[1] The expression "liberatable only at temperatures of 150° C." is indefinite, and, notwithstanding appellant's contention to the contrary, we agree with the examiner's statement that "The limit as to boiling point of the added liquid being above 150° C. is only an arbitrary selection of convenient operating conditions which one skilled in the art could determine by simple calculation from known mathematical relations." In other words, appellant made no discovery of anything new with reference to heating two immiscible liquids together. (3) No reasons are presented which justify a holding that the tribunals of the Patent Office erred in rejecting claims 41, 42, 43, 44, and 46. The product claim on appeal reads: 47. As a new product, in finely divided form, anhydrous, solid, water soluble, hygroscopic inorganic material, each particle whereof has a superficial coating of a water insoluble, organic diluent having a boiling point of at least 150° C. which is inert to said anhydrous material and adapted to protect the same material from atmospheric reactions, said product being characterized by greater protection against action of the product on human tissue. [2] The examiner rejected the claim along with three other product claims (numbered 48, 49, and 50) upon prior art (specifically upon Copisarow, Jones and Babbit), and also rejected it as "being indefinite," saying: Claim 47 is broader [than claim 48], being drawn to anhydrous granular hygroscopic material having a coating of a water-insoluble inert organic "diluent" having a boiling point of at least 150° C. The term "diluent" is not proper as used in this claim since the coating material dilutes nothing. Claim 47 further states, indefinitely, that the coated product is characterized by "greater protection against action of the product on human tissue." This latter limitation is wholly meaningless since the great majority of materials of the class with which the claim is converned have no particular action on human tissues. Magnesium chloride, for example, is fairly harmless, as is copper sulfate, magnesium sulfate, sodium sulfate, and cobalt chloride, to mention only a few. Moreover, while the claim mentions "greater" protection, there is no basis whatever for comparison. Claim 47 is too indefinite to be allowable even if there were no art. The board stated that "Claims 48, 49 and 50 [which are product claims] are not anticipated by Copisarow or Jones, or Babbit," and held those claims allowable. It did not state that claim 47 was not anticipated by such references, its only specific statement relating to the claim being: We also agree with the Examiner that claim 47 is too vague and indefinite to point out applicant's invention as required by law. In his reasons of appeal appellant did not assign error as to rejection of the claim upon the art cited, but confined his assignment to the rejection upon the basis of indefiniteness. The brief of the Solicitor for the Patent Office, therefore, suggests that the holding below should be affirmed here without consideration of claim 47 on its merits, but adds "In the event that it is considered on the merits, it should be affirmed for the reasons given by the examiner * It is argued by appellant, in effect, that since the board held product claims 48, 49, and 50 not to be anticipated by the prior art, the same must be regarded as applying to claim 47. In view of the state of the record and especially the very meagre discussion on the part of the board, we feel constrained to agree with the reasoning of appellant in respect to the matter of prior art, but we are unable to agree that there was error in rejecting the claim on the ground of indefiniteness for the reasons given by the examiner and adopted by the board as above recited. Appellant having withdrawn claim 45, the appeal as to it is dismissed, and, for the reasons outlined, the decision of the board as to claims 41, 42, 43, 44, 46, and 47 is affirmed. 