Application of Brown
| Decision Date | 02 June 1964 |
| Docket Number | Patent Appeal No. 7193. |
| Citation | 329 F.2d 1006 |
| Parties | Application of Eric D. BROWN. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Brown, Critchlow, Flick & Peckham, Pittsburgh, Pa. (Fulton B. Flick, Pittsburgh, Pa., of counsel), for appellant.
Clarence W. Moore, Washington, D. C. (Raymond E. Martin, Washington, D. C., of counsel), for Commissioner of Patents.
Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH, and ALMOND, Judges.
This appeal is from a decision of the Board of Appeals affirming the examiner's rejection of claims 1, 3 and 5 to 8 of appellant's application serial No. 594, 113, filed June 27, 1956 for LOW SWELL, HIGH TEMPARATURE ORGANOSILOXANE RUBBERS.
Appellant's invention relates to organosilicon elastomers "which provide a minimum swell when in contact with automotive fuels, lubricating oils and the like." Those elastomers, which are said to have tensile strengths of at least 555 p. s. i. and elongations at break of at least 100%, comprise (1) a homopolymer of a perfluoroalkyl siloxane or a copolymer1 thereof with a siloxane having units of the formula R'2SiO, wherein R' may be methyl, phenyl or vinyl and (2) a filler such as titania, zinc oxide, clay or crushed quartz. The invention also relates to the unvulcanized compositions which contain, in addition to polymer (1) and filler (2), from .1 to 10 per cent by weight based on the polymer of an organic peroxide vulcanizing agent.
The following claims are representative of the appealed claims:
Claim 1 is generic to cured or vulcanized homopolymeric elastomers as well as to the cured copolymeric elastomers. Claim 3 is similarly generic to the unvulcanized compositions. In the compositions of claims 5 to 8 a homopolymer of a perfluoroalkylsiloxane, within the scope of appealed claims 1 and 3, is recited. Four claims have been allowed.2
The reference relied on is:
Clark, Jr., Wright Air Development Agency (WADC) Technical Report 54-213, Dec. 7, 1954
The Clark reference discloses elastomeric compositions comprising an organosilicon elastomer, a filler and an organic peroxide vulcanizing agent. Clark's organosilicon elastomers are copolymers of a perfluoroalkylsiloxane. Those copolymers all "exhibited improved resistance to the swelling action by fuels and retained other desirable physical properties when compared to methyl silicone rubber." In discussing the organosilicon elastomers applicable, Clark states that "Attempts to prepare fluorine-containing silicone homopolymers have been unsuccessful."
The examiner rejected claims 1, 3 and 5 to 8, all of which are generic to or call for a homopolymer of a perfluoroalkylsiloxane, as unpatentable over the Clark reference. Referring to Clark's unsuccessful attempts to produce an elastomeric homopolymer of a perfluoroalkylsiloxane, the examiner viewed this teaching "as constituting a conception of the broad idea of an elastomeric homopolymer, within the scope of the language of the appealed claims" and as satisfying "the requirements" of In re Von Bramer et al., 127 F.2d 149, 29 CCPA 1018, in that the Clark reference "suggested" a homopolymer within the scope of the language of the appealed claims. Since the examiner considered that if any "invention" resides in the materials claimed, "such exists solely because of the specific polysiloxane siloxane elastomer employed since all the other ingredients as herein used in the claims are notoriously well-known in this art," he concluded that the appealed claims do not define a patentable invention over Clark.
The examiner also rejected a contention by appellant that the Clark reference is not "a printed publication within the meaning of 35 U.S.C. 102(b)." The examiner stated that the Clark reference, "unrestrictively distributed more than one year prior to the filing of the present application, to one hundred and eleven unrestricted different parties and/or organizations, is a publication under 35 U.S.C. 102(b)."
The board, in affirming the examiner's rejection of the appealed claims on the Clark reference, stated:
Emphasis ours.
The board further agreed with the examiner that the distribution of one hundred and eleven copies of the Clark reference "constituted publication within the terms of 35 U.S.C. 102(b)."
Appellant argues that Clark's discussion of homopolymers is "at most an inchoate idea (since he could not make them) that is as remote as can be from putting the public in possession of Brown's appellant's invention." Appellant urges that the position of the Patent Office that it was obvious to compound appellant's homopolymers with the filler and vulcanizing agent overlooks the fact that appellant's homopolymers were novel and not obvious.
Appellant further argues that the Patent Office erred in treating the Clark reference as a printed publication under 35 U.S.C. 102(b) since it was not "legally available as a reference."
If it be assumed arguendo that the Clark reference is legally available as a reference, the remaining question is whether the appealed claims are obvious under 35 U.S.C. § 103 in view of the Clark reference. Of course, if the answer to that question is in the negative, the issue as to whether the Clark reference is legally available as a reference becomes moot.
The crux of the examiner's rejection of the appealed claims is based on Clark's unsuccessful attempts to produce an elastomeric homopolymer within the scope of the language of the appealed claims. The examiner, relying on the Von Bramer case, viewed that teaching as suggesting an elastomeric homopolymer within the scope of the language of the appealed claims.
Apparently we are, in this case, in the field of what has come to be called the "Von Bramer doctrine."3 This doctrine, which appears to have resulted from In re Von Bramer et al., supra, seems over a period of years to have been tailored in some quarters to a principle which defeats the novelty of a chemical compound on the basis of a mere printed conception or a mere printed contemplation of a chemical "compound" irrespective of the fact that the so-called "compound" described in the reference is not in existence or that there is no process shown in the reference for preparing the compound, or that there is no process known to a person having ordinary skill in the relevant art for preparing the compound. In other words, a mere formula or a mere sequence of letters which constitute the designation of a "compound," is considered adequate to show that a compound in an application before the Patent Office, which compound is designated by the same formula or the same sequence of letters, is old. We do not think that the Von Bramer case should be so construed.
In Von Bramer, the application on appeal was directed to a motor fuel such as "cracked" gasoline stabilized against deterioration by the addition of an "N-(primaryalkyl)-aminophenol." The rejected claims were directed to a motor fuel containing, in an amount sufficient to substantially retard the deterioration, the N-(primaryalkyl)-aminophenol in which the primaryalkyl group contained at least five carbon atoms. Among the references on which the appealed claims were rejected were four patents, viz. a Clifford patent, an Atwell patent, a Gutzeit patent and a Wilson patent, all of which taught the use of aminophenolic compounds as gasoline stabilizers. Particular emphasis was placed by the Patent Office on the Clifford patent which specifically related to the retardation of the ageing of deteriorable organic compositions among which was gasoline. Clifford stated that by the use of certain antioxidants the formation of gums and gummy materials was...
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