author: RICH, Judge. BALDWIN, Judge

text:
    Application of William J. SMYTHE and Morris H. Shamos.
    Patent Appeal No. 8855.
    United States Court of Customs and Patent Appeals.
    June 28, 1973.
    Baldwin, J., dissented in part and filed opinion.

      Eric P. Schellin, Schellin & Hoffman, Arlington, Va., attorney of record, for appellants.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Raymond E. Martin, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and WATSON, Judge, United States Customs Court, sitting by designation.
   RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals, adhered to on reconsideration, affirming the rejection of claims 34, 37-40, 42-44, and 47-50 of appellants’ application serial No. 369,695, filed May 25, 1964, entitied “Automatic Analysis Apparatus and Method.” We reverse.

The Invention

The invention relates to a continuous, automatic analysis system wherein discrete liquid samples, perhaps containing blood or other body fluids, are successively introduced into an apparatus as a continuous stream, the individual samples being separated by a segmentizing medium which, as originally claimed and as taught by the specification, is “air or other gas which is inert to the liquid” sample transmitted. The appealed claims are directed to both method and apparatus.

In the analysis apparatus a chemical reagent is automatically added to each discrete liquid sample to produce a color reaction indicative of the particúlar constituent in the sample to be tested, and the samples with the intervening portions of segmentizing medium are passed through the sight passageway of a flow cell as a continuous stream. The sight passageway forms part of a colorimetric analysis apparatus. Leading segments of the liquid samples, which are arranged in duplicate one following another, perform, along with the segmentizing medium, a cleansing function and each following segment has a volume at least equal to that of the sight passageway. When the sight passageway of the flow cell is fully occupied by the liquid sample to be analyzed, a recorder for the analysis, which receives its input from the colorimeter, is made operational.

Representative claims, for the purpose of dealing with the rejections, are as follows (emphasis ours):

34. A method of automatic quantitative analysis of a plurality of liquid samples each disposed in a respective container, wherein said samples are off-taken by an off-take device and are transmitted successively as a flowing stream to an analytical device including a flow cell having a sight passageway, said method including:

for each sample container in succession, coupling said off-take device to such sample container, and in alternation therewith, to a source of an inert fluid immiscible with said liquid samples, thereby to off-take a segment of each of said liquid samples and intermediate segments of the inert fluid;

transmitting said segments of the liquid samples and inert fluid as a flowing stream to said analytical device ; and

passing said flowing stream including segments of both the liquid samples and inert fluid through the sight passageway of the flow cell, the volume of at least one homogeneous portion of each liquid sample being at least equal to the volume of the sight passageway of the flow cell.

47. A method of automatic quantitative analysis of a plurality of liquid samples each disposed in a respective container, wherein said samples are off-taken by an off-take device and are transmitted successively as a flowing stream to an analytical device including a colorimeter having a flow cell with a sight passageway, said method including;

for each sample container in succession, coupling said off-take device to such sample container, and in alternation therewith, to a source of an inert gas immiscible with said liquid samples, thereby to off-take a segment of each of said liquid samples and intermediate segments of the inert gas;

transmitting said segments of the liquid samples and inert gas as a flowing stream to said analytical device;

passing said flowing stream including segments of both the liquid samples and inert gas through the sight passageway of the flow cell, the volume of at least one homogeneous portion of each liquid sample being at least equal to the volume of the sight passageway of the flow cell;

measuring the optical density of the liquid samples passing through the sight passage way of the flow cell; and

interrupting the operation of said recorder except when said portion of each sample having a volume at least equal to the volume of the sight passageway of the flow cell is in the sight passageway.-

Summary of Prior Art and Rejections The following three patents were relied on as prior art:

Skeggs 2,797,149 June 25, 1957
Skeggs 2,879,141 Mai-. 24, 1959
Baruch 3,193,358 July 6, 1965
(filed July 2, 1962)

Claims 34, 37-40, 42, 43, and 48-50 have been rejected for obviousness under 35 U.S.C. § 103 on Skeggs ’141 in view of Skeggs ’149 and further in view of Baruch. As will be discussed in greater detail shortly, the examiner and the board rely particularly upon the language of claims 9 and 10 of Skeggs ’149 for a teaching of what appears to be a critical limitation of these claims.

Claims 34, 37-40, 43, and 44 were rejected under 35 U.S.C. § 112, paragraph one, for alleged failure to describe the invention insofar as the term “inert fluid” encompasses liquids, since the specification and original claims refer only to “air or other gas which is inert to the liquids transmitted” as the analysis samples.

Claims 47-50 were rejected under 35 U.S.C. § 112, paragraph one, it being alleged that the specification does not enable one skilled in the art to use an “inert gas” as a segmentizing medium in the invention.

OPINION

The rejections and the positions of the parties will now be dealt with.

The Section 10S Rejection

This is the type of case where the invention resides in the discovery that an element or step which allegedly has always been included in prior art apparatus or method can be omitted, not merely with omission of its function but with improved results. Appellants admit, and the prior art of record establishes, that the general apparatus for performing appellants’ method invention is known. Appellants contend, however, that the prior art apparatus and method always provided for what is called “venting” of the segmentizing medium, or “debubbling,” just prior to passing the successive liquid samples through the sight passageway in the flow cell.

Although there is some dispute about the teachings of the Skeggs ’149 patent, the general nature of the invention and the prior art practice of venting or debubbling is illustrated by reference to a portion of Fig. 3 of that patent:

Skeggs ’149 discloses automatic apparatus adaptable to blood analysis having sample-feeding apparatus similar to appellants’. Liquid samples flowing through a tube in a continuous stream, the samples being separated in the tube by air as a segmentizing medium, are supplied to a colorimeter, which, with a recorder, translates color changes into a record of the amount of a given ingredient in each sample. On the way to the colorimeter a reagent is mixed with each sample to produce a color reaction which can be measured by the colorimeter. The reagent-treated samples with the segmentizing medium, air, interspersed therebetween, together flow as a segmented liquid stream “into a fluid line 70 leading to a transparent plastic flow cell 71 provided with an open chamber.” (Emphasis ours.) “A communicating duct 73 leads from the lower end of open chamber 72 to a horizontal cylindrical passage 74” (emphasis ours) wherein the photometric analysis is performed by recording the variations in light received by the phototube from the light source 32. Venting of the segmentizing air medium from the stream is claimed in claim 10 of Skeggs ’149. The open chamber 72 in the above figure is the point at which this venting takes place. Presumably the dots shown in the open chamber are the draftsman’s way of representing rising bubbles of the segmentizing medium, which is a gas entrained in a liquid.

Relating this to the invention here, appellants’ discovery is that it is desirable to omit the prior art step of venting the air or other gas, i. e., “debubbling” the segmented stream of fluid samples. Appellants argue that they were the first to discover the advantages of omitting the debubbling step. They contend that the prior art cited by the Patent Office nowhere suggests that venting or debubbling can be dispensed with.

Appellants’ brief explains the advantages of not debubbling as follows:

2. Prior to the invention of Appellants, it was generally the practice to vent or “debubble” the segmentizing medium just prior to passing the successive liquid sample [s] through a sight passageway included in the flow cell. * * * The practice of such venting or “debubbling” resulted in the leading and trailing portions of adjacent liquid samples becoming contiguous. As a result, intermixing occurred between such contiguous portions or successive liquid samples while passing from the “debubbling” apparatus. The passage of such intermixed portions resulted in contamination of the sight passageway of the flow cell. To alleviate the problem an uncontaminated portion of a successive adjacent liquid sample, therefore, had to be passed to “wash” the sight passageway before meaningful analysis could be effected on the remaining uncontaminated portion of such successive samples. As a result, the processing rate of the liquid samples was limited and, also, the initial volume of a liquid sample required for analysis was excessive. These limitations of the prior art apparatuses were due directly to the intermixing of successive liquid samples when moving between the “debubbler” portion of the apparatus and through the sight passageway of the flow cell.
3. The present invention overcomes these prior art limitations and provides for a substantially increased processing rate and, also, a significant reduction in the initial volume of samples required for analysis. These results are achieved by maintaining the integrity of the individual liquid samples in the continuous stream while passing through the sight passageway of the flow cell.

With this as background, we continue with a description of the other Skeggs reference, ’141.

The question with respect to Skeggs ’141 is whether or not it discloses venting. The Patent Office view is that no venting is shown. We disagree. The following portion of Fig. 8 shows the flow cell and related parts. It is described as a “diagrammatic representation” :

We agree with the solicitor that the stream passing through line 218 is an air-segmented liquid stream. The question is whether the flow cell 220 is so constructed as to vent the air from the stream before the sample is analyzed.

