In re Hirschhorn

Bland, Judge,

dissenting.

Appellant in his application for a patent relating to tea balls and their method of manufacture submitted both method and article claims. The Examiner of the United States Patent Office required division between the method claims and the article claims and pending appeal the appellant elected to prosecute his method claims.

The examiner rejected all of the method claims, 1 to 8. Upon appeal to the Board of Appeals it allowed claims 3 and 4, reversing the examiner as to these claims. Claims 9 to 13, the article claims, were rejected upon the ground of misjoinder, that is to say, they were rejected for the reason that they could not be considered in the same application as were the method claims. Appellant has taken no appeal as to the remaining six method claims but in this appeal presents the sole question as to the board’s approval of the examiner’s rejection on the ground of misjoinder.

We must presume that invention rests in appellant’s method since the board has found two of the method claims allowable. All parties seem to agree that the tea bags may be made by a process or processes other than that which is claimed. It is argued by the Solicitor for the Patent Office that where this kind of situation prevails division is proper between method and article claims even though the process claimed can produce only the claimed article. He cites In re Ferenci, 21 C. C. P. A. (Patents) 856, 68 F. (2d) 737, 20 USPQ 242, and several other decisions to the same effect, including In re Butler, 17 C. C. P. A. (Patents) 810, 37, F. (2d) 623, 4 USPQ 342. The appellant relies upon other authorities, and it must be conceded that there is much con*1161fusion resulting from inconsistent Patent Office actions and certain views expressed by tlie courts.

In Steinmetz v. Allen, 192 U. S. 543, the question of division was before the Supreme Court. Division was required under rule 41 of the Patent Office which at that time read as follows:

41. Two or more independent inventions cannot be claimed in one application; but where several distinct inventions are dependent upon each other and - mutually contribute to produce a single result, they may be claimed in one application.
Claims for a machine and its product must be presented in separate applications.
Claims for a machine and the process in the performance of which the machine is used must be presented in separate applications.
Claims for a process and its product may be presented in. the same application.

The Supreme Court took the position that there was no statutory law which necessarily precluded joinder of two or more inventions of any character in the same application but an exception was made by said rule 41 and that the making of such rule was not the exercise of discretion where the rule applied to all alike. The opinion pointed out that the Patent Office had not been consistent in its views regarding division of inventions and while the court apparently conceded that some discretion should be allowed to the Patent Office it held it could be abused and that rule 41 ignored “the differences which invoke discretion” and was an invalid regulation.

Subsequently rule 41 was amended and the pertinent portion of it is as follows :

41. Two or more independent inventions cannot be claimed in one application ; but where several distinct inventions are dependent upon each other and mutually contribute to produce a single result they may be claimed in one application : * * *

It will be noticed that the amended rule retains the language relating to “distinct” and “dependent” inventions being permissible in a single application. It left out the three specified circumstances relating tq the question, namely, the specific provisions for claims for a machine and its product and claims for a machine and process and the final xirovision that “claims for a process and its product may be presented in the same application.” It would seem to be the proper construction of this rule, if it were a new question, to hold that a process and its product would be dependent on related inventions and should be so regarded under the rule in its amended form.

However, from the daté of the amendment of rule 41 there has been utter confusion in the Patent Office in the application of the rule. Appellant has pointed out a few instances. In the record is a list of eighteen patents where claims for tea bags and the method of making *1162them were allowed in the same application, and it is a matter of common knowledge (see In re Ferenci, supra), which is shown w.ith great frequency in the records filed with this court, that the Patent Office ordinarily considers method claims along with article claims in the same application without any requirement for division. A recent decision to this effect by the Board of Appeals is Ex parte Irmscher, Appeal No. 49,871, March 1, 1945.

The Patent Office, by Notice of October 7, 1941, greatly simplified the question we are discussing here by putting into practice what is known as “Dual Prosecution.” An applicant, without division, may have his application submitted to more than one division and acted upon by more than one examiner and have his patent include claims passed upon by all the examiners. This seems to us to be a commendable practice, and although the instant case is not shown to be one in which two examiners would be called upon for examinations, it is a matter of some surprise that instead of requiring division the “Dual Prosecution” practice was not resorted to. See Wolcott, Manual of Patent Office Procedure, 9th Edition, 1947, p. 52; McCrady, Patent Office Practice, 2nd Edition, 1946, Sec. 128.

