Appeal No. 1996-2123
Application No. 08/069,458
Does any claim in the application define merely an obvious variation of an
invention disclosed and claimed in the patent? In considering the
question, the patent disclosure may not be used as prior art. In re
Boylan, supra; In re Aldrich, 55 CCPA 1431, 398 F.2d 855, 158 USPQ
311 (1968). This does not mean that the disclosure may not be used at
all. As pointed out above, in certain instances it may be used as a
dictionary to learn the meaning of terms in a claim. It may also be used
as required to answer the second analysis question above. We recognize
that it is most difficult, if not meaningless, to try to say what is or is not an
obvious variation of a claim. A claim is a group of words defining only
the boundary of the patent monopoly. It may not describe any physical
thing and indeed may encompass physical things not yet dreamed of.
How can it be obvious or not obvious to modify a legal boundary? The
disclosure, however, sets forth at least one tangible embodiment within
the claim, and it is less difficult and more meaningful to judge whether
that thing has been modified in an obvious manner. It must be noted that
this use of the disclosure is not in contravention of the cases forbidding its
use as prior art, nor is it applying the patent as a reference under 35
U.S.C. 103, since only the disclosure of the invention claimed in the
patent may be examined.
If the answer to the second question is no, there is no double
patenting involved and no terminal disclaimer need be filed. If the answer
is yes, a terminal disclaimer is required to prevent undue timewise
extension of monopoly.
See, In re Vogel, 422 F.2d at 441-42, 164 USPQ at 622 (CCPA 1970):
While, using either interpretation of claim 55, the strains of Acetobacter are identical, the claims
of >162 and claim 55 are not identical. Claim 55 is generic to the species claims of >162. AThus, the
generic invention is 'anticipated' by the species of the patented invention . . . without a terminal disclaimer,
the species claims preclude issuance of the generic application.@ See, In re Goodman, 11 F.3d 1046,
1053, 29 USPQ2d 2010, 2016 (Fed. Cir. 1993). Accordingly, absent a terminal disclaimer, claim 55 is
properly rejected under the doctrine of obviousness-type double patenting.
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