Skeggs ’141 contains, in addition to what the above drawing shows, the following statement (emphasis ours):

The colored mixture flows into the flow cell 220, which preferably is of the type illustrated and claimed in the copending application of Andres Ferrari, Jr., Serial No. 516,300, filed June 17, 1955, and assigned to the assignee hereof. The flow cell 220 is mounted in a holder 226 provided with a light passageway 228 having a constricted opening 230 adjacent one arm of the flow cell 220. Light passing from the light source 232 through the restricted light aperture 230 is transmitted through the colored mixture in the flow cell 220 to a photoelectric device or photo tube 234.

Does this disclose a vented flow cell, though no venting is mentioned in the above quotation ? We think it does. Appellants have not conclusively wrapped up their proofs as they might have because, as correctly noted by the solicitor, they did not include the Ferrari patent in the record in this court, but their brief points out that the Ferrari application is now patent No. 2,983,184, issued May 9, 1961, and they quote from the disclosure of this patent, which is incorporated by reference into Skeggs ’141, as follows (omissions and insertions ours for clarity):

* * * as the dialyzate is discharged * * * into [the] flow cell * * *, the air present between adjacent segments of said dialyzate freely escapes into the atmosphere since [the] inlet opening * * * of said cell is open thereto. Thus it will be apparent that no air can be trapped into the liquid column * * * which is subjected to the light beam.

We do not consider that this disclosure, incorporated into Skeggs ’141, is to be ignored merely because the Ferrari patent has not been included in the record in this court. There is no reason to doubt the accuracy of appellants’ quotation from Ferrari. We note particularly two factors indicating its reliability: it is consistent with Seggs ’141 Fig. 8 and it has not been challenged by the solicitor who had ready access to the Ferrari patent. Furthermore, the same allegations of venting in the flow cell of Skeggs ’141 were made before the board, as follows:

The flow cell 220 is of the type more particularly described in the A. Ferrari, Jr. patent No. 2,983,184, filed on July 15, 1955 * * * The flow cell 220 includes an open ended, or vented, mixing chamber wherein the continuous stream of liquid samples directed along conduits 216 and 218 is discharged, so as to purposefully vent the air bubbles. The liquid samples, now contiguous, intermix * * *.

We simply have to disagree with the board’s conclusions that “Skeggs T41 does not mention the venting present in Skeggs ’149” and that “The drawing in Skeggs ’141 does not appear to require such venting.” These statements are inconsistent with the whole disclosure of Skeggs ’141, which includes the description of the structure of the Ferrari flow cell, “diagrammatically” shown in Fig. 8, incorporated by reference.

Obviousness of an unvented system as claimed by appellants therefore cannot be predicated on the disclosures of the specifications of Skeggs ’149 or ’141. The board admitted that venting is “present in Skeggs ’149.” The board and the solicitor are clearly wrong in suggesting that the flow cell of Skeggs ’141 is unvented. One other basis for finding obviousness is argued, predicated on a difference which exists between claims 9 and 10 of Skeggs '149. Claim 10 reads (emphasis ours):

10. Apparatus for analyzing liquid samples containing a crystalloid constituent and a noncrystalloid constituent, comprising a dialyzer having a diaphragm and an inlet and an outlet at one side of the diaphragm for the passage of a stream of sample-containing liquid through the dialyzer at said side of the diaphragm, said dialyzer also having an inlet and an outlet at the other side of said diaphragm for the’passage of streams of liquid into and out of the dialyzer at said other side of the diaphragm to form a stream of liquid containing the crystalloid substance which is diffused through the diaphragm from said first mentioned side thereof means for treating the liquid of said last mentioned stream for colorimetric analysis thereof, a colorimeter flow-cell to receive the treated liquid, tubes leading to and from the dialyzer for conducting the liquids to and from the dialyzer and to the flow-cell and means for introducing air into the tubes leading to the dialyzer for forming segmented streams of fluid composed of alternate segments of liquid and air passing through said tubes and the dialyzer and through the connections of the latter to said flow-cell, and a vent for the escape of the air from said stream of treated liquid received in said flow-cell whereby an uninterrupted column of liquid is provided in the cell for colorimetric analysis of said liquid.

Claim 9 of the patent is substantially identical down to the emphasized clause, which is omitted in claim 9. Based on this difference, and a similar omission of venting in other claims such as 20 and 22, the Patent Office argues that a comparison of claims

* * * would clearly suggest to the plant engineer that the flow of segmented streams “to said flow cell” encompasses flow thereof through such cell.

We cannot agree. We do not believe that, either as an abstract principie or as applied to the facts of this case, the omission of the vent in one or more claims of Skeggs ’149 coupled with the inclusion of the vent in another claim itself would suggest to one skilled in the art and that venting may be dispensed with. The specification of Skeggs ’149 just does not support such a construction; the air-segmented stream “passes into a fluid line 70 leading to a transparent plastic flow cell 71 provided with an open chamber 72 (Emphasis ours.)

As to the major part of the argument of the solicitor, we do not find the difference between claims 9 and 10 to suggest or indicate to one of ordinary skill in the art that “the flow cell in question can at the option of the designer or ‘plant engineer’ be vented or not.” The practice, time out of mind, has been that claims may be drafted as broadly as the prior art will allow, and that appears to be all that Skeggs has done in patent '149. The mere omission of claim limitations does not suggest omission of steps or parts. Furthermore, claim 9 still reads on apparatus containing venting means because of the word “comprising.” In re Halley, 296 F.2d 774, 49 CCPA 793 (1961); Swain v. Crittendon, 332 F.2d 820, 51 CCPA 1459 (1964). Compare the discussion of reliance upon the absence of limitations in claims in another context in In re Cole, 326 F.2d 769, 51 CCPA 919 (1964).

Accordingly the rejection of claims 34, 37-40, 42, 43, and 48-50 under § 103 is reversed.

The §112 Rejections

“Inert Fluid”

Claims 34, 37-40, 43, and 44 describe the segmentizing medium as an “inert fluid.” The board affirmed the examiner’s rejection of these claims saying, “As to the * * * term [fluid], the specification provides no antecedent basis or description of such fluids and therefore does not support the claims.” The board noted that “additional structure is necessary to'adapt the disclosed contribution to employ fluids other than air.” Th'e board further noted that the term “fluid” is “so broad as to include inoperative fluids.”

The solicitor states that the “Board’s rationale makes it clear that it regarded 35 U.S.C. § 112, paragraph 1 as the proper statutory basis of its rejection,” and particularly argues that appellants fail to describe their invention in their specification. The solicitor, explaining the basis of this rejection on the facts of this case, takes the position that “where the description of the invention is narrower than the scope of protection sought by the claims * * * the claims may be rejected under Section 112, paragraph 1, even though the term ‘fluid’ embraces both ‘liquid’ and ‘gas’ * * * and even though it ‘would not encompass undue experimentation to arrive at a satisfactory method and structure to employ liquid and gases other than air’ * * As the solicitor notes in his brief,

The important point here is that appellants did not recite the use of ‘fluid’ broadly as a segmenting medium in describing their invention. * * *
Insofar as the term ‘fluid’ in claims 34, 37-40, 43- and 44 encompasses liquids, there is no description thereof in appellants’ specification.

We cannot agree with the broad proposition, apparent in the above quoted language, that in every case where the description of the invention in the specification is narrower than that in the claim there has been a failure to fulfill the description requirement in section 112. Each case must be decided on its own facts. The question which must be answered is whether the application originally filed in the Patent Office clearly conveyed in any way to those skilled in the art, to whom it is addressed, the information that appellants invented the analysis system with an inert fluid as the segmentizing medium. See In re Ruschig, 379 F.2d 990, 54 CCPA 1551 (1967). If it did, then appellants have made a written description of their invention within the meaning of the first paragraph of 35 U.S.C. § 112. Let us look at the description of the invention in the original application.

