Application of Conley

• Decision Date: 24 January 1974
• Docket Number: Patent Appeal No. 9101.
• Citation: 490 F.2d 972,180 USPQ 454
• Parties: Application of Robert F. CONLEY et al.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

180 USPQ 454, 490 F.2d 972 (1974)

Application of Robert F. CONLEY et al.

Patent Appeal No. 9101.

United States Court of Customs and Patent Appeals.

January 24, 1974.

Eugene F. Buell, Pittsburgh, Pa. (Buell, Blenko & Ziesenheim), Pittsburgh, Pa. attorney of record, for appellants.

Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents. Robert D. Edmonds, Washington, D. C., of counsel.

Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.

RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of claims 1-9 of application serial No. 721,955, filed April 17, 1968, entitled "Satin White-Clay Compositions and Methods of Manufacture," for "indefiniteness" under 35 U.S.C. § 112, second paragraph. We reverse.

The Invention

The invention relates to paper coatings and results from the discovery by appellants of a seemingly simple solution to a well-known problem in the art of paper coatings. As appellants explain the prior art, it has long been known to provide paper coating compositions made up of dispersions of kaolinite, adhesives, and other mineral materials such as satin white. Satin white is a calcium sulfo-aluminate (clay) of somewhat indefinite composition manufactured from Ca(OH)2 and A12(SO4)3. As appellants' specification explains:

The chief problem in the manufacture of satin white is stability — it must be kept in water suspension, usually at about 20-25% solids. It is well recognized that drying satin white destroys it together with the useful optical properties it imparts. It is observed that the suspension is even degraded at temperatures above 75°C. While 75-80% water may be higher than necessary for its stability, the extremely thixotropic viscosity of satin white in water makes it completely impractical to handle at solids higher than 25%. The high water content introduces several commercial problems. Shipping costs are exorbitant and shipping is prohibited where exposure to cold weather results. The latter problem arises because freezing of the water in satin white also destroys the pigmentary characteristics. The "extra" water in satin white may dilute the coating composition and require additional drying time and costs for its removal.

In the prior art, the aqueous solution of satin white is mixed at the site of paper coating with kaolinite and adhesives, such as starch, and roll or blade coated onto a moving paper sheet and dried thereon to provide coated paper. Appellants have discovered, however, that the stability problem of the satin white suspension can be avoided by premixing the satin white and kaolinite and drying the mixture to provide a handleable, powdery material whose properties when reconstituted at the site of paper coating, according to their application, are, unlike satin white alone, "not only not degenerated, but actually improved over the freshly formulated components."

The claimed invention is a dry particulate coating pigment composition of kaolinite and satin white which may subsequently be made up into aqueous coating compositions and which comprises a co-dried mixture of an effective amount each of satin white and kaolinite and a method of making such a mixture. The method consists of forming a satin white composition in aqueous suspension, adding kaolinite in sufficient amount to retain the effectiveness of satin white as a paper coating pigment on rewetting after drying, and removing the water therefrom to form a free-flowing powder.

Representative claims, with the portions alleged to be indefinite emphasized, are:

1. The method of producing an improved dry particulate coating pigment containing satin white and kaolin which after drying may subsequently be made up into aqueous coating compositions comprising the steps of:

(a) forming a satin white composition in aqueous suspension;

(b) adding a kaolinite to said aqueous suspension of satin white in sufficient amount to retain the effectiveness of satin white as a paper coating pigment on rewetting after drying; and

(c) removing water from the aqueous suspension to form a free flowing powder.

3. The method as claimed in claim 1 wherein a paper coating adhesive starch is added to said admixture prior to drying.

8. A dry particulate composition suitable for subsequent formulation in paper coating colors comprising a codried mixture of satin white and kaolinite of about 5% moisture content.

Claims 2-7 are all dependent from claim 1 and claim 9 is dependent from claim 8.

The Rejection

As stated in the Examiner's Answer, the claims were rejected under 35 U.S.C. § 112, second paragraph, for the reasons that:

A. Claims 1-10 are indefinite since operative proportions of (1) satin white in the aqueous suspension (Claims 1-7) and (2) satin white and kaolinite in the "compositions" (claims 8-10) are not recited.¹

B. Claim 3 is indefinite since operative proportions of starch in the "admixture" is sic not recited.

Sustaining rejection (A), the board stated only the following reasons, which appear to be directed to the language of claims 8 and 9:

It is evident that the amount of kaolinite is of some importance or criticality in the formation of the desired satin white compositions because as Example III shows, appellants\' objective is not attained with either a satin white or kaolinite clay used separately. With respect to even the 30% satin white compositions no improvement in the effectiveness of the satin white as a paper coating pigment on rewetting after drying is achieved when the composition is oven dried. The specification does not describe, indeed, the relative amount of kaolinite that is required to produce the desired and indicated effectiveness when the product is oven dried. The proportions specified as a sufficient amount are uncertain, as the examiner states, because the "effectiveness" as a paper coating pigment is a variable consideration depending on the particular aspect of paper coating properties that may be emphasized. The uncertainty of the expression used is not made less by the fact that it is possible to obtain an improvement in some paper coating characteristics while at the same time obtaining less desirable results in others — even in the coating characteristics listed in the specification.

As to rejection (B), the board stated that "With respect to claim 3 the proportion of starch is unspecified although it is evident that this proportion may grossly influence the characteristics of the resulting coating composition in itself. In proper proportion it may, of course, act as a binder as disclosed and improve the rheology." (Rheology refers to the flow characteristics of the composition.)

Appellants' Arguments

Appellants answer the assertion that the language of claim 1, and of the claims dependent therefrom, is indefinite for failure to recite the operative proportions of satin white in the aqueous suspension with the statement that "there are no critical proportions of satin white in aqueous suspension." As appellants see it, "The only considerations so far as proportions are concerned are first to have enough water to create a suspension and second not to have so much water as to make it economically unfeasible to remove the water in the final drying step." Appellants further maintain that their "specification provides numerous examples of satisfactory practices and one skilled in the art would immediately recognize these reasonable limits."

As to the alleged...