Application of Russell C. FLINT
Patent Appeal No. 7113
United States Court of Customs and Patent Appeals
April 16, 1964
330 F.2d 363
51 CCPA
“* * * It is a difference of enormous practical value, namely the difference between a useful vaccine and one which is not. The immense sales of the vaccines prepared by the present process are eloquent of the practical value of this difference.”
While it is true that the Groupe article discloses that both streptomycin and chlortetracycline killed the agents of turkey sinusitis, there is no teaching 1) that streptomycin produced resistant strains or 2) that the causative agents of PPLO and turkey sinusitis were similar. Thus at the time the application in issue was filed, the mаn skilled in this art, with the prior art before him, would not have known that it made any difference whether streptomycin or tetracycline was used, and there was no teaching in the art that tetracycline had the important properties 1) of not developing resistant strains and 2) was selective in its аction in killing the agent which caused PPLO without killing the live but attenuated viruses desired in the vaccine.
Thus, it seems to me that while the general method of producing such vaccines is admittedly old, the novelty of the point at which certain additional and claimed steps were taken by appellants constitutes a patentable feature of the claimed invention, particularly since such steps are carried out at a point in the vaccine production which is different from the prior art and is unobvious in view of the teachings of that art.
Should there be any remaining doubt as to the allowability of the claims, it should, it seems to me, be resolved in favor of appellants in view of the evidence of commercial success found in the Aiston affidavit filed April 5, 1956 in which it was stated:
“THAT, since June 1955 and to date the Viral and Rickettsial Production Department under my supervision has cоntinued the production of fowl vaccines by means of said improved method;
“THAT, the production of fowl vaccines by said improved method to date, * * * totals well over a half-billion doses;
* * * * *
“THAT, the above production has been sold in the United States, and abroad by the Lederle Laborаtories Division of the American Cyanamid Company;
“THAT, all batches of the above vaccines released for sale had satisfactorily passed the safety and effectiveness tests approved by the Animal Inspection and Quarantine Branch of the Agriculture Research Service, U. S. Department of Agriculture; * * * *”
For these reasons, I would reverse the appealed decision.
Henry L. Brinks, Chicago, Ill., for appellant.
Clarence W. Moore, Washington, D. C. (Fred W. Sherling, Washington, D. C., of counsel), for the Commissioner of Patents.
Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH and ALMOND, JJ
This appeal is from the decision of the Patent Office Board of Appeals which affirmed the rejection of claims 11 and 12 in appellant‘s application serial No. 757,385, filed August 26, 1958, entitled “Releasable Hold Open Device.” No claims were allowed.
The invention relates to a releasable hold open device for doors, and in particular to a new mechanism controlled by a fusible link for automatically releasing the device in case of fire to permit an open door to close, for example under the influence of a door check comprising a door closing mechanism, the latter being the prime mover in closing the door once the release is actuated.
Claim 11 is representative and reads as follows:
“11. A door holder comprising a first arm, a first friction head at one end of said first arm, a second friction head opposed to said first friction head, a screw member for moving said first and second friction heads relatively toward and away from each other for frictional engаgement and disengagement, a second arm rotatably mounted on said second friction head, said arm having an aperture communicating with said second friction head, said second friction head having a recess adapted to be aligned with said aperture, a pin member in said aperture normally projecting into said second friction head recess for preventing said second arm from rotating on said second friction head while said first and second arms are moved relative to each other, a spring member biased against said second arm and said spring member for ejecting said pin member out of said second friction head recess, and means including a fusible link for holding said pin member in said friction head recess in order to maintain normally a non-rotatable relation between said second arm and said sec-
ond friction head and tо release said pin to permit the second arm to swivel on said second friction head when said fusible link is melted.”
Appellant‘s device is best illustrated in Figs. 2 and 3 of the specification, reproduced below. Fig. 2 is a top view, Fig. 3 a side view.
Operation of the device will be briefly explainеd. The arms 14 and 16 (Fig. 3) pivotally move about a vertical axis through the housing shown under numeral 38 in Fig. 3 when a door is opened or closed. Arm 16 is fastened to the door casing, arm 14 to the door. 67 is a fusible link through which spring 61 urges pawl 58 to the right to support arm 50 at its terminus 54. Under normal opening and closing of the doоr, support arm 50 is maintained paralled to arm 16, shoulder 53 thereby forcing pin 42 (Fig. 2) inwardly.
As long as pin 42 is urged inwardly to occupy recess 41 in boss 35, arm 16, boss 35 and friction head 31 (Fig. 3) all move as a unit. Threaded studs (not shown) integral with and extending upwardly and downwardly of non-circular section 25 (Fig. 2) act when arms 14 and 16 are rоtated to screw head 30 (Fig. 3) up and down relative to head 31. The horizontal surfaces of heads 30 and 31 coact frictionally to hold the door open when arms 14 and 16 subtend their greatest angle (i. e., when the door is open).
In case of fire fusible link 67 melts, pawl 58 moves left (broken lines, Fig. 2) and arm 50 swings out (broken lines, Fig. 2) to release pin 42 which is ejected by compressed spring 45. Arm 16 is then free to move about boss 35 as a secondary pivot, and the door freely closes.
The gist of appellant‘s invention is the construction of the pin ejection mechanism.
The sole ground of rejection is unpatentability over the following reference:1
Pollack teaches a releasable hold open device shown in Figs. 1 and 2 reproduced below, which are top and side views respectively.
