The opinion
OPINION
HORN, Judge.
The plaintiff, Standard Manufacturing Company, Inc. (Standard), is the owner of United States Patent No. 4,522,548 (the ’548 patent), issued June 11, 1985, for an “Aerial Weapons Handling Trailer.” The plaintiff filed this case under 28 U.S.C. § 1498 (1988), seeking reasonable and entire compensation for the defendant’s use of its patented invention in two aerial weapons handling trailers, designated as the MHU-196/M and MHU-204/M trailers. These trailers are used in loading weapons into the B-52, B-1B and Advanced Technology Bombers (B-2).
The court previously granted the plaintiff’s Motion for Leave to File its Second Amended Complaint, in which the plaintiff withdrew its claim of infringement as to Claims 1, 2, 4, 10 and 16-19 of the plaintiff’s patented invention, leaving only Claim 9 in the suit. The validity of Claim 9 of the patent in suit and the enforceability of the patent were tried before this court for nine days. The issues of liability and damages were bifurcated, with the issue of damages deferred until after the court’s determination of liability. The defendant in this lawsuit has conceded that if the patent in suit is found valid and enforceable, then the defendant has made unau *6 thorized use of the patent and is, therefore, liable to the plaintiff for reasonable compensation for such improper use.
The defendant raises two challenges to the validity and enforceability of Claim 9 of the patent in suit. First, the defendant contends that Claim 9 is invalid under 35 U.S.C. § 103 (1988), alleging that the subject matter would have been obvious to one of ordinary skill in the art at the time the invention was made. A subsidiary issue, which is part of the defendant’s obviousness defense, is whether certain work performed in 1976-1977 by the plaintiff’s competitor, Aircraft Armaments Incorporated (AAI), on the development of a proposed trailer known as the MHU-145/M, constitutes prior art upon which the obviousness of the patented invention in suit should be judged. Moreover, the defendant asserts that even if Claim 9 is valid, the patent in suit is unenforceable due to the inequitable conduct of the inventors and their counsel during the prosecution of the patent before the United States Patent and Trademark Office.
The court has carefully reviewed the testimony of each witness who appeared at the trial. On behalf of the defendant, Dr. James Kirk, qualified as a technical expert; Professor Martin Adelman, qualified as a “legal expert” in the field of patent law; Theodore Alfriend, the lead engineer for AAI Corporation during the period at issue in this case; Thomas DeSalvo, the AAI designer of the accused device; Robert A. LeBlanc, a munitions handling engineer for the Air Force; and inventors, Robert R. Dean and Harry S. Mankey, (the last two as adverse witnesses) were called by the defendant. For the plaintiff, Judge Joseph Y. Colaianni, qualified as a “legal expert;” Norman D. Oswald, President of Standard Manufacturing Company; Harry Mankey, former engineer at Standard; John F. Bryan, Jr., plaintiff’s technical expert; Colonel Richard Grammer, former Director of Munitions for the Strategic Air Command; William C. Blackwell, former Munitions Superintendent for the Strategic Air Command and employee of Standard; Conrad G. Armstrong, former Deputy for Strategic and Space Systems; Charles H. Anthony, Manager of the MHU-145 Project at Eglin AFB; Stuart J. Millman, Patent Examiner; Gregory W. Carr, attorney with Gardere & Wynne; and Theodore Alfriend, called as an adverse witness. The court also has examined all the pleadings and documents filed with this court by both parties, including correspondence; contract documents for the plaintiff and their competitors; design notes; the patent documents, consisting of the file wrapper, photographs, drawings and models; and, where specifically designated, the deposition testimony, admitted by the court, attached to the Plaintiff’s Motion to Admit Deposition Testimony. For the reasons discussed below, the court finds in favor of the plaintiff on the issue of liability and holds that the plaintiff has a properly prosecuted and valid patent, which was prosecuted in good faith and, therefore, has been infringed upon by the government.
BACKGROUND
The plaintiff, Standard, filed this action under 28 U.S.C. § 1498 (1988), to recover reasonable compensation for the government’s use of the subject matter claimed in the '548 patent, entitled “Aerial Weapons Handling Trailer.” The ’548 patent was filed on September 28, 1982, by the inventors: Norman D. Oswald, Robert R. Dean and Harry S. Mankey, and assigned to the plaintiff.
