*

the natural frequencies of the said substances The term 'natural frequency' is intended to mean the range of frequency of the anomalous dispersion and resonance dispersions." He adds, "From the previously described connection between resonance frequency and anomalous dispersion position it results that the latter is a suitable indicator for the resonance frequency."

With Kassner's teaching of the relation of the anomalous dispersion range or region to conditions of resonance there may be compared the statement in applicant's specification that "When the treatment is proceeding the circuit should be tuned to resonance at the particular frequency selected within the anomalous dispersion range and changes in the dielectric between the electrodes or in the spacing of the electrodes will, of course, affect the desired condition of resonance. * By means of a tuning motor controlled by a photo-electric relay the curcuit may thus be kept in constant resonance and tuned to give the highest efficiency of treatment." Appellant in his specification elsewhere states, "Although I have described above and find it advantageous to use a circuit tuned to resonance at the particular frequency selected, it is also possible to operate with de-tuned circuits

*

*

* *99

Keller's patent relates to a method of heating nonconducting molding materials quickly and uniformly throughout their mass by means of a high frequency field where the material and electrodes comprise a tuning condenser for a power oscillator supplying current. Changes in the capacity of the circuit due to variations of the dielectric constant of the molding material as heating progresses are said to produce corresponding changes in the frequency of the oscillator, keeping thereby the dielectric loss in the material at a maximum throughout the heating operation. The dielectric constant is described as increasing in magnitude as the temperature of the material rises, but the load circuit is kept resonant to the oscillator frequency by a tuning condenser. In this connection, appellant in his specification states: "A further result of using the high frequencies most suitable to purposes of my invention, is the sensitivity of the circuit to various changes in dielectric between the electrodes." He then states that the circuit should be kept resonant as quoted in the preceding paragraph.

Claim 34 was considered by the Board of Appeals to recite in substance the step of applying an electrostatic field the frequency of which yields the greatest degree of energy absorption at the surface of the material being treated. Operating in accordance with Pitman's process was held by the board to satisfy that step. To appellant's contention that Pitman's process heats the layer of cement between the leather elements being united whereas his method agitates the

molecules at the surface of the materials being treated, the board held that in view of the provision in appellant's specification for the use on the surface of the material of a plasticizer coating with an anomalous dispersion range different from that of the material, there was no distinction between Pitman's surface layer and appellant's. In view of the teaching of Kassner's patent of the unique behavior of dipolar substances in absorbing energy at the natural frequency or anomalous dispersion range, and Pitman's teaching of the use of a frequency yielding an optimum change from electrical energy to heat energy, the board held there was no invention in the process of claim 34 in requiring the application of a frequency such that the energy is absorbed at the surfaces. In reply to appellant's first petition for rehearing, the board stated that a discovery by appellant that surface molecular units possess an anomalous dispersion range different from similar molecular units within the body concerned did not warrant allowance of claims substantially providing for the procedural steps involved in Pitman's process.

Appellant's position on appeal, as stated in his brief, is that his method is concerned with the selective activation of the molecules at the surface of "the body which is to be welded," whereas Pitman is concerned with the activation or heating of the entire layer of cement which would be coated on one of two bodies to be joined together. Pitman's process, he contends, does not produce selective activation of the molecules at the surface either of "the body which is to be welded" or the cement layer applied to that body. Appellant states that if his principles were applied to Pitman's arrangement, only the molecules at the surface of the cement coating would be energized, and not the entire layer of cement as is Pitman's case. That difference is stated by appellant to be the basis of his appeal. The Board of Appeals and the examiner in his view "failed to recognize, or completely ignored" the distinction he urges between a surface and a layer. Appellant in urging the difference between "surface" and "layer” appears to have in mind that the basis of the rejection of claim 34 by the examiner and the board was "anticipation." Thus it is stated in his brief that "the Pitman patent contains no disclosure anticipating this claim or any other claim here on appeal." Again, at the conclusion of his brief, appellant states that "the processes set forth in these claims are not anticipated by any of the reference patents and that the Board of Appeals erred in rejecting these claims." The rejection by the examiner as well as the decision of the board, however, was that the claims at bar lack invention and thus are unpatentable over the references, not that they lack novelty and are thus anticipated by the references.

918434-51-vol. 38

The issue in this case is not so much whether the references contain an explicit disclosure that bonding may be accomplished by the application of an alternating electric field at a frequency within the anomalous dispersion range of the molecules at the surface of the bodies to be bonded, as it is with a consideration of whether it amounts to invention for appellant to do that in the face of Pitman's teaching respecting an optimum frequency for changing electrical energy into heat energy in a layer of cement applied to the surface, Kassner's teaching of the relationship of anomalous dispersion range to the frequency of an alternating electrostatic field in producing maximum energy absorption in a dipolar substance, and Keller's teaching of the maintenance of a resonant circuit when molding materials are subjected to an alternating electrostatic field and the interrelationship of the frequency, dielectric constant, and temperature in such a circuit. In discussing the prior art references in the forepart of this opinion we have shown that the teaching of each patent appears to be integrated in some measure into appellant's specification. Basically the principles and techniques set forth by the appellant in his specification are those disclosed in the references as indicated, with the exception that in none of the references is it suggested that the anomalous dispersion range of a dipolar substance may be one thing for molecules in the interior of the substance and another thing for the molecules comprising a so-called surface layer. This latter, if it is a fact, is concededly appellant's discovery, at least so far as the record before us is concerned.

