Application of Swett, Patent Appeal No. 8575.

• Decision Date: 09 December 1971
• Docket Number: Patent Appeal No. 8575.
• Citation: 59 CCPA 726,451 F.2d 631
• Parties: Application of James B. SWETT.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

59 CCPA 726, 451 F.2d 631 (1971)

Application of James B. SWETT.

Patent Appeal No. 8575.

United States Court of Customs and Patent Appeals.

December 9, 1971.

Paul R. Wylie, Los Angeles, Cal., Lawrence I. Field, Arlington, Va., attorneys of record, for appellant. Leigh B. Taylor, Ridgewood, N. J., of counsel.

S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. John W. Dewhirst, Fairfax, Va., Elliot A. Goldberg, Arlington, Va., of counsel.

Before WORLEY, Chief Judge, and RICH, ALMOND, BALDWIN, and LANE, Judges.

ALMOND, Judge.

This is an appeal from the decision of the Patent Office Board of Appeals, adhered to upon reconsideration, affirming the rejection of the claim in appellant's design application¹ on the ground of double patenting in view of the claims in appellant's utility patent.²

The design application is for a lunch box container as illustrated in Figs. 1, 2 and 4. The five additional figures in the design application mainly illustrate in greater detail the features shown in the reproduced figures, which, for purposes of the discussion herein, should be sufficient.

The utility patent is also directed to a lunch box container. Since in double patenting situations it is proper to consider only the claims involved, we think it unnecessary to discuss what is disclosed in this patent. However, in order to aid in understanding the claims, we reproduce Figs. 2 and 3 of that patent:

The patent claims, which are the basis for the double patenting rejection, read as follows:

1. A sealable storage container of substantially rectangular configuration comprising a pair of similarly shaped side walls in opposed relationship to each other, said sidewalls being interconnected to each other by end walls and a bottom wall, said sidewalls being transversely outwardly centrally bowed away from each other so as form a container of an intermediately greater width, said side walls and end walls adapted to form a tight seal with a cover therefor, and an upright imperforate divider member having an upright flange at either side thereof, each of said flanges being of a vertically concave configuration and comprising side finger portions laterally extending from each other, said divider member being freely positionable between said sidewalls longitudinally thereof from a generally central position wherein only the outer portions of said fingers are in contact with said sidewalls to positions increasingly proximate said end walls wherein said fingers are proportionately increasingly inwardly flattened by said sidewalls into increasingly greater contact therewith

2. A storage container according to claim 1, further comprising a closure adapted to form a tight seal with said container.

3. A storage container according to claim 2, wherein said closure and said divider contact along the entire lateral extent of said divider between said sidewalls.

4. A storage container according to claim 2, wherein the walls of said container terminate in an outwardly flared peripheral rim and said closure terminates in a downwardly opening U-shaped peripheral rim adapted to engage the rim of said container in tight sealing relationship.

5. A storage container according to claim 1, wherein said divider has a foot segment on the lower edge thereof said foot segment being formed as a flange normal to the main wall of said divider, said flange providing stable resting support for said divider.

Initially the design application was rejected solely under 35 USC 103 over the prior art. The examiner in his Answer added a double patenting rejection based on the claims in appellant's utility patent, stating:

Since claims 1-5 of applicant\'s utility patent (newly cited reference) present a word picture of the design claimed herein, the claims of necessity must over-lap being directed to the same lunch box with slidable divider as shown in full lines on the drawing. Hence, since the utility invention as defined by the claims cannot be made without infringing the design, double patenting exists and two patents cannot issue.

On appeal, the board reversed the rejection under § 103 but affirmed the double patenting rejection. In response to appellant's arguments that the design application and utility patent claims were not for the same invention because they each covered structures not encompassed by the other, the board opined:

Consideration of the claims in the mechanical patent appears to us to support the Examiner\'s position and refute appellant\'s arguments as to unlimited shaped sic being encompassed thereby. It rather appears to us that claim 1 limited to rectangular configuration and bowed sides rather expressly defines the disclosed article and leaves little to constitute an express field of difference for a further design patent.

Appellant first contends that there can be no "same invention" type of double patenting in a design-utility situation since the respective claims are not analyzable in the same manner. In addition, appellant contends that "same invention" double patenting rejections may not be made in such situations since double patenting rejections between design and utility claims are based on judicial doctrine grounded on the public policy that abhors improper extensions of monopoly. In that regard, appellant states that extension of monopoly is not possible in the present case since the board's affirmance of the double patenting rejection in the design application (having as a maximum a fourteen-year term) came less than five months after the issuance of his seventeen-year utility patent.³ Lastly, appellant ...