In its First Amended Complaint, Standard asserts that Claims 1, 2, 4, 9, 10, 16, 18 and 19 of the ’548 patent cover the MHU-196/M trailer, which is a large capacity munitions handling trailer used for loading the B-1B and the B-52 bombers. This court scheduled the trial in the instant lawsuit, following discovery and the filing of, and subsequent dismissal of, a related case in which the plaintiff alleged that the government had breached an agreement with the plaintiff by improperly disclosing certain proprietary information, namely the patented invention, contained in an unsolicited proposal submitted by the plaintiff to the government. Narrowing the issues for trial, the court granted the plaintiff’s Motion for Leave to File its Second Amended *7 Complaint, withdrawing its claim of infringement as to Claims 1, 2, 4, 10 and 16-19 of the plaintiffs patented invention, leaving only Claim 9 in the suit. Presently, the devices accused of infringing the asserted Claim of the ’548 patent are the MHU-196/M and the MHU-204/M munitions handling trailers (MHT’s). The MHU-196/M is a weapons loading trailer used by the defendant to load the B-52 and B-1B bombers. The MHU-204/M is an adaptation of the MHU-196/M trailer, modified for the purposes of loading the Advanced Technology Bomber (B-2).
Based upon the record and the testimony and evidence submitted at trial, the court determines the following to be the relevant facts of the case presented for its review. 1
The Prior Art MHU-7/M, MHU-33/M and MHU-123/M Trailers.
The plaintiff, Standard, is a privately held corporation organized under the laws of the State of Texas. Standard has its principal place of business at 4012 West Illinois, Dallas, Texas. For over thirty years, Standard has been in the business of designing, developing, testing, manufacturing and supporting vehicles and special equipment for military and industrial use. A major part of Standard’s business is the design, development, manufacture and support of munitions handling equipment (variously known as munitions handling trailers (MHT), munitions handling units (MHU), or munitions lifting trailers (MLT)), also known as weapons loaders, for the United States Armed Forces, for use in loading bombs, missiles and other aerial weaponry into or onto military aircraft. Thousands of weapons loaders designed, developed and manufactured by Standard are in use by the Armed Forces of the United States and those of more than forty other countries throughout the world.
Standard began its participation in the weapons loading industry in 1953 with its design of the MJ-1. The MJ-1 was a powered vehicle capable of transporting a bomb or missile weighing several thousand pounds to an aircraft and precisely positioning the load to mate with an attachment fixture on the aircraft. Standard’s activity in the industry continued with the MJ-4, a vehicle designed and adapted to load heavier weapons packages onto the F-4 Phantom fighter aircraft.
In the late 1950’s, when the mainstay of the strategic bomber force of the United States Air Force (USAF) was the B-52 bomber, Standard submitted an unsolicited proposal to the USAF and later was awarded a contract to design and develop a trailer known as the MHU-7/M. This trailer replaced fourteen pieces of equipment previously used to load the B-52. The MHU-7/M was subsequently upgraded to increase its load capacity and Standard apparently was awarded a contract for the drawings and prototype loader which was designated as the MHU-33/M. Later, when the MHU-33/M was modified to increase further its loading capacity, it was re-designated by the USAF as the MHU-123/M. In 1982, Standard submitted an “Unsolicited Proposal” to the United States Air Force for the manufacture of upgrading kits which were to be incorporated in the MHU-7/M and MHU-123/M trailers previously procured. The kits included a “power inching mechanism” designed by Standard.
By stipulation of the parties, the designs of the MHU-7/M, MHU-33/M and MHU-123/M (MHU-7-33-123/M) trailers are to be considered by this court as identical in all respects material to this case. Also by stipulation of the parties, the MHU-7-33-123/M trailers may be considered a part of the relevant prior art, within the meaning of 35 U.S.C. §§ 102 and 103 (1988).
