but interacting with said piston and valve, said device having means for insuring the proper action of the system at all times", and since the Juul structure is not automatic, and does not have the "maintenance of pressure" feature, all appellant's claims are, for this reason, allowable.

The board, in discussing appellant's alleged invention, states:

While the details of applicant's device are somewhat complex it is observed as the Examiner points out that the claims here on appeal do not include any limitations of such nature but are directed rather very broadly to the conception of applying the supplemental device to the triple valve and attaching it physically to the valve casing, that is, in effect making it integral with such valve casing. It appears that applicant is not the first to propose an accomplishment of the function of recharging the storage reservoirs while the brakes remain engaged. The patent to Juul sets forth fully and clearly an air-brake system in which this function may be accomplished and Juul's device is thoroughly automatic and under the control of the engineer. Juul's mechanism is however not directly physically attached to the triple valve but is diagrammatically indicated as being mounted in the immediate neighborhood thereof and at least on the same car with the triple valve and connected thereto by more or less extended tubes B and B'. Juul broadly refers to these tubes merely as pipes to connect the delay device with the triple valve. Obviously they could be very short and in effect amount to connection of the attachment to the triple valve.

The Examiner has very fully and carefully analyzed the structures shown by applicant and by Juul and points out that there are differences and that in applicant's device the operation of the delay or retainer valve mechanism is dependent upon the pressure in the auxiliary storage reservoir and that it continues to act until pressure is rebuilt in the reservoir whereas in Juul's device action is dependent upon the retarding effect of a dashpot which would act at definite fixed intervals independent of the air pressure in the auxiliary reservoir but the claims have not developed any features relating to this differentiation. Concerning the terms of the claims we find that claim 8 requires in combination first a fluid brake system with a slide-valve and chamber. In Juul we have the same type of air-brake system and it embodies a slide valve A-B-1 and a chamber as shown in which it operates. The claim further includes an automatically operated device associated with but independent of said valve and chamber for maintaining control of the system. This is the mechanism shown generally at C and D of Juul. This includes the dashpot, time delay device which accomplishes a result equivalent to that of applicant's device within the scope of the appealed claims even though it may operate according to a fixed time interval rather than according to pressure in the auxiliary reservoir. The expression, "associated with but independent of" clearly reads directly upon Juul in the same sense that it does on applicant's device even if not more directly. The claim further requires a single brake valve for setting the slide valve in operation and simultaneously energizing the said device. This is no more than the engineer's control valve which would be at the head of the train pipe in the conventional way the same as it is at the head of the train pipe in applicant's system. Claim 14 is even broader in expression than claim 8 in requiring only a controlling device for the system which would be the parts C and D of Juul.

The other claims in the application are discussed by the board briefly.

[1] We approve of the grounds of rejection applied by the board which are substantially the same as those applied by the examiner. We think the claims except claims 32 and 33 (which will be discussed later) are not patentable over Juul. In view of all the circumstances in this case, patentability could not rest upon the mere statement that in appellant's device certain things were done automatically without disclosing the novel, inventive, automatic means.

In In re Rundell, 18 C. C. P. A. (Patents) 1290, 48 F. (2d) 958, it was said:

** * * The mere statement that a device is to be operated automatically instead of by hand, without a claim specifying any particular automatic mechanism, is not the statement of an invention. [Citing authorities]

It is true, as appellant has pointed out, and cited many authorities in support thereof, that where appellant has been allowed broad claims and the application is out of the Patent Office, the courts will so interpret broad claims as to give a patentee adequate protection. We agree with the Solicitor for the Patent Office that while the application is before the examiner and when the applicant's attention is called to the fact that he is claiming too broadly, he should not afterwards complain if the claims are properly rejected on the ground that they are so broad in character as to read upon the prior art. In In re Buckwalter, 22 C. C. P. A. (Patents) 1031, 75 F. (2d) 515, we said:

As has been so often said, the claim is the measure of the invention, and if appellant's claims were so broadly drawn as to read upon the prior art, we know of no rule which would authorize the tribunals of the Patent Office, or the courts to read limitations, based upon extraneous arguments, into them. In In re Horton, 19 C. C. P. A. (Patents) 871, 54 F. (2d) 961, we quoted with approval from In re Carr, 54 App. D. C. 270, as follows: After a patent has issued, and it no longer is possible for the patentee to control the phraseology of his claims, the courts will so interpret them, if possible, as to protect him; but there is no reason, as we many times have observed, why an applicant in the Patent Office should not draw his claims to cover his actual invention only. For this reason, we have uniformly ruled that claims will be given the broadest interpretation of which they reasonably are susceptible. This rule is a reasonable one and tends not only to protect the real invention but to prevent needless litigation after the patent has issued.

Appellant has not attempted to point out where his claims, except claims 32 and 33, distinguish over the Juul patent except by the use of the broad language which we have hereinbefore discussed.

[2] Now as to claims 32 and 33, which were rejected as being based upon new matter, we are also in agreement with the Patent Office Tribunals that they were properly rejected. These two claims include reference to a vent in communication with one of the passages of the controlling device, enabling the controller to reduce the brake-cylin

der pressure correspondingly with the car load. In figure 6 of appellant's drawings there is a dotted line which extends upward through a portion of appellant's mechanism and terminates at a letter "x". No reference is made to the same in the specification as originally filed, and descriptive matter concerning this detail was first introduced by amendment long after the application was filed. Said claims 32 and 33 were likewise introduced at the same time. The newly added descriptive matter alleges that the vent was intended for the placing therein of a reducing valve which could be manually adjusted to reduce brake-cylinder pressure. The board found that while the device might work in the way claimed, it was not believed that such result would be obvious from an inspection of the original drawings only.

We concur in this view of the board that the rejection of said claims 32 and 33 upon the grounds of new matter was entirely proper. The deduction of the Board of Appeals is affirmed. LENROOT, Judge, dissents as to claims 32 and 33.

470 O. G. 720; 23 C. C. P. A. 1070; 82 F. (2d) 718

IN RE NEUBERTH (No. 3618)

PATENTS-PATENTABILITY-DOUBLE PATENTING.

The appealed claims and the claims in appellant's prior patent No. 1,842,280 are distinguishable only in that the application at bar covers the intracrystalline structure in solid metal stock or a round body, while the patent relates only to the intracrystalline structure of tubes. This does not constitute a patentable distinction.

UNITED STATES COURT OF CUSTOMS AND PATENT APPEALS, APRIL 20, 1936

APPEAL from Patent Office, Serial No. 579138

[Affirmed.]

Emery, Booth, Varney & Whittemore (Nichol M. Sandoe of counsel) for appellant.

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

[Oral argument March 10, 1936, by Mr. Sandoe and Mr. Miller]

Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges

BLAND, Judge, delivered the opinion of the court:

Appellant has here appealed from the decision of the Board of Appeals of the United States Patent Office, which affirmed the

action of the Primary Examiner in rejecting all of appellant's claims in his application for an alleged improvement in metal stock. The ground of rejection by the Patent Office Tribunals is hereinafter quoted. The conclusion by the tribunals that the allowance of the appealed claims would amount to a patent for the same invention as is covered by appellant's article patent No. 1,842,280, arises from the history of the alleged invention which appellant, in his brief, recites as follows:

In April, 1929, applicant filed an application for letters patent to cover a method and apparatus for working metal in the cold state, which application was based on certain experimental work which had been carried out in connection with the manufacture of metal tubes. The said application was prosecuted to allowance and was issued on June 16, 1931, No. 1,810,886. During the course of this experimental work with tubes, it was soon discovered that the tubes produced possessed remarkable properties which had hitherto been unknown in cold worked tubes. Investigation of the crystalline structure of said tubes demonstrated that these properties resulted from a novel crystalline structure produced by the said method and apparatus. Accordingly, an application was filed on April 11, 1931, Serial No. 529,534, for a patent to cover said tubes having the said novel crystalline structure which had been found to be useful and valuable. The said application was also prosecuted to allowance and the patent issued on January 19, 1932, No. 1,842,280.

