*1 49 CCPA Application Constantin CHILOWSKY. Appeal
Patent No. 6817.
United States Court of Customs Appeals. and Patent
Aug. 20, 1962. Seward, City W. Saxton York New (Robert Dennison, Washington, C., I. D. counsel), appellant. for Moore, Washington, Clarence W. D. C. (Joseph Schimmel, Washington, C., of D.
counsel), for the Commissioner of Pat- ents. Judge, WORLEY,
Before Chief SMITH, Judges, RICH and Associate Judge WILLIAM H. KIRKPATR ICK*
RICH, Judge. 20, years ago,
Over 17 on December 1944, Chilowsky patent Constantin filed 568,986, appli- Ser. No. bar, Apparatus cation at for “Method and for Extraction and Utilization of the Energy Resulting Decompo- from Atomic Compounds.” sition of Uranium and its years ago, January 1956, 20, Over 6 court, argument, after a second oral reversed a decision of the Patent Office Appeals Board of which held the claims application insufficient, in this same in- inoperative on an definite based and remanded the closure case because tribunals “the Patent Office have not suf- ficiently explained for their reasons rejection.”1 * Judge Chilowsky United States Senior District and remand ease was Pennsylvania, specifically the Eastern had District the Patent Office designated rejection place participate grounds stated its but in- rejection Judge O’CONNELL, pursuant provi- made a “blanket stead based 294(d), comparatively development sions Section Title recent on the United difficulty States Code. has experienced been commer- Chilowsky, 1. In re 229 F.2d certainly CCPA devices.” has now deficiency. basis for court’s reversal remedied
909 (2) manner (1) invention; Novem- of appeal The is from instant invention; making process and of 30, Patent Office of the ber 1960 decision using process affirming (3) of and exam- and the manner Appeals Board of 49-60,2 invention; the best rejection es- and that iner’s of claims by of contemplated inventor mode sence of which is: set carrying shall be his invention out “ * * * the disclosure [I] ex- portion of the forth. The second one skilled is insufficient to enable designated rejection, “II” aminer’s filing to at the time of the art point, related above, puts fifth in issue a device, operative with- construct an namely, of the four, state to the first doing carrying undue an out in so ap- knowledge of time art at the of the * * * experimentation. burden of invention, as- shall pellant’s which we to en- needed that information [II] filing date. sume persons art in the able skilled operate nuclear re- construct and is, of invention is the What using pro- applicant’s broad actor claims, course, by appellant’s determined posals time at the was not available specification light read in the of what his filing, amount of and that an undue subject matter which indicates to experimentation would be of typical are: claims he has invented. Two sup- persons to quired to enable such extracting “52. method A missing ply details which from a neutron reaction heat comprises: capable this disclosure to convert conducting neutron said producing a useful result.” con- uranium fuel reaction with liquid metal selected primarily one tained case is The issue in this lead, consisting of equally group appeal are from the on of law. All claims alloys bismuth, radio-lead, and statutory by basis affected it. circulating least a rejection first and clearly includes the thereof fuel contained part said uranium paragraph 112 the last and 35 U.S.C. § liquid reac- initial between in said metal 132.3 sentence of 35 § U.S.C. exchange zone, rejection, and a heat des- tion zone thereby portion of the examiner’s said heat from to extract ignated above, all four puts in issue “I” fuel. and uranium liquid metal said namely, 112, paragraph requirements of contain, specification shall apparatus ex- An for the “53. full, clear, concise and exact terms such of the ther- and utilization traction any person in the art skilled as to enable resulting energy from atomic mic pertains, or with the invention comprises: decomposition nearly connected, to decomposition most chamber an adapted liquid it, description fuel contain a also a written and use make 49-53, shall contain a writ- 52 and 53 are of which 2. Claims by description appeared exemplary, and of ten making 26, 1957, August manner dated amendments full, clear, concise, subsequent it, 21, 1957, Ex- in such to the October any person Rejection February 27, to enable terms Final exact aminer’s pertains, to which it inserted 54-60 were Claims skilled nearly 1959, 12, most con- which it for the dated June amendment same, nected, instituting purpose to make and use the an interference contemplat- 4, 5, 7, 9, 1, 2, the best mode and 11 of set forth shall claims with patent carrying February 24, 2,875,143 inventor of out his issued ed No. 16, July filed an invention.” Froman, assignor D. K. of 35 132 § last sentence U.S.C. Energy Commis- Atomic United States reads: sion. shall introduce “No amendment paragraph into the disclosure of the