Rich, Judge,
delivered the opinion of the court:
RICH, Judge.
This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection by the examiner of claims 1-8, all claims of application serial No. 265,315, filed March 12, 1963, entitled “Sectional Digital Selector Switch Construction.”
This application is an optional “division” 1 of appellant’s application serial No. 820,543 which issued as Patent No. 3,089,923 on May 14, 1963, 2 months after the filing of the application at bar. A terminal disclaimer2 was filed after final rejection disclaiming the portion of the term of any patent issued on the application on appeal beyond the expiration date of said issued patent.
Patent 3,089,923 and the appealed application contain identical disclosures.3
The sole ground of rejection is “double patenting,” all eleven claims of the patent being relied on.
The board stated that the only issue is double patenting and the effect of the terminal disclaimer.4 As we read its opinion, it held the double patenting rejection to be supportable, notwithstanding the terminal disclaimer and our decisions in In re Robeson, 331 F.2d 610, 51 CCPA 1271, and In re Kaye, 332 F.2d 816, 51 CCPA 1465, both cited and pre[1003]*1003sumably considered by it, under 35 TJ.S.C. § 101 on the ground that the same invention is being claimed in the application at bar and in the issued patent. It said that the claims “are substantially the same,” that the “claimed subject matter is identical in each instance and the difference in the claims is one of changed verbiage or of the breadth of definition of corresponding elements,” and that “any difference between the claimed subjects matter * * * is not apparent.” It referred to the “identical disclosures” and “the equal portions of those disclosures that are the subject matter of the patent and application claims.”
Appellant submits that exactly the opposite is true, that it is entirely possible to have two or more inventions described in a single disclosure, that two distinct inventions were described, and that the claims of the application are directed to subject matter which is distinct from that claimed in the patent. Clearly, therefore, our only task is to construe the claims and determine who is right. Preliminary to further discussion, it is necessary to explain what the nature of the subject matter is.
Figs. 1 and 6 of the patent drawings, which are the same as the application drawings, are here reproduced:
6. The invention is, or inventions are, embodied in a manually-operated digital switch the construction of which is such that any desired number of similar [1004]*1004can be fastened together to display any desired number of digits and control as many circuits. In Fig. 1 a switch assembly of three units 10 is shown. Part of one unit is shown in side elevation in Fig. 6. It has a casing 14, 15, 16, 22 (“22” added as it does not appear in Fig. 6 but in other figures), like a shallow box, in which a thumbwheel or switching wheel 30 is rotatably mounted. The wheel has ten finger lugs 35 with intervening arcuate notches 34. The wheel has a rim or flange 36 on which indicia or “digits” from 0 to 9 are carried so that they appear in the windows 28 in each unit on the front of the switch, as the numbers “547” appear in Fig. 1, showing where the individual switching units are set. The curved spring detent 45 holds the wheel in its set position and also causes it to snap into position when manually rotated. Each wheel 30 carries the movable contacts, 80 for example, of the switch unit and the fixed contacts are carried by a circuit board of the so-called “printed” circuit type. The open side of the casing is closed by securing thereon, and over the switching wheel, the circuit board. As shown in Fig. 6, the circuit board 20, the one shown being that of the next adjacent unit, protrudes to the rear of the casing where the fixed contact terminals, not shown in this figure, are accessable for soldering connections. As many units 10 as are used are held together in a rigid assembly by through-bolts 44. Each unit has a lip at the front end, extending to one side as shown at 26 in Fig. 1, which interlocks with the adjacent unit. When the desired number of units is assembled, the assembly may be finished off by metal end plates 12, Fig. 1, by which the assembly can be panel mounted, the end plates having flanges 24 with screw holes 58.
The specification appears to fall into two parts. The first part describes what are primarily mechanical features of construction and configuration; the second part describes primarily electrical features such as the contact arrangements and their adaptation to both the decimal and binary or other non-decimal numerical systems. Such adaptation is accomplished by the proper arrangement of the switching contacts, both fixed and movable.
Appellant argues in his brief that the two inventions disclosed and claimed are “The ‘Wall Structure’ Invention” and “The ‘Switching’ Invention,” contending that the former is claimed in the patent and the latter in the claims on appeal. In brief, patent claims 1-6 are said to relate to the geometry of the front of the switch casing whereby, as may be seen in Fig. 6, “the extent to which the switching wheel may be rotated during any given operation is governed by the physical relationship which exists between the several finger lugs 35 and adjacent portions of the switch casing 10.” This includes the diverging surfaces 15a and the curvature of the notches 34. Patent claims 7-11 are said to be directed to the interlocking relationship and features of the individual units 10. On the other hand, says appellant, the application claims on appeal are directed to the “electrical aspects of applicant’s invention.” He appears to rely heavily on claim recitations of “correlation” of information signals derived from the switch contacts with the “in-dicia on the switching wheel,” which he says is nowhere mentioned in the patent claims.
