his decision, fully set forth in writing, touching all the points involved by the reasons of appeal. [Italics ours.]

SEC. 4914. (U. S. C., title 35, sec. 62.) The court, on petition, shall hear and determine such appeal, and revise the decision appealed from in a summary way, on the evidence produced before the commissioner at such early and convenient time as the court may appoint; and the revision shall be confined to the points set forth in the reasons of appeal. [Italics ours.]

The pertinent part of Rule 149 of the Rules of Practice in the United States Patent Office provides:

When an appeal is taken to the U. S. Court of Customs and Patent Appeals, the appellant shall give notice thereof to the Commissioner, and file in the Patent Office, within forty days, exclusive of Sundays and holidays but including Saturday half holidays, from the date of the decision appealed from, his reasons of appeal specifically set forth in writing.

Division having been required as to claims 6, 7, and 8, and those claims having been dismissed on motion of counsel for appellant, it is clear from the "reasons of appeal" filed in the Patent Office that the only objection to the rejection of the appealed claims is that appellant is dissatisfied with the decisions of the tribunals of the Patent Office.

In the case of In re Wagenhorst, 20 C. C. P. A. (Patents) 991, 64 F. (2d) 78, this court stated that, although the statute should be liberally and reasonably construed, and that rigid and inflexible rules relative to assignments of error "sometimes applied by the courts in other proceedings" should not be applied, it was necessary, nevertheless, that the reasons of appeal be sufficiently specific to advise the court and the Patent Office of the precise questions at issue, otherwise this court could not revise the decision of the Board of Appeals on the "points set forth in the reasons of appeal," as required by statute.

In our decision in that case we cited the following decisions wherein we refused to consider questions not raised in the reasons of appeal: In re Schneider, 17 C. C. P. A. (Patents) 952, 39 F. (2d) 278; Mas v. Root, 19 C. C. P. A. (Patents) 819, 54 F. (2d) 435; Southgate v. Greene, 19 C. C. P. A. (Patents) 1129, 57 F. (2d) 374; Derby Oil Co. v. White Star Refining Co., 20 C. C. P. A. (Patents) 816, 62 F. (2d) 984.

This is a statutory proceeding. The statute requires that the reasons of appeal shall be specifically set forth in writing; that the Commissioner of Patents shall furnish this court with the grounds of his decision, which relate to the "points involved in the reasons of appeal"; and that the decision of this court shall be confined to a revision of the "points set forth in the reasons of appeal." Obviously, therefore, if the mandates of the Congress are to be carried. out, this court must of necessity be advised of appellant's reasons of

appeal, so that we may revise the decision of the Board of Appeals on the "points set forth in the reasons of appeal."

Appellant having contented himself in his notice of appeal with the mere statement that the Board of Appeals had erred in its conclusion, both as to law and the facts, and having failed to set forth specific reasons why the decision should be either modified or reversed, this court has no authority to revise the decision of the Board of Appeals. See section 4914 R. S., supra; In re Thomas et al., 23 C. C. P. A. (Patents) 1238, 83 F. (2d) 902, Patent Appeal No. 3652, decided concurrently herewith. Accordingly, for the reasons herein stated, the appeal is dismissed.

473 O. G. 495; 23 C. C. P. A. 1244; 83 F. (2d) 912

IN RE STEENBOCK (No. 3665)

PATENTS-PATENTABILITY-RIGHT TO MAKE THE CLAIM.

The principle is well established in chemical cases, and in cases involving composition of matter, that the disclosure of a species in a cited reference is sufficient to prevent a later application from obtaining generic claims, although the disclosure in the application of a species may not be a sufficient. basis for a generic claim. Under this rule, appellant is not entitled to the broad claims here on appeal.

United States Court of Customs and Patent Appeals, June 8, 1936 APPEAL from Patent Office, Serial No. 611444

[Affirmed.]

