author: DAVIS, Judge. NICHOLS, Judge

text:
    GILA RIVER PIMA-MARICOPA INDIAN COMMUNITY et al. v. The UNITED STATES.
    Appeal No. 14-72.
    United States Court of Claims.
    April 17, 1974.

      Nichols, J., filed concurring opinion.
    Alfred S. Cox, Phoenix, Ariz., for Gila River Pima-Maricopa Indian Community et al.; Z. Simpson Cox, Phoenix, Ariz., attorney of record. Cox & Cox, L. J. Cox, Jr., George S. Livermore, Stephen L. Cox, Phoenix, Ariz., Ira I. Schneier, C. M. Wright, Samuel P. Goddard, Jr., Tucson, Ariz., Wilkinson, Cragun & Barker, Washington, D. C., of counsel.
    David M. Marshall, Washington, D. C., with whom was Asst. Atty. Gen., Wallace H. Johnson, for the United States.
    Before DAVIS, SKELTON and NICHOLS, Judges.
    ON APPEALS FROM THE INDIAN CLAIMS COMMISSION
   DAVIS, Judge.

These are interlocutory cross-appeals from a ruling of the Indian Claims Commission setting the date of extinguishment of aboriginal title to an area in south-central Arizona previously found by the Commission to have been held by the Pima-Maricopa Indians (see 24 Ind. Cl.Comm. 301 (1970)). Neither side challenges, on these appeals, the extent of the acreage determined to have been held by Indian ownership; the only issue now before us is the date of “taking” (in the non-eminent-domain sense) by the Federal Government.

The Pimas and Maricopas are two distinct tribes who have lived together along the Salt and Gila Rivers, in Arizona, since prehistoric times. Although speaking different languages, the two tribes form one unit for political, social, economic and military purposes, and have long cooperated in their use and occupation of the land. Before contact with whites, the Indians had developed successful irrigation techniques for farming, and had also established permanent villages and cultivated fields along the river banks. In- spite of their generally sedentary nature, they used and occupied a large surrounding area. In an average year, farming produced only about one-half the tribes’ subsistence, and the remainder was obtained by groups which travelled substantial distances to gather wild vegetation and fuel, as well as to hunt and fish, and also for grazing.

This ancestral homeland of the Pima-Maricopas came under United States sovereignty through the Treaty of Guadalupe Hidalgo in 1848 (acquiring from Mexico the portion north of the Gila River), and the Gadsden Purchase of 1853 (south of the river). The Indians were distinguished by their consistently friendly attitude toward whites, before and during the period of American migration and settlement. This characteristic was well known, and was remarked upon in Congress. Cong.Globe, 35th Cong., 2d Sess. 735 (1859) (Sen. Sebastian) .

In 1859, Congress ordered that a reservation not to exceed 100 square miles be established for these two tribes. The specific location was to be determined by a survey (later promptly made) of the existing Pima-Maricopa villages. From 1876 to 1915, the Gila River Reservation was enlarged seven times by Executive Order of the President, the largest single addition coming in 1883 when President Arthur doubled its size from 180,000 to 360,000 acres, bringing it almost to its present-day extent (372,000 acres). (The reservation was at all times much smaller than the aboriginal area awarded below. See note 3, supra.)

During this period, white settlers established themselves in Arizona. The Civil War slowed migration for a while, but thereafter it resumed in good measure.- In 1873 Congress set up the Gila Land District, which included almost all the lands occupied by the Pima-Maricopas.. Act of February 18, 1873, 17 Stat. 465. In the same year, a land office was established at Florence, within the award area. But the finding below was that, by the mid-1880’s, the amount of land patented at the Florence office had only minimal effect on Pima-Maricopa aboriginal title.

Evaluating all the circumstances, the Commission found that the Pima-Mari-copa aboriginal land was “taken” by the United States on the date of the 1883 Executive Order, except for individual tracts entered by white settlers before that time (these tracts were held to have been “taken” at the date of entry). 27 Ind.Cl.Comm. 11 (1972).

Both sides are dissatisfied with the 1883 date. The Pima-Maricopas urge that the land was acquired on a parcel-by-parcel basis through the entry of white settlers, until the establishment of districts under the Taylor Grazing Act of 1934, 48 Stat. 1269, effected (they say) a complete extinguishment of all their remaining Indian title. The Government counters that the Congressional authorization of the 1859 reservation was a clear and complete expression of the legislative purpose to end the Indians’ aboriginal title in all the award area outside the reservation as then contemplated. Alternatively, defendant suggests that the 1873 creation of the Gila Land District is a more logical date than that of the 1883 Executive Order.

The base-line in this area of the law is, of course, the supremacy of Congress over matters of Indian title based on aboriginal possession. United States v. Santa Fe Pacific R. R., 314 U.S. 339, 347, 62 S.Ct. 248, 86 L.Ed. 260 (1941); Oneida Indian Nation v. County of Oneida, 414 U.S. 661 at 670-674, 94 S.Ct. 772, 39 L.Ed.2d 73 (1974); Turtle Mountain Band of Chippewa Indians v. United States, 490 F.2d 935, 945-947, 203 Ct.Cl. - (1974). In Santa Fe, the Supreme Court also admonished against lightly implying extinguishment of aboriginal ownership. 314 U.S. at 354, 62 S.Ct. 248. It is important, too, to recognize, as we stressed in Turtle Mountain Band, supra, the dominating impact of the particular circumstances and particular history in appraising when the specific land was “taken” by Congressional action or authorization.

Applying these guidelines, we cannot accept the Government’s point that the establishment of the Gila River Reservation in 1859 extinguished at that time the Indians’ ownership of all their other lands. The available indices of Congressional intent do not warrant such a conclusion. The provisions setting up the reservation, a rider to an Indian Department appropriations bill, “authorized and required” the President “to cause to be surveyed * * * the tract or tracts of land lying on or near the Gila River, in the Territory of Arizona, New Mexico, now occupied by the confederated bands of Pima and Marico-pa Indians * * * ” and to set aside the surveyed area as a reservation. Act of February 28, 1859, 11 Stat. 388, 401, § 3-4. The reservation was not to exceed 100 square miles. Ibid, § 4. Nothing is said about extinction of Indian title or cutting off the Indians from other territory they were using. The very next section of the statute appropriated $10,000 for “suitable presents to the Pi-mas and Maricopas, in acknowledgement of their loyality to this government and the many kindnesses heretofore rendered by them to our citizens.” Ibid, § 5.

The Senator who proposed the amendment in its initial form spoke of its goals in this way: “to survey off a small reservation which shall embrace [Pima-Maricopa] villages * * *. It is but ordinary justice to secure them the homes on which they reside, and this amendment proposes to go no further.” Cong.Globe, 35th Cong., 2d Sess. 735 (1859) (Sen. Sebastian). A joint conference committee later added the 100-square-mile-maximum provision. In reporting the conference committee recommendations to the House, a Congressman said: “The committee were of the opinion that some section of country should be marked out as their locality. They thought it best, however, to restrict them to a section of country not exceeding one hundred square miles.” Cong. Globe, 35th Cong., 2d Sess., 1407 (1859) (Rep. Greenwood). The same member praised the Pima-Maricopas for aiding white settlement by keeping hostile bands at a distance (perhaps indicating an intention not to confine these Indians strictly on their reservation). Ibid. These and other legislative comments are consistent with a purpose to encompass those Pima-Maricopa lands which embraced and surrounded the then villages, without cutting off the Indians from the additional lands used for hunting, foraging and grazing.

