Application of Janakirama-Rao

Citation137 USPQ 893,317 F.2d 951
Decision Date10 June 1963
Docket NumberPatent Appeal No. 6997.
PartiesApplication of Bhogaraju V. JANAKIRAMA-RAO.
CourtUnited States Court of Customs and Patent Appeals

Donald S. Cohen, Philadelphia, Pa., for appellant.

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

Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH, and ALMOND, Jr., Judges.

RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of claims 1, 2, 3, 6, 7, 10 and 11 of application Ser. No. 534,529, filed September 15, 1955, for "Cadmium-Bismuth Glasses."

Appellant's specification shows that his glasses are composed of three primary constituents: a cadmium compound (e. g., cadmium oxide, CdO); a bismuth compound (e. g., bismuth oxide, Bi2O3); and a network former (e. g., silica, SiO2). A modifier (e. g., tungsten oxide, WO3) may also be used if desired.

The significance of the cadmium compound, appellant's application says, is to provide "cadmium ions" which were known at the time of his invention to aid in the formation of a moisture-resistant, neutron-absorbing glass having a high refractive index and good light transmission qualities.

The bismuth compound is primarily significant in appellant's glass to provide "bismuth ions," which appellant says were known at the time of his invention to aid in the formation of a glass having a high dielectric constant, a low dissipation factor, good stability, and easy workability. The bismuth compound is important for the further reason, appellant's application states, that "bismuth has the largest scattering cross-section for neutrons of any element and has a high gamma ray absorption coefficient."

Appellant's specification also states that at the time of his invention the art recognized certain glass-forming compounds as "network formers" the melting of which in a glass batch

"* * * results in the formation of a skeleton or basic structure, which is a distorted or irregular network of cations such as silicon or boron ions bonded to one another by oxygen ions. Each silicon or boron ion is surrounded by four oxygen ions and since these ions form the basic network of the glass they are termed `network formers\'."

As to appellant's last constituent, the optional modifier, appellant's specification states:

"Modifying glasses * * * is well-known to those skilled in this art. Thus tantalum ions are added to glasses to raise their softening point, while the addition of thorium, lanthanum or tungsten ions increases the dielectric constant. The addition of calcium oxides improves the workability of a glass and decreases its tendency to devitrify."

The percent by weight of one such modifier which appellant specifically discloses adding to his glass (tungsten oxide, WO3) is stated as ranging "from a trace to 20%." Otherwise the modified batches of the two examples given consist of Bi2O3, CdO, and SiO2.

We find ourselves somewhat at a loss, in view of the foregoing statements in appellant's specification, to determine therefrom just what aspect of his glass batch compositions he considers to be patentably significant. The "objects" stated in appellant's specification are not informative in this regard as they recite that it is desired that appellant's glasses possess such properties as a high refractive index, high dielectric constant, and others which the art would apparently expect them to possess from the use therein of cadmium and bismuth compounds, according to the recital in the specification of what the art already knew.

The claims on appeal are the only indication we can find in the application of what the appellant regards as his invention. Claim 1 is the broadest and claim 11 the most specific claim. They read:

"1. An optical glass resulting from fusion of a batch of glass forming compounds, said batch consisting essentially of a compound to provide cadmium ions, a compound to provide bismuth ions, and a compound to provide network former ions.
"11. An optical glass resulting from fusion of a batch of glass forming compounds having the following range of compositions by weight percent consisting essentially of:
                  "Cadmium oxide  (CdO)    trace to 75%
                  "Bismuth oxide  (Bi2O3)  20 to 95%
                  "Silica         (SiO2)   0.5 to 20%
                

The issue as to the patentability of all the appealed claims has narrowed, on appeal to this court, to a single question: What is the significance of the words "consisting essentially of" which appear in the claims? Both appellant and the Patent Office appear to agree that the meaning in the patent law of these words was appropriately defined in the case of Ex parte Davis et al., 80 U.S.P.Q. 448 (Bd.), wherein reference was made to a "code" of terms drawn up by a group of examiners, one item of which reads:

"(3) recital of `essentially\' along with `consisting of\' is regarded as rendering the claim open only for the inclusion of unspecified ingredients which do not materially affect the basic and novel characteristics of the composition." Emphasis ours.

