*1 brightener necessarily promoted superior results stated nickel materials that the com- to have obtained establishes di-adduct—SAS been PCH. bright produced bination itself nickel. court concluded: light Our review of record in entirely agree. Yandenberg has Clauss’ contentions satisfies us that proof. not sustained his burden of awarding priority board did not err in may very in fact that PCH well be was to Foulke. The affirmed. decision is acting catalyst, the exclusion anything composition, else in the Affirmed. contained, proofs but the whatever
have not degree established required certainty in cases * *
of this kind.
[******] being catalyst
The material tested as a
here was not PCH. While have present, it cannot have been degree known with a reasonable 54 CCPA certainty responsible it was Application of David G. BRAITHWAITE. catalysis (and produced
whatever was assumed, arguendo, Appeal we have No. 7800. there such) considering pos- the other United States Court of Customs catalysts might sible have been Appeals. and Patent mixture. It was in- June Vandenberg cumbent on to eliminate possibilities such other in order to Rehearing Denied Oct. 1967. establish the effectiveness of PCH as catalyst. too, proof Here of effectiveness of di-ethylene
the combination of SAS 2-butyne-l,4-diol oxide adduct of alone brightener aas nickel must be found de-
ficient in view of the fact the evidence
introduced shows it to have been used
only in admixture quan- with substantial materials,
tities of other both known and
unknown. disposes
While the above observation panels on,
of all particularly relied it is panels
true of certain and test results
relied appears on Clauss. It
record and Clauss’ brief that Tomaszew- prepared panels ski 60 and 62
placing amounts of Exhibit 1 in nickel
plating already containing quan- baths Udylite
tities bright- of other commercial
eners.12 We do not think the use of quantities SAS and plat- or Exhibit in containing baths other commercial example, bright brighten-
12. Panels nickel without additional plated containing being added) “514” solu- ers which an amount o£ SAS— (which Udylite brighten- also contains Exhibit 1 was added. produces ers “#5” and “#1RL”
595 rejection support the the follow- ther of ing prior reference is relied on: art 26, 2,535,193 Calingaert Dec. 1950 et al. the Following appeal to the board Answer, filing Nalco of the examiner’s assignee ap the Company, of Chemical bar, plication a terminal dis 253, disclaim 35 claimer under U.S.C. § part the term of the terminal of granted application any patent on the beyond extend November 7, 1978, expiration Braith date of 3,007,858. Thereafter waite Supplemental Answer examiner filed a stating deci that he had considered our 610, Robeson, re 51 sions In 331 F.2d Kaye, re 332 F.2d and In CCPA of which were 51 CCPA Marzall, Johnston, Root, Rich Cook & decided the date examiner’s after Chicago, Johnston, Keil, holding original Answer,2 B. the termi ard L. Herbert ll., appellant. ineffective avoid nal I patenting rejection. He said double Washington, Joseph Schimmel, D. C. appeal here on were not of claims Washington, Nakamura, (Joseph D. F. Kaye but involved in Robeson C., counsel), of of Commissioner of mere “colorable variations” were Patents. support claims and cited Judge, RICH, WORLEY, Before Chief Siu, rejection his ALMOND, Judges, SMITH and the ex 864. The board sustained CCPA * WILLIAM H. KIRKPATRICK. position. aminer’s reverse. inventions of RICH, Judge. application relate to manufacture appeal This is from decision compounds. Braithwaite’s Appeals, Board of ad- Patent Office 3,007,858 primarily relates affirming rehearing, hered to on lead, the fa- manufacture application 1-17 of “Ethyl” compound used antiknock miliar 93,361, filed March serial No. electrolytic fuels, in motor a new Organic Com- for “Manufacture of Lead process. nor Neither the disclosure pounds.” claim allowed. No however, patent, limited claims of making tetraethyl The disclo- lead. “dou- sole is a sure is that the invention ble “organo making com- metallic appellant’s 3,007,858 Patent No. issued “organo” pounds.” 