text:
    Janice PARR, Individually and as Administrator of the Estate of David W. Parr, Deceased, Plaintiff, v. GREAT LAKES EXPRESS COMPANY, a foreign corporation, Defendant and Third-Party Plaintiff-Appellant, v. CHICAGO WESLEY MEMORIAL HOSPITAL, an Illinois not-for-profit corporation and Robert Thonney, Third Party Defendants-Appeilees.
    Nos. 72-1011 and 72-1759.
    United States Court of Appeals, Seventh Circuit.
    Argued Jan. 23, 1973.
    Decided July 16, 1973.
    Rehearing Denied Aug. 7, 1973.

      Michael E. Dowd, Philip J. McGuire, Chicago, 111., for appellant.
    John M. Moelmann, D. Kendall Griffith, Chicago, 111., for appellees.
    Before KILEY, FAIRCHILD and PELL, Circuit Judges.
   PELL, Circuit Judge.

This is an appeal from the dismissal of a third-party complaint by Great Lakes Express Company in which it sought judgment against Chicago Wesley Memorial Hospital and its employee Robert Thonney. The substantive aspect of the case revolves around the active-passive negligence indemnity law of the State of Illinois.

Initially there was raised in No. 72-1011 a question of the propriety of the appeal dependent upon whether the order of dismissal created appealable finality under Rule 54(b), Fed.R.Civ.P. Prior to the hearing in this court, the original action from which the third-party complaint developed was settled, leaving the status of the litigation in the district court as unarguably final. We do not find it necessary to decide the appeala-bility question raised in No. 72-1011 as the appeal is properly here in any event and the two appeals have been consolidated for consideration and decision.

The original suit below had sought damages from Great Lakes on the basis that plaintiff’s decedent had died as the result of being hit by a truck operated by an employee of Great Lakes. Parr, the decedent, had been at the time an employee of Wesley Memorial and we assume that his Administrator would have been confined to workmen’s compensation relief only insofar as the Hospital or a fellow employee was concerned.

The dismissed third-party complaint is in two counts. The first count proceeds on the theory that certain specifically alleged acts of negligence on the part of Wesley Memorial, acting through its employee, were the sole and proximate cause of Parr’s death. We do not understand the function or purpose of this count. If the accident was solely and proximately caused by someone else’s negligence this would seem to be a complete defense to the original action and would not seem to be the basis of a third-party action, which presupposes liability on the part of the original defendant which he is attempting to pass on to the third-party defendant. Although Count I does reflect by its specific allegations the type of proof which presumably Great Lakes would have proffered in support of Count II, which asserted the active-passive negligence distinction, we must conclude that it was properly dismissed.

Count II, including the allegations incorporated by reference from Count I, insofar as material here alleges the following. Wesley Memorial had leased a truck for delivery which had been parked on a Chicago street by Thonney. At the time of the accident, the Great Lakes driver allegedly “was in the process of backing [a Great Lakes truck] under the direction, supervision and control of Third-Party Defendant, Robert Thonney, in an easterly direction, to come up to and connect with the vehicle leased by [Wesley Memorial].” The specific acts of negligence charged in Count I against the Hospital and Thon-ney, for some reason, are not incorporated by reference in Count II. The third-party complaint further alleges that any negligence established in the Parr action against Great Lakes would be passive or secondary whereas primary or active acts of negligence would be established against the Hospital and Thonney.

Although Count II could never be said to be a candidate for any book of model pleadings, we must examine it in the context in which we find it, i. e., as having been dismissed before trial by the district court. That court simply granted the motion to dismiss without specifying the reasons therefor. However, it appears fair to conclude that the court dismissed the third-party complaint on the basis that it failed to state a claim upon which relief could be granted, pursuant to Rule 12(b), Fed.R. Civ.P. We need not determine whether federal or state law is applicable to this particular phase of the matter as there is substantial accord between the two on the appropriate treatment. The complaint must be construed liberally, with all factual allegations deemed to be true and with doubts to be resolved in favor of the pleader. Jung v. K. & D. Mining Co., 260 F.2d 607, 608 (7th Cir. 1958). Dismissal is not favored unless it appears that in no event would the pleader be able to prove an actionable claim. Miller v. DeWitt, 37 Ill.2d 273, 287-288, 226 N.E.2d 630, 640 (1967).

Illinois Law

For at least a century, Illinois courts have repeatedly stated that contribution between joint tortfeasors is not allowed. See, e. g., Miller v. DeWitt, supra at 289, 226 N.E.2d at 641; Nelson v. Cook, 17 Ill. 443 (1856). However, possibly to alleviate the harsh results visited upon a secondarily liable party by this prohibition, the courts have evolved certain doctrines, notably, the concept of implied indemnity or “active” versus “passive” negligence, in which an indemnitor, through his active or primary negligence, creates legal liability for the indemnitee, who is only passively or secondarily liable. If a party can prove himself to have been merely “passively” negligent, he can shift the entire burden for the commission of the tort to the “active” tortfeasor.

Not surprisingly, because the concepts of “active negligence” and “passive negligence” are imprecise and are difficult to apply to a given factual situation, the case law provides uncertain guidance.2 However, one recent decision cited by Great Lakes, Carver v. Grossman, 6 Ill. App.3d 265, 285 N.E.2d 468 (1972), appeal pending in the Illinois Supreme Court, is factually similar to the case before us and thus is helpful here.

In Carver, the original plaintiff was an employee at a service station and was working in front of a customer’s car. The hood of the car was up and, apparently at the direction of Bishop, the station operator, the customer entered the car and started the motor while the car was in gear. The car moved forward, severely injuring the plaintiff, Carver. Carver sued Grossman, the administrator of the customer’s estate, and the administrator then filed a third-party action against Bishop. After a bench trial on the third-party action (the original action was settled), the trial court held that third-party defendant Bishop had been guilty of active and primary negligence while the deceased customer had been guilty only of passive negligence. The Appellate Court affirmed and pointed out that Bishop controlled the entire operation of the service station; he had placed the automobile in the service stall; he had left the key in the ignition with the car in gear; he had failed to put blocks in front of the vehicle’s wheels; and, most importantly,. Bishop had instructed the customer to put the car into motion. Thus, Bishop’s wrongful conduct, characterized as “active,” was primarily in giving a verbal direction to another person and also in failing to take certain safety precautions.

In addition to the difficulties inherent in the active-passive concept, the deci-sional law also seems unclear as to whether all “passive” tortfeasors may recover over or whether only some may. Under one view of the cases, until the opinion in Reynolds v. Illinois Bell Telephone Co., 51 Ill.App.2d 334, 201 N.E.2d 322 (1964), Illinois courts allowed recovery only where the indemnitee’s liability had been derived from the indemnitor and the parties had had some legal relationship prior to the occurrence of the liability-creating incident. However, in Reynolds, despite the absence of a preexisting legal relationship between the parties, the court held that the third-party complaint stated a cause of action for indemnity and that the third-party plaintiff was entitled to a trial on the merits to determine the nature of the respective parties’ negligence. A 1967 decision, Sargent v. Interstate Bakeries, Inc., 86 Ill.App.2d 187, 229 N.E.2d 769 (1967), discussed and reaffirmed Reynolds. And then, in 1968, the Illinois Supreme Court spoke to the issue, Muhlbauer v. Kruzel, 39 Ill.2d 226, 234 N.E. 2d 790 (1968). The parties, however, are not in agreement as to the impact of that case on the case before us.

The Hospital and Thonney read Muhl-bauer as rejecting the Reynolds-Sargent liberalized view of implied indemnity. The third-party defendants urge that the Illinois Supreme Court in Muhlbauer emphasized and narrowed the “pre-exist-ing relationship” requirement. Under their interpretation, Illinois has, in effect, retreated to the position that only those “passive” tortfeasors who incurred liability because of duties and relationships created by, for example, the re-spondeat superior doctrine or the Illinois Structural Work Act may successfully sue under the implied indemnity theory. Their primary criticism of Great Lakes’s complaint and their primary argument for our affirming the district court’s dismissal is that Great Lakes failed to allege such a pre-existing relationship.

