and lie in planes. Considering that a plane can be located geometrically by three points, or a straight line and one point, the language of claim 7 gets away from the claim 6 requirement and necessarily is broader. We therefore affirm the holding below on point (b). The decision of the board is affirmed.

MARTIN, Judge, sat but did not participate in decision because of illness.

PATENTS

302 F.2d 950; 133 USPQ 537

IN RE ADOLPH WOLFENSPERGER (No. 6790)

1. SPECIFICATION-SUFFICIENCY OF DISCLOSURE

Disclosure, unequivocal in and of itself, may not be held wanting merely by reason of a speculation that one skilled in the art might interpret inventor's teaching in a remote and equivocal manner.

2. DRAWINGS-DISCLOSURE IN DRAWINGS ONLY-SPECIFICATION-SUFFICIENCY OF DISCLOSURE

Statement that drawings alone cannot form basis of valid claim is too broad a generalization and is contrary to Patent Office practice; for example, sole disclosure in design patent is by means of a drawing; also, the only informative and significant disclosure in many electrical and chemical patents is by means of circuit diagrams or graphic formulae, constituting "drawings" in the case; to put matter in proper prospective, consideration must also be given to Patent Office practice, taken in conjunction with fundamental requirement that invention claimed must be disclosed in terms comprehensible to one of ordinary skill in relevant art.

3. AMENDMENTS TO PATENT APPLICATION-NEW MATTER-AMENDMENTS TO PATENT APPLICATION-SPECIFICATION-DRAWINGS-DISCLOSURE IN DRAWINGS

ONLY-SPECIFICATION-SUFFICIENCY OF DISCLOSURE

Patent Office Rule 118 authorizes amendment of words in specifications so as to add statements not originally contained in it to conform to originally filed drawings; enquiry in each case is what drawing in fact discloses to one skilled in the art; whatever it does disclose may be added to specification in words without being prohibited new matter since what is originally disclosed cannot be new matter; if drawing contains necessary disclosure, it can form basis of valid claim; that is not to say that Office cannot enforce compliance with requirement of Rule 75(d) that terms and phrases used in claims must find clear support or antecedent basis in description so that meaning of terms in claims may be ascertainable by reference to description; necessity for amendment to specification is particularly applicable where applicant copies claim from another's patent; in determining whether there is supporting disclosure for claim, it is of no legal significance whether disclosure is found in specification or drawings.

4. DRAWINGS-DISCLOSURE IN DRAWINGS ONLY

In re Olson, 41 CCPA 871, does not support view that drawings alone cannot furnish supporting disclosure for copied claim; it stands only for proposition that disclosure is lacking if drawings relied on for supporting disclosure do

629594-63-26

not in fact contain it; in Thompson v. Dicke, 27 CCPA 931, fact situation also was that drawings did not contain supporting disclosure, not that drawings cannot contain such disclosure by themselves.

5. AMENDMENTS TO PATENT APPLICATION-SPECIFICATION-SPECIFICATION—SUFFICIENCY OF DISCLOSURE

In determining whether claim copied from another's patent reads on applicant's disclosed structure, question is not whether applicant has put application in such condition that patent can properly be issued to him but whether his original disclosure shows with sufficient clarity that he was in possession of invention claimed by patentee so as to establish his right to make claim and to so amend application, without adding anything new in the way of subject matter, that a patent might be issued to him containing such claim. 6. DRAWINGS-DISCLOSURE IN DRAWINGS ONLY

Statement in Vickery v. Barnhart, 28 CCPA 979, that drawings alone cannot form basis of valid claims and the fact that there is nothing in specification refute showing of drawings is immaterial, is not sound law. 7. DRAWINGS-IN GENERAL-DRAWINGS-DISCLOSURE IN DRAWINGS ONLY There is nothing in In re Olson, 41 CCPA 871, which is cited to support proposition that patent application drawings are not presumed to be drawn to scale or correct proportion, which raises presumption that drawings of instant application are not drawn to scale with reasonable accuracy or that four enlarged detailed figures consistently showing same relative proportions must be ignored; showing of drawings can be relied on as supporting disclosure for claim copied from another's patent.

United States Court of Customs and Patent Appeals, May 18, 1962

[Reversed.]

APPEAL from Patent Office, Serial No. 521,495

Strauch, Nolan & Neale, and James E. Nolan, for appellant.

Clarence W. Moore (George C. Roeming, of counsel) for the Commissioner of Patents.

[Oral argument February 6, 1962, by Mr. Nolan and Mr. Roeming] Before WORLEY, Chief Judge, and RICH, MARTIN, and SMITH, Associate Judges, and Judge WILLIAM H. KIRKPATRICK 1

RICH, Judge, delivered the opinion of the court:

1

This appeal is from the decision of the Patent Office Board of Appeals affirming the examiner's rejection of claim 33, the sole claim before us, "as failing to read on applicant's disclosed structure." Appellant presented claim 33 in his application Ser. No. 521,495, filed July 12, 1955, entitled "Ball Type Valve," requesting an interference on this claim with Kaiser Patent No. 2,868,498 issued January 13, 1959, from which patent the claim was copied.

