Application of David Bandel , 348 F.2d 563 ( 1965 )

MARTIN, Judge.

David Bandel appeals from the action of the Board of Appeals affirming the examiner’s rejection of elaims 24 to 36 and 38 to 40, all the remaining claims, of his application serial No. 521,984, filed July 14, 1955, for Tobacco Sheet Material and Method of Forming, a continuation-in-part of serial No. 468,270, filed Nov. 12, 1954.

The application relates to the conversion of tobacco particles into compositions in a form, such as sheets, suitable for use in manufacturing cigarettes, cigars, pipe tobacco, chewing tobacco and the like. It states that film-forming agents in such compositions should not introduce any offensive odor, taste or color into the tobacco or tobacco smoke or alter substantially the natural properties of the tobacco as a smoking product. Suitable compositions are described as comprising a mixture of particles of finely-divided,, dry-ground tobacco, adhered together by a plant gum adhesive such as the galactomannan plant gum, locust bean gum, and teaches that other substances may be added. Thus, it is said that glycerin may serve as a humec-tant or plasticizer, while glyoxal seems to improve water resistance and paper-pulp mechanically reinforces the film forming agent.

Claims 24, 29, 30, 33 and 38 are representative :

24. A composition of matter comprising in combination a major proportion by weight of said composition of finely divided dry ground tobacco which will pass through a 20 mesh screen and be mostly retained by a 325 mesh screen, moisture between 8% and 24% by weight of said composition, and a minor proportion of galactomannan plant gum, between 0.5% and 33% by weight of said composition, said gum serving as an adhesive to hold together said tobacco.

29. A composition according to Claim 24 which includes glyoxal.

30. A composition of matter comprising in combination particles of finely divided dry ground tobacco adhered together by a galactoman-nan plant gum adhesive.

33. A smoking article made at least in part from a composition of matter which comprises dry ground tobacco particles held together by galactomannan adhesive.

38. The method of making a tobacco product which comprises mixing together galactomannan plant gum adhesive and finely divided dry ground tobacco in the presence of moisture to form a viscous mass and shaping said viscous mass into a tobacco product by extrusion.

The present application has been involved in two interferences, both of which terminated adversely to appellant. The first, No. 87,744, involved two counts copied from Samfield et al. Patent No. 2,708,175 issued May 10, 1955 on an application filed May 28, 1954. Count 1 reads:

1. A composition of matter suitable for smoking consisting by weight of a minor proportion, about 1% to 20%, of a plant gum consisting essentially of galactomannan, approximately 9% to 13% of moisture, and the balance essentially all dry-ground tobacco with the individual finely-divided fragments thereof cohered together so as to have, when formed in sheets of about the thickness of natural leaf tobacco, a tensile strength approximately equal to the tensile strength of such leaf tobacco.

Count 2 differs in reciting the specific gum “locust bean gum” instead of “a plant gum consisting essentially of ga-lactomannan.”

The other interference, No. 89,623, was on three counts copied verbatim from a reissue of the above patent, Reissue No. 24,424, issued February 4, 1958. Those counts differ from the counts of the previous interference principally in the inclusion of a humectant. Count 1 of interference No. 89,623 is representative:

A composition of matter suitable for smoking consisting by weight of a minor proportion, about 1% to 20%, of a plant gum consisting essentially of galactomannan, approximately 9% to 13% of water, a humectant in an amount not exceeding about 12%, and the balance essentially all dry-ground tobacco with the individual finely-divided fragments thereof cohered together so as to have, when formed in sheets of about the thickness of natural leaf tobacco, a tensile strength approximately equal to the tensile strength of such leaf tobacco.

The examiner relied on the Samfield et al. patents in rejecting the claims and also on the following:

Frankenburg et al. 2,592,553 Apr. 15, 1952

Wells etal. 2,433,877 Jan. 6, 1948

E. Anderson — Endosperm Mucilages of Legumes, Journal of Industrial and Engineering Chemistry, December 1949, Volume 41, No. 12, pages 2887-2890.

Jurgensen 2,734,509 Feb. 14, 1956 (filed December 20, 1951)

Condensed Chemical Dictionary, Reinhold Pub. Corp. (1950), p. 323.

