The opinion
DISSENTING OPINION
Leneoot, Judge:
I am compelled to dissent from so much of the decision of the majority as reverses the decision of the Board of Appeals as to claims 8 and 10 of appellant’s application. My grounds of dissent are three in number: (1) That the point upon which the decision of the board is reversed with respect to said claims 8 and 10 is not raised in the reasons of appeal, is not raised in the brief of appellant, and, to my best recollection, was not even referred to by appellant’s counsel in oral argument before us; (2) that the Board of Appeals was correct in holding that the element of the claims upon which the majority reverses the decision of the board is disclosed by the reference Trout et al.; and (3) that said claims áre not patentable'combinations and the Board of Appeals committed no error in holding them to be unpatentable.
The only reason of appeal upon which the opinion of the majority: might rest reads as follows:
I. The Board of Appeals erred in affirming the reason of the primary examiner finally rejecting claims 1, 4, 6, 7, 8, and 10 of the above-entitled application.
Inasmuch as the claims mentioned in said reason of appeal are all of the claims that were involved before the board, and are all of the claims that are before us upon this appeal, it is my opinion that this reason of appeal fails to comply with section 4912, Revised Statutes, which requires an appellant to file in the Patent Office his-reasons of appeal “ specifically set forth in writing.” By section 4914, Revised Statutes, it is provided that this court shall confine its revision “ to the points set forth in the reasons of appeal.” A reason of appeal such as that quoted above amounts to nothing more than a- *1000 general reason of appeal stating that the Board of Appeals erred in its decision, in which form it would clearly be in violation of the statute. It seems very clear that Congress, in the enactment of sections 4912 and 4914, Revised Statutes, intended that no blanket reasons of appeal such as that above quoted should be regarded as effective to present any question to the court, but that each reason of appeal should be specifically set forth in writing for the purpose of informing the court and opposing counsel of the particular points relied upon by an appellant, and that the jurisdiction of this court as to reversal should be confined to the reasons of appeal specifically set forth.
Reasons of appeal are analogous to assignments of error in courts of general jurisdiction. In the case of Phillips and Colby Construction Company v. Seymour, 91 U. S. 646 , the court in its decision said:
The object of the rule requiring an assignment of errors is to enable the court and opposing counsel to see on what points the plaintiffs counsel intend to ask a reversal of the judgment, and to limit the discussion to those points. This practice of unlimited assignments is a perversion of the rule, defeating all its purposes, bewildering the counsel of the other side, and leaving the court to gather from a brief, often as prolix as the assignments of error, which of the latter are really relied on. * * *
While the court was there speaking of a multiplicity of assignments of error, the observations there made are even more pertinent with respect to a general assignment.
In the case of Texas and Pacific Railway Company v. Archibald, 170 U. S. 665 , the court in its opinion stated:
There are six assignments of error, the first of which may be at once dismissed from view, as it simply avers that the Court of Appeals erred in affirming the judgment of the trial court, without any specification of any particular erro'r committed. * * *
This court in the following cases has refused to consider particular points raised before us upon the ground that such points had not been specifically set forth in writing in the reasons of appeal. In re Schneider, 17 C. C. P. A. (Patents) 952, 39 F. (2d) 278; Mas v. Root, 19 C. C. P. A. (Patents) 819, 54 F. (2d) 435; Southgate v. Greene, 19 C. C. P. A. (Patents) 1129, 57 F. (2d) 374; Derby Oil Co. v. White Star Refining Co., 20 C. C. P. A. (Patents) 816, 62 F. (2d) 984.
In Southgate v. Greene, supra, this court said:
Finally, appellant insists that he had a right to inspect the whole of Greene’s 1926 application. If this were a matter in which we might take jurisdiction, as to which we express no opinion, it would not be possible for us to do so, as appellant has assigned no error in that respect in his reasons for appeal.
This court, in the exercise of its customs jurisdiction, in the case of United States v. Brenner Co., 19 C. C. P. A. (Customs) 105, T. D. 45243, said:
*1001 The office of an assignment' of error is to enable the court and opposing counsel to see on what points the appellant’s counsel intend to ask a reversal of the judgment and to limit the discussion to these points. * * *
The majority opinion makes a statement that is surprising to me. It is as follows: “ This court is not disposed to apply, in these cases, the rigid and inflexible rules as to assignments of error sometimes applied by the courts in other proceedings.” Later in the opinion it is stated that “ Such expressions as appear in the opinions of this court with reference to the office of an assignment of error, in the exercise of the customs jurisdiction of the court, are not thought to be applicable to patent appeals, such as that now before us, the statutory authority being vastly different in the two jurisdictions.”
