This appeal is from the decision of the Patent and Trademark Office (PTO) Board of Appeals (board) affirming the final rejection under 35 U.S.C. § 103 of claims 37, 38, and 44 in application serial No. 96,285, filed by Wertheim and Mishkin (Wertheim) December 8, 1970, entitled "Drying Method." We reverse.
At the outset, we note the prolonged, if not tortuous, prosecution of the present application. During the past decade, this application has appeared before us once before, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (1976) (Wertheim I), and has been involved in an aborted interference, No. 99,688, with a reference patent used in the instant rejection, United States Patent No. 3,482,990 to Pfluger. Only two of the original forty-three claims are now before us, dependent claims 37 and 38, original claim 2 having been rewritten as independent claim 44, the principal claim on appeal.
While the present and related inventions were described in Wertheim I, we give a synopsis of the claimed process, which is for freeze-drying coffee extract. Hot water is percolated through roasted and ground coffee beans to produce an aqueous coffee extract. After concentrating the extract to a point where its solids content is between 35% and 60%, it is charged with a gas to yield a foam. The pressure of the foam environment is regulated to be at least atmospheric pressure so as to avoid evaporative cooling, i. e., thermal loss resulting from vaporization of the aqueous portion of the extract. In the preferred embodiment of claim 37, the foam density is maintained between 0.4 grams per cubic centimeter (gm/cc) and 0.8 gm/cc. Finally, the foam is frozen at the regulated pressure and freeze-dried in a conventional manner. During these "cold" steps, the foam temperature allegedly must be maintained below the eutectic temperature of the extract, i. e., the lowest possible constant-melting point of the mixture to avoid the loss of flavoring compounds through evaporation.
Applications and References
Since both appellants' case and the effective date of one of the references depend on earlier filing dates, we provide the chronological
Date References Appellants ---- ---------- ---------- 1949 Flosdorf March 24, 1961 Pfluger I filed (Ser. No. 98,007) July 24, 1963 Alleged actual reduction to practice by Wertheim August 1963 Sivetz September 17, 1963 Pfluger II filed (Ser. No. 309,410) April 2, 1965 Swiss filing by Wertheim January 13, 1966 Pfluger III filed (Ser. No. 520,347) March 28, 1966 Wertheim A filed (Ser. No. 537,679) February 10, 1969 Pfluger IV filed (Ser. No. 800,353) December 9, 1969 Pfluger Patent issued (No. 3,482,990) December 8, 1970 Wertheim B filed (Ser. No. 96,285, on appeal)
The primary reference, cited by the examiner under 35 U.S.C. § 102(e), is the Pfluger patent which issued on the last of a series of four applications, as shown above. The patent discloses a foam/freeze-dried coffee process for retaining volatile aromatics during the foaming and freezing steps. Improved retention of these compounds is supposedly achieved by avoiding evaporative cooling of a concentrated coffee extract. The Pfluger patent, like appellants' application, calls for maintaining the foam below its eutectic temperature. Claim 2 of the Pfluger patent was copied by appellants for interference purposes and is claim 44 on appeal.
The Pfluger application chain developed as follows: Pfluger IV was designated a continuation of Pfluger III,
Pfluger I did not support all of the limitations of the claims copied from the Pfluger patent. Specifically, it did not disclose concentrating the extract to a solids content of between 35% and 60% prior to foaming. Express disclosure of this limitation did not occur until Pfluger III. It also did not expressly disclose always creating the foamed extract at at least atmospheric pressure, a limitation first found in Pfluger II.
The Sivetz publication is a secondary reference which discloses a non-foamed, freeze-dried coffee process. The vacuum drying of this process results in flaked coffee. The alleged advantage of this type of instant coffee is its excellent solubility in water. However, Sivetz states that "even under ideal freeze-drying conditions, the volatiles of coffee aroma and flavor are not retained any better, if as well, as in spray drying." It goes on to recommend less than 60% water content, and therefore a greater than 40% solids content, in any extract to be freeze-dried.
Flosdorf is an earlier publication also disclosing freeze-drying methods. It states that for economic reasons, one must produce freeze-dried coffee from extracts containing 40% to 50% solids.
