author: ALMOND, Senior Judge.

text:
    Application of Timothy F. DONOVAN and William P. Ryan.
    Patent Appeal No. 74-542.
    United States Court of Customs and Patent Appeals.
    Jan. 16, 1975.

      Harold James, New York City, James & Franklin, New York City, attorney of record, for appellant.
    Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents, John W. DeWhirst, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Associate Judges.
   ALMOND, Senior Judge.

This is an appeal from the decision of the Patent Office Board of Appeals affirming the examiner’s rejection of claims 1 — 4, 7, 15, 16, 35 — 44, 46 and 47 under 35 U.S.C. § 103 of appellants’ application entitled “Solenoid Operated Printer.” We reverse.

The Invention

The invention relates to a high speed printer employing solenoid systems to move a type body which contains the characters to be printed. Figures 1 and 11, reproduced below, respectively, illustrate appellants’ cable-pulley solenoid system and a differential lever solenoid system:

A type body or cylinder 176 is in the form of a prismatic cylinder that is typically of octagonal cross-section with rows of characters on the faces. A rotatable splined shaft 174 supports the cylinder for axial movement thereon. The shaft is rotatable through gear 194. Rotational movement of the shaft and axial movement of the cylinder to a selected character on the cylinder is provided by separate solenoid systems each comprising a plurality of pairs of solenoids (Fig. I- 116, 118; 120, 122; 124, 126 and Fig. II- 228, 230; 234, 236; 238, 240) with a cable-pulley connection (Fig. 1) or a lever connection (Fig. 11), respectively, to effect axial movement of the cylinder and rotation of the shaft. Printing is effected by a hammer head 182 on hammer 180 that strikes an inked ribbon (not shown) or the like against a paper (not shown) interposed between the hammer head and selected character on the cylinder. A step-by-step lateral advancement of the type body as well as the hammer (i. e. spacing) may be superimposed on the character selection motion through feed drum 152 by a ratchet escapement mechanism when printing lines on a page.

The plurality of pairs of solenoids that operate the cable-pulley and the lever connection systems function basically the same so that reference may be confined substantially to the cable-pulley system of Figure 1. Solenoid 116 forms a first pair with solenoid 118 through connecting member 160 attached to their movable cores with pulleys 128, 130 on the member. Solenoid 120 forms a second pair with solenoid 122 through connecting member 164 with pulleys 136, 138 (superimposed) on the member. Solenoid 124 forms a third pair with solenoid 126 through connecting member 156 with pulleys 132, 134 on the member. Belt or cable section 150 is secured at one end 170 to yoke 166, looped around pulleys 148, 142, 134, 136 and 130, and secured at its other end to feed drum 152. The other belt or cable section 151 is similarly secured at one end 169 to yoke 166, looped around pulleys 146, 144, 132, 138 and 128 and secured at its other end to feed drum 152. The reciprocating movement of each of the pairs of pulleys to its two possible positions is obtained by energization of one solenoid of each pair to determine the position of its core and results in a change in the relative position of the type cylinder. The three pairs of solenoids have different core stroke lengths which typically may be Vie inch, V8 inch, and Vi inch, respectively. The change of the effective belt length is double the linear change in pulley position so that the spacing of characters on each row on the type cylinder might be Vs inch. The various combinations of the two operative positions of each solenoid pair gives eight possible character selections for each row on the type cylinder. Appellants’ brief states that the character selection signals that control the solenoid pairs may be in the form of a simple binary code which, in this case, would be a three digit code. Thus, each axial position would be represented by a particular three digit binary number. The three pairs of solenoids with the lever connection system shown in Figure 11 operate in a similar manner. With pivot point 235 fixed to the printer frame, combinations of the two positions of each pair of solenoids provides eight positions for the gear rack 250. The gear rack drives the gear 194, which is mounted on the type cylinder shaft (Fig. 1) , to the selected one of eight rows of characters on the type cylinder.

The closed loop cable-pulley connection and the lever connection, along with the solenoid pairs, permit movement of the type cylinder directly from one character to the next without the necessity of returning to a “home” position after each printing action. The significance of returning the type cylinder to a “home” position will be more apparent from reading the description of the principal reference, Howard, under our following discussion of “The Prior Art.”

The examiner and the board placed the claims into Groups I, II, and III according to the prior art rejections. Claims 1, 3, and 35 (dependent on claim 2) are, respectively, representative of the groups:

1. In a printer having a movable type body, a solenoid system to move the type body, said solenoid system comprising a plurality of pairs of opposing solenoids, a plurality of displacement means each operatively connected to a pair of solenoids, said displacement means being movable in a first direction, by one of said solenoids of a pair, to a first position and movable in a second direction, by the other solenoid of said pair, to a second position, said plurality of displacement means having different displacements which are interrelated in a predetermined ratio, means to sum the displacements of said displacement means, and means to transmit the sum of said displacements to the type body for selection of a position on the type body.
2. The printer of claim 1, wherein the means to sum the displacements of said solenoids comprises a plurality of pulleys operatively connected to said displacement means and movable therewith and cable means trained around said pulleys and operatively connected to said type body.
3. The printer of claim 1, wherein the means to sum the displacements of said displacement means comprises a differential lever system comprising a plurality of levers operatively connected together, each displacement means being operatively connected to a lever.
35. The system of claim 2, wherein said pulleys are arranged in pairs, éach pair being operatively connected to one of said displacement means and movable therewith, and wherein said cable means comprises a first cable operatively connected at one end to said type body and trained successively around one pulley of each pair and second cable operatively connected at one end to said type body and trained successively around the other pulley of each pair.

The Prior Art

The references relied upon were:

Howard 2,727,944 December 20,1955

Bretti 3,256,969 June 21,1966

Hickerson 2,757,775 August 7,1956

Pfannenstiehl 1,548,168 August 4, 1925

Howard, which appellants acknowledge is the basic printer upon which their invention is an improvement, discloses a printer with two cable-pulley solenoid systems that provide rotational and axial movement of a type cylinder.

