Application of Schneller

• Decision Date: 10 October 1968
• Docket Number: Patent Appeal No. 7883.
• Citation: 397 F.2d 350,158 USPQ 210
• Parties: Application of Joseph W. SCHNELLER.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

158 USPQ 210, 397 F.2d 350 (1968)

Application of Joseph W. SCHNELLER.

Patent Appeal No. 7883.

United States Court of Customs and Patent Appeals.

June 27, 1968.

Rehearing Denied October 10, 1968.

Robert F. Hause, Buffalo, N. Y. (James W. Dent, Washington, D. C., of counsel), for appellant.

Joseph Schimmel, Washington, D. C. (Fred W. Sherling, Washington, D. C., of counsel), for the Commissioner of Patents.

Before WORLEY, Chief Judge, and Judges RICH, SMITH, ALMOND and KIRKPATRICK.^*

RICH, Judge.

This appeal is from a decision of the Patent Office Board of Appeals affirming the examiner's rejection of claims 17-23 of application Serial No. 205,164, filed June 14, 1962, for "Lathing Clips" on the ground of double patenting. No claim has been allowed.

The claimed subject matter relates to clip systems for securing gypsum lath to support members in partition walls and ceiling constructions. The clip is an elongated curved piece of bent wire having head portion 62 as illustrated in Figs. 4 and 5 of appellant's application, reproduced below.

Fig. 4 shows head portion 62 alone from an axial, end view. Fig. 5 shows the entire clip. Head portion 62 comprises a lip portion 63, a loop portion 67 formed by a first side leg 64, a bottom leg 65 and a second side leg 66, and an off-setting leg 68, terminating in a sinuous prong 69. The legs 64-66 of the loop portion 67 are disposed in a "first plane," the body portion 60 and lip 63 being on opposite sides of that plane. A plurality of the clips are interlocked with each other over lath boards and attached to studs as illustrated in Fig. 1 below:

Claims 17-22 are drawn to the wire clip as described above. Claim 23 is drawn to the combination of lath sheets attached to frame members by the wire clips. All claims recite the lip portion of the clip and all except 18 and 19 omit reference to prong 69, which serves the dual function of holding the lath and the tail of another clip.

In rejecting claims 17-23, the board based its finding of double patenting on claims 2 and 3 of appellant's patent 2,945,329 issued July 19, 1960. The present application is a continuation of application serial No. 805,005 which is a division of the application for said patent. Figs. 1, 4 and 5 of the patent drawings are substantially the same as and show the same structure as Figs 1, 4, and 5 reproduced above. A modification of the above-described clip in which the lip (63) has a modified shape and the body (60) extends at a greater angle to the plane of the loop (67), shown in Figs. 2 and 3 of the present application, is likewise shown in Figs. 2 and 3 of the patent. The patent also discloses further clips which have no body portions for use as "starter" clips in the floor and ceiling positions, as shown in Fig. 1, supra, at 33 and 34. Essentially, these starter clips provide prongs (69) positioned on offsetting legs so that the prongs overlie the surface of the lath to hold it and also hold the tail ends (61) of associated clips crossing adjacent laths just as do the prongs 69 in Figs. 4 and 5.

To summarize the disclosures in the issued patent and the present application, everything disclosed in this application is disclosed in the patent and the patent discloses additional matter. By reason of the copendency, only the claims of the patent can be considered as support for the rejection, its disclosure being looked to only to determine the meaning of the claims, which are to be read in the light of the specification.

The rejection is predicated on claims 2 and 3 of the patent. Since these are both dependent claims, and for reasons which will be made clear later, we here reproduce all the claims of the patent (emphasis ours).

