In re Van Ornum

Decision Date05 August 1982
Docket NumberAppeal No. 82-505.
Citation686 F.2d 937
PartiesIn re Joel V. VAN ORNUM and Peter L. Stang.
CourtU.S. Court of Customs and Patent Appeals (CCPA)

Harry M. Cross, Jr., Daniel W. Sixbey, Arlington, Va., and Stuart J. Friedman, Seattle, Wash., for appellants.

Joseph F. Nakamura, Sol., Gerald H. Bjorge, Associate Sol., Washington, D. C., for Patent and Trademark Office.

Before MARKEY, Chief Judge, and RICH, BALDWIN, MILLER and NIES, Judges.

RICH, Judge.

This appeal is from the decision of the United States Patent and Trademark Office (PTO) Board of Appeals (board) sustaining the rejection of claims 1-3, 6, and 7 of application serial No. 821,360, filed August 3, 1977, for "Elastomeric Sealant Composition," on the ground of double patenting and also on a theory of abandonment by assignment, citing 35 U.S.C. § 102(c). We affirm the double patenting rejection and do not reach the abandonment issue.

Background

The appellant-inventors, Van Ornum and Stang, in addition to filing the application at bar, had already had issued to their assignees two United States Patents on puncture sealant compositions for vehicle tires: No. 3,935,893, issued Feb. 3, 1976 (the '893 patent), and No. 4,113,799, issued Sept. 12, 1978 (the '799 patent). It has been of significance in this case that the '893 patent issued to General Motors Corporation as the result of an assignment, recorded in the PTO on the filing date of the application for that patent. The present application and the '799 patent have been assigned to Rocket Research Corporation, by change of name now Rockcor, Inc., the real party in interest in this appeal, the assignment also being recorded in the PTO.

The application on appeal was filed under 35 U.S.C. § 121 as a voluntary division of the application that matured into the '799 patent, and all claims stand rejected on the ground of double patenting, said to be of the "obviousness type," the rejection being predicated on the claims of both the '893 and '799 patents.

The board opinion explains its views on the relationship of the claims of the two patents to the claims on appeal as follows:

Before we discuss the rejections, it would be well to set forth an analysis of the various inventions being claimed in the two patents and the present application. As can be seen, all three relate to sealing compositions, which are to be used in the same manner. The claims of Patent No. 3,935,893 set forth the composition in its most detailed form, describing six ingredients, consisting of the high molecular weight and low molecular weight butyl rubbers, liquid polybutylene, partially hydrogenated elastomeric block copolymer, carbon black and cross-linking agents. The ratio of high molecular weight butyl rubber to low molecular weight butyl rubber is specifically described as being 60 to 40. Patent No. 4,113,799 is broader in that it sets forth only the high molecular weight and low molecular weight butyl rubber as well as a "tackifier." As can be seen from the patent specification, liquid polybutylene is a preferred tackifier. The claims define a broad range of 35-65 for the high molecular weight rubber to 65-35 low molecular weight butyl rubber. The claims in the present application describe the same high molecular and low molecular weight butyl rubber composition which is used with the tackifier. However, the ratio of high molecular weight to low molecular weight butyl rubber is set forth in a broader range of 20-60 high molecular weight rubber to 80-40 low molecular weight butyl rubber. Also, the specification teaches that liquid polybutylene is the preferred tackifier. Our emphasis.

Appellants' brief says that the claims on appeal are identical to claims which were in the application for the '799 patent which were rejected therein on the ground of double patenting in view of the '893 patent claims and that, because the Manual of Patent Examining Procedure (MPEP) § 1490 states that a terminal disclaimer cannot be directed to particular claims but only to an entire patent, they were divided out and placed in the divisional application on appeal. The '799 patent then went to issue with claims which had been allowed. The prosecution of the broader claims now before us was continued in a divisional application. With further reference to the relation of the claims on appeal to the claims of their patents, appellants' view is as follows:

The claims of the present applications sic are, by definition, generic to the species claims of the two patents * * * relied upon by the Examiner in support of the double patenting rejection * * *. The broad generic claims of the application comprehend both the constituents and specific range limitations of the claims of both patents. The Board of Appeals implicitly acknowledges the genus species relation by treating the appealed claims as an attempt to claim broadly that which had been previously described in more detail in the claims of the two patents.

