*1 itself, prevents delay, that such in and of existence of such a carries circumstance adjudged persuasive first in- with being case, proper Smith In value. ventor in would apply law. not hesitate to the doctrine proof sup- where the indicates deliberate fol regard to conduct With Smith’s pression and concealment without more. practice lowing actual reduction to case, appellant instant fails to show impressed herein, as awarded we are not “spurred activity” Smith was into knowl- that, except allegation with that inventor’s edge appellant’s work. Such factor actively period disability, for his he was been taken study into consideration our engaged attemping promote the in of the case. equally stant invention. We unim indicated, For the reasons hereinbefore pressed allegation with the that Smith was the decision of the Board of Interference power doing all in to confer the his benefits affirmed, Examiners is upon public large. of his invention at appears practically us that Smith was Affirmed. period effortless this insofar as a show J., WORLEY, dissents. ing from the exhibits indicate.
Whatever influence the war had late JACKSON, retired, J., par- recalled to patent application Smith’s failure to file a ticipate place herein GARRETT, C. J. completed we can guess, unexpressed while our conclu respect might justified, in this not be
sions supports fact remains that the law priority. Appellant right
Smith’s has not
proven by preponderance of evidence that suppressed
Smith concealed and the inven same,
tion (nor although abandoned the appellant seriously we do not believe (Patents) 40 C.C.P.A. result), contended the affirmative of such Application of ARBEIT et al. manifestly unwilling, and we are on the Appeal No. 5937. facts to allow ourselves to sub United States Court of Customs might, appraisal, stitute wbat at first be a Appeals. and Patent clearly presumption place warranted June proof required the direct by law. In sum marizing, repeat it well that a show Rehearing Sept. 28, Denied suppression of concealment or is not by merely made establishing the fact delay
of an in applying extended for a
patent upon previously an invention re practice.
duced to argued
Smith has that the doc equitable estoppel applica
trine of has no
tion until and there unless is evidence of party alleged
the fact to have con suppressed
cealed or an invention was in activity
cited to as a of being ap result
praised that a rival had entered the field respect to the same invention. This supported
view was the board in its de necessarily are not
cision. We agree reasoning.
ment with such Such a condi prerequisite not an tion is absolute prop application
er of the doctrine, though the *2 bath, (Dale one conduct situated City and at least Seymour, New York L. John glass the bath counsel), for .beneath the surface of Bauer, City, of York A. New compartment glass in one to cause appellants. pass compartment to the from said (S. Reynolds, Washington, D. C. E. L. one, following of said the cross section C., Cochran, of coun- Washington, D. W. en- being sufficiently small to conduct sel), of Patents. for Commissioner stream, flowing glass sure to GARRETT, and Judge, Chief Before through said conduct as a result of O’CONNELL, JOHNSON, WORLEY furnace, glass extraction of from the COLE, Judges. and speed prevent any sufficiently high to through current said conduct. back GARRETT, Judge. Chief manufacturing The method “33. decision of appeal from the This is an steps melting, glass that includes Appeals States United Board of glass fining working glass, and Primary affirming that of the Patent Office proceeding melting from a zone to a claims rejecting several finally Examiner fining working zone to a zone and be- 69,667, No. filed application, serial an zone, working ing from the withdrawn 1949, 7, Tank Fur- for “Glass January fining glass Joule numbered was al- One claim naces.” to zone flowing glass from zone Primary Examiner. by the lowed small, im- submerged streams numbered, respectively, 11 Two claims permeable wandering currents in appealed 12, among are listed zones, constituting streams the sole said claims, to them is made reference but no between the connections zones. appeal brief or the in either reasons having A a fin- glass furnace “37. said us. The board appellants before for completely ing zone surrounded them: concerning separated from all thereby walls reject- 12 have 'been “Claims furnace, parts heating of the not [by ed Examiner] glass of the means beneath level species sub- of the elected inclusive zone, connection be- fining the sole rejection and since that ject matter adjacent tween said and an not challenged we need been consisting furnace of at least consider these claims.” further penetrating little tube a wall of the Obviously, improper- claims those fining extending into said zone and appeal ly as to included in list proportioned part, being said tube formally dismissed. them will of glass the rate of withdrawal from appeal So, actually are providing minimum the furnace and 37, 44, 38, 39, 43, numbered capable preventing return flow. flow upon dependent Claim 38 is and 46. A glass “43. furnace of continuous dependent 45 and 46 separate type having