In Wertheim I, this court held that interference claims 2 (now 44), 37, and 38 of appellants' still pending application were entitled to the benefit of the Swiss Wertheim application. Approximately eleven months later the PTO declared Interference No. 99,688 between the present application and the Pfluger patent. Appellants were designated senior party because of their Swiss filing date. Pfluger was made junior party.
After considering four motions by Pfluger, the Primary Examiner moved sua sponte to dissolve the interference and granted his own motion. In support of his decision, he stated that the claims copied by Wertheim were unpatentable under 35 U.S.C. § 102(e) and/or 35 U.S.C. § 103 over the Pfluger I and II disclosure in view of Sivetz.
Ex parte prosecution was resumed and the claims on appeal were rejected. The
After admitting in his Answer that the 1961 Pfluger application "fails to set forth specifically the values of the solids content within the range set forth in the Wertheim claims (35 to 60%)," the examiner said:
The board reversed the rejection on § 102(e) alone, but affirmed the §§ 102(e)/103 rejection. In doing so, it stated that the "Pfluger disclosure" was available as a reference under 35 U.S.C. § 102(e). Yet, the § 102(e) rejection was disapproved because not every material element in the appealed claims was disclosed in what the board called the "principal reference."
In awarding the Pfluger patent the benefit of the Pfluger I filing date, the board found "considerable guidance" from those portions of this court's opinion in Wertheim I dealing with process claims 6-14 and 16-29, supra 541 F.2d at 266 et seq., 191 USPQ at 99 et seq. It further noted that the disclosure from Pfluger II had been "carried forward into the patent." The Pfluger II disclosure was then compared to the Pfluger I disclosure, which states in pertinent part (quoted by the board):
Although Pfluger I was said to "not mention `avoiding evaporation' in connection with the foaming and freezing steps," the board found that this concept was expressed in the Pfluger prosecution as early as Pfluger II. Furthermore, it held that the avoidance of evaporative cooling was inherent in the procedure disclosed in Pfluger I, i. e., the creation of a foam at at least atmospheric pressure and the proscription against allowing the frozen foam to melt while being dried. On this basis, the board held that "the substance of the relevant disclosure in Pfluger I was carried forward into the patent."
The secondary references were held to properly establish the obviousness of "the degree of concentration" claimed in the Pfluger patent as of the filing of Pfluger I. Excerpts from both Sivetz and Flosdorf were quoted to demonstrate that concentrating aqueous coffee extracts above a 30% solids content was well known in the art. However, no distinction was made between concentrating extracts for foamed and non-foamed freeze-drying processes.
Reading the board opinion as a whole, it clearly appears that the obviousness rejection under §§ 102(e)/103 was sustained on the basis of teachings which the board found in Pfluger I, read as though it were a proper prior art reference, taken with further suggestions gleaned from Sivetz and Flosdorf, the secondary references. The board said:
Taken by itself, that statement does not show what teaching of Pfluger, out of all four applications, was meant, but the opinion makes clear it was talking about the 1961 Pfluger I application and more particularly, the one sentence therein, previously referred to, which stated:
At the outset, we wish to set forth and characterize the exact nature of the rejection and its statutory basis. While the board stated the rejection to be based upon 35 U.S.C. § 103, we note that it is more properly viewed as a 35 U.S.C. § 102(e)/35 U.S.C. § 103 rejection. Because this distinction
I. §§ 102(e)/103 Rejections
Section 102(e), a codification of the rule of Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390, 46 S.Ct. 324, 70 L.Ed. 651 (1926), reads as follows:
In Milburn, a patent infringement suit, the court held that material disclosed but not claimed in a United States patent may be used as a reference to anticipate a later invention as of the date the reference application was filed, rather than the date the patent finally issued.
The plaintiff in that case sued for infringement of Whitford's patent, which had issued on June 4, 1912, after being applied for on March 4, 1911. One Clifford had filed an application for a patent on January 31, 1911, which "gave a complete and adequate description of the thing patented to Whitford but * * * did not claim it." A patent issued to Clifford on February 6, 1912. Whitford could not prove a date of invention prior to his application date and, thus, his date of invention was after the Clifford application date but before the date Clifford's patent issued.
