Application of Glass

• Decision Date: 28 February 1974
• Docket Number: Patent Appeal No. 9077.
• Citation: 492 F.2d 1228,181 USPQ 31
• Parties: Application of John P. GLASS.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

181 USPQ 31, 492 F.2d 1228 (1974)

Application of John P. GLASS.

Patent Appeal No. 9077.

United States Court of Customs and Patent Appeals.

February 28, 1974.

John F. A. Earley, Jr., Philadelphia, Pa., attorney of record, for appellant.

Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents; Jere W. Sears, 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 examiner's rejection of all claims remaining in application serial No. 664,879 filed August 31, 1967, entitled "Whiskers." We affirm.

The Invention

The term "whiskers" is the technical name for long, needle-like, linear crystals grown artifically from the vapor phase of such crystal-producing materials as aluminum oxide, silicon nitride, graphite, boron, sapphire, etc.¹ The appealed claims are directed to both apparatus and method. The whiskers are said to have very high strength and according to one prior art reference² have utility for reinforcing refractory materials. The application contains the following drawing:

The description in appellant's specification reads:

* * * there is shown a heated chamber 11 having a mixer chamber 12 which is positioned above a heated vertical cylinder 13. A precipitating zone 14 is formed within cylinder 13, and the temperature within precipitating zone 14 is hotter at the top and cooler at the bottom since a temperature gradient is maintained within precipitating zone 14 by heating means 15 which is positioned along cylinder 13.

The whisker-producing vapor is mixed in a turbulent mixer zone 16 in chamber 12, and the material to be mixed is introduced into chamber 12 through jet nozzles 17-20 which are connected to ingredient containers 23-26 by conduits 27-30 to control the flow of ingredients passing there-through.

An electron gun 37, which may be a radioactive cobalt gun, is positioned beneath cylinder 13 and is adapted to discharge electrons into the vapor in precipitating zone 14.

A collector 38 is positioned beneath cylinder 13 for collecting the whiskers formed in precipitating zone 14.

In operation, ingredients A, B, C, and D are passed from ingredient containers 23-26 through metering valves 33-36 and conduits 27-30 and are sprayed through jet nozzles 17-20 into turbulent mixer zone 16 of chamber 12 where the ingredients are thoroughly mixed together. The mixture is then passed downwardly into heated vertical cylinder 13 and precipitating zone 14. Gradient heating means 15 provides a temperature gradient within precipitating zone 14 and forms an optimum supersaturation zone 42 somewhere within precipitating zone 14.

It is to be noted that optimum zone 42 is created within precipitating zone 14 without exactly controlling conditions of temperature, pressure and supersaturation in a selected space. The vapor itself finds the optimum zone 42 by passing through a zone which is above optimum conditions, then passing through the optimum zone 42, and then passing through a zone which is below optimum conditions.

Appellant claims the above described apparatus and the method implicit in said description in claims of varying scope and nothing would be added by setting forth typical claims, particularly in view of the ground of rejection discussed below.

The Rejections

The principal rejection affirmed by the board applies to all claims and is under 35 U.S.C. § 112, first paragraph.³ It is that the claims are unsupported because the specification contains an inadequate, fatally defective disclosure in that it would not enable any person skilled in the art to practice the invention claimed. In particular, as pointed out by the examiner, appellant acknowledges that at least proper temperature, pressure, and vapor saturation conditions are necessary to precipitate a whisker from a vapor, yet none of these parameters are given in the general description and no specific example is provided. The examiner and the board both felt that appellant had also failed to comply with the "best mode" requirement of § 112, perhaps because there is no specific example. Numerous terms used are alleged to be unclear in their meaning and unexplained, such as "whisker-producing material," "optimum supersaturation," and "above" and "below" optimum supersaturation. Moreover, the examiner felt that the last two terms were used in the opposite senses to what they normally connote and were not only indefinite but confusing. He also found that the terms "A, B, C, and D" describing ingredients are not defined and do not refer to any particular materials. He found the intensity of the electrostatic charge, which he considered to be a matter of importance to whisker growth, if not critical, to be undisclosed. The board reversed as to the term "whisker-producing material," since it felt it would be understood by those skilled in the art, but otherwise affirmed this rejection on the ground of incomplete disclosure.