7, 1961, disclosure of application November serial formula, (R portion 811,262 or radical No. of which infra) “methyl, ethyl, propyl, appeal continuation-in-part. includes In fur- April Judge, 8, 1964, our Robeson his Answer District Senior District Eastern May Kaye published opinions Pennsylvania, by designation. sitting supple- appellant filed June response (not 25 and 1. This issued to Nalco Chemical record) mental October Appellant, Company, Chicago, Illinois. calling probably to these attention deci- Braithwaite, assignor, presi- G. David sions, executed the terminal disclaimer company also as- dent and has January 4, 1965, filed it December appeal signed application on to Nalco. filing Supplemental An- examiner sequence February Apparently decided of events was 5. The board swer April 28, something like this: The examiner filed the case isopropyl, butyl higher homologues, lyzed Grignard reagent. Examples phenyl, benzyl, calcium, and the like.” The dis- zinc, of such other metals are component (M cadmium, manganese, mercury, closure of the metallic lantha- formula), primarily lead, num, thallium, arsenic, bismuth, while telluri- broadened *3 the “the Equation statement um and selenium.” “C” is the equation metal M in canC be another basic reaction lytic formula for electro- capable being metal process which is of electro- of invention and is: reaction, reagent “D” Formula is a simultaneously simultaneous freed from said combining magnesium normally by problems depos- of the free cause produced organic bridging with iting added halide as on the cathode or explained. Grignard and, hereinafter prob- A re- electrodes these eliminate agent, known, lems, as is aspect well has the basic one inventiori is to RMgX, organic formula the first item in the add to solution another equation halide, above “C” and last item in referred Braithwaite as “D”, organic radical, distinguish wherein R it “extraneous” halide to is. Mg magnesium, organic is the metal and X a from Grignard reagent. halide needed form halogen, chlorine, bromine, organic such as or This added magnesium iodine. It will be observed that M is if halide combines with the free chlorine, lead and X Grignard reagent is then the first- it to a reconverts product M(R)4 lead, tetraethyl named “D”, avoiding mag- as shown in formula produced along magnesium which is deposit pos- nesium on the cathode and MgX2 mág- chloride bridging and some metallic sible Ex- electrodes. nesium. magnesium chloride, ample ethyl : which Grignard reagent, is dissolved in background Some pat- further of the dibutyl diethylene Ethyl glycol. ether of process legal ented is relevant to the chloride is added solution problem under discussion. Prior passed current is between cathode a steel patented ap- Braithwaite’s invention it Tetraethyl and a lead anode therein. pears and related lead lead forms bining the solution the com- compounds, enjoy which a market of ethyl from the radicals $270,000,000 some year, or more a Grignard reagent with the anode. lead by purely processes. made chemical product Removal of the from the solu- differentiating characteristic Braith- techniques tion is conventional form- waite’s is an electro- part of the invention. lytic process, having advantages certain gist need not discuss. The example of it is Note that in the above Grignard reagent that a placed Grignard reagent in solu- and the extraneous organic tion in containing organic solvent ethyl compounds. halide are pair of electrodes exemplifies principal to which current This difference applied. anode, At least the in the case between what is said to be the invention making organo compounds, lead is of the invention of the made of variety lead appealed application. In other conductors can be used for is stated that the invention utilizes an cathode. The organic organic lead anode is referred to extraneous halide “the as a consumed, “sacrificial corresponds anode” as it radical which the or- combining organic ganic Grignard metal reagent radi- radical of Grignard cals reagent upon being (Emphasis ours.) used.” For ex- electrolysis. Mg organic ample, radicals radical in each is radicals, ethyl methyl example. examples ethyl. All ethyl Therefore, com- the claims so worded would pair of the same disclose infringed and so would cover herein- be application, as pounds. In the proc- process, aon or dominate a radicals explained, the after dif- ess, using pair differing “al- such fer. kyl” compounds. ap- this case would The difficulties creating significant The second fact not all pear from two facts: to arise this case is that difficulties using limited to support find claim construction would Grignard or- reagent extraneous broadening certain statements corresponding or- ganic compound with already patent specification. have specification ganic con- radicals quoted how the statement about above broadening To certain statements. tains *4 “organo” portion organo me- 3, 4, the first fact: Claims illustrate reagent) may compound (Grignard tallic specify process a and 6 of the sig- Another be one of several kinds. ethyl utilizing making lead for halogen nificant “The statement is this: ethyl magnesium chloride extraneous and portion organic halide does of the added 1, 