*8 Figure 1-
[[Image here]]
The MHU-33/M and MHU-123/M trailers, depicted in Figures 1 and 2, have a U-shaped frame formed by two longitudinal beams, interconnected by a cross beam located at the forward end of the frame. Each longitudinal beam has an inside (or inner) and outside (or outer) surface. The distance between the outer surfaces of the longitudinal beams is greater than the distance between the inner surfaces of the longitudinal beams.
Figure 2.
[[Image here]]
*9 The frames of the MHU-7-33-123/M trailers are supported by four wheels, two located at the front and two located at the back of the frame. Two hydraulically actuated lift arms are pivotally mounted at their proximal ends to the inner surfaces of each of the longitudinal beams of the frame for lifting the weapons load from the ground to an intermediate position for transport, and then upwardly for attachment of the load to the aircraft. Secured to the distal ends of the lift arms on each side of the MHU-7-33-123/M frames is a lift beam, used to support one side of a weapons load carried by the trailer. The narrower portion is that portion of the lift beam associated with the front of the trailer and is also that portion of the lift beam to which the forward lift arm is connected for pivotal and sliding motion with respect to the lift beam. The wider portion of the lift beam is that portion of each beam associated with the rear of the trailer and is also that portion of the lift beam to which the rear lift arm is connected for pivotal and sliding motion with respect to the lift beam. The lift beam has a narrower, forward portion and a wider, rearward portion. Significantly, the distance between the outer surfaces of the lift beams at the rear of the MHU-7-33-123/M trailers is greater than the distance between the outer surfaces of the lift beams at front of the trailer. In the MHU-7-33-123/M, however, there are no differences in the distance between the inner surfaces of the lift beam at the forward or narrower portion of the lift beam and the distance between the inner surfaces of the lift beam at the rearward or wider portion of the trailer. The distance between the outer surfaces of the narrower portion of the lift beams at the front of the MHU-7-33-123/M trailers is greater than the distance between the outer surfaces of the respective lift arms, both at their proximal and distal ends at the front of the trailers. Likewise, the distance between the outer surfaces of the wider portion of the lift beams at the rear of the MHU-7-33-123/M trailers appears to be greater than the distance between the outside surfaces of the respective lift arms, both at their proximal and distal ends, at the rear of the trailers. However, the distance between the inside surfaces of the proximal ends of the rear lift arms is greater than the distance between the outside surfaces of the front and narrower portion of the lift beams.
The load to be carried by the MHU-7-33-123/M trailers includes the weapon(s) and its bolster mechanism, which elevates the weapon(s) above ground level. The distance between the outside surfaces of the bolster, at its point of connection to the lift beams, is less than the distance between the inner surfaces of the lift beams. From either side of the bolster, there are two protruding pins which connect to the lift beams of the MHU-7-33-123/M trailers.
In a typical loading operation, an MHU-7-33-123/M trailer is backed into position around the weapons load with the lift arms lowered, thereby locating the lift beams just above the underlying surface, beneath the protruding pins of the weapons bolster and next to the weapons load. Simultaneous pivoting of the lift arms varies the vertical position of the lift beams and lifts the weapons load. The distal ends of the lift arms move through an arc. The lift beams, however, move only in a vertical direction. As the lift arms pivot and the lift beams are raised, an “arc compensator” translates or slides the position of the distal ends of the lift arms with respect to the lift beams, maintaining the horizontal position of the left beams. 2 In the MHU-7-33-123/M trailers, the lift arms and arc compensator operate within the shadow of the lift beams, i.e., they are positioned directly beneath the lift beams. 3 According to the *10 testimony of Dean Oswald, the President of Standard, and one of the co-inventors of the patent in suit, to avoid interference with the rear lift arms, when the lift beams are moved to their lowered position, the weapons package can be no wider than the inside surfaces of the lift beams.
The two rear lift arms pivotally connected to each of the longitudinal extending beams of the frame of the MHU-7-33-123/M trailers have a slight bend in their configuration. The presence of this slight bend make it possible for the arc compensator to clear the lift arms as the lift beams are raised and lowered, and results in the distance between the inner surfaces of the distal ends of the two rear lift arms (the point of their connection to the lift beams) being less than the distance between the inside surfaces of the proximal ends of the same rear lift arms (the point of their pivotal connection to the each of the respective longitudinal beams of the frame of the trailer). This slight bend in the rear lift arms is characterized by the plaintiff as a “clearance bend” and is characterized by the defendant as an “offset” within the meaning of the patent in suit.
