In re Von Bramer, 127 F.2d 149, 29 C.C.P.A., Patents, 1018; In re Stoll, 161 F.2d 241, 34 C.C.P.A., Patents, 1058; In re Crosley, 159 F.2d 735, 34 C.C.P.A., Patents, 882; In re Shackell, 194 F.2d 720, 39 C.C.P.A., Patents, 847; In re Kebrich, 201 F.2d 951, 40 C.C.P.A., Patents, 780. A patent may not be properly granted on the basis of the discovery of a new property in a substance disclosed by the prior art. In re Heap, 74 F.2d 948, 22 C.C.P.A., Patents, 950; In re Newton, 96 F.2d 291, 25 C.C.P.A., Patents, 1106; In re Lewis, 108 F.2d 248, 27 C.C.P.A., Patents, 801. For the reasons hereinbefore stated, we conclude that the Clark patent discloses kerosene chlorinated above 70%, and that such disclosure constitutes an anticipation of the appealed claims.
The only difference we can perceive between the disclosure of appellant and that of the reference is that appellant has discovered an additional result in the use of the same added materials with drilling mud. This, of itself, cannot lend patentability to the claims. See In re King et al., 107 F.2d 618, 27 C.C.P.A., Patents, 754; In re Newton et al., 96 F.2d 291, 25 C.C.P.A., Patents, 1106; In re James, 83 F.2d 313, 23 C.C.P.A., Patents, 1124; and In re Burk, 73 F.2d 497, 22 C.C.P.A., Patents, 731. There is no contention that the article claims should be separately considered, nor do we see any reason why they should be.
The test is disclosure. In re Newton et al., 96 F.2d 291, 25 C.C.P.A., Patents, 1106. The several authorities cited by appellant have been examined.
The mere fact that appellant may have discovered a new property possessed by a combination of highly refined mineral lubricating oil and thio di-beta naphthylamine does not entitle him to the allowance of his rejected product claims. In re Heap, 74 F.2d 948, 22 C.C.P.A., Patents, 950; In re Newton et al., 96 F.2d 291, 25 C.C.P.A., Patents, 1106. We can perceive no error in the decisions of the tribunals below and, accordingly, the decision of the Board of Appeals is affirmed.
Since the composition is, therefore, old, as shown by the prior art, it follows that the functioning of cyanhydrin in a non-aqueous vehicle is inherent in the compound, and that, therefore, a scientific discovery of that property cannot lend patentability to the claims. In re James, 83 F.2d 313, 23 C.C.P.A., Patents, 1124; In re McCallum et al., 79 F.2d 924, 23 C.C.P.A., Patents, 760; In re Newton et al., 96 F.2d 291, 25 C.C.P.A., Patents, 1106. We cannot agree with appellant's contention that the refusal of the board to grant a patent was based upon a misapprehension of the chemical facts involved.
The mere fact that appellant has discovered that a composition composed of sodium bicarbonate and from 2 to 25 per centum or more of sodium perborate possesses deodorizing properties, and that such a composition may, therefore, be used as a body deodorant, does not, in view of the fact that the composition is old, entitle him to the allowance of the appealed claims. In re Heap, 74 F.2d 948, 22 C.C.P.A., Patents, 950, 953; In re James, 83 F.2d 313, 23 C.C.P.A., Patents, 1124; In re Newton et al., 96 F.2d 291, 25 C.C.P.A., Patents, 1106. We are in agreement with the conclusion reached by the Patent Office tribunals that the appealed claims are not patentable over the prior art of record.
Therefore, there was no invention in the discovery that vitamin C is hexuronic acid. As we stated in In re Newton, 96 F.2d 291, 293, 25 C.C.P.A., Patents, 1106: "Even though appellants may have found a new property possessed but not even thought of by Ellis, they are not entitled to a patent.
Certain claims of the application relating to the improved shortening and the method of making it were rejected by the Primary Examiner and his decision was affirmed by the Board of Appeals. Appeal was taken to this court. In Re Newton et al., 96 F.2d 291, 293, 25 C.C.P.A., Patents, 1106, the decision of the Board of Appeals was affirmed. The present appeal is from the decision of the Board of Appeals affirming that of the examiner in rejecting claims of the instant application, which is a continuation in part of the application involved in Re Newton et al., supra, which claims are directed to the method of using, in producing bakery products, the alleged improved shortening defined by the claims involved in Re Newton et al., supra.
We agree with appellant, as did the tribunals below, that the pneumatic tires of the references, containing air and water, are used for a different purpose than the purpose of appellant, but even though we assume that appellant may have found a new property or result from the use of the Grenouillon structure, which result was not described in the said patent, this does not, as appellant contends it does, entitle him to the allowance of his claims. In re Newton et al., 96 F.2d 291, 25 C.C.P.A., Patents, 1106. Patentability must be found in the structure or the method rather than in the result or function. In the case of In re Schwartz et al., 82 F.2d 616, 618, 23 C.C.P.A., Patents, 1042, this court said: "We have no doubt but that, by their method and apparatus, appellants obtain the results claimed by them.
This fact neither enhances the claim to invention nor impairs the disclosures of the prior art. The discovery of this peculiar property, inherent in the physical characteristics of the mat surface, was not a patentable "discovery" within the meaning of the statute; In re Lewis, 108 F.2d 248, 27 C.C.P.A., Patents, 801; In re Hoover, 102 F.2d 849, 26 C.C.P.A., Patents, 1138; In re Newton et al, 96 F.2d 291, 25 C.C.P.A., Patents, 1106; In re Heap, 74 F.2d 948, 22 C.C.P.A., Patents, 950; General Electric Co. v. De Forest Radio Co. et al., 3 Cir., 28 F.2d 641; and, the adaptation of the mat surface to a new use to which it was readily adaptable by reason of this peculiar property was not a patentable "invention" within the meaning of the statute. Ansonia Brass Co. v. Electrical Supply Co., 144 U.S. 11, 12 S.Ct. 601, 36 L.Ed. 327; Bingham Pump Co. v. Edwards, 9 Cir., 118 F.2d 338; Krupp Nirosta Co. et al. v. Coe, 68 App.D.C. 323, 96 F.2d 1013; Goldman v. Polan et al., 4 Cir., 93 F.2d 797.