CITE:  631 F.2d 716
CMON:  June 1980
PLAIN: In re Horst Harnisch
DEFND: United States Patent and Trademark Office
COURT: United States Court of Customs and Patent Appeals
DATE:  June 12, 1980


Appeal was taken from decision of the United States Patent and Trademark
Office Board of Appeals rejecting certain claims of application, serial
No. 559,978.  The Court of Customs and Patent Appeals, Rich, Judge, held
that: (1) the Board had right to rely on rules, principles, tenets
derivable from cited cases which would enable it to determine whether
claims before it were or were not in proper form to be examined for
patentability, despite contention that rejection should not be based on
judicially created doctrine but should have specific statutory basis, and
(2) claimed compounds, which encompassed coumarin compounds useful as
intermediates to make other dyestuffs, all belonged to a subgenus which
was not repugnant to scientific classification, and were part of a single
invention, so that there was a unit of invention, and claims should not
have been rejected as based on "improper Markush groups".  REVERSED.

  A subset or subgenus of scientifically related compounds or features
  are a proper Markush group.

Before MARKEY, Chief Judge, RICH, BALDWIN, and MILLER, Associate Judges,
and FORD, Judge.  The Honorable Morgan Ford, Judge, United States Customs
Court, sitting by designation.


This appeal is from the decision of the United States Patent and Trademark
Office (PTO) Board of Appeals (board) rejecting, under 37 CFR 1.196(b),
claims 1 and 3-8 {1} of appellant's application, serial No. 559,978, filed
March 19, 1975, for "Coumarin Compounds," on the sole ground that these
claims are "drawn to improper Markush groups." We reverse.

The Invention

The claimed compounds encompass coumarin compounds useful as dyestuffs.
Some of them may be used as intermediates to make other dyestuffs. Claim 1
is representative and reads as follows:

  1.  Coumarin compounds which in one of their mesomeric limiting structures
  correspond to the general formula [See Illustration in Original]


  X represents aldehyde, azomethine, or hydrazone,
  R1 represents hydrogen or alkyl,
  Z1 represents hydrogen, alkyl, cycloalkyl, aralkyl, aryl or a 2- or
  3-membered alkylene radical connected to the 6-position of the coumarin
  ring and Z2 represents hydrogen, alkyl, cycloalkyl, aralkyl or 2- or
  3-membered alkylene radical connected to the 8-position of the coumarin
  ring and wherein

  Z1 and Z2 conjointly with the N atom by which they are bonded can
  represent the remaining members of an optionally benz-fused heterocyclic
  ring which, like the ring A and the alkly, aralkyl, cycloalkyl and
  aryl radicals mentioned, can carry further radicals customary in dyestuff

Claims 3-6 depend from claim 1, adding further limitations with respect to
the substituents; claim 7 is an independent claim of the same type as
claim 1 but of much greater length in naming substituents, and claim 8
depends therefrom as well as from claim 4.

The instant coumarins are said to be useful for dyeing synthetic or natural
fibers, plastics, and liquids such as oils and lacquers.  Of apparently
significant commercial value is the dyeing of either the aqueous or organic
based inks preferred in rotary gravure printers for non-textile articles.

Clear shades of yellows to oranges are purportedly achieved with good
fastness properties.  In addition, a strong chartreuse to yellow fluorescence
supposedly occurs upon exposure to either natural or ultraviolet light. 
The fluorescence is said to be especially suitable for tunable dye lasers.

The Rejection

The examiner, relying on no prior art, rejected claims 1 and 3-8 under
35 USC 121 "as containing an improper Markush group and misjoinder".  More
explicit reasons were said to be set forth in the earlier Office Action
of May 12, 1976.  In that action the examiner enumerated ten species of
compounds encompassed by the claims.  Beside each group he listed the
various PTO class 260 subclasses into which the species fall.

The significance of this segmentation was declared to be twofold.  In the
examiner's words,

  A reference anticipating one member [of the listed groups] would not
  render any other member obvious under 35 USC 103. The members are not
  so few in number or so closely related that a search and examination
  of the entire claim cannot be made with [sic, without?] serious burden.

The Board

The board summarily reversed the rejection of the appealed claims under 35
USC 121. Citing our decisions in In re Weber, 580 F.2d 455 (CCPA 1978), and
In re Haas, 580 F.2d 461 (CCPA 1978), decided subsequent to the examiner's
rejection, the board stated that "35 USC 121 does not form the basis for
rejection of claim * * *."

