In re Ellis, Patent Appeal No. 3757.
| Decision Date | 07 December 1936 |
| Docket Number | Patent Appeal No. 3757. |
| Citation | 24 CCPA 759,86 F.2d 412 |
| Parties | In re ELLIS. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Sol Shappirio, of Washington, D. C., for appellant.
R. F. Whitehead, of Washington, D. C. (Howard S. Miller, of Washington, D. C., of counsel), for the Commissioner of Patents.
Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
Appellant here brings before us for review a decision of the Board of Appeals of the United States Patent Office, affirming the decision of the Examiner rejecting five claims, numbered, respectively, 16, 46, 47, 49, and 50 in appellant's application for patent "For a Resinous Complex of the Urea Type." The application was filed February 5, 1930, being serial No. 426,192. A number of claims stand allowed.
The appealed claims are hereinafter set forth in full.
The references relied upon are a patent to appellant No. 1,536,882, issued May 5, 1925, and an abandoned application of appellant, entitled "Laminated Pressboard and Multi-Colored Articles and Process of Making Same," filed October 9, 1924, being serial No. 742,719. This application was prosecuted before all the proper tribunals of the Patent Office, being by them rejected. After the adverse decision of the Board of Appeals, appellant gave notice of, and filed, suit in equity in the Supreme Court of the District of Columbia under R.S. § 4915, as amended (35 U.S.C.A. § 63), but failed to prosecute same. It appears from the record before us that the suit was dismissed "for want of prosecution" May 14, 1934. So, it had become an abandoned application at the time of the Examiner's final decision in this case on October 29, 1934, and is so referred to in the brief and oral argument before us on behalf of appellant.
Claims 16, 49, and 50, as will be seen, relate to articles of manufacture carrying tenacious veneer of urea resins. Claim 46 is limited to the method of treating such veneered articles to render them highly water resistant. Claim 47 is the same as 46 except that it is not limited to "veneered" articles.
As the case comes to us, all the appealed claims stand rejected as presenting nothing patentably different from subject matter rejected as unpatentable in the abandoned application. Specifically, appealed claim 16, according to the Examiner's statement after the appeal to the Board, was compared with and rejected by him upon claim 17 of the abandoned application; appealed claims 46 and 47 were compared with and rejected by him upon claims 18 and 19 of the abandoned application, and appealed claims 49 and 50 were compared with and rejected by him upon claims 20 and 21 of the abandoned application.
Appealed claims 16, 49, and 50 come before us also rejected upon appellant's prior patent 1,536,882. That was the only ground specifically mentioned by the Board as to appealed claim 16, although it did not overrule the other ground applied by the Examiner. Hence, the other ground remains in the case. In re Wagenhorst, 64 F.(2d) 780, 20 C.C.P.A.(Patents) 991. As to claims 49 and 50 the Board applied the patent as a ground of rejection which ground was in addition to that specifically applied by the Examiner.
As to the ground upon which all the claims stand rejected under the Board's decision (that of lack of patentability over subject matter held unpatentable in the abandoned application), we, for convenience in comparison, here insert the appealed claims and the specified claims of the abandoned application in parallel columns:
Appealed Claims. Claims of Abandoned Application
16. An article of manufacture carrying 17. A process which comprises impregnating
a tenacious translucent surface veneer of paper with urea formaldehyde material
urea resin and cellulose fiber inter-reacted drying in an oven at 60 to 70°C. for
to substantial disappearance of fiber. fifteen minutes, and hot pressing the dried
46. The process of producing veneered material
articles of manufacture which comprises 18. A molded article of paper and urea
applying thereto a molding urea resin composition, formaldehyde material baked at a mild
heat treating the composition at a heat to improve its resistance to water
temperature of from 100-150°C. to cause 19. A pressed sheet of paper and urea
setting, and baking the heat set composition formaldehyde material baked at 60 to 70°
until its water resistance is substantially C. for at least half an hour to improve its
increased. waterproof quality
47. The process of producing water resistant 20. A baked, molded article from paper
molded urea resin articles which and urea resin.
comprises heating a urea resin composition 21. A baked molded article from paper
to cause setting, and baking the heat set and urea formaldehyde resin.
composition at a temperature lower than
that used in the setting operation until the
water resistance of the material is substantially
increased.
49. An article of manufacture carrying
a tenacious veneer of a urea-formaldehyde
type condensation product.
50. An article of manufacture carrying
a substantially water resistant, tenacious,
translucent surface veneer of a urea-formaldehyde
type resin.
In the argument and brief before us, on behalf of appellant, emphasis is placed upon the circumstance that during a considerable period, while the application was pending in the Patent Office, the claims on appeal seem to have been regarded by the Examiner as allowable. Also, it is said that the Board of Appeals which passed upon on appellant's abandoned application was a different Board, meaning thereby, we presume, that it was composed of a different personnel from that which passed upon the instant application, and that in the decision in the...
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