Corning Glass Works v. Brenner

• Decision Date: 16 October 1972
• Docket Number: 71-1425.,No. 71-1424,71-1424
• Citation: 470 F.2d 410,175 USPQ 516
• Parties: CORNING GLASS WORKS and Ellen L. Mochel, Appellants, v. Edward J. BRENNER, Commissioner of Patents, Appellee. CORNING GLASS WORKS and Ellen L. Mochel, Appellants, v. William E. SCHUYLER, Jr., Commissioner of Patents, Appellee.
• Court: U.S. Court of Appeals — District of Columbia Circuit

175 USPQ 516, 470 F.2d 410 (1972)

CORNING GLASS WORKS and Ellen L. Mochel, Appellants, v. Edward J. BRENNER, Commissioner of Patents, Appellee.

CORNING GLASS WORKS and Ellen L. Mochel, Appellants, v. William E. SCHUYLER, Jr., Commissioner of Patents, Appellee.

Nos. 71-1424, 71-1425.

United States Court of Appeals, District of Columbia Circuit.

Argued June 12, 1972.

Decided October 16, 1972.

Rehearing Denied January 26, 1973.

Mr. W. Philip Churchill, New York City, with whom Mr. Austin P. Dodge,

Washington, D. C., was on the brief, for appellants.

Mr. Joseph F. Nakamura, Atty., U. S. Patent Office, Washington, D. C., with whom Mr. S. Wm. Cochran, Sol., U. S. Patent Office, was on the brief, for appellee.

Before McGOWAN and MacKINNON, Circuit Judges, and JAMESON,^* Senior District Judge.

JAMESON, District Judge:

Appellants, Ellen L. Mochel, an applicant for a patent, and her assignee, Corning Glass Works, brought two actions under 35 U.S.C. Section 145 seeking a judgment directing the Commissioner of Patents to issue a patent for an invention entitled "Method of Glass Treatment and Product." The cases were consolidated for trial, and a judgment of dismissal was entered in each case,¹ the district court sustaining the finding of the Patent Office that the claimed subject matter was obvious in view of prior art, and therefore unpatentable under 35 U.S.C. Section 103.² The district court stated, and the parties agree, that the "only issue here is obviousness."

Scope of Review

Preliminary to a consideration of the merits of the appeal, we recognize that the factual findings of the Patent Office can be overturned by the district court only on the court's reaching a "thorough conviction" that the Patent Office is in error. A finding that the Patent Office's rejection of an application is "consistent with the evidence" requires affirmance of the rejection.³ The presumption of validity given to Patent Office findings, however, is weakened "where an issue has not been the subject of a Patent Office finding, or an assumption underlying the patent office findings is demonstrably inaccurate in a material degree."⁴ With respect to the scope of review in this court, the findings of fact of the district court "shall not be set aside unless clearly erroneous." Rule 52(a), F.R.Civ.P.

This court has recognized also that the question of obviousness under 35 U. S.C. Section 103 is a mixed finding of law and fact. In Stieg v. Commissioner of Patents, 122 U.S.App.D.C. 361, 353 F.2d 899, 901 (1965) the court said:

"There is no question but that rulings of law as such made by the Patent Office are fully reviewable, free from any `clearly erroneous\' rule, by the District Court and by this court. It is just as clear, however, that when the Patent Office applies a proper principle of law to its factual findings, the resulting judgment is entitled to `great weight\' and that `in the absence of new evidence carrying "thorough conviction" that had not been considered by the Patent Office,\' the action of the Patent Office should be affirmed."

The distinction between questions of fact and law was stated more precisely by Judge Tamm in Higley v. Brenner, 128 U.S.App.D.C. 290, 387 F.2d 855, 857 (1967):

"We note at the outset that a presumption of correctness accompanies the decisions of the Patent Office. California Research Corp. v. Ladd, 123 U.S.App.D.C. 60, 356 F.2d 813 (1966); Fletcher v. Watson, 92 U.S. App.D.C. 205, 204 F.2d 68 (1953), and substantially the same rule applies to the findings of fact of the District Court. What the prior art is and what the claimed invention is are questions of fact. However, whether the standard of obviousness applied to those facts is correct, is a question of law. Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966)."⁵

In Graham v. John Deere Co. the Court pointed out that, "While the ultimate question of patent validity is one of law, * * * the § 103 condition, which is but one of three conditions,⁶ each of which must be satisfied, lends itself to several basic factual inquiries." The Court continued:

"Under § 103, 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. As indicia of obviousness or nonobviousness, these inquiries may have relevancy." 383 U.S. at 17-18, 86 S.Ct. 684 at 694.

