CITE: 127 F.2d 324
CMON: April 1942
PLAIN: In re Patton
DEFND: United States Patent and Trademark Office
COURT: United States Court of Customs and Patent Appeals
DATE: April 27, 1942
Appeal from Board of Patent Appeals, Serial No. 230,760.
Proceeding in the matter of application for patent by Ross Cummings Patton.
From a decision of the United States Board of Patent Appeals affirming the
decision of the primary examiner rejecting all of the applicant's claims,
A system of transacting business, or an abstract idea or theory, apart
from means of effectuating it, is not patentable.
JUDGE: HATFIELD, Judge
Before GARRETT, Presiding Judge, and BLAND, HATFIELD, LENROOT and JACKSON.
This is an appeal from the decision of the Board of Appeals of the United
States Patent Office affirming the decision of the Primary Examiner
rejecting all of the claims, Nos. 1, 7, 8, 10 and 12, in applicant's
application for a patent for an alleged invention relating to improvements
in fire-fighting apparatus for use especially as mobile fleets of
self-propelled and trailer fire-fighting units in "intracity, intrastate,
interstate, and national, fire protective system against aircraft attack".
Division was required between claim 10 and the other appealed claims.
Appelant elected to prosecute appealed claims 1, 7, 8 and 12, claim 10
being retained in the case, however, for the purpose of challenging the
requirement for division. Claims 1, 7, 8 and 12 were rejected for want
of patentability in view of the prior art cited. Claim 12 was also
rejected for the reason that, as stated by the Primary Examiner, it is
"drawn to cover an aggregation of a fire fighting vehicle and an electric
power supply outlet system".
The appealed claims read:
1. The combination, in a unified mobile, intracity, intrastate,
interstate and national fire protective system against aircraft
attack, but suitable for general use; utilizing a conventional
type self propelled chassis, electric motor driven pressure pump,
combination chemical and service hose lines; also, an electric
cable and reel with suitable end plug, for making connection to
independent or interlocking, intracity, intrastate, interstate
and national, electric power transmission supply lines.
7. The combination, in a fire protective system for national defense,
against aircraft attack; of standardized, detachable, self propelled
units and trailer units; utilizing the principle of mobile batteries
or fleets, and extra trailers, adapted to function as a unit of the
8. In a fire protective system against aircraft attack; the combination,
of a multiple-unit, self propelled and trailer apparatus, mounting an
electric motor driven rotary or centrifugal pump; receiving energy
from an external source or junction boxes of conventional type; from
independent or interlocking power transmission supply lines on the
highway or underground; both the self propelled and trailer apparatus
being equipped with separate and independent power pumps and hose
lines; the trailers being also equipped with power driven winches.
10. In a fire protective system against aircraft attack or other
catastrophe; the combination, an intracity, intrastate, interstate and
national system of conventional type electric outlet or junction boxes,
mounted on conventional type transmission poles, or in combination and
integral with conventional type fire hydrants, for overhead or
underground connection to independent or interlocking power transmission
12. In a comprehensive, national defense, protective fire system against
aircraft attack or other catastrophe; the combination, of independent
cruising or mobile fleets of self propelled and trailer fire fighting
units; strategically and geographically located in stations or barracks,
to admit of rapid shift and concentration upon bombed cities or
establishments; a national system of uniform electric power supply
outlets or junction boxes of conventional design, for delivery of
electric energy of a uniform potential or voltage, to the electric driven
rotary or centrifugal pumps mounted upon the self propelled and trailer
units; a national system of interchangeable fire hose coupling and
electric power connections, to interchange with existing apparatus; a
complete, independent auxiliary fire protection system for the national
defense, with radio equipped units, adapted to function as a unit of
the army in time of war.
The references are:
Cox, 588,399, Aug. 17, 1897;
Whiting, 632,665, Sep. 5, 1899;
Whitlock et al., 670,943, Apr. 2, 1901;
Eisenbise, 846,835, Mar. 12, 1907;
Farrand, 1,081,224, Dec. 9, 1913;
House, 1,357,982, Nov. 9, 1920;
House, 1,427,899, Sep. 5, 1922;
Fletcher, 1,490,373, Apr. 15, 1924;
Rumble, 1,637,090, Jul. 26, 1927.