The segmentizing medium serves the functions, appellants’ specification tells us, of “separating one [liquid] sample from another in the apparatus and for washing the conduits and the flow cell * * The essential function of separating discrete samples from each other is performed because the medium takes the shape of the supply lines and the flow cell through which it passes, while to some extent resisting any force which may tend to change its volume. This quality is precisely that of a “fluid” generically and of a “liquid” in particular. The “washing” function of the segmentizing medium appears to us, indeed, to be better performed using liquid rather than gas, and the Patent Office has given us no facts which would justify a conclusion that one skilled in the art would not find the disclosure to inherently teach that it is the very characteristics of fluids which are needed in a segmentizing medium here. We note also that the prior art Kessler patent No. 3,047,367, issued in 1962, made of record by appellants here and before the examiner, shows the use of a liquid segmentizing and cleansing medium instead of “air or other inert gas” in a system entitled “Automatic Analysis With Fluid Segmentation.” In that patent it is stated that:

In accordance with the present invention and pursuant to one of the objects thereof, the use of air or other inert gas as the cleansing agent is dispensed with and replaced by a liquid, in order to obviate certain difficulties which may be encountered when air or other compressible fluids are employed as the cleansing agents.

We believe that the use of an inert fluid broadly in this invention would naturally occur to one skilled in the art reading the description of the use of air or other gas as a segmentizing medium to separate the liquid samples. While fluid is a broader term, encompassing liquids, as noted by the solicitor, the specification clearly conveys to one skilled in the art that in this invention the characteristics of a fluid are what make the segmentizing medium work in this invention.

This is not a case where there is any unpredictability such that appellants’ description of air or other inert gas would not convey to one skilled in the art knowledge that appellants invented an analysis system with a fluid segmentizing medium. In other cases, particularly but not necessarily, chemical cases, where there is unpredictability in performance of certain species or subcombinations other than those specifically enumerated, one skilled in the art may be found not to have been placed in possession of a genus or combination claimed at a later date in the prosecution of a patent application. See, for example, In re DiLeone (DiLeone II), 436 F.2d 1033, 58 CCPA 934 (1971), and In re DiLeone (DiLeone I) 436 F.2d 1404, 58 CCPA 925 (1971), where Judge Baldwin, in dissent, stated at 436 F.2d at 1406-1407, 58 CCPA at 929:

In the case before us, the Patent Office tribunals, and in particular, the examiner — who must be presumed by us to be skilled in the pertinent art in the absence of evidence to the contrary — have disputed the fact that the scope of appellants’ invention would be obvious from the language of the description. Keeping in mind the well-known unpredictability of the chemical sciences, I find that the examiner’s objections were reasonable. Beyond asserting that they are entitled to the broad claims they are .seeking, appellants have not contradicted this position. Feeling, as I do, that the description requirement should serve to assure that one of ordinary skill in the pertinent art will in fact, be taught by a specification disclosure, I conclude that the disclosure before us does not adequately describe the subject matter being claimed. [Footnote omitted.]

Here, however, where the broader concept of using “inert fluid” would naturally occur to one skilled in the art from reading appellants’ description of the use and functions of the segmentizing media specifically described, we see no basis for denying appellants the claims which recite the segmentizing medium broadly as an “inert fluid.” The alternative places upon patent applicants, the Patent Office, and the public the undue burden of listing, in the case of applicants, reading and examining, in the case of the Patent Office, and printing and storing, in the case of the public, descriptions of the very many structural or functional equivalents of disclosed elements or steps which are already stored in the minds of those skilled in the arts, ready for instant recall upon reading the descriptions of specific elements or steps.

We are not saying that the disclosure of “air or other gas which is inert to the liquid” sample by itself is a description of the use of all “inert fluid” media. Rather, it is the description of the properties and functions of the “air or other gas” segmentizing medium described in appellants’ specification which would suggest to a person skilled in the art that appellants’ invention includes the use of “inert fluid” broadly. The Kessler patent is only some additional evidence of the knowledge of one skilled in the automatic sample analysis art, and as such it supports appellants’ position that to such persons appellants’ description conveys the idea of using inert fluids broadly.

A hypothetical situation may make our point clear. If the original specification of a patent application on the scales of justice disclosed only a 1-pound “lead weight” as a counterbalance to determine the weight of a pound of flesh, we do not believe the applicant should be prevented, by the so-called “description requirement” of the first paragraph of § 112, or the prohibition against new matter of § 132, from later claiming the counterbalance as a “metal weight” or simply as a 1-pound “weight,” although both “metal weight” and “weight” would indeed be progressively broader than “lead weight,” including even such an undisclosed, but obviously art-recognized equivalent, “weight” as a pound of feathers. The broader claim language would be permitted because the description of the use and function of the lead weight as a scale counterbalance in the whole disclosure would immediately convey to any person skilled in the scale art the knowledge that the applicant invented a scale with a 1-pound counterbalance weight, regardless of its composition. Likewise, we find in the facts here a description of the use and function of the segmentizing medium which would convey to one skilled in the sample-analysis art the knowledge that applicants invented a sample analyzer with an inert fluid segmentizing medium.

Turning to the precedents, in In re Reynolds, 443 F.2d 384, 58 CCPA 1287, (1971), this court quoted with approval the following from the opinion in Technicon Instruments Corp. v. Cole Instruments, Inc., 255 F.Supp. 630 (N.D.Ill. 1966) , aff’d, 385 F.2d 391 (7th Cir. 1967) :

By disclosing in a patent application a device that inherently performs a function, operates according to a theory, or has an advantage, a patent applicant necessarily discloses that function, theory or advantage even though he says nothing concerning it. The application may later be amended to recite the function, theory or advantage without introducing prohibited new matter.

We agree with that statement, whether, as here, in the context of an ex parte rejection under the description requirement of the first paragraph of § 112, the right to make a count in an interference, Woofter v. Carlson, 367 F.2d 436, 54 CCPA 917 (1966), the right to rely upon a prior application under 35 U.S.C. § 120 which complies with the requirements of the first paragraph of § 112, In re Lukach, 442 F.2d 967, 58 CCPA 1233 (1971), or a new . matter rejection of the claims as discussed in Technicon. See In re Welstead, 463 F.2d 1110, 59 CCPA 1105 (1972), a new matter case citing Fields v. Conover, 443 F.2d 1386, 1391-1392, 58 CCPA 1366, 1372-1374 (1971), as involving the written description requirement in another context.

The board also rested the alleged failure of the specification to describe the invention on possible inclusion of inoperative embodiments of the invention using “inert fluids” which it conceived. The board stated (emphasis ours):

The term “inert fluid” emcompasses colored materials adherent to the walls of the sight tube, thus to render appellants’ process inoperative, as well as liquid wetting agents, which appellants disclose * * * must be absent for proper operation. Thus, not only does the specification fail to support the method and apparatus claimed, where a fluid other than air is to be introduced, but the noted term is so broad as to include inoperative fluids. Appellants’ specification, in its failure to provide antecedent basis for “inert fluid,” renders it impossible for one skilled in this art to determine what classes of fluids are useful and which are not.

We can see no basis for either the board’s premise that the use of the word fluid makes the claim so broad as to include inoperative fluids, or the board’s conclusion that somehow any lack of antecedent basis for “inert fluid” makes it impossible to determine what classes of fluids are useful in the invention.

The use here of any particular “liquids” which would be inoperative, such as the examples given by the board— “colored materials,” materials “adherent to the walls of the sight tube,” and “liquid wetting agents” — -would be predictably inoperative in the invention and thus would never be selected by one skilled in the art. As we have said before, it is almost always possible to so construe a claim as to have it read on inoperative embodiments. In re Cook; 439 F.2d 730, 734, 58 CCPA 1049, 1054 (1971), but the alternative of requiring an applicant to be so specific in his claims “as to exclude materials known to be inoperative and [which] even those not skilled in the art would not try” would result in claims which would fail to comply with 35 U.S.C. § 112, second paragraph, because they would be so detailed as to obscure, rather than to particularly point out and distinctly claim, the invention. In re Myers, 410 F.2d 420, 56 CCPA 1129 (1969), quoted with approval in In re Anderson, 471 F.2d 1237 (CCPA 1973). We therefore cannot agree with the board that the rejection under the first paragraph of § 112 is any more sustainable because the broader term “fluid” includes some “liquids” which might not work.

“Inert Gas”

Claims 47-50 have been rejected under 35 U.S.C. § 112, paragraph one, on the ground that insofar as the term “inert gas” used in these claims covers the use of gases other than air as the segmentizing medium, the specification allegedly does not enable one skilled in the art to “make and use” the invention. The specification shows the segmentizing medium as air which is aspirated from the atmosphere surrounding the apparatus. The Patent Office position is that the use of an inert gas other than the air is not taught by the specification in a manner which would enable one skilled in the art to practice the invention.

