In re Bass

Baldwin, Judge,

concurring,

with whom Almond, J., joins.

*1362 On tlie basis of tbe Milbum case, which changed the effective date of. a U.S. patent from its issue date to its filing date, the principal opinion would change the effective date of all U.S. references to the unknown point in time when their subject matter was invented. On the basis of cases dealing with the rejection of a losing interference party’s claims over the lost counts, the principal opinion condones the rejection of one applicant’s claims over the contents of a patent where the parties’ cases had never been in interference and in fact could not be put into interference under well established law. Further, the principal opinion fails to follow our previous cases which have decided the identical point of law.

It would be impossible to describe in detail all of the problems adoption of the position taken in the principal opinion would cause. The substantial problems caused by the reasoning behind the rejection before us will emerge soon enough if the position taken in the principal opinion is adopted. 1 What is particularly disturbing about the principal opinion is that it overrules a long line of our previous cases when it is not even necessary to do so. It is found in the principal opinion that the record fails to establish that Bass and Horvat were prior to Bass, ITorvat and Jenkins. That being the case, the rejection must be reversed whether or not the board’s theory regarding section 102 is correct, and there is no reason to hypothesize concerning the alleged relationships between sections 102(g) and 103 of the statute.

The principal opinion takes the position that the term “prior art” as it is used in 35 USO 103 should include all inventions which were made in this country before an applicant or patentee made his invention, regardless of when those inventions are made public or patent applications on them are filed, so long as those inventions are found not to have been abandoned, suppressed or concealed. I disagree with that conclusion for the reasons stated hereinafter.

I. Our Previous Oases

The principal opinion states:

[This] is the first time we have considered combining § 102(g) and § 103 in the context of an ex parte rejection entirely divorced from the award of priority in an interference which established the prior inventorship relied on in rejecting.

With all due respect, that statement is contrary to the facts. We have been faced with precisely the same theory of rejection as is before us, in an ex parte situation, entirely divorced from any award of priority in an interference, in at least two cases. In re Newton, 56 CCPA 1463, *1363 414 F. 2d 1400 , 163 USPQ 34 (1969); In re Frilette, 56 CCPA 1262, 412 F. 2d 269 , 162 USPQ 163 (1969).

In In re Newton, supra (opinion by Judge Almond for a unanimous court), the examiner bad rejected the claims as “unpatentable over the claims of copending application Serial No. * * Appellant admitted that the cases were commonly assigned, but pointed out that the cases, could not be joined because of the difference in inventors. The co-pending application issued as the Ingham patent. The board considered that the question before it was “whether the Ingham, Jr., patent and the application set forth two different inventions capable of sustaining different patents.” The board concluded that “[o]n these facts, a second patent cannot be granted, whether the same applicant or different applicants with a common assignee are involved.” Taking this to be a double patenting rejection, appellant submitted a terminal disclaimer and relied on several cases, including In re Bowers, 53 CCPA 1590, 359 F. 2d 886 , 149 USPQ 510 (1966), holding that the terminal disclaimer avoids the rejection. The board dismissed the terminal disclaimer out of hand, stating:

A terminal disclaimer cannot overcome the present rejection on the facts before us. See Commissioner’s notice of January 9, 1967, at 834 O.G. 1615 .

That notice states in pertinent part:

In view of the uncertain situation which has arisen as a result of recent decisions dealing with “double patenting” it is thought to be advisable to restate the practice which should be followed in this area, particularly as regards the effect of terminal disclaimers.

* * * * * * *

In situations involving cases filed by different inventive entities, regardless of ownership, Sections 102 and 103 of 35 U.S.C. preclude the granting of two or more patents when directed to identical inventive concepts or when one of the concepts would be obvious in view of the other. A terminal disclaimer can have no effect in this situation since the basis for refusing more than one patent is not connected with any extension of monopoly.

In view of 35 U.S.C. 135, it is necessary to determine priority of invention whenever two different inventive entities are claiming a single inventive concept, and this determination should ordinarily he made before any patent is issued. This is true regardless of ownership, and the provision of Rule 201(c) that interferences will not be declared or continued 'between commonly o wned cases unless good cause is shown therefor does not mean that two patents are to be allowed in such cases, but that the common assignee should be called on to state which of the entities involved is prior to the other in date of invention.

>¡{ SjS Sji >■« S|{ Jji

If a patent is inadvertently issued on one of two commonly owned applications by different inventive entities which at the time when the patent issued were claiming inventions which are not patentably distinct, the assignee should be called on to mate a determination of priority as in the case of pending applications and, if no election is made, an interference should be declared. An election *1364 of the applicant as the first inventor should not be accepted without a complete (not terminal) disclaimer of the conflicting claims of the patent. [Emphasis added.]

That notice was apparently issued to overcome to some degree this court’s cases in which terminal disclaimers were held to overcome obviousness type double patenting rejections, such as in re Bowers, sufra.

The board’s position was defended by the solicitor in Newton, who stated:

Apart from “double patenting,” the examiner’s rejection of claims 6 and 7 as unpatentable over the claims of the Ingham patent can be considered under 35 U.S.C. 102(g), such as to be immune from 'any 'avoidance by. terminal disclaimer. * * * [Here the brief points out that such a rejection was actually made by the examiner, although not clearly labeled.] Here, there should 'be no need to go beyond the claims of Ingham as prior art under 35 U.S.C. 102 (g), in line with the discussion of lost interference counts in In re Risse et al., 54 CCPA 1495, 378 F. 2d 948 , 154 USPQ 1 .

The foregoing “doctrine of election” by a common 'assignee was discussed at length in In re Hession, 49 CCPA 809, 296 F. 2d 930 , 132 USPQ 40 . [Emphasis added.]