We think that the third-party defendants read too much into Muhlbauer. In that case, the original plaintiff sued Kruzel, the operator of a food market, alleging, inter alia, that Kruzel had arranged for a clown to stand along the sidewalk in front of the defendant’s store for the purpose of promoting Kruzel’s business. Plaintiff further charged Kruzel with acts of negligence in the arrangement; allegedly as a result of such negligent acts, plaintiff was knocked down and injured. Kruzel denied that he had hired or caused the clown to be there or that the clown was doing anything to promote Kruzel’s business or any product sold therein. Kruz-el filed a third-party complaint against Wilson & Company, alleging that the acts specified in the original complaint had been performed by Wilson who had hired the clown and that any wrongful acts allegedly committed by Kruzel “were passive acts only and not active.”

Kruzel’s third-party complaint was dismissed on motion, and the dismissal was affirmed by the Appellate Court. The Illinois Supreme Court, in an opinion by Justice Schaefer, also affirmed, stating:

“We recognize that the policy of section 25(2) [permitting third-party pleadings] can be frustrated by a rigid and formal approach to the pleadings; nevertheless, a third-party complaint must disclose some relationship upon which a duty to indemnify may be predicated. To establish such a relationship between Wilson and himself, Kruzel, in his statement of facts in this court, augments the allegations of his pleadings by adopting the view of the trial judge that the clown was acting for the benefit of both Kruzel and Wilson, and was present to induce customers to come into Kruzel’s store. If those facts had been alleged by Kruzel it would be possible to discern potential relationships that would support a duty on the part of Wilson to indemnify Kruzel.
“But no such facts were alleged, and, as the appellate court pointed out, the ‘amended third party complaint demonstrates no relationship or circumstance’ that would give rise to a duty to indemnify. Kruzel’s effort appears to have been to divorce himself completely from any connection with Wilson. His pleadings do not admit that he sold a product distributed by Wilson. . . . [His] . . . allegation [that his acts were merely “passive” but that Wilson’s wrongful acts were “active”] asserts only the pleader’s conclusion as to legal characterizations, without any facts to support that conclusion.” 39 Ill.2d at 231, 234 N.E.2d at 793.

Thus, the Illinois Supreme Court has declared that the bare assertion of the passive nature of one’s negligence is inadequate; one must allege supportive facts. Further, a pleader must allege facts so that “it would be possible to discern potential relationships that would support a duty on the part of” a third-party defendant to indemnify the third-party plaintiff.

This latter point causes the knotty interpretative problems to which we adverted earlier. From the court’s use of the phrase’ “possible to discern potential relationships,” we may infer that a limited degree of lack of specificity in the pleadings is not fatal. The court intimated that Kruzel could have stated a cause of action if he had but made the proper allegations. This suggests that the interpretation of Muhlbauer offered by the Hospital and Thonney is too sweeping; the court could have, but did not, state that only relationships such as those created by the respondeat superior doctrine and by statutes such as the Structural Work Act would sustain an implied indemnity claim. Therefore, while we agree with the third-party defendants that the court obviously was wary of the implications of the Reynolds-Sargent decisions — though it did not explicitly disapprove those cases — we are unsure what it proposed as an alternative. We note that one Illinois practitioner apparently reads Muhlbauer as not rejecting Reynolds' and Sargent:

“What such a required ‘relationship’ must be is not explained in the opinion. However, logic and reason [seem] to suggest that such a relationship if properly pleaded (which was not the case in Muhlbauer) possibly might be nothing more than the involvement of the two parties (third party plaintiff and third party defendant) in the causation of injury to the plaintiff under circumstances that clearly indicated a clear distinction in the quality of their misconduct.” Kis-sel, Theories of Indemnity as Related to Third Party Practice, 54 Chicago Bar Record 157, 160 (1973).

Great Lakes in its Count I, as apparently did third-party plaintiff Kruzel in Muhlbauer, purported to relieve itself of any causation relationship with the accident. Count II, however, would be consistent with a joint causation relationship with the active-passive differentiation being brought into play.

Application of the Relevant Law

Our reading of Count II persuades us that we would not be justified in holding as a matter of law either that Great Lakes was “actively” negligent or that it was equally as culpable as the third-party defendants. Either of those conclusions would defeat Great Lakes’s claim. The fact that its truck was moving does not, by itself, establish that Great Lakes was an “active” tortfeasor. “[M]ere motion does not define the distinction between active and passive negligence.” Trzos v. Berman Leasing Co., 86 Ill.App.2d 176, 183, 229 N.E.2d 787, 791 (1967). See also Gulf, Mobile & Ohio R. Co. v. Arthur Dixon Transfer Co., 343 Ill.App. 148, 157-158, 98 N.E.2d 783, 788 (1951). Because the question is close, we think that it would be preferable to determine the relative degrees of fault of the parties on the basis of evidence at a trial rather than on the pleadings alone at the motion-to-dismiss stage. See generally the discussion in Trzos, supra, 86 Ill.App.2d at 182, 229 N.E.2d at 791. The recent Carver v. Grossman decision, supra, strongly supports our decision.

The principal obstruent factor to Great Lakes’s successful route to a trial on the merits is found in the abbreviated nature of Count II of its third-party complaint, essaying as it does not far beyond the status of being conclusion-ary. We have already indicated that taken by itself Count I, although denominated as a part of the third-party complaint, actually amounts only to an affirmative defense to the main action. While pleaders apparently are frequently, and unnecessarily, afraid that they somehow will concede some aspect of their ease, it would seem clear that a third-party plaintiff by definition has “to be negligent in some degree at least.” Kissel, supra at 157.

On the other hand, we are not unmindful that a complaint should not be dismissed merely because its allegations do not support the legal theory on which the pleader intends to proceed. 5 Wright & Miller, n. 1 supra, § 1357, at 602. Here, apparently the parties as well as the district court were looking at both counts when they discussed the question of sufficiency.

That the district court did do so is consistent with the liberal policy regarding amendment when a motion to dismiss is involved. “A dismissal under Rule 12(b)(6) generally is not on the merits and the court normally will give plaintiff leave to file an amended complaint. The federal rule policy of deciding cases on the basis of the substantive rights involved rather than on technicalities requires that plaintiff be given every opportunity to cure a formal defect in his pleading.” Wright & Miller, supra, § 1357, at 611-12. Although it is not indicated that Great Lakes was afforded an opportunity to amend, the. manner in which the district court considered the specific charges of active negligent conduct on the part of the Hospital and Thonney as alleged in Count I would seem to obviate any problem in this respect.

“The gravamen of the allegations of the third party complaint is that Wesley through Thonney negligently directed and supervised the agent of Great Lakes in backing up and joining the Great Lakes truck with the Wesley truck, thereby causing the fatal injury. The complaint further alleges that Wesley through Thonney negligently called to and directed plaintiff’s intestate to come to and stand in a place of danger. These factual allegations sufficiently develop the necessary relationship upon which indemnity may lie.” [Emphasis added.]

The district court had no difficulty finding an alleged basis for possible proof of active negligence on the part of Wesley Memorial and Thonney. Likewise, the court determined, with Muhl-bauer in mind, that there was a requisite relationship between the parties, stating:

Having gotten Great Lakes over the “relationship” hurdle, the district court then found against it because its driver had actually been backing the truck, that is, his hands had been the ones “on the steering wheel.” But, as we have pointed out, motion per se is insufficient to deprive a pleader of passive or secondary status. On the basis of the allegations of direction, supervision, and control and the indicia of active negligence on the part of the Hospital and Thonney alleged in Count I which the district court could and did consider, we are unable to say that Wesley through Thon-ney had not so completely preempted the matter of exercising due care toward Parr as to relegate the negligence of the Great Lakes driver to a secondary status.

The district court stated that Great Lakes had no right to rely entirely on Thonney’s assistance. However, we are not now concerned with whether the Great Lakes driver was relieved of all duty of due care but merely with whether Wesley Memorial’s supervision and control over all activities at the ae-eident site was sufficient for us to conclude beyond a doubt that no set of facts with regard to that supervision and control could be proved in support of the claim that the driver’s negligence was only secondary and passive. Conley v. Gibson, 355 U.S. 41, 45-46, 78 S.Ct. 99, 2 L.Ed.2d 80 (1957).

Applying the test of whether, in the light most favorable to Great Lakes and with every doubt resolved in its behalf, the third-party complaint states any valid claim for relief, Wright & Miller, supra, § 1357, at 601, we are unable to say that it does not.

For the reasons hereinbefore set out, we reverse the dismissal and remand the cause for further proceedings consistent with this opinion. The matter not being before us, we express no opinion, however, on the extent of damages in the event Great Lakes should prove its claim. See Kissel, supra, at 157, 163.

Reversed and remanded.

