# Application of Arthur C. Borg and Stephen J. Zajac

> Court of Customs and Patent Appeals · April 18, 1968 · 392 F.2d 642

URL: https://www.frixlaw.com/law-library/cases/9453496

## Case

- **Full name:** Application of Arthur C. BORG and Stephen J. Zajac
- **Court:** Court of Customs and Patent Appeals
- **Decided:** April 18, 1968
- **Citations:** 392 F.2d 642; 55 C.C.P.A. 1021
- **Precedential status:** Published
- **Opinion:** Concurrence by Almond
- **Judges:** Worley, Rich, Smith, Almond, Kirkpatrick
- **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/9453496

## Opinion text

ALMOND, Judge,
(concurring).
While I agree with the majority opinion, I feel that some amplification is in order on the rather limited nature of the change which has been made in the law by this and other decisions involving common assignees.
At first reading, it would appear that the majority opinion would permit the assignee of these applications to obtain a very large number of patents as a result of Zajac’s invention of a single new grease. If coworker Borg may obtain a patent on Zajac’s grease with the addition of a prior art grease thickener, then it would appear that Borg or other coworkers could obtain individual patents for each prior art grease additive which they thought to add to Zajac’s new grease.
The holding of this opinion is not nearly so sweeping, however, for nothing which we have said about terminal disclaimers has any effect upon the requirements for patentability set forth in 35 U.S.C. §§ 102 and 103. If an applicant cannot meet these requirements, then a terminal disclaimer is of no help to him whatever.
It is, therefore, clear that coworkers of Zajac cannot obtain an unlimited number of patents for the addition of obvious additives to the Zajac grease because the Zajac patent is prior art to them under section 102(e) as of Zajac’s filing date. If a coworker cannot overcome that date under Rule 131, he cannot obtain a patent.
From what has been said, it will be recognized that a coworker of Zajac stands upon an equal footing, as to his right to obtain a patent, with a stranger to Zajac. Either one may patent an obvious modification of Zajac’s invention only if he made his invention prior to Zajac’s filing date. Prior to our decision in In re Bowers, 359 F.2d 886 , 53 CCPA 1590, wherein we held that terminal disclaimers can be used in overcoming double patenting rejections in those cases involving commonly assigned applications, the coworker was at a definite disadvantage in respect to a stranger, for his application would be rejected for double patenting even if he could remove his coworker’s patent under Rule 131. Whether or not a patent would issue in such cases depended, therefore, on the presence or absence of common identity of the assignees. Thus, basing patent-ability on the identity of the assignees effected no public benefit which I can discern.
The effect of our decision in Bowers , as well as in this case, is no more than to place a coworker in the same position as a stranger in regard to his right to obtain a patent. 1
*646 The question of patentability of obvious modifications of inventions made by coworkers is now to be determined by reference to statutory standards, and not by reference to the identity of the assignee. It therefore seems to me that the impact of these decisions is to remove an anomaly from the law.
While it may be argued that the effect of these decisions will be to encourage delay in filing applications on basic inventions in order to allow coworkers time to discover obvious modifications which may also be patented, I do not feel this will become a substantial problem. The possible penalties which an applicant may suffer because of a charge of lack of diligence or of suppression of his invention provide an adequate safeguard against such delay.
. The coworker will, however, have a shorter patent term than would a stranger because of the terminal disclaimer.

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/9453496. Public record. Not legal advice.