[6] Finally, we turn to the factual inquiry required here and the issues raised by appellants' points 2, 3, and 4, supra. We note that the board characterized the double patenting rejections based on the design patent as being under 35 U.S.C. 101. While we disagree with that characterization, we do not believe that error in stating the basis to be fatal and accordingly treat the rejections simply as "double patenting of the improper extension of monopoly" type.

Appellants argue that their design patent protects only the ornamental design, while the claims on appeal are directed to the exact structure and function of the lamp. The claims on appeal, it is urged, require the cooperation of certain elements, namely an electrode, a phosphor coating, an ionizable medium and starting gas and an envelope of vitreous material, not shown nor covered by the design patent. We cannot accept this argument. The design patent protects the article of manufacture embodying the ornamental configuration. 35 U.S.C. 171. The article of manufacture is recited therein as being a fluorescent lamp. In our opinion, the evidence of record clearly establishes that the term "fluorescent lamp" has a well-defined meaning which necessarily includes those elements recited in the claims on appeal. Once the design patent expires, the public should be free to construct fluorescent lamps having the helicoid configuration disclosed without restraint by the claims here on appeal. While the claims on appeal employ terminology which includes helicoid design other than the specific design of the patent, we do not find such differences significant here. Nor do appellants seriously so contend. We agree with the board that the claims on appeal are directed to an obvious variation of the invention defined by the claims of the design patent as demonstrated by the secondary evidence of record.

Appellants further argue that no extension of monopoly will exist since there are several ways in which the invention covered by the design patent can be practiced without infringing the claims on appeal. Without discussing appellants' hypothesis in detail, we note only that these appear to be unrealistically strained efforts to produce an article that conforms to the illustration in the design patent but not to the claims on appeal and results in an article of dubious commercial worth.10 We fail to see the pertinence of the affidavit placing in evidence an advertisement of a table lamp having a helicoid "metal candlestick" base.

While it may be unnecessary to do so, we treat also the "obviousness" type double patenting rejection based on Olsen and Ewest. We cannot sustain that rejection. Comparing the invention defined in the claims of Olsen with that defined in the claims on appeal, we fail to see that the latter is obvious. Olsen calls merely for a glass tube having dis

10 For example, making the lamp envelope only and painting it as a barber pole.

connected sections and even if Ewest would render obvious the use of such tube for fluorescent lamps, the desired noncircular cross-section arising from a continuous helical groove would be lacking.

Accordingly, the decision of the board is affirmed with respect to the rejection of claims 1, 6, 7, 9, 15, 24, and 26 to 28 as unpatentable over the design patent on the ground of double patenting, and reversed with respect to the rejection of claims 7, 9, 24, and 26 to 28 as unpatentable over the claims of Olsen in view of Ewest.

BALDWIN, Judge, concurring.

I am in complete agreement with the majority opinion, but wish to take this opportunity to adhere to my position regarding the handling of terminal disclaimers by the Patent Office as set forth in the concurring opinion in In re Jursich, 56 CCPA 1141, 410 F. 2d 803, 161 USPQ 675 (1969).

I particularly approve of the action taken by the Board of Appeals in such cases as Ex parte Fertig, 155 USPQ 475 (1967) and Ex parte Deering, 157 USPQ 164 (1967).

418 F. 2d 937; 163 USPQ 684

JACK ST. CLAIR KILBY v. HERBERT NELSON (No. 8206)

PATENTS

1. CONSTRUCTION OF SPECIFICATION AND CLAIMS-INTERFERENCE COUNTS-REFERENCE TO SOURCE SPECIFICATION

Fact that party urges that different interpretations of word in counts are applicable may be treated as justifying analysis from viewpoint that ambiguity is involved; therefore, interpretation of counts in light of opponent's patent in which they originated is appropriate.

2. INTERFERENCE-INTERFERENCE IN FACT

Although consideration of "gist of the invention" has been found useful in resolving question of support for counts copied from a patent in certain circumstances, basic rule is that applicant who copies claim from patent must show that he is entitled to make claim and that all limitations in copied claim are considered material in determining applicant's right to make claim.

United States Court of Customs and Patent Appeals, December 4, 1969 Appeal from Patent Office, Interference No. 92,840

[Affirmed.]

Ellsworth H. Mosher, attorney of record, for appellant. Samuel M. Mims, Jr., Stevens, Davis, Miller & Mosher, of counsel.

A. Sherman for appellee. A. Russinoff, of counsel.

[Oral argument November 4, 1969 by Mr. Mims and Mr. Russinoff] Before RICH, ALMOND, BALDWIN, LANE, Associate Judges, and MATTHEWS, Judge, sitting by designation.

