669 (1966). Turning to the examiner's argument that the affidavits are insufficient because they do not show the composition which the reference shows, this court rejected such a test in Clarke, supra, and stated instead that "antedating affidavits must contain facts showing a completion of 'the invention' commensurate with the extent the invention. is shown in the reference, whether or not it be a showing of the identical disclosure of the reference."

[4] It is clear those claims which recite nothing about gel do not define an invention predicated for patentability upon the presence of gel. With regard to the recited elements of these claims, we believe appellants have shown as much as Horne shows. [5] appellants show in their affidavits the manufacture of the claimed product by the use of lithium-based catalysts. Horne shows its preparation using Ziegler catalysts. Appellants possessed the claimed product as fully as Horne did, and before the Horne date. Horne is therefore overcome as a reference as to these claims. See In re Rainer, 55 CCPA 853, 390 F.2d 771, 156 USPQ 334 (1968).

3

We now consider the claims reciting a "substantially gel-free" polymer. Here, of course, we cannot ignore the significance of the fact that appellants' affidavits do not show possession of a gel-free product. The issue is whether Horne enables persons of ordinary skill to make the gel-free product. The Horne patent is far from clear on this point. It states, in part:

The process described herein is adaptable to give a linear polyisoprene rubber which is free of extremely high molecular fractions or cross-linked fractions, called gel, such as are present in natural rubber. (Emphasis ours.) The examiner believed Horne's product to be gel-free. His opinion is supported by Horne's example 1, which states that a clear solution of the reaction product in heptane is obtained, which upon precipitation, washing and drying "is found to possess a tackiness equivalent to that of milled natural rubber ***." (Emphasis ours.) Milling is one of the ways of removing the gel from natural rubber. The lastquoted portion of Horne would therefore indicate that the product has no substantial gel. Moreover, while appellants have pointed out the lack of complete clarity in Horne's statement concerning gel, they have not argued that Horne's example 1 does not in fact produce a gel-free product. On the basis of the record before us, we conclude that the examiner was correct in his view that Horne discloses a substantially gel-free product. Since appellants' affidavits do not show their possession of such a product prior to the Horne date, we must affirm the board's decision as to claims 2, 7, 16, 21, 25 and 30.

It might be noted here that the examiner mentioned other aspects of breadth, such as molecular weight and molecular weight distribution. Since these assertions were not further developed and were not mentioned by the board, we consider any issues based thereon to not have been raised below.

(c) The rejection on Davis

The examiner rejected all of the fully prosecuted claims as unpatentable over Davis, under 35 USC 103. The examiner acknowledged that Davis does not show a complete removal of all impurities from natural rubber. His position was that "the pure compound is so similar to the impure compound (no non-obvious utilitarian differences accountable to the purity level have been shown) as to be prima facie obvious." The board affirmed the rejection "for the reasons fully set forth by the Examiner," adding that the word synthetic in the claims is applicable to natural rubber "from which the impurities have been extracted in Davis."

We do not think that Davis is effective as a reference against any of the claims. Davis describes the separate work of various researchers in removing proteins and resins from natural rubber. The description of each elimination attempt is brief, and a complete statement of results does not appear. Moreover, Davis nowhere mentions the elimination of sugars and soaps.

We turn first to the board's view that the word "synthetic" as used in the claims is applicable to natural rubber from which impurities have been removed. We cannot agree that this is a reasonable construction of "synthetic." The dictionary meaning of the word as it pertains to chemistry is shown by the following:

Of, pertaining to, or formed by artificial synthesis. Webster's New International Dictionary (1932).

Noting or pertaining to compounds formed by chemical reaction in a laboratory, as opposed to those of natural origin. Random House Dictionary (1969).

"Synthetic rubber" is defined as

any of several substances similar to natural rubber in properties and uses, produced by the polymerization of an unsaturated hydrocarbon, as butylene or isoprene, or by the copolymerization of such hydrocarbons with styrene, butadiene, or the like. Random House Dictionary (1969).

[6] The foregoing definitions nowhere mention or suggest to us that a purified natural product could properly be called "synthetic." Rather, the word connotes an artificially compounded or built-up product.

Moreover, to persons skilled in the rubber art the word "synthetic" would not include a purified natural product. This is demonstrated in the Horne patent, wherein synthetic is defined as "man-made." The preliminary portions of appellants' specification lead to the same conclusion. The specification draws a sharp and consistent distinction

From this point on we are discussing only the claims still in issue, 1.e., claims 1, 3, 5, 6, 8, 10-15, 17, 19, 20, 22, 24, 26, 28, 29 and 31.

between synthetic rubbers on the one hand and products made from natural rubber on the other.

In view of the foregoing, we must disagree with the board's position that the word "synthetic," as used in the claims, would be applicable to the purified natural product.

[7] We turn now to the examiner's view, adopted by the board, that the synthetic product is so similar to the natural product, purified to the extent allegedly shown in Davis, as to be "prima facie obvious." We would agree with this conclusion as a tentative one based on similarity of structure and gross characteristics. However, such tentative conclusions of obviousness are rebutted in those instances where there was, at the time the invention was made, no known or obvious method of making the claimed composition, or where the claimed composition is found to possess unexpected characteristics. At least the first situation is present in the case before us, since it cannot be said that a method of making the claimed synthetic product would be known or obvious from Davis. On the contrary, the record before us shows that years of effort in the art were required after Davis to find such a method. We conclude, therefore, that the rejection for obviousness based on Davis cannot be supported.