Figure 2, reproduced below, illustrates the system for axial movement:

The type cylinder 84 is positioned for axial character selection movement by single solenoids 136, 140, 144 which move pulleys 118, 120, 122, respectively, to vary the effective length of cable 124. The solenoid cores 134, 138, 142 are normally biased to their extended positions by tension' on cable 124 and may be moved to their retracted positions by energization of their motivating solenoids. The three pairs of solenoids might typically have core stroke lengths of Vie inch, Vs inch, and Vi inch. One end of the cable 124 is anchored to fixed point 126 and goes around pulleys 122, 120, 118, and 128 with the other end anchored to fixed point 130. Pulley 128, as well as pulley 98, is mounted on movable frame 132, which frame is moved laterally .by the solenoids. A second cable 92, which is attached to one side of the type cylinder, goes around pulleys 94, 96, 98, and 100, and the other end thereof is attached to the rachet-type character spacing drum or escapement 102. Return cable 86 is connected at one end to the other side of the type cylinder. It goes around guide pulley 88 and is attached to spring loaded wheel 90 to pull the type cylinder to the left. This pulling force maintains cables 86, 92, and 124 taut and the solenoid cores extended. The system for rotational movement of the type cylinder operates in a similar manner. In operation, the solenoids are selectively actuated to position the desired type character for printing. Because the spring loaded wheel, acting through the cables, extends the three solenoids after each character selection and printing, the type cylinder returns to a “home” position after printing. For example, consider that a row of characters on the type cylinder are “ABCDEFGH” and “A” is the “home” position. To type “GH” the type cylinder would travel from “A” to “G,” back to “A” and then to “H” and back to “A.”

Bretti discloses a high speed printer, which like appellants’ printer, provides movement of a type cylinder directly from one character to the next without return to a “home” position. Figs. 4 and 5, reproduced below, illustrate one of the two like mechanisms that provide axial and .rotational movement of a type cylinder:

The mechanism comprises a difierential lever system comprising a plurality of levers 12, 13, and 14 operatively connected together by pivot links 16. The left most link 16 is pivotally mounted to fixed point 18 and to lever 14. Rack 99 is pivotally connected to lever 12 and is slidably mounted to impart movement to gear 98" which provides movement to the type cylinder. Levers 12, 13, and 14 are provided with pivots 19 for vertical sliding movement within guide slots 21 in fixed guide plate 22. The vertical positions of pivots 19 determine the vertical position of pivot point 17 and, thus, of the rack 99. Movement of the pivots to an up or down position is provided by the camming slots 23 in camming levers 24 that selectively rock to left and right positions. Each of the three camming levers 24 is pivoted on its respective hub 19 and, as shown in Fig. 5, comprises a pair of arms 26 and 27 connected by a crossbar 28. A rod 34, slidably mounted in each hub, forms the common core for each pair of solenoids 35, 36. The pairs of solenoids are controlled in accordance with a three digit binary code. A lever 38 is mounted on pivot 41 secured to each crossbar 28. The upper end of lever 38 engages rod 34 and the lower end engages a pin 42. The rocking of lever 38 by one of the solenoid pairs causes pin 42 to alternately engage the slot 47 in slide 43 or slot 48 in slide 44. Sliding actuators 43 and 44 are reciprocated in opposite directions by crank 57 through linkage 52, 49, 51. Each time a print operation is effected, the crank 57 rotates counterclockwise 360°. Slots 47 and 48 are mutually facing and their lengths correspond to the distance between the left and right positions of rocking levers 24. Thus, depending on which sliding actuator is engaged by pins 42, camming levers 24 are rocked to the left or right to vertically move pins 19 during the forward stroke of the actuators. The return stroke of the actuators is ineffective to rock the camming levers,

Discs 13-18 are selectively rotated 180° by a gear drive and trip clutches to move lever 12 and, hence, rack 25 which rotates gear 26 on type wheel 29. The mechanism for rotating the discs has no relation to appellants’ invention.

Hickerson is relied on for its disclosure in a typewriter of pulley-pairs along with first and second cable sections for moving a type cylinder. Figure 6, reproduced below, is illustrative of the mechanism for imparting axial movement to a type body:

It discloses pairs of pulleys 21, 28, and 22, 27, which pairs are mounted on movable permutation bars 29 and 30, respectively (each contiguous bar is shown in broken sections for clarity). One section of tape or cable 12 is attached to type cylinder 4 through bracket 9 and trained around stationary pulleys 17, 18, and 19, movable pulleys 28 and 27, stationary pulley 26, and anchored to ratchet-type spacing drum or escapement 78. A second section of tape 12, also anchored to the escapement, is trained around stationary pulley 23, movable pulleys 29 and 21, stationary pulleys 15, 14 and 13, and is also attached to bracket 9. Movement of the pulley pairs through movement of permutation bars 29 and 30 effects changes in the position of the tape terminal ends 16 and 12 to shift the axial position of the type cylinder. The permutation bars are spring biased to a “home” position by springs 58 which results in a “home” position for the type cylinder. Notches 31 provide cam surfaces 32 which function in combination with vertically moving key bar 33 (only one of many is shown) to displace the permutation bars laterally of the typewriter. When the lower edge 34 of a key bar strikes a permutation bar cam surface (some key bars align with notches that have no cam surfaces, which results in no movement of that permutation bar), the permutation bar moves to the right or left depending on the slope of the cam surface. The type cylinder has six characters per row, so the cam surface on one permutation bar must axially move the type cylinder two spaces while the cam surface on the other bar moves it one space. Depressing the key bar to the bottom 35 of notch 31 actuates the print hammer. Rotational movement of the type cylinder is achieved in a similar manner as the axial movement.

The Rejections

The examiner rejected the claims in Group I (claims 1, 2, 4, 7, 37, 40, 42, and 46) on Howard in view of Bretti for obviousness under 35 U.S.C. § 103.

The examiner’s reasoning was that Howard teaches the claimed structure except that only a single solenoid is used. He considered that Bretti teaches that returning a type cylinder to a “home” position between successive actuations can cause undesired rebounds, that these undesired rebounds can be eliminated by providing selecting members with a pair of common actuators to positively reciprocate the selecting members in opposite directions, and that pairs of solenoids can be provided to positively shift an element of the selection structure in opposite directions. Accordingly, he found it would have been obvious to provide a pair of opposing solenoids for each displacement means of Howard as recited by the claims.

The claims of Group II (claims 3, 36, 39, 43 and 44) were rejected over Howard in view of Bretti as applied to Group I and further in view of Pfannenstiehl. The examiner found it would have been obvious to substitute a differential lever system as claimed for the cable-pulley system of Howard.

The claims of Group III were rejected (claims 35, 15, 16, 38, 41 and 47) on Howard in view of Bretti as applied in Group I and further in view of Hickerson. The examiner relied on Hickerson for the features of pulley-pairs connected to displacement means and of first and second cables. The examiner found that it would have been obvious to provide the combination of Howard and Bretti with those features from Hickerson.

The board adopted the examiner’s rejections along with the reasons given in support of them.

