BPAI Board of Patent Appeals and Interferences Patent and Trademark Office (P.T.O.) *1 LUTZKER v. PLET Patent Interference No. 101,260

Board of Patent Appeals and Interferences

Patent and Trademark Office (P.T.O.)





Patent Interference No. 101,260

February 13, 1987

Final Hearing: October 23, 1986


Gourmet Press



 Application of Robert S. Lutzker filed November 24, 1980, Serial No. 209,469.



 Patent granted to Catherine Plet on October 5, 1982, Patent No. 4,352,242, filed June 15, 1981, Serial No. 273,585. Accorded benefit of Serial No. 126,976, filed March 3, 1980.



D. S. Kane, D. H. Kane, Sullivan, Kurucz, Bauer, Hoffmann, Levy, Eisele, Kammer and Santucci for Lutzker Oral argument by John Kurucz



Douglas E. Olson, John D. McConaghy, Charles L. Gholz and Thomas J. Morgan for Plet Oral argument by Thomas J. Morgan



Before Peterson



Deputy Commissioner





















 This interference involves an unassigned application of Lutzker and an unassigned patent of Plet.



 The relationship of the claims of the respective parties to the count in issue is as follows:




Count  Lutzker  Plet

_____  _______  ____

   1    22     1(m)


 The count reads as follows:



Count 1



   A gourmet press for producing skewered stacks of food morsels, comprising:

 an elongated hand-held tube,

 the first end of said tube having a tapered cutting edge for cutting food morsels and facilitating the entry of the cut morsels into the tube,

 a removable plug mountable in the second end of said tube,

 a shaft retained by and axially slideable through said plug, and having its first end insertable into said tube,

 a plunger fixed on the first end of said shaft and slideable within said tube,

 said plunger and shaft being houseable within said tube and plug when said shaft is fully inserted into said tube,

 said plunger having a central opening therein;

 the first end of said shaft having a skewer receiving socket axially aligned with said plunger opening;

 said plunger opening and socket defining a passage for receiving the end of a skewer inserted through the first end of said tube,

 a finger engageable knob fixed on the second end of said shaft, and

 said plug, shaft, plunger and knob comprising a plunger assembly which is removable from said tube to facilitate the cleaning of said press.



 Neither party has raised the issue of no interference-in-fact.



 This interference was declared prior to February 11, 1985 and is governed by the rules then in effect, namely 37 CFR 1.201-1.288.



 Both parties submitted testimony in the form of declarations and associated exhibits pursuant to an agreement under 37 CFR 1.272(c). Plet cross-examined all of Lutzker's declarants by oral depositions and, therefore, the Lutzker record includes those depositions and associated cross exhibits (PCX). The Lutzker record and exhibits will be referred to as 'LR' and 'LX', respectively. The pages of the Plet record have not been consecutively numbered as required by the rules. Her record will be referred to by the declarant's name followed by the page of the declaration. Both parties submitted briefs for final hearing pursuant to 37 CFR 1.254 and appeared, through counsel, at the oral argument.



  *2 The issues presented are:

   (1) whether Lutzker has established his alleged conception and reduction to practice in 1976 or early 1977;

   (2) if so, whether he suppressed or concealed the invention within the meaning of 35 USC 102(g); and

   (3) whether Plet has established that Lutzker is guilty of inequitable conduct before the Patent and Trademark Office (PTO) in the prosecution of his involved application and a related design application.





A. Lutzker's Conception



 LX-D is a drawing which shows every element of the count in issue. The drawing is dated February 1, 1976 and is signed by Lutzker and witnessed by his wife, Alma K. Lutzker; his step daughter, Darlene A. Fili; and two friends, Linda Kern and Jerome Kern. The witnesses all testified that they signed LX-D on the date indicated (LR-93, 293, 321).



