(U. S. Court of Appeals for the District of Columbia]

ETHYL GASOLINE CORPORATION v. COE, COMMISSIONER OF PATENTS

No. 8,760 Decided December 26, 1944

570 O. G. 665; 147 F. (2d) 27; 63 USPQ 14:

1. PATENTABILITY-ANTI-KNOCK AGENT.

Where the prior art knew, generally, the usefulness of lead alkyls for antiknock purposes in motor fuels and where the particular lead alkyls and proportions claimed were not critical Held that the claims were unpatentable. 2. SAME EXPERIMENTAL RESEARCH.

A showing of great industry in experimental research Held not to constitute invention.

APPEAL from the District Court of the United States for the District of Columbia. Affirmed.

Mr. Drury Cooper (Mr. A. K. Shipe of counsel) for Ethyl Gasoline Corporation. Mr. W. W. Cochran (Mr. E. L Reynolds of counsel) for the Commissioner of Patents.

Before GRONER, Chief Justice, and MILLER and EDGERTON, Associate Justices

MILLER, A.J.:

In a section R. S. 4915 proceeding in the district court appellant's complaint was dismissed as to all claims; the court finding that none of the claims recites anything amounting to an invention over the disclosures made in patents relied upon by appellee as references to show the prior art involving the use of anti-knock agents in the operation of internal combustion engines, and products comprising motor fuels and anti-knock material for use in such engines.

[1] Claims 7 and 9, which, upon oral argument, were selected by appellant as typical, are set out in the margin.1 It is conceded that the

17. A product comprising a motor fuel and an antiknock material having as its primary antiknock component a mixture of lead tri-methyl-ethyl, lead di-methyl diethyl, and lead tri-ethyl-methyl, in which ́mixture the concentration of lead dimethyl diethyl predominates." "9. A product comprising a motor fuel and an antiknock material having as its primary antiknock component a mixture of lead tri-methyl-ethyl, lead dimethyl di-ethyl, and lead tri-ethyl-methyl, and lead tetramethyl in a concentration not exceeding fifteen percent."

1

prior art knew, generally, the usefulness of lead alkyls for antiknock purposes in motor fuels. In practice, however, their use was confined, largely, to tetra-ethyl. The ultimate question of the case is whether the knowledge of the prior art was sufficient to suggest to a skilled chemist, familiar with gasoline fuels and the operation of internal combustion engines, the particular combinations disclosed in appellant's claims, or whether those disclosures went so far beyond the prior art as to constitute invention. The district court found that:

13. The selection of the particular léad alkyls and the proportions thereof to be used in the fuel as recited in Bartholomew's claims depend upon climatic conditions, the particular type of engine being used, and other factors. The selection is made as a result of experimentation. 14. There is nothing critical in the proportions of the ingredients, more or less indefinitely recited in Bartholomew's claims at bar. 15. None of Bartholomew's claims at bar recites anything amounting to an invention over the disclosures made in the patents to Midgley, Sullivan, Voorhees and Shapirio.

[2] We are satisfied from an examination of the record that the findings of the district court are amply supported by the evidence, What we have here is no more than a showing of great industry in experimental research, insufficient in itself to constitute invention; the product and the process described by the claims differ from the prior art only in degree; the result, useful as it may be, constitutes, merely, one step forward in a gradual process of experimentation."

We conclude, therefore, that appellant is not entitled to a patent. Affirmed.

[U. S. Court of Appeals for the District of Columbia]

UNITED STATES RUBBER COMPANY v. COE, COMMISSIONER OF PATENTS

INTERFERENCE

No. 8,710. Decided January 2, 1945

571 O. G. 3; 146 F. (2d) 315; 64 USPQ 100

RES JUDICATA.

With respect to claims presented by appellant in an application of one Eger, which had been involved in an interference with the application of one Watson, Held that “since it is conceded by appellant that the claims here presented are not patentable over the Watson application, and since in an interference with the Watson application an award of priority on the general subject matter was given to Watson, the issue presented by appellant has become res adjudicata." APPEAL from the District Court of the United States for the District of Columbia. Affirmed.

Mr. Newton A. Burgess (Messrs. Lester G. Budlong and Ralph B. Stewart of counsel) for United States Rubber Company.