      . 5 Wright & Miller, Federal Practice and Procedure: Civil § 1343 (1969).

      . Prosser asserts that the same “specious” argument that supports tiie prohibition of contribution between joint tortfeasors logically also applies to indemnity cases. Prosser On Torts § 51, at 311 (4th ed. 1971). See also Judge Dempsey’s frank and vigorous criticism of Illinois indemnity law in Sargent v. Interstate Bakeries, Inc., 86 Ill.App.2d 187, 197-198, 201-202, 229 N.E.2d 769, 774-775, 776-777 (1967).

      . See Kissel, Theories oí Indemnity as Related to Third Party Practice, 54 Chicago Bar Record 157, 158-59 (1973).

      . It is possible that the Illinois Supreme Court’s decision in Carver will not even touch on the active-passive negligence aspect of that case. The important controversy seems to be the losing party’s charge that there was clear collusion and fraud by the original plaintiff and the winning third-party plaintiff.

      . “In determining whether to grant a Rule 12(b) (6) motion, the court primarily considers the allegations in the complaint, although . . . items appearing in the record of the case . . . may be taken into account.” 5 Wright & Miller, supra, § 1357, at 593.


source: Caselaw Access Project

author: MYRON L. GORDON, District Judge.

license: Public Domain

text:
    Francisco MILANDE, Petitioner, v. IMMIGRATION AND NATURALIZATION SERVICE, Respondent.
    No. 72-1529.
    United States Court of Appeals, Seventh Circuit.
    Argued Feb. 20, 1973.
    Decided July 5, 1973.
    John E. Owens, Jr., Park Ridge, 111., for petitioner.
    John L. Murphy, Chief, Government Regulations Section, Crim. Div., Bruce R. Heurlin, Atty., U. S. Dept, of Justice, Washington, D. C., James R. Thompson, U. S. Atty., William T. Huyck, Asst. U. S. Atty., Chicago, 111., for respondent.
    Before SPRECHER, Circuit Judge, GRANT, Senior District Judge, and GORDON, District Judge.

       Senior District Judge Robert A. Grant of the Northern District of Indiana is sitting by designation.

       District Judge Myron L. Gordon of the Eastern District of Wisconsin is sitting by designation.

   MYRON L. GORDON, District Judge.

The petitioner seeks review of a final deportation order of the Board of Immigration Appeals. That order was based on § 241(a)(2) of the Immigration and Nationality Act, 8 U.S.C. § 1251(a)(2), and upheld a determination by a Special Inquiry Officer that the petitioner, a nonimmigrant, had overstayed his temporary visa. This court’s jurisdiction is found in § 106(a) of the Act, 8 U.S.C. § 1105a(a).

The principal issue presented is whether a nonimmigrant alien facing deportation for overstay is entitled to the exemption provided by § 241(f) of the Act, 8 U.S.C. § 1251(f). We are also asked to decide whether § 241(f) is available where, as is alleged here, the true underlying basis for the deportation attempt is fraud and misrepresentation rather than overstay.

The petitioner, Francisco Milande, is a native and citizen of the Philippines. On August 14, 1969, he was issued a nonimmigrant visitor’s visa; on August 21, 1969, he and his wife entered the United States as visitors for pleasure, permitted to remain until November 21, 1969. Before expiration of this visa, an extension of the temporary stay was granted to May 20, 1970. No further requests for extensions were received.

On March 2, 1970, Mr. Milande filed a third preference visa petition pursuant to § 203 of the Act, 8 U.S.C. § 1153, as a first step in an attempt to adjust his presence to immigrant status. He allegedly was advised at that time that it was unnecessary to request another extension of his visitor’s visa pending determination of his application. A child was born to the petitioner and his wife in South Bend, Indiana, while the application was pending.

On November 23, 1970, the petition was approved. Mr. Milande received notice of approval by means of the Immigration and Naturalization Service’s Form 1-464A. He remained passive with respect to extending his temporary visa because he believed that Form I-461 would automatically be issued allowing him to remain lawfully in the United States until a new visa number became available. This form, however, was never issued.

During an investigation initiated prior to approval of the petition, the Immigration and Naturalization Service discovered evidence and obtained statements indicating that the petitioner had obtained his nonimmigrant visa by fraud. Deportation proceedings were contemplated on the basis of this information. When deportation proceedings were commenced, however, in April, 1971, they were based on overstay rather than fraud.

Mr. Milande moved to terminate the proceedings pursuant to § 241(f) and, alternatively, requested voluntary departure. On June 10, 1971, the Special Inquiry Officer found him deportable for overstay. On appeal, the Board of Immigration Appeals affirmed the finding of deportability and the denial of the motion to terminate, but it reversed that portion of the Special Inquiry Officer’s order which denied voluntary departure.

The petitioner contends that the board erred in refusing to allow him the benefits of § 241(f). That section, as interpreted in Immigration and Naturalization Service v. Errico, 385 U.S. 214, 217, 87 S.Ct. 473, 476, 17 L.Ed.2d 318 (1966),

“ . . . waives any deportation charge that results directly from the misrepresentation regardless of the section of the statute under which the charge was brought, provided that the alien was otherwise admissible at the time of entry.”

The petitioners in Errico were immigrants, not temporary visitors. The respondent urges, and the board held, that § 241(f) is not available to nonimmi-grants but only to immigrants.

Section 241(f) has been held applicable in a deportation proceeding against a nonimmigrant where the deportation charge involves fraud. Muslemi v. Immigration and Naturalization Service, 408 F.2d 1196 (9th Cir. 1969). The court of appeals for the ninth circuit had also held that § 241(f) was available to a nonimmigrant charged with overstay where it was shown that the nonim-migrant visitor’s visa had been obtained by fraudulent concealment of an intention to remain in this country permanently. Vitales v. Immigration and Naturalization Service, 443 F.2d 343 (9th Cir. 1971). Because the petitioner in Vitales left the country voluntarily after the Supreme Court granted certiorari, Immigration and Naturalization Service v. Vitales, 404 U.S. 983, 92 S.Ct. 450, 30 L.Ed.2d 366 (1971), the Supreme Court vacated the judgment and directed dismissal. Immigration and Naturalization Service v. Vitales, 405 U.S. 983, 92 S.Ct. 1245, 31 L.Ed.2d 449 (1972).

While not technically reversing Vi-tales because it believed the dismissal negated Vitales’ precedential status, the court of appeals reversed the position expressed therein in the recent case of Cabuco-Flores v. Immigration and Naturalization Service, 477 F.2d 108 (9th Cir., decided April 13, 1973). In Cabu-co-Flores, the court did not consider the immigrant-nonimmigrant distinction controlling on the question of whether § 241(f) is applicable in an overstay charge against a nonimmigrant. Instead, it sustained deportation orders, on facts very similar to the ones at bar, on the ground that

“ . . . the charge of remaining' after the expiration of the period permitted by each petitioner’s visitor’s visa was not waived by section 241(f) because it did not depend directly or indirectly upon the asserted misrepresentation in obtaining the visa.” 477 F.2d at 110.

We agree with the ruling in Cabuco-Flores. To prove overstay, the respondent need only show a nonimmigrant’s admission for a temporary period, that the period has elapsed, and that the nonimmigrant has not departed. Any fraud or misrepresentation at time of entry is irrelevant to the charge of overstay; § 241(f) is available only when the fraud is relevant to the charge for which deportation is sought. Muslemi v. Immigration and Naturalization Service, 408 F.2d 1196, 1198 (9th Cir. 1969); Tsaconas v. Immigration and Naturalization Service, 397 F.2d 946, 948 (7th Cir. 1968).

A clear showing of overstay was made here. The petitioner’s extended temporary visa expired on May 20, 1970. Deportation proceedings were begun on April 5, 1971, at which time the petitioner had not departed. We conclude, therefore, that the waiver provisions of § 241(f) were properly held inapplicable by the board in this case, although we do not hold, as the board apparently did, that § 241(f) is never available to non-immigrants. Whether we would agree with the court of appeals for the ninth circuit that the benefits of § 241(f) are available when a nonimmigrant is sought to be deported for fraudulent entry rather than overstay will not be decided in the absence of a record directly presenting that situation.

Mr. Milande also argues that the true basis for the deportation proceedings challenged here is fraud uncovered during the pending of his petition for third preference. He urges that the overstay was formally relied on in an attempt to circumvent the availability of § 241(f). It is argued, therefore, that the proceedings should be treated as though based on fraud and the benefits of § 241(f) be made available.

