author: LANE, Judge.

text:
    Application of Abraham SCHNEIDER and Archibald P. Stuart.
    Patent Appeal No. 8972.
    United States Court of Customs and Patent Appeals.
    Aug. 9, 1973.

      Barry A. Bisson, Wilmington, Del., attorney of record, for appellants.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Henry W. Tarring, II, Falls Church, Va., of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN, and LANE, Judges, and ALMOND, Senior Judge.
   LANE, Judge.

This is an appeal from the decision of the Board of Appeals sustaining § 103 rejections of claims 1-11 of appellants’ application entitled “Rubber Containing Acid-Treated Oils and Its Preparation,” and refusing to consider claims 12-22 which were submitted by appellants after final rejection, but which were refused entry by the examiner. We reverse in part and remand.

The Subject Matter

The involved subject matter is principally directed to a composition comprising a particular form of mineral oil in conjunction with natural or synthetic rubber, the oil serving to plasticize or extend the rubber. The specification presents the background of the invention as follows:

It is known in the art to employ mineral oil as a plasticizer or extender for rubbery materials including both natural rubber and synthetic rubber such as butadiene polymers and inter-polymers, etc., and such oils generally impart highly satisfactory properties to the rubbery material in question. However, rubbery materials plasticized with mineral oil plasticizers of the prior art exhibit a disadvantageous tendency to stain materials adjacent to the rubbery material. Furthermore, in the case of light-colored rubber products, e. g., white sidewall tires for automobiles, footwear, etc. rubbery materials plasticized with prior art mineral oil plasticizers show a disadvantageously poor color stability, particularly upon aging in bright sunlight.

The claimed subject matter is said to be free of the disadvantages of the previous compositions. Claim 1 defines that subject matter as follows:

1. A rubber composition comprising
(1) rubber selected from the group consisting of natural rubber, homopolymers of conjugated diolefins, and co-polymers of conjugated diolefins with ethylenically unsaturated monomers, plasticized with
(2) mineral oil which
(a) contains 10 to 45 Wt. % of aromatic compounds, and
(b) has compositions within the area ABCD in Figure II of the drawings [Fig. 2, reproduced below], which mineral oil has been obtained by
(c) mixing a mineral oil starting material with an acidic reagent comprising anhydrous hydrogen fluoride in amount from 10 to 40 percent by weight of said starting material; thereby to form an acid phase insoluble in said mineral oil and containing components extracted from said starting material, and an oil phase comprising unextracted components of said starting material including 70 to 96% of the aromatics in said starting material and containing dissolved acidic material.
(d) separating said acid phase from said oil phase,
(e) mixing said oil phase with an alkaline reagent to neutralize said dissolved acidic material and form neutralization products, and
(f) separating said neutralization products from said oil phase.

Figure “II,” referred to in claim 1, which is labeled “Fig. 2” in the drawings but “II” in the specification, depicts the distribution of carbon atoms in the oil as explained in the specification:

Turning now to Figure II, the coordinates of the diagram are Cp, Ca, and Cn which represent, respectively, percent paraffinic carbon atoms, percent aromatic carbon atoms, and percent naphthenic carbon atoms, as determined by the n-d-M carbon-type analysis disclosed in the book, Aspects of- the Constitution of Mineral Oils, by Van Nes and Van Westen (1951) at page 335 et seq., C„, Ca, and Cn add up to 100% and are approximations of the proportions in the oil of carbon atoms occurring in, respectively, acylic chains, aromatic rings, and saturated ring structures.
Preferred plasticizers according to the invention are those which fall within the area ABCD on the diagram. The treatment of a mineral oil fraction according to the invention to obtain a treated oil falling within the area ABCD has been found to produce exceptionally good plasticizers for synthetic rubber. The treated oil obtained in the subsequent Example II contains about 41 percent paraffinic carbon atoms, about 17 percent aromatic carbon atoms, and about 42 percent naphthenic carbon atoms, and its composition is indicated by the circle [located near the A-D line] in the area ABCD on the diagram. The composition of the oil prior to extraction lay outside the area ABCD in the region of the diagram to the left of the line AD.

Claims 2-7 are composition claims which depend from claim 1. Claim 10 is somewhat broader than claim 1, and claim 11 depends from claim 10. Claims 10 and 11 do not have the limitations appearing in subparagraphs (2)(c), (2)(d), (2)(e) and (2) (f) of claim 1.

Claims 8 and 9 are method claims. Claim 9 is dependent on claim 8, and claim 8 reads as follows:

8. Process for preparing rubber compositions which comprises admixing a rubber selected from the group consisting of natural rubber, homopolymers of conjugated diolefins, and co-polymers of conjugated diolefins with ethylenieally unsaturated monomers, with mineral oil having at least 10 Wt. aromatic compounds which has been obtained by
(a) mixing a mineral oil starting material with an acidic reagent comprising anhydrous hydrogen fluoride in amount from 10 to 40 percent by weight of said starting material; thereby to form an acid phase insoluble in said mineral oil and containing components extracted from said starting material, and an oil phase comprising unextracted components of said starting material and containing dissolved' acidic material,
(b) separating said acid phase from said oil phase,
(c) mixing said oil phase with an alkaline reagent to neutralize said dissolved acidic material and form neutralization products, and
(d) separating said neutralization products from said oil phase.

Rejection of Claims 1-7 and 10-11

The prior art patents relied upon by the examiner were:

Evering et al.
(Evering) 2,449,463 Sept. 14, 1948
Boggs et al. (Boggs) 2,778,807 Jan. 22, 1957
(filed May 26,1953)

The examiner rejected claims 1-7 and 9-11 under 35 U.S.C. § 103 as obvious from Boggs in view of Evering. Boggs discloses that oil extended synthetic rubber compositions were known in the art and teaches an improvement in such compositions by the use of extender oils derived from naphthenic crudes in which a substantial portion of the aromatic compounds has been selectively removed. Boggs specifically discloses suitable mineral oils to contain up to 50-55% aromatics, but preferably less than 40-45% aromatics. Boggs teaches that “the extender oils * * * may be obtained by any of the methods known to the art.” To illustrate, Boggs states that the oil may be obtained as a product of the extraction of a naphthenic crude oil fraction with “phenol, S02, furfural and other polar extracts or by absorption methods.”

Evering discloses the refinement of hydrocarbons by using hydrogen fluoride (HF). It is taught that HF refining selectively removes certain hydrocarbon components of the hydrocarbon material, e. g. polycyclic aromatics, as well as impurities such as oxygen, sulfur and nitrogen compounds. Evering notes that the refined hydrocarbon product “may be subjected to such further treatment as the circumstances warrant, e. g., washing with water, caustic solutions, contacting or percolation with clays or other refining adsorbents, treatment with bauxite in the vapor phase, etc.”

The examiner found that the principal difference between Boggs and the claimed subject matter is the failure of Boggs to teach the use of an oil prepared by hydrogen fluoride refining as defined in the compositions claims. However, since Boggs teaches that the oils may be obtained by any known method, the examiner considered it obvious to use the HF refining method taught by Evering as the source of the Boggs oil. The examiner concluded that the claimed subject matter as a whole would have been obvious from Boggs and Evering. The board agreed, and the solicitor urges the correctness of the Patent Office position.