The Development of the MHU-145/M Trailer.
In the early 1970’s, the United States Air Force began development of the B-l bomber, a long range aircraft intended to improve the capabilities of the Strategic Air Command (SAC), the first-alert strategic defense division of the USAF. The B-l bomber program, 4 as it existed in February of 1973, called for the design, development and fabrication of a “high capacity loader,” referred to as the Munitions Transport Loading System (MT/LS).
Although the prior art MHU-7-33-123/M trailers are capable of loading the internal bomb bays of the B-52 bomber with weapons loads (loads weighing up to 13,250 lbs for the MHU-7, and perhaps more for the MHU-33 and MHU-123 trailers, as each was improved), the prior art MHU-7-33-123/M trailers lack sufficient lift height to load the internal bomb bays of the B-l bomber. The fuselage of the B-l bomber is higher off the ground than the B-52 bomber and the introduction of newer and heavier weapons in the 1970’s necessitated the development of a larger loader. The larger capacity loader required for the B-l bomber, therefore, necessitated a loader having an approximate lift height of ten feet and a weight capacity of 35,000 lbs.
In the fall of 1973, the Air Force published a synopsis of the requirements for the new loader in the Commerce Business Daily, Issue No. PSA-5735, and issued a request for proposals for the B-l bomber loading system. The plaintiff, Standard, and a competitor, AAI, were among the five companies which submitted loading system proposals to the Armament Division located at Eglin Air Force Base, Florida. The Air Force selected AAI as the winning bidder and awarded AAI contract No. F0835-74-C-0038, which had a contract price of $1,471,626.00. Theodore Al-friend was the program manager and project engineer for AAI and Charles Anthony was the program manager for the Air Force.
The MT/LS contract required the development of a “drive under, load and drive away” loading system which was to be comprised of three vehicles, i.e., a tow vehicle, a transport trailer, and a loader. The contract also required that the vehicles be developed in three phases. The first phase called for the development of a prototype tow vehicle, the second phase called for the *11 development of a prototype transport vehicle and the third phase called for the development of a prototype loader. The tow vehicle was designated as the AS/32K-6 tow vehicle, the transport trailer was designated as the MHU-144/M transport trailer, and the loader was designated as the MHU-145/M loader. The MHU-145/M was to be coupled to the AS/32K-6 tow vehicle and driven underneath the B-l bomber fuselage and between the landing gear of the B-l bomber.
In accordance with the schedule set forth in the MT/LS contract, AAI designed and built a prototype of the AS/32K-6 tow vehicle during phase I of the project. 5 AAI also designed the MHU-144/M transport trailer during phase II of the project. During phase III of the contract, AAI began constructing two mock-ups of the MHU-145/M loader.
The technical specification which accompanied the solicitation for proposal for the MT/LS specified that the loader design shall be “U-shaped, similar to the MHU-33/M.” The MHU-33/M trailer is a member of the MHU-7-33-123/M family of trailers, which the plaintiff, Standard, had designed for the Air Force beginning in the early 1960’s. The technical specification also required that the MHU-145/M loader “be designed to transport and load preloaded AGM/69 rotary launchers and high density conventional munitions racks into the bomb bays of the B-l aircraft and SRAM and SLAD missiles onto the wing stations of the B-52 aircraft.” Additionally, the MT/LS contract called for the design of a “loader [with] a maximum load capacity of 35,000 pounds.” Finally, important to the instant action, the technical specification required that the MHU-145/M loader design include “[automatic positioning and sensing devices ... to automatically load weapons into the bomb bay of the B-l aircraft under field conditions.”