The Samfield et al. patents disclose a reconstituted smoking tobacco composition which consists essentially of a major proportion of fragmented tobacco and a minor proportion of galactomannan plant gum¹ plus added moisture in the form of water alone or water and a suitable humectant such as glycerin. That composition is disclosed as in sheet form and of a thickness and strength approximating that of natural tobacco leaf and as suitable for blending with leaf tobacco in the manufacture of cigarettes, cigars and other forms of smoking tobacco.

Frankenburg et al. discloses a reconstituted tobacco comprising dry-ground tobacco and a binder therefor.

Wells et al. discloses reconstituted tobacco compositions and methods of making them. As one of the steps of the method, it discloses extrusion of fila-

ments of the composition through nozzles. Also described is the use of fibers to reinforce sheet material made from finely ground tobacco particles held together in a matrix.

The Anderson reference discloses that locust bean gum and Kentucky coffee gum both contain galactomannan gums.

The Jurgensen patent describes reconstituted tobacco sheet material comprising ground tobacco, carboxymethyl cellulose, glyoxal and glassine pulp.

The examiner stated in his answer that claims 24, 25, 30, 32 through 36 and 39 were rejected on either Samfield et al. patent alone. Also he stated that claims 24 through 29, 31, 32, 38 and 40 were rejected on Samfield et al. taken with certain of the other references, pointing out features that the latter references were regarded as suggesting. An affidavit under Rule 131 filed by appellant was acknowledged by the examiner but was deemed not to overcome the Samfield et al. patents. The examiner did not discuss the substance of the affidavit but based his conclusion concerning it on his view of the effect of the two interferences with Samfield et al. which terminated adversely to appellant. In that connection he cited In re Derleth, 118 F.2d 566, 28 CCPA 973, stating:

In In re Derleth, supra, it was held that when, in the case where an applicant was in interference with a patentee and the applicant was notified that claims not forming the counts of the interference would be held subject to rejection as unpat-entable over the issue in the event of an award of priority adverse to the applicant and the applicant has not been shown to object to such disposal of the said claims not forming the counts of the interference, the patentee had a right to rely upon this disposition of the matter and was not called upon, in order to protect his rights to copy said non-involved claims of the applicant.

The examiner pointed out that it was stated in the letter notifying appellant of the first interference with Samfield et al. that claims 2, 4, 5, 6, 7, 8, 9, 13 and 17 of the application would be held subject to rejection as unpatentable over the issue in the event of an award of priority adverse to appellant. He also quoted from Derleth as follows (118 F.2d at 569, 28 CCPA at 977):

It seems to us that here is a clear case of estoppel in pais against appellant. Upon the record before us we must assume that he did not object to the holding that claims such as are here involved would be held subject to the outcome of the interference. The patentee Askenasy therefore had a right to rely upon this disposition of the matter and was not called upon, in order to protect his rights, to copy the rejected claims of appellant’s application. The patentee may well have been satisfied with the claims in his patent, for he was assured that if he won the interference appellant could not secure broader claims dominating the claims of his patent.

The answer further states that “it is the position of the Examiner that in the case at bar the facts warrant a holding of estoppel, just as was done in the Derleth case.” In support of that conclusion, the examiner stated that appellant had ample opportunity to voice objections to the statement regarding the other claims in the application, either directly, in the motion period or in the period when the reissue application was open to him as a result of notice given him by the Commissioner upon the filing of that reissue application. It was also the view of the examiner that appellant could, through the provisions of section 1101.02 B ² of the Manual of Patent Examining Procedure (M.P.E.P.), have taken action to substitute in the interference counts which were broader than the Samfield et al. patent claims and thereby obtain the benefit of any priority evidence he might have relating to such broader subject matter.

The board regarded the examiner as having rejected the claims for two separate reasons. It stated:

As we view the Examiner’s Answer, he has considered the appealed claims as unpatentable for two reasons: first, the affidavit under Rule 131 is insufficient to overcome the Samfield et al. patents, and these patents therefore stand as proper references, and the claims on appeal are not patentable over the references relied on as set forth * * * [in] his answer; second, the Examiner has taken the position that appellant is estopped from now urging the allowability to him of claims that are broader than those involved in the above noted interferences, by his failure to present such broader claims during the pendency of those interferences * * *.