Appellants contend that the claimed compositions would not have been obvious from the two patent disclosures and that even if it were deemed to be prima facie obvious, the record provides a sufficient showing of unexpected, improved results to rebut the prima facie case. The Patent Office takes the position that the asserted evidence is not sufficient to establish nonobviousness.

Appellants also contend that Boggs is not available as a reference against the claims, an issue dealt with below. The board agreed with appellants as to claim 9, but concluded that Boggs is available as to claims 1-7 and 10-11.

We have reviewed the record as well as the arguments advanced in the briefs and at oral hearing, and we conclude that if Boggs is available as a reference, claims 1-7 and 10-11 are properly held, on this record, to be unpatentable under § 103 over Boggs in view of Evering.

We think that the claimed subject matter is prima facie obvious from Boggs and Evering. By that we mean that viewing only the references and the claimed subject matter, and not considering any evidence of unexpected results, it would appear that the references could be combined as proposed by the examiner and that the conclusion that the claimed subject matter would have been obvious is reasonable. See In re Lintner, 458 F.2d 1013, 1016, 59 CCPA -, - (1972). Boggs clearly indicates the importance of removing the aromatics in an oil to an extent commensurate with the requirements of the appealed claims and is indifferent to the technique used to achieve that result. Evering discloses a known method of removing aromatics and suggests any further treatment as is necessary to purify the refined product for utilization in the desired manner. We think it is a fair conclusion that it would have been obvious to one having ordinary skill in the art to use the Evering method to obtain an oil eminently suitable for Boggs’ purposes.

We agree with the examiner and board that the limitation imposed by reference to Fig. 2 of the drawings does not patentably distinguish the claimed subject matter from the combination of Boggs and Evering. In the absence of some demonstration of criticality, i. e., nexus between result and the limitation, we are constrained to agree that the precise relationship between paraffinic, aromatic and naphthenic carbon atoms would either be inherent or obvious since Boggs plainly uses naphthenic crudes as the basis for the extender oil. Compare In re Sebek, 465 F.2d 904, 59 CCPA- (1972); In re Dollinger, 474 F.2d 1027, 1030 (CCPA 1973). Similarly, we agree that the other claim limitations are not shown to lead to a conclusion of nonobviousness.

We find a failure to present such facts as would rebut the holding of prima facie obviousness. There is the repeated statement in the specification to the effect that HF treatment yields an oil which has improved color stability when incorporated in rubber as compared with oils refined in other ways. In several examples an HF-treated oil is compared with a commercial oil which had not been acid treated and in one example, an HF-treated oil is compared with an oil derived by furfural extraction. In all instances, the results indicate a lesser degree of color deterioration on the part of the HF-treated oil as a function of time than on the part of the comparative sample.

While we think that appellants might establish nonobviousness by demonstrating a significant unexpected improvement in color stability of HF-treated oils otherwise meeting the terms of the claims as compared with oils treated by other methods, we do not find the specification to present comparative examples sufficiently representative of the scope of prior art refining techniques. We must be cognizant of the strength and breadth of the Boggs suggestion that oils having the prescribed aromatic content prepared by any known method may be used. The assumption that the HF method disclosed by Evering would be an obvious choice, especially considering the unity of purpose shared by Boggs and Evering of reducing aromatic content, has firm support. A convincing effort to undermine that assumption would have to be based on a factual showing of comparably broad scope.

We have considered the specification disclosure as well as affidavit evidence of record. However, we are not persuaded that the HF treatment is uniquely advantageous so that we may conclude that the use of oils so treated would not have been obvious to one of ordinary skill in the art.

Our observations thus far have assumed the availability of Boggs which has an effective date of May 26, 1953, less than one year prior to the February 10, 1954, filing date of the earliest application in the chain of applications leading to the one here involved. See note 1, supra. We shall refer to that earliest, application as “the 1954 application.” Appellants asserted entitlement to the filing date of the 1954 application under 35 U.S.C. § 120. Moreover, appellants submitted affidavit evidence under Rule 131 allegedly proving possession of the claimed invention prior to the Boggs filing date. Hence it is appellants’ position that Boggs is not available- as a prior art reference, in which case the rejection based on Boggs and Evering could not stand.

Neither the examiner nor the Board regarded the Rule 131 affidavit as insufficient. Therefore, we will assume it is sufficient for the purpose it was offered. However, its pertinence depends on the entitlement of appellants to the 1954 application filing date under § 120, since if appellants’ present application is not accorded that filing date, Boggs would stand as a statutory bar.

Section 120 requires the claimed invention to have been disclosed in the manner prescribed by the first paragraph of § 112. The board in effect held that the 1954 application did not describe the presently claimed subject matter and denied appellants the benefit of the 1954 filing date with respect to claims 1-7 and 10-11. It found support for claim 9 in that early application. Said the board:

Claims 1 to 7 contain the new language “. . . including 70 to 96% of the aromatics in said starting material . '. . ” which is not present in the parent ease and in our view brings these claims outside of the benefits accorded by 35 U.S.C. § 120. Claims 10 and 11 recite a limitation (2) (b) making reference to the area ABCD in Figure 2. It is noted that in comparison with prior applications (e. g., Serial No. 822,155) [filed June 22, 1959] the length of the line A-D in Figure 2 as filed with [the present application] is displaced to the left so as to encompass a greater range of aromaticity. This change in the graph is seen to produce the same consequences as with claims 1 to 7 above and thereby prevent appellants from using their parent filing date to support claims 1 to 7,10, and 11.

Appellants argue that the 70-96% of aromatics limitation was inherent in the 1954 application disclosure of the preferred HF treatment. That is, it is contended that if one were to follow appellants’- preferred teaching in the 1954 specification, he would obtain a treated oil which retains 70-96% of the aromatics in the starting material. Appellants specifically assert that following that preferred disclosure would lead to the range now claimed rather than just a single point within the range.

Appellants also contend that:

[0]nly simple calculations and minimal drafting skill are needed to obtain the substance of the limit “within the area ABCD in Figure II of the drawings’’ (within the degree of mathematical significance of such a limit) from the percentages of carbon atoms and ratios of aromatic to paraffinic and of naphthenic to paraffinic carbon atoms disclosed in [the 1954 application] * * *.

Finally, appellants argue that support in the intervening application is immaterial as long as the 1954 application supports the present claims.

As to the last point, we think it clear that there has to be a continuous chain of copending applications each of which satisfies the requirements of § 112 with respect to the subject matter presently claimed. See In re deSeversky, 474 F.2d 671 (CCPA 1973). There must be continuing disclosure through the chain of applications, without hiatus, to ultimately secure the benefit of the earliest filing date.

The inherency argument is advanced by appellants as to each application in the chain to which the examiner or board made reference. We can find no response to it other than the view that there is no written description corresponding literally to the claim language involved. The Patent Office is applying too strict a standard in requiring such literal correspondence. See In re Smythe, Cust. & Pat.App., 480 F.2d 1376, decided June 28,1973; In re Smith, Cust. & Pat.App., 481 F.2d 910, decided August 2, 1973.

In the absence of a definitive Patent Office position on the inherency arguments, we have before us an issue heavily dependent on factual assumptions and findings without basis for resolution. The Patent Office is the place for initial findings of fact. We do not feel that we should attempt to resolve the issue without benefit of the board’s views on the matter. Accordingly, we remand the case to the Patent Office to reconsider the availability of Boggs in light of this opinion.

