Application of Cormany

• Decision Date: 19 April 1973
• Docket Number: Patent Appeal No. 8775.
• Citation: 177 USPQ 450,476 F.2d 998
• Parties: Application of Charles L. CORMANY et al.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

177 USPQ 450, 476 F.2d 998 (1973)

Application of Charles L. CORMANY et al.

Patent Appeal No. 8775.

United States Court of Customs and Patent Appeals.

April 19, 1973.

Mark Levin, Pittsburgh, Pa., atty. of record, for appellants; Chisholm & Spencer, Pittsburgh, Pa., Jones & Lockwood, George R. Jones, Arlington, Va., of counsel.

S. Wm. Cochran, Washington, D. C., for Commissioner of Patents. Jack E. Armore, Washington, D. C., of counsel.

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

RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the examiner's rejection of claims 3-5, 7, and 9-12 of application serial No. 565,704, filed July 18, 1966, entitled "Stabilization." We affirm.

The invention relates to the stabilization of methylchloroform, also called 1,-1,1-trichloroethane, a solvent having utility in industrial degreasing in both liquid and vapor phase. When so employed, methylchloroform has a tendency to decompose rapidly, especially when in contact with aluminum and other light metals, and in decomposing also has a corrosive effect on the metals. The claims are all directed to stabilized methylchloroform compositions in which the stabilizer is a mixture of a nitroalkane, such as nitromethane, and an organic epoxide having 2 to 8 carbon atoms, such as butylene oxide or propylene oxide.

Claim 12 is the main claim involved. It reads (emphasis ours):

12. Methylchloroform having therein dissolved the combination of (a) a minor amount of a nitroalkane selected from the group consisting of nitromethane and nitroethane large enough to stabilize liquid methylchloroform refluxing under atmospheric conditions under total reflux and in which is immersed an aluminum strip, and (b) from 0.05 to 10 percent by weight of an organic epoxide having 2 to 8 carbon atoms.

The emphasized quantity limitation is important to the main issues, as will appear. All other claims except claim 11 are dependent on claim 12. Claim 11 reads:

11. A composition of matter comprising methyl chloroform containing a stabilizing amount of a mixture of propylene oxide and a nitroalkane having 1 to 3 carbon atoms.

There are three closely interrelated grounds of rejection, one under 35 U.S.C. § 103, the other two being under 35 U.S.C. § 112. The only prior art relied on to support the § 103 rejection for obviousness consists of counts 1 and 2 of Interference No. 93,486¹ which involved appellants' parent application, serial No. 812,791 (1959), and a patent to Brown, No. 3,049,571. Priority was awarded to Brown. Appellants prosecuted an intermediate application, serial No. 293,273 (1963), filed as a continuation-in-part of the one in interference, and the present application is a continuation of the latter. The examiner's rejection under § 103 was on the ground that all claims on appeal are unpatentable over the counts of the interference. The examiner stated:

The determination of the optimum amounts of stabilizer to use is within the expected skill of a chemist in the art. No unobviousness is seen in the recitation of nitroethane (claims 4-5) and propylene oxide (claim 11) since these compounds would clearly be suggested by the homologous compounds recited in the Counts.

The § 112 rejections were newly made in the Examiner's Answer and, as sustained by the board, apply to all appealed claims except claim 11. The grounds of rejection were that the claims are "indefinite and inadequately supported" in the specification.

Concerning ourselves for the present with all claims except claim 11, it appears from appellants' brief that, notwithstanding the adverse award of priority, they have "continued to press for allowance of claims to the present invention" on the theory that they are distinguishing from the lost counts in their use of the quantitative limitation we have emphasized in claim 12, supra, "to set apart the claimed invention from the invention for which Brown was awarded priority." Thus that limitation becomes the crux of this appeal. Appellants are candid in stating that for them to prevail this court must recognize that the board erred in holding "the claim language is indefinite and inadequately supported."

We regard indefiniteness of claim language and inadequate support for it in the specification to be distinct questions, In re Borkowski, 57 CCPA 946, 422 F.2d 904 (1970); In re Hammack, 57 CCPA 1225, 427 F.2d 1378, 166 USPQ 204 (1970); In re Swinehart, 58 CCPA 1027, 439 F.2d 210, 169 USPQ 226 (1971), and we shall therefore consider them separately, the former being a question of compliance with the second paragraph of § 112 and the latter a question of compliance with the first paragraph.