 Lutzker did not show the drawing (LX-D) to his patent attorney until after the interference was declared. Plet argues that the testimony of Lutzker and his corroborating witnesses is unbelievable and contends that LX-D is greatly suspect since it matches almost perfectly the device marketed by Plet prior to Lutzker's filing date (Plet brief, page 4). John Kurucz, counsel for Lutzker, testified that over a period of about 15 years he has filed over 30 patent applications for Lutzker; that Lutzker has a policy of not filing an application until the invention is ready to be released commercially; that he sees Lutzker about patent matters about once a month and speaks to him over the phone about once a week; that the final version of the canape maker was shown to him on March 3, 1980; that Lutzker was going to display the finalized version at the July 1980 Housewares Show; and that he was authorized to prepare Lutzker's involved application on July 1, 1980. (LR-370-371). With all of that contact between Lutzker and his patent attorney, Plet finds it incredible that Lutzker did not inform his patent attorney about LX-D prior to this interference if in fact that drawing was made and witnessed on the date indicated.



 Although we tend to agree with Plet to the extent that it seems unlikely that an experienced inventor would not promptly inform his patent attorney with respect to evidence concerning conception and/or reduction to practice, the departure from what might be considered normal practice is explained by Lutzker's policy of concentrating on the commercial version for patent protection. This policy was said to have been put into effect after Lutzker obtained patents worldwide on one of his inventions, at great expense, only to find that the patents did not protect the product that was finally sold commercially (LR-19, 80, 81, 397-398). Apparently, Lutzker has not been made aware of the practice of filing continuation-in-part applications on modifications developed after an application has been filed.



 We hold that Lutzker has established conception of the invention in issue as of February 1, 1976 on the basis of the disclosure in LX-D and the testimony of Lutzker, his wife, step daughter and the Kerns.



B. Reduction to Practice



  *3 The earliest prototypes made by Lutzker that meet all of the limitations of the count are LX-B and LX-F. According to Lutzker, LX-B was made between September and October 1975 (LR-3) and LX-F was made during February to March 1976 (LR-6). Both Lutzker and his wife testified the LX-F was successfully tested (LR-6, 295, 301, 314). Also the Kerns and Lutzker's step children, Darlene A. Lukaszewicz (nee Fili) and Peter B. Fili, declared that they observed and tested all of the prototypes referred to in Lutzker's declaration, including LX-F, and confirm their existence on or about the date indicated by Lutzker (LR-95-96, 322-323, 350). In our view, the testimony of Lutzker together with corroborating testimony of his wife, step children and the Kerns is adequate to establish a reduction to practice by the end of March 1976.



 Lutzker continued to perfect the device and a further reduction to practice is deemed to be established by mid-January 1977 on the basis of the construction and testing of LX-J and K which are two devices meeting the terms of the count made by Erik Takseraas under directions from Lutzker. Takseraas accepted an order from Lutzker on December 4, 1976 and on the basis of drawings (LX-D, L, M) and instructions from Lutzker made and delivered the devices to Lutzker on January 10, 1977, as evidenced by his invoice (LX-N; LR-163, 164, 177-179). He testified that the devices worked and they were among the prototypes observed and tested by Lutzker's wife, his step children and the Kerns.





 Lutzker contends that a commercially acceptable version of his invention was disclosed to the public at the July 14, 1980 Housewares Show. Plet does not seem to contest this fact even though Lutzker's testimony in this regard has not been specifically corroborated by any of the other witnesses. The period from the reduction to practice in March 1976 to the date of the show is over 51 months and is clearly such an unreasonable length of time that it raises an inference of suppression on the part of Lutzker. Peeler v. Miller, 535 F.2d 647, 190 USPQ 117 (CCPA 1976); Shindelar v. Holdeman, 628 F.2d 1337, 207 USPQ 112 (CCPA 1980), cert. denied, 451 U.S. 984, 210 USPQ 776 (1981). Thus, whether the period runs from the reduction to practice to July 14, 1980 or the later filing date of November 24, 1980, an inference of an intent to suppress arises which must be adequately rebutted in order for Lutzker to prevail in this interference. Thus, the burden falls on Lutzker to excuse, explain or justify the delay. Horwath v. Lee, 564 F.2d 948, 195 USPQ 701 (CCPA 1977).



