Application of Freeman, Patent Appeal No. 5390.

• Citation: 166 F.2d 178
• Decision Date: 10 February 1948
• Docket Number: Patent Appeal No. 5390.
• Parties: Application of FREEMAN.
• Court: United States Court of Customs and Patent Appeals

166 F.2d 178 (1948)

Application of FREEMAN.

Patent Appeal No. 5390.

Court of Customs and Patent Appeals.

February 10, 1948.

Edmund H. Parry, Jr., of Washington, D. C. (Olen E. Bee and Oscar L. Spencer, both of Pittsburgh, Pa., of counsel), for appellant.

W. W. Cochran, of Washington, D. C. (J. Schimmel, of Washington, D. C., of counsel), for the Commissioner of Patents.

Before GARRETT, Presiding Judge, and HATFIELD and JACKSON, Associate Judges.

HATFIELD, Associate Judge.

This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming the decision of the Primary Examiner rejecting all of the claims, Nos. 5, 6, 7, and 8, in appellant's application for a patent for an alleged invention relating to a coating composition.

Claims 5 and 6, which are typical of the rejected claims, read:

"5. A coating composition comprising the extract phase of a natural unpolymerized glyceride oil obtained by liquid phase extraction with a selective organic polar solvent of a natural unpolymerized glyceride oil comprising a mixture of relatively saturated and relatively less saturated glycerides, the latter glycerides having drying properties, said composition being substantially enriched in the unsaturated glycerides and impoverished in the more saturated glycerides and having a substantially higher rate of air drying than the original oil.

"6. A coating composition comprising the extract phase of a natural unpolymerized glyceride oil obtained by liquid phase extraction with a selective organic polar solvent of a natural unpolymerized glyceride oil comprising a mixture of relatively saturated and relatively less saturated glycerides, the latter glycerides having drying properties, said composition being substantially enriched in the unsaturated glycerides and impoverished in the more saturated glycerides and having a substantially higher rate of air drying than the original oil, said composition further including a pigmentary material in admixture therewith."

The references relied on are the patents to

Grote, 2,113,960, April 12, 1938.

Freeman, 2,200,391, May 14, 1940.

The patent to Freeman is appellant's patent.

The coating composition disclosed in appellant's application and defined by the appealed claims includes, as its essential element, the extract phase of a natural unpolymerized glyceride oil, which may be soya bean oil, the extract phase being obtained by liquid extraction with a selective solvent which solvent has the property, when used under proper temperature conditions, of removing the relatively less saturated components of the glyceride oil, resulting in a product which is richer in those relatively less saturated components than the original oil, with a resultant improvement in the rate of air drying.

The patent to Grote discloses a method of separating saturated and unsaturated components of various organic substances, which method involves the use of a selective solvent which will at a certain temperature dissolve saturated components of the starting substance but not the unsaturated components.

Appellant's patent discloses the identical extraction process of the present application and broadly suggests the use of the extract phase in paints and varnishes. The patent does not contain detailed information, which is included in the present application, as to the making of paints or varnishes.

On September 9, 1940, the Primary Examiner rejected claims 1 to 5, inclusive, and 7 of the present application on the ground of double patenting in view of appellant's patent. An argument was filed by counsel for appellant in response to that rejection, and the rejection on that ground was not repeated by the examiner. Thereafter, claims 1 to 8, inclusive, were finally rejected on various grounds, not including double patenting, but including a rejection on the disclosure in the patent to Grote. On August 5, 1943, the Board of Appeals affirmed the Primary Examiner's rejection on the Grote patent as to claims 1 to 4, inclusive, but reversed it as to claims 5 to 8, inclusive, which are the claims here involved, those claims being held patentable over the disclosure in the Grote patent by the board. Thereupon, on February 3, 1944, appellant canceled claims 1 to 4, inclusive.

On February 24, 1944, the Primary Examiner obtained jurisdiction from the commissioner to reopen the prosecution of the application for the purpose of rejecting all of the claims on the ground of estoppel arising out of an interference in which appellant's patent had been involved. The examiner's request for jurisdiction to reopen the prosecution of the application stated that "the instant product claims are indivisible from the patent process claims." After obtaining jurisdiction, the examiner rejected the claims not only on the ground of equitable estoppel but also on the ground of double patenting in view of the claims in appellant's patent, and lack of invention over the disclosure in the patent to Grote. The board reversed the rejection on estoppel but affirmed as to the other two grounds.

It is argued by counsel for appellant that the question of patentability of the appealed claims over the Grote patent is res judicata in view of the decision of the board on the first appeal and that since that issue has been...