Wright, In re
| Decision Date | 24 May 1988 |
| Docket Number | No. 87-1464,87-1464 |
| Citation | 6 USPQ2d 1959,848 F.2d 1216 |
| Parties | In re Randall J. WRIGHT. |
| Court | U.S. Court of Appeals — Federal Circuit |
Robert W. Slater, Jones, Day, Reavis & Pogue, Chicago, Ill., for appellant. With him on the brief was Robert L. Lindgren, Chicago, Ill.
Lee E. Barrett, Associate Sol., Office of the Sol., of Arlington, Va., for appellee. With him on the brief were Joseph F. Nakamura, Sol. and Fred E. McKelvey, Deputy Sol., Washington, D.C.
Before FRIEDMAN, NEWMAN, and MAYER, Circuit Judges.
The judgment of the Board of Patent Appeals and Interferences of the United States Patent and Trademark Office, rejecting claims 1 through 8 of patent application Serial No. 399,850 of Randall J. Wright for "Level Vial with Extended Pitch Range", is reversed.
Instruments that are commonly called carpenter's levels have long been known. They use small liquid-filled transparent vials with an entrained gas bubble; the vials function by gravity, the bubble automatically seeking the highest point within the vial. The vial is attached to a support, such that when the surface on which the support is placed is level, the bubble is centered. Thus, the position of the bubble shows the orientation of the vial and of the support.
Levels in common use today are made from barrel-shaped vials, mounted so that the bubble may be viewed from either side of the vial. An example of a barrel-shaped vial set in a molded plastic housing is shown in Vaida U.S. Patent No. 3,871,109, of record:
NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
These levels of the prior art are limited in their pitch measuring 1 capability because of the limited amount of curvature that can be formed in the molded barrel vial shape.
The Wright invention is a level-measuring instrument that has an increased range of pitch measurement capability, yet retains the advantages of the barrel vials of the prior art. Claim 1 is representative:
the vial body having a transparent portion and indicator means associated therewith to permit visual bubble observation and for indicating preselected positions of the bubble in the vial
and wherein the surfaces of the barrel shaped bore portion and the core member coact with the bubble to produce gradual bubble movement axially within the barrel shaped bore portion without abrupt bubble acceleration and while providing a wide range of visually observable angular measures.
The Wright structure is illustrated as follows:
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According to the Wright disclosure, by combining a core pin (46) and a barrel vial (14), the indicator bubble (22) does not move as far along the barrel with a given change in pitch, compared with the barrel vials of the prior art. Wright illustrates this phenomenon in his specification (showing a pitch change of 3/8 inch per 12 inches):
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Thus the Wright level can measure greater changes of pitch before the bubble reaches the end of the vial.
The Board agreed with Wright that his claimed combination was new. However, because it was known to place a core pin in a cylindrical vial in order to increase the visibility of the bubble, as shown in Bishop U.S. Patent No. 771,803:
NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
the Board held that it would have been obvious to construct a level having a core pin in the barrel-shaped vial of Vaida, irrespective of the purpose. The Commissioner on appeal argued that the Bishop and Vaida references presented, in combination, a prima facie case of unpatentability, stating:
[A] claimed invention may be unpatentable if it would have been obvious for reasons suggested by the prior art, even though those reasons may be different from the reasons relied upon by the inventor and may result in a different advantage.
The PTO position is that since it would have been obvious to make the Wright combination in order to improve visibility of the bubble, it is immaterial that Wright's combination improves pitch measurement.
The Commissioner argues that if it is obvious to combine the teachings of prior art references for any purpose, they may be combined in order to defeat patentability of the applicant's admittedly new structure. The PTO states that "a claimed invention may be unpatentable if it would have been obvious for reasons suggested by the prior art, even though those reasons may be different from the reasons relied upon by the inventor and may result in a different advantage." The PTO position is that it is irrelevant that Wright's structure was for a purpose, and has properties, that are neither obtainable from the prior art structures, nor suggested in the prior art. In this lies the PTO's error.
We repeat the mandate of 35 U.S.C. Sec. 103: it is the invention as a whole that must be considered in obviousness determinations. The invention as a whole embraces the structure, its properties, and the problem it solves. See, e.g., Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 1025, 226 USPQ 881, 886 (Fed.Cir.1985) (), quoting In re Antle, 444 F.2d 1168, 1171-72, 58 CCPA 1382, 170 USPQ 285, 287-88 (CCPA 1971); In re Antonie, 559 F.2d 618, 619, 195 USPQ 6, 8 (CCPA 1977) () (emphasis in original).
The determination of whether a novel structure is or is not "obvious" requires cognizance of the properties of that structure and the problem which it solves,...
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