Appellants have chosen to define the amount of nitroalkane used for stabilization by the phrase "large enough to stabilize liquid methylchloroform refluxing under atmospheric conditions under total reflux and in which is immersed an aluminum strip." Why does the Patent Office deem that definition of quantity indefinite? Enough is enough. It is because of the word "stabilize." The board said, "the stabilization standard in claim 12 and the claims dependent thereon is indefinite because the degree of stabilization is uncertain." (Emphasis added.)

Translated in terms of a § 112, second paragraph, requirement, it is apparent that the board's holding was that claim 12, and the claims dependent thereon, do not particularly point out and distinctly claim the subject matter which applicants regard as their invention. If that be true, the rejection of those claims must be sustained. In re Prater, 415 F.2d 1393, 56 CCPA 1381 (1969); In re Borkowski, supra; In re Moore, 439 F.2d 1232, 58 CCPA 1042 (1971); and In re Cohn, 438 F.2d 989, 58 CCPA 996 (1971).

Speaking of the requirement of the second paragraph of § 112, we said in Moore:

* * * the definiteness of the language employed must be analyzed— not in a vacuum, but always in light of the teachings of the prior art and of the particular application disclosure as it would be interpreted by one possessing the ordinary level of skill in the pertinent art.2

Footnote 2 to that statement reads:

2 It is important here to understand that under this analysis claims which on first reading—in a vacuum, if you will—appear indefinite may upon a reading of the specification disclosure or prior art teachings become quite definite. It may be less obvious that this rule also applies in the reverse, making an otherwise definite claim take on an unreasonable degree of uncertainty. Citing the Cohn and Hammack cases, supra.

Discussing the second paragraph § 112 requirement in Borkowski, supra, we said:

If the scope of subject matter embraced by a claim is clear, and if the applicant has not otherwise indicated that he intends the claims to be of a different scope citing Prater, supra, as an example of such a case, then the claim does particularly point out and distinctly claim the subject matter which the applicant regards as his invention. Emphasis added.

The Prater exception emphasized in the above quotation is what is important here. The relevant portion of the Prater opinion is the discussion of claim 9, as to which we first expressed our agreement with appellants that "claim 9 cannot be read in a vacuum but instead must be read in the light of the specification." We next found that, so reading the claim, it "read on a mental process augmented by pencil and paper markings" and was not limited to a "machine-implemented process." We had already found—not on the basis of anything in the Prater specification but on the basis only of contentions and admissions of the appellants in briefs and arguments—that they did not regard as their invention and did not intend their claim to cover a process which could be carried out by mental operations aided by pencil and paper. Having construed claim 9 in the light of the specification and found it to be of such scope as to include what appellants said they did not intend to include, we therefore held the claim did not comply with the second paragraph of § 112. As we shall show, we have a similar situation here.

The first step in the demonstration is to construe claim 12 in the light of appellants' specification, having particular reference to the meaning of the word "stabilize."

The specification teaches that unstabilized methylchloroform decomposes within "all too brief a period," and "loses its practical value." It decomposes in five minutes at reflux temperature in the presence of aluminum. It is disclosed that nitromethane alone may be used as a stabilizer in various concentrations between 2 and 10 per cent by weight of the methylchloroform. The discussion of the use of nitromethane by itself concludes with the sentence,

Lower concentrations, e. g., 0.5 weight per cent, are possible but not, as a rule, recommended when nitromethane is the sole stabilizing component of the composition.

But this is not the invention of claim 12, which is limited to stabilization by a mixture or "combination" of nitroalkane and certain epoxides. Using such mixtures, the teaching of the specification is in these words:

With other stabilizing materials, these lower concentrations are useful. An illustrated concentration range of nitromethane is, therefore, from 0.01 to 3.0 weight per cent.

There are two specific examples in the specification of the use of nitromethane in each of which the amount used is 3% by weight of the methylchloroform.

On the basis of this disclosure, there are two possible constructions of the key clause in claim 12. If we read "amount * * * large enough to stabilize" as referring to a stabilizing amount of nitroalkane used alone, the disclosure teaches a lower "possible," albeit not as a rule recommended, amount of "0.5 weight per cent." If we read it as meaning enough nitroalkane to stabilize in the composition claimed, which includes organic epoxide, the lower amount is 0.01 weight percent....