Application of Cohn

• Decision Date: 18 March 1971
• Docket Number: Patent Appeal No. 8357.
• Citation: 438 F.2d 989,169 USPQ 95
• Court: U.S. Court of Customs and Patent Appeals (CCPA)
• Parties: Application of Charles C. COHN.

169 USPQ 95, 438 F.2d 989 (1971)

Application of Charles C. COHN.

Patent Appeal No. 8357.

United States Court of Customs and Patent Appeals.

March 18, 1971.

Busser, Smith & Harding, Philadelphia, Pa., attorneys of record, for appellant. George A. Smith, Philadelphia, Pa., of counsel.

S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Leroy B. Randall, Bethesda, Md., of counsel.

Before RICH, ALMOND, BALDWIN, LANE, Judges, and RE, Judge, United States Customs Court, sitting by designation.

BALDWIN, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the rejections of appellant's claim 12¹ under 35 U.S.C. 103 as obvious in view of prior art and of claims 12-14 as failing to comply with 35 U.S. C. 112, second paragraph.

THE INVENTION

The claims before us are directed to a method of producing non-metallic appearing finishes on aluminum surfaces. The specification details specific methods whereby various finishes may be obtained, "categorized according to their appearance as being frosted, opaque or glazed." In general, the methods comprise the three steps of forming an aluminum oxide layer on a precleaned aluminum surface (anodizing), sealing that oxide layer with a selected sealant, and corroding the sealed surface under controlled conditions in order to produce a non-metallic appearing surface. The particular finish resulting — frosted, opaque, or glazed, porcelain-like — is a function of the particular sealant employed and, in the case of the "frosted" finish, the addition of an etching step subsequent to the cleaning of the surface. Claim 12 is illustrative of the particular method claimed:

12. The method of producing on a surface of aluminum a durable opaque finish comprising the steps of providing on the surface of the aluminum a porous oxide coating, then sealing said coating by treatment with a solution of an alkali silicate, and then treating the sealed surface with a corroding solution until the metallic appearance of the surface is supplanted by an opaque appearance.

Claim 13 is similar with caustic alkali specified as the corroding solution, while claim 14 adds an additional resealing step.

THE SECTION 112 REJECTION

The issue we find determinative in this appeal is the correctness of the rejection of claims 12-14 as not satisfying the requirements of 35 U.S.C. 112. The examiner stated that he regarded those claims as "unduly broad and indefinite in failing to define the minimum time and temperature relationship of the corrosion treatment." He further thought that expressing the time period of the corrosion treatment in terms of obtaining the desired result of producing some "subjective", "relative and indefinite appearance", viz. an "opaque appearance", was particularly meaningless and indefinite, inasmuch as appellant, in his view, had not satisfactorily defined what constitutes a "metallic" appearance or an "opaque" appearance.

The board sustained the rejection "for the reasons given by the examiner," adding:

We feel impelled also to comment that while the specification * * * lists as one essential step the formation of an aluminum oxide layer, no claim requires such a step. The oxide layer called for by the claims could be an oxide of any metal or non-metal e. g., lead, iron, phosphorus, etc., which further points up the essential correctness of the Examiner\'s position.

Turning first to the above-quoted criticism of the board concerning the failure of the claims to recite that a porous aluminum oxide is formed on the aluminum surface, we agree with appellant that express inclusion of "aluminum" as a modifier of "oxide coating" is not necessary in the present circumstances. The evidence of record, notably the Tosterud² and Edwards³ patents cited in support of the prior art rejection, amply establishes that the term "oxide coating", as it is employed in the claim, connotes an aluminum oxide coating to those in this art.⁴

The criticisms of the examiner, however, require further and deeper consideration. We have determined that while some of the points he raised are not sustainable, we are in agreement that the claims fail to define the subject matter sought to be patented with the particularity and distinctness required by the second paragraph of 35 U.S.C. 112.

In direct response to the rejection as framed by the examiner, appellant argues in his brief before us that his specification makes it clear that a wide variety of corrodants may be utilized in the "corrosion treatment" step of his process, and that the time and temperatures employed in that step may vary widely depending on the particular corrodant selected and its concentration. His position is that the broad claim language he has selected delineates clearly the full scope of his invention and is permitted by the third paragraph of 35 U.S.C. 112, which provides in pertinent part:

An element in a claim for a combination may be expressed as a * * * step for performing a specified function without the recital of * * * material, or acts in support thereof, and such claim shall be construed to cover the corresponding * * * material, or acts described in the specification and equivalents thereof.

It is true that claim language which expresses performing particular steps until a given result or state is reached, or a given condition obtained, may be proper under § 112, third paragraph. This is with the proviso, however, that the claim otherwise satisfies the requirements of the first and second paragraphs of § 112. See In re Lundberg, 244 F.2d 543, 44 CCPA 909 (1957); In re Arbeit, 206 F.2d 947, 41 CCPA 719 (1953). We might find appellant's arguments to be convincing if the sole issue were whether the instant claims were adequately supported under the requirements of the first paragraph. However, we cannot even reach that issue since we are not satisfied that these claims comply with the second paragraph of § 112. Specifically, we are not sure that interested parties would be able to determine with adequate precision just what is the "opaque appearance" which indicates completion of the "corrosion treatment" step.

Initially, one might well wonder, as did the examiner, what distinction there is between a "metallic appearance" of a surface and an "opaque appearance" of that surface, particularly since metallic surfaces themselves are "opaque" at least in the usual sense of being nontransparent. In an affidavit filed below, the tenor of which is paraphrased in part in his brief here, appellant explains the intended significance of those terms:

It is not possible to properly cover the full scope of the invention if any time-temperature relationship of the corrosion treatment is defined in the claims, since these parameters vary widely depending upon the corrosion agent employed, its concentration, temperature, etc. On the other hand, those skilled in the art of finishing aluminum would readily recognize when the metallic appearance of the

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