Appellants’ arguments before the board, as well as here, stress that Bretti does not suggest substituting a pair of opposing solenoids for each solenoid of Howard. A basis for those arguments is the contention that Bretti’s solution to the problem of returning the type cylinder to a “home” position is far removed structurally and functionally from appellants’ solution. Appellants urge that the Howard and Bretti systems are incompatible and that the only way they could be combined would be to substitute one system in toto for the other. Furthermore, appellants argue that in order to provide Howard with the claimed solenoid system, the pulleys and cables themselves would necessarily have to be completely redesigned to provide a design that is nowhere suggested in Bretti.

Regarding the Group II rejection including Pfannenstiehl, appellants argue that this reference teaches a lever system that is structurally and functionally different from their lever system and that Pfannenstiehl does not add anything to Bretti.

The criticism by appellant of the Group III rejection is that Hickerson does not utilize solenoids to move its type cylinder. Appellants argue that Hickerson requires springs to return its type cylinder to a “home” position and, thus, has the same problem as Howard.

OPINION

Our review of the record convinces us that the prior art relied upon by the examiner and the board does not support a holding of obviousness under 35 U.S.C. § 103 and that appellants have met their burden of establishing error in the board’s decision.

It is not clear how the proposed combinations of the references can be made to meet the claimed structure and at the same time result in a practical, operative mechanism. Rather, any combination of the references to meet the claims would be impossible without the benefit of appellants’ disclosure and, at least, difficult even with that disclosure. The inventions of Bretti and appellants are admittedly directed to concepts for solving the same problem-eliminating return of a type cylinder to a “home” position after each character selection. This broad concept does not serve as a basis for arbitrarily choosing elements from the references to attempt to fashion appellants’ claimed invention. In re Imperato, 486 F.2d 585 (Oust. & Pat.App. 1973).

There is no reason to modify the system of Howard by merely using opposing pairs of solenoids for each of its solenoids. A spring loaded wheel acting through the cables returns each of Howard’s solenoids, which provide axial movement, to their extended positions. This tensioning of the cables is required by Howard’s system to provide an operative mechanism. Adding an opposing solenoid to extend each of Howard’s solenoids would serve no useful purpose. The modification of Howard as proposed in the rejection of the claims in Group I would not change its operation whereby the type cylinder always returns to a “home” position. Accordingly, there is absolutely no basis for combining the teachings of Howard and Bretti as the rejection contemplated.

Furthermore, the solenoid pairs of Bretti are used in a distinctively different manner from that in which appellants or Howard use solenoids. The reciprocating levers of Bretti move in opposite directions to selectively rock the camming levers to displace the differential lever system. The solenoid pairs act to select which reciprocating lever each camming lever is connected to during each print cycle. In contrast, appellants’ solenoid system uses solenoid pairs to move the displacement means in two directions. Instead of suggesting appellants’ system, Bretti leads away from it by suggesting a completely different mechanism. That Bretti might incorporate elements which could be used in appellants’ system does not render appellants’ claims obvious when there is no suggestion of using these elements in substantially the same manner as appellants use them.

The additions of Pfannenstiehl and Hickerson to the rejections of the claims in Groups II and III do not affect the impropriety of combining Howard and Bretti. As far as the use of a lever system is concerned, we agree with appellants that Pfannenstiehl does not add anything to Bretti, which discloses a differential lever system quite similar to appellants. Adding a modified lever system from Pfannenstiehl or a modified cable pulley system from Hickerson would result in a totally new combination which bears no resemblance to Howard or Bretti. Certainly neither Pfannenstiehl nor Hickerson in any way suggests the combinations that the examiner has proposed to meet the claims.

Considering the prior art as a whole, we find no suggestion of the claimed combinations such as would render them obvious within the meaning of 35 U.S.C. § 103. Accordingly, the decision of the board is reversed.

Reversed.

      . Serial No. 852,168 filed August 22, 1969.

      . The Commissioner’s brief states:
      It is noted that claims 40 and 46 are both dependent upon claim 39, which is included in the Group II. rejection below. Thus, it is apparent that claims 40 and 46 should likewise have been included in the Group II. rejection, rather than in the Group I. rejectl0n'

      . The test is whether the invention would have been obvious to those skilled in the art in light of the knowledge made available by the reference.


source: Caselaw Access Project

author: BALDWIN, Judge.

license: Public Domain

text:
    Application of Phillip L. MATTISON and Ronald R. Swanson.
    Patent Appeal No. 74-568.
    United States Court of Customs and Patent Appeals.
    Jan. 23, 1975.
    Jesse B. Grove, Jr., Arlington, Va., attorney of record, for appellants; Gene 0. Enockson, Minneapolis, Minn., of counsel.
    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.
   BALDWIN, Judge.

This appeal is from the decision of the Patent Office Board of Appeals, adhered to on reconsideration, sustaining the examiner’s rejection of claims 1 and 3 to 5 of appellants’ application. Claims 7-10 have been allowed. We reverse.

The Invention

Appellants’ invention relates to a new class of substituted 2-hydroxybenzophe-noxime compounds which are effective extractants for copper values from aqueous solutions at low pH.

It was previously discovered that copper values could be recovered economically from certain aqueous leach liquors by using a liquid ion exchange process employing particular phenolic oximes as the extractants.

While prior phenolic oximes were found to be effective as copper extractants over a wide pH range, their extraction efficiency drops off considerably when the aqueous copper containing solutions have pH’s below about 1.5 and especially below 1.0. This represents an important consideration, for certain leach liquors have very low pH’s or develop low pH’s on being subjected to liquid ion exchange extraction. Appellants have discovered new compounds which have the property of effective copper extraction from aqueous solutions thereof at low pH.

The appealed claims read:

1. A compound of the formula

in which R and R’ may be individually alike or different and are saturated aliphatic hydrocarbon groups of 1-25 carbon atoms, E is an electron withdrawing substituent, p is 1, 2, 3 or 4, m is 0 or a whole integer up to 4-p and n is 0, 1, 2, 3 or 4, said compound having a total of 3-25 carbon atoms in Rm and R’„ and said electron withdrawing substituent Ep (1) having an electron withdrawing capacity such that a phenol containing only said substituent has an acid ionization constant Ka of at least about 50 X 10'10 and (2): being so selected and positioned on the aromatic ring to substantially increase the efficiency of the compound as a copper extractant from aqueous solutions having a pH of less than about 1.0.

