In re Gebauer-Fuelnegg, Patent Appeal No. 4490.

• Decision Date: 02 July 1941
• Docket Number: Patent Appeal No. 4490.
• Citation: 50 USPQ 125,121 F.2d 505
• Parties: In re GEBAUER-FUELNEGG et al.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

50 USPQ 125, 121 F.2d 505 (1941)

In re GEBAUER-FUELNEGG et al.

Patent Appeal No. 4490.

Court of Customs and Patent Appeals.

July 2, 1941.

Zabel, Carlson, Gritzbaugh & Wells, of Chicago, Ill. (Edward C. Gritzbaugh and Foster York, both of Chicago, Ill., of counsel), for appellants.

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

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

JACKSON, Associate 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 rejecting all of the claims of an application for a patent for certain new and useful improvements in a "Transparent Sheet Material and Coating Therefor." The claims are directed to a product and a process of manufacturing the same.

Claims 33 to 35 inclusive, 45 to 47 inclusive, 67 and 68 were rejected on the ground that they are not supported by sufficient disclosure in the application as filed. Claims 36 to 43 inclusive were rejected as involving new matter.

Claims 33 and 41 are illustrative and read as follows:

"33. A thin flexible sheet material coated with a moisture resistant, adherent and heat sealing composition which is non-tacky at ordinary temperatures comprising a major proportion of a rubber resin (pliolite), and a minor proportion of a substance from the group consisting of cumarone, chlorinated diphenyl, vinyl resin and dammar."

"41. The method of making meltable wax-like compositions which comprises mixing at least 20% by weight of wax with a condensation derivative of rubber obtainable by decomposing with water a product obtained by treating rubber in solution with chlorostannic acid or a halide of amphoteric metal."

The examiner described the claimed invention as follows: "The alleged invention relates to the production of coated sheet material. The sheet material which is to be coated may be made of cellulose, cellulose derivatives, proteins, derivatives of proteins or gelatine. The composition employed to coat the sheets is described in the original specification as a type of resin derived from rubber; two forms of which it is stated are now on the market and are known as plioform and pliolite. The use of wax and natural or artificial resins such as dammar, elemi, vinyl resins etc. with the rubber resin is also contemplated. These two classes of materials serve respectively to decrease vapor transmission through the coating and give greater adhesion of the coating to the base sheet."

In the first office action, a letter dated July 11, 1933, the examiner stated: "The claims are all rejected as being indefinite and as being based upon an insufficient disclosure. The term `rubber resin' is indefinite. The obvious meaning of the term is a resin extracted from rubber in the preparation of resin free rubber. Plioform and pliolite appear to be trade names and it is not known what the substances are. The applicants have not disclosed their compositions or how they may be prepared and a verified showing identifying the substances and that they were known to the trade as plioform and pliolite at the time of filing the application is required."

On January 2, 1934, in response to the said office action, appellants tendered an amendment to the application describing "pliolite" and "plioform," including a method of preparing the same. On that date appellants also submitted a photostatic copy of page 41 of a publication known as Industrial and Engineering Chemistry, dated February 10, 1933, to show that "plioform" was a product of the Goodyear Tire & Rubber Company and that it was "on the market" prior to the filing date of the application. On January 18, 1934, appellants submitted a supplemental amendment cancelling the amendment of January 2, 1934, and submitting further details as to the method of making "pliolite" and plioform." The supplemental amendment was accompanied by an affidavit of the appellant Gebauer-Fuelnegg in which the affiant stated: "* * * that prior to the filing of said application, he procured from Goodyear Tire & Rubber Company a product identified by that company as `Plioform Molding Powder' and `Pliolite Resin'; that the products identified by said trade names were used by him and the other joint inventors in the above identified application in carrying out the invention described and claimed in said application; that said products were known to the trade by said trade names, respectively, and were available on the open market prior to the filing of said application; that to the best of his knowledge and belief, the description of the process for the preparation of said products pliolite and plioform, as contained in the accompanying amendment in said application, is true and correct."

The examiner, in office action dated April 24, 1934, refused to accept the identification of the trade terms as tendered by appellants.

On October 22, 1934, appellants tendered another amendment to the specification, containing a more detailed method of making "pliolite."

On February 7, 1935, the examiner agreed that the amendments to the specification properly identified the rubber derivative used by appellants, and requested a further verified showing that...