
    70 USPQ 416; 156 F. (2d) 244
    In re Swain et al.
    (No. 5176)
    United States Court of Customs and Patent Appeals,
    June 27, 1946
    
      James Edwin Archer for applicants.
    
      W. W. Cochran for the Commissioner of Patents.
    [Oral argument May 7,1946, by Mr. Archer and Mr. Cochran]
    Before Garrett, Presiding Judge, and Bland, Hatfield, Jackson, and O’Conneil, Associate Judges
   O’Connell, 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 action of the Primary Examiner in rejecting claims 1, 2, 3, 4, and 5 being all the claims in appellants’ application for a patent on coating compositions containing ethyl cellulose. Claims 1, 2, and 5 were rejected as unpatentable over the prior art of record and claims 3 and 4 were rejected “as not readable on the elected species, there being no allowable generic claim.”

The references are—

Pages 23-26 and 28 Bulletin No. 2 “Ethocel” published 1937 by Dow Chemical Co., Midland, Mich.
Pages 35-43 and 46 “Ethocel Handbook” published 1940 by Dow Chemical Co.
Widmer et al., 2,197,357, April 16, 1940.
Moore, 2,218,474, October 15, 1940.

Claim 1, which is generic, is illustrative of the subject matter and reads—

1. A coating composition containing ethyl cellulose and a melamine-formaldehyde resin which has been reacted with an aliphatic alcohol containing from 4 to 8 cartoon atoms, wherein the molal ratio of formaldehyde to melamine is at least about 4:1 and wherein the ratio of ethyl cellulose to melamine resin is at least about 3:1.

“This claim,” as correctly observed by the Solicitor for the Patent Office, “is in general similar to the subject matter involved in Appeal No. 5175. The cellulosic material in this case is ethyl cellulose; in the other case it was cellulose acetate. The melamine-formaldehyde resin constituents and proportions are the same. The ratio of cellulose material to resin in this case is at least 3 to 1, while in the other case it is at least 9 to 1.”

Claim 2 is distinguished from claim 1 by the recital of n-butyl as the alcohol employed and the molal ratio of formaldehyde to melamine here defined is at least about 5 to 1. Claim 5 differs from claim 1 by specifying that the molal ratio of formaldehyde to melamine is between about 4:1 and about 6:1. •

Bulletin No. 2, published by Dow Chemical Company describes the compatibility of numerous synthetic resins and “Ethocel,” which, according to the examiner, is ethyl cellulose; together with the properties of “Ethocel” films containing 20% of the synthetic resin. The “Ethocel Handbook” shows the use of many more resins with “Ethocel” and a table of comparison of resin compatibility of “Ethocel” types.

Widmer et al. and Moore disclose the use of melamine-formaldehyde resins in the claimed range of proportions of at least 4 to 1 which resins are reacted with an alcohol of the character claimed and mixed with cellulose nitrate.

On the issue of criticality, appellants present in their brief a' certain chart showing the comparative use and ratios of the involved compositions and have made certain statements concerning the tabulated ratios for the purpose of showing that the claimed range of proportions is in fact critical.

The data on the point in question cannot be accepted in support of appellant’s position, however, as they were obliged to establish criticality by a proper showing before the tribunals of the Patent Office, as pointed out in the decision of the court in the companion appeal, No. 7175. See also In re Berger, 31 C. C. P. A. (Patents) 1234, 143 F. (2d) 971, 62 USPQ 299.

Since the range of proportions claimed by appellants was not shown to be critical, claims 1, 2, and 5 were rejected by the examiner as un-patentable over the teachings either of Widmer et al. or the patent to Moore in view of the disclosures of the cited publications by the Dow Chemical Company. Claim 2, it was noted, recites n-butyl, the alcohol described and used by both Moore and Widmer et al.

Briefly, it was the position of the examiner as well as the board that what appellants had done was the thing that the art of record suggested doing; that it was “noninventive to try ethyl cellulose in either the Widmer et al. or the Moore composition in place of nitrocellulose ethers or esters of the latter”; and that “the selection of proportions between the two principal resinous constituents is no more than expected skill of those working in the art within disclosure of the references.”

The real question in issue here, as pointed out by appellants, “is whether invention was involved in determining by experimentation which melamine resins and the proportions thereof which would be compatible with ethyl cellulose.” That issue has been discussed in the companion appeal, No. 7175, and decided adversely to appellants’ contention.

For the reasons stated, the decision of the Board of Appeals.is affirmed as to claims 1,2, and 5 as well as to claims 3 and 4; no reason of appeal having been assigned as to the grounds of rejection of claims 3 and 4, and no generic claim having been allowed.  