2 Minnesota Mining & Mfg. Co. v. Coe, 69 App. D. C. 217, 99 F. (2d) 986, 493 O. G. 946, and authorities there cited; L. Sonneborn Sons, Inc., v. Coe, 70 App. D. C. 97, 100, 104 F. (2d) 230, 233, 502 O. G. 4; Radtke Patents Corporation v. Coe, 74 App. D. C. 251, 268, 122 F. (2d) 937, 954, 535 O. G. 3; Sinclair Refining Co. v. Coe, 78 U. s. App. 176, 138 F. (2d) 673, 557 O. G. 583; Potts v. Coe, 78 U. S. App. 297, 800, 140 F. (2d) 470

Mr. W. W. Cochran (Mr. E. L. Reynolds of counsel) for the Commissioner of Patents.

Before MILLER, EDGERTON, and ARNOLD, Associate Justices

ARNOLD, A. J.:

This is an appeal from an order dismissing a complaint brought under section 4915 R. S.1 against the Commissioner of Patents to authorize the grant of a patent on the application of Ernest Eger. Prior to this suit the Eger application became involved in interference proceedings with the application of one Watson. In that interference proceeding priority of invention was finally awarded to Watson after an appeal to the Court of Customs and Patent Appeals. The count in that interference proceeding was different in form from the claims presented here. Nevertheless, all the claims are readable on the Watson application and are conceded to be unpatentable over its disclosure. Appellant argues that since the claims presented here relate to a different subject matter than the count in the prior interference proceedings he is entitled to retry in this case the issue of the priority of the Watson patent. We cannot accept that conclusion. In Daniels v. Coe, we said: "An interference determination settles not only the claims made, but all that could have been presented." Following the same principle, the Court of Customs and Patent Appeals has held that a losing party to an interference proceeding is not entitled to a patent on claims not patentable over the disclosure of the successful party.3

Since it is conceded by appellant that the claims here presented are not patentable over the Watson application, and since in an interference with the Watson application an award of priority on the general subject matter was given to Watson, the issue presented by appellant has become res adjudicata.

The judgment of the court below will, therefore, be affirmed.

[U. S. Court of Appeals for the District of Columbia]

KRAFT CHEESE COMPANY v. COE, COMMISSIONER OF PATENTS

No. 8,717. Decided December 18, 1944. Rehearing denied January 4, 1945 571 O. G. 3; 146 F. (2d) 313; 63 USPQ 326

1. TRADE-MARKS-GEOGRAPHICAL TERM.

The words "Old English" in Gothic letters, Held properly refused registration as a trade-mark for cheese on the ground that they are merely geographical.

135 U. S. C. 8 63 (1940).

1521 O. G. 787, 73 App. D. C. 54, 56, 116 F. (2d) 941 (1940).

In re Karplus, 496 O. G. 1113, 97 F. (2d) 100 (C. C. P. A., 1938); In re Cole, 470 O. G. 725, 82 F. (2d) 405, 409 (C. C. P. A., 1936); In re Sola, 461 O. G. 474, 77 F. (2d) 627, 630 (C. C. P. A. 1935).

prior art knew, generally, the usefulness of lead alkyls for antiknock purposes in motor fuels. In practice, however, their use was confined, largely, to tetra-ethyl. The ultimate question of the case is whether the knowledge of the prior art was sufficient to suggest to a skilled chemist, familiar with gasoline fuels and the operation of internal combustion engines, the particular combinations disclosed in appellant's claims, or whether those disclosures went so far beyond the prior art as to constitute invention. The district court found that:

13. The selection of the particular lead alkyls and the proportions thereof to be used in the fuel as recited in Bartholomew's claims depend upon climatic conditions, the particular type of engine being used, and other factors. The selection is made as a result of experimentation. 14. There is nothing critical in the proportions of the ingredients, more or less indefinitely recited in Bartholomew's claims at bar. 15. None of Bartholomew's claims at bar recites anything amounting to an invention over the disclosures made in the patents to Midgley, Sullivan, Voorhees and Shapirio.