A new rejection was then made by the board under 37 CFR 1.196(b), {2}
rejecting the claims as "drawn to improper Markush groups." After a lengthy
listing of decisions from 1925 to 1953 reviewing "Markush practice", by
the Commissioner, the board, and this court, {3} the board expounded its
theory of the propriety of its new "improper Markush group" rejection
solely on the basis of "judicially created doctrine", as follows
(our emphasis):

  Applying the facts of this case to the principles enunciated, we find
  that the members of the Markush groups of the claims do not belong to
  a known or recognized genus and possess widely different physical or
  chemical properties. Aside from the obvious fact that the compounds
  encompassed by the claims are not functionally equivalent,
  said compounds, considered as a whole,  are so dissimilar and
  unrelated chemically or physically that it would be repugnant to
  accepted principles of scientific classification to associate them
  together as a generic group.  For example, the types of derivatives
  encompassed by the Markush claim may include polyfused N-heterocyclics,
  cyclic, acyclic and aromatic amines, aryloxyalkylamines, amides,
  sulfonamides, phthalimides, quaternary ammonium salts, phosphorous
  heterocyclics, phosphates, aldehydes, azomethines, hydrazones, ethers,
  esters, halogens, alcohols, nitriles, piperidines, furanes, pyrroles,
  indoles, amongst others.  It is clear that on this record the involved
   compounds cannot be considered functionally equivalent,
  in fact, some being no more than intermediates for the others.  The
  foregoing is borne out by the record wherein appellant discloses that
   the various groups or compounds possess different physical or
  chemical properties.  Nowhere in the record has it been established
  or even alleged that the variety of compounds included within the the
  explicit scope of the claims are recognized by the art as being
  functionally equivalent. The functional groups involved herein, as
  emplified above, are so structurally diverse they would be expected to
  possess dissimilar and unrelated chemical and physical properties.
   The mere fact that there is a single structural similarity (i.e.,
  the coumarin group) is not in itself sufficient reason to render all
  the embodiments functionally equivalent, particularly when the ultimate
  properties of the final products would not be expected to possess
  any recognized functional relationship.  Thus, the fact that the
  coumarins are in most part indicated as being dyestuffs (others being
  intermediates for dyes) is not sufficient, since, depending upon their
  structure, they may be subject to different modes of application and use.

Appellant's Position

Appellant, picking up the board's statement that its rejection "has basis
in judicially created doctrine," as shown by the cases it cited, rather
than in the patent statutes, asks this court, first, whether claims can be
rejected on a judically-created doctrine rather than on some statutory
basis, such as 35 USC 121 on which the examiner relied.  If they can, then
appellant asks, second, whether the compounds claimed are sufficiently
closely related to be joined in the same claim.

On the first point, appellant seems to assume some unstated specific
"doctrine" on which the board acted, against which he inveighs, and which
he says cannot stand, urging us not to create a "doctrine".

On the second point, appellant discusses the fact situation underlying the
appealed claims, showing that the compounds are all dyestuffs, that the
members of group X, claim 1, are closely related, that the compounds are
all coumarins, and cites two board opinions reversing rejections by the
examiner of claims structured similarly to appellant's claims, namely,
Ex parte Brouard, 201 USPQ 538 (Bd. App. 1976), and Ex parte Taylor,
167 USPQ 637 (Bd. App. 1969). The former case, like this one, involved
a claim 24 to a dyestuff defined by structure containing, inter alia,
a substituent "B" the definition of which included a list of alternatives
occupying about a column in the USPQ report. The rejection reversed was
on the ground of "improper Markush group" and misjoinder of independent
and distinct inventions.

The PTO Position

The solicitor's brief contains helpful digests of certain key cases selected
from the many which discuss "Markush practice" from its inception in 1924
through 1979.  It supports the board's new rejection on the ground the claims
are drawn to "improper Markush groups." After stating that "Markush practice"
is one of long standing and involves a vast body of precedent, the brief
relies primarily on the following contentions: (1) there need not be a
specific statutory basis for the rejection, citing by analogy
obviousness-type double patenting rejections which are case-law based;
(2) the materials set forth in the "Markush group" ordinarily must belong
to a recognized physical or chemical class or to an art-recognized class;
and (3) the claimed group must not be "repugnant to accepted principles
of scientific classification".

