Full opinion text
OPINION FRIEDMAN, Chief Judge: This is a suit under 28 U.S.C. § 1498 (1976) seeking damages for the alleged infringement of plaintiff’s patent No. 3,758,-051 by the United States. After trial, Trial Judge Colaianni held that the patent is invalid under 35 U.S.C. § 102(b) (1976), which bars the issuance of a patent if “the invention was ... described in a printed publication ... or in public use ... in this country, more than one year prior to the date of the application for patent.” Upon the plaintiff’s exceptions to that decision, we reject the trial judge’s conclusion and remand the case to him to determine the other issues in the case. I. Following the Soviet Union’s launching in 1957 of SPUTNIK, the world’s first artificial satellite, the Department of Defense and the National Aeronautics and Space Administration accelerated their efforts to create an effective synchronous satellite. A synchronous satellite is one whose orbital period is equal to the rotational period of the earth; the satellite would “hover” above a single, fixed point on earth. The satellite must be placed in a west-to-east orbit having a 22,750 nautical mile radius from the center of earth and a linear velocity of 10,090 feet per second. In order to conserve weight and energy, communications satellites are equipped with directional antennas, and communication with earth is possible only when the satellite is oriented or positioned so that the directional beam can strike earth. Similarly, the solar cells used as a power source work most effectively when they are directed toward the sun. It is therefore essential that the communications satellite be equipped with a control system by which the proper orientation may be maintained. The patent involved in this case—which Williams invented and assigned to the plaintiff—provides a sophisticated method for changing and therefore controlling the orientation of a satellite (also known as its attitude) in flight. In oversimplified terms, the invention consists of a process by which the orientation of the satellite can be changed in flight by the discharge from the satellite through openings on its surface of synchronized jet blasts of gas into the atmosphere. The proper timing and duration of those blasts are controlled through radio signals transmitted to the satellite from earth that activate and time the blasts. These instructions are sent following the receipt on earth of radio signals from the satellite that indicate the position and attitude of the body, on the basis of which calculations are made on earth which determine the instructions sent to the satellite. The control signals sent from earth are synchronized with the spin cycle of the satellite, thereby activating the jet pulses in the proper phase of the spin cycle. Williams filed his first application for a patent of the foregoing invention in April 1960. This application claimed the device described above, but did not describe the means to be used on earth to receive information from the satellite, make calculations, and transmit instructions to the satellite. After extensive proceedings before the Patent Office, in which the application was amended several times in attempts to satisfy the questions and doubts of the patent examiner, on April 21, 1964, Williams filed a continuation-in-part (CIP) application, on the basis of which the patent issued in September 1973. A CIP application may contain subject matter from a prior application and additional matter not disclosed in the earlier application. Under 35 U.S.C. § 120 (1976), any new matter in the CIP application has the filing date of that application; the earlier filing date of the prior application covers only material in the CIP application that also was disclosed in the prior application. The Williams CIP application for the first time described and disclosed in a drawing (Figure 12 of the application) the control device on earth that received radio signals from and transmitted them to the satellite. In 1962, more than a year prior to the filing of the CIP application, Williams had described his invention in a paper given before the American Astronautical Society, and the invention had been publicly used in the SYNCOM satellite launched by the United States in 1963. The patent that issued on the CIP application contains three claims, described below. If any of these claims in fact claims the Figure 12 control device as an element of the patented invention, the patent concededly is invalid under 35 U.S.C. § 102(b), because of the public disclosure of the invention more than a year before the CIP application was filed. The trial judge held that the patent does claim the control device and therefore is invalid. We reach a contrary conclusion. II. A. The governing principles are well-settled; the dispute is over their application to the facts here. Under 35 U.S.C. § 112 (1976), a patent application must include a specification containing a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art ... to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. The section further provides that the specification “shall conclude with one or more claims, particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” “[T]he claims made in the patent are the sole measure of the grant.” Aro Manufacturing Co. v. Convertible Top Replacement Co., 365 U.S. 336, 339, 81 S.Ct. 599, 600, 5 L.Ed.2d 592 (1961). See also Interdent Corp. v. United States, 209 Ct.Cl. 301, 306, 531 F.2d 547, 550 (1976). The claims define the inventive concept that the patent embodies. The specifications, on the other hand, are designed to reveal how the invention may be put into practice, thereby defining the inventor’s monopoly and enabling others to practice the invention after the patent has expired. Although “it is fundamental that claims are to be construed in the light of the specifications and both are to be read with a view to ascertaining the invention,” United States v. Adams, 383 U.S. 39, 49, 86 S.Ct. 708, 713, 15 L.Ed.2d 572 (1966), courts do “not read limitations into claims merely because they are disclosed in the specifications,” In re Walter, 618 F.2d 758, 768 (C.C.P.A.1980). See also In re Prater, 415 F.2d 1393, 1404 (C.C.P.A.1969) (specifications properly used to “interpret limitations explicitly recited in the claim”). B. The Williams patent contains three claims. The pertinent portion of claim 1, the broadest of the allowed claims, is as follows: 1. Apparatus comprising: e. means disposed on said body for providing an indication to a location external to said body of the instantaneous spin angle position of said body about said axis and the orientation of said axis with reference to a fixed external coordinate system; f. and means disposed on said body for receiving from said location control signals synchronized with said indication; g. said valve being coupled to said last-named means and responsive to said control signals for applying fluid to said fluid expulsion means in synchronism therewith for precessing said body to orient said axis in a predetermined desired relationship with said fixed external coordinate system. Insofar as they are material in this case, the only differences between these clauses in claims 1, 2, and 3 is that the word “means” in clause e of claim 1 is changed to “wide angle means” in claim 2 (clause f) and to “wide angle optical means” in claim 3 (clause e). These claims do not