Neither is there anything to show that their substitution involves any alteration or new operation or result. In consequence, we feel that the British patent was properly held to be an anticipation.

In the brief on behalf of appellant the following argument is made:

In the holding by the Patent Office that the claims are anticipated by the British patent in view of appellant's disclosure, an applicant is being penalized for the fullness of his disclosure. If the original specification had left out the mention of alpha-naphthol as an anti-oxidant, had not disclosed that alpha-naphthol has the effect of inhibiting the oxidation actions taking place during the inductance period of gum formation, or had left out the disclosure that alpha-naphthylamine has the effect of retarding the action of gum formation succeeding the inductance period, then, and in that event, the British reference would not have been available as a reference.

Whether this contention be correct we do not feel called upon here to determine. We must pass upon the application in the form which appellant chose to give it. The fact is that he did choose to make a disclosure which includes alpha-naphthol as one compound of one group and alpha-naphthylamine as one compound of another group. Also, he chose to name alpha-naphthol specifically in a number of his claims. It is true that he does not specifically name. alpha-naphthylamine in any claim except claim 15. From the letter of the examiner of November 15, 1933, finally rejecting the claims, the natural inference would seem to be that during the prosecution of the application some "anticipated element" was cancelled, but it was in effect held by the examiner, whose holding was approved generally by the board, that the anticipated element, so cancelled, was disclosed as an equivalent of the other elements retained in the group which were "determinative of the class," and that the class was not rendered new, nor was the old class rendered patentable merely by the cancellation of such anticipated element. Appellant does not convince us that such holding was erroneous. Certain of appellant's claims are limited to percentages which may differ in degree from the percentages taught by the reference patent, but appellant does not teach that his specific percentages are critical. His specification says:

While the proportions in the specific examples are found to be highly advantageous, larger percentages can be used and particularly with other inhibitors.

As has been stated, claims 1 and 18, which are process claims, include the feature of an "oxygen stability test," the test being that "substantially as described" in the specification. While it is urged that applicant's test so described, said by the board to be known in the art as the "bomb" test, is different from the "dish" test of the British patent, nothing is claimed by appellant for the test per se,

it being simply an element or step in the combination. Whether the test as such be new or not, we are unable to say, but this is immaterial since it is not shown that it lends novelty to the combination taken as a whole. The board says:

It seems obvious that as a stabilizing proposition, claim 1 properly includes only the addition of stabilizing substances. The final result would apparently be the same whether an original test were made or not. The claim specifies no particular relation between the test and the substances to be added and is therefore in the nature of an aggregation.

Under the state of facts above outlined, we are not convinced that the rejection of the appealed claims by the tribunals of the Patent Office constituted error.

The decision of the Board of Appeals is therefore affirmed.

471 O. G. 251; 23 C. C. P. A. 1124; 83 F. (2d) 313

IN RE JAMES (No. 3620)

PATENTS-PATENTABILITY-DOUBLE PATENTING.

The mere fact that appellant may have made certain disclosures as to properties not disclosed in the patent is not of itself sufficient to support an additional patent. There is inherent in the patent all that appellant claims here, and the teachings of the application involved do not embrace matter allowable over the patent.

United States Court of Customs and Patent Appeals, May 4, 1936

APPEAL from Patent Office, Serial No. 310437

[Affirmed.]

Clarence P. Byrnes (Albert Grobstein of counsel) for appellant.

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

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

Before Graham, Presiding Judge, and Bland, Hatfield, Garrett, and Lenroot, Associate Judges

GARRETT, Judge, delivered the opinion of the court:

The application, certain claims of which are here involved, relates to "Method of Treating a Liquid Mixture Containing Oxygen Derivatives of Aliphatic Hydrocarbons, and Products Thereof." A large number of claims stand allowed, but the Board of Appeals of the United States Patent Office affirmed the decision of the examiner rejecting claims numbered 30, 41 to 46 inclusive, 53 and 55 to 58

inclusive, and the applicant appealed to this court for review of the board's decision.

Claims 30, 57 and 58 are article claims limited to insecticides or fungicides, used as sprays to kill insects. Claims 55 and 56, also article claims, are not so limited. All the other appealed claims are method claims.

As examples we quote claims Nos. 30, 41, 44, 55 and 56.

30. An insecticide or fungicide compound comprising as an essential ingredient a sulphonated partially oxidized aliphatic hydrocarbon.

41. In the method of treating a hydrocarbon mixture containing alcohols and bodies having unsaturated bonds such as olefins, the steps consisting of sulphating the same to form alkyl sulphates, and separating the alkyl sulphates.

44. In the method of treating a liquid mixture containing aliphatic hydrocarbons with unsaturated bonds, the step consisting of sulphating the same to produce alkyl sulphates.

55. As a new article of manufacture, a compound containing alkyl sulphates of different molecular weights, the compound being substantially free from free acid,

56. As a new article of manufacture, a compound containing sulphonated unhydrolyzed oxygen derivatives of aliphatic hydrocarbons of different molecular weights.

It will be noted that claim 41, supra, recites two steps, to wit (a) the formation of alkyl sulphates and (b) separating the alkyl sulphates. The first of these steps is present in all the method claims and the second is present in claims 41, 42, 45, and 53. In claim 43 the second step is defined as "decanting the liquid layer containing the sulphates," while in claim 46 the second step is defined as “neutralizing the excess acid."

