Thе primary question presented by this appeal is whether the filing of a terminal disclaimer under 35 U.S.C. § 253
1
may in appropriate сases obviate an objection to patentability based on obviousness under 35 U.S.C. § 103.
2
We hold that it may not. To the extent that Application of Robeson,
Appellant Hays’ patent application,
3
еntitled “Pharmaceutically Effective Water Insoluble Derivative of Ephedrine and Propadrine,” was denied by the Patent Offiсe as unpatentable over the claims of a patent issued to Keating, a co-employee with Hays of aрpellant Wallace & Tier-nan, Inc., the assignee of both the Hays application and the Keating patent. In connection with a petition for reconsideration of the decision of the Patent Of
*289
fice Board of Appeals, the applicant filed a terminal disclaimer
4
and asked that the Board remand the application on appеal to the Examiner for consideration thereof, The Board denied the petition for reconsideration, and the applicant filed a petition to the Commissioner to reopen the case in view of the filing of the terminal disclaimеr. The petition to reopen was denied, citing Application of Siu,
I
As to the issue of obviousness under § 103, we have reiterated time and again that a presumption of validity accompanies the aсtion of the Patent Office, and that a court should not interfere with that action “in the absence of new evidence сarrying ‘thorough conviction’ that had not been considered by the Patent Office.” Zenith Radio Corporation v. Ladd,
II
Appellants’ principal effort before us is limited to showing that, while the Hays ‘ invention” may be obvious under 35 U.S. C. § 103, “in any event the claims of Hays define a different and significantly different invention from the invention pointed out by the claims of Keating and thus the double patenting rejection is obviated by the terminal disclaimer.” (Emphasis in appellants’ brief.) In answering this contention, we find it unnecessary to undertаke an analysis of the differences between the Keating patent and the Hays application, or to determine whether the Hays “invention” is different from the Keating invention. Since appellants’ contention for patentability based on the filing of the terminal disclaimer ássumes obviousness, § 103 is an absolute bar to the grant of a patent.
The 1952 amendment to 35 U.S.C. § 253, on which аppellants rely, is not to the contrary. It simply provides, in pertinent part, that “any patentee or applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted оr to be granted.” Without any legislative history to support it, an argument is spun from this statute which would provide sub silentio an exception to the injunction of § 103 and allow, at best, double patenting in violation of 35 U.S.C. § 101 and, at worst, the patenting of “inventions” which would not “promote the Progress of Science and useful Arts.” U.S.Const., Art. 1 § 8 [cl. 8].
The purpose of the 1952 amendment to § 253 apparently was to eliminate *290 terminal problems in related patents issued to the same inventor on different days through no fault of his own. By filing a terminal disclaimer the terminal dates of the patents can be made the same. See Application of Siu, supra, 222 F.2d at 270 n. 2, 42 CCPA (Patents) at 867 n. 2. Seе also 1 Deller, Walker on Patents § 62, p. 307 (2d ed. 1964). It certainly was not the purpose of the amendment to allow assignees of patents to improve and expand their patent positions by the expedient of limiting the monopoly to the terminаl dates of prior patents.
Unfortunately, there is no legislative history explaining the purpose of the 1952 amendment adding the second paragraph to § 253. It has been suggested that “its proponents contemplated that it might be effective in some instances, in combatting a defense of double patenting *
*
Federico,
Commentary on the New Patent Act,
35 U.S.C.A. p. 1, 49 (1954). While the proponents of the 1952 amendment may be rеsponsible for the suggestion, apparently they were unable to have it included in the legislative history of the amendment оr in the statute itself. Certainly such unsupported and unadopted suggestions cannot override the command of § 103 and the line of Supreme Court cases
7
which prohibit double patenting under any guise. “To adopt the result contended for by petitionеrs would create an area where patents are awarded for unpatentable advances in the art * * * [and] would lower standards of patentability to such an extent that there might exist two patents where the Congress has plainly directed that there should be only one.” Hazeltine Research, Inc. v. Brenner,
Affirmed.
Notes
. 35 U.S.C. § 253, in pertinent part, reads:
“ * * * [A]ny patentee or applicant may disclaim оr dedicate to the public the entire term, or any terminal part of tire term, of the patent granted or to be grantеd.”
. 35 U.S.C. § 103:
“A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if thе differences between the subject matter sought to be patented and the prior art are such that the subject mattеr as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which sаid subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.”
. The Hays applicаtion discloses a pharmaceutical composition useful in the treatment of asthma. Appellant Wallacе & Tiernan, Inc. is a drug manufacturer.
. The terminal disclaimer ■would terminate the Hays patent, if granted, on the same date as the Keating patent.
. See also Reynolds v. Aghnides, 123 U.S. App.D.C.-,
. In
Zenith
we said: “However, as we have frequently stated, tire findings of the Patent Office, an expert administrative body, especially when confirmed by the District Court, will not be overturned here unless clearly infected with error.”
. Miller v. Eagle Manufacturing Co.,