In response to a criticism by the examiner that the disclosure did not comply with 35 U.S.C. 112, appellant submitted certain pages from "Proceedings of the Radio Club of America, Inc." and "Radio Engineering" by Terman, and stated in the form of an affidavit in effect that one skilled in the art would know how to use the information contained in these pages to construct a 2 megacycle saw-tooth generator. Subsequent criticism by the examiner and the board was limited to statements that a saw-tooth generator operable at 2 megacycles is not affirmatively disclosed in these reference pages and affidavit and there is no evidence that anyone has ever built such a generator.

It seems to me that, in order to maintain the position that this application does not comply with 35 U.S.C. 112, the examiner and the board should also have stated categorically that the information contained in the pages submitted by appellant was not sufficient to teach one skilled in the art how to make a 2 megacycle saw-tooth generator. Further, they should have stated why that is true. It may be that a saw-tooth generator operable at 2 megacycle differs in kind from one operable at 100 or 200 kilocycles, but that fact has not been stated in the record and I do not feel moved to assume that it is or is not true.

Indeed, the examiner's final rejection and answer and the board's opinion do not convince me that one skilled in the art could not construct the required saw-tooth generator with the knowledge of the reference pages and affidavit submitted by appellant.

SMITH, Judge, dissenting.

The statutory test as to the sufficiency of a disclosure under 35 U.S.C. 112, requires a factual consideration of the record to determine whether the disclosure is in fact such a disclosure as "to enable any person skilled in the art *** to make and use" the disclosed invention.

The first step in applying this test requires us to determine what the disclosure communicates to a person skilled in the art to which the disclosure pertains. The examiner, the Board of Appeals and the majority opinion find the disclosure inadequate because the art of record does not disclose a saw-tooth generator of conventional construction operable at a frequency higher than 2 megacycles.

1

It is noted that while the examiner's search discovered only a saw-tooth generator operable at 200 kilocycles as quoted in the majority opinion, the Electrical Engineers Handbook, 4th ed. (1950), by Pender and McIlwain indicates that a multivibrator type saw-tooth generator might be made to operate up to 1,000,000 cycles (1 MC). While this does not necessarily indicate that a person skilled in the art could readily construct a 2,000,000 cycle (2 MC) saw-tooth generator, it suggests caution in the use of the examiner's failure to find a reference above 200,000 cycles as the sole basis upon which to decide what the disclosure in question teaches one skilled in the art.

I do not think this is an adequate basis upon which to determine what is communicated by the disclosure in issue to one skilled in the television art.

It seems to me that where the issue here is essentially one of the correctness of technical assertions made, the affidavit of Hirsch as to what one skilled in the television art would know from the disclosure is entitled to greater credence than has been assigned to it in the majority opinion. The affidavit verifies that the disclosure teaches enough so that one skilled in the television art could make and use the invention. An application addressed to "any person skilled in the art" should be tested by what it discloses to such a person, the best evidence of which, on the record before us, is the affidavit of applicant.

Under these circumstances, my view is that expressed in In re Brooks et al., 24 CCPA 1203, 90 F. 2d 106, 33 USPQ 532, where, as here, this court was required to evaluate an applicant's affidavit as against the opinion of the examiner. As was said in the Brooks case, we are not disposed to accept the opinion of the examiner in the face of positive recitals in appellant's application, and in the face of the affidavit above referred to." See also, In re Lowry, 25 CCPA 829, 93 F. 2d 909, 36 USPQ 254.

The board cited Ex parte Sziklai, 110 USPQ 325 in support of the proposition that—

Where a device is presented in an application essentially only by means of a labeled rectangle, with no other description or illustration of specific circuitry, it must be one of known conventional nature in the prior art in order that such presentation be regarded as a sufficient disclosure.

In the Sziklai case, the examiner had questioned the disclosure of "synchronous detectors" in a block diagram. In this connection, the Board of Appeals pointed out:

It seems clear that synchronous detectors are more or less well known and appellant has filed a photostatic copy of an article from the Journal of the British Institution of Radio Engineers which indicates that the homodyne and synchrodyne methods of detection have been used for many years.

The board then held:

It seems to us that in view of the obvious prior knowledge of synchronous detectors appellant is justified in disclosing the use of a conventional synchronous detector by means of a property labeled rectangle.

The board in the Sziklai case tested the definitiveness of the disclosures by reading into them what was old and conventional in the art. Thus the board said:

After careful consideration of appellant's disclosure, we are of the opinion that it is sufficiently definite, when taking into account the fact that the various elements enclosed within the rectangles are old in themselves and conventional

in prior art television and/or radio systems, to enable a person skilled in this art to practice the invention."

Under the rationale of the Sziklai decision, it seems to me that the showing made by appellant constitutes a sufficient disclosure. Appellant's affidavit should have required the examiner either to accept the statements of applicant as to what is known technically to one skilled in the art, or to have categorically stated that the disclosures made by applicant were technically incorrect, and in so doing, point out the reasons why this is so. 35 U.S.C. 132.

Under these circumstances I would not attempt, as does the majority, to make a factual determination as to the technical correctness of the statements made nor would I pass on the adequacy of the disclosure for the reason stated in In re Chilowsky, 43 CCPA 775. 229 F. 2d 457, 108 USPQ 321, that "the Patent Office tribunals have not sufficiently explained the reasons for their rejection of the appellant's claims to permit a proper determination of that issue here."

The general situation here presented has been before this court on numerous occasions and in each instance this court has placed a duty on the Patent Office tribunals to state the reasons for the action taken. See, for example, In re Thompson et al., 31 CCPA 1121, 143 F.2d 357, 61 USPQ 498; In re O'Keefe, 40 CCPA 879, 202 F. 2d 767, 97 USPQ 157, and In re Chilowsky, supra.

