Application of Asseff

• Decision Date: 01 March 1949
• Docket Number: Patent Appeal No. 5521.
• Citation: 173 F.2d 253
• Parties: Application of ASSEFF.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

173 F.2d 253 (1949)

Application of ASSEFF.

Patent Appeal No. 5521.

United States Court of Customs and Patent Appeals.

March 1, 1949.

Oberlin & Limbach, of Cleveland, Ohio (Oscar C. Limbach, of Cleveland, Ohio, of counsel), for appellant.

W. W. Cochran, of Washington, D. C. (H. S. Miller, of Washington, D. C., of counsel), for Commissioner of Patents.

Before GARRETT, Chief Judge, and HATFIELD, JACKSON, O'CONNELL and JOHNSON, Judges.

GARRETT, Chief Judge.

This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming the decision of the Primary Examiner rejecting claims numbered 1, 2, 3, 4, 6, 14, 15, 16, and 21 of appellant's application for patent broadly entitled "Lubricating Composition." No claim was allowed.

The application, which was filed October 25, 1941, recites that it "is a continuation in part of my copending application serial No. 404,361, filed July 28, 1941," and it appears that that application matured into patent 2,261,047 (one of the references cited here) issued October 28, 1941 — three days after the instant application was filed.

The subject matter of the claims which are involved is stated in the brief for appellant to be a "lubricating composition which contains a major amount of a hydrocarbon oil such as a mineral lubricating oil and a minor amount of a material which we shall refer to for convenience hereinafter as the addition agent." (Italics quoted.) The brief of the Solicitor for the Patent Office concurs with that statement and adds, "The addition agent may be a stable oil-soluble compound which contains an organic radical derived from a cyclic alcohol and at least three other elements which are identified in claim 21 as being either zinc or cadmium, arsenic or phosphorus and sulphur or selenium."

Claims 1 to 4, inclusive, and 21 are generic. We here quote claims 1 and 21, the latter seemingly being the broadest of the several claims, as is stated in the brief for appellant:

"1. A lubricating composition comprising a major amount of a hydrocarbon oil and a minor amount of a compound produced by preparing the zinc salt of an acidic reaction product obtained by reacting a compound of the class consisting of the sulphides and selenides of phosphorus with a cycloaliphatic alcohol.

"21. A lubricating composition comprising a major amount of a hydrocarbon oil and a minor amount of a stable oil-soluble compound which contains:

"(a) an organic radicle derived from a cyclic alcohol;

"(b) an element of the class consisting of zinc and cadmium;

"(c) an element of the class consisting of arsenic and phosphorus; and

"(d) an element of the class consisting of sulphur and selenium."

By reference, claims 2, 3, and 4 are made dependent on claim 1. Claim 2 recites that the alcohol named in claim 1 "is an alkylated cycloaliphatic alcohol;" claim 3 that "the alcohol contains the cyclohexane nucleus;" and claim 4 that "the alcohol is an alkylated cyclohexanol."

Claim 6 is illustrative of the species group of claims. It reads: "6. A lubricating composition comprising a major amount of a hydrocarbon oil and a minor amount of the zinc salt of an acidic reaction product obtained by reacting phosphorus trisulphide with a cycloaliphatic alcohol."

Claim 14 names "an alkylated cyclohexanol" instead of "a cycloaliphatic alcohol" named in claim 6 and recites that substantially all of the alkyl groups in such cyclohexanol "have less than six carbon atoms." Claim 15 recites "less than four carbon atoms." Claim 16 defines reacting the phosphorus trisulphide "with a methyl-cyclohexanol."

All of the claims before us were rejected below as lacking invention over cited art, and claim 21 was additionally rejected upon the ground of indefiniteness.

In addition to appellant's patent 2,261,047, hereinbefore referred to, there were cited two other patents; viz., Sullivan, 2,174,019, September 26, 1939; Prutton, 2,242,260, May 20, 1941.

Of the Sullivan patent, which is for a lubricant, the board said: "Sullivan has been cited to illustrate close relationship between sulphur and selenium. On page 2, column 1, lines 47-48, triphenyl phosphine sulphide and triphenyl phosphine selenide are listed as alternatives for use in a formula, and in the examples there listed they are alternatives, along with oxygen, as corrosion inhibitors."

