In re Scheiber , 587 F.2d 59 ( 1978 )

MARKEY, Chief Judge.

The Patent and Trademark Office Board of Appeals (board) affirmed the rejection under 35 U.S.C. § 102 of claims 10-17, 19-22, 24 and 25, in application serial No. 270,-184 filed July 10,1972, and entitled “Spherical Coordinate Sound System.” We affirm.

The Invention

Scheiber invented apparatus for communicating three or more directional sound signals on standard, two-channel audio systems.

Two position angles, alpha and beta, are assigned to each of the sound signals. By proper selection of position angles, a sound source can be located in three dimensions. Amplitude ratios and phase differences of sound signal components, coupled to the respective channels, define the alpha and beta angles for each sound signal. For encoding input sound signals f, having position angles alpha and beta (where A and B are the two channels), the equations are:

The equation for deriving decoded output signals g„ is:

Claim 10 is typical:

10. For use in a multidirectional sound system wherein at least three directional input sound signals are encoded on A and B audio channels and at least three directional output sound signals corresponding to the input signals are reproduced from the A and B channels, decoder apparatus comprising an A input and a B input, n means connected to said A and B inputs for generating n directional sound output signals gn each havingoCn and p n position angles associated therewith, wherein:

The Rejection

The examiner rejected the claims under 35 U.S.C. § 102 as anticipated by Takahashi patent No. 3,777,076 or Bauer patent No. 3,821,471. The references disclose structure for encoding and decoding multiple audio signals. With specific values for alpha and beta in appellant’s claims, the examiner found the formulas equivalent to those disclosed by and set forth in the claims of Takahashi and Bauer.

Scheiber said his present application, a continuation-in-part of two earlier applications,¹ was entitled to an effective filing date antedating the references,² because, upon substitution of the specific alpha and beta values suggested by the examiner, the presently claimed subject matter was disclosed in his earlier applications in full compliance with 35 U.S.C. § 112, first paragraph. The examiner found insufficient disclosure in the earlier applications to support the claims or to teach the anticipatory subject matter in the references.

The Board

Finding no basis in appellant’s earlier applications for the beta angle now claimed, the board denied appellant his earlier filing date. The board refused to review the examiner’s position on the relationship between the earlier applications and the references, because it considered that relationship “not germane.”

Issue

The issue is whether Scheiber’s present claims are entitled to the benefit of his earlier application’s filing date.³

OPINION

35 U.S.C. § 120/Rule 131

“Invention,” as used in 35 U.S.C. § 120,⁴ refers to the claimed invention in a continuing application. In re Lukach, 442 F.2d 967, 968, 58 CCPA 1233, 1235, 169 USPQ 795, 796 (1971); In re Brower, 433 F.2d 813, 817, 58 CCPA 724, 728, 167 USPQ 684, 687 (1970).

The operation of § 120 differs from the operation of Patent and Trademark Office Rule 131 (37 CFR 1.131).⁵ The latter provides an applicant a mechanism for overcoming specific prior art references predating his effective filing date. The applicant need show priority with respect to only so much of the claimed invention as the references disclose, In re Stempel, 241 F.2d 755, 760, 44 CCPA 820, 826, 113 USPQ 77, 81 (1957), or only so much as to render the claimed invention obvious. In re Spiller, 500 F.2d 1170, 1177, 182 USPQ 614, 619 (Cust. & Pat.App.1974). Section 120, on the other hand, concerns only an applicant’s effective filing date. Unlike Rule 131, § 120 operates independently of the prior art, of which it makes no mention, and it expressly requires an earlier application to disclose the claimed subject matter in compliance with 35 U.S.C. § 112, first paragraph. Thus it is entirely appropriate that the showing required under § 120 differs from that required under Rule 131.

The Present Case

Scheiber admits that his claims are directed to general three-dimensional systems and are not supported by his earlier applications. That admission would normally end the inquiry under § 120. In the present case, however, Scheiber alleges that his earlier applications do support his claims when the claims are interpreted as reading on the specific systems taught by Takahashi and Bauer. That the claims under consideration are subject to that interpretation and, as so interpreted, are anticipated by the two references, is not disputed.

Nevertheless, although Scheiber’s claims are rejected on references that teach no more than is disclosed in his earlier applications, that circumstance does not entitle him to claim his earlier filing date under § 120 for claims not supported in those applications.⁶ This court denied an applicant the benefit of § 120 under similar circumstances in In re Lukach, supra. In that case, a composition claim reciting a range of molecular weight distribution was denied the filing date of a parent application, even though the reference cited against the claim disclosed a composition identical to that in the parent application. Denial of the earlier date was premised on failure of the parent application to disclose the range recited in the claim. The court noted that “the description of a single embodiment of broadly claimed subject matter constitutes a description of the invention for anticipation purposes * * * whereas the same information in a specification might not alone be enough to provide a description of that invention for purposes of adequate disclosure” under the first paragraph of 35 U.S.C. § 112. In re Lukach, supra, 442 F.2d at 970, 58 CCPA at 1236, 169 USPQ at 797; accord, In re Sichert, 566 F.2d 1154, 1165, 196 USPQ 209, 218 (Cust. & Pat.App.1977).

Scheiber argues unfairness in what he views as the employment of one claim interpretation in finding anticipation under § 102, and of a different interpretation in denying him his earlier filing date. Any apparent unfairness results, however, from Scheiber’s choice of claim language. Claim 10, the broadest claim, includes means for generating a class of output signals defined by a mathematical expression. Substitution of certain values for alpha and beta in the expression creates a specific subclass of output signals, causing the claims to read on allegedly identical disclosures in the references and in the earlier applications. Thus the claims are being given not inconsistent interpretations, but a single interpretation encompassing a class and subclass.

If Scheiber’s position were to prevail, the claims under consideration would be granted one filing date when viewed as encompassing general three-dimensional systems, and a different, earlier date under § 120 when viewed as encompassing certain specific systems. The filing date made available under § 120, however, is limited to claimed subject matter disclosed in an earlier application in the manner required by § 112. Hence the board correctly, and necessarily, determined that the relationship of the claims to certain references, and of the references to Scheiber’s earlier applications, were not germane.

Accordingly, the decision of the board is affirmed.

AFFIRMED.

1 . Application serial No. 888,440, filed December 29, 1969 (grandparent), now U.S. patent No. 3,632,886.

Application serial No. 46,345, filed June 15, 1970 (parent), now U.S. patent No. 3,746,792.

2 . Takahashi and Bauer were filed on July 3, 1972, and March 15, 1971, respectively, and issued after Scheiber filed his present application.

3 . Appellant’s argument that claims 11, 17, and 22 are not anticipated by Bauer and Takahashi was not raised below and will not now be entertained. In re Touvay, 435 F.2d 1342, 1344, 58 CCPA 809, 811-12, 168 USPQ 357, 359 (1971).

4 . 35 U.S.C. § 120, insofar as applicable here, reads:

An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States by the same inventor shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application * * *. [Emphasis ours.]

5 . Rule 131 states, in relevant part:

(a) When any claim of an application is rejected on reference to a domestic patent which substantially shows or describes but does not claim the rejected invention, * * * and the applicant shall make oath or declaration as to facts showing a completion of the invention in this country before the filing date of the application on which the domestic patent issued * * * then the patent * * * shall not bar the grant of a patent to the applicant * * *. [Emphasis ours.]

6 . We express no views respecting applicability of a remedy under Rule 131, or the availability of interference proceedings on the subject matter claimed by the references.