Commissioner had authority to promulgate rule to cover factual
situations existing where applicant, whose filing date is subsequent to
filing date of patentee with whom he seeks interference, is required to
file affidavit as to making invention; this he did in establishing Rule
204 (b); also, he could delegate to primary examiner and Assistant Com-
missioner his responsibilities under 35 U.S.C. 135 as to declaration
of interference, and they could decide in the first instance whether a
prima facie case and been presented by applicant. In re Dickinson and
Zenitz, 951.
Applicants completed prima facie case under Rule 204 (b) by affi-
davit stating that utility was obvious to them at time they submitted
claimed compound for testing which was prior to patentee's filing date;
for primary examiner or Board of Appeals to require more than this
sworn allegation was tantamount to a decision with reference to a sig-
nificant facet of the interference itself; whether utility is obvious or
requires testing is question entirely within jurisdiction of Board of
Patent Interferences. In re Dickinson and Zenitz, 951.
Although Patent Office Rule 204 (b) indicates that required affidavit
must be in the nature of that specified in Rule 131, any provision of
Rule 131 which requires more than 35 U.S.C. 135 contemplates in
connection with a Rule 204 (b) proceeding would not be applicable; since
applicants have established prima facie case by means of their affidavits,
any provisions of Rule 131 which may require more, as in the case of
swearing back of a reference, do not apply. In re Dickinson and Zenitz,
951.
In so far as concerns applicant's claims not copied from another's
patent, but claiming compound and process disclosed but not claimed
in patent, Patent Office Rule 204 (b) is not involved; such claims must
be dealt with on different basis than claims copied from patent. In
re Dickinson and Zenitz, 951.
Although affidavit states that, on the basis of affiant's knowledge of
the art at time when application for reference patent was filed, specific
material was used in patented device, patentee disclosed nothing to
limit his "suitable hygroscopic material" to materials then used in actual
practice or to any particular material; whatever may have been actual
material used in the art in actual practice is not determinative of what
patentee actually teaches. In re Neal A. Pennington, 1101.
Resolution of legal issue of patentability under 35 U.S.C. 103 requires
court to consider what would be factually obvious to one of ordinary
skill in the art; factual data in the form of affidavits are of assistance
in making this determination; such affidavits should be given careful
consideration. In re Lulek, 1323.
Anticipating Reference. (Rule 131).
Rule 131 affidavit is ineffective to overcome United States patent, not
only where there is verbatim correspondence between claims of appli-
cation and of patent, but also where there is no patentable distinction
between respective claims; thus, although applicants' claims do not
recite last four steps claimed by patentee, patentee claims involved in-
vention since such steps differentiate the claims only as to scope of
coverage and since patentee claims the only feature of applicants' claims
which possessess novelty over another reference. In re Phil H. Hidy
and William F. Phillips, 1152.
AMENDMENTS TO PATENT APPLICATION.
Although "spherical" in appealed claims is disclosed only in amend-
ment to original specification, amendment was entered by examiner
without objection and Board considered this matter only to the extent
of commenting that applicant is not in favorable position to urge patent-
ability on basis of such term; under these circumstances, court must
accept specification as amended and consider “spherical” in claims as
being properly disclosed in specification; court cannot affirm Board's
rejection of claims on basis which both examiner and Board failed to
assert as a reason for rejecting claims. In re Sidney Dilnot, 1015.
Patent Office Rule 118 authorizes amendment of words in specification
so as to add statements not originally contained in it to conform to
originally filed drawings; enquiry in each case is what drawing in fact
discloses to one skilled in the art; whatever it does disclose may be
added to specification in words without being prohibited new matter
since what is originally disclosed cannot be new matter; if drawing
contains necessary disclosure, it can form basis of valid claim; that
is not to say that Office cannot enforce compliance with requirement
of Rule 75(d) that terms and phrases used in claims must find clear
support or antecedent basis in description so that meaning of terms
in claims may be ascertainable by reference to description; necessity
for amendment to specification is particularly applicable where appli-
cant copies claim from another's patent; in determining whether there
is supporting disclosure for claim, it is of no legal significance whether
disclosure is found in specification or drawings. In re Adolph Wolfen-
sperger, 1075.