ALMOND, Judge, delivered the opinion of the court:

This appeal is from the decision of the Board of Patent Interferences awarding priority of invention of counts 1-4 of Interference No. 92,840 to Nelson, the senior party. The counts correspond to claims 1, 3, 7, and 8, respectively, of Nelson patent No. 2,972,092, issued February 14, 1961 on an application filed August 11, 1959,1 which claims were copied by Kilby in his application serial No. 169,557, filed January 29, 1962. No testimony was taken by either party and the senior party Nelson is restricted to his August 11, 1959 filing date for conception and reduction to practice. Before the board, Kilby relied for priority on two prior applications of which his involved application is stated to be a continuation-in-part but, before us, he limits his reliance to just one of them, serial No. 811,486 (the '486 application), filed May 6, 1959.2

Nelson contended before the board that none of the Kilby applications support the counts and the board agreed with that contention. In determining whether the board was guilty of reversible error, we conclude that the '486 application does not support the counts and that the board's decision must be affirmed for that reason.

The invention relates to a semiconductor circuit element, such as a diode or transistor, of the mesa type. The record shows that a mesa type element may be formed by diffusing into a semiconductive wafer of one conductivity type, such as P-type, an active impurity which will convert the surface of the wafer to the opposite conductivity type, such as N-type, and provide a rectifying P-N junction at the interface between the surface zone and the wafer interior. Thereafter a portion of the wafer surface is removed down to and including the junction region to leave the remaining portion of the surface zone of N-type conductivity extending like a plateau or mesa from the remaining portion of the wafer of P-type conductivity. The size and the shape of the P-N junction of the device between the mesa and the wafer corresponds to the size and shape of the mesa and may be controlled with precision. Counts 1 and 4 are representative:

1. A circuit element comprising a semiconductor wafer having two opposed major faces; at least one mesa of semiconductor material on one of said major wafer faces; an insulating coating on said one major wafer face around each

1 Serial No. 833,031 for "Semiconductor Devices."

Patent No. 3,138,744 issued on that application on June 23, 1964.

Kilby's right to make in his directly involved application was raised initially through a motion to dissolve by Nelson, which motion was denied by the examiner.

said mesa; and a conductive film over the top of, and in contact with, each said mesa and the surrounding coating.

4. A two-terminal device comprising a semiconductor wafer having two opposed major faces; a surface zone of given conductivity type on said wafer including one of said major faces; an opposite conductivity type mesa on said other of said major faces; a rectifying barrier between said mesa and said surface zone; an insulating coating on said other major face around said mesa; a conductive film over the top of, and in contact with, said mesa and the top of the surrounding coating; and electrical leads to said conductive film and to the opposite major face.

For an understanding of the invention as disclosed by Nelson, reference is made to a sectional view shown in Fig. 2 of his patent and reproduced in enlarged scale in his brief as follows:

This figure shows a diode comprising a P-type germanium wafer having an N-type mesa projecting upwardly therefrom with a P-N junction between the mesa and the bulk of the wafer. The element is extremely small as evidenced by the disclosure that the mesa may measure less than 2 mils in diameter. An insulating coating 26 is deposited around the mesa and then a conductive film 27, with a thickness of about 0.1 to 0.5 mil, is evaporated over the top of the mesa and a portion of the insulating coating 26. This film forms a conductive member which has a lateral area considerably greater than the mesa. To complete the diode, a conductive pellet 21, which may also have a greater lateral area than the mesa, is bonded to the conductive film 27, a conductive pellet 22 is bonded to the opposite face of the unit, and lead wires 23 and 29 are attached to electrodes formed by pellets 21 and 22, respectively.

The structure disclosed in the Kilby '486 application is illustrated in plan and cross-sectional views in Figs. 1 and 3, respectively, thereof:

The figures show, in greatly enlarged scale, a miniaturized electronic module made up of interconnected elements, including a transistor designated generally as 14. The module includes a block of semiconductor material 19 which may be of N-type. The transistor which is formed within and upon the block comprises a portion of the block of N-type conductivity together with a mesa portion made up of layers 21 and 22 of semiconductor material which are of conductivity types respectively opposite to and similar to the type of the main body of the block. The layer 21 constitutes the base region of the transistor and the upper layer 22 the emitter region. A portion of the block 19 itself forms the collector. After the block with the layers 21 and 22 is formed, a coating 20 of insulating material is provided over the entire block. Thereafter, small apertures are etched in the coating at locations for the emitter, base and collector contacts or electrodes shown at 12, 13, and 11 as by using a mask in conjunction with a photo