The Rejection of Claims 8 and 9

Process claims 8 and 9 were rejected under 35 U.S.C. § 103 as obvious from the state of prior art as admitted by appellants. Boggs was held not to be available as to these claims since it was agreed that the prior applications supported the claims and that appellants were entitled to the benefit of the 1954 application filing date under § 120, and neither the examiner nor the board relied on Evering. The theory of the rejection is that the process calls only for mixing a mineral oil with rubber. The specific mineral oil is not deemed relevant.

The rejection of claims 8 and 9 is not sustainable. The claims are limited to the HF-treated oil, and the subject matter as a whole^specifically includes the use of such an oil. One not having the mineral oil defined in the claims would not find it obvious to use it as an extender for rubber. See In re Kuehl, 475 F.2d 658 (CCPA 1973).

The Refusal to Consider Claims 12-22

The examiner refused entry of these claims submitted after final rejection, and the board accordingly did not consider them before it. Appellants zealously assert that the board erred in refusing to consider the claims and that we can, and must, correct that error. The solicitor takes the position that we have no jurisdiction in the premises.

The underlying dispute involves the timeliness of appellants’ submission of claims 12-22. Because he regarded them as not timely filed, the examiner never entered them and rendered no adverse decision regarding them. The board did not consider the substance of the claims or review the examiner’s action. We do not agree with appellants that the examiner’s and board’s actions in this case were tantamount to a rejection of the claims. Nor do we agree that the Administrative Procedure Act confers jurisdiction upon this court where it otherwise would not lie. Finding no decision whatever to review, we hold that we have no jurisdiction to consider and act upon appellants’ allegations of procedural unfairness on the. part of the Patent Office.

Summary

The appeal is dismissed as to claims 12-22. The decision of the board is reversed with respect to claims 8 and 9. The case is remanded to the Patent Office with respect to claims 1-7 and 10-11 for the reasons and purposes set forth above. ■

Reversed in part and remanded.

      . Serial No. 657,438 filed May 29, 1967. The specification states:
      This application is a continuation of application Serial No. 547,670, filed May 4, 1966, which was a continuation of application Serial No. 186,825, filed April 6, 1962, now abandoned which, was a continuation of application Serial No. 822,-155, filed June 22, 1959, now abandoned, which was a continuation-in-part of application Serial No. 409,478, filed February 10, 1954 and now abandoned.


source: Caselaw Access Project

author: BALDWIN, Judge.

license: Public Domain

text:
    Application of Kenneth C. KNOWLTON.
    Patent Appeal No. 8896.
    United States Court of Customs and Patent Appeals.
    July 26, 1973.

      Robert 0. Nimtz, Murray Hill, N. J., attorney of record, for appellant.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Jere W. Sears, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, and RICH, ALMOND, BALDWIN, and LANE, Judges.
   BALDWIN, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the examiner’s rejection of claims 1-22, all the claims in appellant’s application.

The Invention

Appellant’s invention relates to a system for computer processing of list information, i. e., items of information which are related or have characteristics in common, such as business inventories, personnel files, business accounts, etc. The application states:

For many applications, data items can be easily linked by their mere contiguity, such as a list on a single sheet of paper. In other cases, however, items are added and deleted at various times, and the interrelationship between items is not a simple linear one. In an inventory list, for example, a hierarchy must be maintained with each item linked in one way .to the items out of which it is made, and linked in another way to that item of which it forms, a part. In addition, cross referencing, for example, to other items which are similar in structure or origin may also be required. While separate lists could be maintained to express all of these relationships by duplicating appropriate items on the different lists, such an organization is wasteful of space and unmanageable with even moderately-sized item sets.
A more useful listing includes each item only once, but includes with the data item “links” to all other relevant items.. Since these “linkages” have many different significances, the links likewise have distinguishable characteristics.
In the present invention, a data item is entered into a unitary block of storage space along with all of the necessary links. Since the number of linkages is variable as well as the number and size of data items, the size of the storage blocks is likewise made variable. In order to distinguish the various linkages, they are entered into different fields in the storage blocks. A field, in this connection, is defined as any contiguous set of single bit storage positions within the block. Since the blocks are naturally divided into “words” (i. e., standard length contiguous bit positions), fields are also defined to include only portions (or the whole) of single words. The various links then constitute address pointers to the linked blocks.
In order to utilize the available storage capacity most efficiently, so-called “free storage” lists are likewise maintained. These are singly-linked lists of the storage blocks available in the system, but not yet called into use. Since different size blocks are available, a separate list is provided for each size of block. The entire available storage area may, for example, initially be assembled into a single free storage list of blocks of the maximum size. A block of this size can then be obtained merely by removing it from the free storage list. If a smaller sized block is required, larger blocks are split in two until a block of the appropriate size is avaialable. Finally, when blocks are no longer needed, they can be returned to the appropriate free storage list for future use.

The application sets out schematic block diagrams related to various aspects of the invention. Figure 1 is typical, and shows how the memory blocks of various sizes are obtained:

The application also contains descriptions of the drawings, in which the relationships between the depicted components of the invention are generally described. However, what appellant contends is a complete disclosure of the preferred embodiment of the invention is made up of a number of computer program listings for use of the invention with a general purpose digital computer, and descriptions of how the listed programs work. The specification refers to the IBM 7094 Data Processing System as one type of apparatus which could process the listed computer programs.

The first listing which appears in the application is entitled “Storage Allocator,” and the first part of that listing appears as follows:

Following each program listing, there is an explanation of how the listed program works. While some bf these explanations are more detailed than others, we find that the explanation of the above-quoted portion of the first listing is sufficiently representative for an understanding of the case:

The 1-block procurer * * * is implemented by the “GET.l” subroutine, entered by a transfer to the location labeled GET.l. The first instruction (SXA *+8,4) is a direction to save the contents of the indicated index register, in this case, index register 4, in the location “*+8,” which is interpreted as the location eight instructions after the current instruction. This is instruction 9 in the GET.l subroutine, and the index register contents are stored in the address field of instruction 9 reserved by the double asterisk. Since index register four will be used in the GET.l subroutine to hold a reference address when transferring to another subroutine, the original contents must be saved. These contents represent an address in the main program from which the transfer to the GET.l subroutine took place and to which control is to be returned after execution of the subroutine.
Instruction 2 in the GET.l subroutine (NZT l.S) is a direction to test the contents of location l.S for a zero. If a zero is found there, the next instruction is executed. If anything but zero is found, the next instruction is skipped. The location l.S is the head of the 1-block free storage list. If there are any 1-blocks on this list, location l.S holds a pointer to the first block. If there are none, location l.S holds zero. The test at instruction 2 ascertains which is the case, and, if a zero is found (no 1-block available), instruction 3 (TSX SPLIT2,4) is executed. This instruction is a transfer to the subroutine “SPLIT2” corresponding to the 2-block splitter 16 in Fig. 1. Before transferring, the current location (of instruction 3) is stored in index register 4 to provide a return address from the SPLIT2 subroutine. The SPLIT2 subroutine returns with the addresses of two 1-blocks, the address of the first in location l.S, and the address of the second in the first.
Instruction 4 (LDQ l.S) loads the 1-block address in location l.S into the Multiplier-Quotient Register. Instruction 5 (CAL* l.S) places the address in the 1-block whose address is in location l.S into the Accumulator Register. This indirect addressing facility (indicated by the asterisk after CAL) is available in many general purpose computers. If not available, the same effect can be obtained by explicitly getting the address and using it for access.
Instruction 6 (STZ* l.S) puts all zeros in the location whose address is in location l.S. This, of course, is the first 1-block. This block is cleared so as to be ready for use when delivered back to the main program.
Instruction 7 (STA l.S) stores the address which is in the Accumulator Register into location l.S. As noted in instruction 5, this address is the address of the second 1-block in the list. In effect, the first 1-block has been removed from the free storage list by replacing the address of the first 1-block with the address of the second 1-block in location l.S (the head of the free storage list).
Instruction 8 (XCL) exchanges the contents of the Accumulator Register and the Multiplier-Quotient Register. This leaves the address of the first 1-block, loaded into the Multiplier-Quotient Register in instruction 4, in the Accumulator Register. This is where it is expected to be found when returning from the GET.l subroutine.
Instruction 9 (AXT **,4) was discussed above. This instruction loads the return address back into index register 4 to permit a return to the main program.
Instruction 10 (TRA 1,4) transfers control back to the calling program. It transfers control to the first location after the location stored in index register 4.

