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PATENTABILITY-Continued. 42. METHOD OF MAKING FUSED QUARTZ ARTICLES.-Appellant's claimed method of making fused quartz articles, alleged by appellant to differ from the prior art references in the use of silicic acid, "an entirely different chemical compound" than powdered quartz crystals or other powders Held not to rise to the dignity of invention. a W. M. Welch Manufacturing Company v. Coe, Commissioner of Patents, 21.

43. TUBE COUPLING.-A claim to a tube element assembly comprising a metal tube to be coupled and a thin flexible metal protective sleeve Held unpatentable over appellant's own prior patent. *In re Parker, 416.

44. APPEAL REASONS OF APPEAL.-Where each of two claims of appellants' application was rejected on two separate grounds, and in the case of each claim one of the grounds of rejection was not challenged by the reasons of appeal, Held that the rejections of these claims must be affirmed without consideration of the merits. *In re Dalzell et al., 222. 45. FREEZING COMESTIBLES.-Appellant Held not entitled to a patent on the freezing of comestibles with compatible solutions. Noyes v. Coe, Commissioner of Patents, 23.

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46. AIRCRAFT.-Certain claims to aircraft construction Held unpatentable over the prior art. *In re McKaughan, 419.

47. PAPER DRINKING CUP HANDLE.-A claim to a paper drinking cup handle Held unpatentable over the prior art. *In re Carew, 423.

48. VACUUM-TIGHT SEAL.-In appellant's application relating to a metal body for making a vacuum-tight metal-to-glass seal, Held that claims 39, 40, and 42 were properly rejected as presenting nothing patentable over a patent to Scott; and that "since claim 41 is dependent upon claim 39, its patentability is not deemed to be enhanced by the degree of temperature ('of the order of 1300° C.') named therein for preforming the oxide film, although that degree is considerably in excess of the degree (950° C.) named by Scott, and were it not made dependent on claim 39, might not be met by Scott." *In re Kingston, 297.

49. MASK.-Claims to a mask for use in comnection with arc welding Held unpatentable over the prior art. *In re Holslag, 409.

50. COMBUSTIBLE GAS INDICATOR.-Certain apparatus and method claims in appellants' application relating to a combustible gas indicator Held unpatentable over the prior art. *In re Jacobson et al, 254.

51. GAS CLEANING APPARATUS.-Claims to gas cleaning apparatus Held unpatentable over the prior art. *In re Anderson, 425. 52. BOTTLE WASHING MACHINE. In connection with claims 1, 2, 4 to 9, 11, 12, and 13 of appellants' application for a patent on a bottle washing machine, Held that these claims were properly rejected as unpatentable over a patent to Ladewig et al.; that there was no invention in substituting the pivoted lever ejector of appellants for the plunger ejector of Ladewig et al.; and that the clearly functional limitations upon which appellants relied for differentiation did not render the claims allowable over that reference. *In re Trier et al., 231.

53. INTERNAL COMBUSTION ENGINE. Certain claims of an application on automatic compression control for an internal combustion engine Held unpatentable over the prior art. *In re Fisher, 282.

54. INSECTICIDE. "Agreeable to the Patent Office findings, it is at once apparent that substantially pure gamma, gamma-dipyridyl is not a new substance discovered by applicant, and that he was not the first to use it for the purpose of determining its value in combating insect infestation on vegetation. As was properly said by the Board, the most that appellant has done was to discover that under certain conditions, not specified in the appealed claim, the material would be effective. It seems too clear to invite extended discussion that under such circumstances the appellant is not entitled to a patent claim for an insecticide which contains as its essential active ingredient, substantially pure gamma, gamma-dipyridyl." *In re Smith, 243.

PATENTABILITY-Continued.

55. PROCESS-REFERENCES. "Appellant insists that the references relate to patents for devices and not to patents for processes and therefore it was not proper to employ such references in rejecting the appealed claims. In support of this contention, appellant cites the rule of law as stated in Carnegie Steel Company v. Cambria Iron Company, 185 U. S. 403, 99 O. G. 1866. The rule of law upon which appellant relies does not apply, however, where the previously patented devices in their normal and usual operation will perform the function which an appellant claims in a subsequent application for a process patent. In re Earl Ackenbach, 18 C. C. P. A. (Patents) 769, 772, 45 F. (2d) 437, 7 USPQ 268, 403 O. G. 789." *IN RE ERNST, 390.

56. METHOD OF DRAWING A WORK PIECE.-Certain claims to a method of drawing a work piece Held unpatentable over the prior art. *Id.

57. HYDROCARBON OILS.-The claims of appellant's application for patent for a method of treatment of hydrocarbon oils Held unpatentable over the prior art. *In re Chechot, 412.