In this connection, the Indian Claims Commission thought it significant that these Indians were friendly and nonno-madic — so friendly and helpful that Congress gave them a special present in the 1859 Act, see supra — and that no attempt was made by the Government to remove or confine them on the reservation, so as to end their use and occupancy of other land. A far more probable design to attribute to Congress was deemed to be the desire to protect Pima-Maricopa villages and the surrounding fields from incursions by white settlers. These are reasonable inferences. As the Commission found, the Pima-Maricopa groups continued to use and occupy lands outside the 1859 reservation, as they had done before, and Government agents with knowledge of this use did not interfere with their activities.

It is revealing, too, that from 1876 to 1915 the President consistently enlarged the reservation, with Congress’s acquiescence, in order to include more and more of the tracts being used and occupied by the Indians. As a result of increased white settlement after the Civil War the Indians’ farming activities suffered through a lack of water, and (as the Commission found) they “began to move their villages and farming activities to other portions of their aboriginal lands * * *. To protect the Pima-Maricopa farm lands in these areas from intrusions by white settlers further portions of their aboriginal lands were reserved by the Executive Orders of August 31, 1876 (1 Kapp. 806) and June 14, 1879 (1 Kapp. 806, 807). Further enlargements of the Gila River Reservation were accomplished between 1879 and 1883 by Executive order.” 27 Ind.Cl. at 18. See, also, for more detail, 24 Ind.Cl. Comm, at 334. On similar grounds the Salt River Indian Reservation of 46,627 acres was created for them by Executive Order in June 1879. These regular increases in the lands formally set aside for the Pima-Maricopas — because the Government recognized that they were continuing to use and occupy those additional areas — are quite inconsistent with defendant’s postulate that Congress abolished their Indian ownership (outside of the original reservation) in 1859 once and for all.

The defendant’s countervailing arguments are not weighty enough to swing the balance in its favor. Various passages in the 1859 Congressional Globe are cited but, even with the greatest hospitality to the Government’s point of view, the Congressional comments at the time the 1859 Act was passed are equivocal at the very best. The same is true of other official observations at the time. Defendant also emphasizes a number of other cases in which the Commission has held the establishment of a reservation to put an end to aboriginal title to land outside, but the opinion below rightly points out that the circumstances in those instances were markedly different.'' There is no Procrustean rule that the creation of a reservation rigidly stamps out aboriginal rights. Cf. Turtle Mountin Band of Chippewa Indians v. United States, supra, 490 F.2d at 945-947, 203 Ct.Cl. at-.

On this point, defendant calls upon the Arizona Supreme Court case of United States v. Certain Property, 1 Ariz. 31, 25 P. 517 (1871), for the holding that establishment of this reservation destroyed Indian title to all other • Pima-Maricopa land. The outcome hinged on whether a certain trading store was located in “Indian country” under the Trade and Intercourse Act of 1834, 4 Stat. 729. The store was within the award area but outside the Gila River Reservation. The court first rests its conclusion on the ground that, since the store was within a white settlement and the establishment of such a permanent settlement is incompatible with Indian title, the store was not within “Indian country”. Thus far, as the claimants say, the Arizona court does not conflict with the Commission’s findings below, because the latter held the date of entry by whites to be the date of taking for settled tracts. But the court goes on to say by way of dictum that “An Indian reservation and an Indian country are so far legal equivalents that the laws of the United States regulating trade and intercourse with the Indians apply alike to both.” 25 P. at 520. As indicated in Turtle Mountain Band, supra, we cannot swallow this concept whole — if it means that Indian title cannot exist outside of a reservation — because the Supreme Court of the United States in Santa Fe, supra, has refused to equate the establishment of a reservation with the extin-guishment of Indian title. Neither does this dictum carry much weight as applicable to this particular reservation; it is unaccompanied by an examination of Congressional intent or an analysis of the circumstances surrounding the creation of the Gila River Reservation.

Defendant also urges that the throwing open of the aboriginal award area to white settlement — including the formation of the Gila Land District and the opening of the Florence office (mentioned above) — shows a belief by the then Government officials that Indian title had been extinguished by the setting up of the 1859 reservation. But surveying an area, or other acts preparing for white settlement, do not of themselves affect aboriginal title. Plamon-don v. United States, 467 F.2d 935, 937-938, 199 Ct.Cl. 523, 528-529, (1972), see also Id., 467 F.2d at 938-939, 199 Ct.Cl. at 530-531 (Davis, J., concurring in part and dissenting in part). The expectation of future parcel-by-parcel settlement would not, alone, extinguish Indian ownership. Cf. Lipan Apache Tribe v. United States, 180 Ct.Cl. 487, 494 (1967). Cases such as Alcea Band of Tillamooks v. United States, 59 F. Supp. 934, 103 Ct.Cl. 494, 560-561 (1945), aff’d, 329 U.S. 40, 67 S.Ct. 167, 91 L.Ed. 29 (1946), and Pillager Bands of Chippewa Indians v. United States, 428 F.2d 1274, 1278, 192 Ct.Cl. 698, 705 (1970), declare no more than that (a) authorized settlement is one factor to be taken into account in determining when Indian title ceased, and (b) “[i]n an appropriate factual context” (as the Commission put it below, 27 Ind.Cl.Comm. at 14) the opening up of an area for settlement can be tantamount to the ending of aboriginal title over the whole region. In the present case, the various factors (including the small percentage of Pima-Maricopa land actually entered) do • not add up to the latter conclusion at any date before 1883.

The wording of the Executive Orders which expanded the reservation has also been noted by the Government as revealing that the issuing Presidents thought that Indian title to non-reservation lands had already been extinguished. Typical phrases are that the described lands are “withdrawn from sale and settlement” or “withdrawn from the public domain”; this language is said to show a belief that the territory was considered to be public land which was then being granted to the Indians. It is much more likely, however, that these verbal formulae reflect the legislative authority the President was acting under. The Pre-emption Act of 1841, 5 Stat. 453, 456, excepted from its operation “ * * * lands included in any reservation, by any treaty, law, or proclamation of the President of the United States.” The wording of the orders simply followed this provision, and should not be read as cryptic support for the defendant’s proffered 1859 date of taking.

Having turned down the Government’s appeal, we come to the Indians’ complaint that the Commission erred in setting the 1883 enlargement of the Gila River Reservation as the “taking” date. Those appellants say that, at least until the Taylor Grazing Act of 1934, the only cutting off of aboriginal title occurred by the individual entries of settlers, tract by tract, onto the land in the award area.

Once it had decided — properly, as we have found — not to accept 1859 as the time of taking, the Commission was faced with a difficult task. Unlike some other cases, there was here no formal cession by the Indians, no express indication by Congress (or its delegate) of a purpose to extinguish at a specified time, and no single act (or contemporaneous series of acts) of the Federal Government which indisputably erased native ownership at one swoop. The Indian appellants say that, in these circumstances, the presumption of the Santa Fe opinion requires the tribunal to hold that there was no general taking at all until some unequivocal action by Congress (such as, they concede but only arguendo, the Taylor Grazing Act of 1934). We think, however, that this is a case in which the history of the award area is such that the Commission could permissibly stop short of an uncontroverted and unmistakable sign from Congress.

