author: RICH, Judge. MILLER, Judge

text:
    Application of Robert L. WADLINGER et al.
    Patent Appeal No. 8997.
    United States Court of Customs and Patent Appeals.
    May 23, 1974.

      Richard K. Stevens, Arlington, Va., attorney of record, for appellants. O. G. Hayes and R. W. Barclay, New York City, of counsel.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Robert D. Edmonds, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Associate Judges.
   RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of claims 16, 17, and 19 of application serial No. 806,753, filed March 4, 1969, for reissue of patent No. 3,308,069, granted March 7, 1967, for “Catalytic Composition of a Crystalline Zeolite.” We reverse.

The Invention

The invention relates to synthetic zeolites, methods of making them, and hydrocarbon cracking conversion processes using them as catalysts. Appellants’ application includes claims drawn to zeolite compositions represented by the following patent claim allowed in this reissue application:

2. A crystalline synthetic catalyst material having the composition:
where X is less than 1, Y is greater than 5 but less than 100, W is up to about 4, M is a metal, and n is the valence of M, said material being characterized by an X-ray powder diffraction pattern essentially the same as that shown in Table 4.

The application refers to this composition as “zeolite beta” and so will we.

Appellants’ original application for the patent they seek to reissue contained claims drawn to zeolite beta, methods of preparing the zeolite, and, as will later be explained in more detail, catalytic conversion of hydrocarbons utilizing the zeolite compositions. The claims to the zeolite and the methods of. making it were allowed in the original application and are reallowed here, appearing as claims 1 through 14 in the reissue application. The issue here involves process claims to the use of zeolite beta as a catalyst for the cracking of hydrocarbons. Claim 19 reads:

19. In a process for conducting in the presence of a solid porous catalyst an isomerization, disproportionation, polymerization, or alkylation hydrocarbon conversion reaction characterized by a heat of reaction not less than zero, the improvement which comprises contacting charge hydrocarbons for said reaction at conversion conditions with a crystalline aluminosilicate catalyst at least partially in the hydrogen form resulting from treatment of the zeolite defined in claim 2 with a fluid medium containing ions selected from the class consisting of hydrogen ions and ammonium ions.

Claims 16 and 17 read:

16. The process of claim 19 wherein said fluid treating medium also contains metal cations.
17. The process of claim 19 wherein at least a portion of the ammonium ions in said treating medium are complex ammonium ions.

The Relevant Prosecution History of the Original Application

The original application was aptly characterized by the board as containing, in addition to the composition and method-of-making claims, claims which are generic to all catalytic conversions with the novel zeolite, as well as claims directed to three specific types of conversion reactions: polymerization, alkylation, and isomerization. The method-of-use claims were rejected by the examiner in the original application “as the obvious use of the claimed crystalline zeolite,” since “Plank et al. (II) discloses the claimed use of a similar crystalline zeolite as a catalyst for the conversion of hydrocarbons. In their second response appellants stated:

Applicants do not agree with the Examiners that the claims to the use of this novel catalyst are obvious in view of the prior art; however, in order to expedite issuance of this application but without setting a precedent on this point for future cases, applicants have cancelled claims 15-25 [the method-of-use claims] without prejudice in favor of the allowed claims.

The Basis for Reissue

Appellants base their claim for reissue under 35 U.S.C. § 251, as stated in the oath of the reissue application, upon the fact that

* * * during the prosecution of the application, applicants did not understand all of the inherent characteristics of the claimed compositions, more particularly that certain of these compositions exhibited unique properties when used as catalysts in a selected class of catalytic hydrocarbon conversion reactions as recited in [the] claims * * * and it was not until after the patent issued that it was realized that claims of the scope of [these] claims * * * should have been included in this application based on the disclosure therein.

Thus, appellants’ argument is that, under the law which governed the prosecution of their original application, appellants understood that the patentability of their method-of-use claims was determined by whether appellants could show the existence of unexpected or superior results in the use of the composition; and appellants, being unable to show such superior results, cancelled the claims directed to the use of the zeolite in the original application. Appellants filed the reissue application, however, because of their knowledge of what appeared to them to be unique superior properties of zeolite beta as a catalyst for cracking hydrocarbons, properties which they refer to as “inherent characteristics” of zeolite beta.

The Rejections

As noted by the board, the claims on appeal stand rejected on two grounds:

(1) The claims are improper reissue claims under 35 U.S.C. § 251 because appellants’ deliberate cancellation of claims similar in scope in the original case does not involve error within the meaning of the statute; and
(2) The claimed process is unpatentable under 35 U.S.C. § 103 as being the obvious use of the claimed zeolite, with the Plank et al. patents being referred to in support of this rejection.

OPINION

The Obviousness Issue Taking the second issue first, the board agreed with the examiner that the method-of-use claims were “directed to an obvious use of the claimed aluminosilicate” in view of two patents to Plank et al. The position of the examiner was, first, that in view of the Plank patents “one of ordinary skill in this art would conclude that the crystalline aluminosilicate zeolites * * * would also be useful as catalysts for hydrocarbon conversion reactions,” and, secondly, the affidavit submitted did not establish the existence of unexpected results in the use of the zeolite in all of the four reactions claimed. The board agreed with both rationales. Dealing with the test for determining the obviousness of the method-of-use claims, the board further expressed agreement with the examiner that the case was controlled by a Board of Appeals decision, Ex parte Kuehl, which, although unpublished, involved an application assigned to the same corporation as the application on appeal here. That decision of the board was reversed by this court last term. In re Kuehl, 475 F.2d 658 (Cust. & Pat.App.1973).

In Kuehl, where the facts were very similar to those here, we unanimously agreed that 35 U.S.C. § 103 requires that the obviousness of a method-of-use invention is not to be determined by asking, as the board did here, whether “one of ordinary skill in this art would conclude that the crystalline aluminosilicate zeolites described and claimed herein would also be useful as catalysts for hydrocarbon conversion reactions.” Utilizing the very language of our opinion in Kuehl, we find the proper application of the statutory test of § 103, as enunciated by the Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), and the reasons why the examiner and the board erred here, to be as follows (emphasis added):

The issue here concerns primarily the meaning of the terms “prior art” and “subject matter as a whole” in § 103, and specifically whether appellant’s zeolite composition is in any way to be considered as “prior art” for the purposes of applying the statute. Appellant says that the board’s decision holding the claims to the method of using the zeolite obvious in view of * * * [the Plank patents] “necessarily utilizes as ‘prior art’ appellant’s own disclosure” of the zeolite. To the extent that the board may have affirmed the examiner’s view that the process claims represented “obvious use of the * * * catalyst for the conversion of hydrocarbons,” this appears to be the case. The examiner’s language does appear to treat incorrectly the * * * zeolite as part of the prior art. The correct application of the test of § 103 requires that the claims on appeal not be judged against any prior art other than * * * [the Plank patents].

We hold that the claims directed to the use of zeolite beta as a catalyst for the four hydrocarbon conversion reactions recited therein are unobvious from the two Plank references. While the Plank references describe, as noted by the board, “a considerable variety of known aluminosilicate zeolites and disclose their utility for hydrocarbon conversion reactions,” including those reactions recited in the appealed claims, the references nowhere disclose zeolite beta. And, as we said in Kuehl, “the process ‘invention as a whole’ includes the use of the * * * zeolite and one having no knowledge thereof would not find it obvious to crack hydrocarbons using it as a catalyst.” Judging the obviousness under § 103 of the method-of-use claims in similar fashion here, we conclude that they define an unobvious contribution to the art of converting hydrocarbons. See In re Schneider, 481 F.2d 1350, 1356 (Cust. & Pat.App.1973). Accordingly, the rejection under § 103 is reversed.

The Reissue Question

The second basis for the denial of claims to the methods of use of zeolite beta is that they are improper claims for reissue under 35 U.S.C. § 251 because appellants deliberately cancelled claims of similar scope in the prosecution of their original patent, wherefore there is no “error without any deceptive intention,” within the meaning of § 251.

The original application contained claims which were directed broadly to “catalytic conversion of hydrocarbons” and also claims which were directed to three specific types of such reactions, including in particular “alkylation,” “isomerization,” and “polymerization.” As previously noted, all such method claims were cancelled from the original application.

The main thrust of the examiner’s rejection and the board opinion is to be found in the following quotation from the Examiner’s Answer:

Claims 16, 17 and 19 stand rejected as improper claims in this reissue. Claims of similar scope were deliberately cancelled by appellants’ in the parent case thereby estopping appellants’ [sic] from asserting error or inadvertence in applying for a reissue as required by 35 U.S.C. § 251. It is an established principle of law that the “deliberate withdrawal of rejected claim(s) in order to obtain (a) patent does not involve inadvertence or error justifying reissue of (a) patent; thus, claim (s) of reissue application (are) rejected where (they are) similar in scope to cancelled original claim(s), [”] (emphasis added). Nicherson [sic] v. Bearfoot Sole Co., Inc., (CA 6) [311 F.2d 858] 136 U.S. P.Q. 96 accord, McCullough Tool Co. v. Well Surveys Inc. (CA 10) [343 F.2d 381] 145 U.S.P.Q. 6; In re Handel [312 F.2d 943, 50 CCPA 918] (CCPA) 136 U.S.P.Q. 460; Haliczer v. United States [356 F.2d 541, 174 Ct.Cl. 507] (U.S.Ct.Cls.) 148 U.S.P.Q. 565.

