Titanium Metals Corp. of America v. Banner, 85-1452

• Decision Date: 07 November 1985
• Docket Number: No. 85-1452,85-1452
• Citation: 227 USPQ 773,778 F.2d 775
• Parties: TITANIUM METALS CORPORATION OF AMERICA, Appellee, v. Donald W. BANNER, Commissioner of Patents and Trademarks, Appellant. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 775

778 F.2d 775

227 U.S.P.Q. 773

TITANIUM METALS CORPORATION OF AMERICA, Appellee, v. Donald W. BANNER, Commissioner of Patents and Trademarks, Appellant.

Appeal No. 85-1452.

United States Court of Appeals,

Federal Circuit.

Nov. 7, 1985.

Fred E. McKelvey, Deputy Sol., U.S. Patent and Trademark Office of Arlington, Va., argued for appellant. With him on the brief were Joseph F. Nakamura, Sol. and Henry W. Tarring, II, Associate Sol., Washington, DC.

David C. Bruening, Webb, Burden, Robinson & Webb, P.A., of Pittsburgh, Pa., argued for appellee. With him on the brief was Richard L. Byrne.

Before RICH, Circuit Judge, NICHOLS, Senior Circuit Judge, and NEWMAN, Circuit Judge.

RICH, Circuit Judge.

This appeal is from an Order of the United States District Court for the District of Columbia in a civil action brought pursuant to 35 U.S.C. Sec. 145 against Donald W. Banner as Commissioner of Patents and Trademarks ¹ authorizing the Commissioner to issue to appellee a patent containing claims 1, 2, and 3 of patent application serial No. 598,935 for "TITANIUM ALLOY." The Commissioner has appealed. We reverse.

Background

The inventors, Loren C. Covington and Howard R. Palmer, employees of appellee to whom they have assigned their invention and the application thereon, filed an application on March 29, 1974, serial No. 455,964, to patent an alloy they developed. The application involved on this appeal is a continuation-in-part thereof, filed July 25, 1975, containing the three claims on appeal. The alloy is made primarily of titanium (Ti) and contains small amounts of nickel (Ni) and molybdenum (Mo) as alloying ingredients to give the alloy certain desirable properties, particularly corrosion resistance in hot brine solutions, while retaining workability so that articles such as tubing can be fabricated from it by rolling, welding and other techniques. The inventors apparently also found that iron content should be limited, iron being an undesired impurity rather than an alloying ingredient. They determined the permissible ranges of the components, above and below which the desired properties were not obtained. A precise definition of the invention sought to be patented is found in the claims, set forth below, claim 3 representing the preferred composition, it being understood, however, that no iron at all would be even more preferred.

1. A titanium base alloy consisting essentially by weight of about 0.6% to 0.9% nickel, 0.2% to 0.4% molybdenum, up to 0.2% maximum iron, balance titanium, said alloy being characterized by good corrosion resistance in hot brine environments.

2. A titanium base alloy as set forth in Claim 1 having up to 0.1% iron, balance titanium.

3. A titanium base alloy as set forth in Claim 1 having 0.8% nickel, 0.3% molybdenum, up to 0.1% maximum iron, balance titanium.

The examiner's final rejection, repeated in his Answer on appeal to the Patent and Trademark Office (PTO) Board of Appeals (board), was on the grounds that claims 1 and 2 are anticipated (fully met) by, and claim 3 would have been obvious from, an article by Kalabukhova and Mikheyew, Investigation of the Mechanical Properties of Ti-Mo-Ni Alloys, Russian Metallurgy (Metally) No. 3, pages 130-133 (1970) (in the court below and hereinafter called "the Russian article") under 35 U.S.C. Secs. 102 and 103, respectively. The board affirmed the examiner's rejection. However, it mistakenly proceeded on the assumption that all three claims had been rejected as anticipated under Sec. 102 by the Russian article and ignored the obviousness rejection. On this appeal the PTO says it does not pursue the Sec. 103 rejection further. Appellee proceeds on the basis that only the Sec. 102 rejection is before us.

Both the examiner and the board had before them as evidence three affidavits by Rosenberg, Palmer, and Hall and a declaration by Minkler, by which they were not persuaded of patentability.