The background of the 1859 statute, as we noted above, suggests that that Congress wished to protect just the then-existing Pima-Maricopa villages and fields, not all the territory they were using and occupying in Indian fashion. The later enlargements came about, as the Commission found, because federal officials recognized, from time to time, that the reservation as it existed at such times did not cover or protect land the Indians needed and were using. See footnote 6 and the adjoining text, supra. The Commission also found (24 Ind.Cl.Comm. at 334): “In impressing upon Washington the necessity to enlarge the original 1859 reservation, government agents repeatedly referred to the injustice being done to and the severe hardships being experienced by the Pimas and Marieopas in allowing their tribal land to be taken [by settlers] and irrigation waters to be diverted.” The successive enlargements carried on the process begun by the 1859 Act and were designed to include within the Pima-Maricopa reservations the land which federal officials considered, at those periods, that the Indians were continuing to need, use and occupy.

If the Commission had chosen 1915, the date of the last enlargement when the Gila River Reservation reached its present size, it would perhaps be easier to see more clearly the end to this process of extending the reservation to cover the territory the Government deemed the Indians’ rightful land. The reservation then reached its ultimate form, and in that shape was probably co-terminous with the area then thought by the Government, perhaps wrongly, to belong to the Indians. At that moment, it could be said, the Government called a final halt because in its eyes the Pima-Mari-copa group did not own the territory outside of the reservation, and any Indian claim to it was and should be rejected.

Instead, the Commission chose 1883 when the reservation was doubled (from 180,000 to 360,000 acres), bringing it to within 12,000 acres of the 1915 (and present) size of 372,000 acres. This 1883 addition was about two and a half times the size of the original 1859 reservation (64,000 acres), and with it the' reservation attained about 96-97% of its current extent. Recommending the enlargement, the Commissioner of Indian Affairs reported that the cognizant Indian Agent “says an absolute necessity exists for the enlargement of the reservation to the end that all lands in cultivation by the Indians may be reserved from white settlement, and that the Indians may have ample grazing for their 13,000 ponies. All the land included in the proposed extension is now occupied by the Indians for grazing purposes, their reservation not affording anything like a sufficient range for their stock— horses, ponies and beef cattle — which they own in very large numbers, if we except the latter, which according to the Agent’s report for the present year, number about 1,000. He urges, further, that there are several Indian villages outside the limits of the present reservation, inhabited during the winter season by the Pimas. Being off the reservation during that time, he cannot exercise control over them, either to protect them or punish wrong doing. The tract wanted as an addition to the reserve includes these villages. It also affords a very large supply of mesquit beans upon which the Indians depend almost entirely for their food supply for a period of about two months of every year.” Thus, the 1883 extension was clearly an effort to keep for the Indians the lands they were then occupying and using.

It is relevant, too, in determining the intended impact of this enlargement on aboriginal rights that by that time the settlement of Arizona Territory had increased considerably. “Between 1874 and mid-1880, approximately 140,000 acres were patented at the Florence office. By 1880, Federal census figures show that the population of the entire territory had risen to about 40,000” (from about 9,500 in 1870). 27 Ind.Cl. Cbmm. at 19. The letter of the Commissioner of Indian Affairs urging the 1883 extension was at pains to point out “that no settlers nor ranches will be included in the extension, save only a few trading stores” and the traders “are occupying no lands for agricultural purposes.” It is not far afield to infer that the Government was very aware of the extent and potentiality of settlement at that period.

In the presence of these elements and the absence of any sharp cutting-off date, we hold that the Commission had discretion to choose the 1883 event. We are satisfied that aboriginal title of the whole award area (in land not entered by individual settlers) did not continue undisturbed up until 1934 (or to the present time). At some point in the on-going process, begun in 1859, of carving out for the Pima-Maricopa tribes the lands which were clearly theirs, the Government must have concluded, for itself, that the end had been reached — that the reservations now included everything to which the Indians were properly entitled. But there is no “legal” or mechanical or guaranteed method for fixing an exact date within the time-span commencing with 1859. The determination of the precise point is a matter of judgment, selection, and evaluation, resting on an over-all appraisal of the several facts and factors. There is no text of statute or treaty or other document to supply the answer; nor is there any dispositive judge-created rule of decision. In these circumstances it seems immaterial whether the issue of the taking-date be called one of law, or of fact, or a mixed question; what is critical is that there must of necessity be discretion and leeway to pick a particular date within a reasonable range. As the expert in this field charged with primary responsibility, the Commission is the tribunal to exercise this discretion; all the court can or should do is to oversee and keep it within rational bounds. Cf. Snake or Piute Indians v. United States, 112 F.Supp. 543, 125 Ct.Cl. 241, 254-255 (1953).

We have tested the determination below in this light and cannot find the taint of abuse of discretion or unreasonableness. The combination of circumstances surrounding the massive enlargement of 1883 distinguish it from the prior extensions and those that followed. It was rational to conclude that with that Executive Order the Government believed that all the rightful Pima-Maricopa land was now within the reservations. With respect to the later orders (which added only 12,000 acres, some 3 or 4%), the Commission could allowably view them as minor adjustments in boundaries or as after-thought additions to a reservation considered to have already been fully completed in 1883. These conclusions would lie within the realm of reason.

One- problem remains — an issue not broached by the parties. It is settled that the supreme power to extinguish Indian title is vested in Congress (United States v. Santa Fe R. R., supra, 314 U.S. at 347, 62 S.Ct. 248; Turtle Mountain Band of Chippewa Indians v. United States, supra, 490 F.2d at 945-947, 203 Ct.Cl. at-; cf. Oneida Indian Nation of New York v. County of Oneida, 414 U.S. at 661, 94 S.Ct. 772 (1974), but the 1883 enlargement was the result of an Executive Order of the President. His act was, however, both authorized and ratified. Congress later impliedly ratified the Presidential action by appropriating funds for the maintenance of the enlarged reservation. See, e. g., Act of July 4, 1884, 23 Stat. 76, 93; Act of March 3, 1885, 23 Stat. 362, 363, 379. And, as we noted supra, the President had authority in the Pre-emption Act of 1841 to establish and enlarge Indian reservations in order to prevent white encroachment on tribal lands. In the context of this history, it is proper to imply a Congressional delegation of some of its plenary power over Pima-Maricopa affairs to the executive branch (which clearly took the major initiative here), and likewise to find Congressional ratification of the 1883 extension.

For these reasons, the orders and determinations of the Indian Claims Commission, insofar as appealed from, are

Affirmed.

NICHOLS, Judge

(concurring):

I join in the opinion and judgment of the court, with the caveat that in my view nothing happened in 1883 that could have constituted a taking of these Indians’ heritage, at least not in the traditional eminent domain sense. In a true Fifth Amendment case such looseness in fixing a taking date would be unacceptable, even though at times it must be a jury verdict sort of thing as to the exact hour. Drakes Bay Land Co. v. United States, 424 F.2d 574, 191 Ct. Cl. 389 (1970). Here, however, we are not talking in an eminent domain sense and we are dealing with an “extinguishment” of aboriginal title rather than a true taking. The idea that the Commission has a broad discretion to choose among a number of conceivable dates, in the situation we have here, has the sanction of necessity. An extinguishment date we must have. Yet the truth is, we know the Indians once had their 3,751,000 acres and by 1946, by common understanding, had them no longer, but when they lost them defies determination. The United States was acting, it was at all times supposed, with undeviating benevolence. The idea of expropriation was never entertained, yet in a fit of absentmindedness the deed was somehow done.