Certain claims stand rejected on the ground that they are indefinite under the second paragraph of § 112, and some claims in the same group are also rejected under § 103 on a prior art patent. We find it unnecessary to reach these rejections.

Appellant's Arguments

Essentially, appellant contends that his specification is sufficient and that those skilled in the art would be enabled thereby to practice his invention, thus disagreeing with the opinion of the examiner that they would not be. In support of his contention, appellant introduced in his reply brief before the board, filed in response to alleged new arguments in the Examiner's Answer, copies of four patents in the crystal-growing art, to show the knowledge of the art at the time he filed. All four of these patents issued to Lexington Laboratories, Inc., Cambridge, Massachusetts.⁴ Three were on the inventions of Campbell, Nos. 3,418,076, 3,449,071, and 3,449,147. The fourth was on the invention of Kingery et al., No. 3,365,316. Each of the four patents issued subsequent to appellant's filing date, but each had a filing date earlier than appellant's, so that had it been relied on by the Patent Office as prior art — which none was — it would have been available as a reference under 35 U.S.C. § 102(e). The board, which alone had these patents before it, held that they could not be accepted as showing the state of the art as of appellant's filing date since they issued thereafter and refused to consider them. Appellant says in his brief before us that they should be considered. He argues:

It would be unfair if the Patent Office were permitted to rely on these four patents as prior art, and the applicant were denied this right.

He then proceeds to quote from and to rely on them.

OPINION

We will first dispose of the last-mentioned argument. The right of the Patent Office to rely on prior United States patents as "prior art" under § 102(e) is pursuant to the rationale of the case of Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390, 46 S.Ct. 324, 70 L.Ed. 651 (1926), which that section codified. The rationale was that the patentee of the patent in suit could not be the first inventor and have a valid patent if the invention had been described in another's patent, the application for which had been filed before the patentee's date of invention. The Court applied the "fundamental rule * * * that the patentee must be the first inventor," that is to say, the patentee of the patent there in suit. (The prior statutes from which the Court concluded one must be the first inventor to obtain a valid patent were RS 4886 and RS 4920.) Under that rationale, and as a matter of common sense, it is clear that the contents of a patent application which may be available as "prior art" under § 102(e) to show that another was the first inventor may not have been known to anyone other than the inventor, his attorney, and the Patent Office examiner, and perhaps the assignee, if there was one, until it issued as a patent. As of its filing date it does not show what is known generally to "any person skilled in the art," to quote from § 112. On the other hand, § 112 requires an applicant to so describe his invention as to enable any person skilled in the art to practice it, the purpose being to make the invention understandable to all such persons as soon as the patent issues. Sections 112 and 102(e) rest on different foundations, serve different purposes, and are not comparable. There is nothing "unfair" about the situation. The board was right in refusing to consider the patents cited by appellant and we, likewise, refuse to consider them.

Appellant's attempt to use the disclosures of the four patents which issued after his filing date raises a subsidiary question: If a disclosure is insufficient as of the time it is filed, can it be made sufficient, while the application is still pending, by later publications which add to the knowledge of the art so that the disclosure, supplemented by such publications, would suffice to enable the practice of the invention? We think it cannot. The sufficiency must be judged as of the filing date. Cf. In re Argoudelis, 434 F.2d 1390, 58 CCPA 769 (1970), particularly Judge Baldwin's concurring opinion, and In re Hawkins, 486 F.2d 569 (Cust. & Pat. App.1973). 35 U.S.C. § 132 prohibits adding any "new matter" to the disclosure after filing. Moreover, the filing date becomes a date of constructive reduction to practice in determining priority of invention and this should not be the case unless at that time, without waiting for subsequent disclosures, any person skilled in the art could practice the invention from the disclosure of the application. If information to be found only in subsequent publications is needed for such enablement, it cannot be said that the disclosure in the application evidences a completed invention. We left the above-stated subsidiary question open in In re Barrett...