inven- matter 112 § 3. The first U.S.C. tion.” reads: serving through single as a heat transfer medium exchanger being comprising (a) (b) through impeller uranium and moved the same group metal selected from the and a central reaction chamber. consisting lead, radio-lead, bis- paragraphs Two specifi- *3 alloys thereof, muth and and com- discussing aspects cation of his in- municating with said atomic de- particular vention which are of concern composition chamber, (2) a heat ex- reproduced amplified us are below and changer adapted to at least remove making in footnotes additional references portion generated a the heat specification. to the decomposition said chamber atomic “According present inven- by decomposition, atomic said heat tion, the active mass which can un- being exchanger carried to heat said dergo decomposition, atomic formed by said fuel substantially from uranium or its compounds light elements, and Simply stated, as- the instant invention4 suring neutrons, formation of apparatus is direccted to method extracting slow for very reduced to energy a state of utilizing fine sub- sup- thermal 5 resulting suspended division and is from nuclear fission carried porting liquid intimately or liquid out in a molten medium. metal mixed liquid supporting circulating therewith. Such a The method also includes liquid preferably liquid through can be metal medium or into metal, having exchanger capacity little ab- heat for where the heat is ex- sorbing neutrons; instance, drawing figures for tracted for use. Eleven alloy lead proposed bismuth. It forms disclose several embodiments suspension with the appellant’s apparatus. fine a metallic ones Various liquid or quasi-liquid, one, two, of these will embodiments have or ‘special be liquid’. hereinafter four called reaction chambers. The heat ex- suspension changers formed, can placed respect for are so instance, of uranium liquid these reaction carbide with chambers that the possible intermittently metal addition up medium of excess of moves down, by geyser-like heavy carbon in the form of carbides force of its single boiling, respect other own exchanger, metals.6 to a heat through or and forth back of transmission of exchangers between two or more re- heat of decomposition the atomic action chambers. One embodiment con- ‘special consists liquid’, in that this templates liquid that the metal medium placed ain condition for atomic de- continuously will move composition, around and is stabilized at a suit- appellant proposed compositions note that We lias disclosed “spe- 6. Two of tlie species liquid” given; they of Ms various invention. Pursu- (per- cial are requirement by centages weight) ant to an examiner’s : 12, 1950, appellant, election dated June (UO2) Uranium carbide 27%. 12, 1956, Molybdenum on December made Ms election. di-carbide Nothing (MoC2) in the record before us indicates 6% appeal Supporting liquid whether the time of this re- (lead or quirement still radio-lead) was effect or whether 67% specific species claims are (U) Uranium 20% generic. Accordingly, Molybdenum invention di-carbide discussing appellant’s (MoC2) we shall 15% being generic claims as Supporting liquid treat dis- 65% only aspects significance those cuss of the disclosure propor- As to the of these tions, which relate to all of further states species. (our emphasis) closed : proportion molybdenum di- degree 5. The actual of subdivision is stat- may vai-y relatively carbide within a ed as “of the order of .01 range mm. to (for instance, wide from 0 to 12% size, division, mm. in .001 but a finer composition) if depending the first obtainable, would also be suitable.” total accumulated amount a heat ex quanti- forms at time the same temperature small able changer, larger,11 effi very rapidly9 much more cadmium,8 is ties convenient, which ex decomposition cient and by the atomic heated changer place transfer temperature take and is will to this critical *** energy de the heat of the atomic projected10 outside then ‘spe composition accumulated was heat- where it container narrow liquid liquid’, decomposition to another into atomic ed through larger passing ex- through fluid12 container decomposition special that stopped. will ratio which this quantity minimum exceeds the amount *4 necessary Appellant disposes concentration) the (mass to cadmium and continuously cooling decomposition. fluid circulates As this the atomic start unity walls. in duets in the reaction chamber’s the is reduced toward [sic] ration adjacent ingredients as proportions become The boron screen is disclosed of the of the gaseous cadmium screen and consists critical. more liquid placed boron in ducts suspended proportion ma- of the The surrounding of reac- the inner wall the liquid supporting may UJce- in the terial " By removing tion chamber. the boron both of be vaiñed a function wise as respective tubes, from mass of the its the temperature of to and the be reached the chamber, being “of reaction disclosed as suspended particles, the of the size range cm.,” steel of the order of 50 outside normally being and between 20% of the tubes serve a is allowed to “as by weight The re- total. 