 After the reduction to practice, Lutzker made a prototype with an oval barrel (LX-G) in the period from March to June 1976, another prototype with an oval barrel (LX-H) from June to September 1976 and a prototype with a square barrel (LX-I) from September to December 1976 (LR-6 and 7). On December 4, 1976, he hired Takseraas, a mechanical engineer, to construct 'in a more professional manner round and square prototypes of canape makers.' (LR-7). On cross-examination, it was brought out that Takseraas has testified before the International Trade Commission as an expert witness on injected molded plastic parts and products design (LR-198-199). He delivered LX-J (round barrel) and LX-K (square barrel) on January 10, 1977.



  *4 Lutzker testified (LR-8):

   With the success of the concept and feasibility of constructing canape makers as evidenced by Exhibit J-K, I sought quotes for production molds from mold makers.



 On January 10, 1977, Lutzker sought a quote for production molds from Suffolk Molds, Inc., (Suffolk) and received a quotation therefrom for a sixteen cavity mold on January 27, 1977. He sought quotations from other mold makers and on May 20, 1977 he purportedly ordered a single prototype production mold from Cape Plastics and Mould, Inc. (Cape) and purportedly ordered a hexagonal shaped canape maker from Cape on October 3, 1977. According to Lutzker the molds needed extensive work from October 1977 to June 1978. On July 28, 1978, Lutzker purportedly ordered a sixteen cavity production mold from Cape. LX-S and T are said to be canape makers made during the period from November 1978 to January 1979 from molds constructed by Cape. The first shots from the production molds purportedly made by Cape were said to have occurred in June 1979. Lutzker expected the molds to be finished prior to the July 1979 Annual Housewares Show; however, the molds purportedly required extensive reworking and still were not finished by the end of July 1979. Sometime between August 6 and 11, 1979, Cape went out of business and Lutzker has not been able to contact any of the personnel who worked there or recover any of the prototype production molds or the production molds that he ordered.



 Thereafter, Lutzker met with Nickolas Ferreri of Suffolk on August 21, 1979 and on or about September 13, 1979 engaged Suffolk to construct a sixteen cavity production mold. The molds were completed on February 28, 1980 and samples were taken on February 28, 29, and March 1, 1980 (LR-8-13, 16 and 17).



 Lutzker's testimony with respect to the activities at Suffolk is corroborated by Ferreri. Although no one from Cape testified, Lutzker's testimony with respect to the activities at Cape is corroborated to some extent by Takseraas who testified that he went with Lutzker to Cape on September 19, 1978 and 'inspected the canape maker mold on order, suggested some changes but indicated overall approval of the design . . .' He further said that he visited Cape with Lutzker more than a dozen times between September 19, 1978 and June 23, 1979 (LR-165, 191-192).



 Other activities relied upon by Lutzker include the development of a recipe book to be sold along with the canape maker (LR-13-14) and the development of a blister card on which to package the canape maker for sale (LR-14-16).



 There is nothing in Lutzker's application disclosure regarding the production molds, the recipe book or the blister card and, accordingly, we do not believe that any of those activities may properly be relied upon to excuse or justify any part of the period of delay under consideration. Those activities satisfied Lutzker's stated policy of not filing a patent application until his invention was ready to be released commercially, but they are not in accord with the policy of early public disclosure expected of those desiring to reap the benefits of the patent system.



  *5 In Horwath v. Lee, supra, the Court stated (195 USPQ 704):

   When an inventor actually reduces to practice an invention, public policy dictates that if he would have the benefits of the patent system vis-a-vis rival independent inventors he must file his application for patent promptly. The longer he delays the greater are the equities that may be raised on behalf of one who made the same invention and promptly disclosed it in the Patent and Trademark Office. The theory is not forfeiture, estoppel, or other legal rule by which one is deprived of a property right; it is the simple rule that the property right shall reside in the second inventor who disclosed and not in the first inventor who concealed, i.e., the law prefers and will reward earlier disclosure over earlier invention.