3. A compound according to claim 1 in which R’ is a branched chain aliphatic hydrocarbon group.

4. A compound according to claim 1 in which R is a branch chain aliphatic hydrocarbon group.

5. A compound according to claim 1 in which the electron withdrawing substituent is a nitro group.

The Rejections

Claims 1 and 3-5 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite by reason of the language “substantially increase the efficiency of the compound as a copper ex-tractant.” As stated by the board:

How much is a substantial increase? Is it 3%, 30%, 300%, or something else? Since the answer to this question must be known in order to determine whether a particular compound is or is not within the scope of the subject matter claimed, we hold that the claims are indefinite and accordingly affirm the rejection based on the second paragraph of 35 USC 112.

Further, the board found that the specification failed to comply with the first paragraph of 35 U.S.C. § 112 for its alleged failure to contain a written description of the invention being claimed. More specifically, the board stated:

We have carefully considered the Examiner’s arguments and we affirm the rejection on the sole ground that the specification fails to teach what is meant by a substantial increase in efficiency as a copper extractant: In brief, we fail to find in the specification a written description of the invention being claimed.

While the specification does teach one of ordinary skill in the art how to make and use compounds of the type defined by the claims, while it is sufficient to teach one of ordinary skill how to determine whether the Ka value is that required by the claims, and while it is sufficient to teach one of ordinary skill how to test compounds for their ability to extract copper, it does not tell workers in the art how to interpret the data once it has been obtained. For example, in the event two compounds each meeting all the other requirements of the claims provide an increase in copper extraction of 3% and 30%, respectively, one cannot determine from a reading of the specification whether either or both of these compounds is the invention “described”.

Opinion

The board has determined that the limitation “to substantially increase the efficiency of the compound as a copper extractant from aqueous solutions having a pH of less than about 1.0” renders the claims unpatentable under 35 U.S.C. § 112, second paragraph, as not particularly pointing out and distinctly claiming the invention. We disagree.

The board concedes that the claims are directed to what applicants regard as their invention. The basis for the rejection is that the claims are indefinite by reason of the language “substantially increase the efficiency of the compound as a copper extractant.”

The criticized phrase found in claim 1 does not stand in a vacuum. See In re Moore, 439 F.2d 1232, 58 CCPA 1042 (1971). Claim 1 further requires that the substituent Ep has an electron withdrawing capacity such that a phenol containing only the substituent Ep has an acid ionization constant Ka of at least 50 X 10'10. The claims must be read in light of the specification. In re Cohn, 438 F.2d 989, 58 CCPA 996 (1971); In re Moore, supra. The specification teaches how the electron-withdrawing substituents must be selected and positioned on the ring in order to provide the desired increase in extraction efficiency at the low pH ranges. In addition to the requirement that the substituent Ep must provide substituted phenols with acid ionization constants of about 50 X 10"10 or higher, it is stated that the electron withdrawing group should not adversely affect the solubility or stability of the benzophenoxime, sterically hinder the OH group, or cause interfering side reactions. Further, appellants disclose that the electron withdrawing substituents should not interfere in the extraction process by complexing or reacting with the acid of the low pH copper-containing solution.

We are not persuaded by the board’s reasoning that one skilled in the art would not be able to determine the scope of the claimed invention in terms of a specified percentage value. General guidelines are disclosed for a proper choice of the substituent Ep together with a representative number of examples. If the prior art 2-hydroxybenzo-phenoxime is modified by the inclusion of an electron withdrawing substituent Ep as claimed, resulting in substantially increased efficiency of the compound as a copper extractant from aqueous solutions having a pH of less than 1.0, the compound is within the scope of the claims. Hypothesizing whether an increase in efficiency of 3%, 30%, or 300% is necessary for said increase to be classified as substantial is not determinative of the issue of whether the claims satisfy 35 U.S.C. § 112, second paragraph.

Similarly, we hold that the specification satisfies the requirements of the first paragraph of 35 U.S.C. § 112. The rejection under the first paragraph of § 112 is not for insufficiency of disclosure to enable practice of the invention, but for lack of a written description of the invention. With respect to this rejection, it is sufficient to note that language virtually identical to that objected to for indefiniteness under the second paragraph of § 112 appears in the written description and is as broad as that used in appellants’ broadest claims. In re Robins, 429 F.2d 452, 456, 57 CCPA 1321, 1325 (1970).

Therefore, the board’s decision is reversed.

Reversed.

      . Serial No. 714,040, filed March 18, 1968.

      . The phenolic oximes used prior to the present invention were those having the following basic structure:

      it and R’ are saturated aliphatic, ethylenically unsaturated aliphatic or saturated or ethylenically unsaturated aliphatic ether groups and m and n are 0, 1, 2, 3 or 4. The phenolic oximes contain 3 to 25 carbon atoms in the R and R’ groups, the latter being of 1 to 25 carbon atoms when saturated and 3 to 25 carbon atoms when ethylenically unsaturated.

      . The board stated:
      We find no indication in the record that appellants are not claiming what they regard as their invention; nor has such an issue been raised.

      . Appellants disclose that if a chloro group is selected, it must be positioned in at least one position other than para to the hydroxyl group. Otherwise, it does not provide the necessary Ka value.

      . Appellants disclose that bulky substituents, e. g., -SF5, should not be in the ortho position since they will sterically hinder the OH group.

      . Appellants disclose that substituents such as NH2 should be avoided, as such groups complex or react with acids.

      . It is interesting to note that the board found it unnecessary to consider the scope of the word “substantially” in its holding that the claims are patentable over art cited by the examiner. The board thus stated:
      Such reliance is not inconsistent with our holdings on the section 112 rejections since a given expression, though not precisely worded, may nevertheless convey a general concept neither taught nor suggested by prior art disclosures. Thus, as here, a “substantial” increase clearly is distinct from no increase at all; yet the amount of increase necessary to qualify as “substantial” is unknown. Appellants’ Examples are of little assistance since a wide variance in this regard is there shown.


author: RICH, Judge.

text:
    Application of Kosei NOMIYA et al.
    Patent Appeal No. 74-514.
    United States Court of Customs and Patent Appeals.
    Feb. 6, 1975.
    Paul M. Craig, Jr., Washington, D. C., attorney of record, for appellants.
    Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents; R. V. Lupo, 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 under 35 U.S.C. § 103 of claims 1-8 and 33 in application serial No. 768,794, filed October 18, 1968, for “Semiconductor Circuit Devices Using Insulated Gate-Type Field Effect Elements Having Protective Diodes.” We reverse.

