Interference No. 104,192
Cragg v. Martin v. Fogarty
claim of the patentee.
In Corbett v. Chisholm, supra, and as Fogarty itself has
noted, (Reply at 6, lines 19-25), in response to a restriction
requirement the applicant elected to prosecute apparatus
claims instead of method claims as the patentee had claimed
and the patentee’s method could be practiced with apparatus
materially different from that which the applicant elected.
On that basis, the Court held that the applicant’s claim and
the patentee’s claim defined patentably distinct inventions.
Thus, the applicant was not claiming substantially the same
invention as the patentee. What this suggests is that the
features claimed by the applicant, over and above that which
is claimed by the patentee, are important and cannot be
ignored. 8
As for In re Tanke, 213 F.2d 551, 102 USPQ 83 (CCPA
1954), it does not hold, as Fogarty argues on page 8 of its
reply, that “a mere distinction in breadth or scope” does not
define a separate invention. The language of In re Tanke must
be read in context. What it actually conveys is that where
the subject matter of the differently claimed inventions has
8Note also that other claims of the applicant did not
include one or more material features of the patentee’s claim.
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