DISSENTING OPINION
Hatfield, Judge:It appears from the decision of the Board of Appeals of the United States Patent Office that the primary examiner allowed 10 specific claims for the precise combination claimed by ap*952pellant. Those claims do not appear in the record. However, it was agreed by counsel for the parties, at the time of the oral arguments in this court, that claim 6, quoted in appellant’s brief, was one of the allowed claims.
The claim reads as follows:
A machine of the class described comprising a lower and upper cutter head, one arranged ahead of the other in the machine in the order named, a bed in front -of the lower cutter head, an infeed mechanism comprising an endless chain, with yielding fingers projecting therefrom, said mechanism extending over the first named bed, and the forward end of the second named bed, and a feed roller over the second named bed between the said infeed mechanism and upper cutter head.
The only distinction between the involved claims and claim 6, allowed by the primary examiner, is that the latter claim describes appellant’s alleged invention more specifically than do those involved in this appeal.
No contention was made by the Patent Office tribunals nor by the solicitor for the Patent Office that the involved claims do not define the invention claimed by appellant. On the contrary, each of the tribunals below held that, although appellant’s combination of old elements was different from those shown in the references, he had done nothing more than to substitute “ one well-known feed for another,” and that the substitution of the feed disclosed in the patent to Smith “ in the machine of Luther or the machines of the other references showing upper and lower cutters will produce applicant’s results.” I am of opinion that if these statements are true as to the appealed claims, they are applicable to the claims allowed by the primary examiner.
It is claimed by counsel for appellant that a distorted 'board may, in appellant’s combination, be fed “ over the lower cutter head without changing its distortion from the plane in which it enters the machine,” and is planed on both sides with only one passage through the machine; and that, therefore, appellant has obtained a new and useful result which could not be obtained by any of the devices shown in the references.
It is conceded by the solicitor for the Patent Office that appellants machine planes a distorted board on both sides with only one passage through the machine. The solicitor contends, however, that, if the “planing mechanism of Herzog * * * for planing the under-surface of a distorted board be substituted for the first or undersur-face planing mechanism of the double-surface planer of Luther to the left of Luther’s rolls A B' of fig. 2,” the same results would be obtained, and that such a substitution is obvious to one skilled in the art.
*953The question of whether a new and useful combination of old elements is suggested by the prior art and obvious to one skilled therein, is largely a matter of opinion, concerning which minds may differ.
The primary examiner, a technical expert in the art, was of opinion that appellant’s combination was a new and useful improvement and required the exercise of inventive genius to perfect it, and, accordingly, allowed 10 claims, which specifically described the invention. It is not contended that the involved claims do not define appellant’s invention nor that they are sufficiently broad to read on any one reference. The sole contention is that appellant’s combination, admittedly a new and useful improvement, is suggested by the references and is obvious to one skilled in the art.
I am unable to concur in that contention. Furthermore, the allowance by the primary examiner of the specific claims is sufficient, at least, to raise a doubt as to the applicability of the references, and this doubt should be resolved in the applicant’s favor. See In re Englehardt, 17 C. C. P. A. (Patents) 1244, 40 F. (2d) 760; In re Kirschbraun, 18 C. C. P. A. (Patents) 735, 44 F. (2d) 675. I am'not unmindful of the fact that there may be many cases where broad claims would be unpatentable over a combination of prior art references, although the patentability of specific claims would not be negatived by them. But where, as here, the specific claims include only the same features which are found in the combination of references relied upon by the Patent Office to negative patentability of the broad claims, it seems to me that all of the claims, broad and specific, should either have been allowed or rejected.
Having found that appellant’s combination involved invention,, and specific claims having been allowed appellant, I am unable to understand why broader claims defining his invetnion should not be allowed.