We disagree. Contrary to his alleged expectations, Mr. Milande’s temporary visa had expired by the time the' government discovered the apparent fraud. We do not believe that the subsequent discovery of evidence indicating fraud precluded the government from seeking deportation for an overstay already effected. As the court stated in Cabuco-Flores:

“Section 241(f) applies only to that fraud or misrepresentation which the government must prove to establish the ground relied upon for deportation; in some circumstances it excuses such fraud. It does not make the alien’s fraud an affirmative defense, independently exculpatory without regard to the proof required to establish the ground for deportability relied upon by the government.” 477 F.2d at 110 (emphasis supplied).

The petitioner also details a prior practice of the Immigration and Naturalization Service allowing nonimmi-grants relatively automatic extensions of temporary visas pending determinations of their petitions. It is conceded that this practice is no longer operative. He suggests, therefore, in somewhat conclu-sory terms, that the position we have now taken allows the government, once it has uncovered fraud, to simply delay action on the petition until the temporary visa expires. It follows, he concludes, that the government could circumvent § 241(f) in all nonimmigrant cases by doing just that and then charging only for overstay. We recognize that there is some merit to the petitioner’s argument. We also perceive the possibility of some valid counterarguments, however. Consequently we be--lieve that consideration of this problem should be deferred until such time as it is properly before the court; the present record does not squarely present the issue.

The order of the Board of Immigration Appeals is affirmed.


author: STEVENS, Circuit Judge.

text:
    CONTINENTAL OIL COMPANY, Plaintiff-Appellee, v. WITCO CHEMICAL CORPORATION, Defendant-Appellant.
    No. 72-1045.
    United States Court of Appeals, Seventh Circuit.
    Argued April 2, 1973.
    Decided Aug. 24, 1973.
    As Amended on Denial of Rehearing Oct. 4, 1973.

      Sidney Wallenstein, Chicago, 111., Jordan J. Driks, New York City, for defendant-appellant.
    William A. Marshall, Charles J. Merriam, Chicago, 111., for plaintiff-appel-lee.
    Before CLARK, Associate Justice, and FAIRCHILD and STEVENS, Circuit Judges.

       The Honorable Tom C. Clark, Associate Justice of the Supreme Court of the United States, retired, is sitting by designation.

   STEVENS, Circuit Judge.

Alkyl benzene sulfonate (“ABS”), the detergent most widely used in the 1950’s, created severe pollution problems because it resisted biodegradation. It was known that structural “branching” in one part of the ABS molecule, the al-kyl substituent, was the source of the problem, and that an increase in the incidence of “straight chain” or “linear” alkyl substituents would improve biodegradability. The problem was (a) to start with a linear, rather than non-linear, source material for the alkyl substit-uent, and (b) to minimize or avoid loss of linearity during manufacture. The total elimination of non-linear alkyl sub-stituents from the finished product was not expected and is still considered an economic impossibility. Continental’s research chemists claim to have discovered that if non-linearity was eliminated in about 90% of the product, it would be “substantially completely biodegradable.” The Patent Office rejected plaintiff’s process claims, but allowed product claims which defined the patented subject matter by describing its method of manufacture. The district court, without appraising the differences between the claims and the prior art, held the patent valid and infringed. We reverse.

I.

The essential facts are not in dispute. For the most part, they are recited in the patent specifications, in unchallenged findings, in a glossary and historical statement on which both parties rely, and in uncontradicted testimony.

The patent covers two products, a “detergent alkylate” and its “sulfonate derivative” ; these products are defined by describing the process by which they are made. .

The process includes four stages: (1) segregating or obtaining a supply of “normal paraffins” (¿. e., a species of linear or straight chain hydrocarbons) from a suitable petroleum source, such as kerosene; (2) partial chlorination— between about Yi0 and Ys (preferably 20 mole percent) — of the normal paraf-fins yielding a mixture of unreacted linear paraffins and chlorinated paraf-fins; about 90%: of the chlorinated portion are “monochlorinated” (which is desirable) and about 10% are di-, tri-, and polychlorinated (undesirable); (3) alky-lating benzene (or another aryl compound) with the chlorinated paraffins in the presence of a catalyst and distilling the resulting mixture to remove unreact-ed benzene, normal paraffins (which can be recycled) and certain impurities, thereby yielding the “detergent alkylate” described in Claims 1 and 3 of the patent; and (4) sulfonation of the al-kylate to produce a surfactant, the product described in Claim 2 of the patent. That product is described commercially as a “soft detergent,” or as LAS (linear alkyl benzene sulfonate) (even though it is only about 90%. linear), in contradistinction to ABS (alkyl benzene sulfo-nate), which is known as a “hard detergent” because it is “hard” to biodegrade.

The patent issued in 1967 on an application filed in 1965, as a continuation of a parent application filed on August 4, 1961. The inventors were research chemists employed by the plaintiff. The problem which confronted their employer and other detergent manufacturers, and which their invention was intended to solve, was well described in their specifications:

“Throughout about the past two decades, synthetic detergents have been increasingly displacing the traditional soaps in domestic cleaning applications in the United States. At the present time, it is estimated that about 75 percent of the combined sales of household cleansing surfactants are of the synthetic detergent type.
“The household synthetic detergents presently used embrace a number of different products; however, the bulk of these detergents are of the alkyl benezen.e sulfonate type generally referred to as ABS. This type of detergent is made by alkylating benzene with a comparatively highly branched C12 and/or C15 olefin and then sulfo-nating the resultant alkylation product. While these materials are excellent cleansing agents, their use has posed a considerable problem. The specific problem involved is that the ABS detergents are not readily removed or decomposed in sewage treatment plants. These detergents will remain throughout the treatment step as such without being significantly decomposed by the bacteria present. This resistance to decomposition is not due to the lack of suitable strains of bacterial [sic] within the sewage effluent nor to the length of time that can be allotted for treatment, but is fundamentally due to the chemical structure of the surfactant which resolutely resists metabolic attack by any kind of bacteria. One of the adverse effects of the presence of ABS in sewage effluents is that voluminus [sic] foams are caused to be formed which result in difficult and hazardous working conditions at the disposal plants. Also, the persistent foam formed constitutes a health hazard since the bacteria contained in the foam is often as high as 20 times that contained within the liquid phase.
“In addition to causing foam problems in the sewage plants, the presence of non-decomposable ABS in sewage effluents, including septic tanks effluents, has already resulted in considerable contamination of the available drinking water supply in populous areas. While it is generally believed that the ABS-type surfactant is not toxic to man, a currently considered proposal for revising the Public Health Service Drinking Water Standards to include a limit on the amount of ABS in potable water most signif-cantly foreshadows the necessity for detergent manufacturers to produce a soft type of detergent, that is, one which is completely and readily biodegraded.
“It is accordingly the primary object of this invention to provide detergent alkylate compositions, which upon sulfonation give effective detergent agents which at the same time are substantially completely biodegradable.” (emphasis added).

The specifications then recite the fact that bacteriologists have noted that the branched configuration of the alkyl sub-stituent in conventional ABS detergents impeded satisfactory biodegradation, and concurrently that detergents containing straight-chain or linear alkyl substituents were subject to complete biodegradation. The inventors’ mission' was to find an economical, feasible method of producing a detergent which was “substantially completely biodegradable.”

As we understand the record, the four-stage process they developed differed from the conventional method of making hard detergents in the first and second stages, but was essentially the same in the third (alkylation) and fourth stages. The first step was different because the selected source material contained straight chained paraffins instead of branched hydrocarbons. Plaintiff does not claim to have discovered or improved the method of segregating or obtaining the first stage material.

The second stage involved a significant change from the chlorination step in the production of hard detergents. It substituted partial chlorination (between 10 and 35 mole percent) for 100 mole percent chlorination of the hydrocarbon source material. The purpose of this change was to maximize the quantity of monochlorides and minimize the quantity of di-, tri- and polychlorides in the second stage product. The monoehlo-rides were desirable because they would not cause isomerization of the paraffins in the alkylation step, whereas the poly-chlorides were more likely to isomerize. Thus, a relatively low quantity of mon-ochlorides (and a correspondingly high quantity of polychlorides) would tend to destroy the linear characteristics which was needed to assure acceptable biodegradability.

