California Research Corporation v. Ladd

• Decision Date: 04 February 1966
• Docket Number: No. 19375.,19375.
• Citation: 356 F.2d 813
• Parties: CALIFORNIA RESEARCH CORPORATION et al., Appellants, v. David L. LADD, Commissioner of Patents, Appellee.
• Court: U.S. Court of Appeals — District of Columbia Circuit

356 F.2d 813 (1966)

CALIFORNIA RESEARCH CORPORATION et al., Appellants, v. David L. LADD, Commissioner of Patents, Appellee.

No. 19375.

United States Court of Appeals District of Columbia Circuit.

Argued October 20, 1965.

Decided February 4, 1966.

Mr. Frank E. Johnston, San Francisco, Cal., of the bar of the Supreme Court of California, pro hac vice, by special leave of court, for appellants. Mr. Wayne L. Benedict, Washington, D. C., was on the brief for appellants.

Mr. Raymond E. Martin, Atty., U. S. Patent Office, with whom Mr. Clarence W. Moore, Solicitor, U. S. Patent Office, at the time the brief was filed, was on the brief, for appellee.

Before PRETTYMAN, Senior Circuit Judge, and WRIGHT and LEVENTHAL, Circuit Judges.

LEVENTHAL, Circuit Judge.

This is an appeal from the dismissal of an action pursuant to 35 U.S.C. § 145 for a judgment that appellants are entitled to a patent for a "gasoline composition," a knock-resistant fuel for automobiles.

The corporate appellant, the research subsidiary of Standard Oil Company of California, is the employer and assignee of the individual appellants, Barusch et al., who on September 26, 1958, filed application for patent, Serial No. 765,920. Claim 6, the only claim at issue, is for a fuel having two principal ingredients: first, a hydrocarbon base fuel, of specified characteristics, notably high in aromatic hydrocarbons (at least 20%)¹ and having a clear research octane number (i. e. before any additive) of above 90;² and second, an additive of from 1 to 4 milliliters (m1) of tetramethyl lead (TML) per gallon.

The claim sets forth that the addition of TML to the specified base fuel produces a motor method octane number and an average road octane number greater than that obtained by adding an equivalent amount of lead in the form of tetraethyl lead (TEL).

The Board of Appeals of the Patent Office affirmed the Examiner's rejection of the claim on the ground that the disclosures in the 1958 Hinkamp patent, #2,855,905, while not constituting anticipation, suffice to show that the claimed invention was obvious to those skilled in the art, within the meaning of 35 U.S.C. § 103. The District Court dismissed the complaint, also relying on the Hinkamp patent, but on a somewhat different basis from that set forth by the Board, as will appear. A motion to open the judgment to take additional testimony was denied. We remand for the purpose of taking additional evidence.

1. We sketch first the nature of the trial as it took shape on the issue of obviousness. This will be useful in focusing subsequent discussion of certain procedural matters. Also, appellants have asked us to determine that the evidence as a whole, under tests judicially approved, shows the claim is not obvious.

Appellants' evidence, much of it undisputed, related the historical efforts to combat "knock," or engine shock, resulting from detonation of the more compressed gasoline-air mixtures attendant upon increase in compression ratios to obtain greater automotive efficiency. Research was begun some forty years ago to obtain mixtures burning rapidly and evenly when highly compressed. The research team headed by General Motors' Midgley discovered at that time that anti-knock properties of gasoline were improved by adding certain materials, the best additives being the organo-lead compounds. All organo-lead compounds have antiknock properties, and some 90 compounds have been synthesized and examined, but tetraethyl lead (TEL) was early established as superior.

Increases in octane ratings since Midgley's discovery have been essentially due to the refinery processing improvements of the oil industry, which have become increasingly expensive and difficult to achieve. In the additive field, with minor exceptions such as iron carbonyl and a manganese compound, all progress has been based on TEL. And as of 1958 an upper limit of 3 ml TEL per gallon (3.17 grams of lead) was confronting the industry, partly at least because of toxicity problems and the concern of the Surgeon General.

