# Application of Harry Dudley Wright > Court of Customs and Patent Appeals · May 16, 1968 · 393 F.2d 1001 URL: https://www.frixlaw.com/law-library/cases/9453569 ## Case - **Full name:** Application of Harry Dudley WRIGHT - **Court:** Court of Customs and Patent Appeals - **Decided:** May 16, 1968 - **Citations:** 393 F.2d 1001; 55 C.C.P.A. 1106 - **Precedential status:** Published - **Opinion:** Concurrence by Smith - **Judges:** Almond, Worley, Rich, Smith, Kirkpatrick - **Cited by:** 4 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/9453569 ## Opinion text SMITH, Judge (concurring). The dissenting opinion herein prompts me to add a few additional observations which support the conclusion reached by the majority. The issue here arises in a “same invention” type of “double patenting” situation. In In re Robeson, 331 F.2d 610 , 51 CCPA 1271 (1964), we observed that the bar to a second patent on the same invention arises from 35 U.S.C. § 101 . There, the court stated: Where the claims of a second application are substantially the same as those of the first patent, they are barred under 35 U.S.C. 101. In re Ockert, 245 F.2d 467 , 44 CCPA 1024. Miller v. Eagle Mfg. Co., 151 U.S. 186 , 14 S.Ct. 310 , 38 L.Ed. 121 (1894). Thus, the analysis required was whether “one invention” had been twice claimed. That required a factual inquiry into whether the claims of the application were “substantially the same” as the claims of the patent. Later decisions of this court have refined the “same invention” analysis so that now the legal issue which we face when a terminal disclaimer is filed is whether the appellant claims the same subject matter, i. e., the same invention, that he previously claimed in his earlier-issued patent. In re Walles, 366 F.2d 786 , 54 CCPA 710 (1966). See In re Faust, 378 F.2d 966 , 54 CCPA 1459 (1967). Thus, before appellant’s application may be said to claim the “same invention” as his patent, the claims must in fact claim again the same subject matter. In re Walles, supra. As noted in Walles , this inquiry is a factual inquiry and requires that all of the subject matter defined by the entire claim must be considered. 366 F.2d at 790 , 54 CCPA at -. Here, it seems to me, the majority opinion has carefully developed the factual analysis necessary to support its conclusion that the “same invention” has not been twice claimed. I do not find any comparable factual analysis in the dissenting opinion. I am, therefore, not persuaded by the dissent that the majority is in error. I cannot agree, in the absence of a convincing factual analysis to the contrary, that the same combination of elements has been claimed in both the application and the patent. 1 think it improper on the present record to attempt a value judgment as the dissent does as to what the claims “in essential part” are directed; that those differences between the claims are “minor changes in scope and verbiage,” that they contain a “minor mechanical feature,” that there are other “minor differences in the claim scope and verbiage,” or that certain limitations are “de minimis.” Thus, it seems to me the dissent is bottomed on an intuitive or subjective rationale which has no factual support in the present record to which we are limited under 35 U.S.C. 144. Thus, I believe that this case should be decided solely on the only basis which the record supports, i. e., the factual comparisons as fully set forth in the majority opinion. I note that in In re Eckel, 393 F.2d 848 55 CCPA -(1968), the court fully and carefully developed a strong factual basis for that decision. It seems to me that this decision should rest on a comparable basis. When the Eckel type analysis is applied here, it requries the conclusion stated in the majority opinion. Furthermore, in Eckel , the majority of this court carefully analyzed the line of reasoning that suggested “four categories” of “invention” into which “double patenting situations” may fall. It noted that “mere colorable variation” was not intended in Robeson to create a fourth *1008 category of invention for double patenting purposes. “The keystone of the col-orable variation concept,” the court said, “was that the same invention was being claimed although not in precisely the same language.” It stated that an “analysis couched in terms of a ‘colorable variation’ is unnecessary and undesirable.” As previously pointed out, the board here, as did the board in Eckel called the differences in the inventions “color-able variations.” Thus, to affirm the board here as the dissent would do, seems to undo the constructive step taken in Eckel as well as to erode the rationale of Robeson . This is necessarily the case as the dissent here seems to require an initial value judgment, for which there is no record support, to determine whether the differences between the claims are, in fact, more than a “minor” change “in