Appellants maintain here, as they did before the Patent Office, that the Skeggs’ '149 patent suggests that any medium, liquid or gas, can be introduced along a’ pump tube by connecting the upstream side of the pump tube to the source of the medium. This Skeggs reference, as appellants point out, shows a series of openings for incoming fluid lines which lead either to a source of liquid or air, and appellants tell us that “it would not encompass undue experimentation to arrive at a satisfactory method and structure to employ liquid and gases other than air.” We find ourselves in agreement with appellants. See In re Borkowski, 422 F.2d 904, 57 CCPA 946 (1970).

The rejections of claims 34, 37-40, 43, 44, and 47-50 under 35 U.S.C. § 112 are accordingly reversed.

The decision of the board is reversed as to all claims on appeal.

Reversed.

BALDWIN, Judge

(dissenting in part).

I would affirm the rejection of claims 34, 37-40, 43 and 44 under the first paragraph of section 112 of the statute. The critical term in these claims, “fluid,” is a generic term, which for our purposes may be considered to be made up of two major subgeneraliquids and gases. I agree that the appellants’ specification adequately, describes the genus of gases which meet the other claimed criteria, i.e., gases which are “inert to the sample liquid,” which is how I interpret the recitation “inert gas.” However, I cannot agree that the specification contains an adequate description of the genus “fluid” under any reasonable standard. In the first place, only the subgenus “inert gases” is described, and it is apparent that one skilled in this art would not infer “inert fluids” from a description of “inert gases” alone. Secondly, it cannot be questioned that any other members of the “genus” (in this case there being only one, viz. “inert liquids”) is anywhere disclosed or implied in the specification. Thus description of the genus cannot be inferred from the supplied descriptions of its member species. The final possibility is a description of the genus itself, either in ipsis verbis, which clearly is not present here, or implied, such as through a complete description of the properties which define the genus, which the majority contends exists in this case. I submit that the majority is in error.

The following exerpt is sufficiently representative of the contents of the specification concerning the segmentizing medium (emphasis supplied):

The primary object of the present invention is to improve the precision of quantitative analysis of the samples of liquid. We have discovered that this important object can be accomplished by utilizing as much as possible liquid conduits, such as Teflon tubing, which have non-wetting surfaces instead of wettable surfaces, and by washing the flow cell between the passage of successive samples there-through with one or more bubbles of air or other gas which is inert to the liquid, transmitted through the conduits and through the flow cell, whereby contamination of one sample by another is prevented or is negligible. Further, the sample liquid which is transmitted through the flow cell during the analysis operation, at which time a record of the analysis is made, has a volume at least as large and preferably larger than the volume of the flow cell, so that there is no air in the flow cell when the liquid analysis operation is being performed. More specifically, while one or more segments or bubbles of the air or other gas are introduced into the liquid stream for separating one sample from another in the apparatus and for washing the conduits and the flow cell, it is unnecessary to remove said bubbles before transmission of the treated liquid samples through the flow cell, since the segmentation of the liquid stream by air bubbles is such that a sufficient volume of the treated sample liquid is devoid of air bubbles to enable its analysis as it flows through the flow cell. By reason of the provision of a volume of non-segmented treated liquid sample sufficiently large for analysis, namely, a volume of treated liquid sample at least as large as the volume of the flow cell, blending of segments of the same liquid sample and the need for removal of a comparatively large number of air bubbles are obviated.

Throughout the specification, only inert gas and, more often, air, which is used in the preferred embodiment, are mentioned as segmentizing mediums. There is no further discussion of the properties which those mediums have which make them useful. Thus the two properties relied on by the majority as delineating the properties of a “fluid,” i. e., (1) the ability of the medium to take “the shape of the supply lines and the flow cell through which it passes” and (2) its ability to resist “any force which may tend to change its volume,” are never disclosed or discussed in the specification at all. True enough, the inert gases described by appellants inherently would possess the first property mentioned, and presumably even the most compressable of gases would qualify as having the second property “to some extent,” as broadly phrased by the majority. But what the majority is saying is that the description requirement as to “inert fluids” is satisfied in this case, even though that genus is not specifically described by name, because it is impliedly described by the properties which define it, even though those properties are not specifically described by naming them, because those properties are impliedly described — by what? — by the fact that the members of the subgenus which is specifically described inherently possess those properties. What about those properties inherently possessed by gases which are strikingly different from those of liquids and would suggest that liquids would not be useful, such as density and viscosity?

More importantly, what kind of mental gymnastics are we going to force the skilled in the art to go through in order to determine what is described in a patent specification? The statute directs the specification to the skilled in the art, and that has two effects on the requirements for its content. Of course it establishes that the intended reader is not a babe in the woods, and that therefore the specification need not be burdened with those details which are already generally known in the art. But the intended reader is no more than one skilled in the art. He is not some master of law or logic who can be expected to inveterately expand each nuance contained in a specification into pyramids of disclosure. It ■ is a general level_of specialized knowledge which is required of him, not genius.

As to the majority’s speculation that the washing function of the segmentizing medium would be “better performed using liquid rather than gas,” it is not only not supported by the record, but is also contrary to the implications of the only pertinent teachings in the record. Kessler, whose invention it was to use a liquid segmentizing medium rather than a gas, states as follows (emphasis supplied) :

In accordance with the present invention and pursuant to one of the objects thereof, the use of air or other inert gas as the cleansing agent is dispensed with and replaced by a liquid, in order to obviate certain difficulties which may be encountered when air or other compressible fluids are employed as the cleansing agents. In this connection, it will be understood that in most instances, the use of air as the cleansing agent is to be preferred because it is highly effective for this purpose and is readily available, without cost, from the ambient atmosphere. However, in certain processes, e. g., in spectral-flame analyses, the compresibility of air or other inert gas may result in pulsations of the liquid introduced into the spectral flame and thus cause the flame to flicker or be unsteady. This objectionable result is eliminated pursuant to this invention, since liquid is incompressible.

In the final analysis, I believe that support for the majority’s position reduces to the existence of the Kessler patent, which, I agree, is some evidence that the knowledge that liquid segmentizing mediums can be used was part of the general level of skill in this art. The question becomes whether this evidence is enough on the facts of this case to establish that the use of liquid segmentizing mediums was generally known in this art. If it is, then appellants are entitled to claims directed to the use of fluids (or for that matter to liquids, which as a practical matter is the same thing here) even though appellants never mentioned those embodiments in their specification as filed, at least insofar as the description requirement is concerned. Of course, it must generally known — the statute directs the specification to those skilled in the art, not just to one or two practitioners who might happen to know it.

Before us we have appellants’ specification, which is very strictly limited to “air or other gas inert to the sample liquid.” The segmentizing medium is nowhere described as a “medium” or a “fluid.” The specification is so strictly limited as to give rise to an implication that appellants considered such a limitation important. The record before us contains twenty-five patents, twenty-four of which have disclosures which are limited to air, or other inert gas in a manner similar to appellants’ disclosure. To me that indicates that the only segmentizing medium which would “naturally occur” to one skilled in the art reading appellants’ specification is air, or other gas inert to the liquid samples. The mere existence of the Kessler patent, which states that the preferred segmentizing medium is gaseous in all but a few special cases, is not enough to overcome what the other evidence indicates is the general knowledge of those skilled in the art.

I would therefore affirm the rejection of claims 34, 37-40, 43 and 44.

      . Skeggs '149 issued to Technicon International, Ltd., a New York Corporation, and Skeggs ’141 issued to Technicon Instruments Corporation, a New York corporation, which appears to be prosecuting the present application.

      . The board may have also treated the rejection of these claim's under § 112 under the “enablement” section of the first paragraph, but the solicitor has narrowed the rejection by his argument to the “description” requirement.

      . As we pointed out in In re Cook, 439 F.2d 730, 734, 58 CCPA 1049, 1054 (1971), it is the predictability or the unpredictability "of the elements, be they chemical or mechanical, which is determinative.

      . The case involved, interestingly enough, the validity of the two Skeggs ’149 and ’141 patents, inter alia, which were cited as § 103 references here.

      . The paragraph of the above Technicon quotation concludes with the sentence: In any event, the fact that the Patent Office allows such an amendment without objection thereto as new matter (within the meaning of Title 35 U.S.C., § 132) is entitled to an especially weighty presumption of correctness. We note that here, too, the Patent Office made no new matter rejection of the language of the preliminary amendment reciting the segmentizing medium as an “inert fluid.” See MPEP 608.04(b).