Appellants concede that Midgley taught that TML could be used to improve octane rating above the clear rating, but say that he taught this of many compounds and that he found a superiority in TEL. The evidence showed that Ethyl Corporation tested the antiknock properties of TML and found it poorer than TEL, that they retested it from time to time due to changes going on in automobiles and fuels and reached the same conclusion.³

Hinkamp's patent⁴ dealt with a side issue — the surface ignition "wild ping" from lead deposits resulting from adding a halide scavenger to the TEL additive. He found relief in adding a certain quantity of crankcase lubricating oil. His specification listed 23 specific examples of antiknock fuels covered by the invention. Example I referred, in addition to the halide fluid and lubricating oil, to an antiknock composition prepared by blending, inter alia, a specified amount of TML and a premium gasoline. The specification further stated (col. 12) that the particular gasoline used in Examples I-XXIII was not critical. To illustrate the invention eight representative gasolines were listed. The hydrocarbon type of Gasoline E had 20% aromatics and satisfied the base fuel specification of appellants' application except as to octane rating to be discussed below.

Plainly Hinkamp did not give the same knowledge in substance as appellants and hence does not constitute anticipation. Becket v. Coe, 69 U.S.App. D.C. 51, 55, 98 F.2d 332, 336 (1937). Appellants further say that Hinkamp was merely covering a wide array of possible permutations in connection with the scavenger problem, and that it was in no way obvious that a conjunction of one of a number of examples of antiknock compositions with one of the eight illustrative fuels that happened to have 20% aromatics, would be significant in reaching an improvement over TEL.⁵

Appellants' case invoked the "sign posts" advanced by Judge Learned Hand as "objective" indicators of invention.⁶ They stress that while the art made repeated references to TML as having virtues as an antiknock agent, it had been referred to as of lesser utility than other lead alkyls and no one in the field prior to appellants had ever suggested it as having greater effectiveness than TEL for any fuel. They further stress the undeniable commercial recognition given to appellants' discovery, which admittedly is material, but not controlling.

Assuming this case were to turn on a determination of obviousness, it is the District Court that must make the initial judicial determination. Obviousness is the kind of question that usually turns on the District Court's view of the evidence and its findings will not be set aside unless clearly erroneous.⁷ Here the District Court would have to appraise not only appellants' presentation, but also the considerations advanced against appellants' position,⁸ embracing, for example, the argument that appellants had not shown that Ethyl Corporation had begun a wholehearted search for substitutes for TEL, (apparently an increase materialized in allowable TEL concentration, from 3 to 4 ml. per gallon) and the suggestion that appellants' discovery would have emerged from the program of retesting TML with new fuels, especially in view of the increase in clear octane ratings of new base fuels developed in a related art.

Appellants stumbled upon their discovery of the virtues of TML by accident, in the course of an experiment aimed at testing an acetate additive.⁹ The law has room for luck, and serendipity is certainly consistent with patent-ability. Yet the burden is on the applicant for a patent monopoly. The happy accident avoids the rejection that is the lot of the palpable drudge. But it also lacks the impetus to a grant that comes from the exhilarating account of the resourceful applicant who deliberately fashions a new approach for an old problem. The ability to profit from a happy accident often reflects invention. But the question arises whether the same path may have been trod through the patience of one merely "skilled in the art."

We have said enough to show why we reject appellants' request for a ruling at this time on the issue of obviousness. If the issue arises on remand, as it may, it will be for the District Court's determination, subject to limited review.

2. We turn to the procedural consequences of the fact that appellants were able to upset a factual premise underlying the Board of Appeals' reliance on Hinkamp.¹⁰ The Board stated that there was no lack of obviousness in combining the TML in Hinkamp's Example I with his Fuel E, which Hinkamp stated had a research octane number of 93.2. When appellants objected that this rating was not of the clear fuel but of the fuel already leaded, the Board ruled that appellants had not shown this by actual test data and their unresolved doubt could not result in withdrawal of the reference.

At the trial appellants proved that the octane ratings reported in the Hinkamp table related to fuel with lead added. This was demonstrated both by the witness' analysis within the four corners of the Hinkamp patent,¹¹ an analysis rejected by the Board, and by extrinsic evidence, including an internal document of Ethyl Corporation. The District Court found that Hinkamp's fuel was not over 85 clear octane rating.

However, the District Court's opinion stated that the Patent Office rejection on the Hinkamp reference "was not inconsistent with the evidence." It continued:

The defendant\'s contention that the number 90 is not critical was substantiated by the record in the Patent Office. Even before the Court the plaintiffs were hard put to contend that the number 90 was a critical feature of the invention.

A Patent Office determination that the discovery in the application is obvious "to a person having ordinary skill in the art" (35 U.S.C. § 103), is entitled to great weight, and a presumption of validity, since it...