In re Selmi (156 F.2d 102, 1946)

O’CONNELL, Associate Judge.

This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming the action of the Primary Examiner in his rejection of claims 5 to 9, inclusive, and claim 11 in appellants’ application for a patent for alleged “new and useful improvements in Alloy Steel.” Claim 12 was allowed.

Claims 5 to 9 in appellants’ application stand rejected as unpatentable over the disclosures of two prior patents granted to the appellants. Claim 7 was further rejected as functional and claim 8 as containing new matter. Claim 11, copied from the patent to Fleischmann, No. 2,332,441, for the purpose of interference, was rejected as unpatentable over the prior art as well as for lack of sufficient disclosure.

Claims 5 and 11 are illustrative. They read—

“5. A low carbon low alloy fine grain steel having high tensile strength and capable of heat treatment and quench hardening, and which may be rolled and normalized and which when carburized is free from massive cementite net-work, and in which the relation of carbon to silicon increases the elastic limit, and the steel containing an amount of molybdenum having a critical relationship between it and the carbon and silicon content, and the steel containing .30 to .75% manganese, .60 to .90% silicon, .30 to .75% chromium, .10 to .20% zirconium, sulphur and phosphorus not over .05% each the carbon being from .06 to .24% the molybdenum .10 to .20% and the remainder being substantially all iron.”

“11. Chromium carburizing steel containing as essential alloying elements about 0.5 to about .75 per cent of chromium, about 0.6 to about 0.9 per cent of silicon, about 0.1 to about 0.2 per cent of molybdenum, carbon from 0.1 to “about 0.24 per cent and in an amount such that the steel is hardenable by heat treatment, and the remainder iron together with impurities and elements in amounts which do not adversely affect the carburizing and heat treating characteristics of the steel, and characterized by producing, upon being carburized and hardened by heat treatment, a carburized case resistant to spalling and low in or substantially free from massive carbides, and high tensile strength in the core as the result of heat treatment.”

The references are—

Selmi et al., 2,234,130, Mar. 4, 1941;

Selmi et al., 2,250,505, July 29, 1941.

The subject matter of the appealed claims, as well as that of the cited references, relates to alloy steels in specific proportions. The instant case is closely related to the companion appeal, No. 5161, 156 F.2d 96, involving the identical parties and concurrently decided by this court.

The distinction between the subject matter of the companion appeal and this one is alleged in appellants’ brief to be—

“It differs essentially in that it specifically includes molybdenum and is directed to so balancing the ranges of the other elements as to most effectively use the small molybdenum content.

* * * * * *

“In the companion appeal, Docket No. 5161, appellants have set forth in their brief the great advantages and remarkable economies of precious alloys which have been accomplished in these steels, and there the hardenability characteristics, particularly the effective depth of core hardening, was limited to thin sections. Under the critical upper limit and within the extremely narrow limit in the present application, the applicants have so proportioned the other elements that molybdenum may be used to effectively and economically secure core hardening to much greater depth.

******

“The briefs differ in that the companion appeal includes claims rejected on different prior art. However, the reasons for patentability are in many respects the same.”

The record shows, and the examiner and Board of Appeals correctly held, that the percentage ranges of all of the elements defined in the appealed claims-fall within the ranges disclosed by appellants’ prior patents cited herein. We have analyzed the evidence in support of appellants’ contention of criticality and agree with the holding of the tribunals of the Patent Office that appellants have failed to sustain their burden of proof with respect to this phase of the case.

Claim 11 has the same status here as claims 13 to 17, inclusive, had in the companion appeal, No. 5161, and, as decided in that case, appellants’ failure to recite zirconium in the claim is a valid basis for its rejection.

Other points raised here by appellants,^so far as they are essential to the issue involved, were discussed and properly passed upon by the tribunals of the Patent Office, and we find nothing in the record that requires a reversal of the decision of the Board of Appeals.

For the reasons hereinbefore stated, as well as for the reasons in the decision of the court in appellants’ companion appeal, No. 5161, so far as they relate to the issue in this case, the decision of the Board of Appeals is affirmed.

Affirmed.

GARRETT, Presiding Judge, sat during the arguments of this case, but because of illness took no part in its consideration or in the decision.