Application of Carl F. Swinehart and Marko Sfiligoj

58 COPA Application of Carl F. SWINEHART and Sfiligo j.

Marko Appeal No. 8396.

United States Court of Customs Appeals. and Patent

April

Lane, J., concurring opinion filed Almond, opin- J., and filed dissented

ion. Hazzard, Lucas, at- P. James A. John Cleveland, Ohio,

torneys record, appellant.

211 C., crystalline capable of trans- Cochran, Washington, D. bodies “are Wm. S. mitting light,” especially in the collimated Patents. Jo- of for the Commissioner C., range. Washington, Nakamura, D. wave seph F. of counsel. appealed recites: claim The matter, composition of

24. newA ALMOND, rays RICH, BALDWIN re- to infra-red Before and NEWMAN, Judges, LANE, shock, and to thermal the same and sistant Court, Judge, being compo- Customs melt two United States a solidified of designation. present proportion approxi- sitting nents compo- mately eutectic, one said of Judge. BALDWIN, being being and the other nents BaF2 appeal from the decision This CaF2. Appeals, of adhered Office Board According brief, to ex their “[t]he reconsideration, which affirmed appellants’ point act of between appellants’ of claim 24 the rejection composition and of failing re application to meet as transparency.”2 art is The quirements 35 U.S.C. § two other reversed board THE GROUNDS FOR REJECTION claims. rejected “for claim The examiner failing particularly dis- out and

THE INVENTION tinctly required claim the His reasons in 35 U.S.C. 112.” asserted appealed subject matter of the as follows: matter essen- claim is a tially up and fluoride of barium 24 is functional and Claim fails approximately eutec- calcium fluoride Ap- properly point out invention. indicates, proportions. The record tic page plicants out on “[ejutectic confirm, appellants and specification, 24-27 that when lines compositions fluoride cal- of barium components merely are fused are cium well known fluoride integral body body, cast as an said However, appellants are art.” reciting opaque. parently that when the first discover rays” “transparent is thus crystalline compo- of these two forms * * * improperly functional. together nents melted eutectic are should also be noted that this claim proportion and then “con- resolidified require phase. does not more than one techniques,” crystal-growing ventional agreed, adding: The board crystalline multi-phase there results rejected improp- body Claim stands an intimate ma- characterized erly distinguishes crystals, which, large, trix un- visible unsatisfactory over material materials, like appellants’ figure merely cleave, thermal is resistant shock in- impact term approaches maximum densi- agree rays.” Ex- ty frared composition. In addi- for the overall transparen- respect, tion, allegedly unexpectedly, in this these aminer agree 314,952, in the claim before 1. Serial No. filed aeem to October 9. “Crystalline sense in its less common is used the term Materials.” any specified “pervious form “transparent", term We observe that Clearly im- the most radiation.” primary dictionary as indicated defining portant characteristic “having property definition sense, word, either which is the same light transmitting appreciable without light “without transmitted beyond scattering lying that bodies so scattering.” appreciable Ref: Webster’s entirely visible,” generally taken to (6 Dictionary Third New International to those waves which visi- refer 1969). eye. Co., parties to the here & C Merriam ble human cy cannot re- of the claimed material tive whether claim 24 satisfies the inherent, quirements of 35 also an characteristic treated as leading analysis up

