In re Dreshfield

• Decision Date: 29 April 1940
• Docket Number: 4283.,Patent Appeals No. 4282
• Citation: 110 F.2d 235,27 CCPA 1013
• Parties: In re DRESHFIELD (two cases).
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

27 CCPA 1013, 110 F.2d 235 (1940)

In re DRESHFIELD (two cases).

Patent Appeals Nos. 4282, 4283.

Court of Customs and Patent Appeals.

March 20, 1940.

Rehearing Denied April 29, 1940.

Edward B. Beale, of Washington, D. C., for appellant.

Howard S. Miller, of Washington, D. C., for the Commissioner of Patents.

Before GARRETT, Presiding Judge, and BLAND, HATFIELD, LENROOT, and JACKSON, Associate Judges.

HATFIELD, Associate Judge.

These are appeals from the decisions of the Board of Appeals of the United States Patent Office affirming the decisions of the Primary Examiner rejecting claims Nos. 1 to 5, inclusive, 8, 15, 16, and 17 in appellant's application, serial No. 152,194 (appeal No. 4282) for an alleged invention relating to improvements in dry rosin size, and claims Nos. 1 to 5, inclusive, and 8 in appellant's application, serial No. 8,472 (appeal No. 4283), for an alleged invention relating to improvements in dry rosin size.

In this court, counsel for appellant moved that the following claims be dismissed: Claim No. 1 in appeal No. 4282, and claims Nos. 1, 2, 3, 5, and 8 in appeal No. 4283.

The motion is granted.

This leaves for our consideration claims 2 to 5, inclusive, 8, 15, 16, and 17 in appeal No. 4282, and claim 4 in appeal No. 4283.

Claim 4 in the two appeals is identical; accordingly, the appeals may be disposed of in one opinion.

It may be said in explanation of the filing of the two appeals in this court containing identical or substantially identical claims to the same invention that appellant's application, serial No. 152,194 (involved in appeal No. 4282), was filed July 6, 1937, as a continuation in part of his application, serial No. 8,472 (filed February 27, 1935); that, according to the brief of counsel for appellant, application No. 152,194 (involved in appeal No. 4282) "was filed in order to include, as part of its disclosure, additional anti-oxidants which had been tested and found satisfactory subsequent to the filing of the parent application serial No. 8,472 involved in appeal No. 4283"; that both applications were finally rejected by the Board of Appeals, so far as the appealed claims are concerned, at approximately the same time; and that counsel for appellant filed in this court appeal No. 4283, which involves the parent application, for the reason, among others which need not be stated here, that it was "feared that acquiescence in the decision of the Board of Appeals in the parent case might work an unwelcome estoppel on the plea of res judicata." It should be further stated that the Primary Examiner allowed certain specific claims — Nos. 6, 7, and 9 to 14, inclusive, in appeal No. 4282, and Nos. 6, 7, 9, 10, and 11 in appeal No. 4283.

Claim No. 4 which is involved in both appeals, claim 8, and claims 15, 16, and 17, in appeal No. 4282 which are more specific than claims 4 and 8 are illustrative of the appealed claims. They read:

"4. A dry size resistant to oxidation comprising saponified rosin, free rosin and an antioxidant for the saponified and free rosin."

"8. A dry size resistant to oxidation comprising discrete, dry particles of rosin size containing an organic rosin-free antioxidant for rosin size."

"15. A dry rosin size resistant to oxidation comprising discrete particles of dried saponified rosin and as an antioxidant for the saponified rosin, an antioxidant aromatic amino compound having at least two of its amino hydrogen atoms replaced by aryl groups, the said dry size being characterized by its resistance to oxidation when subjected to the Mackay test for a period of about 48 hours.

"16. A dry rosin size resistant to oxidation comprising discrete particles of dried saponified rosin and as an antioxidant for the saponified rosin, an antioxidant aromatic amino compound, the said dry size being characterized by its resistance to oxidation when subjected to the Mackay test for a period of about 48 hours.

"17. A dry rosin size resistant to oxidation comprising discrete particles of dried saponified rosin and as an antioxidant for the saponified rosin, an antioxidant organic compound characterized by having at least one nitrogen atom and at least two aryl groups in the molecule, the said dry size being characterized by its resistance to oxidation when subjected to the Mackay test for a period of about 48 hours."

The reference relied upon by the Primary Examiner and the Board of Appeals in appeal No. 4283, and by the board only in appeal No. 4282, is: "Use of Rosin for Soap Manufacture," by Campbell, published in "Industrial and Engineering Chemistry," Vol. 26, No. 7, July 1934, pages 718 and 719.