58. TREATING AND PACKAGING DRIED FRUITS.-Certain claims to a method of treating and packaging dried fruit Held unpatentable over the prior art. *In re Richmond, 368.

59. COMBINATION.-"Ordinarily, a combination claim, the elements of which are made up of prior art items, must show some new, unexpected, and useful result. It should not be merely the assembling into one device of the various desirable features disclosed in the prior art, when each of the old elements performs in the new combination its same old function." *In re Wagner et al., 372.

60. RECORDING MAXIMUM DEMAND METER.-Certain claims to a recording maximum demand meter Held unpatentable over the prior art. *Id. 61. MEDICINAL TABLET.-A claim to a compressed medicinal tablet and a claim to a process of producing the same Held unpatentable over the prior art. *In re Weber, 428. 62. PATENTABLE SUBJECT MATTER.-"Owing to the fact that claims 1 and 2 are essentially directed to a purely mental process of making a selection of the amount of coating material to be used in coating a porous fiber board in accordance with a predetermined system they do not define patentable subject matter." *In re Heritage, 454. 63. FIBER BOARD-CRITICAL DIFFERENCE."-Product claims 15, 19, 20, and 21, drawn to a "dry surface-coated fiber board" in which each of the surface fibers is completely coated, but the pores between them remain open, Held unpatentable over the prior art, where nothing of record established that "there is any critical difference between coating the surface fibers only and coating all the fibers;" citing Continental Fibre Co. v. Formica Insulation Co., 287 Fed. 455. *Id. 64. METHOD OF COATING FIBER BOARD-FUNCTIONAL LIMITATION.-In regard to claims 13 and 25, and with particular reference to claim 13, which defines a "method of making a coated porous-surfaced fiber board" and recites that the quantity of coating composition applied is "but slightly in excess of the amount which is just sufficient to coat the fibers completely whereby approximately the porosity of the uncoated board is retained for exhibiting substantially the same sound reduction coefficient as the uncoated board," Held that "the limitation as to the amount of coating material in those claims is merely functional and, therefore, cannot be relied upon to lend patentability to the claims;" citing General Electric Co. v. Wabash Appliance Corp. et al., 304 U. S. 364, 491 O. G. 463. *Id.

*Id.

65. SAME. Claims 4 and 5, directed to a method of coating a porous sound reducing fiber board, Held unpatentable over the prior art. 66. INVENTION.-"In describing his drawing, the patentee Sciaky states that the showing is diagrammatic. Clearly his device is not shown as a unit, as is the device of appellant. The Examiner held, however, that it would not require invention to assemble the elements of the Sciaky patent into a unit, as, for instance, mounting them on a common base or placing them in a housing. It seems to us that such an expedient would be obvious to one skilled in the art, for the reason that diagrammatic drawings are commonly used by draftsmen in similar situations." *In re Rockwell, 461.

PATENTABILITY—Continued.

68.

67. POWER UNIT.-Certain claims to a power unit Held unpatentable over the prior art. *id. INVENTION.-"The point of law which appellants raise was considered and passed upon by this court in the recent case of In re Stover, 32 C. C. P. A. Patents) 823, 146 F. (2d) 299, 64 USPQ 186, 573 O. G. 367. There we held that under well established authority no creative concept or invention is involved if the cited references, individually or collectively, suggest doing the thing that the applicant has done." *In re Kuền et al., 394.

69. THERMAL RESPONSIVE WAFER.-Claims to a thermal responsive wafer and to the method of making it Held unpatentable over the prior art. *Id. 70. CLAIMS-MARKUSH TYPE".-"We think that under the circumstances we would be wholly unjustified in holding that the alcohols and esters under consideration may be properly classifiable together for Markush claim purposes and in regarding them as equivalents chiefly upon the ground that, as appellants state, 'said compounds are useful as pharmaceuticals (so-called "sex hormones") or as intermediates in the preparation of such pharmaceuticals.' If all things which are useful as pharmaceuticals or as intermediates in the preparation thereof are to be held to be equivalents in the sense in which we are using that term, it is difficult to see how far afield that might lead in the application of the Markush doctrine." *In re Ruzicka et al., 449. 71. AIRBAG Claims to a sectional airbag and method of manufacturing the same Held unpatentable over the prior art. *In re Wilson, 477. 72. REFERENCE. In response to the argument that thryoid glandular substance extracted by means of alcoholic hydrochloric acid, as shown in the reference, does not produce the same residue as that substance extracted with ethyl alcohol, as shown in appellant's application, Held, "If the alcoholic hydrochloric acid would produce different results from those produced by alcohol alone, a duty surely devolved upon appellant to make such difference known." *In re Meyer, 465. 73. THYROID PREPARATION.-Certain claims to a thyroid preparation and to a process of producing it Held properly rejected in view of the cited reference, a publication by one Sayama. *Id.

