Interference No. 103,950
Nevertheless, the CCPA majority explicitly stated that "we do
not find it necessary to rely on the disclaimers ***."
(3)
Our Supreme Court has observed that where a court rests
its judgment on two separate ground, both grounds are of equal
validity and neither is dictum. Woods v. Interstate Realty
Co., 337 U.S. 535, 537 (1949); United States v. Title
Insurance & Trust Co., 265 U.S. 472, 486 (1924). Hence, the
real question becomes whether the Heinle disclaimer holding
was intended to be a separate ground upon which the CCPA made
its decision.
This is not the first time this board has found it
necessary to consider whether a CCPA holding was dictum. See
Ex parte McGrew, 41 USPQ2d 2004, 2006 n.5 (Bd. Pat. App. &
Int. 1995), aff'd sub. nom In re McGrew, 120 F.3d 1236, 43
USPQ2d 1632 (Fed. Cir. 1997), where we found it necessary to
resolve a question of whether the CCPA's opinion in In re
Sasse, 629 F.2d 675, 207 USPQ 107 (CCPA 1980), contained
dictum. We held that a statement in the Sasse opinion that
claims could not be rejected under 35 U.S.C. § 135(b) was not
necessary to the Sasse decision. 41 USPQ2d at 2006 n.5. On
appeal, the Federal Circuit agreed and explicitly held that
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