      . For the purposes of considering this ground of rejection it is not necessary to decide whether the claim language “inert gas immiscible with said liquid samples” means a chemically “inert” gas or only a gas which is inert with respect to the liquid sample. At least once in the original specification the segmentizing medium is described as “air or other gas which is inert to the liquid transmitted * * *. The solicitor states that “air is not inert.” For present purposes, the enablement rejection relates specifically to the use of a gas other than atmospheric air, because it cannot be merely aspirated from the surrounding atmosphere; it does not matter whether it is chemically an inert gas.


source: Caselaw Access Project

author: LANE, Judge.

license: Public Domain

text:
    Application of Leo F. RYAN.
    Pat. Appeal No. 8982.
    United States Court of Customs and Patent Appeals.
    July 19, 1973.

      David A. Anderson, Raymond P. Niro, Chicago, Ill. (Hume, Clement, Hume & Lee, Ltd., Chicago, Ill.,), attorneys of record, for appellants.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. William H. Beha, Jr., Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, and RICH, BALDWIN, and LANE, Judges, and ALMOND, Senior Judge.
   LANE, Judge.

This appeal is from the decision of the Patent Office Board of Appeals sustaining the § 103 rejection of claims 1, 2, 3 and 5 of appellant’s application Serial No. 673,111 filed October 5, 1967. The board concluded that the subject matter would have been obvious to one of ordinary skill in the art in light of the state of the art admitted by appellant. No references were cited. We affirm the board’s decision.

The claims are directed to an improvement in the method of continuously regenerating exhausted cationic ion exchange resin particles. Using the purification of water as an example of a cationic ion exchange process, undesired ions, such as calcium and magnesium, are removed by contact with a resin which gives up more desirable ions, such as hydrogen ions, in exchange for the undesired ions. After a time, the resin must itself be regenerated by replacement of the captured ions with new hydrogen ions. Once regenerated, the ion exchange resin may be washed and returned to service. On a practical, commercial level, the initial exchange, regeneration of the resin, washing of the regenerated resin, and return of the washed, regenerated resin to ion exchange service are carried out continuously.

As described in appellant’s specification and brief on appeal, it was known prior to appellant’s invention to use a regeneration column in which exhausted resin particles were introduced near the top of the column and carried downward while regenerant solution, such as sulfuric acid or hydrochloric acid, was countercurrently passed through the column. The chemical process occurring in such a situation was the exchange of hydrogen ions coming from the acid for the mineral ions, such as calcium or magnesium, picked up by the resin during the previous ion exchange step. The continuous downward flow of resin in the regeneration column was accomplished by the recirculation of previously used regenerant solution. The specification more particularly describes the prior practice as follows:

In charging the column with exhausted resin particles from the reservoir, a piston-type action is employed whereby the non-turbulent, downward flow of liquid within the column allows exhausted resin particles to flow down into the column. Prior to the present invention, such downward flow was created by depressurizing the column and withdrawing liquid from a lower portion while allowing the re-introduction of exhausted regenerant near the top. The exhausted regenerant was introduced from a surge tank which retained a sufficient volume before disposing of it in the waste drain. While such a procedure is satisfactory for most combinations of resin and regenerant, severe difficulties are encountered where a relatively insoluble material is formed during the regeneration process. Commonly, such a material is formed where sulfuric acid is employed to regenerate hydrogen-form strong acid cation exchange resin particles. The exhausted resin retains calcium ions, removed from the raw water in the service column, which are exchanged for hydrogen ions in the sulfuric acid, forming a supersaturated solution of calcium sulfate. Holding the exhausted regenerant in a surge tank, and agitating it by re-introducing it into the column, encourages precipitation of the calcium sulfate. The introduction of seed crystals into the column causes further precipitation, agglomerating with the resin particles and eventually, plugging the column. The precipitate may also plug the filter used at the regenerant outlet, interfering with the movement of regenerant.
Because of the problem of calcium sulfate precipitation, it has been considered difficult to employ sulfuric acid in the countercurrent regeneration of hydrogen-form cationic ion exchange resins. Instead, hydrochloric acid has been used. Although the use of hydrochloric acid avoids the precipitation of insoluble materials, it is much more expensive and therefore less desirable than sulfuric acid.

Appellant overcomes the problems theretofore encountered by replacing the previously used regenerant solution which carries the resin through the column with a liquid described generically in the specification as follows:

[I] t must be free of insoluble materials that could cause precipitation within the column, as well as materials that would react within the column to form a precipitate. Normally the second liquid will be water or water containing an additive to inhibit precipitation.

That modification of the prior art process enables the use of the less expensive sulfuric acid. In the claims, the liquid is limited to water.

Claim 1 reads as follows:
1. In the continuous regeneration of cationic ion exchange resin particles with sulfuric acid in a column normally regenerating said particles by an upward flow of regenerant between regenerant inlet and outlet means wherein exhausted resin particles are periodically introduced into an upper portion of said column and liquid is simultaneously removed at a drain point, the improvement comprising introducing water into said column at a point above said drain point during the introduction of said exhausted resin particles and at a rate sufficient to maintain said column filled with material, said water being free of insoluble materials that could cease [cause?] precipitation within said column, and said water also being free from materials that can react within said column to form a precipitate. [Emphasis added.]

Dependent claims 2, 3 and 5 impose limitations which appellant does not separately argue.

The Examiner’s Answer states as follows :

In the original specification, in each amendment, and in the Brief, applicant has acknowledged that the continuous countercurrent ion exchange system generally is known and that an auxiliary liquid is used to assure smooth resin transfer to the regenerating column in such systems. It is further acknowledged that the cause of clogging which has been experienced as a problem in such systems when sulfuric acid regenerant is used was known to be the precipitation of insoluble sulfates, particularly calcium sulfate.
* * * [Appellant’s discovery was] that precipitation of calcium sulfate in the regeneration column is less likely to occur if water is substituted for the acidic calcium sulfate solution in the procedure described above. It is the examiner’s position that this “discovery” is at once obvious to one of ordinary skill in the art of chemistry. That is to say, the solution to the problem is plain upon the face of the description of the problem. [Emphasis added.]

The board generally agreed with the examiner, holding as follows:

The alleged invention lies in the utilization of water in a cation ion exchange process whereby undesirable precipitates are eliminated by introducing water into the column at the time the liquid from a surge tank is being drained off. Appellant’s main contention is that he discovered the source of the problem, i.e., precipitation occurring in the surge tank, and then solved the problem, i.e., the avoidance of reintroducing the contents of the surge tank back into the column. Instead, water is introduced above the drain point. It would appear to be obvious that any liquid containing spent sulfuric acid regenerant would contain sulfate precipitates. It would therefore appear to be obvious to those skilled in the art to endeavor to remove the source of the difficulty, the simplest expedient being to flush the resin exchange bed with water. Tfie specific claim language is not even directed to the prior art problem of utilizing a surge tank containing spent regenerant. We agree with the examiner that the claimed process would be obvious to those of ordinary skill in the art.

OPINION

Appellant’s position is that both the board and the examiner erroneously assumed that the source of the difficulties encountered when sulfuric acid was used was known and then found the solution obvious. It is argued that in fact i.t was not known that holding used regenerant solution in a surge tank was responsible for the clogging of the regeneration column, and appellant urges that absent knowledge of the source of the problem, its solution would not have been obvious to one skilled in the art. The fact that those skilled in the art turned away from the use of sulfuric acid is cited as evidence of the nonobviousness of the claimed subject matter.

Since it is the state of the art as admitted by appellant that constitutes the sole evidence of the prior art, it is important to carefully identify what it is that appellant has admitted. The examiner was initially uncertain as to the scope of the admitted prior art. He cited several references and specifically relied upon them in the event that the appellant had not admitted that the “problem * * [of insoluble or slightly soluble material being formed in the regenerant] was understood previously.” In response, appellant discussed the references and stated that “it is agreed that the art clearly recognized the problem of calcium sulfate precipitation * * -»/> However, appellant argued at the same time that:

[T]he belief was that it was practically impossible to employ sulfuric acid as the regenerant since the production of insoluble sulfates inevitably resulted. The retention of exhausted regenerant in the surge tank was not recognized as the culprit, since the surge tank contains no higher concentration of calcium sulfate than does the exhausted regenerant just before it leaves the upper portion of the regenerant to column.

The examiner assumed that it would have been obvious to eliminate a source of sulfate precipitates, i.e., the used regenerant, once given the problem of sulfate precipitation in the regeneration column. Appellant argues in response that since the concentration of sulfates in the regenerant near the top of the column would be the same as that of the recirculated regenerant, those skilled in the art would not be led to the elimination of recirculated regenerant. In other words, appellant, in effect contends that there would be no basis for distinguishing between the fresh regenerant used to revitalize the resin and the recirculated regenerant used to carry the resin through the column as a source of deleterious precipitates. Appellant finds corroboration for that conclusion in the fact that those skilled in the art turned away from the use of sulfuric acid altogether.

