*1 38, appears 24, It varying phrases, not different 37 and that claims ground rejected only Groups them which were substance. in material employ multiplicity, in repetitious of conven- undue recitation thirty-five claims absence of the other elements. With a tional phraseology, rejected prior for the which art. call were of them some of elements. same combination stated, For the we affirm reasons reject- Appeals decision of the Board of agree with the We are constrained ing 35, 17, 23, 33, claims 3 to 19 to 26 to ex- as to examiner and the board prior 36 and 39 to 43 on art. We fur- pointed amples in out reference ther affirm the of the board re- decision materially differ from do not which jecting all of as un- the claims on other. duly multiplied. very Appellants’ here contention Affirmed. by appellant similar to that made MARTIN, J., participate did not in held in the court Chandler case which alleged specific decision. complexity that the apparatus ex- for an afforded no basis The court
cessive number of claims.
stated: pointed Bar- in In re
“As was out
nett, Pat- 33 C.C.P.A. appli- ents, 1119, proper it is to allow setting in
cants reasonable latitude concepts in dif- forth their inventive Application ZICKENDRAHT of Christian pur- phraseology, ferent but and Arthur Buehler. pose point and de- of claims to out Appeal No. 6873. regards applicant fine what an of Customs United States Court purpose is his and that Appeals. and Patent if, not quent repetitions, as the result fre- served they present June than a defini- the mind a blur rather Sept. Rehearing Denied tion.” with the view
We are accord applicants should be allowed rea stating
sonable their claims latitude regard phraseology to number and right
employed. The selecting phrase
freedom choice ology truly points out and defines abridged.
their inventions should not be latitude, however, not be Such should degree repe to sanction
extended multiplicity beclouds
tition and in a maze of confusion. The
definition practiced should be
rule reason
applied on the of the relevant facts basis each individual circumstances
case. opinion that
It is our the record in clearly supports
the instant case the de-
cision of the board on the issue undue
multiplicity. is, Chandler our controlling.
opinion, apposite and *2 grant therefore to
entable app single involved in claim Metalliferous entitled “New lication1 Dyestuffs” Azo “double would involve argue patenting.” Appellants instant claim is therefore, is, entitled the reference and patent protection. metallized relates dyestuffs by reacting prepared azo a co- reagent chromium-yielding balt or dyestuff, certain monoazo joined molecules latter are complexed per Ac- molecule of metal. cording appellants’ specification, dyestuff prepared monoazo can be methods, by coupling, known medium, alkaline a diazotized 2-amino- l-hydroxy-benzene-5-sulfonie amide, acid be referred the diazo- to as Ponack, Wenderoth, A. Ponack, component, Lind & 1:3-diphenyI-5-pyrazo- Washington, (Harry Goldsmith, lone, D. coupling C. compo- referred to as the Bryant Brennan, Summit, J., W. dyestuffs N. Jo- nent. The metallized said seph Kolodny, Baltimore, Md., dyeing of coun- printing to be for suitable sel), appellants. variety silk, of materials such as leath- er, synthetic wool superpoly- fibers of Moore, Washington, Clarence W. D. amides, superpolyurethanes polyacry- (Jack Armore, C., Washington, C. E. D. lonitrile. counsel), Commissioner Pat- ents. The claim reads: WORLEY, Judge, Before Chief complex compound 1. The metal RICH, MARTIN, SMITH and AL- atom contains Judges. MOND, from the metals selected consisting of cobalt and chromium- WORLEY, Judge. Chief complex bound in union to substan- Appeals Here tially the Board of dyestuff has held two molecules have made but one of the formula May 427,362,
1. Serial No. filed tinguish therefrom, in of “the day filed the allowance The same n stant another,2 instant double application, claim would amount to patenting.” patent.3 into matured which has since dyestuffs
n cobalt n appellants’patented n monoazodyestuffs tions that a Appellants’ patent, cation, contains cules obtained. Claim pound chromium fonic acid and ion with azo groups corresponding “2. A complexedper dyestuff substantially prepared containing chromium metalliferous relates to substantially complex bound molecules with an 2 is like the atom subject matter:4 under carboxylic two metalliferous chromium representative of one atom treating certain free from sul- complex dyestuff, agent yielding dyestuff instant formula. metal, is mono- com- acid condi *3 appli un- mole azo said: make tion there only a [*] benzene shown that this sideration must “ * * * ference there other of out over the claims effect single * “In [*] affirming aout is compound. [*] the instant case * is a rings substituent is not. Examiner, case dyeing characteristics * while in in for show examiner, In fundamental hence, claim It has not (cid:127)» fact, both on one patent ^claims an invention grant first granted under in * dyes has