glass-containing claim; Claim 33 is a claim 43. method compartments glass on one level for apparatus. are for all others stages in different of manufacture and quote here Nos. 37 and We discharge withdrawing means for fin- 43: glass, ished and conduit means separate section between In a furnace the continuous small “1. substances, compartments, said conduit means hav- manufacture of vitreous related to the rate flow rate flow glass, in which material is discharge means that the nor- compartments in successive submitted operation melting, discharge means operations mal to the required tempera- produces glass the conduit means conditioning velocity having working, a minimum in the electrodes in the ture for its range per from compartment an several mm to 1 cm to cause elec- pass through current second.” tric following as ref patents were informative statement cited 23, 1892; appellants: quoted Rogers 469,454 Feb. erences: 1, 5, 1902; 706,283 Granel Aug. Voellcer “If one all the were measure *3 552,555 1925; 1,593,054July Sept. 8, Arbeit world, operating furnaces one 20, 1926. probably find no two such dimensions. furnaces have same Appellants’ specification figure They turned like automo- are not drawings, the board states figure, parts, biles interchangeable species alleged inven- “illustrates the glass specially design- each is furnace elected,” fur- tion has been disclose a capacity ed to to meet new embody having separate compartments nace three - requirements, the demands of new ma- (also zones) referred to as tanks and chines, embody and to lessons learned in some connected tubes referred to from old furnaces. An examination of the claims as “conducts” 2and in others drawings over furnaces figure as “conduits.” the tubes are very company longing large to a show- longitudinally arranged and are described duplicates ed no either in construction- section, prefer- as “having small cross production. or features al rate of cylindrical, depth ably into inserted making little furnace for relative- compartments the walls two ly quantities optical glass small is connected.” size, totally pro- rate unrelated in process evidently The manufacturing re- outline, duction, flow rate quires high degrees of heat in the tanks glass gigantic in the furnace specification teaches “heating plate glass apparatus machine whose ® .submerged electrodes, effect with Joule long.” over a is half mile heating being used alone or else com- specification In the it is said: bined heating.” with surface tank, are deemed here involved are staled hereina fter. the ritrifiable gathering, specify another;” perature zone, molten glass “about position “for Neither the Such additional details of structure as glass;” is evolving or 1100° any explained zone, being suitable for provided feeder that the second pertinent upon glass degree and that specification the bubbles so as to refine materials cooling recites 1200° C.” in the third. extraction, in tile are melted in the first “for conditioning the there working heat, the third it used temperatures specification down to the tem- the narrow issue tank, reacted nor the claims but the brief or by rolling, tank, “on zone, on.” com- one is ments one uous melting compartment, cooled ing compartment vent cell or fined ing cell or one consists in it other “In a tank furnace for the contin- “The relates to ensuring compartment of glass containing production of glass any compartment. electrically glass there is compartment. more object movement of providing particular contained in the condition- compartment means permitting (cid:127):=*** provided, communication from heated back to cells present or of More [sic] according to or compart- tank back to the the already comprising in the lin- the especially, the Joule invention already to an- means pre- Dictionary New 1. Webster's International energy equal ergs, work or which is to 10 gives numerous definitions of “conduct.” equivalent practically to the ener- appellants’ application, As used evi- expended gy in one second an elec- dently means such terms as “channel” ampere tric current of one in a resist- and “conduit.” Webster states it is ob- joule approxi- ohm. One ance solete that use. mately equal pound, to .738 foot or 0.24 joule (after 2. Webster defines dames P. calorie.” small Joule, English Physicist) unit of “A passage logical give claim first consideration. present for the compart- feature, expressed velocity Unless the glass from one of molten claim, patentable, it is discerned compartment, ment to the held having properly can be how such feature conducts each one or several en- sufficiently patentable expressed as it is section small cross stream, flowing appealed claims. sure extraction result of the through it as a discussing the merits of Before furnace, speed suf- from the however, question which there is a cur- any back high prevent ficiently quires preliminary attention. *4 rent; through which the conducts stated, al- As claim stands has been one to compartment flows from one glass lowed. It seems to been “indicated have between following are situated the Primary Examiner. as allowable” the for- bath in the glass of the level the stating presently is In numbered