APPLICATION OF DE JARLAIS

JOHNSON, Judge.

This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming the holding of the Primary Examiner rejecting as unpatentable to appellant claims 6, 10, 11, 15, 16, and 20 of appellant's application for a reissue patent relating to "Motor Cooling Systems." Claims 1 to 5, and 24 to 27 were allowed.

The claims on appeal relate to a reissue application, filed October 30, 1952, of Patent No. 2,459,311, issued January 18, 1949.

The examiner rejected the claims for various reasons. The first reason was that all of the claims were broadened claims in a reissue application which was filed more than two years after the patent was issued, and that these broadened claims could therefore not be obtained by appellant because of the statutory bar set forth in 35 U.S.C. § 251. The second reason for rejecting all of the claims was that they were not warranted by the original disclosure. The third reason was that claims 10, 15, and 20 were unpatentable over the "Rataiczak patent taken with Dennedy". The Board of Appeals affirmed the decision of the examiner on all of the foregoing grounds.

We believe that an orderly analysis of the present case requires us to first determine whether the board and examiner were correct in holding that the claims on appeal were not warranted by the original disclosure. In order to answer this question we must analyze the disclosure of the patent to see whether it supports the claims now on appeal.

Appellant's patent relates to a refrigeration system having a provision therein for cooling the motor. In the system, a motor is mechanically coupled to a compressor for driving the latter. Refrigerant is fed from an evaporator to the compressor where it is compressed. Because of the compression the refrigerant is heated. Lubricating oil which is in the compressor is mixed with the refrigerant as an incidental result of the compressing step. The refrigerant-oil mixture is passed to a preliminary condenser where it is cooled, and it is then fed into the motor where the oil and refrigerant are separated. The oil drops to a sump at the base of the motor. The refrigerant evaporates on contact with the hot motor parts, and thus cools the motor by absorbing heat from it. The oil which drops to a sump at the base of the motor is fed back to the compressor, as discussed hereafter. A conduit leads the refrigerant back to a main condenser for condensing it. After the refrigerant is condensed, it is passed to the evaporator where evaporation occurs thus producing desired refrigeration. The foregoing described cycle is then repeated.

Claim 6 is representative of those appealed, and reads as follows:

It is to be noted at this point, as a matter of interest, that claims 6, 11, and 16 are exact copies of claims 2, 3, and 4, respectively, of Hubacker et al. patent No. 2,597,243, issued May 20, 1952, and that claims 10, 15, and 20 are based on said claims with limitations omitted. The claims were copied from the Hubacker et al. patent for the purpose of having an interference.

As noted above, the Board of Appeals affirmed the holding of the examiner that the claims now on appeal were not warranted by appellant's disclosures. In this respect, the board stated:

It is to be noted at this point that in the original DeJarlais patent specification, as filed, it was stated: "The present invention relates to an improved system over that covered by the United States patent to James H. Dennedy No. 1,960,576, issued May 29, 1934, on a refrigeration system". During the course of prosecution of the DeJarlais patent, the examiner questioned how the oil circulation system operated. In response to this query an additional paragraph was inserted into the then pending DeJarlais application. This added paragraph and the interpretation given thereto by the examiner relative to the present case is set forth in the following portion of the examiner's rejection of the claims:

It is well settled that a reissue application must be limited to the same invention set forth in the original patent, U. S. Industrial Chemicals Co. v. Carbide & Carbon Chemicals Corp., 1942, 315 U.S. 668, 62 S.Ct. 839, 86 L.Ed. 1105, and new matter may not be introduced, In re Cogswell, 48 F.2d 402, 18 C.C.P.A., Patents, 1136; Giant Powder Co. v. California Powder Works, 1878, 98 U.S. 126, 138, 25 L.Ed. 77. Also see 35 U.S.C. § 251. It is also well settled that the same invention means whatever invention was described in the original patent, and which appears to have been intended to be secured thereby. See U. S. Industrial Chemicals Co. v. Carbide & Carbon Chemicals Corp., supra, 315 U.S. at page 676, 62 S.Ct. 839, and cases cited therein.

We will now proceed to analyze claim 6 in the light of the original patent specification, the Dennedy patent, and appellant's arguments to determine whether the reissue claims are warranted by the original disclosure, or, in other words, whether they are for the same invention. Particular attention will be focused on the italicized portions of the claim because these portions are in issue. It is to be noted that claim 6 calls for a "compressor motor unit within a single casing." The drawings of the originally issued patent show a motor positioned above and in contact with a compressor. In the specification, it is stated:

The foregoing portions of the original DeJarlais specification when viewed in the light of the drawings indicate to us that the motor and compressor have separate housings rather than a single casing as recited in the claim. It is to be noted that the examiner made the following uncontroverted statement in his answer to appellant's brief before the Board of Appeals:

The Rataiczak patent shows a motor and compressor in a single housing. It would therefore seem that appellant has in the past made an argument which is inconsistent with his present argument that his original specification disclosed a single casing. Appellant now makes the following argument before us relative to how the "single casing" is supported by the specification:

We are of the opinion that the "DeJarlais disclosure, drawing, and description" do not clearly show a single casing, as urged by appellant. The DeJarlais disclosure, in our opinion, shows separate housings for the motor and compressor, which do not constitute a single casing. We therefore conclude that the "single casing" recited in claim 6 is not warranted by or disclosed in the disclosure of the DeJarlais patent.