With reference to the first of those reasons, the board noted that Rule 131 is limited to overcoming a patent “which substantially shows and describes but does not claim” the rejected invention. It then stated:

Comparing claim 24 of this application with claim 1 of Samfield et al. * * * [2,708,175] we find that claim 24 differs therefrom by omitting the statement that the composition is “suitable for smoking,” it recites a composition “comprising” certain materials instead of “consisting of” those materials, the ranges of moisture content and galaetoman-nan are wider in claim 24, and the range of sizes of the tobacco is recited, whereas the patent claim omits any size limitation. The same materials are recited in both present claim 24 and the patent claim, and while the word “comprising” indicates that the composition may have other ingredients therein, the same materials are spelled out in both claims. The use of the word “comprising” instead of “consisting of” and the variation in the ranges and sizes of the materials used, as recited in these claims, merely constitute differences in scope between the claim of this application and the claim 1 of the patent and hence the patent and the application are claiming the same invention. Since the patent and the application are claiming the same invention, although the claims differ in scope, we agree with the Examiner that Rule 131, Rules of Practice, is not the proper remedy to overcome the Samfield et al. patents, and the Samfield et al. patents are proper references for everything disclosed therein, since these patents were the winning parties in the above noted interferences with appellant. The question of patentability between parties claiming the same subject matter can be determined only by interferences.

We have carefully considered the rejection of claims 24 through 36, and 38 through 40 on the references as set forth * * * [in] the answer and we agree with the Examiner’s rejections as there set forth, and for the reasons there stated. * * *

Specifically with respect to the question of “estoppel” arising out of the interference, the board stated that admittedly there are some situations in which a losing party to an interference may be entitled to broader claims than the winning party but held the present case not to constitute such a situation. It pointed to section 1101.02 B, M.P.E.P. as available where the applicant in interference can make a satisfactory showing as by demonstrating that his best evidence lies outside the exact limit of the patent claim. It considered the decision of the District Court in the first interference, American Machine & Foundry Company v. Liggett & Myers Tobacco Co., 172 F.Supp. 12 (D.N.J.1959), aff’d. 272 F.2d 451 (3rd Cir. 1959), and stated:

* * * In that decision, the court held that in all runs or procedures except the one designated as “the ferrotype run,” all adhesive mixtures contained nontobacco additives not disclosed in the canceled claims of the present application which were then before the court as counts of interference No. 87,744. See page 138, column 1 of 121 USPQ * * The counts being considered by the court defined a composition “consisting of” certain materials, but since all of the runs except the ferrotype run included other materials which, according to the testimony, materially affected the locust bean gum, an element of the claimed composition, the court held that those other runs were not within the counts which were limited to the specific materials named. It is therefore apparent that appellant had proof available to support claims such as those now on appeal which are not limited to the specific materials of the counts of the previous interferences, since the claims on appeal recite a composition, or method of making a composition “comprising” the named materials and hence not specifically limited to those materials. Therefore the broader claims now on appeal appear to be susceptible of proof by evidence outside the limit of the patent claims involved in the interference, and therefore appellant should have availed himself of the procedure as set forth in the section of the Manual above referred to, whereby the question of who was entitled to the broader claims such as now presented could have been determined during the previous interferences.

The board agreed with the examiner’s application of the Derleth case here and affirmed the rejection of claims 24, 25, 30 and 32 to 36 on the ground of estoppel stating:

We consider claims 24, 25, 30 and 32 through 36 as being drawn to the same invention as were the counts in interferences 87,744 and 89,623, were fully supported by the disclosures in the Samfield et al. applications, and differ from the counts by being broader in scope only, and the patentability to appellant of the broader claims should have been determined in the previous interference.

The board did not affirm the rejection of claims 26 to 29, 31 and 38 to 40 on that basis, however. It held that claims 26 to 29 and 31 include specific materials not disclosed in Samfield et al. It further noted that claims 38, 39 and 40 are drawn to a method and stated that they “could not have been included in the previous interferences because Samfield et al. did not include any claims to the method of making the product, and hence the method did not find support in Sam-field et al.”