A principal factual contention in the solicitor's brief is that appellant's
claimed compounds include (1) dyestuffs, (2) intermediates for making
dyestuffs, or (3) both, and fails to reveal the utility per se of each
compound.  However, at oral argument the solicitor announced with
admirable candor that, having considered appellant's reply brief, he had
concluded that there is in fact no class "(2)" because all of the claimed
compounds are dyestuffs though some of them could also be used as
intermediates to make still other dyestuffs.

The solicitor also cited authority to the effect that each "improper Markush"
case must be decided on the basis of its own facts.  He also stated that
current PTO "Markush practice" is as set forth in section 706.03(y) of
the Manual of Patent Examining Procedure (MPEP), 3d ed., Rev. 46, July 1976,
reproduced in full as an appendix hereto.


We will first express our views concerning the PTO's reliance on "judicially
created doctrine" in its rejection of claims for "improper Markush grouping."
Appellant injected this point into the case by contending that the PTO had no
right to rely on doctrine because a statutory basis for rejection must be
stated.  He also seems to contend that there is no "doctrine" and that while
this court could create one it should not do so.  In consequence, much of
the oral argument was involved with the court trying to find out from the
solicitor what, if any, "doctrine" was being relied on by the PTO, no clear
answer being forthcoming -- with good reason.

Upon reflection and consideration of the cases cited by the board, the
discussion of those and others by the solicitor, and the recorded history of
Markush practice, it appears to us that all of the discussion of "doctrine"
is beside the point because there is no "Markush doctrine." Appellant never
made clear or specific what "doctrine" he was referring to and the
solicitor, justifiably, was unable to point one out to us.

"Markush" was the name of an applicant for patent (Eugene A. Markush) who
happened to use in a claim a type of definition of a genus or subgenus
by enumeration of species, which he did not devise and which had been used
before in patent claims. {4} The examiner considered the claim to be
"alternative" in form, objected to it, and Markush petitioned the
Commissioner.  Assistant Commissioner Kinnan, in Ex parte Markush,
1925 CD 126 (Com. Pat. 1924), approved the form of claim and granted
the petition, thus requiring the examiner to examine it for patentability.
Thus the name "Markush" became attached to a type of claim expression,
and that is all it connotes.  As others rang changes on the type of
expression used by Markush and approved by Assistant Commissioner Kinnan,
further decisions and opinions on petitions and in appeals ensued and
a considerable body of case law evolved, approving and disapproving
various forms of Markush-type expression, from which cases a number of
rules can be deduced.  Like other bodies of case law, however, the body
pertaining to what may properly be called Markush practice has not been
altogether consistent and has evolved through the years.  Among the
inconsistent decisions, some of them were by this court.  In the PTO,
one of the changes that took place was the abandonment of the rule
against the use of "or" in an enumeration of alternative materials that
might be used in a claimed invention, which rule was the basis of the
objection giving rise to the Markush decision. A specific example will be
found in MPEP 706.03(y).  Not long ago, by a Notice under date of
May 1, 1974, the PTO set up a "Practice Re Markush-Type Claims" and
later incorporated the Notice in MPEP section 803.  Since the MPEP revision
of July 1978, that practice has not been followed because of two decisions
of this court and MPEP 803 now contains this statement:


  The subject matter formerly under this subtitle has been cancelled in
  view of the decisions In re Weber et al., 198 USPQ 328 (CCPA 1978);
  and In re Haas, 198 USPQ 334 (CCPA 1978).

Thus have decisions changed the Markush practice.

It is also clear that Markush practice does not refer to a single rule. 
As may be seen from MPEP 706.03(y) set forth in the appendix, the PTO has
one practice with respect to claims directed to compounds per se and a
different one when they are directed to a process or composition involving
a combination of steps or ingredients wherein the Markush-type
definition-by-enumeration is used in defining a process step or
composition element.

In summary, there is no "doctrine" to be considered but only a body of case
law, emanating from both "higher" and "lower" authority, not altogether
consistent, the latest decisions tending to carry the most weight as

Coming now to appellant's first contention that the board had no right to
rely on "judicially created doctrine", we note that a doctrine, by definition,
is, according to Black's Law Dictionary, revised 4th ed., "A rule, principle,
theory, or tenet of the law." As is clear from the entire board opinion,
what it meant was that it intended to rely on rules, principles, or tenets
derivable from the cases it cited which would enable it to determine whether
the claims before it were or were not in proper form to be examined for
patentability.  Our ruling on this point is that it had a perfect right
to do so.  But there is not one "doctrine" or rule; there are many.