The appealed claims stand rejected upon the ground of double patenting in view of appellant's patents 1,753,516, of April 8, 1930, and 1,764,792, of June 17, 1930.

Claim 6 of appellant's patent 1,764,792 reads:

6. An insecticide and fungicide composition containing sulphonated derivatives of aliphatic hydrocarbons containing artificialy-introduced chemicallycombined oxygen.

The rejection by the examiner of appealed claims 30, 56, 57 and 58 was based solely upon the foregoing claim 6 of the patent. As to claims 30, 57 and 58 it is clear that the Board of Appeals affirmed upon the same ground, those three being specifically discussed in its decision, but as to claim 56 there is no specific discussion, and it is suggested in the brief of the Solicitor for the Patent Office, in effect, that the board regarded it as being also rejectable, along with the rejected process claims, because of appellant's other cited patent, 1,753,516. In the briefs for appellant (a reply memorandum to the brief of the Solicitor for the Patent Office having been

permitted) claims 30, 57 and 58 are separately and quite elaborately discussed, but there is no discussion therein of claim 56 except that it was included with the group claimed not to be rejectable on patent 1,753,516. The assignments of error in the appeal to this court throw no light upon this question.

With respect to appealed claims 30, 57 and 58, the issue, it seems to us, is whether the "compound" for which each calls is the same, in substance, as the "composition" called for by claim 6 of the patent. We must presume that this matter received the consideration of experts in the Patent Office, and the tribunals who there passed upon the question concurred in holding, in effect, that the products are, in substance, the same. The brief on behalf of appellant challenges this finding, but bases its challenge upon argument, saying:

Our main argument here [as to claims 30, 57 and 58] is that this application is the first to disclose several important new discoveries on such insecticides, as follows:

(a) That the toxic value of the oxidation product against insects is greatly enhanced by sulphonation thereof; and

(b) That at the date of his first insecticide patent No. 1,764,792, James did not know that removal of unsaturateds would avoid burning of foliage and, of course, did not disclose it therein.

Hence, by sulphonating for insecticides, James really kills two birds with one stone, since he destroys the deleterious unsaturateds and also enhances the toxic effect.

These discoveries are new in this case, and are nowhere claimed in any patent.

We are unable to accept this argument as establishing that the product claimed in the application differs, in substance, from the product claimed in the patent. The patent certainly teaches "sulphonating for insecticides" and the fact that certain discoveries, relative to the toxic value and the non-burning of foliage due to such sulphonation, were made subsequent to the date of the patent, certainly may not be held to entitle the applicant to another patent upon the same product.

As to appealed claim 56, whatever may have been the view of the board relative to its being rejectable upon patent 1,753,516, it did not reverse the examiner in his rejection upon claim 6 of patent 1,764,792. The examiner's statement upon that point reads:

Claim 56 was rejected as unpatentable over the composition covered by claim 6 of applicant's patent 1,764,972, the latter being termed a composition and the former a new article of manufacture, a mere choice of terminology.

We construe this to be a holding that the compound claimed in appealed claim 56 is, in substance, the same as that of the composition claimed in claim 6 of the patent, and nothing has been presented before us which would lead us to feel justified in holding otherwise.

If appellant really has a product here which so differs in character from the product of his patent as to entitle him to a patent upon it, that difference should have been made to appear as a fact. It can not be deduced simply from his discovery that it will produce results of which he was not formerly aware.

Process claims 41 to 46, inclusive, and 53, together with product claim 55, are designated by appellant as the "alkyl sulphate claims." Of this group, claims 41, 43, 45 and 53 define two steps viz. (1) the formation of alkyl sulphates by sulphating the mixtures named, and (2) separating the alkyl sulphates from the excess acid. Claim 44 defines only the step of sulphating, the step of separating not being included. Claim 46 refers to "neutralizing the excess acid," but we do not understand that this is claimed to present anything patentably different from the step of separating. Claim 55 is for a product, seemingly resulting from the two step process.

The second step-that of separating the excess acid from the sulphates-we understand to be nothing more than a pouring off, or otherwise getting rid of, such excess. In claim 43 it is defined as "decanting the liquid layer containing the sulphates." According to Webster's New International Dictionary, decant means "to pour off from the edge of a vessel; *** To pour off gently, as liquor, so as not to disturb the sediment or precipitate; or, to pour from one vessel into another; *

As we interpret the decisions of the tribunals of the Patent Office, taken together, it was held that, while appellant's patent No. 1,753,516 does not contain the term "unsaturated bonds," found in some of the appealed claims, such "unsaturated bonds" were there present; that the process of the patent necessarily resulted in "alkyl sulphates," although the patent does not use that term; that appellant has claimed in his application only what was inherent in his patent, although here claiming it by a different name; that the step of separating the excess acid from the product adds nothing inventive to the process, and that to grant the claims now under discussion would result in double patenting.

Appellant urges, in effect, that unsaturated bond bodies were not disclosed by the patent, and, while the brief on his behalf concedes that the broad claims of the patent do cover the claims now under discussion, it is insisted that the public was not taught by the patent how to make alkyl sulphates from unsaturated bodies and separate them for industrial use, and that he is here entitled to narrow claims. Appellant's arguments have received our careful consideration but we are unable to escape the conclusion reached below that double patenting would result from the allowance of the claims. The mere fact