order to applica pointed patent. been con- dif any board * an- for soluble in dif therefore water. It is ficult the statement to see wherein is that the substituent solubility imparting one not wa significance. ter material is chemistry standpoint pure From the and variation is common ob We no con vious one. basis represent Ri, find wherein R3 R2 cluding that inventions are inv radical, least one at (cid:127)a benzene (Italics supplied). olved.”5 member contains methyl group, consisting .group The sole issue is whether the methoxy group and group, a a nitro patently claim instant defines a is bound atom a chlorine Ri appli invention over that claimed in linkage position rel- in ortho ihe azo patent. cants’ The doctrine well is es hydroxy group.” atively appli tablished that claims in different rejected merely “as the claim cations need be more than The examiner dif lacking content; of Zick- the claims ferent invention over form or opinion patentable He was of the et al.” distinction must endraht exist en patent. are the next lower title claimed a second In homologues patented compounds, Ockert, 467, 1024; re 245 F.2d 44 CCPA Korpi, al., 564, did not dis- et and since 34 2. 5. 427,361, May 3, reconsideration, No. 1954. On the board referred Serial purpose U.S.C. to 35 103 2,784,178, showing No. issued an obvious March variation 3. U.S. does 1957, 5, not constitute to Christian Zickendraht distinction. thereof, allege Buehler. In view Arthur con- rejection is fusion based patenting on double Ibid. obviousness. We only ground are satisfied the is the former.
228 Druey al., F.2d 956; Copeman, re 135 et F.2d 50 CCPA re
CCPA In USPQ -; 962; Herr, re F.2d 50 CCPA -. Here the difference between There are distinctions compound and one of the appellants' instant and those claim compounds merely presence ed appealed claim One methyl group absence of a one of lo- (-S02NH2) sulfonamide rings Ap- complex benzene molecule. in a para cated while the azo pellants urge stresses un- is either location its coupling components must the diazo and restricted, azo or located meta to the production of an selected to insure the group. *4 dye having named azo at least one of the ented claims least of benzene at rings, and substituents the benzene rings methyl, must be substituted with impart that such substituents not do nitro, methoxy group, while chlorine or They solubility dye. in water to the rings appealed claim the benzene urge according that instant to contain no such substituents. specification “no further substituent dis- Appellants those that contend necessary patent.” in the case of the as inventive different tinctions constitute (Italics supplied). examiner, why how concepts. to see We fail commenting on that stated: pat- considered can be those differences “ * * * patented both the and us, They appear to entable distinctions. presently complexes claimed metal board, to be the examiner and to Only are water-soluble. a difference dif- merely description factual of degree is involved insofar as wa- readily ferences, observable ” * * * solubility ter is concerned. Appellants ordinary skill in this field. applicants’ patent discloses We note that conceptual any dif- have failed to show components dye, both of the ference, differences that to show may rings which contain with- benzene respect any way With are material. any out substituents thereon. It seems position to of the sulfonamide to us that disclosure would generic, patented thus claims are suggest reacting to one skilled in the art any may group position. The be on any components of the in column diazo may disclosure, to ent which we refer any coupling of the claims, scope In understand the components II, in column the same since 926; 739, Greenlee, re 42 CCPA coupling basic reaction is involved in Ward, In re F.2d 150 Appropriate each case. selection of the dyes having azo the sul- shows several component coupling diazo and com- group para azo fonamide located ponent pro- therefrom should result group group. Hence, the location of that dye duction of the In claimed herein. represent a cannot different inventive view of the fact have concept, nor a distinction. explain why failed presence difference, regard i. the second With absence on the benzene substituents rings, it the benzene e. substitution ring any significance, is of material the examiner’s any proof have failed to offer to substan- represent next compounds allegation tiate their different homologue patented com- lower concepts involved, inventive ap- are it pounds. not decide whether needWe pears us, as it did examiner and properly homo- compounds labeled are board, there is but one designate logues. The name used to able invention here to which both the relationship related structural claims are di- necessarily chemical rected. controlling; it is the rather closeness fact, relationship, question Appellants contend also that if indicative the obviousness or the instant compound. inventors, of the new had different unobviousness been no possible, seems since there is no beyond