Appellant argues in his brief that “there is no rejection in this case on the ground of estoppel,” apparently basing that argument on the contention that estoppel was discussed in the final rejection only in considering the case of the Samfield et al. patents as proper references. However, he states that the board’s decision “rests on two principal grounds,” describing the second as being “that appellant is estopped from urging allowability to him of the rejected claims by reason of his failure to present such claims during the pendency of the two interferences.” Also, appellant specifically acknowledges a rejection on estoppel in the reasons of appeal numbered 12 and 13, the former charging that the board “erred in affirming the decision of the Examiner that applicant is estopped from urging the allowability to him of claims that are broader than the counts of the interferences in which this application was involved.”

We think it clear from the detailed discussion above of the examiner's answer and the board’s decision that both relied on an “estoppel” corresponding to that found by this court in the Derleth case. Appellant could not have been unaware of such position and apparently felt he had ample opportunity to respond to it since the record does not show that he took action to file a reply brief or obtain reconsideration by the board. Before us, appellant has fully briefed the rejection on that ground.

Determination of the-merits of that rejection requires consideration of the differences between claims 24, 25, 30, and 32 through 36, involved herein, and the interference counts, particularly those of No. 87,744, the interference with the original Samfield et al. patent. Count 1 of that interference set out hereinabove, calls for a composition “consisting” of a plant gum consisting essentially of galactomannan, moisture, and “the balance essentially all” dry-ground tobacco. Count 2 defines the composition as “consisting” of locust bean gum, moisture and “the balance essentially all” dry-ground tobacco. The District Court held that, because of the expressions using “consisting” and “essentially” as quoted, were not open to the inclusion of other additives which materially affect the characteristics of the composition. The court found that glyoxal and glassine paper fiber, included in certain runs relied on by appellant for reduction to practice prior to the Samfield et al. filing date did affect the characteristics of the product so as to exclude those runs from the counts.

Appealed claims 24, 30 and 32 through 36 call for a composition “comprising” ground tobacco and galactomannan plant gum or a smoking article made from such a composition. Claim 25 calls for a composition according to claim 24 in which the plant gum comprises locust bean gum, a particular gum named in the Samfield et al. patents as well as in the present application. Appellant, as well as the examiner and board, have treated those claims as generic, dominating the interference counts awarded to Samfield et al. as well as other appealed claims which include additional ingredients that the District Court found to affect the characteristics of the composition.

The situation here is closely analogous to that in the Derleth case. As in Der-leth, appellant here was informed in the letter declaring Interference No. 87,744 that certain claims in his application, including an article claim which is clearly broader than the counts in the use of the term “comprising” ³ would be held subject to rejection as unpatentable over the issue in the event of an award of priority adverse to him. Also appellant took no action during the pendency of the interference to make known any disagreement with that holding. In particular, appellant did not take action under the procedure of M.P.E.P., Section 1101.02 B, to place a claim to broader subject matter in issue by demonstrating that his best evidence lies outside the terms of the Samfield et al. patent claims constituting the counts.

Appellant urges that procedure was not available because the difference between the broader claims he now seeks and the interference issue is not merely a difference in scope but was held by the District Court to be a patentable distinction. That latter contention is clearly erroneous. The District Court merely ruled that compositions of appellant which included an additive excluded from the interference counts through their use of “consisting” and “essentially” did not fall within the terms of those counts. The court made no ruling that a patentable difference is involved. The composition claims here define a composition or mixture made up of a plurality of component materials.⁴ Neither they nor the counts of the interference define the subject matter as involving a chemical reaction between the component materials. Thus the difference that results from the use of the term “comprising” in the appealed composition claims and the terms “consisting” and “essentially” in the counts is merely a matter of scope in a mechanical mixture and not a matter of chemical genus and species relationship.

