dissenting.
The decision below is reported at 597 F.Supp. 133, 224 USPQ 577 (1984). Reference will be made to the opinion as there published.
I am constrained to dissent from the majority’s holding that the six claims in suit are not invalid for obviousness in view of the prior art under 35 U.S.C. § 103.
The majority opinion, after obviously careful consideration of the facts, preliminarily arrives at the conclusion that the claims in suit define only obvious subject matter and then reverses that conclusion because of the “secondary considerations,” which I shall discuss further, concluding that
*1505This is one of those cases where the evidence of secondary considerations “may ... establish that an invention appearing to have been obvious in light of the prior art is not.” Stratoflex, 713 F.2d at 1538 [218 USPQ 871, 879 (Fed.Cir.1983)].
This is my point of disagreement. This is not one of these cases because, also per Stratoflex, a nexus is required between the invention disclosed in plaintiff’s patent and the secondary considerations. No such nexus exists here.
The majority, like the trial judge, has been led astray and has assumed that the patent in suit is on some imaginary “system” for detecting flaws, which has enjoyed commercial success in the hands of Aleo and was copied by Westinghouse, thus changing the prima facie obvious invention into a patentable invention.
What has happened here is that by a kind of magician’s distracting patter, the purpose of which is to keep the viewer from observing what is actually happening, attention has been directed to the patent’s claims to the exclusion of its disclosure. As the prosecution history shows, by a series of amendments the claims acquired a kind of life of their own, divorced from the disclosure of the patent’s specification, including reference to what the majority opinion identifies as the “center” around which the contentions of the parties on appeal now revolve, namely, “the language of the claims that pertains to combining and correlating the information derived from the ultrasonic scans.” (My emphasis.)
The sole function of claims is to delineate the scope of protection afforded by the patent, not to describe what the patentee has invented. Claim language, by law, is supposed to find support in the specification. Unsupported claim limitations should be ignored in appraising commercial success, though it could be a ground for invalidating the claim, but I am not discussing that issue. In determining what was invented, the specification must be considered in the state in which it was filed and the original claims, which are a part of it, may be regarded as a part of that disclosure. The patent and its file history, which are legal documents, are before us and it is necessary to consider them to determine what the invention disclosed therein truly is. In fact, that should be the first order of business. The salient fact that emerges from such examination is that there is no reference whatsoever in the specification and original claims, taken together, of combining or correlating anything, or of any means for or method of performing the function of combining or correlating. These are simply terms injected into the claims by the prosecuting attorney, without any support in the disclosure, in an effort to persuade the examiner that the claims patentably distinguished from the prior art he had cited against them. It does not appear to me that the examiner ever compared the claims he allowed with the disclosure to see if they are supported by it.
When the majority opinion refers to “the meaning of combining and correlating used in the patent” (in Part III, A) it must be borne in mind that those terms are not “used in the patent” insofar as the disclosure thereof is concerned, but merely appeared in the claims long after the application was filed. It must also be borne in mind that the majority has correctly held that “one skilled in the art would have known [before Smith’s invention] how to combine and correlate the ultrasonic scan data” — a finding also made by the trial court — for which reason it is part of the prior art and therefore can be no part of what Smith invented. It was a skill of the art and a difficult one at that, comparable to the skill required of a radiologist in interpreting X-rays or CAT scans in deducing the existence of tumors.
Prima Facie Obviousness
The majority finds significant error by the district court in the following respects:
1. In failing to realize that the Gunkel patent reference, not considered by the PTO, discloses electrically combining ul*1506trasonic signals from multiple transducers, in a flaw detection system, to compare and analyze the results, and thus “performed a similar function to the combination and correlation functions of the ’006 patent [claims].” (Of course, as I have just pointed out, the ’006 patent in suit does not disclose any such functions.)
2. In not understanding that the “Nimrod” article reference (Brooks et al. “Ultrasonic Inspection of the Nimrod Power Plant Alternator Rotors”) discloses both longitudinal and angular drive means for the ultrasonic inspection of rotor bores. Those are the very same functions Smith’s apparatus was designed to perform, in which, therefore, there is no novelty.
