author: WISEMAN, Chief Judge.

text:
    Judy A. HUTCHESON, et al. v. TENNESSEE VALLEY AUTHORITY, et al.
    No. 3-84-0201.
    United States District Court, M.D. Tennessee, Nashville Division.
    March 7, 1985.

      Joseph E. Finley, Baltimore, Md., and George E. Barrett, Linda A. Ross, Barrett & Ray, Nashville, Tenn., for plaintiffs.
    Herbert S. Sanger, General Counsel, Tennessee Valley Authority, Justin M. Schwamm, Sr., Asst. General Counsel, Thomas F. Fine, A. Jackson Woodall, Knoxville, Tenn., for defendants.
   MEMORANDUM

WISEMAN, Chief Judge.

Introduction

The case before this Court is one alleging sex discrimination in violation of Title VII, 42 U.S.C. § 2000e et seq. (1976). The case is brought by four female individuals and their union, the Office and Professional Employees International Union [OPEIU] against the Tennessee Valley Authority [TVA]. The instant motion before the Court is one by the defendants requesting dismissal or in the alternative summary judgment. The defendants raise several grounds which they believe are sufficient to warrant dismissal/summary judgment. First, the defendants allege that the union plaintiff, the OPEIU, as well as the named defendant, TVA, are improper parties. Second, the defendants maintain that dismissal is appropriate because of the plaintiffs failure to join a panel of union representatives as parties to the lawsuit under Rule 19, Fed.R.Civ.P. Finally, the defendants assert that principles of res judicata and/or collateral estoppel apply to this case, thus barring litigation of the plaintiffs’ claims. The Court is unpersuaded by the arguments presented by the defendants and accordingly denies their motion to dismiss or in the alternative motion for summary judgment.

Facts

In negotiating employment contracts TVA deals with an entity known as the Salary Policy Employee Panel [Panel] which consists of representative members of five unions each of which represent a certain segment of TVA’s employees; TVA and the Panel negotiated and signed an employment contract in 1981 [the 1981 Agreement]. The union plaintiff, OPEIU, signed the 1981 Agreement on behalf of its members. The OPEIU represents, employees, the overwhelming majority of which are women, which are paid according to the “SB” salary schedule. The SB schedule is one of several salary schedules contained in the 1981 Agreement. Each schedule has gradations which depend upon variable factors such as experience, meritorious advancement, etc. The actual numbers that are “plugged” into the various salary schedules are determined by an annual salary/benefit survey conducted by TVA of private sector area employers. The survey purports to establish what the “going rate” is for a certain type of job. For example, a clerical employee working for TVA would be paid that which the salary/benefit survey indicated a private sector clerical employee of similar experience would be paid in the area. The gravamen of the complaint focuses on alleged sex discrimination resulting from changes in the private sector employers surveyed in the 1981 salary/benefit survey. The plaintiffs allege that the ultimate and intended effect of the change in the survey was to allow increases in the salary of predominantly male employee groups and at the same time to allow no increases, and in some cases reductions in the salaries of predominantly female employee groups.

In response to the allegedly discriminatory effect of the changes in the 1981 salary/benefit survey, plaintiff Judy A. Hutcheson filed an Equal Employment Opportunity class action complaint with TVA. The EEOC recommended certification of the class and acceptance of the complaint for action, yet in early 1983, TVA’s Director of Equal Opportunity Compliance rejected the complaint. Plaintiff Hutcheson appealed to the EEOC which failed to act within the statutorily allotted 180 days. Hutcheson then filed this lawsuit in this Court pursuant to 42 U.S.C. § 2000e-16.

Improper Parties

The Court first will address the defendants’ claim that two of the parties, namely TVA and OPEIU, are improper and thus should be dismissed. Both sides of this conflict agree that TVA should be excused as a named defendant and will be replaced by the individual members of TVA’s Board of Directors. See 16 U.S.C. § 831(a)(a) & (g) (1982). Dispute exists, however, as to whether the OPEIU is a proper plaintiff. The defendants maintain that since the instant suit is jurisdictionally based on 42 U.S.C. § 2000e-16, only those parties that fulfill the precise wording of that statute may be proper plaintiffs. The language of section 2000e-16(c) limits Title VII actions against the federal government, to “aggrieved employees or aggrieved applicants for employment.” The defendants state that a union is not literally “an employee or applicant for employment” and cite to a Supreme Court case, Brown v. GSA, 425 U.S. 820, 835, 96 S.Ct. 1961, 1969, 48 L.Ed.2d 402 (1976), as justification for literally and narrowly construing the statutory language of 42 U.S.C. § 2000e-16(c). The Brown v. GSA case holds that the sole avenue of relief against the federal government for discrimination is under 42 U.S.C. § 2000e-16. Id. In Brown v. GSA, the Court does recommend restraint in interpreting section 2000e-16. The defendants also rely upon two cases arising from the District Court for the District of Columbia which dealt with the propriety of naming an employee union as a plaintiff to a discrimination suit filed under 42 U.S.C. § 2000e-16. In Palmer v. Kissinger, 13 EPD ¶ 11,419 (D.D.C.1976), the court interpreted the Brown v. GSA decision as requiring strict compliance with the wording of section 2000e-16(c), and thus the court disallowed all organizational plaintiffs (union, etc.) because they were not “employees or applicants for employment.” Id. ¶ 11,-419 at 6408. The defendants also cite the case of D.C. Charter Chapter Federally Employed Women v. McCormick, 13 EPD ¶ 11,470 (D.D.C.1976) to support their contention that a union representing federal employees cannot be a plaintiff in a suit filed under 42 U.S.C. § 2000e-16. Upon review of this case, the Court believes that the defendants have mischaracterized the impact of the McCormick case. In McCormick the court dismissed the claims of discrimination filed by a federal employee union not because the plaintiff in the action was a union, but rather because the plaintiff failed to plead under 42 U.S.C. § 2000e-16 which under the Brown v. GSA decision is the exclusive means of relief for federal employee discrimination claims. The McCormick court expressly reserved opinion as to “whether or not the organizational plaintiff would have been authorized to bring this action under 42 U.S.C. § 2000e-16____” McCormick, 13 EPD ¶ 11,470 at 6637. Nonetheless, the defendants assert that under Brown v. GSA, 42 U.S.C. § 2000e-16 is to be strictly construed so as to preclude all but literal “employees and applicants for employment” from bringing a discrimination suit against a federal government employer. See Miller v. Smith, 584 F.Supp. 149, 153 n. 4 (D.D.C.1984).

The plaintiffs assert that the Brown v. GSA case does not establish formalistic, inflexible rules of construing “employees and applicants for employment”. Rather, the plaintiffs assert that while Brown v. GSA does limit the remedy for discrimination cases between federal employees and their employers, (i.e., such cases must be brought exclusively under 42 U.S.C. § 2000e-16), the case does not limit the party-plaintiffs literally to “employees and applicants for employment.” Based on their reading of Brown v. GSA, the plaintiffs maintain that the decision in no way bars a union’s participation in a discrimination suit on behalf of its members who otherwise meet the jurisdictional requirement for bringing suit (i.e., are employees or applicants for employment). In support of their stance the plaintiffs cite to the case of NAACP v. United States Postal Service, 22 FEP Cases 502 (N.D.Ga.1977), in which the NAACP and a local federal employee union brought suit against the Atlanta Post Office alleging both race and sex discrimination. The court focused mainly on the issue of administrative exhaustion of remedies but did state that the union, and not the NAACP, was properly before the court as a plaintiff. Id. The plaintiffs also rely upon the case of IMAGE v. Bailar, 78 F.R.D. 549 (N.D.Cal.1978), a case in which two organizational plaintiffs, IMAGE and the Mexican-American G.I. Forum, joined with two allegedly aggrieved parties to sue the San Francisco branch of the Post Office under 42 U.S.C. § 2000e-16. The defendants in Bailar moved to dismiss the organizational plaintiffs for lack of proper standing. In denying the defendants’ motion the district court did not address directly whether the language “employee or applicant for employment,” was to be literally interpreted so as to bar union plaintiffs. But since the claim in Bailar was based upon 42 U.S.C. § 2000e-16, the district court must have considered the organizational plaintiffs proper both in regard to jurisdiction and standing.

The plaintiffs also rely on cases which establish that unions are proper as plaintiffs in discrimination claims between private sector employees and their employers. See, e.g., Social Services Union, Local 535 v. City of Santa Clara, 609 F.2d 944, 946 & n. 3 (9th Cir.1979); International Union of Electrical, Radio and Machine Workers v. Westinghouse, 73 F.R.D. 57, 58-59 (W.D.N.Y.1976). Furthermore, the plaintiffs maintain that as a matter of sound public policy, unions should be allowed to proceed as plaintiffs in discrimination cases involving their members. The employee often is unable to proceed against his employer due to lack of resources. A union can provide the financial backing and legal expertise needed for proper vindication of its members’ Title VII claims. International Woodworkers v. Georgia-Pacific Corp., 568 F.2d 64, 67 (8th Cir.1977); see International Woodworkers v. Chesapeake Plywood, 659 F.2d 1259 (4th Cir.1981). Thus, the plaintiffs assert that OPEIU should be allowed as a plaintiff in an action under 42 U.S.C. § 2000e-16.

The Court, having reviewed the arguments, finds OPEIU to be a proper plaintiff in the present suit. The Court finds that the Supreme Court case, Brown v. GSA, limits the remedy for discrimination of federal employees to actions under 42 U.S.C. 2000e-16, but does not limit the proper plaintiffs to flesh and blood “employees or applicants for employment.” Cases that do address whether federal employee unions may be plaintiffs in a section 2000e-16 suit do not provide a uniform answer. Compare Palmer v. Kissinger, 13 EPD ¶ 11,419 with IMAGE v. Bailar, 78 F.R.D. 549. Some cases freely state that the issue is an open one. McCormick, 13 EPD ¶ 11,470. And while Brown v. GSA may be read as advising strict interpretation of the language of section 2000e-16, an inflexible construction of that section barring unions from becoming party plaintiffs could result in the denial to the federal employee of the support needed to effectively present his/her discrimination claim. Finally, the Court, recognizing that private sector unions are allowed to become plaintiffs in Title VII cases, sees no convincing reason why the unions representing federal employees should be treated differently. See Brown v. GSA, 425 U.S. at 838, 96 S.Ct. at 1970, 48 L.Ed.2d at 414-15 (Stevens, J., dissenting). To this Court, sex discrimination is sex discrimination whether the culprit be a private employer or a federal government agency. The OPEIU, in its capacity as representative of the SB salary level employees, is a proper party to seek vindication of its members rights and eradication of the allegedly discriminatory practices affecting its members. See IUE v. Westinghouse, 73 F.R.D. 57 at 58-59 (W.D.N.Y.1976).