We fail to see the clear line of distinction between the patent and application claims which appellant’s brief asserts. We also fail to find the claiming of identical inventions as asserted by the examiner and the board. We do find significant differences in the substance of the claimed subject matter.
The examiner’s rejection as recapitulated in his Answer was as follows: Claims 1-3 are rejected on patent claim 7 for double patenting, the same invention being claimed as the differnces are “in scope only.” Claims 4-6 and 8 are rejected on patent claim 1 for double patenting, though they “differ from the patent claim in that the window is broadly claimed.” Nevertheless, the examin[1005]*1005er’s position was that there is “only one invention set forth in claim 1 [of the patent] and claims 4-6 and 8.” Claim 7 was rejected for double patenting on patent claim 4, the examiner’s position being “that this claim [7] defines an invention like that of claim 4 of the patent.”
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Rich, Judge,
delivered the opinion of the court:
RICH, Judge.
This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection by the examiner of claims 1-8, all claims of application serial No. 265,315, filed March 12, 1963, entitled “Sectional Digital Selector Switch Construction.”
This application is an optional “division” 1 of appellant’s application serial No. 820,543 which issued as Patent No. 3,089,923 on May 14, 1963, 2 months after the filing of the application at bar. A terminal disclaimer2 was filed after final rejection disclaiming the portion of the term of any patent issued on the application on appeal beyond the expiration date of said issued patent.
Patent 3,089,923 and the appealed application contain identical disclosures.3
The sole ground of rejection is “double patenting,” all eleven claims of the patent being relied on.
The board stated that the only issue is double patenting and the effect of the terminal disclaimer.4 As we read its opinion, it held the double patenting rejection to be supportable, notwithstanding the terminal disclaimer and our decisions in In re Robeson, 331 F.2d 610, 51 CCPA 1271, and In re Kaye, 332 F.2d 816, 51 CCPA 1465, both cited and pre[1003]*1003sumably considered by it, under 35 TJ.S.C. § 101 on the ground that the same invention is being claimed in the application at bar and in the issued patent. It said that the claims “are substantially the same,” that the “claimed subject matter is identical in each instance and the difference in the claims is one of changed verbiage or of the breadth of definition of corresponding elements,” and that “any difference between the claimed subjects matter * * * is not apparent.” It referred to the “identical disclosures” and “the equal portions of those disclosures that are the subject matter of the patent and application claims.”
Appellant submits that exactly the opposite is true, that it is entirely possible to have two or more inventions described in a single disclosure, that two distinct inventions were described, and that the claims of the application are directed to subject matter which is distinct from that claimed in the patent. Clearly, therefore, our only task is to construe the claims and determine who is right. Preliminary to further discussion, it is necessary to explain what the nature of the subject matter is.
Figs. 1 and 6 of the patent drawings, which are the same as the application drawings, are here reproduced:
6. The invention is, or inventions are, embodied in a manually-operated digital switch the construction of which is such that any desired number of similar [1004]*1004can be fastened together to display any desired number of digits and control as many circuits. In Fig. 1 a switch assembly of three units 10 is shown. Part of one unit is shown in side elevation in Fig. 6. It has a casing 14, 15, 16, 22 (“22” added as it does not appear in Fig. 6 but in other figures), like a shallow box, in which a thumbwheel or switching wheel 30 is rotatably mounted. The wheel has ten finger lugs 35 with intervening arcuate notches 34. The wheel has a rim or flange 36 on which indicia or “digits” from 0 to 9 are carried so that they appear in the windows 28 in each unit on the front of the switch, as the numbers “547” appear in Fig. 1, showing where the individual switching units are set. The curved spring detent 45 holds the wheel in its set position and also causes it to snap into position when manually rotated. Each wheel 30 carries the movable contacts, 80 for example, of the switch unit and the fixed contacts are carried by a circuit board of the so-called “printed” circuit type. The open side of the casing is closed by securing thereon, and over the switching wheel, the circuit board. As shown in Fig. 6, the circuit board 20, the one shown being that of the next adjacent unit, protrudes to the rear of the casing where the fixed contact terminals, not shown in this figure, are accessable for soldering connections. As many units 10 as are used are held together in a rigid assembly by through-bolts 44. Each unit has a lip at the front end, extending to one side as shown at 26 in Fig. 1, which interlocks with the adjacent unit. When the desired number of units is assembled, the assembly may be finished off by metal end plates 12, Fig. 1, by which the assembly can be panel mounted, the end plates having flanges 24 with screw holes 58.
