could be "produced by other machines and by other methods or by hand."

Although in its decision the Board of Appeals did not state that the involved package could be made by other machines, it did not take exception to the examiner's statement in that regard. The board affirmatively held, however, that the package could be made by hand without employing appellant's process.

Counsel for appellant state in their brief that

It cannot be conceded that hand manufacture of his package could result in quantity production thereof by a mechanical process at low cost

The Board of Appeals proposition that where an article can be made by more than one process, an invention relating to the article is a different one from a patentable process for producing the article, is not supported by the record, which fails to disclose any such process; and appellant is aware of

none.

Although counsel for appellant are unwilling to concede the correctness of the statements of fact made by the tribunals of the Patent Office, there is nothing of record tending to establish that those statements are erroneous, and we must look to the record, not to the brief of counsel, for information on the subject. We are of opinion, therefore, that the principles announced in the Ferenci case, supra, are applicable to the issues in the case at bar, and that the requirement of division was proper.

Relative to the requirement of division in cases involving subcombinations, see In re Ferenci, 23 C. C. P. A. (Patents) 1023, 83 F. (2d) 279, Patent Appeal No. 3608, decided April 6, 1936.

For the reasons stated, the decision is affirmed.

470 O. G. 946; 23 C. C. P. A. 1093; 83 F. (2d) 294

IN RE GOERKE ET AL. (No. 3610)

PATENTS-PATENTABILITY-DIVISION.

There was no error in requiring division between claims for a hand operated wrapping mechanism and claims for feeding and cutting a web of paper.

United States Court of Customs and Patent Appeals, April 29, 1936

[Affirmed.]

APPEAL from Patent Office, Serial No. 724150

Sydney I. Prescott (Joseph Shea of counsel) for appellants.

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

[Oral argument March 6, 1936, by Mr. Miller; submitted on brief by appellants]

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

GARRETT, Judge, delivered the opinion of the court:

The application for patent here involved contains twenty claims, no one of which has had consideration upon its merits by the tribunals of the Patent Office. The application, Serial No. 724,150, which was filed in the United States Patent Office May 5, 1934, recites:

This invention relates to hand operated wrapping machines which fold wrappers about articles of irregular shape such as loaves of bread or about packages of rectangular cross-section such as cartons, etc., and seal the wrapper thereabout.

It appears from "Letter of Examiner, Aug. 18, 1934" (a part of the record), that, on August 1, 1934, the examiner made a ruling which required division between claims 1-19 on the one hand and claim 20 on the other; that appellants traversed the requirement; that the matter was referred to the Examiner of Classification who held the requirement for division proper, and that the Primary Examiner, stating "The inventions are distinct and independent, separately classified and searched," repeated the requirement for division and made his decision thereon final.

It was elected on behalf of applicants not to make the division required by the examiner's final decision but to take an appeal to the Board of Appeals solely upon that question. The Board of Appeals affirmed the decision of the examiner, and the instant appeal to this court followed.

The relationship between claims 1-19 and claim 20 is well shown by comparing claim 3 with claim 20. These read as follows:

3. In a hand operated wrapping machine, the combination with manually operable means for drawing a web of wrapping material from a roll and sever ing a wrapper from the web, of devices for supporting the severed wrapper in a horizontal position, spaced swingable tuckers above said devices, a lifter arranged to move an article upwardly between said devices and tuckers to drape the wrapper about three sides of the article and tuck the wrapper down over the ends of the article, a horizontally movable slide, a bottom folder and a pair of spaced end folders on said slide adapted when moved toward the article while said lifter is in an elevated position to fold one end of the wrapper under the bottom of the article and fold the forward side flaps of the wrapper over said tuckers, respectively, a heated sealer table arranged to wipe the skirt of the wrapper under the bottom of the partially wrapped article when the latter is pushed thereover and heat seal the bottom seam so formed, spaced stationary folders on said table adapted to complete the folding of the end flaps of the partially wrapped article when the latter is pushed therebetween, a pusher on said slide adapted to advance the partially wrapped article onto said table and between said stationary folders, spaced cam rails on said pusher adapted to lift said tuckers up from the partially wrapped article, sealing plates beyond said stationary folders to heat seal the overlapped end flaps of the wrapper,

and cooling plates beyond said sealing plates, said means including a pair of coacting feed rollers operative to draw the web from a roll and feed it into position to be severed, a gear train for driving said rollers, a stationary ledger plate, a movable knife opposite said ledger plate and a handle connected to said gear train and knife so that when the handle is depressed the web is fed by said rollers and when the handle is raised the web is severed by said knife. [Italics ours.]

20. Means for drawing a web of wrapping material from a roll and severing a web therefrom comprising a pair of coacting feed rollers operative to draw the web from the roll and feed it into position to be severed, a gear train for driving said rollers, a stationary ledger plate, a movable knife opposite said ledger plate, and a handle connected to said gear train and knife so that when the handle is depressed the web is fed by said rollers and when the handle is raised the web is severed by said knife.

It will be observed that the mechanical device described in claim 20 is, in substance, the same as that described in the italicized portion of claim 3, and that it constitutes a combination complete within itself. In the statement of the examiner it is said:

Claims 1 to 19 inclusive are drawn to article wrapping mechanism. Claim 20 covers a web feeding and cutting device. These devices have long been recognized as covering subject matter of separate and distinct inventions.