Appellants do not quarrel with the legal basis for the rejection of reissue claims under § 251 where claims “similar in scope” have been cancelled in the prosecution of the original application, but contend that the claims which were cancelled in their original application were not similar in scope to the claims on appeal, relying for authority upon three decisions by this court, In re Willingham, 282 F.2d 353, 48 CCPA 727 (1960); In re Wesseler, 367 F.2d 838, 54 CCPA 735 (1966); and In re Petrow, 402 F.2d 485, 56 CCPA 710 (1968), which broadly support the proposition that claims of a scope narrower than claims cancelled from the original application may be obtained by reissue.

The board apparently agreed with the above proposition of law, but distinguished the cases on the ground that here “the rejected claims are of substantially the same scope as those cancelled from the original application.” Most of the board’s opinion on this point is discussion of the fact that, with respect to the four specific hydrocarbon conversion reactions claimed in the reissue application, “no single original claim is directed to the exact grouping which is now claimed” in what the board referred to as a “Markush-type grouping.”

As noted earlier, the original application contained claims broadly drawn to the “catalytic conversion of hydrocarbons,” which claims the board considered to be “generic to all catalytic conversons with the novel zeolite,” including the four conversions claimed in the reissue application, and also contained claims specific to three of the four conversion reactions claimed in the appealed claims, namely, isomerization, polymerization, and alkylation, to which the appealed claims add disproportionation. The board did not feel that these differences in the form of claiming — i.e., specific claims vs. a Markush grouping — mitigated against the claims being held to be of “substantially the same scope” for application of the rule against “recapture” by reissue of previously cancelled claims.

Appellants’ second reason why there is a lack of similarity in scope between the cancelled claims and the appealed claims relates to the form of the zeolite which is used in the method of the appealed claims. Appellants’ brief explains their argument:

All of the claims, both those rejected and those cancelled, relate to the type of zeolite of claim 2, however, the specification indicates that the zeolites of claim 2 may be used as is or
“catalytic materials can be prepared by calcining the original sodium form zeolite beta and/or by replacing the major portion of the sodium in the zeolite with other metallic and/or ammoniacal ions. If the calcination is carried out prior to ion exchange, some or all of the resulting hydrogen ions can be replaced by metal ions in the ion exchange process.” (See specification, col. 5, lines 17-23).
******
The rejected claim 19 on the other hand [unlike the cancelled claims] relates to using the zeolite of claim 2 which has been treated with a fluid medium containing hydrogen or ammonium ions. Rejected claim 16 relates to using a zeolite of claim 2 which has been treated with a fluid medium containing hydrogen or ammonium ions and further containing metal ions. The rejected claim 17 relates to using a zeolite of claim 2 which has been treated with a fluid medium containing ammonium ions, at least a portion of which are complex ammonium ions.
Thus, it is clear that the rejected claims are referring to a different catalyst than were [sic] claimed in cancelled claims of the original application.

The board’s view on appellants’ argument relating to a difference in the claimed form of the zeolite was that the appealed claims were still of substantially the same scope as the cancelled claims. The board said:

Original claim 15 shows the zeolite containing hydrogen and metal ions, and original claim 16 shows the zeolite containing complex ammonium and metal ions. The further limitation that the aluminosilicate catalyst at least partially in the hydrogen form results “from treatment of the zeolite defined in claim 2 with a fluid medium containing ions selected from the class consisting of hydrogen and ammonium ions” does not substantially change the scope of the claim because this is but the conventional manner of treating the zeolites.

Appellants respond to the board’s argument by noting, correctly we think, that the specification shows that the catalysts of claim 2 already are at least partially in the hydrogen form, and further, that treatment may be by either calcining or ion exchange, whereas the appealed claims specifically recite only the catalyst resulting from treatment of the zeolite with a fluid medium containing hydrogen or ammonium ions. It is apparent, therefore, that there is indeed a difference in claim scope, at least with respect to the form of the zeolite catalyst, between the invention now claimed and the invention covered by the can-celled claims. It remains to determine whether such a difference is sufficient to satisfy the requirements of § 251 as construed by the courts.

A basic statement of the law was made by us in In re Willingham, supra, 282 F.2d at 357, 48 CCPA at 733 where we said:

The deliberate cancellation of a claim of an original application in order to secure a patent cannot ordinarily be said to be an “error” and will in most cases prevent the applicant from obtaining the cancelled claim by reissue. The extent to which it may also prevent him from obtaining other claims differing in form or substance from that cancelled necessarily depends upon the facts in each case and particularly on the reasons for the cancellation.

The question here, then, is whether the difference is one “in form or substance” which, as a matter of law, will justify the allowance of the appealed claims. We believe that it is, under prior decisions of this court.

In re Petrow, supra, dealt with a very similar argument. The appellants there maintained that “the controlling feature in the present case is the fact that applicants are not attempting to recapture the same or an immaterially different claim from that cancelled * * In that case the applicants, during prosecution of their original application, abandoned claim 4 directed to a compound of betaine and chloral and sought through reissue to claim the identical compound in claim 10, which, however, in addition to the limitations of the cancelled claim, described the compound in more detail by reciting more of its inherent properties. Responding to the argument that under Willingham there could be no “error” justifying reissue of the patent under these circumstances, we said, 402 F.2d at 488, 56 CCPA at 713:

We feel that the fact that claim 10 recites more inherent properties of the disclosed compound than does claim 4, so as to more fairly “fingerprint” it, results, under the' circumstances shown, in a claim differing in form, as contemplated by the language quoted from In re Willingham, supra, as well as presenting a claim having a different scope of legal protection. While claim 10 may be directed to the same subject matter, that is, the disclosed invention, it does not necessarily follow that the scope of legal protection afforded it is the same as that of claim 4.

We think similar considerations govern the result here. While both the can-celled claims and the appealed claims may be directed to the same process, the scope of the cancelled claims was indeed broader than the scope of the appealed claims which, in more fairly fingerprinting the processes, results in claims which differ from the cancelled claims in the scope of legal protection afforded. Accordingly, we do not agree with the board that there can be no “error” within the meaning of § 251.

It is noted that part of appellants’ argument has centered on In re Wesseler, 367 F.2d 838, 54 CCPA 735 (1966), where this court east considerable doubt on the correctness of its prior statement in In re Byers, 230 F.2d 451, 454, 43 CCPA 803, 805 (1956), which reads:

The use of the word “error” in that sentence [of 35 USC 251] instead of the words “inadvertence, accident or mistake,” which appeared in the corresponding section (35 U.S.C. § 64, Section 4916 R.S.) of the patent statutes prior to the recodification of 1952, does not involve a substantive change, and the same type of error is necessary to justify a reissue after the enactment of the Patent Act of 1952 as before * * *.

Appellant says of Wesseler,

According to this case, the error must occur only without deceptive intention and not through inadvertence accident or mistake as required by the old statute and In re Byers which is relied upon by the Examiner. Based upon this case, reliance upon In re Byers is of doubtful validity. The In re Wesseler ease was decided some 10 years later than In re Byers and notes that there is no authority cited in the In re Byers ease for the proposition that the old and new patent statutes contemplated the same type of error in 35 U.S.C. 251.

In addition, in Wesseler we did state that the court in Byers “ignored the fact that the new reissue statute broadened the term ‘error’ by not limiting it to ‘error’ that had arisen through ‘inadvertence, accident or mistake’.”

Appellants’ argument has led us to review the legislative history of § 251 and the basis for our statement in Wesseler. We now conclude that in Byers this court was correct in noting that the substitution of “error” in § 251 for “inadvertence, accident, of mistake” did not involve a substantive change, ¿¡ee Federico, “Commentary on the New Patent Act,” 35 U.S.C.A. p. 43. We would be hard-pressed to think of examples of situations which would be “error” and not be encompassed by one or the other of “inadvertence, accident, or mistake.” “Inadvertence” and “accident” may imply something other than deliberate action, but “mistake” has a broad sweep and is certainly inclusive of actions taken in full consciousness. In Tee-Pak v. St. Regis, cited in note 6, supra, the Court of Appeals said, “a deliberate and intentional amendment to a claim may be error without deceptive intention.” The primary definition of “mistake” is “to choose wrongly” (Webster’s Seventh New Collegiate Dictionary). This court, in its decisions both before and after Wesseler, has made it clear that a reissue applicant is, at most, prevented ' by interpretations of the language of § 251, and its predecessor statute R.S. 4916, from obtaining claims which are of the same scope as the claims previously cancelled in the original application. As for obtaining claims on reissue which are different, no prohibition arises merely because of the language of the reissue statute. Still apropos and basic is our statement in Wesseler:

We think the term “error,” arising as it does in a remedial provision designed to advance both the rights of the public and the inventor, is to be interpreted as Congress has stated it, “error without any deceptive intention,” and in light of Supreme Court decisions favoring the liberal construction of reissue statutes in order to secure to inventors protection for what they have actually invented.