Rule 19 Joinder

Defendants’ next contention is that the Court should dismiss the instant complaint under Rule 12(b)(7), Fed.R.Civ.P. because of the plaintiffs’ failure to join the Panel as a party under Rule 19(a), Fed.R. Civ.P. Rule 19(a) provides for mandatory joinder of certain parties. The rule states:

(a) Persons to be Joined if Feasible. A person who is subject to service of process and whose joinder will not deprive the court of jurisdiction over the subject matter of the action shall be joined as a party in the action if (1) in his absence complete relief cannot be accorded among those already parties, or (2) he claims an interest relating to the subject of the action and is so situated that the disposition of the action in his absence may (i) as a practical matter impair or impede his ability to protect that interest or (ii) leave any of the persons already parties subject to a substantial risk of incurring double, multiple, or otherwise inconsistent obligations by reason of his claimed interest.

Rule 19(a), Fed.R.Civ.P. Rule 19(a) establishes various factors courts are to consider when deciding whether a person must be joined. The rule contemplates that if the joinder does not present jurisdictional or service of process problems, the person “shall be joined as an additional party if the person either has an interest in the action which should be protected or is a party without whose presence complete relief cannot be afforded to those who are already parties to the action.” Wright Farms Construction, Inc. v. Kreps, 444 F.Supp. 1023, 1028 (D.Vt.1977) (citing 3A Moore’s Federal Practice ¶ 19.07 — 1[3], at 2254-55 (2d ed. 1977)). Aside from the concerns enumerated in the language of Rule 19, courts also should consider the “practical considerations” of joining the person in question. Provident Bank and Trust Co. v. Patterson, 390 U.S. 102, 117, n. 12, 88 S.Ct. 733, 742 n. 12, 19 L.Ed.2d 936, 949 n. 12 (1968); Smith v. United Brotherhood of Carpenters, etc., 685 F.2d 164, 166 (6th Cir.1982); Lynch v. Sperry Rand Corporation, 62 FRD 78, 86 (S.D.N.Y.1973).

The defendants maintain that the Panel has an obvious interest in the instant lawsuit first because the Panel negotiated and signed the 1981 Agreement with TVA and it is the wage rates contained in the appendix of the 1981 Agreement that the plaintiffs challenge as being discriminatory. Second, the defendants contend that the interests of the Panel diverge from those of the plaintiffs because allowing the plaintiffs their requested relief — the alteration of the wage rates and the salary/benefit survey — would necessarily impact (presumably in negative manner) upon the wage rates applicable to those non-SB schedule employees represented by the Panel. Finally, the defendants claim that the Panel has an interest in upholding the integrity of the entire wage determination process as set forth in the 1981 Agreement and that because the instant case threatens the validity of the salary/benefit survey, the Panel must be a party in order to defend the 1981 Agreement.

The plaintiffs argue that the Panel should not be joined under Rule 19(a). The plaintiffs assert that the relief they request would affect only the putative plaintiff class for it would require the alteration of wage rates only for the SB category of employees. Any such change, the plaintiffs state, would not affect the overall agreement as negotiated between the Panel and TVA. The plaintiffs maintain that complete relief can be afforded among those already parties and that no prejudice to the Panel or anyone else will result if the Panel is not made a party. Finally, the plaintiffs maintain that the instant suit seeks to eradicate sex discrimination, not to abrogate the 1981 Agreement. Therefore, the plaintiffs assert that a decision from this Court will focus upon whether the effect the 1981 salary/benefit survey is discriminatory in relation to the SB employees, and not whether the 1981 Agreement itself is valid. In so defining the parameters of their lawsuit as a sex discrimination suit, the plaintiffs maintain that the Panel is not a required party under Rule 19(a).

Wright and Miller address the problem of union joinder under Rule 19(a) in the following manner:

The union may be found to be a person to be joined if feasible under Rule 19(a) in an action brought by an employee against his employer requiring an adjudication that might have a significant impact on the collective bargaining agreement because of the union’s interest in the operation of the contract.

C. Wright & A. Miller, Federal Practice & Procedure § 1620 (App.1983). Whether adjudication of the instant dispute will impact significantly upon the 1981 Agreement is a question to be viewed under the unique facts of this suit. TVA negotiated and signed the 1981 Agreement with a panel consisting of five union organizations each representing various groups of TVA employees. The interest of the Panel is to uphold the integrity of the 1981 Agreement. Yet, each individual union would have interests relating to its own membership. The putative class members are those TVA employees on the SB salary level all of whom are represented by OPEIU. The relief sought in this case is an alteration of a salary/benefit survey as it applies to the determination of the SB salary level — a concern uniquely directed at the OPEIU. The plaintiffs seek such relief to eradicate alleged sex discrimination, not to disrupt the operation of the 1981 Agreement. Furthermore, none of the non-party members of the Panel have raised objections to not being included in the instant suit; this absence of protest suggests to this Court a lack of any perceived interest-at-stake in this lawsuit for the non-party members of the Panel. Cf. Grogg v. General Motors, 72 F.R.D. at 532-33. The present adjudication will impact upon only one section of the 1981 Agreement — the SB salary level rates. Cf. Lynch v. Sperry Rand Corp., 62 F.R.D. at 86 (the claimed relief required substantial revision of the collective bargaining agreement and the employer’s pension plan, a change that affected all the employer’s employees not just an insulated group of employees.) The only union interested in the operation of that part of the contract is the OPEIU which already is party to this suit. It cannot be overemphasized that the present action is a sex discrimination suit. This Court can afford the individual plaintiffs complete relief by ordering back pay and alteration of the SB schedule. The Sixth Circuit Court of Appeals has stated that “Rule 19 calls for a pragmatic approach; simply because some forms of relief might not be available due to the absence of certain parties, the entire suit should not be dismissed if meaningful relief can still be accorded.” Smith v. United Brotherhood of Carpenters, 685 F.2d 164, 166 (6th Cir.1982). This Court sees the instant case as one in which meaningful relief can be afforded among those presently before the Court. Furthermore, the Court finds that no interest of any non-party union members of the Panel would be prejudiced as a result of eradicating sex discrimination among the SB employees. The Court is not persuaded by the “ripple-effect” argument presented by the defendants whereby they allege that any alteration of one pay level schedule would necessarily mean that all other pay schedules would be affected. Such an argument seems more appropriate for subsequent contract renegotiation, and should not create a bar for relief to those allegedly suffering from the effects of sex discrimination. Thus, the Court holds that the Panel is not a party to be joined if feasible because the Court does not need the Panel before it in order to afford the plaintiffs complete relief, nor does the Panel have an interest to be prejudiced if the plaintiffs succeed in the alteration of a salary/benefit survey which affects only the putative plaintiff class and not the members of the non-party unions. Rule 19(a), Fed.R.Civ.P. The Court also bases its ruling on the practical consideration that joinder of the Panel would unnecessarily complicate the otherwise narrowly defined purpose behind this suit — that of eradicating sex discrimination. Thus, neither the nonparty unions, nor the Panel are indispensable parties under Rule 19. See Ostapowicz v. Johnson Bronze Company, 369 F.Supp. 522, 531-32 (W.D.Pa.1973). If subsequent events illustrate to this Court that the plaintiffs plan to expand the purpose of this suit to attack portions of the 1981 Agreement that will have significant impact upon the rights and obligations of the Panel or the non-party unions and their members, then this Court either will reconsider its ruling that the Panel need not be joined as a party under Rule 19(a), see Karen v. Nabisco, Inc., 78 F.R.D. 388, 402 (W.D.Pa.1978), or consider whether to permit intervention of the Panel under Rule 24 Fed.R.Civ.P. See Eldridge v. Carpenters # 46, 662 F.2d 534, 537-38 (9th Cir.1981); Karen v. Nabisco, Inc., 78 F.R.D. at 403.

Res Judicata/Collateral Estoppel

The final issue raised by the defendants is that the instant action is barred under res judicata/collateral estoppel principles. The defendants base this claim upon two cases in which the OPEIU was involved with challenges of the 1981 Agreement. Since the 1981 Agreement was upheld in both instances, the defendants maintain that subsequent challenges to the agreement are controlled by these cases. The plaintiffs, on the other hand, assert that the cases referred to by the defendants did not arise from allegations of sex discrimination, and therefore res judicata/collateral estoppel would not bar a Title VII suit against TVA under the 1981 Agreement.

The first of the two cases is Salary Policy Employee Panel v. Tennessee Valley Authority, Civ. Action No. 1-81-49 (E.D.Tenn. filed Feb. 24, 1981) (Panel). In that case the Panel, of which OPEIU was a member, sought to enjoin the taking of the annual salary/benefit survey because of TVA’s refusal to include certain area employers in that survey. TVA argued that under the grievance procedures established by the labor agreement between the Panel and TVA, the dispute belonged before the arbitrator. The court agreed with TVA and therefore denied the Panel’s request for preliminary injunction. The court stated that absent extreme circumstances, preliminary injunctions should not issue while arbitration was pending on a matter, otherwise, the preliminary injunction might prejudice the process of arbitration. “The controlling consideration that governs the issue of whether the Court should grant the injunctive relief requested is whether an injunction is necessary to preserve the arbitrator’s power to effect the award that the plaintiff has requested of him.” Id. slip op. at 5-6. The court held that the injunctive relief was not necessary to preserve the power of the arbitrator and denied the motion to enjoin the taking of the annual salary/benefit survey.