It is well settled that activities directed primarily toward commercializing the invention whether occurring before or after a reduction to practice cannot be relied upon to show diligence on the part of an inventor toward a reduction to practice or prompt public disclosure. Horwath v. Lee, supra; Young v. Dworkin, 489 F.2d 1277, 180 USPQ 388 (CCPA 1974); Burns v. Curtis, 172 F.2d 588, 80 USPQ 587 (CCPA 1949); Fitzgerald v. Arbib, 268 F.2d 763, 122 USPQ 530 (CCPA 1959); Naber v. Cricchi, 567 F.2d 382, 196 USPQ 294 (CCPA 1977), cert. denied, 439 U.S. 826, 200 USPQ 64 (1978); Honeywell, Inc. v. Diamond, 499 F.Supp. 924, 208 USPQ 452 (D.D.C. 1980).



 We consider Lutzker's actions to constitute more than an inference of suppression or concealment. They involve a deliberate policy on his part not to disclose his invention to the public until he is ready to go into commercial production. Such a policy was held in Young, supra, to constitute suppression or concealment of the invention under 35 USC 102(g). Furthermore, the reason for Lutzker's alleged policy has no application to the facts in this case since he did not attempt to change the construction of the invention in issue after the first reduction to practice in March 1976. In other words, the final version, LX-Z, has the same construction as the first reduction to practice, LX-F. However, assuming that the evidence only raises an inference of suppression or concealment, we believe that the most Lutzker has excused or explained regarding the delay is the period from March 1976 to January 1977 during which time the invention was perfected to some extent and the period from March 3, 1980 to his filing date when he was working with his patent attorney with respect to the commercial product. The unexcused period from January 10, 1977 to March 3, 1980 is well over three years and, in our opinion, is fatal to Lutzker's right to rely on any reduction to practice prior to March 3, 1980.



  *6 Lutzker could still prevail on the question of priority if he could show that he renewed his efforts toward filing a patent application prior to Plet's entry into the field. Paulik v. Rizkalla, 760 F.2d 1270, 226 USPQ 224 (Fed. Cir. 1985) (en banc). Those efforts would have to be sufficient to satisfy the requirements for diligence during the critical period from just prior to Plet's entry into the field until Lutzker's November 24, 1980 filing date. In order to establish diligence, Lutzker must show reasonably continuous activity or an adequate excuse for a lack of activity during the critical period.



 The activities relied upon by Lutzker are set forth in the declaration of his attorney, Mr. Kurucz, as follows (LR-370-372):

   I have been patent counsel to Robert S. Lutzker for over 15 years. During this period over 30 patent applications have been filed for his inventions both domestically and abroad. It has been Mr. Lutzker's policy to file for patent protection on a product when its design is finalized and ready to be released commercially because of changes that may be made in design during the development period. I personally meet with Robert S. Lutzker at least once a month to review his patent matters and speak with him over the telephone at least once a week. I discussed with Robert S. Lutzker the canape maker development on several occasions from mid-1979 to March 1980, the end of April 1980, July 2, 1980 and on several occasions between July 24, 1980 and November 18, 1980.

   The final or finished version of canape maker that he was planning on releasing commercially was shown to me on March 3, 1980, during April 1980 and July 2, 1980. I conducted a prior art patent search on May 2, 1980 and forwarded the prior art to him on May 14, 1980. Since the design of the canape maker was finalized and he was planing (sic) on showing it at the July 1980 Housewares Show, we decided to apply for both utility and design patent protection. I was authorized to proceed with these patent applications on or about July 1, 1980.

   On July 24, 1980 I received inked drawings for the design application and pencilled drawings for the utility application. Between July 1980 to November 18, 1980 I prepared several drafts of applications all of which was (sic) reviewed by Robert S. Lutzker in person with me at my office. These meetings took place approximately weekly during the months of August, September, October and the first part of November 1980. The final draft was eventually approved by Robert S. Lutzker and the drawings eventually inked. Final approval of the application was given by Robert S. Lutzker on November 18, 1980.

   The patent application for the canape maker was filed November 24, 1980.



