Application of Sanford C. Lyons

*1020 SMITH, Judge

(dissenting).

Both references of record teach that the finer particle sizes produced the greater brightness in the coating. Appellant’s prior patent No. 2,904,267, reduced the particle sizes of clay by extruding a plasticized clay through an extruder to shear the particles. The Billue patent No. 3,058,671, reduced the particle sizes of clay by “fracturing” the coarse clay to produce the smaller particle sizes desired. I agree with the majority that Billue discloses the selection of coarse particles. As stated by Billue:

I have found how a clay of intermediate particle size range — that is, around 70-80% below 2 microns — may be greatly increased in brightness without in any way necessitating sacrificing softness. This is done by separating coarse clay from the natural or crude clay, and then fracturing this coarse clay to produce particles within the desired particle size range, and separating the desired fractured particles from the mass produced from the fracturing step. [Emphasis added.]

I have emphasized in the above quotation the words “brightness,” “fracturing” and “particles within the desired particle size range” because these terms have a meaning which it seems to me are misapprehended by the majority.

Certainly “brightness’ and “whiteness” are quite different concepts in the pigmentation industries. One has but to observe the gloss (brightness) of a good grade of a black enamel surface and compare it with the dullness (lack of brightness) of a good grade of a “flat” white painted surface to appreciate the entirely different properties with which we are here concerned. The majority apparently chooses to disregard the foregoing observation for- it states:

The other major difference urged as an unexpected result probative of non-obviousness is the matter of whiteness and brightness. Both the Lyons patent and Billue are silent as to whiteness, and Billue alone refers to brightness. It is argued that the improvement in whiteness is unexpected and so significant as to permit issuance of a patent. We think not.

The foregoing seems to me to state both an unwarranted and an unsupportable proposition in view of the facts of record.

Before discussing what it seems to me is a proper finding concerning the rejection in this case, it is desirable to state what it seems to me are the basic scientific concepts involved in this invention.

It is well known that as the sizes of particles aré reduced, the specific surfaces in the resultant mass are increased. This was recognized and stated as long ago as 1934, by Professor Harry N. Holmes in his “Introductory Colloid Chemistry.” In the ensuing 32 years, the art and science of colloidal chemistry has advanced so greatly that the current tendency is to forget the simple and elemental propositions which underlie it. I know of no area in which this is more true than in the art in question. While the use of clays was among mankind’s earliest achievements, the recognition of the relationship of particle size to specific surfaces is relatively recent. The increase of total surface area is a basic fact and becomes an impressive factor when stated as Professor Holmes does at page 4 of the above referred to book.

“Surface increases enormously with subdivision,” said Professor Holmes,

and all surface phenomena become greatly magnified. A cube, 1 cm. on edge, when subdivided into cubes 10 mu on edge would possess a total surface of 6,000,000 sq. cm., and the number of particles would be 1018. The surface has been multiplied one million times. If the subdivision is carried to the lower limit of 5 ma the free surface becomes almost one acre in extent. Consequently the importance of surface energy and of all surface properties becomes overwhelming. * * *

The importance of this fundamental observation seems to me to have been lost by the majority. If not lost, the majority has failed to appreciate its significance in the present setting.

*1021 The problem to which appellant addressed himself was how to whiten domestic clays. As pointed out in the specification in issue:

The secondary kaolin deposits of Central Georgia, U. S. A., are the basis of an extensive kaolin processing industry. Some millions of tons of kaolin are there produced annually and are refined by elaborate and modern processing techniques. One of the principal objects of these processes is to produce a kaolin pigment of a high order of whiteness and brightness. Various and extensive research efforts have resulted in process refinements so that some of the naturally discolored kaolins can be whitened and brightened by various processings, including chemical treatments. It has been repeatedly found, over the years, that while known chemical bleaching treatments can produce improvements in whiteness, up to a point, there is definite limitation to the extent to which this color improvement can be carried, regardless of intensity of treatment.

Appellant further points out that:

* * * Briefly, it might be pointed out that in speaking of whiteness, reference is had to the matter of uniformity of reflectance throughout the visible spectrum. It is unfortunately true that the kaolins from Central Georgia are characterized by a deficiency of reflectance at the short wavelength (i. e., the violet) end of the spectrum. This fact causes them to appear “cream colored” by comparison with some other whiter pigments, such as precipitated calcium carbonate, blanc fixe, and certain high-grade imported kaolins, e. g., those from England. This fact sometimes puts them to a marked disadvantage, and it would be extremely desirable if some way could be found whereby these Georgia- clays could be made to be of equal or superior whiteness and brightness to the best of the imported clays as well as the other competing pigments above mentioned.

While appellant’s earlier patent and Billue are concerned with increasing the “brightness” of clays, I find it most significant that improvement in “whiteness” of the treated clays is at best an unrecognized factor — both are concerned with particle size reduction of the clay to achieve improved “brightness.” Neither teaches, nor appears to recognize the significance of other colors on the surfaces of the clay particles which each proposed to treat.