For the same reasons as in the Derleth case, we think the patentees Samfield et al., who won the interference, were not called upon to introduce the broader subject matter by reissue to protect the rights they might have therein. Although the present proceeding is what is termed “ex parte” with Samfield et al. having no right to be heard, obviously it is actually the direct outgrowth of the interferences and the outcome as to the claims to broader subject matter affects the position of Samfield et al. Allowance ■of those claims would render the lengthy interference proceedings ineffective to ■determine the basic rights of the parties. Consistent with our decision in the Derleth ease, we hold appellant is barred from obtaining claims 24, 25, 30 and 32 through 36 by his failure to take the opportunity available to him to prove priority as to them in the interferences.

The decisions relied on by appellant .are clearly distinguishable from the present case on the facts. Thus, Ex parte Des Rosiers, 17 USPQ 272 (Bd.App. 1933) was clearly distinguished in Der-leth where this court pointed out that it did not appear in the former case that there was a holding during the interference that claims dominating the counts would be held subject to the outcome of the interference.

In the case of In re Long, 83 F.2d 458, 23 CCPA 1078, dominating claims were allowed to the losing party in an interference on the basis of a situation entirely different from that here. There the record showed that Long’s claims to the broad subject matter involved in the appeal stood allowed to him from the first action in the appealed application and that all parties to the three party interference recognized that both of Long’s opponents had, either expressly or by their conduct, “disclaimed inventorship and waived any rights to any claim of in-ventorship in said broad subject-matter.”

Another decision cited by appellant is In re Henderson, 50 App.D.C. 191, 269 F. 707 (D.C. Cir. 1921) which he attempts to distinguish. There an applicant who lost an interference with a patentee sought claims dominating the interference counts. The court noted that Henderson did not present the broader claims until after the time within which his opponent could have sought broader claims by reissue and held as a result that he was barred from obtaining them in subsequent ex parte proceedings. Appellant urges that the present case differs from the Henderson situation because the Samfield et al. disclosure would not have supported the present claims and because Samfield et al. knew from inspection of appellant’s case that appellant disclosed and claimed a broader invention. As to the first contention, we have already concluded that Samfield et al. has support for the subject matter of claims 24, 25, 30 and 32 through 36. With respect to the second contention, the solicitor points out in the brief for the Commissioner:

Of the original claims, only claims 1 through 13 and 20 are product claims. Of these only claims 1, 4 through 7, and 20 are drawn generically to “galactomannan” gum rather than to species such as “locust bean gum”. All of these “galacto-mannan” claims recite the term “consisting” and/or “consisting essentially of.” Original claims 3 and 8 through 13 are drawn to the species “locust bean gum.” None of these original product claims (including claims 1 and 3 corresponding to the counts of the first interference) is as broad as the appealed “galactomannan” and “comprising” claims 24, 30, and 32 through 36 presented for the first time after the first interference was terminated in the Patent Office and after it was too late for the patentees to obtain broadened reissue claims. * * *

Thus appellant at the time of the interference, was not seeking any product claims as broad as claims 24, 25, 30 and 32 through 36 as to both the terms “comprising” and “galactomannan.” Therefore, the Henderson case gives additional support to the rejection of those claims.

For the foregoing reasons, we are satisfied that the board correctly held claims 24, 25, 30 and 32 through 36 to be unpatentable to appellant on the basis of his failure to present them for adjudication in the interference.

In view of our conclusion that the rejection of claims 24, 25, 30 and 32 through 36 must be affirmed on the basis of the estoppel rejection, the other rejection as unpatentable over one or both Samfield et al. patents, either alone or in view of second references will be considered only with respect to remaining claims 26 through 29, 31 and 38 through 40. Both the examiner and the board considered to be inapplicable an affidavit under Buie 131 filed by appellant in an effort to antedate the Samfield et al. patents, the board stating that the “patent and the application are claiming the same invention, although the claims differ in scope.” The board further stated:

* * * The Samfield et al. patents are proper references for everything disclosed therein, since these patents were the winning parties in the above noted interferences with appellant. * * * [Emphasis ours.]

It was also stated by the board:

* * * Appellant has not pointed out wherein the appealed claims are not readable on the subject matter described by the Samfield et al. patents by themselves or taken with the secondary references, substantially his whole argument in his brief and reply brief being directed to the question as to whether broad claims should have been included in the previous interferences.

