*1 Engelhardt forth did Mason and come In stark contrast to the situa against patents who to claim tions in Brown v. Childs and Rhine the already cases, testimony case had obtained them. each vault Pfiester the v. might Engelhardt quoted proves beyond no lead was above there evidence seriously plausible appellant spur that to a inference that reasonable doubt was inventors, activity solely by personal the facto first Mason and red de into knowl Engelhardt, steps edge would have taken issuance the Judd reasonably Engelhardt years to make foreseeable future more than two after public actually practice to available had inventions reduced one mem progress homologous and thus contribute ber of the series of com the useful arts. in issue. recognizing ap While reasons, For we these other proving admonitions of the cases that Engelhardt’s remarkably think is ease alleged suppression each case of or con parallel Mason and that for to that of necessarily cealment must be determined Hepburn feiture doctrine of Mason v. was according facts, to its own and that against properly applied the first inven expand for courts reluctant only tor dif in fact here. material in Mason v. feiture doctrine laid down ference between this case and Mason v. Hepburn, presents we think that this case delay filing Hepburn is that Mason’s essentially situation on all fours his his actual after Hepburn with Mason v. and that years, practice was seven reduction principle precedent that should be Engelhardt’s delay filing

while was Engel applied against appellant here years two and three months. As we hardt. The is af decision board pointed out in the recent case of terWoof firmed. Carlson, supra, v. 367 F.2d at 443 : Affirmed. required period for no There is time by right suppres- to a the loss J., MARTIN, participated in the hear- suppression if sion of an invention. A ing of but died before a deci- this case period year a 4 is as established for sion was reached. year period. effective is one for an principally Appellant on two of relies position his court’s cases sustain suppression or that was no conceal there 102(g).

ment under 35 U.S.C. §

following is statement contained cases, Pfiest Rhinevault v.

first of these er, Application of A. HIGGINS and William (1933): M. William LeSuer. Appeal first inventor Patent No. 7648. not shown activity spurred was into Patent Office Customs Court of United States inventor. the actions the second Appeals. and Patent sub- is found statement A similar Childs, sequent Brown v. case of 9, 1967. Rehearing Denied Feb. 1232, (1941): 350, 352, 28 CCPA nothing in the record findWe any appellee prove had tends entry appellant knowledge cannot and therefore field into the appellee contention with the activity spurred into apparently knowledge.

by such *2 WORLEY, Judge,

Before Chief and RICH, MARTIN, SMITH, AL- Judges. MOND, RICH, Judge. appeal is from the decision of Appeals

the Patent Office Board of af- firming rejection examiner’s application claims 1-8 of No. serial 74,236, 7, 1960, filed for December “Phosphorodithioate Inhibitors.” Joseph Shekleton, Cleveland, F. Ohio ground pat- is double (Almon Nelson, Washington, C., of S. D. enting appellants’ in view of own counsel), appellants. 3,000,822 September No. issued application, 635,102, Joseph Sehimmel, Washington, on an C. serial No. D. (S. C., January Washington, “Phosphoro- Cochran, filed Wm. D. counsel), Inhibitors,” prior for the dithioate Commissioner Pat- taken with art ents. references as follows: 2,364,283 Freuler

Mulvany 2,689,220 Sept. 14, 1954 2,723,236 Asseff et al. Nov. 2,838,555

Goldsmith June weight Claim is illustrative the claims on mole ratio lower molecular appeal higher weight and reads: radicals molecular being radicals in the zinc salt mixture lubricating composition 1. A range within the 1:1 to 3:1. prising major proportion a of a lu- bricating proportion, oil and minor unnecessary differentiate improve sufficient sta- the thermal They claims. are all drawn to lubricat- bility thereof, of the zinc salts of a ing compositions having major propor- phosphorodithioic mixture acids pro- tion of oil and minor having the structure which Ri portion of the mixture of zinc salts of

