In re Zletz, 893 F.2d 319 (1989)
`13 U.S.P.Q.2d 1320
`
`" KeyCite Yellow Flag — Negative Treatment
`Distinguished by
`In re Morris,
`Fed.Cir.,
`
`August 18, 1997
`
`893 F.2d 319
`United States Court of Appeals,
`Federal Circuit.
`
`In re Alex ZLETZ.
`
`No. 89-1093.
`I
`Dec. 27, 1989.
`I
`Rehearing Denied Feb. 7, 1990.
`
`Patent applicant appealed decision of Board of Patent
`Appeals
`and Interferences
`rejecting claims
`that were
`purportedly generic and independently patentable despite fact
`that applicant had been unsuccessful in prior interference
`involving species of purported genus. The Court of Appeals,
`Pauline Newman, Circuit Judge, held that: (1) Board erred
`in interpreting claims under standard applicable to litigation
`involving infringement or validity, but (2) prior interference
`collaterally estopped applicant from relitigating issue of
`reduction to practice and thus priority.
`
`Affirmed.
`
`Attorneys and Law Firms
`
`Dr. Alex Zletz appeals the decision of the United States
`Patent and Trademark Office (PTO) Board of Patent Appeals
`and Interferences, Appeal No. 88—1655 (August 31, 1988),
`rejecting claims I3 and 14, the only claims remaining in
`patent application Serial No. 03/462,480, filed October 15,
`1954. We affirm.
`
`Background
`
`The history of Patent Interference No. 89,634, called the
`“polypropylene” interference, has been recorded elsewhere,
`see Standard Oil Co. (Indiana) v. A/Iontedison S.p.A., 494
`F.Supp. 370, 206 USPQ 676 (D.Del.l980), qffd, 664 F.2d
`356, 212 USPQ 327 (3dCir.1981), cert. denied, 456 U.S. 915,
`402 S.Ct. 1769, 72 L.Ed.2d 174, 215 USPQ 95 (1982), and
`is adequately described therein to the extent pertinent to this
`case. The single count of that interference was as follows:
`
`polypropylene,
`solid
`Normally
`consisting essentially of
`recurring
`propylene units, having a substantial
`crystalline polypropylene content.
`
`Priority was awarded adversely to Zletz (assignor to Standard
`Oil Company (Indiana), now known as Amoco Corporation),
`one of five parties to the interference, and in favor of Hogan
`
`et al., assignors to Phillips Petroleum Company. 1 Reference
`hereinafter to the “lost count” of the interference is to the
`above text.
`
`*320 Wallace L. Oliver, Amoco Corp., Chicago, Ill., argued
`for appellant. With him on the brief were Ralph C. Medhurst
`and William H. Magidson.
`
`Dr. Zletz, having lost the priority contest, returns his patent
`application to ex parle prosecution, in accordance with the
`rules. The claims at issue in the Zletz patent application are:
`
`Fred E. McKelvey, Solicitor, Office of the Solicitor,
`Arlington, Va., argued for appellee. With him on the brief
`were Richard E. Schafer and John W. Dewhirst, Associate
`Solicitors.
`
`13. Normally solid polypropylene having a crystalline
`polypropylene content.
`
`14. Normally solid polypropylene.
`
`Harry J. Roper, George S. Bosy and Nicholas A. Poulos,
`Neuman, Williams, Anderson & Olson, Chicago, Ill., were on
`the brief for amicus curiae, Phillips Petroleum Co.
`
`Before MARKEY, Chief Judge, NEWMAN and MICHEL,
`Circuit Judges.
`
`Opinion
`
`PAULINE NEWMAN, Circuit Judge.
`
`Zletz asserts that claims 13 and 14 are independently
`patentable to him, in that they are different from the lost
`count and are supported by work that predates any reference
`against him. The references are the Hogan et al. and Baxter
`patents issued on two of the other patent applications in the
`interference, which are references as of ‘'32!
