Fregeau v. Mossinghoff, 85-649

Citation227 USPQ 848,776 F.2d 1034
Decision Date07 November 1985
Docket NumberNo. 85-649,85-649
Parties, 227 U.S.P.Q. 848 Leo J. FREGEAU, Appellant, v. Gerald J. MOSSINGHOFF, Appellee. Appeal
CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Robert A. Vanderhye, Cushman, Darby & Cushman, Washington, D.C., argued for appellant.

Richard E. Schafer, Associate Sol., U.S. Patent and Trademark Office of Arlington, Virginia, argued for appellee. With him on brief were Joseph F. Nakamura, Sol., and John W. Dewhirst, Associate Sol., Washington, D.C.

Before NIES, NEWMAN and BISSELL, Circuit Judges.

NIES, Circuit Judge.

This appeal is from the judgment of the United States District Court for the District of Columbia, 602 F.Supp. 484, 224 USPQ 238 (1984), dismissing a civil action taken under 35 U.S.C. Sec. 145 challenging the determination of the U.S. Patent and Trademark Office Board of Appeals (board) that claims 21-30 of application Serial No. 906,790 are unpatentable under 35 U.S.C. Sec. 101 (inoperativeness--lack of utility), Sec. 112 (inadequate disclosure of "how to use"), and Sec. 103 (obviousness). Our jurisdiction over the appeal is found in 28 U.S.C. Sec. 1295(a)(4)(C). We affirm.


The invention in suit relates to a method for enhancing the flavor of a beverage by passing it through a magnetic field. The application includes ten claims (numbered 21-30) covering not only changes in flavor, but also changes in the aroma, specific gravity (density), and amount of volatile chemicals in the beverage resulting from the application of a magnetic field. The flavor-enhanced beverage purportedly obtained by following the claimed method is also separately claimed in product-by-process claims. Representative claims 21 and 27 are reproduced below:

21. A method of increasing the specific gravity of a liquid selected from the group consisting essentially of ethyl alcohol containing liquids, fruit juices, coffee, tea, extruded soy protein, and chicken soup, said method consisting essentially of the steps of

establishing a magnetic field with a tubular permanent magnet with a central bore, and having opposite radially spaced first and second pole portions of opposite polarity, and a minimum strength effective to increase the specific gravity of the liquid, and

passing the liquid through the field so that the specific gravity thereof is increased.

27. A beverage selected from the group consisting essentially of ethyl alcohol containing liquids, fruit juices, coffee, tea, extruded soy protein, and chicken soup, the beverage having enhanced flavor, obtained by practicing the method steps consisting essentially of establishing a substantially constant magnetic field with a minimum strength of about 3000 Gauss, and passing the beverage through the field so that the flavor thereof is enhanced.

The examiner rejected the claims for lack of utility due to inoperativeness under Sec. 101 and appellant admits that the invention "is one about which those of ordinary skill in the flavor chemistry art would be skeptical when first hearing of it." The claims were also rejected under Sec. 112 as "vague, indefinite and unduly broad," and under Sec. 103 as obvious over a handbook (King, Pyramid Energy Handbook, Warner Books, N.Y., 1977) an article (Davis et al., The Magnetic Effect, Exposition Press N.Y., 1977), and a French patent (No. 1,603,804, issued July 15, 1968). The product-by-process claims were rejected under Sec. 103 as obvious over like, untreated products.

Appellant challenged the examiner's rejection on inoperativeness by submitting declarations from Robert C. Lindsay, Ph.D., Professor of Food Science at the University of Wisconsin-Madison, who had conducted taste tests and tests for detecting physical property changes of various beverages subjected to the invention. Dr. Lindsay averred that the test results demonstrated the operability of the invention. The examiner, however, remained unconvinced, stating in his final office action that, although Dr. Lindsay's credentials were not questioned, his declaration alone was insufficient to establish "evidence of the type convincing to the scientific community" and that the differences detected by his tests were insignificant.

The board agreed with the examiner that the test results failed to demonstrate operativeness of the invention, noting that while the claimed method covered "a broad class of comestible and non-comestible liquids, ... the experimental data was limited to a relatively small number of samples, particularly in the case of the physical property tests." The board also concurred with the examiner that the differences in physical properties observed were "at best minimal" and did not warrant a conclusion that they were the result of any magneto-chemical effect, rather than due to extrinsic factors, e.g., variations in ambient conditions or experimental error. With regard to the taste sensitivity tests, the board was unconvinced that the observed results were statistically significant.

The examiner's rejection under Sec. 112 was affirmed by the board "insofar as it relates to the how-to-use requirement of the statute" on the grounds that "a specification that does not establish with certainty that the claimed invention will operate in the manner intended necessarily fails to satisfy the how-to-use requirement of the statute."

Finally, with regard to the Sec. 103 rejection, the board agreed with the examiner that the King handbook (teaching that magnetism can be used to mellow coffee), the Davis article (disclosing the use of magnetism to treat water and milk), and the French patent (teaching that a magnetic field can be used to improve the properties of fluid foodstuffs) rendered the invention obvious. The board rejected appellant's argument that the King and Davis references related to "pseudo-sciences" and would be "completely dismissed out of hand by one of ordinary skill in the art," noting that the references were "printed publications" within the purview of the statute and that appellant's position was "in direct conflict with his position in regard to the operability of the subject invention."

At the trial before the district court under 35 U.S.C. Sec. 145, appellant submitted an additional report prepared for the litigation by Dr. Lindsay which set forth additional data and a theory on how magnetism could act to enhance the flavor of beverages. Dr. Lindsay also testified at the trial, as did the inventor, Fregeau. In its opinion, reported at 224 USPQ 238 (1984), the district court held that, despite the additional evidence submitted by appellant, it lacked a "thorough conviction" that the board had erred, relying on the case law developed in the D.C. Circuit, e.g., De Seversky v. Brenner, 424 F.2d 857, 858 (1970). Accordingly, the complaint was dismissed.

35 U.S.C. Sec. 145 Proceedings

This appeal involves a PTO Board of Appeals decision which comes before us, not directly under 35 U.S.C. Sec. 141, but via the circuitous route of a civil action against the Commissioner for a patent under 35 U.S.C. Sec. 145. 1 The thrust of such a complaint is that the decision of the board is erroneous on the facts, the law, or both. Indeed, the board's decision is the jurisdictional base for the suit and the record before the office is the evidentiary nucleus. The proceeding, however, is not simply an appeal since the parties are entitled to submit additional evidence. Thus, an action under Sec. 145 is conducted as a trial; however, it is in essence a suit to set aside the final decision of the board, like the bill in equity from which it was derived, "to set aside the conclusions reached by the administrative department." Morgan v. Daniels, 153 U.S. 120, 124, 14 S.Ct. 772, 773, 38 L.Ed. 657 (1894).

The nature of the action was reaffirmed in Hoover Company v. Coe, 325 U.S. 79, 83, 85, 87-88, 65 S.Ct. 955, 957, 958, 959, 89 L.Ed. 1488 (1945), in the following terms:

It is evident that alternative rights of review are accorded an applicant--one by appeal to the United States Court of Customs and Patent Appeals, the other by bill in equity filed in one of the federal district courts. In the first the hearing is summary and solely on the record made in the Patent Office; in the other a formal trial is afforded on proof which may include evidence not presented in the Patent Office. [Footnote omitted.]

* * *

* * *

Thus, a District Court might set aside, on bill filed, any ruling refusing a patent...." [Emphasis added.]

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* * *

[T]hroughout more than a century Congress has for correction of erroneous adverse rulings, which if unreversed would end the proceedings in the Patent Office, preserved the remedy by bill in a District Court either as additional to or alternative to that by summary appeal and has made the effect of adjudication in equity the same as that of decision on appeal.

The Hoover decision contains an exhaustive analysis of the provisions in the patent statutes since 1836, together with the legislative history, respecting review by means of a bill in equity against the Commissioner. As explained therein, such an action was available originally only in connection with a decision on priority in an interference (now provided in Sec. 146), but was later extended to a patentability decision (now provided in Sec. 145).

In the legislative history addressing the carryover of these procedures into the 1952 Patent Act, it is stated:

This group of sections [Secs. 141-146] makes no fundamental change in the various appeals and other review of Patent Office action.

1952 U.S.Code Cong. & Ad.News 2394 at 2400.

In view of the history of the sections, it cannot seriously be contended that a Sec. 145 action is other than one to overturn the board's decision. See Case v. CPC International, Inc., 730 F.2d 745, 751, 221 USPQ 196, 202 (Fed.Cir.1984); accord Velsicol Chemical Corp. v. Monsanto Corp., 579 F.2d 1038, 1043, 198 USPQ 584, 589 (7th Cir.1978); Rex Chainbelt, Inc. v. Borg-Warner...

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