author:
BALDWIN, Judge.
      MILLER, Judge

text:
    Application of John F. WAYMOUTH and Frederic Koury.
    Patent Appeal No. 9091.
    United States Court of Customs and Patent Appeals.
    June 27, 1974.
    James Theodosopoulos, Danvers, Mass., atty. of record, for appellants.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Fred W. Sherling, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
   BALDWIN, Judge.

This is an appeal from the decision of the Patent Office Board of Appeals sustaining the rejection of claims 1-13 of appellants’ application.

The Invention

The invention relates to high pressure electric discharge devices, or lamps, which are commonly used for highway and outdoor area lighting. The lamp includes an arc tube which contains halogen and mercury atoms present in a specified ratio — 0.08 to 0.75.

Conventional high pressure electric discharge devices characteristically emit a bluish light which does not illuminate as well as white light because of poor color rendition. When these conventional lamps are used to illuminate a red object, the object appears black, not red. Appellants have sought to achieve white light emission from their lamps and have discovered that maximum white light emission can be achieved when the claimed ratio of halogen atoms to mercury atoms is maintained. Appellants’ application contains the following graph which illustrates the effect produced upon white light emission plotted against the halogen atom to mercury atom ratio.

Claims 1 and 10 are representative of the appealed claims:

1. In a high pressure electric discharge device having an arc tube with electrodes sealed at each end thereof and having means to convey electrical energy to each of said electrodes and having atoms of mercury, atoms of a halogen selected from the group consisting of iodine, bromine and chlorine and atoms of a metal capable of reacting with halogen, the improvement which comprises: said halogen and mercury being contained in said arc tube in a ratio of halogen atoms to mercury atoms between about 0.08 to 0.75, the visible emission of said arc tube when an ai’c is formed thez’ein being a substantially complete forest of spectral lines in the emission spectrum, appearing at spacings less than about 5A apart.
10. A high pressure electric discharge device having an arc tube with electrodes sealed at each end thereof and having means to convey electrical energy to each of said electrodes and having atoms of mercury, atoms of a halogen selected from the group consisting of iodine, bromine and chlorine and atoms of a metal capable of reacting with halogen, the improvement which comprises; said halogen and mercury being contained in said arc tube in a ratio of halogen atoms to mercury atoms between about 0.08 to 0.75, the amount of mercury within said arc tube being such as to be completely vaporized at temperatures attained within said arc tube between 450 and 700 °C when a pressure in excess of one half atmosphere is attained, the visible emission of said arc tube when an arc is formed therein being a substantially complete forest of spectral lines in the emission spectrum, appearing at spacings less than about 5A apart.

The other appealed claims depend either directly or indirectly from claims 1 or 10 and need not be further discussed, in view of our disposition of claims 1 and 10.

The Reference

The Reiling patent discloses a device similar to that of appellants’ and also seeks to produce white light. The Reiling device incorporates the halogen and mercury atoms used by the appellants; however, the claimed ratio is not specifically disclosed in the reference. Appellants have calculated the ratios of halogen to mercury atoms inherently disclosed by Reiling, which ratios span the range from 0.0000001 to 1.3. These ratios have not been contradicted by the board or the solicitor.

The only disclosures in Reiling relevant to any halogen atom to mercury atom ratio, all state that a quantity of excess halogen should be present and that “the mercury present be in a relatively small quantity.” Other pertinent disclosures in Reiling relate to the various metallic halides — including not only various metallic iodides, but also their bromides and chlorides — which may be utilized and that “an unexpectedly much greater increase in efficiency and improved color characteristics ... is obtained when certain combinations of iodides are used.” Reiling further states: “The ultimate parameters upon which operation of the invention depend are the vapor density within the envelope, the are temperature, and the internal envelope wall temperature.”

The Rejection

The examiner had rejected claims 1-13 under the provisions of 35 U.S.C. § 103 as being obvious in view of the Reiling patent. The examiner stated that “although the exact ratio ... is not specifically disclosed in the Reiling patent, the ratio would, at best, appear a matter of routine experimentation . ” and “it is within the ordinary skill of the art to arrive at the optimum proportion of ingredients through obvious experimentation”, citing In re Reese, 290 F.2d 839, 48 CCPA 1015 (1961). The examiner further contended that appellants’ claimed ratio was “a matter of optimization and not a matter of criticality”, since the claimed ratio would only be “deemed critical if, and only if, the lamp will not operate outside of [the] specified range” and appellants’ lamp does operate outside the claimed range.

The board sustained the rejection for the reasons advanced by the examiner and for their own additional reasons. The board stated:

We observe, referring to the graph shown in Fig. 2 of appellants’ drawings, that appellants chose 0.5, i. e., the fifty per cent point on the vertical axis of their graph to limit the range of the ratio of halogen atoms to mercury atoms claimed. It appears to us that it is an obvious matter of choice as to what portion of the range taught by Reiling, appellants choose for measuring the range over which the white light is intensified. Since appellants and the Reiling patent teach the use of the same materials in their respective lamps to produce white light, we find that it would be obvious to a person with ordinary skill in the art with Reiling before him to so choose ratios of halogen atoms to mercury atoms to optimize the production of white light. We do not view appellants’ graphical representation of a ratio range determined by a 50 per cent intensity of white light emission to establish an unexpected result, particularly since appellants’ curve is a smooth continum [sic] and extends over a range of halogen to mercury atoms greater than claimed.

OPINION

We cannot agree with the board that appellants’ claimed ratio was the result of obvious experimentation, since, in our judgment, any such experimentation would not have come from within the teachings of the art. In re Fay, 347 F.2d 597, 52 CCPA 1483 (1965). In determining whether or not such experimentation is within the teachings of the art, we “must be ever alert not to read obviousness into an invention on the basis of the [appellants’] own statements; that is, we must view the prior art without reading into that art [appellants’] teachings.” In re Sponnoble, 405 F.2d 578, 56 CCPA 823 (1969).

In so viewing the reference, we find that the only experimentation for achieving better white light emission that Reiling suggests to one skilled in the art would be to either select and balance the effects of various metallic halides or to vary Reiling’s “ultimate parameters” of vapor density, arc temperature, or internal envelope wall temperature. Furthermore, we believe that the relevant teachings of Reiling, relating to the use of an excess quantity of halogen and a small quantity of mercury, would definitely lead one of ordinary skill in the art away from appellants’ claimed ratio.

We further agree with appellants’ claim that their ratio is critical for attainment of maximum white light emission. Appellants’ specification does not describe the ratio as merely preferred, but rather in terms stating that the ratio “must be obtained.” In re Shepard, 319 F.2d 194, 50 CCPA 1439 (1963). It should suffice to point out that we can find no support for the proposition of law, as set forth by the examiner and affirmed by the board, which would require inoperativeness of a device when operating over a different range from that claimed, in order to support a finding of criticality for that claimed range.

Although Reiling’s range of possible ratios envelops the range claimed by appellants, we believe that the appellants’ graph in Figure 2 demonstrates the necessary unexpected results. Those results follow from the selection of appellants’ critical range, which is narrower than the extremely broad inherently disclosed range of Reiling. In re Reven, 390 F.2d 997, 55 CCPA 934 (1968). We cannot agree with the board’s holding that since appellants’ lamp is also operable over other ranges of the halogen atom to mercury atom ratio, Figure 2 does not demonstrate an unexpected result. In order to show an unexpected result, we do not believe that the lamp must be inoperable over other ranges, but rather that over the claimed critical range, there be a difference in kind, rather than in degree. In re Shepard, supra. We believe that Figure 2 demonstrates such a marked improvement, over the results achieved under other ratios, as to be classified as a difference in kind, rather than one of degree.

Furthermore, the board in discussing the results in Figure 2 appears to have completely ignored the fact that it is appellants, not Reiling, who have discovered that any relationship exists at all between the halogen atom to mercury atom ratio and the intensity of white light emission. See In re Sponnoble, supra, and In re Huitt, 375 F.2d 484, 54 CCPA 1417 (1967) (dissenting opinion).

For the foregoing reasons, the decision of the board is reversed.

Reversed.

MILLER, Judge

(dissenting).

Although Reiling does not teach the claimed ratio, he does teach that, in achieving his object of a highly efficient arc lamp producing white or near white emission, a ratio exists between the amount of mercury and the amount of metallic halide. Thus:

Charge 6 contains a sufficient amount of mercury so that when the mercury is entirely vaporized during the operation of the arc lamp, it provides a pressure in excess of one atmosphere and normally from in excess of one to approximately 15 atmospheres of mercury within the enclosure of envelope 2. This results in the characteristic radiation spectrum of mercury. Charge 6 also contains an amount of a metallic halide salt sufficient so that when the mercury is entirely vaporized and the coldest portion of the interior wall of envelope 2 is at a temperature in excess of approximately 600 °C., an effective amount of the metallic halide is vaporized and remains in the vapor state. The amount of halide in the vapor state which is effective is that which is sufficient to constitute within envelope 2 a partial pressure of approximately 10 —3 to 103 mm. of Hg pressure of vaporized halide, although in order to obtain maximum efficiency I have found it desirable that the partial pressure of the halide be from 1 to 200 mm. of mercury pressure. These amounts vary, depending upon the vapor pressure of the halide chosen.

Moreover, Reiling does not teach away from the claimed ratio. He teaches the use of mercury and mercury halides; and the “excess” halogen taught relates to the excess amount of metallic halide over that which 'will actually be vaporized at the lamp operating temperatures under an indicated pressure — not an excess of halogen over mercury, as the majority seems to infer. Indeed, he teaches that the mercury present be in a relatively small quantity so that all of the mercury is vaporized.