Claims 1, 7, 8, and 12 were rejected by the Patent Office tribunals on the
patent to Whitlock et al., Eisenbise, and House (No. 1,357,982). The
other references were cited, according to the Primary Examiner's statement
to the Board of Appeals, "for the purpose of showing the line of division
as indicated by office classification between the distinct and separate
inventions claimed in the case", that is, the seperate classification of
the fire extinguishing apparatus defined in claims 1, 7, 8, and 12 on the
one hand, and the electric outlets for an electrical distribution system
(defined in claim 10) on the other.
It appearing from the record that the subject matter of claim 10 is
seperately classified in the Patent Office from that of appealed claims
1, 7, 8, and 12, and as there is no such dependent relationship existing
between the subject matter defined in claim 10 and that defined in the
other appealed claims as to warrant the inclusion of the subject matter
of claim 10 in the same application with the subject matter defined in
the other appealed claims, as held by the tribunals of the Patent Office,
the requirement for division was proper. See In re Ferenci, 83 F.2d 279,
23 C.C.P.A., Patents 1023; In re Shoemaker, 83 F.2d 288, 23 C.C.P.A.,
Patents 1033; In re Burns, 83 F.2d 292, 23 C.C.P.A., Patents 1091; In re
Goerke et al., 83 F.2d 294, 23 C.C.P.A., Patents 1093.
The patent to Whitlock et al. relates to a combined electric fire-engine
and hose-carriage designed to be drawn by horses, and discloses an
electrically driven pump, an electric motor for driving the pump, means
for carrying fire-hose, and a reel upon which an electric cable is wound.
The patent also discloses outlet boxes (into which the electric cable is
designed to be plugged) mounted on poles. The electric current is supplied
by overhead wires. Although the patentee makes no mention of the fact that
his combination is adapted to be used as a trailer, the Board of Appeals,
in its decision, and the Solicitor for the Patent Office, in his brief,
state that the patentee's vehicle is adapted to be so used.
The patent to Eisenbise relates to improvements in "automobile fire
apparatus", and discloses fire-fighting apparatus mounted on an automobile
chassis and an "automobile hose-wagon detachably coupled" to such chassis.
The hose-wagon is designed to carry fire-hose which, according to the
patentee, is "permanently connected to the effluent nozzle of the
engine-hose, the purpose being to deliver both vehicles at their destination
at the same time, and then by uncoupling the hose-wagon from the
engine-vehicle the wagon can proceed to position independently of the
engine and play out the hose as it progresses." The power-driven hose-wagon,
according to the patentee's disclosure, is detachably coupled to the front
end of the power-driven fire-engine.
With reference to that patent, the Primary Examiner stated that it discloses
broadly a self-propelled fire truck having conventional fire-fighting
equipment and detachably connected to the front thereof an auxiliary truck
to carry the fire-hose and additional fire-fighting equipment.
The patent to House (No. 1,357,982) relates to "motor fire engines", and
discloses an automobile truck on which is mounted a chemical tank for
holding chemical fire extinguishing liquid, a mechanically driven water
pump, and other fire-fighting apparatus. The patentee also provides the
necessary connections between the water pump and the chemical tank and
chemical hose for flushing the chemical tank and chemical hose with water.
With reference to such connections, the Primary Examiner stated that the
patentee's pump "is adapted either to pump the chemical fire extinguishing
liquid from the tank * * * onto a fire or to pump water from an
external source to its discharge conduit." The board's interpretation of
that feature of the patentee's disclosure was that provision had been made
for utilizing the pump "for alternatively distributing the chemical fluid
or water from some suitable source of supply".
Claim 1 was rejected by the Primary Examiner on the patent to House (No.
1,357,982) in view of the disclosure in the patent to Whitlock et al.
