author: LANE, Judge.

text:
    John Presper ECKERT, Jr., et al., Appellants, v. Frederic Calland WILLIAMS et al., Appellees.
    Patent Appeal No. 9108.
    United States Court of Customs and Patent Appeals.
    Aug. 1, 1974.
    Rehearing Denied Oct. 17, 1974.

      Thomas M. Ferrill, Jr., Allen V. Haz-eltine, Blue Bell, Pa., attorneys of record, for appellants; Sheldon Kapus-tin, of counsel.
    Richard C. Sughrue, J. Frank Osha, Darryl Mexic, Washington, D. C. (Sugh-rue, Rothwell, Mion, Zinn & Macpeak), Washington, D. C., attorneys of record, for appellees. Martin G. Reiffin, Alvin J. Riddles, of counsel.
    Before MARKET, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
   LANE, Judge.

This is an appeal from the decision of the Board of Patent Interferences awarding priority on all counts, counts 2 through 17, in Interference No. 93,544 to Williams et al. (Williams), the senior party. The interference involves Williams’ patent No. 3,012,725, for “Electronic Digital Computing Devices,” granted December 12, 1961, on an application filed July 22, 1957, as a division of an application filed June 1, 1950, and an application of Eckert et al. (Eckert) for a “Binary Automatic Computer” (acronym: BINAC), serial No. 179,782, filed August 16, 1950. We dismiss the appeal as to count 16 and affirm on the other counts.

The questions before the board and still in issue here are: (1) Eckert’s right to make counts 2-15 and 17, (2) Williams’ right to the benefit of the filing date of an earlier-filed British provisional application, and (3) Eckert’s alleged conception and diligence, and actual reduction to practice. On the first issue, the board ruled that the Eckert application did not support counts 3-7, 9-12, 14 and 17, but that it did support counts 2, 8, 13 and 15. It denied Williams’ claim to the benefit of the earlier British provisional application. The board additionally ruled that Eckert did not have an actual reduction to practice prior to Williams’ effective filing date of June 1, 1950.

The invention involves an improvement in an electronic* digital computer wherein instruction words may be stored in pairs in a single location in an addressable memory. As the Williams patent indicates, that feature permits use of a reduced number of memory locations and a saving in cost because instruction words in a program frequently involve less than half of the bit positions normally available in each location. The systems of the Williams patent and the Eckert application differ in a manner which will be further explained below. An adequate understanding of the invention may be obtained from inspection of one of the more comprehensive counts, count 11, which reads:

11. An electronic binary digital computing machine including
[a] at least one data word storage device having a plurality of discrete address storage locations each of a digit capacity equal to the digit length of one machine number word,
[b] signal-controlled address selection means for rendering any required one of said address storage locations accessible for reading-out or writing-in thereto under the control of an applied address selection signal defining said required address location,
[c] signal-controlled selection means for restricting the data selected by said address election means to a chosen one of a plurality of integral fractional parts thereof,
[d] a control system for governing the operation of said machine during each computing cycle in accordance with the form of an applied instruction word signal, said instruction signals being each of a digit length equal to one of said integral fractional parts,
[e] said control system including means for selecting a series of instruction word signals in turn from said data word storage device each under the control of a binary coded instruction address selection signal, said binary coded instruction address selection signal including at least one lowest significant digit providing a control signal for said selections means and at least one further more significant binary digit for providing an address selection control signal to said signal-controlled address selection means, [paragraphing and emphasis added]

The first issue considered by the board was Eckert’s right to make the counts. On that matter, the board stated:

Williams’ principal contention is that although the disclosed Eckert apparatus stores two instruction words at a single address, the one occupying the most significant digits portion is always read out and used first and then the one occupying the least significant digits portion is utilized so that there is no selectivity or choice in the order in which the words are read out and utilized. There seems to be no contention that this is an incorrect interpretation of the Eckert disclosure. Williams urges that all of the counts require selection or choice by virtue of which either of the two words could be read out and used first. Eckert urges, and the Primary Examiner held, that the counts are not limited to require this option.

It then discussed the specific language in each count which Williams urged was unsupported. The board concluded that Eckert did not support counts 3-7, 9-12, 14 and 17, but that counts 2, 8, 13 and 15 were so broad that Eckert could support them.

Before us, Eckert challenges the decision against him as to counts 3-7, 9-12, 14 and 17. While he obviously accepts the board’s favorable decision as to counts 2, 8, 13 and 15, he does not offer any specific supporting argument. Eck-ert does not question the board’s understanding of the operation of his computer. Williams urges in detail, as he did before the primary examiner and then the board, that Eckert has no right to make any of the counts.

Turning to the parties’ disclosures, both Eckert and Williams provide means whereby a pair of instructions, including a left half instruction and a right half instruction, are stored in a single location having a digit capacity of one data word. The Williams computer includes apparatus which permits selective execution of either the left half instruction disposed in the left half of the location or the other instruction disposed in the right half of the location. The non-selected instruction may be either excluded from the program or executed after the selected instruction. In the Eckert BIN AC computer, the multiple instructions in the single location are executed in a fixed order during the machine cycle.

In the Williams computer, after the instruction pair is extracted from memory and entered into the instruction pair holding register, the next step is entirely dependent upon a control bit in the control store. If the control bit has a first value, the left half- instruction is gated from the instruction pair holding register to the L and F staticisor (instruction register) to be executed. If the control bit has a second value, the right half instruction is gated and executed instead. The half of the instruction pair which is not gated out in response to the control bit is not acted upon by any apparatus in the Williams computer. If it is desired subsequently to execute the “other” instruction in the pair of instructions, the Williams computer must go back to the memory again, re-extract the same instruction pair and repeat the selection process. This arrangement provides added flexibility by permitting the use of an instruction half in any sequence relative to its companion half or any instruction half in any other memory location.

Eckert’s , disclosed computer permits no such flexibility. Once a pair of instructions is entered into the instruction holding register or location, both halves of the pair are invariably gated out and executed in the inflexible sequence of the half in the most significant digits region followed by the half in the least significant digits region.

The board found that counts 3-7, 9-12, 14, and 17 all required that the apparatus offer a selection or choice between the halves or parts of the instruction words of a pair. As an example, it found that such a choice was required by the structure defined in the following expression in count 3:

* * * subsidiary signal-controlled selection means for restricting the data selected by said address instruction means to a chosen one of a plurality of discrete equal fractional parts of said selected data, [board’s emphasis]

Particular emphasis was placed on the term “chosen one” as requiring "the ability to provide access restricted to any one of the stated plurality of discrete parts at a given time.” The board then held that the disclosed Eckert apparatus could not satisfy this requirement since Eckert did not disclose a way in which a choice between the two halves of a particular instruction pair could be accomplished.

As a further example, the board referred to the following terminology in count 14:

* * * means under control of said other selecting manifestation for selecting said one portion or said other portion.

Here the board found that a selection between one portion or the other is required, and the board found that the disclosed Eckert computer was not capable of making such a selection.

The board also regarded the requirement for “choosing” or “selecting” a particular half of the word pair to be beyond the teaching of Eckert in connection with the other counts which it found he could not make. We agree with the reasoning of the board regarding counts 3-7, 9-12, 14 and 17 and find no reversible error in its ruling that Eckert cannot make them.

