Charvat v. Commissioner of Patents

• Decision Date: 28 June 1974
• Docket Number: No. 71-1731,71-1731
• Citation: 503 F.2d 138,164 U.S.App.D.C. 47
• Parties: , 182 U.S.P.Q. 577 Vernon K. CHARVAT, Appellant, v. COMMISSIONER OF PATENTS.
• Court: U.S. Court of Appeals — District of Columbia Circuit

Page 138

503 F.2d 138

164 U.S.App.D.C. 47, 182 U.S.P.Q. 577

Vernon K. CHARVAT, Appellant, v. COMMISSIONER OF PATENTS.

No. 71-1731.

United States Court of Appeals, District of Columbia Circuit.

Argued Oct. 26, 1972.

Decided June 28, 1974.

Armand P. Boisselle, Jr., Spartanburg, S.C., with whom Donald D. Jeffery, Cleveland, Ohio, was on the brief, for appellant.

Fred W. Sherling, Associate Sol., U.S. Patent Office, with whom S. William Cochran, Sol., U.S. Patent Office, was on the brief, for appellee.

Assuming for purposes of argument that the Tocci-Guilbert disclosure is limited to a 'polishing' wheel, the foregoing comparison of claim 2 with the Tocci-Guilbert patent demonstrates that the only real difference between the claimed invention and the Tocci-Guilbert structure is the intended use of appellant's invention for grinding rather than polishing. However, this difference is not a patentable distinction. The 'grinding' limitation appears in appellant's claims only in terms of his intended result. Since the claims recite the same structural elements as Tocci-Guilbert, appellant has failed to identify any inventive structure which accomplishes his allegedly enique result. It is as if appellant claimed 'the structure of the Tocci-Guilbert wheel usable for grinding purposes.' Such a claim is unpatentable because it is written solely in conclusory terms and contains no description of any structural difference which enables the known device to be used for the new purpose. See L. Horwitz, Patent Office Rules and Practice 75.18 (1973); 4 Walker on Patents 241, at 111 (Deller ed. 1965). One is simply unable to discern any structural difference between Tocci-Guilbert's 'polishing' wheel and the 'grinding' wheel as described in the claims. As the Patent Office Board of Appeals commented, 'the nature of appellant's claims are such as to leave a real doubt as to what appellant believes his invention to be.' Jt.App. at 434a.

The majority's heavy reliance on the record made in the district court, see Majority Opinion at 15-19, including the testimony concerning commercial success and nonobviousness, does not correct the fatal deficiency of appellant's claims which fail to specify any structural distinction between the alleged invention and the prior art. The claims are the measure of the invention. Since the validity of the patent depends upon the claims finally acted on by the Patent Office, a substantive defect in the claims cannot be cured by testimony at trial.

The majority opinion necessarily leaves the Patent Office in a quandary. Under the majority decision, the Patent Office is reversed for failing to grant a patent based upon a structural element Which does not appear in the claims. The majority apparently expects the Patent Office to search the prior art for every feature of an invention disclosed anywhere in the specification, even though not recited in the claims-- a virtually impossible chore for an already overburdened agency. I respectfully dissent from this misinterpretation of the applicable law.

Before DANAHER, Senior Circuit Judge, and MacKINNON and ROBB, Circuit judges.

PER CURIAM:

Like others ¹ before him who have presented an issue as to obvious ness in patent litigation, Charvat has here contended that there was error in the rejection of his application Serial No. 304002 for a grinding wheel. The Patent Office and the District Court concluded that Charvat's Ramron wheel would have been obvious to one possessed if ordinary skill in the art in light of a single reference, that of Tocci-Guilbert who already possessed U.S. Patent No. 3,252,775 covering a polishing wheel. Protracted exchanges of views among the members of this sitting division only have emphasized that what is 'obvious is not a question upon which there is likely to be uniformity of thought in every given factual context.' Graham v. John Deere Co., 383 U.S. 1, 18, 86 S.Ct. 684, 694, 15 L.Ed.2d 545 (1966). The difficulties in these situations must be resolved on a case-by-case basis. Id., 18, 86 S.Ct. 684.