`their filing
`dates under 35 U.S.C. § l02(e); and the lost count, which is
`a reference as of the invention date awarded to the prevailing
`party in the interference, in accordance with 35 U.S.C. §
`
`102(g). 2 Zletz provided affidavit evidence under Rule 131
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`

`
`In re Zletz, 893 F.2d 319 (1989)
`13 U.S.P.Q.2d 1320
`
`(37 C.F.R. § 1.131) to show that the experimental Work on
`which he relies predates these reference dates; he also relies
`on the disclosures of his parent patent applications filed in
`1951 and 1952.
`
`The examiner found that Z1etz's early work was directed to
`a species of copolymer that was patentably distinct from the
`subject matter of the lost count of the interference, but that
`Zlctz had not shown prior invention of the generic subject
`matter that Zletz asserts is defined in claims 13 and 14. For
`
`this finding, the examiner relied on rulings of the district
`court in the polypropylene interference concerning Z1etz's
`early work. The examiner also invoked interference estoppel
`against claim 13, stating that due to estoppel the practice set
`forth in In re Frilette, 436 F.2d 496, 58 CCPA 799, 168 USPQ
`368 (1971), discussed infra, was not available to Zletz.
`
`The Board affirrned the examiner's rejection of the claims,
`on somewhat different reasoning. The Board held that Zletz
`was estopped from relying on his 1951 and 1952 patent
`applications and early experimental work to antedate the
`effective dates ofthe cited references and the date ofinvention
`
`awarded to the lost count, based on the Board's interpretation
`of claims 13 and 14 as of identical scope to the lost count.
`The Board held that claims 13 and 14 are “interpreted as
`being directed to normally solid linear high homopolymers of
`propylene which have a crystalline polypropylene content”,
`despite the broader words of these claims. On this claim
`interpretation, the Board held that claims 13 and 14 define
`the same subject matter as the lost count of the interference,
`and not a different, generic invention, and thus that Zletz is
`collaterally estopped from obtaining these claims by simply
`antedating the references and the lost count by the mechanism
`provided in Rule 131. This appeal followed.
`
`Claim Interpretation
`
`The Board erred in its interpretation of claims 13 and
`[1]
`14, the error apparently flowing from the Board's choice of
`an inapplicable legal premise. The Board applied the mode
`of claim interpretation that is used by courts in litigation,
`when interpreting the claims of issued patents in connection
`with determinations of infringement or validity. See, e.g.,
`Tandon Corp. v. United States Int'l Trade Comm'n, 831 F.2d
`1017, 1021, 4 USPQ2d 1283, 1286 (Fed.Cir.l987) (meaning
`of claims of issued patent interpreted in light of specification,
`prosecution history, prior art, and other claims). This is not
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`the mode of claim interpretation that is applicable during
`prosecution of a pending application before the PTO.
`
`During patent examination the pending claims must be
`interpreted as broadly as their terms reasonably allow. When
`the applicant states the meaning that the claim terms are
`intended to have, the claims are examined with that meaning,
`in order to achieve a complete exploration of the applicant's
`invention and its relation to the prior art. See In re Prater, 415
`F.2d1393,1404-05, 56 CCPA1381, 162 USPQ 541, 550-51
`(1969) (before the application is granted, there is no reason to
`read into the claim the limitations of the specification). The
`reason is simply that during patent prosecution when claims
`can be amended, ambiguities should be recognized, scope
`and breadth of language explored, and clarification imposed.
`Burlington Industries, Inc. v. Quigg, 822 F.2d 1581, 1583,
`3 USPQ2d 1436, 1438 (Fed.Cir.l987); In re Yamamoto, 740
`F.2d 1569, 1571, 222 USPQ 934, 936 (Fed.Cir.l984). The
`issued claims *322 are the measure of the protected right.
