[United States Court of Appeals, District of Columbia Circuit]

NATIONAL LEAD COMPANY v. ROBERT C. WATSON, COMMISSIONER OF PATENTS

No. 11735. Decided February 4, 1954

680 O. G. 285; 209 F. 2d 821; 100 USPQ 208

PATENTABILITY-PARTICULAR SUBJECT MATTER-WELL-DRILLING FLUID.

The judgment of the District Court dismissing the complaint in a suit seeking a patent on a well-drilling fluid is affirmed.

Affirmed.

John H. Bruninga (Richard G. Radue of counsel) for National Lead Company. E. L. Reynolds (Joseph Schimmel of counsel) for the Commissioner of Patents. Before EDGERTON, PRETTYMAN AND WASHINGTON, Circuit Judges

PER CURIAM:

The appellant National Lead Company brought suit under Rev. Stat. § 4915,1 seeking a patent on a well-drilling fluid. After a hearing, the District Court dismissed the complaint. National Lead Co. v. Marzall, 109 F. Supp. 20 (1952). This appeal followed.

The opinion of the District Court (Judge Curran) appears to us to state accurately the factual situation and the reasons why the complaint must be dismissed. It correctly interprets and applies our decision in National Lead Co. v. Marzall, 91 U. S. App. D. C. 63, 198 F. 2d 296 (1952.)

The judgment of the District Court will accordingly be affirmed. Affirmed.

[United States Court of Appeals, District of Columbia Circuit]

CLARK EQUIPMENT COMPANY v. SINCLAIR WEEKS, SECRETARY OF COMMERCE, AND ROBERT C. WATSON, COMMISSIONER OF PATENTS

No. 11899, No. 11900. Decided February 18, 1954

680 O. G. 819; 215 F. 2d 678; 100 USPQ 261

TRADE-MARKS-REGISTERIBILITY-TRUCKLOADER AND CARLOADER.

The judgment of the District Court refusing to authorize registration as trademarks the terms TRUCLOADER and CARLOADER, as being generic names of the goods and not distinctive of appellant's goods, is affirmed.

APPEALS from the United States District Court for the District of Columbia.

1 That section was repealed by section 5, act of July 19, 1952, c. 950, 66 Stat. 815, and is now replaced by 66 Stat. 803, 35 U. S. C. A. § § 145, 146.

AFFIRMED.

John A. Dienner (Francis C. Browne and William E. Schuyler, Jr., of counsel) for Clark Equipment Company.

E. L. Reynolds for the Commissioner of Patents.

Before EDGERTON, PRETTYMan, and DanAHER, Circuit Judges

PER CURIAM:

The District Court sustained appellees in refusing to register, as alleged trade-marks for appellant's fork lift trucks, the terms TRUCLOADER and CARLOADER. The court found that these are generic names of the goods and have not become distinctive of appellant's goods. We see no reason to disturb these findings. During the argument of these appeals it was suggested that "Clark's Trucloader" and "Clark's Carloader" might be entitled to registration, but that question is not before us.

Affirmed.

[United States Court of Appeals, District of Columbia Circuit] CLARK EQUIPMENT COMPANY, APPELLANT v. SINCLAIR WEEKS, SECRETARY OF COMMERCE, AND ROBERT WATSON, COMMISSIONER OF PATENTS, APPELLEES

No. 11899, No. 11900

688 O. G. 213

John A. Dienner (Francis C. Browne and William E. Schuyler, Jr., of counsel) for Clark Equipment Company.

E. L. Reynolds for the Commissioner of Patents.

Before EDGERTON, PRETTYMAN, and DANAHER, Circuit Judges

ORDER

IT IS ORDERED by the Court that the opinion of this Court filed herein February 18, 1954, be, and it is hereby, amended by inserting after the word “findings” in line 3 on page 21 a new sentence reading as follows:

We need not consider whether these "generic names" might some day become distinctive of appellant's goods and whether, if they did, they would be entitled to registration.

On consideration of appellant's petition for rehearing in the aboveentitled cases and appellees' memorandum in response, and appellant's reply thereto, it is FURTHER ORDERED by the Court that the petition for rehearing be, and it is hereby, denied.