The next questions are whether the board correctly interpreted the facts and
whether it correctly applied the rules of law derivable from the cases to the
facts.  Before considering these questions, we take note of some recent
history respecting Markush practice.

In the PTO, patent applications are examined for compliance with the
statutory provisions of Title 35, United States Code, as set forth in sections
100, 101, 102, 103, and 112.  These are considered to be examinations "on
the merits." There are also procedural questions arising under section 121
and related PTO rules concerned with "restriction practice." See MPEP,
Chapter 800.  As shown by the In re Haas cases, {5} issues arose from PTO
refusal to consider on the merits single claims to groups of chemical
compounds of broad scope unless each claim was first broken up into a
plurality of claims of lesser scope. The first PTO position was that it
would neither consider nor reject the claims, thus foreclosing appeal to
the board or to this court.  After this position was held to be a rejection,
the PTO promulgated its May 1, 1974 Notice, which authorized rejection on
the basis of Section 121, relating to restriction, thus combining the two
matters of Markush practice and restriction practice.  In Haas II (see
note 6, supra), this court held that Section 121 could not be used as the
basis for rejecting a single claim or compelling its replacement by a
plurality of narrower claims before examination on the merits would be
made.  Haas II was decided at the same time as In re Weber, supra,
involving similar issues, and Haas II was decided on the basis of the
opinion in Weber.  We note that in Weber the majority opinion regarded
the "improper Markush grouping" reasoning of the board as having been
merely "supportive of the rejection under Section 121 rather than
alternative to it" and dealt only with the Section 121 rejection, reversing
it and remanding the case to the PTO for consideration, separately, of the
"improper Markush" rejection.  The concurring opinion, by the present
writer, pointed out with respect to that remand, that there existed a
vast body of case law relating to Markush practice.  We have not yet heard
again from Weber, but the present case comes to us in similar posture.
Note that this case involves an improper Markush rejection by the examiner
based on Section 121 which the board reversed in view of Weber, substituting
its own improper Markush rejection based only on judicial precedent and
divorced from Section 121.

Anent appellant's argument that the board should not be allowed to rely
solely on judicial precedent, we think it should be clear from our actions
in Weber and Haas II that we there recognized the possibility of such a
thing as an "improper Markush grouping." We were and are aware that it
does not have a specific statutory basis, as we are aware of an applicant's
right to define what he regards as his invention as he chooses, so long as
his definition is distinct, as required by the second paragraph of Section
112, and supported by enabling disclosure, as required by the first
paragraph of Section 112.  In re Wakefield, 57 CCPA 959, 422 F.2d 897 (1970);
In re Borkowski, 57 CCPA 946, 422 F.2d 904 (1970).

In the early years of the development of Markush practice, many of the cases
involved the problem of clarity -- avoiding the uncertainties of alternatives
and the like.  More recently, the cases have centered on problems of scope,
which are related to enablement.  Assuming enablement, however, there remains
a body of Markush-practice law regarding Markush-type claims, particularly
in the chemical field, concerned more with the concept of what might be
better described as the concept of unity of invention. At least the term
would be more descriptive and more intelligible internationally than is
the more esoteric and provincial expression "Markush practice".  It is with
this unity of invention concept in mind that we approach the propriety of
the appealed claims.

Over thirty years ago this court decided In re Jones, 34 CCPA 1150, 162 F.2d
479 (1947), reversing an "improper Markush group" rejection of claims to
chemical compounds which were growth-regulating compositions for plants,
fungicides, and insecticides.  Notwithstanding their various properties,
the court found all of the compounds included in the claims were plant
growth stimulants, thus having a common function.  The court noted that in
any Markush group the compounds "will differ from each other in certain
respects".  It laid down the proposition, with which the PTO agrees in
its MPEP, that in determining he propriety of a Markush grouping the
compounds must be considered as wholes and not broken down into elements
or other components.  It also held, in agreement with the board, that each
case of this type must be considered on its own facts. Citing Ex parte Clark,
11 USPQ 52 (Com. Pat. 1931), a case decided by the author of the original
Markush opinion, it noted that "the inclusion in Markush groups of
compounds which differed widely in some respects," namely, aliphatic,
aromatic, and aralkyl compounds, had been permitted.  It cited Ex parte
Dahlen, 42 USPQ 208 (Bd. App. 1938) as permitting the grouping of compounds
having the same nuclei but side chains wherein there was a wide variation.
It found the claims before it to cover compounds all belonging to a genus
of tetralyl compounds having a substituted methyl group at position 6 and
ruled that they had a community of properties justifying their grouping
which was not repugnant to principles of scientific classification.

