In re Vickers

• Decision Date: 06 March 1944
• Docket Number: Patent Appeal No. 4836.
• Parties: In re VICKERS et al.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

141 F.2d 522 (1944)

In re VICKERS et al.

Patent Appeal No. 4836.

Court of Customs and Patent Appeals.

March 6, 1944.

Barnes, Kisselle, Laughlin & Raisch, of Detroit, Mich. (John M. Kisselle and Robert A. Choate, both of Detroit, Mich., of counsel), for appellants.

W. W. Cochran, of Washington, D. C. (R. F. Whitehead, 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 4, 12, 20, 21, and 37 in appellants' application for a patent for an alleged invention relating to new and useful improvements in oil well pumping apparatus.

Seventeen claims were allowed by the Primary Examiner.

Claim 4 is illustrative of the appealed claims. It reads:

"4. In combination, a cylinder for containing an operating liquid, a reciprocal member in said cylinder, means acting on said member for resisting the entrance of liquid to said cylinder, a motor cylinder, a reciprocal member in said motor cylinder adapted to be operably connected to the sucker rod of a pump in a well, a pressure forming means, a pilot operated shiftable means adapted to control the direction of liquid under pressure through said pressure forming means and to and from said cylinders, a supply of operating liquid, unidirectional valve means connecting said supply with the inlet of said pressure forming means, valve means responsive to movement of one of said reciprocal members for directing pressure to said pilot operated means to shift the same, and additional valve means responsive to abnormal movement of one of said reciprocal members resulting in closure of the outlet port of one of said cylinders adapted to delay the shifting of said pilot operated means, and thereby cause a replenishing of liquid from said supply to said system during said delay."

The claims were rejected by the tribunals of the Patent Office on the ground that they are broader than appellants' invention. They were not rejected on prior art.

There being no prior art involved, it is unnecessary that a detailed explanation of appellants' apparatus be here set forth. However, the Primary Examiner described appellants' apparatus quite fully in his statement to the Board of Appeals.

Appellants' apparatus includes a so-called "well operating or work cylinder" and piston, an accumulator cylinder and piston, and a pump which forces liquid from one cylinder to the other under control of a directional valve. The apparatus also includes two pilot valves. One, controlled by the accumulator piston, causes normal reversal shifting of the directional valve, and the other, by abnormal movement of the work cylinder piston which closes a port in the lower part of the work cylinder, delays normal reversal for replenishment purposes. (Replenishment is required because of leakage in the system.) Thus it will be seen that appellants' apparatus is an automatic system for reversal of a closed system and replenishment of liquid in the system.

It will be observed from what has been said that in appellants' apparatus one of the pilot valves is caused to operate by the accumulator piston, and the other by the work cylinder piston. The accumulator piston and the work cylinder piston move substantially in unison. Accordingly, the idea of actuating the valves in accordance with piston movement is obviously a unitary conception, and the operation of the system would be the same regardless of whether the accumulator piston or the work cylinder piston operates one or the other of those valves, provided the valves are operated for the purposes hereinbefore set forth.

In the apparatus defined by the appealed claims, the pilot valves may be operated by the two pistons, as hereinbefore described, or they may be operated by a single piston.

The language of claim 4 which calls broadly for the operation of the valves either by a single piston or by two pistons is as follows:

"Valve means responsive to movement of one of said reciprocal members for directing pressure to said pilot operated means to shift the same, and additional valve means responsive to abnormal movement of one of said reciprocal members resulting in closure of the outlet port of one of said cylinders adapted to delay the shifting of said pilot operated means, and thereby cause a replenishing of liquid from said supply to said system during said delay." (Italics not quoted.)

In his statement to the Board of Appeals, the Primary Examiner said that, although the appealed claims read on appellants' disclosure, they were "incomplete" in that they omitted "a limitation without which" they were "broader than the disclosed invention," that is to say, they were sufficiently broad to call for the operation of the valves by a single piston. The examiner stated, however, that he would allow claims which defined the arrangement of the apparatus wherein "one piston by its movement controls the application of pilot pressure, while the other piston by its movement closes the inlet port of its cylinder to delay reversal." We quote from the examiner's statement as follows:

"The claims on appeal, however, are even broader * * * in that they merely state that one piston controls pilot pressure, and one piston delays reversal by causing closure of the outlet port of one cylinder. This language is broad enough to cover a construction wherein a single piston controls the pilot pressure and its own or the other cylinder's inlet port to also delay reversal. Whether it is possible to construct such a structure wherein a single piston performs all these functions, the Examiner cannot say. For present purposes, it seems sufficient to state that it is not immediately clear how it can be done, and applicants have not shown how to do it. Under such circumstances, it is believed proper to require applicants to reasonably restrict their claims to cover their own structure and obvious modifications thereof, while still leaving the field of improvement open to him who subsequently teaches the public how all the functions are to be performed by the motion of only one of the two moving pistons.

"Applicants have argued that it is possible that all reversing and delay functions could be performed by motion of one piston, and that to require them to limit the claims to recite that the control is under the motion of both pistons, would unduly limit their protection.

"The answer to this is that if such a structure is possible, and is part of the invention disclosed in this case, applicants should have described it, if they desired to claim it. Having failed to describe it, and it not being apparent how it can be brought about, it must be held to be outside the scope of the invention described herein, and applicants are not entitled to protection on it." (Italics quoted.)

In its decision affirming the decision of the Primary Examiner, the Board of Appeals called attention to the language in the body of claim 4, hereinbefore specifically referred to, and stated that the wording of the claim was confusing when read on the drawings in appellants' application; that appellants have not shown a construction, either in their drawings or in their specification, wherein a single piston might control the valves for the desired purposes; and that an entirely different and unobvious construction from that shown in appellants' drawings and specification would be necessary in order to control the valves by a single piston. The board further said:

"The construction shown in appellants' specification and drawings requires two cylinders, the piston in one operating one valve means and the piston in the other operating the other valve means. * * *

"We are cognizant of the fact that in a mechanical case an applicant may generally draw a broad claim on a single construction. However, it should be obvious to any one skilled in the art to make such modifications covered. That is not the situation here."

It is contended here by counsel for appellants that the gist of the involved invention — "lies mainly in the particular valve arrangement for controlling reversal automatically and for permitting replenishment. It is not new to shift valves by extension of piston rods in this very art. We believe it plainly follows from this that it actually is obvious how the system could be changed to have both valves * * * controlled by a single piston rather than by both of them."

In explanation of how the apparatus might be arranged so that the valves would be properly controlled by a single piston, counsel for appellants state in their brief that it would seem to be obvious that the pilot valve, which is shown in appellants' specification and drawings as being controlled by the accumulator piston for causing normal reversal of the directional valve, might be...