Appeal No. 1996-2123
Application No. 08/069,458
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, 55 CCPA 1041, 392 F.2d
1017, 157 USPQ 370 (1968). As we have said many times, Ainvention@
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 Apatentable
invention,@ or hopeless confusion will ensue. By Asame invention@ we
mean identical subject matter. Thus the invention defined by a claim
reciting Ahalogen@ is not the same as that defined by a claim reciting
Achlorine,@ 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 Athirty-six inches@ defines the
same invention as a claim reciting a length of Athree feet,@ if all other
limitations are identical.
The claims of >162 are not identical to appealed claim 55, therefore the same invention is not being
claimed twice. However, if the same invention is not being claimed twice, a second question must be
asked:
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