Reliance on the notice was the sole reason the board held the terminal disclaimer ineffective to overcome the rejection. We did not duck the board’s rejection in Newton. Indeed, we oould not duck it and still hold the terminal disclaimer to be effective. Rather, we rejected the solicitor’s suggestion that in re Risse was controlling and stated:

We find the solicitor’s reliance on 35 U.S.C. 102(g) and Ms “doctrine of election” inapplicable here where different inventive entities are pursuing claims to different inventions. See In re Frilette, supra. We are not unmindful that the board believed that a terminal disclaimer would have no effect here and of its reference to the Commissioner’s notice in 834 O.G. 1615 4 [footnote 4 sets forth the pertinent parts of the notice] dealing with double patenting. We note only that this procedural memorandum sets forth guidelines for the Patent Office which were not even followed in this ease and hence can have no bearing on its outcome here. [Footnote omitted, emphasis in original.]

Nor was this court in Newton relying on some imaginary part of Frilette. In Frilette (opinion by Judge Baldwin for a unanimous court) we considered and rejected the “doctrine of election” theory and the Session case where “the different inventive entities * * * a,re pursuing claims to different inventions.” 56 CCPA at 1271, 412 F.2d at 276 , 162 USPQ at 169, emphasis in the original. That the theory which we rejected in both Frilette and Newton is exactly the same as the theory of rejection which the principal opinion suggests we adopt in this case is made clear from the solicitor’s statement of it in Frilette:

Where the inventors are different, * * * the common assignee, by electing to issue one patent, has, in effect, determined priority of invention as to any common subject matter in favor of the patentee. Taking that view, the issued patent be *1365 comes prior art under Section 102(g), and a terminal disclaimer would necessarily be ineffective to avoid the rejection. [Emphasis added.]

In the Hession case, relied on by the Patent Office in both Newton and Frilette, the pertinent facts are that two applications had been filed on the same invention by two different inventors, Ziherl and Hession. At the time of filing, both applications were assigned to the same company. This conrt held that in spite of the fact that Ziherl, who filed first, had filed on the later’s invention, the common assignee had made an irrevocable election with respect to priority nnder the cases following In re Dunbar, 51 App. D.C. 251 , 278 Fed. 334 (1922) and In re Mann, 18 CCPA 1020, 47 F.2d 370 , 8 USPQ 381 (1931). It was held that Hession, who had recovered ownership of his application from the original assignee, was bound by the “election” made by the original assignee when the first application was filed, and thus could not obtain a patent even though he was the original and first inventor, the original assignee had agreed to disclaim the patent which had issued to Ziherl, and an offer had been made to disclaim the term of any Hession patent beyond the expiration date of the Ziherl patent. In Hession, the court quoted with approval the following extract from In re Fischel, 30 CCPA 1085, 136 F.2d 254 , 58 USPQ 80 (1943) :

We think the true doctrine of election in patent eases is grounded upon one or more of three fundamental propositions. Eirst, the application of the doctrine prevents two patents being issued for the same invention. Second, it prevents an avoidance of the determination of priority. Third, it prevents an extension of monopoly.

The court was of the view that while there was no extension of monopoly in view of the proffered terminal disclaimed in Hession, the other evils could only be prevented by holding the original assignee’s “election” to be irrevocable.

Judge Rich dissented on the grounds inter cilia that the disclaimer avoided the threat of extension of monopoly and that an assignee’s election was not made irrevocable under the previous cases and there was no reason for establishing such a rule of law. The dissent contains an excellent discussion of the “doctrine of election” cases and their relationship to the cases dealing with double patenting.

In In re Frilette, supra, we stated that the doctrine of election as applied in In re Hession and In re Frisehel does not apply when the applications are claiming different inventions. This distinction was recognized in the Hession case as being the basis for the allowance of the claims in In re Howard, 19 CCPA 759, 53 F. 2d 896 , 11 USPQ 280 (1931). See In re Hession, 49 CCPA at 815, 296 F. 2d at 933 , 132 USPQ at 44. It is the identical distinction this court has maintained between double patenting rejections in which the inventions claimed *1366 are the same and double patenting cases in which the inventions claimed are different albeit not patentably different, terminal disclaimers being held effective to overcome the rejections in the latter cases. See In re Robeson, 51 CCPA 1271, 1275, 331 F. 2d 610, 614 , 141 USPQ 485 , 488 (1964); In re White, 56 CCPA 870, 405 F. 2d 904 , 160 USPQ 417 (1969). It is the only distinction betwen In re Session and the many cases in which we have held terminal disclaimers filed by a common assignee effective to overcome obviousness-type double patenting rejections where the inventive entities are different. See, In re Bowers, supra, 53 CCPA at 1595, 359 F. 2d at 889 , 149 USPQ at 574. Other cases involving the Bowers situation include In re Heyl, 54 CCPA 1608, 379 F. 2d 1018 , 154 USPQ 178 (1967); In re Borg, 55 CCPA 1021, 392 F. 2d 642 , 157 USPQ 359 (1968); In re Rogers, 55 CCPA 1092, 394 F.2d 566, 157 USPQ 569 (1968); In re Frilette, supra; In re Newton, supra; and others.

Of course, this court has the power to overrule all of the above cases. However, if that is the course we must take, it seems to me that we owe some explanation to the appellants in those cases and to the others who now hold patents issued on the basis of those cases why the law therein declared is erroneous. More importantly, if the law followed in those cases is wrong, let us overrule that law, and not institute some new law, which not only invalidates those cases, but also spawns far-reaching changes in interference law, in the law governing the use of Rule 131 affidavits and their effect, and elsewhere. The principal opinion would so change the law, in a case where, under the facts it finds, the legal question which precipitates all of these changes need not ever be reached.

The only cases cited in the principal opinion which are in point are Sutter Products Co. v. Pettibone Mulliken Corp., 428 F. 2d 639 , 166 USPQ 100 (7th Cir. 1970) and the dicta in Ex parte Robbins, 156 USPQ 707 (1967), neither of which is binding on this court. Both are inconsistent with the view we took of the question in Newton and Frilette.