substituent.2 It could be interference mutually question applica ex that these two claims and disclosures dye groups patenting exist tions disclose Double clusive. stuffs, group here, in two where, with substituents the claims even mutually substituents, without cross-readable. cases are recognize al., Ockert; chemist would Ward et as not be In re ing compounds. deal We F.2d CCPA 1007. ing, therefore, applications with two de their Appellants’ reference scribing claiming two different in provi terminal disclaimer brief ventions, albeit there ais close chemical We do 253 is noted. sions of 35 U.S.C. § relationship groups between the two question find, however, have compounds. below, con thus we cannot been raised misunderstood, I call Lest I when it sider here. imply something “an invention” do not The decision is affirmed. patentable. Neither do the Affirmed. that 35 U.S.C. § statutes. Note MARTIN, Judge, result *5 concurs patentable,” entitled, 101 “Inventions is only. there from which it be inferred that is to patentable. are inventions which are not Judge (concurring). RICH, Similarly, in- “the refers to section patent “may agree rejection on be vention” which a I claims that the para- agree every I obtained.” Section should be affirmed and graph (f), except pat- to refers “the inven- is reason for “double patented enting.” tion” which cannot be for one I But cannot thing underlying apparent concept reason “invention,” To call a an another. today therefore, opinion does not court’s holding reason so impute patentability. that there “but by encompassed able invention” ref- The ’361 to was allowed patent claims, erence as between which patent 2,784,178 mature into March on “conceptual there is no difference.” I 5, 1957, patent was cited as a contrary plain think this is to the facts application. “reference” the ’362 The First, case. facts: appeal rejected claim on was on this ref- ground Appellants patent applications filedtwo erence on the to allow it day, 427,361 on No. and would patenting.” Ser. result in “double Thus 427,362.1 applica These Ser. No. two obtained one of on groups dyestuffs, tions disclose two inventions. their the “with-sub- simplicity identify group, For the sake of I will being stituent” and are now them reference to the one char refused a on group, the other distinguishes acteristic which them. The group. “no-substituent” The case gives ’361 disclosesand claims metallized have obtained pro- them no azo-dyestuff in which there is a benzene tection on the group “no-substituent” be- ring having substituent, cause all of its as a claims are dye- limited to nitro, alkoxy, alkyl group, halogen or a stuffs with substituents. Were the claim atom. ’362 The case discloses patented, and claims it would in no azo-dyestuff way protect a similar metallized in which or read on the “with-sub- applications, filed, 1. overlooking Neither of the fact, re am not omitted other, though point simplicity, ferred this in both cases the azo-clyestuff ap has not been mentioned. The ring two has one benzene hav- plications priority ing substituents, claim convention group two a -SO2NH2 applications hydroxyl group. Swiss filed on succes and a What refer days. above, sive designating it, without so substituent,” presence the “additional appellants rely distinguish of which on to patentability. the inventions and for well could as latter. It to tion over” the limited group it is stituent” because improvement an obvious is be directed to compounds. Yet it “no-substituent” or an obvious patenting.” “double said there would be improvement. variant, nothing Why? Obviously, would Simmons, opinion in In re granted See our recent twice if were ented USPQ 990, 312 F.2d appealed claim. the invention of patents in- on two be two would There Why not? ventions. “in Because the board used word senses,3 mean vention” two different prob- opinion this avoids The court’s group claimed and concluding is but that “there lem unobviousness view of that patentable to which both invention here claimed the I sub are patented and claims phrase “no mit that when used the language clear directed.” The concluding basis for inventions seems to be inconsistent claims saying involved,” truly what it was are care- such a conclusion. was inventions fully drafted maintain a clear distinc- When involved. one looks to the “with-substituent” and cases cited and to the whole field groups dyestuffs. If “no-substituent” “double law context had there been an intent to direct the writing opinion, board was its this claims to would meaning way that such strange carry intended have it out. been practically clear me. standard reaching that there conclusion its patenting” terminology. “double More *6 ma- patentable the invention one is but over, examiner, the board following statement jority the refers to quoting examiner, the ex demonstrated for find no basis “We the board: of concluding recognition plicit of the fact that the in- inventions that two compounds patent claimed in the are a reading the entire Without volved.” group