I have urged elsewhere that the Indian Claims Commission Act of 1946, 25 U.S.C. § 70 and ff, vests the Commission with jurisdiction over all possible pre1946 Indian claims and discretion to fashion a monetary remedy whenever the claim has appeal to the moral sense. (Dissenting in Fort Sill Apache Tribe v. United States, 477 F.2d 1360, 201 Ct.Cl. 630 (1973).) The use of average, composite, or jury verdict taking dates is an accepted example of the powers the Commission has. United States v. Northern Paiute Nation, 490 F.2d 954, 203 Ct.Cl.- (1974). The Commission is not a court but a body in the executive branch. The task of righting Indian wrongs was characterized long before the 1946 Act as not judicial but political. United States v. Choctaw Nation, 179 U.S. 494, 21 S.Ct. 149, 45 L.Ed. 291 (1900). Under the Act the task is made to look primarily judicial, but management rather than adjudication must occasionally be the dominant theme. They must at times adjudicate the unjustieiable. We must approach our tasks of judicial review with our minds wary of legalisms and tolerant of the compromises legalism must make if these ancient wrongs are to be settled in any of our lifetimes. Our decision herein satisfies me on these stated grounds.

      . In giving the background, we borrow from the opinion and findings of the Indian Claims Commission in the prior phase of the case (24 Ind.Cl.Comm. 301 (1970)), without prejudice to whatever right the parties may have to dispute those rulings and findings in a later appeal or aspect of the case. The briefs of neither side challenge, on the present appeals, any of the Commission’s subsidiary findings as unsupported by substantial evidence.

      . “Pima” can refer to other Indian tribes, and is in addition descriptive of a linguistic group. The specific Indians involved here are the Gila River Pimas, also known as Gi-lenos.

      . The Commission found, in the earlier proceeding, that they exclusively used and occupied a region of some 3,751,000 acres (the award area). This figure is not challenged on these appeals.

      . The first land office in what is now Arizona had been established a few years earlier at Prescott.

      . By the mid-1880’s about 140,000 acres had been patented at Florence. The aboriginal award area determined below was 3,751,000 acres in size. See note 3, supra. Even assuming that all tracts patented at Florence were in Pima-Maricopa country, this amounts to a disposition of less than 4% of their territory.

      . The Commission found (24 Ind.Cl.Comm. at 333) : “From its inception the original reservation was objected to by the Pimas and Maricopas because it did not encompass all of their fields, villages or fishing areas. It further restricted their access to irrigation waters and it did not include pasture land for their stock. The reservation did not include the broad Gila and Salt River Valleys which they had always considered to be their tribal lands.”

      . We do not pass upon the correctness of those earlier decisions on their own facts but merely note our concurrence with the Commission that, in any event, the situations presented there were not at all the same as here.

      . For the same reasons, we reject the Government’s secondary argument that, if the 1859 date is unacceptable, the establishment of the Gila Land District in 1873 should be selected as the time of taking. The District, at most, indicated the prospect and expectation of future white settlement, not a definite, present intention to abolish remaining Indian title.

      . The Commission held and the Indians agree that, for the period up to 1883, their ownership was abolished as to individual tracts on the date of entry, even if prior to 1883.

      . We are not, of course, holding that the Government’s view was correct.

      . The Pre-emption Act was extended to cover this territory by § 7 of the Act of July 22,1854, 10 Stat. 308.

      . In a distinctively different statutory and factual context, other legal consequences may follow from executive action with reference to reservations. See United States v. Santa Fe R.R., supra; Turtle Mountain Band of Chippewa Indians v. United States, supra.


source: Caselaw Access Project

author: WORLEY, Senior Judge.

license: Public Domain

text:
    CONTINENTAL NUT COMPANY, Appellant, v. LE CORDON BLEU, S.a.r.l., Appellee.
    Patent Appeal No. 9251.
    United States Court of Customs and Patent Appeals.
    April 25, 1974.
    Robert H. Eckhoff, San Francisco, Cal., John F. Smith, Arlington, Va., attys. of record, for appellant.
    Wm. C. McCoy, Jr., Cleveland, Ohio (Bosworth, Sessions & McCoy, Cleveland, Ohio), atty. of record, for appellee. Frank C. Henry, Cleveland, Ohio, of counsel.
    Before MARKEY, Chief Judge, BALDWIN, LANE and MILLER, Judges, and WORLEY, Senior Judge.
   WORLEY, Senior Judge.

Appellant, Continental Nut Company, seeks registration of “CORDON BLEU” as a trademark for edible shelled nuts. Appellee, Le Cordon Bleu, S. a. r. 1., a French corporation, opposes on its registrations of “LE CORDON BLEU” for educational services — namely, courses and lectures in cooking and oenology; and for magazines relating to culinary, gastronomic, and oenologic matters. The Trademark Trial and Appeal Board sustained the opposition on the basis of a likelihood of confusion. The parties have submitted the case on the record and briefs. We affirm.

Appellant seeks to avoid the board’s holding of likelihood of confusion by relying on the fact that it is the owner of the prior incontestable registration of “BLUE RIBBON” for “shelled and un-shelled edible nuts.” Relying on More-house Manufacturing Corporation v. J. Strickland and Company, 407 F.2d 881, 56 CCPA 946 (1969), appellant asserts it has a “right” to register the foreign equivalent of its registration for the same goods. In the aforementioned case, Morehouse opposed Strickland’s application for registration of “Blue Magic” for “pressing oil” and petitioned for cancellation of Strickland’s registration of the same mark for “hair dressing,” which was “the same product.” In finding for Strickland in both proceedings, the court commented that “the board took the proper approach in first determining the cancellation and then dismissing the opposition, on the basis of the cases relied on, for the reason that the opposer cannot suffer legal damage from the additional registration, over and above any damage it may suffer from the existing registration.”

The board here agreed that “Cordon Bleu” can be translated literally as “Blue Ribbon” but it did not consider that controlling, stating:

What does “Cordon Bleu” really mean to the American public and what does “Blue Ribbon” mean? The French term is not so unusual to the American public because it is defined in American Dictionaries. Funk & Wagnalls New Standard Dictionary of the English Language defines that term as “the blue ribbon of the order of the Holy Ghost, the highest order of the old French monarchy”, and as “a person regarded as entitled to a badge of eminent distinction; specif., a first class cook, particularly a woman cook.” Webster’s Third New International Dictionary, 1965, similarly defines the term “Cordon Bleu” and indicates the applicability of said term to a cook of great skill.
The term “Blue Ribbon” figuratively refers to an honor or award gained for prominence and, literally, signifies a blue ribbon awarded the first place winner in a competition. See: The American College Dictionary, 1970; Webster’s World Dictionary of the American Language 1966; Webster’s Seventh New Collegiate Dictionary, 1963; Funk & Wagnalls New Standard Dictionary of the English Language, supra; and Webster’s Third New International Dictionary, supra.
On the basis of dictionary definitions, we are of the opinion that “Blue Ribbon” and “Cordon Bleu” would not have the same significance to the American public and that the marks “BLUE RIBBON” and “CORDON BLEU” create different commercial impressions. We conclude, therefore, that the ownership of a registration of “BLUE RIBBON” for edible nuts does not preclude opposer from asserting damage resulting from the registration of “CORDON BLEU” for edible nuts.

