CASES ADJUDGED IN UNITED STATES COURT OF CUSTOMS AND PATENT APPEALS 572 O. G. 4; 32 C. C. P. A. 743; 146 F. (2d) 503; 64 USPQ 169 IN RE KOKATNUR (No. 4896) 1. PATENTS CLAIMS INDEFINITE-WORDS AND PHRASES "Liberatable only at temperatures of 150° C." is indefinite. 2. APPEALS-PROCEDURE AND PRACTICE-CLAIMS-INDEFINITE Examiner rejected claims 47 to 50 together, saying that 47 was broader than 48, but that 47 was indefinite; Board stated that 48 to 50 were not anticipated and allowed them, but held 47 indefinite and did not mention prior art as to it; Court holds that Board found 47 not anticipated, but rejects it as indefinite as to product "characterized by greater protection *" since there is no basis for comparison. * United States Court of Customs and Patent Appeals, December 11, 1944 APPEAL from Patent Office, Serial No. 43,057 [Affirmed] Frederic P. Warfield for appellant. W. W. Cochran (E. L. Reynolds of counsel) for the Commissioner of Patents. [Oral argument November 1, 1944, by Mr. Warfield and Mr. Reynolds] Before GARRETT, Presiding Judge, and BLAND, HATFIELD, JACKSON, and O'CONNELL, Associate Judges GARRETT, Presiding Judge, delivered the opinion of the court: This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming that of the examiner as to the rejection of certain claims embraced in appellant's application for patent for a dehydrating process and the resultant product. The appeal as taken to us embraced six process claims, numbered 41 to 46, inclusive, and one product claim, numbered 47. At the hear 27 ing before us appellant withdrew his appeal as to (process) claim 45. So, we have for consideration five process claims and one product claim. We first consider (excluding withdrawn claim 45) the process claims. Of these, claim 41 is representative. It reads: 41. A process for completely dehydrating water soluble inorganic materials containing chemically combined water liberatable only at temperatures in the order of 150° C. and which are hydrolizable which process comprises the removal of water by introducing therewith a water-immiscible organic diluent having a boiling point of at least 150° C. and which is non-reactive with said materials and a non-solvent thereof, and which at a temperature slightly below is boiling point will produce a partial pressure which only when added to the partial pressure of the last hydrate at the same temperature is in excess of the external pressure, and then distilling the resulting mixture until all water both chemically and mechanically held by said materials is removed, the amount of diluent added being in excess of that required to remove all of said water. The brief on behalf of appellant states: Claim 42 is limited to a process for producing anhydrous and caustic alkali oxides or hydroxides. This claim is more limited than claim 41 and everything said as to that claim applies equally to claim 42. Claim 43 contains all the limitations already referred to in connection with claim 41 and is further specifically limited as to the class of compounds with which it is to be used. Claims 44 to 46 inclusive also have all the limitations of claim 41, already discussed in detail with other added limitations and it is thought that these claims need not be discussed in detail. It is apparent from the foregoing that there are no limitations in claims 42, 43, 44, and 46 which require their consideration separately from claim 41. In other words, all the process claims now before us stand or fall together. They were rejected on the ground of lack of invention over prior art, the references as listed in the decision of the board being: Copisarow, "Dehydration of Salts", Nature, Vol. 128, page 838 (Nov. 14, 1931). Jones et al, "Determination of Moisture by the Volatile Solvent Method", Analyst, Vol. 52, pages 383-387 (1927) Othmer et al, "Anhydrous Sodium Hydroxide", Ind. & Eng. Chem., Vol. 32, pages 154-160 Feb. 1940, (not cited as anticipatory). Mellor, "Inorganic and Theoretical Chemistry", Vol. III, page 236 (1923). Badger & McCabe, "Elements of Chemical Engineering", first edition, (1931). McGraw-Hill, New York. In the course of his statement following the appeal to the board, the examiner described the subject matter as follows: The claims are drawn to a process for dehydrating aqueous solutions of materials which tend to form hydrates which give up their water of hydration only with difficulty, and some of which tend to hydrolyze or decompose in solution when heated at very high temperatures. Such materials include sodium hydroxide, magnesium chloride, and zinc chloride, as well as many other compounds. When such solutions are evaporated ordinarily, either a high vacuum is required to get the last trace of water out, or excessively high temperatures are required. ; Applicant dehydrates these solutions by heating them with liquids which do not mix with the water solutions, and which are themselves somewhat less volatile than water. Applicant's preferred liquid additive agent is kerosene. In his brief appellant commenting upon the foregoing says: This is quite correct and clear. The claims however have still further limitations. * * * Claim 41 limits the process to soluble inorganic materials containing chemically combined water, liberatable only at temperatures of 150° C. Applicant's whole purpose is to remove the water of combination from such substances. Substances, such as sodium hydroxide, with which applicant is particularly concerned liberate combined water at 150° C. or higher, and hence applicant has chosen a temperature in the order of 150° C. to define the invention. This claim next defines the diluent as a water-immiscible organic diluent having a boiling point of at least 150° C. and which is non-reactive with said materials and non-solvent thereof. We have then a process carried on with certain specifically defined materials and the use of such materials is necessary to obtain the result desired. The further definition of the solvent states that at a temperature slightly below its boiling point, it will produce a partial pressure which only when added to the partial pressure of the hydrate at the same temperature is in excess of the external pressure. The resulting mixture is then distilled until all water chemically and mechanically held by said materials is removed. The claim closes with the very definite limitation that the amount of diluent added is to be in excess of that required to remove all of the water. If this were not done there would be no diluent remaining to provide the desired protective coating. Of the references above listed the ones principally relied upon below in connection with the process claims before us are the articles of Copisarow, Jones et al., and Mellor. The first two are the only ones referred to in appellant's reasons of appeal. In applying the references the examiner said: Applicant's process claims call for completely dehydrating inorganic solutions by distilling such