19. ABANDONED ARGUMENTS.while the Board affirmed the Examiner's decision that appellant could not have the benefit of the filing date of the parent application for the appealed claims, it did not adopt the Examiner's reasons for so holding; and the Solicitor, while very briefly summarizing them in part, has not undertaken to urge the Examiner's reasons to this court, restricting his argument to sustaining the rejection substantially on the theory first promulgated by the Board. In this situation we deem it to be no part of our duty to answer arguments which have not been made before us and, by implication, abandoned by representatives of the Patent Office in positions of higher authority than the Primary Examiner." *In re Frederick K. Kirchner, 477. 20. EXHIBITS NOT IN RECORD BEFORE THE COURT NOT CONSIDERED.—“In this opinion we do not place any reliance upon the asserted existence of third party registration containing the words 'debs' and 'stylish.' These registrations, included as exhibits A and B of applicant's answer, were not made exhibits here and are not part of the record before this court. We therefore refuse to consider them. 15 U.S.C. 1071 and 35 U.S.C. 143, 144." *Melville Shoe Corporation v. Lester Pincus Shoe Corporation, 567. Opposition 21. AFFIRMATIVE DEFENSE-CROSS-APPEAL-TRADEMARK ACT OF 1946, SECTION 21.-Where opposer appealed to the Court of Customs and Patent Appeals from the dismissal of its opposition and applicant from the dismissal of its request, as an affirmative defense, for cancellation of a registration pleaded by opposer, and opposer elected to have all further proceedings in connection with applicant's affirmative defense conducted as provided by 35 U.S.C. 146, Held that "Applicant's affirmative defense is necessarily before this court as an integral part of the opposition proceedings and cannot be separated therefrom for independent adjudication," and that "the election provision of section 21 of the Trademark Act is not applicable to an integral part of the opposition proceeding which this court must review on the appeal from the decision thereof"; and Held that applicant's appeal would be treated as a cross-appeal which would be adjudicated with the main appeal. *The Frostie Company v. Sun-Glo Packers, Inc.; Sun-Glo Packers, Inc. v. The Frostie Company, 209. Petition for Rehearing 22. A Petition for Rehearing by the Commissioner of Patents of some 27 pages, which presented "nothing new, nothing that was overlooked, and nothing that was not briefed and argued by the parties and fully considered by the court prior to rendering its original decision, is denied both on its merits and for failure to comply with the requirements of Rule 7 of the court. *In re National Distillers and Chemical Corporation, Doing Business as National Distillers Products Co., 132. Reasons of Appeal 23. 35 U.S.C. 142.-Reasons of appeal, general in nature, that the Board of Appeals erred (1) in rejecting claims 22, 23 and 24, on appeal, on the cited Sollmann, Benzel, Cowen and Connell patents and (2) in not allowing claims 22, 23 and 24, Held to comply with the requirements of 35 U.S.C. 142. *In re Alleyne C. Howell, Jr., 150. 24. UNCONTROVERTED FINDING INTERFERENCE.-"The Board of Patent Interferences, after finding that Laurila had proven a date of conception prior to any date of invention provable by Mortsell, held Laurila diligent up to the filing date of his United States application in the Patent Office. Appellant having neither alleged as error nor controverted in his brief this finding of diligence on the part of the Board, that issue is not before us." *Tage Emanuel Mortsell, Deceased, Sala Maskinfabriks, A.B., A8signee v. Errki A. Laurila, Assignor to Aktiengesellschaft fur Unternehmunger der Eisen- und Stahlindustrie, 290. Record 25. PRINTING COSTS-ALLOCATION OF PRINTING COSTS.-"After certain papers omitted from the designation of the record by appellants were specified for inclusion by appellee, appellants brought a motion that the costs of preparing so much of the printed record as includes the added material be taxed against appellee. At the suggestion of the parties, action on the motion was deferred until final decision. We find that certain of the papers, accounting for one-third of the cost of printing the added material, were properly included in the record while the remainder was unnecessary. The printing costs being the only costs handled through the court, the motion is granted to the extent that two-thirds of the cost of printing the added material is assessed against appellee and the remainder of said cost is assessed against appellant." *Alpha J. Johnson and John A. Moore v. Harry Riener, 304. Remand 26. MOTION FOR REMAND AFTER DECISION BY COURT.