* * *

74 SAMR "The affidavits and letters in the record indicate very clearly that the use of the substance defined in the rejected claims produces more favorable results with less undesirable effects than those produced by other thyroid preparations. The record, however, does not negative a like effect by the use of the saline extract of the residue of Sayama. We cannot say that the residue extracts of Sayama and appellant are different. Each produces metabolic activity and increase in pulse rate, although theextent is not set forth in either the application or the reference." *Id.

73. PROCESS OF REMOVING VOIDS FROM A PLASTIC VESICULAR MATERIAL.In claims to a process of removing voids from a plastic vesicular material, the recited step of "centrifugally attenuating said material into a continuous film mechanically supported on one side only on a substantially coniform surface" Held to define structure; and the claims Held properly rejected. In re Cornell, 445.

70, LUBRICANT.-Certain claims to a lubricant Held unpatentable over the prior art. *In re Bert H. Lincoln and Alfred Henriksen, deceased, by John W. Wolfe, administrator de Bonis Non, 497.

:†. AGGREGATION.-Claims to a remote controlled mobile submersible mechanical unit Held properly rejected as being aggregational. *In re Starr, 517. 74, SAME. "It is clear that all of the elements set out in the claims are old, and that each performs a well-known individual function. They are all entirely independent one of another, and each operates exactly as it would if none of the others were in existence. They cannot properly be held to cooperate in the production of a unitary result. ** * * The total result is merely the sum of those produced by the separate parts. It has been well-settled that such arrangement is a mere aggregation and therefore devoid of patentability." Id.

PATENTABILITY-Continued.

79. ARTICLE HANDLING APPARATUS.-Certain claims to article handling apparatus Held unpatentable over the prior art. *In re Lippold, 526. 80. INVENTION-COMMERCIAL SUCCESS.-"An improvement which results in no more than is to be expected from one skilled in the art does not constitute invention and where lack of novelty and invention are clearly shown, no legal significance can be attached to the fact that utility and commercial success were accomplished by the efforts of an applicant for a patent.' *In re Irmscher, 543.

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81. APPARATUS AND METHOD FOR HANDLING ARTICLES.-Certain claims to apparatus and method for handling articles Held unpatentable over the prior art. *Id.

82. COMMERCIAL SUCCESS.-"Although commercial success may be persuasive in doubtful cases, it is well settled that where it is evident that claims do not define patentable subject matter commercial success is immaterial.' *In re Normann et al., 532.

83. REJECTION BASED ON INTERFERENCE.

The appealed claims Held properly rejected as unpatentable over the counts of an interference which appellants lost. *Id.

84 COIN HOLDER.-Certain claims to a coin holder Held unpatentable over the prior art. *In re Smith, 540.

PERJURY.

See Interference, 65.

PETITION FOR REHEARING. See Appeal to the United States Court of Customs and Patent Appeals, 10, 11, 12, 13.

PRACTICE IN THE U. S. PATENT OFFICE. See Applications, 2, 5, 9. PATENTS-SUBCOMBINATION.-"The statutes permit, and it is the settled practice of the Patent Office, many times sustained by this Court, to allow claims to a combination and also its subcombinations." Special Equipment Company v. Coe, Com. of Patents, 561.

PRECEDENTS. See Trade-Marks, 78.

PRESUMPTION. See Interference, 24.

PRIORITY OF INVENTION. See Interference; Violation of Antitrust Laws, 5. PRIOR PATENTS. See Appeal to the U. S. Court of Customs and Patent Appeals, 16; Particular Patents, 3; Patentability, 34, 43.

PROCESS. See Appeal to the U. S. Court of Customs and Patent Appeals, 16; Interference, 39; Invention, 13; Patentability, 4, 13, 14, 18, 29, 55, 61, 62, 73, 75; Scope of Patent, 1; Sufficiency of Disclosure, 1; Violation of Antitrust Laws, 5, 7, 12. PRODUCT. See Interference, 39; Patentability, 4, 18, 63; Scope of Patent, 1. PROOF. See Interference, 46, 52; Patentability, 17, 22; Trade-Marks, 63, 64, 65, 66, 67, 68.

PROPER NAMES. See Trade-Marks, 6.

PROSECUTION OF APPLICATION. See Interference, 3; Reissue Applications, 1. PUBLICATIONS. See Claims, 6; Trade-Marks, 26, 27, 28, 60.

REASONS OF APPEALS. See Appeal to the U. S. Court of Customs and Patent
Appeals, 5, 10, 17; Patentability, 44.

