(concurring).
The record shows that the Board of Appeals here consisted of an examiner-in-chief and two acting examiners-in-chief. Appellants do not challenge the legality of that board. For the reasons expressed in my dissenting opinion in In re Wiechert, 370 F.2d 927, 54 CCPA 957, it is my view that the decision of such a board is a legal nullity. However, I accept here the majority’s view *602on this issue in the Wiechert case, that is, the legality of the board is not an issue here. I therefore participate in the merits of this appeal and in so doing, agree with the conclusion of the majority.
Turning to the merits of this appeal, a few additional observations further support the conclusion reached by the majority.
The “law” of “double patenting” is indeed confusing.1 One factor frequently overlooked, present in all “double patenting” cases involving the same inventor, is that as between the subject matter in the claims sought to be patented and those teachings which are “prior art” under the 1952 Patent Act, the subject matter is useful, novel and unobvious in view of that “prior art.” In other words, the inventor has made a “patentable invention” under the conditions specified in sections 102 and 103.
The term “double patenting” is not mentioned in the 1952 Patent Act.2 It is a judicially created doctrine which acts to deny applicants patents. Its very existence would appear to be contrary to statements in previous opinions of this court, as stated in In re Murray, 268 F.2d 226, 46 CCPA 905, for
* * * an applicant is entitled to a patent unless one of the prohibitory provisions of the statutes, now the Patent Act of 1952, Title 35 U.S.C., applies.
See also In re Ratti, 270 F.2d 810, 46 CCPA 976; In re Cavallito, 282 F.2d 363, 48 CCPA 720; and In re Gustafson, 331 F.2d 905, 51 CCPA 1358.
To date this court has not discarded “double patenting” as a ground of rejection (as we did “aggregation” in In re Gustafson, supra). Instead, our efforts have attempted to harmonize the various “principles” of the “law” of “double patenting” with the mandatory provision of the Patent Act that “A person shall be entitled to a patent unless” a stated ground of rejection applies. Thus we have held that section 101 contains the prohibition that an applicant is only entitled to “a patent” for an invention. Here I refer to the “same invention” type of “double patenting”: See In re Robeson, 331 F.2d 610, 51 CCPA 1271. By so proceeding we have endeavored to accommodate the various “types” of “double patenting” situations that have appeared before us and give effect to the provisions of the Patent Act. See In re Bowers, 359 F.2d 886, 53 CCPA 1590; In re Robeson, supra.
While we have been able to identify the “same invention” type “double patenting” with a statutory provision, such is not the case with “obviousness” type “double patenting.” It stands as a judicially created doctrine and certainly not bottomed on section 103. See In re Zickendraht, 319 F.2d 225, 229, 50 CCPA 1529, concurring opinion, Rich, J. The patent is simply not “prior art” under the terms of section 103. If section 103 were applicable then obviously there would be no need for this type of “double patenting.”
It seems to me that “obviousness” type “double patenting” rests upon a judicially recognized policy that an inventor may not claim subject matter that is obvious from that previously claimed because of the possibility of an “extension of the monopoly” (patent protection) concerning the previously claimed subject matter.3 Under section 154, the inventor is entitled only to exclude others *603from making, using, or selling the invention throughout the United States for the term of seventeen years.
Recognizing that the doctrine of “double patenting” is judicially created and, further, that objections based on “double patenting” may be “unavoidable,” In re Robeson, supra, it seems to me that the “obviousness” type should be applied to the ends of preventing any “extension of monopoly” and doing justice to applicants. The substantive principles of sections 101 and 154, of course, may not be compromised. The remedial provisions of sections 121 and 253, however, do not represent a compromise. Thus whether “obviousness” type “double patenting” does in fact exist becomes nothing more than a needless mental exercise in cases where, as here, there can be no “extension of monopoly” because of the remedial provisions of the Patent .Act.
Accordingly, our present view is that a terminal disclaimer will not overcome a rejection based on the objection that the applicant seeks to claim the “same invention” — here meaning same subject matter- — and it will overcome a rejection based on the objection that the applicant seeks to claim a “different invention” — here meaning “different subject matter” — which is “obvious” in view of the earlier claimed subject matter either considered alone or in combination with “prior art.” 4
It may indeed be confusing to some to learn that a terminal disclaimer removes any objection to the “obviousness” of the invention in “double patenting” situations but will not remove an objection to “obviousness” under section 103. Cf. Hays v. Brenner, 123 U.S.App.D.C. 96, 357 F.2d 287 (1966). Commissioner Brenner has stated, in an address delivered to the Patent Professional Staff of the Patent Office on March 30, 1966 (825 O.G. 825):
* * * if the examiner is satisfied that the claimed invention is clearly obvious in view of the teachings of the prior art, to a person having ordinary skill in the pertinent art, then a patent should not be granted even if affidavits, terminal disclaimers, and the like are presented by the applicant, since such papers cannot change what is obvious so it may become unobvious and therefore a patentable invention. [Emphasis added.] 825 O.G. at 827.