Findings of Fact

In a memorandum opinion the district court described the invention "in essence" as "predicated upon the asserted fact that certain glass composites containing more than an ordinary amount of aluminum oxide, generally called high alumina glasses, when chemically strengthened by a process called ion exchange, retain their greatly increased strength even after extensive surface abrasion" and that "ordinary glass composites strengthened by the same exchange treatment and exposed to surface abrasion lose virtually all the strength so imparted."

The court was "convinced that the claimed result thus outlined is the result of a mere routinization and experiment and it would have been obvious to a person of ordinary skill in the art when the prior art references were examined in relation thereto." Specifically the court further found that "ionization is old and the use in the circumstances of the particular glass exposed to such treatment adds nothing new, and no evidence was adduced at the trial which would warrant the conclusion and thorough conviction that the Patent Office was wrong in its evaluation and conclusion."

The court also adopted and ratified the findings of fact and conclusions of law in defendant's post trial memorandum.

Appellants' Contentions

Appellants contend that the district court erred in holding that "no evidence was adduced * * * which would warrant the conclusion and thorough conviction that the Patent Office was wrong in its evaluation and conclusion", when (1) admittedly the strength results achieved by Dr. Mochel's discovery are vastly superior to the prior art results and cannot be achieved as the process was used in the prior art; (2) both the Patent Office and district court ignored undisputed evidence that those skilled in the art could not explain at the time of the invention, or many years later, why the high alumina glasses of Dr. Mochel are permanently strengthened and conventional glass compositions of the prior art are not; (3) the principal prior art author testified that he was "surprised" when he learned of Dr. Mochel's discovery; and (4) the discovery has made the difference between success and failure in the commercial use of the prior art process.

Methods of Strengthening Glass

There are two basic methods of strengthening glass, (1) a mechanical process called "thermal tempering"⁷ and (2) a chemical process of ion exchange. In turn there are two basic types of ion exchange, the first involving an exchange of ions of a smaller diameter from an exterior substance for ions of a larger diameter within the glass. Both mechanical tempering and the first type of ion exchange require very high temperatures and result in strengthening of the glass only upon cooling.

The second type of ion exchange involves the exchange of a larger ion from an exterior substance for a smaller ion within the glass.⁸ In this process, the strengthening occurs at the time of transfer at a relatively low temperature and is described as ion "stuffing" or "crowding" because the larger ions are "stuffed" or "crowded" into the space formerly occupied by the smaller ions.

Appellants' Claimed Invention

The Mochel application for patent involves the second method of low temperature ion exchange and the resulting product. It is claimed that Dr. Mochel discovered that a low temperature ion exchange process produced a product retaining, after substantial surface abrasion, a large proportion of its increased strength when the glass composition contained at least 5%, and preferably 10 to 25% of alumina (aluminum oxide, Al2O3). By contrast, as the district court found, "ordinary glass composition strengthened by the same exchange treatment and exposed to surface abrasion loses virtually all the strength so imparted." Traditional strengthening has been of soda-lime glass, ordinary window glass, with a low alumina content (1-2%).

Appellants seek a patent on two types of claims: method claims 1, 4, 5, 10 and 11, and product claims 6, 9, 12 and 13. Method claims 1, 4, 10 and 11 require about 5 to 25% alumina, and claim 5 calls for 10 to 25%. Product claims 6, 12 and 13 define alkali aluminosilicate glass articles containing 5 to 25% alumina, while product claim 9 is limited to a composition containing 10 to 25% alumina.

The district court and appellee accept appellants' statement that claim 1 is the broadest method claim and claim 6 the broadest product claim. These claims, as set out in the findings read:

"1. In a method for strengthening an alkali metal containing glass in which the alkali metal ions in a surface of the glass are replaced by larger monovalent metal ions selected from the group consisting of the alkali metals, copper, and silver by bringing the surface of the glass into contact with a source of said larger monovalent metal ions while retaining the glass at an elevated temperature but below the strain temperature of the glass until the surface of the glass to a depth of at least 5 microns is placed in compression, the improvement which comprises using as the initial glass to be strengthened by said treatment an alkali aluminosilicate consisting essentially, by weight on the

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