The invention in issue relates to oil burners of the rotary type, and, for the purpose of this case, is sufficiently described in the appealed claims.

The issue here, so far as the structure defined in the appealed claims, e. g., claim 26, is concerned, relates to the fuel distributor tubes.

It will be observed that claim 26 calls for "the discharge ends of said fuel distributor tubes terminating adjacent openings in said peripheral edge portion between a pair of said blades spaced circumferentially a greater distance than an adjacent pair of blades for discharging streams of fuel through said openings substantially free from blade impact."

It is clear from the record, and it is conceded by counsel for apellants, that Meikle's parent application as originally filed disclosed in the drawings the structure claimed in his divisional application. Counsel for appellants contend, however, that Meikle's written specification, explaining the mode of operation, was inconsistent with the structure disclosed in the drawings, and that the device would not operate as claimed by him.

It appears from the record that during the prosecution of the alleged parent application, there was considerable discussion between the examiner and counsel for Meikle as to whether the invention disclosed and claimed in that application would operate in the manner claimed, the examiner taking the view that as the fuel tubes extend "almost to the outer ends of blading 82 as seen in Figure 10 it is apparent that the hydrocarbon stream from each tube 78 will be thrown clear of the blades and will not pass through them to become atomized thereby." Although it appears that, for a time, counsel for Meikle disagreed with the views of the examiner, they eventually acquiesced therein, and, on March 19, 1930, requested that the Patent Office drawings be modified by showing a shortening of the tubes, and the "baffle structure 82" be indicated as in front of them, “in order thereby that the drawing may correspond with the description in the specification and claims." The drawings were so modified on June 29, 1931.

Counsel for appellants contend that subsequent to the amendment made on June 29, 1931, Meikle's parent application did not disclose the structure, nor contain a description, of the involved invention, and that, therefore, there was nothing in the alleged parent application upon which his divisional application, which matured into patent No. 1,977,521, could be based; that Meikle was not entitled to the filing date of his parent application for constructive reduction to practice of the involved invention, which he claimed in his alleged divisional application; and that, accordingly, the patent issued on the alleged divisional application is not a proper reference.

The Primary Examiner disagreed with counsel for appellants, and held that Meikle's parent application clearly disclosed the involved invention; that his application which matured into patent No. 1,977,521 was a true division of his parent application; that Meikle was entitled to the filing date of his parent application for constructive reduction to practice of the invention claimed in his divisional application; that in view of the fact that appellants failed to establish by affidavit, as provided by rule 94 of the Rules of Practice in the United States Patent Office, that they made the invention prior to the filing date-July 7, 1928-of Meikle's parent application, they were not entitled to have their application placed in interference with the Meikle patent; and that the Meikle patent was a proper reference.

In affirming the decision of the Primary Examiner, the Board of Appeals said:

The disclosure in the Meikle patent has been carved out of the disclosure of the earlier Meikle application as filed on July 7, 1928. During the prosecution of said earlier application the Office was instructed to shorten the tubes 78. It is applicants' position that Meikle should not have been permitted in his divisional application to show the tubes of the original length in view of such instructions and in view of an affidavit in the earlier Meikle application as to the manner in which the spray is formed. The affidavit is not inconsistent with the manner of formation of the spray in other modifications of the Meikle device.

The examiner holds that the proposed changes in the earlier Meikle application involved new matter and that the disclosure of the Meikle divisional application is consistent with the original disclosure in the earlier Meikle application. We are of opinion that the examiner's conclusion in this respect is sound. Clearly enough, as originally shown there were no blades opposite the ends of the pipes and the pipes were of such length that the illustrated blades could not interfere with the projection of the oil from the ends of the pipes. The statement at the bottom of page 14 of the specification that "as this hydrocarbon stream, issuing from the tubing 78, passes through the outer breakers, it is seen to become atmoized to provide the combustible mixture desired", does not necessarily mean that the breakers contribute to the atomizing action as they do in the other forms of the Meikle device. [Italics ours.]