Turning to the question of likelihood of confusion the board said:

“While it is true that applicant seeks registration of its mark for edible nuts whereas opposer’s mark is registered for a service and a magazine, it is apparent from the record that both parties direct their efforts to the same type of people — those interested in fine cooking. It is further apparent that those interested in French cooking are aware of the reputation of “LE CORDON BLEU” as a cooking school. While such persons may well be aware that opposer does not sell goods in the United States, they may logically assume that a famous cooking school will endorse certain products. If such a product is sold under a mark identical to or substantially identical to opposer’s service mark, such persons would well assume that the product has opposer’s sanction or approval. In this particular case, the marks are virtually identical, and since applicant’s mark is for an edible product described as “gourmet cooking nuts”, the public may readily come to the conclusion that applicant’s edible nuts are endorsed by the well-known school of French cooking, “LE CORDON BLEU”.

We agree with the board that the Morehouse case does not preclude appel-lee from asserting that damage would result from granting appellant a registration of the mark “CORDON BLEU.” That mark is not essentially the same as appellant’s previously registered mark, as was the case in Morehouse7 Moreover, appellant has not demonstrated that the board erred in finding “CORDON BLEU” has a significance to the American public distinct form that of “BLUE RIBBON.”

The case turns then on the question of likelihood of confusion. On that point, we find no reversible error in the board’s reasoning quoted above. The decision of the board is affirmed.

Affirmed.

      . Serial No. 329,636 filed June 11,1969 alleging first use in commerce on June 5,1969.

      . Reg.No. 786,557, registered March 9, 1965.

      . Reg.No. 786,430, registered March 9, 1965.

      . Reported at 177 USPQ 734 (TTAB 1973).

      . Reg.No. 717,280, registered June 20, 1961, affidavit Sec. 8 accepted, affidavit Sec. 15 received.

      . Such a finding precludes application of the doctrine of “foreign equivalents.” McCarthy, Trademarks and Unfair Competition § 23:14 (1973).

      . The record in Morehouse reveals that the mark shown in the Strickland application had a star over the “i” in “Magic” instead of the dot shown in its registration.

      . See the ease of Continental Nut Company v. Cordon Bleu Limited, Cust. & Pat.App., 494 F.2d 1397, decided this date,


text:
    CONTINENTAL NUT COMPANY, Appellant, v. CORDON BLEU, LTEE, Appellee.
    Patent Appeal No. 74-529.
    United States Court of Customs and Patent Appeals.
    April 25, 1974.
    Robert H. Eckhoff, San Francisco, Cal., John F. Smith, Arlington, Va., at-tys. of record, for appellant.
    C. Willard Hayes, Washington, D.C. (Cushman, Darby & Cushman, Washington, D.C.), atty. of record, for appellee.
    Before MARKEY, Chief Judge, BALDWIN, LANE and MILLER, Judges, and WORLEY, Senior Judge.
   WORLEY, Senior Judge.

Appellant, Continental Nut Company, seeks registration of “CORDON BLEU” as a trademark for edible shelled nuts. Appellee, Cordon Bleu, Ltee, a Canadian corporation, opposes on its prior incontestable registrations of “CORDON BLEU” for certain named canned meat products adapted for use as spreads, tomato spread, páté de foie, and canned whole chicken; and for sugar, peanut butter, miscellaneous named canned goods, and certain named condiments and sauces. The Trademark Trial and Appeal Board sustained the opposition. The parties have submitted the case on the record and briefs. We affirm.

Appellant is the owner of an incontestable registration of “BLUE RIBBON” for “shelled and unshelled edible nuts.” The board rejected appellant’s contentions that it is entitled to the registration of the mark “CORDON BLEU” because this mark can be translated from the French as “BLUE RIBBON” and that, under Morehouse Manufacturing Company v. J. Strickland and Company, 407 F.2d 881, 56 CCPA 946 (1969), the appellee cannot be damaged by issuance of the registration sought. In so doing, the board stated:

•» * * notwithstanding that “CORDON BLEU” can be literally translated as “BLUE RIBBON,” the marks in the United States project different impressions and would not be likely to be equated as identical expressions. The board noted that it had sustained

an opposition against the same application in a previous decision and quoted from its opinion wherein it decided that Morehouse was not applicable to the facts of this case. The appeal of that decision is decided by this couft of even date herewith. ’*

Turning to the question of likelihood of confusion, the board concluded:

The products of the parties are food items which applicant, in its answer to opposer’s request for admissions, has acknowledged are generally sold [to] the same classes of purchasers in the same retail outlets including in the ease of applicant’s edible nuts and opposer’s various spread products in the snack food sections of self-service markets. Under these circumstances, conditions do exist where the sale of these products under the identical mark “CORDON BLEU” is likely to cause purchasers encountering the products of the parties to attribute them to the same, although possibly anonymous, source, [footnote omitted].

Appellant’s reliance on its registered mark “BLUE RIBBON” is misplaced. In Morehouse, the mark “Blue Magic,” which the court held registerable, was essentially the same mark for which the applicant held an incontestable registration. For the same reasons set out in our opinion of this date in appeal PA 9251, the mark “CORDON BLEU,” which appellant seeks to register here, is not essentially the same as its registered mark “BLUE RIBBON,” so Morehouse is not applicable.

Concerning the issue of likelihood of confusion, we agree fully with the conclusion of the board quoted above.

The decision is affirmed.

Affirmed.

      . Serial No. 329,696 filed June 11, 1969 alleging first use in commerce on June 5, 1969.

      . Reg.No. 532,003 registered Oct. 17, 1950.

      . Reg.No. 660,848 registered April 22, 1958.

      . Digest at 180 USPQ 205 (TTAB 1973).

      . Registration No. 717,280 registered June 20, 1961 on an application filed October 24, 1960, affidavit Sec. 8 accepted, affidavit Sec. 15 received.

      . Le Cordon Bleu, S.a.r.l. v. Continental Nut Company, 177 USPQ 734 (TTAB 1973).

      . Continental Nut Company v. Le Cordon Bleu, S.a.r.l., Oust. & Pat.App. 494 F.2d 1395.


author: ALMOND, Senior Judge.

text:
    Application of Melton T. PEARSON.
    Patent Appeal No. 9226.
    United States Court of Customs and Patent Appeals.
    April 25, 1974.

      Geoffrey R. Myers, Bethesda, Md. (Moore & Hall, Washington, D. C.) attorney of record, for appellant.
    Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents; Fred E. McKelvey, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, RICH, MILLER and LANE, Judges, and ALMOND, Senior Judge.
   ALMOND, Senior Judge.

Appellant brings this appeal from a decision of the Patent Office Board of Appeals that affirmed the examiner’s rejection of claims 59-79 and 83-86 in his application entitled “Novel Compositions and Methods of Use.” The parties have submitted the case on the record and briefs. We affirm in part and reverse in part.

The Invention

Appellant’s invention relates to a composition and its use to inhibit the formation of “pops” and “unsound kernels” during the growth of a peanut crop. According to the record, the term “pops” refers to peanut shells in which no peanut has developed at maturity. By contrast, the term “unsound kernel” is used to describe the condition in which the peanuts that do develop within the shell are small and malformed. An extensive occurrence of either defect significantly reduces the value of a peanut crop.