Although Clifford's application was not a matter previously "known or used," nor a patent or a printed publication, the Supreme Court reasoned that "the delays of the Patent Office ought not to cut down the effect of what has been done." The Clifford application was thus held to be prior art against the Whitford patent as of the former's filing date.
The Supreme Court in Hazeltine Research Inc. v. Brenner, Com'r, 382 U.S. 252, 86 S.Ct. 335, 15 L.Ed.2d 304, 147 USPQ 429 (1965), subsequently held that Milburn and § 102(e) may be applied to determine what is "prior art" under the § 103 requirement. Section 103 states in relevant part that
While nowhere in Title 35 are the words "prior art" defined, the Senate and House Reports accompanying the 1952 Patent Act state:
Additionally, one draftsman of and the commentator on the 1952 Act, P. J. Federico, commented that:
Commensurate with the Senate Report and Mr. Federico's commentary, we have held that the term "prior art" refers "to at least the statutory prior art material named in § 102." In re Yale, 52 CCPA 1668, 347 F.2d 995, 146 USPQ 400 (1965). See In re Harry, 51 CCPA 1541, 333 F.2d 920, 142 USPQ 164 (1964).
In Hazeltine, the court stated that earlier-filed applications for patents of another describing, although not necessarily claiming, the invention claimed in a later-filed application, are prior art under § 102(e) and are available for consideration in support of a § 103 obviousness rejection of the later-filed application. See In re Bowers, 53
In Hazeltine, Regis filed an application for patent on December 23, 1957. The examiner rejected the claims as obvious under § 103 in view of the disclosures of two patents, Carlson and Wallace. Carlson was issued eight years earlier and was clearly a valid reference. Wallace, however, was pending at the time of Regis' application, and had been filed almost four years earlier, prompting Regis to argue that it was not "prior art" because its disclosures were secret and not known to the public. In dismissing this argument, the Supreme Court stated (382 U.S. p. 255, 86 S.Ct. p. 338):
The §§ 102(e)/103 rejection, thus, is one utilized where § 102(e) alone may fail because not every material limitation of the claimed invention is disclosed in the reference. That reference, referred to as "prior art" in § 103, may be combined with another to support an obviousness rejection. See In re Caveney, 55 CCPA 721, 386 F.2d 917, 155 USPQ 681 (1967).
A different situation arises where, unlike Milburn or Hazeltine, the reference patent issues not after only one application, but after a series of applications. In other words, after permitting the use of a patent reference in both § 102(e) and §§ 102(e)/103 rejections as of the reference filing date, the next question confronting the courts was what filing date was to be accorded a reference patent which issues after a series of applications. How far back can one extend the effective date of a reference patent as "prior art" in such a case?
II. 102(e) and Continuation Applications
In In re Lund, 54 CCPA 1361, 376 F.2d 982, 153 USPQ 625 (1967), this court was called upon to decide whether a certain compound disclosed in Example 2 of an application filed by Margerison on September 29, 1958, was available as prior art as of that filing date to reject Lund's claims, which were presented in an application filed almost a year later. Although Margerison abandoned the application, he had filed a continuation-in-part application, without Example 2, which resulted in issuance of the reference patent. The court stated it to be
In deciding what had been "carried over," the court held that merely designating an application as a continuation-in-part was not sufficient to incorporate by reference the disclosure of the abandoned application into the patent disclosure, "as if fully set out therein." The court concluded that:
In In re Klesper, 55 CCPA 1264, 397 F.2d 882, 158 USPQ 256 (1968), the PTO rejected Klesper's claims as fully anticipated by a Frost patent under § 102(e) because Klesper could not antedate the effective date of the reference. The issue before this court was what that effective date was. Frost and Klesper had filed applications for patent on October 20, 1955, and September 18, 1956, respectively. Frost then filed a continuation-in-part application on April 1, 1959, which application culminated in the issuance of a patent on January 8, 1963, containing the 1959 disclosure. On January 6, 1964, Klesper filed a continuation-in-part application. The PTO gave the Frost patent the benefit of its parent filing date, October 20, 1955.
The court stated that § 102(e) was a codification of the historical treatment of a U. S. patent disclosure "as prior art as of the filing date of the earliest U. S. application to which the patent is entitled, provided the disclosure was contained in substance in the said earliest application." Thus, the determinative question became whether or not the subject matter of the appealed claims was disclosed both in the abandoned application and in the patent. The court agreed with the PTO conclusion that:
The Klesper case thus dealt with the dating back of a patent reference to gain the benefit of an earlier filing date. Lund was not so concerned, however, and considered only whether a disclosure appearing only in an abandoned application was to be regarded as prior art under § 102(e). Both cases involved rejections based upon § 102(e) alone.
We now come to the situation in the instant case, one which we believe has not heretofore been before us.
III. Continuing Applications and Rejections Under §§ 102(e)/103
We begin by noting the factual differences between this case and Hazeltine. In Hazeltine the Court utilized all of the reference patent disclosure as prior art. But because that disclosure was insufficient to support a rejection under § 102(e) alone, the Court approved combining it with a second reference for purposes of determining obviousness. In this case, utilization of all the reference patent disclosure would, of course, suffice to support a rejection, if its date is early enough, because Wertheim copied the Pfluger patent claims for interference. That disclosure, however, cannot be given an effective filing date early enough to antedate the Wertheim Swiss filing date. See Wertheim I. The PTO,
A. The Rejection
In the instant case, the examiner relied on Pfluger patent 3,482,990 and the Sivetz et al. publication and rejected the claims "under 35 U.S.C. § 102(e) and/or § 103 as unpatentable over Pfluger * * * in view of Sivetz et al," saying that "Pfluger is entitled to the benefit of" Pfluger's 1961 filing date. The examiner also said, "Note 35 U.S.C. 120," but made no specific application thereof. Without addressing the relevance of this statute, the board said:
The board was there distinguishing In re Samour, 571 F.2d 559, 197 USPQ 1 (CCPA 1978), wherein this court said, "every material element of the claims was disclosed in the principal reference." It thus appears that the board was pointing out, backhandedly, that every material element of the Wertheim-Pfluger claims was not disclosed in the "principal reference."
It is of further interest to consider what the board meant in the above quotation by "principal reference" in referring to the instant case. The examiner's "principal reference" was the Pfluger patent; but there is no question that it discloses every element of the claims on appeal, which claims were copied by Wertheim from that patent. Therefore, the board could not have been referring to the Pfluger patent as the "principal reference" and the only possible deduction is that it was referring to the Pfluger I application. Therein lies its first error, for an abandoned application by itself can never be a reference. In any event, on the basis of the failure of disclosure in Pfluger I noted above, the board refused to sustain the rejection on § 102(e) alone, and affirmed only the rejection of the claimed invention as obvious under § 103.
B. Section 103
In every case, "the invention" referred to in § 103 is nothing more nor less than the subject matter being claimed by the applicant, which is the starting point of all inquiry about obviousness. Claim 44, the independent claim at bar, reads:
Claim 37 merely adds the limitation that the overrun density be between 0.4 to 0.8 gm/cc, and claim 38 adds a different limitation, freeze drying at a pressure of about 150 to 175 microns.
Looking now to the basis of the § 103 rejection, regardless of what may have been in the minds of the board members, the principal reference to support this rejection
C. Sections 102(e) and 120
We are asked by the PTO to apply the "carried over" principle set forth in Klesper to the present §§ 102(e)/103 rejection. Specifically, the solicitor argues that since this court said in Wertheim I that Pfluger II was "carried forward" into the Pfluger patent, and Pfluger I discloses essentially the same invention as Pfluger II, the Pfluger reference patent must be awarded the benefit of the Pfluger I filing date.
In responding to this argument, we first note that the Pfluger patent issued after a series of applications, the initial one (I), two continuation-in-part applications (II and III), and a continuation application (IV). Let us assume that Pfluger I disclosed subject matter A. Because two continuation-in-part applications followed, II may be said to contain subject matter AB, B representing new matter, and III may be said to contain ABC, C representing the additional new matter in that application. Continuation application IV, of course, also contains subject matter ABC.