Dryenforth, Lee, Chritton & Wiles (John H. Lee of counsel) for appellant. R. F. Whitehead (Howard S. Miller of counsel) for the Commissioner of Patents.

[Oral argument May 15, 1936. by Mr. Lee and Mr. Miller]

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

HATFIELD, Judge, delivered the opinion of the court:

This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming the decision of the Primary Examiner rejecting claims 3, 4, 5, and 6 in appellant's application for a patent for an alleged invention relating to a process for treating fungus material to render it antirachitically activated.

So far as the issues here are concerned, appellant's process is sufficiently described in the appealed claims, of which claim 3 is illustrative. It reads:

3. The process of producing an antirachitically activated substance, which comprises subjecting fungus material in thinly distributed condition to irradia

tion by light comprising ultra-violet rays for a period sufficient to effect antirachitic activation in substantial degree.

The references are:

Steenbock (Br.), 236,197, Nov. 12, 1926.

Journal of Biological Chemistry, Vol. 63, Feb., 1925, pages 25-26, entitled "Antirachitic Activation by Light."

Soc. Chem. & Ind. Journal, Vol. 46 (1927), pages 1202 and 1203, entitled "Scientific Research in Relation to Actionotherapy."

Each of the references discloses the process of subjecting yeast, a fungus material, to irradiation by ultra-violet rays to effect antirachitic activation. The process there disclosed is precisely the same as that defined in the appealed claims, except that it was limited to yeast.

When the case was originally presented to the tribunals of the Patent Office, appellant's application also contained claims 1, 2, 7, and 8. Those claims defined the process of subjecting yeast, a specific fungus material, to irradiation by ultra-violet rays. Although the references disclosed the process defined in those claims, appellant was permitted to file an affidavit, under Rule 75 of the Rules of Practice in the United States Patent Office, showing that he completed the invention prior to the dates of the references. Accordingly, the Board of Appeals reversed the decision of the Primary Examiner, and allowed those claims, of which claim 1 is illustrative. It reads:

1. The process of producing an antirachitically activated product which comprises: subjecting yeast to the action of light comprising ultra-violet rays for a period sufficient to effect substantial antirachitic activation of the yeast.

With reference to the appealed claims, the board made the following observations:

Claims 3, 4, 5, and 6 are broader in their scope, since they cover the activation of a fungus material. In the present application applicant alleges to have discovered that any fungus material can be activated. These claims have also been rejected on the British patent and the publications. No disclosure has been made of activating fungus material in general either in applicant's prior patent No. 1,680,818, or in the two applications filed December 27, 1926. In one of these applications, No. 157,430, an amendment was made on March 22, 1928, which stated that yeast is an example of a fungus. This, of course, cannot be relied upon by applicant to obtain an effective United States filing date for the activation of fungus, in general, prior to the filing date of the present application. Hence, as to these broad claims, both of the publications are statutory bars, and applicant's British application is also a statutory bar as a two year publication.

As we understand it, the Board of Appeals held that, although appellant was entitled to claim all subject-matter in the involved application disclosed but not claimed in his copending applications, that is the process of subjecting yeast, a fungus material, to irradiation by ultra-violet rays for a sufficient period of time "to effect anti

rachitic activation in substantial degree," he was not entitled to claim the process as applied broadly to fungus material, because there was no disclosure of such a process in his copending applications, and, also, for the reason that each of the references which disclosed such a process was published more than two years prior to the filing of the involved application.

The principle is well established in chemical cases, and in cases involving compositions of matter, that the disclosure of a species in a cited reference is sufficient to prevent a later applicant from obtaining generic claims, although the disclosure in an application of a species may not be a sufficient basis for a generic claim. See In re Ellis, 37 App. D. C. 203; In re Dosselman, 37 App. D. C. 211; In re Langmuir, 20 C. C. P. A. (Patents) 733, 62 F. (2d) 93; In re Walker, 21 C. C. P. A. (Patents) 1121, 1127, 70 F. (2d) 1008; In re Burk, 22 C. C. P. A. (Patents) 857, 74 F. (2d) 547.

