The invention claimed in rejected claim 24 is a “package of solid flexible thermoplastic adhesive in coil form.” In defining the properties of the adhesive per se, the claim also calls for the flexible thermoplastic adhesive to be “a normally solid, flexible thermoplastic mixture of at least two ingredients.” This mixture must also be “fluid with a viscosity suitably low for adhesive application at temperatures in the range of 250° F. to 400° F.”
I do not find these features in Dumont. Dumont, in my opinion, does not show a material which is an “adhesive” within the normal context of the term.
Adhesives are a recognized industrial category. They all have the recognized quality of gripping another material under conditions of use despite such differences as they have in chemical composition.
Dumont’s material is a polyamide which is extruded and wound under controlled conditions which produce a structural condition which is asserted to have an orientation of its linear molecules in several directions. This is said to increase the “tenacity” of the product. Webster’s Third New International Dictionary defines “tenacity” as, among other things, “tensile strength.” I am, therefore, unable to agree with the interpretation given Dumont in the majority opinion. Further, I find no suggestion in Dumont of a flexible thermoplastic adhesive consisting of “at least two ingredients.” Likewise, I find no showing in Dumont that the material disclosed therein when heated to the range of 250°F. — 400°F., will become fluid and have a sufficiently low viscosity that it is suitable for adhesive application within the claimed temperature ranges. Many solids become fluid when subjected to temperatures higher than ambient temperatures. One skilled in this art would know that to be effective as an adhesive, it must possess a sufficiently low viscosity if it is to have adhesive properties in its fluid state. For example, various waxes, which become fluid at various temperatures, are not “adhesives” in the normal sense of the term. They lack tackiness and readily return to their amorphous state when sthe temperature is reduced. Normal glues and pressure sensitive adhesives, however, have the required low viscosity and tackiness at ambient temperatures to cause adherence of materials to which they are applied.
Thus, the appealed claim has not only a preamble statement referring to an adhesive product but also defines that product in terms which I think distinguish it over the Dumont disclosure. In this particular I think our decision here should be governed by our opinion in In re DeNapoli, 302 F.2d 768, 770, 49 CCPA 1056, 1059, where the court in reversing an ex parte rejection said:
“The board failed to mention the reference in the preamble of the claim to ‘a phonographic translating machine,’ leaving the implication that it agreed with the examiner that the preamble ‘is merely a statement of the suggested use and therefore lacking in patentable significance.’ However, the body of the claim refers to the adjustable mirror as reflecting the image ‘into a position to be visible to the transcribing typist.’ It seems to us that, taken together, those two recitations impart a limitation to the claim which cannot be ignored in determining patentability. * * ”
It seems clear to me that the Dumont reference does not suggest appellants’ conception, even though it discloses a roll of plastic which in form may be regarded as more or less similar to appellants’ claimed package of adhesive. As I see it, Dumont does not disclose what I think are important limitations in appellants’ claim. Thus, since Dumont does not suggest appellants’ claimed invention, I would find the rejection over Dumont to be improper.
In determining whether the claimed subject matter as a whole is obvious *914within the meaning of section 103, it is necessary to consider not only structural distinctions recited in the claims but the purpose for which the invention was conceived.
Thus, in In re Osplack, 195 F.2d 921, 924, 39 CCPA 932, 937, the rule is stated that
“ * * * the conception of doing a thing, the result of which is new and useful, must be considered along with the actual steps of doing it in considering the presence or absence of patentability. * * * ”
Or, as we said in In re Hortman, 264 F.2d 911, 46 CCPA 814:
“ * * * [I]n determining the unobviousness of .a device, it is proper to consider ‘the conception of a new and useful improvement * * * along with the actual means of achieving the improvement.’ In re Shaffer, 229 F.2d 476, 480, 43 CCPA 758, 763, and cases there cited. * * * For, though the structure may be but a simple expedient when the novel concept is realized, that structure may not be obvious to the skilled worker in the art where the prior art has failed to suggest the problem or conceive of the idea for its elimination.”
Or, as Judge Learned Hand stated in H. K. Regar & Sons v. Scott & Williams, 63 F.2d 229 (2d Cir. 1933):
“ * * * When old devices are changed at all, the change may be dictated by a new conception, which it took originality to conceive. Strictly, the old device is not then put to a new use; the new use begets a new device. In such cases it requires but little physical change to make an invention. * * * ”
It seems to me, therefore, that the differences which appellants are claiming over the Dumont disclosures are such that the subject matter as a whole would not have been obvious to one of ordinary skill in the packaging of adhesives. I would reverse the decision of the board.