[2] We are satisfied from an examination of the record that the findings of the district court are amply supported by the evidence. What we have here is no more than a showing of great industry in experimental research, insufficient in itself to constitute invention; the product and the process described by the claims differ from the prior art only in degree; the result, useful as it may be, constitutes, merely, one step forward in a gradual process of experimentation.2

We conclude, therefore, that appellant is not entitled to a patent. Affirmed.

[U. S. Court of Appeals for the District of Columbia]

UNITED STATES RUBBER COMPANY v. COE, COMMISSIONER OF PATENTS

INTERFERENCE

No. 8,710. Decided January 2, 1945

571 O. G. 3; 146 F. (2d) 315; 64 USPQ 100

RES JUDICATA.

With respect to claims presented by appellant in an application of one Eger, which had been involved in an interference with the application of one Watson, Held that "since it is conceded by appellant that the claims here presented are not patentable over the Watson application, and since in an interference with the Watson application an award of priority on the general subject matter was given to Watson, the issue presented by appellant has become res adjudicata." APPEAL from the District Court of the United States for the District of Columbia. Affirmed.

Mr. Newton A. Burgess (Messrs. Lester G. Budlong and Ralph B. Stewart of counsel) for United States Rubber Company.

2 Minnesota Mining & Mfg. Co. v. Coe, 69 App. D. C. 217, 99 F. (2d) 986, 493 O. G. 946, and authorities there cited; L. Sonneborn Sons, Inc., v. Coe, 70 App. D. C. 97, 100, 104 F. (2d) 230, 233, 502 O. G. 4; Radtke Patents Corporation v. Coe, 74 App. D. C. 251, 268, 122 F. (2d) 937, 954, 535 O. G. 3; Sinclair Refining Co. v. Coe, 78 U. S. App. 176, 138 F. (2d) 673, 557 O. G. 583; Potts v. Coe, 78 U. S. App. 297, 300, 140 F. (2d) 470

Mr. W. W. Cochran (Mr. E. L. Reynolds of counsel) for the Commissioner of Patents.

Before MILLER, EDGERTON, and ARNOLD, Associate Justices

ARNOLD, A. J.:

This is an appeal from an order dismissing a complaint brought under section 4915 R. S.1 against the Commissioner of Patents to authorize the grant of a patent on the application of Ernest Eger. Prior to this suit the Eger application became involved in interference proceedings with the application of one Watson. In that interference proceeding priority of invention was finally awarded to Watson after an appeal to the Court of Customs and Patent Appeals. The count in that interference proceeding was different in form from the claims presented here. Nevertheless, all the claims are readable on the Watson application and are conceded to be unpatentable over its disclosure. Appellant argues that since the claims presented here relate to a different subject matter than the count in the prior interference proceedings he is entitled to retry in this case the issue of the priority of the Watson patent. We cannot accept that conclusion. In Daniels v. Coe, we said: "An interference determination settles not only the claims made, but all that could have been presented." Following the same principle, the Court of Customs and Patent Appeals has held that a losing party to an interference proceeding is not entitled to a patent on claims not patentable over the disclosure of the successful party.3

Since it is conceded by appellant that the claims here presented are not patentable over the Watson application, and since in an interference with the Watson application an award of priority on the general subject matter was given to Watson, the issue presented by appellant has become res adjudicata.

The judgment of the court below will, therefore, be affirmed.

[U. S. Court of Appeals for the District of Columbia]

KRAFT CHEESE COMPANY v. COE, COMMISSIONER OF PATENTS

No. 8,717. Decided December 18, 1944. Rehearing denied January 4, 1945 571 O. G. 3; 146 F. (2d) 313; 63 USPQ 326

1. TRADE-MARKS-GEOGRAPHICAL TERM.

The words "Old English" in Gothic letters, Held properly refused registration as a trade-mark for cheese on the ground that they are merely geographical.

135 U. S. C. § 63 (1940).

2 521 O. G. 787, 73 App. D. C. 54, 56, 116 F. (2d) 941 (1940).

In re Karplus, 496 O. G. 1113, 97 F. (2d) 100 (C. C. P. A., 1938); In re Cole, 470 O. G. 725, 82 F. (2d) 405, 409 (C. C. P. A., 1936); In re Sola, 461 O. G. 474, 77 F. (2d) 627, 630 (C. C. P. A. 1935).