text:
In August 2002, a German buyer ordered a boiler plus several applications (in particular a pellet heating system) from an Austrian seller. The buyer entered the contract as one of its customers needed a heating system for two new buildings. The sellers' standard terms of purchase, accepted by the buyer, contained (amongst others) provisions on notification of lack of conformity (within one week after delivery), damages, contractual warranty and jurisdiction. According to the provisions all claims were subject "exclusively to Austrian law, except the rules on the conflict of laws, and the CISG"
The boiler did not work properly from the very beginning, and the buyer's customer informed the buyer. However, this latter failed to give notice to the seller. The seller was informed, by the buyer's customer, only in mid-February 2003. Despite several efforts to remedy the defects, the boiler still did not work properly. The seller thus offered to take the boiler back and reimburse the buyer's customer, while deducting a certain amount. The buyer's customer disagreed with the deduction and (in March 2003) sent a letter to the buyer declaring the contract avoided. The buyer sold its customer a new heating system.
In August 2005 the buyer brought action against the seller claiming avoidance of the contract and repayment of the purchase price as well as compensation for the installation of a new heating system. It also requested the court to declare the seller's liability for the dismantling of the boiler and the respective equipment. The Court of First Instance dismissed the claim. Pursuant to Austrian law, the court declared that the buyer had failed to give timely notice of the lack of conformity. The Court of Appeal partially reversed the decision of the lower court. Applying the CISG, (article 1(1)(a)), the Court noted that the buyer had failed to comply with articles 38 and 39 of the Convention. However, the Court stated that the seller's attempts to repair the system several times, following the notice of the buyer's customer, could be considered as a waiver of the timely notice of non-conformity. Those attempts could not be considered the result of a mere warranty. Therefore, the seller had committed a fundamental breach of contract and the contract could be avoided pursuant to article 49 CISG, as actually done by the buyer. However, the buyer had failed to properly store the goods (Article 81 CISG), as it was obliged to return them in the same conditions they had been received (article 82 CISG). It also had to account for the benefits derived from the goods (Article 84 CISG). For these reasons, the seller was entitled to damages (Article 74 ff. CISG).
The Supreme Court considered the question of applicability of the CISG, pursuant to article 6 of the Convention. The Court noted the seller's argument that there was a typing error in the standard terms of contract. As a matter of fact, there should have been no comma between the words "and" and "CISG" in the choice of law clause.
According to the Court, in matters of exclusion of the Convention, it is decisive whether the parties have relied on the non-uniform law of a State. Mere reference to the national law of a Contracting State does not constitute an exclusion of the CISG. In the absence of clauses stating the contrary -- in particular a reference to the substantive law -- the application of Austrian law includes the Convention. In the case considered, however, it could be assumed that the exclusion of application of both private international law and CISG was intended. This could be inferred from the fact that both parties had referred to � 377 commercial code (HGB) and thus to substantive Austrian law. The Court noted that the question of the application of the CISG was irrelevant, as the Court of Appeal had decided that that the notice of lack of conformity was belated both pursuant to the CISG and the Austrian Commercial Code.
"2. A reference to the law of a Contracting State to the CISG in a jurisdiction clause, on its own, does not constitute a derogation of the CISG.
"3. On the implied waiver of the right to rely on a belated notification of defects by undertaking an attempt to remedy such defects."
The judgment of the Court of Appeal is revoked and the judgment of the Court of First Instance is upheld. The [Buyer] has to pay to the [Seller] EUR 1,454.40 (including EUR 242.40 turnover tax) for the costs of the appellate proceedings and EUR 2,214.88 (including 174.48 turnover tax and EUR 1,168.00 cash expenses) for the costs of the present proceedings within fourteen days.
The [Buyer], a German plumber, ordered from the [Seller], an Austrian manufacturer of boilers, a boiler plus several applications, (in particular, a pellet heating system) according to an order confirmation of 13 August 2002. The parties had agreed that the boiler should heat automatically. The contract was based on the background that the plumber had a business relationship with a customer who needed a heating system for two new buildings and wanted to use pellets, bricks and woodchips of his carpenter's shop as fuel for the boilers. The [Buyer] inquired of an independent agent who worked for the [Seller] whether an wooden parts and wood shavings of a carpenter's shop could be put into the boiler.
"6. Notification. The buyer is obliged to give notice of a lack of conformity within one week. If the lack of conformity was not detectable, the buyer has to give notice thereof within one week after the detection."
"8. Warranty. If the buyer is not entitled to conversion (Wandlung), a warranty is provided by repairing the defective part free of charge within the time limit. If it is impossible to repair the defective part or if the repair would entail unreasonable costs, the parts will be reasonably replaced."
"9. Damages. The seller is solely liable for deliberately caused damages to goods of the buyer that have been handed over in the course of the transaction in order to execute the contract. Further claims of the buyer, in particular claims for further damages including consequential damages are excluded, except for the fact that the seller acted in gross negligence or intentionally.
"12. Legal Venue. Steyr is the legal venue for any claims. All claims are subject to Austrian law, excluding the rules on the conflict of laws, and the CISG.
"13. Warranty Claims. Warranty claims in respect to deliveries via specialist shops (plumbers, wholesalers, etc.) are limited to a delivery of substitute goods free of charge without the costs for replacement."
The [Buyer] installed the boiler on 10 October 2002 following the delivery in September. An employee of the [Seller] was present during the installation. This employee pointed out that it would be necessary to supervise the boiler visually as it would be fit for pellets, however, not for the wood shavings which were mainly used at the initial putting into service. The employee additionally explained to the customer of the [Buyer] that the boiler would not function in the best possible way if wood shavings were used. The [Buyer] invoiced the installation at EUR 1,749.63. Additional costs for the electrical connection accrued in the amount of EUR 978.52.
The boiler did not work properly from the very beginning, in particular, in respect to the automatic heating and the filling. The customer of the [Buyer] informed the [Buyer] thereof. The [Buyer], however, failed to give notice to the [Seller]. The [Seller] was directly informed by the [Buyer]'s customer in the middle of February 2003 for the first time when the latter gave notice that the heating system would not start automatically. The Court of First Instance established that the customer of the [Buyer] subsequently sent several letters to the [Seller], specifying the defects of the heating system. Following a letter of the [Buyer]'s customer of 23 February 2003, an employee of the [Seller] directly visited the customer in order to remedy the defects. This employee detected that the pellets got caught on the filling level sensor. Hence, he replaced the sensor. He pointed out that the wood shavings which had been used were too long.
However, the automatic starter still did not function properly. In response to a further letter of the [Buyer]'s customer, dated 8 January 2004, which stated various defects, the [Seller] sent another employee, who replaced several parts.
The [Seller] granted an extension of the warranty period to the [Buyer]'s customer on 29 March 2004 until October 2005.
The boiler continued not working properly; the [Buyer]'s customer gave notice thereof via letter on 21 November 2004, whereupon the boiler was readjusted and the control modified at the end of November 2004.
The [Buyer]'s customer gave to the [Seller] further notice of defects on 8 January 2005. The [Seller] thereupon offered to take the boiler back and reimburse the [Buyer]'s customer deducting a certain amount due to the fact that the latter had used the boiler (The [Buyer]'s customer disagreed with the deduction). In addition, the [Seller] noted that the boiler had been heated with very fine material, however, not with pellets.
The [Buyer]'s customer sent a letter to the [Buyer] declaring the contract avoided on 7 March 2005. The [Buyer] sold a new heating system to the customer. The old boiler was not dismantled properly. In addition, it was stored without any protection at the premises of the [Buyer]'s customer until the end of 2005.
In general, an operating period of fifteen to twenty years can be assumed. The operating period of a motor, working parts, conveyors and filling systems usually amounts to ten years. The defects which have been given notice of by the [Buyer]'s customer can be attributed to both defects on behalf of the electric control, the measuring device, as well as the control and the fact that unsuitable and oversized heating fuel has been used. This led to a blockage and the standstill of the system as well as to damages. The defects had already been present at the time of the delivery and installation of the system. However, the modifications of the parameter setting additionally led to a dysfunction of the system.
