Application of Patrick

• Citation: 189 F.2d 614
• Decision Date: 26 June 1951
• Docket Number: Patent Appeal No. 5760.
• Parties: Application of PATRICK.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

189 F.2d 614 (1951)

Application of PATRICK.

Patent Appeal No. 5760.

United States Court of Customs and Patent Appeals.

March 6, 1951.

Rehearing Denied June 26, 1951.

Joseph V. Meigs, New York City (Fisher & Christen, Washington, D. C., of counsel), for appellant.

E. L. Reynolds, Washington, D. C. (J. Schimmel, Washington, D. C., of counsel), for the Commissioner of Patents.

Before GARRETT, Chief Judge, and JACKSON, O'CONNELL, JOHNSON, and WORLEY, Judges.

JACKSON, Judge.

This is an appeal from a decision of the Board of Appeals of the United States Patent Office affirming that of the Primary Examiner finally rejecting all of the claims 16 to 23, inclusive, of an application for a patent, serial No. 549,811, filed August 16, 1944, alleging new and useful improvements "For Polythic Polyglycol Polybasic Acid Polymer."

The claims read as follows:

"16. Process which comprises reacting an akaline polysulfide with a condensation product obtained by condensing an organic polycarboxylic acid with a glycol said glycol having a hydroxyl group attached to each of two different carbon atoms and also having, in addition to said carbon atoms and said hydroxyl groups, the structure -CH2 SSCH2- "17. Process which comprises mixing an aqueous solution of an alkaline polysulfide with an aqueous dispersion of a condensation product obtained by condensing an organic polycarboxylic acid with a glycol said glycol having a hydroxyl group attached to each of two different carbon atoms and also having, in addition to said carbon atoms and said hydroxyl groups, the structure -CH2SSCH2-, and heating said mixture to cause reaction of the alkaline polysulfide with the said condensation product.

"18. Process which comprises mixing an aqueous solution of an alkaline polysulfide with an aqueous dispersion of a condensation product obtained by condensing an organic polycarboxylic acid with a glycol having the formula OH(CH2)nSS(CH2)nOH where n varies from 2 to 20 and heating said mixture to cause reaction of the alkaline polysulfide with the said condensation product.

"19. Process which comprises mixing an aqueous solution of an alkaline polysulfide with an aqueous dispersion of a condensation product obtained by condensing an organic polycarboxylic acid with a glycol having the formula OH CH2CH2SSCH2CH2OH and heating said mixture to cause reaction of the alkaline polysulfide with the said condensation product.

"20. Product made according to the process of claim 16.

"21. Product made according to the process of claim 17.

"22. Product made according to the process of claim 18.

"23. Product made according to the process of claim 19."

The application relates to polysulfide polymers characterized by recurring -SS-linkages in the chains thereof, each sulphur atom of the linkages being bound firmly to adjacent carbon atoms.

The claims were rejected by the Primary Examiner as unpatentable because of undue breadth and indefiniteness, as well as for insufficient disclosure in the specification.

It may be noted that the claims are directed to process and product.

Counsel for appellant make no contention that any one claim possesses any limitation by which it may be patentably differentiated from any other claim and, therefore, all of the claims stand or fall together.

In the decision of the Board of Appeals it was pointed out that the original description and claims of the application related to the production of the esterification product of the polythic glycol and polycarboxylic acid and also the polysulfide polymer resulting from after-treatment of such condensation product with an alkaline polysulfide.

All of the involved claims relate to the sulfide after-treatment and it is to that portion of the specification containing the description of the alleged invention said to be defined by the claims which we must look in order to make our decision. The only specific example of the process and product sought to be defined by the claims is as follows: "1. empirical molecular weight of the oil or product derived in the foregoing example is dispersed in water by any suitable means, e. g., by the use of a high speed agitator and a dispersion agent is necessary and the aqueous dispersion so obtained is treated with an equal molar ratio of, for example, sodium tetrasulfide and heated with agitation for a period of 1 hour, after which the dispersion is allowed to settle and the supernatant liquid is withdrawn. The dispersion can be readily washed by repeating treatment with water with intermediate settling out of the insoluble dispersion. When sufficiently purified, the material is treated with acid which causes coagulation to a rubber-like mass." (Italics supplied).