solutions with inert, immiscible liquid which has a boiling point of at least 150° C., in amount in excess of that required to remove all of the water. Applicant maintains that the limit of 150° C. is critical and that liquids boiling at lower temperatures would not be operative. However, the art shows that lower boiling liquids do operate in this sort of process and any advantage there might be in using higher boiling added liquids could be predicted by simple calculation from the steam distillation law discussed above, and would not amount to any surprising discovery by applicant. The Copisarow publication discloses complete dehydration of salts of the class with which applicant's claims are con cerned, by distilling with neutral liquids such as toluol (boiling point 111° C.). When the toluol is removed by drying over solid paraffin to remove the toluol only, the salt is found to be completely free from water, in the specific example shown for copper sulfate. As shown by Mellor, copper sulfate is included in the class of materials which applicant includes in claim 41 in reciting, "water-soluble inorganic materials containing chemically combined water liberatable only at temperatures in the order of 150° C. and which are hydrolyzable." Copisarow teaches (line 7) that either a hydrated salt or its aqueous solution may be completely dehydrated in this way; and specifically mentions magnesium chloride, one of applicant's species. The reference further states, "Owing to its elasticity as regards medium, temperature, and pressure, the process may be of general application.” The only distinction in applicant's broad claims over what Copisarow specifically discloses is the limit of 150° C. on the boiling point of the added liquid. This limit has not been shown to be critical or to have any unexpected advantage whatever over toluol, which the reference discloses. It is thought that applicant is not entitled to a patent for merely calculating from known mathematical relations that removal of water would proceed faster when a higher-boiling added liquid is used. Jones teaches the dehydration of various materials by distilling with waterimmiscible liquids. The use of the method to determine moisture content of materials by measuring the volume of water removed, indicates the completeness of dehydration effected by this method. Jones discloses specifically the use of kerosene as a dehydrating agent. No invention can be seen in dehydrating inorganic materials of the class recited in the claims by this method. Applicant also claims application of this process specifically to sodium hydroxide, magnesium chloride, and zinc sulfate. It is not thought that any of these species is patentable to applicant in view of Copisarow's indication that the process would be expected to be generally applicable. None of these specific compounds behaves unexpectedly in the old process. The discussion on the part of the board was quite brief and amounted to nothing more than an approval of the examiner's holding with respect to the process claims on appeal. The brief of the Solicitor for the Patent Office before us correctly states that "the language used in appellant's specification and in the appealed claims is complex and, in some cases, indefinite," and we have experienced some difficulty in fully understanding appellant's contentions as to the errors alleged in the reasons of appeal. Apparently, it is appellant's position that the boiling point of “at least 150° C." of the water-immiscible organic diluent defined in claim 41, supra, constitutes a critical element. It will be noted that the boiling point of the toluol referred to in the Copisarow publication is 111° C., and it is urged that the latter "accordingly does not come within the class of water immiscible organic diluents having a boiling point of at least 150° C." Appellant also stresses the word "completely," as used in the introductory clauses of claims 41 and 46-"completely dehydrating water soluble inorganic materials"—and urges that the prior art does not teach complete dehydration, his theory seemingly being that complete dehydration is accomplished only by distilling the materials, or solutions, with a water-immiscible liquid added as a diluent having a boiling point of at least 150° C., the amount of the diluent being in excess of the amount required to remove all of said water. In his brief it is said: Copisarow does not define a distillation which will remove all water both chemically and mechanically held by said materials, nor disclose any process which would necessarily result in such action. Copisarow makes no suggestion whatsoever of the very important and definite characteristic of this process in that the amount of diluent added is in excess of that required to remove all of said water. If this were not done the coating would not be present in the product. It will be observed that the claim above quoted as illustrative contains the language "which at a temperature slightly below its boiling point will produce a partial pressure which only when added to the partial pressure of the last hydrate at the same temperature is in excess of the external pressure." Standing alone, this language is cryptic, and appellant does not seem to rely upon it as a limitation which, of itself, adds patentability to the claims. It was interpreted by the examiner, and his interpretation is epitomized in the brief of the Solicitor for the Patent Office (page references to the record being omitted) as follows: the actual principle involved is extremely simple, as is fully pointed out in the examiner's statement * *, and explained in the Badger et al. text * * *. This principle is that if two immiscible liquids are heated together the evaporation of both will begin when the sum of their separate (or partial) pressures reaches the pressure on the apparatus in which the liquids are placed. As stated by Badger et al.: "This means that the materials are volatilized at temperatures considerably lower than their boiling temperature at the total pressure chosen. This makes possible the distillation of high-boiling substances without decomposition. The solicitor's brief then adds: The application of this principle to the dehydration of magnesium chloride, one of the specific substances treated by the appellant, is disclosed in the Copisarow article *. In the process there described toluol is the immiscible liquid which is used in expelling the water. It is deemed unnecessary to elaborate further upon the issues and arguments relating to the process claims under consideration, and we proceed to a statement of our conclusions respecting them: (1) Use of the word "completely" in connection with the word "dehydrating" in the introductory clauses of claims 41 and 46 is of no patentable significance in this case. (2) There is no showing by appellant in his specification, or otherwise, that the 150° C. boiling point is a critical element. 654637-46 |