We regard the present case as similar to In re Jones, supra, and also the
much later decision of the board in Ex parte Brouard, supra, in which the
board reversed the examiner's "improper Markush" rejection.  We conclude
that the board here was factually in error in not recognizing that all
of appellant's claimed compounds are dyes, as confirmed by the solicitor's
admission.  The board's reliance on its notion that some of the claimed
compounds are "no more than intermediates" overlooked the now admitted
fact that they are dyes as well.  Clearly, they are all coumarin compounds
which the board admitted to be "a single structural similarity".  We hold,
therefore, that the claimed compounds all belong to a subgenus, as defnied
by appellant, which is not repugnant to scientific classification. Under
these circumstances we consider the claimed compounds to be part of a
single invention so that there is unity of invention as was held to be
the case in Ex parte Brouard, supra, 201 USPQ at 540. The Markush groupings
of claims 1 and 3-8 are therefore proper.

As stated above, we decide this and like cases on their facts on a
case-by-case basis.  It should also be clear from what we have said that we
adhere to our holdings in In re Weber, supra, and In re Hass (Hass II), supra.
Nothing we have said herein is intended to change or modify them in any way;
nor do we think anything said could be reasonably construed to have such an
effect.  The "unity of invention" concept is not to be confused with the
"misjoinder under 35 USC 121" rejection employed in In re Weber.  In Weber
we dealt with the use of 35 USC 121, which deals only with restriction
requirements, to support the rejection of a single claim. Here we are
concerned only with the rejection of a single claim on the distinct ground
that it is directed to an "improper Markush group".  Reference to the
widely-recognized concept of "unity of invention" has been made in order
to suggest an appropriate term to apply where unrelated inventions are
involved -- inventions which are truly independent and distinct. {6}
This case, we find, does not involve such inventions.

Appellant expressly stated in his brief that no appeal was being taken
from the rejection of claim 6 under 35 USC 112 or of claim 8 as improperly
dependent.  In addition, while appellant's reasons of appeal alleged error
in the board's supposed dismissal of claims 9-14 and 23-25, this alleged
error has not been argued and is therefore deemed abandoned.  The appeal
with respect to claims 6, 8-14, and 23-25 is therefore dismissed.

The board's rejection of claims 1 and 3-8 as based on "improper Markush 
groups" is REVERSED.


706.03(y) Improper Markush Group


Ex parte Markush, 1925 C.D. 126; 340 O.G. 809, sanctions, in chemical
cases, claiming a genus expressed as a group consisting of certain
specified materials. This type of claim is employed when there is no
commonly accepted generic expression which is commensurate in scope with
the field which the applicant desires to cover.  Inventions in metallurgy,
refractories, ceramics, pharmacy, pharmacology and biology, may be claimed
under the Markush formula but it has consistently been held to be improper
to extent it to purely mechanical features or process steps.  It is improper
to use the term "comprising" instead of "consisting of".  Ex parte Dotter,
12 USPQ 382. Regarding the normally prohibited inclusion of Markush claims
of varying scope in the same case, see Ex parte Burke, 1934 C.D. 5; 441 O.G.

The use of Markush claims of diminishing scope should not, in itself, be
considered a sufficient basis for objection to or rejection of claims.
However, if such a practice renders the claims indefinite or if it results in
undue multiplicity, an appropriate rejection should be made.  This practice
with respect to Markush claims of diminishing scope is being continued.

The materials set forth in the Markush group ordinarily must belong to a
recognized physical or chemical class or to an art-recognized class.  However,
when the Markush group occurs in a claim reciting a process or a combination
(not a single compound), it is sufficient if the members of the group are
disclosed in the specification to possess at least one property in common
which is mainly reasonable for their function in the claimed relationship,
and it is clear from their very nature or from the prior art that all of
them possess this property.  While in the past the test for Markushtype
claims was applied as liberally as possible, present practice which holds
that claims reciting Markush groups are not generic claims (Section 803)
may subject the groups to a more stringent test for propriety of the
recited members.  Where a Markush expression is applied only to a portion
of a chemical compound, the propriety of the grouping is determined by a
consideration of the compound as a whole, and does not depend on there
being a community of properties in the members of the Markush expression.

