author: ROBB, Circuit Judge:

text:
    UNITED STATES of America v. Charles E. WIGGINS, Appellant.
    No. 73-1367.
    United States Court of Appeals, District of Columbia Circuit.
    Argued March 11, 1974.
    Decided Jan. 2, 1975.

      Jerry D. Anker, Washington, D. C. (appointed by this Court), with whom Robert M. Lichtman, Washington, D. C., was on the brief, for appellant.
    Steven R. Schaars, Asst. U. S. Atty., with whom Harold H. Titus, Jr., U. S. Atty. at the time the brief was filed, and John A. Terry, Asst. U. S. Atty., were on the brief for appellee. Earl J. Silbert, U. S. Atty., also entered an appearance for appellee.
    Before HASTIE, Senior Circuit Judge for the Third Circuit, and ROBB and WILKEY, Circuit Judges.

       Sitting by designation pursuant to 28 U.S.C. § 294(d).

   ROBB, Circuit Judge:

A jury in the District Court convicted the appellant Wiggins of murder in the first degree, 22 D.C.Code § 2401, and of carrying a dangerous weapon, 22 D.C. Code § 3204. He was sentenced to concurrent prison terms of twenty years to life for first degree murder and not more than one year for carrying a dangerous weapon, these sentences to be served concurrently with any other sentences then being served. On this appeal Wiggins contends that (1) various statements and a confession he made to a police officer were wrongly received in evidence; (2) the District Court erred by receiving in evidence a part of the confession in which Wiggins, after saying he had committed the murder pursuant to a “contract”, added that he “only kill[ed] on contract”, and “had killed three other people” in addition to the victim named in the indictment; (3) the District Court abused its discretion by curtailing defense counsel’s examination of alibi witnesses; and (4) even if the conviction is affirmed the case should be remanded for resentencing because the District Court sentenced him as an adult without finding that he would not benefit from treatment under the Federal Youth Corrections Act.

The victim of the homicide alleged in the indictment was Henry G. Davis, proprietor of the Davis Tourist Home at 50 U Street, N.W., in Washington. At about 11:00 o’clock on the night of June 10, 1972, at the home, he was murdered by a gunman who shot him once with a .45 caliber automatic pistol. There was evidence that the gunman was seen by a neighbor who had gone to the tourist home to purchase sodas from a vending machine. As the neighbor was about to leave the home, minutes before the murder, the doorbell rang and Mr. Davis opened the door. Two men entered, one of whom addressed Davis by name. The neighbor passed the men in the doorway and left. Although she got only a glimpse of his face, and was later unable to identify him, the neighbor noticed that one of the men was wearing dark trousers and a blue jacket with gold buttons.

Police investigating the shooting found Mr. Davis’ body lying at the bottom of a flight of stairs leading from the first floor to the basement. He had been shot in the chest, and the police concluded that he had been shot on the first floor and had stumbled down the stairs. There were no signs of a struggle; between $120.00 and $130.00 was found in the tourist home and change was found in Davis’ pockets. Police interviewed the guests registered in the tourist home but made no progress in the investigation.

Sergeant Francisco Tadle of the Metropolitan Police Department was assigned to the case on or about June 24. Early the following morning he happened to be present at a lineup at police headquarters at which Wiggins, in custody on a charge of unauthorized use of a vehicle, was to be viewed. Noting that Wiggins’ home address in the unit block of T Street, Northwest, was two blocks from the tourist home at 50 U Street, Tadle asked Wiggins whether he knew anything “that went on down on the unit block of U Street.” Wiggins responded that “all he knew was Davis was killed.” Sgt. Tadle asked Wiggins how he knew Davis, and Wiggins responded that he had been to the tourist home with some girl friends “a couple of times”. The conversation ended, and Sgt. Tadle left the lineup room and went to roll call.

At nine o’clock on the same morning, June 25, Sgt. Tadle received a telephone call from an officer in the cell block who told Sgt. Tadle that Wiggins had asked to speak with him. The sergeant went to the cell block, where Wiggins told him that he had been at the tourist home early in the evening of the murder and he had seen two suspicious men in the vicinity. At Sgt. Tadle’s request Wiggins went upstairs to the homicide office where the two men talked from 10:55 A.M. to 12:35 P.M. and Wiggins made a statement which was reduced to writing and signed by him. According to this statement Wiggins had known Davis for about six months, and Wiggins and a female companion had rented a room at the tourist home at about 6:30 P.M. on June 10. Wiggins and his companion remained in the room for two or three hours. On one occasion while in the room, and on another as they were leaving the tourist home, Wiggins saw two men, whom he knew as Dap and Harold Tyler, enter the home. Wiggins returned briefly to the home to retrieve his companion’s purse and inquired from the desk clerk about the presence of Dap and Tyler. He was told “Ain’t nobody there.” Wiggins knew Tyler and Dap as “hustlers. Tyler is a cool dude and Dap will do anything. Tyler can get people to do things for him.”

Sgt. Tadle had an array of photographs prepared which included pictures of two men who were listed in the Identification Bureau under the nickname “Dap”. Wiggins viewed them but made no identification, but he indicated he might be able to help the sergeant later. Subsequently on that same day Wiggins identified a photograph of William Haywood Brandon, one of the two men known as Dap, as the man who had entered the tourist home. He added that he knew Tyler and Dap as “stickup men.”

On June 27 Wiggins, who had been released from custody, called police headquarters and asked for Sgt. Tadle. The sergeant was out but he returned the call shortly after arriving at headquarters at 4:30 P.M. Wiggins said he wanted to speak to Tadle and invited him to his home. Sgt. Tadle and his partner, Detective Hayes, arrived at the Wiggins house at about 5:45 P.M. and remained for about twenty minutes. Wiggins told the officers that Dap still had the murder weapon, a .38. The conversation about the case was brief because Wiggins was afraid his mother and brother, who were in the house at the time, might overhear what he was saying. He wanted to speak to the officers in some other place. Since he did not want to leave in a police cruiser, Sgt. Tadle arranged to have him picked up by two officers from the Old Clothes Unit, in a private vehicle.

The “Old Clothes” officers drove Wiggins to a police parking lot where Sgt. Tadle and Detective Hayes were waiting in Tadle’s cruiser. The three men got into the cruiser and Wiggins said he wanted to go to his aunt’s house in southwest Washington. The officers complied with his request, and on the way, also at the request of Wiggins, stopped and bought him a “six-pack” of beer. At the aunt’s house the officers waited in their car while Wiggins went in and stayed about ten minutes. When he came out he said his aunt felt uncomfortable about having police officers in her house and he had called his uncle, who worked at the HUD building, and arranged to get a room there where they might talk.

The officers and Wiggins arrived at the HUD building at 7:40 P.M. At Wiggins’ insistence “because he wanted to make a phone call and he wanted one of us to listen in on it” they went to án office that had two telephone extensions. Before making the call Wiggins told the officers that there was a girl involved in the homicide, who let the murderers in. The officers asked him what the motive for the killing was and he responded “Well, it was because of numbers.” He said that “Dave wrote numbers and somebody had hit big and Dave didn’t pay off, and because of this a contract was written up and they had Dave killed because he didn’t pay off.” The officers expressed the view that whoever shot Davis was a coward since Davis was shot in the back, but Wiggins corrected them by pointing out that Davis was shot in the chest. Wiggins then consulted a book which appeared to contain telephone numbers, and dialed a number, after requesting the officers not to look at the number he was dialing. In his testimony Sgt. Tadle recounted the events that followed:

And apparently whoever he asked for wasn’t, there because the person hung up on him and before the person was able to hang up Mr. Wiggins was asking the person not to hang up, almost to the point of begging him please don’t hang up, I know he is there, but nevertheless the person hung up on him.
So he paused for a moment and then he said, “Well I will call him again.” He dialed the number and this time I picked up the other receiver, and when the party at the other end picked up the phone, I recognized the voice to be a young lady’s voice, and she again told him that the person he was asking for wasn’t there.
And he said, well, how about downstairs, and she said, “I don’t know. Why don’t you call downstairs?”
And she told him the number to the telephone that was downstairs at that time.
And he looked up at me because, apparently, he didn’t want me to know what this number was, and the girl hung up.
He called the second number and I wasn’t on the receiver then, but through the contents of his conversation I understood that the person wasn’t there either.
So he hung up and then we decided there was really nothing he was telling us and we wanted to leave.

As the two officers and Wiggins were leaving the HUD building at about nine o’clock Wiggins asked Sgt. Tadle if he could speak to him alone since he did not feel comfortable with Detective Hayes. The three went to a restaurant for sandwiches and Sgt. Tadle then dropped his partner off at police headquarters. Wiggins asked Sgt. Tadle to drive him to the home of another aunt, but Tadle refused since he was supposed to go off duty at four o’clock and now wanted to go home. Tadle did drive to the Mall area between the Capitol and the Washington Monument and there, according to Tadle’s testimony the following occurred:

As I was driving the vehicle we were approaching 7th Street, Northwest, and at that time Mr. Wiggins stated to me, “Frank, I don’t know what you are going to think, but I killed Dave,” and he continued to talk and he told me that there was a contract out for Dave’s life and that he took it.
He told me the girl let the guys in, let him and three other subjects in, and he mentioned their names.
He went on to say they were Dap, Fox, and a third subject that I was never able to recall that name.
He went on to say that killing Dave didn’t bother him but the fact that Dave was looking at him and he was looking at Dave, face to face, when he shot him, bothered him.
He knew Dave and he liked Dave and when he shot Dave in the chest Dave turned and ran down some steps and he collapsed before he was able to finish the stairway.
And he went on and he said that the contract was for — because of numbers, and that Harold Tyler was the man that was behind it, and it was — the contract was worth $1500. He got paid $500 and he was supposed to get the other $1000 after the completion of the contract.
* * * * * *
He mentioned that this wasn’t the first time he had killed someone. He had killed three other people. And he looked at me and said, “You want to know their names, don’t you?”
I said, “No.”
And then he stated, “Well, I am not crazy. I only kill on contract.”

Sgt. Tadle asked Wiggins if he would go to the homicide office and give a statement. Wiggins said he would and he was glad that he had got this off his chest. At the homicide office Wiggins was placed under arrest and advised of his rights but declined to make any further statement. When arrested he was wearing blue levis and a blue- jacket with brass buttons. In his pocket was the book he had consulted when making the telephone calls at the HUD building. The book contained two telephone numbers for one James Settles.

James Settles testified that he had known Wiggins since they were in school together. He identified the two telephone numbers recorded in Wiggins’ book as the numbers listed to two telephones in the house where Settles lived. He testified that around 6:30 P.M. on June 27 Wiggins telephoned him and said he had

this white dude that he wanted me to burn . . . . And he said, I told the white dude that you were a bad dude, that you were a contract killer and that you were a big dope pusher. And he wanted me to say this on the telephone and he said, I want you to say that you had this dude named Davis killed because he was me out of too much of my money. And he told me to repeat it, that it was very important. And I said this on the telephone.
He said, hello there Swas some dirty . that you did to Davis, and I was supposed to say, yes, sir, I had to because Davis was . . . me out of too much of my money.
And he said, yes, that sounds real good. He said, I will call you back in about an hour or an hour and a half and he said, the white dude will be listening on the other end of the telephone and I want you to say the same thing that you said just now to him, you know, when he called me back. So I hung the telephone up and I told my grandmother if he called me back to tell him I am wanting [sic] in.

According to Settles, Wiggins called him “Pap” in this conversation. Settles asked “why did it have to be David, [sic] why can’t it be Harris or Williams or something like that, and he said he had already told the white dude that it was Davis.” When Wiggins called back, as he said he would, Settles did not take the call.

Continuing, Settles testified that about a week or a week and a half before this telephone conversation, Wiggins had asked him to help sell a .45 caliber automatic belonging to Wiggins. He took Wiggins to a prospective purchaser who rejected it after Wiggins had test-fired it into a board. He identified the board, which was received in evidence.

There was a reasonable inference, and the jury were justified in believing, that Wiggins called Settles from the house of Wiggins’ aunt, while Tadle and Hayes waited outside in the police cruiser, and that in this call Wiggins arranged for the later calls from the HUD building.

Wiggins took the stand, denied his guilt, and denied that he had made any confession. He admitted that he had called Settles from the HUD office in the presence of the police officers. The purpose of the call, he said, was to find out if Settles had any drugs. He saw nothing strange about an attempt to arrange a drug transaction in the presence of police officers. He insisted that his call to Settles was not by prearrangement. He denied that he had owned or attempted to sell a .45 caliber pistol but said Settles did own a gun which he, Settles, wanted to sell. According to Wiggins he took Settles to a prospective purchaser who fired the pistol twice at a piece of wood but refused to buy it.

Wiggins claimed he was at home on the night of the murder, a claim supported by testimony from his mother, sister and brother. His mother testified however that on the night when Wiggins was arrested he had called her on the telephone and “he told me that he had confessed to some kind of killing. I said, Now, listen here, you know you are not telling the truth. He said, I am sorry, Mama, that is the way it is and he hung up the phone.”

I. THE STATEMENTS OF JUNE 25

The statements Wiggins made to Sgt. Tadle on June 25 were received in evidence without objection. On this appeal however counsel contends that these statements should have been excluded because Wiggins did not receive the warnings required by Miranda v. Arizona, 384 U.S. 436, 86 S.Ct. 1602, 16 L.Ed.2d 694 (1966). Asserting that Sgt. Tadle’s talk with Wiggins on June 25 constituted “custodial interrogation” counsel contends that “Tadle was required to give the defendant a Miranda warning prior to his initial interrogation . and . . . his failure to do so rendered all of defendant’s subsequent statements to the police on that day inadmissible.” We do not agree.

As Sgt. Tadle testified, the only reason why he wanted to talk to Wiggins at the police lineup was that “When they read off Mr. Wiggins’ name and address, his address was in the unit block of T Street, Northwest, and I was investigating a homicide that occurred in the unit block of U Street, Northwest, which is only a few blocks, . . ..” In other words, Sgt. Tadle was looking for leads and hoped that Wiggins might be of some assistance. He did not suspect that Wiggins was implicated in the murder and had no reason to do so. In short, he approached Wiggins as a possible witness or source of information; his inquiries were the functional equivalent of “[g]eneral on-the-scene questioning as to facts surrounding a crime or other general questioning of citizens in the fact-finding process” (384 U.S. at 477, 86 S.Ct. at 1629) which the Miranda decision does not curtail. If the appellant’s contentions were sound then a police officer would be required to give the Miranda warnings to every person with whom he spoke. This is not and should not be the law.

The basis of the Miranda decision was “that without proper safeguards the process of in-custody interrogation of persons suspected or accused of crime contains inherently compelling pressures which work to undermine the individual’s will to resist and to compel him to speak where he would not otherwise do so freely.” 384 U.S. at 467, 86 S.Ct. at 1624. In this case, as counsel for Wiggins concedes, he was neither suspected nor accused of the Davis murder when he spoke with Sgt. Tadle on June 25. So far as the Davis case was concerned he was a possible witness or source of information, nothing more. In this respect the case differs from Mathis v. United States, 391 U.S. 1, 88 S.Ct. 1503, 20 L.Ed.2d 381 (1968), relied upon by the appellant. In the Mathis case the defendant was in prison serving a state sentence when he was visited by a Federal Internal Revenue Agent who was investigating his tax affairs and who questioned him about two of his income tax returns. The Court held that the interrogation fell within the Miranda rule because Mathis was in custody and was the object of a tax investigation which “frequently lead[s] to criminal prosecutions, just as the one here did.” 391 U.S. at 4, 88 S.Ct. at 1505. There was no doubt that Mathis was the suspect or subject in the tax investigation, and the questioning related to the returns which were the basis of the subsequent prosecution. Accordinigly the interrogating agent was expected and required to give the Miranda warnings. In the case at bar Wiggins was neither a suspect nor a prospective subject. There was nothing to suggest that the Miranda warnings were required because nothing suggested that Wiggins himself was the guilty man. See Hicks v. United States, 127 U.S.App.D.C. 209, 382 F.2d 158 (1967).

After the first brief and uninformative exchange in the lineup room every meeting between Wiggins and the police was at the request or invitation of Wiggins. He asked Sgt. Tadle to come to the cell block and volunteered information or alleged information, about two possible suspects. Any suggestion that he was subject to “compelling pressures” by his confinement on June 25 flies in the face of reality. On the contrary it is apparent that after the first casual encounter at the lineup Wiggins, on his own motion, attempted to put the police on a wild goose chase for Dap and Tyler. He became an informant, albeit an untruthful one, for motives that had nothing to do with his confinement.

II. THE STATEMENTS OF JUNE 27

Throughout the late afternoon and early evening of June 27 Wiggins led Sgt. Tadle on the well planned wild goose chase. First he invited the officer to his home and then sought to switch the scene of the conversation to his aunt’s house, where he arranged the Settles telephone hoax. Finally, at the instance of Wiggins, the meeting adjourned to the HUD building and a room containing two telephone extensions. During this entire time the officers treated Wiggins as a witness who was helping them in their investigation; at no time was he treated or considered as a man under suspicion or under arrest or in any way restrained. Indeed the officers wanted to break off the conversations before Wiggins was ready to do so. Thus Sgt. Tadle testified that at the HUD building “we decided there was really nothing he was telling us and we wanted to leave”; and later, after dinner, when Wiggins asked Tadle to drive him to' the home of another aunt, Tadle refused because he was tired and wanted to go home. Nevertheless Wiggins continued to talk, and suddenly, without prompting ' from Tadle, he confessed. Sgt. Tadle was under no obligation to interrupt him when he started to confess. There is no requirement that police stop a man from talking when he voluntarily and without solicitation says he wants to confess to a crime. Miranda v. Arizona, 384 U.S. 436, 478, 86 S.Ct. 1602, 16 L.Ed.2d 694 (1966); United States v. Duke, 369 F.2d 355, 358 (7th Cir. 1966), cert. denied, 386 U.S. 934, 87 S.Ct. 957, 17 L.Ed.2d 806, rehear, denied, 386 U.S. 1000, 87 S.Ct. 1302, 18 L.Ed.2d 354 (1967).

Before the trial began the court held a hearing to determine whether Wiggins’ confession was voluntary. Jackson v. Denno, 378 U.S. 368, 84 S.Ct. 1774, 12 L.Ed.2d 908 (1964). At the outset of the hearing the prosecutor stated

I think it appropriate under the case law, particularly Lego v. Twomey, that the Court have a hearing on the voluntariness of that statement and at the end of that hearing the United States will request the Court to rule that the statement was in fact voluntary by a preponderance of the evidence.

At the hearing Sgt. Tadle testified in detail about the evidence that led up to the confession. The court then ruled “it was a voluntary statement; that it was not necessary to be given the Miranda warning ahead of time, because it was done on a voluntary basis, freely and voluntarily.” The court did not indicate whether its ruling was based upon a preponderance of the evidence or upon proof beyond a reasonable doubt.

Relying upon Pea v. United States, 130 U.S.App.D.C. 66, 397 F.2d 627 (1968), Wiggins argues that the court was quired to exclude the confession absent a finding that it was voluntary beyond a reasonable doubt. Accordingly, says Wiggins, we should remand the case for a new hearing and a determination on this issue.

We think a short answer to the appellant’s contention is that the evidence, which we have already set out in detail, required a finding that the confession was voluntary, beyond a reasonable doubt. A remand would therefore serve no practical purpose. In any event the authority of Pea v. United States has been undercut by Lego v. Twomey, 404 U.S. 477, 92 S.Ct. 619, 30 L.Ed.2d 618 (1972). In that case the Supreme Court held that the Constitution required only that the voluntary nature of a confession be proved by a preponderance of the evidence. True, in the Pea case this court imposed the reasonable doubt standard in exercise of its supervisory powers; but in Lego v. Twomey the Supreme Court said “[i]t is no more persuasive to impose the stricter standard of proof as an exercise of supervisory power than as a constitutional rule.” 404 U.S. at 488 n. 16, 92 S.Ct. at 626. We agree with the courts that have considered this issue since the Lego decision and have concluded that the imposition of the reasonable doubt standard by the exercise of the supervisory power is “clearly foreclosed by the opinion of the Supreme Court.” United States v. Watson, 469 F.2d 362, 365 (5th Cir. 1972). See United States v. Johnson, 495 F.2d 378, 383 (4th Cir. 1974); United States v. Lehman, 468 F.2d 93, 99 n. 8 (7th Cir.), cert. denied, 409 U.S. 967, 93 S.Ct. 273, 34 L.Ed.2d 232 (1972); Hawkins v. United States, 304 A.2d 279, 282 (D.C.App. 1973); United States ex rel. Graham v. Mancusi, 457 F.2d 463, 471 n. 13 (2d Cir. 1972); United States v. Cluchette, 465 F.2d 749, 754 (9th Cir. 1972); cf. United States v. Matlock, 415 U.S. 164, 177-178 n. 14, 94 S.Ct. 988, 996, 39 L.Ed.2d 242 (1974); United States v. Bernett, 161 U.S.App.D.C. 363, 381 & n. 140, 495 F.2d 943, 961 & n. 140 (1974).

III. THE APPELLANT’S STATEMENT THAT HE HAD KILLED THREE OTHER PEOPLE

Before the prosecutor made his opening statement, counsel for Wiggins, forewarned by the testimony at the preliminary hearing concerning the confession, asked the court to direct the prosecutor not to refer to the part in which Wiggins said he had previously killed other men. The prosecutor agreed to omit any such reference in his opening statement but said “I can’t help what the defendant said when the officer gets on the stand . . . . If the defendant makes admissions like that I am not in any position to, nor know of any requirements that I clean up his statement so that it comes out that he “had alerted everyone . . . The court deferred ruling on the prosecutor’s contention, saying, “Let’s take it bit by bit.”

As we have said, when Sgt. Tadle recounted the defendant’s confession to the jury he testified that

He mentioned that this wasn’t the first time he had killed someone. He had killed three other people. And he looked at me and said, “You want to know their names, don’t you?”
I said, “No.”
And then he stated, “Well, I am not crazy. I only kill on contract.”

Counsel for Wiggins made no objection at this time, but when the direct examination of Tadle was concluded a few moments later counsel moved for a mistrial because of the testimony “about other unrelated offenses”. Counsel pointed out that he “had alerted everyone . that I felt that this was not a proper portion of this case and its probative value is outweighed tremendously by its inflammatory nature . . .” The court however accepted the prosecutor’s contention that “it was not his fault that the defendant made these statements to the police” and that he had no duty to exclude this portion of the confession. The motion for mistrial was therefore denied.

We think the admission of evidence concerning the three other killings was prejudicial error requiring reversal of the conviction.

We begin with the familiar principle that, on the trial of a defendant for one offense, evidence that he committed another is inadmissible to prove his disposition to commit crime; the jury may not be permitted to infer that the defendant is guilty of the crime charged because he committed another similar offense. Drew v. United States, 118 U.S.App.D.C. 11, 331 F.2d 85 (1964); Bradley v. United States, 140 U.S.App. D.C.. 7, 433 F.2d 1113 (1969); United States v. Bailey, 164 U.S.App.D.C. 310, 505 F.2d 417 (1974). Equally familiar are the exceptions to the rule: “Evidence of other crimes is admissible when relevant to (1) motive, (2) intent, (3) the absence of mistake or accident, (4) a common scheme or plan embracing the commission of two or more crimes so related to each other that proof of the one tends to establish the other, and (5) the identity of the person charged with the commission of the crime on trial.” Drew v. United States, supra, 118 U.S.App.D.C. at 16, 331 F.2d at 90 (Footnote omitted.). Another exception may exist if a defendant in his confession of one crime refers to the commission of another offense in such a way that the confession is unintelligible if the reference to the other offense is omitted. State v. Palko, 122 Conn. 529, 191 A. 320, aff’d on other grounds, 302 U.S. 319, 58 S.Ct. 149, 82 L.Ed. 288 (1937); cf. United States v. Liddy, 166 U.S.App.D.C. 95, 509 F.2d 428, No. 73-1565, p. 30 (decided Nov. 8, 1974).

We think the evidence that Wiggins had committed three other murders does not fall within any exception to the general rule. At most, it related to the defendant’s motive for killing Davis but its “prejudicial proclivities” far outweighed its “probative virtues”. Bradley v. United States, supra, 140 U.S.App. D.C. at 13, 433 F.2d at 1119. In earlier parts of his confession Wiggins admitted in detail that he killed Davis pursuant to a contract “because of numbers”. Reference to the three prior contract murders was therefore unnecessary to establish a motive. Furthermore, excision of the reference to the three prior murders could easily have been made without impairing the confession. Sang Soon Sur v. United States, 167 F.2d 431 (9th Cir. 1948). Finally, the prejudice to the defendant was compounded when the court in its charge to the jury made no attempt to limit the effect of the evidence concerning the commission of prior offenses; the jury were left free to reason that because Wiggins had killed others he probably killed Davis. See United States v. McClain, 142 U.S.App.D.C. 213, 440 F.2d 241 (1971).

There is no support in the law for the prosecutor’s theory that evidence of other crimes, otherwise inadmissible, will be admitted if it is part of a confession. On the contrary the law is plain that evidence of other offenses committed by a defendant is not automatically made admissible because the defendant referred to those offenses in a confession. Sang Soon Sur v. United States, supra. If this were not so, the scope of the evidence at trial would depend upon the extent of the defendant’s garrulity when confessing; evidence of crimes unrelated to the one charged — for example the evidence held inadmissible in Boyd v. United States, 142 U.S. 450, 12 S.Ct. 292, 35 L.Ed. 1077 (1892) — would be received if mentioned by the defendant in his confession. The possibility of such a result demonstrates the fallacy of the prosecutor’s theory.

IV. THE APPELLANT’S REMAINING CONTENTIONS

On the ground that they were leading, the court sustained objections to certain questions propounded to the alibi witnesses by appellant’s counsel. Counsel refused to rephrase the questions and refused to continue his examination of the witnesses.- The appellant now contends that the action of the District Court was an abuse of discretion and deprived him of a fair trial. We think there was no abusé of discretion. City-Wide Trucking Corp. v. Ford, 113 U.S. App.D.C. 198, 306 F.2d 805 (1962). Had he chosen to do so, counsel for the defendant, an experienced and competent trial lawyer, could have continued his examination of the witnesses by unobjectionable questions. In what was an obvious tactical decision he chose not to do so. The appellant’s claim of prejudice is without merit.

Finally, the appellant argues that the District Court failed to give adequate reasons for its refusal to sentence him under the Youth Corrections Act. The record shows however that the district judge specifically considered sentencing Wiggins under the Youth Corrections Act but affirmatively found that he was “not likely to be rehabilitated through a Youth sentence”. Under Dorszynski v. United States, 418 U.S. 424, 94 S.Ct. 3042, 41 L.Ed.2d 855 (1974), this was all that was required.

V. CONCLUSION

The judgment of conviction must be reversed with directions to award the appellant a new trial.

It is so ordered.

      . At the time of sentencing Wiggins was serving a one-to-four year sentence for unauthorized use of a vehicle.

      . See note 1 supra.

      . After the June 25 meeting with appellant, Sgt. Tadle showed the photo array to Leonard Ward who had seen two men leaving the tourist home shortly after the shooting. Ward identified Brandon as the second man to leave the home on the night of the murder.

      . Counsel for Wiggins notes that while he was with the officers Wiggins drank 2‘h cans of beer, and that he testified before the jury that “early during that day” he had his “first dose of methodone”. However, there was no evidence that his faculties were in any way affected by either the beer of the methadone; indeed the evidence was to the contrary.


source: Caselaw Access Project

author: MATTHEWS, Senior District Judge:

license: Public Domain

text:
    SCANDIAMANT AKTIEBOLAG, Appellant, v. COMMISSIONER OF PATENTS.
    No. 73-1396.
    United States Court of Appeals, District of Columbia Circuit.
    Argued Jan. 22, 1974.
    Decided Dec. 12, 1974.

      George W. Whitney, New York City, with whom Henry Taliaferro, Jr., Washington, D. C., was on the brief for appellant.
    Fred W. Sherling, Associate Sol. U. S. Patent Office, with whom Joseph F. Nakamura, Acting Sol., U. S. Patent Office, was on the brief, for appellee.
    Before ROBINSON and ROBB, Circuit Judges, and MATTHEWS, Senior District Judge for the United States District Court for the District of Columbia.

       Sitting by designation pursuant to 28 U.S.C. § 294(c).

