Application of Janakirama-Rao
Citation | 137 USPQ 893,317 F.2d 951 |
Decision Date | 10 June 1963 |
Docket Number | Patent Appeal No. 6997. |
Parties | Application of Bhogaraju V. JANAKIRAMA-RAO. |
Court | United 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.
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."
As to appellant's last constituent, the optional modifier, appellant's specification states:
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:
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:
Emphasis ours.
The sole reference relied on here by the Patent Office is
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-
Carter-Wallace, Inc. v. Gillette Co.
... ... 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.
...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
... ... 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
... 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 ... ...
-
Chapter §2.04 Claim Definiteness Requirement
...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......