Appellant states that “the claims are all couched in the ‘means-plus-function’ claim format sanctioned by the third paragraph of 35 U.S.C. § 112.” He further states that most of them “call for means for organizing a memory into storage blocks, means for specifying fields in such storage blocks, base registers for holding pointer signals to the blocks, and processing means using the pointer signals for operating on the contents of specified fields.” Claim 1 is exemplary (paragraphing ours):

1. A linked list processor comprising a memory,
means for establishing blocks of storage within said memory,
means for specifying fields within said blocks for storing data signals and linking signals,
said fields being of arbitrary size and location within said blocks,
a plurality of base registers for storing linking signals to prescribed ones of said blocks, and
means for accessing and processing the contents of any prescribed field in said memory.

The Rejections

The board sustained rejections of all the claims by the examiner as based on an inadequate disclosure and as failing to particularly point out and distinctly claim what appellant regarded as his invention, relying on paragraphs 1 and 2, respectively, of 35 U.S.C. 112. It also sustained the rejection of claims 1-5, 12, 14, 15, 17 and 19-22 as fully met by any of patents to Tomasulo et al. (Tomasulo), Anderson et al. (Anderson) or Shimabukuro under 35 U.S.C. 102 and of the remaining claims as obvious under 35 U.S.C. 103 over those references further in view of patents to Bauer and Mullery. The board reversed certain other prior art rejections, as well as a rejection of the claims as being directed to “non-statutory subject matter.”

The Section 112 Rejections

The examiner rejected all of the claims “on the basis of insufficient and inadequate disclosure.” The examiner considered that appellant’s application did not disclose structure upon which the claims could be based. The examiner stated:

Each and every instruction in appellant’s program does not “uniquely and unambiguously identify an apparatus configuration” * * *. As an example, the sequence of 10 instructions designated as “Block Procurer” * * * shows that each and every instruction listed therein is for the purpose of manipulating data and not for the purpose of identifying any apparatus configuration * * *.

The examiner also noted that “there is a substantial repetition or - overlap of the same program instructions” being used in all of appellant’s program listings. Intermixed with the above rejections were the examiner’s contentions that appellant had failed to set forth the “best mode” of his invention.

The board started out by accepting appellant’s disclosure as being adequate “insofar as the programs detailed in the specification would be effective ultimately to condition that computer to carry out appellant’s procedure of allocating memory locations within the computer * * After noting that the specification did not sufficiently disclose any specially constructed hardware for carrying out the invention, the board stated:

Claim 1, as reproduced above, clearly carries out appellant’s expressed intent to preempt for himself every possible hardware configuration that would give the same ultimate result as the one asserted for his programming of a general purpose computer, notwithstanding the absence of an adequate teaching of any such hardware disclosure by his specification.
In our view the third paragraph of 35 U.S.C. 112 sets the bounds for construing claims couched in terms of a means for performing a stated function. Coverage can extend only to the apparatus disclosed, which here would be a programed general purpose computer, and to equivalents thereof, which would not be all possible apparatus for attaining the same result without regard to whether or not the disclosed apparatus, not the ultimate result, would suggest the equivalent apparatus. Since a programed general purpose computer bears no discernable apparatus relationship to a specially constructed machine, the broad sweep of the appealed claims finds no supporting disclosure by appellant. By specifically directing his claims to be construed as for apparatus not adequately disclosed, appellant is overclaiming his invention so as to deter, rather than promote, progress in the art.
Additionally, each of the appealed claims calls for a series of means for performing specified operations on data to be stored or recalled in a linked sequence in which each means is stated to be in combination with each of the other means set out by the claims. As the examiner has pointed out, the same instructions, and presumably the same apparatus in the programed computer, would be required to perforin each of the several functions. When this same apparatus is reconnected through each instruction of the program to carry out different functions, the means for performing the prior function no longer is in existence so that there never exists at the same time a means for performing both successive functions as the appealed claims allege by claiming a combination thereof in the same way that a special purpose computer could be claimed. Following the analogy that a programmable computer is a warehouse of parts that are connected and reconnected only by the execution of successive program instructions, there is no more a combination of the two apparatus configurations than there would be a combination, in the usual sense, between a radio transmitter and a radio receiver when the latter has been constructed from various parts taken from the former. The successive apparatus configurations are related to each other only by a procedure of reconnection and not by any structural relationship therebetween.

The examiner based his rejection of the claims under the second paragraph of section 112 on the following reasoning:

Applicant specifically states that his invention is a program or series thereof, but such applicant is confusing the issue by couching his claims in means plus function language. Such disclosed programming must be changed to method steps to be properly claimed.

The board also sustained this rejection, and its reasoning was similar to the examiner’s :

This leads to the examiner’s second rejection under 35 U.S.C. 112 as for failure to point out that which appellant considers to be his invention. Although appellant does state that he regards both a programed general purpose computer and a specially constructed apparatus to constitute his invention, we note the following on page 10, lines 2-5 of the specification:
“. . . Insofar as the present invention is concerned, the essence of applicant’s contribution lies in' the cooperative effect of the functional means, and not in any specific implementation of these functions.”

Since each of the various functions involved in appellant’s invention is required to be performed serially and appellant asserts no reliance on particular apparatus to perform these functions, he has, in effect, acknowledged that his invention is in the procedure or method and not in the apparatus that is the subject of his claims.

The Prior Art Rejections

In effect, appellant concedes that the section 103 rejection is sustainable if “appellant’s basic combinations” are found to be obvious in view of the primary references. Further, as the board noted, Tomasulo is by far the most pertinent reference, both with regard to the section 102 rejection and the section 103 rejection. We therefore see no reason to burden the opinion with detailed treatment of the other references.

