Application of Adolph P. Alexander

SMITH, Judge

(dissenting).

In restating the provisions of 35 U.S.C. § 103, the majority opinion omits a requirement which I believe is of particular significance in reaching the correct decision in this case. This requirement is that, in applying the test of obviousness under section 103, “the subject matter as a whole” must be compared with the prior art “at the time the invention was made.”

My first disagreement with the majority opinion arises from my application of the requirement of section 103 that we must look to the invention “as a whole.” When this is done, I find two factors ignored by the majority. First, the background of this invention is highly technical and it relates to an art in which many of the metallurgical phenomena are not fully understood, and second, significant advances in this art may well be based on the simplification of existing processes and the use of critical amounts of specific materials in the cast iron composition. Appellant’s invention “as a whole,” it seems to me, is the simplification of prior known processes for the production of iron castings having properties which are particularly desired in this art. Appellant’s “invention as a whole” resides first, in his selection of specific materials to be added to the iron and second, the addition of these materials in certain stated amounts.

Disadvantages arising from the existing processes are discussed by appellant in his specification and underlie the problem which the present invention seeks to solve. Appellant’s specification states:

“It is well known that if magnesium in amounts necessary to introduce from 0.04 to 0.5 percent in the casting or alternatively cerium in amounts necessary to introduce 0.05 to about 0.5 percent in the casting, or a combination of these two elements, are added to the molten base gray iron mix, the graphitic carbon will essentially coalesce or agglomerate to form nodules of carbon or graphite substantially spheroidal or spherulitic in shape which nodules are more or less disposed uniformly in the matrix of the casting. However, in the previously known cast irons of the nodular type there are several disadvantages existing both in the resulting products as well as the various known processes for making such castings. First there exists the danger associated with the use of magnesium or cerium because of the explosive characteristics of these elements when they are introduced into the molten iron. Secondly, in all of the previously known processes the iron must be poured into casting within minutes after the nodular-impelling agent or agents are added. This is undesirable because the later poured castings from a given ladle of molten iron are of progressively poorer in characteristics [sic] than the castings poured earlier thus seriously impairing the control of uniform casting quality. Thirdly, nodular iron castings heretofore known do not retain the nodular graphite characteristics if the iron is re-melted and re-cast without further addition of a nodular im*589petting agent. This invention contemplates the production of uniform high strength nodular iron castings which overcome the aforementioned disadvantages.” [Emphasis added.]

Following this discussion of the existing problem in this art, appellant states one of the objects of his invention to be the provision of nodular iron castings which in the “as cast condition” have the desired physical properties and:

“wherein the physical properties of the castings are of uniform quality irrespective of the length of time elapsing between the time when the nodular impelling agent is introduced into the molten metal and the time of pouring the resulting castings.” [Emphasis added.]

A second object of appellant’s invention is also stated to be:

“ * * * to provide nodular iron castings which may be re-melted and re-cast without the further addition of a nodular impelling agent wherein the re-cast product substantially retains its nodular characteristics.”

My second disagreement with the majority opinion arises from my application of the second requirement of 35 U.S.C. § 103 that the “invention as a whole,” which appellant provides in his specification, must be compared with the prior art as of “the time the invention was made” to determine as of that time whether there was an existing problem which remained to be solved and whether at that time, appellant’s solution to this problem would have been “obvious.” For this analysis it is adequate to turn to the cited prior art British Patent #721,717 which supplies the only evidence of record showing the state of this art prior to appellant’s application.

In analyzing the state of the prior art as shown by this reference, there are significant portions other than those portions quoted in the majority opinion. It seems to me that this reference fairly teaches to one skilled in this art that the addition of calcium carbide to the molten cast iron will improve certain of its properties. The calcium carbide may be added alone or it may be added with magnesium or magnesium oxide prior to casting. The teaching is clear that such a casting if poured rather quickly will have certain desired properties.

As stated in the reference:

“The method of the invention involves the injection of a predetermined amount of finely divided calcium carbide particles below the surface of a molten gray iron bath of selected composition which is then promptly poured to form upgraded or nodular gray iron castings.” [Emphasis added.]

The importance of the “prompt” pouring required is then stated as follows:

“ * * * The time interval in minutes between the finish of the infection of calcium carbide and the casting (holding time) is found to be important. When said holding time is too large, the effect of the treatment is decreased. The temperature of the molten metal at the time of injection is not critical, though it does^ have some effect on the holding time permitted; the temperatures conventionally used in founding are satisfactory.” [Emphasis added.]

The British patent further discloses that the times referred to in the above-quoted portions of the specification were “three minutes” after injection of the calcium carbide in example 1, “about five miuutes after the injection of the carbide” in example 2. In discussing the results tabulated in Table II, the British Patent states:

“ * * * The holding time, after the treatment of a 400 lb. induction melted heat poured with 60 lb. test ladles, ranged from 2 to 6 minutes for the maximum improvements.” [Emphasis added.]

