Whether one skilled in the art could so determine, we do not undertake to say, but should such be the case, then it is not improper to remark that invention would seem to be lacking.

The brief on behalf of appellant makes allusion to the fact that in the specification there is a recitation about the drum or retort being rotated, in practice, at 15 revolutions per minute, and we are cited to a line of cases in which in passing upon the validity of claims different courts, including the Supreme Court of the United States, have upheld the validity of claims where certain specific features mentioned in the specifications were not embodied in the claims themselves. Smith v. Snow et al., 294 U. S. 1; Buckeye Incubator Co. et al. v. Wolf, 291 Fed. 253; United Verde Copper Co. v. Pierce-Smith Converter Co., 7 F. (2d) 13; Eibel Process Company v. Minnesota & Ontario Paper Co., 261 U. S. 45; Deering v. Winona Harvester Works, 155 U. S. 286.

Those cases have received our attention, but we do not find them helpful to appellant in this proceeding.

This is a proceeding to obtain a patent, and not one to test the validity of a patent already granted. The question here is not one of infringement, but one of whether the claims distinguish from the prior art in a manner which makes proper the grant of a patent.

Section 4888 R. S.; 35 U. S. C. A. 33, provides that the inventor shall not only file "a written description" of his invention and discovery but that "he shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery." [Italics ours.]

As has been indicated, the only actual steps here emphasized (the result being disregarded as we think it must be) which appellant "distinctly claims," are the broad steps of applying temperature, and rotating the retort at some speed (not defined except as it may be implicit in the disregarded result) and these are steps old in the art. Wisner shows both of them broadly, and as to the one specific range of temperature mentioned in claim 39, supra-"between 900° and 1300° F."-Wisner shows a heating up to 900°, and perhaps 1000°, and we think there is no error in the board's holding, under the disclosures here made, that the proposed change would be a matter of degree and does not amount to a patentable distinction.

With regard to the limitation in certain of the claims, expressed in claim 23, supra, respecting the "breaking off coked material from one end thereof," it is argued for appellant, in effect, that since Wisner does not form a core he necessarily does not teach breaking off material from the core end. This is true, of course, but, in our opinion, there is no error in the board's holding that "as a step in a process it is not distinguished over the tumbling and erosion into round balls of the Wisner patent." [Italics ours.]

* ** *

We have examined other limitations which counsel for appellant, although placing no particular stress upon them, have pointed out in their brief. We do not find anything expressed in them which seems to lend patentability.

There has been noted the argument that some of the reference patents, Beehler in particular, contain claims partaking of the nature of the claims here on appeal in respect to their breadth and particularly in respect to the process being determinable by the result.

We feel that patentability can not be imparted to the claims before us by comparing them with claims which may have been of similar character that were allowed in other applications. To so administer the patent laws would probably lead to great uncertainty and confusion. Those claims may or may not have been properly allowed. It is not for this court to determine. It is sufficient here to say that, in our opinion, for the reasons stated, the claims at issue were properly disallowed.

The decision of the Board of Appeals is affirmed.

466 O. G. 3; 23 C. C. P. A. 859; 81 F. (2d) 402

PATENTS-REISSUE

IN RE CROWELL (No. 3594)

ESTOPPEL.

It is pointed out that many of the new claims contain limitations other than the slidably fitting plug limitation. They may properly be held to so distinguish from the cancelled claims of the original application as to justify their allowance.

United States Court of Customs and Patent Appeals, February 3,

[Modified.]

1936

APPEAL from Patent Office, Serial No. 653110

Joseph F. Westall (Milburn & Milburn of counsel) for appellant.

R. F. Whitehead (Howard 8. Miller of counsel) for the Commissioner of Patents.

[Oral argument January 9, 1936, by Mr. Miller; submitted on brief by appellant] Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges

GARRETT, Judge, delivered the opinion of the court:

The application here involved, serial No. 653,110, filed in the United States Patent Office January 23, 1933, is for reissue of patent No.

1,828,099, for apparatus in cementing wells, granted to applicant October 20, 1931, upon an application, serial No. 208,539, filed July 26, 1927.

The patent recites that its disclosures were contained in another application, serial No. 171,851, filed March 1, 1927, and, from the specification in the instant case, it appears that said application, serial No. 171,851, matured into patent No. 1,828,098 on October 20, 1931, the same date as that of patent 1,828,099, reissue of which is here sought. See also In re Crowell, 23 C. C. P. A. (Patents) 725, 79 F. (2d) 746, decided November 25, 1935.

We understand the situation to be that applicant on March 1, 1927, filed an application serial No. 171,851; that subsequently, and while that application was pending, he filed at least two others in the nature of divisional applications thereof; that all three of the applications matured into patents on October 20, 1931; that thereafter applicant filed applications for the reissue of the two patents granted upon the divisional applications; that one of those applications for reissue was involved in the case of In re Crowell, supra, and that the other is involved here.

During the prosecution of application serial No. 208,539, and before it had matured into the patent, reissue of which is here sought, applicant cancelled from it quite a number of claims, this cancellation being in response to a rejection of them on a patent No. 1,684,551, issued to one S. E. Manning September 18, 1928, upon an application filed March 1, 1927.

The principal issue in this case grows out of that act of cancellation.

Fourteen claims are here involved, Nos. 1 to 10, inclusive, No. 13, and Nos. 17 to 19, inclusive.