The board held that Eckert had the right to make counts 2, 8, 13, and 15. Williams contends that the board erred in this respect. Williams states in his brief:

Each count expresses the important distinctions discussed previously „ by the use of such ordinary words as “choose”, “select” and “restrict”. Given their ordinary meaning, the words “choose” and “select” connote the ability to pick among alternatives, a feature present in the Williams computer but absent in the BIN AC computer. The word “restrict” simply connotes taking less than the whole— also a feature present in the Williams computer but lacking in the BIN AC computer. Because each of the counts contain[s] limitations based on these terms, it is submitted that the Eckert et al. disclosure supports none of the counts. * * * [emphasis in original]

He further argues specifically why he thinks Eckert does not support counts 2, 8, 13 and 15. Eckert does not provide us with a discussion of the terminology in these counts which the board held were supported, nor does Eckert respond to the detailed arguments which Williams makes concerning these counts.

Count 2 reads:

2. An electronic digital computing machine including
[a] at least one data word storage device having a plurality of discrete storage address locations each of a digit capacity equal to one machine data word,
[b] signal-controlled address selection means for rendering any required one of said storage address locations accessible for reading-out therefrom or writing-in thereto under the control of an applied address selection signal defining said required address location and
[c] subsidiary signal-controlled selection means for restricting the data selected by said address selection means to a fractional part only of said selected data. [paragraphing and emphasis added]

The similarity to count 3, above, is apparent. In finding count 2 supported by Eckert, the board distinguished it from count 3 because “[n]o selection or choice between plural portions is required.” Williams argues that the board erred because Eckert uses the multiple portions in the selected data word position in sequence, and is incapable of restricting the use of the selected data to only a left or right half thereof. That analysis agrees with our own understanding of the count and of the mode of operation of the disclosed Eckert machine. Hence, we agree with Williams that Eckert cannot make count 2.

Count 8 reads:

8. An electronic digital computing machine arranged for operation with serial mode number word signals and including
[a] at least one data word storage device having a plurality of discrete word storage locations each of a digit capacity equal to one machine number word length,
[b] rhythm control means for controlling the machine operation as a series of sequential minor cycles or beats each of a time duration suitable for accommodating one machine number word signal,
[c] ' a signal-controlled address selection means for rendering any required one of said storage address locations accessible for reading-out therefrom or writing-in thereto during the time of one minor cycle or beat under the control of an applied address selection signal defining said required address location and
[d] subsidiary signal-controlled selection means . for restricting the data selected to a fractional part only, [paragraphing and emphasis added]

The board relied on the same reasoning here as with respect to count 2. We again disagree with the board for the reasons set forth above.

Count 13 reads:

13. In a data processing system,
[a] means for storing an instruction manifestation comprising one instruction portion and another instruction portion and
[b] means for extracting from said storing means said one instruction portion or said other instruction portion, [paragraphing and emphasis added]

The challenged portion of the count is paragraph [b]. The board held that this count was so broad that it did not require a selection or choice to be made at any particular time, and that Eckert could make it since the respective portions are extracted separately, albeit always in the same order. Williams states that Eckert’s control register which stores the left half and right half instructions corresponds to the claimed means for storing and that “the appara-' tus which extracts the instructions from the control register is only capable of operating to extract the first portion and the second portion in sequence.” Williams further points out, “[i]t does not extract one portion or the other portion.” We agree. Count 13 clearly requires a means for extracting, as desired, one instruction or the other instruction portion. The board erred in holding that Eckert could make count 13.

Count 15 reads:

15. An electronic digital computing machine arranged for operation in the serial mode and comprising
[a] a digital storage device having a plurality of discrete address or storage locations each capable of registering a separate item of numerical or coded instruction data of predetermined maximum number of digits in magnitude,
[b] address selecting means for rendering any one of said address or storage locations accessible and
[c] selective read out means for selecting a chosen part only of the data selected by said address selecting means in said storage device. [paragraphing and emphasis added]

We think that “selective read out means for selecting a chosen part only” requires the ability to make a selection or choice of one part only of the data in “one of said address or storage locations” that has been rendered accessible by the “address selecting means.” Thus, the limitation in paragraph [c] is not supported by the disclosed Eckert apparatus where both parts of the data in the selected address or location are invariably extracted in the same sequence. The board erred in holding that Eckert could make count 15.

Eckett argues that the presence in the Williams patent of a claim (23) with a more specific recitation of the selection feature than the counts indicates that the latter were intended to claim the invention more broadly, citing Oldroyd v. Morgan, 57 F.2d 358, 19 CCPA 1111 (1932) and Marshall v. Ledwinka, 67 F.2d 495, 21 CCPA 728 (1933). The proposition Eckert finds in these cases appears to be that a patent claim lacking a recitation set out in a second claim is to be interpreted as not including the same limitation. While that proposition cannot be denied, the cases obviously are not applicable here. None of the present counts reads the same as claim 23 with the selection feature omitted. Rather, as is apparent from the above, they define that feature in different language than claim 23, which language Eckert likewise fails to support.

Since we have decided that the board was correct in holding that the Eckert application does not support counts 3-7, 9-12, 14 and 17, and that the board erred in holding that the Eckert application does support counts 2, 8, 13 and 15, the decision awarding priority to Williams must be sustained. We do not reach the issue of Williams’ right to the benefit of the filing date of an earlier-filed British provisional application, or the questions involving Eckert’s alleged conception and diligence, and actual reduction to practice. Accordingly, the appeal is dismissed as to count 16, and the decision of the board awarding priority to Williams as to counts 2-15 and 17 is affirmed.

Affirmed.

      . In his brief, Eckert stated that he does not entitled to make count 16. now contest- the board’s holding that he is not


source: Caselaw Access Project

author: RICH, Judge.

license: Public Domain

text:
    The UNITED STATES, Appellant, v. J. M. ALTIERI, a/c Antonio Roig Sucesores S. En C., Appellee.
    Customs Appeal No. 5514.
    United States Court of Customs and Patent Appeals.
    June 27, 1974.

      Irving Jaffe, Acting Asst. Atty. Gen., Andrew P. Vance, Chief, Customs Section, Wesley K. Caine, New York City, attorneys of record, for the United States.
    Siegel, Mandell & Davidson, Joshua M. Davidson, Brian S. Goldstein, New York City, attorneys of record, for appel-lee.
    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, Third Division, 68 Cust.Ct. 169, C.D. 4355 (1972), sustaining appellee’s protest against the classification of certain copper tubes imported from Mexico to San Juan, Puerto Rico, under TSUS 613.02 as seamless copper tubes. The Customs Court held the merchandise classifiable under TSUS 666.20 as parts of machinery for use in the manufacture of sugar. We reverse.

The statutes involved are:

10. General Interpretative Rules. For the purposes of these schedules—

-X- -X- -X- * -X- -X-

(e) in the absence of special language or context which otherwise re- • quires—

(i) a tariff classification controlled by use (other than actual use) is to be determined in accordance with the use in the United States at, or immediately prior to, the date of importation, of articles of that class or kind to which the imported articles belong, and the controlling use is the chief use, i. e., the use which exceeds all other uses (if any) combined;
(ii) a tariff classification controlled by the actual use to which an imported article is put in the United States is satisfied only if such use is intended at the time of importation,' the article is so used, and proof thereof is furnished within 3 years after the date the article is entered;
•X- -X- * -X- -X- -X-

(ij) a provision for “parts” of an article covers a product solely or chiefly used as a part of such article, but does not prevail over a specific provision for such part.

Classified under:

Schedule 6, TSUS — Metals and Metal Products

* -X- -X- * * *
Part 2. Metals, Their Alloys, and Their Basic Shapes and Forms

Part 2 headnotes:

1. This part covers precious metals and base metals * * *, their alloys, and their so-called basic shapes and
forms, and, in addition, covers metal waste and scrap. * * * This part does not include—
* * * * * X-
(iv) other articles specially provided for elsewhere in the tariff schedules, or parts of articles.
•x- * -x- -x- -x- x
Subpart C. — Copper
Subpart C headnotes-.
1. This subpart covers copper, its alloys, and their so-called basic shapes and forms, and in addition covers copper waste and scrap.
■X- -X- -X * -X- * -x- -x-
Pipes and tubes and blanks therefor, pipe and tube fittings, all the foregoing of copper:
Pipes and tubes and blanks therefor:
Copper, other than alloys of copper:
Item 613.02 Seamless......................... 5.2^ per lb.
Claim Sustained by Court Below:
Schedule 6, TSUS — Metals and Metal Products
X * * * X * X
Part 4. Machinery and Mechanical Equipment
Part 4 headnotes-.
1. This part does not cover—
x x -x- x x- x x-
(vi) articles and parts of articles specifically provided for elsewhere in the schedules.
X X X X X- X- X-
Subpart C. Agricultural and Horticultural Machinery; Machinery; Machinery for Preparing Food and Drink
•X- X- X X X X X-
Industrial machinery for preparing and manufacturing food or drink, and parts thereof:
Item 666.20 - Machinery for use in the manufacture of sugar, and parts thereof...... Free

The merchandise consists of approximately 8100 seamless copper tubes, six feet, 6% inches long, 16 gauge, 1% inch outside diameter, with their ends annealed. The importer-appellee, Antonio Roig Sucesores, ordered the tubes for use in new evaporators it had purchased but which it had received in incomplete condition, without the tubes. The evaporators were to replace old ones used in its sugar manufacturing plant. Each evaporator consisted of an enclosed vessel with a heat exchanger in the bottom. The heat exchangers were made up of copper tubes fixed between plates so that steam could flow around the tubes while juice extracted from the sugar cane flowed through them to be heated. The ends of the tubes were annealed to soften the copper so that the ends could be flanged in assembling the tubes with the plates.

The Customs Court ordered the parties to file supplemental briefs directed to the following question:

Is the TSUS item 666.20 classification for “Machinery for use in the manufacture of sugar, and parts thereof” a classification controlled by rule of “chief use” or controlled by rule of “actual use” under [General Interpretative Rule] 10(e) supra 1

On that matter the court concluded:

The legislative history, cited supra [Tariff Classification Study, Submitting Report, Part II, pages 5, 14, Appendix A, page 50, November 15, 1960], and in the supplemental briefs, discussing the problems attending tariff classifications by “chief use” and “actual use”, in our opinion, is too indefinite and uncertain to resolve that TSUS item 666.20 is an “actual use” provision as plaintiff contends. Since TSUS item 666.20 is in the same class-sifying language as paragraph 1604 of the Tariff Act of 1930, from which TSUS item 666.20 is derived, we are constrained to follow the established judicial construction that as classified in paragraph 1604, United States v. Union Sugar Div., Consolidated Foods Corp., 54 CCPA 1, C.A.D. 892 (1966), and TSUS item 666.20, S. Jackson & Son, McCandless, Inc. v. United States, 65 Cust.Ct. 327, C.D. 4097 (1970), “machinery for use in the manufacture of sugar” is a classification by “chief use.”

The court then held that “the imported tubes which were designed and dedicated for sole use with machinery used in the manufacture of sugar are parts of said machinery and sustain [ed] the protest.” It rejected appellant’s contention that there was no evidence that the imported tubes were in a class of tubes which were solely or chiefly used in heat exchangers of evaporators chiefly used in the manufacture of sugar. The court justified its position that proof that the evaporators were of a class or kind chiefly used in the manufacture of sugar was unnecessary by stating:

* * * the rule of chief use, when and if applicable, is a rule for classifying imported articles, and the imported articles in this case are tubes not evaporators.

It then stated that “it is fair to infer” upon the record that appellee’s “evaporator is an integral component of its aggregate machinery, used in the manufacture of sugar.”

OPINION

The imported merchandise here is the seamless copper tubes and the classification in issue under TSUS 666.20 is that of the Customs Court as “parts” of “machinery for use in the manufacture of sugar,” rather than as the “machinery” itself. General Interpretative Rule 10 (ij), supra, providing that a “solely” or “chiefly used” test is applicable in determining the status of “parts” is applicable to the tubes. However, the Customs Court apparently overlooked the. fact that appellee must also prove that the “machinery” of which the tubes are parts is “machinery for use in the manufacture of sugar” (emphasis added). Thus, the evaporators with their heat exchangers containing the tubes are also subject to a use test.

As to the kind of use test applicable, we are satisfied that the court correctly concluded that “machinery for use in the manufacture of sugar in item 666.-20 is a classification by ‘chief use’.” The court aptly characterized the legislative history advanced before it as “too indefinite and uncertain” to demonstrate that the “established judicial construction” supporting its conclusion was not to be followed in this case. Appellee here argues again that TSUS 666.20 is controlled by actual use, relying largely on a part of the legislative history considered by the lower court and certain other arguments pointing out that “machinery for the manufacture of sugar” was separated out from various other agricultural implements included with it in paragraph 1604 of the 1930 Act in adopting the present Tariff Schedules. Nothing persuasive of appellee’s position is seen in the arguments advanced. Rather, it is significant that appellee has not cited any decisions to support the attack on the “established judicial construction” of “machinery for use in the manufacture of sugar” as a chief use provision.

Appellee’s burden of proving the classification claimed in his protest thus requires demonstration that the elements of “chief use” of the “machines” or evaporators have been met. See General Interpretative Rule 10(e) (i), supra; also, L. Tobert Co. v. United States, 41 CCPA 161, C.A.D. 544 (1953) (use in the United States rather than mere local use) and United States v. The Baltimore & Ohio R. R. Co., 47 CCPA 1, C.A.D. 719 (1959) (use of the class or type of goods rather than a particular shipment). On this point, the court itself referred to “the record testimony that the evaporators with heat exchangers are also used in power plants and in distilleries, and that some distilleries use copper tubes in heat exchangers.” In contrast to that testimony adverse to its position, appel-lee has offered no significant evidence that the evaporators using heat exchangers with the tubes therein were of a “class or kind” whose “use in the United States” for the manufacture of sugar “exceeds all other uses (if any) combined.” Rule 10(e)(i). Appellee thus has failed to provide satisfactory evidence of compliance with the use test for the “machinery” part of TSUS 666.20. Likewise we find the evidence insufficient to comply with the sole or chief use test applicable under Rule 10(ij) for “parts” of such machinery. The most pertinent evidence is testimony of ap-pellee’s witness Arsuaga that “in Puerto Rico” the type of tube imported “is exclusively used in sugar mills.” There is no evidence regarding use on a national basis of seamless tubes of the class or kind imported.

Appellee also relies on The Servco Co. v. United States, 68 Cust.Ct. 83, C.D. 4341 (1972), affirmed, United States v. Servco Co., 60 CCPA 137, C.A.D. 1098, 477 F.2d 579 (1973). That case dealt with Schedule 6, Part 2, Headnote l(iv), which states that Part 2, which includes TSUS 613.02 in which the District Director classified the present tubes, does not include

* * * other articles specially provided for elsewhere in the tariff schedules, or parts of articles. [Emphasis added.]

Since appellee is adjudged not to have met his burden of proving that the tubes are properly classified in TSUS' 666.20, as claimed, the Servco ease is not reached in determining that the judgment below must be reversed. However, appellee’s aforementioned failure of proof also results in a failure to show that the importations are provided for elsewhere than in TSUS 613.02, as originally classified. It would not suffice for appellee to prove the tubes do not belong in TSUS 613.02. That is only half of his dual burden.

Accordingly, the judgment of the Customs Court is reversed.


text:
    Application of Lester L. SPILLER.
    Patent Appeal No. 9174.
    United States Court of Customs and Patent Appeals.
    Aug. 8, 1974.
    Rehearing Denied Nov. 14, 1974.

      Arnold G. Gulko, Arlington, Va., Dressier, Goldsmith, Clement & Gordon, Ltd., Chicago, 111., attorney of record, for appellant; David H. Badger, Bansburg Corporation, Indianapolis, Ind., of counsel.
    Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents. Fred W. Sherling, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, RICH, LANE and MILLER, Judges, and ALMOND, Senior Judge.
   RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals, adhered to on reconsideration, affirming the rejection of claims 1-7 and 9-31 under 35 U.S.C. § 103, the rejection of claims 30-31 under 35 U.S.C. § 102, and the rejection under 35 U.S.C. § 112 of claims 1-2, 4-7, 9-11, and 19-23, of application serial No. 607,418, filed January 5, 1967, for “Manufacture of Paper and Similar Cellulosic Materials of Modified Surface Property by Electrostatic Application of Dry Powdered Starch to the Water-Wet Web Being Processed.” We reverse in part and affirm in part.

The Invention

The invention relates to the manufacture of cellulosic sheet material such as paper which is coated with starch to improve its surface properties. Uniform coating of the paper is accomplished by electrically grounding the wet paper and electrostatically charging dry starch particles which are suspended in the atmosphere surrounding a water-wet web of paper, perhaps while the paper is still within a paper-making machine and on a Fourdrinier wire. This charge prevents the starch particles from contacting one another in the damp atmosphere near the wet web, and the electrostatic forces cause the starch to penetrate the air stream associated with the moving wet web and to gently attach themselves to the surface of the wet web.

The claims are numerous. The majority are directed to methods of manufacture of paper; claims 26-29 are allegedly directed to the resulting sheet of paper, 28 and 29 being specific to newsprint. Claims 30 and 31 are directed to the improvement in a conventional paper-making machine which comprises means for the electrostatic deposition of charged starch particles therein. Representative are claims 1, 26, 30, and 31.

1. A method of manufacturing a fibrous, absorbent, cellulosic sheet material, the steps comprising forming a water-wet web containing at least 25% by weight of water of fibrous cellulosic sheet material, depositing dry particles of starch upon said wet web by advancing said web past a particle deposition zone and supplying to said particle deposition zone said dry particles of starch electrostatically charged for mutual repulsion whereby said starch particles will be electro-statically attracted to and uniformly deposited upon said wet web in the form of separated particles and in amounts sufficient to be capable of causing selective modification of surface properties of the sheet material, and then dewatering said web.
26. A sheet of paper, said sheet having deposited on at least one side thereof starch particles in an amount of at least .02 pound of starch per 1000 square feet of surface, said starch particles being partially gela-tinized in adherent association with the fibers on the surface of said paper and the majority of said starch par-tides being separated from one another on said paper.
30. In a paper-making machine the improvement which comprises means for advancing a wet paper web past a particle deposition zone, means for supplying to said particle deposition zone electrostatically charged particles of starch whereby such charged particles will be attracted to said paper web in the form of separate particles and uniformly deposited thereon.
31. Apparatus as recited in claim 30 in which said particle deposition zone is positioned above the free upper surface of the paper as it is carried by said advancing means constituted by a Fourdrinier wire.

The References and the Rejections

The references are:

Dong . 2,030,483 Feb. 11, 1936
Read et al. (Read) 3,210,240 Oct. 5, 1965
Lichtenberger et al. 3,461,032 Aug. 12, 1969
(Lichtenberger)
(Effective filing date Nov. 24, 1965)
Smith et al. (Canadian) 704,036 Feb. 16, 1965 (Smith)
Casey, Pulp and Paper, 2nd Ed., N. Y. Interscience, 1960, page 951.
Reif, "An Electrostatic Process for Applying Dry Coatings on Paper," TAPPI, October 1955, Volume 38, No. 10, pages 607-609.

The board having affirmed the rejection of claims and groups of claims on three different statutory bases, 35 U.S. C. §§ 102, 103, and 112, we shall deal with them individually.

The Rejections Applying Lichtenberger

A principal issue is whether appellant’s affidavit showing under Rule 131 is sufficient to remove Lichtenberger as a reference. Appellant admitted explicitly at oral argument, and implicitly in his briefs here and before the board, that the various rejections under § 102 and § 103 which use Lichtenberger alone or in combination with other references were proper, and it was therefore essential to overcoming them that he remove Lichtenberger as a reference. Such rejections are applicable against all claims.

Lichtenberger is used as a reference in various ways. First, as against apparatus claims 30 and 31, which describe an improvement in a paper-making machine, Lichtenberger is applied alone under § 102, allegedly identically disclosing the invention. Secondly, Lichtenberger is applied alone under § 103 to claims 1, 2, 5, 9, 10, 11, and 19-23. Finally, all the other claims are rejected under § 103 in view of various combinations of Lichtenberger and other references, Lichtenberger and Smith to render obvious the invention of claims 3, 12, 13, 15-18, and 24-28, and additionally with Casey as to claims 4, 6, 7, 14, and 29. We have noted the various claims and the ways in which they were rejected on Lichtenberger alone, or in combination with other references, because of the differences which appear in this regard between this case and the prior Rule 131 cases in this court upon which the decision in this case is to rest.

The Rule 1S1 Evidence

The inventor Spider’s affidavit and evidentiary material submitted therewith, including laboratory notebook pages and accompanying affidavit of Spider’s associate, Stephen J. Smith, establish that Spider and his associate performed certain acts which, in his view, establish a reduction to practice of the claimed invention prior to the earliest effective filing date of Lichtenber-ger, November 24, 1965. Grounded wet TAPPI blotting paper was moved over a fluid bed of powdered starch electro-statically charged to a level of 20-40 kilo-volts. The starch was electrostatically propelled into contact with and adher-ently deposited on the surface of the wet paper, which had been pretreated with a solution of potassium iodide and iodine to color the deposited starch particles so that they could be seen and the uniformity of the deposit thus observed. The paper sheet was oven dried and weighed pi'ior to deposit of the starch and the wet paper with the starch deposit thereon was dried after the deposition to ge-latinize the wet starch on the wet paper and redry the paper for subsequent weighing to determine the amount of starch deposited on the paper. The Smith notebook pages establish the various weight amounts of starch deposited on the paper at various voltages of electrostatic charge. Smith noted, “Works very well & can put as much on as we want.” And also, “The higher the voltage the better the coverage.”

Also in evidence is a short letter to appellant from L. S. Simser of August 12, 1965, who represented Penick & Ford Limited, of Cedar Rapids, Iowa, the company which supplied the starch and TAPPI blotting paper to appellant, and a portion of a letter from appellant’s patent counsel, A. G. Gulko, dated October 14, 1965, which discusses appellant’s invention. The latter apparently reported the results of a prior art search made on the invention (report not of record) and states Mr. Gulko’s view of the invention as follows:

As I understand the present development, finely divided soluble starch powder is deposited by means of electrostatic forces from a fluid bed onto the surface of wet paper. The fluid bed underlies the wet paper as it goes through the paper-making process where the wet paper contains between about 40% to 70% by weight of water.

Spiller’s affidavit refers to the Gulko letter as helping to record the details of the “demonstration” relied upon for a reduction to practice. While various other facts shown by the affidavits or the Smith notebook pages will be discussed later, we will start from the proposition that appellant’s affidavits and evidence establish electrostatic coating of dry starch particles on re-wet TAPPI blotting paper.

The Opinion of the Board

The opinion of the board and the Examiner’s Answer, with which the board agreed, list and discuss various elements of the thirty claims which are believed not to have been established by the affidavit showing. The examiner stated, in pertinent part (emphasis ours):

The affidavits and exhibits do not show the amounts of claims 3, 12-18 and 24-29, nor the water contents of claims 1-25. There is no showing of any apparatus remotely like that of claims 30 and 31. There has been no allegation or showing that the starch was applied to a web containing at least 25% moisture. , The affidavits and exhibits do not show a process or apparatus such as that claimed. Thus the affidavit fails to prove the heart of the claimed invention, ie, application of particles to a wet web. The affidavits do not prove that the process was done in conjunction with a papermaking machine nor that the apparatus was part of a papermaking machine.

The board added the following criticism of its own:

There is no clear evidence of record that Appellant’s technique employing wet TAPPI blotting paper is an industry-recognized test duplicative of wet web on a Fourdrinier wire. The notebook exhibits, describing work done some H/2 years prior to the affidavits, do not make it apparent that the starch deposited from a fluidized bed was dry, or that the paper was wet, or that there was any dewatering step, or indeed that the starch particles were “electrostatically charged for mutual repulsion” and “separated from one another,” all as required by the claims. Nor is any ratio of starch to paper surface indicated, or any surface property mentioned which might have been modified by the treatment. In connection with the rejections of claims 17, 18, 25, 28, 29 and 31, note that the Rule 131 showing concerns only depositing starch underneath the paper. Lichtenberger et al. stands as a valid reference.

And, in addition, the board incorporated in its opinion by reference the following portion of an opinion by another panel of the Board of Appeals in a copending application of appellant where the merits of the same Rule 131 evidence were discussed:

Considering the merits of the Rule 131 evidence, affiant Spiller, in his affidavit executed January 13, 1970, states that “TAPPI blotting paper, when wet, duplicates the condition of wet paper on a Fourdrinier machine.” There is nothing to correlate this 1970 observation with the data recorded in the Smith notebook bearing dates in August and September 1965. The fragment of a letter appearing on the letterhead of Arnold G. Gulko refers to applying starch powder to “the wet paper as it goes through the paper-making process where the wet paper contains between about 40% to 70% by weight of water.” Again there is no correlation between this- observation and the Smith notebook entries. It would appear that appellant is attempting to create the illusion that the Smith laboratory work had something to do with the electrostatic deposition of dry starch in a wet web of paper on a paper-making machine, which concept is totally lacking in the Smith notebook entries but fully disclosed in Lichtenberger et al.
At best, it would appear that Smith “shot” starch from a fluidized bed onto pieces of blotting paper of unspecified dimension and of unspecified, if any, water content. Such pieces of blotting paper hardly qualify as a “water-wet web” as required by the claims on appeal and as disclosed in Lichtenberger et al. Certainly if the water content of the blotting paper was of significance with respect to starch deposition, this circumstance was unobserved by Smith. The Spiller affidavit states that “Both visual observation and microscopic observation demonstrated that the deposit was at the surface and uniform” but there is no evidence in this record concerning who made such observations or when they were made. There is nothing in the Smith notebook which indicates that any of the samples prepared by Smith were inspected.

Appellant’s Arguments

On the sufficiency of the affidavit showing, appellant’s brief individually attacks each reason given by the examiner and both boards as to why the showing made by appellant does not satisfy each limitation of the claims. For example, in answer to the specific allegation that the acts established by the affidavit showing do not include the use of a water-wet web containing at least 25% moisture, which is a limitation of all method claims 1-7 and 9-25, appellant states that “the mere characterization of paper as ‘wet’ [which is what is established by the Spiller affidavit and Smith notebook] roughly indicates at least this amount of water.” In addition, appellant maintains that the quoted portion of the contemporary letter of counsel “indicates that the work done was estimated to have been done with paper wet with:' ‘ . . . between about 40% to 70% by weight of water’.” With respect to the board’s comment on the failure of the affidavit showing to establish “any ratio of starch to paper surface,” called for by many dependent claims, appellant notes only that many of the claims (1, 2, 4-11, 19-23, 30, and 31) do not specify the ratio of starch to paper surface. And as to the board’s criticism of the appropriateness of TAPPI blotting paper as representative of the condition of the wet web of paper on the Fourdrinier paper-making machine, appellant notes that Spider’s affidavit specifically alleges that “TAPPI blotting paper, when wet, duplicates the condition of wet paper on a Fourdrinier machine.” Appellant further states that blotting paper is merely a web of un-compacted paper fibers so that when it is wet it is then a water-wet web, and, accordingly, the only difference between it and the web on a paper-making machine is perhaps that the latter is continuous, and the blotting paper is of a specific length.

The Prior Cases

The problem with the characterization of the Rule 131 sufficiency issue by the examiner and the two boards is that it is nowhere stated just what appellant must show in order to antedate Lichten-berger. The examiner first stated that “The affidavits and exhibits do not show a process or apparatus such as that claimed,” thus implying that it is necessary to show a reduction to practice of the invention as it is claimed, presumably in each and every claim. Then the examiner states that, “Thus the affidavit fails to prove the heart of the claimed invention, ie, application of particles to a wet web.” (Emphasis ours.) But what is the “heart” of the claimed invention, and how is it to be determined when there are many different claims?

As noted earlier, appellant’s brief attempts to refute each factual statement of the examiner and the board panels, but, like them, never cites any standard for what must be shown to antedate Lichtenberger, in relation either to what Lichtenberger shows or to what is claimed. The solicitor’s brief, for the first time in the prosecution of this application, states what he believes the decisions of this court suggest a patent applicant must show to antedate a reference, saying:

It is submitted that appellant has failed to show “priority with respect to so much of the claimed invention as the reference happens to show.” In re Stempel, 241 F.2d 755, 44 CCPA 820 [1957]. Also, appellant has failed to show prior “possession of either the whole invention claimed or something falling within the claim, in the sense that the claim as a whole reads on it.” In re Tanczyn, 347 F.2d 830, 52 CCPA 1630 [1965].

Stempel and Tanczyn at least lay a foundation for determining the sufficiency of the Rule 131 showing, but how are the two quoted statements applicable to the situation here? If what the reference shows is the important factor, no one has delineated what this is and whether the Rule 131 affidavits show it, particularly since the “claimed invention” varies with the individual claims. If apparatus claims 30 and 31, referring to “a paper-making machine,” represent the claimed invention, then, at least according to the admittedly correct examiner’s rejection of these claims, the reference shows the invention. If, however, the invention is taken to be what is claimed in the method claims, Lich-tenberger may not specifically show the invention but may render it obvious, at least according to the § 103 rejections made in view of Lichtenberger alone, or in view of one or more other references.

Taking what the affidavits and other evidence show as having been performed, again great variances exist for individual claims. Asking whether claims 30 and 31, in the words of Tan-czyn, “read on” what appellant did prior to the effective date of the reference, might require a negative response because of the fact that appellant’s demonstration used no Fourdrinier paper-making machine. In this sense, appellant shows less than what the reference shows. Using method claim 1, supra, as representative of the invention, however, the answer to the question whether this claim “reads on” appellant’s prior activities may depend on whether it is established that appellant’s paper contained “at least 25% by weight of water.”

Resolution of the question of the sufficiency of the Rule 131 showing resides, at least in part, in decisions of this court after Tanczyn, not cited by either party, which dealt with fact situations where the showing made by Rule 131 affidavits was less that the invention claimed but was held sufficient to remove the cited reference because the differences were obvious. In re Hostettler, 356 F.2d 562, 53 CCPA 1069 (1966); and In re Stryker, 435 F.2d 1340, 58 CCPA 797 (1971).

In Stryker, we determined the sufficiency of a Rule 131 showing which established all of the claimed invention except for specific weight percentage limitations. We noted that appellant’s showing was commensurate with that of a Harban reference, which had been solely relied upon by the Patent Office to render the claimed invention obvious, and that it was the specific weight percentages which appellant’s affidavit evidence failed to establish which were considered by the Patent Office to be obvious in view of the reference. We noted that the “differences between the claimed invention and the reference disclosure [as well as appellant’s Rule 131 showing] are so small as to render the claims obvious over the reference [and over appellant’s showing],” and held the showing sufficient to antedate the reference. The board in Stryker, like the examiner here, had stated the proposition, for which Tanczyn was cited, that “The claimed invention must be shown in the affidavit, i. e., the [weight percentage limitations].” We held that this was not necessary, saying:

To hold that Harban is not removed by the showing here presented would lead to an anomalous result, i. e., if appellant broadened his claims by deleting the weight limitations, so as to read literally on Harban, Harban would not be available as a reference against such broadened claims because appellant’s antedating affidavit would be satisfactory in every respect. It cannot be the law that the same affidavit is insufficient to remove the same reference applied against the slightly narrower claims presented here. [Footnote omitted.]

The situation here with respect to the invention of, for example, claim 1, is much like that in Stryker. The original rejection by the Patent Office was for obviousness over a single reference, Lichtenberger. Appellant’s showing seems to be commensurate with the showing of the reference, but, as noted by the examiner and by the board in the related application, neither expressly shows the limitation of the claim that the wet web contains “at least 25% by weight of water.” This is like the reference disclosure and affidavit showing in Stryker which failed to show the weight percentage limitations of Stry-ker’s claims.

Many dependent claims also raise the question whether the situation in Stryker, where the differences between the claimed invention and what the reference and affidavits showed were “so small as to render the claims obvious” to one skilled in the art in view of a single reference, ought to be extended to a situation where part or all of the differences are rendered obvious, not merely by the knowledge of one skilled in the art but by other references available as of the date of the alleged reduction to practice. This court has recently answered that question in the affirmative, at least when a single other reference is involved, in In re Dardick, 396 F.2d 1234 (CCPA 1974), and we see no reason to distinguish the situation where two other references are used, As we noted in Dardick, the reference —or the references — are merely used to show what one skilled in the art would be expected to know as of the date of the reference which has been removed. The only additional caveat which ought to be added is that the affidavit showing must still establish possession of the invention and not just of what a reference happens to show if this is “wholly outside” what is being claimed. In re Tan-czyn, supra.

The invention embodied in claims 30 and 31 raises an additional difference between this case and the situation in Stryker. In Stryker, we said that “the differences . . . are so small as to render the claims obvious over the reference,” and Stryker’s Rule 131 showing was commensurate with the reference. Here, taking as the invention and embodiment of claims 30 and 31, appellant’s showing may well render the invention as there claimed obvious, but it does not appear to establish possession of all the limitations of these claims since appellant’s demonstration did not include the use of his electrostatic deposition technique on a Fourdrinier paper-making machine. The question, then, is whether the rule of Stryker ought to be extended to a situation where the Rule 131 showing is not fully commensurate with the reference but renders the claimed invention obvious. We think Stryker is controlling in this situation as well, and that such an extension of Stryker is supported by our earlier decision in Hostettler, supra.

In Hostettler, we considered the sufficiency of a Rule 131 showing under conditions similar to the present situation as it relates to claims 30 and 31. The invention was a catalytic process for producing urethane. The reference, which admittedly anticipated the invention, showed the claimed process as producing polyurethane, while the Rule 131 showing established the use of the catalyst only to produce a monomeric urethane compound. Our opinion characterized the invention as “the use of a catalyst in a process involving an old reaction” and held the showing sufficient, although relating to an embodiment of the invention different from that shown by the reference. Using a prior art Rothrock patent, cited during the prosecution, as indicative of the knowledge of one in the art, we concluded that “one of ordinary skill in the art would be satisfied from the facts shown in the affidavit that appellants had completed the invention as defined in the claims.” We stated:

It is clear on this record that one of ordinary skill in this art would consid-er that functionality of the reactants determines whether the products are “monomeric” or polymeric, but not that functionality would matter insofar as the reaction using the catalyst is concerned. The statement as to unpredictability of catalytic activity [by the examiner], while relevant, is so general as to afford little assistance in the determination of the precise issue before us. In fact, the more specific showings in the affidavit and the Rothrock patent indicate that one of ordinary skill in this art would expect that a catalyst for. the particular functional groups involved in the reaction would operate relatively independently of the number of those groups on the reactant molecule. Thus we conclude that one of ordinary skill in the art would be satisfied from the facts shown in the affidavit that appellants had completed the invention as defined in the claims. See In re Fong, supra [288 F.2d 932, 48 C.C.P.A. 897 (1960)]. Certainly appellants should not be required to submit facts under Rule 131 showing that they reduced to practice that which is obvious in addition to those facts offered as showing a completion of the invention, for the purposes of antedating a reference. [Footnote omitted.]

The Fong case cited in the above quotation is significant here. We believe that similar considerations govern our decision and that, for the purpose of antedating the Lichtenberger reference under Rule 131, it is sufficient that appellant has shown a reduction to practice of his basic invention, which showing will also suffice as to claims differing therefrom only in details which are obvious to one of ordinary skill in the art.

The heart of this invention is clearly the use of electrostatic forces to apply dry starch particles to a wet paper web. The differences which exist between the claimed invention and the specific reduction to practice established by the Rule 131 showing are such as would be obvious to one of ordinary skill in this art. In re Stryker, supra; In re Dardick, supra; In re Hostettler, supra; In re Fong, supra.

We are satisfied that the differences in the embodiments called for by the claims are so small that the claimed invention would have been obvious. Taking the claims in numerical order, claim 1, and the claims dependent thereon, call for a moisture content of “at least 25% by weight of water” in the web. While we are not satisfied that the Rule 131 showing establishes this content in the reduction to practice, we are satisfied that, at the least, one skilled in this art would find it obvious to have an admittedly “wet” web contain such an amount of moisture and that wet blotting paper would be considered to be a “water wet web.”

With respect to limitations of the claims which require specific ratios of starch to paper surface and the modification of surface properties by the deposition of starch on the paper, we are satisfied that these limitations too would be obvious to one skilled in the art familiar with the facts shown by the Spiller affidavit and the Smith notebook entries. Certainly it was well known that starch modified the surface properties of paper generally. It was no part of applicant’s invention to apply starch to paper. He merely applied it by a new technique. The fact that several different weights of starch were applied to the paper by various numbers of passes and with various values of voltage would render the deposition of specific amounts which are claimed obvious.

With respect to the deposition of starch on both sides of the paper, called for by claims 17, 18, 28, 29 and 31, which the board found unsupported by the Rule 131 showing of “only depositing starch underneath the paper,” this and the other differences called for by the claims over what was reduced to practice would clearly be obvious to one of ordinary skill in this art.

The differences between the Rule 131 showing and the invention as it is described in claims 30 and 31, which call for using the electrostatic starch deposition technique in a paper-making machine and on the Fourdrinier wire thereof, are also obvious differences. While appellant’s argument, and consequently the Patent Office response thereto, centered on the equivalence or duplication of the conditions of the wet paper on the Fourdrinier machine by the use of wet TAPPI blotting paper, we think that the obviousness of the use of the technique on the paper-making machine, as claimed, is clear. Spiller’s affidavit states that “TAPPI blotting paper, when wet, duplicates the condition of wet paper on a Fourdrinier machine,” and the contemporaneous letter of Simser made reference to the use of electrostatic coating “in the paper industry.” If there is any doubt as to the knowledge of one skilled in the art, it is clear from the Uong reference that the art had long known of depositing dry coatings directly upon the water-wet paper web on the Fourdrinier wire in a paper-making machine.

Accordingly, the rejections under § 102 and § 103 in view of Lichtenberger and Lichtenberger in combination with other references are reversed.

The Prior Art Rejections Exclusive of Lichtenberger

We have studied the five references variously applied by the Patent Office under § 103 and have concluded that they do not render obvious the electrostatic deposition of dry starch on a wet paper web. The only reference which deals with electrostatic coating is Reif, which discloses coating finely divided powders on a dry paper web. The solicitor notes correctly that “Reif does not [explicitly] disclose whether the paper being coated is wet or dry.” However, it is quite clear from the Reif disclosure that the paper is not at all wet. Reif states:

Web speed probably will be limited only by the rate at which the electrical charge can leak off the powder deposited on the web. The electrical charges must drain off the coated web before leaving the strong electrostatic field. Otherwise, repulsion of the like charges on the web and coating powder may cause disturbances in the coating that will mar the appearance of the finished paper.
Once the coating is deposited on the paper and leaves the coating unit, it is fixed to the paper with heat. This fusing is done as the web passes through an infrared oven or over a heated roll.

Had the paper been wet, there would be no need to drain the charge off the coated web to avoid disturbances in the coating before the application of heat to fix the coating to the paper. Moreover, we cannot accept the argument of the solicitor that “dry paper contains a substantial amount of moisture” as a teaching that the paper may be wet.

In addition, we can find no reason why it would be obvious to one skilled in the art to combine the Reif teachings of using electrostatic forces in paper coating with the teachings of the other references, which suggest coating paper with starch in either wet or dry form. The wet application of starch is shown by Read, Smith, and Casey and electrostatic forces would be useless in combination therewith. Uong does teach the application of powdered coating materials to the wet web of paper in a paper-making machine, but we do not believe that it would have been obvious to one of ordinary skill in the art to combine electrostatic force therewith. We agree with appellant that the use of starch particles in the Uong enclosure above the wet web would probably result in the formation of starch agglomerates and make the process inoperable. The solicitor’s answer (to appellant’s assertion) that “it would be all the more obvious to electrostati-cally charge the particles as taught by Reif since the well-known advantage of electrostatic coating is the prevention of agglomeration” is a hindsight application of appellant’s teachings. Reif does not teach such an advantage and, using a dry insulated sheet and not starch, never had such a problem to overcome.

Accordingly, the rejections under 35 U.S.C. § 103 of claims 1-7, 9-25, and 30-31 are reversed.

As to the four claims 26-29, which recite sheets of paper coated with various amounts of starch with “the majority of said starch particles being separated from one another on said” paper surface, we agree with the solicitor that “appellant has failed to show that the product is unobviously different from that of Read or Smith.” These claims are not limited to the starch coated paper produced through electrostatic coating of wet paper, and we do not believe that they have been shown to sufficiently distinguish over the art by the properties of the starch on the paper and such limitations as that above-quoted. The rejections of claims 26-29 under § 103 are affirmed.

Section 112, Indefiniteness

The board affirmed the rejection of claims 1, 2, 4-7, 9-11, and 19-23 under the second paragraph of § 112 for the reasons given by the examiner, which are:

Applicant has failed to recite the amount of starch applied to the web in quantitative terms or in definite qualitative terms. Applicant relies on the phrase “in amounts sufficient to , be capable of causing selective modification of surface properties”. It is not even clear whether the modification will improve the properties or what properties will be modified. These properties could range from pick resistance, smoothness, sizing, wet strength, color to the taste. Furthermore, it is not clear whether applicants’ claims are meant to include the application of two or three particles, because two or three particles would selectively modify the surface properties. Likewise a coating of starch one inch thick on the surface of the web would also modify the surface.

We recently restated what is meant by the “indefiniteness” requirement of § 112. It is essentially a requirement for precision and definiteness of claim language so that the claims make clear what subject matter they encompass and thus what the patent precludes others from doing. In re Conley, 490 F.2d 972 (CCPA 1974). Taking the requirement as such, we find that there is no indefiniteness in the use of the above-quoted language in the rejected claims. There is nothing indefinite in the use of claim language which defines particular amounts according to a functional criterion. See In re Fuetterer, 319 F.2d 259, 50 CCPA 1453 (1963); In re Swinehart, 439 F.2d 210, 58 CCPA 1027 (1971).

The examiner’s statement that “It is not even clear whether the modification will improve the properties,” and his extreme example that “a coating of starch one inch thick on the surface of the web would also modify the surface” almost suggest that there is something sinister in appellant’s claiming something which would not, in the examiner’s view, “improve” the properties of the paper coated. As far as the rejection of the claim language for idefiniteness is concerned, we think that the claims make it clear, through the use of the word “selective,” that any modification of surface properties is subjectively desirable in the particular coating applied. Even a “selective” modification of surface properties through the application of an inch of starch to the coated paper —absurd though that would be — would be within the language of the claims. Thus the claim language makes clear what subject matter they encompass.

In In re Conley, supra, we dealt with, and reversed, a similar rejection of claims as indefinite for failure to recite specific proportions and amounts of certain ingredients, one of which was the proportion of satin white in an aqueous suspension. Appellants in Conley maintained that there were “no critical proportions of satin white in aqueous suspension.” We note that here also there is no criticality in the amount of starch which is to “be electrostatically attracted to and uniformly deposited upon” the wet web, and we agree with appellant that there is no reason why he must state in his claims “a feature of no importance” to his invention, which, as previously noted, is the electrostatic deposition of dry starch on wet paper. As appellant’s brief points out, the original reduction to practice of the invention, which appears from the Rule 131 affidavit evidence, shows that from the very beginning it was determined by appellant’s associate that, with respect to the amount of starch deposited, we “can put on as much as we want.” And appellant’s specification states that:

In practicing the present invention, the amount of starch applied can be varied considerably while still achieving some of the benefits of the invention.

Accordingly, we find no indefiniteness in defining the amount of starch. The rejection of claims 1, 2, 4-7, 9-11, and 19-23 for indefiniteness is reversed.

Summary

In accordance with the foregoing, the rejections of claims 1-7, 8-25, and 30-31 are reversed, and the rejection of claims 26-29 under § 103 is affirmed.

Modified.

      . TAPPI is the acronym of the Technical Association of the Pulp and Paper Industry.

      . Application of Lester L. Spiller, serial No. 607,511, for “Manufacture of Paper and Similar Cellulosic Materials of Modified Surface Property by Electrostatic Application of Dry Powdered Water-Sensitive Resin to the Water-AVet AVeb Being Processed,” board opinion of April 30, 1971.

      . Lichtenberger’s web, like that in appellant’s showing, is taught to be wet; and both may in fact contain the minimum quantity of water claimed. Lichtenberger does not specifically teach this, however, and we do not find that the water quantity has been established by appellant’s evidence. There is nothing in the Gulko letter to tie the water percentage figure mentioned to the demonstrations relied upon for reduction to practice. The water percentage figure could just as well have come from appellant’s conception of the invention as from the demonstrations. However, we do think appellant established that his web was “wet” during the demonstrations. Appellant’s blotting paper web is clearly shown by the Smith notebook to have been electrically “grounded,” and a wet starch indicator (potassium iodide and iodine solution) was used thereon.

      . See note 3, supra.

      . Since the purpose of the Rule 131 showing is to establish broadly possession of the invention, In re Tanczyn, supra, it is proper to consider the obviousness of the differ-enoes between what is shown and what is claimed because possession of what is shown carries with it possession of variations and adaptations which would, at the same time, be obvious to one skilled in the art.


author: HILL, Circuit Judge.

text:
    UNITED STATES of America, Plaintiff-Appellee, v. Earl L. KRAMER, Defendant-Appellant.
    No. 73-1925.
    United States Court of Appeals, Tenth Circuit.
    Aug. 20, 1974.
    James W. Heyer, Lakewood, Colo., for defendant-appellant.
    John W. Madden, III, Sp. Asst. U. S. Atty. (James L. Treece, U. S. Atty., Denver, Colo., on the brief), for plaintiff-appellee.
    Before HILL, HOLLOWAY and MOORE, Circuit Judges.