II. The Statute

The pertinent parts of the statute read as follows:

§ 102. Conditions for patentability; novelty and loss of right to patent

A person shall be entitled to a patent unless—

(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

(c) he has abandoned the invention, or

*1367 (e) the invention was described in a patent granted on an application for patent by another filed in the United States before tbe invention thereof by the applicant for patent, or

(f) he did not himself invent the subject matter sought to be patented, or

(g) before the applicant’s invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it. In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

§ 103. Conditions for patentability; non-obvious subject matter

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

The statute does not contain a definition of the term “prior art.” 2 Nor docs section 103 require that everything referred to in section 102 must be considered as “prior art” as that term is used therein. 3 Indeed, using the “common meaning of the words” approach to ascertain the meaning of section 103, one might easily conclude that the “prior art” was intended to include only that material in section 102 in which something is “disclosed or described.” However, the history of section 103 contains indications that such an interpretation would be too restrictive. 4 We are not called upon here to consider all aspects of the *1368 interrelationships between 102 and section 103. Onr task is rather to decide whether a secret invention is within the meaning of “prior art/’ as that term is used in section 103, by virtue of section 102(g). Before dealing specifically with section (g), a short discussion of secret prior knowledge is in order.

III. Prior Public Knowledge or Use

The doctrine that prior knowledge or use of an invention must be public before it can prevent the issuance of, or invalidate, a patent to another for that invention is an old one in patent law. It was firmly adopted as a ruling doctrine of United. States law in the case of Pennock v. Dialogue, 27 U.S. (2 Pet.) 1 (1829). The statute governing that case was the Act of 1193, Ch. 11, 1 Stat. 318 , section 1 of which provided for the grant of a patent for a:

New and useful art * * * not known or used before tbe application.

The court held that “not known or used” meant not publicly known or used by others:

What then is the true meaning of the words “not known or used before the application?’’ They cannot mean, that the thing invented was not known or used before the application, by the inventor himself, for that would be to prohibit him from the only means of obtaining a patent. * * * The words, then, to have any rational interpretation, must mean, not known or used by others, before the application. But how known or used? If it were necessary, as it well might be, to employ others to assist in the original structure or use by the inventor himself, or if before his application for a patent, his invention should be pirated by another, or used without his consent, it can scarcely be supposed, that the legislature had within its contemplation such knowledge or use.

We think, then, the true meaning must be, not known or used by the public, before the application. 5

The validity of the above reasoning has not diminished one scintilla in the 143 years since it was put down on paper. To be sure, there has been an exception created to the rule that the prior knowledge must be public, in the case of an application for a United States patent. Under *1369 35 TJSG 102(e), which, was derived from Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390 (1926), a U.S. patent is effective as a reference as of its application date, even though the knowledge contained in the application was not made public until the patent issued. Hazeltine Research, Inc. v. Brenner, 282 U.S. 252 (1965); In re Harry, supra. But as this court said in In re Hilmer, 53 CCPA 1288, 1311, 359 F.2d 859, 877 , 149 USPQ 480 , 495 (1966):

What lias always been pointed, out in attacks on the Milhurn rule, or in attempts to limit it, is that it uses, as prior knowledge, information which was secret at the time as of which it is used — the contents of U.S. patent applications which are preserved in secrecy, generally speaking, 35 USO 122. This is true, and we think there is some validity to the argument that that which is secret should be in a different category from knowledge which is public. Nevertheless we have the rule. However, we are not disposed to extend that rule, which applies to the date of filing application in the United, States, the actual filing date when the disclosure is on deposit in the U.S. Patent Office and on its way, in due course, to publication in an issued patent.

The board’s new view, as expressed in this case * * *, has the practical potential effect of pushing back the date of the unpublished, secret disclosures, which ultimately have effect as prior art references in the form of U.S. patents, by the full one-year priority period of section 119. We think the Milhurn rule, as codified in section 102(e), goes far enough in that direction. We see no valid reason to go further, certainly no compelling reason.

To push, the effective date of a non-anticipatory reference backwards beyond the point where the knowledge it contains was made public to the time when its author obtained that knowledge, as we are asked to do here, would be to extend the exception to the point where it essentially swallows the rule. Section 102(e) would be turned into mere surplusage, for the application date of the patent would no longer be important, except as showing a constructive reduction to practice and except insofar as it evidences an intent not to suppress, conceal or abandon.

The Milium and Hazeltme decisions are strictly limited to applications for U.S. patents. The question in MiTburn was whether unclaimed anticipatory disclosure in an earlier filed application was a bar to the claims in the later filed application. The Court held that it was, stating:

We understand tbe Circuit Court of Appeals to admit that if Whitford had not applied for his patent until after the issue to Clifford, the disclosure by the latter would have had the same effect as the publication of the same words in a periodical, although not made the basis of a claim. * * * The invention is made public property as much in the one case as in the other. But if this be true, as we think that it is, it seems to us that a sound distinction cannot be taken between that ease and a patent applied for before but not granted until after a second patent is sought. The delays of the patent office ought not to cut down the effect of what has been done. The description shows that Whitford was not *1370 the first inventor. Clifford had done all that he could do to make his description public. He had taken steps that would make it public as soon at [sic] the Patent Office did its work, although, of course, amendments might be required of him before the end could be reached. We see no reason in the words or policy of the law for allowing Whitford to profit by the delay and make himself out to be the first inventor when he was not so in fact, when Clifford had shown knowledge inconsistent with the allowance of Whitford’s claim, [Webster] Loom, Co. v. Higgins, 105 U.S. 580 , and when otherwise the publication of his patent would abandon the thing described to the public unless it already was sold.

The Court in Hazeltine Research, Inc. v. Brenner, 382 U.S. 252 (1965) expressly followed the identical reasoning as that in Milburn, stating at pages 255-56:

The basic reasoning upon which the Court decided the Milburn case applies equally well here. When Wallace filed his application, he had done what he could to add his disclosures to the prior art. The rest was up to the Patent Office. Had the Patent Office acted faster, had it issued Wallace’s patent two months earlier, there would have been no question here. As Justice Holmes said in Milburn, “The delays of the patent office ought not to cut down the effect of what has been done.”

