This appeal is from the decision of the United States Patent and Trademark Office (PTO) Board of Appeals (board) sustaining the examiner's rejection of claim 1 in application serial No. 452,050, filed March 18, 1974, entitled "Sub-Critical Time Modulated Control Mechanism," under 35 U.S.C. § 102 as anticipated by appellant Oelrich's U.S. patent No. 3,430,536 for "Time Modulated Pneumatically Actuated Control Mechanism," issued March 4, 1969. We reverse.
This application was the subject of In re Oelrich, 579 F.2d 86, 198 USPQ 210 (CCPA 1978), in which a rejection of claims 1-5 under 35 U.S.C. § 103 was reversed. Appellant's method claims 2-5 now stand allowed.
The invention of claim 1 is directed to an apparatus specially adapted for moving low inertia steering fins on guided missiles. The prior art apparatus and the theory upon which it operates are fully discussed in our above prior opinion and will, therefore, not be repeated here. Generally, the claimed device responds to an electric signal from a missile guidance system, the magnitude of which is proportional to the desired amount of course-correcting fin movement, and converts the signal into a pneumatic pressure of appropriate magnitude which acts on a piston to move the missile guiding fin. The device which is the subject of the Oelrich patent "was employed only with the then available steering fins which they characterize as `high inertia' loads."
Claim 1 reads (emphasis ours):
In sustaining the examiner's rejection under § 102, the board expressed agreement with his reasoning, which is here summarized. Stating that "the issue is identical to that decided in In re Ludtke, 58 CCPA 1159, 441 F.2d 660, 169 USPQ 563 (1971)," the examiner noted that, for purposes of determining inherency, "the question is, does Oelrich [the reference patent] disclose a signal generator that necessarily must supply the carrier frequencies that appellants use?" The examiner turned to Exhibit A of coapplicant Divigard's affidavit, which states as an assumption in a "Linearized Simulation" of a "high inertia" load system that the critical resonance frequency must be kept below 80 Hz to avoid interaction with the carrier frequency which is between 100 and 150 Hz. Thus, the examiner concluded, "Exhibit A establishes Oelrich's carrier frequency range, which may now be compared with the carrier frequency range of applicants' low-inertia system." It was then asserted that the Oelrich and Kolk affidavits establish that good low inertia system design practice dictates a carrier frequency range of 95-190 Hz. Since the carrier frequency range for the high inertia system lies within the range for the low inertia system, and since the critical frequency of the low inertia system is near the solenoid limit of 175 Hz, the examiner posited that the Oelrich carrier frequencies would be sub-critical in the low inertia system, saying, "Thus Oelrich's signal generator does in fact inherently produce frequencies which would be sub-critical when used with a low-inertia system, and therefore, inherently supplies a carrier frequency range which is usable in applicants' system since this conclusion was deduced from specific data presented in the patent and in the affidavits supplied by appellants." The appellants also asserted our prior decision was res judicata.
Although appellants' arguments on appeal are directed primarily to a discussion of res judicata
The distinguishing feature of claim 1 is defined in the paragraph which states that the apparatus contains a
Given that the carrier frequency which can be used in a low inertia system may fall within the range of carrier frequencies usable in a high inertia system (appellants admit as much), the PTO urges that the apparatus of the Oelrich patent inherently performs the function of the apparatus of claim 1, and that finding a new use for an old device does not entitle one to an apparatus claim for that device, citing In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). Appellants in that case argued, however, that a structure suggested
Appellants here countered the PTO inherency contention at oral argument (no reply brief was filed) by urging that there is no "inherency" because there is no "inevitability," that is, the previously quoted "means plus function" limitation of claim 1 is not inherently (always) present in the device of the Oelrich patent.
It is true that mere recitation of a newly discovered function or property, inherently possessed by things in the prior art, does not distinguish a claim drawn to those things from the prior art. In re Swinehart, 58 CCPA 1027, 1031, 439 F.2d 210, 212-13, 169 USPQ 226, 229 (1971). In this case, however, claim 1 does not merely recite a newly discovered function of an old device. In re Chandler, 45 CCPA 911, 254 F.2d 396, 117 USPQ 361 (1958), a case not cited by either party to this appeal, is most pertinent to the instant controversy.
The claim in Chandler, id. at 912-13, 254 F.2d at 397, 117 USPQ at 361-62, drawn to an automatic control for a jet engine, included a "means responsive to said movement for regulating the propulsive power of said engine, in accordance with said movement, so that said aircraft is propelled at a definite, selected speed, corresponding to the position of said engine relative to said aircraft, throughout the speed range of said aircraft." (Emphasis added.) In refuting the examiner's argument that the words beginning with "so that" were merely functional, and thus did not distinguish the device from that claimed in a patent to Goddard, this court stated:
Likewise, the words after "means for generating a * * * carrier frequency" in the claim on appeal constitute a limiting definition of the means. The PTO does not contend that this limitation, a carrier frequency which is "less than the minimum system resonant frequency," is expressly disclosed in the Oelrich patent. Neither, however, is this limitation inherent therein. In Hansgirg v. Kemmer, 26 CCPA 937, 940, 102 F.2d 212, 214, 40 USPQ 665, 667 (1939), the court said:
The relationship between the carrier frequency and the system critical frequency — the former below the latter (and expressly made a claim limitation by use of "means plus function" language) — cannot be said to be "the natural result flowing from the operation as taught." The Oelrich patent instructs that the device is "adapted to receive a carrier frequency substantially in
The decision of the board is reversed.