source: Caselaw Access Project

author: ALMOND, Judge. RICH, Acting Chief Judge BALDWIN, Judge

license: Public Domain

text:
    Application of Olof H. HELLSUND.
    Patent Appeal No. 8607.
    United States Court of Customs and Patent Appeals.
    March 15, 1973.
    Rich, Acting Chief Judge, concurred in result and filed opinion.
    Baldwin, J., concurred and filed opinion.
    Richard E. Lyon, James W. Geriak, Thomas D. Kiley, Los Angeles, Cal., Francis D. Thomas, Jr., Washington, D. C., Lyon & Lyon, Los Angeles, Cal., attorneys of record, for appellant.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Raymond E. Martin, Washington, D. C., of counsel.
    Before RICH, Acting Chief Judge, ALMOND, BALDWIN and LANE, Judges, and RAO, Judge, United States Customs Court, sitting by designation.
   ALMOND, Judge.

This is an appeal from the decision of the Patent Office Board of Appeals affirming the rejection of claims 1, 2, 4, 7-10, and 21-23 of appellant’s application entitled “Continuous Casting Process and Apparatus.” No claims were allowed.

The invention relates to the continuous casting of polymers into sheets. Appellant’s apparatus can best be understood with reference to Figs, la, lb and 2, reproduced below:

Appellant casts polymeric sheets by feeding a monomer between two moving endless belts and curing (polymerizing) the monomer while it is contained within the space between the belts. Liquid monomer is fed to the top of lower belt 12 at point 18. The monomer is carried between rollers 13 and 16, at which point it becomes enclosed between the lower run of upper belt 11 and the upper run of lower belt 12. The two belts move through the curing zone 29 at the same speed. Curing is effected by heating the monomer, preferably by spraying belts 11 and 12 with hot liquid. The liquid, such as water, is sprayed from nozzles 33 which are positioned above and below the monomer as shown in Fig. 2. The polymer sheet may be postcured in zone 30. Belts 11 and 12 are supported at the desired distance from each other by rolls, such as rolls 37 and 38 in Fig. 2, which are spaced at short distances throughout the curing and post-curing zones.

As can be seen from the drawings, belts 11 and 12 follow a downward inclined path from the point defined by rolls 13 and 16 until they reach postcur-ing zone 30. The path is inclined in order to avoid problems previously encountered in polymer casting. It appears that continuous polymer casting between horizontal endless belts had previously been known, but that it had been impossible to maintain the spacing between the belts. This resulted in the lack of control over the thickness of the product. This problem was overcome by running the belts at an angle to the horizontal for the length of the curing zone so that a pressure head of the liquid monomer is developed which is sufficient to maintain the spacing between the belts until the liquid is polymerized. Appellant did not discover the use of the inclined path to maintain the spacing between the belts. Appellant’s contribution resides in the suggestion that while the belts are inclined they should follow a curved path which is defined by their own natural curvature.

Claim 1 is illustrative:

1. A process for preparing substantially rigid sheets and the like which comprises passing a fluid composition comprising a polymerizable organic monomer between and in contact with two moving surfaces, providing a pair of seals between said surfaces such that said fluid composition is confined in a space bounded on two opposing sides by said seals, allowing said fluid to fill the cavity defined by said surfaces and said seals, passing said composition and moving surfaces through at least one zone in which said composition is subjected to conditions which cause said monomer to polymerize, one of said surfaces being disposed above the other of said surfaces in said zone, said upper surface being of such a size and weight that it would bow downwardly into said fluid and toward said second surface if said surfaces were horizontal in said zone, the path of said surfaces through said zone being defined by the natural curvature of said moving surfaces and maintaining said surfaces at an incline to the horizontal in said zone to cause a fluid head to be developed by said fluid composition whereby the fluid pressure exerted by said fluid composition is sufficient to maintain said surfaces substantially parallel to each other and the spacing between said surfaces at a predetermined distance in said zone, said natural curvature being substantially that which said surfaces would assume if supported only at the upper and lower limits of said incline, bringing said surfaces together to an extent sufficient to compensate for any shrinkage of the composition during polymerization such that said surfaces are maintained in contact with said composition during polymerization, and removing the resultant polymerized sheet from both of said surfaces.

The other claims add limitations concerning the monomer used, specify that the moving surfaces are made of stainless steel, add a postcuring step, or differ from claim 1 in other respects not pertinent here. No distinction between the claims has been drawn, and accordingly they will stand or fall together.

The rejection of the claims was made on the basis of a patent to Opel et al. (Opel). It is clear from the patent that it was Opel who solved the problems associated with horizontal belt continuous casting by arranging the endless belts so that they are “inclined in such a manner that the pressure of the materials between the belts is sufficient to maintain the spacing between them at a desired predetermined distance.” The Opel patent refers to the present application, treating appellant’s “natural curve” process as a specie of the generic invention of placing the belts at an incline :

As claimed herein, the inclined path of the moving belts may be a straight line or, as claimed in copending application Ser. No. 490,897, filed on the same date as the present application in the name of Hellsund, and assigned to the assignee of the present application, these belts may follow a curved path which is defined by the natural curvature of the belts.

The patent further states:

It is to be understood that the word “inclined” as used in the present specification and claims is intended to include straight, curved, angular or other paths which may be defined by a belt moving between a first roller and a second roller wherein the first roller is at a height greater than that of the second roller.

Figures la, lb, and 2-5 of the Opel patent are essentially identical with Figs, la, lb, and 2-5 of the present application, and the description of the apparatus depicted in those figures is correspondingly similar. The patent also contains Figs. 6 and 7, which are directed to the straight line inclined path process apparently invented by Opel.

Appellant does not contend that he invented the straight line or generic variation of the process. ' On the contrary, appellant’s application specifically states:

However, it was not until the process and apparatus described and claimed in copending application Serial No. [490,945, now the Opel patent], filed on the same date as the present application in the names of Opel et al and assigned to the same assignee as the present application was developed that continuous easting of monomers on a commercial scale became possible. Certain problems continued to be experienced with regard to the use of the Opel et al process and apparatus including the need for extremely tall buildings to house the inclined portion of an apparatus of substantial length and the difficulty in maintaining the inclined portion in the desired position. Furthermore, the inclined portion of the Opel et al apparatus required rather massive supporting structures, and it was desired to simplify this portion of the apparatus.

The examiner rejected the claims under both section 102 and section 103 of the statute. The section 102 rejection, based on the premise that some “natural sag” would occur in even the straight line inclined path embodiment of Opel, was not sustained by the board.

Appellant argued before the board that the section 103 rejection should be reversed on two grounds: (1) that the Opel disclosure was not prior art with respect to appellant’s application since they were both filed on the same day; and (2) that even if the Opel disclosure were available as prior art, appellant’s invention would not have been obvious to one of ordinary skill in the art in view of the Opel disclosure. In his Answer, the examiner contended that appellant had admitted that the Opel invention was prior to his invention, pointing to the statements in appellant’s application quoted above and also referring to statements allegedly made at an interview. The examiner postulated that the Opel disclosure was available as prior art under 35 U.S.C. § 102(a), (f) or (g)-

Appellant submitted a brief in reply to the examiner’s Answer. Whether or not appellant had previously admitted that part of the disclosure of the Opel patent was available as prior art, such an admission was clearly made in that reply brief. The pertinent portions of the reply brief are set forth below, with almost all emphasis being ours:

It is pointed out that the disclosure of Patent No. 3,376,371 is not available in its entirety, but only insofar as the disclosure therein [is] acknowledged as prior art in the present application. Indeed, it is expressly pointed out at column 2, lines 66-70 of Patent No. 3,376,371 that the embodiment comprising the use of curved belts is not the invention of the paten-tees but rather the invention of Hell-sund, the applicant here. The Examiner appears to recognize this distinction at pages 6 and 7 of the Examiner’s Answer, but goes on to find that it is “obvious” because:
1. Natural curvature is known; and
2. “It is not an unobvious result that continuous casting through a curved path is as feasible as continuous casting through a straight inclined path”.
* *

Furthermore, the acknowledged prior art represented by part of the disclosure of Patent No. 3,376,371 in no way encompasses many of the specific limitations set forth in the appealed claims. For example, the shape of the curve recited in claim 23 is in no way disclosed or suggested by that part of the disclosure of Patent No. 3,376,371 which is available as a reference.

The board devoted much of its opinion to the determination of “what prior art is available for use, and, if any, the statutory basis on which [it] is [to be] used.” The board concluded that the prior invention of Opel was available as prior art by virtue of 35 U.S.C. § 102(g). Before us, appellant argues that the board’s holding was in error, and that the Opel patent is not available as prior art.

We find no need to treat the board’s discussion of 35 U.S.C. § 102(g) in view of the above-quoted portions of appellant’s reply brief and the acknowledgments in his application concerning the Opel invention. We are not convinced that the board committed error in holding what appellant has termed “that part of the disclosure of Patent No. 3,-376,371 [the Opel patent] which is available as a reference” to be usable against appellant’s invention. In re Garfinkel, 437 F.2d 1000, 58 CCPA 883 (1971); In re LoPresti, 333 F.2d 932, 52 CCPA 755 (1964); cf. S. N. Turner, Admissions as Prior Art Under 35 USC 103, 52 J.P.O. S. 249 (1970). Of course, the board did not use that part of the Opel patent which discloses what it acknowledges to be appellant’s invention as prior art against the instant claims. See In re Mathews, 408 F.2d 1393, 56 CCPA 1033 (1969); In re Facius, 408 F.2d 1396, 56 CCPA 1348 (1969). As appellant point out, the Opel patent is usable against the instant claims “only insofar as the disclosure therein [is] acknowledged as prior art in the present application.”

Having decided that Opel was usable as prior art, the board went on to find that appellant’s claimed invention would have been obvious in view of Opel. The board considered that “straight or natural sagging, and horizontal or sloping, conveyor belts are all well known as engineering matters.” The board discredited appellant’s argument that the use of the curved path decreased the necessary height of the casting apparatus by showing that the height of the apparatus used in appellant’s example, which utilized a curved path, was actually greater than the height of the apparatus used in an essentially identical process in Opel Example 2, which utilized a straight line inclined path. We agree with the board’s reasoning on this issue, and conclude that the claimed invention would have been obvious to one of ordinary skill in the art in view of the portion of the Opel disclosure relied on.

