Application of Gay, Patent Appeal No. 6836.

• Citation: 309 F.2d 769
• Decision Date: 14 November 1962
• Docket Number: Patent Appeal No. 6836.
• Parties: Application of Newsome W. GAY.
• Court: United States Court of Customs and Patent Appeals

309 F.2d 769 (1962)

Application of Newsome W. GAY.

Patent Appeal No. 6836.

United States Court of Customs and Patent Appeals.

November 14, 1962.

Joseph H. Schley, Schley & Schley, Dallas, Tex., Dos T. Hatfield, Washington, D. C., for appellant.

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

Before WORLEY, Chief Judge, RICH, MARTIN, and SMITH, Judges, and Judge JOSEPH R. JACKSON, Retired.

RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the examiner's rejection of combination claims 16 and 17 in application Serial No. 468,753 entitled "Rice Cooking Containers and Processes."

The invention relates to a rice cooking container in the nature of a perforated bag which "permits the uniform cooking of fluffy rice i. e., that which is "firm and non-sticky" by inexperienced or unskilled persons." Appellant's brief describes the container and its operation as follows:

"The container * * * is adapted to enclose a predetermined quantity of uncooked rice. The container material has a plurality of minute openings or perforations of a number and size large enough to permit the passage of water and water-soluble starch therethrough and small enough to restrict the release of pressure generated by conversion to steam of water which enters through the perforations upon placing of the container in boiling water when cooking the rice. The pressure generated within the container resists the entry of additional water and emits water containing soluble starch through the perforations to separate the starch from the rice. Also, the perforations permit the draining of water from the container prior to the removal of the cooked rice therefrom."

Referring more specifically to the container material, appellant's specification as filed stated: "The sheet 11 of the container may be paper, or vegetable parchment, metal foil, plastic, treated cloth or other thin, frangible, disposable material resistant to water and heat." Appellant amended this sentence to read as follows: "The sheet 11 may be paper, or vegetable parchment, metal foil, plastic, or other thin, frangible, disposable material which is substantially nonporous and resistant to water and heat." The effect of this amendment, as well as the original meaning of the above-quoted sentence, constitutes one of the issues presented by this appeal.

The claims on appeal read:

"16. In combination, uncooked rice, and a disposable container for cooking the rice, the container including an enclosure holding a predetermined quantity of uncooked rice and formed of flexible and manually tearable and substantially non-porous material resistant to heat and water, the enclosure having a plurality of perforations of a size and quantity large enough to permit the passage of water and water-soluble starch therethrough and small enough to prevent the passage of rice therethrough and restrict the release of the pressure generated by the conversion to steam of water which enters through the perforations upon placing of said enclosure in boiling water when cooking the rice whereby the generated pressure resists the entry of additional water and emits water containing soluble starch through said perforations to separate the starch from the rice, said perforations permitting the draining of water from said enclosure prior to removal of the cooked rice therefrom.

"17. The combination as set forth in claim 16 wherein said material is vegetable parchment."

The above claims stand rejected on two grounds, neither of which involves, directly at least, prior art.

The examiner stated the basis for the first, or "new matter," rejection as follows:

"The original disclosure (page 4, lines 8 to 10) states that many materials can be used without any statement as to whether the materials are porous, non-porous or substantially non-porous other than the statement that the materials are `resistant to water and heat.\' This does not serve as proper basis for claiming `substantially non-porous.\' it is pointed out that `paper\' and `treated cloth\' may be porous."

Discussing first appellant's use of the word "paper," we find ourselves unable to agree with the board that appellant intended to include thereby reference to "ordinary `paper'." Elementary rules of grammar compel us to find that as originally disclosed in his specifications, quoted supra, appellant intended "paper" as well as "vegetable parchment, metal foil, and plastic" to be "resistant to water and heat." To come to grips with the position of the examiner, however, it is necessary for us to decide another point, namely, whether the designation "resistant to water and heat," necessarily connotes substantial non-porosity, as required by the claims.