I think prosecution of this application should proceed from the point in the record where the publications and the affidavits were submitted.

For the foregoing reasons, I would reverse the decision of the board and remand the application for further proceedings.

296 F. 2d 491; 131 USPQ 263

IN RE VANNEVAR BUSH (No. 6713)

PATENTS

1. EVIDENCE-JUDICIAL NOTICE

Judicial notice is taken of fact that size differentiation by screening is common expedient in many arts.

In passing, we observe that the examiner appears to have added his own views to the holding of the board in the Sziklai case, for in the letter of June 6, 1957, he said:

The specification is further deficient in the disclosure of the structure of the generator. The use of rectangles indicates that any apparatus of the type named in the rectangle may be inserted therein without modification. Applicant's disclosure however requires that the sawtooth [sic] oscillator operate at two megacycles. Applicant has not indicated what oscillator circuit may be used. All sawtooth [sic] oscillators are not operable at this frequency. [Emphasis added.]

2. BOARD OF APPEALS-ISSUES DETERMINED

After final rejection on W alone and on other reference combinations and examiner's answer which failed to mention but did not withdraw rejection on W alone, Board has right to reject on W alone; since answer specified rejection on W in view of H, it is not rejection on new ground if Board finds it unnecessary to rely on H in sustaining that rejection; in applying Rule 196(a), “grounds *** specified by the examiner" must be construed to include all grounds relied on at final rejection and not clearly withdrawn by examiner's answer, notwithstanding what appears to be Patent Office practice to regard grounds of rejection not repeated in answer as withdrawn by implication; where rejection is predicated on two references, each containing pertinent disclosure, it is of no significance, but merely a matter of exposition, that rejection is stated to be on W in view of H instead of on H in view of W, or to term one reference primary and the other secondary.

United States Court of Customs and Patent Appeals,

November 17, 1961

APPEAL from Patent Office, Serial No. 341,001

[Affirmed.]

Marcus Lothrop, Harry W. F. Glemser and Bacon & Thomas for appellant. Clarence W. Moore (R. E. Martin, of counsel) for the Commissioner of Patents.

[Oral argument October 9, 1961, by Mr. Glemser and Mr. Martin]

Before WORLEY, Chief Judge, and RICH, MARTIN, and SMITH, Associate Judges, and Judge WILLIAM H. KIRKPATRICK*

RICH, Judge, delivered the opinion of the court:

This appeal is from the decision of the Patent Office Board of Appeals affirming the examiner's rejection of process claim 28 and article claim 29 in application Ser. No. 341,001, filed March 9, 1953, for "Glass Plastic and Method of Making the Same." Two process claims have been allowed.

The invention is an article of manufacture and a process of forming it. The process consists of first blowing a hollow, thin-walled glass shape such as a sphere or cylinder until it shatters, the resulting pieces being irregular in size, shape, and thickness, and generally slightly dished or curved. Glass in this state is aptly termed "foliated." Secondly, the fragments of foliated glass are screened, falling through the screen to be collected in a sheet-like series of layers. The sheet of glass laminae so formed is then impregnated with a fluid plastic binder which is cured to a solid state to complete the article.

*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.

An alleged advantage of producing a glass-plastic sheet in this manner lies in the sheet's strength in two directions at right angles to each other in the plane of the sheet.

The claims on appeal read as follows:

28. A process of forming a structurally strong sheet comprising blowing a hollow, thin-walled glass shape until said shape shatters into thin fragments irregularly shaped and sized and substantially flat; subjecting said fragments in shattered condition to a screening operation to pass smaller ones of said fragments through a screen and to retain larger ones of said fragments on said screen; receiving said smaller ones of said fragments passing through said screen in shattered condition on a planar member in a flatwise orientation until a sheet made up of said smaller ones of said fragments in overlapping relationship is formed; and filling interstices between said fragments in said sheet with a plastic. [Emphasis ours.]

29. As an article of manufacture, a planar sheet mechanically strong in two directions at right angles to each other in the plane of the sheet comprising a group of slightly curved, irregularly outlined, thin broken glass fragments in flake form having substantial length and width compared to their thickness, said group being of flakes having sizes and configurations to pass through a screen and being devoid of flakes having sizes and configurations to be retained on said screen, and said flakes in said group being disposed substantially parallel to the plane of said sheet and substantially in contact with each other and with the curvature thereof being similarly oriented but leaving some interstices, and a substantially solid, glass-wetting plastic substantially occupying said interstices. [Emphasis ours.]

These claims were rejected as unpatentable over two references: Whitney, 726,485, April 28, 1903.

Harth, 2,233,259, February 25, 1941.

In the final rejection, the examiner said:

Claims 28 and 29 are finally rejected as unpatentable over either Harth or Whitney, both of record, either one alone, or both considered together.

In the examiner's answer, filed according to the rules, after the filing of the appellant's brief on appeal to the board, these claims were said to "have been finally rejected" [our emphasis] on the following three grounds:

1. unpatentable over Harth alone

2. unpatentable over Harth in view of Whitney

3. unpatentable over Whitney in view of Harth.

Nothing was said about withdrawing any ground of rejection.

The board, in sustaining the rejection, said it was unable to sustain the rejection on Harth alone, said, "we need consider only the rejection based on Whitney in view of Harth," and then held the rejection to be "sustainable on Whitney alone."

In view of the foregoing procedural facts appellant suggests the necessity of "a prefatory ruling by this court," apparently on the