author: LANE, Judge.

text:
    Application of George E. COMSTOCK and Thomas P. Gilmer, Jr.
    Patent Appeal No. 8922.
    United States Court of Customs and Patent Appeals.
    Aug. 2, 1973.

      Jay M. Cantor, Washington, D. C., attorney of record, for appellants. Charles R. Lepchinsky, of counsel.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Jere W. Sears, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and ALMOND, Senior Judge.
   LANE, Judge.

This is an appeal from the decision of the Patent Office Board of Appeals sustaining the examiner’s rejection of claims 1-21 of appellants’ application Serial No. 595,694 filed November 21, 1966, entitled “Electronic Calculator” as based upon a specification which fails to comply with the requirements to 35 USC 112. We reverse.

The Disclosure of the Invention

Briefly stated, the invention is an electronic calculator which has as its principal feature means for retrieving numerical data placed into storage on a first-in, first-out (hereafter FIFO) basis. The specification characterizes electronic calculators as suitable for performing repetitive arithmetic operations and thereby accomplish addition, subtraction, multiplication and division rapidly. A known calculator provided a storage, but retrieved data for subsequent calculation on a last-in, first-out basis. It is stated that retrieval on a FIFO basis materially reduces the effort of the operator, and likelihood of error.

The invention is summarily described in the specification as:

[A]n electronic calculator which comprises an arithmetic and control portion having keyboard means coupled thereto for manually entering data into the arithmetic and control portion. A storage having a plurality of registers is associated with the arithmetic and control portion and is adapted to have numeric data entered therein and retrieved therefrom in a first-in, first-out arrangement. The keyboard includes means for providing access to this storage to store numeric data therein and to recall such data therefrom. Once a list or sequence of numbers has been entered into the storage, the list may be used as often as desired, thereby reducing the need for repetitively entering data into the calculator. Further, since the numeric data in the storage is retrieved therefrom on a first-in, first-out arrangement, an operator may perform calculations requiring repetitive arithmetic operations from a list or sequence of data in an orderly manner and with a minimum number of key strokes, thereby reducing the probability of operator error and the need to keep notes on suitable means, such as a scratch pad.

Claim 1 is illustrative of the claims on appeal and reads as follows:

1. In a calculator, the combination comprising:
an arithmetic and control portion; keyboard means coupled to said arithmetic and control portion for manually entering data into said arithmetic and control portion;
a storage coupled to said arithmetic and control portion having more than one register;
said storage including means to enter data therein and retrieve data therefrom in a first-in, first-out arrangement ;
and said keyboard having means for providing access to said storage to store data therein and to recall such data therefrom.

The specification includes drawings and written discussion of the invention as well as a computer program which allegedly “provides the circuit claimed when the specified computer is so programmed.” The “specified computer” is “an IBM Model 1620 computer having modification 831,128 which provides 63-character READ/PUNCH; including IBM accessory equipment as follows: * -X- -X-

Appellants explain that the design of modern electronic calculators is tested out by utilization of a suitably programmed computer. An appropriate keyboard is constructed, and there is provided an interface which “couples the coded data from the keyboard * * * to a processor [e. g. computer,] in a form suitable for use by the processor and in synchronization with the operation of the processor.” The programmed processor constitutes the circuitry necessary for the performance of the arithmetic operations as well as the storage and retrieval functions. By properly programming the computer, the essential FIFO function can be effected.

Figure 9 of appellant’s specification, reproduced below, illustrates the processor in a schematic form. The aforementioned modified IBM 1620 was given “as one embodiment of the invention” which provides the “logic functions illustrated within the dotted outline 13 of Fig. 9. * * The program disclosed in the specification allegedly provides the instructions for carrying out those logic functions.

The Patent Office Position

In his Answer, the examiner articulated rejections based on the first and third paragraphs of § 112, and the board sustained both rejections. The premise of each rejection generally was the asserted failure of the specification to disclose particular structure conforming to the claimed calculator.

In In re Knowlton, Cust. & Pat. App., 481 F.2d 1357, decided July 26,' 1973, we indicated that the third paragraph of § 112 does not impose a separate requirement that an invention claimed in “means-plus-function” form must be described apart from the description requirement expressed in the first paragraph of that section. The board in the present case held that the Patent Office has a duty to insure that “means-plus-function” can be construed in the manner set forth in the third paragraph. We reject that view to the extent that it necessarily leads to the position that the third paragraph of § 112 provides a basis for rejecting claims. The third paragraph permits a form of claiming and specifies some of the paraueters of the construction of such jlaims. If construction is not required, there is no warrant for bringing the third paragraph into play. The essence of the rejections made here involves support for the claims and not construction of the claims. Following Knowlton, we would not sustain a rejection of the present claims on the third paragraph of § 112, and we accordingly consider that rejection no further. Our inquiry is limited to the first paragraph rejection and its supporting rationales.

Referring to fig. 9, as well as alternative embodiments depicted in other figures, the examiner stated that the differences between the invention and the prior art resided in the addition of FIFO storage, identified by the examiner as item 132 in the figure, and “additions to or re-arrangement of” the control circuit, identified as item 133. The examiner held the specification not to adequately teach those features of the invention. The examiner’s position, in his own words, was as follows:

It is submitted that the IBM 1620 is made up of a multitude of circuits and logic functions and that a program is not a teaching of the precise structure that is being used. A showing that a particular program works on a particular computing machine is hardly a teaching of how to make and use an invention which incorporates some of the structure from the computing machine and identifies it by two boxes labeled “FIFO register” and “control”. The applicant is putting the burden on the public of determining the specific structure to be used, which he himself has failed to disclose or is unable to disclose.
The examiner further held that:
[The disclosure] does not teach one skilled in the art how to make and use a desk calculator as claimed. * * *
There is no teaching of what particular structure should be “severed” from the IBM 1620 to incorporate in the claimed invention. To determine the structure would at best require undue experimentation in detailing for each step of the program precisely what structure in the computer is being used, identifying the critical structure, and incorporating the structure in the claimed invention, this final step itself often requiring experimentation as will be explained * * *.

The examiner later relied on certain references to establish the great difficulty of debugging and perfecting any particular computer system.

The board generally agreed with the examiner. It stated as follows:

A critical part of appellants’ disclosure is a series of functional units depicted in the drawing as a series of connected rectangles and described in the specification as composed of a series of component units such as flip-flops, gates, switches, multivibrator and the like but without explanation as to how these units are to be interconnected so as to function as a unitary device. This assemblage of units is then to be connected to a computer identified only by its proprietory name at points therein identified only by a proprietory number.

Later in its opinion, the board commented as follows:

We further note the absence from the record of any indication that the circuitry of the proprietory computer or that the proprietory assembly program to be used with the program listed in the specification were both available to the public at the time the application was filed since both have been made by appellants a condition to the adequacy of the disclosure.

During prosecution, appellants submitted a series of affidavits. Among the averments to be found therein are that calculators are designed through logic circuits; that in fact the program disclosed in this specification was the essence of the actual reduction to practice of the claimed invention; that one skilled in the art of programming would have no difficulty in understanding and using the disclosure; and that one of ordinary skill in the art would be capable of providing all of the physical components and interconnections needed to implement the logic functions disclosed. The board generally dismissed the affidavits as opinion evidence only and as failing to supply the necessary facts concerning structure which were held to be lacking.

OPINION

We are not persuaded that the various reasons advanced by the examiner and the board support a rejection of the appealed claims under any of the requirements of the first paragraph of § 112. Rather, we are convinced that the conditions imposed by that section of the statute are satisfied.

At the heart of the several rationales exposited below is the allegation that the specification fails to provide a disclosure of structure commensurate with the claimed means, that is, those means associated with the programmed computer. We think that here, as in In re Knowlton, supra, the specification does disclose structure supporting those elements of the combination of means appearing in the appealed claims. The specific computer itself, physically altered by the disclosed specific modifications and especially as altered by the operation of the disclosed program, is the structure to which appellants properly direct attention as the actual, practical embodiment of the invention. Cf. In re Bernhart, 417 F.2d 1395, 1400, 57 CCPA 737, 744 (1969).

The board alluded to the proprietary nature of the structure of the IBM 1620 and the lack of access to information concerning that structure. Appellants offered, in a request for reconsideration, to supply such information, but the board in a subsequent decision made no specific response to that offer. Appellants contend that to submit the available technical manuals which set forth the intricacies of that structure would be to grossly encumber the record with unnecessary details concerning what is essentially an article of commerce. We agree and find no necessity for such a submission. We think it is somewhat unrealistic to suggest that the specification would become nonenabling in the future by change of manufacturer’s requirements. See In re Coleman, 472 F. 2d 1062 (CCPA 1973); In re Argoudelis, 434 F.2d 1390, 58 CCPA 769 (1970). In any event, if there were no way to convert programs designed for one model of computer to other models which replace it, the art of data processing would be thrust into a state of havoc far more detrimental to the public than the disadvantage which would flow from the particular invention here involved becoming nonenabling. The first paragraph of § 112 does require that the IBM 1620 was in existence at the time of filing of appellants’ application, and no doubt that it was has been raised.

