CITE:  174 F.2d 938
CMON:  April 1949
PLAIN: In re Benner and McMullen
DEFND: United States Patent and Trademark Office
COURT: Court of Customs and Patent Appeals
DATE:  Decided Apr. 12, 1949


Appeal from Board of Appeals of the Patent Offie.  Application for patent
of Raymond C. Benner and John Charles McMullen, Serial No. 456,576;
Patent Office Division 38. From decision rejecting claims 17 to 24 and
26 to 35, applicants appeal. Affirmed.

Rehearing denied June 24, 1949

  Patentable slight alteration must be more than mechanical/professional

JUDGE: GARRETT, Chief Judge.

This is an appeal from the decision of the Board of Appeals of the United
States Patent Office affirming the rejection, by an examiner in Division
38, of seventeen claims numbered 17 to 24, inclusive, and 26 to 34,
inclusive, in appellants' application for patent bearing the broad title
"For Ball Mill".  In the Patent Office it was a "Dual Prosecution" case of
which Division 25 had general jurisdiction. With respect to claims numbered
35 to 40, inclusive, the jurisdiction of the latter named division was
specific and those claims also were rejected by an examiner in that
division, but his decision was reversed by the board. So, those claims stand 
allowed along with claim 25, which was allowed by the examiner in Division 38.

It appears that during a long period of time ball mills have been used for
breaking down, or pulverizing to powdered form, hard granular materials;
that the mill comprises a container, usually cylindrical in form, having a
wear-resisting lining; that the container is mounted for rotating, being
partially filled, when in use, with pebbles or balls and the material which
is to be broken down or pulverized; and that, when the container is rotated,
the contents tumble about on the inside in a manner which results in the
material being ground between the balls and the lining of the container.

When the material which is being ground is very hard, the friction wears
the lining of the container severely. The specification of the here
involved application states that porcelain linings have been conventionally
used, and that appellants, as expressed intheir brief, "discovered that, 
by replacing the porcelain [sic] linings presently used in ball mills with
cast linings composed predominantly of crystallized alumina embedded into
a glassy matrix, the life of the lining is increased many times."

The specification additionally asserts:

    * * * With the procelain lining elements of ordinary thickness a
    grinding life of 500 hours when the mill is wet grinding alumina
    powder is considered good. The material of the present invention,
    however, when used as ball mill linings wears as a rate less than
    one seventh as fast as porcelain when grinding the same material.
    In addition its cost of manufacture is not high, and being free
    from voids, it retains its usefulness even when worn down a
    material amount of its initial thickness.

Ball mill linings of the present invention consist of extremely hard solid
cast masses of crystalline alumina containing a minor percentage of glass.
Since the lining material is fused and cast, as distinguished from being
bonded and sintered, it is highly resistant to chipping. Its surfaces are
dense, unyielding, and impermeable, thus providing an ideal surface for
the grinding pebbles to work against the one easxy to clean when changing
the mill from a batch of material of one type to that of another type.
Because the lining consists predominantly of alumina, it is particularly
suitable for grinding alumina since the material worn off the lining does
not differ materially from the alumina being ground.

As a matter of fact the board found that appellants:

    * * * have established that the life of their ball mill linings if
    8,000 hours of operating life when used in the pulverizing of such
    hard materials as fused alumina under standard operating conditions
    as compared to an average life of 600 hours of the high grade
    porcelain linings previously used for this type of grinding operation.

The claims of the group numbered 35 to 40, inclusive, which stand allowed,
are for a ball mill the container of which is lined with appellants' lining
element. It was the view of the Board of Appeals, contrary to that of the
examiner, that the combination of the container and the lining element
presents subject matter patentable over any prior art. As has been stated,
claim 25 (which is for the lining element standing alone -- that is, not
combined with the container -- but which differes widely from the appealed
claims in the proportion of the ingredients entering into its structure)
was allowed by the examiner and was not before the board. All the appealed
claims are for the ining element standing alone and as to them the board
agreed with the examiner's grounds of rejection; that is, upon prior art,
hereinafter listed, the decision in the case of In re Thuau, 30 C.C.P.A.
(Patents) 979, 135 F.2d 344, being cited.

