6. SAME-SAME-SUFFICIENCY OF DISCLOSURE.

In determining whether there is supporting disclosure in an application, Held that "*** it does not seem, under established procedure of long standing, approved by this court, to be of any legal significance whether the disclosure is found in the specification or in the drawings so long as it is there." 7. SAME-SAME-DRAWING-In re Olson CONSTRUED.

"In support of its view in the instant case that 'drawings alone cannot form the basis of a valid claim,' i.e., furnish supporting disclosure for a copied claim, the Board cites In re Olson, 41 CCPA 871, 212 F.2d 590, 101 USPQ 401. We have carefully considered that opinion and it is our view that it stands only for the proposition that if drawings which are relied on for supporting disclosure do not in fact contain it, then disclosure is lacking." APPEAL from the Patent Office. Serial No. 521,495.

REVERSED.

Strauch, Nolan & Neale, and James E. Nolan, for appellant. Clarence W. Moore (George C. Roeming, of counsel) for the Commissioner of Patents.

Before WORLEY, Chief Judge, and RICH, MARTIN, and SMITH, A880ciate Judges, and Judge WILLIAM H. KIRKPATRICK, United States Senior District Judge for the Eastern District of Pennsylvania RICH, J., delivered the opinion of the court.

This appeal is from the decision of the Patent Office Board of Appeals affirming the Examiner's rejection of claim 33, the sole claim before us, "as failing to read on applicant's disclosed structure.” Appellant presented claim 33 in his application Ser. No. 521,495, filed July 12, 1955, entitled "Ball Type Valve," requesting an interference on this claim with Kaiser Patent No. 2,868,498 issued January 13, 1959, from which patent the claim was copied.

Appellant's invention relates to a ball type valve "for use in large high pressure fluid pipe lines up to 30 inches and more in diameter." Appellant's valve contains a shut-off member in the form of a roughly spherical ball plug having a diametral bore therethrough. The plug is rotatable about an axis perpendicular to the bore. When the bore in the ball plug is in alignment with the axis of the pipe line with which it is used, the valve is fully open. When the plug is rotated approximately 90° out of alignment with the pipe line axis, the valve is closed.

Claim 33 reads:

33. In a valve device, in combination, a valve housing member formed with a bore therethrough; a valve arranged in said housing member, said valve being formed with a passage therethrough and being movable between open and closed positions wherein said passage is in and out of registration with said bore, respectively; and sealing means interposed between said housing member and said valve, said sealing means including an annular sealing member coaxial with said bore of said housing member, said members being so shaped as to form between themselves an annular chamber of substantially rectangular crosssection bounded by an inner face, an outer face and two side faces, and a packing ring arranged in said chamber, said ring being made of a resilient

material and being compressed between said side faces of said annular chamber and having, in untensioned condition, a mean diameter corresponding approximately to the mean diameter of said chamber and a radial width smaller than the radial width of said chamber. [Emphasis added.]

The sole question before us is whether the above italicized portion of appellant's claim is readable on his disclosed structure, one embodiment of which is reproduced in part below.

The above drawing shows appellant's valve in the open position. Accordingly, fluid would tend to flow, if the high pressure side of the pipe line were to the right in the drawing, through openings 66, 100 and 106 in, respectively, valve housing 28, seat ring 80 and ball plug 24. The packing ring of the claim is shown in section at 90, seated in its annular chamber. It is, when unstressed, of circular crosssection and is a large "O-ring."

The main functions of appellant's O-rings are set forth in his specification as follows:

When the valve is open the large O-rings at the end walls of the seat rings [appellant's device, in its entirety, has two such O-rings and seat rings], each having a cross-sectional diameter of approximately one inch and compressed in assembly approximately one-eighth inch, by their inherent resilience tend to center the seat rings and ball inside the valve body cavity with equal clearance between the back face of each seat ring and its valve body seat. The O-rings also provide a fluid tight seal between the back face of the seat ring and the valve body. In valve closed condition the resilient upstream O-ring holds 666700-63-24

the upstream seat ring in full surface contact with the ball and away from the valve body, and permits line fluid pressure to enter and bias the seat ring against the ball.

1

The Kaiser patent discloses, in FIG. 2 reproduced below, 1 O-ring 35 seated in chamber 34. In other figures the patent shows several modifications of this structure.

When inserted in this chamber, the cross-sectional diameter of O-ring 35 is such that (1) "the said O-ring exerts an elastic pressure on the annular piston 26 * * * and presses the annular piston against the surface 36 of the ball plug 16," and that (2) "the O-shaped packing ring 35 is arranged in the compartment 34 spaced from the inner and outer faces thereof when the packing ring 35 is in untensioned condition." 2

With the above comments on the disclosures of appellant and Kaiser as a background, we now turn to the italicized portion of claim 33, supra.

1 This reproduction is from appellant's brief and he has added some reference numerals (taken from other figures) and the dimension lines d' and w'. Ring 35 has mean diameter d' and compartment 34 has width wo'.

In the Kaiser structure, with the valve 16 closed and fluid attempting to flow outwardly through chamber 34 (to the right in FIG. 2), Kaiser discloses that O-ring 35 will be urged radially outward. Such radial expansion puts O-ring 35 under circumferential tension. In Kaiser, "untensioned condition," accordingly, refers to the condition of O-ring 35 when fluid pressure is not urging the O-ring to expand radially within chamber 34. However, for the purposes of deciding this case we do not limit it to that connotation and give it its ordinary meaning.

