holding that a reference patentees' declaration that they did not invent the claimed method is insufficient to remove the reference patent as § 102(e
How later courts described this case
- holding that a reference patentees' declaration that they did not invent the claimed method is insufficient to remove the reference patent as § 102(e
Written by the judges who cited it.
The opinion
MILLER, Judge
(concurring).
I agree that the “sole issue in this appeal is whether the declarations submitted by appellants under 37 CFR 1.132 are sufficient to remove the Tulagin et al. and Clark patents as references in the rejections.” I further agree that such declarations are insufficient in that appellants have failed to establish that the patentees derived the relevant subject matter from them. However, it is unnecessary and, as shown below, improper under the precedents of this court to consider an issue not raised below, namely: whether the patentees’ declarations establish that they did not originate the relevant subject matter.
The pertinent portion of the Clark declaration, in full context, states:
I am the inventor of the system of photoelectrophoretic imaging claimed in U.S. Patent 3,384,566. The patent discloses the use of azo compounds having a hydroxyl group in a position ortho to an azo linkage.
I am not the inventor of the use of compounds having a hydroxyl group in a position ortho to an azo linkage in this system.
The Tulagin declaration is substantially the same.
The examiner and the board did not challenge the declarations for failing to establish that the declarants did not originate the relevant subject matter. On the contrary, the examiner accepted the declarations on this issue, thus:
*1360 Merely because Mr. Clark and Mr. Tulag-in have stated that they have not invented specific materials used in certain working examples does not remove 35 U.S.C. 102(e) from rendering the instant invention unpatentable. There is nothing in this portion of the statue [sic] which requires the patentees to have invented all aspects of the invention found and disclosed therein. The only way in which the appellants could effectively remove this section of the statue [sic] is by establishing an effective date of their invention before the effective date of the prior art; and the 132 affidavit submitted herein does not accomplish this result.
The board affirmed the decision of the examiner solely on the ground that appellants had failed to establish that the patentees derived their knowledge of the relevant subject matter from appellants.
This court has consistently refused to consider new issues on appeal because of the provisions of 35 U.S.C. § 132 . See In re Altenpohl, 500 F.2d 1151 , 183 USPQ 38 (Cust. & Pat.App.1974). If a new rationale or reason advanced by the board requires an opportunity for applicants to respond, In re Waymouth, 486 F.2d 1058 , 179 USPQ 627 (Cust. & Pat.App.1973), modified on rehearing, 489 F.2d 1297 , 180 USPQ 453 (Cust. & Pat.App.1974), a new rationale or reason advanced by this court would a fortiori deny appellants procedural due process and amount to an impermissible new ground of rejection. Also, it would deprive appellants of the “hearing” provided by 35 U.S.C. §§ 143 and 144.
Although this court reviews decisions of the board and not merely its opinions, Hunt v. Treppschuh, 523 F.2d 1386 , 187 USPQ 426 (Cust. & Pat.App.1975), it only reviews those decisions to the extent that the issues involved have been raised before the Patent and Trademark Office. In re Nygard, 341 F.2d 924 , 52 CCPA 1032 (1965). Indeed, if the adequacy of the declarations to establish that the declarants did not originate the relevant subject matter had been seasonably challenged, appellants might have been able to refute that challenge.