Lapas attēli
PDF
ePub

2. DISCLAIMER-IN GENERAL

DOUBLE PATENTING-IN GENERAL

Court in In re Braithwaite, 154 USPQ 29, did not consider that classification of claims as "generic," "embracing," or 'overlapping" was of help in resolving issues involved in terminal disclaimer cases; employment of such tests, just as employment of "colorable variation" language, diverts attention from sole issue of importance, i.e., whether applicant is attempting to twice claim the same invention.

3. DISCLAIMER-IN GENERAL

4.

DOUBLE PATENTING-IN GENERAL

Terminal disclaimer can have no effect where it is attempted to twice claim the same invention, but it will overcome double patenting rejection where appealed claim is obvious variant of patent claim but not obvious in view of prior art; such use of terminal disclaimer is not prohibited by fact that claims are not mutually exclusive.

APPLICATION FOR PATENT-CONTINUING
PATENTING IN GENERAL

DISCLAIMER-IN

GENERAL

Prior to recent decisions, inventor who discovered obvious improvement or modification of invention on which he had filed patent application could obtain patent protection specific to new invention only by filing new application disclosing both original and new inventions, and abandoning first application; decisions give him a second choice; he may allow first application to issue, and claim new invention in separate application having a terminal disclaimer; by this procedure, he can obtain no claims which he would not have been entitled to under previous practice; decisions have not enlarged scope of patent protection; however, they have effect of making public the original disclosure at earlier date than would have been the case under previous practice; terminal disclaimers in such cases result in benefit to public. United States Court of Customs and Patent Appeals, May 2, 1968 APPEAL from Patent Office, Serial No. 211,606

[Reversed.]

Harold E. Cole for appellant.

Joseph Schimmel (Jere W. Sears, of counsel) for the Commissioner of Pat

ents.

Oral argument November 8, 1967 by Mr. Cole and Mr. Sears] Before WORLEY, Chief Judge, and Judges RICH, SMITH, ALMOND, KIRKPATRICK.*

ALMOND, Judge, delivered the opinion of the court:

This is an appeal from the decision of the Board of Appeals affirming the rejection of the claims in appellant's application1 on the ground of double patenting over the claims of appellant's patent,2 despite the filing of a terminal disclaimer in the application.

To place the case in perspective with respect to the numerous other double patenting rejections appealed to this court of late, it is ap

*Senior District Judge, Eastern District of Pennsylvania, sitting by designation. 1 Serial No. 211,606, filed July 23, 1962, for "Acoustical Members."

* No. 3,086,325, issued April 23, 1963.

parent from the letters of the examiner and decision of the board that they regard appellant to be claiming the same invention or a mere colorable variation thereof in his application claims as is defined by his patent claims. Appellant, on the other hand, is of the opinion that the description and claims of his patent are to a broad invention while the claims of his application are directed to a "specific structure" of a later invention not disclosed in the patent; and that, in view of a terminal disclaimer seasonably filed under 35 USC 253, the board erred in failing to apply the decisions of this court in In re Robeson, 51 CCPA 1271, 331 F. 2d 610, 141 USPQ 485; In re Kaye, 51 CCPA 1465, 332 F. 2d 816, 141 USPQ 829; and In re Bowers, 53 CCPA 1590, 359 F. 2d 886, 149 USPQ 570.

Eckel's own patent, No. 3,086,325, is the basis of the rejection. It is not prior art, having been copending with the application at bar. That patent discloses and claims assemblies of acoustical members to be attached to ceilings or walls. The members themselves are in the form of wedge-shaped elements of cound absorbing material mounted on supporting, track-engaging metal bases. The tracks are mounted in parallel positions on the walls and ceiling of a chamber to be acoustically treated, equally spaced apart, and the members can then be mounted thereon. Figures 5 and 6 of the patent drawings show the general idea.

[subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][merged small][graphic][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][ocr errors][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed][subsumed]

In Fig. 5 portions of three tracks 15, 16, 17 are shown carried on supports 10 fastened to the wall W by screws 12. In Fig. 6, two acoustical members 40 are seen. The one on the right is turned 90° from the one on the left so that one member is seen in front and the other in side elevation. The double wedge-shaped members are made of wire mesh 44 filled with glass wool 42 or like material. The joiner members, or attaching metal base portions, are 29, having four sides 31 with inwardly-turned flanges 34a, 34b which engage track flanges 22. The patent drawings disclose all tracks as equally spaced and all acoustical units as being of equal size and as being square. Being square, the acoustical units can be placed on the tracks in either of the positions shown in Fig. 6, i.e., rotated 90° from one another. The specification makes no mention of the shape of the units, and the word "square" does not appear in the patent. Certain claims, however, designate the joiner members, but not the acoustical members, as being of "substantially rectangular shape."

It will be understood that these acoustical members are used to line a room to make it into a nonsound-reflecting chamber, presumably for acoustical laboratory use. All four walls and the ceiling may thus be sound-proofed. It is clear that as many tracks as necessary will be secured to the flat surfaces to be treated and that they will all be equally spaced. In the patent disclosure, which is only one printed page, there are no variations or modifications of the single type of unit described, although the disclosure contains a more-orless standard broadening clause: "The nature of the invention is such as to render it susceptible to various changes and modifications, and therefore, I am not to be limited to the construction disclosed by the drawings nor to the particular parts described in the specification; but am entitled to all such changes therefrom as fall within the scope of my claims."

Approximately a year and a half after filing the application for the issued patent, and while his application therefor was still pending, Eckel filed the application at bar containing added disclosure and including a sheet of new drawings. It is stated to be an object of this application to provide acoustical tiles of different sizes. The applicant, having noted that a great many rooms were of dimensions not equally divisible by standard tile widths, conceived the idea of supplying tiles of fractional widths to fill in the space remaining at the edge of a wall after the maximum number of full tiles had been mounted. Since these tiles are mounted on tracks at a proper distance from the previously mounted track to accommodate the fractional width tiles.

Figures 5, 6 and 7 of the application illustrate this concept.

[merged small][merged small][merged small][merged small][merged small][merged small][merged small][ocr errors][merged small][merged small][merged small][merged small][merged small][merged small][merged small][merged small][merged small][merged small][merged small][merged small][merged small][merged small][merged small][merged small][merged small][merged small][merged small][merged small][merged small][merged small][merged small][merged small][merged small][merged small][merged small][merged small][merged small][merged small][merged small][merged small][merged small][merged small][ocr errors][merged small][merged small][merged small][merged small][merged small][ocr errors][merged small][merged small][merged small][merged small][merged small][merged small][merged small][merged small][ocr errors][merged small][merged small][merged small][merged small][merged small][ocr errors]

These figures are quite similar to the patent drawings, except that the left-hand track in Fig. 5 is spaced only two-thirds of the distance from the next nearest track as that track is from the next adjacent track. As shown in Fig. 6, this track spacing accommodates a tile 62 having a width two-thirds that of the standard tiles. Another embodiment is shown in Fig. 7, where a tile having only a one-third width is used. In other drawings of the application, various tiles, are

« iepriekšējāTurpināt »