The [Buyer] failed to carry out a proper examination of the boiler on both 10 October 2002 and 14 November 2002, at which time the defects could have been detected.
The [Buyer] filed a suit on 26 August 2005. It claims avoidance of the contract and repayment of the purchase price as well as compensation for the installation of a new heating system. [Buyer] additionally requested the court to declare that the [Seller] is liable for the dismantling of the boiler and the respective equipment.
The [Buyer] alleged that the boiler had been defective and that it had given timely notice thereof in mutual agreement with its customer in the sense of � 377 HGB [*]. The heating system would still be defective. It would, in particular, fail to start properly and to produce sufficient warmth. This could be attributed to a poor design by the [Seller]. The customer of the [Buyer] had declared avoidance of the contract on 7 March 2005, whereupon the [Buyer] had declared conversion (Wandlung). Hence, the [Seller] would be liable to repay the purchase price and to compensate the [Buyer] for the costs of the installation of the heating system. The [Buyer] would be entitled to the requested declaratory judgment as the costs for the modification of the heating system for the end-user could not yet be established.
The [Buyer] additionally alleged that it had thoroughly examined the goods without delay. The defects would in particular be fundamental in respect to the electric control. This defect could not have been detected at the time of the delivery. In addition, the dysfunction could not be attributed to the heating fuel but to the poor design of the heating system. The extension of the warranty period had been effected due to an update of the electric control. The storage of the heating system following the dismantling would not have led to a deterioration of the boiler. The [Buyer] would no longer be liable for this heating system. The standard terms of the [Seller] were not effectively included into the contract.
The [Seller] requested the dismissal of the [Buyer]'s claim.
The [Seller] argued that the [Buyer] had failed to effect a timely examination and to give a timely notice in the sense of � 377 HGB [*]. It had already been obvious at the time of the installation of the heating system in October 2002 that the [Buyer] intended to sell the boiler to a carpenter, who intended to use wood shavings and other wooden waste material. The [Seller] had explicitly pointed out that the boiler would neither be designed nor suitable for such material. The customer of the [Buyer] had also explicitly been informed. The dysfunction could mainly be attributed to the wrong handling of the boiler by the [Buyer]'s customer, who used both long wood shavings and wooden waste material of his carpenter's shop. The customer of the [Buyer] had not given notice of any defects until 23 February 2003. The notice of non-conformity would be "time barred and elapsed." In addition, a conversion (Wandlung) would solely be possible contemporaneously with the return of the complete heating system. Furthermore, the [Buyer] would have to deduct the advantage due to the use of the heating system by its customer. Moreover, a conversion would be barred on the basis of the standard terms, as there was no gross negligence of the [Seller]. According to these standard terms, a notice of non-conformity had to be given within a period of one week. In addition, the heating system had been poorly assembled which had led to a loss in value. Hence, the [Buyer] would be liable for damages in the amount of EUR 9,368.18. This amount would be claimed in addition to a claim for compensation for use during three heating periods in the amount of EUR 4,022.64 as a counterclaim. The new heating system of the [Buyer] would dispose of a wattage, wherefore it could be assumed that the [Buyer]'s customer had been given wrong information by the [Buyer].
The Court of First Instance dismissed the [Buyer]'s claim. It assumed -- on the basis of the aforementioned facts -- that Austrian law would be applicable according to � 4 EVÜ [*]. It had been agreed between the parties that the boiler would heat and refill material automatically, which had not been the case at the time of the installation. This agreed (dys)function would constitute a lack of conformity in the sense of � 922 ABGB [*]. According to � 377 HGB [*] this lack of conformity should have been given notice of at the time of the conclusion of the contract in 2002, as both parties were entrepreneurs. The [Buyer] had failed to effect a timely examination, which would have been possible on 14 November 2002 at the latest, and had failed to give a timely notice of a lack of conformity even though it had been informed thereof by its customer. Thus, the goods could be seen as accepted due to a lack of a timely notice in the sense of � 377 HGB, wherefore the [Buyer] had forfeited its rights to claim subsequent performance or damages, including the recourse according to � 933d ABGB.
The Court of Appeal partially allowed the claim of the [Buyer]. It partially revoked the judgement of the Court of First instance; it established the avoidance of the contract, but confirmed the dismissal of the claim for a declaratory judgment. It revoked the remainder and referred the judgment back to the Court of First Instance in order to have the procedure amended and the judgment reconsidered.
The Court of Appeal held that � 377 HGB [*] would not be applicable to the case but the United Nation Convention on Contracts for the International Sale of Goods according to Art 21 EVÜ [*]. This Convention applies to contracts of sale of goods between parties whose places of business are in different States. This requirement is fulfilled in the present case. If the parties wanted to exclude the CISG, they had to tacitly or explicitly agree on an exclusion of the application of this Convention. The parties had neither alleged an exclusion of the CISG nor could this be derived from clause 12 of the standard terms.
According to Article 38 CISG, the buyer must examine the goods, or cause them to be examined, within as short a period as is practicable in the circumstances. According to Article 39 CISG, the buyer loses the right to rely on a lack of conformity of the goods if he does not give notice to the seller specifying the nature of the lack of conformity within a reasonable time after he has discovered it or ought to have discovered it. In any event, there was a fixed period of two years from the date on which the goods were actually handed over. A period of fourteen days would be reasonable in order to examine the goods and give notice due to the lack of special circumstances.
Article 38 CISG could be excluded. In addition, Article 39 CISG could be excluded as well. According to the standard terms, which would be decisive in the present case, a lack of conformity should be given notice of within a period of one week after the goods have been handed over and a hidden defect should be given notice of within a period of one week after its initial detection. The buyer would be obliged to reasonably examine the goods in respect to its type, its amount, its packaging and in respect to any further circumstances. The [Buyer] had failed to effect a thorough examination both on the day of the putting into service of the heating system, namely, on 10 October 2002 and following the installation of the electric filling level sensor. It would have been possible to detect the lack of conformity of the control on these dates. The [Buyer] had even failed to inform the [Seller] after it had been informed of the defects by its customer. The [Buyer]'s customer had given notice of defects for the first time in the middle of the year 2003.
It was true that this notice of non-conformity could be attributed to the [Buyer], however, it had neither been given within a reasonable time nor within the period stipulated in the standard terms. Hence, it could generally be assumed that the [Buyer] had lost its rights according to Articles 45 et seq. CISG. This legal consequence would not apply if the seller had renounced the requirement of giving a timely notice or if a defense based on the expiration of the period would be contrary to good faith. Such a renouncement could be assumed if the seller accepted a belated or unsubstantiated notice and offered subsequent performance. This would apply to both Article 39 CISG and � 377 HGB [*]. This could be assumed in the present case as the [Seller] had attempted several times to improve the heating system following the notice of non-conformity. This could be interpreted on the principle of good faith as a waiver of the plea that the notice of non-conformity would be time-barred. The attempts could not be interpreted as a performance based on a mere warranty.
A fundamental breach of contract would be present as the heating system would not heat automatically, wherefore the contract could be avoided according to Article 49 CISG [Translator's note: Typing error in the original text as it refers to "Article 39 CISG."] The additional defects which had not been sufficiently substantiated, however, would not entitle the [Buyer] to declare the contract avoided. The [Buyer] had declared the conversion (Wandlung) referring to the fundamental defect in due time after the remedy of defects had failed. The claims would not be statute-barred as they had to be raised within two months after the initiation of the performance under the warranty obligation according to � 933 e ABGB [*] [Translator's note: Typing error in the original text as it refers to "933dABGB."] The [Buyer] had fulfilled the warranty claim of its customer on 7 December 2005 at the earliest. Hence, the action which had been brought on 26 August 2005 was not time-barred. Thus it had to be established that the [Buyer] had effectively avoided the contract. This, however, would not change the fact that the [Seller] was entitled to claim damages due to an improper dismantling and storage. According to Article 82 CISG, the buyer was obliged to make restitution of the goods substantially in the condition in which he received them. A breach of the duty to properly store the goods which could be derived from Article 81 CISG after the contract has been avoided would entitle to a claim for damages. The restitution had to be effected concurrently. According to Article 84(2) CISG, the buyer must account to the seller for all benefits which he has derived from the goods or part of them.
