Appeal No. 2004-1264
Application 09/909,168
claim(s) are directed to a sub-combination. See, In re Coleman,
189 F.2d 976, 979, 90 USPQ 100, 102 (CCPA, 1951), wherein the
Court notes that
It is settled law that a party might be entitled to a
patent for a combination because of the cooperation of the
elements contained therein, and at the same time be entitled
to a separate patent for one of the elements of the
combination. In re Carlton, 22 C.C.P.A. (Patent) 1223, 77
F.2d 363, 25 USPQ 390; In re Ferenci, 23 C.C.P.A. (Patents)
1023, 83 F.2d 279, 29 USPQ 162. In such a case, the
question to be determined is whether two or more different
inventive concepts are involved. In re Hadsel, 36 C.C.P.A.
(Patents) 1075, 173 F.2d 1010, 81 USPQ 376. If the claims
are so related that the separately claimed element
constitutes the essential distinguishing feature of the
combination as claimed, different concepts are not involved,
the inventions are not distinct, and double patenting will
be found.
In re Coleman, was further cited with approval in another
combination/subcombination double patenting case, i.e., In re
Heinle, 342 F.2d 1001, 1005, 145 USPQ 131, 134 (CCPA 1965).
Although the Court in Heinle determined that double patenting did
not exist in that case because the tubular core “subcombination”
was determined not to be the “essential distinguishing feature”
of the combination claim of the Heinle patent.
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