Application of Buehler
| Decision Date | 22 May 1975 |
| Docket Number | No. 74-613.,74-613. |
| Citation | 515 F.2d 1134 |
| Parties | Application of William J. BUEHLER. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Paul M. Craig, Jr., Washington, D. C., attorney of record, for appellant.
Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents, Henry W. Tarring, II, Washington, D. C., of counsel.
Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
This appeal is from the decision of the Patent and Trademark Office Board of Appeals affirming the rejection of all claims (8-14 and 23-28) in appellant's patent application serial No. 788,135, filed December 31, 1968, for "Method and Apparatus for Continuously Casting Wire or the Like." All claims were rejected on two grounds: (1) obvious subject matter under 35 U.S.C. § 103, and (2) double patenting of the "obviousness-type" wherein no terminal disclaimer has been filed. We reverse.
Appellant's invention pertains to a method of continuously casting 55-Nitinol,1 which is a specific titanium-nickel (Ti-Ni) alloy, into relatively small wire or flat ribbon shapes. According to appellant's brief, 55-Nitinol is a stoichiometric alloy possessing high ductility and other properties as follows:
55-Nitinol has many unique properties among which is its total non-magnetic characteristic, its non-corrosive characteristic and, above all, its ability to convert heat into mechanical energy. If, for example, a thin wire of 55-Nitinol is deformed below its transition temperature and is then heated through its transition temperature, it will revert to its original shape with simultaneous release of mechanical energy.
The apparatus2 employed in appellant's method is illustrated by Fig. 2 in the specification:
Claim 23 is the sole independent claim (bracketed matter and reference numerals added):
The dependent claims add specific recitals of an evacuated environment, an inert gas, heating the crucible while cooling the die, controlling heating and cooling to develop a temperature gradient, using an ingot of the alloy, initially forming a solid skull of alloy, and insertion of a stop plug into the die orifice.
Appellant's brief contains the following statement:
A few words concerning the historical development of the present invention is also believed desirable to place the same into proper perspective. Initially, the TiNi base alloys were made by the use of consumable or non-consumable are casting, a method which had been successfully developed and applied in processing titanium. Since both nickel and titanium are highly reactive with various elements, including carbon, it was deemed impossible to use a graphite crucible in connection with making the alloy. However, in the course of further work, appellant discovered that though both the elemental components of Ti and Ni were each highly reactive with carbon and graphite, the alloy itself consisting essentially of these two elemental components was totally inert or nonreactive with carbon and graphite. This suggested to appellant the possibility that a graphite crucible might be used for making the alloy from its elemental components if a pre-alloyed material of the TiNi-alloy to be obtained is first placed into the graphite crucible, is then melted and the elemental components of TiNi are thereupon charged into the molten alloy while substantially preventing direct contact between the elemental component metals and the crucible walls. This approach proved successful and is the one described in appellant's U.S. Patent 3,529,958, which permitted the use of a graphite crucible in making the alloy from its elemental components of Ti & Ni, thereby obviating the inferior arc-casting process used hitherto which could not insure the necessary homogeneity of the ingot for products such as wires with identical properties, a prerequisite in view of the effect of impurities or non-homogeneities on the transition temperature of the 55 Nitinol. Footnotes omitted.
Appellant emphasizes the fact that the claimed method requires the use of a graphite crucible which acts as a susceptor for the TiNi-base alloy. His specification employs the term "susceptor" in this way:
By being able to melt the alloy in a graphite crucible which represents excellent susceptor characteristics, it is possible to control the alloy temperature with sufficient precision in the crucible and in its passage through the graphite die-body to allow the formation and solidification of the wire. Emphasis ours.
Appellant's specification also contains the following statements relevant to the use of a graphite crucible:
Prior to the instant invention, the art knew that stoichiometric TiNi alloys could be made into wire by hot-rolling an ingot into a bar, hot-swaging the bar into a rod and then wire-drawing the rod. However, such prior art method of making TiNi wire is relatively uneconomical and does not permit continuous production of the wire in any desired length.
The examiner and the board relied on five prior art references:
(1) Clark 3,598,168 Aug. 10, 1971
(Filed Oct. 14, 1968)
(2) Eldred 2,242,350 May 20, 1941
(3) Heraeus 440,859 Jan. 7, 1936
(Great Britain)
(4) Howard et al. 1,013,851 Dec. 22, 1965
(Great Britain)
(5) Buehler et al. 3,174,851 March 23, 1965
The examiner and the board cited the claims of another reference for the purpose of establishing double patenting of the "obviousness-type":
Buehler 3,529,958 Sept. 22, 1970
(Filed Nov. 4, 1966)
It should be noted that Buehler is not a prior art reference under 35 U.S.C. §§ 102 or 103. Furthermore, this Buehler patent (Buehler) should not be confused with the Buehler et al. patent (Buehler et al.), which is a prior art reference.
The examiner rejected claims 8-14 and 23-28 under 35 U.S.C. § 103 as being "unpatentable over" Clark in view of Eldred, Heraeus, Howard et al. and Buehler et al. The board sustained this rejection and stated:
We find that the differences between the prior art and the process of the appealed claims are such differences as would be obvious to one skilled in the art armed with the disclosure of the applied references. Emphasis ours.
The examiner also rejected claims 8-14 and 23-28 "under the judicially-created doctrine of `obviousness-type' double patenting over" the claims of Buehler in view of Eldred, Heraeus, and Howard et al. The board stated:
Since we agree with the examiner that the presently claimed process is but an obvious variation, in the double patenting rather than in the 35 U.S.C. § 103 sense, of the process already called for by Buehler and, on the present record, is not allowable in view of the prior art, we will sustain the examiner's rejection.
The Clark prior art patent, entitled "Titanium Casting Process," discloses a method and apparatus for batch casting. In his "Description of the Prior Art," Clark states:
In describing his invention, Clark states:
The present invention is applicable to the melting and pouring of titanium alloys generally, where contamination is a problem. It is applicable to the melting of commercially pure...
To continue reading
Request your trial
-
Louis Marx & Co., Inc. v. Buddy L Corp.
...v. Braiman Bows, Inc., 369 F.2d 536, 538 (2d Cir. 1966). 8 Timely Prods. Corp. v. Arron, 523 F.2d 288, 293 (2d Cir. 1975); In re Buehler, 515 F.2d 1134 (C.C.P.A.1975). 9 Digitronics Corp. v. New York Racing Ass'n, 553 F.2d 740, 745 (2d Cir. 1977). Plaintiff argues that the pertinent prior a......
-
Pfizer, Inc. v. International Rectifier Corp.
...differences far exceeding the differences in the following cases in which the issue of double patenting was raised: In re Buehler, 515 F.2d 1134 (Cust. & Pat.App. 1975); In re Wallace, 376 F.2d 968, 54 CCPA 1312 (1967); In re Maxwell, 188 F.2d 479, 38 CCPA 1011 In the course of the processi......
-
Timely Products Corp. v. Arron
...decreed by Section 103 is not the substantiality of the differences but the obviousness of the invention as a whole. In re Buehler, 515 F.2d 1134 (C.C.P.A.1975). However, we are constrained to agree with Judge Murphy's conclusion that the invention was obvious to persons of ordinary skill i......
-
Application of Freeman
...as a whole would have been obvious, not whether the differences point of novelty would have been obvious." In re Buehler, 515 F.2d 1134, 1140, 185 USPQ 781, 786 (Cust. & Pat.App.1975). See In re Van Venrooy, 412 F.2d 250, 253 n. 4, 56 CCPA 1199, 1203 n. 4, 162 USPQ 37, 39 n. 4 5 In In re Ch......