The above noted contradictory arguments made by appellant during the prosecution of the original DeJarlais application and the reissue application focus attention on a question which has not been discussed in the briefs, but which we feel it is necessary to discuss. This question is: What is the effect of a deliberate amendment of claims to secure their allowance when this subject matter is attempted to be withdrawn from the claims by a reissue application? In this respect it appears from the record that the claims in the DeJarlais patent were modified to recite "a motor compressor assembly comprising a motor having a separate housing and a compressor having a separte housing." This is substantiated by the following statement of the Board of Appeals, which in the absence of any showing to the contrary, must be accepted as accurate. In re Gardner, 99 F.2d 767, 26 C.C.P.A., Patents, 701; In re Pirani, 75 F.2d 223, 22 C.C.P.A., Patents, 1002:

It is to be noted that the arguments in the original application were apparently accompanied by an amendment of the claims to secure their allowance.

In our recent case of In re Byers, 230 F.2d 451, 454, 43 C.C.P.A., Patents, ____, we discussed the portion of 35 U.S.C. § 251 relating to reissues which states:

It is then stated in the Byers case, supra:

The Byers case, supra, then states, "It is well settled that the deliberate withdrawal or amendment of a claim in order to obtain a patent does not involve inadvertence, accident or mistake and is not an error of the kind which will justify a reissue of the patent including the matter withdrawn." Numerous authorities are cited in In re Byers, supra.

Therefore, in addition to our opinion that the original DeJarlais disclosure does not clearly show the single casing which is now attempted to be claimed, we are of the opinion that appellant's deliberate amendment of the claims to secure their allowance will prevent him from now claiming the canceled subject matter because such a previous deliberate amendment precludes the existence of "error" or "accident, inadvertence or mistake" which is the basis for obtaining reissue claims.

Claim 6 also recites "a straight vertical channel medium from the compression chamber to said reservoir." As noted above, the Board of Appeals held that this structure was not properly supported by appellant's disclosure. Appellant argues that this recited structure "is the `suitable conduit' of DeJarlais, column 4, lines 10-14 where it is stated: `a suitable conduit (not shown) is provided for conducting oil from the oil sump at the base of the motor housing back to the compressor inlet'". However, the foregoing quoted portion of the DeJarlais patent refers to the oil return structure of the Dennedy patent. Therefore, it must be determined whether the "suitable conduit" of Dennedy is a "vertical channel medium from the compression chamber to the reservoir." In Dennedy, oil in the motor passes to a conduit which leads from the motor to a reservoir. In the reservoir, it is mixed with refrigerant and passes to an expansion coil, from which it returns to the compressor. We do not consider the foregoing Dennedy structure, which was incorporated into the DeJarlais patent by reference, to be a "straight vertical channel medium from the compression chamber to said reservoir." We therefore are of the opinion that this recitation in claim 6 is not disclosed by the original DeJarlais disclosure.

The Board of Appeals was of the opinion that the structure recited in the phrase "preliminary refrigerant cooling coil arranged exteriorly of the casing separate and removed from said main condenser" was not supported by the disclosure. The drawing shows a preliminary cooling coil, as recited in the claim, which forms an independent circuit to the condenser between the compressor and the motor. This preliminary cooling coil, as shown in the patent drawing, utilizes a portion of the main condenser, the remainder of the condenser being used for cooling refrigerant which is conducted from the motor to the evaporator. We are of the opinion that when the structure recited in the above-quoted portion of the claim is viewed in the light of the disclosure, it is supported by the disclosure in the sense that the preliminary cooling coil functions completely independent of the main refrigerant cooling coil.

In claim 6, there is also a phrase which states "effecting a forced lubrication of said compressor through said reservoir and channel medium" which the board held to be unwarranted by the disclosure. There is no recitation in the original DeJarlais or Dennedy disclosures of forced lubrication. However, appellant argues that this feature is inherent in the DeJarlais disclosure, and states in his brief:

The foregoing quoted statement bears some examination. In the DeJarlais patent, as originally filed, there was no conduit shown leading from the sump in the motor housing to the compressor. Appellant then added the above-noted statement to the patent specification that a suitable conduit was shown in the Dennedy patent. However, the conduit in the Dennedy patent leads from the motor to a reservoir then to an expansion coil, and then to the compressor. It may well be that forced lubrication can occur. Yet the fact remains that forced lubrication was not discussed in the original DeJarlais disclosure, and it may be that it only occurs under certain but not all conditions. In short, we are not convinced that forced lubrication will inherently occur. It is well settled that where the certain function does not necessarily occur in the operation of the disclosed device, it has not been shown to be inherent. Keeling v. Held, 118 F.2d 571, 28 C.C.P.A., Patents, 1008. That the claimed invention is inherent cannot be established by probabilities or possibilities. Hansgirg v. Kemmer, 102 F.2d 212, 26 C.C.P.A., Patents, 937. We are of the opinion that since it is speculative whether the desired function of forced lubrication will occur, it cannot be said that it is inherent.

For the foregoing reasons, we are of the opinion that the examiner and the board were correct in holding that certain of the above discussed portions of claim 6 were not supported by the disclosure, and are therefore not for the same invention disclosed in the original patent. The remaining claims on appeal each recite certain of the above discussed elements of the structure which we have found not to be supported by the disclosure, and we are of the opinion that they are unpatentable to appellant for the same reasons given above.

It is again noted that both the examiner and the board held the above claims unpatentable for other reasons in addition to being unsupported by the disclosure of the original patent. However, since we have determined that the claims were properly rejected on the ground of lack of disclosure in the original patent, it is, in our opinion, unnecessary to consider the other rejections of the claims. In re Miller, 159 F.2d 756, 34 C.C.P.A., Patents, 910; In re Rose, 220 F.2d 459, 42 C.C.P.A., Patents, 817.

For the foregoing reasons, the decision appealed from is affirmed.

Affirmed.

JACKSON, J., retired, recalled to participate.

O'CONNELL, J., was present at the argument of this case, but, by reason of illness, did not participate in the decision.