Application of Vogel

• Decision Date: 11 June 1970
• Docket Number: Patent Appeal No. 8198.
• Parties: Application of Virgil W. VOGEL and Paul W. Vogel.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

164 USPQ 619, 422 F.2d 438 (1970)

Application of Virgil W. VOGEL and Paul W. Vogel.

Patent Appeal No. 8198.

United States Court of Customs and Patent Appeals.

March 5, 1970.

Rehearing Denied June 11, 1970.

Harvey B. Jacobson, Jacob Shuster, Washington, D. C., attorneys of record, for appellants.

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

Before RICH, Acting Chief Judge, ALMOND, BALDWIN, LANE, Judges, and MATTHEWS, Senior Judge, United States District Court for the District of Columbia, sitting by designation.

LANE, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of all claims (7, 10 and 11) in appellants' patent application serial No. 338,158, filed January 16, 1964, for "Process of Preparing Packaged Meat Products for Prolonged Storage."

The ground of rejection for each claim is double patenting, based upon the claims of appellants' U.S. patent 3,124,462, issued March 10, 1964, in view of a reference patent to Ellies, Re. 24,992, reissued May 30, 1961. No terminal disclaimer has been filed.

THE APPEALED CLAIMS

Claims 7 and 10 are directed to a process of packaging meat generally. Claim 10 is illustrative:

10. A method for prolonging the storage life of packaged meat products comprising the steps of: removing meat from a freshly slaughtered carcass at substantially the body bleeding temperature thereof under ambient temperature conditions; comminuting the meat during an exposure period following slaughter while the meat is at a temperature between said bleeding and ambient temperatures; sealing the comminuted meat within a flexible packaging material having an oxygen permeability ranging from 0.01 × 10-10 to 0.1 × 10-10 cc.mm/sec/cm2/cm Hg at 30°C. during said exposure period and before the meat has declined in temperature to the ambient temperature; and rapidly reducing the temperature of the packaged meat to a storage temperature below the ambient temperature immediately following said packaging of the meat.

The invention is based on appellants' discovery that spoilage and discoloration of meat are markedly accelerated if the meat is allowed to reach ambient temperature before packaging.

Claim 11 is directed to a similar process specifically limited to beef.

PRIOR ART

The only reference of record is Ellies. Ellies teaches the use of meat-packaging material having the oxygen permeability range recited in the claims.

THE PATENT

Appellants' patent, which is not prior art, claims a method of processing pork. Claim 1 of the patent is illustrative.

1. A method of preparing pork products, comprising the steps of: boning a freshly slaughtered carcass while still hot into trimmings; grinding desired carcass trimmings while still warm and fluent; mixing the ground trimmings while fluent and above approximately 80°F., mixing to be completed not more than approximately 3½ hours after the carcass has been bled and stuffing the warm and fluent mixed trimmings into air impermeable casings.

THE BOARD

The board characterized the rejection as follows:

The sole ground of rejection is that claims 7, 10 and 11 are unpatentable over appellants\' copending patented claims in Vogel et al., in view of Ellies. This is a double-patenting type rejection, whose statutory basis is 35 U.S.C. 101, as indicated in In re Ockert, 44 CCPA 1024; 1957 CD 404; 722 OG 222; 245 F.2d 467; 114 USPQ 330.

Thus the board viewed this case as involving "same invention" type double patenting. The board then discussed the differences between the appealed claims and the patent claims and found that the former did not define a "patentable advance" over the latter. It is thus clear that the board was not at all dealing with "same invention" type double patenting but with the "obvious variation" type.¹ The board found that the appealed claims merely extended the pork process to beef, and that this was not a "patentable advance." Such language states only a conclusion, since patentability is the very issue to be determined. The board gave the following analysis to support its conclusion:

We agree with the Examiner\'s reasons for holding the application of the claimed method to beef to be an unpatentable adaptation. In addition, the definition of "sausage" in Webster\'s 3rd New International Dictionary of 1963, on page 2019 is pertinent:

"sausage — a highly seasoned finely divided meat that is usually a mixture (as of beef or pork) * * *"

The examiner's reasons as stated in his answer were that the process steps are essentially the same, and the choice of beef rather than pork "is of no patentable significance since this would appear to be a judicious choice of available meat products, well within the ordinary skill of the art, and particularly so, in the absence of any unusual or unobvious result."

The board's use of the dictionary meaning of "sausage," as above quoted, is apparently intended to show that beef and pork are equivalents. Whatever may be their equivalency in other contexts, the dictionary definition of "sausage" does not show that beef and pork are equivalents in the sense of the invention now claimed. Appellants contend that the examiner and the board used the disclosure of the patent as a basis for concluding obviousness. To the effect that consideration of the patent disclosure is improper in testing for obvious-type double patenting, appellants cite In re Baird, 348 F.2d 974, 52 CCPA 1747 (1965).

OPINION

The proceedings below in this case indicate the advisability of a restatement of the law of double patenting as enunciated by this court.

The first question in the analysis is: Is the same invention being claimed twice? 35 U.S.C. § 101 prevents two patents from issuing on the same invention. See, e. g., In re Boylan, 392 F.2d 1017, 55 CCPA 1041 (1968). As we have said many times, "invention" here means what is defined by the claims, whether new or old, obvious or unobvious; it must not be used in the ancient sense of "patentable invention," or hopeless confusion will ensue. By "same invention" we mean identical subject matter. Thus the invention defined by a claim reciting "halogen" is not the same as that defined by a claim reciting "chlorine," because the former is broader than the latter. On the other hand, claims may be differently worded and still define the same invention. Thus a claim reciting a length of "thirty-six inches" defines the same invention as a claim reciting a length of "three feet," if all other limitations are identical. In determining the meaning of a word in a claim, the specification may be examined. It must be borne in mind, however, especially in non-chemical cases, that the words in a claim are generally not limited in their meaning by what is shown in the disclosure. Occasionally the disclosure will serve as a dictionary for terms appearing in the claims, and in such instances the disclosure may be used in interpreting the coverage of the claim. In re Baird, supra. A good test, and probably the only objective test, for "same invention," is whether one of the claims could be literally infringed without literally infringing the other. If it could be, the claims do not define identically the same invention. This is essentially the test applied in In re Eckel, 393 F.2d 848...