Although the third stage alkylation step is admittedly old, plaintiff contends that the aluminum chloride catalyst was proved economically feasible in a manner not obvious under the prior art. It had been assumed that unless the un-chlorinated paraffins, which constituted from 65 to 90 %\ of the stage-two product, were removed by distillation prior to alkylation, they would be isomerized and therefore could not be recycled. The hydrocarbons and other impurities such as unreacted benzene are normally removed by distillation after alkylation. The fact that they did not isomerize during alky-lation was, according to plaintiff, an unexpected discovery which makes it possible to recycle the unehlorinated linear paraffins without incurring the cost of removing them prior to alkylation of the chlorinated paraffins.

As with the first stage, plaintiff makes no claim of invention in the fourth stage (sulfonation). Indeed, Continental expressly states that “Each of the steps by itself was old.” Brief for Appellee at 10.

Plaintiff’s primary contention is that the “combination produced a new product with surprising and unpredictable properties.” These properties relate to the effectiveness of the product. Continental claims it was not obvious that the product of the suit patent, which is 85-95 percent pure LAS, would biodegrade satisfactorily because hypothetical persons with ordinary skill in the art would have realized that the partial chlorination would produce at least 10% di-, tri- and polychlorides, which in turn would cause a non-linear configuration in a portion of the alkyl radicals in the alkylate. The ultimate fact that this amount of non-linearity would not defeat commercial success, plaintiff argues, was not obvious.

Defendant admits infringement. Its only defense is that the invention was obvious. In support of this position it points out that plaintiff’s own executives concluded that the product “has no unique or patentable features”; that promptly after the inventors were assigned their mission they made the correct theoretical calculations with respect to the partial chlorination stage and achieved success on their first experimental partial chlorination as well as their first experimental alkylation; and that competing manufacturers developed the same product in response to the same market stimuli, apparently without any assistance from plaintiff’s work. These arguments tend to establish obviousness, but, in our opinion, are not in themselves sufficient to overcome the findings and conclusions of the district court or the presumption of validity.

We are, nevertheless, convinced that the subject matter of the allowed claims was obvious notwithstanding the unanticipated features stressed by plaintiff.

II.

The defense of obviousness raises a question of law. Armour & Co. v. Wilson & Co., 274 F.2d 143, 151-157 (7th Cir. 1960). The statute, 35 U.S.C. § 103, provides that a patent may not be obtained “if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made . . . .’’It is, therefore, imperative that the differences between the new product, as a whole, and the prior art be identified and evaluated as of the date of the invention. As Mr. Justice Clark plainly stated in his opinion for the Court in Graham v. John Deere Co.:

“Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained ; and the level of ordinary skill in the pertinent art resolved.” 383 U.S. 1, 17, 86 S.Ct. 684, 694, 15 L.Ed. 2d 545 (emphasis added).

In this case, the findings of the district court describe the prior art in great detail, but omit any specific reference to the differences between the claims and the prior art. Since the findings contain no express delineation of such differences, they cannot shed any light on the trial court’s evaluation of the difference or differences it regarded as sufficiently critical to demonstrate that the subject matter as a whole was not obvious before October, 1960, when the invention was complete. Without such delineation and evaluation of differences, the district court’s findings of fact do not adequately support its ultimate conclusion of patent validity. We must, therefore, evaluate these differences and their significance.

III.

The parties take issue on three allegedly novel elements of the invention. Those elements are (1) the selection of the 10-35 mole percent chlorination range in order to maximize the production of monochlorides; (2) the fact that alkylation may be catalyzed by aluminum chloride without causing isomerization of the excess, unchlorinated linear paraffins; and (3) the unanticipated and remarkable success of the product in affording a solution to the foam problem.

Plaintiff properly emphasizes the importance of partial chlorination but implicitly acknowledges that the consequences of partial chlorination, as described in the patent, were predictable. Indeed, process claims encompassing partial chlorination were rejected by the Patent Office as obvious under the prior art. If the inventors’ objective is assumed to have been the production of an 85-95% pure LAS detergent, the use of this established process as one step in the product’s manufacture would therefore have been obvious to one skilled in the prior art. But there is an even more basic reason why this step in the process does not make the end product patentable. Even if we were to assume that this step was new — or indeed that the entire process was not only new but patentable as well — that assumption would not demonstrate that the product was new or nonobvious. For an old product made by a new process is not patentable; the product must be patentable in its own right. Therefore, the claim that the partial chlorination step was novel does not establish the patenta-bility of plaintiff’s product.

For comparable reasons the discovery that aluminum chloride will not cause is-omerization of the unchlorinated paraf-fins does not establish the nonobviousness of plaintiff’s product.

The argument that his discovery was unforeseeable relies heavily on the finding that aluminum chloride “was known to function as a catalyst for isomerization of hydrocarbon materials.” (Finding 41, A. 44.) Since the term “hydrocarbon materials” encompasses an almost unlimited number of substances, that finding by no means indicates that a person with ordinary skill in the art would expect aluminum chloride to cause isomerization of linear paraffins. At most, we think the finding indicates that the consequences of using aluminum chloride as the catalyst were somewhat doubtful until after an experiment had been made. Since aluminum chloride had been so widely used as a catalyst in the production of AB'S, at the very least it was obvious to experiment with this catalyst.

Again, however, even if the discovery that aluminum chloride was an acceptable catalyst to use in the manufacture of LAS was nonobvious, that discovery related to the process rather than the character of the product. As a catalyst aluminum chloride simply promotes the alkylation reaction; it does not affect the qualities of the end product. The value of that discovery relates only to the fact that anticipated costs associated with the recycling of unchlorinated paraffins did not materialize. It seems to us that a discovery that certain procedures will result in a reduction of manufacturing costs cannot adequately support a product claim unless that discovery entitles the inventor to a valid claim on the process. If a product patent is to rest solely on the novelty of the processes by which it is made, then those processes must be patentable. In this ease, since the Patent Office has determined that those processes are not patentable, we believe the product must be patentable in its own right.

This brings us to the crucial issue— the obviousness of the product itself. In 1960, when the invention was made, it was perfectly obvious that a detergent containing 85-95% pure LAS would be considerably more biodegradable than the ABS, the hard detergent then on the market. Nevertheless, plaintiff contends that it was not predictable that the product would completely solve the foam problem, which it did. We believe that success was sufficiently obvious to bar patentability.

Plaintiff contends, and the district court found, that a detergent must biodegrade 90,% in four to six hours in order to alleviate the foaming problem. Finding No. 8, A. 24. A detergent need not be fully decomposed because small amounts (less than .5 part per million parts of sewage) can be tolerated. The prior art taught that detergent molecules with linear alkyl substituents biodegraded promptly and presented no problem. Continental’s patent claims a product which is 85-95% pure LAS. Since only 90% biodegradation was required, it was certainly obvious that the purest form of the product claimed (at least in the 90-95% range) would succeed. The LAS portion was expected to biodegrade; moreover, the remainder would also biodegrade to some extent. Clearly, most of the product range claimed by plaintiff could fairly be expected either to solve the foam problem completely or at least to be “substantially completely biodegradable.”

Plaintiff argues, however, that it made the nonobvious discovery that certain impurities known as alkyl tetralins would readily biodegrade, making the product even better than expected. The patent itself does not disclose this discovery. Nor does Continental argue that this feature was of critical importance in solving the foam problem. Indeed, in the purest form claimed, the product would be a success even if the tetralins did not biodegrade at all. Regardless of whether or not the properties of the alkyl tetralins were nonob-vious, the essential characteristics of the product as a whole were obvious.

It is true that the success of the product could not be determined with absolute certainty until it was field tested in an actual sewage plant. This fact, however, does not render the entire range of product described in the claims nonobvious. Even though the sewage plant is far removed from the laboratory, the prior art, based mostly on laboratory work, pointed directly toward plaintiff’s work. While plaintiff should be commended for the commercial development of a socially desirable product, it has not earned the reward of a monopoly. As a matter of patent law, its work, must be regarded as routine experimentation and testing of an obvious product.

The evidence supporting the conclusion that the subject matter of the invention as a whole was obvious is, in our opinion, plainly sufficient to overcome the presumption of validity resulting from the allowance of the three product claims after the application or its parent had been under study in the Patent Office for almost six years. The judgment is

Reversed.

      . Patent No. 3,316,294 issued April 25, 1967, to Continental Oil Company, as assignee of Feighner and Kapur, pursuant to Application No. 466,847 filed June 24, 1965, column 2, line 10.