Referring only to the Commissioner’s comments as to terminal disclaimers, a case of “obviousness” type “double patenting” is based on teachings which cannot be considered under section 108. See In re Bowers, 359 F.2d 891, fn. 7. That which • is “obvious” in a “double patenting” sense may not be obvious under the terms of section 103 simply because less information is available under section 103 when the patent is not a proper reference and may not be considered.5
The plain fact here is that the patent relied on for the rejection is not “prior art” under the Patent Act and resort to section 103 is prohibited under the present view of the law.6 Thus the claimed *604invention is not obvious in view of the “prior art,” section 103. It seems to me that to refuse to give effect to a terminal disclaimer to overcome a “double patenting” rejection based on “obviousness” is contrary to the 1952 Patent Act. Congress has provided for terminal disclaimers and we must act accordingly.
In the present case the Patent Office argues that the “double patenting” situation before us involves “overlapping” claims and the terminal disclaimer fails to “overcome the double patenting rejection.” I fail to see, and the Patent Office has not explained, how this alleged fact somehow operates to prevent the consequences inuring from the filing of a terminal disclaimer, section 253. Clearly the terminal disclaimer eliminates the basis for the objection, i. e., “extension of monopoly.” As appellant here claims different subject matter than is claimed in his prior patent there can be no objection based on section 101. In re Walles, supra. Because of the terminal disclaimer, there can be no “extension of monopoly.” 7
The Patent Office has failed to state a single reason why the terminal disclaimer is ineffective other than that the claims “overlap.” While In re Siu, 222 F.2d 267, 42 CCPA 864, is relied on by the Patent Office as authority for this position, I find nothing in that decision or opinion which is contrary to the result reached here. Moreover Siu is not a viable precedent in the “law” of “double patenting” as in my view the subject matter relied on in the Ladisch patent was “prior art” under sections 102(e), 103, and 120. A review of the record in that case shows that there were different inventors (Ladisch and Siu) and no common assignee (the U. S. Government had a royalty free license in both cases) when Siu’s application was rejected by the examiner.8 The examiner made no “double patenting” rejection. Instead, he relied on Siu’s admission that he derived the process from Ladisch and subsequently applied it to molten glass. In the examiner’s view, Ladisch’s teachings were “prior art” as to Siu.9 See In re LoPresti, 333 F.2d 932, 52 CCPA 755. The first reference to “double patenting” by the Patent Office was in the board’s opinion. The opinion of this court expressly points out “the Ladisch patent, which issued on an earlier filed application [sic], may be properly cited as a reference10 against appellant’s instant application,” 222 F.2d at 270, 42 CCPA at 868. [Emphasis added.] In short, I do not be*605lieve either that a “double patenting” rejection was made or could have been made in Siu (no common assignee); or that this court there affirmed a “double patenting” rejection.
The problem in Siu appears to stem from appellant’s reliance on a terminal disclaimer. Appellant argued before the Office that the following “novel issue” should be decided, after the board appeared to reject the claims on the basis of “double patenting”:11
* * * whether a patent [Ladisch] under common ownership,12 which was copending with a pending application filed for a different species [glass] in the name of a different member [Siu] of the same research team [Ladisch & Siu] and containing claims overlapping with the patent [dominated by, within the scope of the patent claims], can be removed as a reference against the pending application by means of a timely disclaimer in the pending application, under the last provision of section 253 of the Patent Act of 1952, of that terminal portion of the term of the patent to be granted on the still pending application which would extend beyond the expiration date of the patent already granted; i. e., where the grant of patent on the application for the second species would NOT extend the monopoly conferred on the common owner by the generic claims of the patent already issued * * *. [Emphasis added.]
Before this court Siu argued there was no “double patenting” rejection. Apparently he also wondered whether the recently enacted provision as to terminal disclaimer could be used to remove prior art subject matter thus circumventing sections 102(e), 103 and 120. With this background information, the statement that Ladisch was properly cited as a reference, In re LoPresti, in the opinion in Siu takes on its true importance. What was said in Bowers, supra, that a terminal disclaimer cannot remove subject matter in the prior art, was decided some 11 years earlier in Siu. Furthermore, the examiner correctly applied section 102(e) in not relying on Ladisch’s description of Siu’s invention. See In re Land, supra. Remarks in the Siu opinion as to the effect of a terminal disclaimer should be considered in relation to the only issue properly before the court, arising under sections 102(e), 103, and 120. Any statements in Siu relating to “double patenting” and terminal disclaimers inconsistent with Kaye and Robeson have long been overruled.