different compounds from the of considering what opinion and without appealed stating the claim in the certainly by meant the almost board higher homologs former “are ana and indeed, statement, would, the create it logs instantly compounds.” claimed literally said impression board This is not consistent with the But, only one invention involved. there is that the claims are directed to same the submit, what the statement not I is concept. inventive really means. Earlier of the board phrase very one, “Double a loose is opinion, a short which is its meaning many things. different In ad- that to the said be board meaning pure sense of two dition. to patents an inven- “must show claim on claiming patent.” it tion the claims of the first over long time a plain included second [My emphasis] has language, the claiming patent an invention which meaning of is that that statement dif- already patented an invention appealed invention of the claim must be from fers only unpatentable particular. in some would not be obvious one which latter sense having ordinary that we have the art skill in and as- patenting here; double and in that sense to know about the other sumed already invention it assumes existence of second in- patent. It does which, however, unpatentable vention necessarily is appealed mean previously patented. the invention over directed to the same claim is invention important There is an patent if it fails “show between inven- as the thinking clearly unfortunately, very Still, arises in of terms an this having practice prevalent Office, invention involve “invention” patentable, step being notwithstanding be the next § 35 U.S.C. 103 was so patentable, all “inventions” we unnecessary think-that toas make this con- written fusing cry always terminology. is a far fact. which Trouble group one inven the situation where there claim since being scope is a and the situa mere twice claimed difference in from the here, tion, two inven there are where claims which are inclusive of it. unpatentable It has and tions been shown that there is necessary They po- para confused. relation other. should said between apply namely principles difference, it sition and Different of law the other recognize important dye- main the absence in and to of specified stuffs tain the distinction.4 substituents group. the first then, ease, there were this As view claiming disclosing applications (2) Having re- considered the cases on one which many others, inventions sides, lied on both “with- claims the firmly issued. is clear es- it has been a dyestuffs. The group substituent” tablished rule in this for over court ap- appeal is whether the thirty issue years sole applicant that when takes an group, the “no- pealed claim the other out a on one of two or more co- defines pending applications substituent” closely related separately can inventions, now he shall not be allowed claims notwithstanding issuance applications except other on sub- group. question, ent on the On this ject matter which is first different facts, important I will dis- subject from the matter claimed in his cuss, (1) are: the chem- closeness patent. See, early case, as one relationship ical Slepian, 18 CCPA 1393. groups specific 'and the assumes, course, This that, by virtue groups between the de- differences requirement of a restriction, appli- claims, (2) fined the effect cant is protection not entitled to the the issuance of Notwithstanding U.S.C. grew fact that this rule out eases in- (1) conclusion volving great diversity of fact situa- situation, respect reached tions, including attempts to claim the substituent,” sole “additional *7 same patents invention (identic in two distinguishing claims, is of the feature monopoly), long it has been applied, both to exists that which tantamount here and in the Office, situa- to homologs, adjacent or whether not tions like the one before case, inus this apply here, appropriate term to is the in which there is not one invention but showing to that no has been made two. a factual inference of ob- counteract only over the long viousness of one very other. The rule is not one of give weight properly standing no to is, believe, I think we it but a rule which specific para operates public of the in the -S02NH2 interest. When though as only patent, just there is in fact one 4. Where inven- issued the inven- way and, another, or in one prior tion it art, tion so claimed were in the being twice, appro- (since 1953) by claimed it would seem and tested the unobvious- requirement priate refer to to 35 U.S.C. 101 as ness of 35 U.S.C. § 103. authority saying invention is patented the statutes But prior since the a permit patent, art, inventor to an obtain the basis for denial is not only meaning patent. statutory basis; one Where there a rather it is a case- inventions, development. Where, here, in fact or law there patentable, inventions, sepa- this statute are two distinct inapplicable rately patentable absence a seem to be would in tire patent denied, patent other, to has be it second if on the