Defect of claims 1 and 35 is not that they are broad, but that they
are broader than written description of invention in specification, and
hence that claims are not supported by disclosure; while language under
consideration appears in original claim 1, and hence is part of original
specification disclosure, if it is to be considered as supporting claim in
which it is used, it should also be added to written description of
invention contained in specification; mindful of problems which may
arise by reason of incorporation of new matter in specification in sup-
port of a claim such as claim 1, it is not desirable or incumbent upon
court to consider possible allowability of claims 1 and 35 on the basis
of an assumption as to what, if any, amendment to specification may
be warranted by disclosure of original claim 1. In re Cavallito and
Gray, 1335.
Patent Office Rule 118 authorizes amendment of words in specification
so as to add statements not originally contained in it to conform to
originally filed drawings; enquiry in each case is what drawing in
fact discloses to one skilled in the art; whatever it does disclose may
be added to specification in words without being prohibited new matter
since what is originally disclosed cannot be new matter; if drawing
contains necessary disclosure, it can form basis of valid claim; that is
not to say that Office cannot enforce compliance with requirement of
Rule 75(d) that terms and phrases used in claims must find clear sup-
port or antecedent basis in description so that meaning of terms in
claims may be ascertainable by reference to description: necessity for
amendment to specification is particularly applicable where applicant
copies claim from another's patent; in determining whether there is
supporting disclosure for claim, it is of no legal significance whether
disclosure is found in specification or drawings. In re Adolph Wolfen-
sperger, 1075.
In determining whether claim copied from another's patent reads on
applicant's disclosed structure, question is not whether applicant has
put application in such condition that patent can properly be issued to
him but whether his original disclosure shows with sufficient clarity
that he was in possession of invention claimed by patentee so as to
establish his right to make claim and to so amend application, without
AMENDMENTS TO PATENT APPLICATION-Continued
adding anything new in the way of subject matter, that a patent might
be issued to him containing such claim. In re Adolph Wolfensperger,
1075.
Under Sec. 706.03 (n) of Manual of Patent Office Examining Pro-
cedure, if an original claim contained broader disclosure required to sup-
port questioned terms in rejected claims, such subject matter should
have been added to specification. In re Sus and Schaefer, 1301.
APPLICANTS FOR PATENT.
Although applicant argues that he had right to have his name appear
on patent, regardless of ownership thereof, and although any patent
issued on his application must bear his name as inventor, assignment
placed assignee under no obligation to obtain patent on that application;
hence, assignee's election to obtain patent on another's application, in-
stead of on instant application, deprived applicant of nothing. In re
John W. Hession, Jr., 809.
BOARD OF APPEALS.
General affirmance.
While the Board did not specifically refer to specific rejection, it
affirmed examiner generally and hence affirmed this rejection. In re
Robert B. Gordon and Walter J. Hurford, 1086.
Examiner's answer rejected specific claims on specific reference;
Board having affirmed that part of answer which dealt with reference,
its failure to refer specifically to such claims in this regard was inad-
vertent; Board intended to affirm examiner as to all claims against
which he had applied reference; hence, claims stand rejected over
reference. In re Rainer, Redding, Hitov, Sloan, and Stewart, 1243.
Issues determined.
After final rejection on W alone and on other reference combinations
and examiner's answer which failed to mention but did not withdraw
rejection on W alone, Board has right to reject on W alone; since an-
swer specified rejection on W in view of H, it is not rejection on new
ground if Board finds it unnecessary to rely on H in sustaining that re-
jection; in applying Rule 196(a), “grounds *** specified by the ex-
aminer" must be construed to include all grounds relied on at final
rejection and not clearly withdrawn by examiner's answer, notwith-
standing what appears to be Patent Office practice to regard grounds of
rejection not repeated in answer as withdrawn by implication; where
rejection is predicated on two references, each containing pertinent
disclosure, it is of no significance, but merely a matter of exposition, that
rejection is stated to be on W in view of H instead of on H in view of
W, or to term one reference primary and the other secondary. In re
Vannevar Bush, 752.