Like appellant’s application, Tomasulo was concerned with the efficient allocation of memory space in computer memories. Among the recited objects of the Tomasulo invention are “to pool empty memory locations for use by input devices as needed without searching,” and “to provide means for assigning, to a plurality of inputs empty memory locations from a queue of all available empty memory locations and for assigning to said queue empty memory locations freed by any of a plurality of outputs.” The invention is generally described by Tomasulo, with inserted references to Figure la as follows:

These objects are achieved, in one embodiment of the invention, by apparatus including a plurality of input/output lines [01, 02, etc.], character assembly means [3] for each line, a memory [2] having a plurality of empty message assembly sections allocatable to said lines as needed, and means [1] for holding an inventory word for designating the beginning and the end of a queue of available empty locations in said memory. For purposes of explanation it is convenient to picture information entering and leaving on the input/output lines as serial signals (bits), groups of which form characters of information. A message comprises a plurality of characters. The serially received bits are assembled into character groups in a character assembler [3] and are then forwarded to successive locations in empty message assembly sections (or areas or blocks) of the memory. Each memory section comprises a plurality of locations, each location being capable of storing a number (one, in this simplified example) character. The last character location in each memory section is used to store a designation indicating the location of the beginning location of some other memory section [BLOCK CONTROL CHARACTERS]. Initially all empty memory sections to be used for message assembly are chained together (or pooled) into a queue in any convenient sequence, the last location of each section specifying the next empty memory location.

Each input/output line is assigned a message assembly area for assembling incoming messages, or as a source for outgoing messages. During output, when a message portion stored in a memory section is sent out on a line, a designation of the newly emptied section is added to the end of the queue. Therefore, a current inventory of all available empty sections is maintained for the common use of all lines during both input and output. A designation of the current first memory section in the queue is indicated in one portion of an inventory work [NEXT BLOCK], and a designation of the current last memory section in the queue is placed in another portion of the inventory work [END BLOCK], Each time that an empty section is needed by an input line for message assembly, the first memory section in the queue indicated by the inventory word is assigned to the line. The chaining character at the end of the newly assigned section replaces the first memory section designation in the inventory word, since it indicates the next empty available section in the queue. A designation of the first location in the newly assigned section is placed in the last location of the previous section allotted to the input line, so as to indicate where the input message is continued. Whenever a newly emptied memory section (its contents having been sent on an output line) becomes available, a designation of its location is placed in the inventory word last memory section portion, and also in the last character location of the memory section indicated by the inventory word portion being replaced. In this way the queue is extended and its new end is indicated.

In summary, the inventory word keeps track of the beginning and end of a chain of empty memory sections available for message assembly as needed. Empty sections are removed from the beginning of the chain as needed, and are added to the end of the chain as available. The inventory word is adjusted to always indicate the limits of the chain. The words “queue,” “pool” and “chain” describe the empty memory sections (or “areas” or “blocks”) available for allocation (or “assignment” or “allotment”) to input lines.

Opinion

35 U.S.C. § 112 reads in its entirety as follows:

112. Specification
The specification shall 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, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. A claim may be written in independent or dependent form, and if in dependent form, it shall be construed to include all the limitations of the claim incorporated by reference into the dependent claim.
An element in a claim for a combination may be expressed as'a means or step for performing a specified fúnction without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

The first paragraph thus requires, first, that the specification describe: (1) the invention; (2) the manner of making the invention; and (3) the manner of using the invention. How must these things be described? They must be described “in such full, clear, concise, and exact terms as to enable any person skilled in the art” to understand them. In connection with item (1), the specification must indicate to the skilled artisan what the invention is. In connection with items (2) and (3), the skilled artisan must sufficiently understand the manner of making and the manner of using the invention as to be enabled to make and use the invention. What invention do these requirements deal with? The invention subject to scrutiny by the Patent Office, or by the courts, is the invention defined by the claims called for by the second paragraph of section 112. The first paragraph also requires that the “best mode contemplated by the inventor of carrying out his invention” be set forth in the specification.

The second and third paragraphs of section 112 deal with the claims. The first sentence of the second paragraph contains three requirements. The first is, of course, that the specification conclude with claims. The second is that the claims must particularly point out or identify that subject matter which appellant regards as his invention. The last requirement is that the claims must distinctly define that subject matter, that is, their terminology must be clear and accurate so as to define the metes and bounds of their coverage.

The remaining two sentences deal with permissible forms of claiming. It is unnecessary to deal with the first of these here.

The last sentence contains no language which states or implies a further burden on the applicant. It allows the applicant to use claim language which recites a claim element in terms of “means or step for performing a specified function.” If the applicant chooses to use such language, the statute instructs the interpreter of the claims, e.g., the Patent Office or the courts, as to how such language shall be interpreted. It states that such language “shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” The emphasized language does not add any additional description requirement to that set forth in the first paragraph of the section. On the other hand, while the sentence is clearly permissive, it cannot be read as creating an exception either to the description requirement of the first paragraph, discussed supra, or to the definiteness requirement found in the second paragraph of section 112. Means-plus-function language can be used in the claims, but the claims must still accurately define the invention. Such is the plain meaning of the statutory language. What meager legislative history of section 112 exists, supports our interpretation.

Thus, if the board’s language in this case means that the third paragraph of section 112 contains a separate and additional description requirement, as the solicitor appears to argue, we must disagree. However, we agree with the board that the invention claimed must be described somewhere in the specification. At most, our difference with the board amounts to a disagreement as to the source of that requirement. Thus the first question before us narrows down to whether the apparatus which is the subject of appellant’s claims is described in appellant’s specification in the manner required by the first paragraph of § 112.

It appears to us that the crux of the examiner’s position was that the specification was essentially devoid of disclosure of apparatus which would comply with the claims. At times the examiner seemed to imply that in order to satisfy the statute appellant’s disclosure would not only have to include a detailed description of the circuits contained in the proprietary computer referred to by appellant, but would also have to include a detailed description of the physical state such circuits would be placed in by the disclosed program. The board’s position was a variation on the same theme, a major premise being that “a programed general purpose computer bears no discernible apparatus relationship to a specially constructed machine * * * [emphasis added].” A second rationale underlying the “insufficient support” rejection was first indicated in the examiner’s answer and was more fully developed by the board. It is to the effect that no apparatus fitting the claims was described because if one applied the claims to appellant’s disclosure, the identical pieces of hardware contained in the proprietary computer would necessarily fulfill more than one of the functions contained in the means-plus-function recitations of the claims. In other words, the contention is that the description is improper because the claims cannot be read on it without interpreting the claims as including multiple recitations of the same elements. To buttress this argument, it was pointed out that during operation of appellant’s program not all of the recited “means” are likely, to be in existence simultaneously.

We take both of these rationales to be under the heading of allegations that appellant’s disclosure fails to set forth the invention in such full, clear, concise and exact terms as to allow the skilled artisan to understand what the invention is. We have carefully reviewed the disclosure in the present case, and we conclude that the rejection is not sustainable in this case on either rationale.