Following the avoidance of a contract the special provisions of Articles 74 et seq. CISG would apply. As a conclusion to this, the [Buyer] would be entitled to demand refund of the purchase price and compensation for futile expenses as regards the assembling of the heating system at the place of its customer. On the other hand, the [Buyer] had to account to the [Seller] for all benefits which it had derived from the goods and to compensate for the losses due to the improper dismantling and storage of the heating system. However, there would be a lack of facts in this respect, wherefore the case had to be referred back to the Court of First Instance for an amended taking of evidence and a new judgment.
The Court of Appeal held that ordinary appeal would be admissible as regards the reversal of the judgment, as there would not be any jurisdiction of the Supreme Court as regards the question whether Article 82 CISG could be applied to the period following the avoidance of the contract as well as which criteria had to be considered in an assessment of an adjustment of damages according to Article 84 CISG.
The [Seller] appealed against this judgment of the Court of Appeal as well as against the decision to reverse the judgment. The [Seller] claims that there had been both an erroneous legal assessment and insufficient proceedings.
The [Buyer] requests the dismissal of the [Seller]'s appeal as inadmissible or unjustified, respectively.
The [Seller]'s appeal is admissible on the basis of the reasons as laid out by the Court of Appeal and -- on the basis of different reasons -- justified.
The [Seller] alleges erroneous proceedings on the basis that the [Buyer] had referred to �� 932 et seq. ABGB [*] and that the [Seller] had argued that Austrian law would exclusively be applicable. This could additionally be seen from the standard terms which had been submitted, even if the secretary had mistakenly entered a comma before the word "and" as it would be "generally known that people do rarely know how to correctly use commas". The [Buyer] had never relied on the CISG and this had never been an issue in the course of the proceedings. Furthermore, the Court of First Instance had not considered the CISG as the applicable law. Thus, everybody had assumed that the ABGB would be applicable. The Court of Appeal had infringed the duty to consider the submissions of the parties according to � 182a ZPO [*] as it had based its judgment on the assumption that the CISG would be applicable, even though this had obviously been overlooked or neglected by the parties.
This can generally be confirmed as in fact neither party has relied on the provisions of the CISG in the course of the proceedings. In contrast, both the [Seller] and the [Buyer] have based their arguments on � 377 HGB [*]. According to � 182 a ZPO [*] the court has to consider the submissions of the parties and is solely allowed to base its decision upon facts which have obviously been overlooked or neglected by the parties, if it has discussed this with the parties and given them the opportunity to comment thereon. It is true that this prohibition of "surprise judgments" (cf. in general Fucik, in Rechberger, ZPO, � 182 margin number 1; RIS-Justiz RS0037300 with further references) has been infringed by the Court of Appeal. However this procedural error has to be relevant and thus suitable in the abstract to lead to an incorrect judgment of the Court of Appeal. (cf. RIS-Justiz RS0043027 and RS0043049 with further references). This, however, cannot be assumed in the present case (in respect to the question whether the notice has been given in due time) as will be shown in the following.
The assessment whether the CISG is applicable has to be based on the general principles. According thereto the CISG forms part of the Austrian legal system. This also applies in respect to a choice of law. Parties, who want to exclude the application of the CISG have to do so via an explicit or tacit agreement as regards the exclusion (RIS-Justiz RS0115967, 2 Ob 95/06v; similar RS-Justiz RS 0113574; cf. Lurger, Die neuere Rechtsprechungsentwicklung zum UN-Kaufrechtsübereinkommen, JBl 2002, p. 750 et seq.).
According to Article 6 CISG, the parties may exclude the application of the Convention. This can be effected tacitly, e.g., by choosing the national law of a Contracting State and determining the applicable substantive law, or by choosing the law of a contracting state insofar as it differs from the law of the national law of another Contracting State. Ultimately, it is decisive in respect to an exclusion of the CISG whether the parties relied on the non-uniform law of a State (OGH, 2 Ob 95/06v, JBl 2008, p.191; Siehr, in Honsell, Kommentar zum UN-Kaufrecht, Art. 6 margin number 6; Ferrari, in Schlechtriem/Schwenzer, Kommentar zum Einheitlichen UN-Kaufrecht, Art. 6 margin number 18 et seq.). Solely referring to the national law of a Contracting State does not constitute an exclusion of the CISG. In the absence of stating points to the contrary -- in particular a reference to the substantive law (cf. 2 Ob 95/06v) -- the application of Austrian law includes the CISG. In the present case, a particular reference would not have been necessary in order to apply the CISG as both Germany and Austria are Contracting States (Honsell, loco citato, pp. 1089 et seq.) to the Convention, wherefore the requirements of Art. 1 CSG have been met. If the contractual agreement is assessed on this basis, the statement of the [Buyer] can be confirmed that from a strict grammatical and lexical point of view the "exception for the IPR [*]" within the standard terms can be seen as a mere insertion and thus even an explicit agreement on the application of the CISG due to the allegedly mistakenly entered comma. As the CISG is -- according to the aforementioned assumption -- applicable anyway due to the reference to Austrian law, this would only make sense if the CISG should be applied in cases where it could not be applied according to general rules. However, it would be difficult to understand insofar why the parties highlighted the fact that Austrian law should be "exclusively" applied. Rather, the parties would have agreed on the primary application of the CISG. Thus, it can be assumed that not only the exclusion of the application of the IPR but also the exclusion of the application of the CISG had been intended. It can be seen from the fact that both parties referred to � 377 HGB [*] and thus to substantive Austrian law that they both assumed that the application of the CISG had been excluded. This is, however, irrelevant in the end as the Court of Appeal -- insofar undisputedly -- held that the notice had been belated both according to � 377 HGB and Art 39(1) CISG ("reasonable time") in the present case (cf. in respect to the general period of fourteen days RIS-Justiz RS0111001 with further references; Magnus, in Honsell, loco citato, Art. 39, margin number 22).
Thus, it is in the end decisive to what extent the [Seller] has waived its right to rely on the fact that the notice has not been given in due time. In addition, it is decisive whether such a waiver can be derived -- according to the view of the Court of Appeal -- from the willingness of the [Seller] to accept the remedy of defects (on the basis of the principle of good faith within business dealings). The [Seller] alleges an infringement of the duty to legally discuss this issue by the Court of Appeal. Hence, it has to be asked first what the [Buyer] has submitted in this respect.
The [Buyer] alleged in the course of the appellate proceedings for the first time that the subsequent performance constituted a waiver of the right to rely on the fact that the notice has not been given in due time (rp 46).
According to the principle of good faith, a waiver of the right to rely on the fact that the notice has not been given in due time had to be assumed if the seller travelled to the buyer in order to correct the defects without stating that the notice had been untimely. As the [Buyer] had failed to submit that the subsequent performance constituted a waiver of the right to rely on the fact that the notice has not been given in due time in the course of the proceedings before the Court of First Instance, the question whether a breach of the principle of preclusion of new submissions (Neuerungsverbot) is present arises.
The Supreme Court assumes that a breach of the principle of preclusion of new submissions (Neuerungsverbot) which entails an incorrect legal assessment cannot only be claimed in the course of an appeal against an arrest of judgment but also as a ground for appeal in the sense of � 503 ZPO [*] (cf. RIS-Justiz RS0112215 with further references; OGH, 5 Ob 43/06v). New claims or pleas that are not considered ex officio have to be present (cf. OGH 5 Ob 43/06v).
Thus the further question arises, whether a waiver of the right to rely on the fact that the notice has not been given in due time can be considered ex officio or whether a explicit objection is necessary in this respect.
The Supreme Court has continuously held in respect to the former � 377 HGB [*] that the promise of subsequent performance or the subsequent performance itself would constitute a tacit waiver of the right to rely on the fact that a notice has not been given in due time. (cf. RIS-Justiz RS0014264 with further references, OGH, 6 Ob 302/01g; similarily in respect to Article 38 CISG Magnus, loco citato, margin number 35, Salger in Witz/Salger/Lorenz, International Einheitliches Kaufrecht, Art. 39 margin numbers 11,12). The assertion of such a tacit waiver, however, has at least to be effected via a respective submission of facts (cf. RIS-Justiz RS0018246). The [Buyer], on the other hand, solely responded to the allegation of an untimely notice by stating that it had not breached its duty to examine the goods and that the defect could not have been detected. It solely referred to the attempts to correct the defects in respect to the claim of non-conformity. It, however, referred to the guarantee in this respect as well. In particular as regards this reference to a guarantee, which can only be considered independent of statutory warranty claims, a (sufficient) submission of facts with respect to a waiver of the right to rely on the fact that the notice has not been given in due time cannot be established. Thus, the breach of the duty to give notice in due time bars statutory warranty claims of the [Buyer].