As will be observed from the quoted claims, appellant's dry rosin size, which is resistant to oxidation, comprises, in addition to an antioxidant, saponified rosin (as stated in appealed claims 2, 8, 15, 16, and 17) saponified abietic acid (as stated in appealed claim 3), saponified rosin and free alkali (as stated in claim 5), or saponified rosin and free rosin (as stated in appealed claim 4). With the exception of appealed claims 15, 16, and 17, which will be hereinafter discussed, all of the appealed claims call broadly for a dry rosin size made resistant to oxidation by the presence of either "an antioxidant" or, as stated in some of the claims, "an organic rosin-free antioxidant."

Counsel for appellant contends that, owing to the fact that appellant was the first to produce a dry rosin size suitable for use in the paper industry for which he and a joint inventor received two patents — one for the dry rosin size (patent No. 2,134,912, issued November 1, 1938, on an application filed May 11, 1935), and the other for a method of making the same (patent No. 2,134,911, issued November 1, 1938, on an application filed May 11, 1935) — he is now entitled to claim broadly a dry rosin size made resistant to oxidation by means of the presence of an antioxidant; that prior to the issuance of those patents the rosin size used in the paper industry contained approximately 20 per centum of water and was in the form of paste; and that rosin size in paste form had certain disadvantages.

It is stated in the brief of counsel for appellant that sometime after appellant's dry rosin size was used commercially it was discovered that "contrary to all expectations, the dry size was unstable"; that it "possessed a tendency to decompose upon storage"; that "in one instance a very serious fire arising from spontaneous combustion was averted only by extreme diligence"; that appellant's dry rosin size was stabilized by adding an antioxidant, and is now commercially successful.

We find nothing of record to support such statements.

In each of appellant's involved applications it is stated that: "The dry forms of size, and particularly the type formed by spraying, are, however, open to a substantial objection in that they tend to oxidize in the presence of air. Where, as is not uncommon, some free rosin is contained in the size, there is a greater tendency to oxidize. Oxidation and consequent heating of dry size is deleterious to the size and generally undesirable where it is to be stored for any length of time, or shipped over any considerable distance."

In appeal No. 4283, in which only appealed claim 4 is involved, the Primary Examiner, in his statement to the Board of Appeals, stated, among other things, that: "The Campbell publication, page 719, last paragraph, states that rosin soaps and free rosin take up oxygen from the air, and this paragraph also states that rosin is an antioxidant for soap. * * * The Campbell publication, page 719, last paragraph, states that rosin soaps and free rosin take up oxygen from the air, and this paragraph also teaches the broad idea of adding an antioxidant (rosin) to soap."

In its decision in appeal No. 4283 the Board of Appeals stated that the examiner had held that there was no invention in the "broad concept of adding a suitable anti-oxidant to the size after it had once been discovered that the size was liable to oxidize," and, after some discussion of the reference of record, stated that it agreed with the views expressed by the Primary Examiner that "no invention was involved in the broad conception of adding an anti-oxidant to the saponified dry rosin size."

In a second decision made in response to appellant's motion for a rehearing, the Board of Appeals stated that claim 4 differed somewhat from the other claims there involved in that it called for "saponified rosin, free rosin and an antioxidant for both the free rosin and saponified rosin," and with reference to the hereinafter quoted excerpt from the Campbell reference said: "We believe it is fair to assume that this article tends to indicate that both rosin soaps and free rosin do oxidize, and we are still of the opinion that after appellant discovered that his rosin size tended to oxidize under certain conditions, no invention was involved in merely adding a suitable antioxidant to overcome this difficulty."

The statements contained in the Campbell publication to which allusion was made by each of the tribunals of the Patent Office read: "When exposed to the air, rosin soaps turn darker owing to the oxidation of the unsaturated rosin acids. But they do not become readily rancid from the oxidation of the animal or vegetable fatty acids present, since the rosin seems to take up the oxygen and prevent the fatty acids from becoming rancid. The rosin acts as an antioxidant or preservative. For this reason small amounts of rosin are added to laundry and toilet soap products to prevent rancidity." (Italics ours.)

In his statement to the Board of Appeals in appeal No. 4282, the Primary Examiner, among other things, said: "No references are cited, the rejection of the claims being based solely on the ground of undue breadth. * * * Applicant lists on pages 1 and 2 of the specification, fourteen specific compounds said to be found effective for the purpose described. However, the...