Per curiam.

1 See 680 0. G. 819 (Mar. 23, 1954), column 2, line 14.

[United States Court of Appeals, District of Columbia Circuit]

PURDUE RESEARCH FOUNDATION v. ROBERT C. WATSON, COMMISSIONER OF PATENTS

No. 11892. Decided March 4, 1954

680 O. G. 1121; 214 F. 2d 221; 100 USPQ 343

1. CLAIMS ARTICLE OF

MANUFACTURE-CANNOT

RELY FOR

PATENTABILITY

MERELY ON RESULTS ACHIEVED. Where applicant is said to have discovered that germanium purified to between 99% and 100%, together with a correspondingly small amount of natural impurities, functions as an efficient crystal rectifier, Held that, since not all impurities bring about the desired result, the specification is fatally defective in not disclosing what the impurities are, and the claims were properly rejected as dependent only upon the results achieved. 2. PATENTABILITY PARTICULAR

RECTIFIER.

SUBJECT

MATTER

GERMANIUM

CRYSTAL

The decision of the District Court refusing to authorize the allowance of certain claims to a germanium crystal rectifier is affirmed.

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

John A. Dienner (Harold T. Stowell, of counsel) for Purdue Research Foundation.

E. L. Reynolds (Clarence W. Moore, of counsel) for the Commissioner of Patents.

Before EDGERTON, BAZELON and FAHY, Circuit Judges

FAHY, Circuit Judge:

Appellant Purdue Research Foundation is assignee of an applicant for a patent. The Patent Office rejected the application, whereupon suit was filed in the District Court under Rev. Stat. § 4915, as amended, 35 U. S. C. § 63.1 From judgment dismissing the complaint this appeal comes to us.

[1], [2] In its findings of fact and conclusions of law the court indicated its view that the application was inadequate and defective as a disclosure, and that the claims were functional in seeking to define the invention by a statement of purpose, desired result, or mode of operation, rather than the means for achieving the desired end. The court stated that a broad claim couched in functional terms would extend the patent monopoly beyond the invention. We think this conclusion is correct.

The invention is described as an electrical device used as a crystal rectifier comprising

“*** a body of semi-conducting germanium of a purity in excess of 99%, a contact element establishing electrical contact with one surface area of the body, and a metallic conductor in electrical conductive contact with a point on a surface of said body ***"

1 Rev. Stat. § 4915 was repealed in 1952 after this suit was commenced. 66 Stat. 815. It has been replaced by 66 Stat. 803, 35 U. S. C. A. § § 145, 146 (Supp. 1953),

Appellant claims that its assignor discovered that as germanium is purified to a degree between 99% and 100%, with a correspondingly small amount of natural impurities remaining, it exhibits remarkable properties, theretofore unknown, as a crystal rectifier. It will stand the flow of large amounts of current in the forward direction, and afford a high resistance to current flow in the reverse direction, without burning out in use. We assume these claims to be true. The application is fatally defective, however, in not disclosing what the impurities are except to describe them as “ionized impurities" of minute quantity. Not all impurities bring about the desired result, and the absence of a description of those which do causes the application to fall short of the statutory requirement that the applicant shall point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery, rather than describe it in terms of results achieved. Rev. Stat. § 4888, as amended, 35 U. S. C. § 33.2 To issue the patent would have the effect of granting a monopoly of crystal rectifiers made of germanium between 99% and 100% pure exhibiting the properties claimed in the application. The case is governed by those which withhold patents sought merely on the basis of results rather than on the structure producing the results. See Gen. Electric Co. v. Wabash Co., 304 U. S. 364, 370-1; United Carbon Co. v. Binney Co., 317 U. S. 228.

Affirmed.