      . Especially Findings 10 through 37, A. 24-35.

      . DX-52, A. 1924.

      . DX-53, A. 1943.

      . “1. A detergent alkylate obtained by the aluminum chloride catalyzed alkylation of an aryl compound selected from the group consisting of benzene, a lower alkyl substituted benzene and mixtures thereof with a chlorination product prepared by partially chlorinating a petroleum derived hydrocarbon fraction consisting essentially of C10 to C18 straight chain paraffins to the extent whereby from about 10 to 35 mole percent of the paraffins are chlorinated, said fraction further characterized as comprising a predominant amount of component paraf-fins of 11 to 15 carbon atoms.
      * ;¡: * *
      “3. A detergent alkylate in accordance with claim 1 wherein said aryl compound is benzene.”

      . “2. A. biodegradable water-soluble surfactant comprising the alkali metal sul-fonate salt of the detergent alkylate of claim 1.”

      . Serial No. 129,252. See note 1, supra.

      . Patent No. 3,316,294, column 1, line 35 —column 2, line 10.

      . In the description of alkylation, the patent specifications state: “The alkylation step contemplated herein essentially corresponds to the prior art method of alkylating benzene to produce ABS detergents except for the presence of large amounts of n-paraffins in the alkylation reaction.” Column 6, lines 53-56.

      . The specifications state: “The sulfonation of the detergent alkylate prepared generally in accordance with the above can be carried out by any one of a number of conventional methods using as the sulfonating agent either oleum,' SO3, mixtures of SO3 and SO2 or clilorosul-fonic acid ” Column 7, lines 58-62.

      . An intracompany memorandum dated April 12, 1960, implies that recent de-. velopments by others had made such material obtainable on an economic basis for the first time. A. 1729. Defendant relies heavily on the inference that the availability of inexpensive straight-chained paraffins is what triggered plaintiff’s new product development. The district court did not so find and we are not persuaded that the April 12, 1960, memorandum compelled any such finding. The problem described in the patent specifications, as quoted above in the text, adequately explains the motivation for plaintiff’s research.

      . Plaintiff’s expert testified: “Monochloro — linear paraffins should give alkyl benzenes. The dichlorides and polychlor-ides should yield non-linear alkyl ben-zenes.” A. 73.

      . “The alkylating stock is the chlorination product described in the preceding section, and consequently, as such, contains a high percentage of unhalogenated or pure hydrocarbons. In using such a mixture as an alkylating agent it was found, contrary to expectations, that the excess normal paraffins were not isomerized during the alkylation of the aryl compound. As mentioned, it is preferred to use a strong alkylating catalyst such as aluminum chloride which is a known catalyst for the isomerizing normal paraffins to isoparaffins. Consequently this unexpected finding makes the instant process commercially feasible insofar as the normal paraffins present in the alkylation stock can be recovered and reused to prepare additional chlorinated mixtures for use as the alkylating agent.” Column 6, lines 61-75.

      . In a report written on November 8, 1961, the inventors’ supervisor in plaintiff’s research department stated:
      “Since last spring numerous articles have been published indicating that there is a general awareness of the biodegradability problem, and that our competitors and potential competitors are actively developing biodegradable detergents. Our customers have indicated a willingness to purchase a biodegradable product when it is available and have been sujiplied samples of such products by our competitors. We feel that the process we have chosen to develop will produce a good product competitively ; however, it has no unique or patentable features and the only possible advantage we can hope for is to be first or early in the market.” A. 1804.

      . A. 147-149. These initial experiments were performed, respectively, on July 18 and July 22, 1960, and resulted in the product described in claims 1 and 3 of the patent. There is no question about the fact that the development of the finished surfactant from the third stage product (the detergent alkylate) by means of sulfonation was obvious.

      . One section of the Graham opinion explicitly analyzes “The Obviousness of the Differences.” 383 U.S. at 24-26, 86 S. Ct. 684.

      . See A. 1333.

      . The prior art unequivocally establishes (1) that if the paraffins were partially, instead of totally, chlorinated, the chlorinated product would contain a higher proportion of monochlorides; and (2) that the ratio between monochlorides and polychlorides was a calculable function of the extent of partial chlorination (A. 332.) —thus the preferred 20 mole percent would produce about 90% monochlorides and 10% undesirable chlorides. The range between 10% (which produces 95% monochlorides) and 35% (which produces about 85% monochlorides) (see A. 1515) was acceptable. Although 10 mole percent chlorination apparently yields better chemical results than 20 mole percent, it is not the preferred percentage for the economic reason that it requires excessive recycling of the unchlorinated paraffins. Plaintiff affirmatively proved that the presence of diehlorides and polychlorides in the chlorinated paraffin would tend to yield a non-linear product (see note 14; see also testimony of the defendant’s expert at A. 336-337, 342-343. Presumably this fact was not significant in the production of ABS since the first stage material was already branched.) We find no argument by plaintiff to the effect that this propensity was unknown before the invention; on the contrary, plaintiff argues that the hypothetical person familiar with the art would have inferred from the fact that this quantity of undesirable chlorides was present in the second stage product, that the end product would not be sufficienly biodegradable to solve completely the problem of foaming in sewage treatment plants. Brief for Appellee at 22, 24, 35-36, 38 n. 25, 39.

      . Before the Patent Office plaintiff apparently contended that the use of partial chlorination in order to improve the ratio between monochlorides and polychlorides was not described in the prior art except in the Kyrides reference (Patent No. 2,161,174 dated June 6, 1939) which plaintiff argued, Kyrides himself had later concluded was not as desirable as initially envisioned (A. 1302), but non-cited references (particularly Tramm U. S. Patent No. 2,683,688 issued July 13, 1954) disclosed the use of partial chlorination to obtain a higher yield of monochlorides. A. 1515.

      . Any contention that the use of partial chlorination was not obvious because one skilled in the prior art would not think than an 85-95% pure LAS product would solve the foaming problem is merely a restatement of the third alleged novelty of the product, i. e., that the extent of the product’s success was unanticipated.

      . “A machine may be new, and the product or manufacture proceeding from it may be old. In that case the former would be patentable and the latter not. The machine may be substantially old and the product new. In that event the latter, and not the former, would be patentable. Both may be new, or both may be old. In the former case, both would be patentable; in the latter neither. The same remarks apply to processes and their results. Patentability may exist as to either, neither, or both, according to the fact of novelty, or the opposite. The patentability, or the issuing of a patent as to one, in nowise affects the rights of the inventor or discoverer in respect to the other. They are wholly disconnected and independent facts.” Rubber Company v. Goodyear, 9 Wall. 788, 76 U.S. 788, 796, 19 L.Ed. 566.

      . Appellant disputes this finding by reference to Feighner’s own U. S. Patent 2,914,580, which “shows the production of alkyl benzenes by a reaction in which benzene is reacted with a linear paraffin (normal hexadecane) in the presence of aluminum chloride to form hexadecyl benzene (Example 1 of said patent) and there is not even a murmur of any isomerization. . . . ” Brief for Appellant at 46.

      . “We put this patent down as one of those step by step advances, not beyond the compass of capable investigators who run down every lead, and cull out those which appear advantageous. It might be desirable to promote such activities by limited monopolies, but that is not the law; patents do not go to patient and exhaustive experiment; they are the reward of exceptional talent.” Hazeltine Corp. v. Abrams, 79 F.2d 329, 332 (2d Cir. 1935) (L. Hand, J.).

      . “A catalyst is a compound which promotes or enhances the rate of a chemical reaction, but is not itself consumed in the process.” Finding No. 28, A. 31.

      . Although the district court’s finding refers to the teaching that aluminum chloride might function as a catalyst for the isomerization of “hydrocarbon materials,” in its brief plaintiff merely contends that there was concern about isom-erization of the unchlorinated linear par-affins. See appellee’s brief, page 38 n. 24. See also column 6, lines 64-75, of the suit patent. Plaintiff has not explained why the catalyst would isomerize the unchlorinated linear paraffins without at the same time causing isomerization of the chlorinated paraffins as they react with the benzene during alkylation. Such an effect would, of course, destroy the crucial property of the product. That aluminum chloride as a catalyst would not alter the end product was taught by-British Patent 681,211, see column 3, lines 20-24. The British patent differs from the suit patent in that the poly-chlorides and the unchlorinated paraffins are removed by distillation prior to alkyl-ation.

      . Plaintiff’s contention that the product was not obvious because it was not known that it could be made by this particular process does not, in our opinion, effect the necessary metamorphosis.