The Patent Office tribunals have made very confusing rulings and the reasons which have brought them to their respective conclusions are often wholly inconsistent with reasons elsewhere stated. For instance, in Ex parte Binda, 54 USPQ 35, in 1941, the Board of Appeals, in a decision by Edinburg, Examiner in Chief, where division was required, reversed the examiner and said:

Claims * * * stand rejected on the ground of misjoinder. These claims cover an article while other claims in the case cover a process. Comparing the process claims, such as allowed claim 21, with the article claims, it is believed that the process of claim 21 when carried out will necessarily produce the article defined by the article claims. Applicant so contends. He states that there is serious doubt that a Court would sustain separate patents on the process and the article. He argues that the inventions claimed here are so closely related that they should he claimed in a single patent. We believe that applicant in the present case has presented a well founded argument for not dividing the process claims from the article claims. They are no doubt so closely related that if separate patents were taken out on them the question of double patenting might be likely to arise. We will, therefore, not affirm the rejection on the ground of misjoinder.

In In re Barnett, 33 C. C. P. A. (Patents) 1119, 155 F. (2d) 540, 69 USPQ 609, the examiner, in a case quite similar to the one at bar, did not require division of the method claims from the article claims but rejected the method claims on the ground of no invention. A majority of the court reversed*the examiner and allowed the claims. The question of divsion was not raised, and the minority of the court disagreed with the conclusion solely on the question of invention. It *1163was obvious there, as it is in the instant case, that following the process would necessarily produce the article but if appellant’s process is inventive it is so closely related to the article that it should be in the same application where there is less likelihood of appellant’s article claims, if allowed, being rejected on the ground of double patenting or held invalid on the ground that the subject matter would not support two patents.

In In re Barnett, supra, which is the last expression of this court upon this question (and there was no division of sentiment in the court bn the instant issue), we stated:

Now, it is a well-settled rule in patent law tliat a method claim, though defining the method of the machine or its operation, is allowable in the same application with the machine claims if the thing accomplished by the machine could be done by another method or by hand. In re Ernst et al., 21 C. C. P. A. (Patents) 1235, 71 F. (2d) 169, 22 U. S. Pat. Q. 28; Ex parte Trevette, supra; In re McCurdy, 22 C. C. P. A. (Patents) 1140, 76 F. (2d) 400, 25 U. S. Pat. Q. 136.
In other words, if the machine performs a new, useful, inventive method, the party is entitled to method claims along with his machine claims not only because his method requires protection but because they are related inventions. The method of the operation of the machine may, in some instances, be inventive when considered independently of the machine, or may be a related invention to that of the machine and allowable only as claims for a dependent invention in the same application as that of the machine. The claims for a method which depend upon a machine and which are allowable only along with article claims in one application should never be measured, when their allowability is being-considered, by the standard which 'would be required if they were in a separate application and for a separate and unrelated invention.

Many cases could be cited in which, the courts have pointed out the danger of granting more than one patent for a single inventive concept and have discouraged the multiplicity of patents. See Norden v. Spaulding, 24 App. D. C. 286, 1905 C. D. 588.

In In re Briede, 27 App. D. C. 298, 1906 C. D. 677, where the question of division was considered, the court said:

They [the courts] do not look with favor upon the refinements of division which lead to many patents being issued for various improvements incorporated upon a single device. They are inclined to resolve all doubts as to whether more than one invention is embraced in one patent in favor of the patentee. (Bennett v. Fowler, 8 Wall. 445.)
We do not noio recall an instance where a patent has been held void by a court of last resort for claiming more than one invention. In such cases disclaimers have been permitted. * ® * [Italics ours.]

The books are full of cases where patents were declared invalid by reason of the fact that the invention involved could not support more than one patent.

It is interesting to note that in Steinmetz v. Allen, supra, the Assistant Attorney General, McReynolds, subsequently Justice McReynolds *1164of the United States Supreme Court, in arguing the case for the •Government, took the following position:

Division is not required upon the'ground that the patent covering two inventions, if granted, would be declared invalid. No question as to validity is involved, since the courts home never declared, a patent invalid because of the joinder of distinct inventions. Division, therefore, involves no question of merits. Ex parte Yale, C. D. 1869, 110; Bennett v. Fowler, 8 Wall. 445; Ex parte Medford, C. D. 1883, 95; O. G. 881. [Italics ours.]