The Invention

Appellants’ invention pertains to insulated-gate-type field-effect transistors (hereinafter IGFET) and their use in semiconductor capacitive memory cireuits having very low capacitance. For ease of discussion we reproduce Figs. 1 and 2 of the application:

The structure of Qj in Fig. 1 is an IGFET, consisting of two P-type regions, Si and Di, diffused into an N-type starting crystal, or substrate, usually of silicon, with an insulating oxide layer SÍO2 formed on the surface of the N-type substrate and contacting the diffused P-type regions. A metal gate electrode Gi is attached to the insulating layer. IGFETs used as switching devices, as contemplated by appellants, are customarily fabricated in the OFF-mode. In this mode, when no voltage is applied to the gate, the two P-type regions, called source (Si) and drain (Di), are electrically insulated from each other by the N-type region surrounding them. However, when a negative voltage, such as a clock pulse, is applied to the gate, the electric field so produced induces a thin P-type channel across the surface of the N-type channel across the surface of the N-type region connecting the source and the drain, permitting a current to pass between them. See In re Carlson, 412 F.2d 255, 56 CCPA 1309 (1969). Fig. 2 is a circuit diagram of a dynamic shift register employing the IGFET device of Fig. 1 as a switch to control a bit of information stored in capacitor C, which may be distributive capacitance of the circuit.

According to the application,

* * * since the gate Gi of an insulated gate-type field effect transistor Qi as shown in Figure 1 has a high capacitive input impedance, a very small amount of electric charge accumulated on the gate Gj induces a high voltage and sometimes causes the insulating film (usually silicon dioxide) between the gate Gi and semiconductor substrate 1 to break down. Therefore, it has been proposed that a protective diode be formed, i. e. a zener diode Recj, integrally in the semiconductor body 1 and that the diode be connected in parallel with the gate Gi shown in Figure 1. It has been believed that the protective diode could prevent the insulating film from breakdown without interfering with the characteristics of the field effect transistor.

Appellants claim to have discovered that when IGFETs having protective diodes formed in the same substrate, as shown in Fig. 1, are used as switches for storing information or input signals in a memory element having very small capacitance (C on Fig. 2), parasitic transistor action between the protective diode and the drain region may take place when the PN junction Jr of the protective diode Recj is forward biased by a noise signal, causing the signal stored in the memory element to discharge through the drain region Di despite the lack of a pulse applied to the gate electrode. The solution to this problem found by appellants, which they claim as their invention, is a voltage-limiting means auxiliary to the protective diode, which can be a high resistance or another protective diode (hereinafter called “shunt diode”), formed outside the substrate or electrically isolated from other circuit elements on the substrate, connected in parallel with and in the same direction as the protective diode Reci.

Claim 1, with reference letters keyed to Fig. 1 and emphasis supplied, is illustrative:

1. In a semiconductor device comprising:
an insulated gate-type field effect component [QJ including a semiconductor substrate [1] of first conductivity type, source [Sj] and drain [Dj] regions of second conductivity type opposite to said first conductivity formed in a surface of said semiconductor substrate, and an insulated gate electrode [Gi] disposed on said surface between said source and drain regions and insulated from said substrate by an insulating film [Si02]; and
a protecting semiconductor diode [Reci] formed integrally in said substrate and connected in parallel between said insulated gate electrode and said semiconductor substrate for protecting the insulating film interposed between said gate electrode and said substrate from breakdown; the improvement comprising
auxiliary means connected with said semiconductor device for preventing minority carriers from said protecting semiconductor diode from reaching said drain region through said semiconductor substrate when noise signals are applied to the protecting diode.

Claim 2 is similar to claim 1 and is cast in the same “Jepson” form. Dependent claims 3-8 depend from claim 2 and recite various added limitations. Claim 33 defines a “memory circuit device” containing appellants’ invention. If claim 1 is patentable, so are the other claims.

The Rejection

The examiner cited Bergersen et al. [Bergersen] U.S. patent 3,408,511, issued October 29, 1968 on an application filed May 13, 1966. The Bergersen specification states in part:

This invention relates to an improved insulated-gate field-effect transistor (IGFET) circuit having large bipolarity voltage capabilities. This circuit is operative as an active component of an electronic chopper or an electronic analog switching circuit and is adapted to receive large bipolarity analog input signal voltages.
When an insulated-gate field-effect transistor is used in analog switching or chopper circuits, it must be voltage controlled in such a manner that the P — N junctions between semiconductor substrate and source regions and between semiconductor substrate and drain regions do not become forward biased and enable current to flow from either the substrate region to the source region or from the substrate region to the drain region, respectively. This requirement means that the insulated-gate field-effect transistor can only handle input signals of a limited amplitude if these signals are connected directly in parallel with either of the above defined P-N junctions and between one of the source or drain regions and the substrate region, which is usually at ground potential. If, using the above-described connection, the input signals applied across either of the P-N junctions would be at a voltage level sufficiently high to forward bias these P — N junctions into conduction, then an alternative input signal connection must be resorted to. One such alternative connection involves disconnecting the substrate region from its ground return and from the source of input signals, leaving the substrate region floating. This mode of IGFET operation will prevent the P — N junctions between substrate and source regions and between substrate and drain regions from becoming forward biased, but it will also subject the substrate region to extraneous noise pickup and this is obviously an undesirable compromise for enabling the insulated-gate field-effect transistor to handle large bipolarity signals connected between either source or drain and substrate regions.
A feature of this invention is the provision of an insulated-gate field-effect transistor circuit including adjacent source, substrate and drain regions with a P — N junction between the substrate and source regions and a P-N junction between the substrate and drain regions.. A voltage limiting circuit is connected to the substrate region and includes a diode which is connected between the substrate region and either the source or the drain region. This diode becomes conductive for large amplitude signals of one polarity which are applied to one of the source or drain regions and thereby protects one of the above-identified P-N junctions from becoming forward biased. When large amplitude input signals of an opposite polarity are applied to the same source or drain region, this diode becomes reverse biased and prevents the input signals from reaching the other of the two P-N junctions, and forward biasing this junction.
* * * * * *
The substrate region * * * and the source and drain regions * * * are analogous to two spatially separated diodes connected back to back. Since the source and drain regions * * * are isolated by the substrate region * * * any drain to source current or source to drain current in the absence of a gate voltage is extremely low. The P-N junctions * * * of the so-called back to back diodes defined above must not be allowed to become forward biased for any amount of channel conduction since this would cause extraneous currents to flow to the input and output circuits of a practical chopping or switching device * * *.

It is significant that Bergersen does not explicitly disclose a protective diode formed in the same substrate as the IGFET so protected.