      . There is even some doubt as to the validity of such a product claim:
      “Conceivably it might be possible to patent a product merely as the product of a machine or process, even though it were anticipated if made in other ways .... That is probably not the law, though it is hard to find instances, probably because the Patent Office does not grant product patents in that form.” Buono v. Yankee Maid Dress Corp., 77 F.2d 274, 279 (2d Cir. 1935) (L. Hand, X).

      . At any rate a product patent not [limited to a patentable process] must be new as such, that is, regardless of the process or machine which makes it ... It would seem to follow that the invention in the case of such a product patent must lie exclusively in the conception of the product, and regardless of any method of its production, though of course the patent must disclose one way by which it can be made.” Buono v. Yankee Maid Dress Corp., 77 F.2d 274, 279 (2d Cir. 1935) (L. Hand, X).
      In Ideal Boiler & Mfg. Co. v. Sutherland Paper Co., 96 F.2d 675 (6th Cir. 1938), the court rejected process claims as obvious, then turned to the product claim: “Appellants frankly concede that the claims define [the product] in terms of the process. While this may properly be done when the product itself is new ., the conception of [the product] was far from new.” Id. at 676.

      . The definition in the claims is in terms of the extent of partial chlorination of 10 to 35 mole percent, but that range is, as we understand the record, convertible to 85-95% LAS. See, e. g., A. 1515.

      . Presumably, some small portion of the impurities would have no detergent properties at all and consequently would not have to biodegrade.

      . Tetralins have a cyclic structure; they are formed when two carbon atoms of a benzene react with a single paraffin, forming a carbon chain link between the two carbon atoms of the benzene ring. See PX-39, A. 1117; A. 501. Since the formation of alkyl tetralins requires two reactive sites on the paraffin chain, the precursor is at least a dichloride. The bi-, tri- and polychlorides can also acquire more than one benzene ring (A. 163) and, by virtue of the increased weight, would be removed from the product in the third stage fractional distillation. See column 7, lines 54-56.

      . If it makes a critical difference at all, it would be at the lower range of the product claimed by plaintiff, where the alkyl tetralins represent more than 10% of the product. Even if claims narrowly limited to a range of 85%, or just above, would be valid, for plaintiff to prevail, the subject matter of the claims “as a whole” must have been nonobvious. Moreover, the record suggests a basis for doubting the nonobviousness of the discovery. The Hammerton article (A. 1609) teaches :
      “If the alkyl group has a straight chain, the compound is susceptible to biochemical oxidation, but if the alkyl group is branched, then bacterial degradation will either be delayed or substantially resisted according to the degree of branching. Highly or multi-branched alkyl groups appear to confer stability upon the detergent molecule.” A. 1616.
      Thus, the prior art suggests that the more complex the structure, the more stable the molecule would be; and, conversely, tlxe simpler the structure, the better the biodegradability. While it is true that the prior art had not specifically addressed the biodegradability of alkyl tet-ralins, it is apparent that a cyclic structure is more simple than a multi-branched structure. In this light, biodegradability of the alkyl tetralins might well have been anticipated even if the rate of biodegradability of tetralins was unknown.

      . Indeed, before the plaintiff learned for certain that the product would completely solve the foam problem, it filed the patent application and expedited the design and construction of new production facilities. A. 1804-1805. Continental apparently believed that it would be a good product competitively and should be marketed as soon as possible. In short, certainty that the product would completely solve the foam problem was not needed to support either the patent application or the commercial development of the product. Consequently, even though the exact rate of decomposition in a sewage treatment plant could not be precisely predicted, the subject matter of the claims, as a whole, was obvious.

      . “In the light of all this it seems to us that the patent does not rest upon an authentic invention, but upon one of those steps in an art which demand only patient experiment .... Ordinarily invention demands more than that; some resumption of a line of experiment from which the art had looked away . . . , some departure which required originality or independence of conception; something more than routine testing of obvious combinations.” Ruben Condenser Co. v. Aerovex Corp., 77 F.2d 266, 267-288 (2d Cir. 1935) (L. Hand, J.).


author: SWYGERT, Chief Judge.

text:
    UNITED STATES of America, Plaintiff-Appellee, v. Seymour EMALFARB, Defendant-Appellant.
    No. 72-1207.
    United States Court of Appeals, Seventh Circuit.
    Argued Jan. 11, 1973.
    Decided July 2, 1973.
    Rehearing Denied Aug. 6, 1973.
    Certiorari Denied Dec. 3, 1973.
    See 94 S.Ct. 571.
    John Powers Crowley, Chicago, 111., for defendant-appellant.

      James R. Thompson, U. S. Atty., William T. Huyck, Glynna W. Freeman, Asst. U. S. Attys., Chicago, Ill., for plaintiff-appellee.
    Before SWYGERT, Chief Judge, and KILEY and CUMMINGS, Circuit Judges.
   SWYGERT, Chief Judge.

Defendant-appellant Seymour Emal-farb appeals, after a jury trial, his conviction on three counts of extortion in violation of 18 U.S.C. § 1951. He received concurrent sentences of three years in the Attorney General’s custody: a ninety-day period confined to a jail-type or treatment institution with the remainder to be probation. He was also fined $5,000'.

The defendant raises five issues on appeal: (1) the sufficiency of the evidence, (2) the trial judge’s prejudicial comment to the jury that they would have no difficulty in determining the victim’s state of mind, (3) the failure of the trial judge to give a missing witness instruction, (4) an erroneous instruction, defining reasonable doubt, and (5) the refusal of the trial judge to instruct on the defendant’s theory of the case.

Defendant was the president, general manager, and salesman for Statewide Tire Company. The company was incorporated in 1959 by Emalfarb, Paul Powell, Clyde Choate, and C. W. Davis. Statewide sold tires to the Illinois Tollway Commission in 1962, 1963 and 1964 for use on official cars. The defendant had frequent contact with the state police officers assigned to patrol the Illinois Tollways and was often seen at the headquarters.

Robert Schreiber, the victim of the alleged extortion owned his own trucking company in Hebron, Indiana. His company had about sixty trucks which carried sand and stone between Chicago and Gary, Indiana. Schreiber testified that the defendant called him in October 1966 and told him that he (Schreiber) had been running his trucks through Illinois for the last three years and “had not contributed to the Powell cause” and that he should pay $1,500 cash or buy 110 tires. Schreiber stated that he refused. Immediately after that telephone conversation, Schreiber’s trucks were increasingly stopped and ticketed by Illinois state police. On November 9, 1966 the day after Paul Powell was elected Secretary of State in Illinois, the defendant telephoned Schreiber and asked: “Are you ready to say uncle?” Schrei-ber proceeded to reduce by negotiation the requested $1,500 sum to $1,000. On the following day, November 10, 1966, Schreiber met the defendant at a motel parking lot. They went into the motel coffee shop and Schreiber gave the defendant $1,000 in cash. The defendant excused himself and made a telephone call. As he returned, a state police car drove away from the motel. The defendant in referring to the departing police car told Schreiber: “See what powers I have.” After the exchange of money, Schreiber’s trucks were infrequently ticketed. Schreiber in response to a later telephone call paid defendant another $500 in cash on December 5, 1966. A third payment of $500 in response to another call occurred on January 4, 1967 when Schreiber gave the manager of 'defendant’s office a check payable to cash which the manager proceeded to cash. The manager did not remember what he did with the proceeds.

The defendant’s defense is that these payments were Schreiber’s voluntary contributions to Paul Powell’s campaign funds in hope of receiving favorable licenses from the recently elected Secretary of State.

I

The defendant argues that the evidence was insufficient to sustain a conviction since Sehreiber’s testimony that the harassment followed the initial telephone call by Schreiber is contradicted by the existence of a telephone call slip which indicated a phone call was made from defendant’s Statewide Tire Company to Schreiber’s company on October 27, 1966 and that Schreiber’s trucks had received tickets on October 24 and October 26 prior to the telephone call of October 27th. There is no evidence as to who made or received the telephone call on October 27, 1966. The existence of a telephone call on October 27, 1966 does not refute Sehreiber’s testimony for there is no evidence of the parties to, or subject of, the call. This information about the telephone call of October 27, 1966 was evidence before the jury. The alleged contradiction was argued in defense counsel’s summation. The jury apparently decided the credibility issue adverse to the defendant.