2, However, 7, and chloride. halogen not have to be the same as the claims, remaining more are all the portion Grignard reagent.” This organic generic respect radi- to with “In accord- the statement follows using “alkyl” (which cal, de- term organic the invention” the ance with ethyl referring broadly) to scribes passage correspond. radicals do The Grignard broadly speci- reagent without principally by the Patent Of- relied RMgX fying is. Patent the R of what description dif- fice of several follows typical claim 1 is of these broader reagents Grignard may be ferent which claims: used, organic radicals which the alkyl process preparing 1. A for amyl, phenyl, ethyl, isoproply, butyl, and compounds comprises elec- lead trolyzing, using which may be of them and states mixtures anode, lead a sub- organic com- produce “to lead used pounds other anhydrous stantially * * * solution containing phenyl Grignard reagent substantially in a ethyl phenyl and radical or both organic Grig- inert for said solvent alkyl phenyl other radicals or both and electrolyz- reagent * employing nard all This is about radicals said current effective to cause forming respect contains with to lead anode to dissolve in said solution organic having compounds different lead reagent Grignard or- said said . In to the lead atoms. radicals attached ganic solvent, adding an excess of an pos- words, briefly it indicates other sibility.3 alkyl required halide over that for the specific disclosure There is Grignard reagent, formation compounds. Four to make such how recovering from the resultant scope eight of the are of product alkyl compound con- lead them, making to cover the sisting alkyl directly linked radicals broadly. [Emphasis to metallic lead. added.] appeal continu- application great ation-in-part amount reading and adds it evi- From claim bewill making respect Grignard reagent of detail with dent that both the or- compounds in which different alkyl lead the added halide contain dif- could ganic ferent, compounds attached alkyl corresponding, lead rather part of respect practice, seem the better With to matter very helpful say least, wisdom, any fail note reference in the attorneys, though indicated if it were it was to the instant being many disclosed matter months before the suitably application, Though in another Office Rule claimed issued. somewhat-discouraging respect to identified. notice, permissive such a is at least briefly organic ent describe radical shall now lead. We Basically reagent. Grignard least one said this disclosure. nature of making electrolytic process “or- same electrolyte making 11. An or- described, ganic compounds is lead” ganic compounds comprising being specified to be in this case metal substantially anhydrous solution of at specification in all claims. lead in the Grignard reagent least one in a sub- particularly to be invention is stated stantially Grig- inert solvent for said organic lead for “the manufacture of reagent nard extrane- at least one hy- compounds containing different two organic organic halide, ous directly me- linked drocarbon radicals Grignard radical of at least one said object of the invention tallic lead.” reagent being from the or- different improved proc- is stated to “a new ganic of at radical least one or- said preparing compounds ess ganic halide, the total concentration organic linked to radicals are organic being of extraneous halides opening paragraph metallic lead.” The range within the of 0.1 1.1 moles description reads: per Grignard reagent. mole of total In accordance in- All specify claims either substantially anhydrous vention a solu- alkyl radicals or different radi- Grignard reagent tion of in an *5 cals, specifically organic or name radi- organic Grignard solvent for the re- cals which are different. agent electrolyzed, using a lead anode, adding organic extraneous may, therefore, It accurately be stated electrolyte, subject halide to the appealed processes claims are to electrolyzing condition that the action specific aof specifically nature not presence is carried out in the at patent, claimed in the albeit some of the organic least two radicals sufficiently claims therein broad which [Emphasis react with the lead. scope provide patent coverage for ours.] claimed, assuming what validity is here extensive, There descrip- Naturally, of such follows broad claims. detailed specific appealed claims, general tion and making examples being sixteen compounds of such narrower than such broad claims in the patent, patent to be found are less disclosure vulnerable to attacks on which, validity granted, surely if their the broad knowledge contribute claims. considerable gleaned to the art not