Application of Bush, Patent Appeal No. 6713.

• Decision Date: 17 November 1961
• Docket Number: Patent Appeal No. 6713.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)
• Parties: Application of Vannevar BUSH.

131 USPQ 263, 296 F.2d 491 (1961)

Application of Vannevar BUSH.

Patent Appeal No. 6713.

United States Court of Customs and Patent Appeals.

November 17, 1961.

Marcus Lothrop, San Francisco, Cal., Harry W. F. Glemser and Bacon & Thomas, Washington, D. C., for appellant.

Clarence W. Moore, Washington, D. C. (R. E. Martin, Washington, D. C., of counsel), for Com'r of Patents.

Before WORLEY, Chief Judge, and RICH, MARTIN, and SMITH, Judges, and Judge WILLIAM H. KIRKPATRICK.¹

RICH, Judge.

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.

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 question whether the board's rejection on Whitney "is proper," meaning legally permissible. The assumption seems to be that the board did not affirm the rejection on Whitney in view of Harth but rejected on Whitney alone.

We think that the requested ruling will be better understood if it is made after a discussion of the references.

The 1903 patent to Whitney contains a brief description, of less than one page, of "insulating material," which would appear to be electrical insulation. (The patent was assigned to General Electric Company and no mention is made of any other kind of insulation.) The material is also described as an article of manufacture in the form of a plate, being so shown in the drawing. This material consists of exceedingly thin glass flakes or sheets and a binder. The patent thus describes the production of the glass flakes:

"Fig. 1 shows a bulb of blown glass, the blowing of which has been continued until the walls of the bulb have been so reduced in thickness that the bulb has commenced to break into sheets or flakes, as indicated. In practice the bulb when it has reached this condition of extreme thinness is broken or shattered into numbers of films or thin sheets, which as they fall may be collected in a suitable receptacle."

It is clear that Whitney produces the kind of thin, broken, glass fragments in flake form referred to in the first clauses of appellant's claims 28 and 29 and produces them in the same way as appellant. The same is true of the "foliated glass" referred to in the Harth patent as follows:

"In accordance with the present invention, glass is attenuated until it reaches a foliated condition, in which the glass is in the form of leaves, thin plates or laminae. This may be accomplished in an illustrative manner, by blowing the glass into a bubble until it breaks or fractures. Upon such attenuation and fracturing, the glass becomes foliated and in the form of extremely thin, flat leaves, plates, or laminae, which may be as small as a micron in thickness. Such foliated glass now has distinct properties and characteristics, enabling its employment in the various arts."

It is not open to dispute that this is the very same kind of glass referred to in appellant's claims and described in his specification, for applicant uses the same blowing and bursting technique to produce his glass fragments.

Whitney's plate of insulating material is formed from the foliated glass by combining it with "a suitable flexible binding material, such as shellac, boiled linseed-oil, paraffin or other wax, or the like." He specifically describes a process of impregnation with paraffin-wax, heated to fluidity, and allowed to flow into the interstices between glass flakes in the form of a layer, which layer is pressed if desired, and then allowed to dry and harden.

It is clear to us that this Whitney disclosure meets the terms of claims 28 and 29 which call for "filling interstices between said fragments in said sheet with a plastic" or with a "substantially solid, glass-wetting plastic." It is not disputed that Whitney's impregnating materials meet the term "plastic."

The corresponding relevant disclosure in Harth, whose primary interest seems to be the making of paint, for which purpose he grinds up his foliated glass, is in the following description of an additional use:

"In employing the foliated glass as an electrical? insulating material, a suitable insulating foliated glass, as above described, may be mixed with any suitable synthetic resin, so as to secure an insulating compound. Such foliated glass is also suitable for use as a heat insulating material without necessarily being finely divided * * *."

Whitney also shows receiving glass fragments on a planar member in "flatwise orientation," as stated in claim 28. The fragments would necessarily overlap unless one took pains to arrange them in discrete piles. Claim 29 specifies further that the flakes are disposed "with the curvature thereof being similarly oriented." The only way appellant accomplishes this is by permitting the curved flakes to fall freely onto a surface. He says:

"Because of the slight curvature, the fragments * * * tend to fall flatwise with the convex side down and eventually are intercepted on a fine screen 11, such as a bronze mosquito wire, resting on a suitable support 12. * * * The fragments 13 are in somewhat random arrangement on the screen 11 but in any event form a sort of sheet 14."

Whitney shows his fragments resting "spread evenly over the bottom of" a tray made of screen. Whitney's flakes have a substantially "flatwise orientation" which is all claim 28 requires.

Claim 29 calls for the curvature of the flakes being "similarly...