 The first specific activity referred to by Kurucz occurred on March 3, 1980 when Lutzker showed him the finished version of the canape maker. Then there is nearly a two month gap until the end of April, a one month gap until the second of May and a one and one-half month gap from May 14 until authorization to file was given on July 1, 1980. No excuse has been given for these gaps and in our view they are fatal to Lutzker's case for reasonably continuous diligence from March 3, 1980 to July 1, 1980. D'Amico v. Koike, 347 F.2d 867, 146 USPQ 132 (CCPA 1965).



  *7 Kurucz said he met weekly with Lutzker during August, September, October and November to discuss several drafts of applications. Plet has objected to the testimony of Kurucz on the ground that he is Lutzker's attorney in this proceeding. It is clear that the position of Kurucz as a purportedly impartial witness is inconsistent with his position as an advocate for Lutzker's cause. Since Kurucz has not supported his testimony with any documentary evidence such as draft applications and/or appointment calendars, we hold that his testimony is insufficient to corroborate reasonably continuous diligence for any portion of the period from March 3, 1980 through Lutzker's November 24, 1980 filing date. Cf. Wick v. Zindler, 230 USPQ 241 (Bd. Pat. Int. 1984).



 In addition, we note that Plet filed her benefit application on March 3, 1980 and, therefore, the activity relied upon by Lutzker did not start prior to Plet's constructive reduction to practice, which she is entitled to as a date for entry into the field without presenting any evidence of earlier inventive acts. Plet has, however, presented evidence and, in our view, she has established a date of conception no later than August 17, 1979 on the basis of John R. Lindsay's testimony to the effect that she showed him a gourmet press identical to that shown in the drawings of her involved patent on that date (PR-Lindsay declaration, page 1). Lindsay was the patent attorney who prepared the Plet benefit patent application, but he is not representing Plet in this proceeding. Lindsay was authorized to prepare the Plet application on February 15, 1980, and he prepared and filed it by March 3, 1980.



 Since the renewed activities relied upon by Lutzker did not start until after Plet entered the field and, in any case, have not been adequately corroborated, we hold that Lutzker is not entitled to prevail on the basis thereof. Accordingly, Plet is entitled to the award of priority as the de jure first inventor.





 Plet's allegations of inequitable conduct on the part of Lutzker relate to the prosecution of Lutzker's involved application and a companion design application which has matured into U.S. Des. Patent No. 268,318 (PCX 11). According to Plet, Lutzker should have informed the design and utility application examiners of the results of a pre-examination search (PCX 4-8, 10), should have informed each examiner of the existence of the other application so that they could consider the question of double patenting, should have informed the utility examiner of the prior art cited by the design examiner (PCX 13-19) and should have told the design examiner of the involved Plet patent which was cited against the utility application prior to the issuance of the design application. Plet attempted to cross examine Lutzker and Kurucz on the above matters during Lutzker's period for testimony-in-chief but the witnesses refused to answer the questions on the ground that they were outside the scope of the direct examination (LR-45-70; 382-394).



  *8 The burden is on Plet to establish inequitable conduct by clear and convincing evidence of a threshold degree of materiality and proof of a threshold intent. J. P. Stevens and Co. v. Lex Tex Ltd., Inc., 747 F.2d 1553, 223 USPQ 1089 (Fed. Cir. 1984), cert. denied, ___ U.S. ___, 106 S. Ct. 73 (1985). One of the standards for determining materiality is 37 CFR 1.56(a) which imposes a duty on those who practice before the PTO to 'disclose to the Office information they are aware of which is material to the examination of the application' and known information is material 'where there is a substantial likelihood that a reasonable examiner would consider it important in deciding to allow the application to issue as a patent.' A. B. Dick Company v. Burroughs Corporation, 798 F.2d 1392, 230 USPQ 849 (Fed. Cir. 1986).



 The Lutzker design patent is not involved in this interference and thus we have no jurisdiction to decide Plet's charge of inequitable conduct on Lutzker's part with respect thereto. We will not further discuss Plet's arguments concerning Lutzker's duty of disclosure regarding Design Patent No. 268,318.