Does the discovery of that fact and its utilization in the selection of the particular frequency of the alternating electrostatic field to be used in the bonding operation entitle the appellant to a patent on the claims here at bar? It is admittedly old in the art to pass a high frequency current between electrodes applied to opposite sides of a layer or layers of material to be bonded. The art of record here shows further that it is old to select a frequency from within the anomalous dispersion range of the material most effectively to utilize the energy of the high frequency field. The improvement appellant adds flows from his discovery that the surface molecules of the material have an anomalous dispersion range of their own distinct from that of the molecules in the inner portion of the material. Having discovered that phenomenon of nature, appellant merely uses the well known procedure for bonding by means of a high frequency field, selecting the particular frequency his discovery informs him is peculiar to the surface molecules of the material involved under the conditions of treatment. [1] Appellant has not invented any new art or improvement embodying or utilizing his discovery of a scientific or natural principle; rather

he has used a well known procedure for bonding by means of a high 775 frequency field and merely selected the particular frequency to be used in that procedure which the scientific principle he has discovered indicates to be appropriate. That is not invention. Davison Chemical Corp. v. Joliet Chemicals, Inc. et al., 179 F. (2d) 793 (7th Cir.) cert. den. 19 U. S. Law Week 3097; Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U. S. 127; Allen et al. v. Coe, 77 U. S. App. D. C. 324, 135 F. (2d) 11; In re Walker et al. 26 C. C. P. A. (Patents) 739, 99 F. (2d) 976, 39 USPQ 485; In re Mason et al., 24 C. C. P. A. (Patents) 842, 87 F. (2d) 370, 32 USPQ 242. Claim 34 and closely related claims 35, 36, 37, and 38 are accordingly unpatentable.

Claim 41 differs from the preceding claims and calls for a method of selectively fusing one material in the presence of other materials by selecting an alternating electrostatic field frequency near the center of the anomalous dispersion range of the material which is to be fused, and adjusting the conditions of treatment to compensate for the shift in the anomalous dispersion range produced during the progress of the treatment. The "adjusting the conditions of treatment" portion of the claim is adequately taught by Keller. Kassner provides a sufficient disclosure of the balance of the claim. In view of the rejection of all of the claims at bar as unpatentable over Pitman in view of either Kassner or Keller, claim 41 must stand rejected. Claim 42, similar to claim 41, is clearly unpatentable over the references. In each of those claims, a frequency within the anomalous dispersion range of the material itself as distinguished from a range peculiar to molecules at the surface of that material, is applied, and such a method as claims 41 and 42 state is taught by the references. Claim 43 adds to claims 41 and 42 the adjustment feature of claim 41 which as we have seen is met by Keller.

Claim 46 calls for applying energy selectively to a polymeric hydrocarbon by means of a high voltage field increasing thereby the polarization of the hydrocarbon so as to shift the anomalous dispersion range, and applying an alternating frequency within the shifted anomalous dispersion range. We agree with the examiner's analysis that Pitman's alternative use of vinyl compositions (hydrocarbons), Kassner's statement of the theory of polarization, and Keller's discussion of the use of relatively high voltage, preclude the patentability of claim 46. Claim 47 is dependent upon claim 46, specifying that the hydrocarbon is subjected during treatment to "a pressure of between 10 and 102 watts per square inch." That meaningless addition to claim 46 fails to confer patentability upon the claim.

For the reasons stated, the decision of the Board of Appeals rejecting all of the claims at bar is affirmed.

185 F. (2d) 709; 88 USPQ 106

IN RE KAMLET (No. 5742)

PATENTS

1. PATENTABILITY-AGGREGATION OR COMBINATION-IN GENERAL

New combination of old elements cooperating in new, useful, and unobvious manner to produce improved result is patentable; but not all new combinations are patentable; especially in chemical and electrical experiments, solutions may be reached by testing out variants reached merely by premutations of old elements; invention may be required in combining features from prior patents so as to produce useful result, but claims may be rejected on combination of several patents, taking specific features from each; it is not necessary that complete disclosure be contained in a single reference; it is sufficient that references suggest what applicant has done.

2. PATENTABILITY-AGGREGATION OR COMBINATION-IN GENERAL

Combination of four old steps in chemical process to produce old end product is not patentable where process does not produce new, useful, and unobvious results.

United States Court of Customs and Patent Appeals, December 5, 1950

[Affirmed.]

Appeal from Patent Office, Serial No. 631,352

Leonard L. Kalish (Arthur N. Klein of counsel) for appellant.

E. L. Reynolds (J. Schimmel of counsel) for the Commissioner of Patents.

[Oral argument November 9, 1950, by Mr. Kalish and Mr. Schimmel]

Before GARRETT, Chief Judge, and JACKSON, O'CONNELL, JOHNSON, and WORLEY, Associate Judges

JOHNSON, Judge, delivered the opinion of the court.

This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming the decision of the Primary Examiner rejecting as unpatentable over the prior art claims 1 to 7 and 9, all the claims in appellant's application for a patent on a process for the "Manufacture of Alpha-Methylglycerine From Butadiene."

In accordance with the motion made by appellant's counsel at the oral argument, the appeal will be dismissed as to claim 9.

Claim 1 is considered illustrative and reads as follows:

1. A process for the manufacture of alphamethylglycerine which comprises reacting butadiene with a member of the group consisting of hydrogen chloride and hydrogen bromide, thereby to form an equilibrium mixture of 1-halobutene-2 and 2-halobutene-3, hydrolyzing said halobutene mixture to form an equilibrium mixture of alpha-methallyl alcohol and crotyl alcohol, reacting said alcohol mixture with hypochlorous acid to form a mixture of alphamethylglycerine mono