The decision of the board is affirmed.

Affirmed.

RICH, Acting Chief Judge

(concurring) .

There are several cogent reasons why I cannot join Judge Almond’s opinion. I shall first name them and then discuss them.

1. The opinion does not deal with the issue raised by the board’s decision and briefed and argued in this court.

2. The opinion does not accurately state the ground of rejection before us and is confusing as to the role played in that rejection by the Opel et al. patent.

3. In accepting appellant’s admissions as the sole basis for affirming the board and as support for an obviousness rejection under § 103, the opinion goes further than this court has ever gone before, further than the Patent Office has gone, goes contrary to what the Patent Office did in this ease, and creates a very dangerous precedent. (See 5 below.)

4. The opinion declines to consider what, if any, statutory basis exists for using an applicant’s admission as establishing “prior art” under § 103. Admitted prior invention is not necessarily “prior art” under § 103.

5. By refusing to consider § 102(g) or to relate the use of the admission of prior invention by Opel et al. to it in any way, the opinion discards safeguards carefully written into § 102(g) to prevent the use of prior abandoned, suppressed, or concealed, inventions as “prior art,” opening the way to the use of such inventions as “prior art.”

DISCUSSION

It first becomes necessary to state clearly what is the sole rejection on appeal. The rejection is for obviousness under § 103 which says:

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. [My emphasis.]

As the board said,

The major question presented for decision in this appeal is the determination of what prior art is available for use and, if any, the statutory basis on which [it] is used. [My emphasis.]

We said in In re Hilmer, 359 F.2d 859, 879, 53 CCPA 1288, 1313 (1966) :

Much confused thinking could be avoided by realizing that rejections are based on statutory provisions, not on references, and that the references merely supply the evidence of lack of novelty, obviousness, loss of right or whatever may be the ground of rejection.

We then discussed an illustrative case in which a certain patent was relied on to show what invention had been found, in an interference, to be a prior invention and pointed out, after using that patent for that limited purpose, that the “patent had no relevance as such.” (As I will show, this has a bearing on what Judge Almond’s opinion says about the Opel et al. patent.) The above quotation from Hilmer has been applied in In re Land and Rogers, 368 F.2d 866, 875, 54 CCPA 806, 819 (1966); In re Facius, 408 F.2d 1396, 1406, 56 CCPA 1348, 1357 (1969); and In re Bergstrom, 427 F.2d 1394, 1399, 57 CCPA 1240, 1246 (1970).

What, then, is the statutory basis of the rejection before us in this case? All are agreed that Hellsund’s claims were rejected for obviousness under § 103 in view of the prior art. Judge Almond’s opinion correctly states that, “The board concluded that the prior invention of Opel was available as prior art by virtue of 35 U.S.C. § 102(g).” (Emphasis mine.)

Since the board’s opinion is unpublished and has not been quoted from, we can see what it actually concluded, and what issue was appealed, only by setting forth its reasoning (all emphasis mine):

The examiner predicates the availability of the subject matter he is using as prior art upon paragraphs (a), (f) and (g) of Section 102.

The “subject matter” the examiner was using, as the board had just pointed out, was the invention of Opel et al. which was described in their patent (along with Hellsund’s invention). Rejection was not based on the Opel et al. patent as such. The board continued:

Paragraph (e) of 102 is not applicable since the applications have the same filing date. Paragraph (a), referred to by the Examiner, is not, by itself, considered applicable since the prior knowledge and use referred to in this paragraph is now generally interpreted as referring to public prior knowledge and use. Paragraph (f) would be applicable but the use of this paragraph would require that the present applicant had knowledge of the prior subject matter at the time he made his improvement. This may very well be the case here, but it is unnecessary to consider this matter in view of the presence of paragraph (g) under which this fact would be irrelevant.
Paragraph (g) of Section 102 refers to the prior invention of another. This paragraph is not restricted to interference proceedings, but is the basis upon which the defense of prior invention may be raised against the validity of a patent in an infringement suit and which, if proven, would render the patent invalid.

The board cited no precedents in support of the last statement but I will supply some: These two are from the Solicitor’s brief: Armour & Company v. Swift & Company, 320 F.Supp. 433 (D.C.N.D.Ill.1970), (Findings of Fact 18, 19 and Conclusion of Law 2); Lorenz v. Berkline Corp., 137 USPQ 29 (D.C.N.D.Ill.1963) (Conclusions of Law 11, 17, and 21.) See also Sutter Products Co. v. Pettibone Mulliken Corp., 428 F.2d 639 (7th Cir. 1970); Grinnell Corp. v. Virginia Electric & Power Co., 277 F.Supp. 507 (E.D.Va.1967). There are others which the Patent Office cited to us. The board opinion continues:

Normally, this type of rejection is not made in ex parte prosecution of applications since necessary evidence relating to prior invention is not at hand and is not searched for as such, and a rejection of this kind is normally only applied when an antecedent interference contest between the same parties has established a prior invention. However, when the facts are matters of record, or acknowledged, or not in dispute, 102(g) is used as a basis for rejection in ex parte practice. In this particular case there is no dispute as to the invention of Opel and Bottoms being prior to the time appellant made his improvement; this is readily evident from the presentation of the cases and is freely acknowledged by appellant. * * "•
The prior art used in this case is the prior invention of Opel and Bottoms, and this is made available by paragraph (g) of Section 102. The Opel et al. patent and its claims are used for the purpose of delineating this prior invention * * *. In this sense the patent is the reference as containing a disclosure of the prior invention.
-x- -x- -x- * -x-
* * * the prior invention of another is acknowledged (or admitted) and the statute in Section 1Ó2 makes the prior invention available as prior art.

This, then, was the decision from which appeal was taken to this court. The single reason of appeal filed asserted, inter alia, that the record does not permit reliance on the invention disclosed in the Opel et al. patent, “assert-edly made available as prior art under 35 U.S.C. § 102(g).” Appellant’s brief argues this case on the basis of what the conclusion of that brief says are the “primary issues raised by this appeal,” namely “whether or not Section 102(g) has any applicability whatsoever in an ex parte proceeding, and, if so, the extent to which Section 102(g) stands as a source of Section 103 prior art.” The first two points of the Patent Office brief are:

1. Prior invention by another is a proper basis for ex parte rejection under section 102(g)
2. The facts of the case justify a holding that the pertinent portions of Opel are “prior art” made available under section 102(g).

Judge Almond’s opinion declines to deal with these issues raised by the appeal, passing them by with the statement that “We find no need to treat the board’s discussion of 35 U.S.C. § 102(g) in view of” Hellsund’s admission.

Hellsund’s admission goes only to the existence of the Opel et al. prior invention. He has vociferously denied in this court that it could be used against him as “prior art” under § 103. Judge Almond’s opinion uses admissions about the priority of the Opel et al. invention without answering that argument and without saying what, if any, statutory basis exists for using it as § 103 prior art. So far as the opinion goes, the admitted prior invention is used without any statutory basis.

The evident effect, if not the intent, of Judge Almond’s reasoning is to make all admissions by applicants of prior invention by others “prior art” without limitation. The Patent Office tied its use of the Opel et al. prior invention as “prior art” under § 103 to § 102(g) which contains the safeguard that the prior invention is not usable, as § 103 “prior art” or otherwise, if “abandoned, suppressed, or concealed.” Judge Almond’s opinion discards this safeguard. It does not limit use of another’s prior invention to § 102(g) or to § 103 but makes it available even for a § 102(a) rejection which the board was careful to limit to knowledge or use which was public. Admitted prior invention under this opinion could thus be held to be support for a § 102(a) rejection on the ground that “the invention was known * * * by others in this country •x- * * before the invention thereof by the applicant” even though the invention of the other had been abandoned, suppressed, or concealed. Discovery procedures might well bring to light such prior invention of others. I am not imagining this. The examiner made that very rejection in this case. The Board of Appeals refused to sustain him.

In point (2), supra, I said the role of the Opel and Bottoms patent as a basis for the rejection, as explained in Judge Almond’s opinion, is confusing. I will explain why.

In its initial discussion of the rejection, the opinion says: “The rejection of the claims was made on the basis of a patent to Opel et al. (Opel),” and points out in a footnote that the application for that Opel and Bottoms patent was filed on the same day as the Hellsund application at bar. Though the opinion does not mention the legal results which necessarily follow from that fact, they are that the patent is not a reference as of its issue date (35 U.S.C. § 102(a) or (b)) and not a reference as of its filing date (35 U.S.C. § 102(e)) to show prior invention. The rejection was not “on the basis of a patent to Opel”. It was on the basis of evidence, only part of which is in the patent, of a prior invention by Opel and Bottoms, and its statutory ground is found in both § 102(g) and § 103. That is what this case is all about. The priority of Opel’s invention rests entirely on admissions, without which the Opel patent would have no effect whatever, but the use of the admissions is predicated on § 102(g) or on nothing.

Finally, I refer to the fact that this court has limited statutory jurisdiction in ex parte patent appeals, limited to review of “the decision of the Board of Appeals,” a jurisdiction still further restricted by the points raised by the reasons of appeal. 35 U.S.C. §§ 141-144. Ordinary notions of procedural due process dictate that our decision should be based on and limited to the issues decided below and raised here by the appeal and argued by the parties.

The issue decided below, except for the obviousness question, raised by the solitary reason of appeal, and argued and briefed by the parties, is whether a prior invention of another, made in this country, and established by evidence and admissions of the appellant, constitutes “prior art,” within the meaning of that term in § 103, by virtue of § 10S\(g). My answer to that question is in the affirmative. Judge Almond’s opinion finds “no need to treat the board’s discussion of 35 U.S.C. § 102(g).” On this point, appellant’s brief concludes that “much has been said in this regard — it is time the matter be decided.” It has now been decided in In re Bass, 474 F.2d 1276 (CCPA), decided concurrently herewith, but not applied here.