The second of the two cases is Public Safety Service Employees Union v. Tennessee Valley Authority, Civ. Action No. 1-81-509 (E.D.Tenn. filed May 2, 1983) (PSSEU). The PSSEU case was an attempt by that particular union to invalidate the 1981 Agreement because of circumstances surrounding the acceptance of the 1981 Agreement by the Panel. PSSEU, a union member of the Panel which represented guards, public safety personnel, etc., employed by TVA, alleged that it had not consented to support the 1981 Agreement and that the final acceptance by the Panel’s secretary was not binding as to PSSEU and its members. The defendants in that case, which included the OPEIU, argued that the 1981 Agreement was valid. Because PSSEU failed to state its objection to the acceptance of .the agreement, the defendants argued that the union was es-topped to object at a later time as to the validity of the 1981 Agreement. The district court in the PSSEU case was persuaded by the defendants’ arguments and held that as ,a result of PSSEU’s silence when the 1981 Agreement was finalized and accepted-, the union was estopped from attacking the validity of the agreement.

The doctrine of res judicata holds that once a final judgment is rendered, further claims by the parties are barred if based on the same cause of action. Ray v. Tennessee Valley Authority, 677 F.2d 818, 821 (11th Cir.1982).

For a prior judgment to bar a subsequent action, it is firmly established (1) that the prior judgment must have been rendered by a court of competent jurisdiction; (2) that there must have been a final judgment on the merits; (3) that the parties, or those in privity with them, must be identical in both suits; and (4) that the same cause of action must be involved in both suits.

Id. quoting Stevenson v. International Paper Co., 516 F.2d 103, 108 (5th Cir.1975). The instant parties do not dispute the first element of proper jurisdiction in relation to the Panel and PSSEU cases. Dispute does exist between the parties in relation to the second and third elements of the above-quoted standard. Yet, while the Court does not belittle the honesty of the dispute concerning “final judgment” and “identity of parties,” it feels that the crucial and dispositive determination for application of collateral estoppel principles is whether the Panel and/or PSSEU cases arise from the same cause of action as does the instant suit.

“The principal test for determining whether the causes of action are the same is whether the primary right and duty or wrong are the same in each case.” Ray v. TVA, 677 F.2d at 821. The instant action alleges sex discrimination with the primary right being that of the SB employees to be free of the allegedly discriminatory wage rates of the 1981 Agreement. With regard to the previous two cases, the Panel decision addressed the right of a union to obtain injunctive relief as to a matter that properly belonged before the arbitrator; the PSSEU case focused on the apparent right of the Panel’s secretary to bind all non-objecting unions to the 1981 Agreement with TVA. The defendants adamantly argue that the instant case is an attack upon the operation of the salary/benefit survey (even as the Panel case was) which the OPEIU itself helped to negotiate. The plaintiffs counter by stating their purpose is not to materially change the salary/benefit survey in order to re-do that which the Panel attempted to do in the Panel case, but rather the purpose is to alter the survey in order to ensure that it does not discriminate against the female members of the OPEIU. See Thompson v. Board of Education of Romeo Community Schools, 71 F.R.D. 398, 406 (W.D.Mich.1976) (union that compromised in contract negotiations is nonetheless able to bring suit to enforce members’ statutory or constitutional rights). The defendants maintain that the present lawsuit attacks the underlying validity of the 1981 Agreement which has already been held valid and binding upon the union constituents in the PSSEU case. The plaintiffs assert, however, that the instant case has as its purpose the eradication of sex discrimination, not the invalidation of the 1981 Agreement. Upon review of the arguments the Court is persuaded that the cause of action presented in the instant case is not the same as was involved in either the Panel or PSSEU decision.

Likewise, res judicata applies to bar a Title VII claim only if the previous adjudication offered a full and fair opportunity to be heard on the discrimination claim. Kremer v. Chemical Construction Corp., 456 U.S. 461, 465, 102 S.Ct. 1883, 1888, 72 L.Ed.2d 262, 283 (1982). It can hardly be said that in the context of a dispute over whether to enjoin the taking of a survey (Panel case), or in the context of a dispute concerning whether a panel secretary can bind silent panel members to an agreement (PSSEU case), a fair opportunity to raise sex discrimination claims has been afforded the instant plaintiffs. The Kremer ease also states that res judicata precludes parties (and their privies) from litigating issues that could have been raised in earlier proceedings. Id. The Court views this part of the Kremer decision as inapplicable to the instant discrimination suit because both the Panel and the PSSEU cases were decided in absence of specific facts relating to the alleged discriminatory effect of the salary/benefit survey. Accordingly, the Court finds the instant case not to be barred by res judicata principles.

Having reviewed the arguments presented by the defendants concerning collateral estoppel, this Court is not persuaded that any issue presented in the instant lawsuit is precluded due to the Panel or PSSEU case.

The defendants’ final attempt to bar the plaintiffs sex discrimination suit falls under the doctrine of judicial estoppel. See generally IB J. Moore, Moore’s Federal Practice, ¶ 0.405[8], at 240 (2d ed. 1983). In essence, the defendants claim that the plaintiffs have changed sides of the argument by defending the 1981 Agreement in the PSSEU case while allegedly attacking the same agreement in the instant case. Such behavior, if true, could be disallowed under judicial estoppel. The Court rejects this argument for the reasons discussed earlier that in the instant case the plaintiffs seek not to attack the validity of the 1981 Agreement, but rather seek to eradicate the discriminatory effects allegedly created by certain portions of that agreement. For the reasons stated, the Court finds that res judicata/collateral-judicial estoppel principles do not bar the present plaintiffs from bringing their sex discrimination suit before this Court.

The defendants’ motion to dismiss or in the alternative for summary judgment is denied.

      . Pending before the Court is a motion for determination that the instant case is maintainable as a class action.

      . Note, however, that the court in Bailar did reject a literal reading of a provision in 42 U.S.C. § 2000e-16(c) which required that Title VII claims by federal employees must be brought against the agency head. The court held that this did not require the actual agency head be the only defendant; others in the agency could be proper defendants as well. Bailar, 78 F.R.D. at 552-53. The fact that a flexible interpretation of “agency head” has appeared in a case undermines the defendants' position that the Brown v. GSA case requires a literal compliancc with 42 U.S.C. § 2000e-16 and opens the door for the flexible interpretation of "employee or applicant for employment.”

      . The defendants also allege that the OPEIU has not exhausted the available remedies because of the union’s absence in plaintiff Hutcheson’s attempt to gain relief through the TVA grievance procedures. This has been held as being inadequate to bar participation in future litigation in federal court. See Grogg v. General Motors Corp., 72 F.R.D. 523, 533 (S.D.N.Y.1976).

      . The defendants assert that the "practical considerations" spoken of in the Provident Bank & Trust case apply only to determination of permissive joinder under Rule 19(b), and thus is not applicable to the analysis of Rule 19(a). This Court’s reading of footnote 12 in Provident Bank & Trust leads it to believe that the Supreme Court was saying that determinations under Rule 19 — not 19(a) or 19(b) — require a court to consider "practical considerations” of joinder — as well as the precise formula provided by the language of Rule 19.

      . The Court is aware of the two instances during the arbitration resulting from the Panel decision in which the arbitrator made passing reference of OPEIU's concern for its women and black members. The Court does not find, however, that the OPEIU's urging of the arbitrator to consider the needs of these minority employees should have prompted the OPEIU's to raise unripe discrimination claims at a time when it was uncertain whether the salary/benefit survey would result in any type of discrimination.


source: Caselaw Access Project

author: VIETOR, District Judge.

license: Public Domain

text:
    FRED NESBIT DISTRIBUTING CO., Plaintiff, v. UNITED STATES of America, Defendant.
    Civ. No. 84-197-B.
    United States District Court, S.D. Iowa, C.D.
    March 7, 1985.
    Kevin M. Abel, Belin, Harris, Helmick, Heartney & Tesdell, Des Moines, Iowa, for plaintiff.
    Richard Turner, U.S. Atty., Des Moines, Iowa, Daniel F. Ross, Trial Atty., Tax Division, Dept, of Justice, Washington, D.C., for defendant.
   MEMORANDUM OPINION, RULING ON CROSS MOTIONS FOR SUMMARY JUDGMENT, AND ORDER FOR DISMISSAL

VIETOR, District Judge.

This is an action under 28 U.S.C. § 1346(a)(1) for recovery of income taxes and interest that plaintiff taxpayer claims were erroneously assessed and collected by the defendant. The parties have stipulated to the final submission of the case on cross motions for summary judgment, which are now submitted.

The issue presented is whether beverage container deposit money received during fiscal year 1980 by plaintiff Nesbit, an accrual basis taxpayer in the wholesale beer distributing business, must be treated as income despite Nesbit’s statutory obligation to refund the deposit for each container returned for redemption in later years.

FACTS

The material facts are undisputed. The state of Iowa enacted a “bottle law” that became effective July 1, 1979. Iowa Code Chapter 455C (1983). Under the statute, which encourages the reclamation of beverage containers in which alcoholic liquor, beer, and soft drinks are sold to consumers for off the premises consumption, the retail dealer must charge a deposit of not less than five cents upon sale to the consumer and must refund the deposit when the empty container is returned. Iowa Code § 455C.2(1). The consumer may also obtain the refund by returning the container to a redemption center. Id. The distributor must pick up the returned containers of the brand and size sold by it from its dealers or, on request, from a redemption center, and pay the dealer or redemption center the refund value. Iowa Code § 455C.3(2). The statute does not specifically require the distributor to collect a deposit when the distributor sells to the dealer, but that is what Nesbit does. Nesbit does not retain title to the containers upon sale. Essentially, it sells and later repurchases the containers. The bottle law applies to both refillable and nonrefillable beverage containers. Iowa Code § 455C.1(2), (10). The used nonrefillable containers have no value except as scrap.

The effective date of the new bottle law coincided with the first day of Nesbit’s fiscal year. Nesbit segregated the nonrefillable container transactions in a “deposits refundable” account. During the fiscal year Nesbit’s collections of nonrefillable container deposits yielded $1,259,681; it paid out $1,003,983, leaving an account balance at the close of its tax year of $255,-698. Based upon its experience during the year, Nesbit estimated that ten per cent of the nonrefillable containers sold would never be redeemed, and therefore adjusted the deposits refundable account downward by $125,968 and included that amount as income in its income tax return for the year ended June 30, 1980.