In order to understand one of appellants’ arguments, we must look to the PTO position as it developed. In his first rejection of the appealed claims the examiner said:

Applicant’s [sic] figures 1 and 2 [reproduced supra] illustrate the prior art. Bergersen et al teach the prevention of a diffused N region in a P substrate from being biased in the forward direction by the input signals through t.he use of a shunt diode and a resistor. Pursuant to this teaching it is obvious to one of ordinary skill in the art to prevent any of the diode junctions of Applicant’s [sic] prior art figures from becoming forward bias [sic] through the use of a shunt diode. No new novel or unexpected result is seen to occur by so doing.

The Examiner’s Answer on appeal states that “Applicant’s [sic] figure 1 shows the prior art,” and concludes:

In the prior art diode protected IGFET the protection diode is usually used to prevent spurious signals, i. e. noise from damaging the gate insulator. Noise is usually bipolar. As such it is rather apparent that the noise signal will forward bias the prior art protection diode. Thus the prior art protection diode is known to operate on bipolar signals, both positive and negative, otherwise only half the protection for the gate insulator would be present. Bergersen et al disclose that noise signals will undesirably forward bias junctions of an IGFET. Forward biased junctions in IGFET’S are undesirable as they create leakage currents between the input and output. The solution to the problem as per Berger-sen et al. is to prevent the junction from becoming forward biased by shunting the junction with a diode of lower threshold voltage. Pursuant to this teaching it is obvious to one of ordinary skill in the art to add a shunt diode across the protection diode of the prior art that becomes forward biased during half of the protection function. No new, novel, or unexpected results are seen to occur by so doing. Germanium diodes are well known to have a lower threshold voltage than silicon diodes, thus being an obvious design choice to use in the application of the teachings of Bergersen et al.

The board adopted the examiner’s reasoning and added some of its own, stating:

We find it logical to apply the teaching of Bergersen et al. to any junction on a single chip. One skilled in the art having studied Bergersen et al. and looking at appellants’ Figure 1 would realize and understand that a diode provided purely for gate protection which is integrated into the same chip as the FET might be a source of undesired minority carrier injection from forward biasing in the same way as the source or drain in a field effect transistor as described by Bergersen et al.
We have no doubt that the examiner is relying on the admitted prior art of Figures 1 and 2 of appellants’ drawing. We agree with appellants that the dotted line showing of the transistor action resulting from the forward biasing of the protective diode as depicted in Figure 2 should not be considered as prior art. The dotted line showing clearly represents appellants’ contribution and in our opinion the examiner has so construed it.

OPINION

Appellants’ brief now questions the PTO’s use of Figs. 1 and 2 of their application as “prior art” under 35 U.S.C. § 103, arguing that there is no statutory basis for considering Figs. 1 and 2 to be “prior art” in the § 103 sense. The oath in the application shows that appellants are citizens and residents of Japan; presumably the invention was made in Japan. Appellants point out that what may have been known to them in Japan would not be prior art by virtue of any portion of 35 U.S.C. § 102.

We see no reason why appellants’ representations in their application should not be accepted at face value as admissions that Figs. 1 and 2 may be considered “prior art” for any purpose, including use as evidence of obviousness under § 103. In re Garfinkel, 437 F.2d 1000, 1004, 58 CCPA 883, 887 (1971); In re Hellsund, 474 F.2d 1307, 1311; 59 CCPA 1382, 1387 (1973). By filing an application containing Figs. 1 and 2, labeled prior art,, ipsissimis verbis, and statements explanatory thereof appellants have • conceded what is to be considered as prior art in determining obviousness of their improvement. That appellants’ invention may have been made in Japan is of no consequence in light of their admission.

It is necessary to consider everything appellants have said about what is prior art to determine the exact scope of their admission. The relevant portion of the specification under the heading “Description of the Prior Art” states:

According to investigation, however, it has been revealed that since the PN junction Jr of the diode Recj is biased in the forward direction by noise pulses ejj, a bipolar transistor is formed [with] the region 2 (as an emitter), the substrate 1 (as a base) and the drain region Di of the field effect transistor Qj (as a collector) since the junction Jm is usually biased in the backward direction. Minority carriers injected into the substrate 1 from the diode region 2 diffuse in the substrate 1 and reach the drain region Di, as shown by the broken line arrow in Figure 1. [Emphasis added.]

The board in its opinion, supra, conceded that the bipolar transistor action described by appellants in the passage above quoted was not part of the admitted prior art. Therefore, on this record, the admission is only that the structure shown in Figs. 1 and 2 combining an IGFET and its protective diode in a common substrate and the use of that structure in a dynamic shift register circuit were known to the art when appellants invented their improvements.

What we said in In re Sponnoble, 405 F.2d 578, 585, 56 CCPA 823, 832-833 (1969), is relevant here:

It should not be necessary for this court to point out that a patentable invention may lie in the discovery of the source of a problem even though the remedy may be obvious once the source of the problem is identified. This is part of the “subject matter as a whole” which should always be considered in determining the obviousness of an invention under 35 U.S.C. § 103. In re Antonson, 272 F.2d 948, 47 CCPA 740; In re Linnert, 309 F.2d 498, 50 CCPA 753. The court must be ever alert not to read obviousness into an invention on the basis of the applicant’s own statements; that is, we must view the prior art without reading into that art appellant’s teachings. In re Murray, 268 F.2d 226, 46 CCPA 905; In re Sporck, 301 F.2d 686, 49 CCPA 1039. The issue, then, is whether the teachings of the prior art would, in and of themselves and without the benefits of appellant’s disclosure, make the invention as a whole, obvious. In re Leonor, 395 F.2d 801, 55 COPA 1198.

See also In re Conover, 304 F.2d 680, 49 CCPA 1205 (1962). Appellants’ specification identifies the problem discovered by them in part as follows:

The emitter common current amplifier factor |3 of this transistor structure [Fig. 1] is in the order of 10-3 to 10"4. This factor of the transistor structure is much smaller than those of usual bipolar transistors (in the order of several tens to several hundreds). Therefore, the parasitic bipolar transistor seems to be of negligible value because of the extremely small current amplifier factor.
When an insulated gate-type field effect transistor having a protective diode is used as a control switch ’ for storing an information signal or an input signal in a memory element having very small capacitance, the parasitic bipolar transistor, according to our study, cannot be neglected even if the current amplifier factor (3 is extremely small as aforementioned. * * *
Since the zero voltage level part of the pulse Vcp, however, often includes a noise signal en[Fig. 2] which comprises high frequency components of fairly large amplitude, * * * the diode Reci is biased in the forward polarity by the noise signal ejj. Only in this instant, a parasitic bipolar transistor Q3 is constructed, the collector current ic flows through the transistor Q3 and the capacitor C in spite of the OFF-state of the transistor Qj. Therefore the stored charge in the capacitor C discharges. Especially in such a memory circuit device as that which uses a capacitive memory element of very little capacitance an extremely small amount of collector current ic of the parasitic transistor Q3 causes the [charge] stored in the capacitor C to be reduced considerably since the amount of the stored charge is very small, and it results in misoperation of the memory circuit device.

