The appealed claims stand rejected by the examiner on two grounds which were affirmed by the board: (1) "double patenting," and (2) obviousness of the appealed claims in view of the prior art reference of record. Our disposition of this appeal requires that we consider only the rejection based on "double patenting."
A statement of the subject matter defined by the appealed claims is set forth in appellant's brief:
The facts which gave rise to the "double patenting" rejection are not in dispute. On March 4, 1958 appellant filed two patent applications. One application has since resulted in a U. S. Patent.
The parties agree that the product defined by the appealed claims is the same
It is clear from the record, and appellant does not argue otherwise, that the process disclosed in the appealed application is the same process disclosed in the issued patent. It is this process which is disclosed as making the product defined by the appealed claims and the patent claims. We thus do not have presented the issue of whether the product defined in appealed claims is a different product than that defined by the patent claims because made by a different process.
The examiner's position and reasoning, affirmed by the board, was as follows:
Appellant's arguments in regard to the "double patenting" rejection are twofold: first, because of the substantial differences in scope between the appealed claims and the patent claims (particularly because the appealed claims are product claims without process limitations) there are present two inventions each of which is entitled to a patent; second, because a terminal disclaimer has been filed in this case, the extension of monopoly basis of the "double patenting" rejection has been eliminated.
The solicitor argues in his brief that any terminal disclaimer would be ineffective because the appealed claims are directed to the same subject matter as in the patent claims.
We think the dispositive issue in this appeal is whether the nature of the "double patenting" rejection here is such that the terminal disclaimer remedy provided in section 253 is appropriate.
Our decisions in In re Robeson, 331 F.2d 610, 51 CCPA 1271; and In re Kaye, 332 F.2d 816, 51 CCPA 1465, recognize the principle that where separate inventions are involved, a terminal disclaimer is effective to overcome a "double patenting" rejection. In Robeson this court pointed out it was not apparent that Congress, in enacting the terminal
The solicitor here asserts that the appealed claims are drawn to cover the same invention as that defined in the patent claims. He reasons therefore that the bar under 35 U.S.C. § 101, referred to in Robeson, is present here.
A product-by-process type claim defining an article of manufacture was permitted at least as early as 1891 in Ex parte Painter, 1891 C.D. 200, 57 O.G. 999 where Commissioner Simonds stated:
On the basis of the reasoning in Painter, claims of the product-by-process type defining a chemical compound were allowed in Ex parte Fesenmeier, 1922 C.D. 18, 302 O.G. 199.
The rationale stated in the above decisions which permit the product-by-process type claim in ex parte prosecution before the Patent Office is clear: the right to a patent on an invention is not to be denied because of the limitations of the English language, and, in a proper case, a product may be defined by the process of making it. However, the invention so defined is a product and not a process.
The fact here is that the invention defined by the product-by-process claim of the issued patent is the same invention defined as a product in the appealed claims.
In In re Siu, 222 F.2d 267, 42 CCPA 864, this court quoted with approval the statement of the board that:
We find this statement applicable here. Since a terminal disclaimer, at best, meets only the extension of monopoly objection to double patenting, it cannot overcome a double patenting rejection based on the underlying statutory concept that there shall be but one patent for one invention.
Since the appealed product type claim and the product-by-process type patent claims define the same patentable subject matter, differing only in scope, they may not be allowed in separate applications. 35 U.S.C. § 101. See In re Robeson, supra.
The decision of the board is affirmed.
The policy of the Patent Office in permitting product-by-process type claims to define a patentable product, where necessary, has developed with full cognizance of the fact that in infringement suits some courts have construed such claims as covering only a product made by the particular process set forth in the claim and not to the product per se. See Ex parte Fesenmeier, supra, and cases cited therein. See generally, Saxe & Levitt, Product-by-Process Claims and Their Current Status in Chemical Patent Office Practice, 42 J.P.O.S. 528 (1960).
While there is some language in Freeman to support the contention that a product-by-process type claim differs only "in scope" from a process type claim and they therefore "are directed to a single invention," (166 F.2d at 181) so far as this is inconsistent with our holding here it must be overruled.