In neither case did the Court push the effective date of a U.S. patent backward in time any further than its filing date. Both of the cases rely on the proposition that a prior applicant when he filed his application “had done what he could to add his disclosures to the prior art.” They did nothing to extend the effective date to a point before the inventor filed his application — a point in time when he has done absolutely nothing towards “adding his disclosures to the prior art.” Such a result conflicts with the rationale behind those cases. How can filing an application be a step towards adding an invention “to the prior art” if the invention itself is prior art at the moment it is conceived ?

Note that the Court in Hazeltine did not adopt the reasoning or the dicta of In re Harry, supra, — it nowhere said or implied that all the material contained in section 102 is prior art within the meaning of section 103. 6 It merely held that Milbum made U.S. patents prior art as of their filing date and that that result was not changed by the enactment of section 102(e). As will be seen, no parallel situation, under which inventions were considei’ed a part of the prior art before an application was filed on them or they were otherwise publicly disclosed, existed before the 1952 Act, and the 1952 Act was not intended to institute such a system.

IV. Legislative History of Section 10% (g)

35 USC 102(g) deals with priority of invention. The House Report on it states:

*1371 Subsection [102] (g) relates to tbe question of priority of invention between rival inventors. 7

and furtlier:

Paragraph [102] (g) is derived from title 35, U.S.C., 1946 ed., § 69 (R.S. 4920, amended (1) Mar. 3, 1897, cb. 391, § 2, 29 Stat. 692 , (2) Aug. 5, 1939, cb. 450, § 1, 53 Stat. 1212 ), tbe second defense recited in this section. Tbis paragraph retains the present rules of law governing the determination of priority of invention. 8

The language of section 102(g) was not settled on until late in the game. In H.R. 3760, it appeared in the following form:

(g) before tbe applicant’s invention thereof the invention was in fact made in this country by another who bad not abandoned it and who was using reasonable diligence in this country in reducing it to practice or had reduced it to practice.

Prior to hearings on that bill, that language was objected to by many parties, on the ground that it “may be interpreted to constitute a secret reduction to practice an anticipation of an issued patent.” 9 The story of how the final language was obtained is stated in the Coordinating Committee’s report of the May, 1951 meeting mentioned above:

Paragraph (g) : The coordinating committee was not satisfied with either the language of the Bill or the suggested changes proposed at tbe meeting since none of them wholly took care of the situation. The matter was left to Mr. Federico to prepare a redraft. After consultation with others Mr. Federico recommends the following paragraph which is intended to codify the existing law: 10 [Emphasis added.]

Section 102(g) followed thereafter in its present form. Whether or not the other suggested changes were an attempt to codify existing law or an attempt to do away with or modify the defense of prior invention by another, it is clear from the statement of the coordinating committee and tire statements in the House and Senate reports that the final intent behind section 102(g) was merely to codify the existing rules of law on priority of invention.

V. Priority of Invention Prior to 1952

Determinations of priority of invention are made in two situations— in interference proceedings at the Patent Office, and in infringement actions, where “prior invention by another” is available as a defense. *1372 The rules of law governing both situations are the same. Morgan v. Daniels, 153 U.S. 120 (1894).

As interference may be defined as a proceeding instituted for the purpose of determining the question of priority of invention between two or more parties claiming the same or substantially the same invention. Ewing v. Fowler Car Co., 244 U.S. 1 (1917); Haudenschild v. Huyck, 1910 C.D. 64, 154 O.G. 515 ; Brailsford v. Lavet, 50 CCPA 1367, 318 F.2d 942 , 138 USPQ 28 (1963) ; I Patent Office Rule 201 (a) ; I Rivise & Caesar, Interference Law and Practice § 1 (1940); B. Baker, Outline of Patent Office Interference Practice 1 (16th ed. 1971); H. Underwood, Interference Practice § 1 (1928); II ’Walker on Patents § 189 (A. Deller ed. 1937); II Robinson on Patents § 586 (1890). For the history of the statutory provisions governing interferences see Rivise & Caesar, supra, § 2 (citing Allen v. United States ex rel. Lowry, 26 App. D.C. 8 (1905)); and Robinson, supra, § 587. It was extremely well settled interference law long prior to 1952, that the question of priority of invention did not arise unless the parties claimed the same, or substantially the same, invention. See Rivise & Caesar, supra, §§ 14,31,62.

Like the law governing interferences, the defense of “prior invention of another” has a long history, dating back to the Act of 1793. 11 Section 6 of that Act listed as a defense to an infringement action “that the thing thus secured by patent was not originally discovered by the patentee, but had been in use, or had been described in some public work, anterior to the supposed discovery of the patentee.” It was continued as a special defense in section 15 of the Act of 1836, 12 and was the defense raised in Gayler v. Wilder, 51 U.S. (10 How.) 477 (1850). It was ruled in that case that the prior invention had to be publicly used. 13 See also Agawan Co. v. Jordan, 74 U.S. (7 Wall.) 583 (1868); Seymour v. Osborne, 78 U.S. (11 Wall.) 516 (1870); and Coffin v. Ogden, 85 U.S. (18 Wall.) 120 (1873). The defense was subsequently adopted in section 61 of the Act of 1870, which became R.S. 4920, the immediate predecessor of section 102(g) :

Section 61. * * * That in any action for infringement the defendant * * * may prove on trial any one of the following special matters:

❖ ❖ ❖ sit sjs * *

Second. That [the patentee] had surreptitiously or unjustly obtained the patent for that which was in fact invented by another, who was using reasonable diligence in adapting and perfecting the same; or

* * * * * * *

*1373 Fourth. That [the patentee] was not the original and first inventor or discoverer of any material and substantial part of the thing patented: * * *

