Application of Fuetterer

• Decision Date: 28 June 1963
• Docket Number: Patent Appeal No. 6897.
• Parties: Application of Charles T. FUETTERER.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

319 F.2d 259 (1963)

Application of Charles T. FUETTERER.

Patent Appeal No. 6897.

United States Court of Customs and Patent Appeals.

June 28, 1963.

John Mahoney, Cleveland, Ohio (J. Harold Kilcoyne, Washington, D. C., of counsel), for appellant.

Clarence W. Moore, Washington, D. C. (Jack E. Armore, Washington, D. C., of counsel), for the Commissioner of Patents.

Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH and ALMOND, Associate Judges.

RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of claims 38-49 in application Ser. No. 498,089, entitled "Tire Treads and Rubber Stock Therefor." The claims stand rejected solely as "failing to define the alleged invention properly." More specifically, claims 38, 40, 42, 44, 46, and 48 have been rejected as "indefinite and ambiguous" and all claims as "unduly broad and functional."

Appellant's invention relates to a tread stock usable, for example, in vehicle tire treads which are alleged to "improve the traction of * * * tires when they engage a road or pavement which is wet or which is wholly or partly covered with a water-containing substance, such as snow or ice."

Appellant describes his invention as follows:

"In accordance with the present invention, a carbohydrate, a protein, or mixture thereof, which is insoluble or which is only slightly soluble in cold water but which forms a colloidal suspension therein, together with one or more inorganic salts which are effective in maintaining the carbohydrate, protein, or mixture thereof, in colloidal suspension in the film of water which forms around the tire tread when the tire engages a wet or icy road or pavement,¹ are incorporated in a finely divided state in rubber, together with the other compounding ingredients which have previously been utilized in combination with rubber, to form the rubber stock for forming the tire tread.²"

Claim 38 is representative and reads as follows:

"38. A rubber stock for producing tire treads including as the base portion a major proportion of rubber, a sufficient amount of a vulcanizing agent to vulcanize the rubber, and a reinforcing agent in an amount sufficient to provide a tread stock having high abrasive resistance, said rubber stock also including in addition to the base portion a mixture of a nonadhesive protein and a carbohydrate³ which mixture is substantially insoluble in cold water and which is homogenously sic distributed throughout the base portion of the rubber stock, said mixture of carbohydrate and protein being approximately of a particle size that is fine enough to pass through a 300 mesh screen and being present in an effective amount ranging from more than incidental⁴ impurities up to 20% by weight of the base portion of the rubber stock, and an inorganic salt that is capable of holding a mixture of said carbohydrate and protein in colloidal suspension in water, said inorganic salt being in a sufficiently finely divided state to form a homogeneous sic mixture with the base portion of the rubber stock and being homogenously sic distributed throughout the base portion of the rubber stock and being present in an effective amount ranging from more than incidental⁵ impurities up to 20% by weight of the base portion of the rubber stock and in an amount sufficient to hold the mixture of carbohydrate and protein in colloidal suspension in a film of water which forms around a tire tread composed of the stock when the tread rotatably engages a wet or icy road or pavement and small particles of the base portion of the rubber stock and small particles of the carbohydrate, protein, and the inorganic salt are worn from the tread."

The Definiteness of the Claims

The rejection of claims 38, 40, 42, 44, 46, and 48 as indefinite and ambiguous was set forth by the examiner in his answer as follows:

"The recitation `present in an effective amount ranging from more than incidental impurities,\' limiting the amount of salt, protein and/or carbohydrate present is indefinite and ambiguous since it is neither apparent how much constitutes an effective amount nor is it obvious what constitutes an incidental impurity."

The board, while ostensibly affirming this rejection, noted that the portion of the claims quoted by the examiner did not make the tire tread stock recited therein distinguishable from that disclosed by Davis et al.,⁶ a reference considered by the examiner to be inapposite to the claims now before us.

After considering the Davis et al. disclosure in detail, we are unable to see its pertinence to the claims in their present form. This conclusion finds support in the failure of the solicitor to do more than note the existence of the Davis et al. reference and mention in a cursory fashion the manner in which the board made use of it in "affirming" the examiner.

