Etter, In re
| Decision Date | 27 February 1985 |
| Docket Number | No. 84-1213,84-1213 |
| Citation | 225 USPQ 1,756 F.2d 852 |
| Parties | In re Berwyn E. ETTER, Appellant. |
| Court | U.S. Court of Appeals — Federal Circuit |
Donald H. Zarley (argued), Zarley, McKee, Thomte, Voorhees & Sease, Des Moines, Iowa, for appellant. With him on brief was Mark D. Hansing, Des Moines.
Thomas E. Lynch (argued), Associate Sol., U.S. Patent & Trademark Office, Washington, D.C., for appellee. With him on brief were Joseph F. Nakamura, Sol. and Jere W. Sears, Deputy Sol., Washington, D.C.
Martin Fleit (argued), Fleit, Jacobson, Cohn & Price, Washington, D.C., for intervenor. With him on brief was Allen S. Melser, Washington, D.C.
Before MARKEY, Chief Judge, and FRIEDMAN, RICH, DAVIS, BALDWIN, KASHIWA, BENNETT, MILLER, SMITH, NIES, NEWMAN, and BISSELL, Circuit Judges.
Appeal from a decision of the Board of Appeals (board) of the United States Patent and Trademark Office (PTO) affirming the examiner's final rejection in a reexamination proceeding of claims 1 through 9, all of the claims of United States Patent No. 4,133,034 (the '034 patent), issued January 2, 1979 to Berwyn E. Etter, as nonpatentable under 35 U.S.C. Sec. 103 in view of prior art. We affirm.
The '034 patent concerns a method and device for assimilating utility meter data at meter locations. Anthony Goodfellow, who had applied for and been refused a license under the '034 patent, filed a patent application on a utility meter reading device, copying the claims of the '034 patent to provoke an interference. 1 The examiner refused to institute an interference because he found Goodfellow's claims unpatentable in view of U.S. Patent No. 3,932,730 (Ambrosio), U.S. Patent No. 4,016,542 (Azure), and U.S. Patent No. 4,115,870 (Lowell). On February 4, 1982, Goodfellow requested reexamination of the '034 patent, citing that prior art. That request was granted, and, on August 13, 1982 the examiner, having completed an ex parte examination, declared all claims of the '034 patent nonpatentable. Etter asserts that all of the claims stand or fall together.
Claim 1 is representative:
and depositing said bill at the service address of said given meter customer.
The examiner held that the subject matter of the '034 claims would have been obvious in view of Ambrosio, which discloses the use of cards as input information storage means, and Lowell, which teaches use of random access memory (RAM) as an input information electronic storage means for storing customer information (identity, account information, etc.) for a plurality of customers, or alternatively, in view of Ambrosio and Azure, which teaches use of a solid state memory as an input information electronic storage means for storing customer Finding that the environment of use for the devices of Ambrosio, Azure, Lowell, and the '034 patent (viz. on-site utility meter reading) was the same, and that Azure and Lowell discuss their inventions as being improvements over systems of the Ambrosio type, the examiner concluded that it would have been obvious to employ the memory system of either Azure or Lowell (i.e., solid state devices such as RAMs or ROMs) in place of the input information storage device taught by Ambrosio (i.e., billing cards). In effect, the rejection rested on the view that the teachings of Ambrosio and Azure or of Ambrosio and Lowell would have made the claimed inventions of the '034 patent obvious.
information for a plurality of customers.
The examiner accepted Etter's contention that the '034 patent enjoyed a statutory presumption of validity, 35 U.S.C. Sec. 282, during reexamination, but viewed the presumption as having been overcome. Further, he said the presumption had been weakened by prior art (Azure and Lowell) not earlier cited to nor considered by the PTO.
Azure and Lowell were considered by the examiner as not "merely cumulative" of the prior art cited during the original prosecution, but were clearly more pertinent because they taught use of input information electronic storage means to store customer meter information for a plurality of utility customers.
On appeal to the board, as before this court, Etter urged three grounds for reversal: (1) that the presumption of validity attaches in reexamination proceedings, and the examiner failed to carry the heavier burden thus imposed; (2) that Azure was obsolete technology, and thus constituted less pertinent art than that cited to the examiner during prosecution; 2 and (3) that affidavits of Ambrosio and Gray showed that the invention of the '034 patent would not have been obvious.
Respecting the presumption of validity, the board noted numerous reasons for holding that it did not attach to claims undergoing reexamination. Saying that the burden of showing nonpatentability is the same on the examiner in any examination, and the board did not see how that burden would be increased in a reexamination proceeding. It further held that the evidence was such as to require affirmance of the rejection because it would sustain the examiner's burden, regardless of whether the presumption was or was not applied.
Concerning Azure, the board agreed with the examiner that it was more pertinent than the art considered during the initial prosecution, and concluded that "the collective teachings of Ambrosio and Azure would have provided a much stronger suggestion for combining the teachings to provide the subject matter" of the invention than would the teachings of the earlier cited art.
The board considered the Ambrosio and Gray affidavits unpersuasive because they showed "a total lack of appreciation of the legal concept of obviousness." 3
(1) Must the presumption of validity, 35 U.S.C. Sec. 282, be applied to claims involved in reexamination proceedings?
(2) Did the board err in affirming the examiner's rejection?
OPINIONEtter's basic contention--that Sec. 282 must be applied in reexamination proceedings- --misconstrues the purposes for which that statute and the reexamination statutes were enacted. Review of the statutes, legislative history, regulations, and case law compels the view that Sec. 282 is not applicable to claims about which "a substantial new question of patentability," 35 U.S.C. Sec. 305, is under consideration in a reexamination proceeding. Though the board decision here would be correct in any event, we discuss the issue because of its foundational relationship to Etter's appeal and the need for clarification of guidance offered the board and bar.
Though the board and intervenor stated strong bases for denying applicability of the presumption in reexamination proceedings, the board did recognize that it must in any event show a basis for its rejection of claims in any type of examination. Apparently for that reason, the solicitor indicated a willingness to accept applicability of Sec. 282 in reexamination proceedings. It is true that the question has "tempest in a teapot" overtones, for the PTO will reject or cancel claims it considers unpatentable, as is its duty, whether Sec. 282 is or is not considered applicable. The need for clarity in the law and for avoidance of unnecessary disputes, however, has prompted this court to consider the question in banc.
Section 282 provides that "[t]he burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity." (Emphasis added.). As this court noted in Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 218 USPQ 718 (Fed.Cir.1983):
The presumption, like all legal presumptions, is a procedural device, not substantive law. It does require the decisionmaker to employ a decisional approach that starts with the acceptance of the patent claims as valid and that looks to the challenger for proof of the contrary. Thus the party asserting invalidity not only has the procedural burden of proceeding first and establishing a prima-facie case, but the burden of persuasion on the merits remains with that party until final decision.... With all evidence in, the trial court must determine whether the party on which the statute imposes the burden of persuasion has carried that burden. [Emphasis added.]
713 F.2d at 1534, 218 USPQ at 875.
The foregoing description in Stratoflex coincides with the inclusion of Sec. 282 in Chapter 29 of title 35, entitled "Remedies for Infringement of Patent, and Other Actions". Both recognize that the presumption is operative to...
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