Application of Waymouth

• Decision Date: 24 January 1974
• Docket Number: Patent Appeal No. 8991.
• Citation: 486 F.2d 1058,179 USPQ 627
• Parties: Application of John F. WAYMOUTH and Frederic Koury.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

179 USPQ 627, 486 F.2d 1058 (1973)

Application of John F. WAYMOUTH and Frederic Koury.

Patent Appeal No. 8991.

United States Court of Customs and Patent Appeals.

November 8, 1973.

Supplemental Opinion in Rehearing January 24, 1974.

James Theodosopoulos, Danvers, Mass. (GTE Sylvania Incorporated), for appellants.

S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. William H. Beha, Jr., Washington, D. C., of counsel.

Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.

Supplemental Opinion in Rehearing January 24, 1974. See 489 F.2d 1297.

MILLER, Judge.

This appeal is from the Patent Office Board of Appeals decision affirming the examiner's rejection of claims 18-21 of appellants' application¹ under 35 U.S.C. § 132 as containing "new matter." We reverse and remand.

Claims 18-20 are exact duplicates of claims 1, 2 and 6 of a patent ² to Edris et al., and claim 21 represents a modified claim based on claim 1 of said patent.

The invention relates to a high pressure are discharge lamp shown in the accompanying figure where 12 is a hermetically sealed arc tube having internal terminal electrodes 13 and 14. The arc tube contains a light emissive filling material.

Claim 18 reads:

18. A discharge lamp adapted to be normally operated with a predetermined power input, said lamp comprising:

(a) a light-transmitting elongated arc tube which encloses a predetermined volume;

(b) are supporting electrodes disposed within said are tube proximate the ends thereof;

(c) lead-in conductors connecting to said electrodes and sealed through said arc tube;

(d) a discharge-sustaining filling within said arc tube, said discharge-sustaining filling initially placed as a dosing charge into said arc tube, said dosing charge including as essential constituents a predetermined pressure of inert ionizable starting gas, mercury, sodium iodide, and a predetermined amount of selected metal which will combine with free iodine as may be released during operation of said lamp to form metallic iodide,

(1) said mercury constituent of said dosing charge present in predetermined amount which when fully vaporized during normal operation of said lamp will provide a predetermined pressure of mercury vapor in said arc tube,

(2) said sodium iodide constituent of said dosing charge present in amount of at least 0.17 mg./cc. of said arc tube volume,

(3) said selected metal constituent of said dosing charge present at least in amount sufficient to react with free iodine, as may be released during operation of said lamp, in amount of 4.5 × 10-7 gram-atom of iodine per cc. of said arc tube volume, and

(4) the amount of combined and uncombined metal in said dosing charge, other than mercury being predetermined to:

(a) combine stoichiometrically with the total amount of iodine in said dosing charge plus (b) provide at least sufficient metal to combine with free iodine, as may be released during operation of said lamp, in amount of 4.5 × 10-7 gram-atom of iodine per cc. of said arc tube volume; and

(e) the thermal conductivity from said arc tube and the predetermined power input at which said lamp is adapted to be operated bearing such relationship to one another that the minimum temperature on said arc tube when said lamp is operating is at least 580° C. (Emphasis added.)

The above italicized phrases are the ones objected to by the Patent Office as being drawn to "new matter."

Claim 19 depends on claim 18 and specifies an amount of sodium iodide from 0.6 to 4.5 mg./cc. of arc tube volume. Claim 20 recites a preferred amount of the selected metal. Claim 21 is similar to claim 18 except that the phrase "at least 580° C." has been replaced by "sufficient to vaporize an effective amount of said constituents."

Appellants raise the issue of a "new rejection" applied by the board and also contest the "new matter" rejections.

THE ISSUE OF NEW REJECTION

It is necessary to present some of the prosecution history in this case in order to understand the issue of a "new rejection." The examiner's final rejection first raised the issue that the claims contained "new matter" in that they recited "sodium iodide," whereas he alleged that appellants' specification referred only to "sodium." His rejection stated that the specification referred to the addition of "certain amounts of sodium within a specified range and not sodium iodide" and could not, therefore, include 0.17 mg./cc. of sodium iodide (specified in the claims of the Edris et al. patent and the claims before the examiner). The examiner offered no objection to similar volume limitations with respect to iodine in claim 18(d)(3) and 18(d)(4) and sodium iodide in claim 19.

On the issue of appellants' disclosure of sodium iodide, the board said: "We agree with the appellant with respect to this first point, that his disclosure of utilizing sodium iodide is sufficient to support claims requiring that an `essential constituent' of the claimed device is sodium iodide." However, in regard to the 0.17 mg./cc. limitation, the board declared: "Since the appellants fail to disclose the volume of their tube, we are unable to see where they are able to find support for a value which is dependent on such volume. . . ."

In response to the board's decision and opinion, appellants submitted an affidavit, a petition for reconsideration, and an amendment containing a proposed claim 23 to overcome the board's rejection. The petition asked that the board reconsider its decision and allow the claims or enter claim 23 to overcome the rejection. The amendment was preceded by a request that it be considered by the board or remanded to the examiner under MPEP 1214.01(B).³

The board's decision on the petition for reconsideration stated that its comments concerning the "0.17 mg./cc." limitation were merely "an additional reason" for affirming the examiner's rejection based on "new matter."

We believe the prosecution history of this application clearly shows that the examiner was only concerned with an alleged failure to disclose sodium iodide. However, after finding for appellants on this issue, the board proceeded to sustain the rejection on a wholly different basis. Although the same phrase ("sodium iodide . . . present in amount of at least 0.17 mg./cc. of arc tube volume") was questioned by both the examiner and the board, the bases of their rejections were wholly different, necessitating different responses by appellants.

To attempt to deny appellants an opportunity to provide a different and appropriate response to the board's rejection by saying that the board merely advanced "an additional reason" for affirming the examiner begs the question and does not satisfy the administrative due process established by Rule 196(b) of the Patent Office.⁴ 73 C.J.S. Public Administrative Bodies and Procedure § 60. What we said in In re Wiechert, 54 C.C.P.A. 957, 370 F.2d 927, 152 U.S.P.Q. 247 (1967), is particularly apposite:

We turn now to the issue raised by the "position isomer" first noted in the board\'s opinion. The board\'s language, quoted above, in noting the isomer, appears to us to be a rejection of the appealed claims on the ground the claimed compounds are obvious, under 35 U.S.C. § 103, in view of the disclosed isomer. For reasons to be stated below, we find this to be a ground of rejection which was specifically pointed out for the first time by the board and, under the facts of this case, we believe that appellant should be afforded an opportunity to respond to that rejection. In view of the board\'s failure to do so, we remand the case to the board for further proceedings. Cf. In re Yale, 52 C.C.P.A. 1688, 347 F.2d 995, . . . .

See also In re Eynde, 480 F.2d 1364, 178 U.S.P.Q. 470 (C.C.P.A.1973), In re Moore, 58 C.C.P.A. 1340, 444 F.2d 572, 170 U.S.P.Q. 260 (1971), In re Echerd, 471 F.2d 632, 176 U.S.P.Q. 321 (C.C.P.A.1973) and In re Bulina, 53...