45% cover, reflecting and the neutrons liquid” “special quirement must the that mass, pi-ojecting into the them back active mobility liquid ais fac- a sufficient have reducing the loss the neutrons thus upper determining limit of the tor result, outside. This will as is particles provision hav- range, the and reducing known, in the critical radius and raise this ing tend to size will minimum a minimal to the value of the ci’itical mass proportion of sus- upper As the limit. above indicated.” the order size of pended reduced the is material may particles be increased. the Very rapidly appears to 9. be defined in the ap- paragraphs there two above In the pear specification “approximately as .001 possible be least six to us a second.” variables. “Projected” shooting 10. refers “special liquid” throwing of the as may temperature be from “below 7. foam from reaction chamber that exceeding “substantially C.” to 1000° place appellant’s takes some C.” 2000° embodiments, which occurs due to closed pressure build-up gen- vapor “very that is Appellant that small and discloses liquid quantities metal as is heated and erated precise cadmium or other vaporizes. may absorbing materials” slow-neutron liquid” placed “special in the itself be size of the “narrow 11. As to the relative liquid’ ‘special as circulates “where container,” in which nuclear fission is When “stabilization at a composition place, takes and “heat appellant temperature” higher states specification appellant’s exchanger,” * * * preferable “It is states: completely liquid be free all should * * * the volume of this heat ex- stabilizing of such materials and traces changer can be instance 100 times by sepa- be the latter should carried larger decomposi- than the volume of the boron] and [cadmium rate screens suita- launching tion and chamber. bly disposed [in the walls of “launching”, As adjacent special liq- chamber] action system represents says: “The described may what uid.” As to precise” be a “small and cannon, shooting very actually a at a quantity cadmium, it velocity (several meters or dozens low stated: per second) a metallic mass of of meters * * * The amount of cadmium tons.” 30 to 50 that, temperature must be at a such upper limit, may water, or, ap- chosen as the critical fluid 12. Such as proportion pellant cadmium will absorb such states— * * * circulating spe- preferable the neut2-ons between the it to sub- * * * liquid container for the water metal which stitute changer. incorporating special liquid, after his discussion of transmitting its heat heat deficiencies of dis exchanger [opinion]. closure in to another fluid their decision again major cooled, thus collected defects in the decom- summarized in narrow container where the position the decision (1) (or place in an- for en failure to teach the need has taken undergo riching container) uranium other similar natural isotope, [1(a)] decomposition, U285 a new atomic indicate heating, projection to the and new amount of enrichment exchanger.” operative proc in order to obtain an (2) power; ess useful power allegedly As which can failure to teach the critical mass invention, ap- be achieved pellant’s pro of uranium required for a heat specification says “relates ducing reaction; failure to * * * particularly to the construction particu geometry, teach the critical operation decomposi- larly particle size; as to the uranium plant,” power tion is stated: propor failure to disclose a present based on a *5 tion of carbon to uranium sufficient principle substantially different ly high permit maintaining to the reactors], fixed fuel has for [from chain reaction.” * * object its the *: [inter alia] Appellant general approaches has two “Extraction or removal en- of the arguing position in that this of the Pat- ergy of the order one million HP First, appellant ent is Office untenable. plant.” power and over from a unit contends that no disclosure of to how foregoing, omitting many while produce the pro- reaction nuclear which details, should serve to indicate the na- power duces the desired in the form of ture of the invention and the disclosure heat already is because the art of it. that; second, knew how do the dis- Office, position adequate Patent as is in it closure “any fact to enable 1955, person in in the earlier in prac- was heard is skilled art” to compliance that the disclosure not in tice the invention. 