Application of Charles T. Fuetterer , 319 F.2d 259 ( 1963 )

RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of claims 38-49 in application Ser. No. 498,089, entitled “Tire Treads and Rubber Stock Therefor.” The claims stand rejected solely as “failing to define the alleged invention properly.” More specifically, claims 38, 40, 42, 44, 46, and 48 have been rejected as “indefinite and ambiguous” and all claims as “unduly broad and functional.”

Appellant’s invention relates to a tread stock usable, for example, in vehicle tire treads which are alleged to “improve the traction of * * * tires when they engage a road or pavement which is wet or which is wholly or partly covered with a water-containing substance, such as snow or ice.”

Appellant describes his invention as follows:

“In accordance with the present invention, a carbohydrate, a protein, or mixture thereof, which is insoluble or which is only slightly soluble in cold water but which forms a colloidal suspension therein, together with one or more inorganic salts which are effective in maintaining the carbohydrate, protein, or mixture thereof, in colloidal suspension in the film of water which forms around the tire tread when the tire engages a wet or icy road or pavement,¹ 2are incorporated in a finely divided state in rubber, together with the other compounding ingredients which have previously been utilized in combination with rubber, to form the rubber stock for forming the tire tread.² ”

Claim 38 is representative and reads as follows:,

“38. A rubber stock for producing tire treads including as the base portion a major proportion of rubber, a sufficient amount of a vulcanizing agent to vulcanize the rubber, and a reinforcing agent in an amount sufficient to provide a tread stock having high abrasive resistance, said rubber stock also including in addition to the base portion a mixture of a nonadhesive protein and a carbohydrate³ which mixture is substantially insoluble in cold water and which is homogenously [sic] distributed throughout the base portion of the rubber stock, said mixture of carbohydrate and protein being approximately of a particle size that is fine enough to pass through a 300 mesh screen and being present in an effective amount ranging from more than incidental⁴ impurities up to 20% by weight of the base portion of the rubber stock, and an inorganic salt that is capable of holding a mixture of said carbohydrate and protein in colloidal suspension in water, said inorganic salt being in a sufficiently finely divided state to form a homogenous [sic] mixture with the base portion of the rubber stock and being homogenously [sic] distributed throughout the base portion of the rubber stock and being present in an effective amount ranging from more than incidental⁵ impurities up to 20% by weight of the base portion of the rubber stock and in an amount sufficient to hold the mixture of carbohydrate and protein in colloidal suspension in a film of water which forms around a tire tread composed of the stock when the tread rotatably engages a wet or icy road or pavement and small particles of the base portion of the rubber stock and small particles of the carbohydrate, protein, and the inorganic salt are worn from the tread.”

The Definiteness of the Claims

The rejection of claims,38, 40, 42, 44, 46, and 48 as indefinite and ambiguous was set forth by the examiner in his answer as follows:

“The recitation ‘present in an effective amount ranging from more than incidental impurities,’ limiting the amount of salt, protein and/or carbohydrate present is indefinite and ambiguous since it is neither apparent how much constitutes an effective amount nor is it obviouc what constitutes an incidental impurity.”

The board, while ostensibly affirming this rejection, noted that the portion of the claims quoted by the examiner did not make the tire tread stock recited therein distinguishable from that disclosed by Davis et al.,⁶ a reference considered by the examiner to be inapposite to the claims now before us.

After considering the Davis et al. disclosure in detail, we are unable to see its pertinence to the claims in their present form. This conclusion finds support in the failure of the solicitor to do more than note the existence of the Davis et al. reference and mention in a cursory fashion the manner in which the board made use of it in “affirming” the examiner.

The essence of the Patent Office rejection on indefiniteness is that a recitation in the claims of “an effective amount ranging from more than incidental impurities” would place an “undue burden * * * upon the public, to determine the operable proportions.”

