In re Sus

• Decision Date: 25 July 1962
• Docket Number: Patent Appeal No. 6778.
• Citation: 134 USPQ 301,306 F.2d 494
• Parties: Application of Oskar SUS and Werner Schaefer.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

134 USPQ 301, 306 F.2d 494 (1962)

Application of Oskar SUS and Werner Schaefer.

Patent Appeal No. 6778.

United States Court of Customs and Patent Appeals.

July 25, 1962.

James E. Bryan and Thomas, Cricken-berger & Bryan, Washington, D. C., for appellants.

Clarence W. Moore, Washington, D. C. (Jack E. Armore, Washington, D. C., of counsel), for Comr. of Patents.

Before WORLEY, Chief Judge, RICH, MARTIN and SMITH, Judges, and Judge WILLIAM H. KIRKPATRICK.^*

SMITH, Judge.

The comparatively simple legal issue which emerges from the rather complex technical aspects of the application involved in this appeal is whether the rejected claims are broader than the written description of the invention and thus do not meet the requirements of 35 U.S.C. § 112.¹ The examiner and the board have held that they do not. Appellants contend on this appeal that they do. For reasons to be more fully set forth in this opinion, we agree with the board.

The claims on appeal are claims 24, 26, 30, 36, 38, 42, 48, 50, 54, 62 and 66 of appellants' application Serial No. 430-978, filed May 19, 1954, entitled "Light Sensitive Material and Process." Four claims, 33, 45, 57 and 69 have been allowed by the examiner. The remaining claims of the application have been withdrawn from consideration as not reading on the elected species.

The written description of the invention found in the specification shows that it relates to a class of light-sensitive organic compounds, known as aryl azides or aromatic azido compounds, and to the employment of these compounds as coatings on planographic printing plates particularly for use in offset flat printing by a photo-mechanical process.

Appellants acknowledge that use of the broad class of such light-sensitive materials was known previously, but assert in the specification that:

"Such a process is very trouble-some, however, and has been superseded by methods in which the greasy printing ink adheres to some parts of the originally light-sensitive substance itself, either by the light-sensitive substance itself forming the printing image, or by the image being formed of the light-decomposition products of the light-sensitive substance resulting from the exposure. Those aryl azides previously suggested have proved to be incapable of being suitable in such a process." Emphasis added.

The specification states an object of the invention is "the obtention of certain new groups of aryl azides." Emphasis added.

The specification discloses light-sensitive aromatic azido compounds which are substituted in the nucleus containing the azido group either by (1) a sulfo group amidated with an aromatic amine or (2) by a primary amino group substituted with the sulphonyl residue of an aromatic sulpho acid.

A pre-sensitized printing plate is produced by first coating a metal base, preferably aluminum foil, with a layer of a disclosed light-sensitive aryl azide. The coating is formed by applying to the base a solution of the azide in an organic solvent and subsequently evaporating the solvent. The resulting pre-sensitized plate is then exposed to a light source under a transparent master and developed as disclosed in appellants' brief as follows:

"* * * the image is developed by treatment of the light exposed layer with a dilute alkaline solution. This treatment removes from the aluminum, or other foil, the light decomposition products of the aromatic azido compound in those areas struck by light. The relief image is then generally treated with a dilute phosphoric acid solution, after which the developed printing plate may be clamped into an offset printing machine and used for the production of copies."

The claims on appeal may be grouped in four groups according to subject matter as follows:

1. Claims 24, 26 and 30 which define the light-sensitive compounds per se;

2. Claims 36, 38 and 42, which are drawn to a process for the production of a pre-sensitized printing plate in which the single step claimed is coating a base material with a layer of the claimed light-sensitive compounds;

3. Claims 48, 50, and 54, which are drawn to a process for the production of a printing plate and define, in addition to the coating step of claims 36, 38 and 42, the additional steps of exposing the coated base to light under a master and of treating the exposed base with a weakly alkaline solution;

4. Claims 60, 62 and 66, which are drawn to a pre-sensitized printing plate comprising a base coated with the compounds of claims 24, 26 and 30, respectively.