Hence, it does not have to be considered that this claim would probably be statute-barred according to � 933 ABGB [*]. According to this provision, the period of limitation for the initiation of legal procedures (in the present case on 26 August 2005) in respect to defects of movable goods is two years after the goods have been handed over (cf. in respect to a maximum period according to Art. 39(2) CISG RIS-Jusiz RS0122995). The [Seller] has not been obliged to install the boiler which was sold to the [Buyer] and which could be removed. Thus, the boiler can be qualified as moveable in the sense of � 933 ABGB [*] (cf. Reinschauer in Rummel, ABGB � 933, margin number 4; Ofner in Schwimann, ABGB, � 933, margin number 7; P.Bydlinski in KBB, � 933, margin number 2). Hence, the limitation period of two years would have elapsed a long time ago.
The requirements of a recourse of an entrepreneur against the supplying entrepreneur, if the former has provided subsequent performance on the basis of a claim for subsequent performance by a consumer, have neither been alleged nor proven. In particular, as regards the notion "consumer" (cf. in this respect Ofner, loco citato, � 933b, margin number 4), there are neither established facts nor submissions. In contrast, the defects in the present case can be attributed to the fact that the customer of the [Buyer] used wood shavings and wooden waste material to heat the boiler.
As a conclusion to this, the claims of the [Buyer] cannot be seen as justified, wherefore it is not necessary to consider the claims of the [Seller] which have been raised as a potential set-off.
The Supreme Court is entitled to decide in case of both an admissible appeal on the basis of � 519 ZPO [*] and a ripeness for a court decision (cf. Kodek in Rechberger, ZPO, � 519, margin number 24; RIS-Justiz RS0043853 with further references). Hence, the claim has to be dismissed on the basis of the aforementioned assumptions and the judgment of the Court of First Instance upheld.
The decision on costs is based on �� 50 and 41 ZPO.
* All translations should be verified by cross-checking against the original text. For purposes of this translation, the Plaintiff-Appellee of the Germany is referred to as [Buyer] and the Defendant-Appellant of Austria is referred to as [Seller]. Amounts in the uniform European currency (Euro) are indicated as [EUR].
Translator's note on other abbreviations: ABGB = Allgemeines Bürgerliches Gesetzbuch [Austrian Civil Code]; EVÜ = Convention on the Law Applicable to Contractual Obligations (Rome 1980); HGB = Handelsgesetzbuch [Austrian Commercial Code]; IPR = Internationales Privatrecht [Code on the Conflict of Laws]; ZPO = Zivilprozessordnung [Austrian Code on Civil Procedure].

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Art 21
Art. 6
Art. 6
Art. 1
Art 39
Art. 39
Art. 39
Art. 39


Tym’s is DOT approved to hydrostatically test most kinds of cylinder assemblies. Testing is also available for foreign, experimental, and engineering sample compressed gas containers.
The Department of Transportation (DOT) requires all cylinders to be hydrostatically tested every 3, 5, or 10 years. The time allowed by law is determined by a variety of factors such as the type of material, the gas it contains, its age, and special permits the cylinder may have been manufactured under.
A “hydro test” is an approved way to test the structural integrity of a compressed gas container. It is performed by removing the valve, filling the container with water, and then pressuring the container above its operating limit. The expansion of the cylinder is measured, recorded, and analyzed. If cylinder expands beyond certain limits, the cylinder must be condemned.
In most cases corrosion or other damage, internal or external, will render a cylinder useless before a failed hydrostatic test.
How often is a hydro test required?
This depends on the rating of the cylinder and the date it was last tested. The month and year of each hydro test is stamped onto the cylinder between a letter and four numbers identifying the tester. It is 3, 5, or 10 years from this date that the next hydro test is due.
DOT 3AA with a “star” following the last hydro test date.
Some cylinders have a 5-point star stamped into the cylinder after the last hydro test date making them eligible for a 10-year test under certain circumstances.
These are specialty cylinders that fall within a range of testing requirements and are manufactured and tested with “special permits” from the DOT.
DOT 3 3000 psig 5.
DOT 3A, 3AA 5/3 times service pressure, except noncorrosive service ( see § 180.209(g) ) 5, 10, or 12 ( see § 180.209(b) , (e), (f), (h), and (j).
DOT 3AL 5/3 times service pressure 5, 10 or 12 ( see § 180.209(e) , (j) and § 180.209(m) 3).
DOT 3AX, 3AAX 5/3 times service pressure 5, 10 ( see § 180.209(e) .
3B, 3BN 2 times service pressure ( see § 180.209(g) ) 5 or 10 ( see § 180.209(e) , (f)).
3HT 5/3 times service pressure 3 ( see §§ 180.209(k) and 180.213(c)).
3T 5/3 times service pressure 5.
4AA480 2 times service pressure ( see § 180.209(g) ) 5 or 10 ( see § 180.209(e) or (h)).
4B, 4BA, 4BW, 4B-240ET 2 times service pressure, except non-corrosive service ( see § 180.209(g) ) 5, 10, or 12 ( see § 180.209(e) , (f), and (j)).
4D, 4DA, 4DS 2 times service 5.
DOT 4E 2 times service pressure, except non-corrosive ( see § 180.209(g) ) 5 or 10 ( see § 180.209(e) ).
8, 8AL 10 or 20 ( see § 180.209(i) ).
Exemption or special permit cylinder See current exemption or special permit See current exemption or special permit.
Foreign cylinder ( see § 173.301(j) of this subchapter for restrictions on use) As marked on cylinder, but not less than 5/3 of any service or working pressure marking 5 ( see §§ 180.209(l) and 180.213(d)(2)).
1 Any cylinder not exceeding 2 inches outside diameter and less than 2 feet in length is excepted from volumetric expansion test.
2 For cylinders not marked with a service pressure, see § 173.301a(b) of this subchapter.
3 This provision does not apply to cylinders used for carbon dioxide, fire extinguisher or other industrial gas service.
Other companies do not mention hydro tests, or don’t charge for them, what’s the story?
The laws universally apply for all compressed gas containers. Many companies apply the cost of hydro testing to everyone, especially when tanks are exchanged. Tym’s does not charge everyone for hydro testing service. If your tank does not require hydro testing, you don’t pay for it! Unfortunately, some companies break the law and fill out-dated cylinders.
What happens if the cylinder fails?
In the unlikely circumstance that the cylinder fails the hydro test, a test report will be given to the customer and the cylinder must be destroyed.
Hydrostatic testing is the most widespread way to inspect a compressed gas container for leaks or defects. The cylinder undergoes hydrostatic testing with the purpose of checking whether it can safely hold its rated pressure. Hydrostatic testing is critical when it comes to compressed gas containers because they can explode in case if they fail when containing compressed gas.
A hydrostatic test includes filling the container with a practically incompressible liquid (water) and examining it for leaks or changes in shape. The test pressure is considerably higher than the operating pressure to ensure safety. Usually 150% of the operating pressure is applied. Water is used in hydrostatic testing as it is almost incompressible and will only expand by a very small amount. In case of high-pressure gas use, it could exceed its compressed volume, posing a great risk of explosion.
All compressed gas containers need regular hydrostatic testing. The frequency of the maintenance depends on the cylinder material.
The Department of Transportation (DOT) recommends visual inspections to be performed on a regular basis as well. The DOT demands that hydrostatic retesting and re-qualification would be handled by registered specialists who have been certified by the DOT. At Tym’s Inc. all the necessary qualifications for hydrostatic testing are met, so you can trust our company for examining your compressed gas cylinders. Many other companies charge everyone for hydro testing, especially when tanks are exchanged. Tym’s Inc. does not do that, if your tank does not require hydrostatic testing, you don’t pay for it!