We think the examiner’s rejection of the instant claims as failing to enable the public “to determine operable proportions” is misplaced. Such is the function of the invention description and not that of the claims.⁷ Appellant stated before the board that when “any amount of the .non-adhesive protein, carbohydrate, or a¡ mixture thereof, is present, .some effect,"Will be obtained.” The .Patent Office does not dispute .this statement. As in the case of In re Gay, 309 F.2d 769, 50 CCPA 725, when we, consider wbut: appellant’s invention really is, we find that .appellant has clearly stated in the ..ynfiptgn. description, of his invention that p^rticulur,aspect thereof..is not crucial,,(in.. .this ..instapce that, .one could, vary within .wide, jimits the amounts of non-adhesive protein and/or carbohydrate, and still achieve an operable form of his'invention.' We do not consider pertinent to the instant, rejection, which is not based oh prior art, the obvious fact that' if' 'extremely' small, quanfítiés. of carbohydrate ' ari'd/or rion-adhesiVe protein were* úsedtb'e''“effect "* [ obtained’'’ vtfould' be extremely' small. , Accordingly, insofar'as ibA'instant rejection oh indefinitehess and ambiguity may be considered to be based on the failure of appellMt to comply with the require-meAts"of thé paraghaph of 35 U.S.G. § T12, ‘ we áre "ncít pfersu’á'ddd that any' “undue1 burden”" is pla'ééd on the public by ’appellant’s disclosure.' We therefore reverse the rejectidnbf1 claims'’38, 40, 42, 44, 46, and 48 as indefinite and ambiguous. . . ■

The Undue Breadth and Functionality of the Claims ‘1

This rejection, was set forth by the examiner in'his answer as follows (emphasis ours)':

“The, recitation ■ ‘inorganic salt that is capable of holding a mixture of said protein and/or carbohydrate in colloidal suspension’ is unduly broad and. functional. ,‘Inorganic salt’ reads on, literally thousands of materials,. :,muny of which .would not be operative, for, applicant’s purpose. For example, some salts could readily react with, the other ingredients in the ¡composition while other salts could be corrosive or destructive. of the rubber. This recitation is functional since it merely describes how the salt functions as the surface of the tire wears away. It is well established that claims should set out what .the materials are and not by what they .do. In re Fullam 1947 C.D. 352 [34 CCPA 1018, 161 F.2d 247, 73 USPQ 399].”

The board' .affirmed- this portion of> the examiner’s-rejection,'Stating:

“While the Examiner has not speeifi-1 cally' listed any salt as being inoperative, his' rejection is not based upon the ground of inoperativeness per se but rather upon'the inordinate breadth of the claimed salts when it is not apparent from the disclosure of only, four-salts what other salts would be suitable to serve the function asserted and required by the claims.”

(a) Functionality

“Functional” language in claims is not expressly condemned by the patent statutes. On the contrary, the only portion of Title 35, U.S.C., which makes any reference to the use of statements of function specifically authorizes such use.⁸ If we are to affirm the Patent ’'Office'-rejection básed -on' “füfiéti'orialiíy,”1 'therefore, we must cío so oñ'-thé’baSis''that,i'(i)':the type of ‘‘ftirictióñálity” involved here’is neitbér'eómprOKeñdéd’‘nb!f1 authorized‘by tHNthibd paragraph';of 35- U:S!.Cl’§ 112 and (2) tHerb ¿xMs a ' body ¡Of éxtra¡statütory'casedaW' whitíb SpeeifiCaliy-' condemns ' the type1‘ of :‘‘fun0tiónálity” • involved'in* the instáiit blaifiis'.⁹'' ‘'«.'’i'.'--1':-

' The hoard stated, 'as preViousíy; noted, that “Sinc,e thé klle^ed. novelty appears to reside in'the result desired’to he1'obtained,, by the, skits, it'is not proper to define the salt by what it’ is: supposed‘to do rather than what it 'does.”¹⁰ .......

The sole cited support for the board’s position was the Fuilam -case, supra, a 1947 decision of this-court'which we'feel involved a phase of thé’ “functionality” question which is inapposite to the- instant: case., ... .... ‘

In the Fuilam-ease; this .-court stated that some- claims -were properly , rejected as “functional- in claiming merely, the desired result well- known-to and-sought after by workers skilled in the, art.” Claims directed merely to a “desired result” have long been considered’ objectionable primarily becáüse they cover any means Which anyone may ever discover of producing the result. See, e. g., O’Reilly v. Morse, 15 How. 62, 14 L.Ed. 601; Heidbrink, v. McKesson, 290 F. 665.

The desired result of 'appellant’s invention is limiting , the skidding of a tire tread stock on a wet surface. Appellant, in the claims before us, ■ is not claiming!¡this result:1 -A--myriad- of: alternative meáhs¡ifor’’achieving.-'this result -cambe easily ’thoughtmf'Whichw'ould ¡not fequire' the -particular • combination- '«of 'subStafices ’ claimed”'byr appellant., -In'sofár,'therefore, aS.-a«'‘«‘functdonal” -claim ¡may mean one which'¡covers all means of !ar'rivingi' at1 :the ■- desired-¡result',although •the';'meáais“'by!'Whídhí,subh-, result is. ob---tamed, is eritirely,(liffer¡ei)t fr<om that; disclosed ¡by. the ¡applicant,: it. is-, apparent that /appellant’s claims .vare, npt “functional.” ;

This’c'oiirt ifi the -Fuilam «case affirmed the rejection of certain other method claims oix¡the basis, that a-polishing material^ recited therein-was defined “not in terms «of- what ■it 4s, -but of -what it does. [Emphasis- ours.] This -eotirt cited Geneva Electric Co. v. Wabash Appliance Corp. et al., 304 U.S. 364, 58 S.Ct. 899, 82 L.Ed. 1402, to-support this<proposition-.! -111.<■! ; ■<, .-!/ -,- ... -- .

