APPLICATION OF MAYHEW
| Decision Date | 09 August 1973 |
| Docket Number | Patent Appeal No. 8954. |
| Citation | 481 F.2d 1373 |
| Parties | Application of John T. MAYHEW. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
James J. Shanley, Washington, D. C., attorney of record, for appellant. Raymond N. Baker, Washington, D. C., of counsel.
S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Fred E. McKelvey, Washington, D. C., of counsel.
Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE, Judges, and ALMOND, Senior Judge.
This is an appeal from the decision of the Patent Office Board of Appeals sustaining the examiner's rejection under 35 U.S.C. § 112 of claims 12 and 16-20 of appellant's application1 entitled "Hot-Dip Metal Coating Method and Apparatus." In his brief before this court, appellant has requested that the appeal be withdrawn with respect to claims 12 and 16. Accordingly, the appeal is dismissed as to those claims. We reverse as to claims 17-20.
Appellant regards his invention to be an improvement for "continuous-strip molten metal coating operations." The coating operation referred to is the process of galvanizing metal, usually but not necessarily steel. Basically this process involves advancing a preheated continuous strip of metal through a bath of molten metal. Zinc comprises greater than 98 percent of the bath and the molten metal is referred to in the art as "galvanizing spelter."
The strip to be coated is preheated for annealing and cleaning purposes and these require that the strip be heated to a temperature that exceeds the melting point of the spelter. Because of this pretreatment, the advancing metal strip provides all the heat that is required to maintain the spelter in a molten state.
As the rate at which the strip is advanced into the bath increases, the temperature of the spelter increases and it may become overheated. According to the specification, this affects the efficiency of the galvanizing process since the usual measures taken to remedy this situation are to stop or slow the introduction of metal strip into the bath. This, of course, reduces the amount of strip that can be coated in a given time.
The specification enumerates several problems that are said to arise when the spelter becomes overheated. These include thinning of the spelter, draping of the coating applied, and uneven, nonuniform coating of the metal surface. Appellant proposes to solve these problems by immersing cooling means in the bath. Therefore, as measured by claims 17 and 20, the broadest claims on appeal, appellant regards his invention to be:
Other than the underlined portions, the elements of these claims are those known to the prior art. Claims 18 and 19 depend from claim 17 and add limitations not pertinent to our decision.
The rejection of these claims as variously expounded by the examiner and board grows out of the fact that appellant's specification sets forth but a single embodiment of the invention. This embodiment can best be seen by considering Fig. 2 of the specification set forth below:
In Fig. 2, preheated strip 34 is shown being introduced into bath 36. It passes around roll 40 and then travels upward through a zone of cooled spelter 44, defined by the broken lines. This zone is created by circulating a coolant through conduits 46, 48, 52 and 54 immersed in the bath. Rolls 41 and 42 are used to control the thickness of the coating applied to the metal.
No embodiments are specifically described in the specification wherein cooling means are located in any position but that adjacent to the point where the strip leaves the bath. Furthermore, the specification does not explicitly state that the cooling means can be located anywhere in the bath.
The examiner based his rejection under section 112 on the ground that the claims in question were "indefinite." The board agreed with the statutory basis for the rejection but not with the reasoning behind it, saying:
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Application of Armbruster
...which "describes" does not necessarily also "enable" one skilled in the art to make or use the claimed invention. See In re Mayhew, 481 F.2d 1373 (Cust. & Pat.App.1973). However, this court has made it clear that the Patent and Trademark Office must substantiate its rejection for lack of en......
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