112, fatally with section it is legal The asserted basis of the details, spared fective. It has no in the approach phrase first is a out of Webster opinion 30-page of a course board in Higgins al., Loom 580, v.Co. et 105 U.S. why. explaining We see no need to re- 586, 1177, ap 26 L.Ed. from which case again. cite all them We shall content pellant quotes “principle” which he stating general way ourselves with in a apply, should thinks he calls they why appellant’s what are and ar- Higgins rule,” saying v. “Webster “the guments persuaded have not us that the ‘may begin applicant at point where legal conclusion of ultimate the Patent begins, his invention and describe what wrong. Office tribunals has made he that is and what it re The solicitor’s brief thus summarizes places old. of the That which is common (omitting position the Patent Office ref- known is as if well it were written record): erences patent out drawings.’ delineated in the ” agreed Appeals quotation supposed Board or holding with the examiner in facts his rule fails fit the either here as point appellant’s invention, insuffi where was begins it, comply require cient to with or he describes as to what 112, accepting Appel ments 35 U.S.C. was “common well known.” begin position own, examiner’s lant an as their did old well- ab!y potassium exchanger alloys, or is heated heat and is their sodium separate in a then circulated conducted to boiler be closed circuit * * metal, exchanger prefer- through steam. Such a the heat *. invented, from on reactor, to have him, incumbent was known nuclear use of under section how which he make tell decided to type it, way. began principles patent of build law novel He a new under involving elementary require too distribution discussion. reactor fuel, his uranium molten metal of reading ap Chilowsky own Our “spe- mixture solution plication dis of record literature appears that reactors closing the time state of general type be came to later it was filed conclu leads us to the same “homogeneous His reactors.” known as sion, namely, Chilowsky’s invention argued attorneys amendment in an consisted of a new kind of nuclear re homogeneous reactor “As to the coupled actor with several ideas for heat applicant pioneer.” was a Dr. method Borst, exchanger arrangements to used in opin- on whose learned affiant conjunction Appellant’s with it. brief relies, appellant heavily stated: ion emphasizes the existence of other “homo appli- Chilowsky “When filed his geneous” (low reactors known as LOPO cation, he disclosed for the first power) (high power) and HYPO time, know, as far as the idea of I May “went critical” in and December of suspending the enriched fissionable respectively, year in the same metal, a fused material Chilowsky applica filed the two dissolving conditions for the enrich- tions here relied for disclosure. Our ed fissionable material a fused knowledge themof is limited to the first whereby metal, mass entire could page describing them,13 of an article projected intermittently, or circu- appellant put which is all into the record. continuously. *6 lated published July, This article was not until power 1951. HYPO had a of 1 kilowatt my opinion, “In this was a basic July and before shutdown on clearly improvement, disclosed operation had been in but 1000 kilowatt Chilowsky applica- when filed his long way pow hours. This ais from the tion.” by Chilowsky. er intended But of most highly competent affiant, Another Dr. significance is fact that these reac aqueous uranyl Livingston, Cambridge Director of the operated tors with “an Electron Accelerator Harvard Univer- at (Our solution salt emphasis.) enriched in U235.” stated, sity, expert opinion: as his building Those skilled in “homogeneous” that kind of concept dispersing reactor art a “That the expected knowledge cannot to have exchange had a nuclear fuel in heat fluid Chilowsky’s having of how to construct a nuclear reaction occur using molten metal reactor a uranium- fluid within and further con- containing “special liquid” operating ducting fluid the fuel and to a heat temperatures at C., notwithstanding exchange was, exceed 2000° unit to the best of his “homogeneous” knowledge, concept a and novel ” * * * designation given both to it and to in 1944 LOPO and HYPO. we have never been able to While see a any In event Chilowsky’s distinction, we patent law, have it from least in be- recognized attorneys mouths of synonyms own tween the in “new” brief their “novel,” before the board commonplace pleonasm that “This application and emphasize point claims are at least serves to directed Chilowsky apparatus conducting could not start to describe assumption particular way with the reaction his invention nuclear in so extracting provide those skilled in the knew in a method detail as to his build nuclear reactor. how to Since amount of heat from maximum said major part purported emphasis.] of what he [Our it was action.” (July 1951), p. Instruments, 13. Review of Scientific Yol. reasons, pawl foregoing tional and ratchet mechanisms have and other For the long any been art which in known in the we cannot see merit well employed general could epitomized his in an obvious manner approach, in