See In re Richman, 409 F.2d 269, 56 CCPA 1083 (1969), holding there was “error without any deceptive intention” under § 251 where the reissue claims differed in scope from cancelled claims and also found, as in Wesseler, that “while appellant acted ‘deliberately’, he did so in error.”

Appellants’ Unexpected Results

Part of the basis for the board’s affirmance of the examiner’s rejection's under both sections 103 and 251 is an alleged insufficiency of appellants’ showing of unexpected results of the use of their zeolite in the four hydrocarbon reactions claimed. The board found that “Even assuming that appellants have established unexpected results for isomerization it is clear that there is no sufficient showing as to disproportionation, polymerization, and alkylation.” Since each member of the Markush-type grouping of reactions of the appealed claims “must be allowable individually or the whole group fails,” the board, applying the law as it was before our decision in Kuehl, found the invention obvious under § 103 and, in addition, found no “error” under § 251.

As respects § 103, there is no question but that the change in the law brought about by Kuehl, particularly in its overruling of In re Saunders, 154 F.2d 693, 33 CCPA 1001 (1946), means that in applying the standards of § 103 to the appealed claims- we need not consider whether appellants have established unexpected superior results in the use of zeolite beta because under Kuehl they need not show such results..

With respect to the question whether there was “error” within § 251, it is not so clear whether the unexpectedness of appellants’ results must be examined. Part of the rationale of the board for the rejection under § 251, in addition to the estoppel rationale dealt with earlier, was that appellants committed no “error” by not originally pursuing the method-of-use claims since, in fact, they had no unexpected results and thus were never entitled to method-of-claims in the first place.

The parties’ briefs have not dealt with the pertinent question but we have nevertheless felt obliged, to deal with the matter and have concluded that since on the § 103 issue appellants would not today, after Kuehl, have to show unexpected properties, there is no basis for requiring such a showing to establish “error” within § 251. It is clear that the patentability of reissue claims is determined by application of the law which exists during the prosecution of the reissue application rather than the law at the date of issuance of the original patent, where there has been a change since then. In Rohm & Haas Co. v. Roberts Chemicals, Inc., 245 F.2d 693 (4th Cir. 1957), the court considered the validity of a reissue patent applied for more than nine years after the original patent issued to add process claims. The court noted two specific provisions of the 1952 Patent Act which were new and that the patentee’s belated reissue application was to take advantage of these pew provisions when he “made application for the process claims on October 24, 1952, shortly after the passage of the statute.” The court said: “The reissued patent was granted on November 24, 1953, after the effective date of the statute, and we think that the validity of the reissue should be construed'in light of its provisions.”

Similarly in point is Ashley v. Samuel C. Tatum Co., 240 F. 979 (S.D. N.Y.1917), an infringement case upholding the validity of the first design patent ever reissued. The original patent had been obtained when the rules of the Patent Office did not permit a written description of a design in the patent, but only a drawing. The patentee had brought a prior suit on the original patent, which was held valid but not infringed because the alleged infringement, though embodying the patented design, was sufficiently ornamented so as not to resemble the patent drawing. The court noted, however, that the patentee may well have been entitled to more broadly claim the dominant feature of his invention, with or without ornamentation, but had “no such claim, and no written description upon which it could be based * * * possibly solely because the Patent Office refused to allow any written description to be filed * * Later, however, the Patent Office rule was changed to provide for a written description in a design patent, and the patentee sought reissue of his patent to add a description of his design and to claim it, not just “as shown,” but “as shown and described.” He obtained the reissue patent and then sued the original defendant for its infringement. The court upheld the validity of the reissue patent obtained to take advantage of the change in the Patent Office rules and noted the defendant’s infringement, but it refused to allow recovery against that defendant because of its intervening rights. See also Moist Cold Refrigerator Co. v. Lou Johnson Co., 217 F.2d 39 (9th Cir. 1954). Accordingly, we see no basis for holding appellants to the case law which may have existed at the time of their original patent and believe that their reissue application may benefit from the change in the law brought about by In re Kuehl. It thus is not necessary to consider whether appellants have established the existence of unexpected properties for the reactions of the appealed claims since their invention has been shown to be unobvious without siich a showing.

Summary

The decision of the board affirming the rejection of claims 16, 17, and 19 under 35 U.S.C. §§ 103 and 251 is reversed.

Reversed.

MILLER, Judge

(concurring).

Although I am in full accord with the result reached by the majority and with most of its opinion, I cannot agree with its oblique criticism of this court’s statement in Wesseler that in Byers the court “ignored the fact that the new reissue statute broadened the term ‘error’ by not limiting it to ‘error’ that had arisen through ‘inadvertence, accident or mistake.’ ”

In Byers, this court agreed with the board’s decision, affirming the rejection of claims in a reissue application. The court said: “It is well settled that the deliberate withdrawal or amendment of a claim in order to obtain a patent does not involve inadvertence, accident or mistake and is not an error of the kind which will justify a reissue of the patent including the matter withdrawn.”

In Wesseler, this court found that, while the appellant had acted “deliberately” in cancelling claims, this was “error without any deceptive intention.” It reversed the board’s decision affirming the rejection of claims in a reissue application.

Now the majority would revert to Byers, saying that the court was correct in its statement that:

The use of the word “error” . instead of the words “inadvertence, accident or mistake,” which appeared in the corresponding section . of the patent statutes prior to the re-codification of 1952, does not involve a substantive change, and the same type of error is necessary to justify a reissue after the enactment of the Patent Act of 1952 ....

It cites the Commentary by Federico which, discussing section 251, says:

There is no indication in the printed record that this change in language was intended to effect any change in substance and, since the old phrase was usually rather liberally construed, except when the reissue sought to recapture claims cancelled during the prosecution of the original patent, this question would be of minor significance except in connection with the situation mentioned.

However, the Commentary adds:

As to this situation there would be a large body of precedent to overcome, but one commentary urges that there is a liberalization in this respect.

Far more relevant to the determination of legislative intent are the Committee Reports of the House of Representatives and the Senate. These state that “there are a number of changes in substantive statutory law.” Giving substance to the changes in language made by section 251, as the court did in Wesseler, accords with this statement.

A fundamental principle of statutory interpretation is that a substantial change in language is evidence that a departure from the old law was intended. Johnson v. United States, 225 U.S. 405, 32 S.Ct. 748, 56 L.Ed. 1142 (1912). Here we have a change in the phrase “by inadvertence, accident, or mistake, and without any fraudulent or deceptive intention,” to “through error without any deceptive intention.” The plain meaning of the new language is that reissue will be allowed for any error, deliberate or not, except where there is “deceptive intention”; whereas, the old language allowed reissue only where there was error consisting of “inadvertence, accident, or mistake,” which had been interpreted by “a large body of precedent” not to include deliberate cancellation. In re Byers, supra. It may be, as the court in St.- Regis Paper Co. put it, “difficult to imagine an ‘error’ which would not be encompassed by any of the terms “inadvertence, accident, or mistake’.” However, “a large body of precedent” indicates that deliberate error (e.g. cancellation) was not encompassed by those terms. Congress is presumed to have had knowledge of the “large body of precedent.” See Zemel v. Rusk, 381 U.S. 1, 85 S.Ct. 1271, 14 L.Ed.2d 179 (1965). Thus there is ample basis for the presumption that Congress intended liberalization of the reissue statute. The majority opinion falls far short of rebutting that presumption.

Even assuming, arguendo, that no substantive change was intended, if the language is clear it is conclusive. “There can be no construction when there is nothing to construe.” United States v. Hartwell, 73 U.S. (6 Wall.) 385, 396, 18 L.Ed. 830 (1868). Rules of interpretation are resorted to for the purpose of resolving an ambiguity, not for the purpose of creating it. Railroad Comm, of Wisconsin v. Chicago, B & Q R.R. Co., 257 U.S. 563, 589, 42 S.Ct. 232, 66 L.Ed. 371 (1922). This court should follow the plain meaning of the language “through error without any deceptive intention,” unless the words are otherwise defined by the statute. If the Congress intended no change but, nevertheless, enacted one, it is for the Congress and not the courts to rectify its “deliberate mistake.”

By interpreting “mistake” to include deliberate cancellation, the majority is saying, in effect, that the “well settled” principle referred to in Byers was wrong in the first instance. It overcomes the “large body of precedent” referred to by Federico — not by recognizing a substantive change enacted by Congress, but by renouncing this court’s holding in Byers after a lapse of eighteen years.

      . U. S. Patent No. 3,140,253, issued July 7, 1964.

      . Much was made at oral argument of the fact that appellants may not have discovered the superior results of the use of zeolite beta until after issuance of the original patent. See Reeves Brothers, Inc. v. U. S. Laminating Corp., 282 F.Supp. 118 (D.C. 1968), and Ex parte Ziherl, 116 USPQ 162 (Pat.Off.Bd.Appls.1957). The record before this court dealing with the question is scanty. The reissue oath, as already noted, said only that appellants “did not understand all of the inherent characteristics of the claimed compositions” during the prosecution of the original application. At oral argument appellants’ attorney again spoke of the properties of the zeolite as “inherent” but noted that appellants “learned of the great value (of the zeolite catalyst) after the patent actually issued.” This latter discovery was, in the view of appellants’ attorney “a favorable thing because we [appellants] could not have inserted this specific claim before the patent issued.”
      We have studied the opinion of the board and have concluded that alleged later discovery of the superior performance of zeolite beta was not treated by the board as a reason for finding lack of “error” within the meaning of § 251. Accordingly, we do not deal with it here.

      . Nos. 3,140,251 and 3,140,253, issued July 7, 1964.

      . § 251. Reissue of defective patents [First para, only]
      Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Commissioner shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in ac-
      cordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.

      . The examiner was fleshing out USPQ headnote 3 in the Nicherson case by his parenthetical additions. The headnoted text was a quotation from the examiner raising a question left undecided by the court, which held the claims sued on “invalid for want of invention.”

      . Recently, the accuracy of these statements in Wesseler was challenged by the District Court opinion in St. Regis Paper Co. v. Tee-Pak, Inc., 352 F.Supp. 309 (N.D.Ohio 1973), rev’d 491 F.2d 1193 (6th Cir. 1974). See discussion in Pat. Law Perspectives, Dev. A.8[l]-19, Rel. No. 4/1973.

      . It is unnecessary in this case to go into the meanings of the old and new reissue statutes exhaustively. However, we deem it instructive to note the following definition from Webster’s New International Dictionary (2d Ed. 1937) :

        mistake n. * * * 2. Law. Misconception or error of the mind leading a person to do an act which he otherwise would not have done; also the act or omission so arising, as an intentional act or omission arising from ignorance, surprise, imposition, or misplaced confidence. Adopting such a definition of “mistake,” it seems altogether superfluous to argue that “error without deceptive intention” is substantively broader than “error [which] has arisen by inadvertence, accident, or mistake, and without any fraudulent or deceptive intention,” which is the old statutory language. In the absence of any revealing legislative history, probably the best that can be said is that the 1952 Act is a recodification of the old statute in more concise, modern statutory form, omitting unnecessary words. That would conform to the writer’s personal recollection, as one of the drafters of the section, of what they intended to do. What we now feel is that this language of the former statute is quite as broad as the language of § 251 which replaced it, notwithstanding some cases which construed it narrowly.

      . It is also possible to look at the so-called “change in the law” here, which comes about from the case law overruling of case law, as merely a later recognition of the fact that the statute had been incorrectly interpreted. Taking this view, one can say the statutory law was always as we interpreted it in Kuehl, but had merely been incorrectly applied for a time after In re Saunders. Looked at in this fashion, there really was no change in the law to be taken advantage of by reissue, and the “error” was in not recognizing that Saunders was wrong.

      . H.R.Rep.No. 1923, 82d Cong. 2d Sess. 5 (1952) ; S.Rep.No.1979, 82d Cong. 2d Sess. 4 (1952). The House Report (p. 8) and the Senate Report (p. 7) both state that sections 251 and 252 are a “development” of the present statute; that they “make a number of clarifications and a few additions in further development of the subject [of reissue].” The revision notes accompanying each report merely state that “some changes in language” appear in section 251 compared to its predecessor, 35 TJ.S.C. § 64 (1946 ed.). However, changing the language to cover a patentee “claiming as his own invention or discovery more than he had a right to claim” to “claiming more or less than he had a right to claim” (emphasis supplied) obviously was a substantive change. So too the broader language “error without any deceptive intention” represents a substantive change.


source: Caselaw Access Project

author: RICH, Judge.

license: Public Domain

text:
    Application of Eugene S. PENNEBAKER, Jr.
    Patent Appeal No. 9210.
    United States Court of Customs and Patent Appeals.
    May 9, 1974.
    John S. Schneider, Houston, Tex., attorney of record, for appellant.
    Joseph F. Nakamura, Washington, D. C. for the Commissioner of Patents. Jere W. Sears, of counsel.
   RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection for obviousness under 35 U.S.C. § 103 of claims 1-3, 7-10, and 14-18 of application serial No. 860,108, filed September 22, 1969, entitled “Method for Prediction of Abnormal Pressures from Routine or Special Seismic Records.” We reverse.

The Invention

The invention relates to a seismic method for determining the depth and pressure of highly pressurized (abnormal) formations in sedimentary layers of the earth. The abnormal formations occur as a result of fluids becoming trapped within a relatively impermeable formation such as shale. When such formations are penetrated during drilling, the high pressure can result in a “blowout” and loss of the well unless certain precautions are taken. These precautions involve the setting of casing in the borehole and use of heavier drilling muds with consequential increased costs and slowed drilling rate. By predetermining the depth and location of these formations, the use of these expensive precautions can be reduced. This invention is particularly useful in drilling for oil in unexplored areas (wildcatting).

The invention involves setting off an explosive charge on the earth’s surface and detecting seismic or acoustic waves reflected by sedimentary formations with a plurality of linearly-arranged geophones. The geophones are spaced at increasing distances from the charge to measure the two-way travel times of the waves reflected back to the surface by the formations. The average velocity to each reflecting formation is computed from the travel times and plotted as a function of travel time or depth to provide a subsurface profile. This profile is compared with a “normal” profile (from nearest borehole or a mathematical estimate) that has no abnormally high pressure formations, the deviations between the profiles indicating high pressure formations. The amount of deviation is indicative of the magnitude of the pressure in an abnormal formation. Claim 1 is illustrative:

1. A method for detecting abnormally pressured earth formations comprising :

performing a seismic observation at the earth’s surface in which seismic waves are generated at the earth’s surface and seismic energy resulting from said seismic waves so generated is detected at the earth’s surface to" obtain average seismic velocities through earth formations beneath the location of said seismic observation; and

utilizing variations between the average seismic velocities in abnormally pressured formations and average seismic velocities in normally ■ pressured formations to determine the depth of said abnormally pressured formations.

The Rejection

The following references were relied on to show obviousness:

Hottman 3,235,026 Feb. 15, 1966

Green, “Velocity Determinations by Means of Reflection Profiles,” Geophysics, Volume III, Number 4, October, 1938, pages 295 to 305. ■

The following quotation from appellant’s specification discusses the prior art and particularly a method of detecting abnormal formations using acoustic logging as disclosed by the Hottman patent:

In areas where there is reason to suspect the existence of such high pressure formations, various techniques have been followed in attempts to locate such zones. For example, acoustic * * * logs have been run repeatedly after short intervals of borehole have been drilled, and a plot of acoustic velocity * * * as a function of depth has been made. Abnormal variations of acoustic velocity * * * obtained by logging may indicate that the drilling operation, is in a zone of increasing formation pressure. It is manifest that such techniques * * * cannot predict what pressures will be encountered ahead of the bit.

The Green article discusses the feasibility of indirectly computing average subsurface velocities by means of seismic reflection profiles.

The claims were rejected as obvious in view of Green and Hottman under 35 U.S.C. § 103. In his use of these references, the examiner commented as follows:

Green discloses the well-known prior art surface velocity profiling technique in which the travel time angularity is utilized to determine the average acoustic wave velocities in the strata beneath the survey location. The data can be plotted in various forms including velocity versus depth graphs as shown in Figs. 6, 7 and 8 of Green. Hottman teaches that in the vicinity of an abnormally pressured formation, the rate of velocity increase with increasing depth decreases and an abnormally pressured formation results in a deviation of the velocity versus depth graph from its normal logarithmic characteristic. It would not be unobvious to plot a normal logarithmic velocity versus depth graph on the same chart as the observed velocity versus depth graph obtained by the Green method. Observation and measurement of the deviation between the graphs gives information as to the depth and pressure of the abnormal formation.

The board adopted the examiner’s analysis and conclusions and made the following comments:

Illustratively, both Figures 6 and 7 of Green and the related text reveal a technique of comparing a surface velocity profile curve with a “normal” well data curve. Both of these figures were obtained by methods disclosed therein to a degree which is commensurate with the disclosure of methodology provided in the instant ease; that is, apparently in accordance with standard procedures. In both instances the surface velocity profile curves indicate situations which are also “normal” relative to the “normal” well data. Figures 2 and 3 of Hottman and the related disclosure teach comparison of “normal” and “abnormal” curves in a situation in which the “abnormal” curve resulted from well log data. However, taking these two references together, we agree that, within the statutory standard of 35 U.S.C. 103, it is obvious that the acquisition of a Green surface velocity profile in the vicinity of the area under investigation by Hottman would result in a curve having a deviation comparable to that taught by Hottman. Further, it would be obvious to compare this plot with a so-called “normal” curve in accordance with the Hottman comparison technique to determine that the deviation is indicative of pressure abnormality.

OPINION

Appellant’s method and Hottman’s method both utilize the travel time of acoustical waves. However, Hottman uses an acoustic well-logging tool to directly measure velocities in shale formations immediately surrounding a borehole while appellant’s seismic method uses many velocity measurements statistically averaged to obtain the gross properties of sedimentary rocks including shales to show a broad trend of abnormal pressure information. Hottman’s borehole velocity data is disclosed as being indicative of abnormal pressures only in shales and is not equivalent to the surface velocity data of the gross properties of various sedimentary layers. Furthermore, there is nothing in Hottman to indicate that the relationships it establishes between borehole-determined travel time and abnormal formations would have been considered applicable to surface velocity data.

Considering the differences between appellant’s invention and the prior art, we find the board erred in its holding that the invention as a whole would have been obvious. We do not find support for the examiner’s conclusion, adopted by the board, that the prior art in any manner suggests plotting a “normal” profile and comparing it with a surface velocity profile such as would be obtained by the Green method. Nor do we agree that it would have been obvious that deviations in a surface velocity profile would have been recognized as indicating abnormal formations.

Appellant acknowledges that a Green surface velocity profile in the area under investigation by Hottman would manifestly result in a curve having a deviation comparable to that taught by Hottman. But absent appellant’s disclosure, the record does not indicate that it would have been obvious to those skilled in the art to compare a surface velocity profile obtained by Green’s method with a representative “normal” profile to detect or locate abnormal formations.

Since we find that the references relied on by the examiner fail, in the absence of appellant’s disclosure, to suggest the claimed method, we find it unnecessary to consider an affidavit and certain literature references cited by appellant.

The decision of the board is reversed.

Reversed.


author: MILLER, Judge.

text:
    61 CCPA
    QUIGLEY & MANARD, INC., Appellant, v. The UNITED STATES, Appellee.
    Customs Appeal Nos. 74-3, 74-15.
    United States Court of Customs and Patent Appeals.
    May 30, 1974.
    John B. Walsh, Buffalo, N. Y., atty. of record, for appellant.
    Irving Jaffe, Acting Asst. Atty. Gen., Andrew P. Vance, Chief, Customs Section, Robert Masters, New York City, for United States.
    Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
   MILLER, Judge.

This proceeding involves two appeals from the United States Customs Court. The appeals are from (1) separate orders of dismissal of the actions for lack of prosecution, and (2) an order (covering both cases) which (a) denied appellant’s motion for rehearing to set aside said separate orders of dismissal and (b) denied appellant’s motion for rehearing to set aside an order denying appellant’s motion to compel the clerk of the Customs Court to file appellant's complaint (covering both actions) and to remove the actions from the reserve file of the Customs Court. We affirm.

Each order of dismissal for lack of prosecution recites that the action, previously placed in the October 1970 reserve file, had not been removed therefrom on or before October 31, 1972, the expiration date of the applicable two-year period for removal.

This court has stated that the Customs Court is entrusted with the exercise of its sound discretion in ruling on a petition for rehearing and that such a ruling will not be disturbed unless it is “manifestly erroneous.” Commonwealth Oil Refining Company, Inc. v. United States, 480 F.2d 1352, 60 CCPA 162, C.A.D. 1105 (1973). Appellant has not alleged that denial of its motions for rehearing was manifestly erroneous. Moreover, it is the generally-accepted doctrine that an appeal must be taken from the judgment of the lower court. 6A Moore’s Federal Practice (2d Ed.) jf 59, pp. 266-267, and cases cited therein. Insofar as these appeals are from the separate orders of dismissal of the actions for lack of prosecution, they are from the judgments of the Customs Court. Not only are they in accord with the “generally-accepted doctrine,” but they also represent the substance of the appeals from the order denying rehearings, so that our determination with respect to the orders of dismissal will proper3y and fully dispose of the controversy.

Rule 14.6(e) of the Customs Court, pursuant to which the separate orders of dismissal were entered, provided as follows:

(c) Dismissal for Lack of Prosecution: An action which is not removed from the reserve file within a period of 2 years shall be dismissed for lack of prosecution, and in the absence of the filing of a motion under paragraph (e) of this rule, the clerk shall enter an order of dismissal without further direction of the court.

Rule 14.6(b)(1) provided that an action may be removed from the reserve file upon the filing of a complaint. Actions in the October 1970 reserve file, which included the two actions embraced by these appeals, had to be removed by October 31, 1972, to avoid dismissal under Rule 14.6(c), and appellant sought to do this by mailing a complaint covering both actions to the Customs Court. The complaint was mailed from Buffalo, New York, on October 30, 1972, but was not received by the Customs Court until November 2, 1972, after the time had expired under Rule 14.6(c). The clerk refused to file it, and in due course the separate orders of dismissal were entered. We note that Rule 4.1(e) of the Customs Court states: “Filing is completed upon receipt by the clerk or his appointed deputy clerk.”

Appellant does not dispute the facts, but argues that the applicable rules of the Customs Court should be liberally applied and that an action should not be dismissed lightly on procedural grounds where good cause and excusable neglect are shown. It cites Rule 6(b) of the Federal Rules of Civil Procedure, which provides for relief after expiration of a specified period of time when the failure to act was the result of excusable neglect ; and it argues that the correlative to this rule is Rule 17.1 of the Customs Court, which provides that a party aggrieved by the refusal of the clerk to file any paper may move to compel the clerk to accept the paper for filing.

Assuming arguendo that the question of “excusable neglect” was before the Customs Court with respect to the untimely filing of appellant’s complaint, that is not the question before this court on review. This court has stated that the decision of the trial court in dismissing a case for lack of prosecution will not be disturbed on appeal unless it is made to appear that there has been a gross abuse of discretion. United States v. Chas. Kurz Co., 396 F.2d 1013, 55 CCPA 107, C.A.D. 941 (1968). In determining whether there was “gross abuse” on the part of the Customs Court in entering the separate orders of dismissal, we note the following statement in appellant’s brief:

Appellant was unaware, through no fault of its own, of the need to proceed procedurally by filing a complaint until October 11, 1972. Considering time for preparing papers and mailing, appellant was compelled to make an immediate decision whether to request an extension of time which might be denied or proceed to race against time to file its complaint on or before October 31, 1972. Appellant decided in good faith to proceed with diligence to prepare its complaint only to discover later the immense research task before him. Nevertheless, appellant mailed its complaint on October 30, 1972.

Obviously appellant elected to make the “race against time.” The fact that it lost the race was not the fault of the Customs Court, which had good reason to promulgate and adhere to Rule 14.6. See Applied Research Laboratories v. United States, 352 F.Supp. 498, 70 Cust.Ct. -, C.R.D. 73-2 (1973). We hold that there was no gross abuse of discretion on the part of the Customs Court in entering the separate orders of dismissal.

In so holding, we are not unmindful of certain equities which appellant’s counsel developed, particularly during his thought-provoking oral argument. However, it is by way of special legislation in the Congress rather than judicial remedy that relief on the basis of such equities must be sought.

The orders of the Customs Court are affirmed.

Affirmed.

      . The order of dismissal in 67/61648 was not entered until July 24, 1973, so the motion for rehearing, which was filed April 20, 1973, was apparently not operative with respect to it.


text:
    Application of John H. HUGHES.
    Patent Appeal No. 9137.
    United States Court of Customs and Patent Appeals.
    June 6, 1974.
    Harry M. Cross, Jr., Seattle, Wash. (Seed, Berry, Dowrey & Cross), Seattle, Wash., 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, Judges.
   RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of claims 12 and 13 of appellant’s application serial No. 817,219, filed March 7, 1969, for reissue of patent No. 3,315,717, issued April 25, 1967, entitled “Semi-Split Shake.” The rejection was made by the board on a new ground, pursuant to Patent Office Rule 196(b). We reverse.

The Invention

The invention relates to the fabrication of shakes by first cutting blocks of cedar, for example, called shake bolts, to produce sawn shake tip portions and then splitting the shakes from the bolt by commencing the split at the inner ends of the cuts and allowing the shakes to split along natural cleavage lines, dictated by the grain of the shake bolt wood, to produce split weather end portions. The application contains allowed claims directed to the method of making the shakes and also article claims to the shake. The two rejected claims are delineated produet-by-process claims and are as follows:

12. Shakes manufactured from a shake bolt by the process of making a plurality of cuts into and across the shake bolt to an extent to establish predetermined tip lengths, and splitting the weather end portions of the shakes from the bolt by starting the splits at the inner ends of the cuts and continuing the splits to the end of the bolt.
13. Shakes defined by claim 12 wherein each such shake comprises a tip end portion having cut top and bottom surfaces, and a weather end portion having top and bottom surfaces formed by natural cleavage commencing at the juncture of the tip end and weather end portions.

The Rejection

The basis of the board’s new ground of rejection of these claims is that they are “improper product-by-process claims” because “it is only proper to use product-by-process claims when there is no other way of claiming the structure and * * * [,] since the appellant presents article claims 8 through 10, it is obvious that the product can be claimed without process limitations.”

