Gardner v. TEC Systems, Inc., 83-697

Citation220 USPQ 777,725 F.2d 1338
Decision Date12 January 1984
Docket NumberNo. 83-697,83-697
PartiesThomas A. GARDNER, Appellant, v. TEC SYSTEMS, INC., et al., Appellees. Appeal
CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Henry C. Fuller, Jr., Milwaukee, Wis., argued, for appellant.

James E. Nilles, Milwaukee, Wis., argued, for appellees.

Before MARKEY, Chief Judge, FRIEDMAN, RICH, DAVIS, Circuit Judges, NICHOLS, Senior Circuit Judge, * BALDWIN, KASHIWA, BENNETT, MILLER, SMITH and NIES, Circuit Judges.

RICH, Circuit Judge.

Thomas A. Gardner appeals from the order and judgment of the United States District Court for the Eastern District of Wisconsin dismissing his complaint for patent infringement against appellees TEC Systems, Inc., et al. (TEC) and holding claims 1, 3, 4, and 8 1 of his U.S. patent No. 3,452,447 issued July 1, 1969 (the '447 patent), invalid for obviousness under 35 USC 103. We affirm.

BACKGROUND
The Claimed Invention

The '447 patent describes and claims a device which is especially useful in drying the ink used on the high-gloss papers of which many periodicals are made. In the initial stages of the printing process, the paper is in the form of a continuous sheet called the "web." Upon leaving the printing press, the web bears ink which is still wet. Manipulation of the web thus must be accomplished without touching the web and smearing the wet ink. The device disclosed in the '447 patent supports and positions the web by floating it on one zone or between two opposed zones of static air under superatmospheric pressure. One embodiment of the invention is shown in Fig. 7 of the '447 patent, which is a fragmentary detail view in cross section, reproduced below (here and elsewhere extraneous numbers have been omitted for clarity):

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

With reference to the figure, web 30 is said to be positioned by the static superatmospheric pressure in zone 40. This zone is confined on the top by suppression plate 32, on the bottom by web 30, and on the sides by partially opposed jets 42 and 44. The structure shown in the figure would normally be duplicated in an inverted position below web 30. Web 30 is shown as moving from right to left. The structure shown in the figure is referred to by the parties as an "air bar." Gardner asserts that it prevents "fluttering" of the edges of the web, a problem which is said to have existed in prior art devices and to have caused marking of the web and smearing of the ink.

Claim 1, the only independent claim on appeal, in outline form reads as follows:

1. Means for positioning a moving web by subjecting a transverse zone spanning the web to uniform static pressure,

said positioning means comprising

a suppression plate

a extending transversely across said web and spaced therefrom as closely as is mechanically practicable,

nozzle means no closer to the web than said plate and having slots which extend substantially continuously across said web and are spaced at opposite sides of said plate,

the minimum spacing between the web and said plate being a distance at least approximately twice as great as the nozzle slot width,

the maximum spacing of the plate from the web never being greater than the width of the plate

the product of the width of the plate and the spacing of the plate from the web being less than twenty times the nozzle slot width,

and means for discharging gas under pressure through the nozzle slots for defining a zone of static pressure between the plate and the web.

As will be developed below, the so-called dimensional limitations appearing in this

claim have taken on paramount significance. These limitations are expressed in terms of the distance between the suppression plate and the web (labelled "Y" in the specification), the nozzle slot width (also the orifice width, labelled "D" in the specification), and the width of the suppression plate, which corresponds to the distance between the jets (labelled "L" in the specification). Recasting the claim limitations using these labels, they are:

(1) that Y be as small "as is mechanically practicable";

(2) that Y be greater than or equal to 2D;

(3) that Y never be greater than L; and

(4) that the product LY be less than 20D.

The fourth limitation finds its basis in the specification in a discussion in which D is assigned a value of .030 inch and L a value of 2 inches. It is then stated that good results are achieved when Y is 3/16 inch (.1875 inch), but that performance falls off when Y exceeds .030 (sic, .3) inch. Inserting the values in (4), LYmax = .6 in 2 and 20D = .6 in. It is apparently from this observation that Gardner derived his requirement that LY be less than 20D.

The Prior Art and Prosecution History

The prior art patent deemed most important by the trial court is U.S. patent No. 3,181,250 to Vits (the Vits patent or Vits) entitled "Apparatus and Method of Drying Web Material by Directing Hollow Gas Jet Streams Against Opposite Faces of the Web." The general idea can be gleaned from the embodiment of the Vits dryer or air bar shown in his patent in Fig. 10, reproduced below:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

In the figure, the solid lines show contours of Vits' postulated air flow. Arrows have been added to show the direction of air flow. The Vits dryer has a deflector 44 which extends the width of the web (web not shown). Bent-up edges 45 and 46 of deflector 44, together with nozzle head side walls 42 and 43, form slot nozzles 47 and 48. The air flowing from these nozzles forms, in the language of the Vits specification, "a flow-free prismatic space 53 in which a static excess pressure is built up * * *. In this manner, a beam-shaped cushion is formed having a triangular cross section * * *. Naturally, the crest edge of the cushion formed by the top of the triangle is hypothetical only, but the cushions of the drying medium, e.g., air cushions, flatten at their upper portions so that the web is supported over a relatively wide area." For a description of Vits in greater detail, see In re Stroszynski, 424 F.2d 1114, 1116, 165 USPQ 438, 439 (CCPA 1970).

Vits was a major impediment to the ultimately successful prosecution of the applications which resulted in the '447 patent. As recounted by the trial judge, the initial application was filed on September 23, 1963; all claims corresponding to those involved herein were rejected on Vits. The claims were then amended, and again rejected on Vits. Gardner then filed, after final rejection, additional amendments and an affidavit presenting data from tests comparing his air bar with an air bar based on Fig. 10 of Vits, but differing from that shown in Fig. 10 in that it had narrower nozzles than shown therein. The purpose of this variation, as explained in the affidavit, was to make it possible to use comparable amounts of air in both devices. Gardner was attempting to show through the affidavit and the tests described therein that Vits depended on impingement or dynamic pressure, and did not teach or suggest the use of a zone of static pressure upon which Gardner's air bar depended. The examiner entered the affidavit, but nevertheless adhered to his rejection. Gardner then filed his first continuation application, the claims of which were also ultimately finally rejected Another prior art patent which the trial judge described as important is U.S. patent No. 3,097,971 to Carlisle et al. (the Carlisle patent, or Carlisle). Entitled "Method of and Apparatus for Supporting or Guiding Strip Material," it is concerned primarily with supporting materials such as steel strips, but expressly extends application of the principles taught therein to "wide elongate material of various kinds." Fig. 6 of Carlisle

on Vits. Gardner then filed another amendment after final rejection, which the examiner refused to enter. The significance of this amendment and the refusal to enter it will be seen in connection with the next reference to be discussed. Gardner then filed a third continuation application, and amended the claims to their present form essentially by adding the dimensional limitations. The examiner again rejected the claims, but, after argument on behalf of Gardner, relented. The '447 patent issued July 1, 1969, after nearly six years of prosecution, the focus of which had been the patentability of the invention claimed therein over that disclosed by Vits.

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

shows diagrammatically the use of angled orifices which "enhances the cushion effect of the fluid." In short, Carlisle shows, as does Vits, the use of partially opposed jets to support a continuous sheet of material.

Carlisle was not cited by the examiner during prosecution of Gardner's initial application and two continuation applications. Gardner requested the examiner to make Carlisle of record in the remarks section of his amendment after final rejection in the first continuation application. It will be recalled, however, that the examiner in his discretion refused to enter that amendment. Thus, at trial, the parties contested whether Carlisle had been considered by the examiner at all, the significance they attached to this fact being, in the words of the trial court, whether the "patent in suit is not entitled to a presumption of validity as to Carlisle."

This last-quoted passage is especially significant in that it contains the trial court's only mention of the presumption of validity. Despite its awareness of controversy concerning the presumption, the trial court never concluded: (1) whether Carlisle had in fact been considered by the examiner; (2) whether Carlisle shows anything not shown in Vits, which was exhaustively considered by the examiner; (3) who had the burden of proving facts concerning validity or invalidity at trial; and (4) by what standard of proof those facts had to be shown.

The final prior art references deemed important by the...

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