property, fact in view of the irrelevant Example Y that determination. (figure 3) property, yet is lacks this We take characterization appel- the same materials as made of “functional”, by as used the Patent Of * * * Example I. This lants’ argued by parties, to fice and the indi by type not covered a claim is the nothing fact cate more than the that an proper pursuant limitation functional being attempt to define some language 112, the to 35 U.S.C. by thing case, composition) (in this a question not does define means or a by it does rather than what it ingredient. distinguishing step, aor (as by specific evidenced structure or view, material, example). In our OPINION nothing intrinsically wrong there is with fairly from the It is safe to conclude drafting technique the of such a use language quoted that the examin- above patent claims.3 Indeed we have even er and use of the board considered the recognized past practical in the the ne language, se, functional to render cessity for the use of functional lan Appellants the instant indefinite. Halleck, guage. See, example, In re apparently conceded that have “function- 911, 421 F.2d 57 (1970). C.C.P.A. 954 ality” ordinarily equated with indefi- recognize prior cases have hint They argue strenuously, niteness. ever, how- possible ed at a distinction this area language disputed the here criticality par depending on the necessarily to a function refer language ticular at such which the recited or to de- might study appear.4 Our these cas phys- sired result rather it defines a us, however, any es has satisfied produced property. ical On the record concern over the use of functional lan Office, therefore, in the it would guage novelty” “point at the so-called appear single issue us is before largely ap stems that an the fear disputed language whether is in fact plicant distinguish attempt over will If “functional”. this issue deter- by emphasizing reference disclosure minative, appellants fail since we property or function not be language doubt that have no such thereby mentioned the reference and “functional” at least insofar as we inter- subject assert that his claimed matter is meaning pret any of that term. In only novel. Such concern is not irrele event, for reasons will become vant, misplaced. place, it In first opinion clear as this we find progresses, elementary it is mere recitation only not issue be not determina- newly prop- of a discovered function or 3. We think our views are in herein accord require tion denial of Congress those as indicated solely type a claim because language third subject 35 language used define the matter Note also the discussion § patent protection sought. for which and authorities cited on this in In Fisher, Insofar In re Fuetterer, 259, re 319 F.2d 50 C.C.P.A. 948, (1962), 307 F.2d 1025 C.C.P.A. (1963). cited and relied the Patent on Of- fice here inconsistent above solicitor, appears, 4. The it would also treat longer statement, it will no be followed. question of what defined as Any containing whether doubt lan- important. distinguishes He a ease relied guage as that in the Fisher case used by appellants as “irrelevant” since the patentable rest would be was laid to last permitted term dealt with term this court the Pat- when reversed proportions novel where- position ent Fisher Office when the question as here the is “whether plication before us a second came precisely in structure can be defined in Fisher, 833, wholly Nevertheless, In re time. See terms.” any proposi- (1970). we are to see unable merit 57 C.C.P.A. 1099 by things justified inherently possessed disclosure. erty, Ap- art, claim Cf. General Electric Co. v. does not cause a Wabash distinguish pliance Corp., 364, things U.S. 58 S.Ct. to those drawn (1938). Additionally, 82 L.Ed.2d where over recognized reason to believe is now Patent Office stemming requirements from the limitation asserted a functional establishing novelty in the first 35 U.S.C. See critical for fact, Robins, may, In subject re 429 F.2d 57 C.C.P.A. matter (1970); Borkowski, 422 F.2d re characteristic inherent an require authority re art, 57 C.C.P.A. 946 Cf. In possesses supra. subject Halleck, prove The merits applicant prior art “functional” in the claim be- matter shown re- fore must be tested possess characteristic does requirements these alone. two lied on. may terminology “Functional” sup- no are convinced that there is By quite render a claim broad. own holdings of port, in actual either the employing literal terms a claim lan statute, the for cases or the guage any and all covers embodiments here, proposition, put that forward perform the recited function. Le language, in and of it- “functional” exists, gitimate properly concern often self, improper. We renders a claim ' therefore, scope whether the decision have also found no protection thereby defined is warranted any or other this court which by scope the of enablement indicated and is other that there said hold provided by description the contained objecting ground to a claim for specification. say, the This is not any language, “functional” the basis however, every containing that claim otherwise, beyond already what is or terminology In “functional” is broad. by provisions the of 35 sanctioned U.S. deed, many it obvious cases will be 112.5 C. § only very group objects limited Assuming applicant category. that an is will within intended fall the claiming regards here, appears he his inven the Such case tion, reality only any by there are in two basic dowe not sense concern Pat the grounds claiming rejecting appellants for a claim under ent Office are language they 112. The first is that the used more than are to claim un entitled enough precise paragraph definite der the first of section provide therefore, not, indication of the clear-cut We need consider whether scope subject by any problems appealed matter the there embraced are arising paragraph. finds claim. its basis under that It arguments the par second the the of section clear that the by solely rationale which was discussed ties concerned whether recently Hammack, language disputed in In re F.2d to define serves subject protection sec C.C.P.A. 1225 matter sought language par ond is with the distinctness and so broad potential ticularity required it causes the claim to have sec scope beyond protection ond that which of section 112. Compare following quoted employing expressions from the in Locklin to define the claimed invention are v. Switzer Bros., Inc., (N.D. U.S.P.Q. se invalid. In all of the cases relied Cal., 1959), (9th upon were dis- aff’d Plaintiff the claims Cir. 1961): particular approved under because Plaintiffs cite a use of functional ex- multitude of cases circumstances support argument description pressions func- either left this expression vague made the tional invalidates invention too or the claims. But, none of cases than the invention. these holds claim broader Office, it brief for the Patent Such is conceded to figures repro- time that novel. true that asserted first duced in indicate appellants’ the limits degree transparency depen- varies clearly expression are not fixed ding on such factors as the conditions rays.” employed crystal, producing defined, expression in fact is not crystal particu- thickness appellants’ appear, written length of lar wave trans- radiation description of their invention. However, mitted. in all cases a sub- that, points their out The solicitor stantial amount infrared radiation specification, appellants demonstrate is transmitted. We do not read setting aspect of their invention novel pellants’ suggesting disclosure as depicting percent- out three charts only degrees transparency certain age wavelength) (as of in- a function of comprehended infrared are within the through radiation frared transmitted teaching given. It follows that eutec- 5mm thick “window” made light when claim read in components tic recit- purports of that disclosure the limits ed in the chart indicates claim. One sufficiently to define are made clear. that a fused and mixture of the two cast The decision of the board reversed. components “substantially Reversed. zero” collimated the infrared range. The other two charts indicate LANE, Judge (concurring). “grown that when the fused mixture is crystal ingot”, to form a windows I concur in the result reached up approximately therefrom transmit to principal opinion. do not While I neces- depending of infrared radiation 80% sarily disagree with the conclusions particular wavelength radia- of the functionality therein, stated I find about appear tion. What charts also to those unnecessary in this to make such case indicate, however, that the conditions conclusions. may preparing product used in af- Taking the third percentage fect to some extent both the section a defi- 112 as transmission and the band of wave- type of nition of the “functional” ex- length argues transmitted. The solicitor long pressions which have trouble- been “transparency a de- is matter of law, patent in I find that ex- such gree” complains that because pressions those recite “a pro- “less favorable conditions” which performing step speci- or means product duce a spe- less effective are not fied function the recital of without cifically specification disclosed in structure, material, support or acts prod- one would not know whether a example thereof.” An is meant what “transparent rays”, uct is to infrared specified “a function” found in the infringe and therefore would opinion Supreme Court’s in General claims, product if the less Appliance Corp., Electric v.Co. Wabash Fig. than shown 899, 82 304 U.S. 58 S.Ct. L.Ed.2d Accepting argument case, offsetting the solicitor’s an attack on sagging the definiteness of dis- of filaments in incandescent puted language us, lamps long problem the claim had in the before disagree we must nevertheless art. The there described by regu- remedy problems rendered indefinite lan- to those how guage. lating grains The shape record before us establishes the size compositions making art up of material the filaments. substan- tially opaque rays. Appel- following The claims contained ex- produced lants pression, upon have which was relied nov- substantially “grains rays. elty: to such such contour size and pér- sagging it is a kind which prevent cases but substantial during off-setting or com- a normal mftted. lamp.” mercially for such a useful life expressions all true that court at 901. at 58 S.Ct. Id. otherwise, must be claims, or stated: satisfy the second order definite am 112. I of U.S.C. § or of effect A of terms limited use principal agreement with accurately result, the es- define is rea- expression here issue product qualities one of a sential sonably definite. art, in- in some skilled permissible desir- even stances be able, characteristic essential ALMOND, Judge (dissenting). distinguished novelty may from not be majori- everything agree in the I tendency solely by art the old ty opinion except the conclusion that remedy problems art met in the phrase pellants’ use patent. rays” does in claim 34 infra-red majority court claim indefinite. The at 903. make the at 58 S.Ct. Id. “transparent” as patent apparently define held, law then under the