If any of the reasons for rejection by the tribunals below are found to be proper here, it will be unnecessary to discuss the other grounds.

Claim 19 was considered below as illustrative of the involved subject matter. It may be observed that the claim calls for a mixing of an aqueous solution of an alkaline polysulfide with an aqueous dispersion of an organic carboxylic acid with a glycol having the formula OH CH2CH2SSCH2CH2OH and heating the mixture so that a reaction is created of the alkaline polysulfide with the condensation product.

We find, as did the examiner and the board, that in both the claim and in the description of the alleged invention there is nothing to indicate what appellant means by the term "heating." Therefore, the tribunals below held that the use of that term is indefinite in that no temperature nor range of temperatures is given in explanation of the term and, therefore, that the application fails to meet the statutory requirement providing for a full, clear, concise, and exact disclosure of the claimed invention.

It is contended that a worker skilled in the art is aware of what such temperature should be in order to constitute heating and that therefore such knowledge would be supplied by such worker and that a definite disclosure of a temperature or temperatures is not necessary. It is further contended that any heating between room temperature and below the boiling point of water could be used. The board observed such a range to be a wide one and was of opinion that the requirements of R.S. § 4888, 35 U.S.C.A. § 33, would require a statement of a specific temperature or temperatures.

Subsequent to the decision of the board, a petition for reconsideration was filed by counsel for appellant. Together with such petition was an affidavit which was not accepted by the board. In its action on the petition the board found no reason to make any change in its former decision.

Several patents were listed but not set out in the petition and we are asked by counsel for appellant to take judicial notice of them because, it is stated, such notice would indicate to us that the reaction set out in the claims will occur at any common temperature and that therefore it was not necessary for appellant to make any specific disclosure thereof.

We are of opinion that the affidavit is not properly before us for consideration. In re Ayers, 154 F.2d 182, 33 C.C.P.A., Patents, 874; In re Ripper, 171 F.2d 297, 36 C.C.P.A., Patents, 743.

We are further of opinion that we may not judicially notice specific patents under circumstances such as exist here. In re Stauber, 45 F.2d 661, 18 C.C.P.A., Patents, 774.

Counsel for appellant has not included the listed patents in the present record and statements contained concerning such patents in an affidavit are not satisfactory evidence of what those patents are.

The theory proposed by counsel for appellant that it would be obvious to one skilled in the art to use a proper temperature for the reason that any common temperature would be operative, is not the test. Brand v. Thomas, 96 F.2d 301, 25 C.C.P.A., Patents, 1053; In re Richardson, 143 F.2d 616, 31 C.C.P.A., Patents, 1152.

Clearly, if knowledge of the temperature was common to the art and available in prior patents there is no reason why appellant could not and should not have referred to them in his specification. Without such reference an essential part of the process is left entirely to conjecture and experiment.

It must be remembered that there is nothing in the specification to indicate that any heating range from room temperature to the boiling point of water is or may be used. All that is stated in the specification is, as is shown in our quotation therefrom, that the "aqueous dispersion * * * is heated with agitation for a period of 1 hour * * *." We agree with the tribunals below that the disclosure of merely "heating" in the specification is not sufficient to teach the art the use of the process with the statutory degree of particularity required by the statute. In re Jolly, 172 F.2d 566, 36 C.C.P.A., Patents, 825.

Since we are of opinion that the application lacks sufficient disclosure of the temperature required by the process, we are constrained to hold that the tribunals of the Patent Office did not err in rejecting the claims upon that ground. Therefore, it is not necessary to discuss the other grounds of rejection.

For the reasons given herein, the decision of the Board of Appeals is affirmed.

Affirmed.

GARRETT, Chief Judge, (specially concurring).

In the contemporaneously decided case of Ex parte Dalton, 188 F.2d 170, 38 C.C.P.A., Patents, ___, a specially concurring opinion has been filed relating to the matter of the affidavits discussed there as here in both the majority and dissenting opinions. The issue in all material aspects is the same here as there and reference is made here to the specially concurring opinion there filed.

O'CONNELL, Judge (dissenting).

The two cases upon which the majority relies to the effect that the affidavit here in issue is not properly before the court were rendered obsolete by the action of the commissioner when he abolished the rule of those cases and all of the red tape which its enforcement entailed in...