compartment.” mer us, appeal alleged it is the reasons for to indicated, many While, as has been “In fail- Appeals the erred that Board appeal, the is- in claims are embraced ing to 45 in view of allow 43 to actually is limit- presented us sue before 42,” claim both allowance of subject question of whether the ed us, argu- argument before brief and oral relating preventing the -currents matter support alleged ment was made that glass “flowing wrong from of molten error. patentable as that way furnace” is in the Waite, In the case of In 168 F.2d re expressed appealed in the claims. is feature C.C.P.A., Patents, we from following statement is taken said: of the board: the decision vent constitutes flowing through glass. vented. nace been ciently high To posed species, From currents ed ed the velocity of the currents of molten “* * ^ furnaces that the backward flow of such molten melting zone from the overcome the zone currents of hot working compartments of elected, through ” [*] -connected difficulty use the element relied of cold Fig. pass *- returning foregoing, alleged Appellants had encounter- shows that return tubes at glass which illustrates they difficulty it is glass invention that has connecting glass returning it small conduits. did not from the melting, from zone to compartment- velocity flow is apparent fining upon to prevent a- conduits work- zone. suffi- zone pro- pre- fur- pre- that not often nent that we differentiate or are instances which this court has indulgence question the correctness claims. our lowed not allow cause fice in some sideration.” in the stated, It well that study “We limitations, may justify with an allowed claim in order which careful similar claims particular application than Consequently, instances indulged, apprehend clear. law tribunals of the Patent Of- rejected such claims are rare. has the rule no show the absence more make it jurisdiction been more comparing an If and when be borne that there even application, we should that firmly settled, arguments the reason for such this is this court will allowance simply in mind that under over frequently is been or even- be no requiring are made- indulged,, appealed practice allowed, con- led rule There nor perti- al- to- to- Office claims- the tribunals the brief on behalf In cases, apprehend very us, parte we practical- ex argument oral before we emphasis placed with intense earnestness ly promptly all dependent advised be claims 44 and and would exceeding, 43 and authority. study our our from we think excerpt following his officialstatement ap- peal board, the Solicitor for Patent Office Examiner posite: said: thus m the case. should be noted ship entering particular zone, structural . viz., otfier claims allowed m C . P .A., rel with the examiner’s conclusion that clause is of ment mav be 42 ticipated on the claim combination and from the strenuously urge that the ‘flow rate’ means to cause the ‘normal’ of structure and duit in terms duit means Board tially dependent ‘discharge means’ as an element of the fer . , , , . . “Claim 43 tne same , One ’ , . first five lines appellants apparently ’ ’ not to be setting from the their reliance on the . m . Patents, , , velocity . correctly . phase addition , . impropriety , flow „ thereon features „ , , of the Patent Office. Aside out a indicative ...... operation , and, patentable significance. Arbeit and ’ , „ fact found m of . (Italics quoted.) x preceding ox , . disposed rates a ‘flow thfit clciiin tube its ‘flow rate.’ to a number of merely combination specify . In re oí „ ... of . (44, . . the conduit. The ’ specified . not m claim course, lor both the tube leaving the claim are an- ..... . 168 F.2d J appellants argu- , ... any 45 and the Officeeven rate’ related . . . ... Waite 35 C. . defines a con- , J inconsistency claims essen- that the con- . relying upon _ allowance Grauel, do not , other claim 4specifics „ , Arr .„ . , forthwith, the claims , discharge include a ' range . , , relation- , 46) . , . ,7, While fining ,, quar- . . ’ , dif- . . . , , : hnd m designated der flow note that „ the claim. In addition to structure merely r shown to be matter of the not determinative of ments. tms tion level, means for withdrawing finished He holds that the glass containing compartments on one glass and conduit means of small sec- tt ^on clearly „ .. small ments on one ments ... ment ond, entable over Arbeit or fhw rate related , garding the last five lines Grauel shows on one *5 ^2> , , * n . “Claim ,, , “Claim is43 Fiff- ,, . broadly compartments , i these Fve^> , ,, t>oal‘ddiscussed it as follows: . velocity ,, subject , between the claim defines , section, [identified this statement of , , ^ comprise -i- 2 , shown m . , ™ the Examiner , ... (cid:127) . shows an_d conduit 43 ... , ,, range as its circumstances, . , furnace defaned (cid:127) , , conduit number matter m the conduit a. ^ . £ includes discharge means at I1.” claim is functional and level, old, considered to . , compartments A, , ,, normal the functional state . . means of small , Grauel „ , . . separate compart- .... . the claim recites remaining subject numerals] patentability. not stated discharge conduit . means of the claim and character of minimum. Un- r , . ^ A . . Grauel. points level, compart a , operation , , operation . plurality n cm produces , . ? this claim having , having ...