to be electrolyte The compositions claims to patent. are, course, matter not appealed The claims fall into two all, though claimed in the put- at groups. Claims 1-10 are directed to ting electrolytes to use would result process and claims 11-17 to an electro- processes which would be covered. lyte. exemplify Claims 1 and 11 them They quite are nevertheless claims of (emphasis ours): significance different commercial to a process preparing A organic possible electrolyte vendor of solutions. compounds containing lead organic question us, then, is wheth- before radicals linked to the same taking er, by patent, metallic out the Braith- comprises lead atom which electrolyzing, estopped using anode, has from obtain- waite himself a lead ing substantially anhydrous these narrower claims to added and solution of at electrolytic process Grignard specific aspects reagent least one of his in a sub- organic stantially making compounds and lead Grig- inert solvent for said therein, electrolytes reagent, adding nard on the basis used at least one greatly amplified organic extraneous some- disclosure halide to said solu- general by tion, organic thing merely foreshadowed radical of at least organic being one in his disclosure. said observations halide differ- statement, by Example is the “The IX narrowed question has been organic product lead is a mixture of filing terminal disclaimer tetraethyl lead, compounds, including these he can have inquiry into whether lead, tetramethyl lead, triethylmethyl expire at di- patent which would trimethylethyl ethyldimethyl already lead and issued time as his the same says product Example lead.” XII “The patent. organic compounds is a mixture of lead can be situation above-described tertiary ethyl containing methyl, applica- In the follows. summarized butyl to metallic lead.” radicals linked patent, in his eventuated tion which examples At the conclusion of process his basic described Braithwaite summary ways carry- various tetraethyl an electro- making ing out this invention “either em- characterizing process lytic his process, ploying organic more two or halides with however, by single Grignard broadly, reagent by employ- reference more or ing “organic organic “organo two compounds, or more halides with a metallic” Grignard bath, sug- reagent by employing mixed added halides” single organic a Grignard halide with a mixed gesting in which instances certain might reagent.” concludes, “In organic to lead attached radicals any case, products are obtained contain- In each of his five different. organic reagent at Grignard least his two different radi- examples his ethyl organic cals linked metallic lead.” This in- halide extraneous vention, product whether claimed oí- compounds electrolyte, says as original that accord- at twice described lead. He ing least radicals fullness invention contemplated by ingredients “corre- 112. It is bath U.S.C. § two they broadening eight hinted spond.” state- In four of his *6 are, specifically, ments above correspond both referred to which would and ethyl. seem have had the the four claims broader the disclosure of In other “alkyl” present application language the term in mind as in that a future is used possibility. “ethyl,” whereby replaces claims the be- enough to read on come broad rejection thus was stat- The us before organic do not in correspond, the radicals which original An- in his ed swer, the examiner says they though claim and with he adhered to which they or the do not that differ. While agreed: which the board parent application pending and was still that the examiner’s contention It is issued, eight months the before not define the claims do contain- at bar was filed independent separate invention and description full and detailed over original processes described 1 of Braithwaite. Claim having objects application, not as their electrolyte electrolyzing calls for an tetraethyl production lead but Grignard reagent comprising and wherein, compounds lead in- alkyl halide. As evident ethyl organic or like stead of four other (Rule seq. paragraph et4 last 75(d)) of col. lead, or radicals attached unlike dif- reagent” “Grignard organic attached to radicals are ferent “alkyl patented claims halide” of atoms, giving products as lead such produce may mixed mixed be resulting those from the described as organic compound. mixed lead examples. Example specific I new In reagent correspond- Grignard methyl Grignard reagent is used with provide ing organic would halides butyl tertiary chloride extraneous organic radical least one product con- it is that “The lead stated electrolyte. butyl taining methyl tertiary that contends directly examiner further radicals linked