Petrocarbon Limited v. Watson, 13675.

• Decision Date: 03 July 1957
• Docket Number: No. 13675.,13675.
• Parties: PETROCARBON LIMITED, Appellant, v. Robert C. WATSON, Commissioner of Patents, Appellee.
• Court: U.S. Court of Appeals — District of Columbia Circuit

247 F.2d 800 (1957)

PETROCARBON LIMITED, Appellant, v. Robert C. WATSON, Commissioner of Patents, Appellee.

No. 13675.

United States Court of Appeals District of Columbia Circuit.

Argued May 16, 1957.

Decided July 3, 1957.

Petition for Rehearing Denied October 9, 1957.

Mr. Ralph H. Hudson, Washington, D. C., for appellant.

Mr. Arthur H. Behrens, Atty., U. S. Patent Office, with whom Mr. Clarence W. Moore, Sol., U. S. Patent Office, was on the brief, for appellee.

Before BAZELON, WASHINGTON and BURGER, Circuit Judges.

WASHINGTON, Circuit Judge.

This is a patent case, in which the Patent Office rejected an application on the ground that it did not meet the requirement of 35 U.S.C. § 112 (1952) that it contain "a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains * * * to make and use the same." (Emphasis added.) Plaintiff-appellant, as assignee, brought suit in the District Court under 35 U. S.C. § 145 (1952). After hearing, the District Court dismissed the complaint. This appeal followed.

The application claimed an invention consisting of a process for the production of "new and useful polymers." Various processes were described, using different chemical vapors. The specification said, in part:

"Polymerization takes place spontaneously on condensation of the monomer vapour by cooling. The cooling may take place in contact with a cool surface on which the polymer is deposited in the form of a film."

Several examples were given in the application "of processes for the production of new polymers in accordance with the invention." The first example given concludes by saying:

"The vapours leaving the tube were passed into a trap in which they were cooled to 0° C in contact with a cold surface on which the polymerised product was deposited in the form of a white occasionally transparent film."

Example 4 reads as follows:

"1.4 dimethyl naphthalene vapour at a pressure of about 10 mm.Hg. was passed through a tube heated to 860° C at such a rate that the vapour was subjected to this temperature for from 0.3 to 0.4 seconds. The vapours leaving the tube were passed through a trap in which they were cooled to room temperature. The polymerised product was deposited in the trap in the form of a white film."

The application then went on to say:

"All the polymers obtained in the above examples were useful because they had great thermal stability and did not soften when heated to a temperature of 270° C. They were not attacked by sulphuric acid at 150° C. They were insoluble in, and also did not swell visibly in, boiling

ethyl alcohol diethylether chloroform xylenes benzene toluene glacial acetic acid."

Plaintiff-appellant argues that the quoted matter amounted to a sufficient disclosure of the utility of the claimed invention within the rule of In re Bremner, 1950, 182 F.2d 216, 217, 37 C.C.P.A., Patents, 1032, 1034, namely, that "there be in the application an assertion of utility and an indication of the use or uses intended." (Emphasis in original.) Plaintiff urges on brief that "the description in the application of how to make a film, plus mention of its acid resistance and similar attributes, cannot fail to suggest or indicate to those skilled in the art that the film ought to be useful, for example, as a protective film or coating." In the District Court plaintiff offered not only a number of tangible exhibits, showing objects protectively coated by the new polymers, but also the testimony of expert witnesses "to explain what the term film meant, and to show this exhibit is made in conformity with the specification, and that they did actually protect, and were functional." The District Court...