As originally filed the application appears to have presented only 14
claims numbered 1 to 14, inclusive. After claim 14 had been rejected once,
it was cancelled and 15 and 16 submitted. Subsequently, amendments were
entered supplanting the original claims together with 15 and 16, so that,
as prosecuted before the respective examiners, the application embraced
25 claims. As has been stated, the examiner in Division 38 allowed one
of those, which related to the lining element per se but differed materially
from those on appeal here, and the board allowed seven others, all of which
were characterized by the combination of container and lining element. So, 
seventeen claims were rejected and are before us. No separate analysis of
them is required; that is, as the issues are presented to us, no one of
the appealed claims is alleged to have any limitation which distinguishes
it patentably from the others.

Claims 18, 22, 29, and 32 (the latter the broadest of all the claims) will
serve to illustrate the subject matter:

    18. A ball mill lining element, said element being composed of a dense,
    hard, wear-resistant fused casting resulting from solidification of a
    mixture of from 85 to 98% of aluminous material composed predominantly
    of alumina and from 2 to 15% glass, said casting comprising A1203, as
    such in amounts from approximately 54 to 98%, said alumina being in
    the form of elongated crystals with the majority of the crystals 
    having their major axes oriented perpendicular to the wearing surface
    of the element.

    22. A ball mill lining element comprising a dense, hard, wear-resistant
    fused casting, said casting comprising SiO2 from 7.97 to 20.55%, CaO
    from 0.10 to 1.65%, Na20 from 0.18 to 3.00%, TiO2 from 2.94 to 3.40%,
    Fe2O3 from 5.88 to 13.60%, and other metal oxides from 0.2 to 1.28%,
    said last named metals consisting predominantly of Mg, Mn, and Ba, the
    balance of the composition being alumina.

    29. A ball mill lining element composed of a dense, hard, wear-resistant,
    fused casting substantially free from voids and cracks, said casting
    comprising crystalline A12O3, as such in amounts from approximately
    54% to 98%, and a glassy matrix.

    32. A ball mill lining element composed of a dense, hard, wear-resistant,
    fused casting substantially free from voids and cracks, said casting
    comprising 85% to 98% crystalline alumina, as such, and 2 to 15% glass.

The references cited as prior art in connection with the rejected claims
are listed in the decision of the board as follows:

    Saunders, 954,766, Apr. 12, 1910,
    Allen, 1,199,042, Sep. 26, 1916,
    Schroeder, 2,044,814, June 23, 1936,
    Benner, et al., 2,079,101, May 4, 1937,
    Easter, et al., 2,154,153, Apr. 11, 1939,
    Logan, et al., 2,196, 075, Apr. 2, 1940
    Searle: Refractory Materials (2nd Ed.) 1924, page 174.

Of the prior art cited the board regarded as "most pertinent" the patents
to Schroeder (No. 2,044,817), Logan & McMullen (No. 2,196,075), Benner &
Easter (No. 2,079,101), and Easter & Brownell (No. 2,154,153). It is noted
that McMullen, one of the joint claimants in the instant application, was a
joint inventor with Logan of patent 2,196,075; that Benner, the other 
joint claimant here, was the joint inventor with Easter of patent 2,079,101;
and that Easter is also one of the joint inventors of patent 2,154,153.
It also is noted that the patents to Logan & McMullen, Benner & Easter,
and Easter & Brownell are assigned to The Carborundum Company which, at
the hearing before us, was stated to be the assignee of the here involved
application, the individual inventors, McMullen, Benner, and Easter,
evidently being associated with the company in some capacity. It is obvious
that the individuals and the company have had considerable experience
relative to the compositions of matter of the nature of that here involved, 
and in the brief before us, while it is asserted that "No one of the
references, as to composition is co-extensive in teachings with the present
invention", it is conceded that "some of the compositions therein disclosed
are  embraced by the range of alumina compositions defined in certain
of the claims". (Italics ours)

In the case of In re Cooper et al., 30 C.C.P.A. 946, 134 F.2d 630, we said:
    * * * if the prior art shows a range, as appellants apparently admit
    it does in this case, which includes the arrange claimed in their
    application, in the absence of the production of a different product
    they are not entitled to a patent.

