In re Faust

¶5SMITH, Judge.

¶6This is an appeal from the decision of the Board of Appeals affirming the examiner’s rejection of the six appealed claims on the basis of “double patenting.”

¶7An initial statement of fact as to the nature of the “double patenting” rejection here involved is helpful. Appellants filed an application1 relating to electrolytically sharpening, shaping and finishing a conductive composite workpiece. Prior to the issuance of a patent on this application appellants filed a second application,2 here on appeal, also relating to electrolytically sharpening, shaping and finishing a conductive composite workpiece. The application for the patent and the presently appealed application were thus copending. Both were filed by the same inventors. Both have been assigned to the Cleveland Twist Drill Co.

¶8The examiner’s answer stated the rejection as follows:

Claim 71 and claims 47 and 74 which depend therefrom are rejected on the ground of double patenting as they do not patentably distinguish over claim 8 of the Faust et al. patent. … … -x-

Claims 70, 72 and 75 are rejected on the ground of double patenting as they are not considered as patentably distinguishing over claim 7 of appellants’ patent to Faust et al. …

¶9 A terminal disclaimer as to the terminal part of any patent granted on the appealed application was filed. The examiner held that our decision in In re Siu, 222 F.2d 267, 42 CCPA 864, controlled as to the effect of the terminal disclaimer. He declined to follow or apply In re Robeson, 331 F.2d 610, 51 CCPA 1271, and In re Kaye, 332 F.2d 816, 51 CCPA 1465. According to the *968examiner, appellants here claimed but a “colorable variation” of the patented invention so that “the sufficiency of the terminal disclaimer” was considered “moot.”

¶10The board affirmed the examiner, adding in its opinion:

Appellants’ attention is directed to the recent decision of Hays et al. v. Reynolds [D.C., 242 F.Supp. 206], 145 U.S.P.Q. 665, which holds that a terminal disclaimer cannot avoid a rejection on double patenting where the rejected claims are not patentably distinct from the claims in an issued patent. We consider the Hays et al. v. Reynolds decision to be directly in point here.

¶11The board rendered its decision prior to the Court of Appeals’ decision in Hays v. Brenner, 123 U.S.App.D.C. 96, 357 F.2d 287 (1966) and our decision in In re Bowers, 359 F.2d 886, 53 CCPA 1590. For the reasons stated in Bowers, we do not find that the District Court’s decision in Hays stands for the proposition advanced by the board.3 Nor does the board’s position draw any support from the Court of Appeals’ decision in Hays. Appellants therein did not deny that the subject matter relied on by the Patent Office was prior art. The Court of Appeals stated in its opinion, 357 F.2d at 289:

… Here the action of the Patent Office denying the Hays application as obvious under § 103 is reinforced by the finding of the District Court to the same effect. We affirm that finding. …

… Since appellants’ contention for patentability based on the filing of the terminal disclaimer assumes obviousness, § 103 is an absolute bar to the grant of a patent.

¶12We agree that an invention, to be otherwise patentable, must not be obvious at *969the time the invention was made to a person having ordinary skill in the art to which the invention pertains, section 103. However, under section 103, the reference teachings relied on must be “prior art.”

¶13Here there is no argument that the Faust patent is “prior art,” apparently because appellants are not “another” to Faust and Clifford, 35 U.S.C. §§ 102(e), 103. The Faust reference, as a matter of present law, is not “prior art.” Accordingly, no inquiry under section 103 may be made. Instead, the rejection rests on the judicially created doctrine of “double patenting.” And the correctness of the rejection must be tested by resort to the principles of “double patenting.”

¶14The question presented is whether appellants claim here the same invention, i. e., subject matter, as previously claimed in their issued patent. In re Walles, 366 F.2d 786, 54 CCPA 710. If appellants claim the same subject matter, 35 U.S.C. § 101 is a bar to the issuance of a patent. See In re Robeson, supra. If different subject matter is claimed, the terminal disclaimer prevents any extension of monopoly and there is no necessity to determine whether the subject matter claimed here is unobvious in view of the subject matter claimed or disclosed in Faust.4

¶15We will now turn to a consideration of the appealed claims and the reference claims. Claim 7 of Faust is directed to a method of electrolytieally removing stock from a cobalt-cemented tungsten carbide body. The method comprises, as relevant here, passing a direct current through the composite body while in contact with the electrolyte. The details of the method need not be considered. The electrolyte contains tungsten and cobalt solubilizing groups.

¶16Claim 70 is directed to a “universal multi-component electrolyte.” The electrolyte consists of (1) an aqueous alkaline solution of an ionizable hydroxide (for solubilizing a metal carbide oxide), (2) a water-soluble salt of a saturated polybasic aliphatic organic acid (for solubilizing a cementing agent of a cemented metal carbide), (3) a water-soluble compound furnishing a chloride ion (for dissolution of steel) and (4) a solubilizer selected from the group consisting of sodium cyanide, ethylenediamine, and tetrasodium ethylenediaminetetraacetate (for solubilizing silver).

¶17The group of claims consisting of 70, 72 and 75 stand or fall together in view of claim 7. As claim 7 defines a two component electrolyte and claim 70 defines a four component electrolyte, it is readily apparent that we are concerned with different subject matter, and not “mere colorable variations.” Accordingly, the rejection of these claims must be reversed. In re Robeson; In re Kaye, supra.

¶18Claims 71, 47 and 74 were rejected in view of claim 8 of Faust. These claims also stand or fall together. Claim 8 defines an alkaline cyanide-amine chloride electrolyte. Claim 71 defines a three component electrolyte consisting of (1) an aqueous alkaline solution of an ionizable hydroxide, (2) a water-soluble compound furnishing a halogen ion, and (3) a solubilizing agent selected from the group consisting of a salt of a saturated, polybasic aliphatic organic acid, an ammonium halide, and an alkaline amine. Here also we think different subject matter is claimed and the rejection must be reversed.

¶19Thus we find as to all of the appealed claims that, in view of the terminal disclaimer, a “double patenting” rejection cannot be sustained. The board’s *970decision must therefore be reversed. In view of our disposition of this appeal it is unnecessary to determine whether, as appellants argue, the claimed subject matter is unobvious in view of Faust’s claims.

¶20Reversed.

¶21WORLEY, C. J., did not participate.