The subject-matter seems fairly to be illustrated by claims 1 and 13, which read:

(1) Well casing having a series of ports intermediate its upper and lower ends; valvular means tending normally to maintain closure of said ports; a plug carrying means slidably fitting and closing the bore of said casing at points of peripheral contact therewith and adapted to be moved by fluid-pressure means downwardly therethrough and by pressure on said valvular means in its downward course to open said ports; means below said ports to arrest the downward movement of said plug and thus close the bore of said casing by the sliding fit of the plug with said casing bore.

(13) In combination, a ported coupling for aligned casing sections; valves for the ports of said coupling normally closing the same against the passage therethrough of fluid in either direction; and means comprising pressure fluid and a barrier for separating pressure fluid from cementing mixture actuated thereby for opening the ports to the passage therethrough of said pressure fluid from said port and then closing the bore of the coupling below the ports.

The examiner rejected all the claims here upon appeal on two grounds, viz., (1) unpatentability over prior art cited, the principal reference being the patent to Manning, and (2) estoppel, because of the cancellations above alluded to.

Upon all the claims except No. 13, the Board of Appeals reversed the examiner as to the first ground, but affirmed as to the second ground. Upon claim No. 13 the board affirmed as to both grounds. The only reference before us is the patent to Manning, and that, by the decision of the board, is to be considered only in connection with claim No. 13. As to all the other claims, the rejection rests solely upon the ground of estoppel.

The following is quoted from the statement of the examiner:

This invention relates to an apparatus for cementing wells. In the art of making oil wells it is necessary to drill deep to reach the oil bearing stratum and usually before such stratum is reached it is necessary to pass a water bearing stratum or several of them and it is necessary to shut the water in the core. The apparatus disclosed comprises a casing which has ports intermediate thereof at the same level and an internal sleeve valve is within the casing closing the ports and a spring coil below the sleeve valve keeps the valve elevated to close the ports. Cement is placed between two slidable piston plugs and driven by fluid pressure above the upper plug until the lower plug comes in contact with the sleeve and depresses it opening the ports. The plug also closes the central bore of the casing below the ports and it has anchoring means which anchors the plug in the casing. Further movement of the upper plug drives the cement grout through the open ports forcing the external back pressure valves open. When the cement is driven out of the casing the upper plug is set on the lower plug. After the cement is set both plugs may be drilled out and whatever further operations which may be necessary are performed through the open casing the water having been shut off by the cementing procedure.

When the claims above quoted as illustrative are studied in the light of the foregoing, it is thought they sufficiently explain themselves and that no detailed analysis of them need be made.

It will be observed from reading claim No. 1, supra, that it calls for "a plug carrying means slidably fitting and closing the bore of said casing Each of the appealed claims, except No. 13, contains this limitation of a slidably fitting plug or equivalent means. The examiner, giving his reasons therefor, held, in effect, that this limitation did not distinguish in a patentable sense from Manning. The board said:

It is our opinion that it cannot be assumed that Manning employed a slidably fitting plug and therefore we do not consider that any of the appealed claims, except claim 13, is properly anticipated by Manning. Claim 13 we believe does not sufficiently distinguish from this patent.

We understand this to mean that had prior art only been involved all the claims, except claim No. 13, were, in the opinion of the

board, allowable, and its subsequent reversal of the rejection of the examiner amounts to an adjudication of this issue by which this court is bound, there having been no appeal, as indeed (under the terms of the statute regulating appeals to this court) there could not have been, upon this point.

When, however, the board came to a consideration of the ground of estoppel, and measured the appealed claims by those which were cancelled, it held, in effect, that the language of the cancelled claims, properly construed, was sufficiently specific to embrace the limitation respecting "a plug slidably fitting *

The examiner, in his discussion of this ground, said, with respect to the slidably fitting plug limitation, and all other limitations not found in the cancelled claims but appearing in the appealed claims: The newly proposed claims are believed to be of the same scope [as the cancelled claims] because the additional limitations added are the ordinary features found in the cementing art and they do not introduce any additional patentability to the claims.

The foregoing seems to us to indicate that the examiner, when considering the ground of estoppel, had still in mind the prior art. That is to say, when he speaks of the limitations as being the "ordinary features found in the cementing art" he evidently was measuring such limitations by prior art, either as taught in patents or by common practice, and not by the language of the cancelled claims.

The brief of the Solicitor for the Patent Office says:

The mere fact that the new claims contain limitations not in the abandoned claims is not necessarily a reason for allowing the new claims. The nature of the differences must be looked to, and if they are only noninventive variations there is certainly no warrant for allowing a claim merely on the basis of its containing some limitations which are of no patentable significance. At another point the solicitor's brief says:

Although the appealed claims contain limitations not in the cancelled claims, it is submitted that the examiner rightly ruled that the additional limitations added are the ordinary features found in the cementing art and they do not introduce any additional patentability to the claims. [Italics ours.]

We accept the first paragraph above quoted from the solicitor's brief as being a correct statement of the law, but a difficulty confronts us in applying it here because, although the examiner held as stated, the Board of Appeals did not so hold, and we are concerned with the decision of the latter.

Nowhere in the board's decision do we find any ruling by it to the effect that the limitations added are the ordinary features found in the cementing art. Upon the contrary, the slidably fitting plug feature, at least, was held to be new and patentable over the prior

art.