Application of Blattner

• Decision Date: 17 June 1957
• Docket Number: Patent Appeal No. 6281.
• Citation: 245 F.2d 491,114 USPQ 299
• Parties: Application of Emil H. BLATTNER.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

114 USPQ 299, 245 F.2d 491 (1957)

Application of Emil H. BLATTNER.

Patent Appeal No. 6281.

United States Court of Customs and Patent Appeals.

June 17, 1957.

Wilmer Mechlin, Washington, D. C., for appellant.

Clarence W. Moore, Washington, D. C. (George C. Roeming, Rockville, Md., of counsel), for Commissioner of Patents.

Before JOHNSON, Chief Judge, and O'CONNELL, WORLEY, RICH and JACKSON (retired), Judges.

WORLEY, Judge.

This is an appeal from the decision of the Board of Appeals of the United States Patent Office sustaining the Primary Examiner's rejection of claims 11, 12, and 13 of appellant's application for a patent on a Side Bearing, on the ground of double patenting in view of appellant's patent, No. 2,515,853. That patent was granted July 18, 1950, on an application filed June 19, 1948. The appealed application was filed June 16, 1948 — three days prior to the application on which the patent was issued.

Since no issues of fact are involved it is unnecessary to consider in detail the inventions to which the application and patent relate. It is agreed, however, that the application and patent disclose patentably distinct species of a generic invention. The claims of the patent are limited to one species and the application contains allowed claims limited to the other species, in addition to the rejected claims which are generic to both. At the time the patent was granted, the application involved in the instant appeal contained only specific claims, and the generic claims were first inserted almost ten months later.

The sole question is one of law; namely, whether appellant, by taking out his patent containing only specific claims, at a time when he had no application pending containing generic claims, has forfeited his right to obtain generic claims in the appealed application. In answering that question in the affirmative, the Patent Office tribunals relied primarily upon Vapor Car Heating Co. v. Gold Car Heating & Lighting Co., D.C., 296 F. 188, 196, which stated the law to be as follows:

"If the claims be different, and the applications be copending, it makes no difference in which of the two applications the broader claims appear. * * * Therefore the generic claims may issue last, unless they be for the first time introduced into the subsequent patent after the first have issued, when it has been held that they are void. Union Typewriter Co. v. Smith, C.C., 173 F. 288. It is not clear when the generic claims were introduced into the later patent in Morse Chain Co. v. Link Belt Machinery Co., 7 Cir., 164 F. 331, 90 C.C.A. 650. If before the specific patent issued, with deference I should doubt its authority in the Second Circuit." (Italics ours.)

The Union Typewriter case, cited in the above excerpt, involved two patents granted to the same inventor on copending applications, the claims of the second patent having been inserted by amendment after the first patent issued. It was held that if such claims were construed to be generic to the two patents they would be void for double patenting. In so holding, the court quoted with approval the following statement from the decision of the Commissioner of Patents in Jones v. Larter, 92 O.G. 383:

"The presumption of dedication to the public by disclosure in a patent may, it is true, under certain circumstances, be overcome by having a currently-pending application claiming it; but I know of no authority for holding that it is overcome by an application which does not and was not intended to claim it, merely because the claims were inserted therein long after the patent on the other case issues. In the present case Larter could have made the claims of the issue at any time in his original case, and his failure to do so was, according to his own statement, due merely to a mistake as to his right to such claims. This was clearly a case where the claims could only be properly made by reissue, if at all, and this was the view that Larter took of the matter. He apparently did not think of inserting them in this case until six months after his patent issued, and inserted them then only upon the suggestion of the examiner. It was error on the part of the examiner to make the suggestion, since to grant the claims in this case would be in effect to grant a reissue of Larter\'s previous patent with broader claims, and at the same time extend its term."

The law as to double patenting in situations of the type here is stated as follows in Glascock and Stringham, Patent Law, 1943 (Pacot Publications, Madison, Wis.) Section 2860:

"* * * Under the weight of authority matter shown in a patent but not claimed, is dedicated to the public (as far as the same inventor is concerned), unless on the day of the grant the patentee was claiming the matter in an application pending

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