In the first place, any allegation that the specification fails to disclose any apparatus at all, but only a programming method, is totally untenable. Not only does the specification refer to the IBM 7094 Data Processing System, but it also generally discloses such hardware as the memory and base registers which are recited in the claims, and such more specific hardware items as index registers, addressed memory locations, “Multiplier-Quotient Registers,” “Accumulator Registers” and others. It is readily apparent, from indications in the present specification and from the level of the art established by the references of record, that those skilled in the art to which the present application is directed would know what types of hardware are designated by these terms and further that the necessary hardware was available. Most important, the disclosure in this case does not merely consist in a sketchy explanation of flow diagrams or a bare group of program listings together with a reference to a proprietary computer on which they might be run. Rather, the disclosure before us goes into considerable detail in explaining the interrelationships between the disclosed hardware elements, as exemplified by the description of the functioning of the “1-Block Procurer” quoted above. True, appellant did not give a description in minute detail of the circuitry which results when his program is loaded into the computer. For example, he did not precisely identify exactly which memory elements are used in his particular 7094 computer to store the first instruction in his “GET.l” subroutine, nor did he describe the direction of magnetization those memory elements take in order to store that first instruction, nor did he describe the precise conductive element or elements which connect those memory elements to his index register 4. However, it must be borne in mind that the disclosure need not only be full, clear and exact to satisfy the statute, it must also be concise, and that the disclosure is directed to those skilled in the art. The amount of precision necessary in any given case is always a matter of degree. Absent special circumstances it is not required that every nut, bolt and rivet actually used in mechanical inventions be described, or, in chemical cases, that the electron orbital patterns for a claimed compound be set forth. Appellant contends that his specification is sufficient to place the skilled artisan in possession of the claimed inventions. The level of skill in the art which is indicated by the record before us supports that contention.

As to the second rationale, it appears to us to be based on the premise that each means-plus-function element in a claim can only be read on a single, compíete mechanical element of the invention, which performs the recited function without aid from other elements of the invention. Thus the board and the examiner considered that the means-plus-function recitations in the claims were not supported by the disclosure because some of the hardware disclosed, for example index register 4, will perform or assist in performing several of the functions listed in those means-plus-function recitations.

We find.that the application describes and identifies apparatus combinations which perform each of the functions called for by the means-plus-function recitations of the claims, and further describes how those combinations are made, and that therefore the claims are adequately supported by the specification. The role played by appellant’s index register 4, for example, in establishing blocks of storage within a memory is described in the specification and it, together with the other elements necessary to perform that function, also described, does support the claim recitation “means for establishing blocks of memory within said memory.” As appellant points out, the board’s complaint that “there never exists at the same time a means for performing both successive functions” is inconsistent with the fact that when appellant’s program is fully loaded into the computer the stored pattern of signals transforms the unprogramed machine into a new structure, with all the necessary hardware elements being physically interrelated so as to enable them to perform their specified functions. See In re Bernhart, 417 F.2d 1395, 1399, 1400, 57 C.C.P.A. 737, 742, 744 (1969). Indeed, the rejection before us is very similar to the section 112 rejection which the board overturned in Bernhart. See 417 F.2d at 1398, 57 C.C.P.A. at 741. The situation before us is not analogous to a radio receiver which “has been constructed from various parts taken from” a radio transmitter, as the board indicated. It is more analogous to a combination transmitter-receiver in which a single element, or a part of the circuitry, plays a different role depending on whether the instrument is being used to transmit or receive. An apparatus claim reciting both of the functions of the involved element or circuit in means-plus-function language is adequately supported if the apparatus is adequately described. It may be that the claim is rendered indefinite by the multiple inclusion of the same element or circuit, but even that does not necessarily follow. Techler v. Norstrud, 475 F.2d 1192 . (C.C.P.A. 1973); In re Kelly, 305 F.2d 909, 49 C.C.P.A. 1359 (1962) ; Palmer v. United States, 423 F.2d 316, 191 Ct.Cl. 346 (1969). At any rate, we again note that no rejection of these claims for indefiniteness is before us.

The board did not mention the examiner’s complaints regarding the best mode requirement, but it affirmed the rejections “[f]or the reasons set forth above as well as for the reasons set forth by the examiner in his answer and in the initial and final rejections incorporated therein by reference and not overruled by us * * We are not even sure that the examiner’s complaints with regard to the best mode were intended to amount to a separate rejection. However, treating them as a rejection for the sake of completeness, we note that they were based on alleged inadequacy of the description of the mode disclosed, for the same reasons as dealt with above, and were not based on any allegation that the mode disclosed was not the best one contemplated by appellant. Thus, for the reasons discussed above, this rejection too must fall.

With regard to the rejection based on the second paragraph of section 112, we disagree that the language from appellant’s specification which was quoted by the board amounts to an acknowledgment “that his invention is in the procedure or method and not in the apparatus that is the subject of his claims.” At any rate, even if that language amounted to such an acknowledgment or admission, at best that admission constitutes some evidence that the claims were directed to something other than what appellant regards as his invention, and such evidence would be completely refuted by the rest of the application including the claims as filed, as well as by appellant’s position throughout the prosecution of this case, all of which indicate that the invention was considered to be apparatus for processing list information.

The Prior Art Rejections

In his brief before the board, appellant characterized the Tomasulo reference as follows:

The Tomasulo patent is directed to a storage allocator which is quite similar to appellant’s FIG. 1 in many respects. Just as in appellant’s arrangements, Tomasulo “chains” unused memory blocks together by means of pointers to form a linked list of available memory blocks. Also just as in appellant’s arrangement, Tomasulo obtains an available message block whenever it is required and returns it to the available list when it is no longer required. Tomasulo does not show, however, [1] any arrangement for providing storage blocks of different sizes nor [2] for splitting or recombining blocks, as taught by appellant. Tomasulo is thus directed to one sub-combination of appellant’s overall invention and moreover, does not even anticipate all of the elements of that sub-combination.

In response to the first alleged Tomasulo deficiency, the board pointed out that “[sjince the claims do not specify that the fields or blocks be of any specified size, it is solely a matter of semantics that a ‘block’ of memory in the reference be considered as a double word and a field as a single word in the ‘block’.” The solicitor exemplified this reasoning in applying claim 1 to the Tomasulo reference, pointing out, for example, that the instantly recited “block” corresponds to a linked plurality of the memory locations which Tomasulo arbitrarily designates as “blocks.” The solicitor’s reading also correlates Tomasulo’s “block control characters” with the instantly recited “plurality of base registers.”

We agree with the Patent Office on this point. We find nothing in the extremely broad language used which prevents such a reading of the claims.

With regard to appellant’s second point concerning Tomasulo, the board stated that Tomasulo shows a memory “which may be subdivided at will by the usual addressing instructions into fields or blocks of any arbitrary size * * While that may be so, there is nothing in Tomasulo or the other references which discloses or suggests both means for dividing the storage block and for recombining said blocks, as is required by claims 3, 7, and 10-14. Thus, while we affirm the prior art rejections of claims 1, 2, 5, 6, 8, 9, and 15-22, we must reverse the rejections of claims 3, 7, and 10-14.

In summary, the rejection of claims 1, 2, 5, 6, 8, 9, and 15-22 is affirmed. The rejection of claims 3, 7, and 10-14 is reversed.

Modified.

      . Serial No. 598,508, filed December 1, 1966.

      . U.S. Patent No. 3,241,125, issued March 15, 1966, on an application filed May 22, 1962.

      . U.S. Patent No. 3,345,619, issued October 3,1967, on an application filed October 21, 1964.

      . U.S. Patent No. 3,351,917, issued November 7, 1967, on an application filed February 5, 1965.

      . U.S. Patent No. 3,047,228, issued July 31, 1962.