^ means , compart out that ,. per ... 7, 8, 13, _ fail Arbeit, , , clearly m means, , unpat ^ Disre * . , , , E on , .. , sec- sec We, .,r . . . to . a a . . , , positive authority rej'ect structure which the claim We have no an upon distinguished application prior pealed claim in ail al- an lowed, art. The flow rate is not structure.” In application, and the claim in such Henze, re 173F.2d 997, C.C.P.A., sug- true. If we must be were to converse Patents, 1038. tribunals of the Patent gest here that the The actual structural features combined 42, appel- claim granting Office erred in in claim defined 43 are in the phraseology j'ust complaint. might cause for lant reading: So, light considered claim 43 must he “ * * * merits, prior its own if having art and separate glass-con- any, compartments reference to without allowed claim taining on one level for stages different of manufac- “ ** on Grauel with- means for discharge ture and Rogers or Arbeit. view either glass, and conduit finished drawing “ * * * between small section means Arbeit in view claim 39 on new compartments.” (Italics separate Rogers and Grauel. “ here.) * * * vague in- claim 33 fact, does not seem It is clear—in definite. as thus “ features questioned
he. * * * —that view 37 on Arbeit prior in the cited found are broadly defined Rogers. Grauel constitutes, a relationship which in a art “* * * claims 38 and 46 on anticipation of them. practical Rogers. in view Grauel Arbeit however, contends, Appellant “ * * * claim on Grauel view are dependent claims its the claim and Rogers.” following limi- patentable rendered material features of the Grauel and : tation depicted patents “ in the state- Voelker having means said conduit fol- ment3 Examiner as to the flow rate rate flow related lows: normal so that the discharge means “ * * * melting pro- Grauel shows a discharge means operation of the zone, working and a ve- zone means the conduit duces in 'by effect between the two. range heated locity having minimum Joule turn into per zone is in divided 1to cm second.” mm from several [compartments]. The mid- three zones *6 obviously is clause foregoing The last' fining [compartment] zone dle con- a obtained nothing than result more [compart- nected to the zone [first] of elements the combination the use of ment], adjacent melting which is the words, In other clause. in the first cited zone, by solely submerged stream a function of the the states the last clause * * fining The middle zone *. [com- first. connected to partment] is further [the Since, patentable be- is not first clause the [compartment] zone which is third] art, it is not prior of its conflict cause adjacent working by a the zone like patentable by rendered it can be seen how * * There is clear line stream *. no from use the result obtained stating merely melting a of demarcation between zone structure, or, express the idea dif- melting will fining and a zone. Some function the ferently, by reciting the place inherently in take zone [the first] structure. old essentially [compartment], so question fur- this discuss We hereinafter melting does connect a zone Grauel proper to consider it deem ther. We by fining stream submerged a zone a juncture. at claim. definitions of the within the Examiner and Both Likewise, [compart- zone the [third] in minute all the claims considered board extent!on of is in fact an [the] ment] working functional, purely detail, pointed out also Grauel con- zone them, expressed in limitations or resultant fining zone working a zone to a nects them, applied same and, rejecting the def- by submerged stream within applied func- objections that were short, of the claim. Grauel initions limitation in tional three shows that is old connect it physical structural As to the -combina- submerged streams and two zones tions, rejections are bases of glass in the middle zone heat the appeal as reasons of fol- epitomized and whatever the names effect Joule given follows: zones, to these the method “ * pointed out that in still old. It is also 33 on the small cross Grauel because of and Voelker. Grauel easily paraphrased understandable numerals with- his statement We have indicating drawings. slightly the use avoid * * purely Obviously, foregoing is a rela section of the streams only functional statement and it is the rest of that of the tive to ‘imperme statement claim which inherently tank defines specifica- dimensions of the conduct. currents’, to the ex wandering able to respect than tion is no more definite in that reads latter definition tent that this the claim. shows glass. currents of Voeiker * * melting connected zone Since it was found that the actual struc- which is refining zone channels to patentable tural was not over combination elec heated effect between prior Joule art as shown Grauel trodes; refining being con held, patents, Voeiker by passages to a nected novelty could be claimed on the basis i|: working zone. of the functional statement and that description, proper patentability was not to base general ais slightly paraphrased, the Arbeit and function.
