In re Russell ( 1946 )

O’Connell, Judge,

dissenting in part.

For the purpose of final rejection of the claims for article, the examiner’of Division 32 relied upon a plurality of references none of which, with the exception of the patent to Robinson, was subsequently mentioned or relied upon either by the examiners or by the Board of Appeals. In fact, the references cited here, with the exception of Robinson, were cited for the first time after the final rejection of the claims for article. It expressly is admitted by the Board of Appeals in its rejection of the claims for article “that the prior art does not disclo.se the step of compressing the springlike elements in the manner-contemplated here.”

Viewed in the light of the facts of record, the cited references fail to disclose or suggest that appellant’s article might be constructed by combining certain elements of the references, and what appellant has done was not obvious to any person skilled in the art. Therefore, I am constrained to hold that claim 14, 23, and 24 involve invention and are patentable. In re Huntzicker, 24 C. C. P. A. (Patents) 1325, 90 F. (2d) 366, 34 USPQ 14; In re Stover, 32 C. C. P. A. (Patents) 823, 146 F. (2d) 299, 64 USPQ 186. See also In re Kaplan, 27 C. C. P. A. (Patents) 1072, 1075, 110 F. (2d) 670, 45 USPQ 175.

There is no device disclosed or suggested either by Skelton or by any of the subsidiary references of resilient wire elements capable of not only withstanding shock without deformation or rupture but also of recovering their size and shape after deformation especially by compressive stresses. That device, however, is defined by the appealed claims for article.

The patent to Skelton provides an air cleaner with a tubular casing for internal combustion engine carburetors, and “means for holding the dirt collecting medium in a compact condition and under sufficient compression to form tortuous paths for the air as it passes into the devices.” The pertinent feature of Skelton is described in his specification as follows, numerical references to the drawings being here omitted:

* * * A pair of spaced screens are located in tlie cup-shaped member and separated' by a mass of cleaning or filtering material such as steel wool. The cleaning unit is detachably secured to the casing by the stem and thumb bolt which may be adjusted to produce a desired degree of compactness in the filtering medium.

Robinson relates to the art of contacting two liquids differing substantially in specific gravity and has particular reference to a vertical tower used for the extraction of oils by means of selective solvents. The construction of Robinson, as far as pertinent to the question here in issue, is described in the specification as follows, numerical references to the drawings being here omitted:

* * * My invention is concerned with the intermediate portion of the tower, which is normally either empty, packed with some type of filler or equipped with baffles of one sort or another.

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* * * The packing may be of any known type such as pieces of ceramic material, Raschig rings, etc., but I prefer to use small metallic springs, as shown, since I find this type of packing material highly satisfactory. The layer of packing may be of any desired height, for instance, from half the diameter of the tower to the diameter of the tower. Instead of using a packed space for the contacting portion of each of my stages, I can use a series of baffles, or even an empty space, but I strongly prefer to use the packing as described.

The two French patents were described by the examiner as constituting in effect a single reference. According to the statement of the applicant for the French patent No. 483,77(1—

The object of the present invention is specifically a hollow element facilitating th'e contact of liquids and gases in apparatuses for fractional distillation, for washing gases and refrigerating gases and liquids, this, element being constituted by a wound body, wound so as to form convolutions at least a portion of which do not touch one another.

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To utilize these elements in distillation apparatuses or apparatuses for washing or refrigeration they are heaped up pell-mell or otherwise in the portion of the apparatus, for instance a column, in which the condensation of the vapors or the contact of the gases and liquids takes place.

The British patent to Scheafer discloses a plurality of coils in metallic packing or filling bodies for distillation towers. It is re-guarded as cumulative with Robinson and was not discussed in the decision of the Board of Appeals.

It is noted that each of the cited references discloses elements to make filter bodies, but none defines the precise article called for by the claims on appeal. The form of the wire elements in Skelton’s filtering pad differs from the interlinked and intermeshed mass of resilient coils, or other three-dimensional springs, of wire elements having hooked ends as disclosed by appellant.

Robinson discloses the use of pieces of ceramic material, but prefers the use of small metallic springs, as packing material. These springs are indicated in the drawing but not further described in the specification. The inference to be drawn from Robinson’s patent is that the towers are several feet in diameter and the material in the filtering pad is not packed in the sense of being compressed, but is loosely placed in the tower. Furthermore, the wire elements in the French patent while they are “heaped up pell-mell,” there is no teaching of compression. On the contrary, the coil structure is wound “so as to form convolutions at least a portion of which do not touch one another.”

As correctly stated in the brief of appellant—

* * *' At best, the prior art discloses similar features only in separate patents where they are not arranged and do not coact to produce appellant’s results.

The new results are found in the substantial elimination of freedom for relative movement of the spring filaments and consequent elimination of frictional wear which would otherwise cause fracture and formation of numerous small fragments due to the vibration and pulsation effects produced by the mechanisms upon which the filters are employed. These n,ew results arise from the resilient characteristics of the compressed mass of springs, because the compression maintains firm contact between contiguous filaments at all times.

Au auditor’s certificate and an affidavit are properly before the court in which appellant submits facts and supporting figures to establish not only unexpected results but also proof of commercial success.

On the question of commercial success, the manufacture and sale of more than 190,000 of appellant’s cleaners at a sales value’ of more than $1,000,000 is shown, with unfilled orders on hand of the approximate value of $400,000. An extensive use of appellant’s device by the War Department of the United States as well as the British Army is also shown. The facts submitted by appellant on the question of commercial success are not contradicted, and it clearly appears from the record that appellant’s combination is new, useful, and commercially successful.

For the reasons hereinbefore stated, the decision of the Board of Appeals should be reversed as to claims 14, 23, and 24.

I am authorized to state that Judge Bland joins in this dissent.