" ’It’wa's ifi the'Wabash case that the Supreme Court condemned the use- of “conveniently functional language' at1 the exact- point’ of - novelty.” ¡ The “exact point " of novelty’-’ in the Wabash - case resided in statements in the claims which “distinguished [the large grained tungsten filament there involved] ■ from the old art solely by' its tendency to remedy the problems in the art met by the patent.” Aside from such statements, the Supreme Court specifically held that the claims “aptly .* *, * describe the product - of" earlier manufacture.”

In the instant case appellant’s “exact point of novelty” is a new combination of substances constituting a rubber tire tread stock. This combination is distinguishable “from the old art” in that, inter alia, it is new, i. e., no evidence exists that it describes a “product of earlier manufacture.” The tendency of appellant’s combination to remedy the tire skidding problems in the art is not even mentioned in the appealed claims.

It is true that appellant’s inorganic salt is defined in terms of “what it does” rather than “what it is.” We note, however, that the Supreme Court, in a seldom quoted passage in the Wabash case, stated:

“A limited use of terms of effect or result, which accurately define the essential qualities of a product to one skilled in the art, may in some instances be permissible and even desirable * *

Appellant in the instant case has made just such a use of terms of result to define an essential quality of his inorganic salts.

Having carefully reconsidered the Wabash case and others, we are unable to agree with the Patent Office Solicitor that the third paragraph of 35 U.S.C. § 112 is necessarily “in derogation of the previous case law” and therefore “must be strictly construed.” ¹¹

Furthermore, we are also unable to agree with the solicitor when he states that “the last paragraph of 35 U.S.C. § 112 is by its very language limited to claimed combinations involving mechanical structures or apparatus and methods.” The word “combination” in this paragraph includes “not only a combination of mechanical elements, but also a combination of substances in a composition claim, or steps in a process claim.” P. J. Federico, Commentary on the New Patent Act, 35 U.S.C.A. Vol. 1, p. 25 (1954). We agree with that statement in the commentary, which is fully supported by the legislative history.

We find particularly appropriate at this point the following words of an eight-man Patent Office Board of Appeals in Ex parte Ball and Hair, 99 USPQ 146, 148:

“ * * * the language of [the third paragraph of] Section 112 is thought to be so clear as not to require any resort to extrinsic evidence in connection with its interpretation.”

The board also noted (at p. 148) that:

“ * * * some measure of greater liberality in the use of functional expressions in the definition of elements in proper combination claims is authorized by Section 112, than has been permitted by some of the stricter decisions of the courts in the past.”

Inasmuch as it is our opinion (1) that there is no statutory ban on the use of the “functional” language employed in the instant claims by appellant; (2) that cases cited in support of the Patent Office’s condemnation of the statements of function used in the instant claims are inapplicable to the situation here; (3) that the use of such functional statements as here appear is specifically sanctioned by the third paragraph of 35 U. S.C. § 112; and (4) that no objection has been made to the sufficiency of appellant’s invention description to support in nonfunctional terms the functional statements made in the claims, we reverse the rejection of the instant claims as functional.

(b) Undue Breadth

The rejection of the claims for “undue breadth” places particular emphasis on (1) an alleged “undue burden upon the public to determine what salts are suitable for obtaining the desired results” (emphasis ours), and (2) an alleged “undue [amount of] experimentation” required of those skilled in the art to determine those salts possessing the “function asserted” by the instant claims. The undue breadth rejection phase of the instant ease appears in the following-posture. Appellant has described his invention as comprehending the use therein of any inorganic salt capable of performing a specific function in a specific combination and he has disclosed specifically four such salts which are capable of performing this function. The examiner and the board, believing that not all inorganic salts are capable of performing this function and that one skilled in the art would not know offhand which inorganic salts are capable of so functioning, have rejected the claims as “unduly broad.”