`United Carbon Co. v. Binney & Smith Co., 317 U.S. 228,
`232, 63 S.Ct. 165, 167, 87 L.Ed. 232, 55 USPQ 381, 383-
`84 (1942) (citing General Electric Co. v. Wabash Appliance
`Corp, 304 U.S. 364, 369, 58 S.Ct. 899, 901-02, 82 L.Ed.
`1402, 37 USPQ 466, 468-69 (1938)). An essential purpose of
`patent examination is to fashion claims that are precise, clear,
`correct, and unambiguous. Only in this way can uncertainties
`of claim scope be removed, as much as possible, during the
`administrative process.
`
`Thus the inquiry during examination is patentability of the
`
`invention as “the applicant regards” it; 3 and if the claims
`do not “particularly point[ ] out and distinctly claim[ ]”, in
`the Words of section 112, that which examination shows the
`applicant is entitled to claim as his invention, the appropriate
`PTO action is to reject the claims for that reason. Burlington
`Industries, 822 F.2d at 1583-84, 3 USPQ2d at 1438; In re
`Cormany, 476 F.2d 998, 999-1001, 177 USPQ 450, 451-
`52 (CCPA 1973); Prater, 415 F.2d at 1404, 162 USPQ at
`550 (claim that reads on subject matter beyond the applicant's
`invention fails to comply with 35 U.S.C. § 112).
`
`It was incorrect for the Board to read unwritten limitations
`
`into claims 13 and 14, limitations contrary to the plain Words
`of the claims, and contrary to the interpretation that the
`inventor himself placed on the claims. Claim 13, according
`to Zletz, does not require that the polymer consi st essentially
`of recurring propylene units or that the crystalline content
`be substantial; and claim 14 requires neither crystalline
`content nor, according to Zletz, that the polypropylene be a
`
`2
`
`

`
`In re Zletz, 893 F.2d 319 (1989)
`13 U.S.P.Q.2d‘1320
`
`lioinopolyiner. The Board erred in holding that claims 13 and
`14 must be read to include all the limitations of the lost count.
`
`Patentabilizy
`
`[2] A losing party to an interference is entitled to claim
`subject matter other than that of the interference count,
`provided the requirements of patentability are met, and
`subject
`to those constraints that flow from the adverse
`decision in the interference. Frilelle, 436 F.2d at 499-500,
`168 USPQ at 370-71; In re Risse, 378 F.2d 948, 955-56, 54
`CCPA 1495, 154 USPQ 1, 7 (1967), overruled in part on
`other grounds by In re Smith, 458 F.2d 1389, 1395, 59 CCPA
`1025, 173 USPQ 679, 683 (1972).
`
`Zletz argues that the applicable law requires the grant of
`claims 13 and 14 because these claims define a different,
`generic invention as compared with the lost count. Zletz states
`that his early work shows conception and reduction to practice
`of the subject matter of claims 13 and 14, relying in part on
`the allowance of similar claims before the interference was
`
`declared. He argues that the court's niling in the interference
`that he had not shown reduction to practice of the lost count
`based on his early work, including the court's ruling that his
`products lacked utility, does not serve as an estoppel because
`the requirements for proof of conception and reduction to
`practice are different
`in ex parze prosecution from that
`required to prove priority in an interference proceeding.
`
`[3] Rule 1314 provides an ex parze mechanism whereby a
`patent applicant may antedate subject matter in a reference,
`even if the reference describes the same *323 invention that
`
`is claimed by the applicant, provided that the same invention
`is not claimed in the reference when the reference is a United
`
`States patent. As explained in In re ll//cKellin, 529 F.2d 1324,
`1329, 188 USPQ 428, 434 (CCPA 1976), the disclosure in a
`reference United States patent does not fall under 35 U.S.C.
`§ l02(g) but under 35 U.S.C. § l02(e), and thus can be
`antedated in accordance with Rule 131. But when the subject
`matter sought to be antedated is claimed in the reference
`patent, Rule 131 is not available and an interference must
`be had to determine priority. In re Eic/cmeyer, 602 F .2d 974,
`979, 202 USPQ 655, 660 (CCPA 1979); In re Clark, 457 F.2d
`1004, 1007, 59 CCPA 924, 173 USPQ 359, 361 (1972).