Rogers patents given appear here- For reasons which will later Patent Office Solicitor: in, of claims we defer discussion 31 and until shall the other patent shows two mod- have reviewed
“The Arbeit ifications, paratus Figures 1 and claims. ing directed to furnace in which [n physical feature glass melted in a number of com- emphasizes appellant combination which partments heating- by electric sleeves. penetrating little a wall “one tube Fining is carried out a common extending zone and into said [an glass is
chamber atid withdrawn from adjacent] [of furnace].” passes from chamber. Glass [another] Examiner, the Primary Of this after melting chambers into [the] directing pipes to tubes dis- attention compartment through pipes arranged patents, Rogers closed and Arbeit glass. level of the The de- below the passages for the flow of molten Figures 3 vice of is similar ex- *7 by from chamber to chamber disclosed cept in this the instance Grauel, held in of effect that it would not similarly chamber communicates with involve the of invention substitute tubes working through pipes. the chambers Rogers passages and Arbeit the for * * * device, Sogers “The Grauel. object for its stated ‘to facilitate draw- The statement in the claim which ing liquid of off the contents a crucible to the “lit- relates actual dimension the controlling the flow therefrom.’ reads, propor- being “said tubes tle'tube” particularly designed said to be for glass to the rate withdrawal of tioned recovering use in from metals com- providing from the furnace and a minimum pounds and, thus, inherently would capable preventing flow return flow.” subjected temperatures high, Nothing more definite as to dimension is higher, than those encountered in a specification. in the shown glass Specifically, furnace. the Appellants question presence do not the Figure shows in 1 an inner carbon tube Grauel, patents Kogers, and Arbeit (he material, to conduct the molten pointed the features the being insulating tube encased in ma- an Examiner, but contend that no one of those jackets terial and outer metal patents concept the of a little tube “shows The last clause claim 1 reads: proportioned in the manner described.” “* * * illc cross section of said ours.) (Italics being sufficiently conduct small to en- Upon point board the said: glass stream, sure flowing “ * Appellant through urge seems to said conduct as a result of the furnace, the several lines of the claim re- extraction of the speed sufficiently lating proportioning tube high prevent any a distinguishes the claim from patentably back current through said conduct.” 954 surrounding the conduits lines are means M references. As these glass.
drawn, in them sufficient for transmitted influencing we fail to find do consti- In not positively structure to view this disclosure defined patentable They set be inventive a limitation. think tute adopt expedient insulating the effect a desirable result merely forth in material, refractory basis for the which of itself is not tubes use of patent.” especially in disclosed in- granting of a view of the sulating Rogers’ tube covering of E. depend- stated, claim As has been tempera- covering This view rejected upon claim 37 it was ent expected to. tures encountered -be that were same grounds low on the refractory We do be of material. claim states that plied to claim The patentable importance to not attach preferably the little tube “is carbon graphite lining in the use of the ab- of the state graphite,” but view unusual advan- sence indicated shown, patent- clear that prior art seems tages over disclosed in the carbon upon the nature ability may based not be Rogers.” into the tube. enters material which before us for rejection for of claims rejection of claim is discussed as fol- tribunals reasons stated lows : Office, approved. rejection sustaining “In limitation of “at contains the Claim * * * says that the Board no in- connecting the tanks one little tube” least substituting vention is involved line, being the tube ex- beneath Rogers tube e of the tube d-e exposed the tanks. The ternally between ignores Arbeit. This the invention “being tube as also describes the and concentrates on incidentals. Fun- inside and composed graphite damentally, Rogers e the tube outside.” material on the fractory 'by surrounded d of metal sleeve claim, others so far dis- unlike the non-conducting material d .be- cussed, rely upon does functional tube, being tween end of e ex- patentable. render it It was statement to Now, posed. proposal Primary Examiner as un- rejected is not merely Board to substitute the patentable in view of (a) over Grauel D, (an impos- tube e Arbeit’s tube Rogers, in view (b) Arbeit over fact) task in sible also to recon- Rogers. Rogers struct the tube manner *8 board said: proposed temperature At the *. “ * * graphite hot of a tube filled with mol- references, primary Of .* parts glass, Rogers’ ten metal would appears perti- Arbeit to be the more melt and the electrical insulation would nent and Grauel cumulative. We shall many burn. as in others therefore consider the second stat- glass industry, connected with the is rejection respect which it ed to propose lot easier to reconstructions Examiner’s view that to substitute propose than to reconstructions that D the tubes Arbeit insula- capable being usefully employ- are E Rogers tion covered carbon tube ed.” be obvious. The Examiner points Rogers out that describes that, while It observed notwithstanding the being carbon tube E as quite appellants’ his covered critical nature of discus- insulating sion, material with electrical rath- is a point there failure on their to material, refractory any support er than an ordi- feature essential to the nary insulating 39, electrical material broad combination claim refractory material. also Arbeit is not found the combination disclosed connecting separate art, tubes prior except his cited that there shows is no showing “composed chamber and furnace electrical heat- definite tube