APPEAL JURISDICTION.-"The function of this court is to 'revise the decision
appealed from in a summary way,
and the revision shall

* * *

be confined to the points set forth in the reasons of appeal.' Sec. 4914 R. S., U. S. C., title 35, sec. 62. If the reasons of appeal are of such a character that it is impossible to revise the decision appealed from we may and should disregard such reasons and dismiss the appeal." *Cohen et al. v. Sparrow, Cohen et al. v. Gille, 93.

RECORD OF THE CASE. See Appeal to the U. S. Court of Customs and Patent Appeals, 1, 2, 6, 8, 16; Certiorari; Decisions of the Board of Appeals of the U. S. Patent Office; Interference, 5, 11, 13, 14, 15, 20, 21, 22, 23, 40, 42, 44, 54, 55, 62; Invention, 4, 12, 13, 14; Patentability, 63, 74; Right to Make Claims, 1; Suits under Section 4915, 1, 4; Trade-Marks, 13; Violation of Antitrust Laws, 10.

REDUCTION TO PRACTICE. See Interference, 1, 6, 12, 18, 19, 33, 34, 38 to 58 inclusive.

654637-46- -45

PATENTABILITY-Continued.

68.

67. POWER UNIT.-Certain claims to a power unit Held unpatentable over the prior art. *Id. INVENTION.-"The point of law which appellants raise was considered and passed upon by this court in the recent case of In re Stover, 32 C. C. P. A. (Patents) 823, 146 F. (2d) 299, 64 USPQ 186, 573 O. G. 367. There we held that under well established authority no creative concept or invention is involved if the cited references, individually or collectively, suggest doing the thing that the applicant has done." *In re Kuhn et al., 394.

69. THERMAL RESPONSIVE WAFER.-Claims to a thermal responsive wafer and to the method of making it Held unpatentable over the prior art. *Id. 70. CLAIMS "MARKUSH TYPE".-"We think that under the circumstances we would be wholly unjustified in holding that the alcohols and esters under consideration may be properly classifiable together for Markush claim purposes and in regarding them as equivalents chiefly upon the ground that, as appellants state, 'said compounds are useful as pharmaceuticals (so-called "sex hormones") or as intermediates in the preparation of such pharmaceuticals.' If all things which are useful as pharmaceuticals or as intermediates in the preparation thereof are to be held to be equivalents in the sense in which we are using that term, it is difficult to see how far afield that might lead in the application of the Markush doctrine." *In re Ruzicka et al., 449.

71. AIRBAG.-Claims to a sectional airbag and method of manufacturing the same Held unpatentable over the prior art. *In re Wilson, 477. 72. REFERENCE. In response to the argument that thryoid glandular substance extracted by means of alcoholic hydrochloric acid, as shown in the reference, does not produce the same residue as that substance extracted with ethyl alcohol, as shown in appellant's application, Held, "If the alcoholic hydrochloric acid * * * would produce different results from those produced by alcohol alone, a duty surely devolved upon appellant to make such difference known." *In re Meyer, 465. 73. THYROID PREPARATION.-Certain claims to a thyroid preparation and to a process of producing it Held properly rejected in view of the cited reference, a publication by one Sayama. *Id.

74. SAME. "The affidavits and letters in the record indicate very clearly that the use of the substance defined in the rejected claims produces more favorable results with less undesirable effects than those produced by other thyroid preparations. The record, however, does not negative a like effect by the use of the saline extract of the residue of Sayama. We cannot say that the residue extracts of Sayama and appellant are different. Each produces metabolic activity and increase in pulse rate, although theextent is not set forth in either the application or the reference." *Id. 75. PROCESS OF REMOVING VOIDS FROM A PLASTIC VESICULAR MATERIAL.In claims to a process of removing voids from a plastic vesicular material, the recited step of "centrifugally attenuating said material into a continuous film mechanically supported on one side only on a substantially coniform surface" Held to define structure; and the claims Held properly rejected. *In re Cornell, 445.

76. LUBRICANT.-Certain claims to a lubricant Held unpatentable over the prior art. *In re Bert H. Lincoln and Alfred Henriksen, deceased, by John W. Wolfe, administrator de Bonis Non, 497.

77. AGGREGATION.-Claims to a remote controlled mobile submersible mechanical unit Held properly rejected as being aggregational. *In re Starr, 517.

78. SAME. "It is clear that all of the elements set out in the claims are old, and that each performs a well-known individual function. They are all entirely independent one of another, and each operates exactly as it would if none of the others were in existence. They cannot properly be held to cooperate in the production of a unitary result. * * * The total result is merely the sum of those produced by the separate parts. It has been well-settled that such arrangement is a mere aggregation and therefore devoid of patentability." *Id.

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