*1 his claims is hydrocarbons in structural limitations of dehydrogenating by the refer- hydrocarbon fuel critical and must be “met” cell electrode ences. There is no evidence et al. of Gunn necessity says appellant is affirmed. decision the board frag- hydrocarbon production of for the Affirmed. *** or that electrode ments at the re- differs in Wheeler] [Foster
spect. argues
Appellant the references
cited should not been combined and have that, any event, they do not meet
structural limitations of the claims. allegation impropriety
combining references, think, can we Application Harry Dudley WRIGHT. appellant’s stand the fact of state Appeal Patent No. 7853. concept ment before the board that “the employing hydrocarbon of a fuel cell United States Court of Customs dehydrogenation catalyst Appeals. in an elec and Patent trode” old one. The examiner May 16, 1968. hydrocarbon went further than de hydrogenation art. Furthermore, appellant we do not think argue fragmentation or ion-
can that the by
ization effected his radioactive mate- unexpected
rial is the similar view of dehydrogenation
results effected catalysts pri-
used in the fuel cells of the materials
or art and the radioactive dehydrogenation processes.
used in other catalysts Gunn, dehydrogenation
specified temperature fuel cells low “catalytic place
because action must take promoting the'electrode surfaces
gaseous Italics ionization thereat.”4
added.) Wheeler, ra- In Foster nuclear productive nu- diation is described as reaction, change, radi- chemical free
clear cal activation and ionization. J., Worley, J., Almond, C. agree with the solicitor We sented. the mere of an element recitation necessarily claims is not deter criticality. minative of its See Eisenhut, Accordingly, find no merit we appellant’s each contention that Appellant’s brief states:
3. He also stated: * * * Classically, cata- neither et al nor the function of the Gunn primarily depend lysts of de- been that structure in such cells has pro- dehydrogenation gas, hydrogenation rather of the fuel products hydrogen formation of for oxidation that can be elec- atoms vide troehemically oxidizer, consumed. and to accelerate oxidation.
RICH, Judge. appeal from the decision This is Appeals af- Office Board of Patent firming rejection the examiner 1-8, application all of claims 12, 1963, 265,315, March serial filed No. Digital Selector entitled “Sectional Switch Construction.” optional application “divi- This is an application serial sion” 820,543 No. as Patent No. which issued 3,089,923 May 14, 1963, 2 months on filing application at after filed bar. A terminal disclaimer2 was disclaiming por- rejection after final any patent issued tion of term of beyond application appeal on expiration patent. date of said issued ap- 3,089,923 and Patent plication contain identical disclosures.3 Pollock, Hall, I. Wash- Moore Elliott & ground rejection is “double The sole Lawlor, An- C., ington, Los Reed C. D. pat- patenting,” all eleven claims of the Cal., appellant. geles, for being ent on. relied Schimmel, Joseph D. C. Washington, issue board stated that C., (Jere Sears, Washington, D. W. patenting is the effect counsel), of Pat- Commissioner terminal disclaimer.4 we read its ents. opinion, held the double it WORLEY, Judge, and Before Chief rejection supportable, notwithstand- ALMOND, Judges RICH, SMITH, de- the terminal disclaimer and our .* KIRKPATRICK Robeson, cisions in In re opinion Judge, Rich, Kaye, delivered the F.2d CCPA pre- the court: both cited and * Judge, part Eastern District District and ex- claims as of the disclosure Senior by designation. sitting Pennsylvania, cluding the reference in the “divi- cross says: application “This is sional” whole not show the 1. The record does my co-pending application of divisional history prosecution but examiner appellant 820,543. Serial No. refutation, stated, without ap- 3, 089,923.” Now Patent No. There filing of the divisional initiated the pears in the is- to be cross reference response plication which was co-pending to the “divi- sued requirement or election for restriction application. sional” See Rule 79. species, has no § so that 35 U.S.C. applicability. upon” only 4. The examiner “relied simple of disclaimer 2. The usual form Wright patent but he also cited as “Cor- any May 14,1980 of term after “all of the patents three roborative references” granted on hereafter which he referred to in the course of any application, so the basis of said argument Answer. The board expire patent granted hereafter will such they not clear to it “of what said was. Patent as U. S. Letters at the same time alleged to While be corroborative.” May 14, 3,089,923 issued on No. why making presumptions certain Griswold, 1963.” Cf. patents, the examiner referred another footnote rely any the board did not support of them form of disclaimer. We its affirmance. therefore unnecessary drawings specifi- say, find it to consider them. 3. That is to including identical, not cations op- Appellant exactly by it, sumably submits that under 35 TJ.S.C. considered entirely true, possible posite ground that it or more described to have two vention claimed in single disclosure, distinct