IN RE WALLERSTEIN, Patent Appeals No. 2777

• Decision Date: 27 November 1931
• Docket Number: Patent Appeals No. 2777,2778.
• Citation: 53 F.2d 530
• Parties: In re WALLERSTEIN (two cases).
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

53 F.2d 530 (1931)

In re WALLERSTEIN (two cases).

Patent Appeals Nos. 2777, 2778.

Court of Customs and Patent Appeals.

November 27, 1931.

Cleon J. Sawyer and Philip B. Philipp, both of New York City, for appellants.

T. A. Hostetler, of Washington, D. C. (Howard S. Miller, of Washington, D. C., of counsel), for Commissioner of Patents.

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

GARRETT, Associate Judge.

These two cases were briefed and argued together, and, although there is a separately printed record in each case, both may be disposed of in a single opinion.

The subject-matter of both appeals is an invertase preparation, and both include claims for the articles and also for the methods of producing same.

In case No. 2777, there were six claims, of which 1 and 6 are illustrative.

"1. An invertase preparation of a determined inverting power, said preparation having incorporated therein a sugar in sufficient amount to form a protective agent for the invertase."

"6. The method of making an invertase solution which consists in preparing an acqueous solution of invertase containing approximately 10 per cent. solids and incorporating therein sucrose in sufficient amount to raise the percentage of solids to approximately 70 per cent. to 80 per cent."

Claim 1 is the broad claim including any protective sugar; claim 2 defines the protective sugar as sucrose; claims 3 and 4 define the product as a solution; claim 5 defines it as a solution containing from 70 per cent. to 80 per cent. solids, of which solids 60 per cent. to 70 per cent. results from the sugar incorporated therein; claim 6 covers the method.

In case No. 2778 each of the claims relates to a preparation of invertase in a dry form. Nos. 1 and 4 are typical:

"1. A preparation of invertase in dry form containing invertase of a determined inverting power and a protective sugar."

"4. The method of making a preparation of invertase in dry form containing invertase of a determined inverting power, which consists in making a concentrated solution of invertase, adding a sufficient amount of a sugar which is substantially non-hygroscopic and which is not converted by the invertase, such as dextrose or lactose to form a stiff dough, and drying at temperatures not exceeding 50° C."

In 2778, as in 2777, claim 1 is the broad claim including any protective sugar; claim 2 is limited to use of dextrose or lactrose; claim 3 covers broadly the method of making the dry product; claim 4 limits the process of claim 3 to drying the product at temperatures not exceeding 50° C.

In both cases all the claims were disallowed by the Examiner whose decisions were affirmed by the Board of Appeals of the Patent Office, and, from the decisions of the latter, the appeals to this court were taken.

In both cases the references cited by the Examiner and Board of Appeals were:

A. Patent to Harris entitled "Vitamine Preparation," being No. 1,540,883, issued June 9, 1925.

B. Pages 140 to 145 of Scientific Preparation of Food, Rector (Wiley & Sons, 1925).

In the brief in behalf of appellant it is said:

"Applicant has discovered that adding to an invertase solution certain sugars, including sucrose, lactose and dextrose, prevents their deterioration by heat, as well as bacterial decomposition. Sucrose preferably is used for preparing a standardized invertase solution, the best results being attained with sucrose in certain quantities.

"The invertase inverts some of the sugar, thus increasing the solids in the invertase solution, and by using the required amount of sugar, and preferably lactrose or dextrose, and by special treatment, applicant is enabled to produce a standardized preparation of invertase in the convenient form of a dry powder."

The opinions of the Board of Appeals in the respective cases are, in thought, and largely in language, the same. From the opinion in case No. 2777, we quote the following:

"The patent to Harris discloses that similar inversion bodies and enzymes, specifically the vitamines, have been preserved in this manner.

"Both the vitamine referred to by Harris and the particular invertase disclosed by applicant are prepared from yeast and while it is clear that they are not identical they seem to be very similar in nature. They are both of the broad class of enzymes and both are derived from the same source.

"Under such circumstances it is considered that while Harris does not disclose treatment of the same material he discloses the treatment of a material so similar as to clearly suggest that the same treatment would apply to the material disclosed by applicant. It would require only a simple test to determine this fact. It is found further that the particular proportions so far as may be determined from applicant's specification come within the limits of those given by Harris."

The citation to Rector, as we understand it, is simply and only because of that work showing the preservative properties of sugar.

It seems to us that the first question to be determined is whether the invertase preparation for which the patent is sought is so similar in its nature to the vitamine preparation for which patent No. 1,540,883 was issued to Harris as to render the latter an anticipation, in the sense of the patent laws, of the former.

The Board of Appeals hold, ...