We think the examiner and the board drew a fair inference that regardless of the concentrations of sulfates in the fresh and used regenerant streams, the addition of a recirculation stream rich in sulfates would necessarily aggravate the known problem of sulfate precipitation and logically concluded that the elimination of that stream would have been an obvious manner of ameliorating, to a large extent, the problem. We also view the substitution of a non-precipitating, inert liquid, such as water, as an obvious modification given that the problem is precipitation and that the sole function of the stream is to physically carry the resin through the column rather than to chemically interact with the resin. For these reasons, we conclude that the claimed subject matter would have been obvious in the sense of § 103.

Although appellant strenuously asserts that the fact that the specific source of the problem has been discovered has not been given proper consideration by the examiner and board, we think it apparent that the claimed improvement is an obvious expedient given the known general source of the problem, sulfate precipitation, and we fail to see how the discovery of the specific source of the problem, holding of regenerant in the surge tank, tends to render the adoption of that expedient nonobvious.

The decision of the board is affirmed.

Affirmed.


text:
    Arthur W. ANDERSON and Gelu S. Stamatoff, Appellants, v. Giulio NATTA et al., Appellees, v. Karl ZIEGLER et al., Appellees. Giulio NATTA et al., Appellants, v. Arthur W. ANDERSON and Gelu S. Stamatoff, Appellees, v. Karl ZIEGLER et al., Appellees. Karl ZIEGLER et al., Appellants, v. Arthur W. ANDERSON and Gelu S. Stamatoff, Appellees, v. Giulio NATTA et al., Appellees.
    Patent Appeal Nos. 8818-8820.
    United States Court of Customs and Patent Appeals.
    July 19, 1973.
    Rehearing Denied Oct. 11, 1973.

      Roger A. Hines, Wilmington, Del., attorney of record for Anderson and Stamatoff. James T. Corle, Wilmington, Del., Gerald A. Hapka, Washington, D. C., A. Newton Huff, Wilmington, Del., of counsel.
    Morgan Finnegan Durham & Pine, New York City, attorneys of record for Natta, Pino & Mazzanti. George B. Finnegan, Jr., Ralph M. Watson, David H. Pfeffer, New York City, of counsel.
    Arnold Sprung, New York City, attorney of record for Ziegler, Martin, Breil and Holzkamp. Nathaniel D. Kramer, Frank Murphy, New York City, of counsel.
    Before MARKEY, Chief Judge, and RICH, ALMOND, BALDWIN, and LANE, Judges.
   LANE, Judge.

These appeals are from the decision of the Board of Patent Interferences, adhered to on reconsideration, awarding priority of invention of the sole count in issue to none of the three parties involved. This three-party interference was declared on January 12, 1965. Each party took testimony and submitted exhibits. Indeed, the transcript of record before this court consumes almost 4400 pages spanning five volumes. We have considered that record, which includes the decisions of the board, and the arguments advanced by each of the parties, and for reasons set forth herein, we reverse the board’s decision and hold that priority of invention should have been awarded to the party Natta et al. (Nat-ta).

THE APPEALS

Appeal No. 8818 is the appeal of the party Anderson et al. (Anderson) involved on application Serial No. 632,416 filed January 4, 1957, as a continuation-in-part of application Serial No. 568,707 filed March 1, 1956. Anderson was accorded the benefit of the latter filing date, but alleged earlier dates of conception and actual reductions to practice. The board held the alleged dates not to be proved and restricted Anderson to the March 1, 1956, filing date for date of invention.

Appeal No. 8819 is the appeal of Nat-ta involved on application Serial No. 710,840 filed January 24, 1958, as a division of application Serial No. 514,097 filed June 8, 1955. Natta was restricted to the June 8, 1955, filing date for date of invention.

Appeal No. 8820 is the appeal of the party Ziegler et al. (Ziegler) involved on application Serial No. 514,068 (hereaftér the Ziegler U.S. application) filed June 8, 1955. Ziegler claimed the benefit of the August 3, 1954, filing date of a West German priority application (hereafter the Ziegler German application) under 35 U.S.C. § 119, but the board held that the German application is insufficient in its disclosure of how to use the subject matter of the count and accordingly restricted Ziegler to the June 8, 1955, filing date for date of invention.

Having determined that Anderson had proved no date earlier than March 1, 1956, and that both Natta and Ziegler were entitled to the same date of June 8, 1955, the board in effect held that there was no first inventor of the subject matter of the count and made no award of priority. In the words of the board, priority was “awarded against” each party.

THE SUBJECT MATTER

The count of this interference reads as follows:

A process which comprises inter-polymerizing ethylene with another hydrocarbon having one terminal-CH = CII2 group and no other non-aromatic unsaturation, said other hydrocarbon having at least 4 carbon atoms per molecule, in the presence of a coordination catalyst, one component of which contains a Ti-Cl bond.

The copolymerization process defined in the count is catalyzed by a multi-component composition, termed a “coordination” catalyst, containing a transition element compound and a reducing compound. The transition element compound specified in the count must contain a Ti-Cl bond and may be titanium tetrachloride (TiCL). The reducing component of the coordination catalyst may be a metal hydride or an organometallic compound such as a metal alkyl.

The products of the process of the count are ethylenealpha olefin copolymers. The olefin comonomer, which may be, for example, styrene, butene-1 or dodecene-1, imparts various properties to the ethylene component and renders the copolymer more suitable for a variety of uses than polyethylene. Depending on the comonomer and the process conditions, ethylene copolymers apparently suitable for extrusion into film or pipe or as wire coatings or for injection molding into diverse shaped articles can be produced.

THE CASE FOR ANDERSON

It is contended that in 1954 researchers working under Anderson and Stamatoff, as well in one instance as Stamatoff himself, prepared ethylene-olefin co-polymers using a coordination catalyst in which one component had a Ti-Cl bond. The conception of such a catalyst and its use in olefin copolymerization is also asserted to have occurred in 1954.

Anderson principally relies on the work of Baxter, a research chemist under the supervision of Stamatoff, which is alleged to have constituted reduction to practice of the invention of the count. In May 1954, Baxter gave instructions for the reaction of styrene and ethylene in the presence of' a titanium tetrachloride-phenyl magnesium bromide coordination catalyst. That reaction yielded a product which Baxter formed into a small, sample film for the purpose of infrared analysis. Anderson contends that the product was a copolymer and that it was recognized as such. Anderson also argues that the utility of the product was apparent from its ability to be fashioned into a film, which he asserts was self-supporting, tough and flexible, as well as from the known utility of polyethylene and other film-forming olefin polymers.

Anderson additionally refers to the work of researchers Schreyer, Stamatoff, Brehm, Rombach and Wheatcroft. Specific experiments by these individuals using coordination catalysts in the polymerization of olefins, which were conducted subsequent to Baxter’s work in May 1954, are relied upon as separate reductions to practice. Anderson urges that the totality of the evidence makes out a convincing case of conception and actual reduction to practice on the part of Anderson prior to the June 1955 date accorded both Ziegler and Natta.

The board held that none of the experiments conducted on behalf of Anderson amounted to reduction to practice and that conception has not been proved. The recurrent deficiencies found by the board were (1) the failure to contemporaneously establish practical utility of the polymer products and (2) the failure to establish that there was contemporaneous appreciation or conviction of success with respect to the production of a copolymer or interpolymer, the intended product of the reactions and the product which results from interpolymerization as specified in the count.

Because we agree with the board’s conclusions respecting the failure of the record to establish that the products of the runs relied upon by Anderson had practical utility, we do not consider the additional findings of the board concerning the production of a co-polymer.

This court has held that for an invention to be completed, i. e., reduced to practice, utility must either be established or apparent. See, e. g., Blicke v. Treves, 241 F.2d 718, 44 CCPA 753 (1957). Where the invention is a process, the product of the process must have utility. See Brenner v. Manson, 383 U.S. 519, 86 S.Ct. 1033, 16 L.Ed.2d 69 (1966). The mere production of co-polymers is not necessarily a sufficient utility for a process, unless the usefulness is obvious from the copolymers themselves. See Fang v. Hankins, 399 F.2d 262, 55 CCPA 1468 (1968). Where, as here, the intended use of an invention is not indicated in the count in interference, evidence establishing substantial utility for any purpose is sufficient to show reduction to practice. Campbell v. Wettstein, 476 F.2d 642 (CCPA 1973). These are the legal considerations against which the facts involved in Anderson’s case for reduction to practice must be measured.