An adequate summary of the prior art method for avoiding pops and unsound kernels is set forth in the following extract from appellant’s specification:

Although the exact biological reason for the formation of “pops” and unsound kernels is not known at the present time, it was known as early as 1800 that if the earth surrounding a peanut plant is treated with some form of calcium-containing compound the problem of “pop” and unsound kernel formation could be materially reduced. In recent years this land treatment has been refined to a highly sophisticated degree. Such a treatment is currently referred to by those in the industry as landplastering. Landplastering as used today consists of spreading large quantities of an inorganic calcium salt (e.g. CaO, CaCC>3 and preferably CaSCL) on the ground surrounding the peanut plant. Experts in the use of this landplaster technique advocate the criticality of both the time and place at which the calcium salt must be applied if the technique is to be effective. Generally speaking, current expert opinion is that to be at least operative and at best, effective, the calcium salt must be applied at early bloom to the soil at the base of the plant in order to insure that calcium is present at the points of pegging when it occurs. This is usually accomplished by applying a 16-inch band of the salt to the soil centered over the plant row. As is well known, “pegging” is a term used in the peanut industry to describe that process which occurs wherein the bloom-shoots of a peanut plant bend downward from their basically upright position and seek entry into the earth to thereby form “pegs” in the earth from which peanut pods will grow. Although such landplaster techniques have proved useful in diminishing the problem of “pop” and unsound kernel formation, they do require the use of large quantities of the calcium salt and thus result in high costs. For example, it has been found that in most peanut producing areas, about 500 to 1000 lbs. per acre of the preferred compound gypsum (commercially available CaSCL, having particle sizes of about 100 to 200 microns), must be applied to the soil in order to substantially eliminate the formation of “pops” and unsound kernels by landplaster techniques. For most other calcium salts equal or greater amounts per acre are required to achieve the same results.

Appellant’s invention, which also involves the use of calcium compounds to reduce the occurrence of pops and unsound kernels, is summarized in the specification as follows:

The basic composition as contemplated by this invention is comprised of a calcium-containing compound of reduced particle size. By reduced particle size is meant, particles having a size of about 20 microns or less, preferably of submicron size. Such basic compositions may be in dust, powder, slurry, or other conventional form. Preferably such compositions also include fungicides, insecticides, herbicides, and mixtures thereof.
The novel techniques as contemplated by this invention generally comprise contacting the foliage of a peanut crop with the above described compositions to thereby reduce the number of “pops” and unsound kernels formed in a particular peanut crop. In most instances, from about 15 to about 80 pounds per acre of a calcium-containing compound having a particle size of about 20 microns or less, preferably of about 2 microns or less, and most preferably of sub-micron size, and preferably from 20 to 75 pounds per acre, are all that is necessary to apply to the foliage of a peanut crop in order to substantially eliminate the problem of “pops” and unsound kernels.

According to the specification, the preferred calcium compound is calcium sulfate (CaS04), especially in the form of its naturally occurring dihydrate (CaS04.2H20) known as gypsum.

Composition claim 59 and method claim 75, both of which are reproduced below, are representative of the claims on appeal.

59. An anti-pop and unsound kernel peanut foliage preparation for reducing pops and unsound kernels in peanut plants comprising, as an active ingredient, a calcium-containing compound of a sufficiently small particle size which when applied to the foliage of a peanut crop will substantially reduce the formation of pops and unsound kernels.
75. A method of treating a peanut crop comprising applying to the foliage of said peanut crop a sufficient amount of a composition comprised of, as an active ingredient, a calcium-containing compound having a sufficiently small particle size to substantially reduce the formation of pops and unsound kernels.

The remaining composition claims add one or more limitations. These limita-tins include requirements that the calcium compound be CaS04 and that the average particle size be less than 20 microns, or even submicron (less than 1 micron) in size. Other limitations require that the composition include a glycol ether, lignin sulfonate or a fungicide and that the composition have sufficient calcium compound so that it can be applied at the rate of 15-80 pounds per acre.

The method claims closely parallel the composition claims in format in that they specify foliage treatment with a composition generally as set forth in the composition claims. Two of these claims, 84 and 85, require separate consideration. Claim 84 is directed to a method wherein the composition used contains a fungicide.

Claim 85 stands in a somewhat different posture in that it is an attempt to define a method of treatment as an improvement to the conventional landplas-tering process described supra. Claim 85 reads as follows:

85. In the method of treating a peanut plant by applying to the soil at the point of pegging, a layer of a calcium-containing compound, the improvement which comprises, the additional application, but to the foliage of said peanut plant, of a composition containing, as an active ingredient, a calcium-containing compound having a particle size less than about 20 microns such that, upon the application of said active ingredient to the surfaces of the foliage of the peanut plant, said active ingredient is introduced into the structure of said plant, the combined application both to the soil and to the surfaces of the foliage of the peanut plant being in an amount and at a rate per acre of said crop sufficient to reduce the formation of peanut pops and unsound kernels in the peanuts yielded by said crop.

The board reversed the examiner’s rejection of method claims which call for applying to the peanut plant a composition wherein either a glycol ether or lignin sulfonate is used in combination with the calcium compound.

Opinion

The examiner’s rejection of the claims in issue finds its statutory basis in 35 U.S.C. § 103. However, the board interpreted the examiner’s reasoning, accurately we think, as setting forth as one ground for the rejection that the claims did not define novel subject matter. The board affirmed the rejection on this ground.

Of course, a rejection such as that sustained by the board would normally be based upon one of the applicable subsections of 35 U.S.C. § 102. However, this court has sanctioned the practice of nominally basing rejections on § 103 when, in fact, the actual ground of rejection is that the claims are anticipated by the prior art. See In re Dailey, 479 F.2d 1398 (Cust. & Pat.App. 1973). The justification for this sanction is that a lack of novelty in the claimed subject matter, e.g., as evidenced by a complete disclosure of the invention in the prior art, is the “ultimate or epitome of obviousness.” In re Kalm, 378 F.2d 959, 962, 54 CCPA 1466, 1470 (1967)

The solicitor suggests that we resolve this case by first determining whether the claims define novel subject matter and, if one or more do, then determine whether unobvious subject matter is set forth. In order to facilitate our discussion of these questions, we shall separately consider the merits of the rejection as applied to the composition and method claims.

The Composition Claims

The board interpreted the composition claims as reading on compositions that include a calcium compound of small particle size and held that such compositions were described in the prior art. The prior art of record applied against these claims consists of several British patents and a portion of Kirk-Othmer, Encyclopedia of Chemical Technology, John Wiley and Sons, N.Y. (1964). There is no need to discuss this prior art in view of the following admission by appellant and summary of his position taken from his brief before the board and main brief in support of this appeal:

Applicant readily admits that calcium containing compounds have been ground to particle sizes within the range of even his preferred peanut foliage preparation and that such compounds have often been employed in combination with insecticides, lignin sulphonate and/or glycol ethers. Despite this admission, applicant respectfully submits that, as a matter of law, one cannot ignore the remainder of the limitations in the claims, which limitations render the claims clearly patentable over the art.