However, there are other factors to be considered in the instant case.  In
the course of its decision the board, referring to the particular references
which it deemed most pertinent, made the following findings of fact:

    * * * These references show that refractory blocks very similar in
    composition to the refractory composition used by the appellants have
    been cast into blocks and used as lining elements for glass furnaces
    and glass tanks. That the composition of the lining elements is fairly 
    anticipated in these references is apparently not disputed, nor is it
    disputed that it is old to cast these compositions into blocks which
    are used for lining glass furnaces.

Obviously it was the view of the tribunals of the Patent Office that the
introductory phrase, "A ball mill lining element," with which each of the
appealed claims begins, is not a limitation entering into the structure of
the composition of which the lining element is composed, but that it 
merely indicates the use to which the well defined composition is to be
applied. So, because the decision in the Thuau case, supra, (in which we
affirmed the decision of the board affirming that of the examiner) held,
as the board construed our meaning, "that limitations with reference to the 
intended use of a composition are without patentable significance," and
because nothing which was deemed to be new over the prior art was found
in the claims, so far as the composition of the lining element standing
alone is concerned, the claims were rejected.

In the course of the brief filed before us on behalf of appellants it is said:

    Appellants are not claiming a composition of matter per se, nor are
    they claiming merely a new use of an old composition. The present
    invention relates to ball mill linings and all the appealed claims
    are addressed and properly restricted to a ball mill lining element
    which is defined in the claims in terms of its chemical composition
    and also in terms of its phyiscal characteristics and properties.
    The Examiner has refused to give due and proper consideration to 
    the fact that the claims specify that the article is "A ball mill
    lining element * * *", which phrase reads into the claims with all
    the definiteness at appellants' command that the article is not only 
    made of the required composition and physical characteristics, but
    is of such size and shape as to be adapted for lining ball mills.
    The claims are therefore addressed to a new article of 
    manufacture and not to a composition of matter.

Elsewhere the brief suggests that rejection of the claims requires an
extension of the doctrine followed in the decision of the Thuau case,
supra, and it is contended that:

    *** Subsequent decisions conclusively show that that decision must be
    limited in its application and, at most, is to be taken solely as
    authority that a new use of an old composition is unpatentable only
    where both the form of that composition is immaterial to the developed
    use and there is completely lacking any change, modification or
    adaptation of the old composition over the prior art in applying the
    material to its new use. It has been held that a change, modification,
    or adaptation, be it ever so slight, imparts patentability.

It is asserted in substance that appellants have discovered and developed
a new, unobvious and unexpected use for the material which they, in part
at least, invented (such as they did not themselves invent being in the
prior art as the invention of others); that such newly discovered use is
nonanalogous to any previously known use; that the new use is accompanied 
by surprising and unexpected results; that modification of the material as
to shape has been required in order to adapt it to the new use discovered;
that "something new has been produced, namely, a fused, cast ball mill
lining element composed of crystalline alumina in a glass matrix", and
that they are entitled to patent protection.

The brief says further:

    The difference between the present situation and that before this
    Court in the Thuau case is that Thuau was merely claiming a new use
    for an old condensation product whereas appellants claims are directed
    to an article of manufacture which is new.

We are unable to agree that it was error to hold (as, in effect, was held
by the tribunals of the Patent Office) that the introductory phrase,
"A ball mill lining element", does not constitute a part of the subject
matter of the appealed claims to be considered as a limitation in 
determining the question of patentability. The phrase comprises the name
of a product and is introductory. It does not contribute to the definition
of any composition or any part of any composition. Whatever of limitation
there may be about it is a limitation as to its use, and unfortunately or
fortunately -- we do not undertake to determine which -- no provision has
been made in the patent statutes for granting a patent upon an old product
based solely upon discovery of a new use for such product. So, the matter
of nonanalogous use alleged is not important in this case.