The bomb bay doors of the B-l present a problem because in their open position they hang downward in a vertical position and allow relatively little horizontal clearance between the load and the bomb bay doors. In order to solve this clearance problem, according to the defendant, AAI designed the MHU-145/M trailer to have four lift arms; the two rear lift arms incorporated “offsets” and the two front lift arms were offset in their entirety. Theodore Alfriend, AAI’s program manager and project engineer on the MT/LS contract, stated that the purpose of offsetting the rear lift arms was to allow the upper portion of the lift arms and the weapons load to fit within the width of the open B-l bomb bay doors. Mr. Alfriend stated that “[i]deally, the span between those lift arms, the ends of the lift arms that go up should be such that it goes between the vertical bomb bay doors with sufficient clearance so that you can do this with safety.” AAI submitted a preliminary design for the MHU-145/M loader to the Air Force in May 1974.
During Phase III of the MT/LS contract, AAI commenced construction of two mockups relating to the MHU-145/M loader. The first mock-up, called the “trailerable” mock-up, was a semi-trailer designed to test positioning of the MHU-145/M trailer relative to the B-l bomber. The trailerable mock-up had no lift mechanism. The prototype tow vehicle and trailerable mock-up were driven beneath an actual B-l bomber to verify the dimensions of the MHU-145/M trailer design and to ensure that it could be accurately positioned beneath the aircraft.
The second mock-up was referred to as the “optical” mock-up. The optical mockup of the proposed MHU-145/M trailer, depicted in Figure 3, was a full scale version of the lift system and had a lift mechanism with a lift capacity of approximately 1,000 pounds. Instead of full size wheels, the optical mock-up employed casters which allowed the optical mock-up to move laterally.
*12 Figure 3.
[[Image here]]
The optical mock-up received its name from its inclusion of the electronics and hydraulic jack pads necessary to demonstrate the optical alignment system which was to be included in the MHU-145/M trailer. Although the optical mock-up was not a real weapons loading trailer and could not have been used to lift or load real weapons packages, the optical mock-up was tested with a simulated weapons package and a wooden mock-up of the B-l bomber bomb bays. The tests were conducted at AAI’s facility in Cockeysville, Maryland in the presence of employees from the Air Force, Rockwell International and AAI. The optical mock-up successfully lifted and aligned the simulated weapons package within the wooden mock-up of the B-l bomb bays. Mr. Alfriend, AAI’s program manager and project engineer on the MT/LS contract, was questioned at trial as to whether he believed that, based upon the design of the MHU-145/M and tests conducted on the optical mock-up, the MHU-145/M design (depicted in Figure 3) would have worked as intended. Mr. Alfriend testified that there was no doubt in his mind that if the design for the MHU-145/M were carried into hardware, it would have worked.
In June 1977, during Phase III of the MT/LS contract, when the MHU-145/M loader was still undergoing development, and prior to the critical design review, 6 the prime contract with Rockwell International for the B-l bomber program was cancelled by the government. AAI’s contract with the defendant for the design of a loading system was also formally terminated for the convenience of the government. According to the testimony of Mr. Alfriend, at the time the MT/LS contract was cancelled, *13 preliminary design drawings of AAI’s proposed MHU-145/M were completed, however, no “top assembly manufacturing drawings” were completed. According to the uncontested documents admitted into evidence, at the point at which the MT/LS contract was terminated, AAI had only completed 40 percent of the detail design of the proposed MHU-145/M loader. Additionally, the parties have stipulated to the fact that no full scale loader, i.e., a loader capable of performing the tasks for which it was designed, was ever actually built.
After cancellation of the B-l bomber program calling for the MHU-145/M trailer, AAI tried to interest the Air Force in a new trailer design for the B-52 bomber based upon the MHU-145/M design. Specifically, in December of 1979, AAI conceived of a trailer having the lift system of the MHU-145/M trailer mounted on the chassis of the new MHU-173/E trailer for use with a wide body jet transporting cruise missiles. However, there was no evidence introduced into the record in the instant case that more than drawings of such a trailer were ever developed or produced for the government, although some conceptual discussions were held with representatives of Boeing Military Airplane Company (Boeing), Lockheed, and perhaps the Air Force.