-In connection with a motion by appellants that their cases be remanded to the Patent Office for "determination of whether or not Mulard (French) 1,078,733, can be used as a legal reference," Held that, "Noting that appellants are seeking, after final decision on appeal to this court, to raise an issue not raised at an appropriate time, we find no basis for remanding the case." *In re John M. Hardy, William B. Taylor and Wilber H. Griffin; In re William B. Taylor, John M. Hardy and Wilber H. Griffin, 299. APPEARANCE. See Trademark 21-23. APPLICABILITY OF 35 U.S.C. 21. See Application, 32-34; Patentability, Benefit of Filing Date of Earlier Application Under 35 U.S.C. 120 1. DISCLOSED UTILITY MAY VARY FROM EARLIER CASE WHERE NOT CLAIMED.— "What might be termed the Examiner's 'complete invention theory' in chemical cases, confuses, it seems to us, the invention itself which is the subject matter claimed-in cases of this type the new chemical compound-with one of the factors which is taken into consideration in determining whether the invention is or is not patentable from the standpoint of meeting 35 U.S.C. 103. As was said in Biel v. Coan [130 USPQ 241], where the claim contains no ‘use' limitation, 'we know of no authority, theory or reason' for requiring that a parent case disclose the same utility as a later application to entitle the latter to the benefit of the filing date of the patent." *In re Frederick K. Kirchner, 477. 2. CLAIMS INDICATE THE INVENTION-35 U.S.C. 112 AND 120.—“Assuming the common inventorship, copendency, and cross-reference required by section 120, that section further requires only that the invention be disclosed in the parent application in such manner as to comply with the first paragraph of section 112 and be the same invention as that disclosed in the later application. It does not require that the invention be described in the same way, or comply with section 112 in the same way, in both applications. And to determine what is the invention under consideration, one must be governed by the claims of the later application, because it is there one must look to determine what invention the 'application for patent' referred to in the opening words of section 120 is for." "Id. Disclosure 3. SUFFICIENCY OF DISCLOSURE-Brand v. Thomas CONSTRUED.-"The Patent Office cites***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." In re Adolph Wolfensperger, 347. 4. DRAWING. "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, considerations 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." *Id. 5. AMENDMENT OF SPECIFICATION TO CONFORM TO ORIGINAL DRAWINGSRULE 118.-"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." *Id. 6. DRAWING 35 U.S.C. 132 AND RULE 118.-"The practical, legitimate enquiry *** 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 disclosed cannot be 'new matter' within the meaning of this law. If the drawing, then, contains the necessary disclosure, it can 'form the basis of a valid claim.'" *Id. 7. AMENDMENT OF SPECIFICATION TO SUPPORT LANGUAGE OF CLAIMS-RULE 75(d).—“This is not to say that the Patent Office, before permitting a patent to issue, cannot *** enforce compliance with another requirement, found in its Rule 75(d), that 'the terms and phrases used in the claims must find clear support or antecedent basis in the description 80 that the meaning of the terms in the claims may be ascertainable by reference to the description.' *** This matter is further elucidated in MPEP 608.01 (o) which clearly contemplates that it may be necessary to change or add to the language of the specification so as to provide proper support for the language of 'new claims.'" *Id. 8. 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." *Id. 9. 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." *Id. 10. METHOD OF MAKING AND USING INVENTION-35 U.S.C. 112 AND RULE 71(b). In agreeing with the Examiner in his rejection of appellant's claims to optical glass as being based upon a disclosure failing to comply with the provisions of 35 U.S.C. 112 and Rule 71 (b), Held that "Appellant's specification does not give sufficient details as to the method of making and using the proposed invention in such manner that one of ordinary skill in this art could produce the invention without undue experimentation" and that "There is no specific embodiment demonstrating the best mode contemplated by appellant to carry out the invention." ↳ Ex parte Marga Faulstich, 439. b 11. PRODUCT RESULTING FROM CHEMICAL REACTION.