Interference No. 103,036
v. Coleman Instruments, Inc., 255 F. Supp. 630, 150 USPQ 227
(N.D. Ill. 1966), aff'd 385 F.2d 391, 155 USPQ 369 (7th Cir.
1967):
By disclosing in a patent application a
device that inherently performs a function,
operates according to a theory, or has an
advantage, a patent applicant necessarily
discloses that function, theory or advantage
even though he says nothing concerning it.
In In re Smythe, 480 F.2d 1376, 1385, 178 USPQ 279, 285-286 (CCPA
1973), the court stated that the forgoing principle applies to
the description requirement under 35 U.S.C. § 112.
That the Burroughs et al. specification contains a
sufficient disclosure is also consistent with the testimony of
experts relied by the opposing parties.
Both Drs. Feder and Salkind, witnesses under the
control of the party Cataldi et al., testified that the term
nonconductive meant thermally nonconductive or electrically
nonconductive.
Mr. Hein, a witness for the party Cataldi et al.,
testified at CR 1195 that if a tester mechanism (a battery
voltage indicator) were properly designed one could avoid a heat
sinking problem and obtain an accurate good/bad type reading.
Such design alterations would include reducing the scale of the
sensor to compensate for heat sinking, varying the resistance of
the heating element, or the taper of the element to control the
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