955 began mate- tion Patent Office refractory and ended graphite inside and on the appeal given (notice this latter this court rial on the outside.” As 21, prior limitation, particular November was taken agree 1931) we date, 1, 1953, ren- January effective of Public material in the claim does named 593, Session, Chap. Congress patentable. Law 82nd 2nd der the claim 19, 1952, 950, 792, approved July 66 Stat. any error in We are not convinced of seq., 1 hereinafter refer- U.S.C.A. et § rejection of claim 39. red to as Patent Act of 1952. apparatus and method Both claim 31 The brief on behalf of rejected on the same refer- claim 33 were 30, September 1952, filed in this court The limitation classed ences as claim 1. that of the Patent Office October Solicitor tribunals of the as functional 29, subsequent 1952. Those dates were 31 is found in the conclud- Office 1952, approval of the Patent Act of reading, “Each said conduit clause prior refer- to its effective date. No pipe impermeable wandering ing a small ence was made to it in the briefs that were currents,” limitation classed us, filed before but when the case was claim 33 is found as functional orally 10, argued 1953, March it was refer- glass from reading, “flowing the clause to, being red attention directed to and to submerged streams to zone in small changes made in Section Revised wandering inpermeable to currents Statutes, ed., U.S.C.1946 Sec. zones.” studying While case that the limitations so It is our view argument, if classed the court concluded that it was pearing in claims 31 and even functional, inherently in desirable to hear counsel different jurisdiction might far this court’s limitations in be af from the functional status fected, 1, 37, provision Sec. 4 of Addi sion the claims ment and the passages are novelty, to meet the in the other nals of “Impermeable” with the in our functional statements It does not seem to In the meet the opinion (which the Patent as the latter class of claims the opinions merely claims, tubes is a statutory claims have. description required through which the clearly functional statements importance in the matter of discloses Office), descriptive requirements. in claims 31 and us that course, impermeable vital evidently respective Their is not sufficient their structural ele- dimension, term and recital presence. coincides so-called dimen- tribu- have considered the sented their views oil the Patent Office request *9 required tional lic Law section and to pending Appellants’ tions “ * further Sections for further oral 1, reading: except Stat. patents in ” on such date proceedings counsel 82nd of Patent light granted on such as otherwise responded [the Act] Cong., new May of such U.S.C.A. [January argument Act to the Act 15, 1953, the Solicitor of 2nd to the court’s applications shall presentation. provided. Sess., applica- preceding 1953] apply extent Pub pre- Ch. flow, may impermeability but melted Counsel on both sides seemed to be of velocity dimension, or flow—is —not opinion apply that the statute to this characteristic, “imper- important and instances, jurisdiction in some court’s but itself. meable” defines they disagreed sharply having any as to it in this application case. 31 33 not satisfied that claims areWe rejected on the art cited properly changes in modifications or the lan- being purely as or functional them against guage of R.S. are embodied in Title § allowed. will be 112, 35, which reads: U.S.C. § specification shall contain requires “The a matter dis- other One description prosecution applica- of this written cussion. from ascertained process mak- when such details could be and of the manner and contended in full, clear, specification, and counsel it, using in paragraph of concise, the last substance terms to enable and exact the law 112, supra, Congress declared any person in the art which Sec. to skilled the tribunals to be what counsel believes pertains, is most or which it with courts should and the nearly connected, the Patent Office make and use to long, same, long ago. be have held it to best mode shall set forth contemplated carry- by the inventor of prior to the Obviously, the statutes if ing out his invention. been con- 1952 should have Patent Act of appellant for is under- counsel strued as specification
“The
shall conclude
contend,
the Pat-
particularly
stood
the tribunals of
with one or more
having to
ent
and all the courts
do
pointing
distinctly claiming
Office
out and
erring probably
patent
with
applicant re-
law
been
subject
which the
matter
ever since administration of the
gards invention.
his
system
authorized
the Constitution be-
“An
claim for a com-
element
a
gan.
a
time and
It would be waste of
la-
expressed as means
may
bination
a
history ap-
bor
and recite
to trace
here
specified
step
performing a
or
for
principle of law.
pertaining to this vital
recital
function without the
of struc-
Dalton,
F.2d
ture,
support
In
In re
material,
there-
the case of
or acts
Patents, 953,
C.C.P.A.,
of, and
shall be construed
such claim
structure,
court
law as
corresponding
stated the
follows:
cover
material,
speci-
“
or acts described
$*
*
functions,
Properties,
equivalents thereof.”
fication and
uses,
appear
may
and results
appellant
position
took
structure are not definitions
for
a
defined
Counsel
n
upon
solely
would,
of it and
not be
relied
adopted,
which,
opinion,
if
our
pat-
containing
them
that,
make a
principle
establishing
result in
'
positive
there
set-
para-
entable unless
is a
phraseology
under
last
itself in the
supra,
ting out of
structure
purely
graph,
proper
it is
look to
course,
which,
must be
expressed in claims
functional limitations
functions,
properties,
sponsible
novelty
for
support patentability.
for
uses,
(Italics
and results thereof.”