Attention may be directed at this point to the recital in claim 1, supra, to the effect that sulphides and selenides are named as ingredients of the compound to be reacted with cycloaliphatic alcohol for producing the acidic reaction product used in preparing the minor element of zinc salt. By this, and from the specification, we understand appellant to teach, as the patent to Sullivan teaches, that sulphur and selenium are equivalents as used in the art of producing lubricants. We note that appellant's specification recites: "In the past, it has not been found possible to compound addition agents which would reduce corrosive tendencies, and the tendency to produce acidic materials during oxidation, without increasing the tendency to form deleterious deposits. By the use of the addition agents of this invention, however, the corrosive tendency and the formation of acidic materials are reduced while, at the same time, reducing the tendency to form harmful deposits."

The Prutton patent is also for a lubricating composition one of the elements of which is an agent added to mineral lubricating oil. The addition agent in the patent specification is stated to be "of the type produced by reacting an organic composition with certain reagents which contain either separately in combined or elemental form, or in combination, phosphorus and sulphur. The addition agent thus produced may, in most cases, be described as an organic composition containing both the elements, phosphorus and sulphur." Several kinds of alcohol are named as specific examples of oxygen-bearing compounds, which compounds, as we understand it, constitute the base composition of the addition agent. There also are listed numerous reagents among which, under the heading "C. Phosphorus and sulphur compounds," are found "Phosphorus trisulphide — P4S6 (or P2S3)" and "Phosphorus pentasulphide — P2S5 (or P4S10)." Under the heading "D. Reagents containing elements equivalent to phosphorus and/or sulphur 1. Compounds of phosphorus and equivalents of sulphur, e. g. Se, for example" are found "P2Se3" and "P2Se5."

So, in the Prutton specification we find the specific teaching of the use of both phosphorus trisulphide and phosphorus pentasulphide. Also we find there the teaching of the equivalency of sulphur and selenium, as used in the art under consideration.

It is noted that the terms "phosphorus trisulphide" and "phosphorus selenium" are not used in the claims of the Prutton patent, nor are the formulae used, but it is supposed that the chemical terms which are used cover them. In any event, the teaching of the specification is a part of the prior art independent of the claims.

Appellant's patent does not contain claims as broad as appealed claims 1, 2, 3, 4, and 21; and claims 6, 14, 15, and 16 differ as to species from the patent claims. In each of the patent claims (except number 6 which has no bearing upon the issues here involved) "phosphorus pentasulphide" is designated as the element with which other elements are reacted to produce the zinc product named in the claims, while in appealed claims 6, 14, 15, and 16 here involved "phosphorus trisulphide" is so designated. Another difference is that in the patent only sulphur, or sulphide of phosphorus, is named; while claims 1, 2, 3, 4, and 21 name selenium, or selenides. Still another difference found as to claim 21 is that it names zinc and cadmium, while the patent names only zinc. Cadmium is not named in any of the other claims.

The brief on behalf of appellant declares that there are only three points of law which require our consideration and states them as follows:

"(a) Are the present claims properly rejected as unpatentable over Asseff's prior patent on the ground of double patenting;

"(b) May Asseff's prior patent be combined with the Prutton and Sullivan patents in spelling out an anticipation of any of the claims on appeal; and

"(c) Is claim 21 definite and in compliance with R.S.4888 35 U.S.C.A. § 33?"

It seems to us most logical to consider the second point first, taking up first the generic claims.

Specifically those claims (1, 2, 3, 4, and 21) were rejected (the latter primarily) on applicant's patent because the broadening of the claims of that patent to include selenides as well as sulphides was regarded as obvious to those skilled in the art and as disclosing nothing patentable over the patent in the light of the teaching of the equivalency of sulphur and selenium as taught by either Sullivan or Prutton.

It is pointed out by the Solicitor for the Patent Office that this court long ago in the case of In re Slepian, 49 F.2d 835, 18 C.C.P.A. Patents, 1393, (wherein we cited authorities, including the decision in the case of In re Isherwood, 46...