Speaking of the facts before it in the Davis et al. case, the board commented:

"In the present case where the claims recite three ingredients and the reference discloses four, the important question is whether the term `consisting essentially of\' excludes that fourth ingredient. We think that it does, since the `modifier\' materially changes the fundamental character of the three-ingredient composition * * *." Emphasis ours.

The sole reference relied on here by the Patent Office is

Armistead 2,517,459 Aug. 1, 1950

The instant case presents facts very similar to those in the Davis et al. case. A specific optical glass disclosed by Armistead includes silicon, cadmium, and bismuth oxides. But it also includes boric oxide (B2O3), berrylium oxide (BeO), and a mixture of calcium oxide (CaO) and strontium oxide ...

To continue reading

Request your trial
69 cases
  • Carter-Wallace, Inc. v. Gillette Co.
    • United States
    • U.S. District Court — District of Massachusetts
    • May 8, 1981
    ... ...         Carter-Wallace is the owner of United States Letters Patent No. 3,968,203, issued on July 6, 1976. The patent application was initially filed on October 1, 1965, and refiled in 1969. The patent is entitled "Aerosol Astringent Composition" and covers Carter-Wallace's ... Application of Janakirama-Rao ... ...
  • Atlas Powder Co. v. E.I. du Pont De Nemours & Co.
    • United States
    • U.S. Court of Appeals — Federal Circuit
    • December 27, 1984
    ...affect the basic and novel characteristics" of the claimed composition. In re Herz, 537 F.2d at 551, 190 USPQ at 463; In re Janakirama-Rao, 317 F.2d at 954, 137 USPQ at 895. Gehrig does not teach or suggest substituting nitric acid with air to sensitize the product. Though it suggests the u......
  • Ak Steel Corp. v. Sollac and Ugine
    • United States
    • U.S. Court of Appeals — Federal Circuit
    • September 23, 2003
    ... ... The '549 patent issued from an application that was a continuation of the application from which the '135 patent issued. As such, the two patents have different claims but share a common ... v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed.Cir.1998); In re Janakirama-Rao, 50 C.C.P.A. 1312, 317 F.2d 951, 954 (CCPA 1963). Thus, the claim construction issue presented by the '135 patent in this case is whether an amount ... ...
  • Ex parte Torbus
    • United States
    • United States Patent and Trademark Office. United States Patent and Trademark Office, Patent Trial and Appeal Board
    • August 6, 2003
    ... Ex parte MAREK TORBUS and GERAD LADEGOURDIE Appeal No. 2002-2063 Application No. 09/635, 093 United States Patent and Trademark Office, Patent Trial and Appeal Board August 6, 2003 ... This ... Opinion is ... included versus excluded by this language, the claim must be ... read in light of the specification. In re ... Janakirama-Rao , 317 F.2d 951, 954, 137 U.S.P.Q. 893, 896 ... (CCPA 1963); In re Herz , 537 F.2d 549, 551, 190 ... U.S.P.Q. 461, 463 (CCPA 1976). In ... ...
  • Request a trial to view additional results
1 books & journal articles
  • Chapter §2.04 Claim Definiteness Requirement
    • United States
    • Full Court Press Mueller on Patent Law Volume I: Patentability and Validity Title CHAPTER 1 Basic Principles
    • Invalid date
    ...of the invention.'") (quoting PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998); citing also In re Janakirama-Rao, 317 F.2d 951, 954 (C.C.P.A. 1963)).[398] In the view of this author, identification of the "basic and novel properties" of a claimed invention is an inh......

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT