Compagnie de Saint-Gobain v. Brenner

• Decision Date: 23 October 1967
• Docket Number: No. 20255.,20255.
• Parties: COMPAGNIE DE SAINT-GOBAIN, Appellant, v. Edward J. BRENNER, Commissioner of Patents, Appellee.
• Court: U.S. Court of Appeals — District of Columbia Circuit

386 F.2d 985 (1967)

COMPAGNIE DE SAINT-GOBAIN, Appellant, v. Edward J. BRENNER, Commissioner of Patents, Appellee.

No. 20255.

United States Court of Appeals District of Columbia Circuit.

Argued March 15, 1967.

Decided October 23, 1967.

Mr. John L. Seymour, New York City, for appellant. Mr. Earl L. Tyner, also entered an appearance for appellant.

Mr. S. Wm. Cochran, Atty., U. S. Patent Office, with whom Mr. Joseph Schimmel, Sol., U. S. Patent Office, was on the brief, for appellee.

Before BAZELON, Chief Judge, and FAHY^* and DANAHER, Circuit Judges.

FAHY, Circuit Judge:

Appellant, as assignee of Guy Bach's invention,¹ applied for a patent which was rejected by the Patent Office on grounds of (1) indefiniteness of the claims, 35 U.S.C. § 112; (2) insufficiency of specification disclosures, 35 U.S.C. § 112; and (3) obviousness, 35 U.S.C. § 103. A trial de novo in the District Court resulted in rejection of appellant's application on the basis of obviousness. We affirm.

During oral argument in this court appellant conceded that we need pass only upon claims one and twelve of the application. Claim one states that the invention is,

A panfocal lens made of transparent refringent material having an index of refraction of n, the lens having a first and second main face, both such faces being surfaces of revolution, the first face having a meridian whose curvature varies in a continuous manner, said first face having constant astigmatism in at least one region of substantial area of its surface. Italics supplied except as to n.

Claim twelve restates claim one and adds the following:

said second face having a constant astigmatism in at least one region of substantial area of its surface which confronts and is aligned with said one region of the first face.

The italicized elements in combination are said to constitute invention.

A panfocal lens has a focusing power which progressively increases from the top of the lens to its bottom. One looking through such a lens can let his eye scan from the top to the bottom and somewhere within this range pick out a focusing power which clearly delineates the object to be observed. By itself this concept is not new. But Bach asserts that previously such a lens could not be mass-produced by methods presently employed in the industry, which require that a lens surface be a surface of revolution, that is, "a surface generated by revolving a plane curve about a line lying in its plane." For our purpose a surface of revolution may be thought of as a curvature which may be ground by rotary lens grinders.

A critical aspect of Bach's invention is the use of "constant astigmatism," claimed to permit production of a panfocal lens by rotary lens grinders. Astigmatism is a defect on the surface of the eye or of a lens in consequence of which rays of light from an external point are not brought to a single focal point, thus causing imperfect vision or image. Astigmatism of the eye can be corrected by altering the curvature of a spectacle lens. Such lens is then astigmatic to a normal eye, but for the user the astigmatism of the spectacle is equal and opposite to the astigmatism of his eye, with the result that his vision is stigmatic, that is, free of astigmatism. Hence, one normally would avoid the addition of astigmatism to glasses unless for the purpose of correcting astigmatism of the eye, but Bach added astigmatism to the front surface of his panfocal lens so as to make it a surface of revolution, and then cancelled out the effect of this astigmatism by astigmatism added to the back surface of the lens. The astigmatism added to the front surface necessarily had to be "constant" in order that the offsetting amount on the rear surface could be ascertained and added as a surface of revolution.²

The Patent Office examiner, in rejecting, under 35 U.S.C. § 103, the claim of invention as obvious in view of the prior art, relied inter alia upon the French patent to Jeffree, No. 1,112,429, which corresponds to the British patent to Jeffree, No. 775,007. The Board of Appeals affirmed the examiner, including his decision on obviousness by reason of the prior art. In the action under 35 U.S.C. § 145 which followed and was tried there, the District Court, while disagreeing with the Patent Office in other respects, agreed on the issue of obviousness. On this issue the court stated that it considered the Jeffree patent the most pertinent of the cited references. After describing this reference the court found that the differences between Bach's invention and the prior art, particularly the Jeffree French patent, "would have been obvious at the time the Bach invention was made * * * to a person having ordinary skill in the art of making optical lenses. Therefore, the Court holds that the claimed subject matter of the application in suit is unpatentable under 35 U.S.C. § 103."

Jeffree's lens, like Bach's, is panfocal. Appellant's contention that Jeffree's lens is made by casting and cannot be manufactured by rotary lens-grinding because its surfaces are not surfaces of revolution is...