Application of Hammell, Patent Appeal No. 7201.

• Decision Date: 11 June 1964
• Docket Number: Patent Appeal No. 7201.
• Parties: Application of Kemper M. HAMMELL.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

141 USPQ 832, 332 F.2d 796 (1964)

Application of Kemper M. HAMMELL.

Patent Appeal No. 7201.

United States Court of Customs and Patent Appeals.

June 11, 1964.

William Hintze, Harrisburg, Pa. (Truman S. Safford, Curtis, Morris & Safford, New York City, Marshall M. Holcombe, Harrisburg, Pa., of counsel), for appellant.

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

Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH, and ALMOND, Judges.

ALMOND, Judge.

This appeal is from the decision of the Board of Appeals holding the claims of application Serial No. 687,217¹ unpatentable.

The invention relates to self-locking electrical terminals for connecting the ends of a pair of wires, and particularly to tapered tabs of small size made from sheet metal. The flat tabs are tapered at an angle of about 3 to 4 degrees between the sides of the tab in order that the receptacle-entering end of the tab is narrower than the wire-connected end. The receptacle, connected through a ferrule to the bared end of an insulated conductor, is adapted to be forced on the tab to bring the angled sides into a force-fit frictional connection. In addition, a pair of flanges on the receptacle provides spring elements serving to confine the tab on insertion and to press it into contact with the bottom portion of the receptacle engaging the underside of the tab.

Claim 3 is illustrative of the invention claimed and reads as follows:

"A receptacle for electrical connection with a substantially flat contact blade having converging sides comprising a web having a contact surface thereon, overhanging spring members extending from opposed sides of said web, the ends of said members overlying said web to engage the blade yieldingly with said contact surface, the longitudinal side portions of said web being bowed to extend from the portion of said web including said contact surface, first downwardly and outwardly and then into integral continuity with the respective spring members, said receptacle converging away from the mouth thereof so that the receptacle side walls converge to receive there between the blade sides in a tight fit."

The five claims have been considered below and in the briefs on appeal as falling into two separate groups.

Appellant's brief summarizes the rejections as follows:

"In the posture the case now assumes claims 1 and 2 stand rejected as being cross-readable with claims of a later filed commonly owned application of one Carlson, Serial No. 475,733, the Carlson claims being counts of an Interference No. 88,609 with a third party interferant; and claims 3, 4 and 5 as being unpatentable over the same Carlson claims in view of secondary reference patents to Stiles — 735,839; Hayes — 2,579,739 or Batcheller — 2,820,212. During the motion period of interference 88,609, appellant and the common owner brought claims 1 and 2 forward in the interference while requesting interference to be declared with the third party interferant."

A preliminary question presented is whether claims may properly be rejected for lacking patentable distinction over claims of a copending application. In other words, can there be "double patenting" without a patent? Appellant states it this way:

"It thus becomes clear that no patent has yet been issued on the subject matter of appealed claims 1 and 2. The Carlson claims (and the adverse interferant\'s claims) in interference are still in application form and the interference has not yet been terminated. Obviously, as no monopoly has as yet been granted, there can be no extension of it; nor has any inventor been issued the first patent on the subject matter." (Emphasis present.)

The examiner cited sections 305, 305.02(a), and 822.01 of the Manual of Patent Examining Procedure as authority for the rejections based on the claims of the Carlson application. The solicitor points out that in the case of In re Stanley, 214 F.2d 151, 41 CCPA 956.

"* * * this Court expressly approved the Patent Office practice (as authorized by the manual) of rejecting claims for lack of patentable distinction over claims of the common assignee\'s earlier filed application. Moreover, this Court indicated that the Examiner has a duty to follow that practice in an appropriate case."

It is a well established practice to reject claims in an application related to another application in interference over the counts of the interference, and to suspend action pending the award of priority.² The reason for it is to provide a service to the applicant so that he may take corrective action by putting all of the conflicting claims in one application before a patent issues containing only part of them. If the applicant does not want the service, he may press for a decision in any of his pending applications. The facts presented in Ex parte Bullier, 1899 C.D. 155, 88 O.G. 1161, are similar to those here present. There the claims were rejected in view of similarity to counts in an interference and action was suspended on the ex parte application pending the outcome of the interference. The Assistant Commissioner said:

"The possibility, however, that the Examiner may be mistaken in holding that the claims in this case are not patentable over the invention shown by the other party to the interference must be contemplated just as the rules providing for appeals contemplate the possibility of mistake in rejecting claims on references. The applicant should be allowed to contest that question at the present time instead of being compelled to wait until the interference is decided. The question to be determined is of the same kind as if a decision had been rendered against

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