One issue never present or argued in this case is whether all admitted prior invention — -regardless of abandonment, suppression or concealment — is to be considered “Prior art” under § 103. If there had ever been such an issue, we surely would have had arguments that we have not had; yet, without benefit of argument, that is what Judge Almond’s opinion seems to regard as the law. The opinion cites In re LoPresti and In re Garfinkel, neither of which cases has ever been considered to stand for any such broad proposition. Of course, the article cited, by Turner, whose qualifications are missing, is authority for nothing. It is mere discussion and speculation. In Garfinkel we said (437 F.2d at 1004, 58 CCPA at 887):

Because appellant has from the beginning treated the information in Kis-tler [a publication] as “prior art,” we will do likewise.

By contrast, Hellsund has argued from the beginning of this case that the Opel and Bottoms prior invention is not “prior art” under any part of the statute. In LoPresti we said “The Craggs and McCann patent * * * is prior art as expressly provided in 35 USC 102(e).” Rule 131 affidavits overcame it as such but LoPresti admitted in his application and brief that his invention was an improvement upon the prior Craggs and McCann invention as disclosed in the § 102(e) reference patent. We used that admitted prior invention as a basis for affirming a § 103 rejection. We neglected to say what section of the statute authorized us to use the admitted prior invention as § 103 prior art. We considered that we had the patent before us as “prior -art” under § 102(e) and we said “the case must be decided on the assumption it is prior art notwithstanding the affidavits.” It is not one of our better-reasoned opinions and has long been an anomaly in the law. The board opinion in this case has bailed us out, saying, in discussing Lo-Presti,

Our analysis of the question merely expands the court’s condensed reference to an admission of prior art and gives the statutory basis 10^(g)~\; the prior invention of another is acknowledged (or admitted) and the statute in Section 102 makes the prior invention available as prior art. [Emphasis mine.]

The present ease is the first in which it has been proposed to altogether detach admitted prior invention of another from the statute, relying only on the admission without any statutory basis whatsoever for doing so. In Garfinkel we were sure a basis was to be found somewhere in § 102; in LoPresti we thought we had it in § 102(e). In Judge Almond’s opinion it is said to be unnecessary to discuss § 102(g), the only part of the statute which authorizes use of Opel’s invention as prior art. I consider that a very dangerous legal proposition for the reasons hereinabove stated.

Since I consider the Opel and Bottoms prior invention to be available under § 102(g) and § 103 “prior art” and as I agree that Hellsund’s invention has been shown to be obvious within the terms of § 103, I agree to affirmance.

It will be evident from the opinions in the ease of In re Bass, 474 F.2d 1276 (CCPA), decided concurrently herewith, that a majority of the court deciding that case holds the view that prior invention of another within the terms of § 102(g) constitutes “prior art” under § 103. I deem it to be in the best interest of a sound patent system to make that point entirely clear and to base rejections on statutory grounds whenever they apply. I consider it highly undesirable to affirm a rejection which was squarely based on the statute on an applicant’s admission without tying it to any statutory provision, as is being done here, for the reasons I have stated. An admission of prior invention, as distinguished from an admission of “prior art,” is not enough to create a statutory ground of rejection and the opinion here leaves the law afloat without compass or' rudder. The Bass majority opinion also contains an analysis of § 102 which answers some comments in Judge Baldwin’s concurring opinion in this case.

BALDWIN, Judge

(concurring).

I fully agree with the majority opinion. I would add some further observations.

The majority opinion merely follows In re LoPresti, 333 F.2d 932, 52 CCPA 755 (1964) and In re Garfinkel, 437 F.2d 1000, 58 CCPA 883 (1971). In view of the language in appellant’s reply brief before the board it cannot seriously be questioned that appellant has admitted that part of the disclosure of the Opel patent is available as prior art for the purposes of the section 103 rejection. That being the case, LoPresti and Garfinkel are in point and controlling. No substantial reason has been advanced why those cases should be overruled.

The statutory basis for the rejection before us is 35 U.S.C. § 103. I wish to point out that the present case, LoPresti and Garfinkel are all fully consistent with, and lend some support for, my interpretation of that section of the statute, particularly with regard to the meaning of the term “prior art” as used therein. Nowhere in the 1952 Act is it stated that the term “prior art” as used in section 103 is defined by section 102. After reviewing the legislative history of the 1952 Act, especially sections 102 and 103, I have concluded that the term was used in section 103 as a term of art. That is, the drafters intended the term “prior art” to have the same meaning in section 103 as had been established by the courts over the years, rather than giving it some special meaning to be defined in the statute. Since section 102 does not define what is “prior art,” material may be “prior art” within the meaning of section 103 although that material is not mentioned in section 102. Likewise, while much of what is mentioned as defeating novelty or establishing loss of right under section 102 is also “prior art” under section 103, much of section 102 deals with matter which is not prior art at all. Section 102(c) is one obvious example. I contend that section 102(g) is another. I am aware, of course, that my view of the statute is not absolutely compelled by LoPresti, Garfinkel and the present case.

With regard to the other concurring opinion, most of the arguments made therein fall of their own weight. I would point out that appellant’s sole reason for appeal was clearly intentionally drawn with language broad enough to claim error in the use of any part of the Opel patent as prior art on any basis. Such a broad reason of appeal is to be expected, since the board found it unnecessary to consider all of the bases upon which the examiner concluded that part of the Opel patent was available as prior art. While it is true that large parts of the parties’ briefs are devoted to the question of whether prior invention under section 102(g) is prior art under section 103, the parties, by agreeing that that issue is presented, cannot compel us to act as if appellant’s admissions had never been made.

The other concurring opinion states that LoPresti “is not one of our better-reasoned opinons and has long been an anomaly in the law.” That case was cited by the board as support for the proposition that prior invention under section 102(g) is prior art within the meaning of section 103, and it has been cited elsewhere for the same proposition. The other concurring opinion apparently condones the board’s infusion of a section 102(g) rejection into the LoPresti case some five years after that case was decided. There was no section 102(g) rejection in that case, and the Rule 131 affidavit had removed section 102(e) as a basis for rejection. There, as here, the statutory basis for the rejection was section 103, and the “prior art” used was that which appellants had admitted was prior art. It is submitted that the LoPresti decision as handed down by this court, and not as the board endeavored to amend it, is controlling in this case. We can not ignore appellant’s admissions that part of the disclosure of the Opel patent is prior art.

I additionally note that it has been the practice in this court in separate opinions, either concurring or dissenting, to refer to the opinion concurred in or dissented from as “the majority opinion” if it represents the majority view of the court, or as “the principal opinion” if it represents a minority view but contains the recitation of the facts necessary for understanding of the case. It is elementary that the opinions of this court speak for those judges who voted for them, and not just for their authors.

      . Serial No. 490,897 filed September 28, 1965.

      . U.S. Patent No. 3,376,371, issued April 2, 1968, to C. J. Opel and P. H. Bottoms, on an application filed September 28, 1965, the same day appellant’s application was filed.

      . While there may be a possibly unique exception to this truism in obviousness-type double patenting rejections, which are based on case law, In re Zickendraht, 319 F.2d 225, 50 CCPA 1529 (1963), concurring opinion, the statement is certainly true of the kind of issues in this case, lack of novelty or obviousness over prior art. These are certainly rejections based on statutory grounds.

      . It would be a public service to publish it in view of the importance of the real issue in this case and in the companion case of In re Bass, 474 F.2d 1276 (CCPA) decided concurrently.

      . From the record we are uncertain whether the type of “prior art” referred to is of the § 102(f) or § 102(g) variety or whether it is of the “known * a- * in this country” type as in § 102(a). What is clear, however, is that appellant has admitted that as to him the information in Kistler is prior art of some type. [My emphasis.]

      . See my concurring opinion in In re Bass, 474 F.2d 1276 (COPA), decided concurrently herewith.

      . That matter not mentioned in section 102 may be prior art is at least implied in the statement in In re Harry that:
      Thus “prior art” means at least those things named in section 102.
      333 F.2d 920, 923, n. 2, 51 COPA 1541, 1546, n. 2 (1964). Of course, I disagree with that reasoning.

      . The reason of appeal reads as follows:
      1. In rejecting claims 1, 2, 4, 7-10, 21, 22 and 23, as unpatentable as obvious in view of the invention of Opel and Bottoms disclosed in Opel et al. Patent 3,376,371 assertedly made available as prior art under 35 U.S.O. § 102(g). The record does not permit reliance upon Opel et al. Patent 3,376,371, or the invention disclosed therein as prior art and the terminal disclaimer filed in the present application precludes reliance on the claims of Opel et al. as a ground of rejection. Furthermore, the appealed claims are not obvious in view of the invention of Opel et al.


author: BALDWIN, Judge.

text:
    Application of Dennis B. FREEMAN and Peter Burden.
    Patent Appeal No. 8798.
    United States Court of Customs and Patent Appeals.
    March 8, 1973.
    Richard P. Mueller, William J. Schramm, Niagara Falls, N. Y., attorneys of record, for appellants.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents; Fred E. MeKelvey, 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 sustaining the examiner’s rejection of all the claims in appellants’ application, on the basis of 35 U.S.C. § 103.

The Invention

Appellants’ invention concerns a phosphate-containing composition suitable for coating metal surfaces and serving as a base to which paint will adhere. The specification states:

At the present time * * * many articles which are to be phosphate coated are made of more than one metal, and, thus, may have surfaces of any two or all three of iron, zinc and aluminum. Additionally, it has now become a more common practice to handle iron, zinc and aluminum articles at the same coating line location, so that the development of a coating solution and process which may be used satisfactorily to coat all three of these metals is highly desirable. Unfortunately, up to the present time it has not generally been possible to coat steel, zinc and aluminum in the same * * * phosphate coating bath, so as to provide an amorphous coating on the surface of all three of these metals which will permit the deformation of the painted metal surface without adversely affecting the paint film.

Appellants solve this problem by using a coating composition such as that set forth in claim 11:

11. A composition suitable for coating surfaces of zinc, steel and aluminum which consists essentially of an acidic aqueous solution, substantially free of alkali metal ions, containing an ammonium primary phosphate, fluoride ions and an accelera-ator selected from water soluble compounds of tungsten and molybdenum, said fluorides being selected from water soluble fluorides, fluoroborates and silieofluorides.

