In re Van Ornum

In re Van Ornum

Opinion

 [***762]   [*937]  Before MARKEY, Chief Judge, RICH, BALDWIN, MILLER, and NIES, Associate Judges.

RICH, Judge.

This appeal is from the decision of the United States Patent and Trademark Office (PTO) Board of Appeals (board) sustaining the rejection of claims 1-3, 6, and 7 of application serial No. 821,360, filed August 3, 1977, for "Elastomeric Sealant Composition," on the ground of double patenting and also on a theory of abandonment by assignment, citing 35 USC 102(c). We affirm the double patenting rejection and do not reach the abandonment issue.

Background

The appellant-inventors, Van Ornum and Stang, in addition to filing the application  [*938]  at bar, had already had issued to their assignees two United States Patents on puncture sealant compositions for vehicle tires: No. 3,935,893, issued Feb. 3, 1976 (the '893 patent), and No. 4,113,799, issued Sept. 12, 1978 [**2]  (the '799 patent). It has been of significance in this case that the '893 patent issued to General Motors Corporation as the result of an assignment, recorded in the PTO on the filing date of the application for that patent. The present application and the '799 patent have been assigned to Rocket Research Corporation, by change of name now Rockcor, Inc., the real party in interest in this appeal, the assignment also being recorded in the PTO.

The application on appeal was filed under 35 USC 121 as a voluntary division of the application that matured into the '799 patent, and all claims stand rejected on the ground of double patenting, said to be of the "obviousness type," the rejection being predicated on the claims of both the '893 and '799 patents.

The board opinion explains its views on the relationship of the claims of the two patents to the claims on appeal as follows:

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