With reference to the language first quoted, I would observe that in courts of general jurisdiction assignments of error are usually governed by rules of court and not by statute, and such courts may, under their rules, exercise a discretion in considering plain errors, appearing upon the record, though not assigned. Such is the rule in the Supreme Court of the United States. Mahler v. Eby, 264 U.S. 82 . This court, however, in our patent jurisdiction has no such power because the statute expressly prohibits our revising a decision of the Board of Appeals for a reason not specifically assigned.
Inasmuch as courts of general jurisdiction are not bound by an "inflexible rule such as governs this court, therefore the cases in which such courts apply the rule for which I here contend are especially pertinent.
The quotation from the majority opinion with respect to cases arising under our customs jurisdiction is also surprising to me. There is a radical difference in the law governing our respective customs and patent jurisdictions. In our customs jurisdiction the statute provides that an application for review by this court of a decision of the United States Customs Court shall contain “ a concise statement of errors of law and fact complained of ”, but there is nothing in the statute prohibiting this court from considering an error not assigned, while in our patent jurisdiction we are expressly prohibited from revising a decision of the Board of Appeals of the Patent Office upon a reason of appeal not specifically set forth in writing. Therefore our jurisdiction in patent appeals is more limited than is our jurisdiction in considering appeals from the Customs Court, and the cases in our customs jurisdiction applying the rule (where our jurisdiction does not prohibit our making exceptions to said rule) are especially pertinent.
In the consideration of patent appeals we are, by statute, much more limited in considering errors than are courts of general jurisdiction in considering appeals before them, and much more limited than is this court in the exercise of our customs jurisdiction.
*1002 For these reasons I am utterly unable to understand upon what theory the court holds that we, in the. exercise of our patent jurisdiction, may be more liberal in considering errors than courts of general jurisdiction or this court in the exercise of its customs jurisdiction.
It is my opinion that a general reference to reasons given by Patent Office tribunals is not a compliance with the statute, for it was never intended that the court should be compelled to examine and ascertain all of the reasons that may have been given by the Board of Appeals of the Patent Office for its action, but the reasons complained of must be specifically stated in the reasons of appeal. If such a reason of appeal as that above quoted shall be held to be sufficient to cause this court to reverse the board, it seems to me that hereafter appellants to this court will content themselves with similar .general reasons of appeal, without this court or opposing counsel .having any real knowledge of what points actually are relied upon by appellant for reversal, and it will mean a very radical change in the practice that has been consistently followed for over half a century.
These observations are particularly pertinent with respect to the case at bar, for not only is the point upon which the majority reverses the decision of the board not specifically pointed out in the reasons of appeal, but it is not even mentioned in appellant’s brief. On the ’ contrary, the brief sets out the reasons of appeal relied upon, and the assignment hereinbefore quoted is not one of those set out. •Furthermore, under the heading “ The question to be decided ”, the .brief states:
Tlie issue presented by these reasons of appeal, for decision by this court, is whether a rejection of the claims upon a patent issued on a copending application may be sustained, when such patent does not claim the rejected invention, and the applicant has made oath to facts showing that the invention, in so far as it is disclosed in the patent, was completed by him prior to the patentee’s filing date.
Even if the reason of appeal might, by a most liberal construction, be deemed sufficient to raise the point upon which the majority reverses the board, the foregoing quotation from appellant’s brief clearly shows that appellant never contemplated raising such point. This is further shown by later portions of the brief in which it is argued that Putnam is not a proper reference, after which the following is found:
* * * We submit, therefore, that it is most improper to build up on evidence of prior invention, by adding to it the showings of patents in the prior art. * * *
Here is a clear implication that appellant does not contend that the elements of the claims involved are not shown in the references, but that it was improper to combine them as was done by the board.
*1003 Furthermore, appellant’s brief states:
* * * The rejection is based upon the theory that the Putnam patent establishes Putnam, prima faoie, as the prior inventor of the general combination of a rim, hub, brake drum, and spoke members rigidly connected to the rim and detachably connected to the brake drum. If Putnam is the prior inventor of this general combination, the rejection may be well founded. If, however, the applicant, and not Putnam, is the prior inventor of the general combination, the rejection must fail. * * * (Italics ours.)