The preferred composition contains primary ammonium phosphate, ammonium flouride, either ammonium molybdate or ammonium tungstate, and phosphoric acid. Appellants also claim a coating method, exemplified by claim 6:

6. A method of forming a paint-base coating on the surfaces of zinc, steel, and aluminum, which comprises contacting the surface to be treated with the coating solution as claimed in Claim 11, and maintaining the solution in contact with the surface for a period of time sufficient to form the desired coating thereon.

The References

The primary reference is a patent to Ross et al. (Ross) Ross deals with phosphate coating compositions for ferrous metal surfaces. Ross discloses coating compositions containing an alkali metal phosphate, e. g., sodium dihydrogen phosphate, and also containing sodium silicofluoride and sodium molybdate. The molybdate is added merely to impart a bluish color to the coating, and not for its properties as an accelerator. In fact, one of the objects of the Ross invention was to provide a phosphate coating composition which would not require accelerators.

Amundsen et al. [Amundsen] is directed to surface coatings for “metals, such as iron, steel and zinc.” Amundsen states that by using “mono alkali metal or mono ammonium phosphates in conjunction with alkali or ammonium fluorides, or bifluorides, coating solutions can be made up for iron, steel or zinc, which * * * form uniform films in a very short time.”

Dodd et al. [Dodd] discloses phosphate coatings for the surface of “metals such as ferrous metals and other metals such as aluminum, zinc, magnesium and template * * The Dodd composition combines a primary alkali metal or ammonium phosphate with a molybdenum or tungsten accelerator compound and a small quantity of a phenolic substance. Among the compounds mentioned as suitable accelerators are the ammonium, sodium and potassium molybdates and tungstates. Dodd acknowledged that phosphatizing baths using water soluble molybdenum compounds as accelerators had previously been known, but stated that such baths tend “to have poor adherence to the metal surface and have an undesirable soft or ‘spongy’ nature rendering them inefficient as rust retarders and of poor quality in forming a strong bond with paint, enamel and other organic finishes.” Dodd states that he solved that problem by the addition of his phenolic material, which is preferably a tannin or a tannin derivative.

Stapleton discloses compositions for forming phosphate coatings on iron or steel. Stapleton’s invention is aptly summarized in the following exerpt from that patent:

It has been discovered that excellent, fine grained, uniform, tenaciously adherent iron phosphate coatings may be formed on the alkali treated metal surface after rinsing with water by treating the metal surface with a phosphate coating solution consisting essentially of alkali metal dihydrogen phosphate containing an accelerator which consists essentially of alkali metal nitrate combined with a small proportion of alkali metal molybdate. * * -X-
In referring herein to “alkali metal” dihydrogen phosphates, “alkali metal” nitrate, and “alkali metal” molybdate, it is of course intended that the sodium, potassium and ammonium compounds of those radicals be included, together with lithium and the other well known alkali metals.

The Rejection

The examiner rejected the claims over Ross in view of Stapleton, Amundsen and Dodd. The examiner stated that “Ross is fully responsive to applicant’s claimed invention except that alkali metal cations are recited in lieu of ammonium ions.” The examiner took the position that it would have been obvious to substitute ammonium for alkali metal in Ross’s composition, since all three of the other references teach that they are equivalent. The examiner stated:

It would also be obvious to coat any of the substrates recited in applicant’s preamble because all the references teach that ferrous substrates can be coated and Dodd teach [sic] that all three substrates are equivalent.

In order to overcome the examiner’s rejection, appellants submitted an affidavit of one Karim I. Saad, under Patent Office Rule 132. Mr. Saad had received a B.S. in chemical engineering in 1959, and from that time until December, 1968, the date of the affidavit, he had worked in the area of phosphate coatings. In view of the importance of the affidavit to our decision, it appears in major part below:

THAT, under his direction, the following experimental work was carried out:

Three aqueous coating baths were formulated containing the following components in the amounts indicated:

Bath A — Components Grams/Liter
Sodium dihydrogen orthophosphate 12.5
Sodium flouride 3.4
Phosphoric acid (75% H3PO4) 4.1
Sodium molybdate (Na2MoO<t.2H20) 1.35
Bath B — Components Grams/Liter
Ammonium dihydrogen ortho phosphate 12.0
Ammonium fluoride 3.0
Phosphoric acid (75% H3PO4) 4.1
Ammonium molybdate (54% Mo) 1.0
Bath C — Components Grams/Liter
Sodium dihydrogen ortho phosphate 7.5
Sodium dihydrogen pyrophosphate 6.0
Sodium silico fluoride 0.75
Sodium molybdate 0.022
Igepal CA 630 wetting agent 0.75

Each bath was made up in a total bath volume of nineteen liters. The above bath concentrations and a bath temperature of 150°F were mentioned [sic. maintained?] while 4-inch x 12-inch panels of cold rolled steel, hot dip galvanized and aluminum, alloy 3003, were processed through the bath, six at a time, two each of steel, zinc and aluminum. The contact time of the bath with each of the panels was one minute. After processing a total of about forty-one square feet each of steel, zinc and aluminum, the last panels of each metal treated were examined to determine the characteristics of the coatings obtained.

This examination showed that, while all three baths produced a visible, uniform coating on the steel, only baths A and B produced a visible coating on the hot dip galvanized and only Bath B produced a uniform, dark coating on the aluminum.

On the aluminum, Bath B produced a good, uniform, dark-colored coating, while Bath A produced a mottled, nonuniform coating which was very light in color and barely visible and Bath C did not produce a visible coating. Samples of the panels evaluated are attached as an Exhibit.

THAT, based on the above results, he has concluded as follows:

1. Although all three baths produce a satisfactory, visible coating on steel, only Baths A and B produce such a coating on hot dip galvanized (zinc) and only Bath B produces a uniform, dark colored coating on aluminum.
2. The results obtained, in terms of the coatings produced on aluminum, are not the same with all three baths.
3. The dark colored coating produced on aluminum with Bath B is more uniform and because of its dark color, more satisfactory from a commercial standpoint because of the ease of making a visual inspection of it.
4. It was surprising and unexpected to find that this much darker and more uniform coating could be produced on aluminum by using ammonium ions in the bath (Bath B) rather than sodium ions (Baths A or C).

While the affidavit says nothing about why baths of the particular concentrations used were chosen, the following appears in a letter from appellants’ attorney, which accompanied the affidavit:

In this Affidavit, three baths were formulated, Bath A being a bath comparable to those of the present invention except that sodium cations were substituted for the ammonium cations. Bath B is a bath formulated with ammonium cations in accordance with Example 1 of the present application and Bath C is a bath formulated in accordance with Example 1 of the Ross et al patent 3,060,066.

The examiner’s response to the affidavit and the arguments accompanying it was as follows:

If one accepted applicant’s argument that a showing of unexpected results would permit him to obtain a patent [,] applicant would not be able to obtain a patent because the affidavit only shows that at 1 minute exposure and at 150 °F applicant obtains a difference in coating each metal. The parameters for coating the substrates are not recited in the claims.

The board sustained the rejection, stating:

All the claims stand rejected as un-patentable over Ross et al. in view of the remaining references (35 U.S.C. 103). We have carefully reviewed Appellants’ arguments, but we agree with the rejection. Appellants apparently concede that the combined references would render the claimed process obvious to workers of ordinary skill in this art for coating an iron surface, but not for aluminum. They urge that the unobvious aspect of their process and composition is that their one bath can coat the three metals (Fe, Al and Zn), whereas the reference baths will coat only iron, or in some eases only iron and zinc. Assuming that this is adequately shown by the Rule 132 affidavit of record, the claims cannot be held to be patentable. The composition is obviously the same, whether iron or aluminum is to be treated. The process claims cover the reference process for treating iron. Clearly, Appellants are not entitled to a monoply that includes obvious variations of the prior art.

Opinion

Appellants argue that the teachings of the references are incompatible for various reasons, and that the claimed invention would not have been obvious even if the references were properly combinable. They point to the Saad affidavit as establishing that their composition has the unexpected ability to coat all three metal surfaces — aluminum, zinc and iron. The solicitor, on the other hand, refutes the existence of the infirmities found by appellants in the references. The solicitor further takes the position that the claimed invention is obvious for coating iron, and thus would have been obvious within the meaning of section 103 of the statute, notwithstanding any alleged “unexpected results.” That was essentially the position taken by the board. The solicitor argues that the Patent Office position is fully supported by In re Mod, 408 F.2d 1055, 56 CCPA 1041 (1969) and In re de Montmol-lin, 344 F.2d 976, 52 CCPA 1287 (1965).

In order for us to ignore appellants’ evidence that their composition has un-obvious properties, it would be necessary for us to hold that whenever it is determined that the prior art provides any justification or suggestion for making a compound or composition, one of two things must happen. Either (1) the un-obvious properties of the compound or composition must somehow cease to be evidence that the compound or composition itself is unobvious, or (2) the case for obviousness of the compound or composition must become unassailable — -in effect allowing any indication of desirability of a compound or composition to create an irrebutable presumption that it is obvious. Nothing has been placed before us which would justify either holding.

We have recently pointed out that the rule derived from Mod and de Mont-mollin by the Patent Office is. not supported by those cases. In re Murch, 464 F.2d 1051, 1055-1056, 59 CCPA 1257 (1972). In the de Montmollin case, the court said:

Although appellants cite no decision in support of their statement that “There is no basis in law for ignoring any property in resolving an issue of ‘obviousness,’ ” that proposition is expressed in haec verba in In re Papesch, 315 F.2d 381, 50 CCPA 1084 [(1963)].
We do not agree with appellant that a single variance in the properties of new chemical compounds will necessarily tip the balance in favor of pat-entability where otherwise closely related chemical compounds are involved. * * * It goes without saying that all evidence of record tending to establish obviousness or unobviousness must be considered.

This reasoning was cited with approval in Mod, 408 F.2d at 1057, 56 CCPA at 1044. As in Murch, supra, we are of the opinion the board and the solicitor were in error in effectively ignoring, and urging us to ignore, the evidence of unobviousness presented in the record.

In order to determine whether the board’s decision was correct (as opposed to the opinion supporting that decision), we must proceed to examine the basis upon which it was concluded that the claimed subject matter was not patentable under 35 U.S.C. § 103, to see whether it is supported by the facts disclosed by the art relied on. In re Heldt, 433 F.2d 808, 811, 58 CCPA 701, 706 (1970). If the evidence that the claimed subject matter is strong enough to establish a prima facie case, i. e., one which would prevail in the absence of rebuttal evidence, we must go on to examine the evidence of non-obviousness before the legal conclusion called for by section 103 can be reached.