The essence of the Patent Office rejection on indefiniteness is that a recitation in the claims of "an effective amount ranging from more than incidental impurities" would place an "undue burden * * * upon the public, to determine the operable proportions."

We think the examiner's rejection of the instant claims as failing to enable the public "to determine operable proportions" is misplaced. Such is the function of the invention description and not that of the claims.⁷ Appellant stated before the board that when "any amount of the non-adhesive protein, carbohydrate, or a mixture thereof, is present, some effect will be obtained." The Patent Office does not dispute this statement. As in the case of In re Gay, 309 F.2d 769, 50 CCPA 725, when we consider what appellant's invention really is, we find that appellant has clearly stated in the written description of his invention that a particular aspect thereof is not crucial, in this instance that one could vary within wide limits the amounts of non-adhesive protein and/or carbohydrate and still achieve an operable form of his invention. We do not consider pertinent to the instant rejection, which is not based on prior art, the obvious fact that if extremely small quantities of carbohydrate and/or non-adhesive protein were used the "effect * * * obtained" would be extremely small. Accordingly, insofar as the instant rejection on indefiniteness and ambiguity may be considered to be based on the failure of appellant to comply with the requirements of the first paragraph of 35 U.S.C. § 112, we are not persuaded that any "undue burden" is placed on the public by appellant's disclosure. We therefore reverse the rejection of claims 38, 40, 42, 44, 46, and 48 as indefinite and ambiguous.

The Undue Breadth and Functionality of the Claims

This rejection was set forth by the examiner in his answer as follows (emphasis ours):

"The recitation `inorganic salt that is capable of holding a mixture of said protein and/or carbohydrate in colloidal suspension\' is unduly broad and functional. `Inorganic salt\' reads on literally thousands of materials, many of which would not be operative for applicant\'s purpose. For example, some salts could readily react with the other ingredients in the composition while other salts could be corrosive or destructive of the rubber. This recitation is functional since it merely describes how the salt functions as the surface of the tire wears away. It is well established that claims should set out what the materials are and not by what they do. In re Fullam 1947 C.D. 352 34 CCPA 1018, 161 F.2d 247, 73 USPQ 399."

The board affirmed this portion of the examiner's rejection, stating:

"While the Examiner has not specifically listed any salt as being inoperative, his rejection is not based upon the ground of inoperativeness per se but rather upon the inordinate breadth of the claimed salts when it is not apparent from the disclosure of only four salts what other salts would be suitable to serve the function asserted and required by the claims."

(a) Functionality

"Functional" language in claims is not expressly condemned by the patent statutes. On the contrary, the only portion of Title 35, U.S.C., which makes any reference to the use of statements of function specifically authorizes such use.⁸ If we are to affirm the Patent Office rejection based on "functionality," therefore, we must do so on the basis that (1) the type of "functionality" involved here is neither comprehended nor authorized by the third paragraph of 35 U.S.C. § 112 and (2) there exists a body of extra-statutory case law which specifically condemns the type of "functionality" involved in the instant claims.⁹

The board stated, as previously noted, that "Since the alleged novelty appears to reside in the result desired to be obtained by the salts, it is not proper to define the salt by what it is supposed to do rather than what it does."¹⁰

The sole cited support for the board's position was the Fullam case, supra, a 1947 decision of this court which we feel involved a phase of the "functionality" question which is inapposite to the instant case.

In the Fullam case, this court stated that some claims were properly rejected as "functional in claiming merely the desired result well known to and sought after by workers skilled in the art." Claims directed merely to a "desired result" have long been considered objectionable primarily because they cover any means which anyone may ever discover of producing the result. See, e. g., O'Reilly v. Morse, 15 How. 62, 14 L.Ed. 601; Heidbrink v. McKesson, 290 F. 665.

The desired result of appellant's invention is limiting the skidding of a tire tread stock on a wet surface. Appellant, in the claims before us, is not claiming this result. A myriad of alternative means for achieving this result can be easily thought of which would not require the particular combination of substances claimed by appellant. Insofar, therefore, as a "functional" claim may mean one which covers all means of arriving at the desired result, although the means by which such result is obtained is...