1. All persons to whom the respective marks are addressed by the parties to this proceeding are either aware that OMEGA and OMICRON are the names of Greek letters or they are not aware of this fact. 2. If they are aware of this fact they will necessarily know that OMICRON and OMEGA are different letters of the Greek alphabet. 3. If they are not aware of this fact, it is immaterial to them that the two words are the names of Greek letters and the two words are merely names,— names of unknown meaning, probably arbitrary, coined words, performing the function of technical trademarks indicating the origin of watches bearing them, having nothing in common except that both begin with OM and both have three syllables. We agree with appellee that the persons of the first group, those who know that OMEGA and OMICRON are the names of two different Greek letters are not likely to be confused or deceived because they know the difference between the two words. The persons of the second, and probably larger group, would find nothing in common in the two names except the initial OM of both and the presence of three syllables in each. We should also consider another, and possibly larger class of persons, those who do not know Greek. As to this class, we think the names taken as wholes do not look alike, sound alike or convey a meaning such that the use of "Omichron" on appellee's goods would be likely to cause confusion or mistake or deception of purchasers within the meaning of Section 2(d) of the Lanham Act. One final point of significance in the comparison of OMICHRON and OMEGA is that inasmuch as the suffix CHRON suggests time, as appellant argues, it seems to us that fact helps to distinguish OMICHRON from OMEGA in the minds of those to whom the time suggestiveness of CHRON would be evident. Such persons would find in OMICHRON a suggested meaning they would not find in OMEGA. We think this suggests the substantial differences in psychological impression which would be created by the two names. We therefore agree with the Trademark Trial and Appeal Board that: "These marks, however neither look nor sound alike; and while to some persons informed in such matters applicant's mark will suggest the Greek letter Omicron, it is believed that such persons would readily distinguish between it and the Greek letter Omega. It is concluded, therefore, that there is no reasonable likelihood of confusion or mistake or deception of purchasers", For the foregoing reasons, we affirm the decision of the Trademark Trial and Appeal Board. WORLEY, C.J., dissenting, with whom RICH, J., joins. When one seeks to enter and compete in an established market, great care should be exercised in steering clear of the established marks therein, thus avoiding the likelihood of confusion, mistake or deception contemplated by Section 2(d) of the Lanham Act, especially where the goods of the respective parties are identical, as they are here. While I appreciate both the similarities of the competing marks stressed by the opposer, and the dissimilarities stressed by the applicant, I am of the opinion that concurrent use of "OMEGA" and "OMICRON" on watches would be likely to result in that degree of confusion prohibited by Section 2(d). At least doubt on that point should be resolved in favor of the established owner and against the newcomer. The United States Time Corp. v. Jacob Tennenbaum (Tennenbaum & Co., Telix Watch, Assignee, Substituted), 46 CCPA 895, 267 F. 2d 327, 122 USPQ 15. 292 F. 2d 531; 130 USPQ 209 IN RE AUBREY A. LARSEN (No. 6686) PATENTS 1. PATENTABILITY-SUBJECT MATTER FOR PATENT MONOPOLY-PROCESS, PRODUCT AND APPARATUS Allowance of claims to compounds was based on fact that they possess unique and presumably unexpected properties; since there was nothing to indicate that compounds, when made, would have these properties, it was not obvious to make compounds; in such a case the allowance of claims to compounds must depend on proposition that it was unobvious to conceive idea of producing them; under these circumstances, inventive concept is that of compounds themselves; when they have been conceived, processes by which they may be prepared may or may not be obvious; if such processes, given the idea of the compound, are obvious, it is apparent that invention resides in compounds per se and is not properly defined as a process; process for making patentable compound is not, ipso facto, a patentable process; fact that applicant discloses a particular one of several obvious processes for making product has no bearing on patentability of disclosed process; when sole inventive concept resides in product, claims should be limited to product claims. 2. FOREIGN PATENTS-PATENTABILITY-EVIDENCE OF CLAIMS OR PATENTS COMPARISON WITH ALLOWED In view of difference between foreign patent laws and those of the United States, allowance of patent claims in foreign countries is not pertinent to question whether similar claims should be allowed in United States. United States Court of Customs and Patent Appeals, July 21, 1961 1 Appeal from Patent Office, Serial No. 653,289 {Affirmed.] Laurence and Laurence (Dean Laurence and Herbert I. Sherman, of counsel) for appellant. Clarence W. Moore (R. E. Martin, of counsel) for the Commissioner of Patents. [Oral argument March 15, 1961, by Mr. Laurence and Mr. Martin] Before WORLEY, Chief Judge, and RICH, MARTIN, and SMITH, Associate Judges, and Judge WILLIAM H. KIRKPATRICK* Worley, Chief Judge, delivered the opinion of the court: This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming the rejection by the Primary Examiner of claims 11 to 20, inclusive, and 22 of appellant's application, No. 653,289, for a patent on organic compounds and processes of preparing them. All the appealed claims are directed to processes, the claims to the compounds having been allowed. Since the issue is essentially one of law, the scope of the claims is not material, and it is unnecessary to reproduce any claim here. The references relied on are: Taub et al., 1,022,645, April 9, 1912. The claimed processes involve the production of esters of substituted benzoic acids by reacting an alkali metal salt of such an acid and an appropriate halohydrin or epoxide. The compounds reacted are conceded to be old. The Taub et al. patent shows the production of an ester by reacting an appropriate alkali metal salt of a substituted benzoic acid and a halohydrin. The Guest patent discloses the use of an