In Re Josephus Jm Braat’s Empirical Analysis

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2 district ·

Most-quoted passages

The sentences later courts lift from this opinion, ranked by how many decisions quote each — the parts of the opinion doing the work. These counts are smaller than the citation total above because most of the 16 citing decisions cite the case generally; a passage count includes only decisions quoting that exact language verbatim.

1. “[W]e agree that the reasoning of [In re Borah, 53 C.C.P.A. 800 , 354 F.2d 1009 (1966) ] and Chisum, § 9.03[2][c] is applicable in the present case. Philips could not have included the claims of Dil in the Braat application, for Braat did not invent the subject matter of the Dil claims, i.e., information areas having V-shaped side walls at particular angles of inclination. Nor could Philips have included the claims of Braat in the Dil application, for Dil did not invent the subject matter of the Braat application, i.e., adjacent track segments of different phase depth. Philips filed the Braat and Dil applications so as to maintain proper inventorship, with claims directed to Braat’s “subcombination” invention in the first application and claims directed to both Dil’s “subcombination” invention and to the “combination” invention in the second application. Philips even acknowledged in Dil’s application that part of the combination invention was invented by Braat, not Dil. It is not Philips’ fault that the combination claims in the Dil patent issued first. Thus, a double patenting rejection is sustainable here only if claims 5/1 and 6/1 of Dil are not patentably distinct from the subject matter defined by the rejected claims of Braat, and the Board erred in sustaining the double patenting rejection without making such a “two-way” determination.”

   1 later decision quote this exact passage · from the majority
   e.g. 225 F. Supp. 2d 1069 - Engineered Products Co. v. Donaldson Co., Inc.

2. “[t]he fundamental reason for the rule [of obviousness-type double patenting] is to prevent unjustified timewise extension of the right to exclude granted by a patent no matter how the extension is brought about.”

   1 later decision quote this exact passage · from the majority
   e.g. Eli Lilly And Company v. Barr Laboratories, Inc.

3. “applications for basic and improvement patents should not be penalized by the rate of progress of the applications through the PTO, a matter over which the applicant does not have complete control,”

   1 later decision quote this exact passage · from the majority
   e.g. In Re Jack Emert and Robert D. Lundberg