It is within Board's discretion, if not its right, to refuse to consider
paper (amendment adding claim) filed beyond time allowed by Rules.
In re Marion L. Smitley, 803.
Rejection of claims as unduly broad, because minimum energy level
is not stated and therefore reliance on element stated in claims would
involve extensive experimentation for ascertaining practical limits
of operation, is reversed; rejection confuses requirements for claims
with function of specification; one does not look to claims to find out
how to practice inventions they define, but to specification; specification
sufficiently sets forth practical limits of operation so as to eliminate
need for extensive experimentation. In re Rainer, Redding, Hitov,
Sloan, and Stewart, 1243.
Article defined by process of manufacture.
Addition of method step in product claim, which product is not
patentably distinguishable from prior art, cannot impart patentability
to old product. In re Sidney Dilnot, 1015.
Broad or narrow-In general.
Claims are not unduly broad in omitting minimum energy level
which does not appear to be part of applicants' invention but some-
thing which would be obvious from prior art. In re Rainer, Redding,
Hitov, Sloan, and Stewart, 1243.
Specification contains no suggestion that absorption rate is critical;
hence, failure to indicate such rate in claims does not render them de-
fective as unduly broad. In re Rainer, Redding, Hitov, Sloan, and
Stewart, 1243.
Term "aryl and substituted aryl radicals" is broad, but it is not
objectionable for this reason alone if it is (1) supported by specifica-
tion and (2) if it properly defines novel subject matter described in
specification; public purpose on which patent law rests requires grant-
ing of claims commensurate in scope with invention disclosed; this
requires as much the granting of broad claims on broad inventions as
it does the granting of more specific claims on more specific inventions;
it is neither contemplated by such purpose nor required by 35 U.S.C.
112 that inventor shall be forced to accept claims narrower than his
invention in order to secure allowance of patent; it is, however, consist-
ent with this purpose that invention claimed shall be no broader than
invention set forth in written description forming part of specification.
In re Sus and Schaefer, 1301.
Fact that claim is an original claim is not alone conclusive upon
question whether claim is broader than disclosure; fact that applicants
use broad or generic terminology in application does not necessarily
entitle them to claim subject matter broadly; specific term in claim is
so broad that it will embrace subject matter not disclosed in specifica-
tion; specification contains little more than suggestions for experimenta-
tion; claim is rejected. In re Cavallito and Gray, 1335.
"Comprising," "consisting," etc.
Although reference includes additional step, such step is not pre-
cluded by wording of claims wherein applicant uses word "comprising."
In re Stanley G. Halley, 793.
Including same element twice.
Single structural element such as specific piston, which performs two
separate functions (reducing pressure and engaging clutch), can support
claim reciting broadly these separate functions; arbitrary application
of rule against double inclusion to instant facts leads to a result which
is contrary to a reasonable interpretation of claim; cited cases are
distinguished; in instant claim, several mechanisms cooperate to pro-
duce desired result; fact that one or more structural elements per-
forming more than one function at different times are common to the
mechanisms which are recited separately in claim does not prevent
claim from being sufficiently supported by disclosure. In re Kelley,
1359.
Where there is no ambiguity in language of claims, they should be
carefully analyzed to see if they can be reasonably found to be supported
by disclosed structure; instant case is not intended to support rule that
all elements which perform separate functions may be recited any num-
ber of times in claims, nor is it intended to overrule or be inconsistent
with such cases as Kreidel v. Parker, 37 USPQ 815; each claim in each
case must be interpreted as broadly as its language will reasonably
permit and each interpretation will depend upon individual facts of
each case; automatic reliance upon rule against double inclusion will
lead to as many unreasonable interpretations as will automatic re-
liance upon rule allowing double inclusion; governing consideration is
not double inclusion, but is what is a reasonable construction of language
of claims. In re Kelley, 1359.
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