The rejection utilizing Samfield et al. as references thus is not based on reliance on the claims as counts which formed the issue of the interference or on such disclosure as corresponds to the counts. Instead, it clearly is a rejection on prior art with those patents relied on as proper references (prior art) for “everything disclosed therein.”

There are decisions, of which In re Boileau, 163 F.2d 562, 35 CCPA 727, and In re Gregg, 244 F.2d 316, 44 CCPA 904, are exemplary, which in effect treat the disclosure of a winning party involved in interference as an applicant as constituting prior art against the losing party, subject to combination with other prior art to reject claims in the losing party’s application. We also note that M.P.E.P. 1109.02B states:

Except as noted in the next paragraph (judgment based solely on ancillary matters), any remaining claims in each defeated party’s case should be reviewed in connection with the winning party’s disclosure. Any claim in a losing party’s case not patentable over the winning party’s disclosure, either by itself or in conjunction with art, should be rejected. * * * However, a losing applicant may avoid a rejection based on unclaimed disclosure of a winning pat-entee. * * *

Samfield et al. having been involved in the interferences as patentees, it is the last sentence quoted above that is pertinent here. As the board recognized in reversing what it termed the estoppel rejection of the claims now under consideration, claims 26 through 29 and 31 include specific materials not disclosed by Samfield et al. and claims 38 through 40 are drawn to a process whereas the Samfield et al. patents do not include any process claims. The board further recognized that those claims could not have been included in the interference. Thus appellant has not had the opportunity to prove priority as to everything disclosed in the patents but only to such subject matter as is claimed therein or might have been substituted under the procedure of M.P.E.P. Section 1101.02 B, discussed hereinabove.

The situation here thus differs from that where, as in the Boileau and Gregg cases, supra, the interference was between applications and both parties had the opportunity to put any common patentable subject matter in issue. Certainly a party losing an interference to a patentee cannot properly be denied a chance to overcome the disclosure of the patentee as to subject matter which does not correspond to the issue of the interference or as to which he is not subject to an estoppel arising from the interference. The examiner and the board, in holding the Rule 131 affidavit inapplicable here, have refused to consider whether the affidavit does in fact overcome the Samfield et al. disclosures as to subject matter which the interferences did not preclude appellant from claiming. That was clearly error. We are therefore obliged to reverse the rejection of claims 26 through 29, 31 and 38 through 40 and remand the case for consideration of the effect of the affidavit under Rule 131 in conformity with our views as expressed herein.

The decision of the Board of Appeals is affirmed as to claims 24, 25, 30 and 32 through 36 and is reversed and the case remanded as to claims 26 through 29, 31 and 38 through 40.

Modified and remanded.

ALMOND, J., concurs in the result.

1 . The patents name “guar gum” and “locust bean gum” as suitable gums consisting principally of galactomannan.

2 . 1101.02 B of M.P.E.P. 2nd Ed., reads in part:

B. In some cases, the disclosure in the application, although for the same invention in fact as the patent claim, is somwhat broader than the claim of the patent. Under such circumstances, in initially declaring the interference the applicant should be required to make the exact patent claim and the inter-terference should be declared on that claim. However, if the applicant presents and prosecutes a motion to substitute a broader count and, in connection with such a motion, makes a satisfactory showing, as by demonstrating that his best evidence lies outside the exact limit of the patent claim, the applicant may be permitted to substitute a count wherein language based upon his slightly broader disclosure replaces the corresponding limitation in the patent claim. In redeclaring the interference, the application claim should be used as the count of the interference and it should be indicated that the claim in the patent corresponds substantially to the interference count.

3 . The claim in question reads:

8. A self supporting continuous tobacco sheet material comprising a substantially water insoluble locust bean gum film, forming a matrix for finely divided tobacco particles mingled therewith.

4 . Appellant states in Ms brief:

A further issue is whether an applicant who has proved prior reduction to practice of a number of species of a mechanical mixture is entitled to claims to those species and to the genus, despite Ms having lost an interference with a patent involving a different patentably distinct species. * * * [Emphasis ours.]