At issue is the correct tax treatment of the $129,730 that remained in the account. As an accrual basis taxpayer, Nesbit is permitted to deduct from gross revenues certain liabilities that are sufficiently concrete to be regarded as current business expenses even though not paid in the tax year in question. Nesbit considered its obligation to redeem sold but unreturned nonrefillable containers to be an accrued liability, and thus did not treat the $129,730 as taxable income. The Internal Revenue Service took a contrary position, and assessed Nesbit a deficiency for tax owed on the deposits refundable balance. Nesbit paid the tax and filed a claim for refund in the amount of $59,675, which was disal-. lowed. Nesbit then commenced this action.

The test for whether a liability may be taken as a deduction by an accrual basis taxpayer is known as the “all events” test, and is set out in 26 C.F.R. § 1.446-1(c)(1)(h):

Under [the accrual] method, deductions are allowable for the taxable year in which all the events have occurred which establish the fact of the liability giving rise to such deduction and the amount thereof can be determined with reasonable accuracy. The method used by the taxpayer in determining when income is to be accounted for will be acceptable if it accords with generally accepted accounting principles, is consistently used by the taxpayer from year to year, and is consistent with the Income Tax Regulations.

The sole disputed issue presented is whether, in the taxable year in question, all of the events occurred establishing liability.

The government contends that Nesbit fails to satisfy the all events test because its liability to refund a container deposit is contingent upon the tender of the container by the retailer or redemption center; that before tender, liability is not established. Nesbit argues that its obligation to repurchase the container arises at the moment Nesbit sells it to the dealer.

Nesbit bases its argument on the assumption that under the statute the fact of its liability arises when it sells its inventory in nonrefillable containers because the statute requires that the distributor be ultimately liable for the refund of the deposit. However, the relevant provisions of Iowa Code Chapter 455C do not support Nesbit’s assumption. Section 455C.3(2) establishes the obligation of the distributor concerning the redemption of containers:

A distributor shall accept and pick up from a dealer served by the distributor or a redemption center for a dealer served by the distributor any empty beverage container of the kind, size and brand sold by the distributor, and shall pay to the dealer or person operating a redemption center the refund value of a beverage container and the reimbursement as provided under section 455C.2. This subsection shall not apply to a distributor selling alcoholic liquor to the Iowa beer and liquor control department.

The statute contains no reference to the sale of the container by the distributor to the retail dealer.

The statute does not predicate a distributor’s liability on its sale to the retail dealer. True, as a seller of a particular brand and size of beverage a distributor is obligated to redeem containers when they are presented. However, a distributor must redeem any such container returned to it regardless of whether it in fact was the original seller of that particular container. A newly-formed distributor would be obligated to redeem containers presented to it although they had been sold by another distributor prior to its existence. A distributor that goes out of the distributing business would not be obligated to thereafter redeem containers even if it had sold them. The clear language of the statute demonstrates that the obligation to pay a refund does not arise until the time the container is tendered for refund by a dealer or redemption center. Nothing else about the container reclamation procedure suggests the existence of a liability tied to the original sale of the container.

The fact that experience shows that all of the events establishing liability will occur in the future in respect to about 90% of • the containers may justify Nesbit’s treatment for financial accounting purposes, but it does not satisfy the all events test because all of the events establishing liability have not yet occurred. See Thor Power Tool Co. v. Commissioner, 439 U.S. 522, 541, 99 S.Ct. 773, 785, 58 L.Ed.2d 785 (1979), in which the Court noted that “divergence between tax and financial accounting is especially common when a taxpayer seeks a current deduction for estimated future expenses or losses.”

The result this court reaches accords with the treatment given reusable cement sacks in Northwestern States Portland Cement Co. v. Huston, 126 F.2d 196, 200 (8th Cir.1942), and reusable cable reels in Okonite Company v. Commissioner, 4 T. C. 618 (1945), aff'd on other grounds, 155 F.2d 248 (3rd Cir.), cert. denied, 329 U. S. 764, 67 S.Ct. 125, 91 L.Ed. 658 (1946). Perhaps more instructive although factually dissimilar is Brown v. Helvering, 291 U.S. 193, 54 S.Ct. 356, 78 L.Ed. 725 (1934), applying the all events test. In Brown, the taxpayer, a general agent to an insuror, credited to a reserve account a percentage of his paid-in premiums, to provide for refunds on policies cancelled before expiration; the amount of the reserves at year’s end was deducted from the taxpayer’s gross income. The Court held the deduction improper because the taxpayer’s liability to make refunds was contingent. Id. at 200, 54 S.Ct. at 359.

In respect to no particular policy written within the year could it be known that it would be cancelled in a future year____ Experience taught that there is a strong probability that many of the policies written during the taxable year will be so cancelled. But experience taught also that we are not dealing here with certainties.

Id. at 201, 54 S.Ct. at 360. More recent cases applying the all events test in a similar fashion are Bennett Paper Corp. v. Commissioner, 699 F.2d 450, 453 (8th Cir.1983) and Guardian Investment Corp. v. Phinney, 253 F.2d 326, 329-330 (5th Cir.1958). Cf. Thor Power Tool Co., 439 U.S. at 541-42, 99 S.Ct. at 785-86.

The two principle cases relied upon by Nesbit are distinguishable because in neither of them was the existence of the liability contingent upon some future event. In Ohio River Collieries Co. v. Commissioner, 77 T.C. 1369 (1981), the final event giving rise to a state-mandated obligation to perform reclamation work had occurred in the year in which the deduction was taken: the taxpayer had strip-mined the land and the only contingency was the cost of the actual reclamation work to be performed in future years. Likewise, in Kaiser Steel Corp. v. United States, 717 F.2d 1304 (9th Cir.1983), past events established the taxpayer’s liability for uncontested workers’ compensation claims for injuries suffered during the taxable year, and only the amount of the compensation awards remained in question.

The court concludes that Nesbit’s obligation to redeem nonrefillable containers not yet returned at the end of its taxable year was contingent, and liability thereon had not accrued. The claim for refund was properly disallowed.

RULING AND DISMISSAL ORDER

Plaintiff’s motion for summary judgment is overruled. Defendant’s motion for summary judgment is granted, and it is ordered that plaintiff’s complaint be dismissed.

      . Nesbit is not charged a container deposit when it purchases the beverages from the bottler. See Iowa Code § 455C.3(3).

      . The treatment for tax purposes of the deposits and refunds on refillable containers sold by plaintiff is not involved in this action.
      The deposits refundable account on nonrefillable containers was set up for bookkeeping purposes only; the actual funds were channeled through Nesbit’s general corporate checking account. Although the government attaches particular significance to the commingling of funds, it is immaterial to the resolution reached by the court.


author: MURRAY M. SCHWARTZ, District Judge.

text:
    PHILLIPS PETROLEUM COMPANY, Shell Oil Company, Northern Petrochemical Company, and El Paso Products Company, Plaintiffs, v. UNITED STATES STEEL CORP., Hercules Incorporated and Phillips Petroleum Company, Defendants.
    Civ. A. Nos. 83-143, 83-148, 83-547, 83-801 and 84-79 MMS.
    United States District Court, D. Delaware.
    March 8, 1985.

      C. Waggaman Berl, Jr., Wilmington, Del. (Harry J. Roper, Sidney Neuman, George S. Bosy, Nicholas A. Poulos, and James P. Naughton, Neuman, Williams, Anderson & Olson, Chicago, 111., of counsel), for Phillips Petroleum Co. and Shell Oil Co.
    Charles S. Crompton, Jr., Potter, Anderson & Corroon, Wilmington, Del. (Francis T. Carr, and Kenneth E. Madsen, Kenyon & Kenyon, New York City, of counsel), for Northern Petrochemical Co., U.S. Steel Corp. and Hercules Inc.
    Arthur G. Connolly, Jr., Connolly, Bove, Lodge & Hutz, Wilmington, Del. (Thomas F. Reddy, Jr., and Stanton T. Lawrence, III, Pennie & Edmonds, New York City, of counsel), for El Paso Products Co.
   OPINION

MURRAY M. SCHWARTZ, District Judge.

The invention of solid crystalline polypropylene has given rise to protracted litigation spanning several decades. In this action, Phillips Petroleum Company (“Phillips”), awarded a product patent in March, 1983 for crystalline polypropylene, has filed a suit against United States Steel Corporation (“U.S. Steel”) and Hercules Incorporated for patent infringement. Separate actions have been brought against Phillips by Shell Oil Company, Northern Petrochemical Company, and El Paso Products Company (“El Paso”) to obtain a declaratory judgment that the patent is invalid. These actions have been consolidated by orders of this Court dated September 26, 1983, December 22, 1983, and October 5, 1984. All parties adverse to Phillips, except El Paso, (“the movants”) have filed a Motion for Summary Judgment urging the patent is invalid because of double patenting. The material facts, largely undisputed, are set forth below. A more comprehensive discussion of the history of the polypropylene patent litigation may be found in Judge Wright’s opinion in Standard Oil Co. (Indiana) v. Montedison, S.p.A., 494 F.Supp. 370 (D.Del.1980), aff'd, 664 F.2d 356 (3d Cir.1981), cert. denied, 456 U.S. 915, 102 S.Ct. 1769, 72 L.Ed.2d 174 (1982).

Background

In the early 1950’s, several companies in the United States and abroad were experimenting with methods of polymerizing various olefins, including ethylene and propylene. By 1953, Phillips Petroleum had developed a new chromium oxide catalyst for use in the polymerization process. Phillips discovered that use of the chromium oxide catalyst in the polymerization of ethylene permitted the production of polyethylene at lower pressures and less cost than had previously been possible. The process had the added advantage of producing polyethylene of higher density and therefore greater commercial utility than was available at the time.

Phillips also employed its new catalyst in the polymerization of propylene, yielding a solid product. Through fractionation of that solid, Phillips was able to isolate a “hard, crystalline translucent solid,” later known as solid crystalline polypropylene. The resulting polypropylene, consisting essentially of recurring propylene units, had a high melting point and high density. The present record indicates that prior to that time, the production of crystalline polypropylene was thought impossible.

