In re 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, 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. ”

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 carbohydrate 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 incidental 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 incidental 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., 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. 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. 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'.'' ‘'«.'’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.” .......

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 Patent Office would require him-- tor dó'researchíon.'the ¡“literal-! ly. thousandsV'idf inorganic shits; and tde-> tefmihe 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

. 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.”

. 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.”

. 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.

. 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.

. See note 4, supra.

. 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.

. 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.

. 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.]

. 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).

.--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.”- ■ ■

. 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).

. See note 1, supra.

WOE/LÉY*,

ALMOND, J., joins (disséirtíWg')'.1,1^

iJ"Ti dm ‘uhable‘-tq ágféé:tíiát thé* board erfed;''in! 'i'fejectihg'u'the' ;dl'afms'‘ on* file* ground’s*; of1 :fuhctidriáliíy''' atíd’1 undue’ bfeadth'.”*'’ *> -'.r.'í.i...

'‘'Áppellañ'lí'^fines’'one of1me' nfáteriáís .i-U .¡i íi-hh'.Wíü ¡: .if '..-JJo.A in his composition as cm mor game’ salt suspeHsion^iÉ 'wúef^’ ’(•italics1 ‘Míipiiíje’aí) ‘ Th'e'examiner beld'thá't* language!'fkile'¿’ i’ne} examiner fi^ld to properly ^definérthe' invéá'tíbn. u,,iJ * ^ 1

affirming, the hoard s.tated: ’ ■ ’ ‘

ovo wri f f .;j fy^gtioy.ftyssgrfiedj f orspits,^¡, ,i.s. jfcnoma in, art .mMAtÁjm ,,$pl$í}ja,¡p .fippty p:qCi g$pÁffy' tfyertf ufajhñ #s,$q^¿r¡<59ttyyWfyiofií it\ fairly,, r^gdily^detgrpninod^ 'rfplfsMV' %ug,ttyb\e ?í$\s ■ Miñítáv, avá »fmfcn ^¿Th^wpw* tmwiMy^hei »Mm> ;fWF#í?fl(sAWÍ(?'vf not be required of the public or even by those skilled in the art.,]cordinglyv'weswilbsustaj-nsthis réjecw tiorí.f '.‘(Italics;-supplied.-)'!

I’fifad‘no-'évidéhbe dri-tMW record before us ‘Which -WdaldYfi ’'a'nyWiSé'-'fefUfe' that reasoning and conclusion. -

.¡■ffilie. basis ‘for-¡rejection here-ismleatly 35» UíS.C.¡i§ ..>l-12»-.Which¡rrfiquires ;án, ap‘plicant'-to .particulaylycpoihtíoutvand' disr» tintítly >claim, ,Ms< ‘alleged- invention. <»The issue; of failure to comply^with-that‘-section- becauseiof idunotionality. ..-introduces.an-elenafent of ¡degree;iwh'ichf ,much‘,'Tiké: the; question .¡of; obvibusniessj > is» dependent» onlthe particular facts in» each case." ■>.

!I't'see'nT.S’!tO,'me that‘óh'e‘ skilldd'in this-' aft Would betunadle to- déterihiné, with1out* í elaboratei ¡experimentation',-' which salts,- -other.tháníithe.»four disclosed,1 are capable -,of¡ ¡performing,jthe /desired func-tion*»»That is iso¡¡because appellant ¡'has to disglpse,any,factual criteria'orsc.ieptific,, pyinpipl.es; (upqrt r w,hich. ¡equiva-, lence can be based.

Only four examples are given in the specification;‘and They'iibelong) to a narrow .group, viz?3,alkaline earth .or alkali salts’of garbonicpiyphosphon the. disclosure'' does"’not^.teacb, whether‘ any inorganic salts,' other ‘tban tjie'four'. disclosed, woutó perform fíie same function. The..common properties of the sans re*»«ir *U5*; vt\ * i "tf'. l » ■ *kf T»r“iwv; j lied on to perform said! function arp not disclosed, nor' are '.the 'examples sufM >iL Ml ! "}l >,'» i íj ; I (■' ficiently numerous to make clear what" those pfopertiés'mígKt bel" ,gincé ébüivalent saltas cannot be determined from tfia ' ' »■ »i 11 j * ’ ,‘j, 3 5J ft * ; •, HA"’1 v 1' t«'1 1 ! ' teaching.,of’ the.disclosure or the skill of the arf,, sorely appellant.,is (npt entitled to clájm them." Discovery of suitable protein and carbohydrate m colloidal, sus-, pension in a laboratory test tube, but whether 'fiíe^’ woülÜ ’'actaafty' maintain ■,1.0.:"; :■> -í> í «tü i-,ir,ri -stf" 'y,.J> the suspension, under conditions of use, s;. T»,'.; . e., m icy-water, under the pressure JlllaI. j- : ..’i'/A'/f;--. 21 a _:v «•'if T; i'

>&5.. WteiiW^?fe;,fil^F1y«Fe¡?.Ví1^'t.W »Wfjf ing vague, indefinite and toó broad*,.. such their allowance is precluded by 35 „U.S*C..;§ 112. I would affirm.