first ** by any person says, “Appellant has never skilled in the art brief where it fissioning discussing anything We parable not of a were com- claimed to be the inventor per se.” (atomic decomposition) process to nuclear reactors. never has It no doubt is true that he adequacy We turn now of dis- fis- atomic discovered contended that he briefly closure issue. We shall discuss carrying it sion the first method points quotation made in above out, nuclear first or that he invented the brief, from num- the solicitor’s certainly disclosed reactor. But he has given. bers therein including kind of a new invention as argument Most of the sup- simply does not reactor. The record application centers failure of the suggestion port that his reactor was just teach that “uranium” that it knowledge” already “common even fuel, is needed in the reactor as but that possessed utmost skill those uranium “enriched” the fissionable art, description fission so that no isotope cannot be U235is essential. compliance it 112 was with section denied that there is no mention whatso required. If Webster examines application ever at bar either court was Loom case see what the reading enrichment or U235. One talking about when it the words uttered application would not be aware Chi by appellant, will be relied on it seen lowsky lack had ever heard This of U235. any had if simi- that the situation little by appellant does not seem to be denied Supreme larity to facts here. The remedy but he seeks to it use what discussing describing was terms Court copending applica said another was pile-weaving parts and their looms 517,574 tion, (now No. said to be Ser. operation in looms had been abandoned after a final District Court many years, common about which use for adjudication that its disclosure was inad “ n —all these things said, well were as equate), is not in the alphabet known as the to all those skilled However, record here. there are ref weaving.” pile art of *7 alleged contain, erences to what it is to by appellant pur- Another cited by disputed not the Patent Office.
porting “principle” to establish a that a appellant most can eke out of these ref disclosure is sufficient if one skilled in attempted is erences that he had operative by the art could render it “ad- application by transfer to the to instant justments and corrections which would objected (which amendment stands to naturally occur a skilled worker in the matter”), namely,' as that there “new attempting appara- “advantages gained by art to construct the to be enrich application by of tus on the basis the dis- ment of such uranium [natural] en Halahan, Bennett v. such closure” is 285 F.2d richment of uranium with U235or again other related materials.” 782. We This is 48 CCPA issue a little suggestion more warning inadvisability than that enrichment of as mak- might be desirable under general some circums ing applica- principles of of law tances.14 Even this is to dealing some extent of out words unrelated tion by counteracted copending another statement in the situations. What we fact were there application, pointed talking out projector about was a slide examiner, stating: only inadequately mechanism and part disclosed of that mechanism was a “When word uranium is used said, pawl as little to which we “conven- specification herein without other 14. Natural approxi by them, of, uranium consists of alia, 'with the release inter mately energy production of U238 which absorbs of 99.3% more thermal neutrons without fission and neutrons. U238which fissions when bombarded 0.7% fairly pre- clearly nor- record shows that the its uranium this natural approximation is factor composition cise of this as an element mal either any de- prerequisites reactor compound [Our meant.” as sign. Appellant attention directs our emphasis.] concerning enrichment statements application the word uses instant appearing of Scientific the Review in naming throughout, in “uranium” either noted, previously article Instruments compounds. If or its the metal itself seeming imply skilled that one import appellant what is in us to wants degree expect the art same reactor would principal application to the the other used in the LOPO enrichment one, im- should seem we would used to be reactor “Water Boiler” HYPO Doing port above as well. definition rea- appellant’s in reactor. For obvious finding normally preclude so would in appel- sons do not aid these statements disclosure the instant of a reactors, and HYPO lant. LOPO appellant has enriched uranium. So relatively size, would small both added, amendment, proposed also relatively high neutron losses. involve the statement that— conclude, from the state We are unable to “Reference herein to ‘uranium’ us, represented before of the art as it is will therefore understood as not anyone would skilled implying equiv- exclusion of such degree expect of enrichment the same may alent materials as related range permissible apparently the wide seem desirable.” comprehended devel- enrichment Appellant’s of state- desired transfer homogene- oper aqueous fuel of this first copending application ments from a applicable a homo- ous reactor to be may principal