The importance of the “prompt” pouring of the metal after the calcium carbide *590treatment is emphasized in the British patent as follows:

“Upgrading is definitely obtained by introducing into the molten metal, finely divided calcium carbide alone, followed by casting into a suitable mould. The casting should be poured promptly after the carbide injection, preferably within about 20 minutes. Treatment with finely divided calcium carbide and magnesium oxide followed by casting promptly after the treatment, not only changes the relatively large graphite flakes to smaller, more compacted flakes, but produces some nodules, the degree of nodular structure varying from 10 to 90 per cent. of the total uncombined carbon. * *

It seems to me, therefore, that an important contribution which appellant first suggested to the art is that by using the claimed elemental metals in the stated amounts, he can increase the holding time of the molten metal before casting without impairment in the quality of the casting. One familiar with the practical problems in the operation of a gray iron foundry would appreciate, as did appellant, the importance of-such a contribution. Thus, in summarizing his invention, appellant states:

“Summarizing it has now been shown that molten pig iron as tapped directly from a blast furnace may be immediately converted to nodular iron by a simple non-violent addition of lanthanum or neodynium or a combination of the two elements which iron may be east into crankshafts for internal combustion engines, gears and the like with uniformity in quality of the castings and without limitation of time elapsing between the addition of the nodular impelling agents of this invention and the casting into the mold. * * * ” [Emphasis added.]

Here, then, it seems to me is a wholly new and unexpected result which I do not find referred to in the majority opinion nor suggested in any art brought to our attention. It is this result among others which makes me pause and wonder whether on this record the claimed invention can be said to have been “obvious” to one of ordinary skills in this art. This unobvious result is attributed by appellant to the addition of the stated metals in their elemental form in the stated proportions within the claimed ranges, which are given as critical.

The prior art reference, it seems to me, teaches away from what appellant did and which he claims as his invention. .While it is clear, as the majority has stated, that the British patent discloses that there is a reaction between the calcium carbide and the added rare earth oxides which results in the release of elemental metals from the oxides, it is equally clear that the reference does not indicate that the elemental rare earth metals are effective as nodular impelling agents. This is shown in the following excerpt, the emphasized portions of which were omitted in the majority opinion:

“It is believed that when the combination calcium carbide-rare earth oxide treatment is used, the carbide reduces the oxide and frees the rare earth metal element, which then participates in the combination treatment to form the upgraded or nodular iron. Thus, the rare earth metal itself could be used, if desired, in combination with the calcium carbide to effect the combination treatment. As shown above only very small amounts of rare earth metal oxides are required in the combination treatment and similarly only extremely small amounts of rare earth metals need be added when used in combination with calcium carbide, and which amounts are insufficient by themselves to control the occurrence of any appreciable upgrading or significant amount of nodular graphite.” [Emphasis added.]

*591A fair interpretation of -the foregoing disclosure from the British patent, as of the time the present' invention was made, would, it seems to me, force the conclusion that the addition of the elemental metals alone would not be effective. This is further made clear from the following statement in the reference:

“* * * 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 added.]

It is to be noted also that the British patent does not specify any proportions of the elemental or metallic form of rare earth nodular impelling agents. There is, therefore, no teaching as to the amounts which appellant has taught the art are critical amounts and which he has claimed in the claims appealed. If, for example, we are to attempt to determine the amount of lanthanum as an elemental metal which the British patent would fairly suggest adding, appellant pointed out at the oral argument that this would constitute approximately .012% of the mixture of the rare earth oxides added in alloy No. 443, certain properties of which are reported in Table VI.

Another indication that the use of the rare earth metal oxides, as taught in the British patent, would not make appellant’s use obvious in the critical amounts claimed is the fact that the amounts used, as stated in British patent, are such that:

“ * * * With the combined carbide-rare earth treatment predominantly or substantially wholly nodular as-cast products can be produced with no magnesium added, and the amount of rare earth retained is so small as not to be detectable by conventional analytical methods in the as-cast product.” [Emphasis added.]

'As distinguishing-from this? disclosure of the British patent, appellant discloses the use of such amounts of -the elemental metal that, as stated in the appealed claims, there is retained in the improved iron casting “from 0.02 percent to 1 percent by weight” of the nodular carbon impelling agent as the elemental metal.

I also note in passing that rejected claims 16, 17 and 18 are directed to appellant’s improved iron casting as an article of manufacture. Claim 16 specifies that from 0.02 percent to 1 percent of the nodular carbon impelling agent is present. Claim 17 specifies these percentages as percentages of elemental lanthanum. Claim 18, however, specifies “at least 0.02 percent by weight of metallic lanthanum and not more than 1 percent by weight of neodymium” [emphasis added], as the nodular carbon impelling agent. Neither the majority opinion, nor the opinion of the board has satisfied me as to how these limitations are found in any of the disclosures of the British patent nor in what respect such percentages of the elemental metals retained in the casting would have been “obvious” therefrom.

It is true that, in mathematical terms, the amounts of the added materials present in the cast metal make it appear that these amounts are so small as to give rise to an impression that the differences in amount are minor. The fact remains, however, that in this art, the addition of minute amounts of the materials are critical and frequently such addition comprises a significant contribution when based on an understanding of an underlying problem, the solution of which gives rise to a wholly unexpected and unobvious result. Here, I find such a result in the unexpected extension of the holding times without impairment of the quality of the castings, which appellant attributes to the addition of the claimed amounts of the stated materials. As claimed in the rejected claims, it is necessary that the stated amounts of the nodular carbon impelling agents must be sufficient that there will remain in the cast metal the stated amounts of *592the specified agents as elemental metals. I do not find this teaching in the British patent and am therefore unable to see how it can be said to be “obvious” therefrom. Certainly, the materials in the amounts claimed by appellant are not “obvious” from the British patent which teaches the use of the rare-earth oxides in such small amounts that the elemental metals are not “detectable by conventional analytical methods in the as-cast product.”

The foregoing reasons seem to me to require the opposite conclusion from that reached by the majority. I would therefore reverse the decision below.