The legal problem of obviousness1 in this case is a difficult one to take hold of. Not that the problem is ever easy to solve, but here it is particularly difficult because of the claim, which is a misfortune inflicted upon us by the U. S. system of claiming. When the issue is approached only from the standpoint of the limitations in the claim and their in*909dividual relation to elements of structure, thermal characteristics, packaging methods, and the like to be found in the references, one completely loses sight of reality, of what the applicants actually invented, and reaches a result, as the majority does, which may sound good and seem logical but which rather misses the only important point — whether what the applicants invented is something which would have been obvious from the references.
I wish, therefore, to approach the question from the standpoint of what they invented, as the record shows it, and thereafter consider how it is claimed and whether the claim defines, as well as may be, an unobvious invention. If this sounds like a peculiar approach, I would suggest that everyone familiar with this patent business knows full well that a claim considered by itself rarely conveys a clear idea of what has been invented and that the best way to arrive at an understanding of the invention is to compare the disclosure with the prior art and see what the differences are. The claim is then to be read in the light of the disclosure. I will start with the prior art.
Price and Shonberg disclose the conventional, well-known spools of coiled wire solder. Solder is not an “adhesive.” Sussenbach discloses a sealing composition for welded seams the plasticity of which “is such that it may be readily extruded from an extrusion gun to form a round bead as it is applied * * In other words, it can be laid on the work like toothpaste or caulking compound. It cannot be spooled. It is not an adhesive. The adhering is done with spot welds. Dumont (the German national’s application published by the Alien Property Custodian in 1943) is concerned with improving the “tenacity” — i. e., tensile strength (Webster’s New International Dictionary, 2nd Ed., “4. Physics”) — of any kind of “reversibly moldable” — i. e., thermoplastic — synthetic resin by a twofold mechanical working. Extruded articles such as filaments, rods, or tubes are, first of all, extruded through a revolving extrusion nozzle which tends to orient molecules in a circular direction and, secondly, the extruded article is drawn out linearly at a faster rate than it is extruded so as to orient molecules linearly. The disclosure is that the invention applies to “all synthetic resins possessing preferably a linear structure of the polymeric molecules.” One part of the linear drawing mechanism is a cylinder on which the extruded article is wound as it is emitted from the extruder “with a higher peripheral speed than the corresponding extrusion velocity.” Thus does one end up, possibly and temporarily, with a plastic rod “in coil form” as an incidental result of the drawing operation. Of course, the rod must be removed from the cylinder for use and its ultimate form is not disclosed. The reference says nothing whatever about adhesives and has no bearing on adhesives, their form, composition or handling. It deals solely with the molecular orientation of thermoplastics in general by mechanical working.
Dumont includes nylons among his thermoplastics and “Modern Plastics 1956” is cited merely to show that nylons are “sticky” at 400-450°F. and melt at about 415-480°F. (The majority opinion omits this reference but the solicitor did not.) The “Technology of Adhesives” reference discloses that certain polyamides (which “nylons” are) may possibly be of value in the field of adhesives, sometimes dissolved in solvents, sometimes as “hot melts.”
One cannot find in the cited references any disclosure or any suggestion of an adhesive product, usable as such, in the form of a coiled rod. However, by the Patent Office reasoning a spool of nylon fishing line would meet the claim.
There is other “prior art” of which neither the majority nor the Patent Of*910fice takes notice which has an important bearing on the issue before us. That is the prior art referred to in appellants’ specification and elsewhere with respect to how the thermoplastic resin adhesive compositions were being handled in the field to which the invention pertains at the time appellants came forth with their invention. The patenting of inventions is of practical concern with reference to the promotion of the progress of useful arts and the one thing apparently given no consideration whatever by the examiner, the board, the solicitor, and the majority is the state of the relevant useful art and what the appellants did to it.
The specification points out, and it has not been disputed, that before the invention thermoplastic polymeric adhesive as ' used in machines employing and applying it2 was heated in substantial quantity in a reservoir in the machine and pumped in a molten state to the point of application. This had several disadvantages. The reservoir had to be kept filled by the operator of the machine. An excessive quantity of adhesive had to be kept melted which also took too long a time to melt when a machine was started up. Continued heating had a deleterious effect on some hot melt adhesives, which decomposed. Cleaning out the reservoir was difficult and necessary whenever a change was made from one adhe- ■ sive to another. These hot melt or “glue pot” adhesives, incidentally, were brittle compositions which were broken up into pieces to be fed to the reservoir and as such were not amenable to being made into the form of rod to be wound into a cojl and unwound again for use.