`
`Thus a losing party to an interference, on showing that the
`invention now claimed is not “substantially the same” as that
`of the lost count, Friletze, 436 F.2d at 500, 168 USPQ at 371,
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`may employ the procedures of Rule 131 in order to antedate
`the filing date of the interfering application. The lost count of
`the interference is not prior art against a different invention,
`4::
`for
`prior art’ in the sense of section 102(g) cannot be the
`basis of a section l02(a) rejection, the invention not being
`publicly ‘known or used’ ”. In re Taub, 348 F.2d 556, 562,
`52 CCPA 1675, 146 USPQ 384, 389 (1965) (emphasis in
`original). See generally Wetmore v. Quick, 536 F.2d 937, 943,
`190 USPQ 223, 228 (CCPA 1976) (“The law developed in
`our Rule 131 cases has little bearing on the law relating to
`interference practice”)
`
`[4] Zletz asks us to View the subject matter of the lost count
`as simply a species of polypropylene, and argues that the
`later discovery of a species does not bar the grant of generic
`claims to the earlier discoverer of a genus encompassing
`that species. Priority as to a genus may indeed be shown
`by prior invention of a single species, Taub, 348 F.2d at
`562, 146 USPQ at 389, but the genus will not be patentable
`to an applicant unless he has generic support therefor. In
`re Grimme, 274 F.2d 949, 952, 47 CCPA 785, 124 USPQ
`499, 501 (1960); In re Kyrides, 159 F.2d 1019, 1021-22, 73
`USPQ 61, 63 (CCPA 1947). See In re Stempel, 241 F.2d 755,
`759-60, 44 CCPA 820, 113 USPQ 77, 81 (1957) (discussing
`what is necessary to successfully “swear back” of a reference
`under Rule 131, when the reference discloses a species of the
`applicant's generic claim).
`
`[5] VVhile there is not crystal clarity between the requirement
`in Taub that the applicant's earlier invention be patentably
`distinct from the lost count, and the holding in Frilelte
`wherein it was sufficient for the applicant merely to antedate
`the lost count as to “different” subject matter that he was
`prevented from including in the interference, the issue raised
`in Zletz‘s case does not require resolution of this question as
`to all factual circumstances. There is a sufficiently consistent
`thread in this precedent insofar as it relates to the issue
`presented by Zletz; that is, the issue of species and generic
`claims.
`
`In Zletz's case, he is not attempting to claim a different species
`from that described in the references and the lost count. He is
`
`seeking generic claims that he defines as including the subject
`matter of the lost count. To prevail, Zletz must show that he
`made the generic invention he is claiming. Even if Zletz's
`Rule 131 affidavits were sufficient to “swear back” of the
`
`references with respect to his early work, that does not go to
`the question of the sufficiency of Zletz's early work to show
`
`3
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`

`
`In re Zletz, 893 F.2d 319 (1989)
`13 U.S.P.Q.2d 1320
`
`that he made a generic invention of the scope he attributes to
`claims 13 a11d 14.
`
`Zletz argues that these claims are supported by his 1951 and
`1952 disclosures, his experiments EP—34, 35, and 37A, and
`nllings made during the interference. The district court, in the
`polypropylene interference, held that Zletz had not actually
`reduced to practice the subject matter of the lost count based
`on the early work now relied on. Standard Oil, 494 F.Supp.
`at 399, 407, 206 USPQ at 705, 711.
`
`The court held that Zletz's experiments EP—34 and 35
`produced solid copolymers that
`included polypropylene
`components of varying degrees of crystallinity, separated by
`methylene sequences, and that these products did not meet
`the limitation of the *324 cou11t “consisting essentially of
`recurring propylene units”. Id. at 400-02, 206 USPQ at 706-
`08. Zletz now relies on this ruling to support the position
`
`that he made an invention different from and generic 5 to that
`defined in the lost count.