The majority also notes that the district court correctly found that it had been well known in the industry since 1960 that multiple transducers could be used simultaneously to scan an object and that this finding is not challenged on appeal.
On the basis of the foregoing, the majority holds that “the prior art provides significant support for appellants’ contention that the ’006 patent would have been obvious,” (my emphasis) by which, I presume, the majority means that the inventions (apparatus and method) of the claims in suit would have been obvious. This is what I refer to as its holding of prima facie obviousness, with which I wholeheartedly agree. As a preliminary to discussing why the majority should not back away from that holding, let me summarize in one paragraph what the basis of that finding of prima facie obviousness is.
Long prior to Smith’s supposed invention, the ultrasonic detection of flaws in metal parts was a highly developed and sophisticated art. Smith's filing date was Dec. 3, 1973. Over ten years before that, Gunkel taught the use of multiple transducers operating simultaneously, longitudinally of and around tubular articles such as pipe, but on the outside, to detect flaws with use of electrical analysis means to combine and correlate the data produced by the transducers and their related pickups, to detect and appraise the nature of flaws. Gunkel proposed using as many as four transducers generating as many different modes of signals to get as many different kinds of data. The Nimrod disclosure shows the use of ultrasonic testing conducted from the inside of a bore of a shaft, as in the ’006 patent, through which the transducers are moved longitudinally and angularly rotated. Necessarily, some indexing means for accurately determining where the transducers are at the time when any given signal is received must be, and was, employed in all such apparatus or it would not be known where the flaws are. So the patentee did not invent that function.
What the '006 patent discloses as Smith’s invention is simply a piece of mechanism for use in selectively positioning one or more transducers and pickups in a bore and simultaneously “indexing” to indicate or record the longitudinal and angular position, i.e., the exact location, of the transducers in the bore to show where they are when signals are received. The totality of Smith’s disclosure of what he does with any signals received is contained in the underlined words in the following sentence, taken in conjunction with the single “schematic” (i.e., not a working) drawing in the patent, reproduced below:
If the propagated [ultrasonic] waves contact a flaw, there is a reflection to the pick-up means at the appropriate source 45 or 47, and an appropriate indication is sent back to a recording or display device 87. [Col. 5, lines 65-68.]
*1507[[Image here]]
The “recording or display device 87” is not described further but merely indicated, as some alternative and presumed known device of the prior art, by the square at the lower left corner of the schematic figure containing the number 87. Furthermore, it will be seen in the drawing that box 87 is shown as connected to a line 13. Line 13 is described in the specification (col. 3, 11. 35-39) as an “air line” which carries pneumatic pressure into the device to actuate the legs 11 on supports 3 and 5, a function totally unrelated to recording or displaying signals. Signals presumably would be conducted by “electrical lines 77” (col. 5, 1. 34), not further described and not shown as connected to anything, since the signals are electrical. In sum, the patent disclosure is wholly devoid of any means or method for the “correlation of the information content of a transmitted or reflected ultrasonic signal” or for “combining the individual content” of signals (to quote claim language) or of any teaching of how to accomplish either of those functions. The claims in suit, therefore, were created out of the whole cloth by the imagination of the prosecuting attorney and based on knowledge of prior art or subsequent events, not on the teachings of the ’006 patent. One must be wary of such expressions, used in the majority opinion, as “the device the ’006 patent covered” and “the patented ’006 device.” They fail to distinguish between the invention disclosed in the patent and other things which may fall within the scope of the later-filed claims.
The majority opinion, page 1496, refers to “an amendment” as containing the inventor’s best description of “combining.” What is in fact referred to is attorney argument, in connection with an amendment, during prosecution and contained in “AMENDMENT ‘B’ ” in the section headed “REMARKS” (Apx. 158, 166, 170). This is no part of the patent disclosure and cannot be relied on to supply deficiencies therein. Even if it had been an actual proposed amendment, it would not be part of the disclosure, any more than attorney argument in this court. Attention is further directed to the fact that “Amendment ‘B’ ” was refused by the examiner and never entered (A-176) and was replaced by “Amendment ‘C’ ” (A-195). In any event it is not the inventor’s description.
It is also a significant fact that the inventor, Robert D. Smith, named in the patent issued to Aleo, left the employ of Aleo in *1508October 1973 before the application was filed on December 3, 1973. He testified on deposition that after it was filed he never had any knowledge of the prosecution or any contact with the attorneys (A-1518, 1541-42).
When we come to examine whether there was commercial success of Smith’s invention we are, of course, concerned only with the success of what he both invented and disclosed. If there was commercial success, that success does not count in appraising non-obviousness unless it can be attributed to what he both invented and disclosed. In light of all of the foregoing, I am convinced, as a matter of law, that unless there is a clear nexus between the disclosed subject matter of the patent (not just the vagueness of later-conceived broadly worded claims) and very significant secondary considerations the claims are invalid for obviousness.
No Nexus
Without nexus, of course, the invention that is disclosed in the patent does not enjoy the benefits of commercial success in appraising its nonobviousness. The district court discusses nonobviousness beginning at 596 F.Supp. at 147, 224 USPQ at 586, in part B of its opinion. Under sub-heading 3, “Ordinary skill in the art,” the court several times refers to the invention of the patent as a boresonic inspection “system,” or the “patented system.” But no system is disclosed in the patent; the court must, therefore, have had in its mind something in addition to what the ’006 patent discloses. In section 4(c), “Commercial success,” it gets to a brief discussion of that subject (F.Supp. at 153, USPQ at 591). One will search in vain for any description of just what it was that enjoyed commercial success. The record makes clear, however, that the Commercial Machine Works (CMW) division of Aleo, which is supposed to have had the commercial success, was operating a service business of testing turbine rotors in the field, moving to the site with its equipment and personnel. One such test may take as long as a week or ten days, hundreds or even thousands of readings being taken (A-1016). When it is over, the net result is a report (A-1470) from CMW to the owner of the rotor saying what it thinks of the .soundness of the rotor, what if any probable flaws or “discontinuities” have been found, and a record of its tests, columns of numbers representing “A” scan data (A-1469), which can be used later for comparison with subsequent tests. Nobody will ever know whether the report is or is not accurate, or how accurate, unless the rotor is physically altered by machining (as by “bottle-boring”) (A-1474) or cut to pieces as a check on the tests.
Now, the totality of the commercial success found by the district court was that Westinghouse, which is a manufacturer of turbines, as well as a field-testing competitor of CMW, employed CMW in a crisis situation to test some 20 rotors in the field because it thought CMW was, at the time, the most competent operator in the field, and that CMW may have made a total of “[close] to a hundred” such inspections altogether. The question is, what does this prove about commercial success of the invention disclosed in the Smith patent, which is a piece of apparatus for locating transducers and pick-ups in a rotor bore— nothing more. Is that apparatus the principal reason CMW was hired to make tests? Hardly. CMW was hired because it was considered competent to make tests. The apparatus disclosed in the patent is but part of the equipment necessary to obtain “A” scan data; it does not produce that data by itself, it only positions the transducers. The transducer must be powered by frequency generators, not shown but known to the prior art. The frequency generators must produce different frequencies. Different transducers must be used to produce different “modes” of ultrasonic waves, also not explained in the patent but known to the art. When the transducers are energized and send back data through the pick-ups, that electrical data must be recorded by undisclosed instruments (except for box 87), also known to the prior art. And even after that is done, the thus-*1509recorded data must be interpreted by highly trained and skillful personnel in order to provide the information being sought. (Wallace A-1468 et seq.; Gelhaus A-1493 et seq.) Computers may be used which have to be properly programmed. And when all is said and done, there is no assurance that the deductions from the data are really true.
What it comes down to is that CMW’s success in selling its testing services to rotor users depended on its customer’s confidence in CMW’s abilities as the best available testing service organization. Since the most important aspect of such confidence, as the majority has deduced from these adversary proceedings, was CMW’s technical ability through its personnel to correlate and combine the information content of the ultrasonic signals (matters on which the patent gives no instructions whatsoever) to arrive, perhaps with the aid of a “fracture mechanic’s analysis” (A-1472), at conclusions on the condition of the rotor tested. Therefore, it appears clearly to me that the only commercial success relied on here or below cannot be attributed to Smith’s invention as disclosed in his patent but must have been due primarily to other factors. It follows that there has been no showing of nexus between Smith’s prima facie obvious invention and the commercial success to take the invention out of the obviousness category.