It is clear that the instant claims do not comprehend a class of inorganic salts of any greater breadth than is comprehended by the invention description.¹² It is equally clear from this description and appellant’s brief that, in the words of the second paragraph of section 112, “applicant regards as his invention” the combination with his other tread ingredients of any inorganic salt capable of “maintaining the carbohydrate, the protein, or mixture thereof, in colloidal suspension * * It is exactly this combination which appellant has particularly pointed out and distinctly claimed in compliance with the second paragraph of section 112. If, therefore, as the examiner alleges, many an “inorganic salt * * * would not be operative for appellant’s purpose,” this criticism bears only on the sufficiency of the invention description. But its adequacy under the first paragraph of section 112 has not been questioned.

We find the arguments of the board and the examiner relating to experimentation necessary to determine the suitability of undisclosed salts to operate in appellant’s claimed combination beside the point. Appellant’s invention is the combination claimed and not the discovery that certain inorganic salts have colloid suspending properties. We see nothing in patent law which requires appellant to discover which of all those salts have such properties and which will function properly in his combination. The invention description clearly indicates that any inorganic salt which has such properties is usable in his combination. If others in the future discover what inorganic salts additional to those enumerated do have such properties, it is clear appellant will have no control over them per se, and equally clear his claims should not be so restricted that they can be avoided merely by using some inorganic salt not named by appellant in his disclosure. The only “undue burden” which is apparent to us in the instant ease is that which the Patent Office has attempted to place on the appellant, i ;-.The > Patent Office would require him-- tor dó'researchíon.'the ¡“literal-! ly. thousandsV'idf inorganic shits; and tde-> tefmihe <whióh .of,’ these) aré teuit'ablebfoirt incorporation')&to">hit claimed5 ‘combina^ tiOn^'.apparently’'.forgetting'.¡thát-.’he, has; not 'invented, and/is'-notclaiming,-colloid» suspending» agents but;‘tire'dread ‘dtoek' composed of a combination, of ‘rubber-and > otheri-ingredients.'!'-.'!»)- vos •;> i

' We aré botpefshaded th'át’Óúr;tíóñ'clh-’ siotí’óh'thik point’is w'róng;'by''deéíisitihS' of ihi'^'áñd'o'théi courts reÍating':"tb,ft'Hé' sufficiency !-'bf j • mVdiition?11 ih'sclObdr es! 1 'M; cáses' Wherdin*- !tliíb' aíp!p,lichnt'‘''ibíí'dláimi'rig-í chéñiic'ál cbitúpbU'iidis'^éc' s'é. ‘•íK' 11

’The” taient^'diR'ce1 réjectioná oFbiaims' 38-49”hrd'revérsfe'd. k’!';

Reversed.,

Martin, J., concurs in result only

1 . Appellant discloses what “inorganic salts” are suitable in the following manner:

“I also add to the rubber stock one or more inorganic salts which are effective in maintaining the carbohydrate, the protein, or mixture thereof, in colloidal suspension in the film of water which surrounds the tire when it engages a wet or icy road or pavement. For this purpose, I may utilize a sodium salt, such as sodium carbonate, tricalcium phosphate, magnesium carbonate, or calcium carbonate.”

2 . The operation of appellant’s tire stock to achieve its intended purpose is described as follows :j

“ * * * slipping or skidding of the tire will * * * produce wear upon the tire and a small amount of the carbohydrate or protein, or a mixture thereof, will form a colloidal suspension in the film of water and will be maintained in colloidal suspension therein by the inorganic salt which is present, thereby reducing the lubricating properties of the film of water to thus provide good traction between the tire and the road or pavement on which it is being driven.”

3 . Reference to the use of (1) a protein and a carbohydrate is made in claims 38, 39, 44, and 45; (2) only a carbohydrate in claims 40, 41, 46, and 47; and (3) only a protein in claims 42, 43, 48, and 49. We disregard these differences in the claims inasmuch as appellant has not attached any significance thereto.

4 . Claims 38, 40, 42, 44, 46, and 48 designate the lower limit of the added carbohydrate and/or protein as being of “more than incidental” amount — claims 39, 41, 43, 45, 47, and 49 set this lower limit at 5% by weight of the rubber tread stock. Because of the 5% limitation in the latter claims, only the former have been rejected as indefinite and ambiguous.

5 . See note 4, supra.