The Russian article is short (3 pages), highly technical, and contains 10 graphs as part of the discussion. As its title indicates, it relates to ternary Ti-Mo-Ni alloys, the subject of the application at bar. The examiner and the board both found that it would disclose to one skilled in the art an Figure lc [a graph] shows data for the ternary titanium alloy which contains Mo and Ni in the ratio of 1:3. Amongst the actual points on the graph is one at 1% Mo + Ni. At this point, the amounts of Mo and Ni would be 0.25% and 0.75% respectively. A similar point appears on the graph shown in Figure 2 of the article.

alloy on which at least claims 1 and 2 read, so that those claims would not be allowable under the statute because of lack of novelty of their subject matter. Since the article does not specifically disclose such an alloy in words, a little thinking is required about what it would disclose to one knowledgeable about Ti-Ni-Mo alloys. The PTO did that thinking as follows:

....

Appellants do not deny that the data points are disclosed in the reference. In fact, the Hall affidavit indicates at least two specific points (at 1% and 1.25% Mo + Ni) which would represent a description of alloys falling within the scope of the instant claims.

On that basis, the board found that the claimed alloys were not new, because they were disclosed in the prior art. It having been argued that the Russian article contains no disclosure of corrosion-resistant properties of any of the alloys, the board held:

The fact that a particular property or the end use for this alloy as contemplated by appellants was not recognized in the article is of no consequence.

It therefore held the Russian article to be an anticipation, noting that although the article does not discuss corrosion resistance, it does disclose other properties such as strength and ductility. The PTO further points out that the authors of the reference must have made the alloys to obtain the data points.

Being dissatisfied with the decision of the board, Titanium Metals Corporation of America, as assignee of the Covington and Palmer application, then brought an action in the District Court for the District of Columbia against the Commissioner pursuant to 35 U.S.C. Sec. 145, its complaint alleging that the board's decision "was erroneous and contrary to law," and making profert of a certified copy of the application and all papers in the file thereof, together with a copy of the Russian article which was the sole basis of the PTO refusal to allow the claims. It prayed that the court adjudge it entitled to a patent containing claims 1-3 and authorize the Commissioner to grant such a patent. The Commissioner filed an answer denying that the applicants were the first inventors of the alloys claimed or entitled to a patent, alleging that the claims are not patentable under the law, and making profert of the Examiner's Answer, the Board of Appeals' decision, and the prior art reference.

The case came on for trial on January 24, 1980, before the Honorable John G. Penn and was concluded in two and a half hours. The testimony of one witness was heard by the court, Dr. James C. Williams, professor at Carnegie-Mellon University in Pittsburgh and an expert in titanium metallurgy. His testimony was about equally divided between direct and cross examination.

At the conclusion of the plaintiff's case, the following exchange took place between the judge and the Associate Solicitor for the PTO:

THE COURT: All right. Mr. Tarring?

MR. TARRING: Your Honor, generally the position of the Patent Office is we rely on the position of the tribunals below, the examiner and the Board of Appeals and their decisions are both present in the exhibit which I submitted earlier. I was not quite sure whether you would prefer that we have a post-trial brief in the matter. If that's your preference we could do that or I could make an argument on the basis of the law right now. I don't know what your preference would be. Otherwise, I'm not going to call any witnesses.

THE COURT: You are not going to what?

MR. TARRING: I have no intention of calling any witnesses so it's really a matter of argument at this point, I think.

THE COURT: Of course, I have received your pre-trial briefs.

After further discussion, it was settled that both parties would file further briefs after the hearing transcript had been prepared. They were filed in April and May, 1980. On November 16, 1984, the District Court entered the Order appealed from followed on November 28 by a supporting memorandum opinion. January 10, 1985, the PTO filed its Notice of Appeal. This court has heard oral argument and received briefs.

The District Court Opinion

The trial court's memorandum opinion ² having been published, we shall merely outline its contents.

After stating the nature of the action and the relief sought, Part I is a summarization of the contents of the patent specification, a statement of the issues, and of the PTO rejection which is stated both correctly as the examiner made it and incorrectly as the board assumed it to be. Part II is a statement of the District of Columbia Circuit Court of Appeals' attitude toward plaintiff's burden on review of the PTO board decisions in Sec. 145 actions, namely, that it is a "heavy burden," "great weight" being given to the PTO decision because of its "expertise," a "thorough conviction" that it erred being required, as well as a lack of a "rational basis for its conclusions." In Part III is a brief discussion of "anticipation" under Sec. 102 with citation of two cases from our predecessor Court of Customs and Patent Appeals, In re Wilder, 429 F.2d 447, 57 C.C.P.A. 1314, 166 UPSQ 545 (1970), and In re LeGrice, 301 F.2d 929, 49 C.C.P.A. 1124, 133 USPQ 365 (1962), with emphasis placed on their holdings that an anticipatory reference must be an "enabling" reference, the implication being that the Russian article perhaps does not enable one to know all the things that the plaintiff's inventors disclosed in their...