I also emphasize that what has become the crux of this case as the supposed contribution of the patentee — correlating and combining data obtained from ultrasonic tests — has been thoroughly established by the record as a technical skill which existed in the prior art long before the patentee’s invention. The mere presence of these correlating and combining limitations in the claims by reason of an attorney’s effort to distinguish them from the disclosures of references is not a justification for treating them as part of Smith’s invention as though they were his contribution to the art. True, they are a vital part of CMW’s services, which have been successfully sold, but correlating and combining remains knowledge of the art free for all to practice. What is free to all cannot be attributed to the patentee.
I would therefore hold the claims in suit invalid for obviousness under § 103.
The issue of nexus is definitely before us on appeal. Appellants’ main brief devotes 10 pages to arguing lack of nexus, 20% of appellants’ entire argument. Nexus is of the utmost significance in reaching the correct result on the obviousness issue because, as I have said, it is the only basis used by Judge Friedman to escape from his preliminary conclusion that the prior art makes the claims in suit obvious, which conclusion is clearly right.
Appellee has chosen to avoid answering the arguments that nexus was not established by almost totally ignoring them. Literally, its brief contains only a single short sentence on the question. It reads (p. 36):
It is hard to see how there was a lack of nexus when Westinghouse copied the patented invention and even arranged with CMW to conduct inspections for it on a subcontract basis by utilizing the apparatus and method that it had patented. [Emphasis mine.]
Now, it is “the patented invention” that I have been discussing and what I mean by it is the invention that Smith made and disclosed in his patent. What else could he have patented? I have tried to determine whether the so-called commercial success which led the lower court and Judge Friedman, and apparently Judge Nies also, to find commercial success and thus nonobviousness is properly attributable to what Smith disclosed as his invention so as possibly to tip the scales in favor of finding prima facie invalid claims valid. I am convinced it is not. CMW’s business success is not shown to be success of the Smith invention.
Judge Nies is swayed in favor of nonobviousness by “the reaction of Westinghouse personnel to the demonstration of Alco’s device.’’ (My emphasis.) What device? The person from Westinghouse who was swayed was Gilbert E. Ronca. His *1510testimony is not voluminous (A-1070-1135) and it clearly shows what impressed him. It was definitely not the disclosure of Mr. Smith’s patent. I will summarize what the record shows.
Mr. Ronca was sent by Westinghouse to CMW to look at their boresonic system (A 1106). There was nothing new about bore-sonic systems as such; General Electric had one and the Nimrod apparatus was another. Smith did not invent, and his patent does not disclose, a “system,” yet that is what everyone involved in this case, including the trial court, persistently talks about. A system is, of course, what one has to have to do boresonic testing. Mr. Ronca saw a demonstration of the CMW system, not the invention, and he was given information about it by two employees of Southwest Research Institute, which had built the system for Aleo (CMW). The Southwest people were longtime experts in ultrasonic testing, research, and equipment design. In fact they appear to have designed the device shown in Smith’s patent. In fact, the schematic drawing of the patent appears to have been copied from a submission to CMW from Southwest. Mr. Ronca wrote a report and he testified about his impressions of the CMW system. He said, “The system is very flexible and is functionally modular. By using the building block concept, the number and the type of examinations can be suited to a pre-established examination program____ The equipment used had a .001 inch reset capability, both in the axial and circumferential directions.” (A 1125) “As I tried to describe, the system was described as accepting preprogrammed P.C. [printed circuit] boards which offered a selection of scanning sequences such as scanning axially over a pre-selected length and indexing clockwise____ It had several different options. It also had options to accept different scan modes and different scan — in a menu of scan programs, such as surface waves, any combination of shear waves and so forth. And these could be plugged into the system.” (A 1127) Explaining the reference to “menu,” Ronca said that there were also representations about the capability of “marrying” the CMW device to a mini-computer. Asked about that, he said “this was the reference I made on having a menu of protocols that could be inserted for scan purposes.” (A 1130) On all of this, Mr. Ronca reported enthusiastically and recommended Westinghouse try to buy it.