The object of the pressure tank testing is to check if there is a significant drop of pressure which usually signals of a crack or hole in the tank. Pressure accumulation is a potentially dangerous situation, that’s why this kind of testingshould be conducted by a plumbing professional. Contact Tym’s Inc. and we will conduct both types of testing for you!


Allied Erecting and Dismantling Co., Inc., Appellant v. Genesis Attachments, LLC, Appellee.
Daniel H. Brean, The Webb Law Firm, Pittsburgh, PA, argued for appellant. Also represented by Richard L. Byrne, James G. Porcelli. Ryan Wayne Massey, Harness, Dickey & Pierce, PLC, Troy, MI, argued for appellee.
Daniel H. Brean, The Webb Law Firm, Pittsburgh, PA, argued for appellant. Also represented by Richard L. Byrne, James G. Porcelli.
Ryan Wayne Massey, Harness, Dickey & Pierce, PLC, Troy, MI, argued for appellee.
Before Newman, Dy k, and Walla ch, Circuit Judges.
Allied Erecting and Dismantling Co., Inc. (“Allied”) appeals the United States Patent Trial and Appeal Board's (“PTAB”) decision, on inter partes reexamination, concluding that claims 1–21 of U.S. Patent No. 7,121,489 (“the '489 patent”) would have been obvious over German prior art reference DE 297 15 490 U1 (“Caterpillar”) (J.A. 131–44) and U.S. Patent No. 4,283,866 (“Ogawa”) (J.A. 145–51). See Genesis Attachments, LLC v. Allied Erecting & Dismantling Co. , No. IPR2014–001006, 2014 WL 7274949 (P.T.A.B. Dec. 19, 2014) ; (PTAB decision denying rehearing) (J.A. 2–8). For the reasons set forth below, we affirm the PTAB's decision.
The '489 patent, entitled “Multiple Tool Attachment System,” is directed to heavy machinery tools used for construction and demolition that can be attached to a universal body, which in turn can be attached to “multiple tools, such as a heavy-duty metal cutting shear, a plate shear, a concrete crusher, [or] a grapple.” '489 patent col. 1 ll. 22–24. Traditionally, such tools (i.e., shears, crushers, grapples, etc.) were designed independently, such that “one type of tool associated with each body [ ] can have the greatest possible utility and application.” Id. col. 1 ll. 60–62. According to the '489 patent, this approach did “not provide a system for easily changing tools or a system which allows complete[ly] separate tools to efficiently share a common structure.” Id. col. 2 ll. 30–32. As a result, one purpose of the '489 patent is “to provide a multiple tool attachment system which is easily converted between a plurality of distinct tools.” Id. col. 2 ll. 44–46. To achieve this objective, the '489 patent describes a “quick change feature [ ]” that enables different demolition tools to be efficiently substituted for one another. Id. , Abstract.
Figure 1 of the '489 patent (illustrated below) is illustrative of the claimed invention. It depicts a shear (10) attached to a body (18), which is then attached to a piece of demolition equipment, such as a backhoe (not illustrated). Body (18) is referred to as a “universal body ... because it remains common to a series of tools or tool units [i.e., jaw sets] in the attachment system.” Id. col. 5 ll. 60–61.
Id. fig 1; J.A. 80.
The body (18) depicted above in Figure 1 is referred to as a “universal body ... because it remains common to a series of tools or tool units [i.e., jaw sets] in the attachment system.” Id . col. 5 ll. 59–61. As illustrated in Figure 1, each jaw set of the shear has a main pin (16) about which jaws (12 and 14) can rotate. “A bridge housing 48 surrounds the main pin 16 and is utilized for quickly and easily attaching the main pin 16 and the associated jaw set to the universal body 18.” Id. col. 6 ll. 56–59.
Figure 57 (depicted below) of the '489 patent illustrates the structure of the bridge housing. Sides (19) of universal body (18), (see Figure 1) terminate at receiving member (42) that fits between two bridge housing plates (405 and 406). Receiving member (42) has a curved surface (412) formed via a cutaway that engages with cylindrical sleeve (408), and surrounds main pin (16) (see Figure 1). When receiving member (42) is engaged with sleeve (408), apertures (52) will be aligned and keeper pins (50) can be inserted to attach the bridge housing to the universal body. Id. col. 6 ll. 63–65. Id. fig.57.
wherein the bridge housing has an aperture adapted to be mated with a matching aperture of the receiving member through a removable keeper pin to secure the bridge housing to the receiving member.
Id. col. 15 ll. 26–44 (emphases added to reflect disputed claim language); see J.A. 124 (amendment to claim 1).
Bridge housing (48), which allows for various jaw sets to be quickly and easily attached and detached, is an embodiment of the bridge housing recited in claim 1 of the '489 patent. The attachment and detachment method provides for main pin (16) and its surrounding bearing structure, including the bridge housing, which encases the main pin, to remain attached to the jaw set when it is removed from the universal body. Id. col. 6 l. 67–col. 7 l. 3. At issue is whether the PTAB was correct in holding that Caterpillar and Ogawa, when combined, render obvious the claimed invention as a whole.
The operation of demolition tools requires the replacement of its jaws, “either because the blades or their cutting edges have become worn or because other, more appropriate jaws must be installed to demolish different materials.” J.A. 133. The prior art required the labor-intensive process of first dismantling the swivel bearing and then individually uninstalling the jaws of the tool set from the housing. J.A. 133. To overcome this disadvantage, Caterpillar teaches a system where “the jaws can be replaced as a unit in a simple manner.” J.A. 134. Caterpillar discloses a demolition tool with a housing that can be attached to a piece of construction equipment such as an excavator, and has “two jaws that work together [that] can be pivoted relative to each other.” J.A. 132.
The “first jaw is detachably connected to the housing by means of [a] first and second mounting device[ ].” J.A. 132. The first jaw is attached to the housing by two pins and does not move with respect to the housing during operation. J.A. 137. The second jaw “is connected on one hand by means of the swivel bearing to the first jaw and on the other hand is held by the drive device, which is preferably a hydraulic cylinder which is mounted on the housing.” J.A. 134. By making the “first and second mounting devices ... independent of the swivel bearing,” the swivel bearing “functions only as the mutual swivel mounting of the two jaws and does not function as their attachment to the housing.” J.A. 134. Accordingly, by immobilizing the first jaw, Caterpillar decouples the pivot pin from the mounting mechanism as suggested by other prior art. See J.A. 134. Caterpillar's design thereby enables the quick-change functionality of the jaw sets. J.A. 142 (fig.1).
Figure 1 of Caterpillar (depicted above) depicts a lateral view of a scrap metal shear with housing (11) to which first jaw (13) and second jaw (14) are attached. J.A. 142. First jaw (13) is attached to housing (11) by means of mounting devices (19) and (20). J.A. 137. The first jaw (13) includes a pair of opposing side walls (13a) (not shown in Fig. 1) having mounting devices (19) and (20) which are used to attach first jaw (13) to housing (11). J.A. 137. Mounting device (19) includes grooves (22) with receptacle segment (22b) in the side walls (13a) for receiving pin (21), and mounting device (20), which includes bore hole (23) in side walls (13a) for receiving locking pin (25). J.A. 137–38. Via swivel bearing (15), first jaw (13) supports second jaw (14), which is coupled with hydraulic cylinder (16) at bearing (18). J.A. 137. “The jaws are removed [by] ... releas[ing] the first jaw 13 from ... housing 11, [and] only [ ] socket pin 25 must be extracted, whereupon [ ] pin 21 can be easily extracted from [ ] groove[ ] 22.” J.A. 138. The opening and closing of the shear is achieved by actuation of hydraulic cylinder (16), which allows for second jaw (14) to be swiveled around swivel bearing (15) relative to both first jaw (13) and housing (11). J.A. 137.
Ogawa discloses “[a] convertible bucket attachment for excavation and clasping.” Ogawa, Abstract. Figure 4a (reproduced below) depicts a side view of the bucket attachment, including bucket proper (1) and sub-bucket (2). Id. , fig.4a. Both buckets are pivotally connected to the distal end of arm (11) via a main pin (5') such that a hydraulic cylinder can cause both buckets to rotate. Id. col. 2 ll. 2–17; id . col. 2 l. 59–col. 3 l. 47. Through a linkage system, a single hydraulic cylinder is able to rotate and operate both buckets. Id. col. 1 ll. 6–14.
Id. fig.4a; see also id. col. 4 ll. 13–40.
One purpose of Ogawa is to provide for a greater degree of movement between the back and fore buckets of the apparatus. See id. col. 1 ll. 49–55 (stating that in the prior art, “provision of a cylinder actuator between the back and the fore bucket ... imposed a substantial limitation on the distance of range in which both bucket members can be operatively moved relative to each other, and prevented the range of angular movement of the members from being as wide as 180 [degrees]”).
On May 5, 2010, Genesis Attachments, LLC (“Genesis”) filed a petition for inter partes reexamination, asserting the '489 patent was unpatentable because it was anticipated and obvious over different prior art references. During reexamination, Allied amended claims 1, 7, and 17–19, and added new claims 20 and 21. See J.A. 124–30. The amendments and new claims recited, inter alia , that the bridge housing “encas[ed]” the main pivot pin, and both blades were “movable” relative to the bridge housing. See J.A. 124, 127–28. A United States Patent and Trademark Office (“PTO”) examiner allowed the amended claims, withdrew his initial rejections, see J.A. 2087 (rejecting claims 1, 2, 4, 6–8, 10, and 12–19 of the '489 patent as anticipated by Ogawa), and confirmed the patentability of claims 1–21, see J.A. 1579–80. Genesis appealed the examiner's decision to the PTAB. See J.A. 37–75 (“Decision on Appeal”).
On appeal, the PTAB concluded that claims 1–3, 13, 14, and 17–20 would have been obvious over Caterpillar in view of Ogawa. See J.A. 72–73. Because the PTAB reversed the examiner's decision finding the amended claims patentable, it noted that its decision constituted a new ground of rejection and allowed Allied to reopen prosecution or request rehearing. See J.A. 68 (citing 37 C.F.R. § 41.77(a)–(b) ). The PTAB then remanded to the examiner to determine whether claims 4–12, 15–16, and 21 of the '489 patent would have also been obvious over Caterpillar in view of Ogawa and in further view of U.S. Patent No. 5,546,683 (“Clark”). J.A. 69.
Should the [PTAB] reverse the examiner's determination not to make a rejection proposed by a requester, the [PTAB] shall set forth in the opinion in support of its decision a new ground of rejection.... Any decision which includes a new ground of rejection ... shall not be considered final for judicial review. When the [PTAB] makes a new ground of rejection, the owner, within one month from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal proceeding as to the rejected claim: ... 1) Reopen prosecution ...; [or] (2) Request rehearing .
Allied elected to reopen prosecution and submitted a second round of amendments to claims 1, 7, and 17–19. See J.A. 124–28. The examiner found the amendments did not overcome the PTAB's ground of rejection based on Caterpillar and Ogawa, J.A. 1250–51, and that claims 4–12, 15–16, and 21 were “unpatentable over Caterpillar in view of Ogawa and further in view of Clark,” J.A. 1251.
The PTAB then issued a new decision affirming the examiner's rejections. See J.A. 10–35 (New Decision). Like its Decision on Appeal, the PTAB again found that “Caterpillar ‘teaches one of ordinary skill in the art the desirability of simplifying disassembly of jaws, and discloses a mechanism for doing so.’ ” J.A. 19 (quoting J.A. 65). The PTAB also found that Ogawa provides two movable blades to enable a wide range of angular movement. See J.A. 19. Accordingly, the PTAB concluded that based on these disclosures, a person of ordinary skill in the art could have modified Caterpillar to provide for a “wide range of angular movement.” J.A. 20.
Allied submitted a Request for Rehearing. J.A. 1113–23. The PTAB denied this request and reaffirmed the rejections. See J.A. 2–8. This appeal followed. This court has jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A) (2012).
Obviousness under 35 U.S.C. § 103 (2006) is a mixed question of law and fact. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). The PTAB's ultimate determination of obviousness is a legal conclusion, which we review de novo. In re Baxter Int'l, Inc ., 678 F.3d 1357, 1361 (Fed. Cir. 2012). We review the PTAB's underlying factual findings, including what a reference teaches and the differences between the prior art and the claimed invention, for substantial evidence. See id. (citing Graham v. John Deere Co. of Kan. City , 383 U.S. 1, 17–18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966) ). We also review the PTAB's “finding of a motivation to combine [ ] for substantial evidence.” In re Kahn, 441 F.3d 977, 985 (Fed. Cir. 2006) (citation omitted). “A finding is supported by substantial evidence if a reasonable mind might accept the evidence to support the finding.” K/S Himpp v. Hear–Wear Techs., LLC , 751 F.3d 1362, 1364 (Fed. Cir. 2014) (citation omitted).
A patent claim is unpatentable as obvious “if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art.” 35 U.S.C. § 103 (2006).
The Leahy–Smith America Invents Act (“AIA”) amended § 103. See Pub. L. No. 112-29, § 3(c), 125 Stat. 284, 287 (2011). However, because the application that led to the '489 patent was filed before March 16, 2013, the version of 35 U.S.C. § 103 that applies here is the one in force preceding the changes made by the AIA. See id. § 3(n)(1), 125 Stat. at 293.
At issue is whether it would have been obvious to modify Caterpillar to make both blades movable as taught by Ogawa, while retaining Caterpillar's quick change functionality. Allied argues that “[n]o substantial evidence in the record exists that would allow the [PTAB] to conclude that [Caterpillar and Ogawa] taught the elements of the claimed invention or rendered it obvious.” Allied Br. 29. Allied presents two distinct arguments in support of its position. First, Allied challenges the PTAB's finding of a motivation to combine Caterpillar and Ogawa. Specifically, Allied argues that “the [PTAB] relied on improper hindsight, in the absence of any valid reasoning or supporting evidence, for its obviousness conclusion.” Id. (capitalization modified). Second, Allied contends that “Caterpillar expressly teaches away from combining its teachings with Ogawa.” Id. at 32 (capitalization modified). Specifically, Allied argues that the PTAB's “reasoning would fundamentally redesign and reconstruct Caterpillar to change its principle of operation and [thus] result in an inoperable device.” Id. at 38 (capitalization modified). We address each of these arguments in turn.
According to Allied, contrary to the PTAB's assertion, “making the second jaw in Caterpillar movable involves a massive, nonobvious reconstruction of the device that not only changes its principle of operation, but renders the device inoperable as a result.” Id. at 40. Allied contends that the modification of Caterpillar in view of Ogawa would not only “result [in] substantial redesign and reconstruction,” id. at 44, but also “would [not] have been obvious to a [person having ordinary skill in the art],” id. at 45.
it would have been obvious to one of ordinary skill in the art to apply the teaching of Ogawa with respect to articulation of both grasping members and wide range of angular movement to thereby modify Caterpillar so that the first jaw 13 with the teeth thereon also pivots about the swivel bearing 15 like second jaw 14, while also maintaining the simplified mounting and disassembly via the [side] walls 13a with their [mounting devices] 19, 20 so that the jaws can be disassembled in a simple manner as specifically taught therein.
Contrary to Allied's position, “it is not necessary that [Caterpillar and Ogawa] be physically combinable to render obvious the ['489 patent].” In re Sneed , 710 F.2d 1544, 1550 (Fed. Cir. 1983) ; see also In re Etter , 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (“Etter's assertions that Azure cannot be incorporated in Ambrosio are basically irrelevant, the criterion being not whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.”). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference,” In re Keller, 642 F.2d 413, 425 (CCPA 1981). See also In re Mouttet , 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing In re Keller , 642 F.2d at 425 ), but rather whether “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention,” Pfizer, Inc. v. Apotex, Inc ., 480 F.3d 1348, 1361 (Fed. Cir. 2007).
Upon determining that side walls 13a of Caterpillar serve a similar quick release function as the bridge housing of the '489 patent, it would have been obvious to a person of ordinary skill in the art to modify the immobilized jaw of Caterpillar (first jaw 13) in order to provide for a wider range of motion as taught by Ogawa, to make the jaw set more efficient. For example, a wider range of motion would augment the jaw sets' grasping capabilities. See J.A. 66 (asserting a skilled artisan would seek to modify the jaws of Caterpillar in order to provide a “wide range of angular movement”); see also J.A. 23 (referring to the “desirability of allowing for wide openings” (citation omitted)). Although modification of the movable blades may impede the quick change functionality disclosed by Caterpillar, “[a] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (citation omitted). As articulated by the PTAB, a skilled artisan could modify Caterpillar in view of Ogawa by treating the first jaw like the second. That is, by pivoting the first jaw around the swivel bearing. See J.A. 20. Such a design allows for a greater degree of movement between the jaws, without impacting the quick change functionality (i.e., the ability to mount and disassemble the jaw in a simple manner) provided by the holding fixtures via side walls 13a. See J.A. 20.
Allied also argues that Caterpillar expressly teaches away from Ogawa because “the main pivot pin function[s] as both the pivot point for the jaws and the means for attaching the jaws to the frame.” Allied Br. 33 (emphasis added). According to Allied, because “the teachings of Ogawa would encourage a [person having ordinary skill in the art] to do exactly what Caterpillar says they should not do—have the main pivot pin for both jaws also mount the jaws to the frame,” id. at 37, “Caterpillar undisputedly teaches away from the combination with Ogawa,” id. at 38 (citation omitted).
In its decision denying rehearing, the PTAB took the same position it articulated in its New Decision. See J.A. 3–4. The PTAB stated that “it is well known in the art to provide tools with jaws wherein only one of the jaws is movable and the other is fixed ... or wherein both of the jaws are movable. ...” J.A. 4 (citations omitted). Accordingly, the PTAB determined “it would have been obvious to ... apply the teachings of Ogawa with respect to articulation of both grasping members and wide range of angular movement to thereby modify Caterpillar to allow the blades to be opened wider or to minimize movement of the object as it is grasped.” J.A. 22–23 (internal quotation marks and citation omitted).
Caterpillar does not expressly teach away from Ogawa. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley , 27 F.3d 551, 553 (Fed. Cir. 1994). Contrary to Allied's contention that the PTAB incorrectly relied on Ogawa because its precise structure (i.e., two separate hydraulic cylinders) is criticized by Caterpillar, the disadvantage underscored by Caterpillar does not militate against finding the combination proper. Caterpillar expresses doubt as to whether an optimal design feature may have the main pivot pin for both jaws also mount the jaws to the frame in order to effect the quick change functionality. See J.A. 133 (asserting that the “design possibilities of the pin structure are severely restricted on account of its dual function as a swivel bearing and as a detachable mounting of the jaws, which in turn means that an optimum design with regard to both desired functions can be achieved only with very great difficulty, if at all ”) (emphases added)); see also Allied Br. 34 (asserting that “Caterpillar specifically teaches that having both jaws pivotally mounted to the frame via the main pivot pin is expected to work poorly”). There is no teaching away from the combination of Caterpillar and Ogawa because the combination does not utilize the pivot pin attachment mechanism of Ogawa. There is no teaching away in Caterpillar from using the Ogawa feature of two movable jaws.
In any event, the PTAB grounded its modification of Caterpillar on Ogawa's teaching of two movable blades and “wide range of angular movement.” J.A. 20. Thus, contrary to Allied's contention, Ogawa's disclosure of the need for two separate cylinders is extraneous to the PTAB's decision. According to the PTAB, “the claims of the '489 patent [would have been] obvious whether only a single ... or two cylinders are used.” J.A. 29.
We have considered Allied's remaining arguments and find them unpersuasive.


text:
1. The Commissioner of the Land Office cannot properly grant a patent under the 7th section of the Act of July, 1866, "to quiet land titles in California" unless the purchaser bring himself by affirmative proofs within the terms of the section.
2. The granting of a patent for lands in cases where proofs, hearing, and decision are required and where the exercise of judgment and discretion is thus necessary is not a matter wherein the action of the Department of the Interior is subject to reexamination by the Supreme Court of the District.
3. A judgment in mandamus ordering the performance of an official duty against an officer as if yet in office when in fact he had gone out after service of the writ and before the judgment is void. Such a judgment cannot be executed against his successor.
4. Mandamus to compel either the Commissioner of the General Land Office or the Secretary of the Interior to issue a patent cannot be sustained under statutes as now existing.
praying that a writ of mandamus might be issued, commanding the Hon. O. H. Browning, Secretary of the Interior, to issue, or cause to be issued, to him, McGarrahan, a patent for the land alleged to be embraced by that claim.
"Section 7. That where persons, in good faith and for a valuable consideration, have purchased lands of Mexican grantees or assigns, which grants have subsequently been rejected, or where the lands so purchased have been excluded from the final survey of any Mexican grant and have used, improved, and continued in the actual possession of the same according to the lines of their original purchase, and where no adverse right or title (except of the United States) exists, such purchaser may purchase the same, after having such land surveyed under existing laws, at the minimum price established by law, upon first making proof of the facts required in this section, under regulations to be provided by the Commissioner of the General Land Office &c., provided that the right to purchase herein given shall not extend to lands containing mines of gold, silver, copper, or cinnabar."
A subsequent act disposes in a different way of lands containing mines of gold, silver, copper, or cinnabar.
1st. Because the subject matter was of purely executive cognizance, resting in the judgment and discretion of executive officers in the ordinary discharge of their official duties.
3d. Because the issuing of patents for lands was, by statute, the duty of the President of the United States.
On the 8th of July, a writ of mandamus was issued directed to Mr. Browning or to his successor in office commanding him to convey to McGarrahan the land in question. Four months before, Mr. Browning had retired from the office of Secretary of the Interior, and had been succeeded by the now present incumbent, the Hon. J. D. Cox. And on the same day, the 8th of July, this writ was served upon Mr. Cox as one of the parties named in the alternative judgment. No proceedings of any kind were taken upon the retirement of Mr. Browning to revive the suit against his successor, Mr. Cox, or to make him a party, and no notice of the pendency of the case was given to him by the relator or by the court, or any requirement made of him to answer the application on its merits.
"shall not extend to lands containing mines of gold, silver, copper, or cinnabar."
The land embraced in the claim was a Mexican grant; that he purchased it of the original donee in good faith and for a valuable consideration; that the land, since the claim was rejected, has been regularly surveyed under existing laws; that there is no valid adverse private right or title to the same, and that he has continued in the actual possession of the tract since the claim was rejected, as required by law; but he did not allege that the land did not contain mines of gold, silver, copper, or cinnabar, nor did he offer any other proof of the facts set forth than what is contained in the exhibits annexed to the communication.
but the Secretary, on the twenty-eighth of November following, informed the counsel that he adhered to the views expressed in the directions which he gave to the Commissioner of the General Land Office.
Dissatisfied with the decision of the Secretary, the relator, on the third of December of the same year, presented a petition to the Supreme Court of this District in which he prayed that a mandamus might issue directing "O. H. Browning, Secretary of the Interior," to issue or cause to be issued a patent for the land described in the petition and for such other or further relief as may seem meet and proper. Service was duly made, and on the eighth of the same month, a rule was issued commanding the Secretary to show cause, on the third Monday of January following, why the writ of mandamus should not be issued as prayed in the petition. He appeared as commanded and pleaded that the court had no jurisdiction to grant the writ for the following reasons: (1) Because the subject matter of the petition is purely of executive cognizance, resting in the judgment and discretion of executive officers in the ordinary discharge of their official duties. (2) Because the subject matter is one in which judgment and discretion are to be exercised. (3) Because the issuing of patents for lands is, by the act of Congress, the duty of the President.
"be submitted to the court upon briefs and arguments, and that the said court may render its judgment in vacation as of the present term and of the day of such submission."
Submitted as aforesaid, the case was held under advisement until the eighth of July following, when the court, two justices signing the decree, determined that the prayer of the petition be granted and that a writ of mandamus issue, directed to the said O. H. Browning, Secretary of the Interior or to his successor in office, commanding him, upon payment of the sum therein specified, to issue or cause to be issued to the relator a patent from the United States of the tract of land described in his petition.