Now against this art background, what was appellants’ invention? It was an entirely new concept in adhesive handling. It was the concept of providing a solid polymeric type adhesive in the form of an elongated coilable rod of particular strength, flexibility, and fluidity characteristics for a particular purpose, to be used in a non-existent machine which was to be developed to employ their novel concept, provided it worked out. As one of the inventors, Johnson, said in his affidavit, “At the outset, it was not apparent to either of us whether or not we could produce an adhesive formulation suitable for coiled rod formation and having the requisite properties.” After considerable research, success was achieved and a patent application filed.
The patent specification reflects what was learned in the course of the research. One may conveniently divide the specification into three parts: the broad statement of the invention, the disclosure or discussion of the considerations to be met in carrying out the invention, ■ and ten specific examples of exact formulations of adhesive compositions suitable for practicing the invention.
In the broad statement of the invention the appellants said: “This invention relates to a new thermoplastic adhesive article for direct through feed thermoplastic adhesive dispensing.” So far as the record shows, this was a novel concept. “According to the present invention there is provided an elongated body of solid, thermoplastic adhesive constituting a self-supporting rod of uniform cross section for cooperation as supply and control with a heated softening and dispensing passageway having a complementary cross section.” No such concept is disclosed in the references. “Compositions which have been completely outside of the field of materials which could be used for adhesives to be dispensed from a molten reservoir may be employed effectively in this special form.” And further, “The thermoplastic adhesive rod constitutes a new tool with the aid of which a great many adhesive' problems are solved.” In no reference is. there the slightest suggestion to utilize a thermoplastic resin adhesive in the form *911of a coilable rod and the “new tool” characterization appears most apt. “The field of uses of the thermoplastic adhesive rod is extremely broad and a wide variety of rods of thermoplastic adhesive may be prepared for the various uses * * The breadth of the invention is summed up as follows:
“No serious limitations exist as to physical or chemical properties except that the rod be a thermoplastic adhesive composition, that it possess sufficient flexibility and resistance to fracture at operational temperatures to be coiled and uncoiled and that it be self-supporting and possess dimensional stability such that the rod or strip does not change during storage from the shape required for cooperation with the softening and dispensing passageway.”
Following these general statements, the ten specific examples are set forth. In the variety of their formulations they demonstrate that the broad concept of the invention can be carried into practice in a wide variety of ways and support the general statement made in the specification that a skilled compounding chemist, familiar with the teaching of the specification, could produce satisfactory rods other than those specifically described.
The foregoing amply demonstrates the predicament of the applicants vis-a-vis the Patent Office which complains that the claim is “functional” in many of its limitations, which should therefore be ignored; that the temperature range stated for fluidity is not a “critical” range, whatever that may be taken to mean; that it is indefinite in “other ingredients” than the synthetic polymer; that it does not set forth “specific ingredients”; that Dumont’s polymers are not distinguished from “in terms of chemical structure” and fail to set forth molecular weights of the components; and that there, is “no limitation as to the diameter of the coil.”
• If appellant’s broad concept of coiled adhesive in rod form which is basically a polymeric thermoplastic resin ■ is not protected by a broad claim, the practical result is that it is not protected at all because of the ease with which formulations other than those specifically disclosed could be devised, with which to enjoy the benefits of the invention without meeting the limitations of such a claim as the Patent Office appears to visualize as meeting its requirements. Therefore we are faced with a broad claim. Appellants would be fools to try for any other.
If we center our attention on the invention as described, it is apparent that it is a broad invention nowhere suggested in the references. But attention has been centered on the claim instead, read without much regard to- the scope of the invention or the meanings of the terms in the claim construed in the light of the supporting disclosure.
