(concurring in part and dissenting in part).
In my opinion the rejection of claim 95 should be affirmed.
Appellants’ specification with reference to some of the nodulizing agents therein disclosed states:
“The nodulization - impelling agents, if in reducible compound or oxide form, are preferably injected simultaneously with the calcium carbide, in finely divided form, and they may be in admixture with the finely divided calcium carbide. The nodulization-impelling agents, if in elemental or metallic form, are preferably added to the molten metal either simultaneously with the calcium carbide injection or just subsequent thereto, and they may be injected in finely divided form and may be in admixture with the finely divided calcium carbide.” [Emphasis mine.]
As respects the cerium, a rare earth metal, of Morrogh I and the form in which it may be introduced into the Morrogh I cast iron, the patent, in strikingly parellel language, relates:
“The cerium may be added in any convenient form, either as pure metallic cerium, mischmetall, ferrocerium, cerium carbide or other alloy of cerium. * * * The cerium may be applied in the form of a reducible cerium compound.” [Emphasis mine.]
Thus, both the reference and the application equate cerium and reducible cerium compounds, of which cerium oxide is one, for use in cast iron compositions, one being a “conventional” cast iron, the other being a high silicon cast iron. The application states that the oxides are used because it “enables the rare earths to be used in their inexpensive, readily available, oxide form,” and theorizes that:
“The rare earth oxides as used with the present invention are believed to be reduced by the injection calcium carbide at the normal founding temperatures (2400° F. to 2900° F.) of the metal baths to liberate cerium, lanthanum, and other rare earth elements. In contrast, magnesium oxide is a refractory oxide and is therefore not as readily reduced by the injected calcium carbide at the temperatures of the bath, and this may be one of the reasons why it is not as effective in the combination treatment as the rare earth oxides for purposes of nodulization.” [Emphasis mine.]
While these may be some of the reasons for the interchangeability of the metallic and oxide forms, reasons which are not stated in the patent, the indication of equivalency is set out. Consequently, I feel that Morrogh I suggests the use of either cerium or cerium oxide to perform the function for which it is used in his cast iron.
That patent teaches that cerium improves the properties of high silicon cast iron, the high silicon content being an important element in producing corrosion-resistant cast iron. One of the objects of the Morrogh I invention “is to provide a high-silicon cast iron in which the graphite is present in finely divided form or as a mixture of very finely divided graphite and nodular graphite.” To that end when cerium is added to the cast iron composition “immediately before pouring,” the eutectic carbon separates “on cooling in the form of a *279very finely-divided undercooled graphite and any excess of carbon over the eutectic amount in the form of nodular graphite.” A microscopic examination of sections of a casting made according to the Morrogh I invention showed the graphite to be present “partly in the form of nodules or spherulites.”
Admittedly the patent does not state that all or substantially all of the graphite is nodulized. However, one interested in preparing nodulized cast irons could hardly fail to note that the patent does teach that nodular graphite in fact exists in the cerium containing cast iron of the patent.
The majority states that “Morrogh I does not suggest the use of cerium oxide as a nodulizing agent for conventional cast iron of the •kind described in claim 95.” I do not understand this to mean that the majority feels the “high silicon” cast iron of the patent and the “conventional” cast iron of the application to be from non-analogous arts. While the patent disclosure specifically relates to high silicon cast iron, that does not mean that the suggestions which flow from such a disclosure are limited to that type of iron.
I believe that one dealing with the problem of nodulizing graphite in cast irons when confronted with the Morrogh I patent would think that the cerium of that patent might also cause nodulization of graphite in other cast irons, including the “conventional” cast iron of claim 95. Thus, the use of cerium, or its equivalent the oxide, in a cast iron of the type claimed herein would be obvious to one of ordinary skill in the art. I also feel, for the reasons stated by the majority with respect to the obviousness of combining calcium carbide and magnesium oxide as nodulization materials in cast iron compositions, that it would be obvious in view of the references to combine the rare earth oxides and calcium carbide as a nodulizing composition for “conventional” cast irons. The other limitations of claim 95 are parallel to those of claim 94. With respect to them, the majority said, “we do not find that they point out anything unobvious.” That statement is equally applicable to claim 95.
I would affirm the rejection of all of claims 94 to 96.
KIRKPATRICK, J., joins in this opinion.