One will search in the patent in suit in vain for any disclosure or teaching of the things that so impressed Mr. Ronca in the CMW system or for a disclosure of any system at all.
I reiterate that the only commercial success of the CMW system relied on below is that company’s testing of a total of, perhaps, 100 rotors. That testing was necessarily done by using the system, not merely the device shown in the patent, which in itself cannot test anything. There is no showing that the tests were accurate and there is considerable evidence that they may not have been. All we know is that CMW was hired to do them because their customers considered them competent. To my mind, that is no proof that CMW’s success in getting that much testing business was due to the invention disclosed in Smith’s patent. All it can do is position transducers in a bore and tell you where they are. That had been done in the prior art. One always has to know where the transducers are or it is impossible to determine where the flaws, if any, are. The accuracy with which it does so depends entirely on the refinement of the machining by which the locator is manufactured. The Nimrod boresonic device was said to be just as accurate, if not more so. All the rest— the interpretation of the signals to acquire some intelligence and the apparatus and instrumentation essential thereto — was the common knowledge of the ultrasonic nondestructive testing art, as my colleagues point out whenever I suggest non-disclosure of some claim limitation in the patent.
One should not be overly impressed by the background recitation of nonspecific, arcane, ultrasonic terminology about wave propagation modes, all of which was knowledge in the public domain. Aside from Smith’s piece of machinery, which is gener*1511ally described without particularization on the basis of a mere schematic figure, Smith does not give a single example of how to practice any method. He merely recites a multitude of general possibilities. Neither does he explain how to achieve his much-touted thousandth of an inch location accuracy.
I hesitate to suggest that my learned colleagues have been gullible, but on the subject of “commercial success” it does seem to me that they have been unduly moved by mere words and innuendos. Just what was the supposedly successful CMW system? They do not say. I have seen no reference in the briefs to any clear evidence on the subject and have been unable to find it in the voluminous record.
It is asserted as another indicium of non-obviousness that Westinghouse “copied” the CMW system and used it to do testing for TVA. There is a picture of the transducer-carrying head used by Westinghouse at A 536.20 and at tab 7 of appellants’ brief. It bears little resemblance to the schematic drawing of Smith’s patent. Where, then, do we find the evidence of the commercial use of the invention disclosed in the patent in either the CMW system or Westinghouse’s alleged infringing copy? Unless and until it has been shown that there has been commercial use of the piece of mechanism disclosed in Smith’s patent (which is not a system) there has been no proof of commercial success of his invention and no evidence establishing the necessary nexus. Finding no nexus, I would hold the claims in suit obvious and invalid under 35 U.S.C. § 103.
Jurisdiction
I join Judge Friedman in finding that this court has jurisdiction and find no merit in Judge Nies’s grounds for questioning it. Notwithstanding the location of § 83 lr in a title of the U.S.Code other than Title 35, the section is an Act of Congress relating to patents, as is 28 U.S.C. § 1498 which is controlling on other suits against the government for the use of patented inventions. Motorola, Inc. v. United States, 729 F.2d 765, 221 USPQ 297 (Fed.Cir.1984) says nothing to the contrary.
Having given consideration to 16 U.S.C. § 831r for the first time in connection with this appeal, I am impelled to say that it is, from the standpoint of patent law, one of the most ineptly drafted statutes I have seen, displaying a confusion between patents and patented inventions, and a total lack of comprehension of what the patent right is. One cannot copy a patent right, which is only the right to exclude, or use it, or employ it, all of which § 83 lr mentions in meaningless confusion. Only the owner of a patent or an exclusive licensee with the right to sue, who is a virtual owner, can use or employ the right to exclude. In spite of these misfortunes, however, the intent is clear that when TVA uses a patented invention and thus infringes the patent, the exclusive remedy is a suit against TVA “on the equity side of the appropriate district court of the United States____” Since this is an act relating to patents, jurisdiction of the district court is under 28 U.S.C. § 1338(a) and we have jurisdiction under 28 U.S.C. § 1295(a)(1).