incorporate the ground control device depicted in Figure 12. The trial judge stated that what is being claimed by elements (e)-(g) is [1] apparatus carried by the satellite for transmitting information about its spin angle position to an external location, i. e., earth; [2] externally located apparatus for producing control signals which are synchronized with the spin angle position of the satellite; and [3] apparatus on the satellite for responding to . the received control signals for precessing the satellite. But only the first and third of these three apparatuses are stated in the language of those clauses. The claims do not refer to any “externally located apparatus.” The only references in the claims to anything external to the satellite are to “means disposed on said body for providing an indication to a location external to said body ” and to means on the body for receiving signals “from said location” (items e and f, emphasis added). Although some devices and processes are necessary at the external location to receive and process the information sent there by the clause e “means” and to return the instructions relied on by the clause f “means,” the claims themselves do not embody any specific devices or processes outside the satellite. The claims of the patent cover solely the orbiting satellite and no other object, device, means, or apparatus. The patent claims only an “apparatus comprising ... a body adapted to spin about an axis” (claim 1, clause a), with certain specified features; every successive clause of the claims covers one such feature and specifically relates back either to the “body” itself or to some other means or device attached to that body. The only references in the claims to anything outside the satellite dp not mention any ground-based device, let alone the specific ground-based device depicted in Figure 12. The claims of clauses e and f each comprise a means for performing a specified function and a statement of the function. See 35 U.S.C. § 112 (1976). The means claimed in both clauses are “disposed on said body,” the “body” being the satellite. These clauses do not claim or otherwise refer to any “means disposed” at the external location. While the functions there stated include interaction with the undescribed ground station—“providing an indication to a location external” and “receiving from said location control signals”—the functions claimed are those of the described means disposed on the satellite and are described from the perspective of the satellite, not the external location. On the other hand, the claims are silent about the functions performed at the external location (as well as all of the means used to accomplish those functions)—receipt of information from the satellite, performance of certain calculations, and transmission of instructions back to the satellite. C. The specifications do not establish that the ground control device illustrated in Figure 12 is an element of the Williams patent. The specifications do not define the particular ground control device shown in Figure 12 as essential to the operation of the apparatus described in the claims. Instead, the specifications merely state that “[a]s an example of one means of controlling the starting time and duration of pulses to the jet control valves 54 and 55, in such a way as to result in thrust during the correct portion of each spin revolution, cam-controlled contracts or switches may be used” (col. 9, lines 25-29) (emphasis added). The patentee’s use of this language indicates that he did not then view the Figure 12 device as the exclusive method of accomplishing properly synchronized jet pulses. Rather than describing an element of the invention, which the claims show to be only a satellite-based apparatus, the specifications give an illustrative example of the kind of ground-based device that could be used in connection with the operation of the apparatus described in the claims. The specifications permit the use of any other means in lieu of the cam device that would achieve the same result. Indeed, the only part of the addition to the specifications made in the CIP application that appears crucial to the invention is the spherical trigonometric equation, the use of which is described in column 10, lines 20-50. This is almost certainly not patentable. See, e. g., In re Christensen, 478 F.2d 1392 (C.C.P.A. 1973) (mathematical equations do not create patentable property rights). The history of the patent application itself shows that Williams, the inventor of the satellite, did not view the ground control device as part of his invention. In view of the vigor with which he prosecuted that application, he would not have jeopardized the grant of the patent by disclosing his invention in public print in 1962 and permitting it to be publicly used in 1963 if he had believed that the invention included the ground control device, which he did not disclose until he filed the CIP application in 1964. In sum, the Williams application sought a patent upon a satellite and a satellite only. Although the application referred to a ground control system, this was unavoidable since it was impossible to disclose how the externally operated satellite functions without disclosing the external means of control. The discussion and illustration of the ground control device in the CIP application was added only because the patent examiner requested that additional information. This material was included in order to clarify how the satellite could be used; it was not included for the purpose of describing in greater detail the invention itself. The invention was the satellite. III. The reason the trial judge concluded that the patent claims the Figure 12 ground controller is that because some external control device is essential to the operation of the Williams attitude control system, the patent for such a system necessarily must claim some external control device (and the Figure 12 device is the only one described in the patent). This view is at odds with the basic principle that it is not necessary to claim in a patent every device required to enable the invention to be used. As this court stated in Adams v. United States, 165 Ct.Cl. 576, 581, 330 F.2d 622, 626 (1964), aff’d, 383 U.S. 39, 86 S.Ct. 708, 15 L.Ed.2d 572 (1966): It is evident that this section [35 U.S.C. § 112] does not require an inventor to disclose every possible way in which his invention may be used, nor does it limit the claims of the patent to the particular mode which the inventor considers best at the time of filing his application for patent. See also Smith v. Snow, 294 U.S. 1, 11, 55 S.Ct. 279, 283, 79 L.Ed. 721 (1935); Deering v. Winona Harvester Works, 155 U.S. 286, 302, 15 S.Ct. 118, 124, 39 L.Ed. 153 (1894); In re Anderson, 471 F.2d 1237 (C.C.P.A.1973). In Deering, the Supreme Court stated that although “additional elements are necessary to render the device operative, it does not necessarily follow that the omission of these elements invalidates the claim, or that the precise elements described in the patent as rendering it operative must be read into the claim.” 155 U.S. at 302, 15 S.Ct. at 124. As an illustration the Court pointed out that “[t]he invention of a needle with the eye near the point is the basis of all the sewing machines used; but the methods of operating such a needle are many,” and that the inventor of the sewing machine needle was not required to claim in his patent every machine in which the needle could be used or to restrict his patent to the method of use described in the application. Id. The same is true of the Williams attitude control system. It, like the needle, requires additional devices to make it operational, and there are many such devices (see note 2, supra). The specific ground control device described in the Williams patent is not an essential aspect of the invention, and the patent, like the patent for the sewing machine needle, is not limited to that one specific example. Just as the innovative aspect of the sewing machine needle was that the needle could be powered by a machine, so the innovative aspect of the Williams invention is that the attitude control system may be controlled from the ground. In neither case did the inventor of the patentable device (the needle and the attitude control system controlled from the ground) also invent the device in conjunction with which the patented item was used (the sewing machine and the ground controller). The principle reflects the practical reality that most inventions are designed to be used with other devices, both patented and unpatented. That fact, however, does not mean that the patented device necessarily also includes the other device in conjunction with which it is to be operated. Well-known examples are radio-operated garage door openers, in which a radio transmitter in the automobile or outside the garage activates the opening and closing mechanism of the garage door, and television set receivers, which cannot function without the signals transmitted from the broadcasting stations. The defendant concedes that “radio receivers and garage door openers can be and are claimed by themselves without also reciting the remotely located signal transmitter equipment.” It urges, however, that these devices differ from the Williams invention because both the garage door mechanism and the television set only receive signals, while the ground control device and the satellite both receive and transmit them. This distinction is unconvincing. The need to use a separate device to enable a patented device to function is the same whether the separate apparatus merely receives or both receives and transmits radio signals. The critical fact is that the Williams invention, no less than the automatic garage door opener and the television set, can function only in conjunction with a signal from another device. In all three instances that other device is not a part of the patented invention, but merely a separate apparatus which is required to be used when the invention operates. The fact that the patentee amended his application to show and describe the ground control device does not establish that that device was an essential element of the invention that the claims covered. The problem with the original application with respect to the ground control device was not the failure to claim such a device (since it was not a part of the invention), but to give sufficient information regarding the ground control device to enable one skilled in the art to practice the invention. It was this deficiency in the information about the ground control device contained in the original application that the amplification of the specifications in the CIP application was designed to correct. That was a proper use of a CIP application. Such an application may, for example, contribute a “mere embellishment, or technical improvement, of a feature disclosed in the original application, which does not contribute to its novelty, utility, or non-obviousness,” Acme Highway Products Corp. v. D. S. Brown Co., 431 F.2d 1074, 1080 (6th Cir. 1970), cert. denied, 401 U.S. 956, 91 S.Ct. 977, 28 L.Ed.2d 239 (1971), or may merely elaborate on the disclosures of earlier applications, see Azoplate Corp. v. Silverlith, Inc., 367 F.Supp. 711, 732 (D.Del. 1973), aff’d, 506 F.2d 1050 (3d Cir. 1974), cert. denied, 421 U.S. 914, 95 S.Ct. 1572, 43 L.Ed.2d 780 (1975). IV. In addition to the defendant’s contention that the patent was invalid under 35 U.S.C. § 102(b), the parties have raised various other issues. They include the validity of the patent under the nonobviousness standard of 35 U.S.C. § 103, the plaintiff’s alleged “misrepresentation and other inequitable conduct,” and the defendant’s alleged infringement of the patent. Although the trial judge did not decide any of these other issues, the parties urge us to do so, and they have extensively briefed the questions before us. We decline to decide those other issues. We think that the ultimate resolution of these complex and technical questions would be aided if the trial judge initially examined and evaluated them. CONCLUSION The Williams patent is not invalid under 35 U.S.C. § 102(b). The case is remanded to Trial Judge Colaianni to file a recommended decision and findings on the other issues presented. . Although the court rejects the trial judge’s recommended conclusion of law, we adopt most of his findings of fact, which we are not printing since such facts as are necessary to our decision are contained herein. We have modified findings 63, 74, 85, 90, and 97, as set out in a separate order entered this day. The court also deletes finding 106 because it is unnecessary to the determination of the present issue, and finding 113 as erroneous as a matter of law. . The specifications explicitly state that one element of the Figure 12 device is replaceable by a different mechanism with the same function: In the present example, the frequency of the signal from the variable frequency oscillator 123 is adjusted to cause time coincidence. It is also possible to measure the difference in time electronically and to develop suitable electrical signals for automatic control of the speed of the motor 121 which will cause the time difference to approach zero. (Col. 9, lines 51-58). Here once again the specifications refer to the description of the operation of the Figure 12 device as the “present example.” Devices other than that portrayed in Figure 12 have been used in its stead. As Hughes scientist Harold A. Rosen stated in his deposition: The whole idea is simply to send—to command pulses on the thruster of a phase that causes it to precess in the desired direction, and all you need to do that is some means of knowing the spin phase and some means of sending commands to the satellite; and we’ve had a fairly large number of different means of mechanizing it on the ground through the years. It started off with a mechanical system that was—in which an actual rotating drum was synchronized with the satellite’s rotation frequency, and soon after that we decided an electronic system would be easier to do.... . During the Patent Office proceedings Williams filed a number of superseding claims, many of which the patent examiner rejected. The language of the examiner’s final rejection of claims 15-19 of the parent application indicates that it was the absence of this formula, and not the absence of a description of a ground-control device, that in his view made the disclosure there inadequate: “There is nothing in the original disclosure to indicate how the starting and stopping time or duration of the pulses is determined by the instantaneous angle of revolution of the body with respect to a reference point.”
