Interference No. 103,950
ii.
(1)
We start with In re Heinle, 342 F.2d 1001, 145 USPQ 131
(CCPA 1965). Heinle involved a double patenting rejection.
In a continuation application--the application on appeal--
Heinle claimed what the CCPA refers to an element E. Heinle's
parent application had issued as a patent and claimed the
combination of A, B, C, D and E. Heinle argued the double
patenting rejection was improper because
(1) the element E was patentable over the
combination A, B, C, D and E and
(2) the filing of (a) a disclaimer of the patent and
(b) a terminal disclaimer in the application to
cause any patent on the application to expire
when the disclaimed patent otherwise would have
expired.
A CCPA 3-2 majority agreed with Heinle that the element E
was patentable over the combination of A, B, C, D and E.
Accordingly, it reversed the double patenting rejection on its
merits.
(2)
Notwithstanding its reversal on the merits, the CCPA
majority undertook a discussion of the effect of the
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