bar and the issued described, substantially and that the inventions were “are that the directed same,” the “claimed *3 dif- which is distinct from matter in each instance and is identical changed Clearly, claimed in claims is one of ference in the therefore, to construe verbiage our task is of definition of the breadth or right. elements,” and determine who corresponding and that the claims Preliminary discussion, it “any sub- claimed to further between the difference * * * explain necessary jects apparent.” the nature of matter is not subject matter is. It disclosures” the “identical referred to portions equal of those “the drawings, Figs. 1 and 6 of the are the closures that which are the reproduced: here drawings, claims.” is, digital whichis switchthe construction or any are, manually-operated desired numberof similar such embodied binary together display or numer- other non-decimal fastened can be systems. adaptation is accom- digits ical Such control number desired arrangement plished proper Fig. as- many circuits. switching contacts, both fixed and sembly Part 10 is shown. three units movable. elevation shown in side one unit is 14, 15, casing Fig. has a argues Appellant brief appear in (“22” as it does added and claimed are two inventions disclosed figures), Fig. like a shal- in other “The ‘Wall Invention” and Structure’ or box, in which a thumbwheel low ‘Switching’ Invention,” contending “The rotatably switching mounted. 30 is wheel the former finger lugs 35 with ten wheel has The intervening appeal. the latter in 34. The arcuate notches brief, patent 1-6 are said flange on which has a rim geometry of front of relate to the *4 “digits” car- 9 are from 0 to indicia or casing whereby, may the they appear the windows ried so that Fig. 6, seen in extent to which the “the front of the unit on the 28 in each switch, switching during wheel be rotated appear in “547” as the numbers operation governed by any given is showing Fig. 1, individual where the relationship physical exists which be- switching The curved units are set. finger lugs tween adjacent several and in its spring detent holds the casing portions of the switch snap position causes it also set diverging 10.” This includes the sur- manually position rotated. when into 15a and faces the curvature con- movable Each wheel 30 carries the tacts, 7-11 are said notches Patent claims unit of the switch example, 80 for interlocking directed rela- by a are carried fixed contacts tionship and of the individual features “printed” of the circuit board so-called says hand, units 10. On casing type. open of the circuit The side pellant, appeal claims on by securing thereon, and over is closed aspects are directed to the “electrical switching wheel, the circuit board. appears applicant’s invention.” He Fig. 6, circuit As shown in rely heavily on recitations of claim “cor- being next one shown signals relation” of information derived unit, adjacent protrudes rear of the “in- from the switch with contacts casing ter- the fixed contact the minals, where switching wheel,” he dicia on the which figure, are not shown in this patent says nowhere mentioned soldering connections. accessable claims. many held to- 10 as used are units line of dis- clear We fail to see the through- assembly by gether rigid patent tinction between lip at Each has a unit bolts appellant’s brief as- tion claims which extending end, shown side as front one claiming also fail to find the serts. We Fig. 1, with interlocks which at 26 by asserted of identical adjacent desired unit. When We do examiner and the board. assembled, the as- number of units is significant in the sub- find differences by sembly may metal end be finished off subject matter. of the claimed stance assembly Fig. 1, plates 12, which recapitu- rejection as The examiner’s mounted, plates panel the end can be lated his was as follows: Answer having flanges holes 58. screw rejected patent 1-3 are on Claims claim patenting, specification appears 7 for double fall into inven- being parts. claimed part as the differnces describes first only.” con- “in 4-6 and 8 are primarily mechanical features rejected configuration; claim 1 for the second struction and patenting, though they primarily “differ from part electrical fea- describes arrangements patent claim in is broad- window as the contact tures such ly adaptation claimed.” Nevertheless, the decimal examin- to both and their In re Braithwaite are both combination claims claimer as having and recent claimed, the re Robeson and In re and the terminal disclaimer. fer in pra, if the invention like that patent] matter of the patent.” examiner’s Answer as of the examiner’s in each instance and the difference claims “the claimed or of lant, invention set the claims it said it was “not tinguished er’s 7 was responding appears opinion Appealed Because number of rejection. F.2d 633 directed position and refused to In re Robeson there was affirming, substance as to the the breadth of patent “that cases decided rejected identical, obviating Rejection timely in mind the law which subjects matter.” 