thus “substantially transparent” effect, or as trans- kinds of that certain of in- impermissible mitting amount expressions at substantial “a necessary specifically, novelty, those frared radiation.” merely accepting dictionary definition function is the recited wherein “transmitting “opposed light” problem or art. the solution of question of opaque” raise law that all function- It cannot be mere “trans- word is in when used condemned al terms are distinguish distinguish from parent” to the claim a claimed invention appel- compositions which law, and it is is the If this being only lants have characterized “substantially” conclusion, many logical carried to (indicating opaque adjectives con- and nouns transmitted). they functional, define since demned example, reading effect. For Even limitation “substan of use or in terms claim, something tially transparent” and to close into the used “door” object questionable propriety since a open passageway; a “nail” is an given pieces material to- the broadest inter claim should be hold two used to gether; during pretation prosecution inca- reasonable material one a “black” Prater, re 56 C. (see reflecting light. pable It is visible my (1969)), C.P.A. functionality at apparent me that if definite. When the claim make novelty point se ever composition stop does a eutectic rejecting claims, it is not al- “substantially opaque” and become “sub ways so. stantially transparent”? The mere fact recited in of function no definite answer to this The kind there is product question claim before that the claim is means me us— rays physical characteris- indefinite. The second of 35 —is requires matter claimed. the claim tic of the suggested Moreover, .par more no one out the more defining composi- ticularity here, way of than and this was done distinct tion, although argued significant especially it has been exact “the might degree transparency between precisely I conclude and that more defined. claimed no; transparency.” here is not the kind of Since the recitation functionality condemned earlier clear and bounds have set metes forth, appears to me that the solicitor right stating that:

was * * * lower limits product are not fixed percent band of transmission transmitted,

wave-lengths one product not know whether rays”, claims, infringe therefore would product

if less infrared Fig.

than is shown would, therefore,

I affirm the decision

the board. (Jessup Beecher), D. Keith Beecher & Angeles, Cal., attorney record,

Los appellant. C., Washington, Cochran, S. Wm. D. 58 CCPA Application of James D. WILSON. for the Commissioner of Lu- Patents. Appeal Parker, Washington, C., No. 8465. trelle F. D. counsel. United States Court of Customs Appeals. and Patent RICH, ALMOND, Before BALDWIN April LANE, Judges, RE, Judge, Court, sitting

United States Customs designation. Judge.

BALDWIN, appeal from the decision of Appeals the Patent Office Board of af- firming examiner’s appellant’s claims and 4 plication obvious view No allowed. THE INVENTION Appellant display apparatus discloses dolly sup- adapted form of a port bakery receptacles stack for products position in either a horizontal position transport inclined or in an easy display. The struc- access dolly adequately illustrated ture of the 9,1966, “Display May Apparatus”. 548,693, filed No. Serial

Case Details

Case Name: Application of Carl F. Swinehart and Marko Sfiligoj

Court Name: Court of Customs and Patent Appeals

Date Published: Apr 1, 1971

Citation: 439 F.2d 210

Docket Number: Patent Appeal 8396

Court Abbreviation: C.C.P.A.