There has long been a distinction in the law between the defense of invalidity based on unpatentability over the prior art and the defense of invalidity based on the prior invention of another. Framed in the terminology of our present statute, that distinction is merely this: if the defense or rejection is based on prior art, the claim under consideration is not patentable if the differences between the subject matter claimed and the prior art relied on are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. On the other hmd, when the defense or rejection is not based on prior art, but rather is based on prior i.mention, i.e., the prior invention made in this country by another who had not abandoned, suppressed or concealed it, the claimed invention will be patentable unless the prior invention is the same as or substantially the same as the claimed invention. Diamond Drill & Machine Co. v. Kelly Brothers, 120 F. 282 (E. D. Pa. 1902), aff’d 123 F. 882 (3d Cir. 1903); Sundh Electric Co. v. Interborough Rapid Transit Co., 198 F. 94 (2 Cir. 1912); Farmer’s Handy Wagon Co. v. Beaver Silo & Box Mfg. Co., 236 F. 731 (7th Cir. 1916); cf. Bates v. Coe, 98 U.S. 31 1878 ); Parks v. Booth, 102 U.S. 96 (1880) . In other words, the differences allowed between inventions under the prior iwoention defense were exactly the same as the differences allowed between inventions when a determination is to be made as to whether an interference should be declared between them and exactly the same as the differences we have allowed in distinguishing between same invention type double patenting rejections and the obviousness type double patenting rejections. See In re White, supra.

The nature of the distinction is made particularly clear by the Second Circuit’s opinion in Sundh, supra. In that case the defendant contended that Sundh’s patent was invalid in view of a device disclosed in a patent to one Ihlder. The Ihlder application had been filed prior to Sundh’s, and the Ihlder patent issued after Sundh’s patent issued. The defendant relied on the Ihlder patent both as a basis for a prior art defense, and as a basis for a prior invention defense. Concerning the Ihlder patent, the court stated:

Among the patents introduced by defendant was one to Ihlder, No. 742,031, which, as was said by the Circuit Court, “so clearly resembles the Sundh patent in suit that the supposition arises that tooth Ihlder and Sundh were engaged at the same time in solving the problem and each invention performs substantially the same function.” If either of these devices were in the prior art, there would certainly be no invention in devising the other. [Emphasis added.]

*1374 This was the equivalent to a holding that the two inventions were obvious in view of each other. The court denied the prior art defense, however, holding that Ihlder’s prior filed application was not “prior art” as to Sundh, and that part of the court’s holding was clearly overruled by Milburn. Concerning the prior invention defense, however, the court stated :

This is a separate and distinct defense from the third one, and while evidence is not admissible to carry back the date of a later patent, by showing that application for it was filed earlier, the fact that the person who took ou such laer patent was himself the original and first inventor of the invention in controversy earlier than the plaintiff may be proved, as any other fact is, by competent proof. Barnes Automatic Sprinkler Company v. Walworth Mfg. Company, 60 Fed. 605 , 9 C.C.A. 154 ; Diamond Drill Machine Company v. Kelly Brothers (C.C.) 120 Red. 295. The various authorities cited in Judge Hazel’s opinion and on the brief of appellee are concerned wholly with the other defense, prior patenting or publication.

*******

In order to maintain this fourth defense it must, of course, appear that the invention of the patent in suit and the invention of the prior application are the same. Thus in Diamond Drill Company v. Kelly, supra, the patent in suit dealt with a beltfastener, the prior application with a bed-spring. That court held that even though it should be found that these were analogous arts, and that the presence of either in a prior field of art left no room for invention in the production of the other, it could not be said that both had invented the same thing. But it does not follow that the two devices must be Chinese copies of each other to warrant the application of .this particular defense.

The Court went on to compare the claims of the two patents, and pointed out that an interference should have been declared.

Is this legal distinction between prior art rejections and prior invention rejections at odds with the holdings in Milburn, or Hazeltine or Western States Mach. Co. v. S. S. Hepworth Co., 147 F.2d 345 (2d Cir. 1945) or Detrola Radio & Television Corp. v. Hazeltine Corp., 313 U.S. 259 (1941) ? It is not. Those cases are all to the effect that a United States Patent is prior art as of its filing date. A rejection based on section 102(e) is a prior art rejection, and section 103 of the statute therefore applies. While the Seventh Circuit in Sutter Products apparently reads the Milburn line of cases as charging an inventor with knowledge of all the inventions in his art being pursued in the United States, and thus declines to follow its own Farmer’s Handy Wagon Oo. case, there is absolutely nothing which requires us to so depart from the position taken by the Second Circuit in Sundh and by the Third Circuit in Diamond Drill.

With regard to Grinnell Corp. v. Virginia Electric & Power Co., 277 F. Supp. 507 (E.D. Va. 1967), that case lends more support to my position than it does to that of the principal opinion, for the court agreed with the defendant that Suozzo’s work, although prior to the *1375 patentee’s effective date, was not part of the prior art because it was not published. 277 F. Supp. at 517 . The defendant did not contend that Suozzo’s work, or prior invention, as it were, was part of the prior art. Rather, the defendant relied on a line of cases which indicate that simultaneous or prior invention by others, even though it is not “prior art” within the meaning of section 103 because it was never made public, may still be evidence under section 103 of the statute of the level of ordinary skill in the art at the time the invention. See Grinnell, supra, 277 F. Supp. at 518-19 ; Servo. Corp. of America v. General Electric Co., 337 F.2d 716 (4th Cir. 1964), cert. denied, 383 U.S. 934 (1966); Felburn v. New York Central R.R. Co., 350 F.2d 416 (6th Cir. 1965) ; U.S. Pipe & Foundry Co. v. Woodward Iron Co., 327 F.2d 242 , rehearing denied 329 F.2d 578 (4th Cir. 1964). In Grinnell the court rejected that line of cases on the grounds that the same public policy which prohibits the use of abandoned, suppressed or concealed materials as a basis for a prior invention defense under section 102(g) should prevent their use in a prior art rejection under section 103. Thus:

The same reasons of public policy which forbid prior suppressed and concealed activities from invalidating a patent under 35 U.S.C. § 102 (g) are also applicable to 35 U.S.C. § 103 .