Although this was formally a new ground of rejection by the board, the examiner had commented on the impropriety of the product-by-process claims and appellant had responded by citing two cases decided by this court, In re Pilkington, 56 CCPA 1237, 411 F.2d 1345, 162 USPQ 145 (1969), and In re Steppan, 55 CCPA 791, 394 F.2d 1013, 156 USPQ 143 (1967). In response to appellant’s argument, the board stated:

The appellant asserts that the Court in In re Pilkington, supra, laid to rest the question of whether product-by-process claims are permitted in an application when the product can also be adequately claimed by its physical characteristics. However, the Court clearly did not do so explicitly, nor do we believe it did so implicitly since the Court found that the product-by-process claim involved satisfied 35 U. S.C. 112 since the differences between the applicant’s article and the prior art article were not particularly susceptible to definition by conventional recitation of properties or structure. It appears that if the appellant’s postion were correct the Court would simply have found that the form of the claim was immaterial. Moreover, the Court of Customs and Patent Appeals stated in In re Johnson, 55 CCPA 1463, 394 F.2d 591, 857 OG 670, 157 USPQ 620, “This court has repeatedly held that a claim for an article capable of such definition must define the article by its structure and not by the process of making it.”

Appellant’s Argument

Appellant’s argument before us is twofold: He first challenges the basis for the rejection, the validity of the rule that one cannot have product-by-process claims because he can describe his invention by true product claims. He asserts that the rejection is without foundation in the statute and actually prevents an applicant from claiming with precision and definiteness that which he “regards as his invention,” according to 35 U.S.C. § 112, second paragraph. Appellant’s second argument is that even if the rule against the use of product-by-process claims as stated by the board is sound, it is not applicable here because the allowed product claims in this application are not true product claims but are actually product-by-process claims. Appellant notes particularly the emphasized language in allowed claim 8, which reads:

8. A semi-split shake comprising a tip end portion having cut top and bottom surfaces, and a weather end portion having top and bottom surfaces formed by natural cleavage commenced at the juncture of the tip end and weather end portions.

This is the only example of the allowed product claims in the record before us, and the solicitor has not sought to add to the record any of the other product claims or controverted the statement in appellant’s brief that “the allowed product claims * * * define the product as having a weather end portion ‘formed by natural cleavage commenced at the juncture of the tip end and weather end portions.’ ”

OPINION

As the solicitor notes, the rule applied by the board dates back to at least 1891, when, in Ex parte Painter, 1891 C.D. 200, 57 O.G. 999,

* * * the Commissioner of Patents enunciated the general rule that a product should not be defined in terms of the process of making it. In Painter, a proper exception to the general rule was found on the ground that the product could not be properly defined and discriminated from the prior art otherwise than by reference to the process of producing it. This basic rule and the exception have been recognized and followed continuously by the Patent Office and the Courts. * * * In re Johnson * * *.

The solicitor also correctly notes that in spite of the fact that a product-by-process claim may recite only process limitations, “it is a product which is covered by the claim and not the recited process steps.” He further asserts that the definiteness requirement of the second paragraph of § 112 is the basis for the rule and “that the underlying reason for the often expressed impropriety of product-by-process claims lies in the fact that their scope is undeniably more difficult to determine than the scope of product claims which are drawn in terms of structure or physical characteristics.”

We cannot agree with the solicitor that defining a product in terms of process makes the language of the claims imprecise or indefinite. Their scope, if anything, is more definite in reciting a novel product made by a specific process, assuming, of course, that the process is clearly defined. It does not create a definiteness problem under § 112.

If there is a basis for the rule applied by the board, it resides in the fact that it may be more difficult to determine from a product-by-process claim what product is covered thereby. One cannot read the words of the claim on an article unless he is able to find out how the article was made. Therefore, there may be a sound policy reason behind the rule, as a general proposition, requiring articles to be defined without reference to process. It is a rule of public convenience and we have, therefore, often approved its application. In re Johnson, supra.

However, the general rule has its recognized exceptions. In re Pilkington, supra. We agree with appellant that the rule should not be applied to the situation before us. We have been shown no true product claim which describes appellant’s invention, in the words of the solicitor, “in terms of structure or physical characteristics.” When an applicant seeks to describe his invention by a product-by-process claim because he finds that his invention is incapable of description solely by structure of physical characteristics, it is incumbent upon the Patent Office to indicate where, or how, the applicant’s invention is, or may be, so described. The so-called product claims here, pointed to by the Patent Office, containing as they do the language noted by appellant, do not represent a description of appellant’s invention solely in terms of structure or physical characteristics so as to be true product claims. While we recognize that several structural or characterizing terms derive from processes or methods and that their use in a claim will not prevent it from being considered to be a true product claim, we do not believe that the emphasized language in claim 8 can be considered to be anything other than a description of the shake in terms of the process by which it was made. We note that the language of allowed claim 8 bears a remarkable similarity to that of rejected claim 13. As noted by appellant, “the product — product-byproeess dichotomy is not as absolute and clear cut as the examiner and the board concluded.”

Furthermore, even if it is shown that the product can be broadly defined solely in terms of structure and characteristics, appellant makes the point, with which we agree, that where his product is incapable of description by product claims which are of a different scope, he is entitled to product-by-process claims that recite his novel process of manufacture as a hedge against the possibility that his broader product claims might be invalidated.

Accordingly, the decision of the board rejecting claims 12 and 13 is reversed.

Reversed.

      . A “shake,” in the context of this case, is a shingle split from a short log of straight-grained wood.

      . For example, the term “cut” in appellant’s claim 8.


author: LANE, Judge.

text:
    61 CCPA
    C. J. TOWER & SONS OF BUFFALO, INC., Appellant, v. The UNITED STATES, Appellee.
    Customs Appeal No. 5526.
    United States Court of Customs and Patent Appeals.
    June 6, 1974.

      Glad & Tuttle, San Francisco, attorney of record, for appellant. George R. Tuttle, San Francisco, of counsel.
    Irving Jaffe, Acting Asst. Atty. Gen., Andrew P. Vance, Chief, Customs Section, John N. Politis, New York City, for the U. S.
    Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
   LANE, Judge.

This is an appeal from the decision and judgment of the Second Division of the United States Customs Court reported at 69 Cust.Ct. 105, C.D. 4379, 351 F.Supp. 604 (1972), overruling appellant’s protest to the classification of imported rough steel castings. The trial court concluded that the imported merchandise was in fact parts of furnaces and had been properly classified under items 661.30 TSUS. Appellant contends that the imported merchandise should be classified under item 664.10 TSUS relating to elevators, hoists, winches, cranes, ■ jacks, pulley tackle, belt conveyors, etc. and parts thereof. As an alternative, appellant contends for classification under item 661.70 TSUS relating to industrial machinery for the treatment of materials by a process involving a change of temperature, etc. and parts thereof.

The trial court found from the testimony and the exhibits that the imported merchandise comprises rough castings which were subsequently machined and assembled in this country as parts of a conveyor utilized in a pelletizing plant. The trial court also found that the purpose of the pelletizing plant in which the castings were used is to transform iron ore pellets by the application of heat in order to make the pellets suitable for use in a blast furnace.

Upon consideration of appellant’s arguments on the meaning of the term furnace, and that pelletizing machines are a separate commercial entity designed for use in conjunction with a furnace, we conclude that the decision of the lower court is correct. We agree that the imported castings cannot be classified under item 664.10 because of headnote 1 of subpart A which provides that a machine or appliance which is described in subpart A and also described in other subparts of part 4 is classifiable under subpart A. We likewise agree that the imported castings cannot be classified under item 661.70 since this item is less specific than item 661.30.

The judgment below is affirmed.


author: BALDWIN, Judge.

text:
    KURT S. ADLER, INC., Appellant, v. The UNITED STATES, Appellee.
    Customs Appeal No. 5513.
    United States Court of Customs and Patent Appeals.
    May 30, 1974.

      Murray Sklaroff, New York City (Serko & Sklaroff, New York City), attorney of record, for appellant.
    Harlington Wood, Jr., Asst. Atty. Gen., Andrew P. Vance, Chief, Customs Section, Robert B. Silverman, New York City, for the United States.
    Before MARKEY, Chief Judge, RICH, BALDWIN, LANE and MILLER, Judges.
   BALDWIN, Judge.

This appeal is from the decision and judgment of the United States Customs Court dismissing appellant’s complaint against the Regional Commissioner’s assessment of duty against certain merchandise imported from Czechoslovakia.

We affirm.

The Importations

The importations consist of glass Christmas ornaments packed in boxes, which are comprised of box bottoms, plastic inserts placed in the box bottoms, and box tops. The ornaments and box bottoms were made in Czechoslovakia. The importer purchased the inserts and box tops in West Germany and had them delivered to Czechoslovakia for packaging the ornaments for export.