-"The preparation of an optical glass is a chemical reaction between several components, and in order to delineate such a chemical reaction, it is necessary to indicate starting materials and their proportions as well as any necessary conditions such as temperature-time relationship as well as any other critical expedients required to produce the desired and stated results." Id. 12. METHOD OF MAKING INVENTION-35 U.S.C. 112 AND RULE 71(b).—“To require extensive experimentation to determine the necessary parameters for production of a desired optical glass does not comply with the requirements of 35 U.S.C. 112 nor of Rule 71 (b)." Id. b 13. SAME-SAME.-"It is apparent that the art does not know the specific compositions claimed by appellant and therefore would not be aware of the manner of producing therefrom an optical glass, having the stated index of refraction and diffusion characteristics. Absent an example setting forth the preparation of the new glass one skilled in this art could not produce it without determining by experimentation, all the necessary factors of manufacture and could not compare it with prior art optical glasses." "Id. 14. SAME-SAME-RELIANCE UPON UNIDENTIFIED PRIOR ART METHODS.-"Appellant, in the brief, postulates the claimed optical glass to be an improvement of known optical glasses thus requiring description of the improvement only (Rule 71(b)). The prior art which is to be improved is not specifically identified in the specification, hence there can be no reliance upon unidentified methods for preparing an optical glass to support appellant's claims." Id. 15. DISCLOSURES OF PATENTS AND APPLICATIONS.—“As to the disclosures of the references applied against the claims by the Examiner, it must be noted that there is a critical difference between that which will support a patent and a disclosure which may be relied upon to anticipate it. In re Stoll, et al., 34 CCPA 1058, 1947 C.D. 392, 603 O.G. 378, 161 F.2d 241, 73 USPQ 440." Id. 16. PRODUCT RESULTING FROM CHEMICAL REACTION-METHOD OF MAKING INVENTION.-35 U.S.C. 112 and Rule 71(b).—“Variation in optical glass composition requires extensive experimentation to determine the proper conditions for optimum results in each instance in the complex chemical reaction of optical glass production. Under these conditions, differing from situations in which components are merely mixed without chemical reaction ** it is our opinion, that the least disclosure required to comply with the provisions of 35 U.S.C. 112 and Rule 71 (b) must be at least one working example delineating all of the necessary factors and pointing out how these factors must be varied to produce the required result with other members of the claimed class." Id. 17. CONSTRUCTION OF DISCLOSURE.-On the question whether appellant's method, comprising issuing a hollow open-ended substantially tubular formation of thermoplastic material from an orifice, included the claimed step of “quickly severing a length of the formation * * * in such a manner as to leave the severed ends of said formation open," Held that "it is not disputed that appellant's application does not expressly disclose that both ends remain open," and that "Therefore, the disclosure in appellant's specification must be such that one skilled in the art would consider the presence of that step as the 'necessary and only reasonable construction to be given the disclosure.'" *In re Francis Trigg Parfrey, 453. 18. 35 U.S.C. 112.-"Appellants argue that their disclosure inescapably communicates to one skilled in the art that their compounds are insecticides. We do not agree. It should have been an easy matter for appellants to have expressly described their compounds as insecticides but all they say is that their compounds have a 'good effect' against insects. We think that language, vague and nebulous as it is, would be equally applicable to a repellent or even an attractant." *In re Walter Lorenz and Richard Wegler, 597. 19. SAME.-Appellants "contend that one skilled in the art, upon being informed that appellants' compounds have low toxicity while at the same time possessing 'a good effect against insects,' would know that the compounds were insecticides. We do not agree. The specification merely asserts that low toxicity to warm-blooded animals is 'A characteristic feature' of appellants' compounds. If the characteristic feature is that of low toxicity while insecticides normally are highly toxic to warmblooded animals, it seems to us that one skilled in the art might well reason that the compounds are something other than insecticides. The specification does not state that the 'characteristic feature' is in any way unexpected so as to suggest to one skilled in the art the meaning now alleged by appellants." *Id. 20. SAME. "Appellants are seeking a seventeen year monopoly. We would remind them that if they have in truth invented something which promotes the progress of science and the useful arts, then in exchange for a patent grant they must make a full and complete disclosure of their in vention, leaving nothing to speculation or doubt. That Congress so intended is evident from the strong and comprehensive language of section 112 ***” *Id. 21. SUFFICIENCY OF DISCLOSURE 35 U.S.C. 112.