As noted by the Board, this portion of the appealed claim recites two dimensional relationships, the first of which is that the "packing ring," in "untensioned condition," has "a mean diameter corresponding approximately to the mean diameter of said chamber." Looking at appellant's FIGURE 5, it is obvious that the ring as shown does have a mean diameter corresponding approximately to the mean diameter of the annular chamber formed by channel 88 and surface 84. The point raised by the Patent Office as to this disclosure, however, is that there is no evidence that the O-ring 90 as it appears in channel 88 is in "untensioned condition." The Board put it this way:

it is our opinion that the same symmetrical cross section would be obtained if the mean diameter of the untensioned ring were smaller than that of the chamber, the ring being installed in the chamber by suitably stretching. [Emphasis ours.]

[1] The Patent Office cites in support of its position this court's decision of Brand v. Thomas, 25 CCPA 1053, 96 F.2d 301, 37 USPQ 505, wherein this court said that a "Lack of clear disclosure is not supplied by a speculation as to what one skilled in the art might do or might not do if he followed the teaching of the inventor." These words, however, are a two-edged sword. Using the reasoning of the Brand case, we find that a disclosure, unequivocal in and of itself, may not be held wanting merely by reason of a speculation that one skilled in the art might interpret the teaching of the inventor in a remote and equivocal manner. We find nothing in the disclosure of appellant, or elsewhere in the record, to suggest that one skilled in the art would place in appellant's "chamber" of FIG. 5 and O-ring which had to be stretched to fit the groove and which would, in consequence, be in tensioned condition. Indeed, it seems to us that the Patent Office is stretching its imagination to find a lack of disclosure in this regard. We cannot agree with the Board that appellant does not disclose the first-noted dimensional relationship. We do not think it was incumbent on the applicant to state, in respect of every O-ring in his structure, that it was so sized as to be untensioned when put in place. One would normally expect that to be the case.

The second dimensional relationship recited in claim 33 which the Patent Office considered not supported by appellant's disclosure is that, in untensioned condition, the packing ring has "a radial width smaller than the radial width of said chamber" (w' in Kaiser FIG. 2, supra).

In the partially flattened condition shown in appellant's FIG. 5, supra, packing ring 90 is shown as having a radial width which is the same as that of the chamber, which is the width of the annular groove 88 (the vertical dimension as shown in the drawing). However, in that showing the O-ring is not "untensioned." It is compressed almost to the full extent possible. The only problem in find

ing support for this claim limitation in appellant's disclosure arises from having to decide what one skilled in the art would understand the relative radial widths of the O-ring and the groove to be when the O-ring is in its uncompressed condition, a state nowhere illustrated in the drawings. The simple question which must be answered is whether it would be apparent to one skilled in the art that, on the basis of the whole disclosure, the ring's cross-sectional diameter when relaxed would be less than the radial width of "said chamber," i.e., less than the dimension in appellant's structure corresponding to dimension w' in Kaiser FIG. 2, supra.

On this point the Board said:

appellant refers to FIGURE 5 of his drawings and contends that if the axial depth of the chamber, which is disclosed as % inch, is used to establish the scale of FIGURE 5, the radial depth measured on the same scale is 1% inches, and since the cross-sectional diameter of the untensioned ring is disclosed as being 1 inch, the relationship claimed is shown in FIGURE 5. This argument is not convincing, since it is well established that drawings alone cannot form the basis of a valid claim. Thompson v. Dicke, 27 CCPA 931; 517 O.G. 564; 110 F.2d 98; 1940 C.D. 269. In re Olson, 41 CCPA 871; 685 O.G. 700; 212 F.2d 590; 101 USPQ 401; 1954 C.D. 167.

[2] The Board's statement that "drawings alone cannot form the basis of a valid claim" is too broad a generalization to be valid and is, furthermore, contrary to well-settled and long-established Patent Office practice. We cannot regard it as "well established." Consider, for one thing, that the sole disclosure in a design patent application is by means of a drawing. Rule 153. For another thing, consider that the only informative and significant disclosure in many electrical and chemical patents is by means of circuit diagrams or graphic formulae, constituting "drawings" in the case. To put this matter in proper perspective, however, consideration must also be given to actual Patent Office practice, taken in conjunction with the fundamental requirement that the invention claimed must be disclosed, in terms comprehensible to one of ordinary skill in the relevant art.

[3] Patent Office Rule 118 authorizes, by implication at least, the amendment of the words in the written specification so as to add statements not originally contained in it to conform to originally filed drawings. Commenting on that rule, the Manual of Patent Examining Procedure, 3rd Ed. (MPEP), says, 608.04 (repeating a statement in 608.01(1):

In establishing a disclosure applicant may rely not only on the specification and drawing as filed but also on the original claims if their content justifies it. [Emphasis ours.]

[4] The practical, legitimate enquiry in each case of this kind is what the drawing in fact discloses to one skilled in the art. Whatever it does disclose may be added to the specification in words without violation of the statute and rule which prohibit "new matter," 35 U.S.C. 132, Rule 118, for the simple reason that what is originally