Office,
The Solicitor for the Patent
ours.)
which,
hand,
position
took
opinion,
adopted, requires
Jolly,
case of In re
172 F.2d
holding
our
if
C.C.P.A.,
Patents,
in cases
limi-
purely
where
functional
said:
tations constitute
sole matter relied
“ *
novelty,
phraseology
course,
true,
It is
paragraph, supra,
application,
last
has no
validity
where the
claim which has
governed
matter
first
questioned,
granted
been
paragraphs, supra,
repeat
second
which
frequently
proper
interpret
becomes
provisions
substance
48S8
R.S. §
by looking
specifica-
the claim
full,
description
clear, concise,
“in such
tion,
patent,
where
seeks a
any person
exact terms as to enable
definitely
very
requires that he
statute
it pertains,
skilled
the art to
point
particularly
shall
dis-
out and
nearly connected,
which it most
claim that which he claims to be
tinctly
make and use the same”.
discovery.
his
No cita-
invention
authority
necessary
sup-
tion of
fact,
appellant
As a matter of
counsel for
*10
port
the familiar
of
rule that
have argued
was understood
us to
that a
is the measure
(Ital-
invention.”
interpretation
of
of the
correct
laws
here.)
ics new
1, 1953,
January
existed before
However,
infringement
have rendered it unnecessary
to in-
even in an
case
specific
validity
patent
details of
of
granted
clude
structure
claims
where
alone,
article,
machine,
existing
process,
standing
or
involved,
specification,
description
sufficient
and that a
the invention
of
as a
ays
taken
may
alv
not
large
must in
is old
set out what
of structure.
definition
understanding
in order
to facilitate
Supreme
of
Court
of the
The decision
requires
new,
Congress
of what
case of General
the United States
applicant
specific
‘a distinct and
Corp.,
Appliance
Co.4 v. Wabash
Electric
new,
statement of what he claims to be
899, 901, 82 L.
364, 366, 58 S.Ct.
304 U.S.
and to be his invention.’ Merrill v.
as a
1102, was,
is, recognized
and
Ed.
Ycomaus,
568, 570,
24 L.Ed.
U.S.
certain
important restatement
and
lucid
Patents,
whether basic or
patents.
principles appertaining
legal
improvements,
comply accurately
must
decision
following from the
quote the
We
precisely
statutory
with the
re
apropos in
peculiarly
is deemed
because it
quirement as to
invention or
before us now:
the case
discovery.”
(Italics supplied.)
question
this Court
before
“The
appel-
the instant
counsel for
in suit.
validity
the claims
difficulty
lants have referred to the
de-
typical,
as fol-
reads
which
Claim
scribing
except by
claimed inven lion
electric in-
‘25.
filament for
lows :
A
stating
difficulty ap-
its function. That
devices,
lamps or other
candescent
present
pears
alleged
been
substantially
tungsten and
composed
case, supra,
General Electric
Su-
up mainly
number
com-
of a
made
preme
following concerning
Court
paratively large grains of such size
it:
prevent substantial
contour as to
offsetting during
Appeals
a normal
“The
sagging and
Circuit Court of
be-
commercially
suggested
life for
useful
such a
low
that ‘In view of
diffi-
or
culty,
impossibility,
describing
if
lamp
other device.’
not
or
adequately
microscopic
a number of
inquire
need
whether Pacz
“We
shapes
heterogeneous
crystals,
whether
exhibited
his
be that Pacz
best dis-
made the
anticipated.
product was
The claim is
**
possible
closure
But
[t
face,
invalid on ils
to make
fails
Congress requires,
protection
for the
a disclosure
to sat
sufficiently definite
public,
that the inventor set out
isfy
requirements
R.S. §
patent;
a definite limitation
his
33, 35
U.S.C.
U.S.C.A.
33. That
§
§
condition must be satisfied
before
requires
applicant for
section
that an
granted.
difficulty
xnonoply is
patent
description
file
of his
a written
making adequate description may have
full,
‘in such
discovery
invention
bearing
sufficiency
on the
some
concise,
clear,
and exact
terms as to
description attempted, but
it cannot
any person
enable
skilled
the art or
justify
describing
a claim
nothing new
**
appertains
science to
except perhaps in functional terms.
make, construct, compound,
use
may be doubted whether one who dis-
same;
partic
and he shall
product
covers or invents a
he knows
ularly point
distinctly
impossible
to be new will ever find it
part,
improvement, or
combination
aspect
novelty.”
to describe some
of its
which he
as his
invention or
discovery.’
foregoing decisions,
course,
mayWe
assume that Pacz
sufficiently informed
rendered before the
those skilled
Patent Act
to make
perfectly
the art how
and use his
was enacted. We think it is
fila
clear
long
The statute has
them and a
ment.
another com
that under
line of similar
Recognizing
decisions,
appealed
mand.
that most
none
inven
claims represent
improvements
us, except
tions
fore
numbers
proper-
some
Company
assignee
General Electric
there involved
which had been
issued
Pacz.