The Court in John Deere recognized that there is a notorious difference between the standards applied by the Patent Office and by the court, adding: 'While many reasons can be adduced to explain the discrepancy, one may well be the free rein often exercised by Examiners in their use of the concept of 'invention." Id. And see Kewanee Oil Co. v Bicron Corp., 416 U.S. 470, 488-489, 94 S.Ct. 1879, 1889, 40 L.Ed.2d 315 (May 13, 1974).

In the instant situation, the tribunals of the Patent Office were well aware that the prior art included various means for the production of grinding wheels but nevertheless allowed the Tocci-Guilbert patent expressly designed by the patentee for use in the polishing art. The District Court, for its part, seems to have misconstrued the degree of difference between Charvat and all prior art and quite clearly to have ignored factors established at trial through uncontradicted evidence which had not been before the Patent Office.

In this state of the record, we should note at once that Charvat already had been granted a patent on the process for the construction of his Ramron wheel. In determining how to approach the present issue, arising under 35 U.S.C. 103, concerning his product claims, we turn again to John Deere, supra, where, at 17-18, 86 S.Ct. at 694, we are instructed:

The scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. ²

We will hereinafter discuss in detail the processes and the structures involved, having in mind particularly the differences between Charvat's disclosures and those apparent from the Tocci-Guilbert patent, the only reference cited by the Patent Office as defining the prior art. What emerges here is a combination of disparate elements already known to the art. From Tocci-Guilbert, Charvat could perceive the use of plastic resins and the notion of foaming to achieve uniform dispersal of the abrasive. Then came his centrifuging, entirely lacking in Tocci-Guilbert. From the prior art of grinding wheels, he could have taken the idea of clustering the grains at the perimeter of the wheel. His combination was not at all made obvious by the prior art. Not only had Tocci-Guilbert never claimed a wheel such as Ramron, he purposefully sought to disclose a polishing wheel. Charvat on the contrary combined his centrifuging process with all other elements so as to set a novel grain configuration which produced his grinding wheel far superior to any known.

To the foregoing general observations as to just what is involved, we may add one additional criterion. The Court has emphasized that while the claims of a patent limit the invention and specifications are not to be utilized to expand the patent monopoly, 'it is fundamental that claims are to be construed in light of the specifications and both are to be read with a view to ascertaining the invention'. United States v. Adams, 383 U.S. 39, 49, 86 S.Ct. 708, 713, 15 L.Ed.2d 572 (1966). Put another way, the Court's discussion does not forfend against our narrowing the extent of patentability. Here the prior art disclosed other grinding wheels. Tocci-Guilbert disclosed the process and the structure of polishing wheels. Even though such elements were well known in the prior art, Charvat, like Adams, has presented us with a new combination which is entitled to recognition. Justice Clark, speaking for the Court, surely has authorized us to take the approach to be developed in light of the record before us. He made it clear that 'known disadvantages in old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness'. United States v. Adams, id. at 52, 86 S.Ct. at 714.

After extensive consideration of all aspects of this case as to the facts and applicable legal principles, we conclude with 'thorough conviction' that we must reverse the District Court. 'Processes, machines, manufactures, compositions of matter and improvements thereof, which meet the tests of utility, novelty, and nonobviousness are entitled to be patented . . .'. Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 483, 94 S.Ct. 1879, 1887, 40 L.Ed.2d 315 (Sl. Op. 12, May 13, 1974). We are satisfied further that Charvat has complied with the requirements of 35 U.S.C. 112, and hence is entitled to a patent on his Ramron grinding wheel.

I. THE NON-OBVIOUS NATURE OF APPELLANT'S CLAIMS

It is fundamental that an applicant may not be entitled to a patent if his claims are so similar to the prior art that they would be 'obvious . . . to a person having ordinary skill in the art'. 35 U.S.C. 103. It does not follow that the mere existence of the basic teachings in the prior art will render obvious a new claim combining such teachings. Courts have long since held that

. . . even if all of the elements used are old, a new result, an unexpected result, a far more efficient result, or a more economical result will satisfy the requirements of patentability. ³

Thus, in Blaw-Knox Co. v. I. D. Lain Co. ⁴ the court validated a patent consisting solely of elements old in the art because the patentee had solved a problem that previously had inhibited use of the particular product. ⁵

A claim that combines prior art elements can embody sufficient invention to be patentable, if the claimed invention represents 'progress' from the prior art. ⁶ Clearly, we must, in every such case, undertake a careful inquiry as to whether or not such combination patents...