The issue presented by Siu, quoted supra, and his arguments were recently presented in In re Fong, PA 7786, decided concurrently herewith. The problems faced by common assignees arising from the fact that groups rather than individuals often make inventions are for Congress. See In re Fong.
I therefore would reverse the decision of the Patent Office for the reason that its rejection is not based on a statutory ground of rejection and its action is contrary to section 253. See In re Robeson, 331 F.2d at 614, 615, fns. 4 and 10, 51 CCPA at 1274, 1276. Manifestly, when sections 101 and 103 are satisfied, a judicially created doctrine should not be permitted to operate to negate the remedial provisions of section 253.13
. See Rich, The Proposed Patent Legislation: Some Comments, 35 Geo.Wash.L. Rev. 641, 646-47 (1967); Bullinger, “Double Patenting” and the 1952 Patent Act, 10 IDEA 389 (1966).
. It is well known, however, that sections 121 and 253 were intended, in part, as remedial provisions applicable in certain “double patenting” situations.
. I am not concerned with the title or theory of this policy, e. g., estoppel, dedication, etc. Nor do I here refer to un-obvious subject matter which, if patented, patent protection would “overlap” the protection for previously claimed subject matter. This has never been contrary to patent law.
. There is no place in Patent Law for the use of the term “invention” as a requisite of patentability. Older cases to that effect should be ignored. Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966); In re Walles, 366 F.2d 786, 54 CCPA 710. The Commissioner’s comments as to affidavits, infra in text, are contrary to Graham as all the relevant facts must be considered, pro and con, not just one side.
. Under section 103, the patent may not be considered but in “double patenting” situations, the claims may be considered in view of the “prior art.” Conversely, the inquiry permitted under “double patenting” is narroioer as compared to the inquiry permitted under section 103 when the patent is a proper reference. In re Bowers, 359 F.2d at 891, fn. 7. It seems to me that the statutes are mandatory and must be applied, and there should be no resort to “double jmtenting” when the patent is a proper reference. See In re Ornitz, 376 F.2d 330, 54 CCPA-.
. I refer here of course to the same in-ventorship. Where the inventorship is different, the Patent Office should proceed under sections 102(e) and 103. In *604re Ornitz, 376 F.2d 330, 54 CCPA -. See In re Land, 368 F.2d 866, 880, at fn. 12, 54 CCPA 806. Moreover, where these latter sections are applicable, a terminal disclaimer cannot overcome a rejection based on those sections. A terminal disclaimer overcomes only certain objections based on “double patenting."
. No “abuse” of the terminal disclaimer has been suggested. See In re Robeson, supra. See also supra fn. 1, “Evils of Double Patenting,” 10 IDEA at 397 (1966).
. Certain agreements were entered into by Ladisch and Siu with Texiclon Corp. after an appeal had been taken, Ladisch executed an “Assignment” and Siu executed an “Agreement.” See Ex parte Hein, 114 USPQ 175 (Bd.App.1955).
. Ladisch and Siu were co-workers. According to the record in Siu both inventors originally considered that they were joint inventors of the whole subject matter. Subsequently they were advised by patent attorneys that they were not joint inventors and that the subject mater was divisible. Separate individual applications were then filed, each of which identified and described the other’s invention and presented claims only to their respective contributions. See In re Land, 368 F.2d 872 supra fn. 3.
. Sections 102(e), 103 and 120. The order of the respective applications is as follows:
1. 4-26-49, No. 89,776 (L & S jointly)
2. 8-15-49, No. 110,371 (L)
3. 8-15-49, No. 110,372 (L).
4. 8-16-49, No. 110,663 (S) (“Parent”)
5. 10-19-49, No. 122,343 (L)
6. 8-21-50, No. 180,686 (S) (CIP of 4, application on appeal)
7. 10-23-50, No. 191,672 (L) (CIP of 1, 2, 3, and 5, Ladisch patent).
See discussion supra fn. 6, and accompanying text.
. See infra fn. 12. The apparent confusion of the board probably stems from its erroneous impression that the examiner rejected Siu’s claims over the subject matter claimed in Ladisch. See In re Ornitz, supra, especially appellant’s arguments therein. Compare the arguments of appellants in Hays with those made in Siu.
. Apparently Siu was willing to assume, for purposes of argument, that the royalty-free license in the government was tantamount to “common ownership.”
. It seems to me that the examiner, when he believes that an “obviousness” type situation is present, should inform the applicant that the claims will not be allowed in the absence of a terminal disclaimer because to do so would result in an extension of patent protection contrary to section 154.