was a graduate student working under the direction of Searles. It is indicated that the suggestion to deviate from the original program came from Searles. Thus, at least some of Lutz's activity in connection with the experiment which produced the new result was attributable to Searles. While not always determinative of the question of joint inventorship, the parties' relationship to one another ought to be taken into consideration concerning the issue of independent invention. We think that the relationship in evidence here militates against the solicitor's assertion of possible double, but independent, invention. [4] With regard to the positions of the examiner and the Board of Appeals we make these observations: The third paragraph of 35 USC 116 contains no provision requiring that joint inventorship be conclusively proved before conversion of the application will be permitted. The requirements of the statute and Rule 45 (c) will ordinarily be satisfied if an allegation of joint inventorship is made, coupled with sufficient evidence to enable a determination regarding the facts of error in not including one or more inventors in the application, and the lack of deceptive intent. Even absent a specific allegation of joint invention, it would be enough if the preponderance of the evidence submitted pointed in the direction of joint inventorship, so long as the existence of error without deceptive intention is satisfactorily demonstrated. Looking at the evidence in this case, we consider that the parties have satisfactorily shown that there was error in not including Mr. Lutz in the original application for patent. Regarding the question of "deceptive intention" on the part of the inventor to be added,1o we specifically disapprove of the board's suggestion that an allegation of lack of such intent be required or even necessary in a verified statement of facts. Again, it will be enough to satisfy the statute if it would be reasonable to conclude from a consideration of all the facts presented that any deceptive intent was absent. In this case such is clearly true. The facts presented, particularly regarding the relationship between the parties and the disagreement as to who suggested the potassium thiocyanate, show the existence of deceptive intention, on either person's part, to be highly unlikely. The statute requires no more and Rule 45 (c) adds nothing in in this regard. [5] There remains only the board's discussion concerning the oath first submitted by appellant and Lutz. In the first place, we see, in the filing of this oath, no indication of a conscious effort on 10 Appellant would have us construe the language in 35 USC 116 in such a manner that no showing of lack of deceptive intent on the part of the inventor sought to be joined is required, arguing that to do otherwise would be inconsistent with reason. While we see merit in his contentions, there is no need, in this case, to make such an interpretation. 374-293-71-16 the part of Searles and Lutz to avoid calling themselves joint inventors. The remainder of the oath, and the petition are worded in such a manner as to make it obvious that the use of the word "sole" rather than "joint" was inadvertent. All pronouns used are plural, and even the word "inventors" which is modified by "sole" appears as the plural. Secondly, we note that, while Rule 65 requires every applicant to state "whether he is a sole or a joint inventor of the invention claimed," the section of the statute upon which that rule is based, 35 USC 115, merely requires an averment by the applicant that "he believes himself to be the original and first inventor." In certain situations, for example where only part of an inventive entity files for a patent, we can see where it might be appropriate for the oath to contain a statement that the applicant is a joint inventor. However, in circumstances such as appeared in this case, we consider it less than fair that the oath be considered by the Patent Office as defective or equivocal. The board in this case specifically disagreed with the examiner's assertion that there were unexplained inconsistencies between the parent case and the application before us. Also, as pointed out earlier, the board disagreed with the examiner's position that the mere fact of disagreement as to who first suggested an element of the invention defeats a claim to joint inventorship. Thus having decided that the position of the examiner was untenable, the board went on and pointed out what it considered additional factors which, when coupled with the fact of disagreement between the parties asserting joint inventorship, made the examiner's position sustainable. This court has now determined that the board was in error in so doing, and that the conversion should have been permitted. Nevertheless, in the absence of such conversion, there is no question that the rejection of the claims of the single applicant, Searles, over the joint publication was proper. That rejection must therefore be, technically, affirmed. However, the case is remanded with instructions to proceed in a manner not inconsistent with this opinion. 422 F.2d 438; 164 USPQ 619 IN RE VIRGIL W. VOGEL AND PAUL W. VOGEL (No. 8198) PATENTS 1. WORDS AND PHRASES "Invention" in 35 USC 102, 103 does not mean "patentable invention." 2. DOUBLE PATENTING-IN GENERAL First question in analysis of law of double patenting whether same invention is being claimed twice; 35 USC 101 prevents two patents from issuing on same invention; "invention" means what is defined by claims, whether new or old, obvious or unobvious; it must not be used in sense of "patentable invention"; "same invention" means identical subject matter; thus, invention defined by claim reciting "halogen" is not same as that defined by claim reciting "chlorine," because former is broader than latter; however, claims may be differentry worded and still define same invention; test for "same invention" is whether one claim could be literally infringed without literally infringing the other; it it could be, claims do not define identically the same invention. 3. CONSTRUCTION OF SPECIFICATION AND CLAIMS-BY SPECIFICATION AND DRAWINGS IN GENERAL In determining meaning of word in claim, specification may be examined; however, especially in nonchemical cases, words in claim are generally not limited in their meaning by what is shown in disclosure; occasionally the disclosure will serve as a dictionary for terms appearing in claims and, in such instances, disclosure may be used in interpreting coverage of claim. 