Application of Mayhew

• Decision Date: 15 January 1976
• Docket Number: Patent Appeal No. 74-608.
• Parties: Application of John T. MAYHEW.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

527 F.2d 1229

Application of John T. MAYHEW.

Patent Appeal No. 74-608.

United States Court of Customs and Patent Appeals.

January 15, 1976.

James J. Shanley, Washington, D. C., atty. of record, for appellant. Raymond N. Baker, Paul T. O'Neil, Shanley, O'Neil & Baker, Washington, D. C., of counsel.

Joseph F. Nakamura, Washington, D. C., for Commissioner of Patents. Fred E. McKelvey, R. V. Lupo, Washington, D. C., of counsel.

Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Associate Judges.

RICH, Judge.

This appeal is from the decision of the Patent and Trademark Office Board of Appeals sustaining the examiner's rejection of claims 1-27, 29-48, 51, and 52 of application serial No. 46,825, filed June 16, 1970, for "Method of Producing Iron-Zinc Alloy Coated Steel Strip and Product Thereof." The final rejection indicated that claims 49 and 50 would be allowable if in independent form. We affirm in part and reverse in part.

The original decision herein was handed down March 13, 1975, reaching the same result we now reach. March 28, 1975, appellant filed a Petition for Rehearing which we granted. Further oral argument was held October 8, 1975.

Our former opinion, withheld from publication, is hereby withdrawn. The following is the opinion of the court.

The Invention

The invention of all appealed claims but two is a method for the production of a corrosion-resistant, iron-zinc alloy coating on a steel strip. Referring to Fig. 2 of appellant's drawing, reproduced below in slightly modified form steel strip 16 is heated to approximately 1000°F. or greater, ordinarily considered higher than optimum, and passed, in the direction of the arrow, into a molten bath 56 of spelter of about 99% zinc containing up to .30% aluminum. The bath, "except for a defined minor portion specially located at its exit side, is maintained at approximately 900°F. to 950°F. or higher" by heat from strip 16 and other heat sources such as 63, as needed. Iron-zinc alloy is formed on the strip while it is submerged. After the strip passes around sink roll 50, the strip, now designated 52, travels into cooled spelter zone 54, containing coolers 56', 58, 60, and 62 which control the temperature of zone 54 to between 800°F. and 860°F., depending on the gauge of the strip. The cooled zone functions to terminate alloying. Strip 52 then passes between heated gas jets 66, 68 which remove the spelter, exposing the iron-zinc alloy surfaces.

Claim 1, the sole independent claim, reads:

1. Continuous-strip method for producing coated steel strip comprising

(a) forming a molten galvanizing bath containing aluminum additions up to 0.30% by weight,

(b) introducing heated steel strip into the molten galvanizing bath, the strip entering the bath being at a temperature higher than the temperature of the molten spelter in the bath thereby adding heat to the bath,

(c) maintaining molten galvanizing spelter in the bath at a temperature of approximately 890°F. to approximately 950°F.,

(d) moving the heated strip through the bath toward an exit side of the bath,

(e) forming an iron-zinc alloy coating on the moving strip by contacting the moving strip with molten spelter at a temperature of approximately 890°F. to approximately 950°F.,

(f) delivering the strip from the exit side of the bath, the delivered strip having an inner iron-zinc alloy coating and an outer molten galvanizing spelter coating, and

(g) directing gas under pressure against at least one side of the coated steel strip upon delivery of the coated steel strip from the molten galvanizing bath to remove the molten galvanizing spelter coating from the iron-zinc alloy coated steel strip on the one side.

All of the remaining method claims, and hence the two product-by-process claims, depend, directly or indirectly, from claim 1, adding various limitations thereto.

The Rejections

The examiner rejected the appealed claims, in various groups, on five different grounds. The board reversed one ground, leaving four which are as follows:

(1) Claims 1, 24-27, 29-46, and 52 because they fail to recite any cooling zone;

(2) Claims 2, 3, 6, 7, 9, 10, 12, 15, 16, 18-21, 23, and 51 because, though a cooling zone is specified, the location of the portion of the bath cooled is not specified;

(3) Claims 4, 5, 8, 11, 13, 14, 17, 22, 47, and 48 because, though a cooling zone and its location are specified, neither the temperature range in that zone nor its function is stated;

(4) Claims 51 and 52 because they are "improper" product-by-process claims.