VI. The Doctrine of Lost Counts

My position is not in conflict with the holdings, as distinguished from the dicta, in In re Risse, 54 CCPA 1495, 378 F.2d 948 , 154 USPQ 1 (1967); In re Yale, 52 CCPA 1668, 347 F.2d 995 , 146 USPQ 400 (1965), and In re Taub, 52 CCPA 1675, 348 F.2d 556 , 146 USPQ 384 (1965). Those cases merely follow the doctrine of lost counts, under which the losing party’s claims defining inventions which would have been obvious in view of the invention defined by the counts are rejected as unpatentable over the counts. As indicated in Bisse, this doctrine is somewhat of an off-shoot from the doctrine of interference estoppel. It is apparently based on the proposition that the interference decision should, to the extent possible, put an end to the litigation between the parties in the Patent Office. Cf. In re Sola, 22 CCPA 1313, 77 F.2d 627 , 25 USPQ 43 (1935); In re Capen, 43 App. D.C. 342 (1915); In re Wickers, 29 App. D.C. 71 (1907). The doctrine was established in this court and our predecessor in patent jurisdiction long prior to the 1952 Act, and thus the counts of an interference are presumably within the meaning the term “prior art” had attained when that statute was enacted, as against the losing party to that interference.

*1376 The doctrine of lost counts lias never been extended outside of the interference situation to cover separate inventions which could never have been placed in interference. As pointed out above, this court has specifically rejected the contention that Risse applies in such a situation. In re Newton, supra; In re Frilette, supra. Judge Rich himself has indicated that the doctrine has not been so extended. In In re Hilmer, 57 CCPA 985, 424 F.2d 1108 , 165 USPQ 255 (1970) (opinion by Judge Rich for a unanimous court), the opinion described the proposition “that prior ‘invention * * * by another’ is ‘prior art’ within the meaning of § 103” as being a substantial assumption. 57 CCPA at 989, n. 3, 424 F.2d at 1112, n. 3 , 165 USPQ at 258, n. 3. The Hilmer opinion further states:

As we understand the meaning of the term “priority,” it refers either (a) to the issue which exists in the interference proceedings, namely, which of two or more rival inventors attempting to patent the same invention shall be deemed prior or first in law and entitled to the Patent or (b) preservation of an effective filing date during a period such as the “convention” year as against acts which would otherwise bar the grant of a patent, for the protection of an applicant against loss of right to a patent. Nothing we have seen tends to indicate that this matter of “priority” has been intended to modify the long-standing provisions of our statutes as to what shall be deemed “prior art” under § 103.6 [Emphasis in original.]

Footnote 6 reads as follows:

We have considered the views expressed by the author of the board majority opinion herein in a concurring opinion in Mm parte Raspe, 156 USPQ 217 (1967), in a somewhat different factual situation. AVe think it necessary to distinguish between the right to a patent, which is only a right to exclude others, and a right to practice an invention or to be free of liability for infringement. If the law as it has been written by Congress creates anomalous situations, then it is for Congress to decide whether to change the law. In the present ease we do not see the anomalous situation that was seen in Raspe since allowance of claims 10 and 16 would not give appellants coverage of Habich’s claim 1 compound.

Ex parte Raspe was a board decision decided 10 days after the case of Ex parte Robbins, 156 USPQ 707 (1967) relied upon for support in the principal opinion. The Rasfe concurring opinion referred to in Hilmer was authored by Examiner-in-chief Federico, and his reasoning in Rasfe essentially follows his reasoning in Robbins .

In the present case, the Patent Office has not advanced any new reasons for extending the doctrine of lost counts to situations not involving lost counts. There can be no question, or 'at least there could have been no question prior to the Commissioner’s Notice of January 9, 1967, that the inventions involved here are materially different and thus no interference could have been declared between them. See McCutchen v. Oliver, 54 CCPA 756, 759, 367 F.2d 609, 611 , 151 USPQ *1377 387 , 388 (1966); Brailsford v. Lavet, 50 CCPA 1367, 1372-73, 318 F.2d 942, 945-46 ; 138 USPQ 28 , 31-32 (1963); Ex parte Manson, 146 USPQ 620 (1964); Ex parte Mercer, 1913 C.D. 195, 193 O.G. 1017 ; Haudenschild v. Huyck, 1910 C.D. 64, 154 O.G. 515 ; tut see Moore v. McGrew, 170 USPQ 149 (Bd. Pat. Intf. 1971). I would therefore hold that the doctrine of lost counts has no applicability to the case before us.

In passing, it should be noted that In re Gregg, 44 CCPA 904, 244 F.2d 316 , 113 USPQ 526 (1957), does not stand for the proposition for which it was cited in the principal opinion. From the material omitted between the portions of Gregg quoted in the principal opinion and from the material following those portions in the Gregg opinion, it is clear that the holding was based on section 102(e), not section 102 (g). See In re Taut, supra, 52 CCPA at 1683, 348 F.2d at 563 , 146 USPQ at 389, stating that Gregg “was founded on the fact that ‘there is no evidence to show completion of the invention covered by the appealed claims by appellant at any time prior to Cloakwell’s filing date,’ that is, ‘the Cloakwell patent is a reference under section 102 (e) ’ * * To the same effect is In re Risse, supra, 54 CCPA at 1503, 378 F.2d at 955 , 154 USPQ at 6 .

VII. Practical Considerations

Since the law of priority of invention prior to 1952 was distinctly different from the law regarding prior art, and since it could be no clearer that the intent of the drafters of the 1952 Act was to enact the law regarding priority of invention exactly as it was at that time, the correct answer to the question before us should be crystal clear. Yet the question might be asked whether we should change that law for something better. The principal opinion would have us change that law, but it is silent as to reasons why we should do so. I have thoroughly considered the system the principal opinion would have us establish, and I have been unable to find anything desirable about it.