The holding in the Thuau case, supra, to the effect that limitations with
reference to the intended use of a composition are without particular
significance was not a new doctrine, nor was it new to hold, as was there
held in effect, that the introductory phrase of a claim, where it imparts
nothing to the substance of the claimed invention, is not a limitation to
be considered on the question of patentability. See, with their several
citations, Braren v. Horner, 18 C.C.P.A. 971, 47 F.2d 358; In re Dawe,
19 C.C.P.A. 1056, 56 F.2d 871; In re Wolfe, 21 C.C.P.A. 974, 69 F.2d 550;
In re Beplate et al., 22 C.C.P.A. 1322, 77 F.2d 930; In re Mason,
25 C.C.P.A. 873, 94 F.2d 220; In re Dense, 33 C.C.P.A. 1171, 156 F.2d 76;

The contention before us, hereinbefore quoted, that the decision in the
Thuau case, supra, must be limited in its application and at most is to
be taken solely as an authority that a new use of an old composition is
unpatentable only where both the form of that composition is immaterial,
etc., was presented before the board in the exact phraseology in which it
is presented here, and we here quote from the board's answer the following:

    Assuming that these limitations upon the Thuau doctrine are valid,
    the patentability of the claims under consideration depends on whether
    or not they define a modification or adaptation of the old composition
    in applying it to its new use. A careful review of these claims fails
    to reveal a clear definition of any substantial modification in the
    elements claimed over the prior art. As pointed out above, the patents
    of record show that it is old to cast compositions of the type 
    defined in tehse claims in the form of blocks which are used for
    lining glass furnaces. We are unable to find any limitations in the
    claims which clearly differentiate the ball mill lining elements 
    [sic] defined therein, which is in the form of a cast block, from the
    cast block of the prior art. (Italics ours)

This court has not failed to recognize that the appellants have apparently
made a valuable contribution to the ball mill art, and we have examined the
numerous claims carefully looking for phraseology which would furnish
grounds for a patent grant, but have looked in vain.

The brief asserts, as quoted, supra, that where a new use for an old
product was found "It has been held that a change, modification, or
adaptation [of the old product], however slight, imparts patentability."
No case has been cited in which such a holding appears, and we think the
statement is too broad to be accepted as sound law. Surely in order to
"impart patentability" the change or modification or adaptation must
involve invention.

Invention might be present in a very slight alteration, of course, but
such alteration must amount to something more than mechanical or
professional skill. So far as "adaptation" is concerned, if the word is
used as a synonym for "use," it would not impart patentability because 
of the lack of statutory authority for the grant of a patent based solely
on use.

The condition confronting appellants here is that the appealed claims --
the factors to which we must look -- do not define any change or
modification of the prior art structure. As has been stated hereinbefore,
appellants' brief asserts that use of the composition as a lining element 
for a ball mill has required a "modification as to shape." That may be true.
The specification discusses the size of the blocks used in the glass
furnaces, but the claims have no limitation relationg to "shape".  Several
of the claims contain a clause similar to that concluding claim 18, supra,
reading, "said alumina being in the form of elongated crystals with the
majority of the crystals having their major axes oriented perpendicular
to the wearing surface of the element."   We do not understand that the
clause relates to the over-all shape of the lining element, but if it 
does, it is sufficient to say that the limitation is taught in the Benner
et al. patent, No. 2,079,101.

At another place in the brief for appellants it is said that "something
new has been produced, namely, a fused, cast ball mill lining element
composed of crystalline alumina in a glassy matrix," and claim 29, supra,
requires "a glassy matrix." The specification of the Benner et al. patent,
No. 2,079,101, teaches the presence of a glassy matrix and the patent to
Easter et al., No. 2,154,153, no only teaches the presence of a matrix,
which obviously is glassy, but several of the claims require it.

Recurring to the suggestion of the effect that rejection of the appealed
claims requires an extension of the doctrine of the Thuau case, supra, it
seems to us obvious that there was no extension of the doctrine of that
case by the tribunals of the Patent Office in rejecting the claims here
appealed and we think it clear that their decision in rejecting them must
be approved. They followed the rule in that case just as that case itself
followed the principle of numerous prior decisions cited therein and others
cited herein relative to (a) the construction of the introductory phrases
of claims and (b) the non-patentability of old products upon the basis of
a new use of them. Those are the only questions here involved.