54 to have found differences on Patent Claim 7 the eases elements.” While claim 1 and Jentoft, set terminal expressed its own view that to a was this claim necessary (April 18, subject matter found forth in coacting one of filing patent for double forth the board that there is of “double of composite 1589 and 1604 rejections separately, cases, and 4-6 the claimed Kaye, In re examiner’s of claim Claims relied Cust. & give any disclaimer difference of a terminal dis definition of and the changed in the to consider 1968). claim 1 elements; In [7] this court: patent portion 379 thereby adopted switch 1-3 8.” defines patenting” apparent” the board Kaye, “only Pat.App., including by appel- following F.2d 594 effect verbiage appealed identical obviates Bowers, position claim 7 in “the [of applies (1967) short, Claim each con- dif cor- two one su- its an on claim concerned with merely terminal disclaimer was tance double differences between the switch wheel is aminer claimed but with the rection. important. The disclaimer obviates the ly tion, of each same invention. not formation of discrete the circuit board similar to claim they cannot be itation to means for and a further jacent combination overlies Additionally, differences which the indicia are seen. These 974, 7-11, a difference he then characterized reason as that through specified. gether” cent 26 at the front of each each unit refers Claim 3 is Claim 2 is not do panel before the unit, and the 1009, of the disclaimer that becomes 1, namely, analysis unit. The examiner not contain the claim 7 which are not amounting patenting rejection limitation in appears switch adds and locks with the (the through-bolt Its said units In such underlies the signals specific positions corresponding define not 53 CCPA 800. Before the relied rejection the examiner another limitation dependent of the limitation that said present 1747; made in his final filing claim 1. claim contains a to have been rotatable In re Answer, the a differently being compared forming patent elements overhanging flanges to be directed to the mounting situation, obviousness of the patentable novelty, be between binding independent falls for the same “means In re filing unit window lip to the movement Baird, on claim 1 and same generated, filed, *5 patent claims. 26 of casing pointed to a also 44), of Borah, and disclaimer, next the switch organized, where either a extending applicant. them to- elements, examiner claim properly through showed, the ex number side matter 7, claims accep rejec- clear to in- claim adja- were lim- also 354 un ad- di- lip sisting assembly and with some of several switch- limitations of an being ing units, details not recited claim 1. How it of units details generating signals unimportant, corresponding to the from claim is differs window, appearing significant being differs indicia fact being respects digital system binary system patent claim 7 in the from being signals produced rejection is therefore in accordance claim Its limita- added disclaimer therewith. None of these terminal obviated patent claim 1 are to found in same reasons. tions and, dependent course, of these Rejection and 8 enjoy i-6 claim all differences from They on Patent Claim parent to be found in claim 5. are, therefore, not to the same invention claim Beside claim as claim 1. disclaimer obviates claim, pat- independent other is the patenting rejection. their rejec- ent claim relied also later, of claim 7, discussed Rejection Claim 7 is, dependent in accord on it. Claim 1 on Patent Claim 4 contentions, truly di- noted, just 7 de- claim aspects to “wall structure” rected pends from claim 5. Patent many limitations contains depends from Claim claim 1. configurations related the switch broadly switching describes the means housing wheel, the left illustrated specifies while it includes Fig. finger 6, above, adjacent engaging printed wiper circuit and a operator. most, Many, if not it, being relatively two movable lacking limitations we these find switching upon effect rotation
pealed
which,
on the
(wheel).
rotor
Claim 7 of the
hand,
contain
with re-
limitations
con-
tion likewise
with electrical
deals
spect
their
electrical contacts
tacts
neither it nor claim refers
relationship to the indicia on the wheel
printed
to a
circuit.
Claim 7 recites
found
separate
wheel,
contacts
one
on the
course,
While,
claim 1.
all
slip ring,
the nature
called
read
claims
housing
switch and
identical
contact,”
“brush
con-
remains
*6
in
structure
described
the
terminal,
nected
a common
the other
necessarily
application
and the
thereto,
being called a “switch arm
which
means”
relate
do
find what is
we
not
with the fixed
in the
connects
terminals
in
4
to be at all
claims
and 5
defined
positions
different
The
the wheel.
same as what is defined
said,
examiner
“This claim contains
concluded,therefore,
claim 1. It
be
must
* *
limitation to brush contact which
that these
do
identical
not define
is found
4
de-
claim which is
not,
they
inventions.
the ter-
Since
do
pendent
Thus,
from claim 1.
is the
it
any
disclaimer, obviating
possible
minal
position
Examiner’s
that
claim de-
this
patent protection,
timewise extension of
claim 4
fines an invention like that of
patenting rejection.
obviates
double
patent.”
