This appeal is from a decision of the Patent Office Board of Appeals affirming the final rejection of claims 1-11 in application serial No. 174,315, filed February 19, 1962, entitled "Continuous Shrinkproofing of Wool Textiles." No claim has been allowed.
The only reference relied upon is U. S. Patent No. 3,078,138, issued February 19, 1963, to Miller, Whitfield, and Wasley, on an application filed March 27, 1961. It describes a process for shrink-proofing woolen textile material by forming a resin on its surface. We quote from the general statement of the invention:
The patent also discloses the following general considerations:
Appellants' invention is an adaptation of the basic process of Miller et al. to continuous processing. It includes control of five process parameters: (1) the pH of the woolen fabric, (2) the temperature of the diamine solution, (3) the residence time of the diamine solution on the fabric, (4) the amount of diamine solution retained by the fabric, and (5) the pressure applied in the final "padding" of the fabric. Claim 11 is illustrative:
Other claims are directed to limitations on one of the above-listed parameters. Claim 1 is typical:
The examiner rejected appellants' claims as obvious in view of Miller et al. under 35 U.S.C. § 103. 35 U.S.C. § 102 (e) is necessarily relied on to make the reference available. In his opinion, "the five limitations [the controlled parameters above referred to] relied upon by appellants as features which patentably distinguish their process from that of Miller et al. are either specifically disclosed as features of the Miller et al. process or are wholly obvious over the features of said process which are disclosed."
In affirming, the board said: "* * appellants have merely adapted the Miller et al. process to continuous operation which we believe to be well within the skill of a person versed in this art." We agree.
Appellants point to the fact that their application and the copending Miller et al. patent are commonly owned.
We must reject the premise that common ownership and copendency in themselves necessarily preclude consideration of a patent as a part of the prior art. A United States patent to another is a valid prior art reference when its United States filing date is earlier than the date of the applicant's invention. 35 U.S.C. § 102(e); Alexander Milburn Co. v. Davis-Bournonville, 270 U.S. 390, 46 S.Ct. 324, 70 L.Ed. 651 (1926). Appellants' filing date, no earlier date having been proved, is their date of invention. A patent is "to another" when the "inventive entities" are different, In re Land, 368 F.2d 866, 54 CCPA 806 (1966), and may then be used as prior art to make the determination required by 35 U.S.C. § 103. Hazeltine Research, Inc. v. Brenner, 382 U.S. 252, 86 S.Ct. 335, 15 L.Ed.2d 304 (1965); In re Harry, 333 F.2d 920, 51 CCPA 1541 (1964); see In re Hilmer, 359 F.2d 859, 53 CCPA 1287 (1966).
Appellants would have us carve out an exception to 35 U.S.C. § 102(e) in the guise of interpreting "to another." They recognize that in In re Land, supra, we decided that Land, as sole inventor, and Rogers, as sole inventor, were each "another" to Land and Rogers as joint inventors, despite the common ownership and copendency of the reference patents and application on appeal. They ask us to overrule that case because it fails to take into account modern research techniques in which groups rather than individuals make inventions. Appellants argue that the disclosure of these inventions can only be delayed by a system which makes available the patents issued to one part of a group as prior art against the applications of another part.
Appellants' argument is not without some basis. However, it predicates an elasticity of the statute which we do not find.
Appellants argue, however, that even if the Miller et al. specification is prior art, their invention is nonetheless unobvious. They rely on their claim limitations on the five process parameters to impart that unobviousness.
Appellants require control of the initial pH of the woolen fabric between the
The board agreed.
Appellants' argument below focused on the failure of the examiner to appreciate the "real factor of significance — the ability of the diamine solution to penetrate into and exhaust onto the fabric." They argued:
The board concluded:
Appellants here challenge in this court, for the first time, the validity of the examiner's "one reason," at least on this record, there being "no evidence to indicate what quantity of acidic materials were present on unneutralized woolen fabrics." We do not consider this argument. In re Moureu, 345 F.2d 595, 52 CCPA 1363 (1965). When an examiner's statement is first controverted on appeal to us, especially for lack of evidentiary support, we are not only deprived of the benefit of his views and those of the board on the particular point, but we also lack assurance that the appropriate support could not have been provided, absent the implicit acceptance of the statement's validity by appellants below.
Appellants do not controvert the board's conclusion that heating the diamine to facilitate continuous processing is an old expedient. They merely point out that the Miller et al. patent does not suggest the specific temperatures claimed for that particular purpose. An express suggestion is, of course, not required. In re Rosselet, 347 F.2d 847, 52 CCPA 1533 (1965).
We also agree with the examiner and the board that the limitations directed to the time of contact of diamine and fabric, the removal of excess diamine from the fabric, and the final padding pressure define the most obvious variants of the process disclosed by the reference where, indeed, they define any variant at all.
The decision of the board is affirmed.