James S. Eagen, president and supervising engineer of the Simpson Instrument & Lens Corporation, appellant's switches, which were also then under test, were observed to have made over 59,700,000 makes and breaks, and that at that time they were still "making clean and definite contacts and breaks, not showing any indications of approaching failure, but appear to be capable of indefinite endurance."

The examiner pointed out that this affidavit was not sufficiently definite. Other affidavits were then submitted, including that of said James S. Eagen, who, under date of December 21, 1934, supplemented his former affidavit and stated that the appellant's switches, to which he referred on November 10, 1934, "were being operated to open and close the circuits through 110 volt electric lamps, and that all five of said switches have continued in operation without interruption, and are still operating under 110 volts." Affiant also stated that "they undeniably demonstrated their ability to withstand a current of 5 amperes, opening and closing the circuit at the rate of 680 per minute, and that the endurance of these switches has reached, at the present time, 88,128,000 makes and breaks."

After the affidavits were filed, both Patent Office tribunals considered them, and the examiner stated that he saw no reason presented by the affidavits to justify a change in his decision, and concluded that appellant had an improvement over old results which did not involve invention, except as to the claims which had been allowed. The board, in affirming the decision of the examiner, concluded that the good results claimed by appellant were merely the cumulative and expected result flowing from the several old features embodied in the combination.

Appellant argues in this court that the problem in the art which he solved involved inventing a way of preventing contamination of the electrodes and a fouling of the mercury and that the life of a switch depended upon the number of makes and breaks it experienced before contamination became such as to defeat the passage of the spark; that it was not obvious that the very remarkable, almost phenomenal, result which he obtained by his combination could be obtained from the combination above detailed, and suggests that if nothing more than the skill of the mechanic was required to bring about the desired result the problem would have been solved long before appellant entered the field. Tesla's patent was issued in 1898, Clark's in 1905, and Phelan's in 1926.

We are inclined to agree with appellant's view that the board erred in holding that upon the record at bar the claims were properly rejected on the ground that the results obtained by appellant's work involved nothing more than mechanical skill. Of course, the

mere fact that new and useful results flow from a combination of old art elements does not always mean that invention was required in bringing about such results. They must be such results that they could not be brought about by mechanical skill alone, with the aid of the prior art. It seems to us that appellant's solution of the problem produced such unusual, unexpected, and useful results that it must have involved invention, or at least there is such a doubt on the question as to warrant granting appellant a patent for his broad invention which involved cooperatively combining old elements. In Ohmer Fare Register Co. v. Ohmer et al., 238 Fed. 182, 190, it was said:

Even if every element of the claims were found in the prior art, invention would still exist if by their combination a new and useful result is obtained, or an old result in a new and materially better way;

Other such broad statements may be found in the decided cases, but of course invention must be involved. For instance, in Independent Oil Well Cementing Co. v. Halliburton et al., 54 F. (2d) 900, 906, it is said:

* It is sufficient that the elements so coact or cooperate that as a consequence of their union a new and useful result or an old result in a more facile, economical, or efficient way, and not a mere aggregation of the product of each element, is produced

*

It was said in International Mausoleum Co. v. Sievert et al., 213 Fed. 225, 230:

for, even if it shall turn out that each element of the combination was old, yet, if the combination produces a new and useful result, the inventor is entitled to the protection of the patent. * **

In Buono et al. v. Yankee Maid Dress Corporation, 7 F. Supp. 793, 796, the District Court for the Eastern District of New York, in an opinion by Judge Campbell, said:

The history of the development of this art shows that the patentee of the patents in suit accomplished what others for a long time had sought without success, and this is strong evidence of their patentability.

*

We quote the following statement from N. O. Nelson Mfg. Co. v. F. E. Myers & Bro. Co., 25 F. (2d) 659, 663:

Although every element of a patent combination is old, invention still exists if the combination either produces a new and useful result, or effects an old result in a new and materially better way.

*

*

In a recent case, Wach v. Coe, 77 F. (2d) 113, by the Court of Appeals of the District of Columbia, in an opinion by Mr. Justice Robb, it was said, quoting from Paramount Publix Corp. v. American Tri-Ergon Corp., 294 U. S. 464:

* Where the method or device satisfies an old and recognized want, invention is to be inferred, rather than the exercise of mechanical skill. For

mere skill of the art would normally have been called into action by the generally known want.

*

In In re Champeau, 17 C. C. P. A. (Patents) 568, 34 F. (2d) 1012, this court said:

We are unable to see, after an examination of these references, why the appellant is not entitled to the patent he claims. It is true that the references show that prior to appellant's application the various elements going to make up appellant's device were each well known. It is true also that a somewhat similar result might be obtained, at least, by Taepke's patent. But even though there be nothing novel in the elements combined, if applicant here has, by a combination of known elements, accomplished a new and useful result, he is entitled to his patent. *

In In re Merriman, 22 C. C. P. A. (Patents) 923, 930, 74 F. (2d) 944, we said:

It is true that the patent to Tellander taught that hollow articles might be cast in metallic molds having a metallic core so that their surfaces would be smooth and hard. It may be, now that appellant has solved the problem confronting those engaged in the production of manhole frames and covers, that it seems simple to combine the references of record so as to produce appellant's claimed invention. However, the patent to Tellander, was issued in 1881, and the last issued patent of record having any bearing on the subject, the British patent to Needham, was issued in 1923. Accordingly, it seems strange indeed, considering the facts of record, that those skilled in the art should, for many years, resort to the expensive operation of machining in order to secure accurately engaging surfaces of manhole cover seats and covers, if appellant's claimed process and product were obvious to them.