In addition to rejecting certain claims on the art, the board affirmed the rejection of all the appealed claims as failing to particularly point out and distinctly claim the alleged invention, stating:

"The claims have been further rejected as being unduly broad in the terms `substituted aryl\' and `substituted arylene\'. The examiner points out that any substituent is included in this recitation and that appellants\' contentions for patentability are thus based merely upon the fact that the aryl or arylene nucleus is substituted, without regard to the nature of the substituent."

While we do not find it necessary to review the rejection of the claims as unpatentable over the prior art in the view we here take, it is necessary to a better understanding of the rejection under 35 U.S.C. § 112 which we are here affirming, to know the historical background of the invention as revealed by the cited references.

The references relied on are:

                  Schmidt et al.             1,845,989          Feb. 16, 1932
                  Neugebauer et al.          2,692,826          Oct. 26, 1954
                                      (filed October 3, 1950)
                  Kalle (French)               886,716          July 12, 1943
                

Schmidt et al. disclose that light-sensitive layers may be produced on a base, for instance paper or film, by applying a weakly alkaline solution of an aryl azide to the base, followed by exposure of the coated base to light through a master such as a negative, whereupon dyestuffs (colored light-decomposition products) are formed on those portions exposed to the light while the unexposed portions remain unaltered. A positive picture is obtained, which is washed to be rendered permanent. The structure of the aryl azide light-sensitive compounds is disclosed broadly to consist of an aromatic azido substituted ring which may be further substituted in the other positions on the ring with such groups as hydroxyl, carboxyl, azido, halogen, aryl, aralkyl, oxalkyl, or alkyl as well as an amino group, substituted or not, or a sulfo group.

Neugebauer et al. disclose the preparation of photo-lithographic printing plates for use in the flat printing process comprising coating a zinc or aluminum base with a layer of a light-sensitive aryl azide, exposing the coated base to a light source under a master and subsequently removing either the exposed or unexposed portions of the coating. The disclosure refers to the preparation of images by the action of light on light-sensitive aromatic azido compounds, including the aromatic di-azido compounds which are said to be particularly useful. Neugebauer et al. disclose a number of examples employing diazidostilbene disulfonic compounds as the light-sensitive substances.

The French patent discloses that the aromatic azides are known to be light-sensitive, and discloses a preferred group of these compounds which may be applied as a layer on a support, for example, paper, glass or metal, and thereafter exposed to light under masks or negatives and then, after known treatment, employed for reproduction or photographic purposes. The patent indicates that the process may be applied to a zinc plate to prepare a typographical printing plate. Among the light-sensitive compounds listed is the 4,4'-diazidostilbene-2,2'-disulfonic acid sodium salt compound disclosed by Neugebauer et al., supra.

The mandate of 35 U.S.C. § 112 is that: "The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention."

The failure here to so claim the invention is fatal. This failure becomes apparent from a consideration of the appealed compound claims. The most specific of these claims is claim 26 which reads as follows:

The broadest of the appealed compound claims, claim 30, reads as follows:

"30. A compound having the formula

N3-R-X-Y-R1

in which R is a substituted arylene radical, X and Y are selected from the group consisting of -NH- and -SO2-radicals and are different and R1 is selected from the group consisting of substituted and unsubstituted aryl radicals." Emphasis added.

Compound claim 24, intermediate in scope between claims 26 and 30, uses as does claim 26, the term "aryl and substituted aryl radicals".

All of the other claims on appeal call for the compounds of claims 24, 26 and 30, supra, including the phrase "aryl and substituted aryl radicals"² which the board held to be unsupported by the specification. Thus, our decision as to whether the board properly affirmed the examiner's rejection of the compound claims for lack of support in the specification is dispositive of all claims on appeal.

While the term "aryl and substituted aryl radicals" is a broad term, it is not objectionable for this reason alone if the term is (1) supported by the specification, and (2) if it properly defines the novel subject matter described in the specification. The public purpose on which the patent law rests requires the granting of claims commensurate in scope with the invention disclosed. This requires as much the granting of broad claims on broad inventions as it does the granting of more specific claims on more specific inventions. It is neither contemplated by the public purpose of the patent laws nor required by the statute that an inventor shall be forced to accept claims narrower than his invention in order to secure allowance of his patent. It is, however, consistent with this public purpose...