Thus appellant’s prior patent utilizes all particle sizes of clays which he forms into a plastic mass by the addition of water and then “delaminates” by pressure extrusion processing. In fact, the fundamental purpose of the invention of this patent is to utilize all of the crude clay particle sizes and thus to increase the total yield of processed clays over that achieved by sedimentation classification and separation of the particle sizes greater than 2 microns in diameter.

Billue differs from the prior Lyons patent in two principal respects: (1) Billue processes the particles larger than 2 microns in diameter and (2) does so by “fracturing” them.

Billue describes what he means by the term “fracturing by milling.” He states:

The phrase “fracturing by milling” in the claims refers to the fracturing of kaolinitic clay particles by milling, such as is effected, for example, by the use of pug mills (kneading) and Rafton mills (impact and/or shear) of the type shown in U. S. Patents 2,535,647 and 2,448,049, respectively, wherein the particles are subjected to rupturing or shearing forces which cause the kaolinitic clay particles that are treated (i. e., not more than 35% by weight finer than 2 microns) to have an increase of particles finer than 2 microns and greater brightness on the brightness scale as compared to unfractured clay of substantially the same particle size.

Thus, we see that the common concern stated in appellant’s prior patent and in the Billue patent is the reduction in size of the clay particles larger than 2 *1022 microns in diameter, and by so doing to improve the “brightness” of a coating in which they were used. It seems to me, and here I disagree with the majority, that there is no fair teaching in either prior process that it could be expected to increase the whiteness of the processed clay.

Here we are dealing with a color phenomenon. The least skilled of week end painters has observed how little color, how very little indeed, is required to “tint” a pure white pigment (usually an oxide of Zinc or Titanium) dispersed in oil. Here, it seems to me, we must consider appellant’s statement in the specification in issue that:

Much still remains unknown regarding the difference between these new “plates” and their corresponding natural “plates,” and it is not certain why these new type “plates” are whiter. However, it is known that these sedimentary kaolins were deposited in prehistoric coastal lagoons some 50 million years ago. It is entirely probable that they have, therefore, been immersed in ferruginous and other potential discoloring solutions for millions of years. It is, therefore, probable that the faces of the natural fine kaolinite plates have long since become coated with thin, but tenacious, deposits of ions of a nature which would detract from the native whiteness thereof. Probably some of these surfacial contaminations do yield to the chemical bleaching treatment while others are not respondent thereto.

To the extent that a discoloration is present on the surfaces of the clay particles, to this extent it should be considered as a “tinting” pigment. The process of appellant’s prior process retains all of this discoloration, and recalling the increased total surface phenomena referred to by Holmes, above quoted, the gross amount of surface discoloration would be related to the total area of surface involved. Thus, Lyons’ prior patent by failing to recognize the importance of applying the process to material having less than 20% of particles below 2 microns did not achieve increased whiteness which appellant achieves by the invention here in issue.

But what of Billue who admittedly processes Clay particles of greater than 2 microns in diameter? Here it becomes necessary to consider what occurs in “fracturing” vis-á-vis “delamination.” In “fracturing” by the process disclosed by Billue, all surface discoloration is broken up as the clay particles are reduced in- size. More importantly, however, those discolored surfaces become tinting pigments which are dispersed throughout the “fractured” mass and act as a color toner.

Here and in appellant’s earlier patent the “delamination” of the clay particles produced what appellant has described in the instant application as “different” plates. This is stated in the specification in issue as follows:

The delaminated “plates” are different from the natural plates found in the original kaolin. They are whiter and brighter in the unbleached form and they, furthermore, bleach to values of brightness and whiteness unattainable by similar treatment of the naturally occurring “plates.” Electronmicrographic studies indicate that the delaminated plates and/or sheets (i. e., mosaics of edge-to-edge plates) tend to be longer and wider than are the corresponding naturally occurring ones.

Perhaps we can gain a clearer understanding of the technical problem here involved by considering that Lyons’ prior patent retains a larger amount of the discolored surface materials than does Billue but he does not break it up and disperse it as completely as Billue necessarily does by his “fracturing by milling” process. Billue, on the other hand, by selecting clay of over 2 micron particle sizes incorporates less of the discolored surface materials but by thoroughly dispersing them in the mass achieves the maximum tinting effect.

*1023 The invention of the appealed claims perceptively avoids the shortcomings inherent in both appellant’s prior patent and in Billue. The former by reducing the amount of discoloration resulting from the larger total surface area of the fines and the latter by retaining the discoloring materials on the edges of the individual delaminated clay plates so that it is found chiefly at the edges of the in- • dividual clay platelets which electron microscopic studies show are joined edgewise in the form of a “mosaic.” Thus, the color impression is one of increased “whiteness” as the discoloring or tinting particles probably remain on the edges of the plates, and are joined with similar edges on adjacent plates so that only a small proportion of the total discoloring materials is to be seen.

Relatively simple though this concept is, I do not find it in appellant’s prior patent either alone or when considered with Billue.

Thus, in short, the invention of the appealed claims is a different invention and achieves different results from either Lyons’ prior patent or the Billue patent. The difference between Lyons’ prior patent and the present invention is not found in Billue. I find no basis in the record for finding appellant here seeks to claim but an obvious variation on the invention claimed in his prior patent.

I therefore must disagree with the majority’s treatment of this appeal.