1. A clip of formed wire for attaching a sheet of lath to a structural framing element comprising loop means for attaching said clip to a framing element, said loop means lying substantially in a first plane, one end of said loop means forming an end leg, an offsetting leg extending substantially perpendicularly from the outer end of said end leg, and a prong formed for receiving and holding a straight tail portion of another clip, said prong extending angularly from the opposite end of said offsetting leg, said offsetting leg and said prong being in a common second plane which is substantially perpendicular to said end leg, said second plane being substantially perpendicular to said first plane, whereby when in operative position said end leg is adapted to be disposed adjacent an end surface of an associated lath sheet and to extend perpendicularly to the general plane of the sheet, and said offsetting leg is adapted to extend parallel to and adjacent the outer face of an associated lath sheet with the prong being adapted to extend parallel and adjacent to the outer face of an associated lath sheet.

2. A wire clip as defined in claim 1 wherein the wire extending from the opposite end of said loop defines an elongated body portion terminating at the opposite end in a substantially straight tail portion adapted for insertion between the prong of an adjacent clip and the outer face of a lath sheet.

3. A wire, straight lathing clip as defined in claim 2, wherein said elongate body portion extends substantially perpendicularly to the plane of said loop.

4. A wire, diagonal lathing clip as defined in claim 2, wherein said elongate body portion extends at substantially a 45° angle from the plane of said loop.

5. A wire starter clip as defined in claim 1 consisting essentially solely of said attachment means, said end leg, said offsetting leg and said prong.

Claim 17 on appeal is illustrative and reads (emphasis ours):

17. An interlocking, continuous support type wire clip for attaching lath sheets to structural framing member, said clip comprising an elongate body portion of at least about 12 inches length terminating at one end in a tail portion for attachment to another similar clip and terminating at the opposite end in a head portion, said head portion having a framing member receiving loop consisting essentially of a first side leg terminating in a generally perpendicularly extending bottom leg, said bottom leg terminating at its opposite end in a generally perpendicularly extending second side leg substantially parallel to said first side leg and disposed substantially in a first plane common to said first side leg and said bottom leg, said first plane intersecting the general extent of said body portion, the extent of said body portion at least at a portion thereof adjacent said head portion lying in a second plane substantially perpendicular to said first and second side legs and parallel to and spaced from said bottom leg, said head portion further comprising a relatively short lath-edge receiving lip disposed on an opposite side of said first plane from said body portion, at least a portion of said lip having an extent substantially within said second plane.

Analysis of the patent claims shows that claim 1 is a broad subcombination claim including three elements: loop means having an end leg, an offsetting leg perpendicular to it, and a prong extending angularly from the offsetting leg. It covers, in the sense that it reads on, the two embodiments of clips, common to this application and the patent, as well as the floor and ceiling starter clips additionally disclosed in the patent.

It will be noted that patent claim 5 implies that claim 1 enumerates the elements of a starter clip, which has no body, and then limits it by substituting the phrase "consisting essentially solely of" for the word "comprising" in claim 1. It is thus clear what the scope of patent claim 1 is.

Patent claim 2, relied on in the rejection, adds the elongated body (60) with its straight tail (61). Claim 3, also relied on, adds to claim 2 the further limitation that the body is perpendicular to the plane of the loop, which is the embodiment of Figs. 4 and 5, supra. These are the two claims relied on by the examiner and the board to support the double patenting rejection.

It will be seen that no patent claim refers to a lip portion (63) and all refer to a prong (69). All application claims include a lip and it is on these facts that appellant bases his argument that the rejection is unsound. The argument is that his clips contain two inventions: (1) the offset prong and (2) the lip and that the patent claims are directed to the offset prong invention and the application claims to the lip invention, which is, he says, an "independent and distinct" invention which, under the rules, he could not have claimed in the patent and so he filed what is, in effect, a voluntary divisional application. The record before us does not contain either application serial No. 530,179 of Aug. 23, 1955, on which the patent issued, or the intermediate divisional application, serial No. 805,005 of April 8, 1959, of which the present application is said to be a continuation, filed more than three years later and nearly seven years after the first application on which the patent was granted. There is, therefore, no direct indication before us of why appellant chose this voluntary division method of claiming a clip embodying his...