Application of Benner
| Decision Date | 24 June 1949 |
| Docket Number | Patent Appeal No. 5520. |
| Citation | 174 F.2d 938 |
| Parties | Application of BENNER et al. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
William H. Webb, of Pittsburgh, Pa., and Donald A. Gardiner, of Washington, D. C. (Stebbins, Blenko & Webb, of Pittsburgh, Pa., and Smith, Michael & Gardiner, of Washington, D. C., of counsel), for appellants.
W. W. Cochran, of Washington, D. C. (Clarence W. Moore, of Washington, D. C., of counsel), for the Commissioner of Patents.
Before GARRETT, Chief Judge, and HATFIELD, JACKSON, O'CONNELL, and JOHNSON, Judges.
This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming the rejection, by an examiner in Division 38, of seventeen claims numbered 17 to 24, inclusive, and 26 to 34, inclusive, in appellants' application for patent bearing the broad title "For Ball Mill." In the Patent Office it was a "Dual Prosecution" case of which Division 25 had general jurisdiction. With respect to claims numbered 35 to 40, inclusive, the jurisdiction of the latter named division was specific and those claims also were rejected by an examiner in that division, but his decision was reversed by the board. So, those claims stand allowed along with claim 25, which was allowed by the examiner in Division 38.
It appears that during a long period of time ball mills have been used for breaking down, or pulverizing to powdered form, hard granular materials; that the mill comprises a container, usually cylindrical in form, having a wear-resisting lining; that the container is mounted for rotating, being partially filled, when in use, with pebbles or balls and the material which is to be broken down or pulverized; and that, when the container is rotated, the contents tumble about on the inside in a manner which results in the material being ground between the balls and the lining of the container.
When the material which is being ground is very hard, the friction wears the lining of the container severely. The specification of the here involved application states that porcelain linings have been conventionally used, and that appellants, as expressed in their brief, "discovered that, by replacing the procelain sic linings presently used in ball mills with cast linings composed predominantly of crystallized alumina embedded into a glassy matrix, the life of the lining is increased many times."
The specification additionally asserts:
As a matter of fact the board found that appellants:
"* * * have established that the life of their ball mill linings is 8,000 hours of operating life when used in the pulverizing of such hard materials as fused alumina under standard operating conditions as compared to an average life of 600 hours of the high grade porcelain linings previously used for this type of grinding operation."
The claims of the group numbered 35 to 40, inclusive, which stand allowed, are for a ball mill the container of which is lined with appellants' lining element. It was the view of the Board of Appeals, contrary to that of the examiner, that the combination of the container and the lining element presents subject matter patentable over any prior art. As has been stated, claim 25 (which is for the lining element standing alone — that is, not combined with the container — but which differs widely from the appealed claims in the proportion of the ingredients entering into its structure) was allowed by the examiner and was not before the board. All the appealed claims are for the lining element standing alone and as to them the board agreed with the examiner's grounds of rejection; that is, upon prior art, hereinafter listed, the decision in the case of In re Thuau, 135 F.2d 344, 30 C.C.P.A., Patents, 979, being cited.
As originally filed the application appears to have presented only 14 claims numbered 1 to 14, inclusive. After claim 14 had been rejected once, it was cancelled and 15 and 16 submitted. Subsequently, amendments were entered supplanting the original claims together with 15 and 16, so that, as prosecuted before the respective examiners, the application embraced 25 claims. As has been stated, the examiner in Division 38 allowed one of those, which related to the lining element per se but differed materially from those on appeal here, and the board allowed seven others, all of which were characterized by the combination of container and lining element. So, seventeen claims were rejected and are before us. No separate analysis of them is required; that is, as the issues are presented to us, no one of the appealed claims is alleged to have any limitation which distinguishes it patentably from the others.
Claims 18, 22, 29, and 32 (the latter the broadest of all the claims) will serve to illustrate the subject matter:
The references cited as prior art in connection with the rejected claims are listed in the decision of the board as follows:
Saunders, 954,766, Apr. 12, 1910
Allen, 1,199,042, Sep. 26, 1916
Schroeder, 2,044,817, June 23, 1936
Benner et al., 2,079,101, May 4, 1937
Easter et al., 2,154,153, Apr. 11, 1939
Logan et al., 2,196,075, Apr. 2, 1940,
Searle: Refractory Materials (2nd Ed.) 1924, page 174.
Of the prior art cited the board regarded as "most pertinent" the patents to Schroeder (No. 2,044,817), Logan & McMullen (No. 2,196,075), Benner & Easter (No. 2,079,101), and Easter & Brownell (No. 2,154,153). It is noted that McMullen, one of the joint claimants in the instant application, was a joint inventor with Logan of patent 2,196,075; that Benner, the other joint claimant here, was the joint inventor with Easter of patent 2,079,101; and that Easter is also one of the joint inventors of patent 2,154,153. It also is noted that the patents to Logan & McMullen, Benner & Easter, and Easter & Brownell are assigned to The Carborundum Company which, at the hearing before us, was stated to be the assignee of the here involved application, the individual inventors, McMullen, Benner, and Easter, evidently being associated with the company in some capacity. It is obvious that the individuals and the company have had considerable experience relative to the compositions of matter of the nature of that here involved, and in the brief before us, while it is asserted that "No one of the references, as to composition is co-extensive in teachings with the present invention," it is conceded that "some of the compositions therein disclosed are embraced by the range of alumina compositions defined in certain of the claims." (Italics ours)
In the case of In re Cooper et al., 134 F.2d 630, 632, 30 C.C.P.A., Patents, 946, we said:
"* * * if the prior art shows a range, as appellants apparently admit it does in this case, which includes the range claimed in their application, in the absence of the production of a different product they are not entitled to a patent."
However, there are other factors to be considered in the instant case.
In the course of its decision the board, referring to the particular references which it deemed most pertinent, made the following findings of fact:
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Schreiber, In re, 97-1201
...patent on a composition or a machine cannot be predicated on a new use of that machine or composition"); In re Benner, 36 C.C.P.A. 1081, 174 F.2d 938, 942, 82 USPQ 49, 53 (CCPA 1949) ("no provision has been made in the patent statutes for granting a patent upon an old product based solely u......
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Schering Corp. v. Precision-Cosmet Co., Inc.
...a contact lens involves the creation of a new composition. In arguing to the contrary, defendants rely heavily upon Application of Benner, 174 F.2d 938 (C.C.P.A.1949). In that case, the applicant argued that he had changed the shape of the compound at issue. The court rejected this argument......
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Ex parte Davis
...("the grant of a patent on a composition or machine cannot be predicated on a new use of that machine or composition"); In re Benner, 174 F.2d 938, 942 (CCPA 1949) ("no provision has been made in the patent statutes for granting a patent upon an old product based solely upon discovery of a ......
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Airbus S.A.S. Requester v. Firepass Corp.
... ... composition or a machine cannot be predicated on a new use of ... that machine or composition"); In re Benner, ... 174 F.2d 938, 942 (CCPA 1949) ("no provision has been ... made in the patent statutes for granting a patent upon an old ... ...
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Chapter §15.07 Federal Circuit Review of Claim Interpretation Decisions
...(Oxford Univ. Press 2010); Paul H. Blaustein, Learned Hand on Patent Law (Pineridge Pub. House 1983). See also Application of Benner, 174 F.2d 938, 943 (C.C.P.A. 1949) (referring to Learned Hand as "justly esteemed a high authority on patent law").[446] Teva, 135 S. Ct. at 841 (emphasis add......