   MATTHEWS, Senior District Judge:

Inventors Olle Lindstrom and Erik Lundblad filed an application for a patent on a method for preparing diamonds for use with grinding wheels. The claimed invention is the alleged discovery that the use of diamonds coated with metal in a prescribed thickness range in a resin bonded grinding wheel will improve the grinding results, i. e., the measure of grinding efficiency of the wheel, by as much as 200% to 300%. The thickness range for this metal coating is between 0.5 and 25 microns.

The Patent Office rejected the application, and the Board of Appeals affirmed that rejection. The appellant, Scandiamant Aktiebolag (Scandiamant), assignee of the named inventors, then brought an action in the District Court under 35 U.S.C. § 145 to compel the issuance of a patent. The District Court dismissed the suit, and this appeal followed.

The only issue involved in this appeal is whether the subject matter of the application in suit, as described in the finally rejected claims, is obvious in the light of the combined disclosures of the U. S. patent to Wentorf No. 3,125,418, issued on March 17, 1964, and the French patent to Soulard No. 1,142,688, issued September 20, 1957.

Of the finally rejected claims, numbered 29, 31 — 33, and 35-40, claim 29 is acknowledged to be illustrative and reads as follows:

“29. A grinding wheel having a hub portion and a diamond section secured on the hub portion, said diamond section comprising a body of cured resin bond having imbedded therein diamonds coated with a layer of metallic material, said layer having a thickness of between 0.5 and 25 microns.”

At the time Lindstrom and Lundblad made their discovery, there were basically two types of diamond bonded grinding wheels: the metal bonded wheel and the resin bonded wheel. Natural or synthetic diamond was used as the abrasive in each type wheel. The resin bonded wheel had a greater cutting ability than the metal bonded wheel, but suffered the drawback of accelerated deterioration during the metal grinding process. The reason for this was the limited capability of the resin to retain the diamond during the grinding process.

In 1963, Lundblad, the General Manager of the Diamond Division of ASEA, was authorized to conduct research to determine the cause of the accelerated deterioration during use and develop a resin bonded wheel with an improved grinding ratio. Working with him was Professor Olle Lindstrom, head of the central laboratory of ASEA. Lundblad and Lindstrom planned the work, and they had staff and personnel to carry it out. As early as 1962, others in the field, including major suppliers of diamond and manufacturers of bonded diamond grinding wheels, were actively engaged, without success, in the same type of research and development.

Lundblad and Lindstrom discovered, in the course of their work, that application of a thin, metal coating in a thickness range between 0.5 and 25 microns around the diamond and incorporating such metal clad diamond in a resin bonded grinding wheel, resulted in increased bondability with the resin in which the metal clad diamonds are embedded. There was greater dissipation of the heat buildup in the diamond. There was reduced fracturing of the diamond when worked which, in turn, eliminated premature loss (pullout) of the diamond from the resin. Most significant, however, was the discovery that the grinding efficiency of the wheel was improved by as much as 200% to 300%. They filed their initial application for patent October 19, 1965.

The Patent Office, the Board of Appeals and the District Court relied (as does the Commissioner) on a combination of the Wentorf and Soulard patents— “the teaching of Wentorf when taken with Soulard” — which, it is contended, renders the discovery of Lundblad and Lindstrom obvious. All claims were rejected as obvious under 35 U.S.C. § 103.

The Wentorf patent relates to the synthesis of radioactive diamonds. By adding a radioactive metal along with the metals which are normally used in the synthesis of diamonds, Wentorf produces a diamond having in adherent relation to its surface a radioactive metal with a thickness range of 0.5 to 5.0 microns. The process produces diamonds differing from naked uncoatéd diamonds only in regard to radioactivity. The Soulard patent shows an abrasive tool which is characterized particularly in that each abrasive grain is contained in a spheroidal coating binding it to the bond in the tool. The thickness of the metal coating varies, depending upon the size of the diamond. By calculation the Soulard range appears to be 25.5 microns to 937.5 microns.

Interpreting Wentorf as disclosing a “coating” process, it is the position of the Commissioner that it would have been obvious to one skilled in the art to combine the Wentorf disclosure of diamonds coated with a layer of metallic material coming within the thickness range recited in the claims and which is incorporated in an abrasive wheel, and the Soulard abrasive wheel which includes diamonds with a metallic coating combined with a cured synthetic resin bond to yield a grinding wheel substantially similar to that claimed. The Commissioner further maintains that appellant has not made a disclosure of criticality which would support patentability of the claims on that basis.

“[A] presumption of correctness accompanies the decisions of the Patent Office, * * * and substantially the same rule applies to the findings of fact of the District Court. What the prior art is and what the claimed invention is are questions of fact. However, whether the standard of obviousness applied to those facts is correct, is a question of law.”

Patentability of an invention depends not only on novelty and utility, but Section 103 of Title 35 requires that the subject matter as a whole must not have been obvious to one skilled in the art. In applying Section 103, the Supreme Court instructs us that “the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or non-obviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.”

The mere existence of the basic teachings of a new claim in the prior art do not necessarily render a new claim obvious. “[E]ven if all of the elements used are old, a new result, an unexpected result, a far more efficient result, or a more economical result will satisfy the requirements of patentability.” Likewise, a “claim that combines prior art elements can embody sufficient invention to be patentable, if the claimed invention represents ‘progress’ from the prior art.”

Conversely, “a change only in form, proportions, or degree, the substitution of equivalents, doing substantially the same thing in the same way by substantially the same means with better results, is not such invention as will sustain a patent.”

At the outset, we hasten to acknowledge that, as a court, we are not persons having ordinary skill in the art. Consequently, we may consider the unchallenged testimony of appellant’s two expert witnesses, Dr. Wentorf and Dr. Seal, as well as that of the co-inventor, Mr. Lundblad. The record discloses these witnesses to be exceedingly well skilled in the art. We are guided by their expertise as we turn now to our task of applying the principles of law in the case before us.

Looking first to Wentorf, Dr. Wentorf does not coat an already preformed diamond with a radioactive metal. The Wentorf patent “relates to radioactive diamond material and to the preparation thereof. More particularly, this invention is concerned with diamonds containing a surface coating of a radioactive metal * * (Col. 1, lines 12-16). The radioactive diamond is formed by incorporating a radioactive material in the starting carbonaceous material and after subjecting the mixture to elevated temperatures and pressures, a diamond is formed which has radioactivity on the surface only. Of this surface Wentorf says: “The thickness of the radioactive layer on the outside of the diamond varies to a minor extent with the proportions of ingredients employed in the reaction. However, regardless of the proportions employed, I have found that the thickness of the radioactive metal layer lies within the range of about 0.5 to 5.0 microns.” (Col. 4, lines 55 — 59).

Noting the words surface, layer, and coating, the District Court inquired as to how those words were used in the patent. Dr. Wentorf replied:

“Well, here it says that our claim 1, in the diamond material ‘comprising a diamond having a radioactive adherent metallic surface of from about 0.5 to 5 microns in thickness.’
“That means that somewhere on that diamond is some radioactive adherent metallic material on the surface of that thickness. It doesn’t mean that it is continuous. It means that it is here, there and everywhere. It could be 10 percent or 20 percent of the surface area and that would in-elude the layer involving 10 microns deep which could be anywhere in that layer, you see.”

In contrast, the Lundblad-Lindstrom invention is directed to the coating or cladding of diamonds. The individual (discrete) diamond particles are coated with a substantially continuous layer of metallic material formed on and enveloping the respective particles. The metallic layer conforms substantially to the outer surface configuration of respective particles and has a thickness of between 0.5 to 25 microns throughout the extent of the layer.

Erik Lundblad explained the irrelevance of the Wentorf method for use in coating metal clad diamonds in that Wentorf’s radioactive material is “present inside the surface, not on the outside of the surface layer.” Dr. Seal viewed Wentorf as giving no indication “that the metal is adherent, that it may be in cracks or fissures in the surface, but it does not form a continuous coating.” Dr. Wentorf himself stated that his process does not produce a metallic coating or cladding of diamonds, but rather that the process produces diamonds just like naked uncoated diamonds, differing from them only in regard to the radioactivity. He further pointed out that since an integral part of the described Wentorf process is the separation of synthesized diamonds by means of fuming red nitric acid, “[o]ne skilled in the art does not expect a continuous metallic layer to be present after a treatment with acid of that kind.”

The different objectives of the respective inventors accentuates the difference between the Wentorf reference and the claimed invention of Lundblad and Lindstrom. The purpose of Wentorf was to remove the static electricity from the diamonds. Lundblad and Lindstrom were seeking to improve the performance of resin bonded grinding wheels. Dr. Seal was likewise working on the improvement of resin bonded grinding wheels. Both Lundblad and Seal were familiar with the Wentorf patent, and neither felt that the Wentorf disclosure had any relevance to the work he was doing. It was the opinion of both that the incorporation of a radioactive metal in a resin bonded wheel, or any wheel, would make the wheel highly dangerous to the operator, and in a resin bonded wheel, the radioactive material would destroy the resin.

Despite this evidence produced at trial, the Patent Office, in its after-trial brief, argued that it was “immaterial whether Wentorf actually produced such a surface coating since the patent clearly teaches a metallic surface layer of 0.5 — 5 microns thickness for diamond grains useful in an abrasive wheel,” and “[t]he reference is available for all it teaches to those of ordinary skill in the art.” The District Court agreed, saying: “This radioactive metallic surface coating around the diamond material lies within a range between 0.5 and 25 microns * * *,” and “[t]he fact that plaintiff asserts that Wentorf is not a proper reference because the metal used is radioactive and therefore undesirable because dangerous and thus inutile industrially does not in any way change its basic disclosure.”

It appears to us that the Patent Office and the District Court misconstrued the terms “surface coating” and “surface layer” as used in Wentorf. It is our view that the language used in a patent must be measured and interpreted in relation to the disclosure of the patent as a whole. If there was any question during the proceedings before the Patent Office, it became clear at the trial that Wentorf does not disclose the coating or cladding of diamonds, and that one skilled in the art would not construe Wentorf as describing a diamond material coated with a radioactive material in the sense clearly contemplated by Lundblad and Lindstrom. The health hazard and the deleterious effect of radiation from radioactive material on organic resins aside, the record shows that diamonds produced according to the Wentorf disclosure would not improve in any way the grinding performance of the wheel. It follows that the intermittent thickness of Wentorf’s interior surface layer of 0.5-5 microns does not reveal that an exterior metallic coating of between 0.5 and 25 microns would improve the performance of resin bonded grinding wheels.

The French patent of Soulard gives us more difficulty. For the purpose of improving abrasive tools such as grinding wheels, Soulard teaches the use of a metal coating on the abrasive grains to achieve uniform distribution of the grains and to improve the adhesion of the abrasive grains. Similarly, appellant’s purpose is to improve the performance of resin bonded grinding wheels by embedding metal coated diamond grains in a synthetic resin material. Thus the Patent Office contends that the only difference is in the thickness of the coating, and it is an obvious expedient to determine the optimum range of thickness which gives this desired result.

We agree that the most significant difference lies in the thickness of the coating. We do not agree that “it would be mere routinization to thus arrive at an optimum range of thickness which would produce the claimed result.”

Soulard surrounds the abrasive grain with a spherical cover in order to obtain the most uniform possible distribution of the grains in the grinding tool — that is, equal distance of the grains from one another. The spherical metal cover is obtained by the diamond grains passing through a screen of 100 to 120 mesh per square inch, the grains being galvanically metal coated. This results in the grains receiving a diameter of 200 to 2000 microns. Thus, the cover thickness of each grain is different, varying even within one grain, and in places it may be far above 500 microns. The wide diameter variations, between 200 and 2000 microns, of the metal spheres obtained from grains with a diameter of 150 microns, indicate that Soulard was interested exclusively in obtaining a spherical cover over each grain — not a metal deposit purposely limited in its thickness. This would explain why in the Soulard patent there is no reference to the thickness of the covering.

The Patent Office calculates by simple arithmetic the diameter of the coating of the largest grain as per Soulard to be around 25.5 microns, submitting that the difference is after all insignificant from the 25 microns cited in some of appellant’s claims. We find this argument to be untenable. Soulard is talking about enlargement in the thickness range from the minimum of 25.5 microns up to 937.5 microns, whereas the patent claims here are 0.5 to 25 microns. Judging, as we must, the invention of Soulard in its entirety, it would be inconsistent to base a comparison on extrapolated random values, equating the top of one range that has a significant criticality with the bottom of a distinctly different range.

The drawing in Soulard shows a thick cover. This is supported by the description which states that a spherical cover is to surround the small abrasive grains. There is a stark contrast between a spherical cover and the thin, metal coating applied to notoriously sharp edged, multiangular diamond grains with a jagged surface. Further, it is essential to appellant’s invention that the diamond grain retains its jagged form; hence, the surface must be metallized at equal cover thickness. Soulard makes a sphere of the jagged grain, changing its form by covering it with a metal cover differing considerably in thickness in places on the grain. In some cases thicknesses comparable with those of the subject of the application are obtained. However, the purpose attained differs completely from the one attained by the metallizing of the grain as shown in the application of Lundblad and Lindstrom.

Soulard directs the expert toward providing the diamond grains with the thickest possible metal coating for the purpose of uniform distribution of the grains, whereby such grains assume a ball shape. However, diamond grains cannot assume ball shape if the metal cover is very thin — 0.5 to 25 microns. When such thin coats are applied there is no surface leveling of the unevenesses of the ragged synthetic diamond surfaces. It is specifically the maintaining of this ragged surface structure which accounts for the increased inherence of the metal covered diamond grains and better anchoring within the resin bond in the application herein.

Added to the aforesaid differences between Soulard and appellant’s invention is appellant’s showing that the 0.5 — 25 micron range is critical. It is an established principle of law that “a limitation merely with respect to proportions in a composition of matter or process will not support patentability unless such limitation is ‘critical.’ ” “ ‘The term “criticality” as used in the patent sense is not synonymous with invention, but rather, more precisely, is a device for determining the presence or absence of invention.’ ”

The Commissioner has steadfastly maintained that appellant cannot base patentability upon a showing of criticality. Pointing to the application-in-part which discloses a coating thickness range of 0.5 — 155 microns with a specific example giving a coating thickness of 100 microns, he asserts that there is no disclosure in the application that the claimed range of 0.5 — 25 microns is critical, and such a disclosure is required to support patentability of the claims on that basis. Actually, in the original application filed by Lundblad and Lindstrom on October 19, 1965, the thickness range disclosed was “essentially 0.5 — 25 microns.” Shortly thereafter, based on studies and theoretical considerations, but without further testing, Lundblad thought the invention might have a wider scope, and he filed a continuation-in-part, which added to the disclosure a thickness “of between 0.5 microns and 155 microns, suitably between 0.5 microns and 25 microns and preferably between 5 microns and 20 microns.” After additional testing, however, it became evident that the desirable range lay between 0.5 microns and 25 microns. On May 12, 1967, the claims were amended to conform to the original application.