1. The case for obviousness

We have no difficulty in concluding that the prior art relied on strongly indicates that the claimed phosphatizing composition and process would have been obvious to one of ordinary skill in the art at least as of the effective date of the Ross reference, the most recent one relied on. The claims would be met by the Ross composition made with ammonium salts instead of alkali metal salts, and the use of ammonium salts instead of alkali metal salts, for both the phosphates and the accelerators, is clearly shown by all of the secondary references. Indeed, in that part of Stapleton quoted above the patentee goes so far as to set up an artificial definition of “alkali metal” which includes the ammonium radical.

The main contention that appellants urge with regard to the Ross reference is that Ross deals exclusively with ferrous surfaces, while “ [appellants’ claims require that all three surfaces must be treated.” Appellants further state:

How then can the board hold * * * that “the process claims cover the reference process for treating iron.”? Applicant’s claims do not cover a process useful only for the treatment of iron. Applicants’ claims only cover the situation where all three metals are treated simultaneously as in complicated multimetal parts or when one processor treats all three metals.

Assuming, arguendo, that this is one of those cases in which a statement of intended use constitutes a real limitation on a composition claim, see In re Szajna, 422 F.2d 443, 57 CCPA 899 (1970); Kropa v. Robie, 187 F.2d 150, 38 CCPA 858 (1951), we must still agree with the Patent Office that the appellants’ composition claims reasonably cover compositions for the treatment of surfaces consisting solely of steel, the surface material with which Ross deals.

Appellants’ ease regarding their process claims is even weaker. Appellants concede that the claims are broad enough to cover the situation where “one processor treats all three metals.” That situation is described in appellants’ specification as the “common practice [of handling] iron, zinc and aluminum articles at the same coating line location * * Thus appellants’ claims reasonably cover the treatment of steel and if appellants’ composition or process would have been obvious to one desiring to coat steel articles, the claims are at least prima facie unpatentable because they are too broad in the sense of 35 U.S.C. § 103. In re Landgraf, 436 F.2d 1046, 58 CCPA 929 (1971).

Moreover, even were we to accept appellants interpretation of their claims, that would not destroy the Patent Office’s case. As the examiner pointed out, there is evidence here that the art considered the three claimed substrates equivalently, or at least alternately, phos-phatizeable. Dodd uses a molybdate- or tungstate-accelerated phosphating composition for use on ferrous metals, aluminum, zinc, magnesium and terneplate. As appellants point out, Dodd’s improvement over previous phosphate baths with molybdate accelerators was to require the presence of a phenolic compound, but the ability of his bath to coat various metals was never tied to the presence or absence of that compound. Furthermore, the facts that Stapleton and Ross only specifically mention iron and steel and Amundsen only specifically mentions iron, steel and zinc are not equivalent to teachings that their compositions would not work on any metals other than those specifically named. In fact, all of those references broadly state that their inventions pertain to phosphate coatings for “metals” or “metallic articles.”

Appellants advance other criticisms of the secondary references, but point to nothing which would detract from their disclosures that ammonium salts may be substituted for the alkali salts in such phosphate coating baths.

In sum, we think that the evidence in this record that appellants’ composition and its use would have been obvious is very strong, much stronger than the minimum necessary to establish a prima facie case.

2. The rebuttal evidence

Appellants contend that by using ammonium salts rather than alkali metal salts, one obtains a composition which, unlike Ross’ composition, gives an acceptable coating on all three metals— steel, zinc and aluminum. Appellants argue that that result is. unexpected, is substantiated by the Saad affidavit, and is not suggested by any of the references. The examiner was of the opinion that the affidavit was insufficient to establish patentability of the instant claims, because “the affidavit only shows that at 1 minute and at 150° F. applicant obtains a difference in coating each metal.”

In order for a showing of “unexpected results” to be probative evidence of non-obviousness, it falls upon the applicant to at least establish: (1) that there actually is a difference between the results obtained through the claimed invention and those of the prior art, In re Klosak, 455 F.2d 1077, 59 CCPA 862 (1972); and (2) that the difference actually obtained would not have been expected by one skilled in the art at the time of invention, Id.; In re D’Ancicco, 439 F.2d 1244, 58 CCPA 1057 (1971). We think that those requirements would have been met in this ease if appellants had established either (1) that their invention resulted in an unexpected improvement over the Ross invention; or (2) the broad proposition that substituting ammonium salts for alkali metal salts, the aspect of the invention for which the secondary references were relied on, unexpectedly gives a bath suitable for all three metals. We find appellants’ evidence to be insufficient to support either proposition.

We turn first to the comparison of the present invention, bath B in the affidavit and the prior art of record, bath C, which is allegedly the same as the bath used in Ross. Ross states the following with regard to the way in which his composition is to be applied:

The dry composition is dissolved in water to give concentrations of from about 1 to about 5 ounces per gallon of water, and preferably about 2 ounces per gallon of water, thereby producing a coating solution having a pH in the range of from about 3.8 to about 5.2. The desired phosphate coating is then produced by spraying a ferrous metal surface with this solution at a temperature in the range of from about 140°F. to about 180°F., and preferably at about 160°F. A coating is normally effected in about 1 to 2 minutes.

In the tests referred to in the Saad affidavit, the metal plates were apparently dipped in the test bath for a period of one minute at a temperature of 150°F. While the one minute contact time would appear at first blush to correspond to the lower limit expressed by Ross, it should be remembered that Ross specifies spray application of his coating. That the method employed in the affidavit adversely effect the amount of time needed to obtain a suitable coating as compared to a spray application is indicated by appellants’ own specification, wherein it is stated:

As is known in the art, the contact times for obtaining the desired coating will vary widely, depending upon the application techniques used, suitable contact times normally being within the range of several seconds to 10 or more minutes. Typically, coatings are obtained when using about 10 seconds to 2 minutes in spray applications, and in about 1 to 5 minutes when the metal surface is immersed in the coating solution.

No explanation is given why an immersion technique was chosen for the comparison in spite of the fact that Ross called for spraying. Nor is there any explanation given as to why the contact time was not lengthened to compensate for the change in coating techniques. There are other discrepancies which, by themselves, would probably not fatally taint the comparison, but nevertheless tend to weaken it. For example, no reason is given why 150° F. was chosen for the comparison. That temperature is within Ross’s range, but Ross’s preferred temperature is 160°F., and both of the examples in appellant’s specification were run at 70°C. (158°F.) While the record shows that these temperatures are not critical, a test of Ross’s composition under his preferred conditions would have carried more weight. In summary, we find appellants’ evidence insufficient to establish that the properties of appellants’ compositions are expectedly better than those of Ross’s compositions.

The situation with regard to the comparison between bath A and bath B is somewhat different. Here we have two coating baths having the same concentrations of phosphate, fluoride and molybdate anions, bath A containing sodium cations and bath B containing ammonium cations; with identical metallic materials undergoing identical treatment. While bath A did produce a coating on aluminum, the coating produced by bath B is much darker. We think that this is some evidence that substitution of ammonium for the alkali metal cations would have a real effect on the composition’s ability to coat aluminum. We consider that this evidence, together with Saad’s statement that the darker coating obtained through bath B was “surprising and unexpected,” is probative on the question of obviousness, and that it gives some indication that the substitution of ammonia for alkali metal ions would not have been obvious. However, considering the qualitative nature of the results, the fact that the testing was performed at the lower limit of the contact times specified in appellants’ specification for immersion coating techniques, and the fact that the prior art contains indications that similar phos-phating compositions would have been expected to operate effectively on various metals including aluminum, we conclude that appellants have not established as a general proposition that the substitution of ammonium for alkali metal ions results in a composition which gives unexpectedly improved coatings on aluminum. The results obtained using bath C on aluminum lend but little support to appellants’ ease, for, as noted above, that composition was used in a manner other than that specified by Ross, and there was no comparison made between bath C and a bath identical to bath C except for the use of ammonium salts instead of the sodium salts. Thus appellants’ evidence, though probative, is insufficient to rebut the case for obviousness established by the Patent Office.

Finding that the case for obviousness of the claimed subject matter has been neither rebutted nor shown to be based on erroneous reasoning or misinterpretation of the references, we affirm the decision of the board.

Affirmed.

      . Serial No. 574,578, filed August 24, 1966.

      . U.S. Patent No. 3,060,036, issued October 23, 1962.

      . U.S. Patent No. 2,665,231, issued January 5, 1954.

      . U.S. Patent No. 2,502,441, issued April 4, 1950.

      . “Terneplate” is defined in Webster’s Third New International Dictionary at page 2359 (1961) as “sheet iron or steel coated with an alloy of about 4 parts lead to 1 part tin.”

      . U.S. Patent No. 2,839,439, issued June 17, 1958.

      . 344 IT .2d at 978, 52 OOPA at 1289, emphasis supplied in part.


author: RICH, Judge.

text:
    Application of Larry H. KLINE and Milosh L. Ukmar.
    Patent Appeal No. 8870.
    United States Court of Customs and Patent Appeals.
    March 22, 1973.
    Rehearing Denied June 7, 1973.
    Albert L. Ely, Jr., Cleveland, Ohio, Ely Golrick & Flynn, Cleveland, Ohio, attorneys of record, for appellant.

      S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents; Fred W. Sherling, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge and RICH, ALMOND, BALDWIN and LANE, Judges.
   RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals, adhered to on reconsideration, sustaining the examiner’s rejection of claims 2-11 and 15-20 of appellants’ patent application serial No. 430,418, filed February 4, 1965, for “Antenna With Rotatable Sensitivity Pattern.” Three claims are allowed.

The only issue of patentability raised before us by appellant, and the issue on which we decide the appeal, is the board’s affirmance of the rejection of obviousness over the prior art under 35 U.S.C. § 103. However, we will also dispose of appellants’ contention relative to the examiner’s refusal to enter an amendment and will discuss a matter pertaining to a recommendation under Patent Office Rule 196(c) as to certain rejected claims.

