In re Shortell

• Decision Date: 04 April 1944
• Docket Number: Patent Appeal No. 4901.
• Citation: 142 F.2d 292
• Parties: In re SHORTELL.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

142 F.2d 292 (1944)

In re SHORTELL.

Patent Appeal No. 4901.

Court of Customs and Patent Appeals.

April 4, 1944.

Frederic P. Warfield, of New York City, for appellants.

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

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

LENROOT, Associate Judge.

This appeal presents a question as to whether an improvement made by appellant in a hack saw blade was inventive. The Board of Appeals of the United States Patent Office affirmed a decision by the Primary Examiner rejecting five claims of appellant's application for a patent upon the ground of lack of patentability over the prior cited art.

Certain claims were rejected by the examiner which were later withdrawn.

Claims 14 and 21 are illustrative of the subject matter of the claims, and read as follows:

"14. As a new article of manufacture, a hack saw blade provided with cutting teeth of substantially the same size and shape along both edges thereof, the teeth along one edge being set to a lesser degree than the teeth along the other edge, and means for indicating the edge bearing the teeth having the greater degree of set."

"21. As a new article of manufacture, a hack saw blade provided with cutting teeth of substantially the same size and shape along both edges thereof, both rows of teeth being set and ready for sawing, the teeth along one edge being set to a lesser degree than the teeth along the other edge."

It will be observed from quoted claim 14 that it has one element not recited in quoted claim 21, viz., "means for indicating the edge bearing the teeth having the greater degree of set." This limitation is also contained in claim 15.

The references cited are:

Clemson, 336,697, February 23, 1886.

Szekely, 511,473, December 26, 1893.

Appellant's alleged invention is the element of the claims above quoted reciting that the teeth along one edge of the blade are set to a lesser degree than the teeth along the other edge.

The purpose of having the set of teeth wider upon one edge of the blade than the set of teeth upon the other edge is that while cutting through metal the edge having the narrower set will not drag upon the sides of the kerf and thus be dulled as the saw passes through the metal. When the teeth upon the edge having the wider set become worn the blade is reversed, and the teeth having the narrower set continue the work, thus substantially prolonging the life of the saw.

The reference Clemson discloses a hack saw blade having teeth on its opposite edges so that the edges may be reversed when one of them becomes worn from use. Nothing in the patent suggests that the teeth on the opposite edges should have different sets, and presumably the sets on both edges are of the same width. It will be observed that this patent was issued in 1886.

The reference Szekely discloses an ordinary saw blade having cutting teeth upon one edge of the blade and planing teeth of a wider set upon the opposite edge. The patent states:

"My invention relates to saw-blades and has for its purpose to provide a saw-blade that will not only act as an ordinary saw but will at the same time smooth the rough surfaces of the cut. To this end I have devised a saw-blade provided with the ordinary cutting teeth and equipped at the opposite edge with planing teeth that will smooth the rough surfaces of the cut during the motion of the saw."

There are a number of letters in the record from users of appellant's saws and dealers in machine tools indicating the novelty, utility, and commercial success of appellant's saw.

The record also contains an affidavit of appellant stating that he is the manager of the saw department of Millers Falls Company, of Greenfield, Mass., the assignee of his application; that he has been engaged in the manufacture of hack saw blades for 23 years; that he is familiar with the reference Clemson patent; that to the best of his knowledge and belief no blade corresponding to the disclosure of that patent was ever put upon the market, and that such a blade would be impractical because the two sets of teeth would saw and wear simultaneously and, therefore, the life of the saw would not be increased.

The "Examiner's Statement" on appeal states:

"Claims 7, 13, 17 and 21 are held unpatentable over Clemson, No. 336,697 in view of Szekely. The claims read directly on the Clemson patent with the exception of the unequal set of teeth on the opposite edges of the saw. Since this feature is clearly shown in Szekely, it is only obvious to apply such an arrangement to the teeth in the Clemson patent.

"Claims 14 and 15 are held unpatentable on the ground of aggregation. There is no interdependent relation between a printing arrangement and specific hack saw structure.

"Claims 14 and 15 are further rejected on the same grounds stated against claims 7, 13, 17 and 21. It is held not to add novelty to any article of manufacture to add such instructions as `this side up', `use this edge first', etc. to the article. Such printed instructions do not come within the purview of the patent statutes. See In re Reeves 62 F.2d 199, C.D.1933, page 111."

The Board of Appeals in its decision with respect to claims 13, 17, and 21 stated:

"Claims 13, 17 and 21, which do not include the indicia, have been rejected as unpatentable over Clemson in view of Szekely. The examiner observes that Clemson discloses a hack saw blade having teeth on both edges but so far as shown, the teeth on the two edges have the same degree of set. The collateral reference Szekely discloses a saw blade having teeth on both edges, the teeth on one side having very markedly wider set than on the other. Szekely's blade, however, is not a simple sawing blade on one side but the teeth have cutting edges on their sides to enable them to smooth the walls of the kerf while probably cutting it wider."

With respect to claims 14 and 15 the board said:

"Claims 14 and 15 have been rejected upon the same citations as unpatentable in merits with the additional ground that there is not sufficient nor any interdependence between the cutting teeth and the legend as to constitute a true combination and besides that the legend if considered in the sense of printed matter, cannot be taken into consideration under the patent practice because it relates to printed matter. We affirm the holding that these claims do not set forth invention over the state of the art."

The board disagreed with the examiner's additional rejection of claims 14 and 15 upon the ground of aggregation.

We are in agreement with the board for the reasons stated by it that the legend upon the saw blade indicating which edge was to be first used does not aid patentability of the claims.

Therefore, the only question of patentability is whether the providing of a wider set of teeth upon one edge of the blade than that given the teeth upon the opposite edge constituted invention.

We are not in accord with the views of the Patent Office tribunals that the patent to Szekely has any relevancy to the question before us. It is manifest that his saw blade could not be reversed and the planing teeth used for cutting the material. Their only purpose is to smooth the rough surfaces of the cut during the motion of the saw, and both edges of the blade perform their respective functions simultaneously.

We find nothing in the Szekely patent that would...