It is true, of course, that cases arise in which the introductory phrase
is so used that it is not limited to indicating use but contributes an
element to the claim, and in such cases the phrase necessarily is treated
as a limitation upon the subject matter of the claim. See Hall v. Shimadzu,
19 C.C.P.A. 1288, 59 F.2d 225; Lawson v. Davis, 29 C.C.P.A. 1217, 129 F.2d
873. The instant case does not fall within that category.

The brief for appellants cites a number of decisions of the Board of Appeals
of the Patent Office which are claimed to be consistent with the decision
in the Thuau case, supra, and consistent with the position for which
appellants contend. Most, if not all, of those decisions apparently were
rendered prior to our decision in the Thuau case, supra. We deem it 
unnecessary to analyze those decisions. We are of opinion that the board
correctly followed the Thuau case, supra, in so far as it involved the
issues here presented, and any decisions inconsistent therewith would, in
our opinion, be erroneous. No court decision contrary to the decision in
that case has been brought to our attention. Upon the contrary, the United
States Circuit Court of Appeals, Second Circuit, in an opinion authorized
by Judge Learned Hand, justly esteemed as a high authority on patent law,
in the case of Old Town Ribbon and Carbon Co., Inc. v. Columbia Ribbon
and Carbon Manufacturing Co., Inc., et al., 159 F.2d 379, said:

    The Constitution (Art. I, Sect. 8) gives Congress power to grant limited
    monopolies for "discoveries", and there is no antecedent reason for
    saying that Congress might not, if it chose, issue patent for a new
    use of an old physical object, which is in fact closely akin to, if
    not identical with, an "art", like a process. There would be nothing
    unreasonable in so doing; substantially no "machine, manufacture, or
    composition of matter" is ever new throughout; usually it is a 
    combination of elements, all of which are severally old and the
    invention consists in the mental act of fabricating the combination.
    Nevertheless, since 1793, unless a patent disclosed a "new and useful
    art", a new "machine", a new "manufacture", or a new "composition of
    matter", it has not been a valid patent. If it be merely for a new
    employment of some "machine, manufacture, or composition of matter"
    already known, it makes not the slightest different how beneficial
    to the public the new function may be, how long a search it may end,
    how many may have shared that search, or how high a reach of the
    imaginative ingenuity the solution may have demanded. All the mental
    factors which determine invention may have been present to the
    highest degree, but it will not be patentable because it will not be
    within the terms of the statute. This is the doctrine that a "new use"
    can never be patentable. In this circuit we have many times applied
    it, and it has been recognized elsewhere. As we have said in earlier
    cases, this does not mean that very slight physical changes in a
    "machine", a "manufacture", or a "composition of matter", may not be 
    enough to sustain a patent; the act of selection out of which the new
    structure arises, is the determinant, and small departures may signify
    and embody revolutionary changes in discovery; but the law does not
    protect the act of selection per se, however meritorious, when it is
    not materially incorporated into some new physical object. (Italics ours)

In a footnote this court's decision in the Thuau case, supra, is cited as
being in harmony with the holding of that court.

The brief for appellants suggests that this court recognized a "distinction
between the Thuau case and the present one" in our decision of the case of
In re Haller, 34 C.C.P.A. (Patents) 1003, 161 F.2d 280. The reasoning upon
which the statement is based is not reagrded as sound. We distinguished
there between Haller's case and some other cases which had been cited in
the brief for him by stating that in those other cases it appeared that
"something new had been produced" which was not true of Haller. The trouble
for appellants here is tht they are in the same situation that Haller was
in there. Our decision there was in entire harmony with that in the Thuau
case, supra, and with that of the Circuit Court of Appeals quoted supra.

For reasons stated, we are not convinced that there was error in the
holdings of the tribunals of the Patent Office as to the appealed claims,
and the decision of the board is affirmed.