Instead of determining what filing date the Pfluger patent was entitled to as a § 102(e) reference for purposes of the §§ 102(e)/103 rejection, however, the board relied upon the language in Lund, that a disclosure which is "carried over" into the patent from previous applications may be used to defeat the patent rights of another inventor. In other words, rather than examining the Pfluger patent in the light of §§ 120 and 112, it reached back to Pfluger I and retrieved A, found it "carried over" into the patent and combined it with a secondary reference to find the Wertheim invention obvious.
Although this court apparently embraced this procedure in Wertheim I, such an approach in a situation where there are continuation-in-part applications ignores the rationale behind the Supreme Court decisions in Milburn and Hazeltine that "but for" the delays in the Patent Office, the patent would have earlier issued and would have been prior art known to the public. The patent disclosure in Milburn was treated as prior art as of its filing date because at the time the application was filed in the Patent Office the inventor was presumed to have disclosed an invention which, but for the delays inherent in prosecution, would have been disclosed to the public on the filing date. A continuation-in-part application, by definition, adds new matter to the parent application previously filed. Thus, the type of new matter added must be inquired into, for if it is critical to the patentability of the claimed invention, a patent could not have issued on the earlier filed application and the theory of Patent Office delay has no application.
Initially then, the question becomes the familiar one of which filing date the Pfluger patent is entitled to for various purposes, including its effectiveness as a § 102(e) reference under § 103 evidencing "prior art." Lund, supra. It is clear that it cannot be used as a reference under § 102(e) alone against the Wertheim invention as of the date of a Pfluger application which does not describe the Wertheim invention, as claimed. See In re Smith, 59 CCPA 1025, 458 F.2d 1389, 173 USPQ 679 (1972).
The conditions under which a filing date earlier than that of the last in a series of applications on which a patent issues may be accorded to a patent with respect to any given claimed subject matter are clearly set forth in § 120:
We omit the balance of the section because there is no question here about compliance with its terms. The first paragraph of § 112 reads:
We emphasize that the above noted statutes, §§ 102(e), 120, and 112, speak with reference to some specific claimed subject matter by use of the terms emphasized. It is axiomatic in patent law that questions of description, disclosure, enablement, anticipation, and obviousness can only be discussed with reference to a specific claim which identifies "the invention" referred to in the statutes.
Thus, the determinative question here is whether the invention claimed in the Pfluger patent finds a supporting disclosure in compliance with § 112, as required by § 120, in the 1961 Pfluger I application so as to entitle that invention in the Pfluger patent, as "prior art," to the filing date of Pfluger I. Without such support, the invention, and its accompanying disclosure, cannot be regarded as prior art as of that filing date.
As previously noted, new matter can add material limitations which transform an unpatentable invention, when viewed as a whole against the prior art, into a patentable one. A continuation-in-part application, unlike a continuation application, does not necessarily insure that all critical aspects of the later disclosure were present in the parent. Thus, in a situation such as this, only an application disclosing the patentable invention before the addition of new matter, which disclosure is carried over into the patent, can be relied upon to give a reference disclosure the benefit of its filing date for the purpose of supporting a §§ 102(e)/103 rejection.
D. The Pfluger I Disclosure
Although the board and the examiner have tacitly, if not expressly, admitted that Pfluger I does not disclose the claimed invention — indeed, that fact can be implied from the § 103 rejection for obviousness as well as from the board's reversal of the rejection based on § 102(e) alone — we here devote some necessary discussion to this factual issue.
In the course of answering appellants' argument that they had been put into a situation where they could not contest priority with Pfluger or take advantage of 37 CFR 1.131, the board said:
The only date the Pfluger patent has under § 102(e) is February 10, 1969, the filing date of Pfluger IV, the application on which the patent issued. Any earlier U. S. filing date for the patent necessarily depends on further compliance with §§ 120 and 112. The board appears to have assumed the existence of the very point at issue here — whether the patent reference is entitled to a March 24, 1961, filing date.