-"The✦✦ Examiner's rejection *** puts in issue all four requirements of paragraph 112, namely, that the specification shall contain, in such full, clear, concise and exact terms as to enable any person skilled in the art to which the invention pertains, or with which it is most nearly connected, to make and use it, a written description (1) of the invention; (2) the manner and process of making the invention; and (3) the manner and process of using the invention; and that (4) the best mode contemplated by the inventor of carrying out his invention shall be set forth." *In re Constantin Chilowsky, 670. 22. SUFFICIENCY OF DISCLOSURE-APPARATUS 35 U.S.C. 112.-In connection with the refusal of claims, to a method and apparatus for extracting and utilizing thermal energy resulting from nuclear fission carried out in a molten liquid medium, on the basis of insufficient disclosure to enable one skilled in the art to construct an operative device, where appellant urged that he need only describe what he has made that is new and what it replaces of the old, Held that "While we have never been able to see a distinction, at least in patent law, between the recognized synonyms 'new' and 'novel,' this commonplace pleonasm at least serves to emphasize the point that Chilowsky could not start to describe his invention with the assumption that those skilled in the art knew in detail how to build his nuclear reactor"; and that "Since it was a major part of what he purported to have invented, it was incumbent on him, under section 112, to tell how to build it, under principles of patent law too elementary to require discussion." *Id. 23. DISCLOSURE AMENDED WITH STATEMENTS FROM COPENDING APPLICATIONNEW MATTER.-"Appellant's desired transfer of statements from a copending application referred to in the principal application may by itself be permissible, but when there is added thereto an additional qualifying statement which may change the meaning of the added statement, we think the entire insertion is properly objected to as 'new matter.'" *Id. 24. SUFFICIENCY OF DISCLOSURE COMPOSITION.-Assuming one skilled in the art would realize from mere mention in the specification of 'uranium,' that enriched uranium had to be used, the disclosure still does not mention the degree of enrichment contemplated. This defect alone we feel renders this disclosure fatally defective. It is clear that in 1944 the art recognized that varying the degree of enrichment in a nuclear reactor using uranium as a fuel would greatly affect the neutron multiplication factor K, which must be greater than unity if there is to be a chain reaction at all. The record clearly shows that the fairly precise approximation of this factor is one of the prerequisites of any reactor design. Appellant directs our attention to the statements concerning enrichment appearing in the Review of Scientific Instruments article previously noted, seeming to imply that one skilled in the reactor art would expect the same degree of enrichment used in the LOPO and HYPO 'Water Boiler' reactor to be used in appelant's reactor. For obvious reasons these statements do not aid appellant. The LOPO and HYPO reactors, both being of relatively small size, would involve relatively high neutron losses. We are unable to conclude, from the state of the art as it is represented before us, that anyone skilled in this art would expect the same degree of enrichment or the wide range of apparently permissible enrichment comprehended by the developer of this first aqueous fuel homogeneous reactor to be applicable in a homogeneous reactor of the size and operated in the manner disclosed in appellant's specification and using molten metal." *Id. 25. SAME AFFIDAVITS.-"We have carefully considered the several affidavits, some by very distinguished experts, relied on by appellant. They have unquestionably been prepared with meticulous care and we assume the honesty of the affiants. In some respects some of them undertake to tell us (or the Patent Office) the answer to the ultimate legal question which we must decide, viz., when is an application sufficient under the law. In this respect they are not only expressions of opinion but incompetent expressions." Id. |