to metallic lead art it skill of would be within of the solvent.” is recovered removal Calingaert teaching agents apply the et or active materials. The ac- ap- may regarded electrolytic process as more obscure al. be as patented simple pure reactions, parent claims. or chemical ical cals attached to the lead are the same ferent. Little more need be ing alkyl ence considering able the art to determine trolytes critical but ered that [*] nents Calingaert ess. While the directed to such take (non-electrolytic) processes Claims 11-18 compounds [*] any proportions. the Patent Office [*] or reactants claimed event X the case. lead wherein all et al. merely preferred the use made compounds in which -X proportions [17] disclose claims, argument within X optimum oper- used in the embrace including they purely of this it is consid- [*] the skill said alkyl above is amounts. for mak- the elec- are dif- compo- refer- chem- X about proc- radi- view ent fering absence of a terminal attached to the lead. We therefore are to ceed alkyl compounds holding there iner’s the extraneous make it when produce ed to While we have sufficient there are two here is Braithwaite’s fect. due to example, electrolytic bath, in an unobvious making tetraethyl they processes this from what is claimed in the produce tetraethyl obvious that are both may basis that the presence “alkyl” reagents. Knowing be mixed Calingaert lead, so, reasonably ethyl compounds they error in the exam- electrolytes factual basis for use methyl compound, radical manner. patented process dowe disclaimer, appealed lead electrolytic Grignard starting point et one of sources not think al. would radicals not dif- expect- In the which pro- pat- this ef- would lead to an affirmance. ground is on the Simmons, 50 CCPA 990. patenting,” of “double the Braithwaite But, Simmons, unlike a terminal dis- prior Calingaert is not art and case, claimer was this regard is. We this as an obviousness- brings us to a consideration effect. its patenting situation, double is, is on the that the thoughtfully We dealt with this *7 is here difference between what claimed Kaye, supra. situation in Robeson and patent in to and what claimed is The examiner and the refused board only apply Braithwaite such a difference ground is to those cases on the it would to amount their modification as be obvious to “extension” of would holdings due to factual differences. ordinary in in the those skill art only examiner felt the claims here differ prior Appellant contests art. “colorably” patent claims, position on Office on obviousness disagree; which we and board relied electrolytic process be patent the fact that here the claims predicated havior cannot be on the basis “generic” are and “embrace” what citing purely reactions, chemical Ex claimed, here whereas in Robeson and USPQ parte Wilson, (1946) in Kaye mutually the claims were exclusive. said, respect which the board to a not We do see what this difference electroplating copper, for by It makes. is said the solicitor that generic aspect due this to the claims It is not before-hand in determinable patent application of electrolytic “over may processes these what lap.” combining result from different re- see not what difference rejections analogous prin- 4. While to the non-obviousness because the requirement cipally under-lying of 35 that sec- is not § XJ.S.C. prior patent- is not in itself involved double art. technology, is m over what closure of a terminal When either.5 that makes expire patent, con- patents his the additional matter causes two continuation-in-part appli- tained together, is created which situation pre- supporting cations the claims practical purposes for all is tantamount dominating Assuming patent. sented therein. having one in claims all patent, getting all he single patent to con- for a common spe- this generic from overlapping e. tain —and —i. remainder of the same term—are addi- indi- previously haveWe cific—claims. tional, specific claims, specific more claims which generic cated if the they “overlap,” serve as a second line of defense dominating though by definition prove to be should in the double as “distinct” considered Sarett, vulnerable. To affirm this case would patenting re context. principally deprive public serve to 51 CCPA 1180. F.2d knowledge of the contained the added patenting is a Double basis perceive disclosures. We can no sound policy public grounded deciding obviousness-type reason this prevent prolonga primarily intended patenting differently double case from monopoly. case is tion of Kaye. Robeson or sketchy example. the aid With The Patent Office has relied on In specification forecast Siu, supra. haveWe reexamined