By this appeal appellant brings before us for review the decision of the Board of Appeals of the United States Patent Office affirming the decision of the Primary Examiner, hereinafter referred to as the examiner, rejecting all the claims, numbered respectively 1, 2, 3, 4, and 9, of appellant’s application for patent relating" to a drawing frame assembly used in the textile industry — “particularly,” according" to the specification, “to the drafting of cotton [for producing thread] in which a clearer of a revolving type is used in connection with upper drafting rolls which cooperate with a clearer in a novel manner.”
It appears that in the manufacture of the cotton threads which eventually are woven into cloth, the raw cotton is carded and combed, being thus formed into slivers and rovings which by being drawn out are spun into threads. The application here relates to the “drawing out” mechanism, and we quote the following from the specification: “In the drawing of the cotton fibers two main problems have confronted textile machinery designers, the first being the provision of drawing rolls of such shape and surface characteristics that the sliver or roving would be attenuated a considerable amount but without pulling it apart; the second problem being the removal of the loose and short fibers from the roving, it being desirable to permanently remove all the loose and short fibers and at the same time keep the drawing rolls clean and .further make it possible to easily remove the collected short fibers.” -
*338All the claims were rejected as lacking invention over the prior art cited and claims 1, 2, 3, and 9 were rejected additionally as being indefinite and broader than the invention. There is no distinction of a patentable nature between claims 1, 2, 3, and 9. They stand or fall together, and claim 3 is illustrative of the group. It and claim 4 read: “3. In a drawing frame assembly of the type having a revolving clearer cloth and, a pressure roll for driving said cloth by friction, said roll havng a driving surface formed of clear synthetic rubber like compound with a coefficient of friction such that all short fibers picked up by the roll will be felted onto the cloth and the pressure rolls kept clean.
“4. In a drawing .frame assembly of the type having a revolving clearer cloth and, a pressure roll for driving said cloth by friction, said roll having a driving surface comprising butadiene-acrylic nitrile co-polymer with a coefficient of friction such that all short fibers picked up by the roll will be felted onto the cloth and the pressure rolls kept clean.”
The following references were cited: Rockoff, 2,304,656, Dec. 8, 1942; Rockoff, 2,341,656, Feb. 15, 1944; Caemmerer (Br.), 153, of 1858; Ermen (Br.), 3,386, of 1873; Pieper (Br.), 4,491, of 1876; Caha (Austria), 120,692, Jan. 10, 1931.
It will be noted that all five of the claims are for a combination of a revolving clearer cloth and pressure rolls for driving the cloth, the rolls having driving surfaces made of a synthetic rubber like compound.
Just here seems a proper place to say that the distinction between claim 4 on the one hand and the group comprising claims 1 to 3 and 9 on the other hand is that in claim 4 the surface material is specifically defined as a “butadiene-acrylic nitrile co-polymer,” which is described in the specification, while in the others the material is defined broadly as a “clear synthetic rubber like compound.” The breadth of the latter definition constituted the second ground of rejection applied by the tribunals of the Patent Office. We are unable to find in the specification any subject matter sufficient to support claims of such breadth, and we, therefore, approve the following taken from the decision of the board: “Claims 1 to 3 and 9 have been further rejected as indefinite and broader than the invention. The Examiner states that the term ‘synthetic rubber-like compound’ does not designate a well-defined class of materials. Furthermore, it appears from the Rockoff patent that synthetic rubbers as a class do not possess similar surface characteristics when used as a surface portion of drafting rolls. It seems apparent from Rockoff that not all materials that are recognized as synthetic rubbers would be operative to obtain the advantages asserted. The further statement in the claims to the effect that the synthetic rubber is to have a coefficient of friction such as to attain the results here sought, may not be relied on to define the subject matter. The rejection of claims 1 to 3 and 9 as indefinite and broader than the invention will accordingly be affirmed.”
We do not agree, however, that it was proper to- reject claim 4. It seems to us that appellant properly may be accredited with invention in combining into a new mechanism the elements taken from the prior art. The British patents cited here are very old, the last one having been issued in 1876. Some 55 years elapsed before the issuance of the Austrian patent and 65 years before the first patent to Rockoff. In this crowded field of an extremely important art no one during all those years seems to have thought of making what now appears to be a simple but valuable combination. Appellant did it and, if the affidavit of Mr. Rowe is to be believed, he made an important contribution to the art. We discern no reason for questioning his statements.
He seems to have had long experience with cotton mill work, having been associated with cotton mills since 1913 in the United States and in foreign countries. We quote from the affidavit the following : “That the device disclosed and claimed in the aforesaid application has distinct advantages in mill work since it permits reduction in work load on operators to the extent of at least 15 per cent, that is, the revolving clearers need not be attended by operators as frequently as the *339old type of stationary clearer, and that the quality of the cotton yarns passing the clearer is much cleaner and freer from clearer waste than is produced by a stationary clearer; that the use of the revolving-type clearer with the synthetic rolls of the type disclosed in the Newton application Ser. No. 556,154 has cut the cleaning time for drawing 15 per cent due to the lack of packing and ‘eyebrowing’ as a direct result of the surface characteristics of the synthetic rolls; that while commercial drawing frame assemblies such as shown in Petper, British #4491 of 1876, and Caemmerer, British #153 of 1858, produced good drafting of the cotton, they caused the formation of rat tails because of the coefficient of friction of the top rolls formed of leather, cork and the like, and thus did not produce clean slivers or roving; that this type of revolving clearer with synthetic top rolls has been widely adopted at the Dan River Mills and has substantially replaced so-called stationary clearers and Ermen type revolving clear-ers' with a saving of approximately $70,-000. 00.per year as compared with said replaced clearers.”
In the opinion of Judge O’CONNELL, expressing concurrence in the allowance of claim 4, but dissenting as to the rejection of the other claims, there is given a more elaborate statement descriptive of appellant’s application and of the prior art than is given in this opinion. Duplication is unnecessary and we refrain from further elaboration.
Our decision as to claim 4 is predicated upon the fact that appellant has produced a new device which is shown to have great utility, and which, in our opinion, displayed invention.
The decision of the Board of Appeals is modified. The rejection of claims 1, 2, 3, and 9 is affirmed and the rejection of claim 4 is reversed.
Modified.