Application of Moreton

• Decision Date: 15 March 1961
• Docket Number: Patent Appeal No. 6665.
• Citation: 288 F.2d 708,129 USPQ 227
• Parties: Application of Douglas H. MORETON.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

129 USPQ 227, 288 F.2d 708 (1961)

Application of Douglas H. MORETON.

Patent Appeal No. 6665.

United States Court of Customs and Patent Appeals.

March 15, 1961.

Francis C. Browne, Washington, D. C. (William E. Schuyler, Jr., Andrew B. Beveridge, Joseph A. DeGrandi, Washington, D. C., and Gerald H. Peterson, Santa Monica, Cal., of counsel), for appellant.

Clarence W. Moore, Washington, D. C. (Joseph Schimmel, Washington, D. C., of counsel), for the Commissioner of Patents.

Before WORLEY, Chief Judge, and RICH, MARTIN and SMITH, Judges, and Judge WILLIAM H. KIRKPATRICK.¹

RICH, Judge.

This appeal is from the affirmance by the Patent Office Board of Appeals of the rejection of claims 2, 3, 8, 9, 13, and 14 of application Ser. 333,605, filed January 27, 1953, entitled "Method of Hydraulic Power Transmission and Lubrication." At the argument appellant's counsel withdrew claims 2, 3, and 13. The rejection is based on two references:

                  Caprio      2,245,649      June 17, 1941
                  French
                  Patent        856,487      Mar. 23, 1940
                

The first question before us is, what did the appellant invent? We next have to determine whether that invention is patentable in view of the prior art. We turn to the application for a description of the invention.

Appellant's specification first sets out the necessity of using, in many hydraulic systems, a hydraulic fluid which is suited both to the transmission of power and to the lubrication of various relatively moving parts of the system which are in frictional engagement, such parts occurring in such things as pumps, valves, pistons, cylinders, fluid motors, etc. The surfaces in frictional engagement may be of iron, steel, bronze, and natural or synthetic rubber, in any combination. The fluid must also have proper chemical and physical characteristics, such as viscosity, density, stability, non-flammability, non-toxicity, and lubricity. The requirements in many uses, for example in aircraft, may be "stringent." In short, the fluid should be well suited for power transmission in typical hydraulic systems and should also be a good lubricant for the moving parts it has to lubricate.

The statement of the invention is this:

"In accordance with my invention a method has been discovered involving a new use of cresyl diphenyl phosphate which makes it possible to transmit power in and lubricate the frictional parts of such hydraulic systems, and particularly in such combination including the lubrication of a combination of particular frictional surfaces with the same fluid.

* * * * * *

"Although cresyl diphenyl phosphate is preferred as described above, phenyl dicresyl phosphate also may be used, or mixtures of these phosphates. Thus, my invention includes the triaryl phosphates containing both phenyl and cresyl radicals." Emphasis ours.

Thus the invention, broadly described, is, as appellant himself indicates, a new use for two specific, closely related, triaryl phosphates, as hydraulic fluid in admittedly old hydraulic systems. But since one cannot claim a new use per se, because it is not among the categories of patentable inventions specified in 35 U.S. C. § 101, it is claimed as a method, as permitted by 35 U.S.C. § 100(b). This mere matter of form should have no effect on patentability. Casting the invention in terms of method, however, appellant puts great emphasis on certain elements or frictional surfaces present in the hydraulic system, as will be seen in the appealed claims, which we have broken up into elements, as follows:

"Claim 14

"In the method of operating the hydraulic system of an aircraft having

"A an axial-piston pump therein for pumping hydraulic fluid through and supplying power for said system at a pressure of 3000 lbs. per square inch on said fluid of said system,

"B said system including valves, operating pistons and cylinders, and elastomeric packings, including the frictional surfaces of

"a steel-on-steel,

"b steel-on-bronze and

"c steel-on-butyl rubber

"lubricated by said hydraulic fluid,

"C the improvement which comprises operating said system and simultaneously lubricating said frictional surfaces with a fluid comprising a triaryl phosphate in which the aryl radicals are both cresyl and phenyl.

"Claim 8

"The method as defined in claim 14 in which said phosphate is cresyl diphenyl phosphate.

"Claim 9

"The method as defined in claim 14 in which said phosphate is phenyl dicresyl phosphate."

Claims 8 and 9 are specific to the two triaryl phosphates which the specification discloses as appellant's hydraulic fluid and claim 14 is generic thereto. Except for this difference, the claims are identical and stand or fall together. No novelty is claimed for any method in the manipulative sense and it is transparently obvious that the only invention sought to be covered by the above claims is the use in an old hydraulic system, which is no part of the appellant's invention, of specific lubricating fluids.

The assertion of the specification is that "unexpected" results are obtained by the use of the fluids of the claims but it is not stated what those results are other than to say that the fluids claimed are "surprisingly satisfactory." While the presence of such statements in a specification is neither surprising nor unexpected, they carry no weight in the absence of something concrete to support them. The essence of the disclosure is that these fluids have all of the desired properties, nothing more.

The specification, the claim language, and the argument before us appear to be built up on the fact, developed in the specification, that airplane hydraulic systems commonly utilize as a source of hydraulic power a Vickers Axial-Piston Pump. Most helpful and instructive cutaway specimens of such pumps were used at the argument to demonstrate the fact that they themselves contain, without reference to the rest of the hydraulic system, all of the frictional surfaces a, b, c specified in the claims. Surface a is illustrated by ball-bearings, surface b by steel pistons in bronze cylinders and other bronze-to-steel bearing surfaces (which we may say is extremely common in machinery bearings generally), and c by a shaft seal on the pump drive shaft which is said to have a sealing element of butyl rubber. Great emphasis is placed on the...