The Classification and Statutes

The statutes involved are:

Tariff Schedules of the United States:

General Headnotes and Rules of Interpretation:

3. Rates of Duty. The rates of duty in the “Rates of Duty” columns numbered 1 and 2 of the schedules apply to articles imported into the customs territory of the United States as hereinafter provided in this headnote: ******
(e) Products of Communist countries. Notwithstanding any of the foregoing provisions of this headnote, the rates of duty shown in column numbered 2 shall apply to products, whether imported directly or indirectly, of the following countries and areas pursuant to section 401 of the Tariff Classification Act of 1962, to section’231 or 257(e)(2) of the Trade Expansion Act of 1962 or to action taken by the President thereunder:
******
Czechoslovakia
******
(f) Products of all other countries. Products-of all countries not previously mentioned in this headnote imported into the customs territory of the United States are subject to the rates of duty set forth in column numbered 1 of the schedules.
******
6. Containers or holders for imported merchandise. For the purposes of the tariff schedules, containers or holders are subject to tariff treatment as follows:
(b) Not imported empty: Containers or holders if imported containing or holding articles are subject to tariff treatment as follows:
(i) The usual or ordinary types of shipping or • transportation containers or holders, if not' designed for, or capable of, reuse, and containers of usual types ordinarily sold at retail with their contents, are not subject to treatment as imported articles. Their cost, however, is, under section 402 or section 402a of the tariff act, a part of the value of their contents and if their contents are subject to an ad valorem rate of duty such containers or holders are, in effect, dutiable at the same rate as their contents, except that their cost is deductible from dutiable value upon submission of satisfactory proof that they are products of the United States which are being returned without having been advanced in value or improved in condition by any means while abroad.
******
Schedule 5, Part 3, Subpart C:
Christmas ornaments of glass:
******
Other:
[1] [2]
...40% ad 60% ad Item 545.85 Valued not over $7.50 per gross
valorem valorem

19U.S.C. § 1881:

Most-favored-nation principle
Except as ’otherwise provided in this subchapter, in section 1351 of this title, or in section 401(a) of the Tariff Classification Act of 1962, any duty or other import restriction or duty-free treatment proclaimed in carrying out any trade agreement under this subchapter or section 1351 of this title shall apply to products of all foreign countries, whether imported directly or indirectly.

The classification of the goods as Christmas ornaments, under item 545.85, is not in controversy. The dispute involves the assessment of duty on the entire importation at the column 2 rate of 60% ad valorem, applicable to products of Czechoslovakia under General Headnote 3(e). Appellant contends that the column 1 rate of 40% ad valorem, applicable to products of West Germany under General Headnote 3(f), should have been assessed on the cost of the inserts and box tops, and that the column 2 rate of 60% should have been assessed only on the cost of the ornaments and box bottoms which were products of Czechoslovakia.

The Decision and Judgment of the Customs Court

The Customs Court ruled that the assessment of duty at 60% by the Regional Commissioner was correct and dismissed appellant’s action. It grounded its decision upon the provision of General Headnote 6(b) (i) that the usual containers for imported merchandise, such as those involved here, are not subject to treatment as imported articles, but that their cost is part of the value of their contents and, where the contents are subject to an ad valorem rate of duty, the containers are “in effect, dutiable at the same rate as their contents.” The court stated that the phrase “ ‘in effect’ has nothing to do with the classification of usual containers, but is addressed solely to assessment of duty at the ad valorem rate applicable to the contents.” (footnote omitted.) It further considered the words “not subject to treatment as imported articles” to indicate that Congress intended the containers to be “subject to neither classification nor assessment of duty separately from their contents.”

Additionally, the court rejected a charge by appellant that the assessment of the cost of the inserts and box tops at the 60% rate violated the most-favored-nation principle, 19 U.S.C. § 1881. It pointed out that the tariff status of merchandise is controlled by its condition at the time of importation into the United States. It stated that when the inserts and box tops arrived in the United States they were no longer “products” of West Germany, but instead were the usual containers of products imported from Czechoslovakia and, as such, subject to the provisions of General Headnote 6(b) (i). Observing that 6(b) (i) must be construed in pari materia with General Headnote 3, the court stated:

Under the introductory paragraph of General Headnote 3, the rates of duty specified in columns numbered 1 and 2 of the schedules apply to imported “articles”, whereas in headnote 6(b) (i) Congress manifested its intent that usual containers should not be subjected to treatment as imported “articles”. It follows that the inserts and box tops may not be separately assessed at a rate of duty set forth in column 1 of the schedules pursuant to headnote 3(f). The fact that head-notes 3(e) and 3(f) make reference to “products”, while the introductory provision of headnote 3 and headnote 6(b) (i) refer to “articles”, is inconsequential as there is no distinction between those two terms in headnotes 3 and 6(b) (i).

. . Opinion

Appellant’s arguments here are primarily based on the position that the inserts and box tops are “products” of West Germany for the purposes of General Headnotes 3(e), 3(f), and 6(b) (i). However, we agree with the Customs Court that these items had become only parts of the usual containers for the imported ornaments, products of Czechoslovakia, when imported into the United States, and, as such, under General Headnote 6(b) (i), were not subject to treatment as imported articles. We thus find nothing in the aforementioned general headnotes to indicate the assessment of duty here violated any provision of those headnotes. The term “in effect” in General Headnote 6(b) (i) does not suggest, as urged by appellant, that the containers shall receive the same tariff classification as their contents, but not necessarily the identical rate of duty. We agree with the court’s interpretation of that term for the reasons advanced by the court and supported by its citation from the Tariff Classification Schedule referred to in footnote 2, supra.

We also find no error in the holding of the Customs Court that the most-favored nation principle, 19 U.S.C. § 1881, is not violated here. Even aside from the court’s construction of headnote 6(b) (i) in pari materia with headnote 3 and its reasoning that the inserts and box tops in their condition at the time of importation were not products of West Germany, but rather the usual containers of products imported from Czechoslovakia, it is apparent that the District Director afforded the items in question no less favorable treatment than he would have afforded the same items originating in any other most-favored nation under the same conditions. See Jackson, World Trade and the Law of GATT § 11.3 at 255 (1969).

The judgment of the Customs Court is affirmed.

Affirmed.

      . Kurt S. Adler, Inc. v. United States, 68 Cust.Ct. 162, C.D. 4354, 343 F.Supp. 943 (1972).

      . In support of its interpretation of “in effeet,” the court cited the Tariff Classification Study, Interim Report of March 15, 1955 appearing as Appendix A of the Tariff Classification Study, Submitting Report, November 15, 1960, at page 53.

      . “[I]t is within the province of each importing member country to determine, in accordance with the provisions of its law, for the purpose of applying the most-favored-nation provision, whether the goods do in fact originate in a particular country.” Jackson, World Trade and the Law of GATT, § 17.8 at 468 (1969).


author:
LANE, Judge.
      MILLER, Judge

text:
    S. G. B. STEEL SCAFFOLDING & SHORING CO., INC., Appellant, v. The UNITED STATES, Appellee.
    Customs Appeal No. 5542.
    United States Court of Customs and Patent Appeals.
    June 6, 1974.
    Siegel, Mandell & Davidson, New York City, attorneys of record, for appellant. Joshua M. Davidson and Allan H. Kamnitz, New York City, of counsel.
    Irving Jaffe, Acting Asst. Atty. Gen., Andrew P. Vance, Chief, Customs Section, John A. Gussow, New York City, for the United States.
    Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
   LANE, Judge.

This appeal is from the decision and judgment of the United States Customs Court reported at 70 Cust.Ct. 158, C.D. 4423, 361 F.Supp. 631 (1973), dismissing the civil action brought to challenge the Regional Commissioner’s classification of certain imported shore frames within item 657.20 TSUS as other articles of iron or steel. We affirm.

Appellant contends that the imported shore frames are merely an improved version of a single-pole vertical shore and should be classified within item 664.10 TSUS relating to elevators, hoists, winches, cranes, jacks, etc. The trial court which heard the witnesses and examined the exhibits found that the shore frame system consisted of a number of components fitted and used together to shore formwork into which reinforced concrete is poured, as a temporary support until the load can sustain itself. The shore frame system is composed of two parallel poles connected by horizontal bars. Other components, illustrated in plaintiff’s exhibit # 2, include the base plate assembly, the adjustment screw assembly or bottom jack, the staff connector or upper jack, the shore staff assembly, the shore heads, and the cross braces.

After consideration of appellant’s arguments, we have concluded that we are in full agreement with the opinion of the trial judge and we adopt it as our own. The judgment is affirmed.

MILLER, Judge

(dissenting).

Although the horizontal bars and cross-braces cause the merchandise in question to be more than single pole shores, that fact does not prevent its classification under item 664.10 as lifting machinery. This court, in holding that single pole, adjustable shores were “machines” for purposes of paragraph 372 of the Tariff Act of 1930, quoted with approval the following definition of “machine”:

Any device consisting of two or more resistant, relatively constrained parts, which, by a certain predetermined intermotion, may serve to transmit and modify force and motion so as to produce some given effect or to do some desired kind of work; . . .

