RICH, Judge.
This appeal from the affirmance of the rejection of application Ser. No. 446,301, filed July 28, 1954, for “Color Image-Reproducing Apparatus,” raises a single question as to the sufficiency of disclosure under 35 U.S.C. § 112.
The drawing of the application is a single sheet showing a color TV receiver in the form of a block diagram consisting, except for symbols representing the antenna, three diodes, and three resistors, of 18 “blocks” or rectangles lettered to indicate various circuits making up the receiver. The connections between these blocks are shown and their connections to antenna, ground, and the like.
The sole question in the case arises with respect to the block which is lettered “Sampling-Sawtooth-Signal Generator.” It bears the reference character “25.” The specification refers to it as “a sampling saw-tooth signal generator 25 of conventional construction for developing across resistors 26, 27, 28 signals representative of the time intervals during which the magnitudes of positive saw-tooth sampling signals are less than the output signals of the signal combiner.” [Emphasis ours.] The specification also states: “The saw-tooth signal generator 25 preferably has an operating frequency higher than an essential minimum of twice the highest frequency color signal component to be translated, for example, higher than 2 megacycles.” [Emphasis ours.]
The sole issue is the adequacy of this disclosure of the saw-tooth generator 25. What raises the question of adequacy is the frequency at which the specification says it is to operate, higher than 2 me.
[252]*252The record is very abbreviated. It appears to have been limited to parts bearing on this issue and contains only part of the final rejection, a request for reconsideration (in part) with which were filed pages from certain publications and the applicant’s affidavit, followed immediately by the appeal to the board, the examiner’s answer (in part), and the board opinion (in part). The omissions might have shed some light on how the prosecution actually progressed and we may have an unrealistic picture of it. But from what we have it is clear that the examiner’s final rejection held the specification “deficient in the disclosure of the generator” and therefore not in compliance with section 112, because the disclosure “requires that the saw-tooth oscillator operate at two megacycles,” the examiner stating “Applicant has not indicated what oscillator circuit may be used.”
Following final rejection, applicant submitted to the examiner “Proceedings of The Radio Club of America, Inc.,” Vol. 26, No. 1 (1949) referring to pages 6 and 7, Figs. 1, 2, and 3, and page 602 of a text, “Radio Engineering” by Terman (1947). The record contains only Terman page 602 and the title page and pages 6 and 7 of the Radio Club publication.1 From the Radio Club publication we have three circuit diagrams on which none of the values for the circuit components are given and no description. The text page contains a brief description (referring to some figures not in the record) and three figures (a) of a “Sawtooth-wave Generator” circuit containing one triode, two batteries, two capacitors, two resistors and the designation “pulse input,” no component values being given, and (b) two oscillograms of “Grid voltage” and “Plate voltage.” The description in the record concludes, “This arrangement is capable of generating sawtooth waves at frequencies much higher than gas tubes can be operated, and likewise gives a positive control of the frequency of the saw-tooth wave.”
In submitting this material, applicant’s attorney referred to the Radio Club publication as disclosing a 100 kilocycle saw-tooth wave generator, which is-one-twentieth the frequency of what the specification calls for as a minimum.
We have been unable to find anything in the record or briefs which so much as suggests at what frequencies the “Radio’ Engineering” generator is capable of operating.
Relying on these disclosures, the applicant, Hirsh, filed an affidavit in which he qualified himself as an expert in the relevant art by virtue of 30 years experience, which we need not question. He then said—and this is all he said which is relevant:
“For at least the last fifteen years it has been well within the competence and knowledge of the average electronics engineer working within the fields of television and radar to design saw-tooth oscillators operable at the frequency indicated in my above-entitled application. For example the constructions indicated in my attorney’s Remarks on October 22, 1957, with reference to the ai'ticle in the Proceedings of the Radio Club of America, Volume 26, No. 1, 1949, and in Radio Engineering by Terman, 1947, may be utilized by such an engineer for that purpose and he would have no difficulty making such constructions work at the frequencies I have indicated in my application.” [Emphasis ours.]
It will be observed that there is lacking here, as it is lacking throughout this case, any assertion that the publications disclose a saw-tooth wave generator op-
[253]*253erable at or above 2 me. The Hirsch affidavit also said “Saw-tooth oscillators have been conventional elements of such [TV and radar] equipment for two decades.” That is of no importance here, however, because it was not the examiner’s objection that saw-tooth oscillators were not known but only that such oscillators or generators operable at 2 me., in such equipment as applicant’s, were not known. In his Answer on the appeal the examiner said:
"The specification states * * * that the frequency of the sawtooth generator has a frequency greater than two megacycles.