Pollack‘s device functions similarly to appellant‘s, arm 12 of Pollack hаving fusible link 53 through which spring 57 urges crank arm 48 to hold leaf spring arm 32 flush with arm 12. Normally, with spring arm 32 held down and engaged by stud 35, arm 12 and spring arm 32 move as a unit. Threaded stud 15, 17 operates, when arms 11 and 12 are pivotally moved to cause frictional engaging of surface 25 and the lower surface of plate 11.
The above discussion sufficiently illustrates for our purpose the similarities and differences of the devicеs. The only difference considered patentably significant by both appellant and the Patent Office is the mechanism by which the primary and secondary pivots are disengaged, viz., appellant‘s pin ejection system and patentee‘s releasable leaf spring arm.
The examiner‘s position as stated in his answer is (emphasis ours):
“The claims read directly on the reference except for the details of the latching means. * * * the Examiner takes the position that the spring arm 32 having the aperture and the second arm having a pin 35 which rigidly holds the second arm to the friсtion head (22, 25) by means of a fusible linkage (47, 57, 53) is considered to be the mechanical equivalent of applicant [sic] spring pin and socket for holding said arm and friction head rigidly together.”
The board added (emphasis ours):
“The objects of the invention as stated by appellant in his specification are attained in thе structure of Pollack. While Pollack does not show a pin member associated with a recess in the friction head to hold the second arm in a nonrotatable relation to the friction head, it is our opinion that the means employed by Pollack to maintain the same relationship is the full equivalent of that claimed. Pollack‘s spring arm 32 provides a positive engagement between the second arm and the friction head.
“This serves the same purpose as appellant‘s pin and recess. The fusible link arrangement in Pollack is the same as the fusible link claimed. They both serve to hold the members in the same relationship under normal conditions. In the event of fire both fusible links melt and cause a release of the connection between the second arm and the friction head to permit the second arm to swivel on the friction head.
“We do not find in the record of this application any showing that appellant‘s device attains results or functions not attained by the Pollack device or provides advantages or significant improvements over the device of Pollack.”
Appellant argues that “there is no equivalency in fact because of differences of function and result between Pollack and the present invention“; that the test of “equivalency” has no statutory basis, the proper test being “obviousness” as set out in
We agree with appellant and consider as dispositive the rationale of our recent opinion in In re Scott, 323 F.2d 1016, 51 CCPA 747, wherein we said:
“The examiner and the board appear to hold that the mere existence of ‘functional and mechanical equivalence’ establishes ‘obviousness.’ We think this involves a non-
sequitur. Expedients which are functionally equivalent to each other are not necessarily obvious in view of one another. The statutory mandate of 35 U.S.C. § 103 is that the claimed subject matter be unobvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains.”
Assuming, arguendo, that the pin ejection system of appellant and the releasable spring arm taught by Pollack are “functionally equivalent,” it does not follow that the former would be “obvious” to one of ordinary skill in view of the latter. On the contrary, we see no suggestion in Pollack‘s leaf spring arm and stud construction to employ a spring-loaded pin directly in the pivot socket even though the solicitor characterizes such construction as “a slightly different disposition of the pin mеmber” which results in a combination which is “merely the obvious equivalent of that of Pollack.” We therefore do not find obviousness.
The defect which we find in the reasoning employed below to support the rejection here is not only that it ignores the express provision of the statute as stаted in section 103 but that it also ignores the fact that it is advantageous to the public in the promotion of progress of the useful arts, the Constitutional objective of the patent law, to provide inducement for the invention of devices which are the functional equivalents of devicеs already known. It is not the object of the policy behind the patent system to encourage satisfaction with or commercialization only of the first device for performing a given function that happens to come along. And for those who may be interested in promoting competition in the interest of the consuming public, the greater the number of functionally equivalent devices which are encouraged onto the market by patent protection, the better off the consumer will be. Therefore the test is obviousness of the invention and not whether it serves the same purpose as previous inventions.
The decision of the board is reversed.
Reversed.
WORLEY, Chief Judge (dissenting).
I regret that I am unable to agree with either the reasoning or conclusion of the majority. In my opinion the examiner and the board were clearly correct in holding that what appellant has done would be obvious in view of the cited art.
Notes
The board noted this saying, “In the answer to the brief, the Examiner dropped the patent to Ball as a reference and relied solely on the patent to Pollack.” (Emphasis ours.)
Nevertheless, the solicitor notes that Ball is mentioned in appellant‘s reasons of appeal and that the “examiner‘s answer failed to mention the rejection on Ball as a secondary reference but did not withdraw this rejection.” Nor, the solicitor points out, did the board reverse this rejectiоn. In re Bush, 296 F.2d 491, 49 CCPA 752, is cited to support the solicitor‘s argument that the rejection on Ball is therefore still an issue.
We do not agree with the solicitor. In Bush, we said simply that “In applying
We think withdrawal of a reference upon which a rejection is based unequivocally withdraws that rejection. Appellant‘s mentioning the rejection on the Ball patent in the reasons of appeal can in no wise resurrect a withdrawn ground of rejection and can readily be explained by counsel‘s justified caution, in view of certain decisions and recent actions of this court, to avoid any possibility of not being heard on the merits of what the Patent Office might still consider a viable rejection. See, for example, the classic warning in In re Boyce, 144 F.2d 896, 32 CCPA 718, discussed in the writer‘s concurring opinion in In re Le Page‘s Inc., 312 F.2d 455, 50 CCPA 852, 859.
Since the examiner dropped Ball and the board in no way relied on it, we regard that reference as out of the case.