scope and verbiage.” Such a test seems fraught with the same difficulties as was the “mere colorable variation” test and adds a further uncertainty arising from its substitution of a subjective evaluation for factual analysis. Courts have previously noted that each claim of a patent is in theory a separate patent. See in re Cole, 326 F.2d 769, 775 , 51 CCPA 919, 926 (1964); Kemart Corp. v. Printing Arts Research Laboratories, 201 F.2d 624, 633 (9th Cir. 1953). In Cole , we referred to “elementary principles of claim interpretation” stated in In re Handel, 312 F.2d 943, 948 , 50 CCPA 918, 924 (1963), arising in the context of the reissue statutes that: * * * whenever an element or other limitation is added to or taken from a claim it becomes a claim to a different invention. Yet the whole purpose of the statute, so far as claims are concerned, is to permit limitations to be added to claims that are too broad or to be taken from claims that are too narrow. That is what the statute means in referring to “claiming more or less than he had a right to claim.” The fact that the respective disclosures are identical does not require the conclusion that the same invention is necessarily claimed in both the application and the patent. There is no reason why an applicant’s remedy by way of terminal disclaimer is or should be proscribed by the reissue provisions of the statute. The statutory provision involving terminal disclaimers, 35 U.S.C. § 253 , and the statutory provisions involving reissues, 35 U.S.C. §§ 251 , 252, are remedial in nature. See In re Braithwaite, 379 F.2d 594, 601 , 54 CCPA 1589, 1599 (concurring opinion); In re Wesseler, 367 F.2d 838 , 54 CCPA 735 (1966). 1 On what authority, then, should we here decide which of these two remedial tools an applicant should use ? However, as between the remedy provided by a reissued patent and that provided by a terminal disclaimer, it seems to me the public interest is better served by the terminal disclaimer provisions since the disclosure of the first patent can be made public at an earlier instance than if prosecution is protracted to permit prosecution of all the claims to which an applicant may be entitled. It is generally conceded that early publication of .patents is in the public interest, hence any procedure which facilitates this end should be encouraged. Under 35 U.S.C. § 251 , a reissue patent may be granted enlarging the scope of the claims if applied for within two years from the grant of the original patent. Reissue patents narrowing the scope of the claims may be granted anytime during the life of the patent. In the first of these instances, a time lapse occurs before the breadth of the claims of a patent may be determined with finality; in the latter, one never knows how narrow a patent claim may be. So if the anticipated evil is receiving a claim en *1009 larged in scope, it seems to me to be far better from a policy standpoint to have the Patent Office machinery set in motion at the earliest moment, i. e., during the pendency of the first application. I find this objective most nearly achieved by the liberalized use of terminal, disclaimers. Should the remedial practice here approved by the majority be subjected to abuses in derogation of the public interest, the jurisdiction of the courts is adequate to protect this interest. Historically, it will be recalled that the equitable doctrine of intervening rights developed to prevent abuse of the remedial provisions permitting the reissue of patents. 2 Finally, I agree with the statement in a current review 3 of developments in the law of double patenting that: * * * the present case-by-case determination as to whether or not particular inventions are “colorable variations” or are “separate and distinct” does not seem to be a desirable long-term procedure * * *. The dissent herein, it seems to me, confuses these issues still further by its substitution of factually unsupported value judgments as to whether the claims relate to “minor” improvements for the more certain standards used in Eckel and in Robeson . I therefore concur with the reasoning and conclusion of the majority. . In Wesseler , this court referred to 35 U.S.C. § 251 as a “remedial provision designed to advance both the rights of the public and the inventor” and spoke in favor of a liberal construction of these provisions “in order to secure to inventors protection for what they have actually invented.” 367 F.2d at 849 , 54 CCPA at -. . For review of the historical development of patent reissues and the current statutes, with emphasis on the respect to be given to intervening rights, see Federico, Intervening Bights in Patent Beissues, 30 Geo.Wash.L.Bev. 603 (1962). . Bones, The Terminal Disclaimer and Double Patenting, 49 JPOS 864, 876 (Dec. 1967). --- Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/9453569. Public record. Not legal advice.