In his statement to the Board of Appeals, the examiner stated that claim 1
"recites nothing more in structure than a fire truck having a pressure
pump [electrically driven], hose lines, an electric cable with an end plug
and a reel for the cable", and that no invention was involved in
substituting the electrically driven pump and the equipment necessary to
drive it, disclosed in the patent to Whitlock et al., for the mechanically
driven pump disclosed in the patent to House.
Claim 7 was rejected by the Primary Examiner on the ground that it defined
nothing more than a fire truck and detachable trailer units, disclosed in
the patent to Eisenbise, the examiner being of opinion that it was a
matter of choice as to what particular equipment should be carried by the
trailer units. Claims 8 and 12 were rejected by the examiner on the
patents to Whitlock et al. and House (No. 1,357,982) in view of the patent
to Eisenbise. Claim 12 was further rejected by the examiner on the ground
that it is "drawn to cover an aggregation of a fire fighting vehicle and
an electric power supply outlet system". In this connection, the examiner
"It is not seen that the fire truck cooperates with the electric
system so as to form a patentable combination for the reason that
neither of these structures in its normal operation modifies the
operation of the other, but merely acts to perform its normal
* * * * *
"In response to the examiner's rejection of the claims on their
merits the appellant admits that certain of the electrical and
mechanical apparatus which are incorporated in his device is
conventional but contends that he has invented a nationally
operated system of fighting fires, that is, a system of fighting
fires wherein the various parts of the fire fighting equipment
are standardized and interchangeable. It is not believed that
a fire fighting system, per se, is a proper subject matter of a
patent, but that novelty must reside in the particular structure
of the fire fighting apparatus that comprises the fire fighting
system. Furthermore, there is not seen to be any invention in
the assembling of standard and interchangeable parts in the
applicant's device for the reason that in the present system of
mass production most articles of manufacture are made of standard
size and interchangeable to effect economy and convenience."
In its original decision holding that claims 1, 7, 8 and 12 were not
patentable in view of the disclosures in the patents to Whitlock et al.,
Eisenbise and House (No. 1,357,982), the Board of Appeals stated that
those claims were "directed to a composite of apparatus and system which
is in the nature of an aggregation, insofar as mechanism is concerned,
combined with a system of procedure for which the patent laws make no
provision. From an apparatus standpoint, the claims elected [appealed
claims 1, 7, 8, and 12] include some form of transporting means; either
a vehicle provided with power of its own or a trailer, either or both
of which may carry a miscellaneous collection of fire-fighting apparatus.
Neither vehicle is designed to furnish the pumping power required, but
this is to be derived from a system of electrical distribution which may
alternatively involve outlets supplied from an overhead system and
carried by the poles which support the distribution line or outlets
carried by hydrants and supplied with current from an underground system."
In reply to appellant's request for clarification of the statement in its
original decision that the structure called for by the appealed claims
was "combined with a system of procedure for which the patent laws make
no provision", the board stated that in a broad sense appellant's plan
of combating fires, set forth in those claims, was in "the nature of a
plan of doing business and not an 'art' within" section 4886 of the
Revised Statutes, 35 U.S.C.A. Section 31, which provides for the
granting of patents to those who have invented or discovered "any new and
useful art, machine, manufacture, or composition of matter."
Claims 1, 7, 8 and 12 call for fire-fighting apparatus adapted to be used
either locally or throughout the United States.
Appellant contended before the tribunals of the Patent Office and contends
here that the appealed claims are patentable because they provide for a
novel "interstate and national fire-fighting system to combat mass
aircraft, incendiary-explosive bombing attack"; that such a system was
"the essential aim" of appellant's alleged invention; that his system has
been utilized by the United States Government, the city of New York, and
manufacturers unknown to appellant; and that it has practical application.
In this connection it is sufficient to say that a system of transacting
business, apart from the means for carrying out such system, is not within
the purview of section 4886, supra, nor is an abstract idea or theory,
regardless of its importance or the ingenuity with which it was conceived,
apart from the means for carrying such idea or theory into effect,
patentable subject matter. In re Moeser, 27 App.D.C. 307; Hotel Security
Checking v. Lorraine Co., 160 F. 467; Berardini v. Tocci, 2 Cir., 200 F.