The examiner focused to some extent on a desk calculator and correctly distinguished such a structure from one which utilizes a computer as an integral physical element. However, the claims are not directed to a desk calculator, but rather an “electronic calculator” without limitation as to size or field of use. There is no need for appellants to support the means claims at issue with particular structure comprising a desk calculator. The solicitor understands this to be the case, but expresses concern that appellants may some day assert their broad claims against those who “come up with practical embodiments.” We see no basis for regarding the disclosed embodiment, which uses a computer, as impractical. However, assuming the solicitor meant a desk calculator, appellants’ assertion in that situation would engender consideration of the rules of construction inherent in the third paragraph of § 112. It is not now before us.

We conclude that the specification describes the invention and enables one skilled in the art to make and use the invention. The requirements of § 112 are satisfied, and the decision of the board is, accordingly, reversed.

Reversed.


source: Caselaw Access Project

license: Public Domain

text:
    Application of Samuel SMITH and Allen J. Hubin.
    Patent Appeal No. 8935.
    United States Court of Customs and Patent Appeals.
    Aug. 2, 1973.

      James A. Smith, St. Paul, Minn., Alexander, Sell, Steldt & DeLaHunt, St. Paul, Minn., attorneys of record, for appellants. Ellsworth H. Mosher, Arlington, Va., Stevens, Davis, Miller & Mosh-er, Arlington, Va., of counsel.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Jack E. Armore, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and ALMOND, Senior Judge.
   LANE, Judge.

This is an appeal from the decision of the Patent Office Board of Appeals sustaining the § 112 rejection of claims 1, 6, 7, 13 and 51 of appellants’ application Serial No. 527,399 filed February 10, 1966, as a continuation-in-part of application Serial No. 290,218 filed June 24, 1963. We reverse.

The Invention

The claims are drawn to polymers which are cationically active at the ends. These polymers have the nonterminating characteristic of so-called “living” polymers. Appellants explain the concept in their brief as follows:

Polycationically active polymers, i. e., polymers, in which both ends of the polymer chain are cationically active, are “living polymers”. That is, they behave as though they were non-terminated and, at each end of the chain, can continue to “grow” or initiate the polymerization of a cationically polymerizable monomer, such as tetrahydrofuran. Thus, for example, if tetrahydrofuran monomer is added to a polycationically active polymer, it will polymerize onto both ends thereof, producing a higher molecular weight polymer which is also cationally [sic] active at each end of the polymer chain and which therefor[e] is polycationically active.

Appellants note that whereas previously discovered “living” polymers have been anionic, the present polymers are cationic. They state that:

Among the more important uses of such polymers is in the preparation of block copolymers and of polymers having various terminating groups such as polymeric polyamines, polymeric polyisocyanates and polymeric polythiols. They are also valuable polymeric alkylating agents.

Claim 1 broadly defines the polymer as cationically active at at least two ends by virtue of defined radicals and as “free of alkylatable groups.” The claim also identifies the “living,” or polycationic, activity of the polymer in terms of the polymer’s capacity to react in specified ways. Claim 1 reads as follows:

1. A polymer which is free of alkylatable groups and which is eationically active at at least two ends, each of which ends having associated therewith only a radical which:
(1) in anionic form is a non-terminating anion when 2 mol percent of a dissolved salt containing said anion is present during the polymerization of 99 mol percent tetrahydrofuran and 1 mol percent ethylene oxide with 2 mol percent of boron trifluoride as polymerization initiator at 20°C. to provide at least about 50 percent conversion of said monomers to polymer, and
(2) is an anion of a protonic acid stronger than 100% sulfuric acid,
said poly-cationic activity being characterized by said polymer’s ability (a) to react with at least a two-fold molar excess of ammonia at a temperature below about 25 °C. to produce a polymeric polyprimary amine or polyamide in which the amine or amide groups are in the terminal positions, and (b) to initiate the polymerization of tetrahydrofuran monomer at 25° C.

The other claims on appeal, dependent on claim 1, impose limitations not pertinent to the questions on this appeal.

Referring to the limitation in the claims to the effect that the polymeric moiety be “free of alkylatable groups,” appellants state in their brief:

The absence of alkylatable groups in the polymeric moiety is desirable because the living polymers are themselves effective alkylating agents and thus would tend to interact with any alkylatable group on the polymeric moiety, destroying the desired “living” characteristics.

As will be seen, that limitation is at issue in this appeal. The specification does not expressly disclose that the final polymer be free of alkylatable groups in the polymeric moiety (as opposed to the end units), and claim 1 on appeal is not an original claim.

The specification discloses several methods of making the polymers:

The substantially linearpoly-cationically active polymers of this invention can be prepared by two general methods. The first method involves direct conversion of monomer [acid polymerizable monomers such as tettrahydrofuran and sym-trioxane] to a di-cationically active polymer, using certain catalysts * * *. In a second method, preformed polymers in the 400 to 100,000 molecular weight range and having certain functional groupings are converted to poly-cationieally active polymers, as hereinafter described.

The “second method” is characterized as an indirect conversion process which can produce “either linear, di-cationically active or branched poly-cationically active polymers, depending upon the state of branching and terminal group functionality of the preformed polymer.”

The indirect method uses a polymer rather than a monomer as a starting material. The specification discloses the following:

Although the direct method of preparation of the di-cationically active polymers of this invention is extremely useful, it is generally limited to certain eationically polymerizable monomers, as explained previously. Considerable versatility is provided by an indirect method of preparing a terminally polycationically active polymer which utilizes as a starting material a preformed polymer (i. e. prepolymer) which has certain functional substituents only in terminal positions and which is otherwise free of alkylatable groupings (e. g. olefin, amine, hydroxyl, thiol, carboxylic acid, etc.). Appropriate prepolymers can be classified in two categories:
I. Polymers containing -OH or -SH (or the alkali metal salts thereof), -COOH or S03H terminal groups can be converted to terminally poly-cationically active polymers by reaction with either a non-terminating catalyst parent acid, or certain derivatives thereof as specified below, wherein the catalyst parent acid is capable of initiating the cationic polymerization of tetrahydrofuran per se.
-x- * -x- * * *
II. Polymers containing acyl (i. e. carbonyl or sulfonyl) halide terminal groups, preferably acyl chloride or acyl bromide end groups, may be converted to polymeric mixed anhydrides by reaction with a non-terminating acid (i. e. catalyst parent acid) capable of initiating the polymerization of tetrahydrofuran, or a salt thereof, preferably a silver salt thereof. Illustrative reactants for the preparation of terminally poly-cationically active polymers form the abovementioned prepolymers include FSOaAg, CFSOsSOsH, CFsSOgAg, HC104 and AgC104.

In addition to detailing how to make the claimed polymers directly from certain monomers and indirectly starting with preformed polymers, the specification provides disclosure on how to make the performed polymers and on how to use the claimed polymers. Methods of taking advantage of the polymers’ capacity as an alkylating agent are among the uses disclosed. The specification includes a number of examples which illustrate the methods of making and using particular embodiments of the invention.

The Decision of the Board

The issues before us are best introduced by the following selected portions of the board’s opinion:

Claims 1, * * * 6, 7, 13 and 51 stand rejected as failing to comply with the provisions of 35 U.S.C. 112 in that the expression “polymer which is free of alkylatable groups” is too broad and unwarranted by the disclosure. The examiner is of the view that the disclosure of the specification does not warrant claims of such scope. ******
* * * according to appellants’ specification and the representations made in their main brief on appeal, the “polymer which is free of alkylatable groups” may be prepared by (a) polymerizing acid polymerizable monomers or by (b) selecting preformed polymers with appropriate terminating groups and reacting the selected preformed polymers with compounds which provide the required terminal radicals.
With regard to (b), categories I and II as identified in * * * appellants’ specification constitute the only disclosed areas from which appellants’ selection is to be made. Categories I and II clearly do not encompass the entire field of polymers free of alkylatable groups; appellants do not appear so to contend, nor do they appear to contend that the two disclosed categories are even representative of the entire field. [Claim 1], however, encompasses the entire field.
Appellants do not urge that the disclosure concerning the monomers to be employed in alternative (a) is sufficient to support the broad claim terminology and we do not find that it does, either alone or together with the disclosure of categories I and II of alternative (b).
We conclude that the description of the invention contained in the specification does not provide sufficient information to disclose to one skilled in the art here involved the subject matter encompassed by the expression “polymer which is free of alkylatable groups” appearing in claims 1, 6, 7, 13 and 51. These claims therefore do not meet the requirements of 35 U.S.C. 112 in the sense that the disclosure of the specification is inadequate to support the subject matter claimed. We will sustain the rejection of claims 1, 6, 7, 13 and 51 grounded on this section of the statute.

The board adhered to its decision on reconsideration. The board rejected appellants’ argument that the invention as claimed has support of equal breadth in the specification as filed.

OPINION

The solicitor contends that the language of the board’s opinion plainly suggests a first paragraph, § 112, “description” requirement rejection. It is asserted that the board was correct in finding the specification not to describe or disclose the invention as broadly as claimed. In the solicitor’s view, the specification does not teach eationically active polymers having the nonterminating characteristic with the only limitation on the polymeric moiety being the requirement that it be free of alkylatable groups. The solicitor also argues that this gives rise to a failure to satisfy the “how-to-use” requirement of § 112, first paragraph.