We take note of two claim limitations missing from Pfluger I but present in the Pfluger patent which answer the question of whether to award the 1961 filing date to the § 102(e) reference patent disclosure. Pfluger I did not expressly disclose either concentrating the coffee extract to a 35% to 60% solids content, or avoiding evaporative cooling during the foaming and freezing steps. If either limitation, later added as new matter, resulted in the disclosure of a patentable invention for the first time, it is relevant to our determination of whether the Pfluger patent receives the benefit of the Pfluger I filing date.
The board did not "attach any significance" to the absence of express language disclosing the avoidance of evaporative cooling. Since the Pfluger I application disclosed gas injection into the extract "at at least atmospheric pressure," the board held that the above concept was inherently disclosed in the Pfluger I method.
Moreover, the board gave little weight to the addition of a solids content range in Pfluger III. Even though the examples in Pfluger I did not illustrate concentrating coffee extracts above 30%, the general statement in Pfluger I about concentrating extracts was said not to be limited in scope to the specific examples. Thus, the board apparently did not find either of the above claim limitations to be new matter, much less relevant new matter.
A closer examination of the Pfluger file history reveals that the above limitations were relevant, indeed, critical new matter. From Pfluger II on, the patentee argued with the examiner over that feature of his process which he believed made the invention patentable — the avoidance of evaporative cooling. However, it was not until after the filing of Pfluger III that the first allowance of claims occurred. There the patentee successfully distinguished the prior art by expressly stating the conditions under which such cooling is avoided. Both at least a 35% solids content and foaming under "conditions which avoid the evaporation of water" were allegedly necessary for allowance. It was the combination of these steps, and others, which was held to be a patentable invention and deemed allowable by the examiner in Pfluger III. In fact, during the prosecution of Pfluger IV, the examiner required that Pfluger specify the minimum level of concentration for the coffee extract — at least 35%.
The board erred in ruling that since "the substance of the relevant disclosure in Pfluger I was carried forward into the patent," that same disclosure in the reference patent was entitled to the Pfluger I filing date, even though the entire patent was not. While some of the reference patent disclosure can be traced to Pfluger I, such portions of the original disclosure cannot be found "carried over" for the purpose of awarding filing dates, unless that disclosure constituted a full, clear, concise and exact description in accordance with § 112, first
The two claim limitations of the reference patent missing from Pfluger I were a necessary part of the only patentable invention ever set forth in the Pfluger file history. These limitations, however, were neither expressly nor inherently part of the original Pfluger disclosure. Absent these steps, the Pfluger I filing date cannot be accorded to the Pfluger patent reference. Without that date, the reference does not antedate Wertheim's alleged actual reduction to practice and cannot be combined with another reference to support a § 103 rejection.
To look at it another way, without the benefit of the Pfluger I filing date, that part of the reference patent disclosure relied upon cannot be said to have been incipient public knowledge as of that date "but for" the delays of the Patent and Trademark Office, under the Milburn rationale. Here, it cannot be said to have been "carried over" into the reference patent for purposes of defeating another's application for patent under §§ 102(e)/103.
The dictum in Lund,
is hereby modified to further include the requirement that the application, the filing date of which is needed to make a rejection, must disclose, pursuant to §§ 120/112, the invention claimed in the reference patent. Where continuation-in-part applications are involved, the logic of the Milburn holding as to secret prior art would otherwise be inapplicable. Without the presence of a patentable invention, no patent could issue "but for the delays of" the PTO.
Since the patent disclosure used in the present rejection is not effective as a reference as of the Pfluger I filing date, the decision of the board affirming the §§ 102(e)/103 rejection of claims 37, 38, and 44 is reversed.
In this case, unlike Wertheim I, the board and the examiner rely upon the Pfluger I filing date, not the Pfluger II filing date. Therefore, we need not, and do not, reach any conclusions as to whether the latter date is effective against either the present "interference" claims or the "non-interference" claims of Wertheim I. We note, however, that the court in Wertheim I evidently did not utilize the principles of law we herein announce, which include a modification of the Lund dictum. See note 4 and accompanying text infra.