Subsequently, however, it was discovered that solid stock did, in fact, possess the same crystalline structure as the tubes, and it was also discovered that the said crystalline structure produced physical properties in solid stock which were of even greater importance in solid stock than in tubes. It was decided, therefore, to file an application to cover solid stock having this novel crystalline structure inasmuch as no claim had been made in this field in the tube application. * The present application was filed on December 5, 1931, Serial No. 579,138, more than a month before the tube patent issued, so that this application and the tube application were co-pending.

It will be observed that appellant first filed an application for a method and apparatus for producing metal tubes by the cold rolling process and that during the pendency of this application, which ripened into patent No. 1,810,886, appellant filed an application, and a patent, No. 1,842,280, was granted thereon, for the article produced by his method and apparatus, to wit, a metal tube. The application relating to the tube contained fourteen article claims and no method claims. During the prosecution of the said last-referred-to application, appellant filed the instant application which also contains fourteen claims, all of which are drawn to cover either "solid metal stock" or "a round metal rod".

The metal stock and rods involved in the claims at bar are made by the same process as that called for in appellant's said method and apparatus patent, except that in the making of the tubes it is necessary to have a mandrel inside the tube. Appellant in his specification

in the instant case, after calling attention to the method of his said patent No. 1,810,866, states:

It is obvious that by removing the mandrel from such machines and by feeding solid stock for reduction by the rockers in accordance with the method therein described, it is also possible to reduce solid stock such as rods, bars, strips and the like. It is found that such solid stock may also be worked to an almost unlimited extent, also without annealing and without destroying the characteristics of the metal.

The claims in the application at bar and the claims in the patent for the metal tube, No. 1,842,280, are distinguishable only in that the application at bar covers the intracrystalline structure in solid metal stock or a round metal rod, while the patent relates only to the intracrystalline structure of tubes. Some of the claims in the present application refer to a majority of the crystals which characterize the structure, while other claims refer to different percentages of the crystals which possess the characteristics referred to in all the claims.

Claims 2 and 12 are illustrative of all the appealed claims and read:

2. As an article of manufacture a round metal rod characterized by this: that in a longitudinal section taken through the longitudinal axis thereof a majority of the crystals appear elongated with surface made up for the most part of elongated longitudinal fibers. [Italics ours.]

12. As an article of manufacture solid metal stock in which the intracrystalline structure is characterized by the presence, in a majority of the crystals, of fold lines extending substantially parallel to the axis of elongation of the stock and by the substantial absence of slip-lines. [Italics ours.]

Claim 12 of appellant's patent No. 1,842,280, is illustrative of all the claims therein contained, and recites the subject matter which the tribunals of the Patent Office regarded as the same as that claimed in the instant application, and reads as follows:

12. As an article of manufacture, a metal tube in which the intracrystalline structure is characterized by the presence, in a majority of the crystals, of fold lines extending substantially parallel to the axis of elongation of the tube, and by the substantial absence of slip-lines. [Italics ours.]

The examiner did not cite appellant's patent No. 1,842,280 as a prior art reference, since the application for it was copending with the instant application, but stated:

The reference discloses and claims a tube having the same crystalline structure as that of the solid metal stock here claimed, the tube having been made by advancing it on a mandrel between the rockers of said device. The claims of the reference are the same as those in the application with the exception that they recite either "solid metal stock" or "a round metal rod" instead of "a metal tube."

Applicant contends that because the reference was copending with the present application it is not a valid reference against the claims. The rejection is not on the disclosure of the reference, however, but is on the claims of the