In re Ware, Patent Appeal No. 4629.
| Citation | 129 F.2d 552,29 CCPA 1106 |
| Decision Date | 15 June 1942 |
| Docket Number | Patent Appeal No. 4629. |
| Parties | In re WARE. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Fred Gerlach and Norman H. Gerlach, both of Chicago, Ill. (Miles D. Pillars, of Washington, D. C., of counsel), for appellant.
W. W. Cochran, of Washington, D. C. (Howard S. Miller, of Washington, D. C., of counsel), for the Commissioner of Patents.
Before GARRETT, Presiding Judge, and BLAND, HATFIELD, LENROOT, and JACKSON, Associate Judges.
Appellant brings before us for review the decision of the Board of Appeals of the United States Patent Office affirming that of the examiner rejecting three claims, numbered, respectively, 1, 6, and 38, of appellant's application for a patent for a composition of matter claimed to have special utility in the manufacture of abrasive discs. As taken, the appeal covered a fourth claim, numbered 37, but at the hearing before us appellant moved to dismiss the appeal as to that claim, which motion will be granted. Nine claims were allowed by the examiner which, of course, are not involved here.
We quote claim 6 as illustrative of the appealed claims: (Italics ours.)
It will be noted that we italicize the phrase "a body forming agent" in the claim. This is a limitation common to each of the three claims before us and formed the basis of their rejection, it being held, in effect, that in the absence of a specific designation in the claims of the elements composing the body forming agent they are so broad that they fail to properly point out the invention as required by the statute. R.S. § 4886, 35 U.S.C.A. § 31.
While a number of patents were cited by the examiner and the board for the purpose of showing the state of the prior art, the rejection of the claims at issue was not based upon them and it is unnecessary to list or discuss them here.
In appellant's specification as filed, it was stated that an element of the composition included "a chemically active body forming agent in the form of an admixture of aluminum silicate, silica, calcium carbonate, or magnesium silicate," and he was allowed claims of the "Markush" type (such as those numbered 12 and 17 in the application) which defined the body forming agent as being "selected from the group" of materials so specifically named.
The claims on appeal are generic claims. Broadly, they cover any and all "body forming agents" which will chemically react with the mixture of low and high ratio sodium silicate solutions (as defined in the claim before us) to form a hard bonding heat resisting material.
It is urged on behalf of appellant, in substance, that he is entitled to claims of that breadth notwithstanding his failure to teach that any agents, or elements, other than those specifically named had been invented or discovered by him which would produce a chemical reaction with the result described. In this connection our attention is directed to an original claim (numbered 1) of appellant's application which, quoting from his brief, calls for "a mixture of low ratio sodium silicate solution embodying no more than two parts silica to one part sodium oxide and a high ratio sodium silicate solution embodying more than two parts silica to one part sodium oxide, and a body forming agent chemically reactive with the mixture." (Italics quoted.)
The brief asserts that the foregoing "conclusively establishes...
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Application of Frey
..."However, that fact, in and of itself, is not conclusive upon the question of whether the claim is allowable, as pointed out in Re Ware, 129 F.2d 552, 29 C.C.P.A., Patents, 1106, and In re Moore, 155 F.2d 379, 33 C.C.P.A., Patents, It is contended on behalf of appellants not only that the d......
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