phosphorodithioic acids, which additive acts as an oxidation and corrosion inhibi- high temperatures. tor at Appellants’ patent claims the same zinc per salt mixtures se and describes them very lubricating as useful oil com- positions which are claimed in this application. fact, applica- the instant duplicates specification tion patent wherein the zinc salts primary aliphatic hydrocarbon are R2 advantages uses and as lubricant addi- radicals selected the class from con- described, adding tives open- sisting weight of lower molecular radi- ing paragraph sentence, having “The cals inven- less than five carbon atoms higher weight tion particularly relates molecular more radicals a lu- having atoms, at five bricating least carbon composition containing adding monopoly is the exact reason that at end seven zinc salts.”1 rejections patenting examples double of lubricant made. cited were art references though ap- it old to show that examiner to We note the phosphorodithioates pat- lubricant plication use zinc and the necessary dis- copending it is not additives but for a over ent were little *3 appellants’ admis- months, application cuss in view of not them nine this they nearly years known so sion that have been after the filed until four application patent used since in which presently dis- claimed inventions were rejection explained the The examiner rec- is of closed. No terminal disclaimer as follows: appeal. ord on this rejection patent- on double This ais ing. Higgins affirming instant board, al. claims the et in The the exam- appel- said, secon- iner, zinc mixtures while the salt see no merit in “We dary salts arguments zinc references teach that is lants’ and hold that this dialkyl dithiophosphoric are acids patenting.” of are of double We clear case record, prior and anti-cor- anti-oxidation of as effective of mind. The art like appellants’ [for] rosion additives or re- as admissions with well knew, persua- is the spect oil Examiner’s are to what art of the instant contention that the use sive use lubricant additives that the composition is patent salts in lubrication of the zinc salts claimed in the secondary ref- entirely in obvious view claimed would be obvious. The * * * subject unpatent- erences. is matter therefore principles , * able accordance with the * * -x- (cid:127)* * re in our in In enunciated decisions patenting is double The 990; 821, Simmons, F.2d 50 CCPA 312 of it is the contention made because Sebek, 632, In re 347 F.2d CCPA 52 lubricating oil the Examiner that containing 1442; Zickendraht, F.2d and In re 319 obvious salts is instant 225, 1529, seq., et 1533 et CCPA being composition is and- instantly that it is this seq. words, claimed. In other oxi- use of as corrosion and such salts argument Appellants based make an lubricating oils is dation inhibitors contending on 35 that when U.S.C. § ap- an obvious use As of such salts. patented zinc in lu- their salts are used pellants put it, phosphoro- “zinc have advantages bricating compositions are today accepted as the dithioates obtained which would not be obvious generally inhibi- most useful corrosion corollary and, prior to from the art aas compositions.” The tor in lubricant teaching argument, that to use the the four secon- is also shown patent use of their to effect is to * * * dary references. per- thereof, not the disclosure which is * n * prior missible since their is not * * * * art. Appellants to now wish extend course,

right patent] appellants, their of exclusion We with [from years period further to another we utilize the disclosure cannot monopolize applying of these In the obvious use art. prevent an extension use of To test salts. of the obviousness opening to 1. The sentence its zinc salts ticular sense relates appears together title, bar, phosphorodithioie con- with its at acids subject isoalykl misleading alykl groups claimed to as the tain or be certain physical tending be “Inhibitors” be to matter cannot said enhance properties conform to the salts. claims do not chemical these and the subject salts are the zinc statement: claims, com- not the claims herein. to a new invention relates par- matter, position in a more tory previously compounds, class of This Court claimed we invention.” references, utilizing prior art held: the true admission, appellants’ appel- not difficulty reasoning “The with that