The majority agrees with appellants’ claim that their halogen-mercury ratios are ‘ “critical.” However, as shown in Figure 2, the range of such ratios is somewhat broad at the arbitrarily-selected intensity of 0.5 (doubtless to respond to the commercial realities of product control). Contrary to the majority’s description of Reiling’s range as “extremely broad,” it should be pointed out that said range does not exceed 1.3 and that over fifty per cent of this range is claimed by appellants. The smooth continuum represented by the curve contradicts the majority’s conclusion that appellants’ invention produces a difference in kind (unexpected results) rather than degree.

I agree with the board that it would be obvious to a person of ordinary skill in the art with Reiling before him to optimize the intensity of white light emission by choosing from among ratios between halogen atoms and mercury atoms.

I would affirm.

      . Serial No. 810,490, filed March 26,1969.

      . Patent No. 3,234,421, issued February 8, 1966.


source: Caselaw Access Project

author: RICH, Judge.

license: Public Domain

text:
    The UNITED STATES, Appellant, v. C. J. TOWER & SONS OF BUFFALO, INC., Appellee.
    Customs Appeal No. 5512.
    United States Court of Customs and Patent Appeals.
    June 27, 1974.

      Irving Jaffe, Acting Asst. Atty. Gen., Andrew P. Vance, Chief, Customs Section, John A. Gussow, New York City, attorneys of record, for the United States.
    Barnes, Richardson & Colburn, New York City, attorneys of record, for appellee. Rufus E. Jarman, Jr., New York City, of counsel.
    Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
   RICH, Judge.

This appeal is from the decision and judgment of the United States Customs Court in C. J. Tower & Sons of Buffalo, Inc. v. United States, 68 Cust.Ct. 17, C.D. 4327, 336 F.Supp. 1395 (1972). We affirm.

This case involves aircraft fuel cells imported from Canada. Appellee, acting as customshouse broker for the LTV Vought Aeronautics Division of Ling Temco Vought, Inc., entered the fuel cells under item 694.60, TSUS, at a duty of 9% ad valorem. There were four separate entries which were liquidated between May 31, and July 27, 1966, and, no protests having been filed, they became final sixty days later pursuant to section 514 of the Tariff Act of 1930, as amended (19 U.S.C. § 1514), such final liquidation dates being August 1, October 3, September 12, and September 26, 1966. Section 514 reads:

Except as provided in subdivision (b) of section 516 of this Act (relating to protests by American manufacturers, producers, and wholesalers), all decisions of the collector, including the legality of all orders and findings entering into the same, as to the rate and amount of duties chargeable, and as to all exactions of whatever character (within the jurisdiction of the Secretary of the Treasury), and his decisions excluding any merchandise from entry or delivery, under any provision of the customs laws, and his liquidation or reliquidation of any entry, or refusal to pay any claim for drawback, or his refusal to reliquidate any entry for a clerical error discovered within one year after the date of entry, or within sixty days after liquidation or reliquidation when such liquidation or reliquidation is made more than ten months after the date of entry, shall, upon the expiration of sixty days after the date of such liquidation, reliquidation, decision, or refusal, be final and conclusive upon all persons (including the United States and any officer thereof), unless the importer, consignee, or agent of the person paying such charge or exaction, or filing such claim for drawback, or seeking such entry or delivery, shall, within sixty days after, but not before such liquidation, reliquidation, decision, or refusal, as the case may be, as well in cases of merchandise entered in bond as for consumption, file a protest in writing with the collector setting forth distinctly and specifically, and in respect to each entry, payment, claim, decision, or refusal, the reasons for the objection thereto. The reliquidation of an entry shall not open such entry so that a protest may be filed against the decision of the collector upon any question not involved in such reliquidation.

November 14, 1966, appellee wrote a letter to the Bureau of Customs, which was received the following day, making a request under section 520(c) (1) of the Tariff Act, as amended (19 U.S.C. § 1520), for reliquidation under item 832.-00, TSUS, providing for free entry. The basis of the request was that appellee had not been aware of the fact that the fuel cells constituted emergency defense purchases pursuant to Government contract, which could be imported duty free under item 832.00, and that there had been a mistake of fact or inadvertence within the meaning of section 520(c)(1). This statute and TSUS item 832.00, under which appellee’s claim was made, read as follows:

Section 520. Refunds and errors
(c) Notwithstanding a valid protest was not filed, the. Secretary of the Treasury may authorize a collector to reliquidate an entry to correct—
(1) a clerical error, mistake of fact, or other inadvertence not amounting to an error in the construction of a law, adverse to the importer and manifest from the record or established by documentary evidence, in any entry, liquidation, appraisement, or other customs transaction, when the error, mistake, or inadvertence is brought to the attention of the customs service within one year after the date of entry, appraisement, or transaction, or within sixty days after liquidation or exaction when the liquidation or exaction is made more than ten months after the date of the entry, appraisement, or transaction; * * -X-
Tariff Schedules of the United States Schedule 8. Special Classification Provisions
Schedule 8 headnote:
1. The provisions of this schedule are not subject to the rule of relative specificity in headnote 10(c) of the General Headnotes and Rules of Interpretation, and, except as provided in headnote 3 to part 1 of this schedule, any article which is described in any provision in this schedule is classifiable in said provision if the conditions and requirements thereof and of any applicable regulations are met.
******
Part 3, Subpart A:
* * * * * *
Item 832.00 Articles for military departments :
Materials certified to the Commissioner of Customs by the authorized procuring agencies to be emergency war material purchased abroad ..........Free [Emphasis supplied.]

In January of 1968, more than one year after the liquidations in question, appellee supplied the necessary certifications, required by item 832.00 and pertinent customs regulations, that the fuel cells were emergency war material.

April 10, 1968, Bureau of Customs at Buffalo, N.Y., denied appellee’s request because the certificates required by item 832.00 had not been received within one year of the dates of liquidation so that the importer had not made his case complete within the statutory period of section 520(c)(1). On May 17, 1968, appellee requested reconsideration and on May 22, 1968, filed a protest. June 6, 1968, Bureau of Customs at Washington, D.C., refused reconsideration. Thereafter the action was brought in the Customs Court to review these rulings.

In the Customs Court, after issue was joined, the Government filed a motion for summary judgment on August 5, 1971, supported by a fourteen-paragraph "Statement of Material Facts.” September 13, 1971, appellee filed a motion for summary judgment supported by its “Statement of Material Facts” which included the identical fourteen paragraphs of the Government’s statement plus three more with an affidavit of Peter Tower, an employee of appellee. The Government then responded to the three new paragraphs, which it admitted in part, and in that manner agreed facts were laid before the court. There has been no trial. This appeal is from the court’s decision on the cross-motions.

The Customs Court granted appellee’s motion and denied the Government’s motion. There was a motion by the Government for a rehearing supported by a lengthy brief, making the same arguments made before us, which the Customs Court denied without opinion.

Decision of the Customs Court

Recognizing in its opinion on the motions for summary judgment that the Government challenged its jurisdiction for lack of the filing of a timely protest following the initial liquidation, the Customs Court nevertheless assumed jurisdiction and decided the motions. On motion for rehearing, the court’s jurisdiction was again challenged on still other grounds and, as above stated, the court denied that motion. The court found: that a timely protest had been filed under section 514 to the denial of the request to reliquidate made under section 520(c)(1); that failure to claim duty-free entry under item 832.00 was due to a mistake of fact or inadvertence which did not amount to an error in the construction of a law; that the mistake or inadvertence was brought to the attention of the Customs Service within one year of the date of entry; and that the failure to provide the necessary documentary evidence within one year of the dates of liquidation did not bar the claim under section 520 or any relevant regulation.

Appellant’s Points

The Government presents three questions, all of which it would have us answer in the negative:

1. Whether the Customs Court had jurisdiction of a protest against the refusal to reliquidate to correct anything other than a “clerical error” in the liquidation.
2. Whether the Customs Court erred, as a matter of law, in holding that the subject claim falls within the ambit of section 520(c) (1).
3. Whether the Customs Court erred in finding that “mistake of fact or other inadvertence” had been established and in holding, with respect thereto, that no triable issue of fact exists.

OPINION

1. Jurisdiction

We hold that the Customs Court had jurisdiction. It entertained appellee’s protest, timely filed within sixty days of a customs decision, which was properly subject to protest under section 514. The decision was a refusal to reliquidate made on April 10, 1968. Protest was filed May 22, 1968.

We reject the involved reasoning by which appellant attempts to persuade us — and by which it failed to persuade the Customs Court — that while that court admittedly had jurisdiction to review a refusal to reliquidate an entry for a clerical error under section 520(c)(1), it did not have such jurisdiction with respect to a refusal to reliquidate for “mistake of fact, or other inadvertence,” set forth in the very next-words of that section. In fact, we feel that the proposition verges on the preposterous. It is based on a too myopic and too purely verbal construction of the language of section 514.

Section 514 is not a jurisdiction-granting statute. Jurisdiction of the Customs Court, as appellant himself contends, was derived from 28 U.S.C. § 1583 (now superseded by 28 U.S.C. § 1582, effective by virtue of the Customs Courts Act of June 2, 1970, P.L. 91-271, 84 Stat. 274). The title of section 514 is “PROTEST AGAINST COLLECTOR’S DECISIONS.” It deals with two matters: (1) the finality of “all decisions of the collector * * * as to the rate and amount of duties,” of “all exactions of whatever character,” and of his decisions on other named matters; and (2) the filing of protests “in respect to each entry, payment, claim, decision, or refusal.” The effect of a timely protest is to relieve the decision of its finality and to lay a basis for the review procedure, first by the collector, then by the Customs Court, and thereafter by this court, if a party chooses to continue, all as set forth in the next succeeding section, 515.

Appellant makes much of the fact that no protest was ever filed against the decision liquidating the entries under item 694.60, wherefore they became final. This is of no moment. As we said in United States v. Miles, 416 F.2d 973, 57 CCPA 1, 5, C.A.D. 967 (1969), by approval of language used in the Customs Court opinion,

Liquidations, final and conclusive under section 514, do not bar protestable section 514 rights asserted under other provisions of law. 19 U.S.C., section 1520 [520]. Nor do we conceive it beyond the power of Congress to create a protestable right on matters settled in liquidation.

In Miles we did not find that appellant’s right arose under section 520, though recognizing that rights might arise thereunder, but under a retroactive act of Congress, P.L. 89-468, providing for free entry of copper scrap. The case involved a refusal of the collector to reliquidate on the ground that the request was untimely because the liquidation had become final. In view of appellant’s contention here that a protest which brings a decision before the Customs Court for review must be found somewhere in the specific recitations of section 514 (such as “refusal to reliquidate any entry for a clerical error”), we call attention to the fact that there was no provision for refusal to reliquidate because of enactment of a retroactive statute, any more than there is for refusal to liquidate because of a “mistake of fact, or other inadvertence.” We held in Miles, nevertheless,

Under the facts of record, the importer’s request for reliquidation was timely and the protest from the refusal of the request was in compliance with section 514.

We think the broad language of section 514, “all decisions of the collector * * * as to the rate and amount of duties chargeable” and the provision for filing a protest to a “decision, or refusal,” suffices to encompass the situation here, as it did in Miles, notwithstanding lack of specific reference to it. Similarly, the jurisdiction-granting statute, 28 U.S.C. § 1583 (now 1582, which contains even more inclusive language) gives the Customs Court review jurisdiction corresponding to the broad language we have quoted from section 514. See the eloquent discussion of a similar problem involving section 514, and section 520 in an earlier version, in Hudson Fwdg. & Shipping Co. v. United States, T.D. 46389, 63 Treas.Dec. 819 (1933).

Appellant’s argument for lack of jurisdiction appears to rest on the premise that a refusal to reliquidate because of a mistake of fact, as provided in section 520, is not within the ambit of section 514 because, unlike “a clerical error,” “mistake of fact” is not mentioned in section 514. If mistake of fact is outside 514 for one purpose it must be outside for all purposes. That would mean that a decision not to reliquidate for a mistake of fact would never become final and conclusive. We are sure appellant would not argue that to be the case. In fact, appellant tacitly admits such a refusal is within section 514, though not mentioned therein, to the extent of permitting administrative review, but not for the purpose of permitting judicial review of administrative action. The argument falls by its own weight.

2. Mistake of Fact

Appellant here attempts to show that appellee’s claim is not within the scope of section 520(c)(1) and that the Customs Court was wrong because this claim does not involve a question of fact but an “error in the construction of a law,” which is the exclusionary language of the section. At least that is what we understand the argument to be. In the end, the argument comes back to claiming that what appellee should have done was to file a timely protest to the original liquidation. We see no merit in the arguments made. There was a mistake of fact in that appellee did not know that the fuel cells were emergency war material under a Government contract, the fact being that they were. There was, therefore, no reason to protest. There is no allegation of any error in the construction of a law by anyone. It is a simple matter of being allowed to present the evidence to show that the fuel cells were all along entitled to free entry, although knowledge of that fact was acquired after liquidation of the entries had taken place. The facts were mistaken at the time.

3. No Issue of Material Fact

Appellant finally argues that proof must be adduced that the importer was unaware of the facts justifying duty-free entry because the record is silent in this respect. On the contrary, appellee’s Statement of Material Facts includes the following:

15. The merchandise covered by the protest herein consists of materials certified to the Commissioner of Customs by the authorized procuring agencies to be emergency war material purchased abroad.
* * » * * *
17. At no time prior to sixty days after liquidation of the merchandise covered by the protest herein did the District Director of Customs at Buffalo, New York know the fact set out in number 15 above, nor did plaintiff.

The Government response was (emphasis ours):

15. Admitted except that defendants [sic] notes that said certification was furnished to the Commissioner after the dates of final liquidation of these entries set forth in paragraph 9 of the statement of material facts.
* * * * * *
17. Admitted. It is obvious that the importation was not certified to the Commissioner of Customs prior to final liquidation, no steps having been taken by plaintiff to secure such certification.

The added comments about when the certification reached the Commissioner of Customs in no way qualify the admission that the importer was unaware of the facts justifying duty-free entry and we are unable to see anything that needs to be proved to justify the summary judgment granted to appellee.

Conclusion

Appellant not having convinced us of any error by the Customs Court, its judgment is affirmed.

Affirmed.


author: RICH, Judge. MILLER, Judge

text:
    MONTGOMERY WARD & CO., INC., Appellant, v. The UNITED STATES, Appellee.
    Customs Appeal No. 74-7.
    United States Court of Customs and Patent Appeals.
    June 27, 1974.
    Ralph A. Mantynband, Chicago, 111., attorney of record, for appellant. Arvey, Hodes & Mantynband, Chicago, 111., of counsel.
    Irving Jaffe, Acting Asst. Atty. Gen., Andrew P. Vance, Chief, Customs Section, Edward S. Rudofsky, Dept, of Justice, Civil Division, Customs Section, New York City, for the United States.
    Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
   RICH, Judge.

This appeal is from the decision and judgment of the United States Customs Court, 70 Cust.Ct. 193, C.D. 4430, 362 F.Supp. 560 (1973), which dismissed an action challenging the classification of certain portions of an electronic organ as an electronic musical instrument, “Other,” under TSUS 725.47 and claiming classification under TSUS 726.80 as “Musical instrument parts not specially provided for.” We reverse.

The four articles imported-were: (1) a bass foot pedal assembly; (2) a keyboard chassis assembly; (3) an amplifier and expansion pedal assembly; and (4) a reverberation unit. These components, or subassemblies, were imported together. They are sometimes hereinafter referred to as Exhibits 1, 2, 3, and 4.

The competing provisions of the Tariff Schedules are:

General Interpretative Rule 10(h): [U]nless the context requires otherwise, a tariff description for an article covers such article, whether assembled or not assembled, and whether finished or not finished [.]
Schedule 7, Part 3, Subpart A
Subpart A headnotes:
2. For the purposes of this sub-part—
X- * X- * * X'
(c) the term “electronic musical instruments” embraces all musical instruments in which the sound is generated electrically, and conventional-type instruments not suitable for playing without electrical amplification, but the term does not include conventional-type instruments, fitted with electrical pickup and amplifying devices, when the instrument is suitable for playing without such amplification.
3. The provisions of this subpart for string, wind, and percussion musical instruments include such instruments whether or not fitted with electrical pickup and amplifying devices. Such devices, however, are separately classifiable from the musical instrument with which imported unless such devices are, or are designed and intended to be, fitted into or housed in the instrument itself.
x x- * * x x
Electronic musical instruments
X X X X X X

725.47 Other............17% ad val.

Schedule 7, Part 3, Subpart B
Subpart B headnote:
1. This subpart does not cover electrical pickup or amplifying devices or other articles which are provided for in part 5 of schedule 6 or part 2 of schedule 7.
X X * X X X

726.80 Musical instrument parts not specially provided for.. 11.5% ad val.

The imported components, when assembled with other parts furnished in this country, became the Montgomery Ward & Co. electronic organ, Model 8931. Montgomery Ward imported the components, sold them to a company named Wellcor, Wellcor manufactured complete organs therewith, and sold them to Montgomery Ward, which sells them to the public.

The Customs Court opined that if the imported articles had been imported separately, or if less than all four of them had been imported together, the importations would “very likely” have been classifiable under Item 726.80 as parts of an electronic musical instrument. It deemed the question to be whether the unassembled imported components “were sufficiently complete to constitute, in their entirety, an article in the class of ‘electronic musical instruments’.”

The Customs Court found, and it is not disputed, that Wellcor assembled the imported components into a cabinet or case of American manufacture, with a loudspeaker (transducer) of American manufacture, using miscellaneous hardware of American manufacture. The evidence shows that the value of the imported parts was 47.10% of the production cost of the organ and that the parts manufactured in the United States plus various other cost items including a profit were 52.90% of the cost. Notwithstanding the lower court’s finding that cost items other than the cost of the imported components “represent more than 50 percent of what it costs to produce the electronic organ model No. 8931 for sale at retail,” and a further finding that “when assembled, the imported articles are unable to generate an audible musical sound without a loudspeaker,” it held the imported components to constitute an electronic musical instrument under item 725.47.

OPINION

This being a classification case we are not limited to review of questions of law and can consider whether the lower court’s findings of fact conform to the weight of the evidence. Appellee urges that there is “substantial evidence” to support the Customs Court’s findings and, indeed, there is. But we also find there is even more substantial evidence to support appellant’s contentions on critical questions of fact. We do not agree with appellee’s suggestion that we are bound to accept the Customs Court’s findings of fact whenever there is substantial supporting evidence, and we will not do so when they are clearly contrary to the weight of the evidence.

The first consideration in this ease is whether the importation falls into the category of “Electronic musical instruments,” which item 725.47 specifies. Headnote 2(c), above, defines this term as embracing “all musical instruments in which the sound is generated electrically.” It is not disputed here that the importation ends up in an “electronic organ,” Model 8931. Neither is it disputed that in that organ sound is generated electrically. It is also undisputed that two major parts of the Model 8931 organ as marketed are not among the imports, namely, the cabinet and the loudspeaker. The issue, therefore, reduces to a question of whether the importations, consisting of four major electromechanical organ subassemblies, constitute a musical instrument in an unassembled condition, namely, an organ. It is to that question that we now turn.

The Government’s case for the affirmative is built entirely on a courtroom demonstration put on by its two witnesses and their testimony. One of the witnesses, John Ogle, with three or four years of experience as an organ repairman, took three of the four imported sub-assemblies or components, omitting the reverberation unit, and made the intended electrical connections between them. He then testified that, if “plugged in and played,” “electronic vibrations” would be present but that they would not be audible unless a loudspeaker was added to the assembly. Government counsel then had Ogle connect a loudspeaker and plug in the assembly. The Government then called its second witness, Dennis Halasz, a freshman music student at the University of Illinois, who said he had played electronic organs like the Model 8931, which was also in the courtroom, and he improvised “Blues in G minor” on the hooked-up plugged-in assembly of the imported parts with added speaker. It has been said that “music hath charms,” and this demonstration appears to have had a siren-song effect at the trial stage.

After Mr. Ogle testified that the components of an electronic organ are tone generators, keying systems, voicing systems, amplifying systems, and a speaker, he testified furthér on direct examination, in effect, that an electronic organ without a speaker is still an electronic organ. This, of course, is the ultimate legal question in this case, and the testimony was that of a repairman with no knowledge of customs law. On cross-examination Mr. Ogle testified as follows:

By Mr. Mantynband:
Q. Without this speaker, Exhibit No. 5, can the four parts over there make music as an electronic musical instrument (indicating) ? A. You won’t hear any sound.
Q. Can they make music? A. You won’t hear it.
Q. They can’t make music, can they? A. Not if you are considering hearing.
Q. Is there any other form of music other than hearing? A. That’s up to you; I don’t know.
Q. Do you know of any other form besides hearing? A. No.
Q. That’s the only form of music there is, that which you can hear? A. Yes.
Q. Music you can’t hear isn’t music, is it? A. You can’t hear it.
Q. Well, it’s not music, is it? A. I suppose not.

Along similar lines, Mr. Ogle testified that with the four imported subassemblies you have an electronic organ, even without the cabinet because “You’ve got all the basic elements for an electronic organ on the table.” (Emphasis added.) On cross-examination, Mr. Ogle testified :

Q. Now, you testified that you were able to exercise a judgment as to whether Exhibits 1, 2, 3, and 4 were or were not an organ as they stand on the court’s exhibit table. A. Yes.
Q. Do you recall that testimony? A. Yes.
Q. Will you tell us what you have had to do, in your entire life, with the manufacturing of an organ ? A. None.
Q. I cannot hear you. A. I said, “None.”

Appellant’s witness Wilkerson, Montgomery Ward’s musical instrument buyer, a professional musician without formal electronics education, testified, inter alia, that he could not sell the imported components “as an organ,” that one of the most important influences on the musical qualities of an organ is the cabinet and speaker design, that the speaker used in Model 8931 is of American manufacture, that the speaker is the only part of the organ that generates sound (which seems more than a little obvious), that the imported components, as imported, are not a musical instrument, that before the importation can be functional as an organ “There would have to be additional parts and wiring and a cabinet and a speaker,” and that without the cabinet and the speaker “there is no sound; there is no organ.”

Appellant’s witness Gene Morez was the director of engineering at Electronic Sound Corporation which built Model 8931 organs until that operation was transferred to a related company of some kind, which is Wellcor. He had been a senior product engineer at two other organ companies, Lowry and Thomas. He testified, inter alia, that the four imported subassemblies could not, “of course” function as an organ without further manufacturing. His direct testimony is concise and highly significant on the issue before us. We reproduce it:

Q. Now, as Plaintiff’s Exhibits 1, 2, 3, and 4 arrive in the United States, are they, in your opinion, able to function as an organ without further manufacturing? A. No. Of course not.
Q. Further manufacturing is required? A. The cabinet is an intrinsical part of an organ. The whole tonality of an organ is based on the cabinet and speaker system selected for it. The frequency range of any given instrument, and the organ is [as] an instrument, is dependent on a character of sound that you want out of it.
This particular organ has low frequency in the pedal tones of 32 cycles per second. It requires an awful lot of power, in the area of 25 watts rms to reproduce that low a frequency in an audible level. And if the speaker was not mounted in the cabinet, the cone would literally just pump a small volume of air. The cabinet, however, coupled to the baffle element of the cabinet, will now make this sound audible. So that cabinet, which holds the tray, which holds the pedal clavier, which incidentally is made to a musician’s standard, called the American Guild of Organists — A.G.O. specs’ — is required to hold the various components and parts that are put into that cabinet in such a fashion that a person that is experienced in any such fashion with playing an organ can sit down at this unit and feel comfortable at it as the instrument it is.
There are certain locations for that pedal clavier in relationship to the keyboard. There are also certain relationships of that volume control to the keyboard. And if those relationships are not held from one organ to another organ to another organ, there wouldn’t be any similarity to the term "organ” it would be an instrument of its own. So the cabinet in any one of these type of devices is very, very important to its tonal features.

This testimony was not shaken on cross-examination, from which we extract the following:

By Mr. Henry [Government counsel]:
Q. Now, I would like to go to the veneer cabinet which plaintiff refers to, and just ask you one more thing.
Is the veneer cabinet used for tonal quality purposes, too? A. Yes, it is.
Q. Could you elaborate on that? A. The quality of the wood that makes the cabinet up has a typical reasonance [sic] or resonant quality which adds a warmth of sound to it, that given a plastic cabinet or something else may not have, but the fact is that it’s also a baffle for the speaker. It is the baffle for the speaker compartment that makes the speaker work more efficiently. Any speaker, any given speaker, just held in the air, will produce a sound, but the sound will be limited in range and quality; no low frequency would come out of it because it isn’t doing any work. It must be applied to or installed in a baffle — hence, the cabinet, to reproduce these low frequencies — and an organ, by nature, of its own name, must produce low frequencies.
Q. Then the veneer cabinet is used mainly for the purpose of the speakers. A. But, as I pointed out before, it also holds these other components in a specified area.

After review of the entire testimony and with the aid. of the exhibits, we are clearly of the opinion that the imported subassemblies, when assembled as was done in the courtroom, do not constitute an electronic organ in the common meaning of that term and therefore do not constitute a musical instrument. They cannot, therefore, be classified under item 725.47. One reason is that two parts of major importance must be added to create an electronic organ, namely, a coordinated cabinet and loudspeaker. Another reason is that to have a musical instrument known as an organ, which can be played upon in conventional fashion by a musician trained as an organist, three of the four imported components which are manipulated by the organist, namely, the keyboard, the bass foot pedal, and the foot-operated swell pedal, must be properly located by means of their mounting in and attachment to the cabinet so as to be in the positions where an organist, by his training, expects to find them. As we understand the courtroom demonstration, in which the witness was able to produce music from three coupled components, they were simply laid on the table or possibly on both the table and the floor, in which arrangement they were far from being what anyone would call an organ in the usual sense. The testimony of knowledgeable experts, moreover, contradicts Mr. Ogle’s statement that all the basic components of an organ were imported. It is clear to us that the cabinet and speaker are basic elements of an organ.

We have carefully considered the reasoning which led the lower court to find that the cabinet is not an essential component of an electronic organ but are constrained to disagree with it. Familiarity with the court’s opinion will be presumed. We do not consider it significant that dictionaries, in defining organs in general, fail to mention cabinet^. The cases cited do not seem in point. We find no significant evidence in the record that organs of the type in which the importations are used are ever sold without cabinets. It does not follow from the fact that the current-generating electrical parts characterize the organ as “electronic” that the cabinet is not essential; nor does it follow from the fact that the cabinet per se does not “advance the imported articles to the condition of an electronic organ.” (Emphasis ours.)

With respect to the lower court’s reasoning that the loudspeaker is not essential to the existence of an electronic organ, we find fundamental error in the lower court’s premise that the speaker does not contribute “to the manner in which the sound is generated * * *.” We find this same flaw in appellee’s argument. The assumption is that the imported electronic components generate “sound” and that the speaker merely makes it audible. The imported components do not generate sound, as the evidence shows and as is well known; they generate electrical currents only. The speaker, which can also be characterized as an electrical device, since it is actuated by the electrical currents fed to it, acts as a transducer to convert electrical energy into sound. Until this occurs, there is no sound. We therefore have to disagree with the lower court’s conclusion that the courtroom demonstration “effectively dramatized” how the imported components, when assembled, “generated sound electrically.” They generated nothing more than electrical currents and there was no sound but for the added loudspeaker, which was not among the imported articles. We deem it essential to its classification as a “musical instrument” — in the absence of some indication of legislative intent to the contrary — that there be a capability in an organ of producing sound when played upon.

We therefore conclude that the imports were not properly classified under item 725.47. The record establishes beyond question that they are, however, “parts” of electronic musical instruments, and no question has been raised as to such parts being properly classified under item 726.80.

The Assignment of Error Question

Appellee has raised a question about the adequacy of the assignment of errors in the notice of appeal to this court to “preserve for review the issue of whether an unfinished electronic musical instrument must be capable of producing audible sound * * * in order to be classified as an electronic musical instrument for tariff purposes.” It will be recognized that said issue goes to the very essence of this appeal. The assignments of error read as follows:

2. Concise Statement Of Errors Complained Of:
(a) The judgment is contrary to the evidence;
(b) The judgment is contrary to the law;
(c) The judgment is contrary to the manifest weight of the evidence;
(d) The Court erred in permitting the Court’s government witnesses Ogle and Helasz to testify as to opinion evidence ;
(e) The Court erred in receiving over plaintiff’s objection evidence introduced by the defendant concerning the opinions of the defendant’s witnesses that the imported articles constituted an electronic organ.

Appellee cites United States v. Fisher Scientific Co., 40 CCPA 164, C.A.D. 513 (1953), in support of the proposition that the errors should be more specifically stated on penalty of any error not so stated not being considered. In Fisher the court declined to consider certain vaguely broad assignments of error not only because they were broad but also because “of the almost complete absence of any reference to alleged errors with respect to this importation in the brief and oral argument of appellant.” At the same time, the court prefaced its discussion of the point by saying it “is not disposed to be technical upon this subject.”

That was over twenty years ago and there has been a change in attitude in this court on the subject of assignments of error, particularly on the patent side of our jurisdiction where the corresponding provision is for “reasons of appeal” and the question has been more frequently raised. For cases involving liberal construction of the reasons of appeal provision see, In re Howell, Jr., 49 CCPA 922, 298 F.2d 949, 132 USPQ 449 (1962); and In re Arnold, 50 CCPA 1166, 315 F.2d 951, 137 USPQ 330 (1963). See also the dissenting opinions in In re Gruschwitz, 50 CCPA 1498, 320 F.2d 401, 138 USPQ 451 (1963). We point out that appellee has been at no disadvantage in this case by reason of the breadth of the assignments of error since appellant’s arguments were made below and were fully made known to it in appellant’s brief in this court. We also note the fact that, under the Federal Rules of Appellate Procedure, Rule 3, in other Federal Courts of Appeal no assignment of errors is required, nor has one been required ever since adoption of the Federal Rules of Civil Procedure. The statute, 28 U.S.C. § 2601(b), now somewhat anachronistic, still requires assignments of error and, consequently, this court’s Rule 3.1(b) does likewise. But, even as we said in 1953, we are not disposed to be technical about them since they really serve no useful purpose. We hold the errors assigned in this case sufficient to preserve all issues argued for review. The errors stated go to the whole decision of the Customs Court.

Conclusion

The decision and judgment of the Customs Court is reversed.

MILLER, Judge

(concurring).

The following statement in the majority opinion (with which I concur) should be amplified: “We find no significant evidence in the record that organs of the type in which the importations are used are ever sold without cabinets.” The inference is that the decision would have been different if such evidence had been present. However, in Authentic Furniture Products, Inc. v. United States, 486 F.2d 1062, 61 CCPA —, C.A.D. 1109 (1973), there was ample evidence that the importations involved were advertised and sold without “essential” parts, but the majority, nevertheless, held that the importations constituted less than the completed article because the missing parts were “essential.” Judge Rich and I dissented, finding that the missing parts were not “essential” in the commercial sense, as distinguished from the functional sense; also that the missing parts were not “substantial” for purposes of the test of “substantial and essential” laid down in Twin Pin Co. of U.S.A., Inc. v. United States, 24 Cust.Ct. 430, Abstract No. 54254 (1950). Here the cabinets and loudspeakers were essential in both the commercial and functional sense; also they were both substantial and essential.


text:
    Application of Denise MANCY et al.
    Patent Appeal No. 74-507.
    United States Court of Customs and Patent Appeals.
    June 27, 1974.

      Ellsworth H. Mosher, Arlington, Va., Charles A. Wendel, New York City (Stevens, Davis, Miller & Mosher, Arlington, Va.), attorneys of record, for appellants.
    Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents; Fred E. McKelvey, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
   RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of claims 1-5 of appellants’ application serial No. 877,511, filed November 17, 1969, for a “Process for the Preparation of Daunorubicin.” We reverse.

The Invention

Appellants claim a process for producing the antibiotic daunorubicin by aerobically cultivating the microorganism Streptomyces bifurcus, strain DS 23,219 (NRRL 3539). This strain is new to the art in that it is not shown by any of the references and was found in and isolated by appellants from a soil sample taken from the Val-de-Marne department in France. The NRRL designation identifies the classification location of a deposit of the microorganism at the United States Department of Agriculture in Peoria, Illinois, and there is no question that the application as filed meets the disclosure requirements of 35 U.S.C. § 112 as enunciated by this court in In re Argoudelis, 434 F.2d 1390, 58 CCPA 769 (1970).

Representative is claim 1:

1. Process for the production of Daunorubicin which comprises aerobically cultivating Streptomyces bifurcus, strain DS 23,219 (NRRL 3539), of [sic, or] a daunorubicin-producing mutant thereof, using an aqueous nutrient medium containing assimilable sources of carbon, nitrogen and inorganic substances, and separating daunorubicin formed during the culture.

The four dependent claims specify certain further conditions of aerobic cultivation such as pH, temperature, and aeration rate, although apparently the conditions specified are conventional.

The Prior Art

The references show the production of daunorubicin by similar aerobic cultivation of other strains of Streptomyces. The British patent shows the use of Streptomyces coeruleorubidus 8899 and Streptomyces coeruleorubidus 31723 in an aqueous nutrient medium containing assimilable sources of carbon, nitrogen, and mineral salts, and the Chemical Abstracts of articles by DiMarco et al. show that daunomycin (another name for daunorubicin) can be isolated from cultures of Streptomyces peucetius.

The Rejection and Opinion of the Board

The examiner rejected all the claims for obviousness in view of the British patent and each DiMarco reference on the ground that “It is not patentable to produce the known antibiotic from either a different strain of the same species [of microorganism] or a different species of the same genus [Streptomyces] unless something more is present than merely the utilization of another source from the same field of sources of these products.”

The board agreed with the examiner and further cited two of its own prior decisions for the “established * * * general principle that the choice of a different strain of the same microorganism is prima facie obvious. Ex parte Arzberger et al., 155 USPQ 286 [1966]; Ex parte Kropp, 143 USPQ 148 [1959].” In the board’s view, appellants had shown no unexpected results in the use of their strain of Streptomyces to rebut what it deemed to be the prima facie case of obviousness. Although the board admitted “that the search for the [sic, and?] testing of organisms for the production of an antibiotic is generally a long, tedious and expensive undertaking,” it stated that this “does not in itself render patentable the production of the antibiotic with the organisms thereby discovered where no unexpected results are achieved.” (Emphasis ours.)

The Parties’ Arguments

Appellants challenge the very basis for the rule applied by the board here and in the Arzberger and Kropp eases, alleging that the rule is based upon two false premises. First, appellants assert that the rule incorrectly assumes that it is obvious how to find a novel strain of microorganism because the physical steps involved in isolation of a strain are easy to describe, whereas there is really nothing obvious here because there was no guarantee that appellants would be able to isolate any novel strain of microorganism, particularly one capable of producing a useful product. Appellants allege that to deny, in these circumstances, that the isolation of the novel species forms a basis for a patentable invention is to deny patentability “by the manner in which the invention was made,” an approach prohibited by 35 U.S.C. § 103, last sentence. The second false assumption, which appellants allege is the foundation for the rule applied by the board, is that the novel strain, once produced, is likely, on culture, to produce a useful compound. Appellants assert that this is not the case, and that, in fact, most strains of microorganisms do not produce useful compounds on culture and thus, if unexpected results are required for patentability, the fact that a useful product is obtained where a novel strain is cultured is itself unexpected.

Finally, appellants allege that the proper test for determining the obviousness of a process invention, where the difference between the claimed invention and the prior art resides in the material used in the process, was enunciated by the court in In re Kuehl, 475 F.2d 658 (Cust. & Pat.App.1973), wherein we held that a hydrocarbon cracking process was not even prima facie obvious where the particular zeolite catalyst used in the process was not known to the prior art, the obvious parallel being that the particular strain of microorganism used here was not known to the prior art.

The solicitor responds to appellants’ citation of and reliance on Kuehl only indirectly. Without mentioning Kuehl, he relies upon two earlier decisions of this court, In re Kanter, 399 F.2d 249, 55 CCPA 1395 (1968), and In re Neugebauer, 330 F.2d 353, 51 CCPA 1138 (1964). The solicitor states of Kanter (his footnote omitted and quotation corrected) :

Kanter discovered that a silicon-containing “case” could be applied to a metal alpha-delta alloy base using one or more prior art processes. 399 F.2d 249, 55 CCPA at 1396. Kanter obtained an improved product — one in which the case would not readily separate from the metal base. Id. The Court held Kanter’s process to be obvious, observing (399 F.2d 249, 55 CCPA at 1397-1398):
“We can only point out that the 2. DiMarco et al., Daunomycin, a New Anti-steps of the claimed process are old except for the alloy worked on and the new product. Appellant has achieved this new product by performing an old process on a starting material, or base metal alloy, not previously used in the process.
# * * * * *
The selection of the starting material was, presumably, not obvious but such selection is not a category of patentable invention. 35 U.S.C. 100.” [].

The solicitor further replies to appellants’ argument that it was unexpected to find that the new strain of microorganism would produce a useful compound with the assertion that “the record reveals that three strains of the genus Streptomyces, * * * [on culture] produce daunorubicin. No evidence in this record establishes that fermentation of any strain of Streptomyces under the conditions in claims 1-5 will not give the same result.”

OPINION

We agree with appellants that Kuehl controls this ease. We there reiterated that the statutory standard of § 103 for determining obviousness of an invention is whether in view of the prior art the invention as a whole would have been obvious at the time it was made. In Kuehl the appealed claims were directed to the use of a novel aluminosilicate zeolite, ZK-22, as a catalyst in hydrocarbon cracking processes. The prior art Frilette patent showed the use of other zeolites as hydrocarbon cracking catalysts. The board in Kuehl maintained that the claims directed to this use of ZK-22 represented “the obvious use of the claimed aluminosilicate” and that for the invention of the process claims “to be unobvious there would have to be a showihg by appellant that the use of his admittedly novel catalyst in the hydrocarbon cracking process of Frilette gave unexpected results.” We disagreed with the approach taken by the Patent Office, which was to ask whether “One skilled in the art [given the novel catalyst] * * * would expect it to have the same catalytic effect that the known zeolites have.” We said “the process ‘invention as a whole’ includes the use of the ZK-22 zeolite and one having no knowledge thereof would not find it obvious to crack hydrocarbons using it as a catalyst.” See also In re Schneider, 481 F.2d 1350, 1356 (Cust. & Pat.App.1973), and In re Wadlinger, 496 F.2d 1200 (Cust. & Pat.App.1974).

Applying the art which is of record, we believe that the invention is not prima facie obvious. Without Streptomyces bifurcus, strain DS 23,219, knowledge of which is supplied by appellants’ application and availability of which is supplied by appellants’ deposit of the microorganism with the Department of Agriculture, one skilled in the art would not find it obvious to produce daunorubicin by aerobically cultivating Streptomyces bifurcus. Apropos is the following soliloquy from appellants’ brief'which is illustrative of the situation here:

What is one of ordinary skill in the art taught from the references? He is taught that daunorubicin can be formed from the cultivation of Streptomyces coeruleorubidus 8899, Streptomyces coeruleorubidus 31,723, and Streptomyces peucetius and no more. Given these references, how is the artisan led to Streptomyces bifurcus, DS 23,219, and how is the artisan led to daunorubicin produced from this new strain of Streptomyces? He is led thereto only through the directions given on the road signs of appellants’ very own disclosure.

The approach taken by the solicitor in putting the burden on appellants to show “that any microorganism of the genus Streptomyces will not yield daunorubicin when fermented under the conditions recited in claims 1-5” is in conflict with the requirements of § 103, for even if all strains of Streptomyces would yield daunorubicin under the specified conditions, the process of producing the antibiotic by culturing Streptomyces bifurcus would still be unobvious to those of ordinary skill in the art for the simple reason that the microorganism is unknown to them. As for the board’s suggestion that appellants merely made a “choice” of a different strain, one cannot choose from the unknown.

In re Kanter and the Method-of-Making Cases

In re Kanter and In re Neugebauer, cited by the solicitor, involved situations where the novelty resided, not in the starting materials which were used in the claimed process, but in the product produced by the process. In Kanter, the base metal alloy used as a starting material in the claimed process, although not previously used in the process, was old. In Neugebauer, which was relied upon in Kanter, we considered the obviousness of claims directed to a method of making an electrophotographic material by a single-step coating process, where claims had been allowed to the material produced. We think that there is a significant difference between a method of making a novel product and a method of using a novel product. Cases such as Kanter, which involve the former, are not controlling in the latter situation.

In Kuehl, the'solicitor also maintained that method-of-making cases such as In re Larsen, 292 F.2d 531, 49 CCPA 711 (1961), were analogous and ought to control in the method-of-use situation, and we there stated our disagreement with the proposition of the solicitor “that the claims calling for a process using an unobvious composition ought to be treated identically with claims calling for the process of making an unobvious composition.” We do so again, reiterating that under § 103 neither a novel product made by, nor a novel starting material used in, the process can be treated as prior art. " In the method-of-use cases, such as Kuehl, the novelty of the starting material may lend unobviousness to the process. In the cases where the invention is a process for making a new product, however novel the product may be, the claimed process steps and starting materials may themselves still be old and the process therefore obvious. This is clearly the situation in the Kanter case where the starting material, the base metal alpha-delta alloy, was not itself alleged to be new but only “not previously used in the process.” We thus do not consider Kanter controlling here where the claimed invention is a method of using the new Streptomyces strain.

The Patent Office Board of Appeals seems to have recognized the distinction between the Larsen line of cases dealing broadly with the processes for making a product and cases dealing with a process using a composition in Ex parte Rue, 155 USPQ 474, 475 (Pat.Off.Bd.Appls.1967), where the board stated in language applicable to the facts of this case:

We will not sustain this rejection [of two process claims]. The claims appear to us to be drawn to a properly defined process. Process claims may not be rejected simply because they recite the use of new materials in an old process which process is otherwise proper, 35 U.S.C. 100(b) [Emphasis ours.]
In re Larsen, 49 CCPA 711; 1961 C.D. 567, 772 O.G. 889, 292 F.2d 531, 130 USPQ 209, cited by the examiner is not in point with this case in view of the above and further because the process therein was for making not using the compound claimed.

The Nature of This Invention: A Process of Producing a Known Antibiotic Using a New Strain of Microorganism

We recognize the differences between this case and the situation in Kuehl, where the novel zeolite used as a catalyst in the claimed hydrocarbon cracking processes was itself the subject of allowed claims in the application. Here appellants not only have no allowed claim to the novel strain of Streptomyces used in their process but would, we presume (without deciding), be unable to obtain such a claim because the strain, while new in the sense that it is not shown by any art of record, is, as we understand it, a “product of nature.” However, it is not required for unobviousness of the method-of-use claims that the new starting material be patentable, In re Schneider, supra; 35 U.S.C. § 103.

The process of using the new Streptomyces strain which appellants have discovered is clearly within 35 U.S.C. § 101, and we note the ready willingness of the board here, as in Ex parte Arzberger and Ex parte Kropp, to allow appellants to claim it if they show unexpected results from the use of this new strain. Indeed, the public interest appears to be well served by encouraging the patenting of such inventions. While the patent will grant appellants a limited right to exclude others from producing daunorubicin by the use of Streptomyces bi-fur cus, the public receives not only the knowledge of appellants’ discovery but also access to Streptomyces bifurcus through its deposit with the Department of Agriculture. See In re Argoudelis, supra.

For the foregoing reasons, the decision of the board is reversed.

Reversed.

        . British Patent 985,598, published March 10, 1965.

      . DiMarco et al., Daunomycin, a new Antibiotic of the Rhodomycin Group, Chem.Ab,, Vol. 61 (1964), 12394c; DiMarco et al., Daunomycin, an Antibiotic for Tumor Treatment, Chem.Ab., Yol. 62 (1965), 16922a.

      . This last statement appears overly broad. See In re Kuehl, supra.

      . Apparently the language of the Kanter opinion leaves some doubt on this point, but the reference to the “new” substratum in the opinion is clearly meant to refer to the fact that the use of an alpha-delta alloy was new to this art. The specification of the Kanter application states that “The stable alpha-delta iron alloys, which maintain a body centered cubic lattice structure throughout the solid phase, are well-known * * *_»


author: MILLER, Judge.

text:
    MADDEN MACHINE COMPANY, INC., Appellant, v. The UNITED STATES, Appellee.
    Customs Appeal No. 74-14.
    United States Court of Customs and Patent Appeals.
    June 27, 1974.

      Dean Holbrook, New York City (Boyd & Holbrook), New York City, attorneys of record, for appellant.
    Irving Jaffe, Acting Asst. Atty. Gen., Andrew P. Vance, Chief Customs Section, Max F. Schutzman, New York City, for the United States.
    Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
   MILLER, Judge.

This appeal is from an order of the Customs Court (motion for rehearing denied), dismissing appellant’s action for lack of jurisdiction. We reverse and remand.

Appellant’s action is based on denial of its protest against the denial of its request for reliquidation under section 520 (c)(1) of the Tariff Act of 1930 (19 U.S.C. 1520(c) (1)), as amended, with respect to the entry in 1966 of a paper making machine and/or parts therefor imported from Finland. The entry was appraised, and notice thereof sent to appellant on January 19, 1970. Liquidation was effected on March 27, 1970. The parties are in disagreement over the date reliquidation was requested, with appellee apparently claiming November 20, 1970, and appellant alleging several dates, the first being May 28, 1970 (“at a meeting with the District Director at Houston”) and all “within one year after the appraisement on January 19, 1970.” On January 22, 1971, the request for re-liquidation was denied. The protest was filed on March 22, 1971, and was denied by operation of law on August 5, 1971. The summons commencing this action was filed on October 22, 1971.

Jurisdiction of the Customs Court is provided by 28 U.S.C. § 1582, as amended June 2, 1970, by Public Law 91-271 (84 Stat. 274). The part thereof which is pertinent to this appeal reads as follows:

(c) The Customs Court shall not have jurisdiction of an action unless . a protest has been filed, as prescribed by section 514 of the Tariff Act of 1930, as amended, and denied in accordance with the provisions of section 515 of the Tariff Act of 1930, as amended

Section 514 of the Tariff Act of 1930 (19 U.S.C. 1514) provides:

. all decisions of the collector, including the legality of all orders and findings entering into the same, as to the rate and amount of duties chargeable, and as to all exactions of whatever character . . . , and his liquidation or reliquidation of any entry, ... or his refusal to re-liquidate any entry for a clerical error discovered within one year after the date of entry, or within sixty days after liquidation . . . when such liquidation ... is made more than ten months after the date of entry, shall, upon the expiration of sixty days after the date of such liquidation, . decision, or refusal, be final and conclusive upon all persons . unless the importer, consignee, or agent of the person paying such charge or exaction . . . shall, within sixty days after, but not before such liquidation, . . . decision, or refusal, . . . file a protest in writing with the collector ....

In its order denying rehearing, we note the Customs Court stated that appellant’s administrative protest under section 520(c)(1) against the denial of its request for reliquidation pursuant to section 514 “should have been made within sixty days, i. e., by May 26, 1970,” but was not made until May 28, 1970— two days too late to enable the court to take jurisdiction. This statement is confusing inasmuch as the protest was filed March 22, 1971, under section 514 against denial on January 22, 1971, of appellant’s request under section 520(c) (1) for reliquidation. What was made by appellant on May 28, 1970 (earliest alleged date) was a request for reliquidation.

Appellant maintains that it filed a timely request for reliquidation under section 520(c)(1), the same having been filed within one year after the date of appraisement; that the District Director’s refusal to reliquidate was a pro-testable “decision” under section 514; and that it filed a timely protest against the District Director’s refusal to re-liquidate.

