In re Hirschhorn

Hatfield, Judge, delivered the opinion of the court: This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming the action of the Primary Examiner in finally rejecting claims 9 to 13, inclusive, in appellant’s application for a patent for tea balls and a method of making them, on the ground of misjoinder of invention. Appellant’s application originally contained thirteen claims, of which method claims 1 to 8, inclusive, were directed to methods of making tea balls, and claims 9 to 13, inclusive, were directed to the [1157] article. Division between those groups of claims was required by the Primary Examiner and approved by the Examiner of Classification and appellant elected to prosecute the method claims in his application, retaining the article claims in the case for purposes of appeal. The examiner finally rejected all the method claims as unpatentable over prior patents and finally rejected the article claims, 9 to 13, inclusive, for misjoinder of invention. The Board of Appeals affirmed those rejections except as to method claims 3 and 4, which were held to be patentable. The instant appeal is limited to the rejection of claims 9 to 13, inclusive, on the ground of misjoinder of invention. Since this rejection depends upon the requirement of division between the article and method claims, the only issue to be determined here is whether or not the requirement of division was proper. Claim 9 is representative of the article claims, and claim 3 is representative of the method claims. They read : 9. As a new article of manufacture, a substantially flat and pillow-shaped tea-ball comprising a tea containing bag of pervious sheet material formed of a filter layer base having a coated lamina of thermosetting “partially fused” plastic on one side thereof and folded once upon itself with the coated lamina side in face to face relation, the fold constituting one side edge of the bag, said bag having an outwardly directed bottom seamed edge portion extending angu-larly from the lower end of said fold and also having another outwardly directed seamed edge portion extending angularly from the first mentioned seamed edge portion and toward said fold, said seamed edge portions being formed by pressure and heat sealing of fused contacting surfaces of said coated lamina to permanent adhesion for providing a border of substantial width to serve as a marginal brace for imparting to the bag rigidity along two dimensions of the bag, .the bag having a pressed and heat sealed top closure seam to permanent adhesion, said rigidified marginal edges maintaining the bag and contents in substantially flat pillow-shaped condition. 3. The method of manufacturing infusion packages comprising the steps of folding a traveling strip of foraminous sheet material formed of a filter layer base coated on one side with an adhering porous “partially fused” thermosetting-plastic lamina along the mid portion throughout the length thereof with the coated lamina side in face to face relation; pressing and heat sealing for permanent adhesion the opposite contiguous edge portions together into a longitudinally extending seam and forming an elongated continuous tubular structure from said strip with said lamina covering the interior surface thereof; cutting successive unit sections off said tubular structure one by one at spaced distances from an open end thereof; pressing and heat sealing for permanent adhesion the contiguous edge portions along the cut of each unit section with said lamina in face to face relation and forming an outwardly extending crossed seam joining with said longitudinal seam to provide a bag structure for the package; filling each unit section bag structure with an essence containing product through the open end thereof;'gathering the material at said open end; and pressing and. heat sealing for permanent adhesion the gathered material to form a top closure joint. [1158] Botli tlie examiner and the board held that the articles called for by claims 9 to 13, inclusive, could be made by methods other than those called for by the method claims. Counsel for appellant does not dispute the correctness of that holding and the reasons of appeal here do not assign error with respect to it. Accordingly, that holding must be taken as correct. In re Burns, 23 C. C. P. A. (Patents) 1091, 83 F. (2d) 292, 29 USPQ 423. This court has repeatedly held that if a claimed product can be made by methods other than those called for by the method claims, the product claims cover a different inventive act, and division is properly required. In re Charles P. Wellman, 18 C. C. P. A. (Patents) 1214, 48 F. (2d) 926, 9 U. S. Pat. Q. 169; In re Ferenci, 21 C. C. P. A. (Patents) 856, 68 F. (2d) 737, 20 U. S. Pat. Q. 242; In re Pedersen, 22 C. C. P. A. (Patents) 788, 73 F. (2d) 928, 23 U. S. Pat. Q. 345; In re Burns, supra; In re Smith, Jr., 29 C. C. P. A. (Patents) 1011, 127 F. (2d) 144, 53 USPQ 367. The rule announced in those cases is stated in the case of In re Smith, supra, as follows: It is evident that, if the Patent Office tribunals are correct in their holding that the product claimed in the second group can be produced by methods other than those set forth in' the first group, the requirement for division must be affirmed. No reason is found for modifying this well-settled rule or for making an exception to it in the present case. The decision of the Supreme Court of the United States in Steinmetz v. Allen, 192 U. S. 543, merely held invalid an arbitrary rule of the United States Patent Office which provided, as stated in the decision, that ‘Claims for a machine and the process in the performance of which the machine is used must be presented in separate applications.’ The Court decided .that the fact that claims related to different statutory classes of invention was not always a sufficient reason why they could not be included in a single application, but that discretion should be exercised in each individual case in determining whether separate applications were necessary. The decision in that case is not in jjoint here. In the instant case the Patent Office tribunals considered the relationship between the method and article claims and held that they call for separate inventions, because the article claimed could be produced by methods other than that called for by the method claims in appellant’s application; and that holding, as hereinbefore noted, is not disputed by counsel for appellant. The decision in the case of Steinmetz v. Allen, supra, is clearly not authority for the proposition that claims to a method and its product may always be included in one application. . [1159] Tlie provision of Patent Office Rule 41 that “where several distinct inventions are dependent upon each other and mutually contribute to produce a single result they may be claimed in one application” does not apply to the present situation. The product does not depend upon the claimed method since it may be made by other methods. Furthermore, the method and the product do not contribute to produce a single result but, on the contrary, the product itself is the result of appellant’s method, but may be produced by other methods. What the Patent Office may have done in other cases with respect to the claiming of a method and a product in a single application is, of course, not material here. In re Greider et al., 29 C. C. P. A. (Patents) 1079, 129 F. (2d) 568, 54 USPQ 139. The question must be determined in each case on its merits. The Patent Office practice of “dual prosecution” -by which claims of a single application are sometimes examined and acted upon in different divisions of the Patent Office has no bearing on the propriety of a requirement of division. This practice was initiated by the commssioner’s “Notice” of October 7, 1941, which is found in the Manual of Patent Office Procedure by C. L. Wolcott (Ninth Edition) page 52. The first sentence of this “Notice” is as follows: Where an application, properly assigned to one division is found to contain one or more claims per se classifiable in one or more other divisions, which claims are not divisible inter se or from the claims which govern classification of the application in the first division, the application may be referred for examination and action in the several divisions concerned, in which it will have special status. It is evident from this language that “dual prosecution” was not intended to modify, in any way, the practice of requiring division, but was merely designed to facilitate the handling of cases in'which, although division.could not properly be required, consideration of the application by two or more Patent Office Divisions was considered necessary. Cousel for appeallant argues that if' the method and article claims were presented in separate applications, the question of double patenting might arise. As we pointed out in In re Charles P. Wellman, supra, that question is not material in the consideration of a requirement of division. Counsel for appellant also points out that, after the requirement of division had been submitted to and approved by the Examiner of Classification, he requested the Primary Examiner to resubmit the case to the Examiner of Classification for reconsideration in view of certain decisions of the Board of Appeals, and that the Primary Examiner failed to act upon this request. No rule has been cited by counsel for appeallant which would require that such a resub [1160] mission be made, and no error is assigned in this connection in the reasons of appeal to this court. Moreover, the matter is one of Patent Office procedure, and is immaterial to the only issue presented here, namely, the propriety of the requirement of division. It has been suggested that, since the Patent Qffice fees have been increased, the requirement that divisional applications be filed imposes an unreasonable burden on applicants. The fixing of filing fees, however, is' a matter of Congressional fiscal policy and, of course, has no bearing on the issues in this case. See U. S. C., title 35, sec. 78. We are of opinion that division between the method and article claims of appellant’s application was properly required and that claims 9 to 13, inclusive, were properly rejected on the ground of misjoinder of invention. For the reasons stated, the decision of the Board of Appeals is affirmed-. By reason of illness, GaeRett, Presiding Judge, was not present at the argument of this case aiid did not participate in the decision.