it come, things Braithwaite able distinguishable and consider rea- he is now obtain cover what claims which explained sons There is Robeson. claiming Assuming application. in this one more than invention here. involved claims, validity the enjoying patent protection he broad single fiber-producing mechanical has been process involved not in Siu did become beyond the which would be continued process by merely naming a different expiration patent, of his allowance specific material, glass, operated on. claims, appealed mat processes involving Chemical different ter sub which does not differ reagents producing prod- different ject matter of that in an un constituting processes ucts obvious, “patentable” say they if inventions even way. he But his terminal disclaimer patentably distinct. possibility has foreclosed the The decision protection. board reversed. an extension of Reversed. Looking the other side of picture, appears to us have KIRKPATRICK, J., WORLEY, C. advantage public —rather J., participate. did than to himself—that Braithwaite has By followed the course above described. Judge (concurring). SMITH, taking filing out his con *8 of tinuation-in-part applications (there the Board that is shows The record appeal examiner- an Appeals another in No. con consisted of 7801 decided here currently), acting examiners-in- he accelerated the disclosure two in-chief and challenge the Appellants not contained in his hastened the chief. the reasons expiration protection legality For date of that of his as board. of dissenting opinion my By expressed therein afforded. terminal dis 927, Wiechert, 54 CCPA he F.2d claimer has hastened well 370 as termina In re 957, protection any my the decision tion he it is view nullity. get legal may How- appeal. result of is this Fur a board such majority’s thermore, accept ever, he has here added considerable dis- I January 9, with this 5. inconsistent are is We not unaware aware overlapping respect 1967, 1615, notice, opinion Commissioner’s 834 with OG entity. Patenting,” single inventive entitled “Double hut it has not been relied on in case. this Gustafson, case, supra). Instead, in the our efforts on this issue is, Wiechert legality attempted to harmonize the various of the board is not an have participate “principles” the “law” “double issue here. I therefore doing, patenting” mandatory appeal provision merits of this so with agree person the ma- the conclusion of Patent Act that “A shall jority. be entitled to a unless” a stated ground rejection applies. Thus we appeal, Turning to the merits of this have held that prohibition 101 contains the section additional observations further few only applicant that an support the conclusion reached patent” “a entitled to invention. majority. Here I refer “same invention” patenting” “law” of “double type patenting”: of “double In re See confusing.1 frequent indeed One factor Robeson, 610, 331 F.2d 1271. CCPA ly overlooked, present pat “double all By proceeding so we have endeavored enting” involving the inven cases same “types” accommodate various tor, subject mat is that as between patenting” “double appeared situations have sought patented ter in the claims to be give before us and effect to the teachings “prior and those provisions of the Patent Act. In re See Act, art” Patent under the 1952 sub Bowers, 886, 1590; 359 F.2d 53 CCPA ject useful, matter is novel and unob Robeson, supra. In re “prior vious in view of that art.” words, other the inventor has made a identify While we have been able “patentable invention” under condi type pat- the “same invention” “double specified enting” tions in sections 102 and 103. statutory provision, with a is not type the case with “obviousness” patenting” The term “double not patenting.” judi- “double cially It stands as a mentioned in the Act.2 1952 Patent certainly created doctrine and judicially created doctrine which acts bottomed on section 103. See In deny applicants patents. very Its Zickendraht, 225, 229, 319 F.2d 50 CCPA contrary appear existence would to be 1529, concurring opinion, Rich, J. The previous opinions statements simply “prior art” under court, Murray, this as stated in In re the terms of section 103. section 103 If 268 F.2d 46 CCPA applicable obviously then there * * * applicant entitled to type would be no need for this of “double prohibitory unless one of the patenting.” provisions statutes, now the It seems to me that “obviousness” U.S.C., Patent Act of Title 35 patenting” “double upon rests applies. judicially recognized policy that an in- Ratti, See also In re 270 F.2d subject ventor not claim matter that 976; Cavallito, CCPA In re 282 F.2d is previously obvious from that claimed 