APPLICATION OF PALMER

• Decision Date: 16 December 1971
• Docket Number: Patent Appeal No. 8581.
• Citation: 451 F.2d 1100,172 USPQ 126
• Parties: Application of Robert A. PALMER.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

172 USPQ 126, 451 F.2d 1100 (1971)

Application of Robert A. PALMER.

Patent Appeal No. 8581.

United States Court of Customs and Patent Appeals.

December 16, 1971.

Charles Shepard, Rochester, N. Y., attorney of record, for appellant.

S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents; John W. Dewhirst, Sol., Washington, D. C., of counsel.

Before WORLEY, Chief Judge, and RICH, ALMOND, BALDWIN, and LANE, Judges.

LANE, Judge.

This is an appeal from the decision of the Board of Appeals affirming the examiner's final rejection of claim 17 of appellant's application serial No. 484,005, filed August 31, 1965, for "Encased Steel Building Block." The board held the claimed invention to have been obvious from the patent to Lambert¹ alone and sustained the rejection of the claim at issue under 35 U.S.C. § 103. We affirm.

The sole claim on appeal defines a building block comprised of a core made from a compressed automobile body or portion thereof encased in cement and reads as follows:

17. A building block for heavy construction purposes comprising a central crumpled metallic core composed essentially of a portion of a compressed and crumpled sheet metal automobile body, encased in a coating of cement covering all exterior surfaces of said central core and interlocked therewith, at least the major part of said crumpled metallic core being formed from integrally interconnected parts of a single automobile body.

Appellant's specification discloses that the core is made by stripping the automobile body of its heavy metal parts, heating the stripped body to burn out all combustible materials, working the body to produce cores of uniform weight and pressing the body to yield a compact solid mass composed mainly of steel. The core is then coated with cement to produce the claimed manufacture.

Appellant's specification further describes the two-fold purpose of the invention to be the manufacture of strong, large building blocks suitable for heavy duty construction as well as the utilization of junk automobiles "lying around open storage fields and junk yards by the thousands, which have produced such an unsightly condition widespread throughout the land * * *."

The Lambert patent, issued in 1921, disclosed structural building units made with a compact core of compressed "metal cans, containers and metallic receptacles of other kinds" completely covered with a protective coating of cement. Lambert also disclosed the use of waste sheet metal as core material.

The examiner finally rejected claim 17 as unpatentable over Lambert in view of another patent² under 35 U.S.C. § 103. The board rested its affirmance on Lambert alone and so that is the rejection before us. The board said:

The claim states that the metallic core is "a portion of a compressed and crushed sheet metal automobile body," however, it is not seen why this particular selection of a source of scrap sheet metal imparts patentability to the claim. Lambert discloses his source of scrap metal to be waste cans and the like. In reflecting on the many sources from which scrap metal can be obtained, discarded automobile bodies is certainly a prominent one.

Although at first blush it may appear that the claimed block would be vastly different from that disclosed by Lambert simply because of the differences in size and character between an automobile and a conglomerate of tin cans, the appealed claim recites a portion of an automobile body, and the specification teaches that the body may be weighed and cut down to give cores of uniform, but unclaimed, weight. Moreover, the Lambert claim 1 is drawn to a structural unit having a core of waste sheet metal vessels broadly and thus amounts to a teaching in the reference which suggests to one of ordinary skill in the art to look beyond tin cans for other sources of scrap metal.

We agree with the board that the selection of an automobile body as the source of the core material would appear to have been obvious. We think that the Patent Office made out a strong case of prima facie obviousness and the burden fell on appellant to rebut it, if he could, with objective evidence of nonobviousness In re Antle, 58 C.C.P. A. 1383, ___, 444 F.2d 1168, 1172 (1971).

Appellant urges in the way of rebuttal that the claimed structural unit is stronger than Lambert's principally because its core is comprised in major part of compressed metal "formed from integrally interconnected parts of a single automobile body" as opposed to separate entities brought together during compaction. If appellant intends by this argument to assert an improved and unexpected result as compared to the prior art, he has fallen short of supporting such a contention. Cf. In re Fenton, 59 C.C.P.A. Patent Appeal No. 8546, decided November 11, 1971; In re D'Ancicco, 58 C.C.P.A. 1057, 439 F.2d 1244 (1971); In re Lewis, 58 C.C.P.A. 1270, 443 F.2d 389 (1971). As the solicitor correctly points out, "There is no evidence by way of comparative tests to back up this assertion," and this argument is not so obviously technically sound that judicial notice can substitute for the missing evidence. Accordingly, the argument, without more, is entitled to little or no probative weight. In re Cole, 51 C.C.P. A. 919, 923, 326 F.2d 769, 773 (1964), and cases cited therein.

Appellant further argues that nonobviousness is shown by the expression of interest in the invention by persons presumably skilled in the art which is documented and has been introduced into the record. Appellant states that "the present invention * * * has been the subject of a contract from the Bureau of Mines of the Department of the Interior."³ The Bureau publicized the invention in a news release dated March 21, 1968. The news was apparently picked up by business magazines of general circulation, and by the fifth of April the appellant had received a number of letters generally praising the invention as described in the news release, inquiring as to details and, in some cases, suggesting potential contract interest.

The correspondence is impressive in substance and because of the spontaneity of the response. The correspondents apparently include construction firms, research organizations and industrial processors who would appear to be representative of the classes of persons who can be considered skilled in the art or arts directly and indirectly involved in the present invention. The issues raised by this evidence are its relevance and persuasiveness with respect to the ultimate question of obviousness under section 103.

Appellant has cited a number of cases in his brief and at oral hearing which generally indicate that this court, as well as other federal courts, has found patentable subject matter even where the invention is apparently simple in nature or quite "close," on the surface, to the prior art, but where the small difference has eluded those of ordinary skill in the...