166 F.2d 572 (Fed. Cir. 1948), 5421, In re Application of Frey

Docket NºPatent Appeal 5421.
Citation166 F.2d 572, 77 U.S.P.Q. 116
Party NameApplication of FREY et al.
Case DateMarch 02, 1948
CourtUnited States Court of Customs and Patent Appeals

Page 572

166 F.2d 572 (Fed. Cir. 1948)

77 U.S.P.Q. 116

Application of FREY et al.

Patent Appeal No. 5421.

Court of Customs and Patent Appeals.

March 2, 1948

Page 573

W. W. Cochran, of Washington, D.C. (J. Schimmel, of Washington, D.C., of counsel), for the Commissioner of Patents.

Before GARRETT, Presiding Judge, and HATFIELD and JACKSON, Associate judges.

GARRETT, Presiding Judge.

This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming that of the Primary Examiner rejecting claims 2, 5, and 11 to 18, inclusive, of appellants' application for a patent on a process for alkylating hydrocarbons to render them 'suitable for use in an aviation or premium motor fuel.' There are no allowed claims. The rejection was based upon various grounds hereinafter recited.

It appears that appellants' application was filed February 14, 1942, as a continuation in part of an application, Serial No. 355,529, filed September 5, 1940, which, on September 22, 1942, matured into patent No. 2,296,512, and which was a division of another application, Serial No. 87,790, filed June 27, 1936, that, on February 25, 1941, matured into patent No. 2,233,363. The drawing of the application consists of a single figure which is identical with figure 2 of the earlier applications, as is its description in the specification. All the claims are process claims.

It further appears that in filing the involved application appellants sought an interference with a patent No. 2,238,802, issued April 15, 1941, upon an application filed November 6, 1939, to Joe A. Altshuler et al., claim No. 1 of the patent being copied and made claim No. 1 of the application. The interference was duly declared, but on May 29, 1943, appellants (their assignee consenting) filed notice of abandonment of the contest in the Patent Office. On June 8, 1943, the Examiner of Interferences dissolved the interference, and ex parte prosecution was thereafter resumed, portions of the specification and certain of the claims being cancelled as hereinafter related.

The claims are divisible into two groups, the first embracing claims Nos. 2, 5, 13, 14, 17, and 18; the second, Nos. 11, 12, 15, and 16. Inasmuch as the respective groups require separate consideration, we shall first take up those of group 1, of which claim 2 is representative. It reads:

'2. In a process of alkylation in which olefinic and iso-paraffinic hydrocarbons are reacted in the presence of a condensation catalyst while flowing in a circuit comprising a reaction zone into which reaction zone the iso-paraffinic and olefinic hydrocarbons are introduced in a feed in which the molar quantity of the iso-paraffinic hydrocarbon is greater than the molar quantity of the olefinic hydrocarbon, the improvement which comprises increasing the molar ration of the iso-paraffinic hydrocarbon to the olefinic hydrocarbon in the reaction zone in excess of one hundred to one by increasing the rate of flow of the materials in the circuit such that they traverse said circuit in a time correlated with the amounts of said introduced iso-paraffinic and olefinic hydrocarbons to maintain said molar ration in excess of 100:1.' (Italics ours.)

It will be observed that almost half of the context of the claim constitutes a preamble. The improvement claimed is embraced in the portion which we have italicized.

There is no contention that any one of this group of claims has any limitation which differentiates it patentably from the other claims of the group. In other words, all the claims of this group stand or fall together. So, there is no necessity for a separate analysis of them.

All the claims in group 1 were rejected (1) as lacking adequate support in the disclosure of the application; (2) as not defining the claimed invention sufficiently to meet the requirements of Section 4888, U.S., 35 U.S.C.A. § 33, and (3) as being unpatentable over the issue of the interference hereinbefore alluded to; that is, over claim 1 of the Altshuler et al. patent and the disclosure of that patent, which is the only reference cited in connection with the group.

The general idea expressed by appellants is that of producing saturated hydrocarbons of higher molecular weight by catalytic

Page 574

synthesis. In his statement following the appeal to the board, the examiner said:

'The catalysts disclosed by applicants are aluminum chloride combined with lithium, sodium, calcium, or potassium chloride and the corresponding double compounds in which chlorine is replaced by bromine, zinc chloride, zinc bromide, hydrous alumina, and hydrous alumina deposited on or combined with hydrous silica. The catalyst is used in granular form or disposed on an inert granular support.'

The specification teaches that the saturated oils are produced by a mixture of paraffins and olefins subjected to catalyst action, the ration of olefins to paraffins being very low. During the course of the reaction and prior to contact with the catalyst olefin is added in small proportions, each addition of it being consumed before another addition is made. In this way the concentration of the olefin reactant is maintained at a low value and the paraffin reactant at a high value. It is said:

' * * * By the practice of our invention it is practical to have the ratio of isoparaffins to olefins in the presence of the condensation catalyst in excess of 100:1, and practical operation can be obtained in accordance with our invention with this ratio as high as about 200:1 or more, i.e. an olefin concentration as low as 0.5%, as previously mentioned.'

The drawing of the application is quite clear and the operation is easily understood when the specification is read in connection with it. The olefins and paraffins enter the process together through a pipe from which they are forced by a pump through another pipe into a reaction chamber. There the hydrocarbons (the paraffins and olefins) are carried into contact with the catalyst. From the chamber the reacted material is discharged into a conduit and divided into two streams. One of the streams flows through a valve into a pipe from which it is forced by a pump through another valve back into the entrance pipe to be recycled. The other stream flows through a valve into a pipe through which it passes into a separator in which the hydrocarbons of higher molecular weight are separated from those of lighter weight and discharged through a conduit controlled by a valve. It is further recited that a certain recycling backwardly from the reaction chamber may be desirable or necessary, with only a minimum amount of the reacted hydrocarbons passing directly from the reaction chamber, in which event the valve in the line of the second stream referred to may be set at any desired partially closed position. It is said that by control of the several valves referred to, the flow into the separator and the flow for recycling can be readily controlled and regulated.

It appears that claim 2, supra, and claim 5 were a part of the application as filed, and the brief for appellants lays great stress upon that fact in connection with the matter of disclosure, citing our decision in the cases of Buchanan v. Burrage, Jr., 41 F.2d 98, 17 C.C.P.A.,Patents, 1194, and In re Burke et al., 93 F.2d 50, 25 C.C.P.A.,Patents, 795, and several decisions of the Board of Appeals of the Patent Office. The Solicitor for the Patent Office concedes that an original claim is considered as part of the disclosure, as set forth in Re Mason, Deceased, 94 F.2d 220, 25 C.C.P.A.,Patents, 873, but adds, '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, 1083.'

It is contended on behalf of appellants not only that the disclosures of the specification of their application supports the first group of claims, but that claims 2 and 5, as original claims, were a part of the original disclosure and, therefore, support themselves, and also support claims 13, 14, 17, and 18.

The examiner's discussion relating to inadequate disclosure is as follows:

' * * * After the motion period in the interference proceeding, applicants abandoned the contest and upon resumption of ex parte prosecution, applicants cancelled from their specification all reference to specific times for the materials to traverse the circuit comprising the reaction zone. They also cancelled all claims which mentioned any specific time periods. Claim 1,

Page 575

for example, which constituted the sole count of the interference, called for the traversal of the circuit of the material in less than 70 seconds.

'Appealed claims 2, 5 and 14 differ in the statement of the time element for traversal of the circuit over the count of the interference which calls for a time 'less than 70 seconds' by calling for 'a time correlated with the amounts of said introduced isoparaffinic and olefinic hydrocarbons to maintain said molar ratio in excess of 100:1.' In view of the cancellation from the specification of all reference to specific times for traversal of the circuit by the materials, it has been held by the examiner that claims 2, 5 and 14 are inadequately supported. These claims have...

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