Illustrative of the attitude of the Patent Office is the case of Ex parte Adams, 1903 C. D. 299. There Commisisoner Allen said:

So far as appears the process claimed necessarily results in the composition claimed, although it is probable that the composition might be produced by other processes. * * *
When, therefore, an applicant presents claims covering subject-matters of invention which are so independent that each requires a distinct and independent search *in order to determine its novelty, then clearly the applicant should be called upon to restrict the claims of his application to one of the inventions thus presented. When, however, the inventions though distinct are dependent upon each other and the field of search for all is the same as that for a single one, then ordinarily there is no reason for requiring division.

In other words, then, very much as now, the Patent Office, “to obtain more revenue” as was stated in Hogg v. Emerson, 6 How. 437, and to facilitate the work of the examiners on the theory of “one examination for one invention” made the question of division wholly dependent upon those considerations.

The Solicitor for the Patent Office argues that the patents to Salfis-berg, Nos. 2,192,605 and 2,195,740, were cited as showing that patents for tea bags and methods of making them are classified and examined in separate classes. A reading of the record discloses that the Salfisberg patents were cited as part of the prior art in rejecting claims 1 to 8. Other patents in the record cited by appellant show the exact opposite of the solicitor’s contention. However, this fact is not important. We have frequently" said that we have minimized the importance of clasifications in the Patent Office and if its only reason in requiring division in cases like this is the mere fact that under the Patent Office set-up it is the practice to let more than one examiner consider the subject matter of applications this reason would not be sufficient. The appellant, however, points out that in several of the patents cited by the examiner in the rejection of the method claims on the prior art it is shown that there was no separate examination in different classification units.

In the instant case, the appellant, after division was required, earnestly sought to have the case resubmitted to the Classification Division so that the ruling on division therein might be considered in the light of more recent rulings (Em parte Irmscher, Appeals Nos. 43,460 and *116543,461) by the Board of Appeals, which rulings were favorable to appellant’s position. Notwithstanding the fact that this request was repeated, it was wholly ignored. It is not difficult to understand why the case was not resubmitted to the Classification Division because, as before stated, there was such uncertainty in the tribunals of the Patent Office with respect to the proper ruling in this character of case that no one could predict what the holding would be.

Appellant has pointed out that the instant record shows that some of the tea ball art cited shows that the examiner in charge of the applications necessarily is obliged to search through the whole field of tea ball patents for both method and article, the effect of which argument is to" show that it is not necessarily true that there must be an independent search made in different divisions, especially where the production of a machine to make the article is not in question.

It has been frequently pointed out in the decisions of the courts and the tribunals of the Patent Office that a division in close cases lays the inventor open to the danger of having his patent declared invalid and that when division is required his acquiescence to the ruling of the Patent Office does not cure the difficulties if the courts subsequently hold that all of the inventive concept should have been included in one patent instead of two.

The fees of the Patent Office have been raised recently and there is talk of another raise. Taking into consideration the’increased cost fees in cases like the one at bar, the expense of litigation to protect one’s rights, and the uncertainty of the whole situation, it makes a discouraging picture for inventors; particularly poor inventors.

This court and other courts have frequently held that each claim in a patent is a distinct invention but the mere fact that some claims are broad and some are narrow and therefore would be different inventions when the claims were sued upon does not mean that there is a separate application required for every claim.

If inventions are to be promoted and if inventors are to be encouraged and if the Patent Office tribunals or those responsible for rulings on questions like that at bar are to have the same definite standard before them in making such rulings, it seems imperative that this court, which fully realizes the importance of the question to every one concerned, should speak quite definitely on the subject. The question, of course, could be settled by a new and more specific rule, following in its specificity the suggestions and inferences to be drawn from the Steinmetz v. Allen case, supra. If the rule should specify the character of related'inventions that might be included in a single application as suggested by the said Steinmetz case, it would not leave open the question of construction as to what is a dependent invention. The *1166question of course could be settled by legislation but the delay and uncertainty of obtaining- sucli relief is, of course, obvious. So it seems that the courts should, as each occasion arises, clarify the issue as much as is possible.

There is, of course, good ground for having article claims and method claims in different applications. The article and method might not be invented at the same time or by the same person or might be wholly unrelated to each other and therefore obviously they should not be claimed together in the same patent.