571 O. G. 349; 32 C. C. Pa. 749; 146 F. (2d) 501; 64 USPQ 180 IN RE OLSEN (No. 4922) 1. PATENTABILITY—ADDING OR SUBTRACTING PARTS If idea of adding element to produce improved composition was obvious, fact that improvements may have exceeded expectations does not render it patentable. United States Court of Customs and Patent Appeals, December 11,, [Affirmed] 1944 APPEAL from Patent Office, Serial No. 306,409 Chritton, Wiles, Davies, Hirschl and Dawson (Charles J. Merriam, Nelson J. Jewett, and Bernard A. Schroeder, of counsel) for appellant. W. W. Cochran (E. L. Reynolds of counsel) for the Commissioner of Patents. [Oral argument November 2, 1944, by Mr. Merriam 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: Appellant brings before us for review the decision of the Board of Appeals of the United States Patent Office affirming that of the examiner rejecting twelve claims (numbered 4 to 6, inclusive, 12 to 15, inclusive, and 17 to 21, inclusive) of his application (serial No. 306,409), for patent relating to a soap composition for use in drycleaning operations. Two claims (numbered, respectively, 8 and 11) stand allowed. All the claims on appeal were rejected as presenting nothing patentable over prior art cited, claim 21 being rejected on the additional ground that it is "too broad in the recitation of 'an inert finely divided inorganic absorbent."" In the brief for appellant before us claims 4 and 20 are quoted as illustrative of the rejected claims. They read: 4. A dry cleaning soap composition comprising a sodium soap of a soap-forming fatty acid, a solubilizing portion of an inert hydrocarbon dispersing oil therein, the amount of the oil being sufficient to render the soap normally plastic, and diatomaceous earth, the ratio of diatomaceous earth to the plasticizing portion of the oil being from 1:2 to 2:1. 20. A dry cleaning soap composition comprising diatomaceous earth, a fatty acid-caustic alkali soap, and an inert dispersing oil in sufficient proportion to render the soap soluble in dry cleaning solvents, the soap constituting from 6% to 10% of the composition, the amount of oil being in excess of the amount of soap, and the diatomaceous earth being from one-half to twice the combined amount of oil and soap. The examiner defined the several claims as follows: Claims Claims 18-21 Claims 4, 5, 6, 12, 13, and 14 are drawn to a sodium fatty acid soap. 15 and 17 are drawn to a water soluble detergent fatty acid soap. are drawn to a fatty acid caustic soap. Claims 4 and 5 are specific to a hydrocarbon oil as the dispersing medium. Claim 19 recites a light mineral oil. Claims 6, 12-15, 17, 18, 20, and 21 recite an inert dispersing oil. Claims 4-6, 12-15, and 17-20 are specific to diatomaceous earth. Claim 21 recites an inert finely divided inorganic absorbent. The references cited by the examiner (each of which was also specifically referred to in the decision of the board) are: Hawliczek (Br.), 23,463, 1904. Hampton, 2,143,066, January 10, 1939. Washing, Cleaning, and Polishing Materials-Bureau of Standards Circular, No. 383 (1930), pp. 9, 26, and 27. The Donlan and Hampton patents and the Bureau of Standards circular evidently were cited "to show," as expressed in the brief of the Solicitor for the Patent Office, "more or less conventional dry cleaning soap compositions comprising sodium soaps of fatty acids dispersed in inert hydrocarbon oils." Appellant, in his application concedes that such soaps are old. They are in a plastic or paste condition and do not have diatomaceous earth as an ingredient of their composition. Appellant uses diatomaceous earth as an ingredient whereby due, it is said, to the absorptive qualities of the earth, the final product is in powdered form. The British patents disclose compositions in which diatomaceous earth is an ingredient. These (seemingly because of the absence of certain other ingredients) are not suitable for dry-cleaning operations but are otherwise used as cleansing soap. The examiner stated: The patent to Hawliczek shows a cleaning composition in powdered form which is obtained by mixing diatomaceous earth (kieselguhr) with a soap of jelly-like consistency. The diatomaceous earth solidifies the mass and the composition assumes a granular or pulverulent form. Ormandy shows that diatomaceous earth has the faculty of retaining moisture and if mixed with soap which is too soft it will harden to soap, absorbing a considerable amount of water. Ormandy also shows that diatomaceous earth enhances the properties of soap for cleaning purposes. In view of the prior art disclosures, the question to be determined is whether it constituted invention on the part of appellant to add diatomaceous earth shown to be an ingredient of soaps not used in dry-cleaning operations to a soap composition not containing diatomaceous earth used in such operations. In other words, as stated in the brief of the Solicitor for the Patent Office— It is quite evident that, except for the diatomaceous earth, appellant's dry cleaning