In view of this admission, the board considered the claims to be fully met by the prior art. The board reasoned, despite appellant’s assertions to the contrary, that terms in the claims such as “for reducing pops and unsound kernels in peanut plants,” and “when applied * * -x- wili substantially reduce the formation of pops and unsound kernels,” do not provide limitations by which the claimed composition is distinguished from those known to the prior art. On this appeal, appellant continues to assert that these and similar terms are limitations which define a novel composition. We disagree.

These terms merely set forth the intended use for, or a property inherent in, an otherwise old composition. As the board pointed out, such terms do not differentiate the claimed composition from those known to the prior art. See Kropa v. Robie, 187 F.2d 150, 38 CCPA 858 (1951) ; In re Lemin, 326 F.2d 437 51 CCPA 942 (1964), and In re Zierden, 411 F.2d 1325, 56 CCPA 1223 (1969).

It seems quite clear to us that one of the compositions admitted to be old by the appellant would not undergo a metamorphosis to a new composition by labeling its container to show that it is a composition suitable for treating peanuts to avoid the formation of pops and unsound kernels. See In re Lemin, supra. The container would still contain the old composition.

We do not mean to imply that terms which recite the intended use or a property of a composition can never be used to distinguish a new from an old composition. However, assuming their compliance with the definiteness requirement of the second paragraph of 35 U.S.C. § 112, such terms must define, indirectly at least, some characteristic not found in the old composition. For example, if calcium compounds of very small particle size had not been known to the prior art, then a term defining the particle as being of a size which “when applied to the foliage of a peanut crop will substantially reduce the formation of pops and unsound kernels” might be capable of distinguishing the new composition from the old.

However, as pointed out above, calcium compositions of small particle size containing the types of additives claimed by appellant were known to the prior art. Accordingly, we will affirm the board’s decision relative to composition claims 59-74.

The Method Claims

The essence of the board’s reasoning in sustaining the rejection of method claims 75-79, 83, 85 and 86 is that, in its view, the claimed process is inherent in the prior art landplastering process. Claim 84 was treated somewhat differently by the board and will be discussed infra.

The board’s conclusion regarding the inherency of the claimed process wasi based upon two factual determinations with which we are in full agreement. Firstly, it observed, from evidence submitted by appellant, that conventional landplastering compositions typically contain a high percentage (in most cases around 50%) of the calcium compound having a particle size of less than 24 microns. It will be recalled that appellant’s specification states that particles of about 20 microns or less are effective in his invention. In one instance, the prior art composition contained nearly 40% of particles of 10 microns or less.

Secondly, the board observed that, in the landplastering process as taught by the prior art, the calcium compound was applied over the leaves of the peanut plant even though the objective was to have as much of it as possible fall to the ground.

In view of these facts, the board correctly concluded that the prior art land-plastering process would result in the application to peanut foliage of a calcium compound having a particle size of 20 microns or less. In this regard we think it worth noting, as did the board, that the claims are not written in a way that would exclude the use of a calcium-containing composition having relatively large particles in addition to particles of less than 20 microns in size.

Accordingly, we will affirm the board’s decision insofar as it applied to method claims 75, 77, 78, 79 and 85. It may very well be that appellant has made a patentable invention. However, in our view these claims are so broadly written as to read upon the prior art landplastering process. In reaching this decision we have considered the argument made by appellant that claim 85 is intended to read upon a process whereby a foliar application of a calcium composition of small particle size is made subsequent to a conventional landplastering operation. However, we agree with the board that this is but one possible interpretation and that claim 85 can be interpreted as calling for a simultaneous application of a calcium composition to the ground and leaf of the peanut plant and as such reads on the landplastering process.

During the prosecution of a patent application, claims are to be given the broadest reasonable interpretation. See In re Prater, 415 F.2d 1393, 56 CCPA 1381 (1969) and In re Finsterwalder, 436 F.2d 1028, 58 CCPA 871 (1971).

We do not agree with the board’s decision that claims 76, 83 and 86 define peanut treating processes that are inherent in the landplastering process. Each of these claims defines a process using a calcium composition having particles submicron (less than 1 micron) in size. However, the evidence of record relating to the particle size of compositions sold for use in landplastering operations shows that none of those compositions analyzed contained particles less than 1 micron in size. Furthermore, even though the record does establish that calcium compounds of less than 1 micron in size were known to the prior art, it in no way indicates that these compositions were used to treat peanut plants.

For his part, the solicitor urges that the subject matter of these claims, if not anticipated, would have been obvious. His reasoning is that:

The examiner held * * * that it would be obvious to determine the optimum particle size. * * * Inasmuch as calcium compounds having a wide variety of particle sizes have been used for appellant’s purpose and calcium compounds of submicron size are old, it would be prima facie obvious to use calcium compounds of submicron size for appellant’s purpose.
There is no objective evidence, as noted by the examiner, comparing the use of calcium compounds having particle sizes of greater than one micron with those of less than one micron. It follows that appellant has failed to overcome the prima facie case of obviousness made out by the examiner.

We do not agree with the solicitor that the board should be affirmed for these reasons. In our opinion the alleged prima facie case of obviousness was never established. The optimization of particle size would necessarily have been in regard to the landplastering process as known to the art. Of course, the object there would have been to get as much calcium compound as possible on the soil, since the record establishes that it was thought that the calcium had to be taken into the peanut plant from the soil.

Bearing in mind these prior art teachings, we agree with appellant that one skilled in the art would, if anything, go to a larger particle size in order to limit retention on the leaf during the landplastering operation. Accordingly, it was not necessary that appellant present evidence of unexpected results or other facts which might serve to rebut a prima facie case of obviousness. Therefore, the rejection of claims 76, 83 and 86 is reversed.

Claim 84 was not considered by the board to be inherent in the prior art landplastering process. Instead, the board acknowledged that a combination of a calcium composition and a fungicide was not directly taught in the art relied upon by the examiner. However, the board did take notice of the “ * '* * widespread use of soil fungicides * * * ” and held that it would be at least prima facie obvious to apply such a fungicide with a calcium composition during a landplastering operation.

Appellant does not argue that the notice by the board was improper, but urges that the board erred in its conclusion that to use a fungicide in the landplastering operation would be obvious. The argument put forth in the brief in support of this assertion seems to be premised on the notion that the only fungus to which peanut plants are susceptible is a leaf fungus, called leaf spot. Therefore, to admix fungicide with the calcium composition used in landplastering would, in appellant’s view, be a great waste of fungicide since most of it would end up on the ground.

The fatal defect in this argument is that there is no competent evidence which would negate the board’s conclusion that the elimination of soil fungi could be the object of one skilled in the art rather than a leaf fungus. Attorney’s argument in a brief cannot take the place of evidence. In re Cole, 326 F.2d 769, 51 CCPA 919 (1964). For this reason, the rejection of claim 84 is affirmed.

In summary, the rejection of claims 59-75, 77-79, 84 and 85 is affirmed. The rejection of claims 76, 83 and 86 is reversed.

Modified.

      . Serial No. 801,855 filed February 24, 1969 as a continuation-in-part of application Serial No. 748,217 filed July 29,1968.

      . The record establishes that appellant was fully aware of the ground of rejection being put forth regardless of its statutory basis. Furthermore, the board, in affirming the rejection under § 103, did not in effect make a new rejection under § 102 as occurred in In re Echerd, 471 F.2d 632 (Cust. & Pat. App.1973).