Appellant's invention relates to a ball type valve "for use in large high pressure fluid pipe lines up to 30 inches and more in diameter."

1 United States Senior District Judge for the Eastern District of Pennsylvania, designated to participate in place of Judge O'Connell, pursuant to provisions of Section 294 (d), Title 28, United States Code.

Appellant's valve contains a shut-off member in the form of a roughly spherical ball plug having a diametral bore therethrough. The plug is rotatable about an axis perpendicular to the bore. When the bore in the ball plug is in alignment with the axis of the pipe line with which it is used, the valve is fully open. When the plug is rotated approximately 90° out of alignment with the pipe line axis, the valve is closed.

Claim 33 reads:

33. In a valve device, in combination, a valve housing member formed with a bore therethrough; a valve arranged in said housing member, said valve being formed with a passage therethrough and being movable between open and closed positions wherein said passage is in and out of registration with said bore, respectively; and sealing means interposed between said housing member and said valve, said sealing means including an annular sealing member coaxial with said bore of said housing member, said members being so shaped as to form between themselves an annular chamber of substantially rectangular cross-section bounded by an inner face, an outer face and two side faces, and a packing ring arranged in said chamber, said ring being made of a resilient material and being compressed between said side faces of said annular chamber and having, in untensioned condition, a mean diameter corresponding approximately to the mean diameter of said chamber and a radial width smaller than the radial width of said chamber. [Emphasis added.]

The sole question before us is whether the above italicized portion of appellant's claim is readable on his disclosed structure, one embodiment of which is reproduced in part below.

The above drawing shows appellant's valve in the open position. Accordingly, fluid would tend to flow, if the high pressure side of the pipe line were to the right in the drawing, through openings 66, 100 and 106 in, respectively, valve housing 28, seat ring 80 and ball plug 24. The packing ring of the claim is shown in section at 90, seated in its annular chamber. It is, when unstressed, of circular cross-section and is a large "O-ring."

The main functions of appellant's O-rings are set forth in his specifications as follows:

When the valve is open the large O-rings at the end walls of the seat rings [appellant's device, in its entirety, has two such O-rings and seat rings], each having a cross-sectional diameter of approximately one inch and compressed in assembly approximately one-eighth inch, by their inherent resilience tend to center the seat rings and ball inside the valve body cavity with equal clearance between the back face of each seat ring and its valve body seat. The O-rings also provide a fluid tight seal between the back face of the seat ring and the valve body ***. In valve closed condition the resilient upstream O-ring holds the upstream seat ring in full surface contact with the ball and away from the valve body, and permits line fluid pressure to enter and bias the seat ring against the ball.

The Kaiser patent discloses, in Fig. 2 reproduced below, O-ring 35 seated in chamber 34. In other figures the patent shows several modifications of this structure. When inserted in this chamber, the cross-sectional diameter of O-ring 35 is such that (1) "the said O-ring exerts an elastic pressure on the annular piston 26 *** and presses the annular piston against the surface 36 of the ball plug 16," and that (2) "the O-shaped packing ring 35 is arranged in the compartment 34 spaced from the inner and outer faces thereof when the packing ring 35 is in untensioned condition." 3

With the above comments on the disclosure of appellant and Kaiser as a background, we now turn to the italicized portion of claim 33,

supra.

As noted by the board, this portion of the appealed claim recites two dimensional relationships, the first of which is that the "packing ring," in "untensioned condition," has "a mean diameter corresponding approximately to the mean diameter of said chamber." Looking

2 This reproduction is from appellant's brief and he has added some reference numerals (taken from other figures) and the dimension lines d' and w'. Ring 35 has mean diameter d' and compartment 34 has width w'.

3 In the Kaiser structure, with the valve 16 closed and fluid attempting to flow outwardly through chamber 34 (to the right in Fig. 2), Kaiser discloses that O-ring 35 will be urged radially outward. Such radial expansion puts O-ring 35 under circumferential tension. In Kaiser, "unintensioned condition," accordingly, refers to the condition of O-ring 35 when fluid pressure is not urging the O-ring to expand radially within chamber 34. However, for the purposes of deciding this case we do not limit it to that connotation and give it its ordinary meaning.

Figure 2 of Kaiser- 2,868,498

at appellant's Figure 5, it is obvious that the ring as shown does have a mean diameter corresponding approximately to the mean diameter of the annular chamber formed by channel 88 and surface 84. The point raised by the Patent Office as to this disclosure, however, is that there is no evidence that the O-ring 90 as it appears in channel 88 is in "untensioned condition." The board put it this way:

it is our opinion that the same symmetrical cross section would be obtained if the mean diameter of the untensioned ring were smaller than that of the chamber, the ring being installed in the chamber by suitably stretching. [Emphasis ours.]