Application of Homer E. Thornhill

SMITH, Judge

(concurring).

It is with reluctance that I concur in the result reached by the majority. I agree with the majority that the “hand tight engagement of the members disclosed in Crane’s figure C can not be determined from the disclosures of the reference.” It is agreed that the disclosure clearly anticipates every other structural feature defined in the appealed claims and leaves open to doubt whether the differences between a “fully made up joint” and a “hand tight joint” in Crane’s thread system is such that Crane’s joint shown in figure C, when at hand tight position, would engage “substantially all the female threads.” On this issue, I agree with the majority’s *468result only by resolving the doubt in favor of the applicant.

This doubt finds support in applicant’s brief, where, in defining a “fully made joint” it is stated:

“A fully made up joint is one which is tightened by power to the degree customary in a given usage.”

In. the API thread system, described by applicant, this “given usage” in the oil well art where internal pressures may be high, requires considerable power to tighten the joint two turns beyond hand tight. In a usage where internal pressures are not high, such as in a drainage system using the Crane drainage fittings, it seems to be more than likely that fewer turns would be needed beyond the hand tight engagement of the threads to tighten the joint “to the degree customary” for the usage. It is noted also that applicant does not limit the appealed claims to an API thread system but, as stated in the specification, takes the position that it is applicable to all thread systems.

Doubt also has been created by the statement of the grounds of rejection. The examiner’s answer clearly states the rejection of the appealed claims as “structurally fully met” by Crane. He also suggests, however, that it is obvious in view of the art. Thus the examiner stated in his answer:

“The affidavits have been carefully considered and appear to be drawn to the relative success of the joint which success the examiner does not deny. The evidence of the critical nature of the problem and the conclusion as to what caused the problem; i. e. failure of the end of the tube by compressive stresses has been also considered and it is not seen where the solution is unobvious in view of the art.” [Emphasis added.]

I am therefore also left in doubt as to the ground of rejection. Is it 35 U.S.C. § 102 as treated by the majority or does it also include an “obviousness” rejection under 35 U.S.C. § 103, as possibly suggested in the examiner’s answer? Since the printed record here does not contain the other materials necessary to determine what the examiner may have intended in the above quoted portion of his answer, and since neither the solicitor nor the appellant have discussed this as a possible basis of rejection, the question of obviousness does not appear to be before us. This leaves me with no alternative but to also resolve this doubt in favor of appellant.