The opinion
WORLEY, Chief Judge with whom MARTIN, Judge, joins:
(dissenting),
I find no fault whatever with the reasoning and conclusion of the Board of Appeals. There can be no doubt that the physical structure of the Holmstrom patent is virtually identical with appellant’s claimed device. Under such circumstances, appellant’s “inventive concept” is wholly devoid of any patentable merit.
A fundamental proposition of patent law is that an invention, to be patentable, must be “new.” 35 U.S.C. § 101 , 102. In my view, the board was clearly correct in finding that appellant’s invention, as claimed, is not “new.” In the words of the board:
* * * It is to be observed further that except for claim 51, all the appealed claims are fully structurally met by Holmstrom per se, by one of the members A or B, and that claim 51, which calls for the complete severing of the knock-outs, is unpatentable over Holmstrom per se, differing only in arbitrary design for the reasons noted above. Referring to illustrative claim 48, for example, all the elements of structure are fully readable on the member shown in Figures * * * [1] and 5. The statements in this claim, “for adjustable metal framing construction,” (lines 1 and 2) and, “for the attachments of additional frame members to said frame member from either side thereof” (last three lines) merely denote intended use which, as we have pointed out above, is of no patentable significance. With respect to dependent claims 52, 53 and 54, it is evident from the Holmstrom drawings, Figures * * * [1] and 5, for example, that member B has angularly bent side elements 2, 4 and 6, at least one of which, 2 or 6, is provided with one longitudinal row of spaced knock-outs. The term “one or more” in line 3 of claim 53 does not require more than one row. The knock-outs 12 shown in Figure * * * [1] are in the parallel side elements 2 and 6 and in alignment as recited in substance in claim 54.
*376 The board referred to Figure 5 of Holmstrom, reproduced here, which represents a front view of the girder of Figure 1 set forth in the majority opinion:
The majority dismisses the Holmstrom reference as an anticipation with the observations:
* * * the board could reach its conclusion only by ignoring parts of the claim which do not, in fact, read on Holmstrom. These parts are in clauses [1] and [6] of our claim analysis, supra, namely, the parts beginning with the word “for.” The board deemed these to be “use limitations” which merely denoted intended use, of no patentable significance, which cannot be relied on to sustain patentability. We do not so regard them.
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* * * When these clauses are considered, there is no foundation for the board’s view that the claims read on Holmstrom.
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* * * Here we think it is of patentable significance that what is claimed is “an elongated unitary load-supporting metal frame member for an adjustable metal framing construction,” rather than some other kind of structural member. This clause the board disregarded.
The Holmstrom reference cannot be dismissed so lightly. Granting that claim limitations as to use which necessarily imply structural features may be given weight (Kropa v. Robie, 187 F.2d 150 , 38 CCPA 858), it is not clear to me how either clause [1] or clause [6], reproduced at page 367 of the majority opinion, serves to distinguish appellant’s claims from Holmstrom’s elements A or B. Manifestly those elements of Holmstrom are part of “an adjustable 1 metal framing construction” inasmuch as the pieces C and D are fitted or conformed to elements A and B, and A and B fitted with respect to each other. Girders, moreover, have been used as building frames for years. As for clause [6], I *377 find no error in the board’s statement that:
* * * It is, moreover, elementary that one or more sets of aligned holes in members A, B 2 of Holmstrom could be used to receive bolts for clamping the two members together in addition to the clamping means disclosed.
Lest it be thought the size or shape of Holmstrom’s girder component A is outside the scope of appellant’s claims in some manner, it is interesting to note that appellant’s specification states:
* * * The principal structural element of my new metal framing system is no longer confined to a channel or U-shaped member, but includes several basic shapes. Thus the structural element may be a single flat side, preferably reinforced, an angle member with two flat sides disposed at an angle to each other, a channel or U-shaped member of three sides, a tubular shaped member of four sides, and square or rectangular in cross-section, an I (eye)-shaped member, a Z-shaped member of three sides, and the like, as shown in the accompanying drawings. Polygonal structural members, such as hexagonal and octagonal in cross-section are regard as within the scope of the present invention. * * * [Emphasis supplied].
There is no ground whatever for arbitrarily excluding the structural element A of Holmstrom from the myriad elements encompassed by the claims.
Nor can it be said the particular material from which Holmstrom’s or appellant’s frame members are made distinguish them, even if that material were recited in the claims — both recite the use of “sheet metal.”
I would remind my colleagues that it is appellant’s claimed invention we are dealing with, not whatever he may disclose as his invention. It is quite immaterial that appellant’s “inventive concept” is not expressly described by the reference. The fact remains that appellant’s claimed structure is so described. Clearly the allowance of the present claims would deprive the public of what is already disclosed and in the public domain by virtue of the Holmstrom patent. I would affirm.
. Adjustable means capable of being adjusted. “Adjust,” in turn, means “arrange,” “fit,” “make comformable,” or “regulate for use.” See Webster’s New International Dictionary, 2nd Edition.
. As noted by the majority, elements A, B of Holmstrom are portions of a box girder, which Webster’s New International Dictionary, 2nd Edition, defines as “a girder of plates totted together like a long box, so as to have the strength of a solid beam without its weight.” [Emphasis supplied.]