# In re Way

> Court of Customs and Patent Appeals · May 1, 1975 · 514 F.2d 1057

URL: https://www.frixlaw.com/law-library/cases/8896379

## Case

- **Full name:** Application of Lewis A. WAY
- **Court:** Court of Customs and Patent Appeals
- **Decided:** May 1, 1975
- **Citations:** 514 F.2d 1057; 185 U.S.P.Q. (BNA) 580; 1975 CCPA LEXIS 163
- **Precedential status:** Published
- **Opinion:** Concurrence by Miller
- **Judges:** Miller, Rich
- **Cited by:** 2 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/8896379

## Opinion text

MILLER, Judge
(concurring).
Although I agree with the result reached by the majority, the opinion fails to recognize a consequence of the decision in light of the statement: “The improvement resides solely in the composition of the alloy from which the piercer point is made.”
As in In re Kanter, 55 CCPA 1395, 399 F.2d 249 (1968), the composition of the alloy is not new; and the only novelty lies in the use of the known alloy in the piercer point used in a known process (and known apparatus). 1 Kanter affirmed the rejection of a process of sili-conizing a ferrous metal core of a particular type alloy which was known but not previously used in the siliconizing process. 2 See In re Mancy, 499 F.2d 1289 , 1293 n. 4, (CCPA 1974). In essence, Kanter involved a new, useful, and unob-vious product made by an old process using a known starting material (the alloy) which had not been used previously in the process. Without relying on any reference to show the obviousness of selecting the particular, type alloy for use in the claimed process, the court said:
The selection of the starting material was, presumably, not obvious but such selection is not a category of patentable invention. 35 U.S.C. § 100 . [Emphasis supplied.]
Five years later, however, in In re Kuehl, 475 F.2d 658 (CCPA 1973), this court stated that use of a catalyst in a claimed process is part of “the subject matter as a whole” to be considered in determining the question of obviousness under 35 U.S.C. § 103 . “Use,” of course, requires selection for use, and whether the selection be of a starting material or a catalyst, it would still be part of the “subject matter as a whole.”
Thus, the majority opinion completes, the overruling of Kanter begun by Kuehl — insofar as Kanter would deny patentability to a process in which the improvement resides solely in the unob-vious use of a selected known (and claimed) material.
Although the alloy in Kantor became part of the product of the claimed process, whereas the alloy here does not, the decisive fact remains that in each case the process is novel because an alloy, never before used in the process, is used in a claimed step of the process. Concentrating only on the manipulative steps of claimed subject matter as the “process” without considering the materials used in the “process” would neglect a limitation in a claim and the “subject matter as a whole” principle. 35 U.S.C. § 103 ; Graham v. John Deere Co., 383 U.S. 1 , 86 S.Ct. 684 , 15 L.Ed.2d 545 (1966).
. Piercer points, as such, are not new in the known process (and known apparatus).
. The Patent Office had allowed claims to the particular type alloy with the silicon coating, but refused to allow the process of siliconizing the alloy.

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/8896379. Public record. Not legal advice.