The opinion
Bland, Judge,
dissenting in part.
I cannot concur in the allowance of claims 3 and 4.
The dispute between the applicants and the Patent Office rests upon the question as to whether or not appellants’ ventilator is enclosed, and probably in some respects the Patent Office decisions are subject to some criticism.
Be this as it may, ever since coal mines were electrified it has been one of the oldest expedients to arrange their electrical devices so that *755 sparks should not come in contact with gas. The reference, ELECTRICAL ENGINEERS’ HANDBOOK, is particularly pertinent. If it is conceded that appellants’ device, or any part of it, is completely enclosed, in my judgment it would not amount to invention, in view of the art cited, to enclose it.
It is difficult for me to see just how appellants completely enclose the elements of their device and at the same time provide a fan to run the air through to cool their motor. But even if they have some way of doing it, if any invention is present it would be in the manner in which they did it and not in the broad principle of completely enclosing a motor.
It is noted that in the opinion of the majority it is definitely held:
Accordingly, we are of opinion that appealed claims 3 and are patentable over the references of record. [Italics mine.]
Upon the instant record, it cannot properly be urged that affirming the board’s decision for lack of invention over the instant references is stating a new ground of rejection. Both tribunals of the Patent Office rejected the appealed claims upon the two references. They are in the instant record, and we should not so limit our jurisdiction as to be unable to affirm a rejection upon references which clearly show there is no invention and thus be responsible for the issuance of a patent that is wholly invalid on its face.
In re Wagenhorst, 20 C. C. P. A. (Patents) 991, 61 F. (2d) 780, 17 USPQ 330 , is no authority for a conclusion that upon the instant record, by reason of an alleged unsound statement by the board, an invalid patent must issue, and certainly the Tucker and Beeves case referred to in the opinion of the majority is not in point for the reason that there we held that we could not substitute a wholly new ground for rejecting a claim but were confined to the reasons applied below and brought to our attention in the reasons of appeal. In the instant case there is no question but that the claims were rejected upon the references of record.
Of course, by statute we are confined to a summary review of Patent Office decisions on the points set up in the appeal and must not apply new grounds of rejection not considered by the Patent Office. It is no new ground of rejection to say that in view of the references of record it is not inventive to do what appellants have done regardless of whether the claims are construed to mean partly enclosed or wholly enclosed.
It may be urged that the commissioner, under his supervisory authority, has the right to again pass upon the patentability of the claims in view of the majority’s instant holding. It is hardly likely that the commissioner would hold the claims unpatentable after read *756 ing the statement from the majority opinion which I have above quoted.
While it must be acknowledged that our jurisdiction, under the statute as we have construed, it,in fhe case cited by the majority, is a very narrow one, it is my view that if it is narrowed further by a ruling such as is made here our appellate procedure should be radically changed.
The language of the pertinent statute in mind is more than one hundred years old, enacted at a time when there was no provision for a proceeding under section 4915, R. S., as there is today. It is my hope that Congress may see fit to provide, in the event section 4915-remains on the statute books, that appeals to this court and comparable-proceedings in the District of Columbia courts will be made to work more in harmony and involve'substantially the same procedure.
It is unfortunate, to my way of thinking, that an appellant may appeal here and get an invalid patent because the Board of Appeals gave the wrong reasons for rejection whereas if he moves under-section 4915 the trial judge is empowered to say there is no invention and deny the applicant’s claims. This is an anomaly that should be legislatively cured and I am not intimating that we can do anything about it.