Appellants’ invention relates to a stationary antenna which has a rotatable sensitivity pattern. The preferred embodiment will be described with references to Figs. 2 and 4 of the application drawings:

The antenna comprises an array of three identical units 11, 12, and 13 which are supported in fixed spacial relationship by a supporting means, not shown. Each unit is half-wavelength dipole which is center-fed through coaxial cables 28, 29, and 30 extending from a relay box 10 which contains relays operable selectively to connect any one of the antenna units to a radio transmitter-receiver unit. At the time one antenna unit is so connected, the other two units are disconnected through their relays and, in the words of appellants’ brief, “made electrically, rather than physically, longer so as to provide the greater ‘length’ necessary for them to function as so-called ‘parasitic’ reflectors for the radiation from the energized unit in front of them.” This electrical lengthening of the dipoles may be accomplished by making the coaxial cables 28, 29, and 30 of such length as to present an inductive reactance when open-circuited at the relays through disconnection from the radio apparatus. As alternatives, cables of a length which presents an inductive impedance when short-circuited may be used in an appropriate manner or inductive reactances separate from the cables may be selectively connected across the center gap of the disconnected dipole units.

The application states that the spacing between units 11, 12, and 13 is “adjusted empirically to provide the optimum directional pattern for the array.” It further states that a 0.15 wavelength spacing as indicated in Fig. 2 was found to give a directional pattern as shown in Fig. 4 in which the configurations 60, 61 and 62 represent the sensitivity characteristics of the array when antenna units 11, 12, and 13, respectively, are activated.

While only a three-unit array is shown and described, the application concludes with the following statement:

* * if desired, instead of three antenna units there may be four or more in the array, energized separately one at a time and provided with inductive reactances when idle so as to provide a parasitic reflector for the antenna unit which is then energized.

Claim 2, used by appellants as illustrative, reads:

An antenna for producing a rotatable sensitivity pattern comprising three or more center-fed dipole antenna units spaced apart from each other and each having a pair of radiating elements separated by a dipole gap, switching means having connections to said antenna units and operable selectively to energize the latter one at a time, and means connected to said switching means and providing an inductive reactance between the radiating elements of each of the remaining de-energized antenna units to enable the latter to act as parasitic reflectors for the energized antenna unit.

Claims 3-11 and 15-20 are somewhat more specific but will not be treated individually because appellants have not pointed out, and we do not find, any additional limitations in them that would make their subject matter unobvious if that of claim 2 is not.

The references relied on are:

Wernick et al. (Wernick) 3,175,219 Mar. 23, 1965
Matsudaira 2,349,976 May 30, 1944
Yagi 1,860,123 May 24, 1932

Wernick discloses an antenna array which can be electrically switched to offer its greatest effectiveness in a selected direction. As described in appellants’ brief :

* * Wernick shows a four-cornered, five element array whose radiation sensitivity pattern may be rotated angularly to provide maximum gain along the line of any selected corner antenna unit 17, 21, 22, or 23. Each of these four corner units is a center-fed, half wavelength dipole. The switching arrangement causes only one corner unit at a time to be energized, or “driven”. A dimensionally longer fifth element * * * at the center of the array acts as a reflector for whichever corner unit is energized at any particular time. The other three corner units are grounded; being dimensionally and electrically the same length as the active corner unit, they do not and cannot act as reflectors for the active unit. [Emphasis by appellants.]

Matsudaira relates to an antenna system comprising two spaced, vertical, center-fed dipole units of one-half wavelength. The system is particularly useful for producing radiation that identifies a runway for blind landing of aircraft. The reference discloses that radiation fields extending in opposite directions from the respective units are obtained by switching between a condition where a first unit is activated and the second serves as a reflector and a reverse condition where the second is activated and the first serves as a reflector. In each ease the unaetivated unit functions as a reflector by reason of its being made electrically more than one-half wavelength long through the open-circuited feed line connected thereto acting as an inductance.

Yagi discloses an antenna system comprising an energized center antenna element and a plurality of split antenna units disposed thereabout on circles concentric with the center antenna and of different diameters. The operative direction of the system is adjusted as desired by means for selectively connecting some of the split elements to have an effective length greater than one-half wavelength so as to act as reflectors, and for disconnecting others so that they have a length less than one-half wavelength and act as directors.

Claims 2-11 and 15-20 stand rejected for obviousness under 35 U.S.C. § 103 in view of Wernick considered with Matsu-daira or Yagi.

OPINION

We find no error in the rejection under section 103. As the board recognized, Matsudaira teaches not only that an unenergized dipole adjacent to an energized dipole may be made to serve as a reflector by changing its effective length but also that the condition of the two dipoles can be reversed to reverse the direction of sensitivity of the antenna array. That disclosure would, we think, suggest to one of ordinary skill in the art that the grounded dipoles in each of the four conditions possible in Wer-nick be similarly connected to have increased electrical length to serve as reflectors. In addition, Yagi’s disclosure of making a plurality of associated antenna units effectively more than one-half wavelength long to serve as reflectors for an energized element in the same array would similarly suggest modification of Wernick by adapting Werniclc’s grounded dipoles to serve as reflectors.

Appellants have based their argument to a considerable extent on matters related to the examiner’s questioning of the sufficiency of appellants’ disclosure as to an array using “more than three” antenna units. As background, the examiner, in response to an argument by appellants concerning the spacing of the antenna units, questioned how the 0.15 wavelength separation disclosed in appellants’ application (see Fig. 2, supra, “.151”) could be obtained with an array of more than three units, as for example, a five-unit array. When appellants subsequently sought to add an amendment including a drawing showing five units spaced along on a circle so that each element was 0.15 wavelength from its two adjacent units but a greater distance from the remaining two, the examiner refused entry on the ground that new matter was involved. The examiner also rejected all the claims now on appeal under 35 U.S.C. § 112 on the ground that the recitation of “three or more” units in the claims covered a class of arrays not adequately disclosed in the original application. The board held the question of entry of the amendment was petitionable to the Commissioner rather than appealable and did not rule on it. However, the board did consider the rejection for lack of supporting disclosure and reversed it, stating:

It is our opinion that one of ordinary skill in the art having Appellants’ disclosure before him and being aware of the prior art as exemplified by the Yagi patent, for example, would find it merely a matter of design to choose the proper spacing for more than three antennas. This is borne out by the affidavit of Mr. Horn filed April 7, 1969.

Appellants consider this ruling by the board and its affirmance of the § 103 rejection to represent

* * * the self-contradicting position to the effect that, if applicants’ combination would work for four or more units — and the prior art teaches that it wouldn’t — then the enlarged combination [more than three units] must be obvious despite the contrary teachings of the very prior art relied on for obviousness.

This position is simply unsound. There is no inconsistency in finding, as the board did, both that appellants’ application is adequate to enable any person skilled in the art to make and use the invention, under the first paragraph of § 112, and that the invention is also obvious in view of the prior art under § 103.

Appellants would have us make a determination with respect to the board’s refusal to decide whether the proposed amendment showing a five-unit antenna array was properly refused entry by the examiner. However, this is primarily a matter of Patent Office procedure which does not affect our review of the rejection of the appealed claims, and we fail to see any reason why we must decide it.

The board also affirmed a rejection of claims 6, 7, 19, and 20 for indefiniteness under the second paragraph of § 112, recommending under Patent Office Rule 196(c), on reconsideration, that this rejection be withdrawn if certain changes suggested by appellants were made in claims 6 and 19. At the same time, the board expressly stated that the recommendation did not affect its af-firmance of the rejection of these same claims under § 103. We agree with the board that the recommended changes, as shown in the record, would not affect the applicability of that rejection to these claims.

The decision is affirmed.

Affirmed.

      . The Horn affidavit was submitted by appellants with the unentered amendment. It states that a five-element array as described in the amendment was built and operated under the affiant’s supervision in January of 1969. It also asserts that this “five element antenna array is identical in all respects to the three element array shown in Figs. 1-4 of * * * [the] application and described with reference to those Figures, except for use of five equally-spaced vertical antenna units instead of three.”

      . Appellants further state in their brief that “All the appealed claims call for arrays of ‘three or more’ and, thus, cover arrays of more than three units, as well as arrangements having just three units * * i\t ”

      . Claims 7 and 20 are dependent on claims 6 and 19, respectively.

      . Appellants do not ask review of the indefiniteness rejection itself, apparently considering it “overcome” because of the recommendation.


author: PER CURIAM:

text:
    ROYAL CROWN COLA COMPANY, Appellant, v. ESKIMO PIE CORPORATION, Appellee.
    Patent Appeal No. 8904.
    United States Court of Customs and Patent Appeals.
    March 29, 1973.

      Brumbaugh, Graves, Donohue & Raymond, New York City, attys. of record, for appellant. Richard G. Fuller, Jr., Russell H. Falconer, Joseph D. Garon, New York City, of counsel.
    Browne, Beveridge, DeGrandi & Kline, Washington, D. C., attys. of record, for appellee. Richard G. Kline, Francis C. Browne, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Associate Judges, and ALMOND, Senior Judge.
   PER CURIAM:

This appeal is from the decision of the Trademark Trial and Appeal Board, abstracted at 167 USPQ 293 (1970), dismissing the opposition of appellant, registrant of DIET-RITE for dietetic soft drinks and concentrates for making the same, to appellee’s application to register ESKIMO DIET BITE for frozen desserts, namely, ice milk, in the following stylized form:

The critical issue lies in whether the marks are so similar as to be likely, when applied to the respective goods, to cause confusion, mistake or deception.

The board found no likelihood of confusion when “ESKIMO DIET BITE” and “DIET-RITE” are applied to the respective goods of the parties. The marks were considered in their entireties including the word “ESKIMO”. While “DIET-RITE” and “DIET-BITE” are quite close in sound they are not identical terms and are composed of well-known words with established and different meanings.

We agree with the conclusion that confusion is unlikely. The decision of the board is accordingly affirmed.

Affirmed.

      . Reg. No. 600,085, December 28, 1954.

      . Serial No. 246,059, filed May 19, 1966.


author: PER CURIAM.

text:
    The J. B. WILLIAMS COMPANY, INC., Appellant, v. Glynn A. BEARD, Appellee.
    Patent Appeal No. 8893.
    United States Court of Customs and Patent Appeals.
    Feb. 22, 1973.

