105 F.2d 784 | D.C. Cir. | 1939
This is an appeal from a decree dismissing a bill under R.S. § 4915 (35 U.S.C. § 63) to obtain a patent on a setting for diamonds for industrial uses such as cutting, drilling and grinding. The invention ■ has had an immense success. The disputed claim is: “7. As a new article of manufacture, a setting for diamonds consisting of a base metal alloy the principal ingredients, of which are molybdenum, copper and cobalt so proportioned as to be capable of being sintered at a temperature below that of the critical point at which the desirable qualities of the diamond are adversely affected, said alloy when so sintered having, the property of wetting the diamonds coupled with a lack of avidity for the carbon thereof and, when thereafter cooled, of closely adhering to it.” The specification contains the following:
“By way of example, but not of limitation, the following formulae of an alloy, successfully used are given, the percentages stated being approximate * * *:
“Example No. 1 Molybdenum 26% Cobalt 46% Copper 27.75% Iron 00.25% 100% “Example No. 2 Molybdenum 40% Cobalt 20% Copper 40% 100%”
The, Patent Office, while it rejected Claim 7, allowed the following claims, which correspond closely to the two foregoing examples: “3. As a new article of manufacture, a setting for diamonds composed of an alloy including molybdenum, approximately twenty-six percent, copper approximately twenty-seven percent and cobalt approximately forty-six percent. 4. As a new article of manufacture, a setting for diamonds composed of an alloy including molybdenum approximately forty percent, copper approximately forty percent, and cobalt approximately twenty percent.”
The District Court dismissed the bill, on the grounds that Claim 7 is broader than the invention and' does not clearly define the invention.
A “base metal alloy the principal ingredients of which are molybdenum, copper and cobalt” might contain say 10 per cent, or any smaller proportion, of any other base metal, or of any combination of other base metals. Even if the only ingredients were the three named metals, they might be present in an infinite variety of proportions. Appellants do not claim all these myriads of alloys, but they do claim all of them that will function in a designat
In both Gasoline Products Company, Inc. v. Coe, 66 App.D.C. 333, 87 F.2d 550, and Electrons, Inc. et al. v. Coe, 69 App. D.C. 181, 99 F.2d 414, on which appellants rely, the claims had been rejected below solely on the ground that they lacked invention, and the question of invention was the only one which this court discussed. The indefiniteness of the claims was not argued or considered in either case.
Affirmed.
Radio Corporation of America v. Radio Engineering Laboratories, Inc., 293 U.S. 1, 7, 8, 55 S.Ct 928, 79 L.Ed. 163.
Morgan v. Daniels, 153 U.S. 120, 14 S.Ct. 772, 38 L.Ed. 657; Bayer v. Rice, 64 App.D.C. 107, 75 F.2d 238; Dowling v. Jones, 2 Cir., 67 F.2d 537; Robertson, Commissioner of Patents v. Cooper, 4 Cir., 46 F.2d 766; Austin v. Coe, 63 App.D.C. 94, 69 F.2d 832; cf. Radio Corporation of America v. Radio Engineering Laboratories, Inc., supra.