We first observe that the only specific utility asserted by Anderson for any of the products of the runs alleged to constitute reduction to practice is as a film. Although Anderson makes some general allusions to utility in the same manner as polyethylenes known at the time of experimentation, no specific utility other than film is identified. Anderson calls attention to the internal reports, which were introduced in evidence, and these documents do provide an overview of the situation in the laboratories of DuPont, Anderson’s assignee, where the new coordination catalysts were being explored. It appears that at the time of the initial experimentation upon which Anderson relies in this interference, the emphasis was on proving the operability of the catalysts in polymerization. The hope seems to have been that homopolymerization and copolymerization of olefins might be more closely controlled than previously so as to be productive of polymers different from those theretofore achieved. There is only the most abstract reference to ultimate uses of polymer products probably because demonstration of the very practicality of the catalysts was the primary objective at that formative stage o'f investigation. Our perception of the nature of the experimentation is corroborated by the absence of any polymer product testing for specific uses. The only testing done at the critical time was in the nature of infrared analysis and density and viscosity measurement which were aimed at identifying the structure and molecular weight of the products of the polymerization runs using the new coordination catalysts. In view of these observations, we limit our discussion as to utility to the establishment of usefulness as a film.

As indicated above, Anderson considers the work of Baxter to be the first and most important activity establishing reduction to practice of the invention of the count. Anderson’s contentions are that Baxter produced a tough, self-supporting, flexible film and that the practical utility of thermoplastic film was well known in the art in 1954. Anderson argues that the product of the Baxter run was chemically similar to polyethylene already known in the art, and since the Baxter product could allegedly be fashioned into a film, its use as a film in the same way as known polyethylene film would have been readily apparent to Baxter, Anderson, Stamatoff and their co-workers. Given allegedly apparent utility, there was no need, according to Anderson, for testing to establish a specific substantial utility. In addition to the product of the Baxter work, the products of the various polymerization runs made by the other workers Anderson relies upon are also said to have been capable of forming into a film and used in the manner films were known to have been used.

On the subject of the utility of the product of the Baxter work, the board held as follows :

Neither at the time Baxter prepared the product of [his experiment] * * * nor at any time prior to June 8, 1955, [emphasis the board's] is there any evidence in the record relied on by Anderson to show an appreciation of a practical utility of the Baxter product; not a single physical test for utility appears in the Anderson record or is relied on in the Anderson briefs. Yet Dr. Wheatcroft, a chemist and supervisor in the Ethylene Polymer Section of the Du Pont Polychemicals Department testified * * * that the Elmendorf tear strength test, for example, was a standard test that was accepted by people in the film business. Finally, * * * we note that there is no monthly report of Du Pont in the Anderson record prior to June 8, 1955 showing the practical utility of the product obtained by Baxter.

Anderson counters the board’s holding with Baxter’s testimony that the film he prepared for infrared analysis was, to his recollection, “self-supporting, tough, flexible” and with the arguments noted above. Accepting as a fact that, to the extent that can be determined by hand working of the film, the film had those qualities, we nevertheless conclude that in the absence of standard testing for strength, for example, a sample film could not have been assumed to be practically fit for use as a film. We are not convinced that the mere production of a sample film for purposes of infrared analysis is sufficient to establish usefulness in a practical sense as film. We think there is a discernible difference between a small quantity of polymer product pressed into the shape of a film for infrared scanning, a procedure which must have been standard practice with polymerization reaction products, and a film which is determined to be practically useful in applications for which thermoplastic film is suitable. The absence of any testing for structural suitability of the film provides firm support for the board’s holding.

Our conclusion with respect to the Baxter work leads to agreement with the board’s holdings concerning the work of the other researchers. We have reviewed the record and the arguments advanced by Anderson, but we find no error in the board’s determination that in each instance of alleged reduction to practice the product had not been proved to have practical utility. The absence of any structural testing of the film, as we have noted, is sufficient basis for the board’s findings. Moreover, the board properly found no utility for those reaction products • in which the researcher contemporaneously noted that the film was “brittle” or had apparently poor optical properties.

For the reasons stated, we agree with the board’s conclusion that Anderson has not proved reduction to practice prior to June 1955.

THE CASE FOR ZIEGLER

Ziegler relied upon the German priority application filed August 3, 1954, as a constructive reduction to practice earlier than the June 8, 1955, filing date it shares with Natta. Natta urged at final hearing before the board that neither the Ziegler German application nor the Ziegler U.S. application discloses a utility for products of the process of the count and that as a result, neither application filing date could be held to be a date of constructive reduction to practice. Natta had not filed any .motion to dissolve on the basis of those contentions during the motion period. Ziegler argued that Natta was too late in advancing those arguments at final hearing. The board helfi that it would consider Natta’s arguments relative to the Ziegler German application but not those advanced with respect to the Ziegler U. S. application. We hold that the board erred in refusing to consider Natta’s contentions with respect to the U.S. application and correctly considered those with respect to the German application.

On the issue of considering the arguments relative to the German application, the board said:

Natta has every right to be heard on this question since the provisions of old Rule 258 certainly do not and cannot apply to questions raised by a party opponent relative to support in an earlier filed case, foreign or domestic, especially when Ziegler made no motion to obtain benefit of the German application before the Primary Examiner but exercised his option, permissible under the old Rules of Practice, of waiting until final hearing to urge such benefit.

With respect to the involved Ziegler U.S. application, the board said:

Natta concedes that Rule 258 precludes consideration at final hearing of the “patentability of a claim to an opponent” if the party raising the question has not “duly presented a motion for dissolution under Rule 231 upon such ground” or unless such party “shows good reason why such a motion was not presented.” Natta presented no motions during the motion period but contends that the subsequent Supreme Court decision in Brenner v. Manson, [383 U.S. 519, 148 USPQ 689 (1966),] is binding on the Patent Office and constitutes “good reason” to consider the matter at final hearing.
We do not accept the excuse for the delay offered by Natta, for the following reasons:
1. Brenner v. Manson was decided on March 21, 1966.
2. Although the motion period in the instant interference expired on September 28, 196.5, the motions were not set for hearing before the Primary Examiner until May 19, 1966, see order of the Patent Interference Examiner mailed April 18, 1966, both dates subsequent to the Brenner v. Manson decision.
3. The filing of belated interlocutory motions, though not encouraged, is excused under certain circumstances. See section 257 of Volume II, Interference Law and Practice by Rivise and Caesar and particularly the decision of the Commissioner in Felbel v. Fox, 1907 CD 312, 130 OG 2375. The same issue raised before us could have been raided by a belated motion filed in 1966. At this late date, we cannot condone such slumber on the part of Natta.

Natta insists that the board should have considered the arguments relative to the U.S. application because of the profound change in the law concerning utility effected by Brenner v. Manson, which change was not fully assimilated until this court’s opinion in In re Kirk, 376 F.2d 936, 54 CCPA 1119 (1967), which overruled to some extent several prior eases of this court on the strength of the Manson Supreme Court opinion. Ziegler argues that Manson did not change the law of utility insofar as the Patent Office was concerned. We think it sufficient to recognize that at the very least the Manson opinion was an important clarification of the law of utility which brought into focus particular considerations regarded by the Supreme Court as of paramount importance in ascertaining utility within the meaning of the statute. The decision of the Supreme Court in Manson was, in our opinion, good reason to excuse the failure of Natta to present a motion during the motion period. While the board correctly observed that Natta could have filed a belated motion, we do not think the failure to do that justifies refusal to hear the issue at final hearing where Rule 258 permitted consideration. We think it not unreasonable for Natta to elect, when Manson appeared, to wait for final hearing and attempt to argue the “good reason” exception of Rule 258.

In asserting error on the part of the board in considering the sufficiency of the German application, Ziegler contends that cases of this court establish that a party, Natta in this instance, which fails to raise an issue of sufficiency by way of motion during the motion period, may not do so at final hearing with respect to an earlier filed application. As a fact necessary to that argument, Ziegler alleges that his own U.S. application has no greater disclosure of utility than the German application. In other words, Ziegler contends that since Natta accepted the disclosure of the U.S. application as sufficient with regard to utility, Nat-ta was estopped to argue the insufficiency on that ground of an earlier application having at least as good disclosure as the later application. However, we have held that Natta should have been excused from failing to file any motion respecting sufficiency of the Ziegler U.S. application, and that holding undermines the application of the estoppel theory advanced by Ziegler. Moreover, we agree with the board’s reasoning on this issue.