A number of patents were cited by the examiner to show the independence of the subject matter of the invention.

An examination of our decision in the case of In re Lester Ferenci (Appeal No. 3608), 23 C. C. P. A. (Patents) 1023, 83 F. (2d) 279, rendered April 6, 1936, will disclose a striking analogy between certain issues of that case and the issue here. What was there said in comparing claim 13 of the Ferenci application with his claim 47 applies with equal force to the claims under comparison here, and obviously the decision here must be the same as that with respect to claim 47 there, viz., that the subject matter of appellants' claim 20 "does not define an invention so related to or dependent upon the combination as a whole as to warrant including the same in the same application with the other claims *

*

The decision of the Board of Appeals is affirmed.

469 O. G. 517; 23 C. C. P. A. 1095; 83 F. (2d) 286

IN RE FERENCI (No. 3611)

PATENTS-PATENTABILITY-DIVISION.

There was no error in requiring division as to claims to a torsion brake and claims to a wrapping machine combination.

United States Court of Customs and Patent Appeals, April 29, 1936

Appeal from Patent Office, Serial No. 724151

[Affirmed.]

Sydney I. Prescott (Joseph Shea of counsel) for appellant.

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

[Oral argument March 6, 1936, by Mr. Miller; submitted on brief by appellant] Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENBOOT, Associate Judges

LENROOT, Judge, delivered the opinion of the court:

This is an appeal from a decision of the Board of Appeals of the United States Patent Office, affirming a decision of the examiner requiring division between claims 13, 21, 22, and 23 of appellant's application, upon the one hand, and claims 1 to 12, inclusive, 14 to 20, inclusive, and 24 to 29, inclusive, upon the other. The claims embraced in first above named group relate to a torsion brake, and the claims in the second group are drawn to a wrapping machine combination. Each of the claims in the second group describes as an element of the combination the brake described in the first group. Claim 13 is illustrative of the first group of claims, and claim 11 is illustrative of the second group; said last-mentioned claims read as follows:

(13) A torsion brake comprising a clamp having hinged jaws, a screw threaded into said jaws and provided with a head, a coil spring interposed between one of said jaws and the head of the screw, a stationary stud, and a leaf spring carried by the other of said jaws and abutting said stud.

(11) The combination with a lifter adapted to receive an article and raise it to a higher level, a guide on said lifter adapted to support a wrapper, stationary rollers, levers provided with clamping rollers coacting with said stationary rollers to clamp the end of a wrapper projecting from said guide, a floating rod arranged to bear down on the wrapper adjacent its clamped end, vertical guides for said rod, lugs on said lifter adapted to engage and raise said rod against said levers to lift the clamping rollers from the wrapper during the ascent of said lifter, a reel shaft adapted to support a reel of wrapping material, a support for said shaft, a pair of intermittently operating feed rollers coacting to draw the web of wrapping material off said reel and feed it through said guide between said stationary and clamping rollers while the latter are lifted, a torsion brake on said shaft opposing the rotation thereof in the direction of web feed, and operative to rotate said shaft in the opposite direction after cessation of the web feed and thereby recover any slack in the web caused by the inertia of the reel, and a knife for severing a wrapper from the web, said brake including a clamp having hinged jaws, a screw threaded into said jaws and provided with a head, a coil spring interposed between one of said jaws and the head of the screw, a stationary stud, and a leaf spring carried by the other of said jaws and abutting said stud.

Both the examiner and the Board of Appeals held that the alleged invention defined in the first group of claims was separate from and independent of the alleged invention defined in the second group of claims; the examiner cited references to show that the inventions of the two groups are separately classified in the Patent Office. The first group of references cited shows and claims only tensioning devices in connection with reels, and the second group of references shows and claims wrapping machine combinations.

Both tribunals held that the invention claimed in the first group of claims has general utility aside from the article wrapping machine combinations claimed in the second group of claims.

The Board of Appeals in its decision stated:

Considering such an invention as a brake mechanism for a reel, it is obvious that it has general utility. The reel may be used wherever paper or other strips of material are to be unreeled and used and the brake mechanism will serve the function of preventing the reel from unwinding more paper or material than is desired. The reel need not necessarily be used on a wrapping machine.

The Board of Appeals affirmed the decision of the examiner requiring division between the two groups of claims, and from such decision of the board this appeal was taken.

We would observe that none of the claims embraced in appellant's application have been considered on their merits by the Patent Office Tribunals, and there is before us for decision only the naked requirement for division. The question of our jurisdiction to entertain an appeal of this character is, in our opinion, settled in favor of such jurisdiction by the decision of the Court of Appeals of the District of Columbia (our predecessor in jurisdiction of appeals from the Patent Office Tribunals) in the case of In re Frasch, 27 App. D. C. 25. See also Frasch v. Moore, 211 U. S. 1.

We are in accord with the holding of the Board of Appeals and the examiner that the two groups of claims define separate and independent inventions, separately classified in the Patent Office, and that the structure embraced in the first group has general utility aside from its use in the combination set out in the second group of claims.

In our decision in the case of In re Ferenci, Appeal No. 3608, 23 C. C. P. A. (Patents) 1023, 83 F. (2d) 279, we discussed at length the principles applicable to requirements of division of claims in an application for patent and, applying the principles approved in said case, we find no error in the decision of the Board of Appeals and it is therefore affirmed.

115363°-37-29