# Application of Campbell > Court of Customs and Patent Appeals · May 24, 1954 · 212 F.2d 606 URL: https://www.frixlaw.com/law-library/cases/9444157 ## Case - **Full name:** Application of CAMPBELL - **Court:** Court of Customs and Patent Appeals - **Decided:** May 24, 1954 - **Citations:** 212 F.2d 606; 41 C.C.P.A. 896 - **Precedential status:** Published - **Opinion:** Dissent by O'Connell - **Judges:** O'Connell, Johnson, Worley, Cole, Jackson - **Cited by:** 8 later opinions in the Frix Law Library ## Citator (automated) - No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases. - Full citator and citing cases: https://www.frixlaw.com/law-library/cases/9444157 ## Opinion text O’CONNELL, Judge (dissenting). The Solicitor for the Patent Office properly concedes in his brief that if the application at bar is a true division of appellant’s parent application, No. 687,-115, his affidavit under Rule 131 effectively removes the reference “American Helicopter” from the proceeding. That reference was evidently relied upon by the tribunals of the Patent Office to bolster their rejection of appellant’s claim solely on the ground that it was un-patentable over the design disclosed by the patent to Lewis. It is my conviction after a careful analysis of the facts presented by the record and the long array of effective authorities presented by counsel for appellant that “American Helicopter” is not a valid reference in this case and that the design defined by the rejected claim at bar is patentably distinct over the patent to Lewis. *611 Appellant’s drawings, in addition to showing certain mechanical features, fully disclosed the ornamental design of his helicopter. The board took the position that design and utility patents are authorized by different patent statutes, which extend patent protection for different periods of time, and if both types are disclosed in a single parent application, one cannot be divided out from the other and separately prosecuted in the Patent Office. In that respect the tribunals of the Patent Office were in error since appellant under the statutes was entitled as a matter of right to amend his pending application by filing the divisional application at bar. In re Febrey, 135 F.2d 751 , 30 C.C.P.A., Patents, 1099; Harder v. Hayward, 150 F.2d 256 , 32 C.C.P.A., Patents, 1051; Ex parte Hall, 1920 C.D. 56. A divisional application is no more than an authorized amendment of a parent application, providing no new matter is thereby introduced into the disclosure of the claimed invention, Godfrey v. Eames, 1 Wall. 317 , 68 U.S. 684 , 17 L.Ed. 684 ; Dwight & Lloyd Sintering Co. v. Greenawalt, 2 Cir., 27 F.2d 823, 831 ; 35 U.S.C.A. § 132 . Such is not the case here inasmuch as it has been stipulated by counsel for the respective parties: “That Figures 1 and 2 of the drawings in applicant’s application Serial No. 687,115 filed July 30, 1946, and still pending in the Patent Office show the same device as that shown in Figures 1 and 2 of the instant case.” The present statute relating to divi* sional applications, 35 U.S.C.A. § 121 , which in general paraphrases similar provisions in the old law, so far as pertinent, now reads: “§ 121. If two or more independent and distinct inventions are claimed in one application, the Commissioner may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 of this title it shall be entitled to the benefit of the filing date of the original application. * * * ” The patent statutes past and present have further provided that all the regulations and provisions which apply to obtaining or protecting other inventions or discoveries shall likewise apply to patents for designs. 2 The Solicitor for the Patent Office states his position and that of the Patent Office with respect to the controlling question of procedure here in issue: “The common guiding factor, both in the decisions refusing to permit amendment of the application 3 * * * and those permitting amendment 4 * * * was the apparent intent of the applicant at the time of filing. Nothing in the law or in any of the decisions suggests any right in an applicant to change the essential character of an application once filed.” (Italics quoted.) There is no merit whatever in the position thus relied upon by the Patent Office. The identical point was advanced in Harder v. Hayward, 150 F.2d 256, 269 , 32 C.C.P.A., Patents, 1051, 1073, to the following effect; “In the case at bar, appellee, in filing his second [divisional] application * * * offered no reason whatever why the claims embraced in his second application were not presented in his original application. As pointed out by appellants, so far as the record shows, Hayward’s added improvement in his second application may have been in Hayward’s possession since before he filed his first application, and was omitted for reasons best known to himself; or it may have been an improvement conceived as an afterthought, such *612 as either he or anyone else could have made after the filing of his original application.” The court concluded however that under the patent statutes the applicant was entitled to file his divisional application as a matter of right, and the views described in the excerpt quoted above were rejected by the majority as an unwarranted heresy. That ruling is applicable to the arguments now advanced by the Solicitor for the Patent Office. The Patent Office has here deprived appellant of a substantial property right by a process of reasoning which exploits the trivial and ignores that which is vital and important. The Supreme Court has recently reiterated the long established rule which governs here, namely, that “ ‘A party seeking a right under the patent statutes may avail himself of all their provisions, and the courts may not deny him the benefit of a single one. These are questions not of natural but of purely statutory right.’ ” Hartford-Empire Co. v. United States, 323 U.S. 386, 433 , 65 S.Ct. 373, 396 , 89 L.Ed. 322 , citing Chapman v. Wintroath, 252 U.S. 126 , at page 137, 40 S.Ct. 234 , 64 L.Ed. 491 . Appellant’s divisional application in issue is a continuing copending application as defined by the authorities herein-before cited. It is well settled law, as we emphatically pointed out in Teter v. Kearby, 36 C.C.P.A., Patents, 706, 169 F.2d 808, 813 , that “Where one invention which is clearly disclosed in an application is not there claimed, but is subsequently claimed in a co-pending application by the same applicant, the first filing will be deemed a constructive reduction to practice and the later application will be given the filing date of the earlier one. Chapman v. Wintroath, 252 U.S. 126 , 40 S.Ct. 234 , 64 L.Ed. 491 .” Furthermore, as we held in Teter, “It is immaterial that the subject matter in the last continuing case is claimed for the first time and that no previous claim was made of the subject matter in the earlier filed case. Benedict v. Menninger, 64 F.2d 1001 , 20 C.C.P.A., Patents, 1138, and Harold D. Arnold v. Irving Langmuir, 36 F.2d 834 , 17 C.C.P.A., Patents 756." Appellant’s procedure in the case at bar may not have been in strict compliance with the general routine of the Patent Office. No disruption thereof has been established, however, and no valid reason given as required by law, for the rejection of the appealed claim on what appears to be purely theoretical grounds. International Standard Electric Corp. v. Kingsland, 83 U.S.App.D.C. 355 , 169 F.2d 890 . For the reasons stated, the decision of the Board of Appeals should be reversed. . R.S. §§ 4929, 4933, 35 U.S.C., 1946 ed., § 73, 35 U.S.C.A. § 171 . . Ex parte Sellers, 1870 C.D. 58. . Ex parte Saunders, Jr., 1907 C.D. 363, 131 O.G. 1164 . --- Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/9444157. Public record. Not legal advice.