      Edward G. Fenwick, Jr., Washington, D. C., Mason, Fenwick & Lawrence, Washington, D. C., attorney of record, for appellant.
    Richard D. Law, Denver, Colo., Francis Thomas, Jr., Washington, D. C., attorneys of record, for appellee. Arthur Schwartz, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, and RICH, ALMOND, BALDWIN, and LANE, Judges.
   PER CURIAM.

This appeal is from the decision of the Trademark Trial and Appeal Board, result reported at 167 USPQ 372 (1970), dismissing an opposition lodged by appellant. The board opinion, including footnotes, reads, in full:

An application [(Serial No. 301,-798)] has been filed [(June 24, 1968)] to register “FIRON” for medicinal tablets containing ferrous fumarate, use since January 30, 1959 being asserted.
Registration has been opposed by The J. B. Williams Company, Inc., registrant of “FUMIRON” for [an] ethically sold medicinal for the treatment of iron deficiency anemia.
Neither party has taken testimony.
While the goods of the parties are obviously closely related medical products for treating iron deficiencies, it is our considered opinion that “FI-RON” does not so closely resemble “FUMIRON” in sound, appearance or significance as to lead to a likelihood of confusion.

Upon careful consideration of the record before us and the briefs and arguments of counsel, we find ourselves in agreement with the conclusions expressed by the board. The decision below is, accordingly, affirmed.

Affirmed.

      . Reg.No.654,716, issued Nov. 19, 1957 to a predecessor-in-title.

      . In making this conclusion, we have disregarded the parts of applicant’s brief which refers to third-party registrations and other materials not made of record herein.


author: MARKEY, Chief Judge.

text:
    Application of Lawrence Anthony CESCON.
    Patent Appeal No. 8884.
    United States Court of Customs and Patent Appeals.
    March 22, 1973.
    William R. Moser, ’ James T. Corle, Wilmington, Del., attorneys of record, for appellants; Gerald A. Hapka, Washington, D. C., of counsel.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents; Jack E. Armore, Washington, D. C., of counsel.

      Before MARKEY, Chief Judge, and RICH, ALMOND, BALDWIN, and LANE, Judges.
   MARKEY, Chief Judge.

This appeal is from the decision of the Board of Appeals sustaining rejections of claims 1, 2, 4, 5 and 11 under 35 U.S.C. § 103 and claims 1, 41-44 and 51 under 35 U.S.C. § 112' of appellant’s application serial No. 622,085, filed March 10, 1967, for “Phototropic 2, 4, 5-Tri-phenylimidazolyl Radicals and Dimers Thereof.” We reverse.

The Invention

The invention relates to novel photo-dissociable, substantially colorless imida-zolyl dimers and colored radicals formed therefrom under light stimulation. Claim 1 is illustrative:

1. A composition of matter selected from the class consisting of
A. A light-stable imidazolyl maintained under the influence of ultraviolet light represented by the formula

wherein R has a sigma value below 0.7 and is selected from lower alkyl, lower alkoxy, lower alkoxycarbonyl, lower al-kylthio, di (lower alkyl)-carbamoyl, diGower alkyl )sulfamoyl, lower alkanoy-loxy, N-lower alkyl-lower alkanamido, phenyl, naphthyl, phenyloxy, naphthy-loxy, phenylthio, naphthylthio, halo or cyano;
R2 through R10 are each individually selected from hydrogen, lower alkyl, lower alkoxy, lower alkoxycarbonyl, lower alkylthio, di (lower alkyl) carbamoyl, di (lower alkyI)suIfamoyl, lower alkanoyloxy, N-lower alkyl-lower alkanamido, phenyl, naphthyl, phenyloxy, naphthyloxy, phenylthio, naphthylthio, halo or cyano;
and any two R1 through R10 substituents in adjacent positions on the same phenyl ring of the above formula can be joined together to form a — CH=CH— group; and
with the proviso that only one of R5 through R7 and only one of R8 through R10 can be in a position or-tho to the phenyl carbon that is attached to the imidazolyl nucleus of the above formula;
said imidazolyl having an unpaired delocalized electron and having four electrons paired; and
said imidazolyl being maintained upon the surface of an inert substrate or in solution in a solvent that is inert to said imidazolyl; and
B. dimers thereof, said dimers having the property of forming color in solution in an inert solvent upon exposure to ultraviolet radiation corresponding to the ultraviolet light absorption spectrum of the dimer, which color fades upon removal of the radiation.

Claims 2, 4, 5 and 11 are restricted to compositions consisting essentially of the imidazolyl form and substrate or solvent (A in claim 1), varying in scope as to substitutents R1 through R10. Claims 41-44 are drawn to the dimer form, without specification as to linkage, varying in scope as to R substituents. In claim 51 the general imidazolyl radical formula of claim 1 is set forth as being in reversible equilibrium with the dimer in an inert solvent.

The phototropic nature of the compositions, i. e. their change in color upon exposure to light and reversal upon removal of the stimulus, renders them useful as automatic sun shades. The phenomenon of phototropism itself is not unexpected. Appellant’s contribution lies instead in the discovery that the presence of an ortho substituent in the 2-phenyl ring imparts an improved responsiveness to changes in light intensity. Greatly increased color fading rates are obtained. Furthermore, such a sub-stituent raises the temperature required to dissociate the dimer, reducing unwanted color due to thermal dissociation in the dark. Other distinguishing properties are increased stability and a higher number of color reversals before composition failure.

The 103 Rejection

The references relied upon by the examiner and the board were:

Green U.S. 3,205,083 Sept. 7, 1965
Neugebauer et al. German Patent May 10, 1961 1,106,599
Deliwala et al. Chem. Abstracts, volume 45, cols. 6177-78 (1951)
Radziszewski Chem. Abstracts, volume 4, pages 2265-66 (1910)
Hayashi et al. Bull. Chem. Soc. (Japan) volume 33, pages 564-66 (1960)
Zimmerman et al. Angew. Chem., volume 73, page 808 (1961)
Gould Mechanism and Structure In Organic Chemistry, pages 672-82, New York, Holt (1959).

Green, Neugebauer, Deliwala and Radziszewski (the primary references) disclose several substituted 2, 4, 5-triphe-nylimidazoles wherein there is an ortho substituent of the type encompassed by R1 of the claims in the 2-phenyl ring. Hayashi and Zimmerman teach two different methods for obtaining the free radical form from unsubstituted 2, 4, 5-triphenylimidazole or triphenylimidazoles having para-methyl or methoxy substituents on the 2-phenyl ring. Gould merely provides background information on free radicals, having no specific disclosure directed to imidazoles.

Claims 1, 2, 4, 5 and 11 were rejected under 35 U.S.C. § 103 as unpatentable over the cited references. It was the examiner’s position that the claimed imi-dazolyl radicals were obvious in view of the precursor imidazoles disclosed by the primary references considering the known methods of Hayashi and Zimmerman for preparing related imidazolyl' free radicals from such an imidazole form. Since the prior art imidazoles relied upon had ortho substitution in the 2-phenyl ring, the examiner considered any differences of the claimed imidazol-yl radicals resulting from such substitution to be irrelevant to the issue involved herein.

In sustaining the rejection, the board added that in view of the known methods of preparation and the availability of the precursors of appellant’s claimed compounds, “unobviousness cannot be predicated merely on an emphasis on compounds with a particular locus of substitution.” While the showings of improved properties alleged to be dependent on ortho substitution were not totally disregarded, as was the case with the examiner, the board found the same to be inadequate, holding:

* * * Appellant’s argument or implication that the claimed free radicals necessarily must have “beneficial” properties not possessed by isomeric free radicals, having for instance, para instead of ortho substituents on the 2-phenyl group, is neither adequately supported nor implicit as to particular beneficial properties universally present in various solutions of all the claimed compounds. The specification (pages 40 and 41) gives no convincing and unequivocal assurance that the relative values given for color fading in a benzene solution have a general significance as to solvents in general and inert substrates such as adsorbent particles.

Appellant now comes before us, urging that the issue lies in whether it was obvious to make imidazolyl radicals and dimers bearing an ortho substituent on the 2-phenyl ring, not in whether it was obvious how to make them once their desirability was ascertained. Failure to give any, or at least proper, weight to the evidence of unexpected differences between the claimed subject matter and the prior art is said to be clearly contrary to prior decisions of this court.

We agree. It has long been our position that a compound and its properties are inseparable and that no property can be ignored in determining patentability over the prior art. In re Papesch, 315 F.2d 381, 391, 50 CCPA 1084, 1097 (1963); In re Wagner, 371 F.2d 877, 881, 54 CCPA 1031, 1037 (1967). The pertinence of unexpected properties to the issue of obviousness to make, as distinguished from how to make, is set forth in the main opinion in In re Larsen, 292 F.2d 531, 533, 49 CCPA 711, 713 (1961):

* * * Since there was nothing to indicate that the compounds, when made, would have these properties, it was not obvious to make the compounds. In such a case the allowance of claims to the compounds must depend on the proposition that it was unobvious to conceive the idea of producing them, within the meaning of Title 35 U.S.C., § 103.

Here the inventive concept lies in the selection of a particular group of substituted triphenylimidazoles for preparation of the corresponding dimers which in turn result in the claimed free radicals in the presence of ultraviolet light. Nothing in the prior art suggests any relationship between ortho substitution in the 2-phenyl ring and the properties disclosed and illustrated in appellant’s specification. We cannot accept even the premise of the solicitor’s contention that inasmuch as the most relevant prior art disclosed similar preparation from imidazoles having no or para substitution in the 2-phenyl ring, selection was limited to the four possibilities of mono-substitution on the 2-phenyl ring so that “to find that ortho substitution is more effective or superior does not amount to a patentable contribution.” The references relied upon, namely Hay-ashi et al. and Zimmerman et al., simply demonstrate the phototropic nature of the systems formed. No suggestion is given that a particular substitution on any one of the three phenyl rings would result in the improved light responsiveness and other characteristics achieved by appellant. The fact that ortho-sub-stituted triphenylimidazoles, along with many other substituted triphenylimid-azoles, were available for possible conversion adds no direction to the selection.