SKELTON, Senior Judge, dissenting: I respectfully dissent, as it is my opinion that the very able recommended decision of Trial Judge Colaianni that the subject invention is invalid is fully supported by the facts and the law, whereas, the decision of the majority that the invention is valid is clearly contrary to the evidence and the applicable law. I adopt the Trial Judge’s findings of fact, decision, and conclusion of law as my dissent, along with additional comments and reasons as follows: OPINION COLAIANNI, Trial Judge: The Hughes Aircraft Company seeks reasonable and entire compensation, pursuant to 28 U.S.C. § 1498, for the unlicensed use by defendant of United States Patent No. 3,758,051. This patent relates to a general attitude control system (ACS) for spacecraft, first used in the Hughes-manufactured SYNCOM II and SYNCOM III satellites, the world’s first synchronous communications satellites. This invention was allegedly used by the United States in its SKYNET II, NATO II, DSCS II, IMP (-H and -J), SOLRAD (9 and 10), and PIONEER (10 and 11) satellites. The Government denies infringement, and disputes the validity and/or enforceability of the patent in suit. I. The Communications Satellite Design Problem An early goal of the space program was the development of a synchronous communications satellite. A network of such satellites was contemplated to enable worldwide radio coverage of events. In the late 1950’s and early 1960’s the launch vehicles used for propelling rockets were of limited capacity and capable of lifting only the smallest of payloads. Accordingly, designers in the early days of satellites were necessarily obsessed with weight considerations. To economize on power and weight, the communications satellites were equipped with directional antennas. Ironically, elaborate pointing systems seemed necessary to keep the earth within the narrow antenna beams. These systems, which employed three sets of gyroscopes and rocket motors (three-axis ACS), proved too heavy to be lifted into synchronous orbit by the available launch vehicles. II. Developments at Hughes The use of jet vanes, spin nozzles or spin rockets, to rotate various stages of the rocket used to convey a satellite into orbit about its longitudinal axis for stability, was well known. As a result, a satellite will have a spin imparted to it as it assumes its spacial orbit. Hughes’ engineers, Harold A. Rosen and Donald D. Williams, realized that the continual correction of a satellite’s attitude was unnecessary, since the orientation of a spinning satellite is not affected by its orbital motion. They decided to take advantage of this phenomenon. Even with the advantage of the above phenomenon, Hughes faced numerous formidable hurdles that had to be overcome in order to ensure acceptable communication between the high altitude orbital position of the satellite and earth. In the first place, the satellite transmitter required a certain degree of antenna directivity. A “pancake” beam antenna was selected as the simplest technique compatible with spin-stabilization. However, this type of antenna is useful only when the earth is in the plane of the pancake beam. Thus, to obtain continuous maximum antenna gain, the spin axis of the satellite must be normal to the plane of the orbit. Moreover, the array of glass-coated solar cells which covered the exterior of the satellite and acted as the satellite’s power supply required as much exposure to the sun as possible. For ballistic reasons, a communications satellite will be injected into orbit with its spin axis lying in its orbital plane. Thus, to obtain maximum gain from the pancake beam antenna, and, as well, to obtain maximum performance from the solar cell power supply, it is necessary to reorient the spin axis of the satellite through 90 degrees. For this reason, Messrs. Rosen and Williams suggested that the satellite be equipped with a set of spin jets, which, when pulsed, would cause the satellite to spin about the antenna axis. Reorientation would consist of stopping the old spin and initiating the new. The Rosen-Williams ACS was described in a patent application filed December 30, 1959, and issued as patent No. 3,398,920 on August 13, 1968. The inventors recognized that theirs was not a complete solution to the attitude control problem, since, among other things, solar radiation and magnetic fields would gradually disturb the orientation of the satellite, and their ACS reorientation capabilities were limited. Subsequent work by Mr. Williams led to the realization that a single jet, mounted parallel to the antenna axis, but offset therefrom, could be used to precess a satellite into a desired orientation. The Williams system achieved greatly improved results over the Rosen-Williams ACS. The first written description of the invention appeared in a January 1960 confidential report on the status of Hughes’ Commercial Communication Satellite (COM-SAT). This report disclosed a spin-stabilized satellite equipped with a directional antenna, a V-beam sun sensor, and a ground-commandable precessing jet. On April 2, 1960, Williams reduced his invention to practice by a dynamic model which included a spinning wheel supported on a universal joint, with a gas jet pulsed to precess the wheel’s spin axis. III. The Original Williams Application On April 18, 1960, Williams filed the parent application on the invention in suit. This application contained essentially the same Figs. 1-11 and their accompanying descriptions as are found in the patent in suit. It did not contain either Fig. 12, which illustrates a ground-based controller for synchronizing a ground-originating control signal, which is to actuate the satellite’s attitude control jet, with the spin cycle of the satellite, nor the accompanying description. The 1960 application purported to describe a method and apparatus for controlling the orientation of the spin axis of a spin-stabilized space vehicle. As an exemplary embodiment of the invention, the specification and drawings presented an earth-orbiting, spin-stabilized satellite. The satellite was equipped with a pancake beam directional antenna, a V-beam sensor, and, ignoring the velocity control valve since it does not appear in any of the claims in suit, an axial fluid jet offset from the spin axis for correcting the attitude of the satellite. Obviously, before any correction in attitude takes place, it is necessary to find the present orientation of the satellite. Having determined its present orientation and knowing the desired orientation, the required amount of attitude correction can be established. Attitude or orientation sensing is not only needed to establish the amount of correction required, but also to repeatedly pulse the attitude correction jet at the proper phase in the spin cycle to achieve the desired correction in attitude. The specification states that “[m]eans is provided for sensing the orientation of the satellite relative to the earth, sun, or both.” According to the claims in suit, these means, disposed on the body of the satellite, are capable of “providing to a location external to said body of the instantaneous spin angle position” of the satellite about its spin axis and “the orientation of said axis with reference to a fixed external coordinate system.” The patent provides for a solar and radio frequency sensing of attitude. A V-beam sun sensor, which was well known in the art at the time of the Williams invention, was used as the solar orientation sensing device. It measured the sun angle, the angle between the satellite’s spin axis and the satellite-sun vector (the sun line), and the spin angle position, the degree of rotation of the jet past the sun line. This information is transmitted to a ground-based control station by means of a directional antenna and provides two of the needed three attitude angles required to establish the geometric position of the satellite in space. The specification, in addition, indicates that the directional antenna can also be used as an orientation means: As to the disclosed means for sensing the orientation of the satellite, * * * it will be understood that other means may be provided. For example, asymmetry may be deliberately introduced into the antenna radiation pattern of the satellite. In its reports to NASA, Hughes indicated that it planned to rely on the strength and polarization of the satellite signals as an indication of the satellite’s orientation with respect to the earth. In maneuvering the SYNCOM satellites, the aforementioned earth and sun orientation means were jointly employed. Although the specification does not dwell on the details, it does state that the satellite’s attitude can be determined at the ground-based control station by the use of well-known spherical trigonometry, the desired precession maneuver calculated, and control signals sent up to the satellite. These control signals are synchronized with the spin cycle of the satellite, and, as a result, the precessing jet is activated at the proper phase of the spin cycle. The specification makes clear that the spin angle indication provided by the solar sensor is used as a time reference for these control signals. The significance of having the control pulses synchronized with the spin cycle of the satellite is explained at Col. 9, lines 18-24, of the patent specification thusly: [W]hen the attitude control valve 55 * * [is] opened during only a fraction of one spin cycle, or during portions of several successive spin cycles, the operation must be synchronized with the spin of the satellite 26. Synchronization ensures that the net force is applied to the satellite 26 in the proper direction. In operation, precession is accomplished, as explained at Col. 8, lines 17-41 of the Williams patent, by the reactive force produced by the jet of nitrogen gas which is expelled by the attitude control nozzle. A thrust is applied parallel to the spin axis and near the periphery of the satellite. In this manner a net torque is produced around an axis perpendicular to the spin axis of the satellite. By periodic pulsing of the attitude control jet for a predetermined portion of a spin cycle of the satellite, with a synchronized control signal, a torque is applied to precess the spin axis in the direction of desired correction. Pulsing of the control jet is continued in subsequent spin cycles until the spin axis of the satellite is precessed through 90° and it is parallel to the earth’s axis. The spin axis of the satellite can be corrected immediately after the launch operation or at any other time in order to maintain the spin axis parallel to the earth’s axis. Following two office actions by the examiner at the Patent and Trademark Office before whom the patent in suit was pending, neither of which are important to this law suit, plaintiff, on January 3, 1963, filed new claims 15-19 in its pending application for patent. These claims, in applicant’s own words “are drawn to applicant’s apparatus for changing the attitude and translational velocity of a spin-stabilized body * * Applicant argued that the following language of claim 15 was patentably distinct over the art of record: [C]ontrol means coupled to said valve for actuating said valve in a series of pulses occurring once per each revolution of said body about said axis and whose starting and stopping times are determined by the instantaneous angle of rotation of said body about said axis with respect to a reference point in space to produce a series of incremental forces that result in a net force on said body in a predetermined direction. Applicant also maintained that claim 16 was patentable over the cited prior art, since it called for: [M]eans associated with said body for expelling fluid more than once from a particular location thereon to exert a series of incremental forces on said body during several revolutions of said body about said axis, said means controlling the duration of each expulsion of fluid to be short compared to the time of one revolution of said body about said axis, said means controlling the time of occurrence of each expulsion of fluid to be at a predetermined part of the cycle of revolution of said body about said axis. The plaintiff made similar arguments in connection with claims 17-19. In the next and final office action of December 24, 1963, the examiner rejected these claims as being drawn to an inadequate disclosure. He stated: Claims 15-19, newly presented, are rejected as drawn to an inadequate disclosure. There is nothing in the original disclosure to indicate how the starting and stopping time or duration of the pulses is determined by the instantaneous angle of revolution of the body with respect to a reference point. The signals from 71 and 73 are sent by 90 and 50 to earth or another planet but there is no disclosure as to how such information is converted and used to send back to 90 for control of 93. [Emphasis added.] This, in substance, was a rejection pursuant to 35 U.S.C. § 112. In response to this rejection, Hughes on June 22, 1964, filed an amendment after final rejection, wherein it requested that the Patent and Trademark Office permit it to amend the specification and claims 15-19 of its pending application. The examiner declined to enter the amendment, maintaining that it would introduce new matter into the case, since there was no support for the changes requested in the original specification, and that the proposed amendment would not, in any event, remedy the inadequacy of the disclosure. On June 23, 1964, Hughes filed a notice of appeal of the examiner’s decision, but the appeal was never perfected. On August 21, 1964, Hughes filed a continuation-in-part (CIP) application based upon the original application of April 18, 1960. It is this CIP application from which the patent in suit ultimately matured. Plaintiff then permitted the original parent application to go abandoned. IY. The Continuation-in-Part Application Plaintiff’s CIP application contained new material that had never previously been disclosed in its original application. This new matter consisted of Fig. 12 and the text of the specification relating thereto. Figure 12 shows a ground-based analog controller for synchronizing the control signals it generates with the spin of the satellite. A rotating drum, formed with a raised cam section, is the analog element disclosed. The spin angle information provided by the sun sensor is used to match the drum’s phase of rotation to the rate of spin of the satellite. A fixed switch is positioned such that contact between the leading edge of the cam and the fixed switch coincides with the ground reception of the solar sensor pulse. The speed of the drum is adjusted until such a coincidence occurs. Upon achieving this, the drum has been synchronized with the spin of the orbiting satellite. In addition, a movable switch is positioned such that its closure transmits a control pulse to the satellite for actuation of the