of the
dependent
6
on
Claims and 8 are
claim
We believe
examiner
misreads
indirectly
depends
5. Claim
from
8
we find
4
claims as
in claim
element
by being dependent
5
patent corresponding
claim
on claim 7 of the
the “brush
depends
7;
“wiper
5.
from claim
Claim
contact”
claim
rather the
merely
“digital system”
corresponds
recites that the
means” of claim 4
system
Furthermore,
and that
claim is a decimal
switch arm of claim 7.
positions
importantly, comparing ap-
the switch wheel
moves to
and more
(Divid- pealed
spaced
apart, approximately.
parent
36°
claim 7 and
claim 5
its
parts
equal
parent
a circle
neces-
into ten
claim 4
and its
sarily
segments.)
must,
results
36°
as we
we do
them to
not find
conjunction,
7 and
limitations
add
be directed to the same
reciting
comparing pat-
kinds of
to claim
the two
the reasons stated in
by
carried
ent claim and
contacts
claim When
Walles,
inquiry
dependent
inquiry
the limitations
factual
requires
all
considered,
dif-
that
mat
find still
we
are
ter defined
claim must
rejection
the entire
of claim 7
The
ferences.
.
considered
disclaimer.
the terminal
obviated
at -.
Conclusion
Here,
me,
it
seems
affirming
The
decision
opinion
carefully developed
has
the fac-
rejections
examiner
the several
analysis
support
necessary
tual
its
ground
conclusion
has
“same invention”
reversed.
not been
I do not find
twice claimed.
comparable
analysis
in the
factual
Reversed.
dissenting opinion.
therefore,
am,
I
persuaded by
major-
the dissent
Judge (concurring).
SMITH,
ity is in
agree,
cannot
error.
dissenting opinion
prompts
herein
analysis
convincing
absence
factual
me to
a few additional observations
add
contrary,
the same combina-
support
conclusion
reached
tion of
elements has been
majority.
both the
here arises
“same
improper
present
issue
think it
record
patenting”
type
attempt
of “double
situ-
judgment
vention”
value
Robeson,
ation.
In In re
“in
sent does as
the claims
es-
(1964),
part”
directed;
we observed that
CCPA 1271
sential
those
are
patent on
second
bar to a
are
differences
between
from 35
changes
scope
verbiage,”
invention arises
U.S.C.
“minor
There,
they
stated:
the court
“minor
contain a
mechanical
feature,”
are other “minor
there
a second
Where the
differences
and ver-
substantially
same as
biage,” or that certain limitations
patent,
they
those of
first
Thus,
“de
me
minimis.”
seems to
barred under 35 U.S.C. 101.
dissent
is bottomed on an intuitive or
467, 44 CCPA 1024.
Ockert,
subjective
has no factual
rationale which
Co.,
Eagle Mfg.
Miller
U.S.
v.
support
record to which
minimis limitations plicant all the benefits of a “means to obtain recite or the other set of claims stationary mounting composite reissue without meet- broadened subjected requirements and (a of a hole for insertion unit” switch public protections turn 35 U.S.C. bolt?), wheels switch directions, positions I 251 and would affirm. 252. §§ regular spaced at inter- the switch “digital” vals, system decimal that the binary, indicia on the generated signals correspond to wheel by position. contact my erred opinion, In has distinguish by failing be- in this case dif- differences in'the claims and
tween subject matter. ferences .in the claimed 55 CCPA Application of Frederick A. PURDY. only necessary to read the claims to It .is Appeal Patent No. 7860. claims, but it is find differences necessary light to read United States Court Customs specification to determine differ- Appeals. and Patent (i. e. in the claimed ences May 16, 1968. Chilowsky, invention). In re Rehearing 20, Denied June Sarett, 908, 806; In F.2d 50 CCPA re 1180; 1005, F.2d In re CCPA Honn, 1469; In 364 F.2d 53 CCPA Walles, re F.2d 54 CCPA 710. repeating that the disclosure bears and that of the
are identical. The of each are of essen
drawn to same combination differing only elements,
tial in the addi
tion, deletion, or in different recitation importance.
terms of of minor elements changes holding such cause directed to different inven
claims tions, be majority our seems overlook holdings previous Knohl, In re CCPA -; Faust, In re F.2d JJ., Rich, Smith and dissented. 1459; F.2d 378 Griswold, 1565; Bridgeford, re 1182; Siu, and In CCPA 864. appear
There does not to be valid
attempt here to claim a different inven- previously
tion from claimed. On contrary, attempt is to secure
more claims previously If is a there
was claimed. genuine by appel- need such
lant, remedy proper resides provisions of 35
reissue U.S.C. of Con- the intent
do not believe