 Plet has alleged that the patents cited by the design examiner and that the patents found by Lutzker in a pre-examination search are more relevant than those considered by the utility examiner. Plet has not attempted to point how those references are more relevant than the references considered by the examiner of Lutzker's involved application. We have considered all of the references, and in our view the references cited by the utility examiner are clearly more relevant to the subject matter claimed in the utility application than are the references cited by the design examiner or the references found by Lutzker. Those references would be at most cumulative with respect to the references cited by the utility examiner. We hold that Plet has failed to show that a reasonable examiner would have considered the withheld references important in deciding whether to issue the utility application, and Lutzker did not violate 37 CFR 1.56(a) by failing to bring those references to the attention of the examiner.



 We find merit in Plet's contention that Lutzker should have informed the utility examiner of the corresponding design application. The file of Lutzker's involved application forms part of the record in this interference. Holmes v. Kelly, 586 F.2d 234, 199 USPQ 778 (CCPA 1978), footnote 7. The file of the design patent was introduced as PCX 1 and 11 during the cross-examination of Lutzker's witnesses. The fact that Plet did not call Lutzker or the attorney who prosecuted the utility and design applications during her testimony-in-chief period does not preclude us from finding that they violated their duty of disclosure under 37 CFR 1.56(a). A. B. Dick Company, supra.



  *9 Figures 1 to 3 of Lutzker's Design Patent No. 268,318 are attached hereto as Appendix I and Figures 1 to 3 of his involved application are attached hereto as Appendix II. The disclosure in the design patent with respect to Figures 1 to 3 reads as follows (PCX 11):

   Figure 1 is a perspective view of a canape maker or the like having a circular cross-section with the piston fully inserted showing my design;

   Figure 2 is a similar view with the piston fully retracted;

   Figure 3 is a bottom plan view thereof; . . . .

The design patent further discloses canape makers having a square cross-section (Figures 4 to 6), a hexagonal cross-section (Figures 7 to 9) and an oval cross-section (Figures 10 to 12). The claim in the design patent reads as follows:

   The ornamental design for a canape maker or the like as shown and described.

Claims 1 and 12 of the involved application, as filed, read as follows:

   1. A canape maker comprising the combination:

 a hollow tubular body having an open forward end and a closed rear end and a bore therein;

 a piston slidably mounted within the bore, the piston having a finger actuated stem extending through the closed end, and the piston having an aperture extending therein;

 whereby the forward end of the tubular body is adapted to cut layers for purposes of making a canape during which cutting operation the piston is moved rearwardly within the bore, whereupon when the desired number of layers constituting the canape are within the bore a toothpick or the like is adapted to be inserted through these layers in the bore into the aparture in the piston to assure retention of all of the layers of the canape as a unit when the canape is removed from the bore by pushing the piston forwardly towards the open end.

   12. An apparatus for cutting and shaping food which comprises:

 a hollow body having two open ends;

 a tapered cutting edge at the first open end;

 a cap at the second open end;

 a piston which slides longitudinally within the hollow body;

 a stem attached to the piston which moves freely through an aperture in the cap; and

 a handle attached to the stem for moving the piston longitudinally within the hollow body.



 The Court pointed out in In re Thorington, 418 F.2d 528, 163 USPQ 644  (CCPA 1969) that double patenting rejections in design utility situations are based on judicial doctrine involving public policy that abhors improper extensions of monopoly and may take the form of either a 'same invention' or 'obviousness' type double patenting. The Court stated with respect to the invention there under consideration (163 USPQ 651):

   The design patent protects the article of manufacture embodying the ornamental configuration. 35 U.S.C. 171. The article of manufacture is recited therein as being a fluorescent lamp. In our opinion, the evidence of record clearly establishes that the term 'fluorescent lamp' has a well-defined meaning which necessarily includes those elements recited in the claims on appeal. Once the design patent expires, the public should be free to construct fluorescent lamps having the helicoid configuration disclosed without restraint by the claims here on appeal. While the claims on appeal employ terminology which includes helicoid design other than the specific design of the patent, we do not find such differences significant here. Nor do appellants seriously so contend. We agree with the board that the claims on appeal are directed to an obvious variation of the invention defined by the claims of the design patent as demonstrated by the secondary evidence of record.