The board’s opinion does not precisely set forth which of the several specific disclosure requirements of the first paragraph of § 112 is deemed not to be satisfied. We think that in its essence, the rejection is founded on the conclusion that the specification does not describe the invention as broadly as it is claimed. There is little language which is evocative of a position that the specification does not enable one skilled in the art to use the invention as broadly as it is claimed. However, we will deal with both the principal rejection based on the failure to satisfy the description requirement as well as a possible rejection based on the failure to satisfy the how-to-use requirement. We think it is clear that there has been no challenge to the specification disclosure with respect to either the manner of making the claimed invention or the best mode contemplated, and the solicitor does not contend otherwise.

The “Description” Requirement

This court has repeatedly recognized a separate description requirement in the first paragraph of § 112. See In re Smith, 458 F.2d 1389, 1394, 59 CCPA -, - (1972) and cases there cited. Acknowledgment of that requirement evidences appreciation of an important purpose of § 112, first paragraph, which is the definition of the attributes which a patent specification must possess as of the filing date to be entitled to that filing date as a prima facie date of invention. Satisfaction of the description requirement insures that subject matter presented in the form of a claim subsequent to the filing date of the application was sufficiently disclosed at the time of filing so that the prima facie date of invention can fairly be held to be the filing date of the application. This concept applies whether the case factually arises out of an assertion of entitlement to the filing date of a previously filed application under § 120, as was involved, e. g., in In re Smith, supra, and In re Ahlbrecht, 435 F.2d 908, 58 CCPA 848 (1971), or arises in the interference context wherein the issue is support for a count in the specification of one or more of the parties, e. g., as was the situation in Fields v. Conover, 443 F.2d 1386, 58 CCPA 1366 (1971), and Snitzer v. Etzel, 465 F.2d 899, 59 CCPA •- (1972), or arises in an ex parte case involving a single application, but where the claim at issue was filed subsequent to the filing of the application, e. g. as in In re Ruschig, 379 F.2d 990, 54 CCPA 1551 (1967) and In re Welstead, 463 F.2d 1110, 59 CCPA - (1972) (which involved a new matter rejection under § 132, but which was resolved on the authority of description requirement cases). Where the claim is an original claim, the underlying concept of insuring disclosure as of the filing date is satisfied, and the description requirement has likewise been held to be satisfied. See In re Gardner, note 1, supra; In re DiLeone, 436 F.2d 1404, 58 CCPA 925 (1971).

Compliance with the first paragraph of § 112 is adjudged from the perspective of the person skilled in the relevant art. This court has held that claimed subject matter need not be described in haec verba in the specification in order for that specification to satisfy the description requirement, In re Smith, supra; In re Lukach, 442 F.2d 967, 58 CCPA 1233 (1971), although where there is exact correspondence between the claim language and original specification disclosure, the description requirement would normally be satisfied. See Snitzer v. Etzel, supra; In re Robins, 429 F.2d 452, 57 CCPA 1321 (1970). The specification as originally filed must convey clearly to those skilled in the art the information that the applicant has invented the specific subject matter later claimed. In re Ruschig, supra, 379 F.2d at 996, 54 CCPA at 1559. When the original specification accomplishes that, regardless of how it accomplishes it, the essential goal of the description requirement is realized. See, e. g., In re Smythe, Cust. & Pat.App., 480 F.2d 1376, decided June 28, 1973.

Viewing the description-requirement rejection before us in light of these considerations, we conclude that the board erred in sustaining the rejection. We think the specification does clearly convey to those skilled in the art the information that appellants invented cationically-active “living” polymers as broadly claimed.

The specification admittedly does not contain language which corresponds identically to the language of the claims on appeal. However, the thrust of the disclosure is that appellants “have provided substantially linear poly-cationically active polymers” which exhibit the “living” character and have defined terminal groups to insure the reactivity characteristics set forth in claim 1. We do not think that one skilled in the art would, after reading the specification, assume that the invention was limited to only certain particular polycationically active polymers. The tenor of the specification is that a generic invention has been made.

The limitation that the polymeric moiety be free of alkylatable groups has support in the specification. The preformed polymers used in the indirect method of preparation are stated to be free of such groups in other than the terminal portions, and it appears that the conversion reaction effects a change in the terminal portions rather than the recurring units of the polymeric moiety. The specification discloses the alkylating ability of the polymers. We think one skilled in the art would immediately have recognized that the absence of alkylatable groups in the preformed polymers must be carried over to the final polymers in order for the nonterminating quality to be retained.

The solicitor finds support for the board’s position in the following passage of the specification, emphasis the solicitor’s :

From the foregoing description, it is evident that a great number of preformed polymers containing suitable terminal functional groups can be used to prepare the eationieálly active polymers of this invention, including such suitable preformed polymers as polymeric materials based on styrene, vinyl chloride, vinyl alkyl ethers, esters of acrylic and methacrylic acid, vinyl esters, and polymers such as polyesters, polyethers, etc.

The solicitor reads “a great number” and “suitable” preformed polymers as indicating that not all preformed polymers were contemplated. We are unable to find the support in that passage that the solicitor finds since there is no assertion by appellants that all preformed polymers are suitable nor do the claims encompass all preformed polymers. Only prepolymers “free of alkylatable groups” in the polymeric moiety can be used to make the claimed polymers by the indirect method, and the claims are limited to polycationically active polymers which are free of alkylatable groups in the polymeric moiety.

The specification as a whole conveys possession of the claimed invention as of the filing date. The description requirement of the first paragraph of § 112 is accordingly satisfied.

The How-to-TJse Requirement

The solicitor contends that to the extent that the effective scope of the claims exceeds that of the specification disclosure, the claims are based on a specification which fails to sufficiently disclose the manner of using the invention as broadly claimed. The solicitor envisions “diverse polymeric moieties encompassed by the claims but not by the disclosure * * However, we have determined that the scope of the claims is commensurate with the description of the invention provided in the specification.

If there were reasonable basis to doubt that significant classes of polymers encompassed by the claims could not be used in the manner disclosed in the specification, a rejection based on the failure of the specification to enable one skilled in the art to use the invention as broadly claimed might well lie. See In re Marzocchi, 439 F.2d 220, 58 CCPA 1069 (1971); In re Fouche, 439 F.2d 1237, 58 CCPA 1086 (1971). However, we do not find that either the examiner or board in any way articulated any reason for doubting that all polymers falling within the scope of the claims can be used in the same manner as those specifically disclosed in the specification.

Finding no basis upon which to question the use of all polymers within the claimed genus, and having determined that the scope of the genus is commensurate with the specification disclosure, we conclude that the how-to-use requirement is satisfied.

On the record here present, the board erred in holding the requirements of the first paragraph of § 112 not to be satisfied by the specification as applied to the claims on appeal. The decision of the board is accordingly reversed.

Reversed.

      . We do not have before us original claim 1. See In re Gardner, 475 F.2d 1389, supplemental opinion, 480 F.2d 879 (CCPA 1973).


text:
    Fred B. STENCEL et al., Appellants, v. Louis R. NORDINE, Appellee.
    Patent Appeal No. 8948.
    United States Court of Customs and Patent Appeals.
    Aug. 2, 1973.
    Donald A. Kaul, Washington, D. C., attorney of record, for appellants; Roy-lance, Abrams, Berdo & Kaul, Washington, D. C., of counsel.
    Harrison E. McCandlish, Arlington, Va., attorney of record, for appellee; John D. Nies, Arlington, Va. (Strauch, Nolan, Neale, Nies & Kurz, Arlington, Va.), of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and ALMOND, Senior Judge.
   LANE, Judge.

This is an appeal from the decision of the Board of Patent Interferences awarding priority of invention of the subject matter of the three counts in interference to the junior party Nordine. The senior party, Stencel et al. (Stencel), is involved on U. S. Patent No. 3,281,098 which issued October 25, 1966, on application Serial No. 439,568 filed March 15, 1965. Nordine is involved on application Serial No. 470,111 filed July 7, 1965, as a joint invention of Nordine and another, later converted to the sole inventorship of Nordine. Stencel rested on the filing date of its patent as a constructive reduction to practice. Nordine took testimony and introduced evidence in an effort to establish prior conception and actual reduction to practice. The board held that Nordine had actually reduced the invention of the counts to practice prior to Stencel’s filing date and accordingly awarded priority to Nordine. We agree and affirm the board’s decision.

The Invention

The invention is a so-called “fail-safe parachute apparatus” which structurally is a combination of means for ballistically spreading a parachute canopy, to which we shall refer as the “ballistic system,” and a fail-safe or back-up system designed to enable the parachutist to free the canopy in the event of malfunctioning of the ballistic system. Although the overall combination is in existence at all times, the operation of either system is alternative to the other. The systems are never both operating since when the ballistic system is functioning properly, the back-up system is not in use, and, likewise, the back-up system only operates when the ballistic system does not.

There is no need in this case to go into great detail concerning the structure and operation of the respective ballistic and fail-safe systems. Ballistic spreaders per se were apparently known in the art prior to the invention of the present apparatus. The ballistic spreading of a parachute is accomplished by actuating an explosive charge which propels a series of projectiles radially outward to open the canopy. The parachutist is able to manipulate means accessible to him so as to set off the explosive charge. In the event of a failure of the charge to explode, continued manipulation of said means apparently frees the projectiles and the canopy is then able to spread aerodynamieally.

Count 1 defines an apparatus consisting of a parachute canopy and the two systems discussed above. Counts 3 and 4 do not require the canopy and are directed to the combination of the ballistic and fail-safe systems which form a canopy-spreading device. Count 1 is reproduced below. It is to be noted that the power means, projectiles, and actuating means comprise the ballistic system while the releasable restraining means and control means comprise the fail-safe system.