`
`Experiment EP—37A was held inadequate in the interference
`proceeding because of insufficient evidence that the product
`met
`the limitation “consisting essentially of recurring
`propylene units”. Zletz has now presented to the PTO, during
`this ex parte prosecution, newly discovered evidence of the
`crystalline content and composition of the EP—37A product.
`Zletz states that the product of EP—37A, as reproduced 36
`years after the original experiment, contains at most 3%
`ethylene, and has a 68% or 72% crystalline component. The
`
`examiner observed that the original EP—37A was reported
`in Zletz's 1951 patent application to have a methylene to
`methyl ratio of 4, not significantly different from those of
`Runs EP—34 and 35, which the district court found to be
`copolymers. A polypropylene homopolymer would have a
`methylene to methyl ratio of about 1. Zletz's response is
`that the early method for measuring methylene to methyl
`ratios was inaccurate. However, these procedures, and their
`significance, were f11lly debated during the interference,
`under examination and cross-examination, and are not before
`us for de novo evaluation. To the extent that Zletz now asks
`
`that the examiner consider Zletz's new data, we conclude
`that
`the Board did not err in its holding that Zletz is
`collaterally estopped from relitigating issues determined in
`the interference.
`
`We agree with the Solicitor that the evidence ofEP—34 and 35
`may support the patentability of an invention different from
`that of the lost count; b11t they do not support the patentability
`of claims 13 and 14 when these claims are given the scope
`that Zletz states he intends them to have. Zletz has not shown
`
`that he made an invention generic to both the copolymers of
`his early experiments and the subject matter of the lost count.
`On this basis, the Board's decision is
`
`AFFIRMED.
`
`All Citations
`
`893 F.2d 319, 13 U.S.P.Q.2d 1320
`
`Footnotes
`
`1
`2
`
`Phillips Petroleum Company has filed a brief as amicus curiae, supporting the Board's decision herein.
`35 U.S.C. § 102: A person shall be entitled to a patent un|ess—
`
`(e) the invention was described in a patent granted on an application for patent by another filed in the United States
`before the invention thereof by the applicant for patent,
`or
`
`4
`
`(g) before the applicant's invention thereofthe invention was made in this country by another who had not abandoned,
`suppressed, or concealed it.
`35 U.S.C. § 112 1] 2:
`The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject
`matter which the applicant regards as his invention.
`37 C.F.R. 1.131. Affidavit or declaration of prior invention to overcome cited patent or publication.
`(a) When any claim is rejected on reference to a domestic patent which substantially shows or describes but does
`not claim the rejected invention
`the inventor
`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....
`(b) The showing of facts shall be such
`as to establish reduction to practice
`or conception
`coupled with due
`diligence from [the effective date of the reference] to a subsequent reduction to practice orto the filing of the application.
`
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`
`In re Zletz, 893 F.2d 319 (1989)
`13 U.S.P.Q.2d 1320
`
`5
`
`Original exhibits of drawings or records, or photocopies thereof, must accompany and form part of the affidavit or
`declaration or their absence satisfactorily explained.
`The Commissioner correctly points out that claims 13 and 14 as they are written do not clearly define the generic invention
`that Zletz states he intends these Claims to cover. During the interference the examiner ruled that “polypropylene”
`means a homopolymer; that is, consisting essentially of recurring propylene units; and included this definition in the
`interference count. Zletz's asserted meaning of “polypropylene” to include homopolymers and copolymers containing
`significant methylene sequences is contrary to the interference definition. Although Zletz refers to the district court's
`usage as supporting his own, we do not discern such looseness of usage in the district court's opinion as could extend
`“polypropylene” to encompass Zletz's copolymers.
`
`End of Document
`
`© 2016 Thomson Reuters. No claim to original U.S. Government Works.
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