“A search was made in the literature available in Division 16 (now in Div. 41) and in Class 250, sub-class 36 for a generator operable in this frequency range. The highest frequency found mentioned for such a generator was 200 kilocycles.
“Accordingly, the claims were again rejected on the ground of incomplete disclosure and made final.” [Last emphasis ours.]
It would be reasonable to suppose from the last paragraph that the examiner gave applicant at least two rejections on this ground. What he told applicant except in a portion of the final rejection we have no way of knowing because of appellant’s extreme abbreviation of the record, but from what we have been permitted to see we are of the opinion that the examiner made his reasons for the rejection sufficiently clear to comply with 35 U.S.C. 132. In “stating the reasons for such rejection” he said, inter alia, “All sawtooth oscillators are not operable at this frequency.” He also cited the decision of this court in In re Beach, 152 F.2d 981, 33 CCPA 815, which should have made it reasonably clear that the basis of the rejection was that from the disclosure one skilled in the art would not be able to practice the invention.
In affirming, the board said:
Free access — add to your briefcase to read the full text and ask questions with AI
RICH, Judge.
This appeal from the affirmance of the rejection of application Ser. No. 446,301, filed July 28, 1954, for “Color Image-Reproducing Apparatus,” raises a single question as to the sufficiency of disclosure under 35 U.S.C. § 112.
The drawing of the application is a single sheet showing a color TV receiver in the form of a block diagram consisting, except for symbols representing the antenna, three diodes, and three resistors, of 18 “blocks” or rectangles lettered to indicate various circuits making up the receiver. The connections between these blocks are shown and their connections to antenna, ground, and the like.
The sole question in the case arises with respect to the block which is lettered “Sampling-Sawtooth-Signal Generator.” It bears the reference character “25.” The specification refers to it as “a sampling saw-tooth signal generator 25 of conventional construction for developing across resistors 26, 27, 28 signals representative of the time intervals during which the magnitudes of positive saw-tooth sampling signals are less than the output signals of the signal combiner.” [Emphasis ours.] The specification also states: “The saw-tooth signal generator 25 preferably has an operating frequency higher than an essential minimum of twice the highest frequency color signal component to be translated, for example, higher than 2 megacycles.” [Emphasis ours.]
The sole issue is the adequacy of this disclosure of the saw-tooth generator 25. What raises the question of adequacy is the frequency at which the specification says it is to operate, higher than 2 me.
[252]*252The record is very abbreviated. It appears to have been limited to parts bearing on this issue and contains only part of the final rejection, a request for reconsideration (in part) with which were filed pages from certain publications and the applicant’s affidavit, followed immediately by the appeal to the board, the examiner’s answer (in part), and the board opinion (in part). The omissions might have shed some light on how the prosecution actually progressed and we may have an unrealistic picture of it. But from what we have it is clear that the examiner’s final rejection held the specification “deficient in the disclosure of the generator” and therefore not in compliance with section 112, because the disclosure “requires that the saw-tooth oscillator operate at two megacycles,” the examiner stating “Applicant has not indicated what oscillator circuit may be used.”
Following final rejection, applicant submitted to the examiner “Proceedings of The Radio Club of America, Inc.,” Vol. 26, No. 1 (1949) referring to pages 6 and 7, Figs. 1, 2, and 3, and page 602 of a text, “Radio Engineering” by Terman (1947). The record contains only Terman page 602 and the title page and pages 6 and 7 of the Radio Club publication.1 From the Radio Club publication we have three circuit diagrams on which none of the values for the circuit components are given and no description. The text page contains a brief description (referring to some figures not in the record) and three figures (a) of a “Sawtooth-wave Generator” circuit containing one triode, two batteries, two capacitors, two resistors and the designation “pulse input,” no component values being given, and (b) two oscillograms of “Grid voltage” and “Plate voltage.” The description in the record concludes, “This arrangement is capable of generating sawtooth waves at frequencies much higher than gas tubes can be operated, and likewise gives a positive control of the frequency of the saw-tooth wave.”
In submitting this material, applicant’s attorney referred to the Radio Club publication as disclosing a 100 kilocycle saw-tooth wave generator, which is-one-twentieth the frequency of what the specification calls for as a minimum.
We have been unable to find anything in the record or briefs which so much as suggests at what frequencies the “Radio’ Engineering” generator is capable of operating.