Section 520(c)(1), as amended, provides :

(c) Notwithstanding a valid protest was not filed, the Secretary of the Treasury may authorize a collector to reliquidate an entry to correct—
(1) a clerical error, mistake of fact, or other inadvertence not amounting to an error in the construction of a law, adverse to the importer and manifest from the record or established by documentary evidence in any entry, liquidation, appraisement, or other customs transaction, when the error, mistake, or inadvertence is brought to the attention of the customs service within one year after the date of entry, appraisement, or transaction, or within sixty days after liquidation or exaction when the liquidation or exaction is made more- than ten months after the date of the entry, appraisement, or transaction

Appellee’s position is that under 28 U.S.C. § 1582(c) jurisdiction of the Customs Court could only be effected by the filing of a proper protest under section 514; that appellant’s protest against denial of its request for reliquidation was not a proper protest because such denial was not a protestable decision within the ambit of section 514. It emphasizes the following language (contained in our earlier quotation) from section 514 (emphasis supplied):

. the collector[’s] refusal to reliquidate any entry for a clerical error discovered within one year after the date of entry, or within sixty days after liquidation . when such liquidation ... is made more than ten months after the date of entry .

Appellee points out that appellant’s request for reliquidation was not filed until May 28, 1970 (at the earliest), and thus “discovery” of the clerical error was not within sixty days after the liquidation on March 27, 1970. It contends that the intention of Congress in specifically providing in section 514 for protest against a collector’s [District Director’s] refusal to reliquidate must have been to exclude from protest refusals to reliquidate not covered by the specific provision; that the interpretation advanced by appellant would render superfluous the specific language covering clerical error discovered in connection with a collector’s [District Director’s] refusal to reliquidate.

Without more there would be merit to this contention. But see Gray v. Powell, 314 U.S. 402, 416, 62 S.Ct. 326, 86 L.Ed. 301 (1941). However, there is more. First, there is the all-encompassing wording of section 514 with respect to “decisions,” namely:

. all decisions of the collector . shall, upon the expiration of sixty days after the date of such . decision ... be final and conclusive : . . unless the importer, [etc.] . . . shall, within sixty days after . . . such decision . . . file a protest in writing with the collector

Second, the legislative intent, contended for by appellee, to exclude refusals to reliquidate from protest if they did not come within the specific provision, would mean that such decisions would never become final — an absurd result which is not to be attributed to the Congress. See United States v. Ryan, 284 U.S. 167, 175, 52 S.Ct. 65, 76 L.Ed. 224 (1931). Finally, it is to be noted that the 1970 amendment to section 514 lists among protestable decisions “the refusal to re-liquidate and entry under section 520(e) . ” and that both the House and Senate committee reports commented: “The revised presentation of categories is without substantive effect.”

Accordingly, we hold that the District Director’s refusal on January 22, 1971, to reliquidate under section 520(c)(1) was a protestable decision for purposes of section 514 and that the Customs Court has jurisdiction of this action.

In view of the foregoing, the order of the Customs Court dismissing appellant’s action for lack of jurisdiction is reversed, and the case is remanded for further proceedings not inconsistent herewith.

      . Appellant also seeks to appeal from the order denying its motion for rehearing and from an order denying its motion for leave to file a supplemental memorandum. No claim of error or abuse of discretion is cited by appellant in its Statement of Errors with respect to these orders. Accordingly, our review will be limited to the order of dismissal.

      . On July 6, 1971, appellant filed a request for accelerated disposition of its protest. No action having been taken on the protest within thirty days, it was deemed denied under the provisions of 19 U.S.C. § 1515, as amended.

      . With certain exceptions not applicable to appellant’s action, the amendment of June 2, 1970, to 28 U.S.C. § 1582 was made effettive October 1, 1970, by section 122 of P.L. 91-271.

      . This does not include the amendment by P.L. 91-271, section 203 of which made such amendment effective with respect to articles entered prior to October 1, 1970, only where the appraisement of such articles had not become final before October 1, 1970, and for which an appeal for reappraisement had not been timely filed before October 1, 1970, or with respect to which a protest had not been disallowed before October 1, 1970. Appellant did not file an appeal for reappraisement, and the appraisement became final before October 1, 1970, under 19 U.S.C. § 1501. The words “as amended” in 28 U.S.C. § 1582(c) appear to be merely pro forma; however, they would be technically satisfied by abolition of the Office of Collector of Customs by Reorganization Plan No. 1, effective May 25, 1965 (30 F.R. 7035, 79 Stat. 1317), which was implemented pursuant to the Reorganization Act of 1949 (P.L. 109, 63 Stat. 203).

      . This is apparently what the Customs Court had in mind, and such a request would have been two days too late for purposes of “refusal to reliquidate any entry for a clerical error discovered . . . within sixty days after liquidation” under section 514. We interpret “discovered” to mean “brought to the attention of the customs service,” as provided in section 520(c)(1), or “discovered by the customs service.” Any other interpretation would be administratively unfeasible.

      . See footnote 4, supra.

      . S.Rep.No.91-576, 91st Cong., 1st Sess. 26 (1969) ; H.R.Rep.No.91-1067, 91st Cong., 2d Sess. 26 (1970). See also United States v. Miles, C.A.D. 967, 416 F.2d 973, 57 CCPA 1, 5 (1969).

      . We express no opinion on the timeliness of appellant’s request for reliquidation under section 520(c) (1) inasmuch as this goes to the merits of the District Director’s refusal to re-liquidate.


text:
    Application of Frank A. MALAGARI, Jr.
    Patent Appeal No. 9204.
    United States Court of Customs and Patent Appeals.
    July 25, 1974.
    Rehearing Denied Sept. 12, 1974.

      Robert F. Dropkin and Vincent G. Gioia, Pittsburgh, Pa., attorneys of record, for appellant.
    Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents. Henry W. Tarring, II, Falls Church, Va., of counsel.
    Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Associate Judges.
   RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the examiner’s rejection of claims 14-21 of application serial No. 785,873, filed December 23, 1968, entitled “Method of Producing Grain Oriented Silicon Steel.” We affirm.

The Invention

Appellant claims a process for producing grain oriented silicon steel from a starting material “containing between 0.03 and 0.07% carbon.” To this allegedly critical range appellant attributes unexpected results in that the resulting steel has a higher electrical permeability and a lower core loss. Claim 14 is representative :

14. A process for producing grain oriented silicon steel containing not more than about 0.005% carbon, comprising the following steps:
(a) heating steel containing between 0.03 and 0.07% carbon and between 2 and 4% silicon at a temperature in excess of 2350° F;
(b) hot rolling said steel;
(c) heat treating said steel at a temperature in excess of 1600° F for at least about 30 seconds;
(d) cooling said ' steel without quenching;
(e) cold rolling said steel;
(f) normalizing said steel;
(g) cold rolling said, normalized steel;
(h) normalizing said steel;
(i) decarbonizing said steel to a carbon level not greater than about 0.005% carbon; and
(j) final annealing said steel at a temperature in excess of 1600-° F.

Dependent claims 15, 16, and 17 further specify the use of a decarburizing atmosphere which, in claim 16, is specified as a mixture of nitrogen and hydrogen. Dependent claims 18 and 19 further restrict the temperature utilized in the heat treating and final annealing steps. Claim 20 specifically defines the parameters of the final annealing step of claim 14. Claim 21, dependent upon claim 14, specifies that the steel contains at least about 0.10% manganese.

The References and Rejections

The references are:

Crede et al. (Crede) 2,867,557 Jan. 6, 1959
Henke , 3,021,237 Feb. 13, 1962
Mobius 3,207,639 Sept. 21, 1965
Goss 3,239,332 Mar. 8, 1966

As noted by the board, appellant “conceded that, except for the range of carbon specified in step (a) of claim 14, the process defined by the claims is precisely disclosed in the references as applied by the Examiner and was employed in the industry prior to the filing date of the involved application.” Goss relates to silicon steels similar to appellant’s in all respect except for the specified initial carbon content. Goss discloses that “A typical preferred range and a typical specific analysis for such a steel is as given in the following table.” The table lists, for the “Ingot Used,” a “Specific” weight percent of carbon of .025 and an “Average Range” of carbon as .020-030.

Crede, in a similar format, contains a table giving “typical preferred range” and “typical specific analysis” for his silicon steel, which is produced according to a process closely analogous to that of appellant. The “Typical” percent by weight of carbon is .028 and the “General range” is .020-.035.

Claims 14, 15, 17-19, and 21 were rejected by the examiner as anticipated by Goss under 35 U.S.C. § 102 and as obvious over Goss alone or in view of Crede under § 103. Claim 16 was rejected under § 103 for obviousness in view of Goss alone or Goss in view of Crede, taken further in view of Henke; and claim 20 under § 103 on Goss alone or in view of Crede, taken further in view of Mobius.

Appellant does not appear to challenge the application of Henke and Mobius as applied to show various features of dependent claims 16 and 20, but relies upon the alleged shortcomings of Goss and Crede as applied against all of the claims. Thus these claims stand or fall with claims 14,15,17-19, and 21.

The Board’s Opinion

The board noted appellant’s concession that all of the claimed limitations except for the carbon range are in the prior art and characterized the issue by noting that “this case boils down to the single question of whether or not the claimed range 0.03% to 0.07% is anticipated by the range 0.02% to 0.03% (Goss) or 0.02% to 0.035% (Crede et al.),” which question the board answered in the “affirmative.” (Emphasis ours.)

The board summarized appellant’s arguments before it as follows:

The appellant contends that the claimed 0.03% to 0.07% carbon in the starting steel is critical to the obtention of certain beneficial results recited in the specification. He additionally urges that the practitioner of the subject art attempts to have as little carbon present in the starting steel as possible, whereas the claimed range is above that sought in the art. The appellant also asserts that the prior art did not recognize that the claimed carbon range results in any advantages. In support of his contentions, the appellant has submitted the affidavits of several individuals who are asserted to be eminent in the subject art. In addition, the appellant has cited several decisions [Becket v. Coe, 98 F.2d 332, 38 USPQ 26 [24 CCPA 992] (App.D.C.1938); Ex parte Selby, 153 USPQ 476 (Pat.Off.Bd.App.1966); Ex parte Thumm, 132 USPQ 66 (Pat.Off.Bd.App.1960)] purportedly standing for the proposition that even where a claimed range is , inclusive of, falls within or overlaps that taught by a reference, the claim may be patentable over the reference.