6 . Davis et al., “Chemistry and Technology of Rubber”, published" by Reinhold Publishing Corporation, 1937, pages 18, 20, 26, 27 and 53. The examiner’s reliance on Davis et al., a reference newly cited in his answer, was based on the premise that claims which “merely recite a stock which includes rubber, a protein and/or a carbohydrate, and an inorganic salt while the specification, at pages 7 and 8, teaches that the alleged invention lies in adding the protein and/or carbohydrate and the inorganic salt to a rubber stock” do not distinguish over “natural rubber.” Appellant thereupon amended the instant claims to state that the nonadhesive protein and/or carbohydrate in his tire tread stock were “in addition to” such substances which might occur in “the base portion” of the stock. The examiner, thereupon, considered as “overcome” that portion of his answer which relied on Davis et al.

7 . If support need be cited for this, see Robinson on Patents, Yol. II, particularly at § 483 (pp. 72-73) and § 504 (pp. 110-111). Also, 35 U.S.C. § 112 clearly indicates, in its first paragraph, that it is the function of the “written description” of the invention to “enable” one skilled in the'pértinént art to-“make and use” the invention, and, in its second paragraph; that the claims have a separate and distinctive function, namely, particularly 'to point 'out and' distinctly claim what “applicant'regards as his invention.”

Both the invention description and the claims form parts of a patent application’s “specification.” 35 .U.S.C., .§ ,112. How.ever, inasmuch as the remainder of this opinion .deals tq some extent with the problem of apalyzing the relationship that exists between the . invention description and tbe claims, the word “specification” will not be used.

8 . Tbe third paragraph of 35 U.S.O. § 112 reads:

“An element in a claim for a combination may be expressed as a means or .step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresppnding structure, material, or acts desqribed in the specification and . equivalents thereof.” [Emphasis ours.]

9 . OnS'of the primary problems we have in coming to grips with the instant rejection iá in what sense the Word “functional” is being used. Few words in patent law have acquired more diverse meanings than the word “functional.” Ellis, for example, in his1 “Patent Claims” (1949) at §§ 255-276 discusses at least five. It is for this reason that bandying about and lifting out of context statements referring to .“functional”' expressions,' has,1 as ■ Ellis euphemistically” puts ■ it; “caused confusion.” In'addition'to'Ellis; supra, ■ some of the more recent texts’which- outline the confusion that exists in'’the 'case law with regard to what are “functional” statements, and how-they should be treated, are: ■ ■ „

Glascock and - Stringham, Patent Law, pp; - 315-324 (1943) Hoar, - Patent '■Tactics and Law, pp. 116-118 (3rd ed., 1950) Stringham, Patent Claim Draffcing, pp. 215-243 (1952) Deller’s Walker on Patents, ■ -particularly at § 168 (as supplemented to 1962).

10 .--This statement, if’correct, would .lead ■appellant’into somewhat of an- impasse— statements indicating what an -entity is ■“supposed to do” as well os statements indicating what that entity “does” -may both be “functional.”- ■ ■

11 . We do not mean to imply that 35 U.S.C. § 112 was not in derogation of the result reached in any case decided prior to the enactment of the 1952 Patent Act. See, e. g., Halliburton Oil Well Cementing Co. v. Walker et al., 329 U.S. 1, 67 S.Ct. 6, 91 L.Ed. 3. We feel, however, that a considerable body of case law, if not the preponderance thereof, before the Halliburton case interpreted broad statements of structure, e. g., “means,” plus a statement of function in the manner now sanctioned by the statute. See, e. g., Westinghouse v. Boyden Power Brake Co., 170 U.S. 537, 558, 18 S.Ct. 707, 42 L.Ed. 1136. See also in this regard the February 1952 issue of the American Patent Law Association Bulletin wherein is reprinted at pp. 40-50 an address by the Hon. Joseph R. Bryson, Representative from South Carolina, given on January 24, 1952, to the Philadelphia Patent Law Association. Representative Bryson was at this time Chairman of Subcommittee No. 3 of the Judiciary Committee of the House of Representatives, which subcommittee was in charge of the legislation which resulted in the Patent Act of 1952. He stated in part (at pp. 45-46) :

“I should like to say a word on the provision in the bill for functional claiming. [H.R. 3760, S2d Cong., 1st Sess., § 112 (1951) ] * * *. This provision in reality will give statutory sanction to combination claiming as it was understood before the Halliburton decision. All the elements of a combination now will be able to be claimed in terms of what they do as well as in terms of what they arre.” [Emphasis ours.]

For a more complete analysis of the cases under the third paragraph of 35 U.S.C. § 112 since its enactment, see Woodcock, “Patent Act of 1952 — Ten Years of Interpretation : Section 112,” p. 157, American Bar Association Section of Patent, Trademark and Copyright Law, Summary of Proceedings at San Francisco, California (1962).

12 . See note 1, supra.