These discoveries led Phillips to file several related patent applications over the course of three years. All were filed in the names of John P. Hogan and Robert L. Banks, and were assigned to Phillips. Application No. 333,576, entitled a “Process for Polymerizing Olefins and Catalyst Therefor,” was filed on January 27, 1953 (“the 1953 application”). A continuation-in-part (“CIP”) of that application, Application No. 476,306, was filed on December 20, 1954. Both of these applications disclosed the chromium oxide catalyst and referenced, inter alia, polypropylene as one of the many products which could be made with the catalyst.

In 1955, Guilio Natta and others working on behalf of Montedison, S.p.A., published a series of articles describing crystalline polypropylene in terms different than those contained in Phillips’ 1953 application. Montedison filed Application No. 514,099 on June 8, 1955, teaching the manufacture of solid crystalline polypropylene through the use of its newly developed organometallic catalysts. On January 11, 1956, in an effort to provoke an interference with the Montedison application and to secure its patent rights to crystalline polypropylene, Phillips filed another CIP of its 1953 application, Application No. 558, 530 (“the '851 application”), specifically claiming the product of crystalline polypropylene. That application disclosed that crystalline polypropylene could be made both with Phillips’ chromium oxide catalyst and with the organometallic catalysts developed by Montedison.

While the ’851 application was pending, Phillips filed yet another CIP — Application No. 573,877, filed on March 26, 1956 containing forty-four process claims utilizing the chromium oxide catalyst. On March 4, 1958, Patent No. 2,825,721 (“the ’721 patent”), entitled “Polymers and Production Thereof,” issued on that process patent application. In September, 1958, the Patent Office instituted Interference No. 89,-634 involving Phillips’ product patent application and the applications of Montedison and others to determine the priority of invention of the product, crystalline polypropylene. The Board of Patent Interference (“the Board”) granted priority to Montedison and on February 6, 1973, the Patent Office issued Patent No. 3,517,344 to Montedison. Review of that determination followed in the federal courts. On January 11, 1980, Judge Wright overruled the decision of the Board and awarded priority to Phillips. Judge Wright assigned Phillips a priority date of at least as early as January 27, 1953, based, inter alia, on Phillips’ constructive reduction to practice as evidenced by the 1953 parent application. In addition, Judge Wright held, in the limited context of the interference proeeeding, that the product of the Count was patentable to Phillips. 494 F.Supp. at 461.

Judge Wright’s rulings in the interference proceeding were affirmed by the Court of Appeals for the Third Circuit in Standard Oil Co. (Indiana) v. Montedison, S.p.A., 664 F.2d 356 (3d Cir.1981), cert. denied, 456 U.S. 915, 102 S.Ct. 1769, 72 L.Ed.2d 174 (1982), and the matter eventually moved back to the patent office for issuance of a new product patent on solid crystalline polypropylene. At that point, U.S. Steel, one of the movants in this action, filed a protest with the Patent Office pursuant to 37 C.F.R. § 1.291, alleging that the claim involved in the interference action had already received protection under claim 16 of Phillips’ ’721 patent. The Patent Office considered and denied U.S. Steel’s protest and on March 15, 1983, issued Patent No. 4,376,851 (“the ’851 patent”) on Phillips’ product claim. The sole claim of the ’851 product patent tracks the claim of Interference No. 89,634. The claim protects the product of:

“[njormally solid polypropylene, consisting essentially of recurring propylene units, having a substantial crystalline polypropylene content.”

Movants have now raised the identical argument that U.S. Steel brought before the Patent Office — that the ’851 patent must be declared invalid for double patenting in light of claim 16 of Phillips’ ’721 patent. Claim 16 recites:

[a] process which comprises polymerizing propylene at a polymerization temperature in the range 150 to 250° F. with a catalyst comprising, as the sole essential effective catalytic ingredients thereof, chromium oxide supported on silica-alumina, said catalyst containing at least 0.1 weight percent hexavalent chromium at the initial contacting of hydrocarbon with said catalyst, and recovering a resulting solid polymer.

The movants contend that the “resulting solid polymer” of claim 16 of the ’721 patent and the product described in the single claim of the ’851 patent are the same, as evidenced by their common origin in the 1953 patent application. As a result, they argue that the extension of monopoly afforded by the issuance of the ’851 patent should be overturned.

The Law of Double Patenting

Stripped of all its verbiage, movants urge the Court to invalidate the ’851 product patent because it represents either the same invention or an obvious variation of claim 16 of the ’721 patent. The Court’s inquiry must begin with the presumption, set forth in 35 U.S.C. § 282 (1984), that the product patent is valid. In light of that presumption, the burden falls on the challenger to prove the patent’s invalidity. See, e.g., American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1358 (Fed.Cir.1984); Astra-Sjuco, A.B. v. United States International Trade Commission, 629 F.2d 682, 688 (C.C.P.A.1980); Aluminum Co. of America v. Amerola Products Corp., 552 F.2d 1020, 1024 (3d Cir.1977); Chicago Rawhide Manufacturing Co. v. Crane Packing Co., 523 F.2d 452, 458 (7th Cir.1975), cert. denied, 423 U.S. 1091, 96 S.Ct. 887, 47 L.Ed.2d 103 (1976); Griswold v. Oil Capital Valve Co., 375 F.2d 532, 537 (10th Cir.1966). In double patenting cases, that burden is a heavy one. See Carman Industries, Inc. v. Wahl, 724 F.2d 932, 940 (Fed.Cir.1983); Transmatic, Inc. v. Gulton Industries, 601 F.2d 904, 913 (6th Cir.1979); Reynolds Metals Co. v. Continental Group, Inc., 525 F.Supp. 950, 972 (N.D.Ill.1981).

In this action, movants’ double patenting challenge involves a comparison of the claim of Phillips’ ‘851 product patent with claim 16 of the expired ‘721 patent. Both patents have as their genealogical parent the 1953 application. The parties agree that the parent application and the two patents each disclose the invention of normally solid crystalline polypropylene and teach the preparation of that product through use of Phillips’ chromium oxide catalyst. Patents which issue from co-pending applications may, however, overlap with respect to the information they disclose without necessarily resulting in double patenting. See In re Swett, 451 F.2d 631, 632 (C.C.P.A.1971); In re White, 405 F.2d 904, 906 (C.C.P.A.1969), Tidewater Patent Development v. Kitchen, 371 F.2d 1004, 1009 (4th Cir.1966), cert. denied, 389 U.S. 821, 88 S.Ct. 46, 19 L.Ed.2d 74 (1967). It is the claims of the patent, rather than the information disclosed in the specification, that delineate the scope of the monopoly and are critical to the double patenting inquiry. In re Baird, 348 F.2d 974 (C.C.P.A.1965). Indeed, the doctrine of double patenting, the prime function of which is to prevent an unwarranted extension of the statutory monopoly period of a valid patent, is concerned only with “attempts to claim related subject matter twice. It does not preclude a second patent on subject matter which is disclosed but not claimed in the first patent.” 3 Chisum Patents § 9.01.

Although the specification confers no monopoly, it may, in certain instances, aid in determining the meaning and scope of the claims and hence is available as a reference in establishing the extent of protection carved out by the patent. In re Vogel, 422 F.2d 438, 441 (C.C.P.A.1970). Where the claim language on its face admits of only one interpretation, as for example, the product claim of the ’851 patent, it is unnecessary to refer to the specification to ascertain the meaning of the claim. However, where the claim language is unclear, ambiguous, or is otherwise susceptible to differing interpretations as to the scope of the conferred statutory monopoly, resort to the specification is appropriate in resolving a defense of double patenting.

After the scope of the monopoly of each patent is defined by fixing the perimeters of the relevant claims, the Court must then determine whether double patenting exists. The difficulty presented by the chemical subject matter of these particular patents is exacerbated by the dearth of product-process double patenting cases. One may glean from the existing cases, however, that the Court’s analysis in this context necessitates the same two-part inquiry applied routinely in other types of double patenting cases. First, the Court must determine whether the claims in question represent the same inventive concept. See, e.g., In re Taylor, 360 F.2d 232, 234 (C.C.P.A.1966). If they do not, the Court must then consider whether one patent reflects merely an obvious variation of the other and vice versa. In re Lyons, 364 F.2d 1005 (C.C.P.A.1966).

The first prong of the double patenting test, commonly referred to as “same invention” double patenting, is derived from the express language of the Patent Act. 35 U.S.C. § 101 provides: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” Id. (emphasis added). This section prohibits the granting of more than one patent on a single inventive concept, and may be invoked as a basis for invalidating a patent where the invention is already protected by another patent to the same inventor. See, e.g., In re Vogel, 422 F.2d 438, 441 (C.C.P.A.1970) (comparison of process patents); In re White, 405 F.2d 904, 906 (C.C.P.A.1969) (comparison of process patents); In re Boylan, 392 F.2d 1017, 1021 (C.C.P.A.1968) (comparison of composition claim and method for using composition). The ultimate question in a same invention double patenting inquiry is whether the identical subject matter is claimed in both patents. See, e.g., Carman Industries, Inc. v. Wahl, 724 F.2d at 940 (in same invention double patenting, the test is whether the patents “claim the same subject matter”); In re Vogel, 422 F.2d at 441 (“[b]y ‘same invention’ we mean identical subject matter; ...' same invention means identically same invention”); In re White, 405 F.2d at 906 (a same invention double patenting analysis “requires a factual inquiry into whether the claims ... are directed to the same subject matter, or invention____ If there be any substantive difference, and not merely a difference in language, then the inventions are not the same no matter how small or how obvious those differences may be”).

In the context of product and process patents, the United States Supreme Court held early on that where both a process and the resulting product were new, both were patentable. Rubber Co. v. Goodyear, 76 U.S. (9 Wall) 788, 796, 19 L.Ed. 566 (1870). The Court there recognized: “[t]he patent-ability, or the issuing of a patent as to one, in nowise affects the rights of the inventor or discoverer in respect to the other. They are wholly disconnected and independent facts.” Id. But see Mosler Safe & Lock Co. v. Mosler, 127 U.S. 354, 361, 8 S.Ct. 1148, 1151, 32 L.Ed. 182 (1888) (“[ajfter a patent is granted for an article described as made by causing it to pass through a certain method of operation to produce it, ... the inventor cannot afterwards, on an independent application, secure a patent for the method or process”).