The only remaining question lies in the sufficiency of the evidence presented in appellant’s specification to support the alleged interrelationship of ortho substitution and improved properties. The board having considered this evidence, we see no need for remand for the examiner’s review of the same.

Our disagreement with the action of the Patent Office at this level arises from the overly stringent standards set up for evaluating appellant’s objective evidence. It is true that the claims are broadly drawn to the presence of the imidazolyls in the environment of an inert solvent or substrate. The examples providing comparisons with analogously substituted isomers or unsubstituted imidazoles, on the other hand, are limited to the use of a benzene solution. Not all compounds encompassed by the claims are tested. But ample data has been provided to establish the correlation between ortho substitution on the 2-phenyl ring and greatly increased col- or fading rates. Moreover, no factual basis appears in the record for expecting the compounds to behave differently in other environments. Accordingly, we reverse the 103 rejection.

The 112 Rejection

Claims 1, 41-44 and 51 were rejected under 35 U.S.C. § 112, paragraph one, as being based on a specification which does not sufficiently disclose the preparation of dimers having four of the six linkages encompassed by the claims. The examiner’s view was that inasmuch as “each linkage in the dimer is being claimed” and statements in the specification make it clear that different conditions resulted in different linkages, disclosure of the exact conditions for each isomer is essential. Production of a particular linkage was deemed “an important part of the invention even though the manner in which the imida-zoles are linked together in the dimer does not appear to be of importance with regard to the formation and properties of the free radicals.” The board concurred, adding that:

* * * Appellant, in fact, asks persons who may want to utilize various distinct isomers covered by the claims and undoubtedly differing in their properties * * * to carry out experiments to discover the reaction conditions and product properties for isomers which appellant could not, or did not describe.

As set forth in In re Moore 58 CCPA 1042, 1047, 439 F.2d 1232, 1236, 169 USPQ 236, 239 (1971), the relevant inquiry under the “how to make” requirement of paragraph one of 35 U.S.C. § 112 is whether the scope of enablement provided to one of ordinary skill in the art by the disclosure is commensurate in scope with the protection sought by the claims. The claimed subject matter here involved consists of certain substituted imidazole dimers “having the property of forming color in solution in an inert solvent upon exposure to ultraviolet radiation corresponding to the ultraviolet light absorption spectrum of the dimer, which color fades upon removal of the radiation.” Particular linkage or linkages are unspecified. As illustrated in claim 51, the free radical formed on dissociation is identical, regardless of the isomeric form of dimer. The dimer or dimers obtained on recombination may vary from the original isomers, dependent upon temperature, according to the specification. Hence we find disclosure of general procedures for preparation of the initial dimers without delineating exact conditions for each isomer of each imidazole in every environment adequate to practice the claimed invention. Isolation of individual isomers is neither necessary nor within the ambit of these claims.

The decision of the board is reversed.

Reversed.

      . This application is a continuation-in-part of serial No. 388,010, filed August 6, 1964, which was a continuation-in-part of serial No. 181,475, filed March 21, 1962.


author: DYER, Circuit Judge: ’

text:
    UNITED STATES of America, Plaintiff-Appellee, v. Obadiah STEPHENSON, Defendant-Appellant.
    No. 72-2400.
    United States Court of Appeals, Fifth Circuit.
    March 19, 1973.

      Jack C. Ciolino, New Orleans, La. (Court-Appointed), for defendant-appellant.
    Gerald J. Gallinghouse, U. S. Atty., Harry Hull, Jr., Mary Williams Cazalas, Asst. U. S. Attys., New Orleans, La., for plaintiff-appellee.
    Before GEWIN, GOLDBERG and DYER, Circuit Judges.
   DYER, Circuit Judge: ’

Stephenson was named as the sole defendant in a three-count indictment for possession of heroin. The first count charged him with possession of approximately 25 grams of heroin contained in 233 glassine envelopes in violation of 21 U.S.C.A. § 174. Counts two and three charged him with the possession of the same quantity of heroin in violation of 26 U.S.C.A. §§ 4704(a) and 4724(c) respectively. Stephenson was tried by a jury and convicted on all counts. He received three consecutive sentences of five-years imprisonment. We reverse.

Stephenson’s principal contention on appeal is that it was error for the district court to deny his motion for a judgment of acquittal at the close of the Government’s case. We agree with Stephenson that, as a matter of law, there was insufficient evidence of his guilt to submit the case to the jury.

On January 27, 1971, Special Agent Fenger of the Bureau of Narcotics and Dangerous Drugs (BNDD) obtained a warrant to search Stephenson’s person and his 1970 Buick Riviera for narcotics. Another warrant was obtained to New Orleans. About 9 p. m. on the search Big Mary’s Number 3 Bar in night of the 27th, Fenger and several other BNDD agents observed Stephenson arrive and park his Buick Riviera across the street from Big Mary’s. After approaching the vehicle, the agents informed Stephenson that they had a warrant to search him and his car. Stephenson stepped out of his automobile, and Fenger conducted the search. No narcotics were found.

Fenger than asked Stephenson to accompany him into Big Mary’s. They proceeded into the bar, and Fenger advised the barmaid that he had a warrant to search the bar and all adjoining rooms. Stephenson sat at the bar with Fenger while the other agents conducted the search. During this search, the 233 glassine envelopes of heroin were found in a locked storage room in the rear of the bar. The room had been used as sleeping quarters for one Felix Ballazar. Ballazar’s clothes and suitcases were in the room, and the envelopes of heroin were found under the mattress .of his bed on which he was sitting when the agents entered. Also discovered during the search in a separate locked storeroom were three cartons of cellophane envelopes similar to the ones containing the heroin.

The only evidence of any link between Stephenson and the heroin was latent fingerprints of his found on seventeen of the envelopes. Moreover, unlike Stop-pelli v. United States, 9 Cir. 1950, 183 F.2d 391, which is so heavily relied upon by the Government, no evidence was ever offered in the case sub judiee that Stephenson’s fingerprints were placed on these envelopes when they contained heroin. On the contrary, the F.B.I. fingerprint expert testified that the prints could have been placed on the glassine envelopes as long as a year before the seizure when the envelopes were empty. Because glassine is porous, any sweat or grease on the fingertips is absorbed into the material so that the resulting print is almost permanent; it cannot be removed by wiping. Additionally, if a person handling glassine does not have any moisture on his fingertips he will not leave a fingerprint. Finally, since fingerprints on glassine depend on the presence of sweat or moisture on the fingertips, it is possible for a person to handle many glassine envelopes and leave fingerprints on only a few, because the sweat on the friction ridges of the fingers would be absorbed by the first glassine envelopes touched.

We recognize that proof of actual possession is not necessary to sustain a conviction for violation of the statutes involved; constructive possession is sufficient. Such possession need not be exclusive, but may be shared with others. Moreover, it may be proven by circumstantial as well as by direct evidence. Garza v. United States, 5 Cir. 1967, 385 F.2d 899, 901; Smith v. United States, 5 Cir. 1967, 385 F.2d 34, 38-39. However, whatever the nature of the evidence, it must be such that a jury may reasonably infer that the person charged with constructive possession had dominion and control over the drug. United States v. Mendoza, 5 Cir. 1970, 433 F.2d 891, 896. By the same token, mere presence in the area where the narcotic is discovered or mere association with the person who does control the drug or the property where it is located, is insufficient to support a finding of possession. United States v. Davis, 3 Cir. 1972, 461 F.2d 1026, 1035, 1036; United States v. Holland, 1971, 144 U.S.App.D.C. 225, 445 F.2d 701, 703; Smith v. United States, 5 Cir. 1967, 385 F.2d 34, 39 n. 16.

In this case no connection between Stephenson and Ballazar was ever proven. Indeed, the Government offered no evidence whatsoever to establish any kind of relationship between the two of them, much less a working relationship. Moreover, although Stephenson was known to frequent Big Mary’s, as he lived in the area at one time, he had no proprietary interest in the bar.. Nor did he have any keys to the bar or to either of the locked storage rooms where the heroin and envelopes were found.

In circumstantial evidence eases, the test of the sufficiency of proof on a motion for judgment of acquittal, and on review of the denial of such a motion, is whether, taking the evidence most favorable to the Government, Glas-ser v. United States, 1942, 315 U.S. 60, 62 S.Ct. 457, 86 L.Ed. 680, the jury might reasonably conclude that the evidence is inconsistent with the hypothesis of the accused’s innocence. United States v. Warner, 5 Cir. 1971, 441 F.2d 821, 825; United States v. Andrews, 5 Cir. 1970, 427 F.2d 539, 540; Surrett v. United States, 5 Cir. 1970, 421 F.2d 403, 405. If the evidence is such that a rea^ sonable person may have a reasonable doubt as to the defendant’s guilt, the case should be submitted to the jury. On the other hand, a trial judge should not permit a case to go to the jury if the evidence is so scant as to allow the jury merely to speculate or to conjecture as to the defendant’s guilt. In other words, a motion of acquittal must be granted when the evidence, viewed in the light most favorable to the Government, is such that a reasonably minded jury must have a reasonable doubt as to the existence of any of the essential elements of the crime charged. See United States v. Bethea, D.C.Cir. 1970, 442 F.2d 790, 792. Considering all of the circumstances, we think that the bare presence of Stephenson’s fingerprints on seventeen of the glassine envelopes was not, without more, sufficient evidence of guilt to have submitted the case to the jury.

Where, as here, we reverse on the insufficiency of the evidence we may remand for a determination by the district court whether in light of any new evidence which the Government might bring forward a retrial is warranted — e. g., Watkins v. United States, 5 Cir. 1969, 409 F.2d 1382; Brock v. United States, 5 Cir. 1967, 387 F.2d 254 — but under the circumstances presented by this record we feel that “no good purpose could be served in ordering a new trial” in this case. South v. United States, 5 Cir. 1969, 412 F.2d 697; Nagell v. United States, 5 Cir. 1968, 392 F.2d 934; Argent v. United States, 5 Cir. 1963, 325 F.2d 162. The judgment of conviction is reversed, and the cause is remanded to the district court with directions to vacate the judgment and to enter an order granting the motion of acquittal and a judgment acquitting Stephenson.

Reversed and remanded with directions.