720; Gustafson, In re CCPA possibility because of an “exten- 1358. CCPA monopoly” (patent sion of the protec- tion) concerning previously To date this court has not claimed discarded rejec- matter.3 Under section “double (as “aggregation” exclude others did inventor is entitled Proposed Rich, Legisla- or the- I am not concerned the title See *9 ory Comments, policy, g., estoppel, dedica- tion: Some Geo.Wash.L. of this e. 35 641, (1967); Bullinger, tion, un- I refer to Rev. etc. Nor do here 646-47 subject which, patented, Patenting” if and matter “Double the 1952 obvious “overlap” Act, (1966). patent protection IDEA 10 389 subject protection previously claimed known, however, 2. sections It is well that contrary matter. This has never intended, part, as 121 and 253 were in patent to law. remedial provisions applicable in certain patenting” situations. “double
603 objection using, selling not inven- ations but will remove making, 103. Cf. to under section throughout “obviousness” the United States 96, Brenner, U.S.App.D.C. Hays years. v. 123 term seventeen of (1966). F.2d 287 Commissioner 357 of “dou- Recognizing that doctrine stated, de- address Brenner has and, created patenting” judicially is ble to the Patent Professional Staff livered further, objections “double on that based 30, Office March 1966 of the Patent “unavoidable,” may In re patenting” be 825): (825 O.G. Robeson, supra, me that to seems * * * is satis- applied if the examiner type to should be “obviousness” that invention any fied the claimed preventing “extension of the ends clearly ap- the teach- doing justice obvious in of monopoly” view ings prior art, person a of the plicants. principles The substantive ordinary pertinent having course, may 154, skill not sections 101 and grant- art, patent be provi- then a not compromised. should The remedial be however, affidavits, even if terminal dis- 253, ed 121 of sections sions claimers, presented represent and the like are compromise. Thus a not papers applicant, pat- since type “double whether “obviousness” change so enting” cannot what is obvious noth- in fact does exist becomes may become unobvious exercise more a needless mental therefore patentable [Emphasis where, here, no invention. can be cases as there monopoly” 825 at 827. added.] of the O.G. “extension of because provisions .Act. remedial the Patent Referring only to the Commissioner’s disclaimers, comments as to Accordingly, terminal our that view is pat- “double case “obviousness” terminal disclaimer not overcome will teachings enting” is based rejection objection that the based on section applicant cannot be under 108. considered seeks to claim the inven- “same Bowers, fn. meaning subject In re See 359 F.2d 7. tion” —here mat- same (cid:127) in a “double That which is “obvious” ter-—and it will overcome a patenting” may un- objection appli- sense not be obvious based on simply 103 der terms section cant seeks to claim inven- a “different meaning subject less information is available un- because tion” —here “different der section 103 when the not matter” —which is “obvious” view may either proper earlier claimed matter reference not be con- considered alone or in combination with sidered.5 4 “prior art.” plain fact here is confusing may “prior It indeed be some relied on for learn a terminal removes resort to art” under the Patent Act and any objection pres- prohibited section under “obviousness” patenting” the claimed invention “double situ- law.6 Thus ent view place pat inquiry permitted 4. is no There in Patent Law for under “double requi enting” compared the use of the term to the “invention” as is narroioer patentability. inquiry permitted when site Older cases to under section 103 ignored. proper should v. In re effect be Graham John is a the Bowers, reference. Co., U.S. seems Deere 86 S.Ct. 359 F.2d fn. 7. (1966); mandatory Walles, L.Ed.2d 545 that the to me statutes are applied, F.2d 54 CCPA 710. The Com be there should be must affidavits, jmtenting” missioner’s comments when the resort to “double text, contrary proper infra in Graham as See In reference. considered, Ornitz, all the relevant be must CCPA-. facts just pro con, not one side. in- same I refer here course may inventorship ventorship. section Where Under pro- different, considered but should “double Patent Office situations, 102(e) the claims considered and 103. under sections ceed “prior Conversely, art.” *10 604 authority invention is not obvious view of Patent Office as art,” “prior position, nothing 103. to this section seems I find de- in that give opinion contrary
me that
effect to
cision or
refuse to
which is
result
terminal disclaimer
overcome a “dou-
reached here.
