We reverse the board's double patenting rejection essentially for two reasons: (1) It has confused double patenting with "domination" which, by itself, does not give rise to "double patenting" and (2) it has used the disclosure of appellants' joint invention in the Kaplan patent specification as though it were prior art, which it is not, to support the obviousness aspect of the rejection.
By domination we refer, in accordance with established patent law terminology, to that phenomenon, which grows out of the fact that patents have claims, whereunder one patent has a broad or "generic" claim which "reads on" an invention defined by a narrower or more specific claim in another patent, the former "dominating" the latter because the more narrowly claimed invention cannot be practiced without infringing the broader claim. To use the words of which the board seemed to be enamored, the broader claim "embraces" or "encompasses" the subject matter defined by the narrower claim. In possibly simpler terms, one patent dominates another if a claim of the first patent reads on a device built or process practiced according to the second patent disclosure. This commonplace situation is not, per se, double patenting as the board seemed to think. In re Sarett, 327 F.2d 1005, 1014, 1015, 140 USPQ 474, 482, 483 (CCPA 1964). (See particularly the quotations from E. Stringham's Double Patenting (1933) about terms such as "covered" and "embraced.")
on suggesting a patent conveys a "monopoly" -->
Both the board in this case and some prior decisions of the CCPA use the term "monopoly" in referring to the rights obtained through the grant of a patent. We prefer to refer to "patent rights" based on the rationale given by Chief Judge Markey in his article "Why Not the Statute?," 65 J.Pat.Off.Soc'y 331, 331-333 (1983).
See also discussion of blocking patents, and Judge Rich on the Mastoras case, in
Concerning Mastoras v. Hildreth
Mastoras might be good fodder for a law review at Harvard in 2009, but it hasn't been the law for a long, long time.