       Honorable Leonard P. Moore, Second Circuit, sitting by designation.

   HILL, Circuit Judge.

Earl Kramer was convicted by a jury in the United States District Court for the District of Colorado, of aiding, abetting, inducing and procuring the making of a false financial statement submitted to a federally insured bank to influence the action of the bank in granting a loan, in violation of 18 U.S.C. §§ 1014 and 2. On appeal, we reverse.

The pertinent facts may be summarized as follows. Kramer was president of, and a majority stockholder in, the First National Bank of Fleming, Colorado (bank). In February, 1971, the Regional Administrator of National Banks discussed with Kramer the possibility of increasing the bank’s capital structure. Application for such an increase was subsequently made and tentative approval was given. The application lapsed, however, and while it was being renewed Kramer began soliciting bank stock purchasers.

One such prospective investor was Robert Fuller, one of the bank’s customers. Fuller operated a tax/accounting business and hay hauling service in nearby Sterling, Colorado. Kramer thought it would be beneficial to the bank if Fuller was a stockholder, as Fuller would then be in a position to refer his 800 clients to the bank for business.

Kramer visited Fuller’s office on August 23, 1971, and asked if Fuller, or his clients, would be interested in purchasing bank stock. Fuller replied that he would like to, but that he lacked the necessary finances. It was decided that Fuller would borrow the money from the bank, and he filled out the necessary papers for a $10,000 unsecured loan. Although he had a current financial statement on file with the bank, he made another one which listed his total assets as being $62,300 and his net worth as being $48,100.

Kramer returned to the bank and gave the loan papers and financial statement to an employee to complete and process. At Kramer’s direction the loan proceeds were placed in the bank’s stock escrow account, pending final approval of the increase in capitalization. The bank’s board of directors met on August 26, 1971, and discussed several loans. One of the directors asked Kramer if Fuller’s financial statement warranted his loan. Kramer said that it did, and the loan was formally approved.

The bank’s increase in capitalization was approved on December 17, 1971. Funds in the bank’s stock escrow account were then transferred to its capital account and stock was issued. Fuller received a stock certificate for 333 shares of the bank’s stock.

Kramer was indicted on July 12, 1973, and convicted on August 22 of that year, receiving a fifteen month prison sentence. He now contends, inter alia, that the evidence introduced at trial was insufficient to sustain his conviction under 18 U.S.C. §§.1014 and 2. In deciding this issue we must view the evidence presented in the light most favorable to the government to ascertain if there is sufficient substantial proof, direct and circumstantial, together with reasonable inferences to be drawn therefrom, from which a jury might find a defendant guilty beyond a reasonable doubt. United States v. Twilligear, 460 F.2d 79 (10th Cir. 1972).

The government has the burden of proving, beyond a reasonable doubt, that (1) Kramer made, abetted, aided, induced or procured another person in making a false statement submitted to a bank; (2) that he did so for the purpose of influencing the bank’s action in approving a loan; (3) that the statement was false as to a material fact; (4) that Kramer did so knowingly; and (5) that the bank’s deposits were insured by the Federal Deposit Insurance Corporation (FDIC). See 18 U.S.C. §§ 1014 and 2; United States v. Goberman, 329 F.Supp. 903 (M.D.Pa.1971), aff’d, 458 F.2d 226 (3rd Cir. 1972).

It is conceded that the bank’s deposits are FDIC insured. Nor is there any serious dispute concerning the falsity of the August 23, 1971, financial statement which listed Fuller’s total assets as $63,300 and his net worth as $48,100. The government’s evidence established that Fuller had been in very poor financial shape from 1968 to 1971, that he had defaulted on a $20,000 loan from the Small Business Administration (SBA), and that there were three unsatisfied or partially unsatisfied judgments against him. Neither the SBA loan nor the judgments were disclosed as liabilities on the financial statement in question. Moreover, a financial statement Fuller filed with the bank on December 10, 1970, indicated his net worth was less than $2,000 and a financial statement filed with the SBA in 1972 showed he had a minus net worth.

Nevertheless, our review of the record convinces us that the government failed to prove the remaining elements of the offense. There is no evidence in the record that Kramer made, aided, abetted, induced or procured the making of the financial statement. Fuller, a key government witness and the only person other than Kramer who could testify as to the circumstances surrounding the statement’s completion, could recall nothing. Kramer, however, testified that Fuller filled out the statement himself, that Fuller did not ask what to put in the statement, and that he did not tell him. His testimony was uncontroverted.

Nor do we believe the government introduced sufficient evidence to prove Kramer knew the financial statement was false. Fuller filed five financial statements with the bank from 1968 through 1971, including the one in question. But not one of these statements revealed his SBA loan or the judgments against him. Fuller did testify that he had previously mentioned the SBA loan to Kramer, but could not recall what he said about it. Kramer’s uncontradicted testimony was that Fuller said he was in the process of settling an $1800 SBA obligation. Fuller could not recall the conversation that took place between him and Kramer on the date the financial statement was made. However, Kramer stated that Fuller led him to believe his financial affairs were in good order. He stated that Fuller told him his business was expanding and that his yearly income was $30,000. These uncontro-verted statements would lead one to believe the financial statement was accurate.

Finally, sufficient evidence does not exist by which a jury could find that the financial statement was submitted to the bank for the purpose of influencing approval of the loan. A financial statement was not necessary, as a current one already was on file with the bank. And, Kramer, as the bank’s president, had unrestricted authority to make loans up to the bank’s maximum lending limit. Under these circumstances a false financial statement could serve no useful or influential purpose. Kramer and the person approving the loan would be one and the same.

The government, however, argues that the statement served to influence the bank’s board of directors. We cannot agree. The evidence discloses that the board members did not review, and were not directly authorized to review, the financial statement. They approved the Fuller loan based on their faith in Kramer and his assertions about the loan. More important, however, is the fact that the loan was made and its proceeds placed in the bank’s stock escrow account on August 23, 1971. It already had been obtained by the time the board of directors could vote on it. Their subsequent approval of the loan appears to have been little more than a mere formality.

Our decision that the evidence was insufficient to sustain a conviction renders consideration of Kramer’s remaining issues unnecessary.

The judgment of conviction appealed from is reversed and the case is remanded with directions to dismiss the indictment.

      . 18 U.S.O. § 1014 provides, in part: “Whoever knowingly makes any false statement ... for the purpose of influencing in any way the action of . . . any bank the deposits of which are insured by the Federal Deposit Insurance Corporation . . . upon any application ... or loan . . . shall be fined not more than $5,000 or imprisoned not more than two years, or both.”

      . 18 U.S.C. § 2 provides, in part: “(a) Whoever commits an offense against the United States or aids, abets, counsels, commands, induces or procures its commission, is punishable as a principal.”

      . We do not recount all the facts. Kramer was also charged with making a false entry and willful misapplication of loan proceeds, in violation of 18 U.S.C. §§ 2, 656 and 1005. These charges were dismissed at the conclusion of the government’s case, on motion by Kramer, and facts relating to these charges are irrelevant to this appeal.

      . The bank’s deposits were insured by the Federal Deposit Insurance Corporation.

      . Fuller had filed four previous financial statements with the bank, one of which was dated December 10, 1970. It listed his total assets as $6,033.23 and his net worth as $1,797.23.