Moreover Siu
patenting” rejection
precedent
on
ble
based
“ob-
viable
“law”
contrary
patenting”
my
viousness” is
“double
subject
1952 Patent
as in
Congress
provided
Act.
has
for terminal
matter relied on in the Ladisch
accordingly.
“prior
disclaimers and must act
was
art”
under sections
102(e), 103,
120. A
review of
In the
case
Patent Office
record in that case shows
were
that there
argues
patenting”
that the “double
situa-
(Ladisch
Siu)
inventors
different
and
“overlapping”
tion before us involves
assignee (the
common
U. Gov-
S.
claims and the terminal disclaimer fails
royalty
ernment had a
free
license
patenting rejec-
to “overcome the double
cases)
application
when Siu’s
see,
tion.” I fail to
Patent
Of-
rejected by the examiner.8
exam-
explained,
alleged
fice has not
how this
rejec-
patenting”
iner made no “double
operates
prevent
fact somehow
Instead,
tion.
he relied on
admis-
Siu’s
consequences inuring
filing
sion
that he derived the
disclaimer,
Clearly
terminal
section 253.
subsequently applied
Ladisch
it to
the terminal disclaimer eliminates the
view,
glass.
the examiner’s
In
molten
objection,
e.,
basis for the
i.
“extension
teachings
“prior
art”
Ladisch’s
were
monopoly.”
appellant
As
here claims
LoPresti,
F.2d
re
333
to Siu.9 See In
subject
matter
is claimed
932,
reference
first
prior
52
755.
in his
CCPA
there can be no ob-
Of-
jection
to “double
based on section 101.
opinion. The
Walles,
fice was in the board’s
supra. Because
terminal
opinion
expressly points
court
disclaimer,
of this
there can be no “extension
7
patent,
out
issued
monopoly.”
“the Ladisch
application [sic],
an
earlier
The Patent Office has failed to state
properly cited as a
reference10
single
why
reason
the terminal dis-
against
application,”
appellant’s instant
claimer is ineffective other than that
270,
42
at
F.2d
868.
[Em-
at
CCPA
“overlap.”
Siu,
InWhile
re
phasis
short,
267,
In
I
not be-
864,
222 F.2d
added.]
CCPA
relied on
they
Subsequently
Ornitz,
re
matter.
were advised
376 F.2d
-.
CCPA
attorneys
by patent
they
Land,
866, 880,
See In
were not
re
subject
joint
fn.
mat
Moreover,
inventors and that
54 CCPA 806.
where
ap
Separate
these
er
applicable,
latter
was divisible.
individual
sections
plications
filed,
then
each of which
terminal
were
disclaimer cannot overcome a re-
jection
in
and described
other’s
based
on those
identified
A
sections.
presented
only
terminal
vention
disclaimer
overcomes
certain
objections
respective
patenting."
their
contributions.
See
based on “double
Land,
supra
F.2d 872
fn.
3.
7. No “abuse” of the terminal
suggested.
102(e),
Robeson,
10.
has
Sections
and 120.
See In re
supra.
respective applications
supra
order of
See also
fn.
“Evils of
Patenting,”
Double
follows: