IN RE WYER
`Cite as 855 F.2d 221 (1981)
`
`221
`
`to priority. Having failed to present us
`with a priority issue, the sole issue argued
`for establishing jurisdiction, we hold that
`we are without subject-matter jurisdiction.
`
`Having determined that Morris has failed
`to show that we have jurisdiction to grant
`the requested writ of mandamus, we need
`not reach the other issues, namely, irrepara-
`ble injury sufficient to justify theextraor-
`dinary remedy of mandamus, abuse of dis-
`cretion by the PTO in deciding when to
`decide the Morris motions before us, that
`the writ is in aid of our jurisdiction, and the
`public
`interest
`in granting the writ.
`Though we need not reach these issues, we
`nevertheless state, in order to lay them to
`rest and assure that this interference will
`
`now be promptly terminated in the PTO,
`that we find no merit in any of them.
`If
`petitioner is correct, Marshall will be de-
`prived of this support for his case. We see
`no extraordinary injury if the matter is
`deferred until final hearing.
`
`The petition is denied.
`
`The request for a suspension of the inter-
`ference proceedings
`is mooted by the
`board’s suspension of July 15, 1981,4 and the
`request is dismissed.
`DENIED.
`
`W
`
`o E KEY NUMBERSYSIEM
`T
`
`In re Joseph Richard WYER.
`No. 81-528.
`
`United States Court of Customs
`
`and Patent Appeals.
`
`July 30, 1981.
`Rehearing Denied Oct. 1, 1981.
`
`aminer’s rejection of all claims on ground
`that invention was described in a printed
`publication in a foreign country more than
`one year before filing of application serial
`No. 740,343 for a patent on a “Cable Junc-
`tion Box.” The Court of Customs and Pat-
`
`ent Appeals, Rich, J., held that contents of
`application for Australian patent were suf-
`ficiently accessible to public and to persons
`skilled in pertinent art to qualify as “print-
`ed publication” and preclude United States
`patent, where filing for Australian patent
`resulted in copies of application being laid
`open to public inspection at Australian Pat-
`ent Office and each of its five “sub-offices”
`
`over one year before application was filed
`in United States, especially where equip-
`ment was available for producing enlarged
`paper copies for purchase by public and
`diazo copies were available for sale to public
`upon application to Australian Patent Of-
`fice.
`
`Affirmed.
`
`1. Patents tar-=68
`
`Within statute providing that invention
`shall be entitled to patent unless it was
`described in printed publication in this or
`foreign country more than one year prior to
`date of application for patent in United
`States, “printed publication” is a unitary
`concept and traditional dichotomy between
`“printing” and “publication” is no longer
`valid. 35 U.S.C.A. § 102(b).
`
`2. Patents 6:67
`
`Statute precluding patent if invention
`was described in printed publication more
`than one year prior to date of application
`for patent was designed to prevent with-
`drawal by inventor, as subject matter of
`patent, that which is already within posses-
`sion of public. 35 U.S.C.A. § 102(b).
`
`3. Patents 65:69
`
`Appeal was taken from a decision of
`the United States Patent and Trademark
`
`Office Board of Appeals sustaining the ex-
`
`Under statute precluding patent if in-
`vention was described in printed publication
`more than one year prior to date of applica-
`
`4. Notice of and reasons for the suspension are
`set forth in the Commissioner’s Memorandum
`of July 17, 1981.
`
`Amneal 1090
`
`Amneal v. Supernus
`IPR2013-00372
`
`

`

`222
`
`655 FEDERAL REPORTER, 2d SERIES
`
`tion for patent, question to be examined is
`accessibility to at least pertinent part of
`public of perceptible description of inven-
`tion, in whatever form it may have been
`recorded, and such reference is printed pub-
`lication upon satisfactory showing that doc-
`ument has been disseminated or otherwise
`
`made available to extent that persons inter-
`ested and ordinarily skilled in subject mat-
`ter or art, exercising reasonable diligence,
`can locate it and recognize and comprehend
`therefrom essentials of claimed invention
`
`without need of further research or experi-
`mentation. 35 U.S.C.A. § 102(b).
`4. Patents W68
`
`Contents of application for Australian
`patent were sufficiently accessible to public
`and to persons skilled in pertinent art to
`qualify as “printed publication” and pre-
`clude United States patent, where filing for
`Australian patent resulted in copies of ap-
`plication being laid open to public inspec-
`tion at Australian Patent Office and each
`
`of its five “sub-offices” over one year be-
`fore application was filed in United States,
`especially where equipment was available
`for producing enlarged paper copies for
`purchase by public and diazo copies were
`available for sale to public upon application
`to Australian Patent Office.
`35 U.S.C.A.
`§§ 102, 102(b).
`5. Patents W68
`
`With respect to statute precluding pat-
`ent when invention was described in printed
`publication more than one year prior to
`date of application for patent, whether in-
`formation is printed, handwritten, or on
`microfilm or magnetic disc or tape, one who
`wishes
`to characterize
`information
`as
`
`“printed publication” should produce suffi-
`cient proof of its dissemination or accessibil-
`ity to persons who were concerned with art.
`35 U.S.C.A. §§ 102, 102(b).
`
`John Smith-Hill, Lester Horwitz and
`Roger S. Thompson, New York City, for
`appellant.
`
`Joseph F. Nakamura, Sol. and Jere W.
`Sears, Deputy 801., Washington, D. C., of
`counsel for Patent and Trademark Office.
`
`and
`Judge,
`Before MARKEY, Chief
`RICH, BALDWIN, MILLER and NIES,
`Judges.
`
`RICH, Judge.
`
`is from the decision of the
`This appeal
`United States Patent and Trademark Office
`
`(PTO) Board of Appeals (board) sustaining
`the examiner’s rejection of all claims under
`35 U.S.C. § 102(b),1 on the ground that
`applicant’s invention was described in a
`
`printed publication in a foreign country
`more than one year prior to the US. filing
`date of his application serial No. 740,343,
`filed November 9, 1976, for a patent on a
`“Cable Junction Box.” We affirm.
`
`Background 2
`
`This appeal was heard on an agreed
`statement of the case, pursuant to CCPA
`Rule 5.5, which presents the following facts.
`On March 13, 1972, appellant filed Austra-
`lian Patent Application No. PA 8273 accom-
`panied by a provisional specification, that
`is, one Without claims. On February 28,
`1973, appellant filed a specification with
`claims and on August 29, 1974, more than
`two years before filing of the application at
`bar, the entire application, renumbered as
`patent application 52,691/73, was laid open
`to public inspection by the Australian Pat-
`ent Office and a printed abstract thereof
`was published. The disclosure of the in-
`stant US. application corresponds to that of
`the Australian application.
`
`to
`2. Appellant’s motion requesting the court
`take judicial “notice of certain facts and for
`leave to file a supplemental reply brief in re-
`gard thereto, or, to remand the application for
`further proceedings in the Patent and Trade-
`mark Office,” disposition of which was re-
`served until after oral argument, is hereby de-
`nied.
`
`1.
`
`*
`
`§ 102(b) reads, in pertinent part:
`A person shall be entitled to a patent un-
`less—
`
`*
`
`*
`
`1k
`
`*
`
`at
`
`(b) the invention was * * * described in a
`printed publication in this or a foreign coun-
`try * * * more than one year prior to the
`date of the application for patent in the Unit-
`ed States * * *.
`
`

`

`IN RE WYER
`Cite as 655 F.2d 221 (1981)
`
`223
`
`(1) a microfilm copy
`Involved here are:
`of the Australian application preserved in
`the Australian Patent Office as a security
`reel, (2) a microfilm copy of the application
`that
`is cut up and used to make diazo
`copies, and (3) the diazo copies. Appellant
`explained further in his brief before the
`board:
`
`Information which has recently been
`received shows that at the time in ques-
`tion in the case namely August 29, 1974
`when the Abstract of the corresponding
`Australian application was published, it
`was the practice of the Australian Patent
`Office to produce two microfilm copies of
`each specification.
`These copies were
`made on 16 mm film, with each frame
`corresponding to a page of the specifica-
`tion. One of the microfilm copies was
`retained in the Patent Office as a securi-
`
`ty reel, to provide a permanent record of
`the specification, while the second copy
`was cut into strips of up to six frames
`and up to six strips were placed within a
`transparent
`jacket.
`By selecting the
`number of frames of each strip, and the
`number of strips in each jacket, the mi-
`crofilm frames of each specification were
`placed in one or more jackets, and each
`jacket contained the microfilm frames
`pertaining to only one application.
`The
`transparent
`jackets
`containing
`these strips of the second microfilm copy
`were than [sic] used to produce diazo
`copies, each copy being a photograph of
`up to 36 microfilm frames * * *.
`Six of these diazo copies were produc—
`ed, one being retained at the Australian
`Patent Office and the other five being
`distributed to the sub-offices respectively.
`(It has been learned that there are five of
`these suboffices not six as indicated in
`
`the brief filed August 30, 1978.) The
`second microfilm copy (cut
`in strips
`placed within transparent jackets) was
`also retained in the Australian Patent
`
`Office to permit production of further
`diazo copies should the need arise, as ex-
`plained below.
`Equipment was available to the public
`in the Patent Office and in the sub~of—
`
`fices for providing an enlarged reproduc-
`
`tion of the diazo copies on a display
`screen. Equipment was also available for
`producing enlarged paper copies for pur-
`chase by the public. Moreover, diazo cop-
`ies were also available for sale to the
`
`public upon application to the Australian
`Patent Office,
`these latter diazo copies
`being produced to order from the second
`microfilm copy, as mentioned above.
`
`Issue
`
`The sole issue is whether what occurred
`
`in the Australian, Patent Office resulted in
`the production of a ‘,‘printed publication”
`within the meaning of 35 U.S.C. § 102(b).
`
`The Board Opinion
`
`The board began its opinion by stating
`that to be a printed publication “the docu-
`ment must, of course, have been both ‘print-
`ed’ and ‘published’,” citing In re Tenney, 45
`CCPA 894, 254 F.2d 619, 117 USPQ 348
`(1958). With respect to what it termed the
`“ ‘printed’ requirement,” it stated that al-
`though Tenney held otherwise, the “trend
`seems to be that a microfilm is ‘printed’.”
`In support of this proposition the board
`cited the leading cases of Philips Electronic
`& Pharmaceutical Industries Corp. V. Ther-
`mal & Electronics Industries, Inc., 450 F.2d
`1164, 171 USPQ 641 (3d Cir. 1971), and
`I.C.E. Corp. V. Armco Steel Corp, 250
`F.Supp. 738, 148 USPQ 537 (S.D.N.Y.1966).
`Noting the procedure followed in the Aus-
`tralian Patent Office, the board disposed of
`the first requirement, saying:
`
`We fail to see any difference in dissemi-
`nation probability in reproducing a copy
`of a document from the microfilm upon
`request on the one hand and in reproduc-
`ing a number of copies from the micro-
`film and storing them on a shelf for
`distribution upon request on the other
`hand.
`* * *.
`‘
`
`In any event, * * * copies were repro-
`duced from the microfilm * * *
`[and
`these] six diazo copies constitute evidence
`that copies were in fact made from the
`microfilm of the Australian application.
`
`

`

`224
`
`655 FEDERAL REPORTER, 2d SERIES
`
`Accordingly, we find that the microfilm
`of the Australian application meets the
`“print
`” requirement.
`
`Turning to the “publication” require-
`ment, the board noted that the touchstone
`is public accessibility and resolved the ques-
`tion in the following manner:
`Here,
`the Australian application was
`accessible to the public as of August 29,
`1974. An Abstract, claim 1 of the appli-
`cation, was published at that time. The
`application was classified, and the Ab-
`stract was arranged with other Abstracts
`according to this classification system.
`No question has been raised as to the
`propriety of the classification. A copy of
`the entire Australian application was
`available upon request using microfilm
`reproduction equipment. Under
`these
`circumstances, which occurred as of Au-
`gust 29, 1974, we are convinced that the
`invention was readily accessible to that
`part of the public most concerned with it
`and,
`therefore, [there was] a “publica-
`tion.”
`
`Although the board recognized that there
`exists a line of cases which hold that a
`
`patent application open to the public in a
`patent office is not a “printed publication,”
`it stated that, “the provision of a microfilm
`of the application together with the availa—
`bility of equipment for making copies from
`the microfilm increases the probability that
`the document will be widely circulated.”
`Furthermore, said the board,
`An additional factor is that the diazo
`
`copies of the Australian application are
`kept in the Australian Patent Office and
`its branches. A patent office is the re-
`pository of
`inventions and the place
`where the artisan would turn for solu-
`
`tions for problems. What better place is
`there to store information to enhance the
`probability of its wide circulation?
`
`In conclusion, the board stated:
`We think that the time has come to
`
`hold that a microfilm of a foreign patent
`application maintained in the foreign pat-
`ent office, accessible to the pertinent part
`of the public and available for duplication
`is a “printed publication” as of its date of
`accessibility, and we so hold.
`
`Upon appellant’s request for reconsidera-
`tion of its decision, the board stated that it
`regarded both the cut up original microfilm
`copy and any one of the diazo copies as a
`“printed publication.” The microfilm copy
`preserved as a security reel in the Austra-
`lian Patent Office was not mentioned.
`
`Arguments 0n Appeal
`
`Appellant presents different arguments
`regarding the application of § 102(b) de-
`pending upon the type of copy involved.
`He argues that the microfilm copy that is
`cut up is used to make numerous identical
`copies and is, therefore, no more “printed”
`than is a lithographer’s plate or a mimeo-
`graph stencil. Since the film is kept in the
`patent office and used only for official pur-
`poses, he further argues that it cannot be
`considered a “publication” because there is
`no public access to it. Additionally, al-
`though he contends that by the board’s
`failure to discuss the microfilm copy pre-
`served as a security reel in the patent office
`in its response to his request for reconsider-
`ation, it has impliedly agreed that it is not a
`printed publication, he asserts that
`the
`above arguments regarding the cut-up copy
`apply with equal force to the security copy.
`
`With regard to the diazo copies, appellant
`states that a microfilm copy available to the
`public for reproduction is not “printed,”
`that only the copies made therefrom are.
`He urges that “To hold otherwise, would
`result in any legible document that is acces-
`sible to the public being regarded as a
`printed publication (e. g., the original Dec-
`laration of Independence), since an unlimit—
`ed number of copies of the document could
`be reproduced by modern xerographic or
`photographic techniques.” Further, it is as-
`serted that because only seven copies were
`in fact produced and only with the intention
`that they not be circulated to the public but
`held within the patent office
`and its
`
`branches,
`“printed.”
`
`they cannot be
`
`regarded as
`
`Since publication implies not only access,
`it is argued, but activity in distributing the
`
`

`

`IN RE WYER
`Cite as 655 F.2d 221 (1981)
`
`225
`
`document to the public, appellant submits
`that the diazo copies also do not meet the
`“publication” requirement. The distinction,
`he states, is between a copy of a document
`reproduced in advance, so as to be immedi-
`ately available for distribution, and one re-
`produced only upon request.
`In this case
`the diazo copies were not circulated but
`were maintained in the patent office and its
`branches.
`
`Appellant also asserts that it is well-set—
`tled that a foreign patent application laid
`open to public inspection is not a printed
`publication, citing In re Heller, 103 USPQ
`332 (Ed. App. 1953). The only difference
`between that case and the case at bar, it is
`maintained, is that there one full-sized legi-
`ble copy was at issue, whereas here seven
`copies were laid open to inspection which
`could not be read without magnification.
`Appellant argues that whether a patent
`application open to inspection in a foreign
`patent office is a printed publication should
`not depend upon the technique used to re-
`produce the application.
`
`The solicitor, on the other hand, argues
`that we should reexamine the (allegedly)
`broad holding of In re Tenney, supra, that
`microfilm is not a printed publication. The
`PTO emphasizes that the Tenney court not-
`ed in that case that there was only one
`It stated that “there
`microfilm available.
`
`is no probability from a mere showing that
`a microfilm copy of a disclosure has been
`produced, that the disclosure has achieved
`wide circulation and that,
`therefore,
`the
`public has knowledge of it.” The instant
`case is different, the PTO argues, for all
`' but one diazo copy has been geographically
`distributed to sub-offices, ostensibly to fa-
`cilitate viewing by the Australian public.
`Since the patent office was ready to supply,
`on order, blown-up prints made from the
`diazo copies,
`the probability of public
`knowledge of appellant’s application ex-
`ceeds that for the German application in
`Tenney. Any requirement that prints be
`made in advance, it is submitted, would
`defeat the very purpose of using microfilm,
`which is to save space.
`
`OPINION
`
`It has been stated by this and other
`courts that to constitute a “printed publica-
`tion,” as that
`term is used in § 102, a
`reference must be both “printed” and “pub-
`lished.”
`In re Bayer, 568 F.2d 1357, 1359,
`196 USPQ 670, 673 (CCPA 1978);
`In re
`Tenney, 45 CCPA 894, 898, 254 F.2d 619,
`622, 117 USPQ 348, 351 (1958); General
`Tire & Rubber Co. v. Firestone Tire Co., 849
`F.Supp. 345, 355, 174 USPQ 427, 442 (ND.
`Ohio 1972), modified, 489 F.2d 1105, 180
`USPQ 98 (6th Cir. 1973). See generally 1
`Chisum, Patents § 3.04 (1978); Rose, Do
`You Have A “Printed Publication?" If Not,
`Do You Have Evidence 01' Prior “Knowl-
`
`edge Or Use?”, 61 JPOS 643 (1979); Herb-
`ster, It’s Time To Take The “Printing” Out
`01" “Printed Publications", 49 JPOS 38
`(1967).
`
`With regard to the “printing” require-
`ment,
`it has been stated that the “only
`realistic distinction that we can see as be-
`
`tween ‘handwritten’ and ‘printed’ publica-
`tions relates to the method of producing
`them.” Tenney, supra at 901, 254 F.2d at
`
`625, 117 USPQ at 353 (emphasis in original).
`In other words, the requirement of printing -
`increases the probability that a reference
`will be available to the public, for “Con-
`gress no doubt reasoned that one would not
`go to the trouble of printing a given de-
`scription of a thing unless it was desired to
`print a number of copies of it.”
`Id. at 902,
`254 F.2d at 626, 117 USPQ at 354.
`
`The “publication requirement,” said to be
`“so connected with [the “printing” require-
`ment] that treatment of the one cannot be
`satisfactorily done without overstepping
`into the bounds of the other,” Id. 45 CCPA
`at 898 n.4, 254 F.2d at 622 n.4, 117 USPQ
`351 n.4, has been equated with public acces-
`sibility to the “printed document.”
`In re
`Bayer, supra 568 F.2d at 1359, 196 USPQ at
`673.
`
`On the other hand, there are a number of
`cases which eschew this
`two-tiered ap-
`proach and view the unitary concept of
`“printed publication” in the context .of dis-
`semination or accessibility alone.
`Philips
`Electronics & Pharmaceutical
`Industries
`
`

`

`226
`
`655 FEDERAL REPORTER, 2d SERIES
`
`Corp. v. Thermal & Electronic Industries,
`Inc, 450 F.2d 1164, 1170, 171 USPQ 641, 645
`(3d Cir. 1971);
`I.C.E. Corp. V. Armco Steel
`Corp, 250 F.Supp. 738, 742, 743, 148 USPQ
`537, 540 (S.D.N.Y.1966).
`It was reasoned in
`Philips that:
`
`The traditional process of “printing” is no
`longer the only process synonymous with
`“publication.” The emphasis, therefore,
`should be public dissemination of the doc-
`ument, and its availability and accessibili-
`ty to persons skilled in the subject matter
`or art.
`[Emphasis ours.]
`
`[I] We agree that “printed publication”
`should be approached as a unitary concept.
`The traditional dichotomy between “print-
`ing” and “publication” is no longer valid.
`Given the state of technology in document
`duplication, data storage, and data-retrieval
`systems, the “probability of dissemination”
`of an item very often has little to do with
`whether or not it is “printed” in the sense
`of that word when it was introduced into
`
`In any event,
`the patent statutes in 1836.3
`interpretation of the words “printed” and
`“publication” to mean “probability of dis-
`semination” and “public accessibility,” re-
`spectively, now seems to render their use in
`the phrase “printed publication” someWhat
`redundant. This becomes clear upon exam-
`ination of the purpose of the § 102 printed
`publication bar.
`
`[2, 3] As this court pointed out in In re
`Bayer, supra 568 F.2d at 1359, 196 USPQ at
`675, the printed publication provision was
`designed to prevent withdrawal by an in-
`ventor, as the subject matter of a patent, of
`that which was already in the possession of
`the public. Thus, the question to be exam-
`ined under § 102(b) is the accessibility to at
`least the pertinent part of the public, of a
`perceptible description of the invention, in
`whatever form it may have been recorded.
`Access involves such factual
`inquiries as
`classification and indexing.
`In other words,
`
`3. The “printed publication” bar appears to
`have been first enacted in § 7 (on examination)
`of the Patent Act of 1836, 5 Stat. 117, July 4,
`1836. Section 6 of the Act of 1793, 1 Stat. 318,
`
`such a reference is a “printed publication”
`and a bar to patentability
`
`* * * upon a satisfactory showing that
`such document has been disseminated or
`otherwise made available to the extent
`
`that persons interested and ordinarily
`skilled in the subject matter or art, exer-
`cising reasonable diligence, can locate it
`and recognize and comprehend therefrom
`the essentials of the claimed invention
`without need of further research or ex-
`
`[I.C.E. Corp., supra [250
`perimentation.
`F.Supp.] at 743, 148 USPQ at 540.]
`
`[4] Appellant filed an appliCation for an
`Australian patent which resulted in copies
`of that application being classified and laid
`open to public inspection at the Australian
`Patent Office and each of its five “sub-of-
`
`fices” over one year before he filed his
`application in the United States. Appellant
`himself informs us that:
`
`Equipment was available to the public
`in the Patent Office and in the sub-of-
`
`fices for providing an enlarged reproduc-.
`tion of
`the diazo copies on a display
`screen. Equipment was also available for
`producing enlarged paper copies for pur-
`chase by the public. Moreover, diazo cop-
`ies were also available for sale to the
`
`public upon application to the Australian
`Patent Office,
`these latter diazo copies
`being produced to order from the second
`microfilm copy * * *.
`
`Even though no fact appears in the agreed
`statement respecting actual viewing or dis-
`semination of any copy of the application,
`there is no dispute that the records were
`maintained for this purpose. Given that
`there is also no genuine issue as to whether
`the application was properly classified, in-
`dexed, or abstracted, we are convinced that
`the contents of the application were suffi—
`ciently accessible to the public and to per-
`sons skilled in the pertinent art to qualify
`as a “printed publication,” notwithstanding
`those cases holding that a foreign patent
`
`listing defenses, used the expression “described
`in some public work anterior to the supposed
`discovery of the patentee.”
`
`

`

`ATLANTIC RICHFIELD CO. v. DEPT. OF ENERGY
`Cite as 655 F.2d 227 (1981)
`
`227
`
`application laid open for public inspection is
`not a printed publication.‘
`
`[5] While intent to make public, activity
`in disseminating information, production of
`a certain number of copies, and production
`by a method allowing production of a large
`number of copies may aid in determining
`whether an item may be termed a “printed
`publication,” they are neither always con-
`clusive nor requisite. Each case must be
`decided on the basis of its own facts. Ac-
`
`cordingly, whether information is printed,
`handwritten, or on microfilm or a magnetic
`disc or tape, etc., the one who wishes to
`characterize the information,
`in whatever
`form it may be, as a “printed publication”
`* * * should produce sufficient proof of
`its dissemination or that it has otherwise
`
`been available and accessible to persons
`concerned with the art to which the docu-
`
`ment relates and thus most likely to avail
`themselves of its contents.
`[Philips Elec-
`
`tronic Corp., supra 450 F.2d at 1171, 171
`USPQ at 646.]
`
`Through demonstration of the accessibili-
`ty of reproductions of appellant’s applica-
`tion in the Australian Patent Office and in
`
`each of its sub-offices, the PTO has met this
`burden.
`
`In affirming the board’s decision, how-
`ever, we do not approve its rather sweeping
`statement, quoted at the beginning, that
`* * * the time has come to hold that a
`
`microfilm of a foreign patent application.
`maintained in the foreign patent office,
`accessible to the pertinent part of the
`public and available for duplication is a
`“printed publication” * * *.
`
`We are approving its decision on the totali-
`ty of the facts of this case, several of which
`are missing from that statement. Decision
`in this field of statutory construction and
`application must proceed on a case-by-case
`basis.
`
`4. Philips Electronic Corp., supra 450 F.2d at
`1171, 171 USPQ at 646; Bendix Corp. V. Balax,
`Inc, 421 F.2d 809, 811, 164 USPQ 485, 487 (7th
`Cir. 1971); Reeves Bros, Inc. v. United States
`Laminating Corp., 282 F.Supp. 118, 136, 157
`USPQ 235, 250 (E.D.N.Y.1968), aff’d, 417 F.2d
`869, 163 USPQ 577 (2d Cir. 1969); General Tire
`
`The decision of the board affirming the
`rejection of claims 1—5 and 7—13 is af-
`firmed.
`
`AFFIRMED.
`
`W
`
`o g KEY NUMBER svstM
`T
`
`ATLANTIC RICHFIELD COMPANY,
`Plaintiff-Appellant,
`V.
`
`DEPARTMENT OF ENERGY, Charles W.
`Duncan, Jr., The United States of Amer-
`ica and Waterbury Petroleum Products,
`Defendants-Appellees.
`No. 2—32.
`
`Temporary Emergency Court of Appeals.
`
`Argued April 10, 1981;
`Decided June 29, 1981.
`
`Suit was filed by gasoline seller after
`Federal Energy Administration issued re-
`medial order which found that seller had
`overcharged buyer and required refund of
`overcharges. The United States District
`Court for the District of Connecticut, Ellen
`B. Burns, J., upheld remedial order, and
`seller appealed. The Temporary Emergen-
`cy Court of Appeals, Weigel, J., held that:
`(1) substantial evidence supported Depart-
`ment of Energy’s determination that buyer
`was a distributor during relevant period
`and thus was entitled to lower price under
`applicable price regulations; (2) seller failed
`to raise before agency its alleged right to
`offset $36,000 against refund ordered by
`remedial order, and was therefore barred
`from now raising issue for the first time;
`
`& Rubber Co. v. Firestone Tire Co., 349 F.Supp.
`345, 355, 174 USPQ 427, 442 (N.D.Ohio 1972);
`EX parte Haller, 103 USPQ 332, 334 (Bd.App.
`1953). See the discussion in In re Tenney,
`supra 45 CCPA at 899—900, 254 F.2d at 624,
`117 USPQ at 352.
`
`