Although appellant's involved application was originally alleged to be a true division of his application No. 157,430, filed December 27, 1926, which matured into patent No. 1,871,136, August 9, 1932, there was no disclosure in that application of the involved process as applied to fungus material generally-the process there disclosed being limited, so far as fungus material is concerned, to yeast. Accordingly, although described as a true division of his original application, appellant, by an amendment to the involved application, dated December 7, 1933, substituting the language "continuation in part" for the word "division," conceded that it was not a true division, and that his original disclosure was limited to a process involving yeast only.

Applying the rule hereinbefore stated, it is perfectly clear that appellant is not entitled to the broad claims here on appeal.

For the reasons stated, the decision of the Board of Appeals is affirmed.

472 O. G. 737; 23 C. C. P. A. 1246; 84 F. (2d) 206

1. PATENTS

CLAIMS

IN RE CROWELL (No. 3648)

UNEXPRESSED LIMITATION.

This court following the principle announced by the Supreme Court in the case of McCarty v. Leehigh Valley Railroad Company, 160 U. S. 110, has again and again held that limitations not in the claims need not be considered.

2. PATENTS-PATENTABILITY-AMBIGUOUS CLAIMS.

The statutory requirement (R. S. 4888) for "a written description

in * ** full, clear, concise and exact terms * **" is not properly met by terms capable of different constructions; nor does it meet the requirements of Rule 70 of the Patent Office.

3. PATENTS-CLAIMS-NEW MATTER.

Held that the rejection of claims for the product on the ground of new matter was proper.

United States Court of Customs and Patent Appeals, June 8, 1936 APPEAL from Patent Office, Serial No. 645656

[Affirmed.]

Milburn & Milburn, Joseph F. Westall, and J. W. Milburn for appellant. R. F. Whitehead (Howard S. Miller of counsel) for the Commissioner of Patents.

[Oral argument May 12, 1936, by Mr. Miller; submitted on brief by appellant] Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges

GARRETT, Judge, delivered the opinion of the court:

There is here before us for review a decision of the Board of Appeals of the United States Patent Office affirming the decision of the examiner rejecting sixteen out of twenty-six claims of appellant's application for patent entitled, "For Well Cementing." The claims on appeal are numbered, respectively, 1, 5, 7, 9, 11, and 16 to 26, inclusive. These are divisible into four groups, 1 and 5 constituting the first group; 7, 9, and 11 the second; 16, 17, and 18 the third, and 19 to 26, inclusive, the fourth. The first, second and fourth groups comprise method claims. All claims of the third group are for the device.

As illustrative of the respective groups, we quote Nos. 1, 7, 17 and 19:

1. The method of cementing casing in a well bore, which includes circulating hydraulic fluid through the casing, and while retaining the hydraulic fluid in the casing to a level above that of normally closed ports in the side wall of the casing, opening said ports and closing the bore of the casing below said ports, and then establishing circulation downwardly through the casing and outwardly through said open ports.

7. The method of cementing casing in a well bore, which includes discharging cement at the lower end of the casing by a column of hydraulic fluid retained in the casing in back of the cement and extending above a predetermined higher level at which additional cement is to be subsequently ejected, and then establishing circulation downwardly through the casing and outwardly therethrough at said higher level.

17. In combination, a string of casing for a well bore having normally closed ports in its side wall and presenting an unrestricted open bore, the string of casing being adapted to retain a column of hydraulic fluid extending above the normally closed ports, and means adapted to be lowered in the casing and to bypass said hydraulic fluid upwardly within the casing for opening the ports and closing the bore of the casing below the ports.

19. The method of excluding water from oil wells which consists of lowering into the well and carrying, as drilling proceeds, a casing having a bore, which,