(dissenting, with whom WORLEY, C. J., joins).
I disagree with the majority opinion. It seems clear to me that the claims of the application are directed to the identical invention claimed in appellant’s patent.
Claims 1-3 of the application are drawn to a plural switch assembly, as are claims 7-11 of the patent. In essential part, all of these claims are directed to an assembly of individual switch units each comprising a rotary switch member having symbols thereon, a stationary contract structure and a window for viewing the symbols which additionally serves as an opening through which finger engaging lugs on the wheel extend.
Claims 4-8 of the application are drawn to an individual switch unit having the essential elements noted above. Patent claims 1-6 are likewise directed to the individual switch unit.
The differences which exist between the application claims and the patent claims are no more than minor changes in scope and verbiage, with the application claims generally having broader recitations than the patent claims. For example, a recitation in the patent for “means extending through said units and binding them together” finds broader expression in the application as “means for mounting said unit as a common compact rigid assembly.” Both of these recitations refer to bolt 44 in the drawings. Similarly, the patent claims recite lip 26, which aids in the interlocking function. I do not find this minor mechanical feature mentioned specifically in the appealed claims, but it is certainly within the recitation “means for mounting said units as a common compact rigid assembly.”
There are other minor differences in the claim scope and verbiage as well. A “casing having an outer face wall * * * with a view opening” in the patent claim corresponds to “a switch panel having an open window” in the application. Similarly, the outline of the window opening and the relationship of the lugs on the rotary member relative to the opening in the window are defined more narrowly in the patent claims than *1010in those of the application. Other de minimis limitations which appear in one set of claims or the other recite “means for mounting said composite stationary switch unit” (a hole for insertion of a bolt?), that the switch wheels may turn in both directions, that the positions of the switch are spaced at regular intervals, that the “digital” system is decimal or binary, and that the indicia on the wheel correspond to the signals generated by the switch contact position.
In my opinion, the majority has erred in this case by failing to distinguish between differences in'the claims and differences .in the claimed subject matter. It .is only necessary to read the claims to find differences in the claims, but it is necessary to read the claims in the light of the specification to determine differences in the claimed subject matter (i. e. the invention). In re Chilowsky, 306 F.2d 908, 50 CCPA 806; In re Sarett, 327 F.2d 1005, 51 CCPA 1180; In re Honn, 364 F.2d 454, 53 CCPA 1469; In re Walles, 366 F.2d 786, 54 CCPA 710.
It bears repeating that the disclosure of the patent and that of the application are identical. The claims of each are drawn to the same combination of essential elements, differing only in the addition, deletion, or recitation in different terms of elements of minor importance. In holding that such changes cause the claims to be directed to different inventions, the majority seems to overlook our previous holdings in In re Knohl, 386 F.2d 476, 55 CCPA -; In re Faust, 378 F.2d 966, 54 CCPA 1459; In re Griswold, 365 F.2d 834, 53 CCPA 1565; In re Bridgeford, 357 F.2d 679, 53 CCPA 1182; and In re Siu, 222 F.2d 267, 42 CCPA 864.
There does not appear to be any valid attempt here to claim a different invention from that previously claimed. On the contrary, the attempt is to secure more claims to the same invention which was previously claimed. If there is a genuine need for such claims by appellant, his proper remedy resides in the reissue provisions of 35 U.S.C. § 251. I do not believe that the intent of Congress in providing for terminal disclaimers in 35 U.S.C. § 253 was to allow an applicant to obtain all the benefits of a broadened reissue patent without meeting the requirements and being subjected to the public protections of 35 U.S.C. §§ 251 and 252. I would affirm.