epoxide for esterification of the benzoic acid derivative and, as noted by the board, was relied on mainly in connection with claim 22 which involves the use of an epoxide. In view of the obviously close parallel between the claimed processes and those of the references, we agree with the conclusion of the Patent Office that if the compounds recited in appellant's allowed claims were disclosed in the prior art it would be obvious to a person of ordinary skill in the art to prepare them by the processes set forth in the appealed claims. It is unnecessary to discuss this point further since appellant does not dispute it, but states in his brief that 1 Released November 2, 1961. *United States Senior District Judge for the Eastern District of Pennsylvania, designated to participate in place of Judge O'Connell, pursuant to provisions of Section 294 (d), Title 28, United States Code. For purposes of this appeal, appellant concedes that, if the products made by his process were not novel and patentable, the process might not be patentable over the references cited. The issue presented here, therefore, is whether a process for making a patentable compound is, ipso facto, a patentable process. There is substantial discussion in the briefs here as to whether the claimed processes would be obvious in view of the prior art, but, as we understand the board's decision, the principal basis of rejection is that appellant's invention resides solely in the product and is not properly defined by the process claims. This appears from the following statement in the board's opinion: If in the instant case the process claims do not point out the invention, they might properly be subject to this criticism. The major question is whether such claims define his, or any, invention and this we think is a proper subject of inquiry by the examiner. Therefore under the above stated principles of patent law, we feel compelled to hold that appellant's invention does not reside in the process of making an ester. [1] While the entire record of appellant's application has not been presented here, it is clear from the examiner's answer to the appeal that the allowance of the claims to the compounds was based on the fact that they possessed unique, and presumably unexpected, properties. Since there was nothing to indicate that the compounds, when made, would have these properties, it was not obvious to make the compounds. In such a case the allowance of claims to the compounds must depend on the proposition that it was unobvious to conceive the idea of producing them, within the meaning of Title 35 U.S.C., Section 103. Under these circumstances, however, the inventive concept is that of the compounds themselves. When they have been conceived, the processes by which they may be prepared may or may not be obvious. If, as is the case here, such processes, given the idea of the compound, are obvious then it is apparent that the invention resides in the compounds per se and is not properly defined as a process. The fallacy of appellant's contention that "if a product be patentable, a claim to a process for producing such product is patentable" is apparent upon considering the not infrequent situations in which a new product may be made by any one of several obvious processes. It seems clear that in such a case each of those obvious methods could not properly be considered patentable, and yet there is logically no more reason for allowing claims to any one than to the others. The fact that an applicant sees fit to disclose a particular one of the processes should have no bearing on its patentability. A case in point is Wirebounds Patents Co. et al. v. H. R. Gibbons Box Co., 25 F. 2d 363 (CCA 7th Circuit). In holding the method claims there involved unpatentable, the court said: Moreover, the method patent contains nothing but the natural and obvious method of producing the box. It cannot be considered invention to describe and claim a process, or to produce a machine, or formulate a method which any successful mechanic would produce when required to effectuate a given result. Another situation somewhat similar to the instant one was involved in In re Frederick C. Kulieke, 47 CCPA 943, 277 F. 2d 948, 125 USPQ 578. There claims had been allowed on a railway coupler knuckle of specific construction and appellant sought the allowance of claims on a core mold assembly designed for casting the coupler. In refusing the claims on the ground that the invention resided solely in the coupler, the court said: From our consideration of the record we agree with appellant that there is but a single invention here involved, but we disagree with the conclusion he would have us draw from this fact. In our opinion this single invention is found in the coupler knuckle per se. We have found nothing about the mold and core assembly, as claimed which, indicates that it would be unobvious to one having the ordinary skills in this art to form such an assembly to produce the case knuckle. *•* Once the engineering design of the casting has been determined, the mold and cores will necessarily follow that design. While that case relates to the mold for making a product rather than a process of making it, the same reasoning is applicable in both cases. When the sole inventive concept resides in the product the claims should be limited to product claims. [2] Appellant relies heavily on decisions in Canada and Great Britain which allegedly hold process claim allowable under circumstances similar to those of the instant case. We have repeatedly held that, in view of the differences between foreign patent laws and those of the United States, the allowances of patent claims in foreign countries is not pertinent to the question whether similar claims should be allowed here; In re Guinot, 22 CCPA 1067, 76 F. 2d 134, 25 USPQ 7; In re Kleine, Pfannenstiel, and Matthaes, 23 CCPA 1216, 83 F. 2d 928, 30 USPQ 32; and In re Kluter, 25 CCPA 730, 92 F. 2d 906, 35 USPQ 460. No reason appears for reaching a different conclusion here. This is not a case in which it is doubtful whether the invention resides in the process or the product. Clearly the invention lies in the compounds themselves, by whatever process produced, and we agree with the board that the allowance of claims to a particular, although obvious, method of producing them which happens to be disclosed in appellant's application would not constitute a proper definition of appellant's invention. |