If, as appellants claim, there is no evidence of record that a person of ordinary skill in the art at the time of appellants’ invention would have expected the problem in the IGFET to exist at all, it is not proper to conclude that the invention which solves this problem, which is claimed as an improvement of 'the prior art device, would have been obvious to that hypothetical person of ordinary skill in the art. The significance of evidence that a problem was known in the prior art is, of course, that knowledge of a problem provides a reason or motivation for workers in the art to apply their skill to its solution. Logically, the instant situation is one step removed from the circumstances illustrated by Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, 67-68, 43 S.Ct. 322, 67 L.Ed. 523 (1923), where the problem of rippling in paper produced on Fourdrinier paper-making machines at high speed was known, but the source of the problem was not.

Thus, we must first ask the question: does Bergersen, when considered in conjunction with the prior art structures disclosed in Figs. 1 and 2, suggest the existence of the problem solved by appellants? We think not. While we agree with the PTO that Bergersen supplies the obvious expedient of using voltage-limiting means to prevent the injection of minority carriers (i.e., extraneous currents) from a forward-biased PN junction of the IGFET into the IGFET substrate, we find nothing in Bergersen which, when applied to a structure having a protective diode disposed in a common substrate with an IGFET and not insulated electrically therefrom, is evidence that a person of ordinary skill in the art would have recognized that the misoperation of IGFET memory elements employing such a protective diode was caused by forward biasing of the PN junction, not of the IGFET, but of the protective diode. Bergersen, in fact, is better evidence for the conclusion that a person of ordinary skill in the art would consider that the protective diode Reci of Fig. 1 would prevent injection of minority carriers into the IGFET substrate, not be a cause thereof.

The board attempted to overcome the lack of nexus between Bergersen’s teachings and the structure of Fig. 1 by saying that “it [is] logical to apply the teachings of Bergersen et al. to any junction on a single chip.” There must, however, be a reason apparent at the time the invention was made to the person of ordinary skill in the art for applying the teaching at hand, or the use of the teaching as evidence of obviousness will entail prohibited hindsight. Graham v. John Deere Co., 383 U.S. 1, 36, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). From the portion of Bergersen quoted supra, it appears that the single protective diode of Bergersen would protect one IGFET PN junction from becoming forward biased when signals of a particular polarity are applied to the source or drain region of the IGFET, and would protect the other PN junction when signals of the reverse polarity are applied. While this teaching is available to show that any PN junction may be protected from forward bias by a shunt diode, it does not suggest a problem, or the solution thereto, concerning an IGFET with a protective diode formed in the same substrate in the absence of knowledge that forward bias on the protective diode causes parasitic transistor action or other undesirable phenomena between the PN junction of the protective diode and the source-substrate or substrate-drain PN junction of the IGFET. Parasitic transistor action for the IGFET use contemplated by appellants was a significant source of faulty operation. The board recognized that appellants contributed this knowlege.

The solicitor’s argument begs the question:

While it may be true that appellants were the first to recognize and describe the existence of a “parasitic bipolar transistor,” that recognition and description, while a professional credit to appellants, is not sufficient to establish the patentability of the claims. After all, what causes the existence of the parasitic bipolar transistor in appellants’ system is the forward biased P-N Junction — the same problem recognized in the Bergersen patent.

It is, of course, not the same problem since Bergersen makes no suggestion that bipolar transistor action might occur when the protective diode and IGFET are formed in a common substrate.

On this record, therefore, we find no evidentiary basis for the finding that a person of ordinary skill in the art would have had reason to apply an additional shunt diode (or other voltage-limiting means) to an IGFET already equipped with a protective diode formed in the same substrate.

The rejection of claims 1-8 and 33 is reversed.

Reversed.

      . Pub.L. 93-596, effective January 2, 1975, changed the names of the Patent Office and the Commissioner of Patents to the “Patent and Trademark Office” and the “Commissioner of Patents and Trademarks,” respectively. For convenience and brevity hereinafter we shall use the abbreviation PTO.

      . A P-type semiconductor contains more holes, or electron gaps in the lattice of the material, than it does electrons free of covalent bonds in the lattice. An N-type material has an excess of free electrons over holes. These electrons and holes are referred to as “carriers”; “minority carriers,” mentioned infra, are electrons in P-type semiconductors and holes in N-type semiconductors.

      . “Forward bias” is the application of a potential difference to a P-N junction in the direction which aids current flow across the junction.

      . Although the author of this opinion did not join the opinion of the court in Hellsund, there was no disagreement among the members of the court with the basic proposition that a statement by an applicant, whether in the application or in other papers submitted during prosecution, that certain matter is “prior art” to him, is an admission that that matter is prior art for all purposes, whether or not a basis in § 102 can be found for its use as prior art. The point of controversy in Hellsund was not whether a binding admission had been made, but what was admitted. The opinion of the court called it an admission of “prior art," but the author of this opinion found it to be an admission merely that the Opel patent contained a disclosure of an invention made prior to Hellsund’s invention.

      . The application contains a section entitled “Description of the Prior Art,” which explains Figs. 1 and 2 in detail. We note also that appellants, in an amendment to the application and in their briefs on appeal to the board, repeatedly acknowledged that Figs. 1 and 2 illustrate the prior art.

      . It is clear from the specification that the dotted line on Fig. 2 referred to by the board represents the same phenomenon as the “broken line arrow” on Fig. 1.

      . The matter in claim 1 before the word “improvement” reads on Fig. 1, supra. By using this “Jepson” form, appellants are relying solely on the subject matter following “improvement” to provide patentable distinction over the prior art.


author: PER CURIAM.

text:
    ATLANTIC CAPE FISHERIES, Plaintiff-Appellant, v. HARTFORD FIRE INSURANCE COMPANY, Defendant-Appellee.
    No. 74-1332.
    United States Court of Appeals, First Circuit.
    Argued Jan. 8, 1975.
    Decided Jan. 29, 1975.

