In re Scharf, Patent Appeals No. 5133.

• Decision Date: 07 May 1946
• Docket Number: Patent Appeals No. 5133.
• Parties: In re SCHARF.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

33 CCPA 1079, 155 F.2d 734 (1946)

In re SCHARF.

Patent Appeals No. 5133.

Court of Customs and Patent Appeals.

May 7, 1946.

Charles E. Carney, of Cleveland, Ohio (A. Ponack, of Washington, D. C., of counsel), for appellant.

W. W. Cochran, of Washington, D. C., for Commissioner of Patents.

Before GARRETT, Presiding Judge, and BLAND, HATFIELD, JACKSON, and O'CONNELL, 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 all of the claims (Nos. 1, 2, 3, 5, 6, and 9) in appellant's application for a patent for an alleged invention relating to a product comprising soybean lecithin (soybean phosphatide), in an amount not less than 20%, and a substance rich in vitamin B. complex, and a process of making the same.

Claims 1 and 3 are sufficiently illustrative of the appealed claims. They read:

"1. A product containing commercial soybean lecithin and a substance rich in the Vitamin B complex the amount of phosphatides being not less than about 20% of the Vitamin B containing material.

"3. The process of preparing a mixture of soybean phosphatides and a substance containing the Vitamin B complex which comprises triturating the phosphatides with the substance containing the Vitamin B complex, the amount of phosphatide being at least 20% of the Vitamin B containing material."

The references are: Bresnick, 2,007,108, July 2, 1935; Holmes, 2,051,257, Aug. 18, 1936; Schultz et al., 2,136,399, Nov. 15, 1938; Thurman, 2,201,064, May 14, 1940; Nitardy, 2,206,113, July 2, 1940; U. S. Dispensatory, 22d Ed. (1937) pages 1448, 1449; William & Spies publication "Vitamin B1 and Its use in Medicine," page 283. Reference showing the state of the art: Sollman — Manual of Pharmacology (1932) page 412.

Appellant's alleged invention is sufficiently described in the quoted claims.

In his application, appellant states:

"It has been found that a higher intake of Vitamin B1 in the diet will require more choline in the diet, while an increased intake of phosphorus in the diet will require more Vitamin B1, and that it is advantageous to administer said substances together and in the proper relation.

"This can be achieved with lecithin, which yields during digestion both choline and phosphoric acid and which may be combined with some Vitamin B containing material such as yeast or ricepolish."

Appellant further states in his application that vitamin B1 aids in the conversion of sugar to fat, and that "choline has a hormonal effect in maintaining the normal level of liver fat and the normality of the lipoid metabolism."

The appealed claims were rejected by the Primary Examiner on all the foregoing stated references, except the William & Spies publication. The claims were further rejected by the examiner as covering merely an aggregation of old and well-known medicinals in which each performs its function without co-action with the other medicinals, and also on the ground of undue multiplicity.

As to the latter ground of rejection, the Primary Examiner said: "The claims are further rejected as being unduly multiplied. Claim 1 as amended and claim 6 fail to differ patentably. Claim 1 uses the expression `soybean lecithin' while claim 6 uses the expression `soybean phosphatides'. The soybean phosphatide, however, is soybean lecithin as shown by the Dispensatory and by page 2, lines 3 and 6, of the specification. Hence, claims 1 and 6 are for the same composition. It does not appear necessary to have two claims for the same thing."

In affirming the decision of the Primary Examiner, the Board of Appeals cited the William & Spies publication, which had not been cited by the examiner, and apparently relied upon the disclosure in that reference and the disclosures in the patents to Schultz et al. and Nitardy. The board did not refer to the Primary Examiner's rejection of the appealed claims on the grounds of aggregation and undue multiplicity either in its original decision or in its decision on appellant's request for reconsideration of its original decision. However, it entered a general affirmance of the examiner's decision, which amounts to an affirmance of the examiner's holding that the claims were unduly multiplied.

In his appeal to this court, appellant did not assign as one of his reasons of appeal that the board erred in rejecting the appealed claims on the ground of undue multiplicity. That ground of rejection, therefore, is not before us for consideration. Accordingly, should we disagree with the board's holding that the...