The opinion
ALMOND, Judge
(concurring).
I agree that we should reverse the decision below. My reasons for doing so, however, are different from those expressed in the majority opinion, with which I cannot agree.
The majority opinion, in effect, does away with the long recognized doctrine of dedication. In so doing, the majority attempts to distinguish the three pertinent decisions of this court in In re Woodling, 210 F.2d 955 , 41 CCPA 809 (1954); In re Bersworth, 189 F.2d 996 , 38 CCPA 1167 (1951); and In re Phillips, 148 F.2d 662 , 32 CCPA 901 (1945). I do not find the attempt to distinguish these cases convincing and believe that we must either follow them or overrule them completely. It is noted that the majority opinion does state that anything in Phillips, Bersworth, or Wood-ling deemed to be contrary to the instant decision may be taken as overruled. I would, however, follow the precedent set forth in these decisions.
The majority would distinguish all three cases on the grounds that the facts in those cases involve double patenting and not dedication. This is despite the unequivocal language in the Phillips, Bersworth, and Woodling opinions to the effect that the issue being resolved was one of dedication. Note, for example, the statement in Phillips that:
Since the involved application was not filed until several months subsequent to the issuance of appellant’s patent, what he disclosed and did not claim must be considered dedicated to the public.
Likewise, Judge Worley states in Wood-ling:
Again reverting to the matter of dedication, we find ourselves in agreement with the Board of Appeals that the instant process claims are not pat-entably distinct from the patented process claims; that they are based upon identical disclosures; and that there was no copendeney between the patent and the application at bar. In light of those facts, Woodling’s failure to claim the involved subject matter by timely application for reissue instead of waiting nearly four years to present claims thereto in a separate application, clearly constitutes dedication.
In addition, the facts in these three cases actually raise the dedication issue. All three opinions make it clear that the appealed claims were rejected over the disclosures of the patents, found to have been dedicated, and not on the patent claims alone. In Phillips , for example, while there was a “substantial identity between the rejected claims and * * [the] claims of the patent,” a difference did exist in the limitation to a nonadhesive zone between the alinement guide and the adhesive zone, but this difference was “clearly shown in the patent drawings and could have been described and claimed by amendment.” In Bers-worth, as the majority opinion points out, it was stated that claim 6 might fall within class (1) of Ex parte Mullen, 1890 C.D. 9, 50 O.G. 837 (which is a double patenting question). However, it is noted that the Bersworth opinion goes on to state that the board was of the “opinion that all of the claims, with the possible exception of claim 6 fell within class (2)” of Mullen (which clearly involves dedication). It was to this latter issue that the Bersworth opinion was directed.
Since Phillips, Bersworth, and Wood-ling cannot be distinguished, they must be considered overruled completely. However, I am not prepared to do so. Established precedent should stand except when there are sound and overriding reasons to the contrary. One need only look at the textbook authorities cited by the majority to ascertain that the dedication doctrine is a well-established one in the patent field. Nor am I persuaded that there are any sound and overriding reasons presented by the majority for destroying such a long exist *496 ent doctrine. This is despite the fact that it may have fallen into relative nonuse in recent years and that there is some uncertainty involved in determining when the facts of a particular case fall into class (2) of Mullen. Many areas of patent law involve just as much, if not more, uncertainty.
The majority opinion states that filing an application within the one-year grace period following the issuance of the patent is one means of rebutting the inference of dedication drawn from the facts of disclosure and failure to claim. According to the majority, other means of rebutting this inference are filing a reissue application and claiming the invention in a copending application. Contrary to this analysis of the statutes, I believe that the reissue avenue under § 251 is intended to be the only means of claiming that which is disclosed but not claimed in the patent or a copending application. There are certain requirements in paragraph 1 of § 251 which must be met before a patent can be reissued. That is, the patent must be “through error without any deceptive intention, deemed wholly or partly inoperative or invalid,” the patent must be surrendered, and the term of the reissue patent is only the unexpired part of the term of the original patent. No such safeguards exist if the inference of dedication is rebutted by the mere filing of an application within one year. The monopoly is certainly going to be extended, two patents will be in existence rather than one, and the mere filing of the application can conclusively rebut the inference of dedication without anything more shown about why the invention had not previously been claimed. I cannot believe that such a result was intended by Congress.
Under my analysis of this case, it is not necessary to even reach the issue of whether filing an application within one year rebuts the inference of dedication. In my opinion, the invention being claimed could not have been claimed in the patent, thus the facts fall within class (3) of Mullen. This is because the patent does not contain a sufficient enabling disclosure of how to carry out the hydrolysis and make the various sulfonic acid polymers. As the majority points out, the only disclosure in the patent of the polyacids is in one sentence:
* * * a particular utility of the polymer comprises its use as an ion exchange resin after hydrolysis of the sulfonyl fluoride group to the sulfonic acid group.
Clearly this is not a sufficient disclosure upon which to base claims to a large number of different polyacids. In fact, I suspect that had appellants tried to claim them the Patent Office would have immediately rejected such claims under 35 U.S.C. § 112 as being based upon an insufficient disclosure. In such a situation, there is certainly no presumption of dedication and appellants are free to claim the polyacids in any application against which there is no statutory bar, regardless of when filed. Therefore, I would reverse for this reason and this reason alone.