      . U.S. Patent No. 3,366,929, issued January 30, 1968, on an application filed December 30, 1964.

      . This requirement is not involved in the case at bar, since the sole basis for the second paragraph rejection before us was that appellant was claiming something other than what he regarded as his invention. The rejection was not based on any lack of “definiteness” in the claims.

      . See, e. g., Reviser’s Note, 35 U.S.C.A. § 112; H.R.Rep.No.1923, 82nd Cong., 2d Sess. 19 (1952).


text:
    Application of Harvey R. KARLEN et al.
    Patent Appeal No. 8987.
    United States Court of Customs and Patent Appeals.
    Aug. 9, 1973.

      Charles L. Rowe, Stanley C. Dalton, Chicago, 111., Hofgren, Wegner, Allen, Stellman & McCord, Chicago, 111., attorneys of record, for appellants.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Jere W. Sears, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and ALMOND, Senior Judge.
   BALDWIN, Judge.

This appeal is from the decision of the Patent Office Board of Appeals sustaining the rejection of claims 18-21 in appellants’ application on the basis of 35 U.S.C. § 103. Claims 1-17 have' been allowed.

The Invention

Appellants’ invention relates to a one-piece spout and handle structure for use on a liquid container which may be a glass coffee server of the type commonly used in restaurants. Claim 20, read in conjunction with Figures 1 and 3 of the application, is illustrative of the claimed subject matter:

20. For use in a liquid serving device having a flask [11] provided with an upper tubular neck [13] defining an upper end [18] and a radially outwardly projecting shoulder means [19] spaced below said upper end, structure comprising: a one-piece spout and handle element [14] including an annular portion [22] arranged to mount about said upper neck end and having means defining a pouring spout surface [15], and a lower portion [23] arranged to mount about said neck below said shoulder means, and means defining a handle [17] unitarily integral therewith and comprising manually graspable means for carrying the liquid serving device; and means [both 39] for constricting said lower portion subjacent said should [er] means to mechanically interlock said spout and handle element to said neck.

Claim 18 is substantially similar to claim 20. Claims 19 and 21 add to claims 18 and 20 respectively, that the structure is “formed of molded plastic.”

The Prior Art

Serio discloses a pouring top body for a fluid container as shown in Figures 1 and la, reproduced below:

The one-piece body 30 comprises a band having upper and lower portions 37 and 38. Spout 41 is integrally formed with the band. The band is vertically split at the side opposite the spout and the edges of the split band overlap. The edges carry “ears” 33 and 34, which serve to clamp the band around the neck portion of the container 20. A gasket 25 is placed between the band and the container neck portion. A handle 65 is bolted between the ears to simultaneously clamp the band around the container. Serio describes the body as “generally * * * formed of a metallic substance such as aluminum which is light weight and yet quite sturdy.”

Stenton discloses a detachable handle assembly for a saucepan. The assembly includes a clamping band having a handle portion which is unitary with the band. Stenton’s saucepan has a spout forming flange or lip portion which is contiguous with the rim of the pan, and is not connected to the handle assembly.

Smith discloses a one-piece handle structure for a disposable pressurized gas bottle, the structure being of a molded plastic construction.

The Rejection

The board sustained the rejection on the basis of the examiner’s reasoning that it would have been obvious to make the clamping ears of Serio integral with a handle structure in view of Stenton. It further sustained the rejection of claims 19 and 21 for the reason that it -considered that substitution of molded plastic for the metallic materials of Serio would have been obvious.

Opinion

We agree with the reasoning of the examiner and the board. While appellants contend that Serio requires that the handle be separate from the spout, it is apparent that Serio did not advance any absolute requirement in that regard. The following paragraphs are representative of the pertinent Serio disclosure:

Many containers of heat-resistant material have been designed with integral pouring spouts formed in the upper rim portion at the open end of the container. In addition, many of these types of containers are provided with integral handle portions. It has been found that in every day usage, the upper edges of such containers are highly susceptible to damage particularly at the pouring spout portion which is often chipped or broken away either while washing the container or by accidentally striking the upper edge portion of the container against some external object. It is accordingly a principal purpose of the present invention to provide an arrangement which will minimize and in fact substantially eliminate this type of damage to the upper edge portion of these types of containers.
Additionally, when the handle portions are formed integral with the heat-resistant material which may typically be formed of ceramic or other heat-resistant materials such as “Pyrex” manufactured by the Corning Glass Works of Corning, New York, the handle portion itself often becomes chipped, thereby creating sharp, jagged edges which are liable to cut the hands of persons holding the container by the handle portion. The present invention also eliminates this hazard by providing a separable handle means formed of a light-weight material which is not susceptible to such chipping.

Read as a whole, we think the emphasis in Serio requires that both the spout and the handle should be separated from the container itself, not that they be separate from each other. Aside from the fact that in the only specific embodiment disclosed in Serio the spout portion is separate from the handle portion, we find no teaching or implication that they must or should be separate. The other portions of the Serio disclosure which are pointed to in appellants’ brief and reply brief, when read in context, are not inconsistent with our view.

We find appellants’ proposed interpretation of the Stenton and Smith referenees, like that of the Serio reference, to he unrealistically restrictive. We agree with the board that it would have been within the ordinary skill in the art to make Serio’s spout-band structure integral in view of Stenton, and to make the whole assembly of molded plastic in view of Smith.

The decision of the board is affirmed.

Affirmed.

      . Serial No. 737,405, filed June 17, 1968.

      . Patent No. 3,114,484, issued December 17, 1963.

      . British Patent No. 116,788, dated June 27, 1918.

      . Patent No. 3,191,819, issued June 29, 1965.


author: ALMOND, Senior Judge.

text:
    Application of John T. MAYHEW.
    Patent Appeal No. 8954.
    United States Court of Customs and Patent Appeals.
    Aug. 9, 1973.
    James J. Shanley, Washington, D. C., attorney of record, for appellant. Raymond N. Baker, Washington, D. C., of counsel.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Fred E. McKelvey, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE, Judges, and ALMOND, Senior Judge.
   ALMOND, Senior Judge.

This is an appeal from the decision of the Patent Office Board of Appeals sustaining the examiner’s rejection under 35 U.S.C. § 112 of claims 12 and 16-20 of appellant’s application entitled “Hot-Dip Metal Coating Method and Apparatus.” In his brief before this court, appellant has requested that the appeal be withdrawn with respect to claims 12 and 16. Accordingly, the appeal is dismissed as to those claims. We reverse as to claims 17-20.

Invention

Appellant regards his invention to be an improvement for “continuous-strip molten metal coating operations.” The coating operation referred to is the process of galvanizing metal, usually but not necessarily steel. Basically this process involves advancing a preheated continuous strip of metal through a bath of molten metal. Zinc comprises greater than 98 percent of the bath and the molten metal is referred to in the art as “galvanizing spelter.”

The strip to be coated is preheated for annealing and cleaning purposes and these require that the strip be heated to a temperature that exceeds the melting point of the spelter. Because of this pretreatment, the advancing metal strip provides all the heat that is required to maintain the spelter in a molten state.

As the rate at which the strip is advanced into the bath increases, the temperature of the spelter increases and it may become overheated. According to the specification, this affects the efficiency of the galvanizing process since the usual measures taken to remedy this situation are to stop or slow the introduction of metal strip into the bath. This, of course, reduces the amount of strip that can be coated in a given time.