Finally, under the heading “ Conclusion,” appellant’s brief states:
We maintain, therefore, that the Board of Appeals was in error in rejecting' the six claims of this Wagenhorst application upon the Putnam patent. That patent could only have effect as evidence of prior invention by Putnam. Putnam did not claim the rejected invention and, therefore, an affidavit under rule 75 was permissible. Such affidavit was presented and established the completion of the rejected invention, in so far as disclosed by Putnam, prior to Putnam’s filing date. In view of this affidavit, it is no longer possible to say that the Putnam patent is evidence of prior invention by Putnam over Wagenhorst. Therefore, the rejection must fall, and the Putnam patent should have been eliminated as a reference and the claims allowed.
Here again it is made clear that appellant does not rely upon the point upon which the majority bases its reversal of the board with respect to said claims 8 and 10.
With respect to the oral argument before us, it is my recollection that the point upon which the majority reverses the board was not even mentioned; certainly it was not argued.
It is my opinion that the court should not, as a matter of sound practice and policy, go out of its way to search for errors not pointed out either in the reasons of appeal or in the brief of counsel.
With regard to my second ground of dissent, it is my opinion that the Board of Appeals correctly held that the element upon which the majority reverses the board is disclosed by the reference Trout. The pertinent language in claims 8 and 10 with reference to this element is as follows:
* * * tbe inner portion of each member engaging the brahedrum at radially spaced points and being spaced from the drum bedioeen sitch points, bolts extending through the drum and the inner portions of said members at the l>arts of the latt.er which are spaced from the drum, and nuts screwed on the bolts. * * *. (Italics ours.)
The majority opinion holds that the reference Trout does not disclose “ any such structure as appellant has disclosed and claimed in his connection of drum and connectors, in spaced relation to each other.”
In my judgment the drawings of the Trout patent show two-point contact between the metal segments 21 and the hub flanges 11. This two-point contact results from the rib embodied in each of said segments at the point opposite said flanges. In this rib is a perforation through which the stud bolt passes, and this perforation is depressed to receive tb e convex surface of the ball nut 14. It is apparent that *1004 the periphery of this perforation does not lie in the same plane as the outside edges of the rib. Therefore, when the ball nut is tightened, there is the same condition of clearance between the segment and the hub flange at the point where the bolt passes as obtains in the disclosure of appellant and will result in the same tension being-exerted upon the nut to retain it in position after it is once tightened.
Appellant’s counsel apparently had the same view with reference to this matter because, if he had entertained the view expressed in the majority opinion, he certainly would not have ignored it in his reasons of appeal, in his brief, and in his oral argument before us.
Furthermore, as hereinbefore observed, appellant’s brief contains the following:
.* * * if Putnam is tlie prior inventor of this general combination, the rejection may be well founded. * * *
This statement is inconsistent with the thought that appellant ever contemplated the point upon which the reversal of the board by the majority is based.
Finally, the majority opinion contains the following:
* * * These claims, as will be observed, are based upon a structural feature which consists in forming that portion of each connector, where it is bolted to the brakedrum, in such a manner that the central portion thereof is raised and does not come in contact with the side wall of the brakedrum. As stated in claim 10, the connector is there “ spaced from the drum,” and the connecting bolts extend through the connectors and drum at points “ which are spaced from the drum.” This feature gives the highly useful result of retaining the nuts upon said connecting- bolts in much the same manner as if they were retained by lock washers.
If an element of this kind makes patentable a combination which, without such element, would not be patentable, then it would seem that the placing of a simple lock washer upon each of the bolts for the purpose of permanently retaining the nuts in place would likewise make a combination patentable which otherwise would be un-patentable. I do not think that the majority would have reversed the board on claims 8 and 10 if a simple lock washer had been described instead of the structure accomplishing the same purpose disclosed in the .application of appellant, for in such case it would be clear that there was not such coaction between said lock washers ’and the other elements of the combination as to bring the claims within the rule of patentable combinations. Likewise I am of the opinion that there is no such coaction of the element of spaced relation of the connectors and drum with the other elements of the claims as to render the combination patentable.
In the case of In re Germantown Trust Co., 19 C. C. P. A. (Patents) 1140, 51 F. (2d) 365, we held that:
* * * A combination to be patentable as sucli must disclose a novelty of cooperation between its elements which produces a new result and amounts to *1005 invention, and the mere fact that' some elements are themselves novel and possibly patentable as individual elements does not render the combination containing them patentable in the absence of such novel cooperative relation in the combination itself.
In my opinion the decision of the Board of Appeals should be affirmed as to all of the claims on appeal.