Appellants' contentions, relative to the facts in issue, are two-fold: first, although Meikle's parent application may have disclosed the structure of the involved invention, there was an inconsistency between the written description of the mode of operation and the "structure", which inconsistency was not corrected until his alleged divisional application was amended on September 14, 1934, by the insertion of the following statement:

The jet or stream of fuel passes into the combustion chamber substantially free from impact with the fan blades due to the preferred construction, herein disclosed by way of example, in which the end or ends of the fuel distributor tube or tubes terminate at a point or points adjacent the fan blades

and preferably in a position to discharge the jet or stream of fuel outwardly through a space between the peripherally disposed fan blades

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second, as the drawings in the parent application were amended on June 29, 1931, by showing a shortening of the fuel tubes, there was thereafter no disclosure whatsoever of the involved invention in the parent application.

The structure here involved was fully disclosed both in the drawings and in the written specification of Meikle's parent application as originally filed. I quote from his specification as it appears in the record:

A burner head structure adapted for supplying a greater volume of combustible than any of the proceeding constructions is shown in Fig. 8. In the construction here shown, the burner cup 16 has pick tubes 17 cut off in horizontal planes [parallel]* a short distance above the base of the cup and has tubing 78 connected thereto leading radially outward through slots 79 cut in the edge of the cup 16. The breaker head in this instance comprises a pair of nested breaker members 80 and 80', the member 80 being a large outside one, whereas the member 80' is smaller and has its depending flange portion disposed within that of the breaker 80. The blading for these breakers is shown respectively at 82 and 82'. This blading is preferably disposed entirely about the circumference of the breaker, as indicated in Fig. 9. The manner in which this blading is provided is shown more clearly in Fig. 10 where it is seen that a blade member 82" is shown as a bent-back wing, cut from a rectangular opening 81', formed in the depending flange of the breaker. The tubing 78 is seen to pass through the blading 82' ['']* extending adjacent [into]* the blading 82. This tubing is preferably flattened so as to have a relatively elongated outer end which may be disposed diagonally across the space of one of the breaker blades. In this manner the stream of fuel lifted by a pick tube issues as a relatively flat stream, which, by reason of the diagonal disposition of the end of the tube across the blade structure, as shown in Fig. 9, readily breaks vertically distributing itself in [into]* a plurality of horizontal planes. While the burner cup or nozzle, shown in Fig. 8 has air openings, as shown at 19', the air which passes through these openings is not mixed within the cup with the hydrocarbon fuel. The air which is thus drawn into the cup, passes on to be mixed with the fuel over the hearth in the combustion chamber; this blading being extended entirely about the circumference of the breaker is adapted to set in motion a large amount of air. The liquid fuel lifting means is also adapted to lift a corresponding large amount of fuel.

[*Words and figures enclosed in brackets erased in copy.]

Immediately following the description of the elements of the involved structure, Meikle stated that "As this hydrocarbon stream, issuing from the tubing 78, passes through the outer breakers, it is seen to become atomized to provide the combustible mixture desired." It is true that the last quoted statement is not a full and complete description of the mode of operation of the disclosed structure. Nevertheless, it is not inconsistent with the proposition, which is not challenged here, that the oil was discharged from the fuel distributor tubes "substantially free from blade impact," as called for in the appealed claims.

Rule 71 of the Rules of Practice in the United States Patent Office provides that "no change in a drawing may be made except by permission of the office," and then only after a photographic copy of the original drawing has been filed.

No showing having been made to the contrary, it will be presumed that the mandates of rule 71 were complied with.