it seems to me that ground. rejection patenting’’ denied on some other might The a “double be by ground filing finds stated the cases is avoided of a terminal dis- effect under inven- claimer 35 U.S.C. § which was must be on its own tion ac- not done this case. the invention claimed count, in the monopoly require- tionable issues, no timewise extension patent and there aspect rea- show of “double record of restriction ment applications still son that no disclaimer has been are other there sugges- matter, only subject filed. There is the barest pending related on seeing possibility tion able, upon of such public should assumption For the no brief. same reason there is on the to act issued Siu, pass occasion the effect In re protection is limited patentee’s might have that what claims and what he if a way here terminal had been claimed, obvious modifica- disclaimer noted, however, like, filed. It is alternatives, will be that the Siu tions, case, assignee type through any which was a common protection later free of patenting” case, public of “double patentee. is one in The issued ents assump- different were to act on the be able should also claiming process expiration invention, upon filamentary producing only from the inven- material will be free to use not it by gas molten material vapor, a blast of but tion claimed also only being, appar- thereof which modifications variants ently, naming of or- the material would have been obvious to those dinary process applied glass which the in the art at time the skill — inorganic made, taking claim and ma- account invention was into terial prior art art other case would the skill stand, therefore, seem to at most for than the invention claimed in patent. issued proposition only that where there is patents should not be rule up, operation To sum granted, notwithstanding filing aof closely re- to inventions is that disclaimer; terminal it has little no in a lated to the bearing on a situation where there are distinguishable there- and not in fact two inventions. is another This included must be necessity illustration of the for distin- applicant has been forced unless guishing the two situations. See foot- separate make them in 4, supra. note restriction, requirement in which For the above reasons with the the statute acts case section ground affirmance of the possible rule. waive that the claim operation avoid- defines of the rule obvious variation of the using com- the terminal disclaimer ed so pounds and that provision its allowance would to assure of section *8 therefore patenting.” constitute any expire “double issued will on later day patent; the earlier but as opinion Footnote 5 of the court’s seems questions a case two remain in such of “double be a selection as the file of the answered. Should not rejection to the the basis of exclusion patent contain a notice to advise earlier on based obviousness pat- public that there is later issued invention claimed here in view of considered, just must as ent which appellant’s claimed in is- warning in a file wherein re- there is pos- sued sible, No selection is required? was And is striction course, pat- because the double ownership possible divided matter of enting rejection predicated on such independent patents but entirely obviousness. board indistinguishable subject ably matter referring correct in 35 U.S.C. importance ? real refusing a basis Though “prior it is not appear technical ent. to me to be a This does determining art,” test is the same in legal proper case in which to rule on the the later define claims an inven- of a section 253 terminal disclaim- effect obviating objec- over as means er same because patent. The test is principle involved. Judge (concurring).
SMITH, dealing metallized are here We rings
azo-dyestuffs the benzene in which
may substituents certain either have appellants’ is- as claimed thereon sub- have no sued claims thereon as claimed stituents Judge appeal. RICH’s
concurring opinion the claims before us separate inventions define
claims factually sup- have not
ported their I, separately patentable.
therefore, concur in the result reached majority. Sherman) Laurence, I. Dean Herbert appellants.
Washington, C., for D. C., Moore, Washington, D. W. Clarence C., Washington, Martin, (Raymond D. E. counsel), Patents. Commissioner Application Alexander SURREY R. WORLEY, Judge, and Before Chief George Y. Lesher. RICH, MARTIN, SMITH Appeal No. Judges. ALMOND, United Court of States Customs Appeals. and Patent Judge. WORLEY, Chief June from the decision This affirming Appeals, ex Board through rejection of claims 10 aminer’s application1 entitled "Aryl N-(Aminoalkyl)-Carbamates Preparation” unpatentable their prior art. claims were allowed. Nine (1) The invention relates certain are useful as local carbamates which new *9 anesthetics, (2) new chlorofor certain which are the intermediates mates prepared the carbamates process producing (3) the carba reacting chloroformates mates Illustrative in an amine. is the reaction of inter vention May 21, 660,456, 1. Serial No.