1. In a fail-safe parachute apparatus, the combination of a parachute canopy;
means for connecting said canopy operatively to a load for suspension of the load from the canopy when the canopy has been spread;
a power operated canopy spreading device comprising power means; a plurality of projectiles connected to said canopy and occupying an initial position on said spreading device and arranged to be projected radially outwardly therefrom, to positively spread said canopy, as a result of actuation of said power means; actuating means operatively arranged to actuate said power means in response to an actuating input; and releasable restraining means operatively arranged to retain said projectiles in said initial position prior to actuation of said power means; and
control means connected to said actuating means and to said restraining means and operative to release said restraining means, thereby freeing said projectiles, whenever an actuating input is supplied to said actuating means.

Nordine’s Case for Reduction to Practice The board initially found as follows: The record * ' * establishes,

and it is not controverted that beginning in 1963 and continuing to completion in 1964 at least five prototypes or structures were built embodying the concept of Nordine and were tested in various ways. Except as specifically noted hereinafter, it is clearly apparent that Nordine’s conception and the structures embodying it support every element of structure required by the counts in issue.

At Nordine’s instance, the board limited consideration to prototype numbers 1, 4 and 5.

Steps were taken to render the ballistic system of prototype 1 inoperative so as to test the back-up system. The board noted that:

These tests were performed [between March and May 1964] by suspending the parachute assembly to be tested with an attached appropriate weight from a T6 airplane which was flown over the desired drop zone where the parachute was released and then observed to determine whether or not it opened. * * *
Nordine’s testimony was to the effect that the last three tests, in that series of six, were successful and that, for the tests he observed, he actually saw the parachutes open. He testified that the three failures were not attributable to the invention under test .but due to the equipment used to conduct the tests. He regarded the tests series as successful because each time that the system was actually tested, it did work.

Prototypes 4 and 5 were tested between July and December 1964. The board said:

Certain of these tests * * * were ground tests which tested only the ballistic mode of operation of those prototypes. In addition there were some ground tests to test the backup mode of operation but during these tests the prototypes did not contain any ballistic charge. They were deliberately disabled.

These were successful in that the canopy spread. A series of air-drop tests were conducted. Of these, the board stated:

Nordine relies on the noted tests performed on November 13, November 19, December 1, and December 4, 1964, all of which he regards as demonstrating the successful operation of the backup on the prototype assembly of Exh. 6.
In all of these tests except that on December 4, 1964, the ballistic mode was deliberately disabled by the omission of the ballistics from the system tested. This was done to insure the testing of the backup mode, “ . to show that the parachute is fail-safe.”

With respect to the test conducted on December 4th, the board said as follows:

[Johnson, who packed the parachute,] testified that the test on December 4, 1964 was to have been a ballistic test; that he acted as a ground observer and recoverer in that test; that he saw the parachute open; and that upon examination of the equipment after it landed it was found that a part of the firing mechanism had broken off and that the backup mechanical system had operated to permit the parachute to open. He testified that Nordine was in the aircraft with the pilot Griffiths; that the plane was landed just opposite him with the test load; and that Nordine got out “ . . . and came over and we examined the test equipment together” and Nordine “took the firing pin apart and removed the live cartridge.” * * * He recalled this as the last test.

Nordine urged that the testing was both successful and adequate for reduction to practice. The board agreed.

OPINION

Stencel asserts that the testing conducted by Nordine was insufficient for a reduction to practice for various reasons. Stencel argues that with the exception of the December 4th test, none of the tests were performed on a device having all of the elements of the counts. Testing of prototype 1 is criticized since the ballistic system was inoperative. Testing of prototypes 4 and 5 is criticized since in any given test either the ballistic system was inoperative or the fail-safe system was not tested, i.e., the ballistic system was operative and therefore the fail-safe system did not come into play. The December 4th test is conceded to have been one in which all of the elements of the count were met by the device being tested, but Stencel argues that the test was a failure since the ballistic system did not work. The board agreed that the December 4th test was the only one in which all of the elements were present, but considered the totality of testing to establish reduction to practice.

Steneel additionally argues that none of the tests were full-flight tests and contends that such full-flight testing was necessary. The air-drop testing is urged not to have been comparable to full-flight testing.

We first note that the board correctly found that a device upon which the counts read was constructed. This does not appear to be controverted. Testing to determine that the device works is separate from actually constructing the device. Hence, although Stencel argues that the complete device was not tested, it is a fact that a complete device was built.

We think that the testing here proves that the invention will perform satisfactorily in the intended functional setting. See Koval v. Bodenschatz, 463 F.2d 442, 447, 59 CCPA-,- (1972). We do not agree that an invention such as that defined by the involved counts must necessarily be tested under flight conditions as Steneel suggests, compare Williams v. NASA, 463 F.2d 1391, 59 CCPA - (1972), although there must be a relationship between the test conditions and the intended functional setting. Koval v. Bodenschatz, supra. The totality of testing must be considered to ascertain whether or not the standards have been met. See Voisinet v. Coglianese, 455 F.2d 1064, 1068, 59 CCPA -.,- (1972).

We think that the board correctly assessed the totality of testing. The board viewed the ground testing of the ballistic system as sufficient to establish the operability of that system. We find no error in that conclusion. Referring to the air-drop testing of the back-up system, the board found that the structure functioned as intended. We agree that that testing established the suitability of the back-up system. Although the December 4th test is regarded by Stencel as a failure, we view it as properly giving rise to a strong conviction of the success of the back-up system. However inadvertently it happened, that test brought the back-up system into the precise functional setting intended, accidental miscue of the ballistic system, and demonstrated that the back-up system could be expected to function in that setting.

On the subject of full-flight testing versus air-drop testing, we hold that the test conditions sufficiently simulated actual use conditions to lead reasonably to the conclusion that success under the test conditions could be extrapolated to success under actual conditions.

Stencel additionally urges that Nor-dine’s testimony relative to the December 4th test lacks corroboration. The board viewed the testimony of Johnson and the pilot, Griffiths, as adequate corroboration. Stencel attempts to discredit the testimony of these witnesses. We think Stencel’s contentions are strained. We are not disposed to disbelieve Johnson’s testimony as Stencel implicitly urges we do. We think the board correctly found that there was adequate corroboration for the last test.

We have carefully considered the record before us and the arguments advanced by Stencel in its brief and at oral hearing. However, we find no error in the board’s conclusions.

Stencel filed a motion to assess part of the cost of printing of the record to Nordine. Nordine had supplemented the record which had been ordered by Stencel. The court deferred consideration of Stencel’s motion until this decision.

Stencel contends that the material added by Nordine could not have been expected to be either necessary or useful to the court in resolving the issues on appeal. Stencel states that the appeal has been based “upon the fact that Appellee’s testing was not adequate to show actual reduction to practice and that the final test was not adequately corroborated.”

Nordine argues that the material added was “reasonably necessary for a proper determination of all the issues raised by Appellants’ Reasons |or Appeal.” Nordine contends that we should look to the Reasons of Appeal rather than the issues ultimately argued by Stencel in. its brief. Nordine points to Reason of Appeal #2, which asserts error on the board’s part in “holding that Nordine’s conception and the structures embodying it support every element of structure required by the counts.”

Nordine’s additions to the record were fairly selective, albeit extensive, and it is our impression that reasonable prudence on Nordine’s part justified those additions. See Cosmetically Yours, Inc. v. Clairol, Inc., 424 F.2d 1385, 1388, 56 CCPA 1071, 1073 (1970). Stencel has not pointed to specific additions with an explanation of the inappropriateness of their inclusion in the record. Nordine has shown that the additions in general were prompted by Stencel’s Reasons of Appeal. Under the circumstances, we will not assess any part of the cost of printing to Nordine. Stencel’s motion is accordingly denied.

For the reasons set forth herein, the decision of the board is affirmed.

Affirmed.


author: JOHNSON, Judge. HASTIE, Judge

text:
    BALDWIN COUNTY ELECTRIC MEMBERSHIP CORPORATION et al., and City of Luverne, et al., Plaintiffs-Appellants, v. PRICE COMMISSION et al., and Alabama Power Company, Defendant-Appellee and Intervenor-Appellee.
    Nos. DC-4, DC-5.
    Temporary Emergency Court of Appeals,
    June 18, 1973.
    Certiorari Denied Oct. 15, 1973.
    See 94 S.Ct. 230.

      D. Biard MacGuineas, Washington, D. C. (Volpe, Boskey & Lyons, Reuben Goldberg and Arnold Fieldman, Washington, D. C., and Maurice F. Bishop, Birmingham, Ala., with him on the brief), for appellants.
    Robert E. Easton, Atty., Dept, of Justice, Washington, D. C. (Harlington Wood, Jr., Asst. Atty. Gen., and Harold H. Titus, Jr., U. S. Atty., Washington, D. C., with him on the brief), for Government appellee.
    George F. Bruder, Debevoise & Liberman, Washington, D. C., for intervenorappellee.
    Before TAMM, Chief Judge, and HASTIE and JOHNSON, Judges.
   JOHNSON, Judge.

Appellants, various cooperatives and municipalities which are wholesale customers of the Alabama Power Company, seek a reversal of an order of the district court which granted appellees’ motion for summary judgment. The effect of the lower court’s order was to approve an action of the Price Commission allowing certain rate increases by Alabama Power in the sale of electric power to the appellants. We affirm.

