Interference No. 104,192
Cragg v. Martin v. Fogarty
applicant discussed as an issue whether the applicant’s claim
contained additional features which made the application claim
not substantially the same as the patent claim. Fogarty too
strictly applied the principle that if every material feature
of the patent claim is present in the application claim then
substantially the same invention is being claimed by the
applicant. The mistake lies in not recognizing that the
applicant’s claim may include material features that render
the applicant’s claim patentably distinct and separately
patentable from the patent claim.
In Stalego v. Heymes, 263 F.2d 334, 335, 120 USPQ 473,
475 (CCPA 1959), the Court of Customs and Patent Appeals
stated:
Those decisions [citing to precedents] hold, in
effect, that claims are not for substantially the
same subject matter if one of them contains one or
more material limitations which are not found in the
other. Accordingly, the ultimate question to be
decided in such cases is generally whether specific
differences between claims are material; and that is
a question which must be decided largely on the
basis of the particular circumstances of each case.
In Stalego, the Court reviewed the additional features of the
reissue applicant’s claim and stated that it did not regard
any of those limitations as important. In analyzing the
additional features claimed by the reissue applicant, the
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