The opinion
O’CONNELL, Judge
(dissenting).
On appeal from the rejection of claims 21-23 of appellant’s application for a patent “For Collagenous Strands and Method of Making Same,” this court by unanimous decision on June 30, 1950, reversed the decision of the Board of Appeals and in so doing held, on the point raised here now, that “the claims are sufficiently definite to define the product in a patentable sense.”
The petition of the solicitor for rehearing on the involved portion of the court’s decision was filed August 16 and granted December 1, and the majority upon reconsideration has reached the conclusion that the original disposition of the appeal was erroneous and the decision of the board on the point in issue here should have been affirmed in the first instance.
I am convinced now, as I was then, that the original decision on the point in question, openly arrived at in judicial conference, was correct.
The petition for rehearing was based upon two points of alleged error, both of which were limited to matters of form rather than of substance. The solicitor has first asserted here that, contrary to the long-established practice, the original decision of the court in the construction of the appealed claims “quotes a portion of the specifications and, apparently, reads the limitation there set forth into the claims” ; and, secondly, that the court used “as a test of definiteness of the claims, their sufficiency tc enable one skilled in the art to make and use the invention.”
Assuming for the sake of argument that a heresy does reside in the language quoted by the solicitor, and that no person skilled in the art would discern the obvious inadvertence exposed thereby, nevertheless the court has the inherent power, and in a proper case has exercised it, to grant a petition for rehearing solely for *636 the purpose of permitting the court to revise certain language in its original opinion without effecting any change whatsoever in the original conclusion of the court. 1
There is no contention by the solicitor in the present proceedings that appellant’s invention is not sufficiently disclosed in the specification. That specification and the appealed claims must be read together for the purpose not only of enabling any person skilled in the art to practice the invention but also to define the invention and avoid infringement of the prior art. 2
Counsel for appellant correctly summarized in their brief the situation upon which appellant is still entitled to the allowance of the appealed claims: “The specification makes clear that the invention encompasses collagen or ‘collagenous materials’ which have been freed of the acid -insoluble impurities explicitly excluded by the language of the claims. None of the prior art shows collagenous shapes free from fibers and other material insoluble in dilute organic acids. The specification makes clear that there is no cri-ticality as to the kind of organic acid. The claims set forth the product with clarity and particularity so far as concerns exclusion of critical impurities. They define it in a manner by which it may easily be recognized and clearly distinguish it from the prior art.”
The cases cited as controlling-in the solicitor’s brief, and in the majority opinion, do not relate to interpretation of limitations already expressed in the presented claims but concern the importation of limitations into the claims where no limitations were originally expressed therein.
On the point last mentioned, counsel for appellant state in their brief:
“* * * Thus in Graver Tank and Mfg. Co. v. Linde Air Products Co., [ 336 U.S. 271 , 69 S.Ct. 535 , 93 L.Ed. 672 ], the court properly refused to introduce into some of the claims limitations which were explicitly contained in other claims. In re Crowell, 84 F.2d 206 , 23 C.C.P.A., Patents, 1246; In re Pinkerton, 115 F.2d 823 , 28 C.C.P.A., Patents, 803; Application of Custer, 173 F.2d 226 , 36 C.C.P.A. Patents 927, stand for the sound proposition that the court will not save a claim which the prior art meets by importing into it a limitation not expressed in the claim. That is not the case at bar.
“Here the question is whether the meaning of the claim phrase ‘free from any material insoluble in a dilute aqueous solution of an organic acid, including fibers’ is sufficiently clear and definite. * * * ”
With respect to R.S. § 4888: “This only requires that the claims point out the invention, not that they redescribe it”; 3 and “As in the case of any other claim, a product claim may, and indeed must, be read upon the specifications: its terms are no' more than a shorthand from the fuller explanation which the specifications should contain.”2 Accordingly certain features of an invention which are not called for in terms by the limitations of a claim may be gathered from the specification for the purpose of restricting the claim so that it shall' meet the requirements of the inventive idea. 4
The specification and claims when read together in the instant case enable any person skilled in the art to practice the invention. Since there is no prior art relied upon, the matter of the infringement thereof is not before the court and the record presented clearly authorizes the allowance of the appealed claims.
For the reasons stated, the original decision of the'court should be affirmed.
. Musher Foundation v. Alba Trading Co., 2 Cir., 150 F.2d 885, 888 .
. Petersen v. Coast Cigarette Vendors, Inc., 9 Cir., 131 F.2d 389, 391 ; see also Shull Perforating Co. v. Cavins, 9 Cir., 94 F.2d 357, 364 .
. In re Hunter, 166 F.2d 189 , 35 C.C.P.A., Patents, 931; Charles Peckat Mfg. Co. v. Jacobs, 7 Cir., 178 F.2d 794, 797 , certiorari denied 339 U.S. 915 , 70 S.Ct. 575 .