On November 1, 1971, the Alabama Power Company filed with the Federal Power Commission (FPC) an application for a rate increase to be effective January 3, 1972, covering sales by the company to the appellants. Rather than reject outright a proposed rate increase, the FPC had authority to approve the increase but delay its effect during a suspension period lasting as long as five months. 16 U.S.C. § 824d(e). On December 30, 1971, the FPC issued an order permitting Alabama Power’s rate increase to go into effect February 2, 1972, after a one-month suspension period ordered to commence January 3. On January 13 and 14, the appellants in this case filed applications for rehearing requesting the FPC to reconsider its order of December 30.

On January 14, 1971, while this application for rehearing was pending, the Price Commission published new regulations dealing with rate increases by public utilities to become effective January 17, 1972. Section 300.16(i)(3) of these new regulations provided:

(i) Regulated public utilities — Interim report on increases put into effect subject to accounting and refund.
* ->:■ * * *
(3) Notwithstanding any other provision of this section, no price of the kind covered by this paragraph (i) may be increased before the end of the maximum suspension period permitted by law unless the regulatory agency has certified to the Price Commission that there is good cause for an earlier effective date, together with its reasons therefor, and the Price Commission has approved that certification.

37 F.R. 653 (January 14, 1972).

On January 21, the appellants filed with the FPC a Supplemental Application for Rehearing requesting the FPC to comply with Section 300.16(i)(3) of the Price Commission Regulations by suspending for the full five-month statutory period Alabama Power’s proposed increase, which had not yet gone into effect. At the same time, the appellants notified the Price Commission of the status of the proceeding before the FPC and specifically of their contention that Section 300.16 required the full five-month suspension of the proposed rate increase. On February 11, the FPC issued an order denying rehearing, finding that Section 300.16(i)(3) did not require alteration of its earlier order:

The order as issued December 30, 1971, is in conformity with the Regulations in effect at that time.

On February 17, 1972, appellants filed with the Price Commission their Request For Rescission Or Suspension of Interim Rate Increase Permitted To Go Into Effect In Violation Of The Price Commission’s Regulations. This submission expressly called attention to the FPC’s failure to comply with the provisions of Section 300.16(i) (3). On March 24, 1972, the Price Commission published its Decision List No. 74-56, by which Alabama Power’s rate increase was permitted to stand. On March 31, 1972, in a letter to appellants’ attorney, Mr. Robert D. Banker, Acting Chief of the Public Utilities and Regulated Industries division of the Price Commission, confirmed that their request for rescission or suspension had been taken into account by the Commission in making its decision of March 24. Subsequently, the appellants filed suit in district court pursuant to Section 210(a) of the Eeonomic Stabilization Act Amendments of 1971.

Appellants argue that the Price Commission violated its own regulations, Section 300.16(i) (3), in failing to require that Alabama Power’s rate increase be suspended for the five-month maximum suspension period permitted by law. It is not argued that the Commission’s approval of the increase was inconsistent with other decisions of the Commission or that the regulation itself is contrary to the purposes of provisions of the Economic Stabilization Act. P.L. No. 91-379 (Aug. 15, 1970), as amended by P.L. No. 92-210 (Dec. 22, 1971). It is argued only that, by its language, Section 300.16(i)(3) applies to Alabama Power’s rate increase, which was scheduled to take effect after January 17. The Price Commission, however, did not interpret the regulation as applying to Alabama Power’s rate increase, since the proposed increase was reviewed and decided upon by the FPC prior to the effective date of the new Price Commission regulations, even though the actual rate increase did not take place until after the regulation was in force.

Appellants’ argument needs little discussion. It is true that a governmental agency may not act contrary to its own regulations. E. g. Service v. Dulles, 354 U.S. 363, 372, 77 S.Ct. 1152, 1 L.Ed.2d 1403 (1957); Accardi v. Shaughnessy, 347 U.S. 260, 74 S.Ct. 499, 98 L.Ed. 681 (1954). Here, however, Section 300.16(i)(3) is silent on the point in issue between the parties. The section states that no price covered by the section may be increased before the end of the maximum suspension period permitted by law. It does not, however, purport to alter the status of valid suspension orders already issued at the time the regulation became effective. Nor does it purport to exempt rate increases which were approved prior to the effective date of the regulations. In such a case, an administrative agency’s interpretation of its own regulation is entitled to great deference by the courts. See, e. g., Udall v. Tallman, 380 U.S. 1, 16, 85 S.Ct. 792, 13 L.Ed.2d 616 (1965); University of Southern California v. Cost of Living Council, 472 F.2d 1065 (Em.App.1972); United States v. Lieb, 462 F.2d 1161 (Em.App.1972). As a further consideration, there is a strong presumption against construing regulations so that they have the effect of altering regulatory actions already taken. See Davis, Administrative Law Treatise § 508. Under these circumstances, it clearly cannot be said that the Price Commission acted arbitrarily or capriciously in determining that its regulation 300.16(i)(3) applied prospectively only.

Accordingly, the judgment of the district court is affirmed.

HASTIE, Judge

(dissenting).

I am unable to join the majority in giving legal effect to the purported action of the Price Commission that is challenged in this case.

Seeking a substantial increase in the authorized rates that then applied to its sales of power to wholesale customers, including cooperatives and municipalities, Alabama Power Company filed with the Federal Power Commission an application for legally prerequisite agency sanction of this price change. The application was filed November 1, 1971, and it proposed that the higher rates be permitted to become effective January 3, 1972.

As customers who would have to pay the proposed price increases, the municipalities and cooperatives that are plaintiffs in this case filed timely protests with the Federal Power Commission and at the same time requested that agency to suspend the proposed increase for a five-month period pending consideration of and decision on the merits of the proposal, a procedure authorized by Section 205(e) of the Federal Power Act. 16 U.S.C. § 824d e. On December 30, 1971, the Commission imposed a suspension period of one month only, thus permitting the proposed increase to become effective on an interim basis on February 2, 1972. Two members dissented on the ground that a five-month suspension, the maximum authorized by law, should have been imposed as the present appellants had requested.

On January 14, 1972, the Price Commission, exercising its unquestioned power under the Economic Stabilization Act, published new regulations applicable to rate increases by all such public utilities as Alabama Power Company. Subsection 300.16(i)(3) of the new regulations, 37 Fed.Reg. 653 (1972), provided that no interim price increase should be put into effect “before the end of the maximum suspension period permitted by law [in this case five months] unless the regulatory agency [here the Federal Power Commission] has certified to the Price Commission that there is good cause for an earlier effective date, together with its reasons therefor, and the Price Commission has approved that certification”.

Recognizing the applicability of this regulation to its imminent interim price increase, Alabama Power Company wrote to the Price Commission on January 18, 1972, that it was undertaking to obtain the required certification by the Federal Power Commission and that “it was expected that such certification will be obtained in sufficient time for tender to the Price Commission prior to February 3, 1972”.

On January 21, 1972, the appellants asked the Federal Power Commission to amend its interim rate order to conform to the new Price Commission requirement of a five-month suspension. The Federal Power Commission neither granted this relief nor certified to the Pay Commission that a suspension period of less than five months was warranted in this case. Instead, it entered an order on February 11, 1972, refusing to reconsider its December order and justifying this disposition of the matter by a correct but unilluminating statement that the order of December 30, 1971, “is in conformity with the Regulations in effect at that time”.

In the meantime, when the one-month suspension period ended on February 2, Alabama Power Company had put its rate increases into effect.

Challenging this action, the appellants filed with the Price Commission on February 17, 1972, a petition asking that agency to suspend or rescind the February 2 interim rates as price increases prohibited by Regulation 300.16(i)(3). Apparently in response to this petition and claims asserted in other unrelated cases, there issued from the Price Commission’s “Office of Public Affairs” on March 24, 1972, an unsigned document entitled “Decision List #74-56”. This eight page tabulation of actions taken on many matters included an announcement that the Commission had approved the Alabama Power Company interim rate increase. The parties to this suit received copies of this document and nothing more.

On April 13, 1972, the appellants filed the present action against the Price Commission and Alabama Power Company in the District Court for the District of Columbia seeking a declaratory determination that the announced administrative approval of Alabama Power Company’s February 2, 1972, interim price increases was invalid as violative of Section 300.16(i)(3) of the Commission’s own regulations. The opposing parties moved for summary judgment and the court entered summary judgment for the defendants. This appeal has been taken from that judgment.

Certain additional facts about the purported Price Commission action in this case are before us and are relevant to the contentions of the parties. In the district court the plaintiffs submitted and the Price Commission responded to several interrogatories. One interrogatory inquired whether “any of the members of the Price Commission participated in” the decision now in question. The Price Commission answered, “No”. A second interrogatory read: “Was the Decision recorded in any minute or other record of action, or opinion or other document maintained by the Price Commission apart from Decision List #74-56?” The interrogatory also requested a copy on any such document or record of decision. To this the answer was: “Such matters are irrelevant and privileged as the internal work product of the Commission . . . ” The next interrogatory asked the Commission to “identify the individual or individuals” who made the decision. Declining to answer this question, the Commission dismissed it as “irrelevant”.