      Joseph F. Lyons, Boston, Mass., with whom James C. Gahan, Jr., Boston, Mass., was on brief for appellant.
    Myrna Putziger, Boston, Mass., with whom William T. Conlan and Gaston Snow & Ely Bartlett, Boston, Mass., were on brief for appellee.
    Before COFFIN, Chief Judge, McENTEE and CAMPBELL, Circuit Judges.
   PER CURIAM.

Appellant’s vessel CORAL KING allegedly sustained damage at sea on September 11, 1971, when a connecting rod bearing seized, causing extensive damage to be done to the engine and its components. On August 25, 1972 appellant commenced an action in federal district court, claiming that its loss, less a deductible, was covered under the terms of a marine insurance policy issued by appellee. Appellee’s answer disclaimed liability. When Richard Stevenson, captain of the ship at the time of the casualty and president of appellant corporation, did not make himself available for a deposition, the district court dismissed the action with prejudice to any application that the dismissal be vacated. Appellant urges on this appeal both that there has been no failure on its part to comply with the discovery provisions of the Federal Rules of Civil Procedure and that, even if there has been non-compliance, dismissal is on the facts of this case an impermissibly harsh sanction.

Efforts to depose Stevenson began on May 7, 1973, when appellee gave notice of a deposition scheduled for May 14 and requested that Stevenson bring with him the deck and engine logs from the CORAL KING. The deposition was not taken, and a second notice was given on June 21, 1973, returnable June 29. Appellant filed a motion to quash on the ground that Stevenson had moved to San Diego, and that its efforts to contact him had thus far been unsuccessful. Appellee requested that appellant be non-suited for failure to produce Stevenson, and appellant replied that Stevenson was at sea and that efforts to contact him, both directly and through his personal attorney, had been unsuccessful. The motion to nonsuit the plaintiff was denied on January 28, 1974, but the district court ordered that the deposition be held before March 1. Appellee assented to an extension of time for the taking of the deposition to April 15, Stevenson’s attorney having learned that Stevenson had left January 7 on a three-month fishing voyage. Appellee filed a second motion for dismissal on May 1, Stevenson still having not appeared, and the district court ruled in a May 29 pretrial conference that appellant would be nonsuited if the deposition were not taken by July 15. The court granted still another extension, to August 24, and finally dismissed the action on August 29:

“There has been no satisfactory showing as to why Captain Richard Stevenson has not been produced for discovery at some time and place since defendant’s first attempt to take his deposition was made returnable on May 14, 1973. There may have been a justifiable excuse at the early stages of this litigation but, despite renewed efforts by defendant, the witness, who is crucial to the proper determination of this case, has not been produced. Moreover, and more significantly, there is no indication from plaintiff’s motion to extend the time for taking the deposition of Richard Stevenson as to when, if ever, he will be produced.”

Appellant’s final motion to extend time reported nothing more definite concerning Stevenson’s whereabouts than that his vessel had “proceeded from the Pacific Ocean to some location off of the coast of Africa.”

Appellant argues that sanctions cannot be imposed upon it as a result of Stevenson’s failure to appear, since he had not been designated by the corporation to testify on its behalf as provided in Fed.R.Civ.P. 30(b)(6). We could accept this conclusion only by turning our backs on the clear language in Rule 37 authorizing the imposition of sanctions on a corporation when an officer, director, or managing agent fails to attend a deposition or comply with a discovery order. Fed.R.Civ.P. 37(b)(2), (d). Not only is it uncontroverted that Stevenson was president of appellant, but he would almost certainly qualify as a managing agent as well. See generally 8 Wright & Miller, Federal Practice and Procedure § 2103, at 376 — 79. Moreover, the Advisory Committee notes accompanying the amendment to Rule 30 which created the 30(b)(6) procedure make it clear that the device “supplements the existing practice whereby the examining party designates the corporate official to be deposed.” 48 F.R.D. 487, 515 (1970 Amendments). The notice of deposition' and the court orders sufficiently establish that discovery was sought from Stevenson as an official of appellant, not as an individual. See Diaz v. Southern Drilling Corp., 427 F.2d 1118, 1126 (5th Cir.), cert. denied, 400 U.S. 878, 91 S.Ct. 118, 27 L.Ed.2d 115 (1970).

Although appellant suggests that sanctions could not properly be imposed absent a showing of wilful refusal to produce Stevenson, that contention is clearly wrong, Fed.R.Civ.P. 37(b), (d); Societe Internationale v. Rogers, 357 U.S. 197, 78 S.Ct. 1087, 2 L.Ed.2d 1255 (1958); C. Wright, Federal Courts § 90 (1970). Appellant, however, makes the additional argument that here dismissal was too harsh in light of appellant’s repeated efforts to produce Stevenson. Since Rule 37 authorizes the district court to make such orders as “are just”, the choice of means for dealing with the failure to produce Stevenson was within the discretion of the court. Diaz, supra, 427 F.2d at 1126; 8 Wright & Miller, supra, § 2284. Far from abusing their discretion, the district judges who handled this matter demonstrated prolonged patience. When finally dismissed, the case had been pending more than two years and had seen repeated postponements, court orders, and communications among counsel and with the court as appellant endeavored to arrange the deposition. The underlying claim, based upon an alleged latent defect in an engine part, is one calling for preparation and testing by a defendant who is to put on an adequate defense. When the case was dismissed, the trial date was less than three weeks in the future. The dismissal must stand, as it is a reasonable invocation of the machinery provided by Rule 37 to assure that discovery is conducted as contemplated by the Federal Rules of Civil Procedure.

Affirmed.

      . An alternative asserted ground for dismissal, the failure of appellant to produce for inspection and testing parts of the ship’s engine, is not directly relevant to this appeal.

      . The record tells us little about Stevenson’s corporate role other than that he was captain at the time of the loss and was at one time president as well. It thus remains unclear what his status was at the time this action was commenced, during the time that discovery was being sought, or when the action was dismissed. Certainly it would be relevant if the corporation had demonstrated that Stevenson had severed his connections soon after the casualty and the corporation had no effective way of encouraging or compelling his appearance, but appellant has made no such suggestion or showing during the course of this litigation. When invited at oral argument to clear up the confusion, counsel for appellant indicated that Stevenson might still be president and possibly also owner of half of the stock of the corporation. We are unwilling to speculate with regard to an issue which appellant did not raise below and did not present to us, and thus proceed on the assumption that Stevenson’s connection to the corporation continued during the time that discovery was sought.