In In re Saunders and Gemeinhardt the Patent Office took substantially the same position which it has taken here. Citing prior decisions of the Court of Customs and Patent Appeals, the Solicitor stated that “ ‘it is well established law that claimed features, proportions or values which are not disclosed as critical or critically significant and/or are described in the application only as being merely preferred “cannot be considered as critical”, i. e., patentability cannot be predicated thereon.’ ” To this, Judge Rich, speaking for the Court, replied:

“[RJegardless of what this court may have said in the past, it is now our view that, in those cases where the applicants have attempted to rebut a showing of the prima facie obviousness of the subject matter claimed by the introduction of objective evidence of non-obviousness, both we and the tribunals of the Patent Office must give full consideration to the applicant’s evidence and reach a decision on the question of non-obviousness on the basis of the relative strength of the applicant’s showing and the prima facie case made by the Patent Office. (Citations omitted.) Appellants’ evidence may not be disregarded simply because of the manner in which the now claimed processes were denominated in the original application. To rule otherwise would let form triumph over substance, substantially eliminating the right of an applicant to retreat to an otherwise patentable species merely because he erroneously thought he was first with the genus when he filed. (Citations omitted.) Since the patent law provides for the amendment during prosecution of claims, as well as the specification supporting claims, 35 U.S.C. § 132, it is clear that the reference to ‘particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention’ in the second paragraph of 35 U.S.C. § 112 does not prohibit the applicant from changing what he ‘regards as his invention’ (i. e., the subject matter on which he seeks patent protection) during the pendency of his application.”

The application of this principle to the case herein is readily apparent.

The record established at the trial contains test evidence which clearly shows a coating thickness of 0.5 to 25 microns to be a critical range for improvement of grinding efficiency, and that there was no increase in efficiency above 25 microns. Fifteen charts were introduced into evidence depicting results in both wet and dry grinding, using diamonds coated with nickel, cobalt, .nickel-tin, and cadmium (a soft metal), with a range of coating thicknesses from 0 (no coating) through 41.1 microns. The tests all show a maximum in the particular range of 0.5 to 25 microns; i. e., it increases to the maximum and then falls off. The maximum occurs between 5 and 20 microns and between 10 and 15 microns. In this maximum range, the grinding efficiency (G ratio) increased up to 200% to 300%. Of the 15 tests, in all cases but one, there was no “glazing” until the thickness coating past 25 microns. A wheel tested with diamonds having a coating thickness of 41.1 microns obtained no results for usage for grinding operations because the wheel “glazed.” Erik Lundblad explained the term “glazing” to mean that “the metal which came from the coat was smeared out around the hub of the wheel, the periphery of the wheel and formed a continuous metallic film around the surface of the wheel.” This “narrowed the fissures” to the extent the “diamonds wouldn’t protrude through that film” and not only would the wheel not operate properly, it would not cut at all. Thus, the tests using a coating of over 25 microns up to 41.1 microns indicate that the Soulard range simply does not work in a resin bonded grinding wheel.

All of the elements used are old. Metal bonded and resin bonded grinding wheels were known to the art. Both natural and synthetic diamond was being used in each type of wheel. Interestingly enough, “a thin coating of metallic copper was electrically deposited about a diamond and the diamond thus coated, was embedded in a metal matrix for attachment to a metal abrading or cutting tool as early as 1884, some 81 years prior to the appellant’s date” and 72 years prior to Soulard. But Lundblad and Lindstrom discovered that in a resin bonded grinding wheel, diamonds had to be coated within the 0.5 — 25 micron range to achieve the new result, the unexpected result, the far more efficient result, and the more economical result — the grinding efficiency of the wheel improved up to 200% to 300%. Further, metal clad diamonds within the critical range are not damaged during or after their embedment in the matrix wheel, and the grits remain fixed when subjected to high loads or temperatures.

Although the Patent Office did not regard the disclosure in the application of Lundblad and Lindstrom as sufficient, it has been held that “the critical nature of a difference or of a limitation need not necessarily be pointed out in the specification, and it need not be expressly stated to be critical. It is sufficient if the evidence at the trial shows that the difference is critical and vitally significant.” As is often the case, the record before us has the benefit of evidence introduced at the trial de novo which was not available to the Patent Office. It contains pertinent affidavits and test results which came after the decision affirming final rejection by the Board of Appeals. Although the District Court did not rule on the issue of criticality, we think appellant established beyond peradventure the criticality of the 0.5 to 25 micron range in the claims.

The record leaves no doubt that the invention satisfied a long felt need and its commercial success borders on dazzling. There was uncontradicted direct evidence at the trial that skilled scientists tried without success for a number of years to improve the grinding performance of resin bonded grinding wheels, and that such scientists reacted with skepticism and disbelief when informed of the Lindstrom-Lundblad discovery, and the fact that their discovery improved the grinding performance of resin bonded grinding wheels by as much as 200% to 300%.

The record is replete with evidence that the invention was hailed by the trade, including disinterested third parties and even competitors as being “of major importance,” a “milestone,” a “major advance,” and “a dramatic discovery and development.” Prior to 1965, metal clad diamonds weré not commercially available. Yet the figures furnished by the Market Division of the De Beers Company show the 1971 market for resin bonded grinding wheels with unclad diamonds had decreased in value from approximately $36 million U.S. dollars to approximately $20 million, and the market for resin bonded grinding wheels incorporating metal clad diamonds had increased from 0 to $80 to $90 million. Thus, at a market valued at $100 million, resin bonded grinding wheels incorporating metal clad diamonds pursuant to the invention of the application in suit account for at least 80% of such total market, and have a market value of approximately $80 million. On the basis of equal wheel cost, minimum total grinding costs were obtained through the use of metal coated diamonds.

It is our view that because the 0.5 to 25 micron range is a critical range for coating abrasives used in a resin bonded grinding tool, thus achieving the new and unexpected result of an increase of the grinding efficiency up to 200% to 300%, appellant’s invention is not clearly obvious, precluding consideration of the evidence of commercial success and a long standing need. Considering those factors along with the other evidence, we conclude that appellant’s invention would not have been obvious to one of ordinary skill in the art within 35 U.S.C. § 103.

We have a substantial record and have carefully analyzed it in the light of the well presented arguments of counsel. Uncontroverted by any affirmative evidence from the Patent Office, the evidence in the record demonstrates the uniqueness and value of the claimed invention, and we are “left with the definite and firm conviction that a mistake has been committed.”

Accordingly, we reverse and remand with the instruction that judgment will be entered for the appellant as to all claims in issue. The Commissioner is authorized to issue a patent.

So ordered.

      . Decision of the Board of Appeals, December 27, 1968, Exhibit Volume, p. 114.

      . Scandiamant is a Swedish corporation and successor of the Diamond Division of Allmanna Svenska Electriska Aktiebolaget (ASEA).

      . Memorandum Opinion and Order, Civ. No. 785-69, February 22, 1973, Joint Appendix, p. 55a. Claim 36 describes a grinding material incorporating the limitations of claim 29, while claims 35 and 40 limit the resin to a phenolic resin; claims 31 and 39 limit the metal to nickel; claims 32 and 37 limit the thickness range of the metal coating to between 5 and 20 microns; and claims 33 and 38 limit the thickness range of the metal coating to between 10 and 15 microns.

      . See note 2, supra.

      . The “grinding ratio” is a measure of grinding efficiency of the bonded diamond grinding wheel and is determined by dividing the cubic inches of material removed during a given time by the cubic inches of wheel wear.

      . Decision of the Board of Appeals, supra, Exhibit Volume, p. 116.

      . “Findings of fact shall not be set aside unless clearly erroneous, and due regard shall be given to the opportunity of the trial court to judge of the credibility of the witnesses.” Rule 52(a), Fed.R.Civ.P.

      . Higley v. Brenner, 128 U.S.App.D.C. 290, 387 F.2d 855, 857 (1967), and cases cited therein.

      . “A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.” 35 U.S.C. § 103.

      . Graham v. John Deere Co., 383 U.S. 1, 17-18, 86 S.Ct. 684, 694, 15 L.Ed.2d 545 (1966).

      . Higley v. Brenner, supra, 387 F.2d 858. See also The Barbed Wire Patent, 143 U.S. 275, 12 S.Ct. 450, 36 L.Ed. 154 (1891); Corning Glass Works v. Brenner, 152 U.S.App. D.C. 262, 470 F.2d 410, 420 (1972); Blaw-Knox Co. v. I.D. Lain Co., 230 F.2d 373 (7th Cir. 1956); Colgate-Palmolive Co. v. Carter Products, Inc., 230 F.2d 855 (4th Cir. 1956).

      . Charvat v. Commissioner of Patents, 164 U.S.App.D.C. 47, at 49, 503 F.2d 138, at 140 (1974), citing Commissioner of Patents v. Deutsch Gold-Und-Silver-S., Inc., 130 U.S. App.D.C. 95, 397 F.2d 656, 666-667 (1968).

      . Smith v. Nichols, 88 U.S. 112, 119 (21 Wall.) 112, 22 L.Ed. 566 (1874). Accord, Lit-tie Mule Corp. v. The Lug All Co., 254 F.2d 268 (5th Cir. 1958).

      . Dr. Robert H. Wentorf, having a doctorate degree in physical chemistry from the University of Wisconsin, is a gentleman of extensive reputation in the field of the synthesis of diamonds. Associated with General Electric Research and Development Laborabories since leaving the University, Dr. Wentorf was one of four people who succeeded in synthesizing a diamond in the laboratory in the mid-1950’s. His name appears on various General Electric patents related to the synthesis of diamonds. In particular, he is the inventor of the radioactive diamond of the Wentorf patent cited in this case as a reference.
      Dr. Michael Seal holds a Ph.D. from Cambridge University, the subject of his thesis being Friction Wear and Plastic Formation of Diamonds. After completing two Research Fellowships at Cambridge (1952-1959), the first of which related to the research of diamonds, Dr. Seal became the Section Head in charge of research on diamonds for Engelhard Industries of Newark, New Jersey, and later became Technical Coordinator of the Research and Development Division (1959-1967). During this period, Dr. Seal worked with synthetic resin bonded diamond grinding wheels and metal bonded grinding wheels. He was issued a patent for etched metal coated diamond grains in grinding wheels on September 15, 1970.
      Erik Lundblad is a graduate of the University of Stockholm with a Masters of Science degree in Chemical Physics. Since 1950 he has been engaged in research of the synthesis of diamonds and in the manufacture and use of abrasive materials. At the time of his discovery, Mr. Lundblad was head of the diamond division of ASEA.

      . Joint Appendix, p. 124a.

      . Id. at 201a.

      . Id. at 226a.

      . Joint Appendix, p. 121a.

      . “The static charge on industrial diamonds, results in a number of problems in their use. Thus, when an attempt is being made to sort industrial diamonds, it is found that the static charge seriously interferes with the segregation of the diamonds into various size groups and interferes with the moving of the diamonds from one location to another. In addition, when natural diamonds are applied in uses such as in bearings or in grinding tools, the charge on the surface of the diamonds tends to attract dust or other undesirable particles of matter to the surface of the diamond. When diamonds are used as bearing materials such as in time pieces and other delicate mechanisms, the dust or other particles attracted by the static charge on the surface causes abrasion of the surface supported by the bearing and, therefore, reduces or destroys the efficiency of the bearing. Where diamonds are used in industrial grinding tools, it is found that the static charge on the diamond surface causes particles of dust and of metal to adhere to the surface of the diamond and interfere with proper and accurate grinding.” (Col. 1, lines 22-^11).

      . Joint Appendix, pp. 49a-50a.

      . Memorandum Opinion and Order, supra, Joint Appendix, p. 56a.

      . Id. at 56a-57a.

      . In his sole example, Soulard uses a nickel coating on diamonds with a metal bond, although he suggests that the bond may consist of synthetic resin.

      . Memorandum Opinion and Order, supra, Joint Appendix, p. 56a.

      . Application of Cole, 326 F.2d 769, 774, 51 CCPA 919 (1964).

      . Helene Curtis Industries v. Sales Affiliates, 233 F.2d 148, 152 (2nd Cir. 1956).

      . Exhibit Volume, p. 163.

      . It was subsequent to this filing that Lundblad first became aware of the Soulard patent. His tests thereafter included tests which were within the calculated Soulard range. Lundblad Affidavit of September 1, 1971, Exhibit Volume, p. 214.

      . Id. at 214, 215.

      . 170 U.S.P.Q. 213, 444 F.2d 599 (1971).

      . Id. at 220, 444 F.2d 606. (Emphasis in the original.)

      . In re Saunders and Gemeinhardt, supra, 170 U.S.P.Q. 220, 444 F.2d 607. (Emphasis in the original.)

      . Test number 10 shows glazing using cobalt at a thickness of 23.9. Joint Appendix, p 167a.

      . Joint Appendix, p. 158a.

      . Id. at 67a.

      . Jennings v. Brenner, D.C.D.C., 255 F.Supp. 410, 411-412 (1966).

      . For example, Dr. Michael Seal testified that in his work for Engelhard Industries of Newark, New Jersey, in the period 1961, ’62 and ’63, he was working with both metal and resin bonded grinding wheels, and testing the magnetic orientation of diamonds in a resin bond. The test results showed that iron coated diamonds in a resin bonded grinding wheel improved the G Ratio 30% to 35% over the G Ratio for uncoated diamonds. Still seeking to improve the resin bonded wheel, testing was resumed in July of 1965, but with no consideration given to using metal clad diamonds until information was made known to Engelhard that the application of the metallic coating to synthetic diamond grits gave a pattern which when used in the resin bonded wheels gave a grinding ratio of the order of three times the grinding ratio of the uncoated synthetic grits; a factor of 2 or 3 would be expected from the use of this product. As to his reaction, Dr. Seal said “[i]t came as a bombshell. We had been trying to improve the performance of diamond grits by a margin of 20 to 30 percent * * Joint Appendix, p. 222a.

      . Joint Appendix, pp. 196a, 197a.

      . Id.

      . United States v. United States Gypsum Co., 333 U.S. 364, 395, 68 S.Ct. 525, 542, 92 L.Ed. 746 (1948).