This refusal of an administrative agency to supply a party aggrieved by its announced and purported action with a copy of any formal document embodying that decision or to disclose the identity of the individual or individuals who rendered the decision is amazing and perhaps unprecedented. Accordingly, at the argument of this appeal, we called upon counsel for the Commission to supply the court with the information in question. No document other than the already mentioned “Decision List” was produced in response to our request. We must conclude that there is nothing else in the nature of a decision.

However, the Commission has submitted affidavits showing successive subdelegations of the Commission’s authority to dispose of individual petitions concerning price increases: first, from the Commission to its Chairman; second, from the Chairman to the Executive Director; and third, from the Executive Director to the Director of Program Operations. This is related to the present case by an affidavit of Don J. Wortman, Director of the Office of Program Operations, averring that “the price increase application of the Alabama Power Company was approved by my office on March 22, 1972”. (emphasis added). This language must mean that Mr. Wortman himself did not personally make the decision. Even now the subordinate staff member who made the decision approving the Alabama Power Company’s interim increase remains anonymous. And there is not even a formal record of this subordinate’s action, much less any disclosure of its basis, except for the inclusion of the Alabama Power Company case on a decision list published by the Commission’s “Office of Public Affairs”, presumably after the anonymous staff member instructed that office to list that interim price increase among those to be announced as approved.

It may be helpful to approach the issues that require adjudication by considering what the situation would have been absent any purported Price Commission validation of the February 2 interim price increase.

Alabama Power Company originally proposed that increased rates go into effect January 3, 1972. The Federal Power Commission’s order of December 30, 1971, authorized a February 2, 1972, interim effectuation of the proposed increases. But before these interim rates could become effective, the Price Commission’s January 14, 1972, publication of Regulation 300.16(i) (3) expressly prohibited any interim increase until the maximum authorized suspension period, here five months, should elapse unless, in an appropriate case, the Federal Power Commission should certify, with an affirmative showing a good cause, that an earlier effective date was warranted and unless the Price Commission should approve that documented certification. Since no Federal Power Commission certification was sent to or acted upon by the Price Commission in this case, Section 300.16(i) (3) would invalidate Alabama Power Company’s subsequent interim price increase, unless that regulation was on its face inapplicable to interim increases that had been administratively approved by the Federal Power Commission before its adoption to become effective on a date subsequent thereto. The plain reading of subsection 300.16(i)(3) is that after its January 14, 1972, publication, “no price may be increased” by a seller without compliance with the subsection’s requirements. Thus, the regulation operates comprehensively upon all future changes in prices, without regard for the time of their anticipatory sanction by some other regulatory agency whose authority in the premises is subordinate to that of the Price Commission. At the same time, consideration of the judgment of another concerned regulatory agency is not foreclosed, since express provision is made for Price Commission consideration of an appropriate agency’s certification that shall present adequate justification for making an interim price increase effective without the otherwise mandated full period of suspension. It will be remembered that Alabama Power Company recognized the applicability of this regulatory scheme to its imminent price increase when it wrote to the Price Commission in January stating its intention to obtain Federal Power Commission certification and submit it for approval before the scheduled date of the increase.

A contention now made by Alabama Power Company that subsection 300.-16(i) (3) should not be given “retroactive” application seems to be an afterthought and is beside the point. As has been pointed out, that subsection refers to and restricts only the actual effectuation of price increases. And Alabama Power increased its rates nearly' three weeks after the subsection became law. Only a roll back of prices already in effect would constitute a dealing with prices retroactively.

Thus, but for the subsequent purported Price Commission approval of the Alabama Power Company’s February 2, 1972, interim price increase as announced in “Decision List #74-56”, that price increase would have been unlawful as a plain violation of the controlling regulation. It remains, therefore, to consider whether the otherwise invalid increase was validated by what was done in the name of the Commission.

The Price Commission was the delegatee of the power to control prices which the Economic Stabilization Act conferred upon the President as a major aspect of authority granted him to stabilize the economy. By successive internal subdelegations the Director of Program Operations was authorized in some circumstances to act for the Commission in approving individual requests for permission to increase prices. One may doubt the desirability of, but recognize impelling practical reasons for this sub-delegation of the Commission’s adjudicatory authority to a subordinate two steps removed from the Commission itself. But in this case, as has been pointed out, the decision was not made by the staff officer who was the Commission’s subdelegatee, but by an unidentified employee in the office of the subdelegatee. I see no way in which such action of a remote subordinate without Commission authorization can lawfully be recognized as effective Commission action validating an otherwise unlawful price increase. And neither the appellees nor my Brothers have suggested how this action can be legitimated.

But this is not the only deficiency here. Even if the Director himself had decided this case, exercising duly delegated authority to approve price increases, he would have been bound and restricted by the relevant regulations of the Commission. Here, the relevant regulation required a five month suspension of an interim price increase unless the Federal Power Commission should first submit to the Commission a documented certification and the Commission should then approve the proposal thus justified. It might well be appropriate for the Commission’s subdelegatee to consider a duly submitted Federal Power Commission certification and justification and to decide for the Commission whether this required submission was adequate and whether the recommended price increase should be approved. But in this case the acceleration of the interim increase was approved without either the certification or the supporting justification that subsection 300.16(i) (3) expressly required. Thus, the person making the decision undertook to disregard or waive a plain requirement of the Commission’s regulations. This the subdelegatee himself had not power to do. The action taken in this case went beyond the bounds of the delegated authority and thus, in my view, was legally a nullity whether the subdelegatee himself or someone else in his office was the actor. In my view, the majority opinion incorrectly treats this case as though the Commission itself, not a remote subordinate, had decided to grant an exception to its regulations.

For these reasons, I would reverse the decision of the district court.

I have not overlooked the additional question whether, other considerations aside, mere announcement of summary Commission approval of a contested individual price increase is, for purposes of judicial review, a sufficient performance of the Commission’s adjudicatory function. On occasion courts have vacated decisions of administrative agencies because the agency action has lacked explication deemed essential to in•formed judicial review. Recognizing this need for explication, Congress has mandated that denial of a written petition “of an interested person made in connection with any agency proceeding shall be accompanied by a brief statement of the grounds for denial”, unless “the denial is self-explanatory”. 5 U.S.C. § 555(e). And section 207 of the Economic Stabilization Act Amendments of 1971, 85 Stat. 743, 12 U.S.C. § 1904 note, explicitly makes this requirement applicable to administrative decisions of wage and price control agencies.

Apparently in an effort to comply with this requirement without imposing upon itself the burden of giving reasons for each original decision, the Price Commission has provided that when an aggrieved party asks it to reconsider a decision and the petitioner “makes a prima facie showing that the Commission’s initial action was erroneous in fact or in law”, the Commission, “where administratively feasible . . . will issue a decision in writing directed to the appellant setting forth the facts, conclusions of law, its decision, the basis therefor and an appropriate order”. See Regulations §§ 305.71, 305.38. But this provision is of no help to an aggrieved party who wants and needs to know the basis of original decision in order to “make a prima facie showing” of decisional error such as must appear in his petition for reconsideration. Thus, it is doubtful whether the appellants in this case could have obtained an explanation of the announced agency approval of the challenged interim rate increase by invoking this restrictively qualified procedure for “reconsideration”. In any event, they did not try, probably because they were not informed that a subordinate had made the decision. Thus, they brought entirely unexplained administrative action into the judicial forum for review.

Certainly, the agency action as announced in this case does not conform to the requirement of section 555(e) of title 5. But since what was done is invalid for other reasons, I find it unnecessary to decide whether this defect would require a remand to the Commission despite the failure of the appellants to ask for agency reconsideration and explanation of what was decided. Suffice to say, as the matter now stands informed judicial review of agency approval of interim rate increases is seriously impeded, if not precluded, by agency failure to state the basis of that decision.

      . The applicable regulation at that time was Section 300.16(a) which read in pertinent part as follows :
      (a) In general. A person which is a regulated public utility . . . may charge a price, rate or tariff in excess of the base price if that increase has been approved by a regulatory agency or other appropriate legal authority. A public utility which had revenues of $100 million or more during its most recent fiscal year shall inform the Price Commission of all requests for rate increases and immediately notify the Commission in writing of an agency order granting an increase and of any other authorized increase.
      * * :¡: * *
      In order to insure that the goals of the economic stabilization program are attained, the Price Commission reserves the right to review and limit the amount of any such requested increase, ordered increase, or other authorized increase.
      36 F.R. 23977 (Dec. 16, 1971).

      . P.L.N. 92-210 (Dec. 22,1971).
      § 210. Suits for damages or other relief (a) Any person suffering legal wrong because of any act or practice arising out of this title, or any order or regulation issued pursuant thereto, may bring an action in a district court of the United States, without regard to the amount in controversy, for appropriate relief

      . The contention that the decision allowing the rate increase was not an “interpretation” of the regulation because it was made by staff members and not by the Commission is not well-taken. It appears from the record that the authority to appi-ove tiie rate increase, vested in the Price Commission, was properly delegated to staff officials of the Commission. In any case, since the appellants, without complaining to the Commission, proceeded directly to federal court to challenge an action of the Commission, they will not now be heard to argue that, in fact, there ■was no “action” taken by the Commission.

