Application of Odeen, 203 F.2d 766 (C.C.P.A. 1953)Annotate this Case
H. C. Bierman, New York City, for appellant.
E. L. Reynolds, Washington, D. C. (S. W. Cochran, Washington, D. C., of counsel), for Commissioner of Patents.
Before GARRETT, Chief Judge, and O'CONNELL, JOHNSON, WORLEY and COLE, Judges.
This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming that of the Primary Examiner in finally rejecting claim 25 of appellant's application for a patent on a method of recovering oil from spent earth. Fifteen claims were allowed by the examiner, 1-3, 7, 13-16, and 18-24. No prior art is involved in the rejection of the appealed claim which sufficiently discloses the nature of the involved process and reads as follows:
"25. In a method of treating spent earth containing glyceride oil, the step which comprises treating said earth with an aqueous solution consisting essentially of sodium carbonate and sodium chloride at elevated temperatures."
The examiner held that the limitations of claim 25 fail to define the invention and include an inoperative procedure:
"As pointed out in the last Office action applicant has argued that the lower limits of the proportions of salt and solution employed is a critical aspect of his invention. Moreover it appears that applicant's process would not be operative with any and all combinations of sodium chloride and sodium carbonate."
The board in sustaining the examiner noted that in his own disclosure appellant admits certain specific proportions of the sodium chloride and the sodium carbonate are necessary to make his method work. Appellant likewise admits in his brief on appeal that certain minimum proportions of the salts employed are critical in carrying out the process. Since these proportions are not defined by the limitations of the claim, the claim does not point out or distinctly claim the invention as required by the statute.
The decision of the Board of Appeals is accordingly affirmed.