In re Griswold

In re Griswold

Opinion

 [****805]   [**834]  [*1565]   Before RICH, Acting Chief Judge, and MARTIN, SMITH, and ALMOND, Jr., Associate Judges, and Judge WILLIAM H. KIRKPATRICK ¹ 

RICH, Acting Chief Judge, delivered the opinion of the court:

These two appeals are from unanimous decisions of the Patent Office Board of Appeals, ² petition for reconsideration in each denied, affirming the examiner's rejection of product claim 23 in application serial No. 437,038, filed June 16, 1954, by Griswold and Pearce, and of product [***2]  claim 40 in application serial No. 437,119, filed June 16, 1954, by Griswold. Both applications are entitled "Nonwoven Fabric and Method of Producing Same." While separate records and briefs were filed in each appeal, the dispositive issues are so closely related that they will be treated in a single opinion.

The sole ground of rejection before us in serial No. 437,038 (Appeal No. 7644) is double patenting. The examiner made an additional  [*1566]  rejection on prior art which was reversed by the board. The double patenting rejection is based on appellants' own patent, issued on an application filed April 26, 1955, as a continuation-in-part of serial Nos. 437,037 and 437,038:

Griswold and Pearce

3,081,515

March 19, 1963

The appeal in serial No. 437,119 (Appeal No. 7645) involves the following reference:

Handmade Papers of Japan, T. K. and H.  [***3]  R. Tindale, Charles E. Tuttle Co., Rutland, Vt., and Tokyo, Japan. Printed in Tokyo in 1952.

and presents several issues, only the last of which do we find it necessary to decide: (1) whether the entire Tindale  [**835]  publication, including the specimens of "handmade papers" bound therein, is a "printed publication" within a proper interpretation of 35 U.S.C. 102(b); (2) whether the Tindale publication specimens are properly considered evidence under 35 U.S.C. 102(a) that "the invention was known * * * by others in this country * * * before the invention thereof" by Griswold; (3) whether, in any event, the Tindale specimens serve as an enabling disclosure so that the public is placed in possession of Griswold's invention; (4) whether the board made a new ground of rejection as to the question presented by issue (2), and subsequently abused discretion in refusing to consider affidavits said to show invention of the subject matter of claim 40 by Griswold prior to the effective date of Tindale; and (5) double patenting in view of Griswold's own patent, application for which was filed April 26, 1955, as a continuation-in-part of serial No. 437,119:

Griswold

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