In light of our holdings that the board should have considered the sufficiency of both the Ziegler U.S. and German applications, we turn to the substantive question of compliance with the utility requirements of § 101 and § 112. For the reasons hereinafter set forth, we find that the board correctly denied Ziegler the benefit of the filing date of the German application, and since, as Ziegler admits, the utility disclosure of the U.S. application is no greater than that of the German application, Ziegler was not entitled to the June 8, 1955, filing date of the U.S. application.

Ziegler initially argues that the benefit of the filing date of a foreign application accorded under § 119 is independent of the requirements of § 112. That position has recently been rejected by us in Kawai v. Metlesics, 480 F.2d 880 (CCPA), decided June 21, 1973. We there held that a foreign application must meet the requirements of § 112, first paragraph, in order for a later-filed U.S. application to be entitled to the filing date of the foreign application under § 119.

The board found that the only teaching in the Ziegler German specification which could suggest utility for products of the process of the count is that such products are “plastic-like” copolymers. That, the board held, is insufficient to establish any substantial specific utility. We agree. We think such a general description of the character of the polymer products would not convey to one skilled in the art any particular usefulness. Anderson’s fashioning of his products into sample films went further in leading one skilled in the art to practical utility, but we have already held that to be insufficient. We accordingly find no error in the board’s conclusion that “plastic-like” polymers have no apparent utility.

Ziegler contends that the polymer products described in the German application are structurally similar to polyethylene which itself was a product of known utility. However, the board rejected the premise of the argument, finding that the theretofore unknown copolymers were not necessarily similar to polyethylene and that Ziegler himself has characterized them as new and unique. We find no error in the board’s holding that there is no basis for one skilled in the art to have assumed that products described in Ziegler’s German specification which are from a process on which the count reads would have the same utility as previously known products.

We hold that Ziegler has no support for the count on the basis of either the U.S. application or the German application as a result of the failure of either application to disclose utility for products of a process encompassed by the count and the absence of any persuasive evidence that such utility would have been apparent.

THE CASE FOR NATTA

At the outset of its opinion, the board pointed out that neither Ziegler nor Anderson had challenged the right of Natta to rely on the June 8, 1955, filing date of Natta’s earliest-filed U.S. application. Natta was accordingly given that date as a date of constructive reduction to practice.

On this appeal, Anderson attempts to raise the issue of the sufficiency of the Natta application filed June 8, 1955. Anderson did not raise that issue at any point below, and we will not consider it for the first time on appeal.

We hold that Natta is entitled to the date of June 8, 1955, as its date of invention.

THE AWARD OF PRIORITY

We have determined that the board was in error in according Ziegler a date of June 8, 1955, but was correct in according Natta that date and in holding Anderson not to be entitled to any earlier date. It is clear, therefore, that Natta should have been awarded priority of invention. The decision of the board awarding priority to none of the parties here involved is accordingly reversed.

Reversed.


author: BALDWIN, Judge.

text:
    SHERATON CORPORATION OF AMERICA, Appellant, v. SHEFFIELD WATCH, INC., Appellee.
    Patent Appeal No. 8919.
    United States Court of Customs and Patent Appeals.
    July 19, 1973.
    Brumbaugh, Graves, Donohue & Raymond, New York City, attys. of record, for appellant. Richard G. Fuller, Jr.. Joseph D. Garon, Russell H. Falconer, New York City, John A. Finken, Washington, D. C., of counsel.
    George F. Long, III, New York City, atty. of record, for appellee.
    Before MARKEY, Chief Judge, RICH, BALDWIN, LANE, Judges, and ALMOND, Senior Judge.
   BALDWIN, Judge.

This appeal is from the decision of the Patent Office Trademark Trial and Appeal Board, 167 USPQ 248 (1970), dismissing appellant’s opposition to registration of the mark SHERATON, for watches and clocks. The mark as it appears in appellee’s application is somewhat stylized:

Opposition is primarily based on use of appellant’s marks SHERATON and what the board referred to as appellant’s “S” mark, shown below:

The pertinent facts are succinctly and accurately discussed in the published board opinion, familiarity with which is assumed.

Opinion

In concluding that there would be no likelihood of confusion as to source, the board stated:

Opposer is principally engaged in rendering hotel, motel, and restaurant services in “SHERATON” hotels and motor inns. The many items of merchandise bearing the mark “SHERATON” are, for the most part, in-house items utilized by opposer in the operation of the hotel and motor inns, and would be generally encountered by the average person within the surroundings of the hotel or motor inn in which they are guests. And considering that the term “SHERATON” appears thereon in conjunction with the word “Hotels” or the notation “Hotels or Motor Inns”, the association of “SHERATON”, as used on these goods, would be with opposer’s hotels and motor inns and not with the products, per se, as an indicia of origin therefor in the manner of a trademark. Likewise, persons encountering the few items sold within the hotels or by mail order or in the shops in lobbies of the hotels bearing the name “SHERATON” in the context described above will recognize these products for what they are, namely, identity or souvenir items serving primarily, if not merely, to advertise and promote “SHERATON” hotels and motor inns. Under these circumstances, if we were to take these persons outside of the controlled atmosphere of the “SHERATON” hotels and place them in different marketing and physical surroundings such as in the 5 and 10 cent stores in which applicant’s watches are sold, it is not believed that they would be likely to assume that “SHERATON” watches sold in these stores originate with or are in some way associated with the “SHERATON” hotels and motor inns.

The board erroneously restricted its consideration of appellee’s mark to the manner in which it is presently being marketed, i. e., in “5 and 10 cent stores.” There is nothing in the appellee’s application which would limit its methods of merchandising in any way, and, as appellant points out, channels of trade are subject to changes in course. See Norton Co. v. Bear Mfg. Co., 438 F. 2d 620, 58 CCPA 981 (1971); Crown Industrial Products Co. v. Crown Central Petroleum Corp., 440 F.2d 446, 58 CCPA 1095 (1971). In fact, the type of watches on which appellee uses its mark seems eminently suitable for sale in the gift shops which appellant has established are to be found in many of its hotels. If the availability of such outlets results in a reasonable likelihood of confusion, then the appellant is entitled^ to prevail. Cf. Hilton Hotels Corp. v. Golden Gate Stores, Inc., 168 USPQ 475 (TTAB 1970).

The board dismissed appellant’s retail sales of such gift items as lighters, golf balls, etc., on the basis that these were merely “identity or souvenir items serving primarily, if not merely, to advertise and promote ‘SHERATON’ hotels and motor inns.” While appellant implied at oral argument that these sales were to earn money and not just to advertise, there is nothing in the record concerning appellant’s motive in making such sales. But even accepting that appellant’s use of its marks on such items were purely for the sake of advertising, the law is well settled that such use of a mark gives the user sufficient rights to oppose registration by a subsequent user. See Knickerbocker Toy Co. v. Faultless Starch Co., 467 F.2d 501, 59 CCPA - (1972); Jim Dandy Co. v. Martha White Foods, Inc., 458 F.2d 1397, 59 CCPA 1016, (1972); Lever Brothers Co. v. Nobio Products, Inc., 103 F.2d 917, 26 CCPA 1253 (1939).

We also think that the board placed undue weight on ten third-party registrations placed in the record. The board especially noted that SHERATON had previously been registered for “smoker’s pipes and tobacco, items of clothing, and paper products such as paper napkins, toilet paper and paper towels” alleging that these are “products that would be encompassed by opposer’s broad assertion of protection.” We have often said that third party registrations are of little help in determining likelihood of confusion, mistake or deception. Clairol Inc. v. Roux Laboratories, Inc., 442 F.2d 980, 58 CCPA 1170 (1971); In re Belgrade Shoe Co., 411 F.2d 1352, 56 CCPA 1298 (1969). There is no evidence herein that any of the third party marks relied on have been in use or that the public is otherwise aware of them.

Considering the fact that the marks are identical and that appellee’s watches are a type of goods which would be likely to be sold in the gift shops in appellant’s hotels and inns and.by appellant through the mails, we are of the opinion that there would be a likelihood of confusion in the present case. In ruling that the opposition should have been sustained, we are not bestowing a “right in gross” upon appellant in its mark, as implied by the board. We are simply holding that the use of this mark on these goods, in view of all the circumstances brought to light in this record, is likely to cause confusion, to cause mistake, or to deceive, within the meaning of the statute.

The decision of the board is reversed.

Reversed.

      . Application Serial No. 233,534, filed November 29, 1965.