(d) The rejection for "not properly defining the invention."

[8] In the final rejection, the examiner stated that certain claims. "are rejected as not properly defining the invention (35 USC 112)." He stated three bases for this conclusion, two of which have been removed through amendment. The remaining basis is the examiner's view, mentioned above, that applicant's polymers contain lithium end groups, which were not recited in the claims. Presumably this position is limited to the examples wherein appellants disclose the use of lithium-based catalysts. Such a ground of rejection cannot be sustained. Section 112 does not require that the claims define "the invention," whatever that would mean. It is apparently the second paragraph of that section which is in issue, and that paragraph requires that the claims define "the subject matter which the applicant regards as his invention." The meaning of this provision is simply that an applicant is required to set definite boundaries on the patent protection sought. The record before us amply demonstrates that appellants did not regard catalytic impurities as even being present in their products, much less regard such impurities as an element of their invention.

[9] The examiner's answer possibly shifted his statutory basis for the § 112 rejection, stating: "The claims are rejected under 35 USC 112 as being broader than that invention clearly described in the specification." A breadth rejection such as this is really an assertion that the specification is insufficient to support claims of the breadth sought.

See in re Cavallito, 49 CCPA 1335, 306 F.2d 505, 134 USPQ 370 (1962). The proper statutory basis for such a rejection is the first paragraph of § 112. In response to this possible shift in ground by the examiner, appellants submitted a reply brief under Rule 193 (b). The board refused to consider the reply brief and held that the examiner's answer did not raise a new point of argument. We are not sure whether an attack on the specification was being made. If it was, appellants were deprived of an opportunity to contest this new basis for the § 112 rejection before the board. Further, the board's opinion makes no reference to insufficiency of disclosure. Accordingly, we shall not consider it to be in issue before us.

[10] We turn, therefore, to the board's affirmance of the rejection for indefiniteness under the second paragraph of § 112. The board set forth two bases for concluding that the claims were indefinite. The first was that the use of a negative limitation excluding the characteristics of the prior art products causes the claims to read on a virtually unlimited number of materials, many of which "might be the full equivalents in their effects of those excluded." We fail to see how this renders the claims indefinite. The complaint seems to be that a very large number of substances are encompassed by the claims, through the possible addition of unrecited impurities. The scope of the claim is still definite, however, because each recited limitation is definite.

The board's second basis for concluding indefiniteness was that the claims

[read] better upon the natural product from which the named substances have been removed than upon that prepared by the disclosed method of this application, which obviously never had these substances present to contend with in the first place.

With this we disagree for the reasons stated above with regard to the Davis reference. Appellants have excluded from the scope of their claims any purified natural product by the recitation "synthetic." This word, as we have shown above, has a reasonably precise meaning and therefore does not render the claims indefinite. It is not contended, and we are not holding, that the word synthetic alone makes the claimed composition new. We are holding that, as used here, the word is not indefinite and does not provide a basis for rejecting the claims under the second paragraph of § 112. We conclude that the board erred in affirming the rejection under 35 USC 112.

The decision of the board is affirmed as to claims 2, 7, 16, 21, 25 and 30, and reversed as to claims 1, 3, 5, 6, 8, 10-15, 17, 19, 20, 22, 24, 26, 28, 29 and 31.

See In re Borkowski (PA 8214) decided concurrently herewith.

374-293-71-19

PER CURIAM: The court having considered appellants' request for reconsideration, the opposition of the Commissioner of Patents, and appellants' reply to said opposition, the request is granted to the extent that the court has reconsidered its decision and modified the second sentence of footnote 3 of its opinion to read: "Since these assertions were not supported by reference to appropriate evidence of record, we consider any issues based thereon not to have been raised below." Appellants' request is otherwise denied.

422 F.2d 918; 165 USPQ 171

JAMES ALFRED MARTIN V. CROWN ZELLERBACH CORPORATION (No. 8225)

TRADEMARKS

1. COURT OF CUSTOMS AND PATENT APPEALS-ISSUES DETERMINED TRADEMARK CASES

Refusal by Trademark Trial and Appeal Board, during appeal period, to let applicant amend description of goods is not appealable matter.

2. IDENTITY AND SIMILARITY-HOW DETERMINED DISSECTING MARKS

3. IDENTITY AND SIMILARITY-HOW DETERMINED-DOMINANT FEATURE Although marks must be considered in their entireties, this is not to say that, in considering whether a mark as an entirety will be likely to cause confusion, one cannot consider one feature of mark as being more significant to that issue than are the other features.

United States Court of Customs and Patent Appeals, March 26, 1970* APPEAL from Patent Office, Opposition No. 45,058

[AFFIRMED]

James Alfred Martin, pro se.

William K. Quarles, Jr. for appellee. Harold I. Johnson, of counsel.

[Oral argument December 2, 1969 by Mr. Martin (pro se) and Mr. Quarles] Before RICH, ALMOND, BALDWIN, LANE, Associate Judges, and RAO, Judge, sitting by designation.

RICH, Judge, delivered the opinion of the court:

This appeal is from the decision of the Patent Office Trademark Trial and Appeal Board, sustaining the opposition of Crown Zellerbach Corporation to the registration by James Alfred Martin, doing business as SILKO New Improved Products Company, of the composite mark "SILKO 'Soft-as-silk' and red design," for toilet tissue. The mark is illustrated in the board's opinion, fully reported at 153 USPQ 141, knowledge of which is assumed. Appellee's registrations

*Petition for rehearing denied May 21, 1970.