The specification appears to fall into two parts. The first part describes what are primarily mechanical features of construction and configuration; the second part describes primarily electrical features such as the contact arrangements and their adaptation to both the decimal and binary or other non-decimal numerical systems. Such adaptation is accomplished by the proper arrangement of the switching contacts, both fixed and movable.
Appellant argues in his brief that the two inventions disclosed and claimed are “The ‘Wall Structure’ Invention” and “The ‘Switching’ Invention,” contending that the former is claimed in the patent and the latter in the claims on appeal. In brief, patent claims 1-6 are said to relate to the geometry of the front of the switch casing whereby, as may be seen in Fig. 6, “the extent to which the switching wheel may be rotated during any given operation is governed by the physical relationship which exists between the several finger lugs 35 and adjacent portions of the switch casing 10.” This includes the diverging surfaces 15a and the curvature of the notches 34. Patent claims 7-11 are said to be directed to the interlocking relationship and features of the individual units 10. On the other hand, says appellant, the application claims on appeal are directed to the “electrical aspects of applicant’s invention.” He appears to rely heavily on claim recitations of “correlation” of information signals derived from the switch contacts with the “in-dicia on the switching wheel,” which he says is nowhere mentioned in the patent claims.
We fail to see the clear line of distinction between the patent and application claims which appellant’s brief asserts. We also fail to find the claiming of identical inventions as asserted by the examiner and the board. We do find significant differences in the substance of the claimed subject matter.
The examiner’s rejection as recapitulated in his Answer was as follows: Claims 1-3 are rejected on patent claim 7 for double patenting, the same invention being claimed as the differnces are “in scope only.” Claims 4-6 and 8 are rejected on patent claim 1 for double patenting, though they “differ from the patent claim in that the window is broadly claimed.” Nevertheless, the examin[1005]*1005er’s position was that there is “only one invention set forth in claim 1 [of the patent] and claims 4-6 and 8.” Claim 7 was rejected for double patenting on patent claim 4, the examiner’s position being “that this claim [7] defines an invention like that of claim 4 of the patent.”
In affirming, the board adopted the examiner’s Answer as a portion of its opinion and expressed its own view that “the claimed subject matter is identical in each instance and the difference in the claims is one of changed verbiage or of the breadth of definition of corresponding elements.” While the board appears to have found differences in the claims it said it was “not apparent” that there was any difference in “the claimed subjects matter.”
Because it found the claimed subject matter of the patent and the appealed claims identical, the board thereby distinguished the eases relied on by appellant, In re Robeson and In re Kaye, supra, and refused to give any effect to the terminal disclaimer.
It is necessary to consider each of the examiner’s rejections separately, having in mind the law which applies to the obviating of “double patenting” by the timely filing of a terminal disclaimer as set forth in the following recent cases decided by this court: In re Robeson and In re Kaye, In re Bowers, 359 F.2d 886, 53 CCPA 1590, the two In re Braithwaite cases, 379 F.2d 594 and 606, 54 CCPA 1589 and 1604 (1967) and In re Jentoft, Cust. & Pat.App., 492 F.2d 633 (April 18, 1968). In short, if the patent and application claims differ in substance as to the subject matter claimed, the terminal disclaimer obviates the rejection.
Rejection of Claims 1-3 on Patent Claim 7
Appealed claim 1 and patent claim 7 are both combination claims including a number of coacting elements; both are directed to a composite switch consisting of an assembly of several switching units, details of the units being specified. In his Answer, the examiner refers to specific elements present in patent claim 7 which are not in appealed claim 1, namely, the “means extending through said units binding them together” (the through-bolt 44), the lip 26 at the front of each unit casing which overlies and locks with the next adjacent unit, and the overhanging flanges 27 which define the window through which the indicia are seen. These were differences relied on by the applicant. Additionally, the examiner pointed to a further limitation in patent claim 7, that the circuit board forming the side of each unit underlies the lip 26 of the adjacent unit. The examiner also showed, by an analysis made in his final rejection, before the filing of the disclaimer, that application claim 1 contains a limitation to means for mounting the switch in a panel not present in patent claims 7-11, a difference he then characterized as not amounting to patentable novelty, and a further limitation to the movement of each switch wheel between a number of discrete positions corresponding to information signals to be generated, also not present in said patent claims.
