Interference No. 103,950
disclaimers. In particular the CCPA majority notes, 342 F.2d
at 1007, 145 USPQ at 136:
It should be clear that we do not find it necessary
to rely on the disclaimers, or either of them, to
reverse in this case. We nevertheless hold the
disclaimers to be effective in removing two of the
frequently cited reasons given in support of double
patenting rejections, extension of monopoly in point
of time and prevention of the issuance of two
patents on one invention. With the disclaimers of
record, we can find no possible support for the
double patenting rejections in this case.
The CCPA majority's above-quoted paragraph appears to set
out inconsistent positions. First, the CCPA majority states
"[i]t should be clear that we do not find it necessary to rely
on the disclaimers, or either of them, to reverse in this
case." The position is absolutely correct in view of the
CCPA's disposition of the double patenting rejection on its
merits. Hence, it would not be unreasonable to say that what
the CCPA majority says about the disclaimers is dictum.6
Second, however, the CCPA majority states "[w]e nevertheless
hold [that] *** [w]ith the disclaimers of record, we can find
no possible support for the double patenting rejections in
this case" (bold added). Hence, what started out as dictum
can be argued to have become an alternative holding in the
case which would fully support the CCPA's decision. Stated in
other terms, had the CCPA majority bottomed its decision on
the disclaimers, it would not have had to reach the merits.
6 For a discussion of what constitutes dictum, see United States v. Crawley,
837 F.2d 291 (7th Cir. 1988).
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