  *10 In Ropat Corp. v. McGraw-Edison Co., 535 F.2d 378, 191 USPQ 556  (7th Cir. 1976) the Court held a utility patent on a corn popper to be unpatentable for double patenting (same invention) over the corresponding design patent. With respect to the test to be applied in such cases the Court stated (191 USPQ 558):

   In order to determine whether the 'same invention' is claimed in two patents their claims must be compared to determine whether they define the same subject matter. Application of Vogel, 422 F.2d 438, 441, 164 USPQ 619, 621-622 (C.C.P.A. 1970). and when the double patenting situation involves a design patent and a utility patent, we recognize that it is 'not easy to compare utility word claims with the design picture claims in determining if the 'same invention' is being claimed.' Application of Swett, 451 F.2d 631, 635, 172 USPQ 72, (C.C.P.A. 1971). In comparing their claims, the mere use of the same design claimed in the design patent as the vehicle for describing the utility claimed in the utility patent is not dispositive. Anchor Hocking Corp. v. Eyelet Specialty Company, 377 F.Supp. 98, 101, 183 USPQ 87, 89-90 ((D. Del. 1974); Appel v. Lilling, 60 F.Supp. 749, 65 USPQ 281 (S.D.N.Y. 1945).

   The law of double patenting in the precise situation where a design patent and a utility patent are involved is plagued by a dearth of case law. A review of the cases which do exist reveals various 'tests' for determining whether a design patent and a utility patent claim the 'same invention.' We believe the best formulation of the applicable standard in this situation is that set forth in such decisions as In re Hargraves, 53 F.2d 900, 11 USPQ 240 (C.C.P.A. 1931), and Application of DuBois, 262 F.2d 88, 120 USPQ 198 (C.C.P.A. 1958). Those cases state that double patenting exists if the feature in which the novel esthetic effect resides is the identical feature which produces the novel function so that a structure embodying the mechanical invention would of necessity employ the design, and vice versa. See also In re Barber, supra, 81 F.2d 232, 28 USPQ at 187-188; In re Phelan, 205 F.2d 183, 184, 98 USPQ 156, 157 (C.C.P.A. 1953).

The Court in In re Swett, 451 F.2d 631, 172 USPQ 72 (CCPA 1971) reversed a  'same invention' double patenting rejection of a claim in a design application over a corresponding utility application. In so doing the Court, foreseeing further prosecution in the PTO, indicated in footnote 3 that a timely filed terminal disclaimer would overcome an 'obviousness-type' double patenting rejection.



  *11 In view of the close similarities between the drawing in the design application (now Des. 268,315) and the utility application of Lutzker, we think that a reasonable examiner would have considered the copending design application important in deciding to issue the utility patent. We believe that there is a substantial likelihood that the examiner would have rejected at least original claims 1 and 12 on the ground of obviousness-type if not same invention-type double patenting in view of the claim in the design application. It follows that this information was material to the examination of the utility application. We have not found any evidence in the file of the utility application, and Lutzker has not pointed to any, which indicates that the utility examiner was informed of the copending design application. In light of cases such as Thorington, Ropat Corp. and Swett, we hold that Lutzker and/or his counsel was grossly negligent in not informing the utility examiner of the existence of the design application. Even though the utility application is still pending, under the authority in Driscoll v. Cebalo, 731 F.2d 878, 221 USPQ 745 (Fed. Cir. 1984) the failure to timely inform the utility examiner of the design application cannot now be cured. We find the level of materiality and the level of intent to be high and hold that Lutzker is not entitled to priority for the additional reason that he, or those representing him, failed to comply with the duty of disclosure required by 37 CFR 1.56(a).



Award of Priority


 Priority of invention of the subject matter in count 1, the only count in issue, is awarded to Catherine Plet, the senior party.






Donald W. Peterson,



Deputy Commissioner



Ian A. Calvert,






James R. Boler,












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