In such a situation, where the combination claims being compared clearly do not contain the same elements, they cannot be said to be directed to the same invention. In re Baird, 348 F.2d 974, 52 CCPA 1747; In re Borah, 354 F.2d 1009, 53 CCPA 800. Before the terminal disclaimer was filed, the examiner appears to have been properly concerned with the obviousness of the differences between the subject matter claimed but with the filing and acceptance of the disclaimer that becomes unimportant. The disclaimer obviates the double patenting rejection of claim 1.
Claim 2 is dependent on claim 1 and merely adds the limitation that the switch wheel is rotatable in either direction. Its rejection falls for the same reason as that of claim 1.
Claim 3 is another independent claim similar to claim 1, differently organized, and with some further limitations to details not recited in claim 1. How it [1006]*1006differs from claim 1 is unimportant, the significant fact being that it differs from patent claim 7 in the same respects as claim 1. Its rejection is therefore obviated by the terminal disclaimer for the same reasons.
Rejection of Claims i-6 and 8 on Patent Claim 1
Beside patent claim 7, patent claim 1 is the only other independent claim, patent claim 4, also relied on in the rejection of claim 7, discussed later, being dependent on it. Claim 1 is, in accord with appellant’s contentions, truly directed to “wall structure” aspects of the switch and contains many limitations to the related configurations of the switch housing and wheel, illustrated at the left of Fig. 6, above, adjacent the finger of the operator. Many, if not most, of these limitations we find lacking in appealed claims 4 and 5, which, on the other hand, contain limitations with respect to the electrical contacts and their relationship to the indicia on the wheel which are not to be found in patent claim 1. While, of course, all these claims read on the identical switch and housing structure described in both the patent and the application and necessarily relate thereto, we do not find what is defined in claims 4 and 5 to be at all the same as what is defined in patent claim 1. It must be concluded, therefore, that these claims do not define identical inventions. Since they do not, the terminal disclaimer, obviating any possible timewise extension of patent protection, obviates the double patenting rejection.
Claims 6 and 8 are dependent on claim 5. Claim 8 depends indirectly from claim 5 by being dependent on claim 7 which depends from claim 5. Claim 6 merely recites that the “digital system” of claim 5 is a decimal system and that the switch wheel moves to 10 positions spaced 36° apart, approximately. (Dividing a circle into ten equal parts necessarily results in 36° segments.) Claims 7 and 8, in conjunction, add limitations to claim 5 reciting the two kinds of switch contacts carried by the wheel for generating signals corresponding to the indicia appearing in the window, the digital system being a binary system and the signals produced being in accordance therewith. None of these added limitations are to be found in patent claim 1 and, of course, these dependent claims enjoy all the differences from claim 1 to be found in parent claim 5. They are, therefore, not to the same invention as claim 1. The disclaimer obviates their double patenting rejection.
Rejection of Claim 7 on Patent Claim 4
As just noted, appealed claim 7 depends from claim 5. Patent claim 4 depends from patent claim 1. Claim 1 describes the switching means broadly while claim 4 specifies that it includes a printed circuit and a wiper engaging it, the two being relatively movable to effect switching upon rotation of the rotor (wheel). Claim 7 of the application likewise deals with electrical contacts but neither it nor claim 5 refers to a printed circuit. Claim 7 recites two separate contacts on the wheel, one in the nature of a slip ring, called the “brush contact,” which remains connected to a common terminal, the other being called a “switch arm means” which connects with the fixed terminals in the different positions of the wheel. The examiner said, “This claim contains the limitation to a brush contact which * * is found in patent claim 4 which is dependent from claim 1. Thus, it is the Examiner’s position that this claim defines an invention like that of claim 4 of the patent.”
We believe the examiner misreads the claims as we find no element in claim 4 of the patent corresponding to the “brush contact” of claim 7; rather the “wiper means” of claim 4 corresponds to the switch arm of claim 7. Furthermore, and more importantly, comparing appealed claim 7 and its parent claim 5 with patent claim 4 and its parent claim 1, as we must, we do not find them to be directed to the same subject matter for the reasons stated in comparing patent claim 1 and appealed claim 5. When [1007]*1007the limitations of the dependent claims are considered, we find still further differences. The rejection of claim 7 is obviated by the terminal disclaimer.
Conclusion
The decision of the board affirming the several rejections of the examiner on the ground of double patenting is reversed.
Reversed.