Defendant also argues that the Government failed to prove a connection between the defendant and the ticketing of Schreiber’s trucks. The actual issue to be decided here was not whether the defendant had the power to have Schreiber’s trucks stopped and ticketed but whether it was reasonable for Schreiber to believe that he had that power.

The evidence supports the jury finding that defendant was guilty on the three counts of extortion.

II

Defendant argues that the trial judge erred in commenting to the jury on the possible inference to be drawn from Schreiber’s testimony as to his state of mind after the telephone call by the defendant in October 1966. The record shows that the following occurred while Schreiber was being directly examined by the assistant United States Attorney:

Q. What did you interpret by this [telephone conversation] ?
MR. CROWLEY: Objection.
THE COURT: Sustained.
Q. Well, what was your state of mind?
MR. CROWLEY: Objection.
THE COURT: Sustained. The jury is going to have to figure out what Mr. Schreiber’s state of mind was from the conversation, and his testimony with respect thereto, and I don’t think they will have much difficulty.

Defense counsel did not move to strike the trial judge’s comments or to give the jury a cautioning instruction.

Although the trial judge’s comment appears to be ambiguous, we do not think that the trial judge should have made such a comment since it was uncalled for and might have under other circumstances prejudiced the defendant’s case. However, in this ease, we believe that the comment was harmless error in light of the judge’s later charges to the jury:

Let me lay a ghost to rest here if it seems appropriate. Sometimes jurors think the way to decide a case is to read the judge’s mind and figure out how the judge would decide the case. They try to figure out from circumstantial evidence what the judge may have said, or how he looked, or what have you, what his verdict in the case would be.
Let me tell you, you couldn’t read my mind if you tried. I have an unreadable mind, impervious skull my wife says, but I will save you the trouble. I will tell you what I think the verdict in this case should be.
It is my considered judgment that the verdict in this case should be what the 12 of you unanimously decide. That is it.

On the specific issue of Schreiber’s state of mind, the judge’s charge eliminated any possible prejudice to the defendant from his ambiguous but unfortunate comment. He stated:

You are not bound by the statements of either Mr. Schreiber or any of the other people as to what his state of mind was. You can conclude from the evidence, all of the evidence, that in fact he couldn’t reasonably have had that state of mind, or you may conclude from the evidence that he could reasonably have had the state of mind which he testified to.

The defendant’s cited authority dealing with a trial judge’s comments on testimony and other evidence is not precedent for reversal in this case since the judge gave sufficient cautionary instructions. Moreover, his comments were ambiguous and did not directly express an opinion that Schreiber’s testimony was worthy or unworthy of belief. United States v. Kwitek, 433 F.2d 18, 20 (7th Cir. 1970).

Ill

Defendant argues that the trial judge erred in denying a missing witness instruction since the Government failed to call Trooper Lewandowski who issued a ticket to one of Schreiber’s trucks on November 22, 1966. The theory of the Government’s case was that between the threatening phone call of the defendant in October 1966 and the post-election telephone call on November 9, 1966, Schreiber’s trucks were subjected to increased stoppings and tickets by the Illinois state police and that this harassment stopped after Schreiber gave the defendant $1,000. Lewandowski’s testimony as to the circumstances concerning the ticket on November 22, 1966 was not relevant to the Government’s theory. The ticket was only introduced to establish the infrequency with which Schreiber’s trucks were stopped except during the harassment period. Lewandowski had no “special information relevant to the case.” C. McCormick, Evidence § 249, at 534 (1954). The instruction was properly refused.

IY

Defendant also challenges the instruction on reasonable doubt given by the trial judge over objection. The trial judge first stated:

Now, what do we mean by beyond a reasonable doubt? Well, a reasonable doubt is a fair doubt which arises from all of the evidence in the case. The law doesn’t require, in fact, we know it is rarely possible to establish something to an absolute certainty, and that isn’t what beyond a reasonable doubt means.
Beyond a reasonable doubt means the evidence be of such persuasion to you that you would be willing to rely upon that kind of evidence in making an important decision in your own personal lives. Presumably you would not make an important decision on evidence which was not, did not satisfy you beyond a reasonable doubt. Otherwise you are taking a calculated risk. You are gambling on something. Here you are not supposed to gamble on the guilt or innocence of the defendant. You are to find him innocent unless you are satisfied that his guilt has been established beyond a reasonable doubt.

He later summarized his instruction on “reasonable doubt”:

Start out presuming the defendant to be innocent and the Government must prove his guilt beyond a reasonable doubt, which means by evidence of such persuasion that you would be willing to rely upon it in an important affair in your own life.

That part of the charge which is specifically attacked reads: “Beyond a reasonable doubt means the evidence be of such persuasion to you that you would be willing to rely upon that kind of evidence in making an important decision in your own personal lives.” In support of his contention that this instruction was erroneous, the defendant cites Holland v. United States, 348 U.S. 121, 140, 75 S.Ct. 127, 138, 99 L.Ed. 150 (1954). There the Supreme Court in criticizing a similar instruction stated: “We think this section of the charge should have been in terms of the kind of doubt that would make a person hesitate to act . rather than the kind on which he would be willing to act.” The Supreme Court, however, did not reverse by reason of the criticized language contained in the definition of reasonable doubt. Similarly, a number of courts of appeals, following the observation in Holland, have indicated a preference for the “hesitancy to act” approach instead of the “willing to rely” formulation; but like the Supreme Court in Holland they have not seen fit to reverse cases in which the criticized language has been used. It must be pointed out, however, that some seem to have based their refusal on the fact that no objection had been raised during the trial and that invocation of the plain error rule was not in order. Scurry v. United States, 120 U.S.App. D.C. 374, 347 F.2d 468 (1965), cert, denied, 389 U.S. 883, 88 S.Ct. 139, 19 L.Ed. 2d 179 (1967); United States v. Re-staino, 369 F.2d 544, 546 (3d Cir. 1966); United States v. Nuccio, 373 F.2d 168, 174 (2d Cir.), cert, denied, 387 U.S. 906, 87 S.Ct. 1688, 18 L.Ed.2d 623 (1967); James v. United States, 416 F.2d 467, 475-76 (5th Cir. 1969), cert, denied, 397 U.S. 907, 90 S.Ct. 902, 25 L.Ed.2d 87 (1970); United States v. Dunmore, 446 F.2d 1214, 1221-1228 (8th Cir. 1971), cert, denied, 404 U.S. 1041, 92 S.Ct. 726, 30 L.Ed.2d 734 (1972); United States v. Cole, 453 F.2d 902, 906 (8th Cir.), cert, denied, 406 U.S. 922, 92 S.Ct. 1788, 32 L.Ed.2d 122 (1972); cf. United States v. Wright, 365 F.2d 135, 140 (7th Cir. 1966), cert, denied, 386 U.S. 918, 87 S.Ct. 879, 17 L.Ed.2d 789 (1967).

Considering the district court’s instruction on reasonable doubt as a whole, we are constrained to find no reversible error here despite the fact that the defendant raised a timely objection to the charge as given. We are in general accord with Judge Friendly’s observations in Nuccio that “While the ‘hesitate’ language makes the point considerably better and we wish trial judges would use it, we find it impossible to believe, in the absence of any evidence such as a request for further instructions, that jurors would retain such a nuance in their minds and be significantly influenced by it.” Moreover, we are in agreement with the other circuits that have dealt with this problem in their admonition that in attempting a definition of reasonable doubt language phrased in terms of hesitancy to act is the preferred formulation. We expect the district judges in this circuit to do so.

V

Finally, defendant argues that the trial judge refused to give his tendered instruction on the defense theory. The judge ruled that the defense theory had been given in another instruction. We' agree and find that the instruction that he gave on coerced versus voluntary payments was. the better instruction and that it included defendant’s theory of the case. Defendant is not entitled to have a particular instruction, only to have the theory of his defense given. “Where the jury is fully and fairly instructed upon the case as a whole it is unnecessary to give any specific instruction in the precise form requested by the defendant.” United States v. Pritchard, 458 F.2d 1036, 1040 (7th Cir.), cert, denied, 407 U.S. 911, 92 S.Ct. 2434, 32 L.Ed.2d 685 (1972).

The judgment of conviction is affirmed.

      . Powell transferred Ms stock in the company to Choate in 1964 for one dollar, but the formal change in registration of the stock did not represent a substantial change in economic interest.

      . Powell was formerly the Speaker of the Illinois General Assembly and Choate was a member of the Illinois General Assembly.