The opinion
LeNeoot, J.,
concurring and dissenting:
I concur in the conclusion reached by the majority as to all of the claims in issue except claim 17, but upon a someAvhat different ground than that expressed in the majority opinion.
While I am not clear that the claims allowed by the majority describe any invention over the prior art, I am satisfied that it is *1128 manifest that there is a doubt as to this question, which doubt, under the established rule, should be resolved in appellant’s favor. I therefore agree that said claim should be allowed.
I think the same rule should be followed as to claim 17 and that it also should be allowed. The only reason given for disallowance in the majority opinion is that the alleged element, “ In an automotive vehicle having a spring supported frame,” is not shown in the drawings of the application.
The examiner, after rejecting said claim for the same reasons, that the other claims were rejected, stated:
Claim 17 is also rejected as unwarranted. The drawing shows no spring support for the frame.
This ground of rejection was also approved by the Board of Appeals.
I regard the words, “ In an automotive vehicle having a spring supported frame,” as an introductory phrase only, which states the environment in which the device is to be used, and is not in fact an element of the patentable combination set out in the claim. This being so, there is nothing in the statute or the rules of the Patent Office which requires drawings of the automotive vehicle or the spring-supported frame. It is clear that drawings are required only of the invention and not of the environment in which the invention is to be used.
The question of the effect of an introductory phrase was fully considered by this court in the case of Barren v. Horner, 18 C. C. P. A. (Patents) 971, 47 F. (2d) 358, and a number of cases were there cited and quoted from to the effect that language similar to that here considered was introductory only.
Furthermore, I can not understand why claims 27, 28, 30, and 31 are allowable if claim 17 is not, because each of these claims introduces structure not shown in the drawings for the purpose only of stating the environment in which the invention is to be used.
To illustrate, claim 30 begins with the words, “ In combination, an automobile having a frame, a driving motor, a rear axle, * * *,” etc.; none of the foregoing are shown in the drawings, even though this claim begins with the words, “ In combination,” which claim 17 does not; and yet this claim was not rejected by the Patent Office tribunals upon the ground that said features were not shown in the drawings.
If claim 17 were exactly similar to the allowed claims, except for the introductory words, much might be said in favor of its rejection as being surplusage, but the language is different and comes within the rule that an inventor may claim his invention in different ways in order to make certain that he is fully protected.
*1129 Finally, the solicitor for the Patent Office in his brief states that the point upon which the majority rejects claim 17 is a minor and formal one.
It being my view that the “ spring-supported frame ” is no part of the invention claimed, but only states the environment in which the invention could be used, no drawings were necessary of the “ spring-supported frame,” and the claim should be allowed for the same reasons that the other appealed claims are allowable.