Opinion
Patent Appeal No. 4629.
June 15, 1942.
Appeal from the Board of Appeals of the United States Patent Office, Serial No. 254,807.
Proceeding in the matter of the application of Willis C. Ware for a patent for a composition of matter claimed to have special utility in the manufacture of abrasive discs. From a decision of the Board of Appeals of the United States Patent Office affirming that of the examiner rejecting three claims numbered respectively 1, 6, and 38, the applicant appeals.
Affirmed.
Fred Gerlach and Norman H. Gerlach, both of Chicago, Ill. (Miles D. Pillars, of Washington, D.C., of counsel), for appellant.
W.W. Cochran, of Washington, D.C. (Howard S. Miller, of Washington, D.C., of counsel), for the Commissioner of Patents.
Before GARRETT, Presiding Judge, and BLAND, HATFIELD, LENROOT, and JACKSON, Associate Judges.
Appellant brings before us for review the decision of the Board of Appeals of the United States Patent Office affirming that of the examiner rejecting three claims, numbered, respectively, 1, 6, and 38, of appellant's application for a patent for a composition of matter claimed to have special utility in the manufacture of abrasive discs. As taken, the appeal covered a fourth claim, numbered 37, but at the hearing before us appellant moved to dismiss the appeal as to that claim, which motion will be granted. Nine claims were allowed by the examiner which, of course, are not involved here.
We quote claim 6 as illustrative of the appealed claims: "6. As a new composition of matter, a mixture of a relatively small amount of low ratio sodium silicate solution embodying no more than two parts of silica to one part of sodium oxide and a greater amount of high ratio sodium silicate solution embodying more than two parts silica to one part sodium oxide, an extremely small quantity of a wetting agent capable of reducing the surface tension of the mixture, and a body forming agent which chemically reacts with the mixture to form a hard bonding heat resisting material." (Italics ours.)
It will be noted that we italicize the phrase "a body forming agent" in the claim. This is a limitation common to each of the three claims before us and formed the basis of their rejection, it being held, in effect, that in the absence of a specific designation in the claims of the elements composing the body forming agent they are so broad that they fail to properly point out the invention as required by the statute. R.S. § 4886, 35 U.S.C.A. § 31.
While a number of patents were cited by the examiner and the board for the purpose of showing the state of the prior art, the rejection of the claims at issue was not based upon them and it is unnecessary to list or discuss them here.
In appellant's specification as filed, it was stated that an element of the composition included "a chemically active body forming agent in the form of an admixture of aluminum silicate, silica, calcium carbonate, or magnesium silicate," and he was allowed claims of the "Markush" type (such as those numbered 12 and 17 in the application) which defined the body forming agent as being "selected from the group" of materials so specifically named.
The claims on appeal are generic claims. Broadly, they cover any and all "body forming agent[s]" which will chemically react with the mixture of low and high ratio sodium silicate solutions (as defined in the claim before us) to form a hard bonding heat resisting material.
It is urged on behalf of appellant, in substance, that he is entitled to claims of that breadth notwithstanding his failure to teach that any agents, or elements, other than those specifically named had been invented or discovered by him which would produce a chemical reaction with the result described. In this connection our attention is directed to an original claim (numbered 1) of appellant's application which, quoting from his brief, calls for "a mixture of low ratio sodium silicate solution embodying no more than two parts silica to one part sodium oxide and a high ratio sodium silicate solution embodying more than two parts silica to one part sodium oxide, and a body forming agent chemically reactive with the mixture." (Italics quoted.)
The brief asserts that the foregoing "conclusively establishes that appellant did not intend to restrict himself to any particular chemically reactive body forming agent or group of agents," and the familiar principle that an original claim in an application is as much a part of the disclosure as the specification itself is invoked.
It is sufficient to say of the principle, or rule, so invoked that its soundness is always recognized by the Patent Office and the courts, but that it applies to the disclosure and not to the intent of an applicant. We may assume that appellant here originally desired and intended to cover all agents or group of agents which would form a body chemically reactive in the manner described in the claim, but his desire and intent did not teach those skilled in the art anything. The teaching in that respect was confined to the disclosure.
In the brief and in the oral argument before us counsel for appellant stressed the suggestion that the real value of his invention lies in the combination of the low ratio sodium silicate solution and the high ratio sodium silicate solution, and argued that the patent might be avoided by using a body forming a chemically reacting agent composed of elements different from those named in the allowed claims.
This court, in considering the patentability of claims, is not concerned with questions relating to infringement, nor is it incumbent upon us to suggest a manner in which claims might be drawn. We consider claims as they come to us.
It is obvious that appellant seeks in the appealed claims to obtain protection upon matter of possible utility but not disclosed by him in his application so that those skilled in the art would be taught its use.
In the course of our decision in the consolidated cases of In re Dreshfield, 110 F.2d 235, 240, 27 C.C.P.A., Patents, 1013, we said: "It is well settled that in cases involving chemicals and chemical compounds which differ radically in their properties it must appear in an applicant's specification `either by the enumeration of a sufficient number of the members of a group or by other appropriate language, that "the chemicals or chemical combinations"' included in the claims are capable of accomplishing the desired result. In re Steenbock, 83 F.2d 912, 23 C.C.P.A., Patents, 1244, and cases therein cited."
In the Steenbock case cited in the foregoing decision the rule was stated as being applicable in both chemical cases and cases involving composition of matter. See also In re Wahlforss et al., 117 F.2d 270, 28 C.C.P.A., Patents, 867.
We are unable to find any teaching or suggestion in appellant's specification that any substances other than the four specifically named in certain of the allowed claims would be suitable for a body forming agent which would chemically react with the combination of a low ratio sodium silicate solution and a high ratio sodium silicate solution to form a hard bonding heat resisting material.
It may be said that appealed claim No. 38 is not only of greater breadth than the claims which were allowed, but is broader than the other appealed claims. This was specifically noted in the decision of the examiner who pointed out that claim 38 "is not limited in any way as to relative proportions of low and high ratio sodium silicate mixture."
We deem it not improper to say that there may be chemical equivalents of the materials specifically named by appellant which, upon a proper showing, would be recognized in an equity proceeding involving infringement so that appellant would be protected by the allowed claims as to use of such equivalents, but that is a matter which may not properly be considered on the question of the patentability of the appealed claims.
It is our view that the decisions below were correct.
An affidavit was filed in this case during its prosecution in the Patent Office which the examiner, as appears from his decision, considered. Apparently it relates to the question of operativeness which was never challenged. No question concerning it was raised in the appeal to the board, nor is it mentioned in the reasons of appeal to us.
The appeal is dismissed as to claim No. 37, and the decision of the board as to claims 1, 6, and 38 is affirmed.
Affirmed.