      . Of course, if tbe only ground for the rejection made under § 103 is that the claims are anticipated, it would be improper to consider arguments directed to showing that the claimed subject matter would have been obvious were we to reverse the ground of rejection actually made. In re Wiggins, 488 F.2d 538 (Cust. & Pat.App.1973).


author: MILLER, Judge.

text:
    Application of Jaap E. NABER and Fritz M. Dautzenberg.
    Patent Appeal No. 9192.

    United States Court of Customs and Patent Appeals.
    April 25, 1974.
    Leonard P. Miller, Houston, Tex., attorney of record, for appellants.
    Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents. Robert D. Edmonds, Washington, D. C., of counsel.
   MILLER, Judge.

This is an appeal from the decision by the Patent Office Board of Appeals affirming the examiner’s rejection under 35 U.S.C. § 103 of claims 1-6, 8-10, 12, and 13 — all the claims in application serial No. 842,025, filed July 15, 1969, for “Process for Regeneration of Sulfur Oxide Acceptors.” We reverse.

THE INVENTION

Sulfur oxides are removed from gas mixtures, such as flue gases and gases originating from roasting processes, by contact with metal or metal oxide acceptors, such as copper or copper oxide, on a refractory carrier material (e. g., alumina). During contact, sulfur oxides are accepted by the copper or copper oxide, so that the purified gases, if discharged via a stack, cause substantially no air pollution. The copper sulfate formed during acceptance may be subsequently decomposed by means of a reducing gas, the result being a regenerated acceptor and a sulfur dioxide-rich gas, which can be used, for example, to produce elemental sulfur or sulfuric acid. The regenerated acceptor can then be reused to purify a further quantity of gas containing sulfur oxides.

Suitable reducing gases for regenerating such supported metal acceptors in-elude hydrogen, carbon monoxide, and methane. Higher molecular weight hydrocarbons, such as propane and butane, can also be used as the reducing gas; however, according to appellants, these form combustible deposits on the acceptor during the regeneration process. The combustible deposits are undesirable since their combustion during use of the regenerated acceptor causes a significant increase in temperature which adversely affects the acceptor life. The primary objective of the invention is to provide a process in which only minor quantities of combustible material are deposited on the acceptor.

The combustible deposits can be significantly decreased if the higher molecular weight hydrocarbon reducing gas is mixed with an inert diluent, such as steam, in a volume ratio to the hydrocarbon of 0.2:1 to 20:1. This decrease is demonstrated in appellants’ specification by the reduced temperature increase during reuse following regeneration with the claimed diluted hydrocarbons compared to that which occurred when regeneration was effected with undiluted hydrocarbons.

In addition, it is disclosed that the inert diluent has no appreciable effect on the amount of hydrocarbon required for regeneration of metal acceptors so that the regeneration rate (based on the sulfur dioxide content of the spent reducing gas) for undiluted hydrocarbons and the claimed diluted hydrocarbons is substantially the same.

Claim 1 is representative:

1. A process for the regeneration of a sulfur oxide-loaded acceptor obtained by contacting a sulfur oxide- and oxygen-containing gas mixture with a solid acceptor of a solid refractory carrier material composited with a metal or a metal compound capable of taking up sulfur oxides, which comprises treating said loaded acceptor at a temperature of 200 °C to 500 °C with a reducing gas comprising an inert diluent and a hydrocarbon in a volume ratio of 0.2:1 to 20:1, said hydrocarbon having at least three carbon atoms per molecule; and removing a sulfur dioxide-containing spent reducing gas.

OPINION

The referenced patent to Van Helden et al. (Van Helden) discloses a metal acceptor regeneration process employing a hydrocarbon reducing gas, such as propane or butane. There is no indication that combustible deposits are encountered when employing such heavier hydrocarbon reducing gases as propane or butane. Although not expressly disclosed, a small portion of inert diluent (steam) will necessarily be present during regeneration as a result of the disclosed partial combustion of the reducing gas. Herein lies a critical difference from the claimed invention which expressly requires a higher amount of inert diluent (steam) to be mixed with the reducing gas.

The referenced British patent discloses a regeneration process for carbon acceptors employing a lower aliphatic hydrocarbon reducing gas, such as methane. It is stated that the addition of 1% by weight of steam raises the regeneration rate; that test data show addition of about 10% trebles the regeneration rate. The steam may be generated in situ by partial combustion of the reducing gas or added as such.

The position of the Patent Office is that one of ordinary skill in the art at the time appellants’ invention was made would be led to such invention by adding steam, as taught by the British patent (carbon acceptors) to the regeneration process of Van Helden (metal acceptors) in order to increase the rate of regeneration, sulfur compounds being reduced during regeneration in both processes. Although this court has referred to a similar combination of references as a “prima facie case,” we believe it more precise here to say that the differences between carbon acceptors, which operate by a process of physical absorption and are regenerated by a process of desorption, and metal acceptors, which utilize a chemical reaction during both the accepting and regenerating phases, is such as to cast doubt on the Patent Office position. As in the case of so-called “secondary considerations,” such as commercial success and superior results, all evidence before the Patent Office is to be considered in resolving that doubt. Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966) ; In re Tiffin, 443 F. 2d 394, 58 CCPA 1277 (1971); In re Lindell, 385 F.2d 453, 55 CCPA 707 (1967).

It is to be noted that the only motivation presented by the Patent Office, and the only one readily apparent, for modifying Van Helden according to the teachings of the British patent is the latter’s demonstration of an increased regeneration rate accompanying an increase in the amount of steam. However, the evidence in appellants’ specification, namely, data which show that use of steam has no appreciable effect on the rate of regeneration of metal acceptors, demonstrates that the motivation advanced by the Patent Office is misplaced.

Morever, the record contains no evidence that those skilled in the art were aware of the problem of combustible deposits, the solution to which is the primary objective of appellants’ invention. Therefore, even if one of ordinary skill in the art were moved to combine the references, there would be no recognition that the problem of combustible deposits had been solved. Having sought an increased regeneration rate for metal acceptors without success, the experiment would be deemed a failure, without recognizing that another problem had been solved.

Accordingly, we hold that the references do not render obvious the claimed invention as a whole for purposes of 35 U.S.C. § 103 and reverse the decision of the board.

Reversed.

      . U.S. Patent 3,501,897, issued March 24, 1970, on an application filed November 20, 1967.

      . The precise amount of the steam jmesent in Van Helden is not clear from the record, but it was tacitly assumed below that it is considerably lower than the claimed minimum of inert diluent which, in a volume ratio to the hydrocarbon of 0.2:1, is approximately 16.6%.

      . No. 1,045,610, published October 12, 1966. Other references were cited by the Patent Office to justify the rejection, but tlieir consideration is unnecessary since they are merely cumulative.

      . See In re Fenton, 451 F.2d 640, 59 CCPA 708 (1971) ; In re Klosak, 455 F.2d 1077, 59 CCPA 862 (1972).

      . Invalidity of motivation was not present in In re Gershon, 372 F.2d 535, 54 CCPA 1066 (1967), cited by the solicitor during oral argument, so that the experiment there would not have been deemed a failure, and the “inherent” solution to the problem of unsatisfactorily low reduction in dental enamel solubility was actually advanced. See In re Murch, 464 F.2d 1051, 59 CCPA 1277 (1972).