In re Gillis, Patent Appeal No. 4057.

• Decision Date: 10 April 1939
• Docket Number: Patent Appeal No. 4057.
• Citation: 102 F.2d 902
• Parties: In re GILLIS et al.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

102 F.2d 902 (1939)

In re GILLIS et al.

Patent Appeal No. 4057.

Court of Customs and Patent Appeals.

April 10, 1939.

F. T. Woodward, of New York City and E. R. Nowlan, of Kearny, N. J. (C. H. Nanz, of New York City, of counsel, and H. C. Duft, of Washington, D. C., on the brief), for appellants.

R. F. Whitehead, of Washington, D. C. (Howard S. Miller, of Washington, D. C., of counsel), for the Commissioner of Patents.

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

HATFIELD, Associate Judge.

This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming the decision of the Primary Examiner rejecting claims 2, 3, 4, 7, 16, and 17 in appellants' application for a patent for an alleged invention relating to work-hardened lead alloys containing less than 1% of calcium, and a method for making the same.

Claims 2 and 17 are illustrative of the appealed claims. They read:

"2. A work hardened lead alloy containing less than 1.0% calcium."

"17. A method of hardening a lead calcium alloy containing from .01% to .10% of calcium which comprises cold working the alloy to increase its hardness."

The references are:

Dean et al., 1,674,957, June 26, 1928 Shoemaker, 1,813,324, July 7, 1931 Bouton, 1,880,746, October 4, 1932 Dean, 1,890,013, December 6, 1932 Dean, 1,890,014, December 6, 1932;

Waterhouse: The effect of Cold-Rolling and of Heat Treatment on some Lead Alloys — The Journal of the Institute of Metals, No. 2, 1931, Vol. 46, pages 139, 140, 144, 145, 156-158, and 160.

The patent to Dean et al., No. 1,674,957, discloses a process of age-hardening a lead alloy consisting of lead and antimony or other alloy elements, such as tin. The patentees' process consists of "heating, quenching and aging the alloy."

The patent to Shoemaker relates to lead alloys consisting of lead and calcium (the calcium ranging from .1% to .4%), and small quantities of tin, mercury, and aluminum. The patentee states that the primary hardener in his lead alloy is calcium, and that his alloy is particularly suitable for the manufacture of various named articles. Referring to the characteristics of his alloy, the patentee states: "These characteristics comprise a degree of hardness greater than that of pure lead but not enough to prevent working the metal by cold processes." (Italics ours.)

The patents to Bouton and Dean (Dean Nos. 1,890,013 and 1,890,014) relate to improvements in lead-calcium alloys having less than 1% calcium. The patentees' lead-calcium alloys are produced by a process of heating, cooling, and age-hardening.

The article by Waterhouse in the Journal of the Institute of Metals treats of the "effects of cold-rolling, heat-treatment, and storage on the Brinell hardness of 14 lead alloys lead-calcium alloys not being mentioned containing small additions of tin, cadmium and antimony." The hard alloys were made softer and the soft alloys were made harder by the cold-working process. The increased hardness in the soft alloys, however, was but temporary and soon disappeared. Only one lead alloy (consisting of 99.5% lead and .5% antimony) was made permanently harder (the improvement in hardness being slight) by the "cold-working" process.

The appealed claims were rejected by the Primary Examiner on the art of record, and on the ground that the appealed claims were broader than appellants' alleged invention. The examiner pointed out that the process of "cold-working" metals for the purpose of rendering them hard is old. Relative to appellants' contribution to the art, he stated: "Applicants therefore have done nothing more than make a more thorough investigation of the hardening properties along recognized lines of procedure and have therefore done nothing more than is expected of those skilled in the art. The process of cold working metals to render them hard is notoriously old. A new process is not invented for every alloy which is discovered to be amenable to that process. At most only a new article is produced. This is more apparent when it is considered that the method claims define nothing more than the obvious and necessary steps of producing the product. A work hardened alloy can be produced in no other manner than by cold working the alloy."

The examiner further stated that the patent to Shoemaker was cited for the purpose of showing "A lead alloy with calcium in the range specified by applicants * * which it is stated in the patent can be worked by cold processes."

In its decision the Board of Appeals stated, inter alia:

"It is appellant's view that the prior art knowledge with respect to lead was to the effect that no lead alloy could be permanently hardened by cold-working. The hardening here obtained is said to be permanent.

"While the Waterhouse article indicates that there was considerable self-annealing of the alloy after cold-working, it still indicates that there was some permanent increase in hardness of the softer alloys. The alloys treated had an initial hardness of from 5 to 18. After treating, the hardness range was from 8 to 11. After self-annealing, it lay between 6 and 8. It will thus be seen that, for some of the softer alloys, there was a permanent hardening.

"The patent to Shoemaker discloses a lead alloy having calcium within appellants' range and there is a suggestion in the patent that the alloy may be worked by cold processes. It is the examiner's view that this working, though not primarily intended to improve the hardness of the alloy, would inherently have that result. In an affidavit...