[United States Court of Appeals, District of Columbia Circuit]

THE PURE OIL COMPANY, APPELLANT v. SOCONY-VACUUM OIL COMPANY, INCORPORATED, and SHELL DEVELOPMENT COMPANY, APPELLEES and THE PURE OIL COMPANY, APPELLANT v. SOCONY-VACUUM OIL COMPANY, INCORPORATED, SHELL DEVELOPMENT COMPANY, and ROBERT C. WATSON, COMMISSIONER OF PATENTS, APPELLEES

No. 11867, No. 11868. Decided April 22, 1954

682 O. G. 525; 212 F.2d 454; 101 USPQ 140

1. CIVIL ACTION IN CASE OF INTERFERENCE-FINDINGS OF FACT-COURT MAY DETERMINE STATUS OF PARTIES.

Although a plaintiff in a civil action under Rev. Stat. Sec. 4915 cannot succeed merely on the basis of defects in the inventorship of its adversaries, Held that "this does not mean that where an issue of priority of invention is raised as between parties before the court, the latter cannot properly decide the status of those parties and their assignees, both as to time of invention and as to the nature of the inventorship."

2. SAME CONCLUSIONS OF LAW-COURT MAY HOLD COUNT UNPATENTABLE TO

PLAINTIFF.

Rule restated that, in a suit under Rev. Stat. Sec. 4915, a holding that the claim in issue was unpatentable to a plaintiff was a proper part of a decision by the court denying him the requested relief.

2 Replaced by 66 Stat. 798, 35 U. S. C. A. § 112 (Supp. 1953).

3. SAME-SAME-CHRISTENSSON v. HOGDAL DISTINGUISHED.

As to the propriety of holding counts unpatentable to a defendant, the case of Christensson v. Hogdal 91 U. S. App. D. C. 251, 199 F. 2d 402, distinguished on the ground that the decision in Christensson "does not mean that a court cannot decide every aspect of the issue of priority, once that issue is properly before it."

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

Edward H. Lang, (Bernard F. Garvey, of counsel) for The Pure Oil Company. Richard K. Stevens, (Robert E. Watkins, of counsel) for Socony-Vacuum Oil Company, Incorporated.

Edward B. Beale and Herbert L. Shepard for Shell Development Company. E. L. Reynolds (Clarence W. Moore, of counsel) for Robert C. Watson, Commissioner of Patents.

Before WILBUR K. MILLER, BAZELON, and WASHINGTON, Circuit Judges

WASHINGTON, Circuit Judge:

1

These are appeals from judgments rendered by the District Court in two cases brought under Rev. Stat. § 4915 1 against the Pure Oil Company, which had been awarded a patent by the Patent Office for an invention in the treatment of hydrocarbon oils, after interference proceedings there. Plaintiff in one case was the Shell Development Company. Plaintiff in the other was the Socony-Vacuum Oil Company, Inc. As both cases involved the same claimed invention, they were consolidated for trial. After a hearing, the District Court adjudged that Socony was entitled to a patent covering the invention. The complaint in the Shell case was dismissed. Shell Development Co. v. Pure Oil Co., 111 F. Supp. 197 (1953). The Pure Oil Company appeals from the judgments in both cases, as both were adverse to it in substance. Shell has not appealed.

The opinion of the District Court discloses the governing facts, and we need not repeat them here. After reviewing the record, we are satisfied that the court was correct in its holding that Cauley, assigned to Socony, was the first inventor.

Appellant Pure Oil must therefore fail in its main contention—that its assignor Bond was the first inventor. But appellant further contends that in any event the District Court exceeded its jurisdiction when it made certain of its findings of fact and conclusions of law. Those in controversy are as follows: 2

Findings of Fact:

*

1 Suit was brought under Rev. Stat. § 4915 (1875), as amended, 35 U. S. C. § 63 (1946). That section was repealed by Section 5, Act of July 19, 1952, c. 950, 66 STAT. 815, and is now replaced by 66. STAT. 803, 35 U. S. C. A. § § 145, 146.

2 As entered in the Socony case, No. 11,868 in this court and No. 2434-51 in the District Court. Identical findings and conclusions were entered in the Shell case, No. 11,867 in this court and No. 2776-51 in the District Court, being designated as Findings of Fact numbered 17, 18 and 22, respectively, and Conclusion of Law numbered 1.