It is argued by the Solicitor for the Patent Office that the instant case falls within the rule laid down in In re Hugh Rodman, 19 C. C. P. A. (Patents) 743, 53 F. (2d) 895, where is found the following language:

The reasoning in De Forest Radio Co. v. General Electric Co., 283 U. S. 664, we think is controlling of the decision in this case. There the Langmuir highvacuum tube was concededly better than the prior art De Forest audion or vacuum tube, from which it differed by using a higher vacuum, or lower air content, in the tube. The Supreme Court of the United States held that there was no invention in changing the degree of vacuum, notwithstanding the improved results, because the high vacuum was suggested by other prior art.

In the last-above-cited case, the claimed improvement did not consist in combining old elements so that they would coact and cooperate to produce a new and useful result, but consisted in obtaining better results in casehardening steel articles by using a grade of coke better than the prior art taught. This, we said, did not involve invention. So it was in the case of De Forest Radio Co. v. General Electric Co., 283 U. S. 664. Langmuir obtained better results by using a higher vacuum than that which was taught by the prior art. The Supreme Court of the United States said that there was no invention in changing the degree of vacuum. These two decisions, as we see it,

turn upon a principle in no way involved in the case at bar. Here, we are not concerned with a question of the degree of the effect of a single element, but with a result of a cooperative combination of elements.

For the reasons stated, we think the claims should be allowed, and the decision of the Board of Appeals is reversed.

473 O. G. 7; 23 C. C. P. A. 1216; 83 F. (2d) 928

IN RE KLEINE, PFANNENSTIEL, AND MATTHAES (No. 3646)

1. PATENTS-PATENTABILITY-LACK OF INVENTION.

The quantities used and the temperatures employed in appellant's method, as defined in the claims, are not shown to be critical, and even though appellant did obtain new and useful results, it did not require invention to bring about such results.

2. PATENTS-APPEAL AND ERROR-PROCEEDINGS IN FOREIGN PATENT OFFICE.

There is nothing in the record to show that the Dutch patent was allowed, and while appellant's word is not questioned, it is well settled that this court may not consider such statements appearing only in the briefs of the parties. Under the circumstances at bar, even though the alleged fact relating to the Dutch patent were shown in the record, it would not justify a holding that the board erred in affirming the examiner in rejecting the appealed claims.

United States Court of Customs and Patent Appeals, June 8, 1936 APPEAL from Patent Office, Serial No. 492358

[Affirmed.]

Potter, Pierce & Scheffler (Charles H. Potter and John S. Lachowicz of counsel) for appellants.

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

[Oral argument May 8, 1936, by Mr. Lachowicz and Mr. Miller]

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

BLAND, Judge, delivered the opinion of the court:

All the claims of appellants' application for a patent relating to a method of spinning viscose silk were rejected by the Primary Examiner of the United States Patent Office, in view of the prior art, which rejection, upon appeal, was affirmed by the Board of Appeals.

Before the board, appellants requested a reconsideration of its decision, and the same being granted, a second decision was, by it,

rendered. For the purposes of appeal, appellants were permitted to make certain changes in their claims, which changes were not regarded as being of sufficient importance to justify the allowance of the claims. The second decision of the board explains its first decision and takes into consideration the amendments to the claims, as well as the arguments presented in appellants' petition for reconsideration.

There are no drawings submitted with appellants' application, and the nature of the invention may, in a general way, be understood by a consideration of the claims. Claims 3 and 8, as amended, are regarded as illustrative of the eleven rejected claims involved in this appeal. They follow:

3. Process for manufacturing artificial threads of high tenacity from viscose, which comprises spinning a viscose solution into a precipitating bath containing in addition to 30 to 40 per cent by weight of free sulfuric acid monohydrate at least 20 per cent by weight of an alkali metal bisulfate.

8. Process for manufacturing artificial threads of high tenacity from viscose, which comprises spinning a viscose solution into a precipitating bath containing in addition to 30 to 40 per cent by weight of free sulfuric acid monohydrate at least 20 per cent by weight of a bisulfate dissolved in the sulfuric acid, the precipitating bath having a temperature of about 30 to 50° C.

The board describes appellants' alleged invention in the following language:

The disclosure relates to a process for the production of high strength filaments from viscose solutions. The appellants allege that the novelty in their process resides in carrying out the spinning in a bath containing 30% to 55% by weight of sulfuric acid monohydrate and at least 20% by weight of a bisulfate dissolved in the sulfuric acid. It is appellants' position that by using a lower or medium sulfuric acid content and a relatively high bisulfate content, the spinning of the threads is improved. It is also argued that it is possible to work at more favorable temperatures and that the corrosive action of the bath is diminished and that the degrading action of the bath on the cellulose threads is not as great as it is in baths containing a high concentration of sulfuric acid.

The references relied upon by the examiner and the board are: Lilienfeld, 1,683,199, Sept. 4, 1928.

Lilienfeld, 1,683,200, Sept. 4, 1928.
Lilienfeld, 1,820,811, Aug. 25, 1931.

In discussing the references with relation to the rejected claims. the board said:

The Lilienfeld patents, three of which are cited, appear to disclose the use of baths containing free sulfuric acid as low as 45% with a bisulfate component which as calculated by the examiner amounts to over 17%.

The claims have been rejected as not involving invention in view of the Lilienfeld patents. It is to be noted that applicants' free sulfuric acid content in the bath ranges up to 55% while the disclosure of the art ranges to as