lants’ disclosures. is that claims to chemical com- starting pounds point for the considera- are drawn more than They tion of use is the com- formulae. define obviousness structural compounds appellants’ patent. themselves claimed point- pounds possess properties Solicitor, The Patent after Office along proper held be with the out that we have it must considered patent’s consult the disclosure to deter- formulae.” citing claimed, mine what is decisions, In line with it Copeman, re 30 CCPA enough, determining ap- not what Greenlee, and In re pellants patent, claimed in their looking contends that at the merely look formulae the structural *4 bare words and structural formula of necessary in the claims. It is to deter- patent enough the claims is not in de- specification prop- from mine the the termining argu- what is claimed. His erties and characteristics which ment runs thus: patentability premised. Those empha course, are, of Eecent decisions this Court characteristics of proposition patent already high degree to, size the a claim alluded the referring compound, stability to merely chemical of * * a thermal of the zinc salts lubricating compound *, structure or and in both alone name, complete point- does not oil constitute a As the Board * * compound. *, definition of the The mat ed out the fact that the new analyzed depth gave superior ter was pos- in some in In salts results “made Papesch, grant re CCPA sible of a the on these appellants.” Court found salts to the as follows: standpoint “From the Taking prop- into consideration the law, compound prop- a and all of its salts, necessary erties of as the it is they inseparable; erties are are one comprehend to do in order to what the thing. graphic and the same to, claims are directed the issue formulae, and the chemical nomen- becomes: clature, systems the of classifica- whether it would be obvious to one study concepts tion and such as the having art, knowledge skilled in the homology, isomerism, etc., patented of the zinc salts and the symbols by compounds mere they impart unexpectedly fact that identified, classified, can compared. be good stability thermal to lubricat- aBut formula is not a ing oil, that the salts should be used compound may and while it serve in lubricating oil additives. identify a claim to what is issue, course, That patented, contains its own as the metes and bounds part answer. An essential identify of the in- plot land, of a deed the appellants’ pat- claimed vention thing patented that is for- is not the property ent of the compound defined mula but the identified imparting unexpected ther- it.” stability mal There oils. Ward, The examiner in In re could suggestion be no clearer contended that they put be to that use. compound rejected claims there were agree not drawn certain We reasoning, uses which were with that line of urged as distinctions over art which confirms us in the correctness of holding and that if the our invention did involve composi- the claimed use, properly unpatentable “the invention if claim- tions are over the claims of belong patent, ed could ato different statu- so construed. A different course, presented, of situation would be patented compounds

if had not been express disclosure on the basis advantageous unexpected prop-

of their very compositions

erties

they are now claimed.

We with the examiner’s assess-

ment patenting the situation as one which appealed claims would

extend, timewise, temporary monop- oly patented mixtures salt insofar purposes

as used for the were same

put justifying forward as issuance patent. is affirmed. decision of the board Stearman, Washington, C.,D. Samuel

Affirmed. appellant. SMITH, J., C., Joseph Washington, concurs result. Schimmel, D.

(J. Washington, C., Nakamura, F. D. counsel), Pat- Commissioner of MARTIN, J., participated in the hear- ents. of this case but died before decision *5 reached. RICH, WORLEY, Judge, Chief Before Judges, ALMOND, SMITH, and

Judge H. KIRKPATRICK.* WILLIAM Judge. RICH, appeal is from decision Application of Branko PERKIC. all Patent No. “Coating remaining 119,810, Office and Method claims Board of filed June claims Appeals1 Making affirm- Same.” serial Appeal Patent No. 7687. forming All to a claims method coating roof, protective for exam- United States Court of Customs ple, aqueous composed anof emulsion Appeals. and Patent inorganic fibers, bitumen and 1966. fibers, spraying glass or asbestos simultaneously in fibers bitumen and way laid on the

such a that the fibers “jackstraw pattern” and surface in a just before are they with the emulsion coated pile of land on the surface like jackstraws. description en- method is drawing tirely verbal, no there specific apparatus case, no Magil

* Lidoff Judge Examiners-in-Chief States District United Senior Rosdol, Acting lat desig- Pennsylvania, Examiner-in-Chief Eastern District opinion. writing the pro- ter pursuant participate, nated to 294(d), Unit- Title visions of Section ed States Code.