The seemingly bright line drawn by the Supreme Court in Goodyear has grown dim over time. The Court of Appeals for the Federal Circuit has not yet had an opportunity to speak on the double patenting issue with respect to product and process patents. In the Court of Customs and Patent Appeals, whose decisions are binding as precedent for the Federal Circuit, South Corp. v. United States, 690 F.2d 1368 (Fed.Cir.1982), the issuance of two patents for a process and its resulting product has been neither routinely permitted nor categorically prohibited. Instead, a conceptual approach has been applied to determine whether the two patents, when properly construed, each represent new and different subject matter. For example, in In re Freeman, 166 F.2d 178 (C.C.P.A.1948), the applicant had already patented an extraction process for use in the manufacture of paint compositions. In a separate application, the inventor sought protection of the paint composition itself, defined not by any unique properties, but by its process of manufacture. Id. at 179. Although the Court acknowledged that the scope of the process limitations differed with respect to the two claims, it nevertheless denied the composition claim on the ground of double patenting. The Court reasoned that the claim to the paint compositions did not disclose any new matter, the “[fjormulation of paints [being], of course, conventional” and the claims not alleging any new properties inherent in the composition. Id. at 181.

Within the overlay of its conceptual approach, the Court of Customs and Patent Appeals has, in some instances, applied a test to facilitate its determination of whether product and process patents claim the same invention. According to that test, a charge of double patenting will not be sustained if the product can be made by processes other than that secured by the issued process patent or the process can produce other products not protected by the product claim. See In re Taylor, 360 F.2d 232, 235-36 (C.C.P.A.1966) (process of making collagen film not same invention as product of film itself); In re Cady, 77 F.2d 106, 109 (C.C.P.A.1935) (process of manufacturing roofing material not same invention as that of roofing composition); see also 1 Horwitz, Patent Office Rules and Practice § 79.12. This approach parallels the “cross-reading” test applied in other areas of double patenting and adopted by the Federal Circuit in the context of design versus utility patents. See Carman Industries, 724 F.2d at 940; see also In re Vogel, 422 F.2d 438, 441 (C.C.P.A.1970) (similar process claims subjected to cross-reading test of double patenting). The application of the cross-reading test in other types of double patenting cases is at least some indication that the Court of Appeals for the Federal Circuit will follow a like approach in evaluating same invention, product-process double patenting.

Obvious-type double patenting similarly involves a reciprocal analysis. Double patenting will be established on the basis of obviousness only if each patent is obvious from the other. See Carman Industries, 724 F.2d at 940 (design patent relating to external surfaces of storage bins not obvious from utility patent on interior construction); In re Vogel, 422 F.2d at 442 (method for packaging beef not an obvious variation of method for packaging pork). Unlike the question of “same invention” the doctrine of “obviousness” in the context of double patenting has no statutory basis. Rather, it is a judicially created doctrine intended to prevent the extension of monopoly to claims in a second patent not “patentably distinct” from claims of the first patent. In re Thorington, 418 F.2d at 537; see also Carman Industries, 724 F.2d at 940. Under obvious-type double patenting, the claims in question may not be considered prior art with respect to each other. In re Braithwaite, 379 F.2d 594, 600 & n. 4 (C.C.P.A.1967). They must, however, be analyzed to determine whether one is obvious from the other in light of all other existing prior art. Id. Patents which are obvious from one another will not be deemed invalid if one contains a terminal disclaimer to ensure that both patents will expire at the same time. In re Vogel, 422 F.2d at 442; In re White, 405 F.2d at 906.

The Phillips Patents

Turning to the patents in question, the Court must first scrutinize the language of the claims to ascertain the scope of the monopoly obtained. The meaning of the sole claim of the ’851 patent is clear on its face. The claim is for a product defined in terms of its properties — a product that is 1) normally solid polypropylene; 2) consisting essentially of recurring propylene units; and 3) having a substantial crystalline polypropylene content. A product would not fall within the confines of the claim unless all three characteristics were present. The patent provides a monopoly on the product per se, and is not limited to the product as produced by any particular method.

The meaning of claim 16 is less readily apparent. On the surface, that claim sets forth a particular polymerization process containing several critical limitations — the process “comprises,” or in other words, includes, the polymerization of propylene at a given temperature with a particular catalyst. The claim also indicates that performance of the process will yield “a resulting solid polymer.”

No precise description of that solid polymer is contained in the claim. Movants do not seriously contest that the term “solid” may be used to describe a substance that is either crystalline or amorphous in nature. However, they assert that in this context, the solid polymer recovered by the process of claim 16 connotes solid crystalline polypropylene, identical in every respect to the product described in the single claim of the ’851 patent. In support of their theory, movants rely on a portion of the specification which defines the term “solid” as it is used in connection with the polymerization of propylene. That passage refers to a process of “fractionation,” which, when performed on the total polymer produced by the process set forth in claim 16, would enable one skilled in the art to isolate from the total substance a tacky polymer and a high molecular weight solid polymer. Movants emphasize that the specification expressly defines the term “solid” as this high molecular weight substance obtained after fractionation. Thus, in interpreting claim 16, movants would, in effect, read an additional process step — fractionation—into the phrase “and recovering a resulting solid polymer.”

Extending their analysis a step further, movants point to language in the specification which describes this high molecular weight, fractionated solid in sufficient detail that the skilled polymer chemist would recognize the disclosure of a crystalline substance. Movants highlight the identical language in the 1953 application which Phillips’ successfully relied upon to establish its constructive reduction to practice of crystalline polypropylene in its suit for priority of invention over Montedison. See Standard Oil, 494 F.Supp. at 421. Thus, movants contend that claim 16, read in light of the patent specification, claims a process for the production of a particular substance, and claims the fractionation of that substance to yield solid crystalline polypropylene as described in the ’851 patent. That conclusion forms the linchpin on which movants’ double patenting challenge is based.

Phillips, on the other hand, eschews this interpretation of the claim. Although Phillips concedes that the ’721 patent, read in its entirety, provides all the data needed to produce solid crystalline polypropylene from the process of claim 16, Phillips denies that the claim itself states a process directed solely to the manufacture of solid crystalline polypropylene. Phillips steers the Court’s attention away from the patent specification and back to the language of the claim, emphasizing the obvious omission of fractionation. All parties agree, unless the product produced by the specified process steps of the claim were subjected to the added step of fractionation, solid crystalline polypropylene would never be recovered. Consequently, Phillips maintains that the absence of fractionation from the wording of the claim vitiates movants’ assertion that Phillips has previously obtained a monopoly on a process which, if followed, would inevitably yield the product, solid crystalline polypropylene.

In addition, Phillips observes that claim 16 denotes a process “comprising” the polymerization of propylene. Phillips urges that use of the word “comprises” permits the addition of other monomers in conjunction with propylene as feed to the process and therefore establishes that the process of claim 16 is not directed solely to preparation of the product of the ’851 patent.

The differences in the parties’ interpretations of the claims must be resolved before the Court can compare the patents to determine if double patenting exists. Careful consideration of the claim language and the patent specification in light of the arguments presented compels a finding that movants have misinterpreted the scope of patent protection afforded by claim 16. That provision undisputedly asserts a claim to a process per se. As such, it secures a monopoly for the production of a solid polymer by means of specified process steps. That monopoly cannot be expanded to include additional process steps found in the specification but not expressly claimed. Thus, fractionation cannot be read into the language of claim 16 to become part of the patent monopoly. Moreover, the scope of claim 16’s monopoly, limited in terms of the catalyst used and the temperature at which the process is performed, is not restricted by the properties of the product produced, beyond the fact that the product must be a solid polymer and must contain propylene. Movants in effect ask the Court to search the patent specification for evidence of additional properties inherent in. the product resulting from claim 16’s process, and then argue that those properties — in this case crystallinity and the recurrence of propylene units — should be read as limitations upon the scope of the monopoly. Claim 16 is not, however, so limited. Its concern is with the acquisition of a patent on a particular process, rather than with the specifics of the product produced. Consequently, claim 16 may not be read as limited to a process for the manufacture of solid crystalline polypropylene consisting essentially of recurring propylene units. Indeed, the process claim would equally protect against the manufacture of a product lacking these specific qualities but produced by the process of claim 16 including propylene as feed to the process.

Moreover, because the process claim uses the word “comprises,” it does not purport to limit its protection to a process using only propylene as feed. See, e.g., In re Fenton, 451 F.2d 640, 642 (C.C.P.A.1971); In re Cone, 121 F.2d 470, 472 (C.C.P.A.1941). Rather, claim 16 contemplates that the process described could be performed on propylene in combination with other substances, as long as a solid containing propylene was ultimately produced. Indeed, the specification makes express reference to the polymerization of propylene in conjunction with other monomers. It is therefore evident that the monopoly carved out by the claim encompasses the polymerization of propylene through the process described, as well as the polymerization of propylene by that same process in combination with other monomers.

Having analyzed the language of the claims, there remains the question of whether double patenting exists, either because .the claims represent the same invention or because one is an obvious variation of the other. With respect to same invention double patenting, I do not profess to determine whether a conceptual approach or the cross-reading test stands as the better mode of analysis. Each has its advantage for the courts and prospective litigants, the former being more adaptable to factual variances and the latter facilitating predictability of result. For purposes of this case either approach yields the same result — claim 16 of the ’721 patent and the single claim of the ’851 patent are directed to different inventions.

First, claim 16 pertains to a process, whereas the ’851 patent applies to a product per se. Each provides a presumptively valid assertion that the subject matter claimed is novel, useful and nonobvious. As such, the two claims represent different, though related contributions to the field of polymer chemistry. The process claim indicates one of many uses of Phillips’ chromium oxide catalyst in the polymerization process. The composition of that catalyst was itself the subject of several claims in the ’721 patent. The ’721 patent also contains a series of process claims, claim 16 among them, elucidating use of a specific catalyst in the polymerization of a multitude of olefins. Some of the polymers produced by those claims were themselves alleged to be novel while others were not. But the novelty of the product resulting from the process of each claim was not the primary concern of the patent office. The claims were allowed because of the novelty of the chromium oxide catalyst essential to the processes. Similarly, Claim 16, represents one use of Phillips’ new chromium oxide catalyst in a polymerization process. It does not purport to claim the different inventive concept of the product of the ’851 claim.