The specification enumerates several problems that are said to arise when the spelter becomes overheated. These include thinning of the spelter, draping of the coating applied, and uneven, nonuniform coating of the metal surface. Appellant proposes to solve these problems by immersing cooling means in the bath. Therefore, as measured by claims 17 and 20, the broadest claims on appeal, appellant regards his invention to be:

17. Continuous-strip hot-dip metal coating apparatus comprising
(a) hot-dip coating means including a coating bath containing molten coating metal, means for introducing steel strip into and means for delivering steel strip from the coating bath,
(b) means for heating the steel strip before the steel strip is introduced into the coating bath to a temperature above the melting temperature of coating metal,
(c) coolant means immersed in the coating bath for establishing heat exchange between a fluid coolant and the molten coating metal,
(d) means for providing a continuously flowing fluid coolant to the coolant means, and
(e) means for controlling coating weight on the steel strip on delivery of the coated steel strip from the coating bath. [Emphasis ours.]
20. Continuous-strip method for galvanizing steel strip comprising the steps of
(a) preheating steel strip to a temperature substantially above a desired molten galvanizing bath temperature,
(b) adding heat to the molten galvanizing bath by introducing the preheated strip into the molten galvanizing bath while the strip is at a temperature substantially higher than the desired temperature of the galvanizing bath,
(c) subjecting a portion of the bath to a cooling action by heat exchange of the portion of the bath with a coolant in heat exchange means immersed in the portion of the bath [Emphasis ours],
(d) moving the strip through the molten galvanizing bath,
(e) delivering the coated strip from the galvanizing bath, and
(f) controlling the coating weight of molten galvanize coating on the strip upon delivery of the steel strip from the molten galvanizing bath.

Other than the underlined portions, the elements of these claims are those known to the prior art. Claims 18 and 19 depend from claim 17 and add limitations not pertinent to our decision.

The Rejection

The rejection of these claims as variously expounded by the examiner and board grows out of the fact that appellant’s specification sets forth but a single embodiment of the invention. This embodiment can best be seen by considering Fig. 2 of the specification set forth below:

In Fig. 2, preheated strip 34 is shown being introduced into bath 36. It passes around roll 40 and then travels upward through a zone of cooled spelter 44, defined by the broken lines. This zone is created by circulating a coolant through conduits 46, 48, 52 and 54 immersed in the bath. Rolls 41 and 42 are used to control the thickness of the coating applied to the metal.

No embodiments are specifically described in the specification wherein cooling means are located in any position but that adjacent to the point where the strip leaves the bath. Furthermore, the specification does not explicitly state that the cooling means can be located anywhere in the bath.

The examiner based his rejection under section 112 on the ground that the claims in question were “indefinite.” The board agreed with the statutory basis for the rejection but not with the reasoning behind it, saying:

We are unable to discover in the specification the manner in which appellant’s apparatus and process can be operated when the controlled cooling is in any position other than adjacent the exit side of the bath. We agree fully with the Examiner’s position except that we do not consider the claims to be indefinite but rather to fail to find adequate support in the specification (35 U.S.C. § 112, first paragraph).
* * * * «■ *
In our opinion the Examiner’s rejection is clearly sustainable since the specification does not point out how appellant’s method and apparatus can be made operative by cooling at any position other than that described in the specification.
Opinion
The precise manner in which the specification fails to support claims which would allow cooling to be done in a position other than the exit point is not altogether clear from the board’s remarks. However, we think the board’s opinion can be considered to raise the question of whether the specification satisfies the separate description and how to use requirements of section 112, first paragraph. In re Ahlbrecht, 435 F.2d 908, 58 CCPA 848 (1971).

The solicitor sets forth his position in the following terms: •

->:• * * appellant’s specification does not contain a description commensurate with the scope of the invention covered by claims 17 — 20 which would enable one skilled in the art to use that invention as broadly claimed. [Emphasis in original.]
In the specification, it is stated:
The present invention eliminates these problems by controlling the temperature of molten spelter which forms the final coating on the strip. A cooled spelter zone is located in the galvanizing bath so as to deliver strip which is coated with spelter at the desired temperature for effective coating control and to produce coating smoothness.

There is nothing in this statement that indicates that the cooling means had to be located adjacent the exit point for the strip. In fact, that appellant contemplated that the cooling means could be positioned elsewhere is evident from the following statement in the specification:

There are other circumstances in hot-dip coating where the temperature of the bath must be above optimum coating temperature for the particular coating metal. Applicant has discovered that under such circumstances a superior product can be produced by preferentially lowering the temperature of the bath in a zone contiguous with strip approaching exit from the bath. [Emphasis ours.]

In other words, the cooling means can be located adjacent the exit point when it is desired, for reasons not specified, to maintain the rest of the bath at a temperature above the optimum for coating purposes. Thus, the placement of the cooling means at this point is a matter of choice or convenience rather than a requirement inherent in the process.

We think these passages from the specification are sufficient to clearly convey to one skilled in the art the information that applicant has invented the subject matter claimed and this satisfies the description requirement of section 112. In re Ruschig, 379 F.2d 990, 54 CCPA 1551 (1967).

However, as the solicitor recognizes, even if the specification describes the invention as broadly as it is claimed, a rejection based on the first paragraph of section 112 might still lie since the specification must also present enough information “to enable any person skilled in the art * * to make and use * * * ” the invention as claimed. In re Moore, 439 F.2d 1232, 58 CCPA 1042; In re Ahlbrecht, supra.

Even though the specification does not actually describe an apparatus having cooling means located elsewhere than at the exit point, appellant argues that, given his disclosure, one skilled in the art would be able to locate the cooling means elsewhere in the bath than adjacent the exit point and achieve the desired result of reducing the temperature of the spelter at that point. For example, according to appellant the cooling means can be located at the entry point for the strip. This could be used to reduce the temperature of the strip so that it did not overheat the bath in the first place. Alternatively, he points out that cooling means located anywhere in the bath will affect the bath as a whole.

. The board was not persuaded since it felt that the claims did not preclude having as a part of the apparatus or using as a part of the process a source of heat in addition to the heated strip. Presumably it felt that supplemental heating might result in hot spelter at the exit point unless the cooling means were located there, at least this is a rationalization offered by the solicitor in support of the board’s position.

Appellant argues that this is an illogical construction of the claims since one skilled in the art attempting to deal with the problem of overheated spelter caused by the strip is not going to be adding heat from another source. Wé agree. In our view, the Patent Offjieu has not backed up with acceptable $Barn dence or reasoning its assertion that^fcrt scope of enablement is not comment»,,r rate with the scope of protection sought. This it must do when rejecting claims as being based on a specification which does not adequately describe how to make or use the invention. In re Marzocchi, 439 F.2d 220, 58 CCPA 1069 (1971).

We believe the rejection could have been proper only if evidence or reasoning had been advanced which would indicate that locating the cooling means at a point other than adjacent the exit point for the strip would not achieve the desired result of lowering the temperature of the spelter at that point. A statement merely doubting this can be done is not enough.

For the foregoing reasons the decision of the board is reversed as to claims 17-20 and the appeal is dismissed as to claims 12 and 16. -

Reversed.

      . Serial No. 704,193 filed November 7, 1967.