The Examiner's Answer states that the foregoing rejections are under 35 U.S.C. § 112 "for the reasons set forth in paragraph 11 of Paper No. 2." Continuing, it reads (all emphasis ours):

The examiner contends that what applicant refers to as his "invention covered by the appealed claims" * * is not supported by the specification disclosure without the step of cooling a zone of the metal at the exit side of the bath.

* * * * * * The examiner contends that what applicant refers to as the "best mode" of carrying out his invention is in fact the only mode supported by the specification disclosure.

* * * * * *

Whether applicant's invention is considered to be mechanical or physical appears to be immaterial. The claims of mechanical as well as chemical cases must be "fairly supported by the original application".

Although the examiner failed to specify what paragraph of § 112 he was relying on—the better practice being to so specify in order to comply fully with the spirit of § 132—it is clear that he was relying on § 112, paragraph one, which requires that claims be supported by an enabling disclosure. We have previously given extended consideration to similar ambiguous reliance on § 112 in In re Borkowski, 422 F.2d 904, 57 CCPA 946 (1970), and In re Moore, 439 F.2d 1232, 58 CCPA 1042 (1971). Reference to paragraph 11 of Paper No. 2, the examiner's final rejection, confirms that his rejection was, except for the product-by-process claims, based on insufficiency of the specification, for lack of enabling disclosure, to support the claims, which is a paragraph one rejection. Paragraph 11 further expounds on the rationale of the rejection. With emphasis added by us, it reads in pertinent part:

11. Claims 1-48, 51 and 52 are rejected under 35 U.S.C. 112 as failing to properly define the invention. Claims 1, 24-46 and 52 are based on an insufficient disclosure since applicant has disclosed that—cooling a portion of the molten spelter at the exit side of the bath to a temperature of approximately 800°F. to approximately 860°F.and—delivering the steel strip from the bath upon passage through the zone of cooled spelter—are essential steps in his inventive process. Claims 2, 3, 6, 7, 9, 10, 12, 15, 16, 18-21, 23 and 51 are based on an insufficient disclosure since applicant has disclosed that the zone of cooled spelter is located at the strip exit side of the bath. * * * Claims 4, 5, 8, 11, 13, 14, 17, 22, 47 and 48 are based on an insufficient disclosure since applicant has failed to specify the temperature of the zone of cooled spelter to be approximately 800°F. to approximately 860°F. or the function of the cooled spelter. * * * Claims 51 and 52 are improper product-by-process claims. Product-by-process claims are only permitted upon a showing by applicant that the product can only be described by referring to the process of making it. Note M.P.E.P. 706.03(e). It is noted that the resulting product was claimed in the parent application S.N. 375,264 without referring to the method of making the product.

In affirming these rejections, the board added nothing to the examiner's reasoning which requires notice. It simply agreed with him point by point, except as to the one ground it reversed, which we have omitted from paragraph 11, above.

OPINION

As the examiner noted in his Answer, the only mode of operation of appellant's process disclosed in his specification involves the employment of a cooling zone in the spelter bath at the point where the steel strip exits from the bath. Notwithstanding this fact, appellant asserts that his specification is enabling with regard to the formation of the desired alloy coating without the employment of a cooling zone, or without specially locating it.

To achieve the desired alloy coating,¹ appellant discloses two criteria. First, the iron must be alloyed with zinc out of contact with an oxidizing atmosphere. In other words, the alloying operation must be performed wholly within the spelter bath before the strip enters the surrounding atmosphere. Second, the main body of the spelter bath is kept at a temperature higher than what is ordinarily considered optimum. Appellant has taught how to achieve both conditions by employing a cooling zone at the point where the strip leaves the bath. Without a cooling zone at the exit side, the unusually high bath temperature would cause alloying to continue when the strip leaves the bath (due to its high temperature) and result, for various reasons, in an inferior alloy coating. Appellant's specification states that the "strip * * * and bath * * * are raised in temperature above what is ordinarily considered optimum coating temperatures. This is practicable because of special cooling apparatus, specially located." (Emphasis ours.)

Although appellant now strenuously argues that the cooling bath is optional, his specification not only fails to support this contention, but leads us, as it did the examiner and board, to believe that both it and its location are essential. We therefore conclude that claims which fail to recite the use of a cooling zone, specially located, are not supported by an enabling disclosure. Rejections (1) and (2), supra, will therefore be sustained.

The board further affirmed the examiner's rejection of certain claims, which we have designated (3), because they fail to recite the temperature of the zone of cooled spelter or the function thereof. We will not...