Moreover, claim 16 does not state a process for the manufacture of solid crystalline polypropylene as defined in the ’851 patent because it lacks any mention of fractionation. There is therefore missing the “identity of subject matter” between the patents which is essential to a finding of same invention double patenting. See In re Vogel, 422 F.2d at 441; In re White, 405 F.2d at 906.

Phillips’ patents likewise survive analysis under the cross-reading test of double patenting — the product of the ’851 patent may be made by other processes and the process of claim 16 may be used to make other products. First, claim 16 as interpreted by the Court, results in a product other than the solid crystalline polypropylene of the ’851 patent. Only by subjecting that product to fractionation, will solid crystalline polypropylene be recovered. Conversely, the product of the ’851 patent may be made by a significantly different process — the organometallic process which has been patented by Montedison and which was disclosed in the ’851 specification.

Movants challenge the propriety of considering the organometallic process in the double patenting analysis since that process was invented after Phillips’ development in 1953 of solid crystalline polypropylene. See Standard Oil, supra. Indeed, since Phillips relied on the date of its 1953 application to obtain priority of invention and secure the ’851 patent, movants maintain that the double patenting inquiry should be limited to the 1953 date. Neither the movants, in presenting this argument, nor Phillips in rebutting it, have cited any compelling authority to support their respective positions. Nor has the Court’s independent research disclosed any case law expressly on point. Movants strenuously argue that the purpose of the double patenting inquiry militates against consideration of the organometallic process. They urge that since the question is whether the patents represent the same or different inventive concepts, the focus should be restricted to the established date of invention — in this case 1953. Movants maintain that the organometallic process may not be considered for double patenting purposes because, while known and even mentioned in the ’851 specification, it was not known at the time the 1953 application was filed.

While movants’ argument contains superficial appeal, closer examination reveals its flaws. First, it inappropriately weds priority of invention with the double patenting doctrine. The purpose of the former is to determine who, among potential inventors, is considered first for purposes of United States patent law. The primary, albeit not the only purpose of the latter doctrine is to prevent the claim of like subject matter in more than one patent.

Second, consideration of subsequent advancements in the art in the double patenting analysis neither expands nor contracts the scope of the invention claimed. It merely serves as an aid in determining whether the whole of the inventor’s contribution to the art was deserving of one or more than one patent. In this respect, inclusion of a later developed process complements the policy underlying the patent statute. It is a goal of that act to encourage continual innovation by conferring upon the inventor a statutory monopoly with its potential for economic gain. To achieve that goal, it is important that the inventor receive protection to the full extent of his or her invention. If one patent is sufficient to ensure that protection, double patenting steps in to prohibit the issuance or retention of a second patent to the same inventor. If, on the other hand, a single patent leaves a related invention unclaimed and therefore unprotected, a second patent may be in order. Thus, the cross-reading test of double patenting serves as one means by which a court can determine whether a single patent has already provided the protection due, rendering a second patent superfluous. To that end, it would be logical to consider even a later developed process to ascertain whether one patent, standing alone, provides all the protection that the inventor is entitled to.

Third, the peculiar sequence of events in this case has resulted in the issuance to Phillips of a product patent which discloses a process undeveloped and unknown to it at the time the initial application was filed. Once known, Phillips correctly disclosed but did not claim the organometallic process as a process for making solid crystalline polypropylene. It would be anomalous in a double patenting inquiry to ignore a process which is disclosed in the very patent being examined by the Court. The Court declines to conduct the double patenting analysis with blinders so as to avoid recognition or discourage disclosure of advances in process technology as a means of making a. product patent. I therefore conclude that on these facts, it is appropriate to consider the organometallic process which stands as an alternative, albeit a subsequent, means of preparing the product of the ’851 patent. Because this alternative process should be considered in this double patenting inquiry, no same invention double patenting exists.

Attention is now turned to the question of whether claim 16 of the ’721 patent and the sole claim of the ’851 patent constitute “obvious” type double patenting. The test is whether the subject matter of the claim of the ’851 product patent “would have been obvious” from claim 16 of the ’721 process patent, and vice versa. See Carman Industries, Inc. v. Wahl, 724 F.2d at 940. There is no basis in this record for a conclusion that the product of the ’851 patent, exhibiting a structure of recurring molecules of propylene and having the properties of solidity and crystallinity, would have been obvious to one skilled in the art given only the claim 16 process. As has been stated previously, the polymerization of propylene had, prior to Phillips’ invention, only been known to produce an amorphous, rather than a crystalline substance. Moreover, it would be necessary that the product obtained by the process of claim 16 be fractionated before solid crystalline polypropylene would be obtained.

Equally important, movants have not, and cannot, make a showing that the process for making polypropylene would have been obvious from the claim of the ’851 patent. Movants do not contend, and no record support has been cited for the proposition, that the process of claim 16 could be ferreted out merely from knowledge of the product of the ’851 patent. I am therefore not persuaded that the ’851 patent should fail under the test for obvious type double patenting.

Conclusion

The prolonged litigation over the rights to a product patent on polypropylene has worked a rather curious anomaly in the field of polymer chemistry. The patent on Phillips’ chromium oxide catalyst, which may be used but has never achieved commercial success in the production of crystalline polypropylene, has long since expired. Moreover, royalties on the product of polypropylene were paid to Montedison until 1980. Phillips may now continue to exact royalties for that same product until the expiration of its ’851 patent. Nonetheless, the delays in determining the rightful inventor of polypropylene do not justify depriving Phillips of the fruits of its invention. Accordingly, an order will be entered in this matter denying movants’ Motion for Summary Judgment predicated on double patenting.

      . Polymerization is defined as “[a] chemical reaction, usually carried out with a catalyst, heat or light, and often under high pressure, in which a large number of relatively simple molecules combine to form a chain-like macromolecule.” The Condensed Chemical Dictionary 835 (10th ed. 1981).

      . "Olefin” refers to a class of unsaturated aliphatic hydrocarbons having one or more double bonds. Olefins are generally highly reactive. Id. at 758.

      . A catalyst is "any substance of which a fractional percentage notably affects the rate of a chemical reaction without itself being consumed or undergoing a chemical change." Id. at 205.

      . Affidavit of William I. Bailey (“Bailey Affidavit”) at 3, ¶ 7.

      . Id.

      . Fractionation is a process whereby the components of a mixture or a micromolecular complex are separated or isolated. See The Condensed Chemical Dictionary at 479.

      . See Standard Oil Co. (Indiana) v. Montedison, S.p.A., 494 F.Supp. 370, 412 (D.Del.1980), aff'd, 664 F.2d 356 (3d Cir.1981), cert. denied, 456 U.S. 915, 102 S.Ct. 1769, 72 L.Ed.2d 174 (1982), filed as exhibit 1 of Docket Item ("D.I.”) 46. Phillips' chemists first produced this substance on October 9, 1951. 494 F.Supp. at 411.

      . 494 F.Supp. at 412-18.

      . Bailey Affidavit at 9.

      . The genealogy of Phillips’ patent applications and patents at issue in this litigation is depicted in the following table:

      . See D.I. 46, exh. 3. The objects of the invention contained in the 1953 application are, inter alia:

      To provide a process for polymerizing olefins in contact with novel catalysts,
      To provide novel polymers of high molecular weight from 1-olefins of the character described,
      To provide novel catalysts for olefin polymerization.

        Id. at A60-61.

        . See D.I. 46, exh. 4. The 1954 application was entitled "Polymers and Production Thereof.” Id. at A175.

      . Standard Oil, 494 F.Supp. at 444 n. 755.

      . Id. at 374 n. 5.

      . Deposition of Donald Quigg, D.I. 46, exh. 13 at A707.

      . D.I. 46, exh. 7.

      . Id. at A569, A578.

      . D.I. 46, exh. 6.

      . The Interference count read “normally solid polypropylene, consisting essentially of recurring propylene units, having a substantial crystalline polypropylene content." See Standard Oil, 494 F.Supp. at 374.

      . Id. at 375 n. 18.

      . Standard Oil Co. (Indiana) v. Montedison, S.p.A., 494 F.Supp. 370 (D.Del.1980), aff'd, 664 F.2d 356 (3d Cir.1981), cert. denied, 456 U.S. 915, 102 S.Ct. 1769, 72 L.Ed.2d 174 (1982).

      . See D.I. 46, exh. 8.

      . The examiner relied on Ex Parte Hogan, Appeal No. 436-63 (Bd. of Pat.App. Mar. 30, 1981), which was found to parallel the instant case. The argument raised before the Patent Office Board of Appeals in Hogan was that Phillips’ patent for the product of poly(4-methyl-l-pentene) was duplicative of the process claims contained in Phillips’ '721 patent. The Board reasoned that the product claims could not be subject to a double patenting rejection over the patented process claims because "(1) the claimed polymer could equally well be prepared by other means, such as by the catalysts taught by Natta and Haven, and (2) different statutory classes are involved.” Hogan, No. 436-63, slip op. at 5. It should be noted that a difference in statutory class is not, in itself, sufficient to overcome a double patenting challenge. See infra note 29 and cases cited therein.

      . See D.I. 46, exh. 9.

      . Id. at A674.

        . D.I. 46, exh. 6 at A563.

      . Movants point to claims 22 and 31 of the 1953 application. Claim 22 recites:
      [a] process for polymerizing an aliphatic 1-olefin having a maximum monomer chain length of 8 carbon atoms and no branching nearer the double bond than the 4-position, which comprises contacting at least one olefin in the class defined with a catalyst comprising chromium oxide intimately mixed with a support consisting essentially of a member of the group silica, alumina, and silica-alumina, in liquid phase, at a temperature in the range of 100° to 450° F., so as to produce a polymer comprising a liquid fraction, a tacky fraction, and a solid fraction.
      D.I. 46, exh. 3 at A97.
      Claim 31 of the same application protects: A solid polypropylene made by the process of claim 22 having a melting point in the range of 240 to 300° F., a density in the range of 0.90 to 0.95, an intrinsic viscosity in the range of 0.2 to 1.0 and a weight average molecular weight of at least 5,000.

        Id. at A98.

      . 35 U.S.C. § 282 provides, in pertinent part:
      A patent shall be presumed valid. Each claim of a patent ... shall be presumed valid independently of the validity of other claims; ... The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.