Brauner & Co. v. United States, 59 CCPA 24, C.A.D. 1030, 451 F.2d 646 (1971). Moreover, no new function or functions were derived by appellant’s shore frames from the addition of the horizontal bars and cross-braces. They were merely rendered more stable and safe in performing their function as lifting machinery. Cf. United States v. Flex Track Equipment Ltd., 59 CCPA 97, C.A.D. 1046, 458 F.2d 148 (1972).

The decision and judgment of the Customs Court should be reversed.


author: BALDWIN, Judge. MILLER, Judge

text:
    The UNITED STATES, Appellant, v. JOHN V. CARR AND SON, INC., Appellee.
    Customs Appeal No. 5525.
    United States Court of Customs and Patent Appeals.
    May 16, 1974.
    Irving Jaffe, Acting Asst. Atty. Gen., Walter H. Fleischer, Anthony J. Steinmeyer, Washington, D. C., for the U. S.
    Barnes, Richardson & Colburn, New York City, attorneys for appellee. E. Thomas Honey and Peter J. Fitch, New York City, of counsel.
    Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE, and MILLER, Judges.
   BALDWIN, Judge.

This appeal is from the decision and judgment of the Customs Court, Third Division, sustaining appellee’s protest concerning the classification of certain fish hooks and their tin containers. The opinion of the Customs Court appears at 69 Cust.Ct. 78, C.D. 4377, (1972). The court held that the fish hooks qualified for duty-free entry under item 800.00, TSUS, as returned American products which had not “been advanced in value or improved in condition by any process of manufacture or other means while abroad.”

After a thorough consideration of appellant’s arguments, we have concluded that we are in full agreement with the opinion of the Customs Court, and we adopt it as our own. The judgment is affirmed.

MILLER, Judge

(dissenting).

I am persuaded that the involved merchandise, having been assembled abroad from bulk into individually-packaged assortments of forty hooks of eight different kinds each to meet the requirements of retail purchasers in this country, was substantially advanced in value and did not, therefore, qualify for classification under Schedule 8, Part 1, Subpart A, item 800.00, which provides as follows:

800.00 Products of the United States when returned after having been exported, without having been advanced in value or improved in condition by any process of manufacture or other means while abroad.....................Free

I agree with appellant that the holding of the Customs Court effectively reads out of the statute the broad phrase “or other means,” as does the majority here. I further agree that the test under item 800.00 is economic (advanced in value) and not merely physical (improved in condition), and that appellee did not sustain its burden of proving that the involved merchandise was not advanced in value or improved in condition by manufacture or other means. As discussed below, the words “other means” were used by the Congress for the purpose of limiting the duty-free entry of merchandise to compete with domestic industry and labor. Liberalizing the tariff laws by expanding the duty-free provisions is a Congressional prerogative.

The phrase “or other means” has been in item 800.00 and its predecessor provisions since the Tariff Act of 1890, enacted by the 51st Congress. It originated during the 50th Congress as an amendment by the Senate Finance Committee to a House-passed bill (H.R. 9051). Under the free list, the House bill had provided:

Articles the growth, produce, and manufacturer of the United States, when returned after having been exported, without having been advanced in value by any process of manufacturer or by labor thereon; ....

As amended by the Senate Finance Committee, the provision read:

Articles the growth, produce, and manufacturer of the United States, when returned after having been exported, without having been advanced in value or improved in condition by any process of manufacture or other means; ....

Thus, the Committee added the physical test, “or improved in condition,” and replaced the words “by labor thereon” with “other means,” obviously a broader phrase which would include labor.

The Senate passed the amended H.R. 9051 on January 22, 1889. The House failed to act, and the bill died at the end of the 50th Congress, April 2,1889.

The 51st Congress commenced December 2, 1889, and the follow-on legislation to the above-referred to H.R. 9051 was introduced by the House Ways and Means Committee as H.R. 9416 on April 16, 1890. The new bill contained the above-quoted provision as amended by the Senate, and there was no attempt to change it as the bill progressed through the two houses and was finally enacted October 1, 1890, as the Tariff Act of 1890.

It should be noted that during the 50th Congress, the Senate was in control of those favoring more protection, and the House was in control of those favoring less protection to domestic industry. The protective tariff was a principal issue in the elections of 1888, with those favoring more protection winning control of both the Senate and the House. Thus, the legislative history of the words “other means” makes it clear that protection of domestic industry and labor was intended; also that the test for free entry was not merely the physical “improved in condition,” but, alternatively, the economic “advanced in value” as well. Not only is the intent of Congress clear, but the words expressing that intent are clear.

Appellee cites Border Brokerage Co. Inc. v. United States, 65 Cust.Ct. 50, C. D. 4052, 314 F.Supp. 788 (1970), relied upon by the Customs Court in its opinion. The case involved 40-pound cartons of tomatoes grown in Florida which were shipped by rail to Canada. There the tomatoes were unloaded, sorted, graded, repacked in 18-pound cartons, and then imported into the United States where they were sold. It seems clear that the repacking was for purposes of wholesale. The Customs Court held that the treatment given the tomatoes in Canada did not advance their value or improve their condition. Whether individual wrapping of the tomatoes would have made a difference in the court’s decision cannot be determined, but it may be significant that the court noted that no cleaning, wiping, or individual wrapping was involved. In any event, the court said:

Hence, it would appear from the principles evolved in the Hallauer and Oakville eases, that the test to be applied in item 800.00 cases is whether the merchandise of American origin has itself (apart from its container) been the object of advancement in value or improvement in condition while abroad.

The case of Hallauer v. United States, 40 CCPA 197, C.A.D. 518 (1953), involved apples transported in 35-pound boxes to Canada, where they were wiped (to remove an insecticide spray residue), polished, graded and wrapped. They were returned to the United States in 42-pound boxes. Obviously wholesale prices were involved both ways. This court held that the treatment given the apples was sufficient to convert the apples per se into a different unit of merchandise and constituted “alterations” within the meaning of paragraph 1615(g) of the Tariff Act of 1930. We are not here concerned with “alterations,” so this case is inapposite.

The case of United States v. Oakville Company, 402 F.2d 1016, 56 CCPA (1968), involved common pins which were exported in bulk to Canada, along with one-inch wide paper tape rolls 17 or 18 inches in diameter. In Canada the paper tape and the pins were used to ' make new rolls, 5,000 pins to the roll, 5% inches in diameter, wound on wooden spools made in Canada. The new rolls were returned to the' United States for use by one of Oakville’s customers in ticketing machines which attached price tags to garments. The government argued that the pins underwent a manufacturing process in Canada and that what was imported was a different commercial entity from what was exported, citing the case of Winthrop-Stearns, Inc. v. United States, 38 Cust.Ct. 1, C.D. 1835 (1956). This court agreed that what was imported was “a different commercial entity” and said that “from the standpoint of commercial reality” the paper tape and the pins had been consumed in making “an entirely different article” (“pins-in-rolls”), so that their value as an article of commerce per se had been destroyed, not advanced. It concluded that the “pins-in-rolls” must be assessed with .duty as an entity, but that the paper tape and the pins were entitled to free entry as American goods returned and that their value should be subtracted from the total value of the pins-in-rolls.

Unlike the Oakville Company case, we do not have before us a situation in which the exported fish hooks were “consumed” in making a different article which itself is to be assessed with duty, so a holding here that appellee has not sustained its burden of proving that the fish hooks were not advanced in value or improved in condition by manufacture or other means, as required by the statute, would not be in conflict with out holding there. We are not, of course, bound by the Customs Court’s holding in Winthrop-Stearns or, for that matter, Border Brokerage, but I can see no reason why Winthrop-Stearns would not be citable as precedent for reversal in this case. As appellant points out, some six years after the decision in that case, Congress enacted the Tariff Schedules of the United States. It is presumed that it did so with full knowledge of the decision, and reenactment of the American-goods-returned provision without change is persuasive that Congress intended the Winthrop-Stearns construction of the statute to continue. See Zemel v. Rusk, 381 U.S. 1, 85 S.Ct. 1271, 14 L.Ed.2d 179 (1965).

The decision of the Customs Court should be reversed and the ease remanded inasmuch as the court did not consider the question of alternative classification under item 807.00.

      . S.Rep. 2332, 50th Cong. 1st Sess. (1888). The report stated that the House bill had been given a “thorough examination” and that the Committee was “convinced of its inadequacy.”

      . S.L.Yol. 26, Ch. 1244 (1890).

      . United States Tariff Commission, THE TARIFF AND ITS HISTORY, U. S. Government Printing Office, 1934.

      . This paragraph provided: “Any article exported from the United States for repairs or alterations may be returned upon the payment of a duty upon the value of the repairs or alterations at the rate or rates which would apply to the article itself in its repaired or altered condition . . . .”

      . In that case medicinal tablets were sent to Canada in bulk. There they were bottled, 100 tablets per bottle, labeled, and the bottles packed in individual containers. The Customs Court said it was apparent that the merchandise was bottled to make it readily available to the ultimate consumer and that it was converted .from tablets per se into a different unit of merchandise or article of trade “undoubtedly of greater commercial value.” The court held that the tablets in bottles were not entitled to free entry as goods returned without having been advanced in value or improved in condition.