Application of Newton
| Decision Date | 18 September 1969 |
| Docket Number | Patent Appeal No. 8167. |
| Citation | 163 USPQ 34,414 F.2d 1400 |
| Parties | Application of Russell B. NEWTON. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Norman C. Armitage, attorney of record, Spartanburg, S. C., for appellant. Earle R. Marden, M. William Petry, Spartanburg, S. C., of counsel.
Joseph Schimmel, Washington, D. C., for the Commissioner of Patents. Jere W. Sears, Washington, D. C., of counsel.
Before RICH, Acting Chief Judge, HOLTZOFF and McLAUGHLIN, Judges, sitting by designation, and ALMOND and BALDWIN, Judges.
This is an appeal from the decision of the Patent Office Board of Appeals affirming the rejection of claims 6 and 7, the sole claims in appellant's application entitled "Pneumatic Cleaner."1
The invention relates particularly to vacuum clearing apparatus for clearing of lint and fiber from textile rolls such as those associated with spinning frames, roving frames, and the like. Looking at the top roll vacuum clearer 32, shown in cross-section in Fig. 2, reproduced below, it can be seen that it consists basically of an oval-shaped hollow shoe member 38 which engages the top front roll 22, a collar member 40 which communicates with an opening 42 in an elongated suction manifold 44, and tubular members 46 and 48 which provide communication between suction manifolds 34 and 44. The bearing surface of the shoe member 38 is curved to conform to roll 22, except for notch 54 in its forward lip which admits air and any foreign material carried by the roll. The rear lip 56 scrapes the latter from the roll, for entrainment in the admitted air and removal through the vacuum clearer 32. The specification states: "The outer dimension of the shoe member 38 is so selected that it will fit snugly into the collar member 40 to prevent leakage of air but at the same time can readily slide up and down to conform to variations in movement of the top front roll 22."
Claims 6 and 7 read:
The examiner rejected appellant's claims on several grounds, summarized briefly here as (1) obviousness in view of prior art; (2) indefiniteness of claim recitation; (3) failure to comply with 35 U.S.C. § 112 and Patent Office Rule 71(b); and (4) unpatentability over the claims of the copending application serial No. 342,390 of R. M. Ingham, filed February 6, 1964, granted as U.S. Patent 3,251,101 on May 17, 1966.
As will be seen, the above rejections present us with a unique set of circumstances resulting in, insofar as we have been able to ascertain, a case of novel impression in this court. Prior to proceeding in detail, however, we point out that rejection (1) based on prior art was specifically reversed by the board and is not before us, therefore rendering discussion of the involved prior art unnecessary. The board did affirm rejection (4) based on the patent to Ingham, hence we discuss that patent here.
Of Ingham, appellant stated in his brief before the board:
* * * this disclosure is substantially identical to a copending disclosure of an application filed on the same day by a different inventor. For the Board\'s information both of these applications have been assigned to the same assignee, which assignments are not of record. The Applicant of the instant case is the inventor of the broad concept, as claimed. The inventor of the second application is the inventor of the specific embodiment disclosed but not claimed in this application. The only embodiment of the inventions presently worked out is that set forth in both applications. Applicant has only set forth in this case one embodiment of the invention to illustrate the utility of such invention. At the same time Applicant is only entitled to claim that portion of the invention which is his.
We reproduce claim 3 of Ingham as representative:
3. Textile drafting apparatus comprising a pair of drafting rolls in peripheral nip-forming engagement with each other, a suction manifold mounted in a predetermined position relative to said pair of drafting rolls and in communication with a source of negative pressure, suction conduit means in fluid communication with said suction manifold, means mounting said suction conduit means in frictional engagement with one roll of said pair of rolls and allowing movement of said suction means relative to both said suction manifold and said one roll of said pair of rolls upon encountering variations in the surface of said one roll of said pair of rolls, said suction conduit means having at least two spaced wall portions, one of said wall portions being of wear resistant plastic like material and being in frictional engagement with said one roll of said pair of rolls to scrape lint and debris therefrom and the other of said wall portions being spaced from said one roll of said pair of rolls to provide an opening between said other wall portion and said one roll of said pair of rolls to allow a potential lap up to be directed to the suction source.
The examiner's rationale for the rejections summarized above was set forth at length in his Answer:
Claims 6 and 7 are further rejected as failing to comply with 35 USC 112 which states * * *. Further, Rule 71, which refers to 35 USC 112, paragraph (b) states * * *.2 * * * since the specification and the drawings of copending Application Serial No. 342,920 and the instant application are identical, neither has clearly or specifically disclosed different inventions. While the above applications were filed on the same date, appellant states * * * that both have been assigned to the same assignee, although such assignments are not of record. Therefore the broad concept, which appellant declares his invention to be as recited in the claims, does not require the suction conduit means to be slidably mounted relative to a means connecting the conduit means to a source of negative pressure. As recited in the claims, the suction conduit means may comprise elements 40, 38 as a single member connected to manifold 44 or the suction conduit means may comprise element 38 connected directly to manifold 44. Neither of such broad concepts is disclosed nor precisely set forth in the specification as required by 35 U.S.C. § 112 or Rule 71(b).
The examiner then stated a new ground of rejection, namely:
Claims 6 and 7 are further rejected as unpatentable over the claims of copending application Serial No. 342,920. Since the specification and the drawings are identical to the specification and drawings of said copending application and since there is only one species disclosed, it is quite obvious that there can be only one invention disclosed. Therefore, since the copending application is now in issue, and there has been disclosed only one invention, issuance of a second patent to the same invention would result in an improper extension of the common assignee\'s monopoly. Furthermore, it is a well settled fact that only a single invention is entitled to a single patent.
In making the above rejection, the examiner also noted that in certain cases the commonly assigned "improvement" patent of an inventor will not bar a patent on the basic invention of another inventor, stating however that in his opinion the present situation did not fall into that category for the reason, among others, that no cross-referencing was made. The examiner also directed attention to In re Sutherland, 347 F.2d 1009, 52 CCPA 1683, wherein a double patenting rejection in a related situation was reversed, distinguishing it however on the basis that the instant situation did not present independent and distinct inventions capable of use one without the other.
Finally the examiner recited:
Claims 6 and 7 are further rejected as indefinite in the recitation "means providing fluid communication between said one roll and said suction conduit means" inasmuch as the space or opening between the roll and the conduit is recited as a means.
The board made no mention of the last of the above discussed rejections, stating however that the rejection expressly based on 35 U.S.C. § 112 and on the claims of Ingham:
* * * appear to us to point toward the same issue, i. e. whether the Ingham, Jr., patent and the instant application set forth two different inventions capable of sustaining different patents. We will accordingly treat them together. Reference is made to the Examiner\'s Answer as to complete statement of his position.
It went on to say:
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