application ferred to in the geneous operated reactor of the size permissible, itself but when there disclosed in the manner qualifying is added thereto additional specification metal. molten change statement which mean- ing statement, invention de- think The instant the added we designate: alia,, objected scription fails, properly inter entire insertion shape (a) particular size or matter.” “new or “atomic de- “reaction zone” claimed (1(a)) Assuming one skilled composition and “heat ex- chamber” art would realize from mere mention exchanger” change other zone” or “heat “uranium,” en- approximate, relative size than in an used, riched uranium had to be the dis- respectively; (b) relative to 100 degree closure still does mention proportions15 amount of the claimed contemplated. of enrichment This “liq- or “uranium” and “uranium fuel” fect alone we feel renders this disclosure *8 than those metal” constituents other uid fatally defective. is clear that theoretically (c) appropriate; criti- recognized varying 1944 the art that mass, a criti- definition is cal degree of enrichment ain nuclear reactor factor, any particular uranium for cal using greatly uranium as a fuel would size, particle and uranium enrichment multiplication affect the neutron factor K, “special greater particular any described unity which must be than if 16 there is to be a chain reaction at all. The percentages 8, supra, 15. The exact of the various it will be 16. At the end note “special liquid” ap- constituents which refers noted to “the * * * pear appellant’s specification minimal critical mass 6, supra, Although which are set forth in note indicated.” of the order above meaningless by rendered the additional this record for the we have searched percentages mass, recitation that these are de- critical we can “above indicated” pendent only “large variables, vague on at least six none reference to a find particularly liquid metal, of which are specification. defined of the order of mass of a para- See the last No indication two to 50 tons.” exists 30 graphs supra. of note mass is “critical” one. 916 proportion develop accomplish to “ura- of carbon nium,” practical is taken to proposed whatever the latter result as Chi- mean, lowsky, although may sustain a to cause and have quired reaction, chain matter de- is a relative considerable modification * *
pending degree process; on of enrichment disclosed application emphasis.] least. Even if [Our we read the enrichment, contemplating which it record, On the whole cannot find we do, appear does not no on its face holding error in the of the board ultimate specific proportion any for assumed situation, which concisely up the sums gree of enrichment is disclosed. saying: * carefully * * We have the sev- considered “We find ourselves distinguish- affidavits, by very eral some complete agreement with the exam- experts, They appellant. ed relied on holding present iner in unquestionably prepared have been closure to be insufficient to teach care assume the hon- and we meticulous opera- one skilled how an the art esty respects of the affiants. In some tive heat neutron reac- (or some of them undertake tell us accomplished tion without Office) the Patent the answer to the and, most extensive further research legal question ultimate which we must fact, in ingenuity.” the exercise of inventive decide, viz., when an suffi- they respect cient under law. In his nothing except haveWe to add the em- only expressions opinion are not but phasis paragraph. in the above expressions. incompetent We have been insufficiency Our decision of dis- unable to find in affi- facts unnecessary closure makes it to consider deciding support davits a basis for aspects rejection other since this complied require- Chilowsky has with the goes allowability all claims large they part ments of section 112. In appealed. establishing are directed to that in 1944 board’s decision perhaps people there were Unit- affirmed. States, ed not cloistered inside the Man- Project (the hattan District or name AFFIRMED government enterprise), atomic bomb MARTIN, J., participate did not sit could, who undisclosed amount of because illness. effort, imagination, experimentation, and possibly have taken the Chi- lowsky application Judge WORLEY, (concurring). disclosure and ended Chief up, (assuming after an undisclosed time my stating In with the accord result financing problem), no with a sustained here, below reached and affirmed deemI reacting system. Living- chain Affiant appreciation express appropriate to significant very ston made statement thorough and efficient fashion in when he said responded Patent to this Office Chilowsky, 100 com- “That there were at least remand in re In court’s
petent personnel Man- outside the Would F.2d 43 CCPA 775. that the personnel hattan in 1944 who could District had time and sufficient Office *9 applications have sky the disclosure of Chilow- read accord all the same thor- to ough proceeded experiment treatment.