In prosecuting these "generic" claims in the application before us, appellants sought to overcome the double patenting rejection by filing a terminal disclaimer under 35 U.S.C. § 253, second paragraph.1 The first disclaimer filed was criticized as not in proper form and a second one was filed. The PTO rule or regulation on terminal disclaimers, which gives rise to the issue before us, is 37 CFR 1.321 which reads:

§ 1.321 Statutory disclaimer.
(a) A disclaimer under 35 U.S.C. 253 must identify the patent and the claim or claims which are disclaimed, and be signed by the person making the disclaimer, who shall state therein the extent of his interest in the patent. A disclaimer which is not a disclaimer of a complete claim or claims may be refused recordation. A notice of the disclaimer is published in the Official Gazette and attached to the printed copies of the specification. In like manner any patentee or applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted or to be granted.
(b) A terminal disclaimer, when filed in an application to obviate a double patenting rejection, must include a provision that any patent granted on that application shall be enforceable only for and during such period that said patent is commonly owned with the application or patent which formed the basis for the rejection. Our emphasis.

The legal problem which has been paramount in this case arose because appellants would not, because they could not, file a disclaimer complying with paragraph (b) of the rule because their '893 patent, on the claims of which the double patenting rejection was in part based, had been assigned to General Motors. The PTO therefore ruled that the disclaimer was unacceptable and that the double patenting rejection would have to stand. Appellants therefore attack the rule.

With respect to the double patenting rejection, appellants make two principal contentions: (1) the appealed claims, considering their relation to the claims of the two patents, were not properly rejected for double patenting; (2) 37 CFR 1.321(b) is invalid, (a) as beyond the rulemaking authority of the Commissioner of Patents and Trademarks under 35 U.S.C. § 6(a) and (b) because it is contrary to statutory and case law.

OPINION

The Facts Adequately Support a Rejection Based on "Double Patenting"

We necessarily begin by considering whether there was a proper "double patenting" rejection. We approach that question by stating our view of the essential facts as gleaned from our own study of the record.

Appellants Van Ornum and Stang are the identical inventorship entity involved in all of the patents and application here involved, notwithstanding the reversal of the order of their names on the two issued patents so that they have been referred to as the Stang et al. and Van Ornum et al. patents. They filed their first application on July 15, 1974, and simultaneously recorded their assignment thereof to General Motors. The '893 patent issued thereon is entitled "Self-Sealing Vehicle Tire and Sealant Composition." The object of the invention is to render tubeless automobile tires self sealing after being punctured, desirably maintaining that capacity over a wide possible service temperature range of -20°F. to 270°F. The inventors were not pioneers in the field and begin their disclosure by referring to three prior sealant patents. They say they began their work by "screening a number of commercial sealants" containing curable butyl rubber which lacked sufficient tack and strength at high temperatures. The first example of the patent, which contains two specific examples, discloses that appellants began with a "commercially available sealant composition," the makeup of which is tabulated, to which they added a liquid tackifier and a "block copolymer." Going into more detail, the tabulation of the old sealant composition shows that it contained a by-weight mixture of 60 parts of high molecular weight butyl rubber and 40 parts of low molecular weight butyl rubber, a quantity of mixed carbon blacks of three different grades, a cross-linking agent, and a large amount of toluene as solvent. To this was added, as tackifier, a liquid copolymer consisting of 98% butylene and 2% isobutylene which was "a commercial product available under the trade name `Indopol H-300'." Also added was a block copolymer "of the A-B-A type wherein the A blocks were formed of polystyrene, and the B blocks were polymeric segments of isoprene and some higher carbon chain length conjugated dienes," partially hydrogenated. This material "was obtained under the trade designation `Kraton G-6500'," said to be about 68% by weight polyisoprene.

This condensed description should suffice to give meaning to the four claims of '893, which are of quite limited scope, claim 1 being exemplary:

1. A sealant composition for use in a vehicle tire to seal punctures therein up to about one-quarter inch in diameter formed in the operation of said
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