      . Appellants urge that this doctrine should not apply here since the Price Commission did not articulate a reason for its interpretation of the regulation. It is true that the Commission merely issued a list of approved rate increases. In the context in which the rate increase was approved, however, it was quite clear that the Commission accepted the FPC’s position that its actions had been in compliance with the regulations in effect at the time. The Price Commission was fully aware of the application of appellants to the FPC requesting it to comply with Section 300.16 (i) (3) and of the FPC order denying this application and states its position. Indeed, the appellants had made certain that it was brought to the attention of the Commission. Further, the Commission made known to the appellants by letter that it had considered their request for rescission. Under the circumstances the Commission, by approving the rate increase, assented to the rationale expressed by the FPC.

      . It whs an agreed premise of our decision in Bishop v. Public Service Co. of N.II., Em.App., 1972, 467 F.2d 510, that a “freeze” of public utility rates, imposed by the Price Commission, precluded price increases that already had been authorized by a local regulatory agency to become effective at a time subsequent to the freeze order. Similarly, it was held in United States v. Cincinnati Transit, Inc., S.D. Ohio 1972, 337 F.Supp. 1068, that the price freeze of August 15, 1971, barred a public utility price increase that had been authorized by a local regulatory agency before August 15 but was not scheduled to become effective until after that date.

      . The government recognizes, as does the majority opinion, that the Commission itself is legally bound to act in accordance with its own regulations. Cf. Service v. Dulles, 1957, 354 U.S. 363, 77 S.Ct. 1152, 1 L.Ed.2d 1403 ; Accardi v. Shaughnessy, 1954, 347 U.S. 260, 74 S.Ct. 499, 98 L.Ed. 681.

      . The Commission has argued, whether rightly or wrongly, that it may make reasonable exceptions in the application of its regulations to particular cases. However that may be, we have here a case in which a staff officer, without Commission approval, has acted contrary to an explicit requirement of a controlling regulation.

      . 12. g., F.P.C. v. United Gas Pipe Line Co., 1968, 393 U.S. 71, 89 S.Ct. 55, 21 L.Ed.2d 55; Burlington Truck Lines, Inc. v. United States, 1962, 371 U.S. 156, 83 S.Ct. 239, 9 L.Ed.2d 207; S.E.C. v. Chenery Corp., 1943, 318 U.S. 80, 63 S.Ct. 454, 87 L.Ed. 626. Recently, the Court of Appeals for the District of Columbia has found it necessary to remand several cases in which summary agency decisions have issued without explanation. Environmental Defense Fund, Inc. v. Ruckelshaus, 1971, 142 U.S.App.D.C. 74, 439 F.2d 584; Medical Committee for Human Rights v. S.E.C., 1970, 139 U.S.App.D.C. 226, 432 F.2d 659; Environmental Defense Fund, Inc. v. Hardin, 1970, 138 U.S.App.D.C. 391, 428 F.2d 1093.

      . “Sound principle sustains tlie practice of vesting choice of policy with the [administrative agency]. Its corollary is that the specific decision must be explained, not merely explainable, in terms of the ingredients announced by the . . . [agency] as comprising [its] policies and standards.” Environmental Defense Fund, Inc. v. E.P.A. 150 U.S.App.D.C. 348, 1972, 465 F.2d 528, 539.


author: AINSWORTH, Circuit Judge:

text:
    UNITED STATES of America, Plaintiff-Appellee, v. Calvin HILL, Defendant-Appellant.
    No. 72-3815
    Summary Calendar.

    United States Court of Appeals, Fifth Circuit.
    July 23, 1973.
    Fred L. Cavalli, court-appointed, Atlanta, Ga., for defendant-appellant.
    John W. Stokes, Jr., U. S. Atty., William P. Gaffney, Asst. U. S. Atty., Atlanta, Ga., for plaintiff-appellee.
    Before WISDOM, AINSWORTH and CLARK, Circuit Judges.

       Bule 18, 5 Cir.; see Isbell Enterprises, Inc. v. Citizens Casualty Company of New York et al., 5 Cir., 1970, 431 F.2d 409, Part I.

   AINSWORTH, Circuit Judge:

Defendant Calvin Hill was found guilty by a jury of distributing heroin in violation of 21 U.S.C. § 841(a)(1) (1970) and sentenced by the district court to four years’ imprisonment, to be followed by three years- parole. The district court also recommended to the Attorney General that defendant serve his sentence at an institution where he could receive treatment for his drug addiction. Appellant Hill raises several points on appeal, including the sufficiency of evidence to warrant conviction, and the general admission of a witness’ prior statement. We affirm.

Stephen T. Garrison, an undercover investigator with the DeKalb County Police Department of Atlanta, Georgia, testified that he and an informant, Stephen Anthony Settles, went to Cassandra Bufford’s apartment on Fulton Street in Atlanta in the afternoon of September 26, 1972 to complete the purchase of one-half ounce of heroin for $700. “Sandra” said the arrangements were complete, and introduced Isaiah Grant. Grant made a phone call and then got into an automobile driven by an unidentified individual. With Garrison and Settles following in another automobile, Grant went to a gasoline station on Auburn Avenue where he picked up Hill. Then they drove farther and finally pulled down a side road and stopped. Hill got out of the car and disappeared around a corner.

Grant walked back to Garrison’s car and asked for $700. Garrison insisted on a sample first, so Grant went around the same corner as Hill and returned with a piece of aluminum foil containing a white powder. After examining it, Garrison said he was satisfied but said he wanted the rest of the heroin at the same time as the money was exchanged. Garrison then testified that “[i]t was agreed that the party from which the heroin was coming from would be in the bushes slightly to the right and in front of both of the vehicles; that the informant would go up to the bushes and we would receive from the person in the bushes, who I later recognized to be Calvin Hill, the heroin.” Grant and Garrison were to remain at the automobiles, and Garrison was to give Grant $700 when Settles signalled that he had the heroin.

Grant walked around the corner where Hill had gone and where Grant had earlier gotten the sample of heroin. Shortly after he returned, a man appeared at the bushes with an article of clothing over his face. Garrison identified the article of clothing as a “lady’s sock or something to that effect,” while Settles thought it was a “dark shirt.” Both Garrison and Settles positively identified the man as Hill despite the mask. Settles walked up to the bushes and reached for the heroin, but at that time Hill and Grant drew their pistols. Grant took the $700 from Garrison and then began shooting at Garrison. As Grant and Hill fled, Garrison fired several shots. No one was injured.

The next morning Bufford, Grant, and Hill were arrested. The arresting officer testified that Hill had in his possession money which matched xerox copies of the bills Garrison passed to Grant.

To rebut this evidence, the defense began with testimony by Grant. He acknowledged having pled guilty to an indictment charging Bufford, Grant, and Hill with distributing heroin, and then he elaborated on his scheme:

I told [Garrison] that I could take care of him. And I didn’t actually intend to sell him any dope. What it was, a planned ripoff. Everytime — I ripoff everybody that comes into the neighborhood to buy drugs.
Q Tell us what do you mean by ripoff.
A This is to take the money away from him, by trickery or by force, whichever, or whatever it takes.
Q All right.
A And I was looking for a couple of my friends or a couple of people, you know, always involved with me, and to take care of the business, see.
In the process of me looking for my friend, I ran down on Auburn Avenue for a couple of seconds. Mr. Hill asked me for a ride, Calvin Hill asked me for a ride to a friend of his house by the name of Johnny to pick up his car. I give him that ride.
Q Where did you take him?
A Took him to Gordon Street, I believe it was.
Q All right. Then what happened?
A Well, that was the last I saw of him that day, and to make a long story short, I had a shootout with Mr. Garrison.

Also, he said that the money found in Hill’s possession was money Grant gave to Hill's girl friend for payment to Hill on a debt. During cross-examination by the Government, Grant admitted signing a statement at the time of his arrest which named Hill as the person he called. In his statement Grant also said Hill provided the sample of heroin. This statement was introduced into evidence.

The only other defense witness was Hill himself who described his unfortunate childhood, which included crimes of car theft at the age of 14, forgery at the age of 18, and shoplifting at the age of 19. Now at the age of 23, he had not held a steady job for a year, but he said he managed to support his narcotics habit through financial help from his mother and brother. He denied ever selling drugs. On the afternoon of August 26, he said he hitched a ride with Grant only for the purpose of visiting a friend.

I.

Hill was indicted for aiding and abetting Grant’s delivery of the one gram sample of heroin to Garrison. There were no eyewitnesses in the Government’s case in chief to verify that Grant received the sample from Hill. Thus, this is essentially a case of circumstantial evidence which must meet the standards summarized recently in United States v. Stephenson, 5 Cir., 1973, 474 F.2d 1353, 1355.

In circumstantial evidence cases, the test of the sufficiency of proof on a motion for judgment of acquittal, and on review of the denial of such a motion, is whether, taking the evidence most favorable to the Government, Glasser v. United States, 1942, 315 U.S. 60, 62 S.Ct. 457, 86 L.Ed. 680, the jury might reasonably conclude that the evidence is inconsistent with the hypothesis of the accused’s innocence. United States v. Warner, 5 Cir. 1971, 441 F.2d 821, 825; United States v. Andrews, 5 Cir. 1970, 427 F.2d 539, 540; Surrett v. United States, 5 Cir. 1970, 421 F.2d 403, 405. If the evidence is such that a reasonable person may have a reasonable doubt as to the defendant’s guilt, the case should be submitted to the jury. On the other hand, a trial judge should not permit a case to go to the jury if the evidence is so scant as to allow the jury merely to speculate or to conjecture as to the defendant’s guilt. In other words, a motion of acquittal must be granted when the evidence, viewed in the light most favorable to the Government, is such that a reasonably minded jury must have a reasonable doubt as to the existence of any of the essential elements of the crime charged. See United States v. Bethea, 1970, 143 U. S.App.D.C. 68, 442 F.2d 790, 792.