When materials recited in a claim are so related as to constitute a proper
Markush group, they may be recited in the conventional manner, or
alternatively. For example, if "wherein R is a material selected from
the group consisting of A, B, C and D" is a proper limitation then
"wherein R is A, B, C or D" shall also be considered proper.


A situation may occur in which a patentee has presented a number of examples
which, in the examiner's opinion, are sufficiently representative to support
a generic claim and yet a court may subsequently hold the claim invalid on
the ground of undue breadth.  Where this happens the patentee is often
limited to species claims which may not provide him with suitable protection.

The allowance of a Markush type claim under a true genus claim would appear
to be beneficial to the applicant without imposing any undue burden on the
Patent and Trademark Office or in any way detracting from the rights of the
public.  Such a subgenus claim would enable the applicant to claim all
the disclosed operative embodiments and afford him an intermediate level
of protection in the event the true genus claims should be subsequently
held invalid.

The examiners are therefore instructed not to reject a Markush type claim
merely because of the presence of a true genus claim embracive thereof.

See also Sections 608.01(p) and 715.03.

See Section 803 for restriction practice re Markush-type claims.


{1}  The board also newly rejected claim 6 as indefinite under 35 USC 112
due to an improper dependence and claim 8 as improperly dependent from two
claims, 7 and 4.  Appellant acknowledges in his brief that no appeal is
taken from either of these rejections, wherefore we need not consider them.

{2} 37 CFR 1.196(b), in relevant part, reads:

(b) Should the Board of Appeals have knowledge of any grounds not involved
in the appeal for rejecting any appealed claim, it may include in its
decision a statement to that effect with its reasons for so holding,
which statement shall constitute a rejection of the claims. * * *

{3} As detailed by the board:  Markush practice has a long history in
the Office dating back to at least Ex parte Markush, 1925 CD 126,
340 OG 839. Since that time, the Office and the Court of Customs and
Patent Appeals had considered rejections based on the propriety and/or
limitations of Markush-type claims.  See, for example, Ex parte Palmer
et al, 1930 CD 3, 398 OG 707; Ex parte Burke, 1934 CD 5, 441 OG 509;
Ex parte Dahlen, 1934 CD 9, 441 OG 510; In re Swenson et al, 30 CCPA 764,
132 F.2d 336, 1943 CD 175 (1942); In re Hass et al, 31 CCPA 895, 141 F.2d
122, 1944 CD 234 (1944); In re Kingston, 32 CCPA 1013, 149 F.2d 181 (1945);
In re Ruzicka et al, 32 CCPA 1165, 150 F.2d 550 (1945); In re Archbold,
33 CCPA 725, 151 F.2d 350 (1945); In re Thompson et al, 33 CCPA 642, 154 F.2d
189 (1946); In re Winnek, 34 CCPA 946, 160 F.2d 572 (1947); In re Jones,
34 CCPA 1150, 162 F.2d 479 (1947); In re May et al, 36 CCPA 833, 172 F.2d
593 (1949); In re Schechter et al, 40 CCPA 1009, 205 F.2d 185 (1953).
Additional analysis of Markush practice appears particularly in the
following articles:

  Kelly et al., Markush Claims, 37 JPOS 164 (1955), (a 75-page exhaustive
  review of the practice by a committee of the Michigan Patent Law

  Walterscheid, Markush Practice Revisited, 61 JPOS 270 (1979).

{4} The Markush opinion points out that in another division of the Patent
Office claims "of this character" have been allowed, citing Patents Nos.
1,472,048 and 1,486,635, and that, long before that, Patent No. 901,975
contained claims in which "the letter R is used in a chemical formula as
standing for CH3 or COOH" and that such claims had frequently been allowed.
Markush ultimately obtained Patent No. 1,506,316, Aug. 26, 1924.

{5} Ex parte Haas, 175 USPQ 217 (Bd. App. 1972), reversed, In re Haas,
486 F.2d 1053 (CCPA 1973) ("Haas I"); Ex parte Haas, 188 USPQ 374 (Bd.
App. 1975), reversed, In re Haas, 580 F.2d 461 (CCPA 1978) ("Haas II").

{6} Having recognized the possibility of rejecting a Markush group type of
claim on the basis of independent and distinct inventions, the PTO may
wish to anticipate and forestall procedural problems by exercising its
rulemaking powers under 35 USC 6(a), wherein the views of interested
parties may be heard.