The board concluded, however, that the facts of this case were much “more closely akin to the facts in such cases as" In re Perkins, 346 F.2d 981, 52 CCPA 1501 (1965); In re Nehrenberg, 280 F.2d 161, 47 CCPA 1159 (1960); and Ex parte Cook, 105 USPQ 504 (Pat.Off.Bd.App.1958); and concluded that each of the examiner’s rejections should be sustained “on the basis that the claimed range of carbon content is anticipated by the ranges taught by each of Goss and Crede et al. * * (Emphasis ours.)

Appellant’s Arguments

Appellant expands upon his arguments before the board. He particularly emphasizes the cases cited to the board, adding In re Orfeo, 440 F.2d 439, 58 CCPA 1123 (1971), which, in his view, “indicates that claims may be allowed to a limited composition, or to a method with a limited composition, where the prior art contains broad or overlapping disclosures of similar compositions, providing that the applicant can show criticality (new and unexpected results) with respect to the limits of the narrower claimed invention." Appellant’s position is that if an applicant can be allowed to patent a narrow range within a broader prior art range by showing unexpected properties or results, then he should be able to claim a range which only “touches” or “somewhat' overlaps” that of the prior art. Appellant’s showing of results is discussed in the next section.

Arguments of the Solicitor

Dealing with the rejections, the solicitor asserts that claims 14, 15, 17-19, and 21 were properly rejected under § 102 because appellant’s range touches that of Goss at 0.03% carbon. The solicitor relies upon Nehrenberg, supra, with the following argument:

In that decision, the Court addressed a rejection of claim 1 over a patent to Binder as follows:
“Thus in the case of claim 1, Binder discloses proportions of every ingredient except carbon which fall within the claimed range. Binder’s lower limit for nickel is the same as the claimed upper limit, but in the case of all other ingredients Binder’s range includes all or at least three-fourths of the claimed range. * * * Aside from the carbon content, therefore, claim 1 is anticipated by Binder.” 47 CCPA at 1162 (emphasis added).
The “touching” of the carbon ranges in the present case is comparable to the “touching” of the nickel ranges in Nehrenberg. Since it is conceded that “except for the range of carbon specified in step (a) of claim 14, the process defined by the claims is precisely disclosed in the references as applied by the examiner” * * * and since it is clear that the “touching” of the carbon ranges constitutes an anticipation under, Nehrenberg, it is submitted that the present rejection under 35 USC 102 is proper and should be sustained.

As to the obviousness rejection, the solicitor asserts that - either Goss or Crede render the invention prima facie obvious and that appellant has not made a convincing showing to rebut this finding. He disputes the assertion in appellant’s affidavits that his discovery involving higher levels of carbon is unobvious because the prior art, Goss and Crede, “imply that lower carbon levels are preferable,” noting that “the art speaks for itself” and both patents speak of their ranges as “typical preferred ranges” with no suggestion of a preference at either end of the ranges.

To establish “unexpected” results and thus the alleged “criticality” of the claimed range, appellant relies upon three tables in his application and the following figure therein:

The graph at the top of the figure represents permeability and the graph at, the bottom core1 loss. The examiner criticized the data in the tables, particularly that in Table II where core loss and permeability are given for various steels, as not representing a comparison of the best prior art since the only steel compared with the steels within or above the claimed range is a steel with a carbon content of 0.007% before processing. The solicitor agrees with that criticism, noting that the pertinent ranges of Goss and Crede “both contain minimum carbon contents of 0.02%. * * * Therefore, whatever comparisons might be illustrated by the Tables are not pertinent to the unobviousness of the present invention over Goss alone or in view of Crede et al.”

In response, appellant submitted a memorandum (Rule 116 amendment) and affidavits of three individuals (the allegations of which are as alike as three peas) including John H. Crede, one of the inventors of the Crede reference, in an attempt to show the unobviousness of the use of starting materials having higher carbon content and the criticality of appellant’s claimed range. Appellant’s memorandum contained the following table of “additional data which clearly compares the permeability and core loss for grain oriented silicon steel produced from carbon contents ranging from 0.020 to 0.035”:

As explained by appellant, the table “shows the percentage of the steel, at varying carbon levels, which had a core loss at or below 0.518 [sic] and at or above 0.580 and the percentage of the steel which had a permeability at or above 1820, at or above 1800 and at or below 1780.” As is evident here and in Fig. 2, there is some decrease in core loss and increase in the permeability apparent when the carbon content of the starting material is increased.

The solicitor challenges appellant’s reliance upon Fig. 2 as there is no indication that it wasn’t prepared using the data in the tables in the specification, which, as already noted, did not compare the best prior art. The solicitor further challenges appellant’s reliance upon the information in appellant’s Rule 116 amendment for several reasons, embodied in the following paragraph from his brief.

Appellant’s reliance * * * on the unsworn data presented at R-37 [the above table] is clearly misplaced. Since the data is unsworn, it can be taken merely as argument and not to establish facts. In re Mehta, 52 CCPA 1615, 1624, 347 F.2d 859, 146 USPQ 284 (1965). Even if the data were presented in affidavit form it is inconclusive as to the unobviousness of the claimed process. Crede et al. disclose a typical specific analysis of a silicon steel containing 0.028% carbon * * *. The data at R-37 groups silicon steels containing 0.028% carbon with steels containing 0.031% carbon. Therefore, it is impossible to establish from the data presented a critical difference resulting from the practice of appellant’s method (which would include treating silicon steels containing 0.030 and 0.031% carbon) rather than practicing Goss’s method on a steel having the typical specific analysis disclosed by Crede et al. Indeed, appellant’s grouping of silicon steels containing 0.028% carbon with steels containing 0.031% carbon appears to substantiate the propriety of the rejection. Such grouping would appear to reflect that applicant does not regard the difference between 0.028 and 0.031% carbon to be substantial.

OPINION

Anticipation, §102

The first thing to make clear under this heading is that the board was in error in speaking of “anticipation” when dealing with any reference other than Goss. There is no indication that the broad intended to make a new ground of rejection under Rule 196(b) and, given the differences which clearly exist between the claimed invention and the process of Crede, such a rejection would have been improper. The only rejection properly characterizable as anticipation under § 102 is of claims 14, 15, 17-19, and 21 in view of Goss.

Appellant’s arguments seem never really to appreciate the rejection as one for anticipation under § 102, since his contention throughout is that he has established new and unexpected results within a critical range of carbon content, while the prior art taught away from the use of steel having such a high carbon content. If the rejection under § 102 is proper, however, appellant cannot overcome it by showing such unexpected results or teaching away in the art, which are relevant only to an obviousness rejection. In re Wiggins, 488 F.2d 538 (CCPA 1973).

Appellant has raised an interesting question, however, by his citation of several cases wherein the prior art taught a broad range and the inventor was held entitled to claims limited to a narrow range within the broad range by showing criticality of and the existence of unexpected properties within the claimed range. Appellant’s argument seems to be that if such an invention is patentable on the basis of such a showing, then his invention, which only touches or narrowly overlaps the range of the prior art, ought likewise to be patentable. Appellant’s arguments suggest that the disclosure of the end point of the range of the prior art ought to be given no greater significance as prior art than individual points within the range disclosed by a prior art reference, there being no specific disclosure of working examples or specific analyses in either of the principal references of carbon contents within appellant’s claimed range.

Because of the view we take of the rejection for obviousness under § 103 and because of appellant’s failure to recognize in his arguments the difference between § 102 and § 103, we find it unnecessary to, and do not, deal with the rejection under § 102. We would be amiss, however, if we did not point out to the solicitor that the quotation from our opinion in Nehrenberg hardly decides this case. First, the court in Nehrenberg appears to have used the term “anticipated” as loosely as the board did here, in any event qualifying its use by saying “Aside from the carbon content,” and we are not at all convinced that the rejection in Nehrenberg was under § 102. Secondly, the solicitor’s quotation from Nehrenberg too artfully juxtaposes the end of one paragraph with a sentence taken from near the end of the next long paragraph, a practice which is to be discouraged.

Obviousness, § 103

There is no question that the claimed invention is rendered prima facie obvious by the teachings of Goss. The process taught by Goss is similar to that claimed by appellant, and the claimed range of carbon in the steel used as a starting material touches that in the “typical preferred range” of the reference.

We agree with the solicitor that appellant has not rebutted this prima facie case by establishing the existence of unexpected properties in the range claimed or by showing that the art in any material respect taught away from the use of the carbon range claimed.

While there are identical statements in the three affidavits submitted by appellant asserting that “the trend in the steel industry was to produce grain oriented silicon steel from starting materials having lower and lower initial carbon contents,” the cited references state no preference for lower carbon contents, only “typical preferred ranges.” We are thus not convinced that there was sufficient teaching away in the art to overcome this strong ease of obviousness made out by Goss.

Further, we agree with the solicitor that appellant has not established, by the information supplied in the tables in his. specification and amendment, a comparison of the best prior art cited by the examiner. See In re Caveney, 386 F.2d 917, 55 CCPA 721 (1967). Nor does the data in the table submitted in the Rule 116 amendment establish criticality of the lower limit of appellant’s claimed invention, see In re Shepard, 319 F.2d 194, 50 CCPA 1439 (1963).

Accordingly, the rejection of claims 14-21 is affirmed.

Affirmed.

       Appellant was not aided in separating the two sections by the opinion of the board here, which, as noted, lumped everything together under the term “anticipation.”