It may be true that under circumstances remote from the instant invention, materials designated "resistant to water" might be other than non-porous. In the instant case, however, the specification makes it clear that appellant is concerned solely with non-porosity, i. e., with his container's ability to keep out or resist the entry of water. Designating materials "resistant to water" under such circumstances could only mean that such materials are non-porous. We find it difficult to believe that any person skilled in the art, desiring to utilize the instant invention, would think otherwise.

We find the Patent Office position on this "new matter" point untenable for a second reason. The Patent Office has admitted that "vegetable parchment, metal foil, and plastic" may be considered non-porous. Alluding once again, therefore, to considerations of basic grammar, a holding that appellant could not properly be said to have intended the word "paper," as used in his specification, to mean non-porous paper, would effectively ascribe two different meanings to the words "resistant to heat and water" in the same sentence. We find such interpretation of language, at the very least, rather strained.

Much of what we have just said applies equally to appellant's reference to "treated cloth." As to this material, however, there is yet another reason for our conclusion. Patent specifications, as the patent act expressly indicates, are directed not to the public in general but to those skilled in the relevant art. Appellant, in an attempt to show how one having such skill would define the words "treated cloth * * * resistant to water and heat," has cited the following definition of "water resistance (fabric)" from the Encyclopedia of Chemical Technology;¹ it reads as follows:

"In the Technical Manual and Yearbook of the American Association of Textile Chemists and Colorists (1) are the definitions: water resistance (fabric) — a general term denoting the ability of a fabric to resist wetting and penetration of water; * * *. In A. S. T. M. standard D583-54(2) * * * the term water resistance is used in a less restricted sense to denote the `ability of a fabric to resist wetting or penetration or both.\'"

The solicitor states with regard to this definition that it "does not require that a water resistant fabric be completely impervious to water emphasis in original." The answer to this objection again lies in appellant's use of the words "resistant to water and heat." We might ask in what sense is plastic resistant to heat? Completely? Obviously not. In what sense is vegetable parchment resistant to water or heat? Completely? Obviously not. It is clear, therefore, that appellant did not intend, originally, that the words "resistant to water and heat" be absolute terms. In view of the above considerations, we find ourselves unable to attribute any particular significance, insofar as the instant "new matter" rejection is concerned, to appellant's cancellation of the words "treated cloth" from his specification.²

Since we are of the opinion that as originally filed, appellant's specification would have indicated to one skilled in the art that all suggested container materials were to be substantially non-porous, we hold that the insertion of this limitation expressly into the specification and claims did not involve "new matter."

The exact basis for the second ground of rejection is not entirely clear.

The examiner stated the essence of his rejection as follows:

"The specification is held to be incomplete, inadequate and not in accordance with Rule 71(b) in that it fails to describe completely a specific embodiment of the package on which appellant predicates patentability; namely it fails to even mention, let alone give specific data as to the size and number of openings."

The board, stating the above rejection substantially as did the examiner, referred to the fact that appellant's brief on appeal before that body stated: "that the number of the perforations may vary from 44 to 1,241 and that the size of the perforations may range from .0013 to .003 square inches for a particular type of rice." The board then said:

"This type of data, we believe, should have been included in the original specification in order to constitute compliance with Rule 71 (b) and to give proper guidance to one skilled in the art so that such persons could produce the article with a minimum amount of experimentation." Emphasis ours.

On reconsideration the board stated:

"It is not possible to derive any instruction from the specification which would be equivalent to the `best mode\' or the `specific embodiment\' of 35 U.S.C. 112 and Rule 71 (b)."

The solicitor's argument appears to be based on the thought that appellant should have "described in the specification a bag having a specified number and size of perforations," that this would be necessary to produce the appellant's invention with a minimum amount of "experimentation," and that if such information had been supplied, "the...