Pattinson v. Marzall

• Decision Date: 15 October 1951
• Docket Number: Civ. A. 5319-49.
• Citation: 100 F. Supp. 787
• Parties: PATTINSON v. MARZALL, Commissioner of Patents.
• Court: U.S. District Court — District of Columbia

100 F. Supp. 787

PATTINSON v. MARZALL, Commissioner of Patents.

Civ. A. 5319-49.

United States District Court District of Columbia.

October 15, 1951.

John A. Blair, of Detroit, Mich., and John W. Nairn, of Washington, D. C., for the plaintiff.

Howard S. Miller, of Washington, D. C., for the defendant.

HOLTZOFF, District Judge.

This is an action under Section 4915 of the Revised Statutes, 35 U.S.C.A. § 63 against the Commissioner of Patents to procure a patent, the issuance of which he has denied.

The invention claimed to have been made by the plaintiff relates to a process of storing gas, in large quantities, in underground cavities. The storage of gas in underground cavities has been known for a great many years. It has been customary to use for that purpose porous rock constituting depleted oil-fields and gas-fields or water reservoirs. The plaintiff proposes to utilize what are called in the art salt cavities, namely, underground cavities containing salt beds, from which the salt has been extracted, by one process or another.

There is a presumption in favor of the findings of the Patent Office on questions of fact. This is especially true in instances in which the findings relate to technical or scientific matters, such as a finding that a particular step taken by the applicant for a patent does not constitute an exercise of the inventive faculty, but is the product of mechanical skill of persons skilled in the art. It is not sufficient to render lip-service to this presumption. It is a presumption that must be actually applied, and must be in the mind of the court in passing on cases such as this. In this instance, however, there are exceptional and unusual circumstances which seem to the court to overcome the presumption.

The Examiner of the Patent Office denied the application, in effect, on the ground that the step taken by the applicant did not constitute an exercise of the inventive faculty. The Examiner says: "It is not believed that the mere naming of the particular type of sub-surface reservoir, i. e., a preformed cavity in a salt bed, employed, constitutes a different method from a patentable standpoint." The Examiner also says the following: "Using this cavity as an underground storage reservoir for gas would be an obvious expedient in view of the teachings of the latter two writings which disclose that gas can be stored in available sub-surface reservoirs."

If the Board of Appeals had sustained the Examiner on the ground on which he predicated his decision, namely, that the forward step taken by the applicant did not constitute an exercise of the inventive faculty, the court might well be inclined to affirm the action of the Commissioner of Patents. But the Board of Appeals did not do that. The majority opinion of the Board is based on an expression of incredulity of the superiority claimed by the applicant for the type of cavity which he proposes using. It is a reasonable inference that the majority of the Board might have held that there was invention in this case, if they were convinced of the superiority of the plaintiff's choice of cavities. In any event, the majority opinion of the Board does not indicate that if the salt cavities are superior for the purpose for which the plaintiff intends to use them, the choice of such a cavity would not be considered an inventive step.

There is a concurring opinion on the part of one member of the Board, which...