The main rejection rests on Dumont alone and is based on two things: that it shows some nylon, possibly in rod form, temporarily rolled on the cylinder of a machine the real purpose of which was to stretch it as it came out of the ex-truder; and that another reference says nylon gets “sticky” if it is hotter than 400°F. (This was the Patent Office view and I appreciate that the majority abandons it for another of its own making- synthesized from “Technology of Adhesives.”) I feel that appellants are right in pointing out that the claim distinguishes from Dumont in its size limitation, in its “fluid” limitation, and in calling for a package of “adhesive” which becomes fluid in the range 250-400°F. It is clear to me that the board tacitly admits that Dumont teaches nothing about adhesives and further that it distorts the meaning^ of “fluid” to include that which is not fluid according to the common meanings of that word, so as to include that which is merely sticky.3
*912In utilizing Shonberg’s roll of solder in sustaining another rejection it also appears to me that the board distorts the common meaning of “adhesive” in contending that solder is an “adhesive, having all the properties as called for in the claim except containing synthetic polymer.” As this court said in In re Dean, 291 F.2d 947, 48 CCPA 1072, claims are to be read in the light of the specification, not in a vacuum, and in the context of this case solder (i. e., metallic solder which is all the references disclose) is not an “adhesive” within the meaning of the claim.4
The acting board member, writing its opinion on rehearing (in which its first opinion’s new rejection under Rule 196 (b) was wholly withdrawn), said that he “could go on and on with respect to the other ‘properties’ as claimed” and it appears to me that taking the approach that was taken this is no doubt true. I think, however, that the Patent Office had already gone “on and on” to too great an extent in synthesizing supposed suggestions for appellants’ invention, as claimed, from the prior art where no such suggestions exist and in finding technical reasons for ignoring the plain meaning of the claim, properly read in the light of the specification, along with various claim limitations, so as to give the claim a semblance of reading on an entirely unrelated prior art disclosure.
Read in the abstract, claim 24 does seem, on first impression, to have some rather vague limitations. But read in the light of the disclosure as a bona fide effort to so define the actual invention disclosed as to prbvide it with adequate protection and at the same time do the necessary in distinguishing in terms from the prior art references, I would be at a loss to improve upon it.
I do not see any legal compulsion for us to present appellants with the choice of having no protection at all, which results from the majority opinion, or entirely inadequate protection, which would result from acceding to the unjustifiable requirements of the Patent Office in this case.
There is more than adequate precedent in the prior opinions of this court, many of which are referred to in the dissenting opinion of Judge Smith, for approving a claim such as the one before us on the ground that unobviousness may be predicated on a broad novel concept for doing a thing though the means for doing it, once the concept is given, may seem quite simple in view of prior art viewed with hindsight perception. Of course the claim must distinguish in terms from the prior art, but that it amply does if what it says is heeded.
I fully agree with appellants’ conclusion which says:
“We submit that this is one of those cases in which because of seemingly slight structural differences [in the claim] a very great and unobvious difference in conception has been lost sight of by the Examiner and Board. Properly analyzed, the present facts show strongly that rejection as unpatentable over the four references relied on was unwarranted.” [My emphasis.]
. It is my view that obviousness under 35 U.S.C. § 103 is the sole issue. The majority opinion uses the expression “unpatentable over” in affirming the examiner’s rejection of “fully met by Dumont.” However, the majority admits *909to limitations of claim 24 -which are not to be found in Dumont, combines another reference with it not used by the examiner, and eschews the “fully met” language. It therefore strikes me Dumont must be treated as a section 103 reference. The other rejections are clearly based on section 103.
. The practical application of the thermoplastic adhesives appears to have been of practical concern primarily in shoe manufacture and in shoe manufacturing machines. The applicants were employees of B. B. Chemical Co., a wholly owned subsidiary of United Shoe Machinery Corporation, and employees of both companies jointly developed the invention before us and machinery for utilizing the rod-form adhesive, such a machine being shown in MaeKenzie patent 2,762,716, of record.
. The solicitor’s brief acknowledges that the board’s position was that “fluid” in the claim “does not distinguish from the stickiness of nylon at 400° IT.” but obviously he did not relish the task of trying to support that position for no at*912tempt was made to clo so. Instead, the brief switches to the argument that there is nothing to show that 400 °F. is a “critical” limit of a temperature range. I therefore regard the board’s position on this point as entirely lacking in support by the solicitor.
. Soldering with metallic solder alloys such as the references show is, moreover, an art totally unrelated to the art of securing with “adhesives.” The essential difference is that in soldering the work must be brought up to tbe temperature at which the solder melts, at least in the surface portion contacted by the solder, else it will not be wetted by the fluid solder and the solder will not bond. Another difference is that chemical fluxes are generally used and, furthermore, soldering is limited to the bonding of metals with metals. The asserted fact that appellants’ adhesives may be used on metal does not equate adhesives with solder.