attitude adjustment valve. This analog controller had previously been described in a paper delivered by a Hughes employee to the 18th Annual Meeting of the Institute of Navigation, June 18-20, 1962. The patent in suit consists of three independent claims. Claim 1, the broadest claim in suit, reads as follows: 1. Apparatus comprising: a. a body adapted to spin about an axis; b. fluid supply means associated with said body; c. a valve connected to said fluid supply means; d. fluid expulsion means disposed on said body and coupled with said valve and oriented to expel said fluid substantially along a line parallel to said axis and separated therefrom; e. means disposed on said body for providing an indication to a location external to said body of the instantaneous spin angle position of said body about said axis and the orientation of said axis with reference to a fixed external coordinate system; f. and means disposed on said body for receiving from said location control signals synchronized with said indication; g. said valve being coupled to said last-named means and responsive to said control signals for applying fluid to said fluid expulsion means in synchronism therewith for precessing said body to orient said axis in a predetermined desired relationship with said fixed external coordinate system. Claim 2 differs from claim 1 in that the clause (e) “means” of claim 1 is recited in clause (f) of claim 2 as “wide angle means.” In claim 3, element (e) of claim 1 is further limited to “wide angle optical means.” The other limitations recited in claims 2 and 3 are not material to this litigation. V. Defendant’s Argument of Invalidity While defendant has raised the usual plethora of defenses common to patent suits in response to plaintiff’s petition, a major defense in this lawsuit is that all three of the claims in suit are invalid under 35 U.S.C. § 102(b). Before the 35 U.S.C. § 102 issue can be resolved, it is necessary to establish the filing date that the claims in suit are entitled to. Although defendant felt that it was necessary to discuss and consider 35 U.S.C. §§ 112 and 120 in order to make this resolution, in fact, as the following discussion shows, in this case, the resolution can be made from plaintiff’s acts and a careful review of the file history of both the parent and CIP applications. As previously mentioned, a CIP application is one which contains subject matter from a prior application and also additional subject matter which was not present in the prior or parent application. Under the provisions of 35 U.S.C. § 120, a continuation-in-part application obtains the benefit of the parent application filing date only for the subject matter that is common thereto, whereas the newly added subject matter takes the filing date of the new CIP application. Both parties agree that the filing date to which the claims in suit are entitled: [I]s relevant because plaintiff’s inventor Williams publicly disclosed the details of his invention in a paper given before the American Astronautical Society in March of 1962 and because the invention was used in the SYNCOM satellite launched by the United States in July, 1963. Thus, the parties are also in agreement that: [I]f the claims of the patent in suit were not entitled to the [April 18, 1960] filing date of the Williams parent application, they would be invalid under 35 U.S.Code, § 102, by reason of prior publication and prior public use. Predictably, defendant argues that the claims in suit are not entitled to the earlier filing date, while plaintiff maintains that they are supported by the parent application. VI. The Ground-Based Controller is Part of the Combination of Claims in Suit Before a decision can be made on whether the claims in suit are entitled to the April 18, 1960, filing date of the parent application, or to the August 21, 1964, date of the CIP, the scope and meaning of the claims must first be ascertained. Defendant urges that the following underlined language from claim 1 makes the ground-based synchronous controller, which was disclosed for the first time by Pig. 12 of the CIP application, an element of the claim: e. means disposed on said body for providing an indication to a location external to said body of the instantaneous spin angle position of said body about said axis and the orientation of said axis with reference to a fixed external coordinate system: f. and means disposed on said body for receiving from said location control signals synchronized with said indication: g. said valve being coupled to said last-named means and responsive to said control signals for applying fluid to said fluid expulsion means in synchronism therewith for processing said body to orient said axis in a predetermined desired relationship with said fixed external coordinate system. [Emphasis added.] Plaintiff, on the other hand, urges that the controller is not part of the claimed invention. A. Analysis of Claims Show that Ground Controller is Part of Combination An analysis of the underlined claim language, made in the context of the claim as a whole, together with the language of the specification and also plaintiff’s arguments to the Patent Office during the prosecution of the CIP application, leads me to conclude that a ground-based synchronous controller is an element of the claims. This conclusion flows naturally from an analysis of elements (e)-{g) of claim 1. Element (e) calls for “means” disposed on the satellite “for providing an indication [of the instantaneous spin angle position of the satellite] to a location external to said body.” (Emphasis added.) From a review of the patent in suit there is no doubt that this element includes radio frequency transmitter 90, a first orientation sensing solar cell 71, and a first orientation signal oscillator 95. In fact, Col. 8, lines 32-36 provides: The correct phase of the spin cycle to actuate the valve 55 is determined from the earth 100 by means of the first orientation sensing solar cell 71 adjacent the slit 70 in the satellite 26 and its associated oscillator 95 * * *. [Emphasis added.] Thus it is clear that element (e), among other things, calls for means that transmits the instantaneous spin angle position information of the satellite to the ground. In response to this ground-received indication, a pulse for actuation of the attitude control valve 55 is transmitted back to the satellite from earth. This is succinctly stated at Col. 8, lines 31-32 of the patent, thusly: The attitude control value 55 [on the satellite] is pulsed by radio control from the earth 100. The satellite is provided, see element (f) of claim 1, with “means * * * for receiving from said location [earth] control signals synchronized with said indication.” Thus “means,” and, as the original specification teaches, a radio frequency receiver 89 as shown in Fig. 6, is located on the satellite to receive control signals from earth. However, element (f) goes on to provide that the control signals are to be synchronized with the “indication” of the instantaneous spin angle position of the satellite about its spin axis. It can thus be appreciated that some device located on the earth is required to produce the synchronized control signals and transmit them to the satellite’s receiving means. As explained by element (g) of claim 1, the satellite will be precessed in response to the received control signals. Thus, in effect, what is being claimed by elements (e)-(g) is apparatus carried by the satellite for transmitting information about its spin angle position to an external location, i. e., earth; externally located apparatus for producing control signals which are synchronized with the spin angle position of the satellite; and apparatus on the satellite for responding to the received control signals for precessing the satellite. B. Plaintiff’s Arguments Show Ground-Based Controller Essential to Claims in Suit Support for the above analysis and conclusions is found in arguments made by the plaintiff in prosecuting the patent application through the Patent and Trademark Office. It is, of course: A fundamental principle of claim construction * * * that a claim should be interpreted in light of its file wrapper or prosecution history in the Patent Office. Graham v. John Deere Co., 383 U.S. 1, 33, 86 S.Ct. 684, 701, 15 L.Ed.2d 545, 148 USPQ 459, 473 (1966). As of July 16, 1965, after almost a year of prosecuting the CIP application, a number of claims had been allowed by the Patent and Trademark Office. However, the issuance of patent No. 3,216,674 on November 9, 1965, to Mr. William B. McLean changed all this, for on January 10, 1966, the examiner withdrew the allowance of all claims and issued a final rejection of plaintiff’s patent application. Plaintiff on April 29, 1966, filed a proposed amendment after final rejection wherein he cancelled all of the previously pending claims and submitted application claims 19-21. These claims ultimately issued as the claims in suit, claims 1-3. In plaintiff’s own words: These claims [claims 1-3 of the patent in suit] were rewritten to put them in better form (the paragraph form) and to change the wording so that the claims more clearly distinguish over the newly-cited reference, McLean. [Emphasis added.] An example of the changes in the claims which plaintiff made to distinguish plaintiffs invention from the McLean patent can be seen in elements (e)-(g) of claim 1. In explaining this to the examiner, plaintiff stated: In the exemplary embodiment disclosed in the specification [which includes Fig. 12 and the related text added to the CIP], means (e) and (f) are the apparatus for generating and transmitting the solar sensor pulses to an external control point, and the apparatus for receiving the control signals. McLean, having an internally controlled guidance system, provides no means for exchanging signals with an external control point. In further distinguishing over McLean, plaintiff stated: He provides no spin reference indication to an external location and receives no control signals from an external location. McLean’s device would be incapable of performing the function of applicant’s claimed invention; namely re-orienting the spin axis to point in a desired direction while in orbit. * * * Furthermore, it is under no external control, as is applicant’s claimed invention. * * * Applicant’s claimed invention can be reoriented many times, to point the spin axis in many different directions upon command from an external control point. [Emphasis added.] Thus, in plaintiff’s own words, it is clear that the claimed invention contemplated external control of the satellite. Indeed, that was the very differentiating feature urged upon the Patent Office to obtain the patent. As the above-cited portion of the file wrapper of the patent in suit demonstrates, Williams invented a satellite which could be precessed in many different directions upon command from an external location. The claims themselves are drafted in such a manner so as to define a system that is, as a result of all of the recited elements, capable of precessing the satellite on command from an external location. Without the ground-based control station, plaintiff’s satellite cannot be precessed, for it does not, unlike McLean, contain any on-board hardware with which to accomplish the desired precession. The satellite merely gathers information useful for determining in which direction its spin axis is pointing and the speed at which it is spinning about its spin axis. The satellite is provided with devices for transmitting such information to earth, and devices for receiving control signals synchronized with its angular spin position for initiating the command precession maneuver. There is no equipment carried on board the satellite for calculating its instantaneous spin angle position, nor the desired attitude of the spin axis. All calculations for the patented satellite must be accomplished on the ground. Moreover, the claims are written, by plaintiff’s own admissions, to cover this external control feature. Thus, in order to make and operate the claimed invention, it is necessary to have ground-based external control means. C. The CCPA’s Evaluation of Invention Requires Ground-Based Controller Independent evidence that an external control means is a necessary element of the Williams invention is found in a recent Court of Customs and Patent Appeal’s decision concerning title to the patent in suit. In the course of its opinion, the court described its understanding of the claimed invention as follows: The invention in dispute is apparatus for controlling the attitude or orientation of the spin axis of a spinning body by applying a precessing torque to the body under control from a location external to the body, defined in representative claim 19 * * *. [463 F.2d at 1394, emphasis added.] In essence, the invention is directed to a spinning body operated by remote control from a location external to the body to pulse a nozzle at a selected position in successive spin cycles to precess the body in a selected direction. The remote control link between the body and the external location was a radio system described very broadly in the application. It is apparent from the record that the prior art in that area was already well developed. Only the feasibility of the combination of the puised jet precessing means with external monitoring and controlling means, as broadly recited in the claims, was left to be proven. [463 F.2d at 1398, footnote omitted, emphasis added.] Thus, the CCPA also clearly recognized that some means of receiving the spin angle information, developing a control signal therefrom in synchronism with the instantaneous spin angle position of the satellite, and transmitting that control signal back to the satellite for initiation of the precessing operation, in other words, some external control means, was necessary in order to make and use the claimed invention. D. Decisions made by PTO do not Support Plaintiff’s Position 1. Dropping of Cole Reference does not mean that PTO felt Claims did not Include Ground-Based Controller Plaintiff argues that the claims do not cover any ground-based apparatus, but rather that they recite apparatus carried on board the satellite adapted for cooperation with external control equipment. Plaintiff points to the file history of the CIP and the actions of the examiner shown therein, to support its theory. Plaintiff especially points out that the Patent and Trademark Office examiner was aware of an article, entitled Guidance and Control of 24-Hour Satellites, by Mr. Roger W. Cole, an orbital analyst employed by plaintiff, that was presented by him at the Institute of Navigation’s June 18-20, 1962, meeting in San Diego, California, and which later appeared in Navigation (Winter 1962-63). Plaintiff reasons that the examiner would not have allowed claims that relied on new matter which appeared for the first time in plaintiff’s CIP application, since any such claims would have been invalid under 35 U.S.C. § 102. Accordingly, plaintiff argues that since the examiner felt Williams was not entitled to claims specifically reciting Fig. 12 apparatus, the subsequent allowance of claims 1-3 of the patent without citing the Cole publication amounts to a recognition by him that those claims were not so limited. Plaintiff, therefore, argues, as it must in order to uphold the validity of the patent, that the examiner allowed the claims at bar because they were fully supported by the original specification, without reliance on Fig. 12 and its accompanying description, which was inserted for the first time into the CIP application. A review of the file history of both plaintiff’s original and CIP applications fails to support plaintiff’s position. 2. Plaintiff’s Actions and Statements before PTO show that Claims in suit Included Ground-Based Controller Attention is initially directed to plaintiff’s original April 18, 1960, application. Following two office actions, the Patent and Trademark Office had allowed only claims 3-5, 7 and 8. The remainder of the original application claims had either been rejected on art or had been cancelled by plaintiff. Of the allowed claims, claims 3 and 4 were directed to a nutation damper which is not involved in this litigation. However, all of the remaining claims, 5, 7 and 8, were directed to a combination of elements that are properly disclosed and described by plaintiff’s original application. For example, in pertinent part, claim 5 provided: [C]ontrol means disposed within said body; * * * first and second controllable valves individually connected to said means for supplying a gas and to said control means for passing said gas in response to said control means; * * * This is to be contrasted with the language which appeared in plaintiff’s claims 15-19, which were submitted by a January 3, 1963, amendment to its original application. By way of example, claim 15, after calling, inter alia, for a valve to control the emission of a fluid under pressure, called for: [Cjontrol means coupled to said valve for actuating said valve in a series of pulses occurring once per each revolution of said body about said axis and whose starting and stopping times are determined by the instantaneous angle of rotation of * * * [the satellite] about * * * [its] axis. As has been discussed in detail herein-above, claims 15-19 were finally rejected by the Patent and Trademark Office as being unsupported by the disclosure in the original specification. Although plaintiff filed an appeal from the examiner’s decision rejecting claims 15-19, the appeal was allowed to lapse by plaintiff’s failure to file its appeal brief within the allotted time. Shortly thereafter, plaintiff filed its August 21, 1964, CIP with allowed claim 5 appearing as CIP application claim 14. There can be little doubt that the filing of plaintiff’s CIP application constitutes an admission by plaintiff that its original April 18, 1960, application did not contain sufficient disclosure of the ground controller to support the combination covered by claims 15-19. The above events are significant since they clearly demonstrate that plaintiff could have claimed and obtained a patent to the subject matter disclosed by its April 18, 1960, application if it were willing to accept claims such as original claims 3-5 or 7-8. It was only when plaintiff insisted upon going beyond its original disclosure in an attempt to implicitly or explicitly claim the ground-based controller that it got into a dispute with the Patent and Trademark Office. In the first office action following plaintiff’s August 21, 1964, filing of its CIP application, the examiner rejected a number of claims as anticipated by the Cole article. In substance, the examiner’s position was that the occurrence and duration of the pulses to actuate the precessing valve were not disclosed by the original application. The examiner specifically stated that: The subject matter of applicant’s Fig. 12, relating to the means for controlling the starting and stopping times, and duration, of control valve actuation, so as to be in synchronism with body rotation, as determined by a function of the instantaneous angle of rotation of the body with respect to a reference in space, is entitled to the filing date of the instant application only. Thus, Cole’s disclosure operates as a statutory bar against such matter, as claimed, under 35 USC 102(b). In response, plaintiff, by its July 21,1965, amendment, either cancelled or modified all of the previously rejected claims. With regard to the rejections based on Mr. Cole’s article, plaintiff stated: Claims 5, 10 and 13 were rejected as being fully met by the Navigation article by Cole under 35 USC 102. Claims 5, 10 and 13 have been amended to delete reference to the control of starting and stopping times and the duration of valve actuation. Accordingly, Cole’s disclosure can not now be considered to operate as a statutory bar against claims 5, 10 and 13. In the next office action, the examiner did not refer again to the Cole reference, instead the pending claims were finally rejected on the basis of the ’674 McLean patent which had recently issued, in combination with a previously cited patent, No. 2,991,027, to Geyling under 35 U.S.C. § 103. Hughes then cancelled the rejected claims and inserted, by an amendment after final rejection, new claims 19-21 into the application. These claims were allowed by the examiner without comment, and are the claims, 1-3, presently involved in the case at bar. As has previously been pointed out, the claims at bar include, among other things, a ground-based controller, and the generation of a control signal which is synchronized with the instantaneous spin angle position of the satellite for actuation of the control valve, which is substantially the same subject matter that plaintiff deleted from CIP claims 5, 10 and 13 after the examiner’s citation of the Cole reference. It thus is difficult to understand or explain why claims 19-21 were not rejected by the examiner under 35 U.S.C. § 102(b) in the same manner that he has previously rejected CIP claims 5, 10 and 13. It must be assumed, since no explanation is given by the examiner to justify his action, that he felt that new CIP claims 19-21 were entitled to the April 18, 1960, filing date of the original application. Plaintiff’s own remarks make this explanation untenable. Plaintiff’s statements to the examiner regarding new claims 19-21 warrant repeating: In the exemplary embodiment disclosed in the specification, means (e) and (f) are the apparatus for generating and transmitting the solar sensor pulses to an external control point, and the apparatus for receiving the control signals. McLean, having an internally controlled guidance system, provides no means for exchanging signals with an external control point. With regard to mode of operation and result; McLean * * * provides no spin reference indication to an external location and receives no control signals from an external location. Furthermore, * * * [McLean] is under no external control, as is applicant’s claimed invention. * * * Applicant’s claimed invention can be reoriented many times, to point the spin axis in many different directions upon command from an external control