Unlike Stephenson, where we reversed when the only evidence against the accused was his fingerprint on glassine envelopes and there was no indication whether the print was put there before or after the envelope contained heroin, we have evidence here which placed Hill around the corner where Grant got the sample, and also placed Hill at the bushes nearby where he was supposed to transfer the rest of the heroin. Finally, he was arrested the next day with money obtained from Garrison. The combination of this evidence precluded the accused’s hypothesis of innocence that he was at the scene of the crime only to visit a friend.

The minor discrepancies in the testimony by Government witnesses, such as whether Hill wore a shirt or a sock over his face, do not affect the sufficiency of the evidence in this case. As noted in Stephenson, the evidence should be taken in a light most favorable to the Government. Therefore, we must accept the key fact that both Garrison and Settles identified Hill as the man near the bushes.

II.

As a second point, appellant contends that the “out. of Court statement of the co-defendant, Isaiah Grant, was erroneously admitted into evidence by the trial court as substantive proof.” This was a prior, sworn, signed statement by defense witness Grant which was inconsistent with his testimony at the trial and which implicated defendant Hill. Defense counsel did not at any time request an instruction limiting the statement’s use for impeachment and excluding its use as substantive proof.

The Supreme Court decided in California v. Green, 399 U.S. 149, 90 S. Ct. 1930, 26 L.Ed.2d 489 (1970), that the admission of prior inconsistent statements as affirmative evidence does not violate the Confrontation Clause of the Sixth Amendment, because the declarant is testifying as a witness at the trial and therefore subject to full and effective cross-examination. Because the declarant is subject to cross-exami-' nation during the trial, even though he was not subject to cross-examination at the time the statement was signed, Dean Wigmore reversed his earlier position in the first edition of his test on Evidence and concluded in his second edition that such statements are admissible for their affirmative testimonial value. 3A J. Wigmore, Evidence in Trials at Common Law, § 1018, p. 996 (J. Chadbourn rev. 1970). Accord Proposed Federal Rules of .Evidence, Rule 801(d)(1) (approved by Supreme Court on November 20, 1972, but effectiveness suspended by Pub.L. 93-12, 93d Cong., 1st Sess., March 30, 1973). This circuit, however, still adheres to the old orthodox view of Wigmore in his first edition that such statements should be introduced only for the purpose of impeaching the credibility of a witness and not for the purpose of establishing a fact.

When a Government witness is involved, the impeaching testimony is limited by the element of surprise. It may be admitted only insofar as it serves to remove the damage which the surprise has caused, and may not be used to smuggle in the testimony which the Government expected the witness to supply. United States v. Gregory, 5 Cir. 1973, 472 F.2d 484.

See also Slade v. United States, 5 Cir. 1959, 267 F.2d 834, 839; Young v. United States, 5 Cir. 1938, 97 F.2d 200, 206.

If the witness is a defense witness, there is less potential for abuse since the Government has already presented its case and cannot count on the witness being called and questioned about facts in the statement. Accordingly, we enunciated a rule in Valentine v. United States, 5 Cir. 1959, 272 F.2d 777, 778, which is dependent upon defendant’s request for a limiting instruction: “It is the duty of the court, when so requested, to instruct the jury as to the limited purpose for which the impeaching evidence is admitted and advise the jury as to the extent to which the evidence may be considered.” See also United States v. Cohen, 5 Cir. 1969, 418 F.2d 68, 70, McCormick’s Handbook of the Law of Evidence § 34, p. 67 (2d ed. 1972). Therefore, in the circumstances of this case we hold that there is no error preserved on appeal when counsel did not request an instruction to limit the use of a prior inconsistent statement of a defense witness.

Affirmed.


author: PER CURIAM:

text:
    MAGNUM MARINE, a Division of American Photocopy Equipment Company, for the use and benefit of Fireman’s Fund Insurance Company, Plaintiff-Appellee, v. KENOSHA AUTO TRANSPORT CORPORATION et al., Defendants, Eller & Company, Inc., Defendant-Appellant-Cross Appellee, Sidarma Societe Italiana di Armenio S.p.a., Defendant-Appellee-Cross Appellant.
    No. 72-3635
    Summary Calendar.

    United States Court of Appeals, Fifth Circuit.
    July 10, 1973.
    Rehearing and Rehearing En Banc Denied Aug. 16, 1973.

      J. James Donnellan III, George 0. Mitchell, Miami, Fla., for Eller & Co., Inc.
    Frank J. Marston, Miami, Fla., for Sidarma.
    E. S. Corlett III, Miami, Fla., for American Photo.
    Richard L. Horn, Miami, Fla., for Kenosha.
    Before GEWIN, COLEMAN and MORGAN, Circuit Judges.

       Rule 18, 5th Oir. See Isbell Enterprises, Inc. v. Citizens Casualty Co. of New York, et al., 5th Cir. 1970, 431 F.2d 409, Part I.

   PER CURIAM:

The principal question in this federal maritime case is which one of two joint tortfeasors must ultimately bear the responsibility for the damages they admittedly caused. The case arose when a pleasure boat owned by Magnum Marine was damaged while being loaded upon the S. S. Francesco Morosini. Magnum Marine brought suit against Sidarma Societe Italiana di Armento S.p.a. (Sidarma), the owner of the Morosini, and Eller & Company, Inc., (Eller), a stevedoring company which was in charge of loading cargo aboard the Morosini. In addition both Sidarma and Eller cross-claimed, each seeking indemnification from the other for any judgment awarded against them. After a bench trial the district court awarded judgment in favor of Magnum Marine holding Sidarma and Eller jointly liable for the damages incurred by the pleasure boat. Ell-er has appealed from that judgment. At the same time the district court ruled that Eller is entitled to indemnification from Sidarma for the full amount of its liability. Sidarma has appealed from this ruling. Keeping in mind the strictures of the clearly erroneous rule, we affirm the judgment of the district court in all respects.

Appellant Eller contends that it is entitled to the $500 per package limitation of liability provided for in the Carriage of Goods by Sea Act. This contention is basically frivolous, and we reject it summarily. Our primary concern in this case is with the indemnity question raised by the cross-appeal.

The pleasure craft in question was received by Eller in good condition. As stevedore, Eller’s job was to load cargo, including this boat, onto the Morosini ; to perform the work, Eller was permitted to use the ship’s tackle. The boat was accidentally damaged while it was being placed on board. It is undisputed that the accident occurred because inadequate and unseaworthy tackle was used to do the loading. Before attempting to lift the pleasure craft on board, Eller’s employees advised the ship’s officers that the ship’s equipment they were to use was unsuitable; they requested the use of other tackle which was available and which was adequate for the job at hand. But despite these objections, the chief mate of the Morosini strongly insisted that the stevedores do the loading with the inadequate tackle he had assigned to them. The accident occurred shortly thereafter. These are the facts as found by the district court, and our independent review of the record convinces us that its findings are not clearly erroneous.

Upon these facts the district court ruled that Eller was entitled to indemnification from Sidarma for the full amount of its liability. Sidarma takes the position that the district court’s resolution of the indemnity question is legally erroneous. It argues that Eller’s employees were actively at fault for proceeding to load the pleasure boat with equipment they knew to be unsafe and that because of their affirmative negligence Eller should bear the responsibility for the damage caused. Sidarma relies upon T. Smith & Son, Inc. v. Skibs A/S Hassel, 362 F.2d 745 (5th Cir. 1966), a case in which we held that if a stevedore has knowledge of a defect in the ship’s equipment it has a duty to correct it or require it to be corrected by the ship’s officers. Failure to fulfill this duty constitutes a breach of the stevedore’s warranty of workmanlike service.

But Sidarma’s argument blithely ignores a critical fact, namely that here the stevedore’s employees brought the inadequacy of the equipment to the attention of the ship’s chief mate and requested him to permit them to use other, safer equipment that was available. It was only after the chief mate firmly insisted that they proceed with the unseaworthy equipment that the accident occurred. In these circumstances the stevedore had no other course of action open to it but to defer to the ship’s choice of equipment and cannot now be charged with actively causing the ensuing accident.

Rather insofar as Sidarma’s employees insisted on the use of inadequate equipment in spite of Eller’s warnings, Sidarma was guilty of active or affirmative negligence. It is the settled rule in this circuit that a right of indemnity exists between parties, one of whom is guilty of active or affirmative negligence, while the other’s fault is only technical or passive. Tri-State Oil Tool Indus., Inc. v. Delta Marine Drill. Co., 410 F.2d 178 (5th Cir. 1969). The right is equitable in nature and is dependent upon the legal principle that everyone is responsible for the consequences of his own wrong and that if others are compelled to pay damages that ought to have been paid by the wrongdoer, they may recover from him. Since Sidarma was the active cause of the accident in which the pleasure boat was damaged, the district court was correct in requiring it to indemnify Eller for the full amount of Eller’s liability to Magnum Marine. We reiterate that we find no merit in Eller’s contention on appeal with respect to limitation of its liability. Accordingly the judgment of the district court is affirmed both on the appeal and on the cross-appeal.

Affirmed.