1021; In re Thomas J. Dixon, 44 F.2d 881, 18 C.C.P.A., Patents, 711. See
also, In re McKee, 64 F.2d 379, 20 C.C.P.A., Patents, 1018; and In re
Lockert, 65 F.2d 159, 20 C.C.P.A., Patents, 1125. Accordingly, the
question here presented is whether the structure defined in appealed
claims 1, 7, 8, and 12, for carrying out appellant's fire-protective
system against aircraft attack, involves invention in view of the
disclosures in the patents to Whitlock et al., Eisenbise and House (No.
1,357,982). In re Crowell, 84 F.2d 206, 23 C.C.P.A., Patents, 1246, and
cases therein cited.
Claim 1 calls for a conventional type, self-propelled chassis, an electric
motor pressure pump, "combination chemical and service hose line", and an
electric cable and reel. All of the elements called for by this claim,
with the possible exception of the element "combination chemical nd
service hose lines", are disclosed in the patents to Whitlock et al. and
House (No. 1,357,982), and, so far as those elements are concerned, we
are in full accord with the statement of the Primary Examiner that it
would not involve invention to substitute the electrically driven pump
and the equipment necessary to drive it, disclosed in the patent to
Whitlock et al., for the mechanically driven pump disclosed in the patent
Relative to the element "combination chemical and service hose lines",
appellant stated in his brief before the Board of Appeals, and has
reiterated the statement here, that neither the pump disclosed by him
nor the pump disclosed in the patent to House was designed to pump
chemicals onto the fire, and that the statement in the board's original
decision that the pump disclosed in the House patent was designed to be
utilized for "alternatively distributing the chemical fluid or water
from some suitable source of supply" is not in accordance with the House
Appellant states in his application that the chemical tank in his
fire-fighting apparatus is provided with a separate hose line, and that
by a suitable arrangement of pipes and valves the chemical hose line
may be either connected to the chemical tank or to the discharge side or
intake side of the water pump. Claim 1 does not call for any such pipe
and valve arrangement, and we are not permitted to read such a limitation
into it. In re Buckwalter, 75 F.2d 515, 22 C.C.P.A., Patents 1031; In
re Crowell, supra.
Furthermore, although the patentee House provides pipe and valve connections
between his pump and chemical tank for the purpose of using water to flush
them and although nothing is said in his patent about using his chemical
hose for a combination chemical and service hose, it is obvious that it
could be so used, although the utility of such use is doubtful.
Owing to the fact that we are here concerned with structure, not function,
mode or operation or results, we are unable to hold that the element
"combination chemical and service hose lines" lends patentability to claim
Claim 7, as hereinbefore noted, was rejected by the Primary Examiner on the
ground that it calls for nothing more than a fire truck and detachable
trailer units, disclosed in the patent to Eisenbise, and claim 8 and 12
were rejected by the examiner on the patents to Whitlock et al., and House
(No. 1,357,982) in view of the patent to Eisenbise.
As hereinbefore noted, the patent to Eisenbise discloses, among other things,
fire-fighting apparatus mounted on an automobile truck, and an automobile
hose-wagon detachably coupled to the front end of, and propelled by, such
truck. Obviously, either of those vehicles could be equipped to carry any
fire-fighting apparatus. Although, strictly speaking, the patentee does
not disclose a trailer, that is, a vehicle which is in the rear of, and is
pulled by, another vehicle, his disclosure is sufficient, we think, to
suggest to one skilled in the art (if any suggestion was necessary at the
time - September 20, 1938 - appellant filed his application) that a trailer
might have the utility as one of the units in fire-fighting equipment.
We have given careful consideration to the arguments presented here by
appellant, but are unable to hold that the appealed claims define
patentable subject matter over the references of record.
The decision of the Board of Appeals is AFFIRMED.