composition is old, and even conventional, and this does not appear to be denied by the appellant. The issue presented here, therefore is merely whether, in view of the fact that it was old to add diatomaceous earth to other soaps, it required invention to add such earth to the old dry cleaning soaps recited in the rejected claims. Appellant's brief states: Diatomaceous earth is a finely divided material of well known absorptive properties which consists of the skeletons of unicellular marine organisms. The description so given harmonizes with the definitions recited by standard lexicographers. It is noted that the absorptive qualities of the earth are stated to be well known, which implies, of course, that appellant was familiar with such qualities, and with the use of the earth in prior art to reduce pasty soap to powdered form. So, it would not seem that appellant can be accredited with any broad discovery in that regard. In his brief the point which he stresses is the claim that he discovered that by adding the diatomaceous earth "the plastic soap could be reduced to a powder form without destroying its solubility or dispersibility in dry cleaning solvents." It is alleged that paste soap cannot be added to dry cleaning solvent in the dry cleaning apparatus without being predissolved in naptha; that the paste soap requires considerable agitation in order to bring it into solution; that "a dry soap could have been produced by remov ing, or simply by not adding, the dispersing oil," but that this "would have left a non-soluble soap"; that "It was necessary to find a soap which would be solid and would dissolve in naptha" and that "The remarkable thing about applicant's discovery is that the diato maceous earth absorbs the oil and the soap and yet permits effective dispersion of the soap in the dry cleaning solvents." Assuming the allegations so made to be correct, we nevertheless are unable to agree that appellant made any patentable invention or discovery. [1] We agree with the following statement in the brief of the Solicitor for the Patent Office: The earth used by Hawliczek necessarily absorbs the soap composition and yet retains it in such a way that it is an effective cleanser, which is the alleged action of the earth in appellant's composition. Naturally, since dry cleaning soaps are used in a manner differing somewhat from that in which ordinary soaps are used, the improvement due to the addition of the earth manifests itself in a somewhat different form, but it does not follow from this that invention was involved. If the idea of adding the earth to produce improvement was an obvious one, the fact that the improvement may have exceeded expectations does not render it patentable. (Naamlooze Venootschafs et al. v. Coe, 132 F. (2d) 573; Orr v. Skilsaw, Inc., 124 F. (2d) 751; In re Kepler, 132 F. (2d) 130, 30 C. C. P. A. 726). As was said by this Court in the case last cited: "A patent should not be granted for appellant's, discovery of a result that would flow naturally from the teachings of the prior art." It may be said that we do not understand appellant to contend that there is anything critical in the proportions of the respective materials defined in the appealed claims. The ratios differ widely and whatever may be appellant's position respecting the matter of criticalness we feel assured that nothing is taught which would justify a holding that they are critical. What has been said applies to claim 21 as well as to all the other claims and it is unnecessary to consider the ground of breadth upon which it was additionally rejected. For the reasons stated, the decision of the board is affirmed. 573 O. G. 364; 32 C. C. P. A. 752; 146 F. (2d) 273; 64 USPQ 188 IN RE LOBOSCO (No. 4923) 1. PATENTS-APPEALS-IN GENERAL Court concludes that it was view of examiner and Board that claims of respective groups stand or fall together, since neither examiner in statement nor Board in decision discussed limitations in claims in detail. 2. APPEALS-WEIGHT GIVEN DECISIONS BELOW Subject matter (electrical) is highly technical, and, in absence of traverse by applicant of accuracy of description by Office experts of device and prior devices, Court accepts description. 3. PATENTABILITY-ANTICIPATION-IN GENERAL Claims are refused although no one reference discloses specific apparatus such as that defined by applicant and various prior art features would require modification to produce applicant's device, since no claim specifically distin |