Present rule 41, the first portion of which was not disapproved by the Supreme Court in the Steinmetz case, affirmatively grants the inventor the right to include inventions that are dependent upon each other (“related inventions”) in the same application. If the method of making a paper tea bag and the bag itself are two inventions which are not related or dependent upon each other, I know of no instance in the Patent Office practice where division between the different classes of claims herein discussed should not be required. If the article can be made only by one method, the Patent Office, I think, ordinarily would be inclined to reject the method claims on the theory that the method was not inventive and was obvious after having examined the article; and if the method claims defined a method which was not exclusive and there are other methods of making the article, the Patent Office has at times, as in the instant case, ruled there must be a division, which subjects the inventor to a later ruling of double patenting. So it would follow that if these two lines of procedure were carried out in the manner which frequently occurs, no patent could contain claims for an article and at the same time claims for a method of making the article.

As the situation stands now the inventor goes into the Patent Office and accepts or resists division at his peril. He is confused and confounded by the decisions of the courts and the decisions of the Patent Office tribunals. He does not know how much money it is going to cost him to get his patent, nor how much litigation he will have to withstand if he is to protect his rights. If division is not accepted and he elects to prosecute one group of the claims and upon appeal division is held proper and therefore two patents might be granted, he finds himself, in the prosecution of the nonelected group, at a great disadvantage. It is then urged that he is extending his monopoly and so his claims are rejected on the theory that he has obtained all he was entitled to and the invention of the article is weighed against the invention of the method. Occasionally, as in the case of the-Salfisberg patents, he is lucky enough to slip through with two patents, one for a method and one for an article. This was true even in a tea *1167bag case notwithstanding the fact that the most general practice seems to be to allow method and article claims in the same application in this art.

The majority feel compelled to stick to the wording of our former decisions on this question as if a holding of this court were as changeless as the law of the Medes and the Persians. In most of those cases there was little consideration given to the importance of the issue and the Patent Office ruling was merely followed. The consequences of these rulings, their threat to the welfare of the patent system, and the inconsistencies of them which lead to the confusion of inventors, have never been thoroughly considered.

In the majority opinion the case of Steinmetz v. Allen, supra, is brushed off by a statement that it is no authority for holding that method and article claims should be included in the same application. In that case the Supreme Court held the rule, “Claims for a machine and its product must be presented in separate applications,” invalid. If claims for a process and the'performance of a machine that carries out the process should not be presented in separate applications, how is it possible to conclude that it is proper to say that claims for a process and the article that is made by the process should be in separate applications ?

The majority further state that what the Patent Office has done in other cases is not material here. It is material to the extent that it shows the utter confusion which prevails in the Patent Office on the question and the necessity for some guiding influence to be afforded.

I am sure the majority’s suggestion as to the effect of the “Dual Prosecution” procedure in the Patent Office does not square with the view's of the officials of the Patent Office, or of the bar, either.

Under the “Dual Prosecution” procedure, since both classes of claims are often passed upon at the same time by different examiners, the situation presented by this case does not arise. So again I point out that the “Dual Prosecution” procedure has helped to a great extent, notwithstanding what the majority say about it.

Increasing the revenues by obtaining more fees by requiring division (even where the same examiner passes on both classes of claims) obviously is the controlling influence in many divisional cases. The majority say that this matter has no bearing on the issues in this case. The motive for, and effect of, a Patent Office practice not authorized by statute and which should be outlawed is always a material matter for consideration, and the majority opinion is departing fropi the view's of the Supreme Court when it arrives at such a conclusion, because the Supreme Court and other courts have taken cognizance of the fact that the desire for increasing the revenues was not sufficient justification for making an invalid rule. Hogg v. Emerson, supra.

*1168Where two inventions are so closely related that separate considerations in separate applications bring about the results I have mentioned hereinbefore, it not only shows that the inventions are dependent and related, but it shows that the inventor’s statutory rights are being thwarted when he is denied the right to include claims for both in the same application.

I think it is the duty of this court, regardless of what we have said or what other courts have said, and regardless of the confused state of the law on the question, to say that in cases like that at bar requirement for division is improper.

In my judgment, the decision of the board affirming the examiner’s rejection of the appealed claims on the ground of misjoinder should be reversed.