125 F.2d 198 | D.C. Cir. | 1941
This is a suit under R.S. § 4915, 35 U.S. C.A. § 63, to obtain a patent on an abrasive article in the nature of sandpaper. On the court’s own motion the case was reheard on October 13, 1941, together with No. 7400, Sharp v. Coe, -App.D.C. -, 125 F.2d
The claims are those of the Guth application, No. 347,159, filed March 14, 1929. They relate to sandpaper bonded with a particular type of synthetic resin, especially a particular type of alkyd resin resulting from the interaction or condensation of three reactants. Two of the claims are further specific in regard to the binder, in that they call for a resinified or condensation product of a phenol and an aldehyde in admixture with a polybasic acid such as phthalic anhydride and a polyhydric alcohol such as glycerine. Five related and overlapping claims were allowed by the Patent Office, and several other claims were abandoned. The appealed claims were held by the Patent Office and the District Court to lack invention. Appellee concedes novelty and commercial success, and does not deny utility.
The court found that sandpaper made in accordance with the appealed claims has had large commercial success. Appellant requested an express finding concerning utility, and complains that none was made; but it recognized, both at the trial and here, that utility had, in effect, been found. The court found as conclusions of law that the appealed claims were not inventive or patentable over the references. Strictly, these are findings of fact, and should be made as such, in accordance with Rule 52(a) of the Rules of Civil Procedure, 28 U.S.C.A. following section 723c. The common practice of designating findings on invention and patentability, and underlying findings which support them, as conclusions of law is erroneous.
Appellant concedes that Weber patent No. 1,690,515, Strafford patent No. 1,977,652, and Adams patent No. 1,893,874, while they do not refer specifically to sandpaper, disclose the resinous composition which is described in several of the appealed claims. Taking into consideration everything which appellant asks us to take into consideration, including the relation between the appealed claims, certain allowed claims, and certain claims of Guth patent No. 2,202,765 and other patents, we cannot say that it was clearly inventive to substitute the resinous composition of Weber, etc., or the more specific compositions disclosed in the other appealed claims, for the resinous bonds which had previously been used in sandpaper. As we ruled in Sharp v. Coe, decided this day, the action of the Commissioner on allowed claims is not a conclusive measure of the patentability of rejected claims. Patentability of the latter must be determined ultimately by comparison with the prior art, although the Commissioner’s action on allowed claims may be taken into consideration, together with other relevant evidence, in determining the patentability of rejected claims. It follows that we must affirm.
Affirmed.
United States v. Esnault-Pelterie, 299 U.S. 201, 57 S.Ct. 159, 81 L.Ed. 123.
Shellman v. Shellman, 68 App.D.C. 197, 198, 95 F.2d 108; Societe Suisse, etc., v. Cummings, 69 App.D.C. 154, 156, 99 F.2d 387; Goodacre v. Panagopoulos, 72 App.D.C. 25, 27, 110 F.2d 716.
Abbott v. Coe, 71 App.D.C. 195, 109 F.2d 449.