In re Gauerke, Patent Appeal No. 3674.

• Decision Date: 30 November 1936
• Docket Number: Patent Appeal No. 3674.
• Citation: 86 F.2d 330
• Parties: In re GAUERKE.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

86 F.2d 330 (1936)

In re GAUERKE.

Patent Appeal No. 3674.

Court of Customs and Patent Appeals.

November 30, 1936.

Ralph F. Miller, 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.

LENROOT, Associate Judge.

This is an appeal from a decision of the Board of Appeals of the United States Patent Office, affirming a decision of the examiner, rejecting all of the claims, numbered 1 to 14, inclusive, of appellant's application; the ground of rejection was the lack of patentability of the claims over the cited prior art.

Nine of the claims are product claims, the remainder being process claims. Claims 1 and 7 are illustrative of the claims and read as follows:

"1. An oil modified polyhydric alcohol-polybasic acid resin comprising a polyhydric alcohol ester of an organic polybasic acid and sunflower seed oil acids."

"7. A process which comprises heating a polyhydric alcohol, an organic polybasic acid and sunflower seed oil acids until resinification takes place."

The references cited are:

"Arsem, 1,098,776, June 2, 1914.

"Weber, 1,690,515, November 6, 1928.

"Kienle, 1,893,873, January 10, 1933.

"Kienle et al., `Alkyd Resins as Film-Forming Materials,' Journal of Industrial and Engineering Chemistry, April, 1929, pp. 349-352."

Appellant's claimed invention is concisely described by his counsel in the brief as follows: "The invention, which relates to improvements in a known type of synthetic resin, is effected by chemically modifying such resin with a specific vegetable or fatty oil instead of the fatty oils heretofore used as modifying agents for this type of resin. * * *"

As will be observed from the claims, the specific vegetable oil involved is sunflower seed oil.

The reference Arsem relates to resinous condensation products and process of making the same. It discloses the formation of resins from polyhydric alcohol and polybasic acid. As modifying ingredients there are disclosed, among others, stearic, palmitic, oleic acids, and mixtures of acids.

The reference Weber relates to a composition of matter containing a cellulose derivative. It discloses resins prepared from drying or semi-drying oils and their fatty acids, an organic acid other than the fatty acids from oils, and a polyhydric alcohol. Among the oils mentioned are soya bean, linseed, cocoanut, China wood, rapeseed, and corn.

The patent to Kienle relates to resinous condensation products and process of making them. It relates to resins of the polyhydric alcohol and polybasic acid type, and involves the use of an acid derived from a drying oil. Mentioned are China wood, linseed, or perilla oils, and oleostearic, linolic, or linolenic acids.

The article by Kienle et al. relates to alkyd resins which "include all those complexes resulting primarily from the interreaction of a polyhydric alcohol and polybasic acid." The article discloses that oxygen-convertible resins "* * * are prepared by replacing part of the polybasic acid with the necessary amount of an oxidizable, unsaturated, fatty acid or acids — for example, linoleic, linolenic, oleostearic acid, or, what is more economical, with the mixed fatty acids of any one of the drying oils." (Italics ours.)

The examiner, in rejecting the claims, held that the prior art showed the use of various specified drying oils, other than sunflower seed oil. With regard to the claimed superiority of appellant's product, that it has greater resistance to "after yellowing," the examiner held that differences were to be expected between the product resulting from the use of any one oil of the class shown in the prior art and the product resulting from the use of any other of such oils. He finally held that the use of a class of oils for the purpose was shown by the prior art, that appellant had merely used an oil of the same class, and that what he had done did not constitute invention.

Prior to consideration of the matter by the Board of Appeals, appellant filed, under rule 76 of the Patent Office, an affidavit by one James K. Hunt, being in effect a challenge of some of the statements made by the examiner. The case was remanded to the examiner, who held that said affidavit did not "have any particular pertinence to the rejection * * *." After limiting one statement in his former decision, not important here, the examiner concluded with the following: "The other averments may be conceded without altering the grounds of rejection previously given."

Upon appeal, the Board of Appeals affirmed the holding of the examiner, upon the grounds given by him, concluding as follows: "Sunflower seed oil and its properties are well known. We are persuaded that it did not require the exercise of the inventive faculty, in view of the teachings of the prior art references, to select this particular drying oil as a modifying agent of an alkyd resin. We are not satisfied that the alleged new result is anything more than a change in degree."

In appellant's brief, under the heading "The Issue," we find the following:

"* * * For the present purpose the statement of facts simply need be that the vegetable oils have been used in modifying the properties of the resins, and that the drying oils have been used when an air drying resin is wanted, and...