4. DISCLAIMER-IN GENERAL DOUBLE PATENTING-IN GENERAL If same invention is being claimed twice, 35 USC 101 forbids grant of second patent, regardless of presence of terminal disclaimer; if same invention is not being claimed twice, question arises as to whether any claim in application defines merely an obvious variation of invention disclosed and claimed in patent; in considering question, patent disclosure may not be used as prior art; however, in certain instances, disclosure may be used as dictionary to learn meaning of terms in claim; it also may be used to answer obvious variation question; while it is difficult to try to say what is obvious variation of claim, disclosure sets forth at least one tangible embodiment within claim, and it is less difficult and more meaningful to judge whether that thing has been modified in obvious manner; this use of disclosure is not contravention of cases forbidding its use as prior art, nor is it applying patent as reference under section 103, since only the disclosure of invention claimed in patent may be examined; if answer to question is no, there is no double patenting and no terminal disclaimer need be filed; if answer is yes, terminal disclaimer is required. 5. CLAIMS-IN GENERAL Claim is group of words defining only the boundary of patent monopoly; it may not describe any physical thing and may econompass physical things not yet dreamed of. United States Court of Customs and Patent Appeals, March 5, 1970* APPEAL from Patent Office, Serial No. 338,158 [Modified] Harvey B. Jacobson, Jacob Shuster, attorneys of record, for appellants. Joseph Schimmel for the Commissioner of Patents. Fred W. Sherling, of counsel. [Oral argument November 5, 1969 by Mr. Shuster and Mr. Sherling] Before RICH, ALMOND, BALDWIN, LANE, Associate Judges, and MATTHEWS, Judge, sitting by designation. *Petition for rehearing denied June 11, 1970. LANE, Judge, delivered the opinion of the court: This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of all claims (7, 10 and 11) in appellants' patent application serial No. 338,158, filed January 16, 1964, for "Process of Preparing Packaged Meat Products for Prolonged Storage.” The ground of rejection for each claim is double patenting, based upon the claims of appellants' U.S. patent 3,124,462, issued March 10, 1964, in view of a reference patent to Ellies, Re. 24,992, reissued May 30, 1961. No terminal disclaimer has been filed. The Appealed Claims Claims 7 and 10 are directed to a process of packaging meat generally. Claim 10 is illustrative: 10. A method for prolonging the storage life of packaged meat products comprising the steps of: removing meat from a freshly slaughtered carcass at substantially the body bleeding temperature thereof under ambient temperature conditions; comminuting the meat during an exposure period following slaughter while the meat is at a temperature between said bleeding and ambient temperatures; sealing the comminuted meat within a flexible packaging material having an oxygen permeability ranging from 0.01 x 10-19 to 0.1 x 10-10 cc.-mm/ sec/cm2/cm Hg at 30°C. during said exposure period and before the meat has declined in temperature to the ambient temperature; and rapidly reducing the temperature of the packaged meat to a storage temperature below the ambient temperature immediately following said packaging of the meat. The invention is based on appellants' discovery that spoilage and discoloration of meat are markedly accelerated if the meat is allowed to reach ambient temperature before packaging. Claim 11 is directed to a similar process specifically limited to beef. Prior Art The only reference of record is Ellies. Ellies teaches the use of meatpackaging material having the oxygen permeability range recited in the claims. The Patent Appellants' patent, which is not prior art, claims a method of processing pork. Claim 1 of the patent is illustrative. 1. A method of preparing pork products, comprising the steps of: boning a freshly slaughtered carcass while still hot into trimmings; grinding desired carcass trimming while still warm and fluent; mixing the ground trimmings while fluent and above approximately 80° F., mixing to be completed not more than approximately 31⁄2 hours after the carcass has been bled and stuffing the warm and fluent mixed trimmings into air impermeable casings. The Board The board characterized the rejection as follows: The sole ground of rejection is that claims 7, 10 and 11 are unpatentable over appellants' copending patented claims in Vogel et al., in view of Ellies. This is a double-patenting type rejection, whose statutory basis is 35 U.S.C. 101, as indicated in In re Ockert, 44 CCPA 1024; 1957 CD 404; 722 OG 222; 245 F.2d 467; 114 USPQ 330. Thus the board viewed this case as involving "same invention" type double patenting. The board then discussed the differences between the appealed claims and the patent claims and found that the former did not define a "patentable advance" over the latter. It is thus clear that the board was not at all dealing with "same invention" type double patenting but with the "obvious variation" type.1 The board found that the appealed claims merely extended the pork process to beef, and that this was not a "patentable advance." Such language states only a conclusion, since patentability is the very issue to be determined. The board gave the following analysis to support its conclusion: We agree with the Examiner's reasons for holding the application of the claimed method to beef to be an unpatentable adaptation. In addition, the definition of "sausage" in Webster's 3rd New International Dictionary of 1963, on page 2019 is pertinent: "sausage a highly seasoned finely divided meat that is usually a mixture (as of beef or pork) * The examiner's reasons as stated in his answer were that the process steps are essentially the same, and the choice of beef rather than pork "is of no patentable significance since this would appear to be a judicious choice of available meat products, well within the ordinary skill of the art, and particularly so, in the absence of any unusual or unobvious result." The board's use of the dictionary meaning of "sausage," as above quoted, is apparently intended to show that beef and pork are equivalents. Whatever may be their equivalency in other contexts, the dictionary definition of "sausage" does not show that beef and pork are equivalents in the sense of the invention now claimed. Appellants contend that the examiner and the board used the disclosure of the patent as a basis for concluding obviousness. To the effect that consideration of the patent disclosure is improper in testing for obvious-type double patenting, appellants cite In re Baird, 52 CCPA 1747, 348 F. 2d 974, 146 USPQ 579 (1965). [1] The examiner's final rejection and the solicitor's oral argument contend that only a single invention is involved. They go on to point out the differences. Apparently they were thinking that "invention" means "patentable invention." This has not been the language of the law since January 1, 1953. See 35 USC 102, 103. |