Four months before that judgment was rendered, the Secretary of the Interior, who was the party respondent in the litigation, resigned his office, and J. D. Cox, the present Secretary of the Interior, had not only been appointed his successor but was in the regular discharge of all its duties.
Although none of these facts is disputed, still the record shows that the writ of mandamus was addressed to the predecessor of the present incumbent or his successor in office, and that the writ, on the eighth of July in the same year, was served on the present Secretary, who was not named in the writ, was never a party to the suit, and never had any notice of the proceedings. Judgment having been rendered without notice to the present Secretary and without a hearing on his part or any opportunity to be heard, he sued out a writ of error and removed the cause into this Court.
Founded as the proceeding in this case is upon a claim to land which has been three times under examination in this Court before the present writ of error was sued out, it is deemed necessary and proper to advert to the views expressed by the Court on those occasions in respect to the validity of the claim and the means adopted to procure its confirmation. Reference to the docket entries will show that the case was first presented here at the December Term 1858, by the claimant as an appeal not prosecuted, and it also appears that a copy of the record having been produced by him, and the certificate of the clerk that the appeal had been duly prayed and allowed, the case on his motion was docketed and dismissed, in conformity to the ninth rule of the court, for want of prosecution. Such a proceeding, when bona fide, has the effect to vacate the appeal and leave the decree of the subordinate court in full force, and the docket entries also show that the mandate was issued in pursuance of that order and that it was subsequently delivered to the assignee of the claimant.
the decree and mandate had both been procured by misrepresentations and fraud. Affidavits were filed by the Attorney General showing that the cause was still pending in the district court, that no appeal had been granted, that the cause, when the claimant made his motion to docket and dismiss it, was not legally before this Court. Pending that motion, three motions for mandamus were filed by the claimant: first, to compel the district court to file the mandate and to execute their decree; second, to compel the district court to dismiss the application of the United States to open the decree and grant a new trial; third, to compel the Surveyor General to survey the land confirmed to the claimant by the decree of the district court.
Unless, therefore, the claim of the petitioner is brought within the terms of the act of Congress referred to in his petition, he has no right whatever to a patent for the land in controversy.
true, still it does not bring his case within the act of Congress, as the petition does not allege that the land does not contain mines of gold, silver, copper, or cinnabar, and the record furnishes evidence tending strongly to the conclusion that such an averment, if made, could not be supported, as the statement of the land commissioner is that the land embraced in the claim does contain "valuable quicksilver mines."
Mere allegation, however, is not sufficient, but the condition is that the claimant shall make proof of the facts required under regulations to be provided by the Commissioner of the General Land Office. His application to be allowed to purchase the land was made to the Secretary of the Interior, and he was as much bound to prove that the land did not contain mines of the description mentioned as he was to show that his purchase of the donee of the tract was made in good faith and for a valuable consideration, as he was not entitled to a patent if the lands contained mines of gold, silver, copper, or cinnabar, any more than if he had made the purchase in bad faith and without consideration.
Argument to show that he did not bring his case within that condition is unnecessary, as the point is clear to a demonstration. He did allege that he purchased the lands in question of the donee in good faith and for a valuable consideration, but he offered no proof of the alleged fact except what may be inferred from the deed annexed to the petition, bearing date December 22, 1857, and which purports to have been executed by the original claimant.
Special reference is made in the petition to the deed of release given by the occupants of the land to the relator as supporting the allegation of good faith, but it is entitled to very little weight, if any, as it bears date six years subsequent to the alleged purchase of the grant.
Evidence was exhibited in the case tending to show that the lands were surveyed subsequent to the decree of the court rejecting the claim, but it is not proved that the present claimant thereafter continued in the actual possession of the land, nor that it was free from any adverse private right or title.
Such allegations are set forth in the petition, but the record contains no proof to support the first allegation, and nothing to support the second except what is derived from the statement of the Commissioner of the General Land Office that no report of any individual adverse interests was found on the files of his office. Tested solely by the merits, therefore, it is quite clear that the application of the relator could not have been properly granted, as the proofs before the department were not sufficient to warrant a decision in his favor.
Adjudged invalid and fraudulent as the claim had been by the unanimous decision of this Court, it was quite proper that the Secretary should require satisfactory proof that the case as presented came within the terms of the act of Congress relied on before consenting to give the claimant the benefit of its provision, and when it appeared that he petition addressed to him was deficient in allegation and that the proofs were insufficient in all particulars except perhaps one, he was entirely justified in rejecting the application.
Evidently the case, if examined upon the merits, was not made out by the claimant, but the more decisive objection to the judgment of the court below is that the case, from its very nature, is one which was exclusively within the jurisdiction of the executive officers of the government, because it was one requiring proofs, hearing, and decision, and involved the exercise of judicial judgment and discretion, and consequently was not one where the action of the Department of the Interior is subject to reexamination by the Supreme Court of this district.
the power to issue the writ in such a case, still it is clear that the judgment in this case would be erroneous, as the case upon the merits was not submitted to the court under the stipulation. Undoubtedly the appearance of the respondent was general, but he pleaded only to the jurisdiction of the court, and it appears that the question of jurisdiction was the only point argued and submitted for decision. But the court decided the whole case without proofs and without any further hearing. Taking the record as it is exhibited, such certainly is the clear inference from it, and it is not suggested that it does not correctly represent what occurred. Assuming the record to be correct, comment upon the proceeding is unnecessary, as in the view of this Court it is clearly erroneous.
Several other objections are also taken to the proceedings by the Attorney General, which are equally decisive that the judgment of the court below must be reversed, one or two of which will be briefly noticed.
Service was made upon O. H. Browning, Secretary of the Interior, but the fact is conceded, or not denied, that he had resigned and gone out of office four months before the decision of the court was announced. When he resigned, of course the suit abated, but the court gave judgment against him as if he were still in office, and decreed that the writ of mandamus should be directed to him and to his successor in the office. Complaint may well be made by that party that he no longer possesses the power to execute the commands of the writ, and the present Secretary may well complain that he is adjudged to be in default though he never refused to allow the relator to purchase the land, and that the judgment was rendered against him without notice and without any opportunity to be heard.
Congress may so provide, and in that event it would be the duty of the Secretary to carry the provision into effect; but the act of Congress referred to in the petition as the source of power in this case gives the Secretary of the Interior no authority upon the subject. On the contrary, the express provision is that the regulations for executing the law shall be provided by the Commissioner of the General Land Office, and the better opinion is that the application to be allowed to purchase the land embraced in such rejected claim should be made to the Commissioner, and not to the Secretary of the Interior, as the right to purchase of the United States will never vest until the land is surveyed under existing laws.
It appears by the record in this case that a survey of some kind was presented to the Secretary, but whether it was one made under existing laws or not is not sufficiently shown.
64 U. S. 23 How. 326; 1 Wall. 698 [argument of counsel -- omitted]; 70 U. S. 3 Wall. 752.
14 Stat. at Large 220.
United States v. Gomez, 23 How. 330.
Same v. Same, 1 Wall. 690.
Same v. Gomez, 3 id. 766.
11 U. S. 7 Cranch 504.
Riggs v. Johnson Co., 6 Wall. 198.
37 U. S. 12 Pet. 608.
Decatur v. Paulding, 14 Pet. 497; Brashear v. Mason, 6 How. 99.
Gaines v. Thompson, 7 Wall. 353; Reeside v. Walker, 11 How. 289.
United States v. Seaman, 17 How. 230; United States v. Guthrie, 17 How. 304; Commissioner of Patents v. Whiteley, 4 Wall. 522; United States v. Commissioner, 5 Wall. 563.
Nations v. Johnson, 24 How. 203.
4 Stat. at Large 663; 5 id. 417.
United States v. Land Commissioner, 5 Wall. 563.
9 Stat. at Large 395.
Gaines v. Thompson, * that the courts have no jurisdiction to control the actions of the departments in such cases.
I do not think that the merits of the present claim were before the court, and I decline to express any opinion upon it.
* 74 U. S. 7 Wall. 347.

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