Consider the case before us. Here the private knowledge of the inventors, developed during the period which led to the claimed combination, is being used to set the standard of the knowledge of the man of ordinary skill in the art. What has happened to the objective standard of section 103? On the record before us this knowledge could not possibly have been known by one of ordinary skill in the art; it was not published anywhere, nor was it the subject of a pending U.S. patent application at the time the combination under consideration was made; Indeed, whoever issued the Bass and Horvat patent and the Jenkins patent considered the crucial elements of the present combination to be mobvious to one of ordinary skill in the art. At best, the knowledge *1378 relied on for the rejection before ns represents the level of one skilled in the art who worked in a proprietary environment with the other two inventors for who knows how many years and had been assigned the task of reducing carding machine blowouts.

If we allow this subjective, secret knowledge to become the standard against which patentability is judged, we will do the public a disservice by watering down the incentive that the patent system provides for the advancement of the useful arts. Very few inventions are arrived at by a “flash of genius” or accidently, for example, by spilling a rubber composition onto the stove. Most are the result of carefully planned scientific research, often with numerous persons working on various aspects of a given problem. Invention is often reached via a large number of small steps forward. Given the possibility that the special knowledge of the inventor’s coworkers developed during the pursuance of the invention would be usable against any patent based on the invention which is the end result of the research effort, investors and corporate management would, or should, be most wary of using the patent system to protect any commercially valuable invention, rather than following the trade secret route. The problems presently faced under section 102 (e), see, e.y., Franz, Prosecution Problems with a Plurality of hwentions From a Single Project, 51 J.P.O.S. 559 (1969), are nothing compared to the problems which would ensue if the effective date of a patent were changed from its filing date, which is at least a definite date, to the date of “invention.”

The system proposed by the principal opinion would also reek havoc with the law concerning affidavits under Pule 131 and its predecessor, Pule 75, which have long been a part of IT.S. patent law. While the examiner in the case before us accepted appellants’ Rule 131 affidavits as showing invention prior to the effective date of the O’Veal reference, if “prior invention” is also “prior art,” we do not really know the effective date of the O’Veal reference, since clearly O’Veal must have conceived his invention prior to the date on which he filed his application. Since the Patent Office has no way of knowing what a reference patent’s actual date of invention is, it would have to issue patents in cases where the filing date of the reference is overcome, even though a large number of such patents would be invalid.

Consider the plight of two inventors who independently develop inventions which are materially different from, but obvious in view of, each other. The reasoning of the principal opinion would force both inventors into an expensive and burdensome intereference contest in which they could only lose. While the winning party could keep the claims he had, he could not claim the loser’s invention because the winner “did not himself invent the subject matter.” 35 USC 102(f). *1379 The loser, of course, would gain nothing, and his application would ordinarily never be published.

We need not further dwell on the vagaries of a system under which priority contests must be waged between inventions which differ substantially but would have been obvious one in view of the other, for there is absolutely no indication that such a radical change in the law was intended by the drafters of the 1952 Act. As noted above, all indications are that no change at all was intended. An even stronger indication of the same intent is to be found in the Act itself, section 135 (b) of which discusses interferences between applications and issued patents for “the same or substantially the same subject matter * *

Are we to rule that interferences must now be declared between inventors whose inventions are substantially different from one another but those differences are such that the one would have been obvious in view of the other? Such a result would inevitably follow from a holding that the prior invention of 102(g) must be applied as the standard against which a determination must be made as to whether a patent may be granted under 35 USC 103. In fact, such an interference was the only course the board left open to appellants in the present case by which they might overcome the Bass and Jenkins references. The Board stated:

The first three lines of Rule 131 are as follows :

“When any claim of an application is rejected on reference to a domestic patent which substantially shows or describes T>ut does not claim the rejected invention.” (Emphasis added.)

In our opinion, it is the claimed' subject matter rather than the unclaimed subject matter of the Bass, Jr. et al. and Jenkins, Sr. patents which is being relied upon. The specific manner in which the claims of the Bass, Jr. et al. and Jenkins, Sr. patents are drawn does not indicate otherwise.

Under the circumstances here involved it does not appear that an affidavit under Rule 131 was the proper procedure to adopt.

The “proper procedure” to overcome a domestic patent which claims the rejected invention is to file am affidavit under Rule 204 and provoke an interference. The prospect of a two or three way interference between appellants Bass, Horvat and Jenkins, patentees Bass and Horvat and patentee Jenkins seems ludicrous indeed. It should be noted, however, that before the board appellants pointed out that “[t]here;is nothing in the affidavits to suggest that the Jenkins screen or the Bass plenum were used separately before they were brought together in the claimed combination,” and the principal opinion itself concludes that there is no showing that the plenum is prior to the combination. There was no application filed on, and thus no constructive reduction of, either the plenum or the screen .prior to the alleged actual reduction to *1380 practice of the presently claimed combination. If either the plenum or the screen had not been actually reduced to practice prior to the first use of the combination, the question as to which was actually the first conceived would be presented. The Rule 131 affidavits submitted here were clearly not directed to that question. Apparently the board felt that that question could only be resolved by such an interference. Indeed, the last paragraph of the Commissioner’s Notice quoted supra requires that an interference be declared, contrary to the law of priority of invention embodied in section 102 (g), contrary to the specific language of 35 USC 135(b), and contrary to the settled case law that claims do not interfere unless they are directed to the same, or substantially the same invention. Such a course has been followed by the Patent Office at least once. See Moore v. McGrew, supra, note 1. On the other hand the Patent Office could follow the established law and hold that claims to different inventions do not interfere even if the inventions are obvious in view of each other. The net result of that holding would be to eradicate all the methods by which an applicant could find out the actual effective date of any reference, whether the reference was filed or published before or after the applicant’s filing date, save one — he will find out the actual effective date of the reference when it is interposed against his patent in an infringement or a declaratory judgment action.

Conclusions

At the heart of the reasoning behind Yale, Taub and Risse is the proposition that everything in section 102 is prior art. That reasoning is an easy trap to fall into, for much of what is in section 102 is also prior art under previous law. However, as I have endeavored to show, that reasoning conflicts with the real intent behind the statute. Rather than make such a broad generalization about section 102 and then follow it blindly, this court should carefully scrutinize each section thereof to determine the meaning of the statutory language and the intent behind it. That was the course followed by Judge Jackson in the opinion which the Supreme Court affirmed in Hazeltine v. Brenner, supra. There he said:

[I]n view of the fact that the “prior art” under 35 U.S.O. § 103 is not limited to materials which an inventor knows or could reasonably be expected to know, the question of whether a copending patent is to be considered a part of the “prior art” under 35 U.S.C. § 103 is a matter of policy. Because of the fact that the policy, the case law, prior to the 1952 Act was to include “copending patents” in the prior art in situations analogous to those now covered by Section 103, it is the opinion of the Court that there would have to be clear, unmistakable language in the Patent Act of 1952, or in its legislative history before a Court would he warranted in holding that “copending patents” are not “prior art” under 35 U.S.C. §103 .

*1381 The Court has not found, nor has Counsel for plaintiffs directed its attention to any such language. The Patent Act is unclear on this point * * *. [Footnote omitted, emphasis added.]

Hazeltine v. Ladd, 226 F. Supp. 459 (D.C.D.C. 1964) aff'd per curiam, 340 F. 2d 786 (D.C. Cir. 1964), aff'd 282 U.S. 252 (1965).

To summarize my position, the legislators clearly intended to enact the law of priority of invention exactly as it stood in 1952. As it stood then the question of priority only arose between inventions which were the same, or substantially the same. The decisions dealing with references which are U.S. patents do not conflict with that law and it has not otherwise been overruled. There are no policy considerations which would dictate changing that law, and many policy considerations against such a change. I would reverse the rejection of claims 1 and 6-9 on the basis that the elements invented by Jenkins and by Bass and Horvat are not prior art with regard to the Bass-Horvat-Jenkins combination. I note that no rejection of these claims on the basis of double patenting is before us, although absent a terminal disclaimer such a rejection would appear proper. I agree with the affirmance of the rejection of claims 2-5.

See [1973] APLA Bull, at 16-18, discussing the difficulties created by the case of Moore v. McCrew, 170 USPQ 149 (Bd. Pat. Intf. 1971), which decided an interference declared between two applications which disclosed substantially different inventions.

In re Harry, 51 CCPA 1541, 1545, a. 1, 333 F.2d 920, 923, n. 1 , 142 USPQ 164 , 166-67, n. 1 (1964).

On close examination none of the legislative history discussed in footnote 2 of Hairy is inconsistent with the proposition that some of the material in 102 would remain as merely “anticipatory prior art.” 51 CCPA at 1545-46, 333 F.2d at 923 — 24, 142 USPQ at 167. See note 4, infra. No one would contend that section 102(c) has anything to do with prior art. Thus the statement in footnote 2 of Harry that “ ‘prior art’ means at least those things named in section 102” is, at best, inaccurate — some of the “things” in section 102 are prior art, such as those in 102(a), and some are not, such as in 102(c). The question remains whether those in 102(g) belong to the former category or the latter.

The embryos of present sections 102 and 103 of the statute first appeared in House Comm, on the Judiciary, 81st Cong., 2d Sess., Proposed Revision and Amendment of the Patent Laws, Preliminary Draft (Comm. Print 1950) as sections 22 and 23, respectively. Section 22 did not contain anything comparable to present sections 102(e), (f) or (g). Section 23 read as follows :

A patent may not be obtained "though the invention is not identically disclosed or described in the material specified in section 22 of this title, if the differences between the subject matter sought to be patented and said material are such that the subject matter as a whole would be obvious to an ordinary person skilled in the art. [Emphasis added.]

The pertinent language was substantially the same in section 103 of H.R. 9133, 81st Cong., 2d Sess., introduced July 17, 1950. In section 103 of H.R. 3760, introduced April 18, 1951, the pertinent language had been changed to read “disclosed or described in the prior art set forth in section 102 of this title, if the differences between the subject *1368 matter sought to be patented and that prior art are such * * In May of 1951, the Coordinating Committee (see Rich, Congressional Intent — or, Who Wrote the Patent Act of 1952? Patent Procurement and Exploitation 61, 67, 71 (BNA, 1963)) met to consider H.R. 3760. Among the changes they then suggested was the rewording of section 103, apparently in response to a suggestion from the Patent Law Committee of the Bar Association of the City of New York, which changed “in the prior art set forth in section 102” to “as set forth in section 102” and changed “that prior art” to “the prior art.” According to the suggestor: “The purpose of this is to make it clear that all prior art is here meant and not merely the prior art referred to in section 102 which is limited to anticipatory art.” See Hearings on H.R. 3760 before Subcomm. No. 3 of the House Comm, on the Judiciary, 82nd Cong., 1st Sess. ser. 9 at 33, 221 (1951) [hereinafter cited as 1951 Hearings]. Thus it can be seen that while each change made section 102 less of a definition of what can be utilized in determining unobviousness under section 103, the phrase "disclosed or described” remained unchanged throughout this metamorphosis.

27 U.S. (2 Pet.) at 18-19 .

See note 3, supra.

H.R. Rep. No. 1923, 82d Cong., 2d Sess. at 7 [hereinafter House Report]. The Senate Report, S. Rep. No. 1979, 82d Cong., 2d Sess. (1952) is identical to the House Report in all pertinent respects

Id., at 17-1S, emphasis added.

Report of the Laws and Rules Committee of the American Patent Law Association, 1951 Hearings, supra, at 44 (emphasis added). Similar objections were voiced on behalf of the Department of Defense, id., at 79, the National Association of Manufacturers, id., at 51, and others, e.g., id., at 93,192.

1951 Hearings, supra, at 33.

Ch. 11, 1 Stat. 318 .

Ch. 357, 5 Stat. 117 .

51 U.S. at 496-97 . That case was also the first Supreme Court case In which it was held that the abandonment of a prior invention precluded its use to invalidate a later patent. 51 U.S. at 497-98 .