Counsel for appellants contend that the involved invention was not clearly disclosed in Meikle's parent application as originally filed, and it is asserted in the majority opinion that he never had any conception of it. Nevertheless, no claim is made here, either by counsel for appellants or by a majority of the court, that the invention was not sufficiently disclosed therein to enable one skilled in the art to construct and use it. It is stated, however, in the majority opinion that Meikle "sought and obtained a patent upon subject matter which he had disclaimed in his parent application." Just why he should disclaim something he never had disclosed, is not explained.

Meikle having clearly disclosed a structure by which a new and useful result was obtained, and on which the appealed claims read, it is immaterial whether he understood or correctly stated in his parent application, or in his divisional application, so far as the issues here are concerned, the scientific principle upon which it operated. In re Modine, 19 C. C. P. A. (Patents) 1058, 57 F. (2d) 355.

In my opinion, there is nothing of record to indicate that Meikle either disclaimed or abandoned the involved invention, which, as hereinbefore stated, he fully disclosed both in the drawing and in the written specification of his parent application, by the amendment made to the parent application on June 29, 1931, or that the disclosure of it was physically withdrawn from the "file wrapper" of that application. He might properly have been permitted to withdraw the amendment, and to present claims to the involved invention in that application for interference purposes. Writer v. Kiwad, 20 C. C. P. A. (Patents) 869, 878, 63 F. (2d) 259. During the prosecution of an application, an applicant always has the right to withdraw amendments thereto, and it is elementary that cancellation of drawings and written descriptions of, and claims to, an invention disclosed therein is not an abandonment of such invention under those circumstances. It is only when he has permitted his application to mature into patent without the filing of a divisional or other application reasserting his right to the invention theretofore cancelled that any question arises as to his rights in the premises. Hobbs v. Beach, 180 U. S. 383; Overland Motor Company v. Packard Motor Company, et al., 274 U. S. 417; Montgomery Ward

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& Co. Inc. v. Gibbs, 27 F. (2d) 466; Cosper v. Gold, 36 App. D. C. 302; Hartford-Empire Co. v. Obear-Nester Glass Co. et al., 71 F. (2d) 539. Furthermore, "divisional applications are not to be dealt with in a hostile spirit, but are to be 'favored to the extent that where an invention clearly disclosed in an application is not claimed therein but is subsequently claimed in another application, the original will be deemed a constructive reduction of the invention to practice and the later one will be given the filing date of the earlier, with all of its priority of right."" Webster Elec. Co. v. Splitdorf Elec. Co., 264 U. S. 463.

Counsel for appellants contend, and the majority of the court holds, that the only support in Meikle's divisional application for the subject-matter of the appealed claims was introduced by the amendment of September 14, 1934, hereinbefore quoted; and that the amendment involved new matter.

I am unable to concur in those views. In my opinion, the amendment includes nothing more than a partial description of a structure theretofore fully disclosed, both in the parent and divisional applications, and, in addition thereto, a statement that the fuel was discharged through "a space between the peripherally disposed fan blades." The structure could operate in no other way. Accordingly, the stated mode of operation would be obvious to one skilled in the art.

I am of opinion, therefore, that Meikle's application, which matured into patent No. 1,977,521, was a true division of his parent application; that the patentee Meikle is entitled to the filing dateJuly 7, 1928-of his parent application for constructive reduction of the involved invention to practice; that as appellants failed to establish by affidavit, in accordance with rule 94, supra, that they had made the invention prior to July 7, 1928-the filing date of Meikle's parent application, they were not entitled to have their application placed in interference with the Meikle patent No. 1,977,521; that the Meikle patent is a proper reference; and that, for the reasons stated, the appealed claims are unpatentable to appellants.

GARRETT, Judge, concurs.

468 O. G. 280; 23 C. C. P. A. 942; 81 F. (2d) 869

IN RE REID (No. 3588)

PATENTS-PATENTABILITY-NOVELTY.

Appellant was not seeking simply to provide a battery terminal connector, but a connector which would bring about a new and distinct result, and to accomplish this result he applied means different from the means which he declares produced the problem. The claims should be allowed.