to Markush groupings over references describing some, but not all, of the members of the Markush groupings, even though the parent applications described the particular members which were described by the anticipating references.
Consequently, we conclude that if the requirements which a foreign priority application must meet in order to furnish an effective filing date for a U.S. application under 35 U.S.C. 119 are identical to those required of an earlier U.S. application under 35 U.S.C. 120, then the holding in Ziegler concerning the applicability of the "Stempel rationale" is clearly inconsistent with the Scheiber, Moreton, Ruscetta, Kaase and Steenbock cases. We recognize that the Ziegler opinion distinguished the portion of the Moreton opinion concerning the "Stempel rule" as dictum. However, the Ruscetta and Scheiber decisions cannot be so dismissed. The Ziegler opinion also distinguished Moreton on the basis that the facts there involved combination-subcombination inventions rather than Markush genus-species inventions. While we readily perceive that the parent and foreign applications of Moreton and Ziegler failed to meet the description requirement for different reasons, we do not readily discern why those differences require or justify different results. Further, as we have noted, the Ruscetta, Kaase and Steenbock decisions could not be so distinguished. Finally, the Ziegler opinion distinguished the Ruscetta and Steenbock decisions because "[B]oth of those cases involved a statutory bar." However, the references were "statutory bars" only because the appellants were not accorded the benefit of their earlier effective filing dates. While the "statutory bar" nature of the references prohibited the use of "Rule 131" as a means of overcoming or "removing" the reference, whether a reference would otherwise be a statutory bar would appear to be irrelevant to an analysis under 35 U.S.C. 120 and 119.
*10 The examiner's decision is affirmed.
37 CFR 1.136(a) does not apply to the times for taking any subsequent action with regard to this appeal.
AFFIRMED
BOARD OF PATENT APPEALS AND INTERFERENCES
Chairman
Melvin Goldstein
Examiner-in-Chief
Irving R. Pellman
Examiner-in-Chief
Charles N. Lovell
Examiner-in-Chief
William F. Smith
Examiner-in-Chief
FN1. We note that claim 33, which was allowed in the examiner's answer, appears to be generic to claims 34 through 40. Consequently, it appears that claims 34 through 40 should now be examined also, M.P.E.P. 809.04, second paragraph.
FN2. Appellants correctly note at page 8 of their brief that Hirota teaches no utility for his compounds. However, a reference lacking a disclosure of utility for a fully disclosed compound is adequate to anticipate a claim to the compound, In re Moore, 444 F.2d 572, 170 USPQ 260 (CCPA 1971); In re Hafner, 410 F.2d 1403, 161 USPQ 783 (CCPA 1969). Compare In re Stemniski, 444 F.2d 581, 170 USPQ 343 (CCPA 1971), concerning the adequacy of such a reference to support a rejection for obviousness under 35 U.S.C. 103.
FN3. Page 16 appears to be missing from the record copy of the verified translation as well as from the copies appended to Appellants' brief.
FN4. Appellants' graphic presentation at pages 15-16 of the brief omits anticipatory compound 5c of Hirota, the CF3 compound, which, as we have noted, is also described in the priority application. Further, we have noted that the priority application also describes the two remaining compounds of Hirota which do not fall within Appellants' present claims.
FN5. In re Stempel, 241 F.2d 755, 113 USPQ 77 (CCPA 1957), was the source of that "rule". For purposes of this decision, we accept Appellants' statement of that "rule".
FN5. Examples are Litton Systems, Inc. v. Whirlpool Corp., In re Kyser, In re Scheiber, and In re Ruscetta, all cited supra; In re Sichert, 566 F.2d 1154, 196 USPQ 209 (CCPA 1977); In re Hafner, 410 F.2d 1403, 161 USPQ 783 (CCPA 1969); In re Ziegler (Ziegler II), 363 F.2d 885, 150 USPQ 551 (CCPA 1966); In re Gemassmer, 319 F.2d 539, 138 USPQ 229 (CCPA 1963); In re Fried, 312 F.2d 930, 136 USPQ 429 (CCPA 1963); In re Moreton, 312 F.2d 954, 136 USPQ 479 (CCPA 1963); In re Ruscetta, 255 F.2d 687, 118 USPQ 101 (CCPA 1958); In re Kaase, 140 F.2d 1016, 60 USPQ 565 (CCPA 1944); and In re Steenbock, 83 F.2d 912, 30 USPQ 45 (CCPA 1936).
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