*11
diminu-
to
Solicitor filed a “Motion to correct
prior
ly
been allowed
have
could
inserting
to
therein the
Act,
so,
come
tion of the record”
and
passage of that
Primary
Act
Examiner’s
question
Statement.
of whether
the ultimate
pure-
law so
has altered
was
It
obvious that the statement
nec-
1, 37
in claims
ly
limitations
functional
essary
case on the
to consideration of the
(with
38),
dependent claim
and
(with its
merits,
appellants
and
should have caused
44, 45,
46),
and
claims
dependent
its
included
in the record.
it to
require-
meeting
statutory
be taken as
The costs incident to the motion to cor-
definiteness.
ments of
appellants.
diminution
rect
will be taxed to
neces-
changes
phraseology
only
in
The
Modified.
in
with
sary
considered
connection
to be
in the last
question are
found
those
'O’CONNELL,
Judge
(concurring in
112, supra.
It seems
paragraph
Sec.
part,
dissenting
part).
and
that a
to us
construction
obvious
for,
appellant contends
paragraph, such as
agree
I
that the
the Board of
decision of
wholly
with
inconsistent
render
Appeals should be affirmed as to the re-
which, like
paragraphs
and second
the first
1,
39,
jection
37,
of claims
38 and
and re-
4888,
explicit
manda-
and
former R.S. §
as to
versed
claims 31 and 33.
ex-
description
requiring a written
tory
43, 44,
The disallowance
of claims
“full, clear,
and exact
pressed in
concise
and 46 should
be reversed. The
likewise
forth
specification,
so set
in the
and
terms”
gist of the
all
furnaces
de-
In the
instant
the claims.
shapes
pro-
of their
rates
gardless
and
appellants’ specification
given
scriptions
duction,
prevention by
is based
functional
definite than the
more
are no
employment
flow,
velocity,
or rate of
claims,
the latter are
and
statements
preventing
back
the effective means
requirements of
meet
not sufficient
The
glass from
to another.
flow of
the Act.
patentability
principle
of the
involved was
attempt
unnecessary
for us
It is
by the
acknowledged in
Patent Office
112, su-
complete construction of Section
noted in
of claim 42. As
allowance
that,
say
pra,
It is
at
time.
sufficient
petition
pellants’
reconsideration
application
opinion, it
in our
no
decision:
board’s
this case.
facts of
clearly
“The invention can be
stated
applicants
in terms
velocities as
to claims 11
appeal is dismissed as
The
done, and
the Examiner has
have
12,
of the Board
decision
impossible
approved, but it is
to tran-
as to
modified.
is affirmed
Appeals is
46;
1, 37, 38,
the invention into different terms
slate
‘positive
structure’.”
31 and 33.
reversed as
my
Appeal
It is
conviction that
from the decision
The Notice
complied
requirements
Appeals
court was
of the
Board of
to this
of the
17, patent
law. This
Patent
court has
Office December
established
filed
inventor,
line of
that an
the record
decisions
as certified
advantageous
pro-
of Patents
filed
the for
reasonable
Commissioner
31,.
January
of the
of this court
tection
invention defined
an al-
officeof the Clerk
claims,
printed copies
claim or
is entitled
The
record lowed
to a
claims,
3,1952.
number
July
limited
of additional
filed
word-
differently
containing
al-
elements
ed.
record
certified
the Commis-
claims,
do not
lowed
affect
include
did not
sioner
the official Statement
patentability
one claim over another.
July 10,
(dated
Examine^
underlying
1950), made in
reason for
rule is
conformity with the Rules
Office,
appeal
activities of
curb not
those en
pirating patented
Appeals,
from his decision
the Board
gaged
inventions but
remove,
and,
under the
on October
the Patent Office
assurance of
also
*12
misgivings
appears
to me that
the Patent
adequate patent protection,
also
develop among
give appropriate
in
rea-
Office has failed to
could
otherwise
rejection
last
capital
effort to sons for the
of the claims
their
vestors who risk
Lee,
public,
In re
F.2d
mentioned.
make inventions available
C.C.P.A.,
752;
C.C.P.A., Patents,
Franz,
Pat
International
re
190 F.2d
ents,
Corp.
Kingsland,
1206, 1211,
Electric
v.
and authorities
therein Standard
U.S.App.D.C.