      . The phrase "identical subject matter” is not used to refer to statutory class. Double patenting may exist although the patents cover different subject matter in the sense that they represent different statutory categorizations. For example, a 35 U.S.C. § 101 utility patent protecting the mechanical structure and function of an invention may be invalid for double patenting in light of a design patent, which has its statutory base in 35 U.S.C. § 171 and concerns the ornamental or aesthetic features of a design. See, e.g., Carman Industries, 724 F.2d at 938-39; In re Thorington, 418 F.2d 528, 536 (C.C.P.A.1969), cert. denied, 397 U.S. 1038, 90 S.Ct. 1356, 25 L.Ed.2d 649 (1970); In re Phelan, 205 F.2d 183, 184 (C.C.P.A.1953); see also In re Freeman, 166 F.2d 178, 180 (C.C.P.A.1948) (where product was defined in terms of its method of production, fact that product claim was in different statutory class from method claim was not, in itself, enough to avoid double patenting rejection).

      . According to the cross-reading test, there is no double patenting if either of the claims could be literally infringed without literally infringing the other. Carman Industries, 724 F.2d at 939; In re Vogel, 422 F.2d at 441.

      . In this respect, obvious type double patenting is different from "obviousness” in the sense of 35 U.S.C. § 103. See In re Braithwaite, 379 F.2d 594, 600 n. 4 (C.C.P.A.1967).

      . The authority for restricting the duration of a patent is provided in 35 U.S.C. § 253. That section states, in pertinent part: “any patentee or applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted or to be granted.” A terminal disclaimer operates to limit the terminal date of a subsequent patent so that it is coterminous with a prior patent. See, e.g., In re Dubois, 262 F.2d 88 (C.C.P.A.1958).

      . See supra p. 559 for the full text of the claim.

      . See infra p. 565 regarding the usage of “comprises” in a patent claim.

      . See supra p. 560 for the full text of claim 16.

      . Solid is defined as "A substance of definite shape, and relatively great density, lower internal heat content, greater cohesion of its molecules. It may be homogenous (as crystals and solid solutions); or heterogeneous (as amorphous and colloidal substances). It differs from the liquid or gaseous state by reason of its slower molecular motions.” Hackh’s Chemical Dictionary 786 (3d ed. 1944).

      . Column 2, lines 32-45 of the 721 patent (D.I. 46, exh. 6) defines “solid polymer" in the context of the polymerization of propylene;
      Throughout the specification, it is to be understood that the term "total polymer” as applied to polymers of propylene, designates all polymer boiling above the monomer (but not including any diluent, of course); the semi-solid polymer constitutes the mixture or residuum remaining after distilling off, or otherwise removing, the light oil boiling below about 900° F.; the tacky polymer is the lower molecular weight portion of the semi-solid polymer, which portion can be extracted therefrom with n-pentane at room temperature; and the solid polymer is the higher molecular weight portion of the semi-solid fraction, which constitutes the raffinate or insoluble portion left from the extraction with n-pentane or methylisobutylketone (MIBK).

        Id. (emphasis added).

      . See supra note 6 for the definition of fractionation.

      . Movants quote from column 27, lines 26-28 of the patent, which states that the solid polymer fraction of polypropylene that is insoluble in pentane at room temperature has a “melting point in the range of 240 to 300° F." D.I. 46, exh. 6 at col. 27, lines 26-28.

      . Phillips argued before Judge Wright that the disclosure of a substance’s high melting point would be understood by one skilled in the art to indicate that the substance was crystalline even though no specific mention of crystallinity was made. 494 F.Supp. at 420-21.

      . In opposition to the summary judgment motion, Phillips filed an affidavit by William J. Bailey, a chemistry professor at the University of Maryland. Bailey stated in his affidavit that a skilled polymer chemist would not know that the process of claim 16 could be used in the preparation of solid crystalline polypropylene. Phillips conceded at oral argument that Bailey’s statement was premised upon consideration of only the language of claim 16, without reference to the patent specification. His opinion therefore turned on the omission of fractionation from the text of claim 16. Phillips additionally conceded that if the specification could be used as a reference, one would know that solid crystalline polypropylene could be produced by claim 16’s process if fractionation was applied. Any issue of fact which initially appeared to be created by the Bailey affidavit was thus eliminated at oral argument. See D.I. 95 at 127-29.

      . Movants oppose this construction of claim 16 for two reasons, neither of which is persuasive. First, they urge that use of the term "comprises” does not allow for the inclusion of elements that would “alter the purpose of the process and thus lead to a different result from that contemplated by the claim.” D.I. 79 at 15. Second, they argue that the claim may not be interpreted to permit the addition of unspecified substances if the claim would then be duplicative of another claim in the same patent. Id. at 16-17.
      Assuming, arguendo, the correctness of movants’ legal precepts, their application to the instant case fails to produce the suggested result. Movants’ first argument rests on the assumption that the purpose of claim 16 is to produce solid crystalline polypropylene consisting essentially of recurring propylene units and having a substantial polypropylene content. As has already been determined, claim 16 is not so limited. Rather, the claim is a process claim, the purpose of which is to produce, by the method presented, a solid polymer containing propylene.
      Nor is the inclusion of additional substances in the process of claim 16 precluded by other claims in the patent. The patent does contain general claims to the polymerization of any number of unspecified olefins, see claims 1-11, and specifically claims the copolymerization of propylene and ethylene, see claim 17. Claim 16 is, however, the only claim to a polymerization process which must include propylene, either alone or in combination with other substances. This overlapping of general and more specific claims to related subject matter in the same patent is not impermissible. See In re Braithwaite, 379 F.2d 594, 601 (C.C.P.A.1967).

      . The patent disclosure states: “[Ajccording to this invention, special benefits can be obtained by utilizing, as feed to the process, a mixture of at least two different olefins. For example, ethylene and propylene can be copolj'merized, as can ethylene and 1-butene, 1-butene and propylene or propylene and a pentene, in the presence of a chromium oxide polymerization catalyst." D.I. 46, exh. 6 at 544, col. 9, lines 55-61 (emphasis added).

      . It has been held that a chemical catalyst and the use of that catalyst in a chemical process are the same invention. See Studiengesellschaft Kohle v. Eastman Kodak Co., 450 F.Supp. 1211, 1227 (E.D.Tex.1977), aff'd in part and rev'd in part, 616 F.2d 1315 (5th Cir.), cert. denied, 449 U.S. 1014, 101 S.Ct. 573, 66 L.Ed.2d 473 (1980). If that be so, then Phillips correctly included the process claims in its patent for the composition of the catalyst itself. The invention of substances which can be made from the catalytic process, such as polypropylene and poly(4-methyl-l-pentene), seems properly to belong in separate product patents.

      . For example, a patent on the invention of solid polymers of 4-methyl-l-pentene, issued to Phillips’ assignors on August 3, 1982. One process for making poIy(4-methyl-l-pentene), though not the only process, was disclosed in the ’721 application. The Patent Office Board of Appeals upheld the validity of that product patent against a challenge for double patenting. See Ex Parte Hogan, Appeal No. 436-63 (Bd. of Pat.App. Mar. 30, 1981), discussed supra note 23.

      . Significantly, claim 15 of the '721 patent states a process for polymerizing ethylene in terms similar to claim 16, except for the difference in feed for the process and use of the phrase "recovering a solid polymer” instead of "recovering a resulting solid polymer” (emphasis added). The polyethylene produced by the process of claim 15 was not itself new to the art and was not separately patented. See Bailey Affidavit at 3, ¶ 7. Claim 15 is patentable, however, as a process claim, because the chromium oxide catalyst was new to the art of polymerizing ethylene. Claim 15 does not claim the product of polyethylene; it merely states a process whereby polyethylene can be made.

      . The process of claim 16 may also be used to prepare products other than solid crystalline polypropylene, if other monomers are included with propylene as feed to the process. See supra pp. 565-66.

      . In like vein, it appears from the specification of the '721 patent that solid crystalline polypropylene may also be made with a chromium oxide catalyst supported on either silica or alumina alone. See Phillips’ ’721 patent, col. 14, Table VII and col. 5, lines 18-24. (D.I. 46, exh. 6). In contrast, claim 16 calls for a catalyst supported on silica-alumina.

      . Phillips has brought several cases to the Court’s attention in connection with this issue, which apparently take note of developments in the art arising after the time of invention of the patented subject matter in resolving a double patenting challenge. See Hope Basket Co. v. Product Advancement Corp., 187 F.2d 1008 (6th Cir.1951), cert. denied, 342 U.S. 833, 72 S.Ct. 44, 96 L.Ed. 630 (1951); Schute v. Hildreth, 8 F.2d 131 (3d Cir.1925); Jacquard Knitting Machine Co. v. Ordnance Gauge Co., 95 F.Supp. 902 (E.D.Pa.1951). In none of these cases, however, does it appear that any objection was raised to the courts’ consideration of subsequent improvements in the art. The cases are therefore of minimal value in resolving the issue before me, except as evidence that some courts have applied without question the rule that Phillips seeks to have this Court adopt. In Ex Parte Hogan, supra, the Board of Patent Appeals was asked to determine whether a later-disclosed process could be considered in defeating a double patenting challenge. The Board deemed such subsequent developments in the art relevant to the double patenting inquiry. See Hogan, No. 436-63, slip op. at 5. Although that decision is of no precedential value, it does illustrate the procedure which the Board of Patent Appeals, with its particular expertise, deems appropriate.

      . This assumes, of course, that the patent does not otherwise fail for double patenting, such as because one patent is obvious from the other. See the discussion of obvious-type double patenting, supra at 563.

      . On first blush, it appears peculiar to consider whether the earlier issued process patent is obvious from the subsequently issued product patent. However, when two patents issue with respect to different statutory categorizations as a result of co-pending applications, it is irrelevant which patent issues first. In that case, each patent must be obvious from the other before they would succumb to an obvious type double patenting challenge. Cf. Carman Industries, Inc. v. Wahl, 724 F.2d at 940.

      . The 17-year term of the '721 patent ended in 1975.

      . As a result of Interference No. 89,634, Montedison received a patent on polypropylene in 1973. It was not until 1980 that the validity of that patent was overturned. See Standard Oil, 494 F.Supp. at 456.