Relying on these disclosures, the applicant, Hirsh, filed an affidavit in which he qualified himself as an expert in the relevant art by virtue of 30 years experience, which we need not question. He then said—and this is all he said which is relevant:
“For at least the last fifteen years it has been well within the competence and knowledge of the average electronics engineer working within the fields of television and radar to design saw-tooth oscillators operable at the frequency indicated in my above-entitled application. For example the constructions indicated in my attorney’s Remarks on October 22, 1957, with reference to the ai'ticle in the Proceedings of the Radio Club of America, Volume 26, No. 1, 1949, and in Radio Engineering by Terman, 1947, may be utilized by such an engineer for that purpose and he would have no difficulty making such constructions work at the frequencies I have indicated in my application.” [Emphasis ours.]
It will be observed that there is lacking here, as it is lacking throughout this case, any assertion that the publications disclose a saw-tooth wave generator op-
[253]*253erable at or above 2 me. The Hirsch affidavit also said “Saw-tooth oscillators have been conventional elements of such [TV and radar] equipment for two decades.” That is of no importance here, however, because it was not the examiner’s objection that saw-tooth oscillators were not known but only that such oscillators or generators operable at 2 me., in such equipment as applicant’s, were not known. In his Answer on the appeal the examiner said:
"The specification states * * * that the frequency of the sawtooth generator has a frequency greater than two megacycles.
“A search was made in the literature available in Division 16 (now in Div. 41) and in Class 250, sub-class 36 for a generator operable in this frequency range. The highest frequency found mentioned for such a generator was 200 kilocycles.
“Accordingly, the claims were again rejected on the ground of incomplete disclosure and made final.” [Last emphasis ours.]
It would be reasonable to suppose from the last paragraph that the examiner gave applicant at least two rejections on this ground. What he told applicant except in a portion of the final rejection we have no way of knowing because of appellant’s extreme abbreviation of the record, but from what we have been permitted to see we are of the opinion that the examiner made his reasons for the rejection sufficiently clear to comply with 35 U.S.C. 132. In “stating the reasons for such rejection” he said, inter alia, “All sawtooth oscillators are not operable at this frequency.” He also cited the decision of this court in In re Beach, 152 F.2d 981, 33 CCPA 815, which should have made it reasonably clear that the basis of the rejection was that from the disclosure one skilled in the art would not be able to practice the invention.
In affirming, the board said:
“Where a device is presented in an application essentially only by means of a labeled rectangle, with no other description or illustration of specific circuitry, it must be one of known conventional nature in the prior art in order that such presentation be regarded as a sufficient disclosure. Ex parte Sziklai, 110 USPQ 325. [Bd.]
******
“Merely to say that such apparatus-as in the periodical items could be modified to produce such frequency of operation, without definite and positive establishment that in the light of the circuit parameters involved this operation could be obtained, would seem to us to merely beg the question and fall far short of the adequacy of disclosure necessary to enable one skilled in the art to practice the invention at issue.”
We agree with this position. When the application was filed it is to be presumed that the inventor had completed the invention disclosed therein, in the sense, at least, of having a “complete idea of means,” to use the expression of Robinson on Patents. He would have, then, a complete idea of the specific circuitry to be included in his receiver at the position indicated by his labeled rectangle 25. If he could not cite any reference' in the literature establishing the “conventional” construction of his 2 me. sawtooth signal generator, as he asserted it to be, he should have been able to describe it to the examiner. If he was-not in a position to take one of the four very simple circuit diagrams cited, showing lower frequency (100 KC) generators, and supply the component values-(parameters) which would make it operate at the required frequency of 2 me. or higher, then he had not completed his-invention.
We agree with the view of the board that the applicant did not meet “the burden imposed upon him by what seems to us to be a reasonable criticism made by the examiner.” It was the examiner’s duty to compel a disclosure [254]*254which would enable those skilled in the art to practice the invention without having to design circuitry not shown to be readily available in the art.
As we said in In re Nelson et al., 280 F.2d 172, 184, 47 CCPA 1031, 1048,
“There always exists, on the part of some people, a selfish desire to obtain patent protection without making a full disclosure, which the law, in the public interest, must guard against. Hence section 112 calls for description in ‘full, clear concise, and exact terms’ and the ‘best mode’ requirement does not permit an inventor to disclose only what he knows to be his second-best embodiment, retaining the best for himself.”
That policy would not be furthered by reversing the rejection in this case, wherein applicant has told neither what the construction of his generator is nor where a description of it may be found in the prior art. The question raised by the examiner seems to have uncovered a fatal defect in the application. It may be that the generator in question was well known at the time the application was filed, but if it was, we have no way of knowing it from the record before us. The decision of the board is affirmed. Affirmed.