Air Launched Cruise Missile Program/Development of the MHU-173/E Trailer
In the 1970’s, a program which developed under the Air Launched Cruise Missile Program, known as the Cruise Missile Integration Program, evolved to provide B-52 bombers with the capability of delivering air launched cruise missiles from rotary launchers contained in the bomb bay or pylon adapter packages on the wings of B-52 bombers. 7 Boeing, as the prime contractor for the program, was responsible for the support equipment and modifications to the B-52. Boeing issued a request for proposals soliciting bids for the design, development, and manufacture of a trailer capable of loading both rotary launchers and pylon adapters into the bomb bay and onto the wing stations of a B-52 bomber. Both Standard and its competitor, AAI, submitted bids in response to the request. The two proposals were substantially similar in that they both described a U-shaped trailer having four lift masts, and four hydraulically operated jacks for precise positioning of the weapons load. AAI prevailed in the competition and was awarded the contract by Boeing. Under the contract, No. F33657-79-C-0416, AAI designed, developed, and manufactured a trailer known as the MHU-173/E for loading rotary launchers and pylon adapters into and onto the B-52 bomber. 8
The MHU-173/E was developed under a crash program and immediately fielded in order to meet the Air Force’s urgent requirement to load the air launched cruise missile into the B-52 bomber. When delivered to the USAF in 1981, the MHU-173/E was the largest capacity loader (40,000 pounds) and the most complex piece of munitions handling equipment in the Air Force inventory.
*14 Figure 4.
[[Image here]]
The MHU-173/E, depicted in Figure 4, includes a U-shaped frame supported by two sets of wheels mounted on opposite sides of the open end of the trailer and a single pair of wheels mounted to a cross-member forming the closed end. All three sets of wheels are driven by hydraulic motors and can be turned ninety degrees as needed for lateral movement of the trailer to a position beneath the wing of the B-52 bomber (for pylon adapter loading) or beneath the aircraft weapons bay (for rotary launcher loading). In operation, the MHU-173/E trailer is towed into position parallel to the B-52 bomber. The wheels are then rotated 90 degrees and the trailer is moved laterally or sideways approximately 15 to 20 feet to a position directly beneath the B-52. Once the trailer is underneath the B-52, four hydraulic jacks, one positioned at each corner of the trailer frame, are extended to lift the trailer frame until the trailer wheels are suspended above the underlying surface. These jacks include “XY pads” which fine tune the positioning of the frame in two directions to more precisely position the frame and the weapons load with respect to the B-52. The lift mechanism of the MHU-173/E loader includes four lift masts, each mounted near a corner of the trailer frame, and lift beams, supported by the four lift masts, which engage the weapons load. The lift action appears to be caused by the lift masts located at each corner of the respective lift beams on both sides of the trailer. The lift masts, propelled by a chain drive, raise the weapons load which is resting on the lift beams through the bomb bay doors and into the aircraft.
When the MHU-173/E trailers were first delivered to the USAF at Griffiths Air Force Base, the enlisted personnel at the Base were given on-the-job training on how to maintain the newly arrived trailers. Additionally, when the trailers were first delivered, there were few spare parts available for the personnel to properly perform regular maintenance and repair on the new loader.
Pursuant to the contract, No. F3365779-C-0416, Boeing purchased the MHU-173/E trailers from AAI, and resold the trailers to the USAF. Nineteen MHU-173/E loaders were purchased and resold to the Air Force by Boeing in separate quantities (designated Lots I and II). These lots were delivered between March, 1981 and May, 1982. Apparently, in an *15 effort to save money, the Air Force “broke out” the contract to AAI for the MHU-173/E loaders from the contract with Boeing for the Air Launched Cruise Missile Program in 1982. Lots III and up of the MHU-173/E trailers were procured directly from AAI, by the Air Force, under the “breakout contract,” No. F33657-82-C2025, that was initiated under the authority of the original contract, No. F33657-79-C0416.
The MHU-173/E loader had problems from the very beginning. It was extremely expensive, overly complex and considerably more difficult to operate and maintain than existing trailers. Although the MHU-173/E loader was properly certified for use with the transport and loading of nuclear weapons, the Air Force Weapons Laboratory identified a number of nuclear safety design deficiencies in the trailer. 9 These problems are listed in a document which notes the nuclear safety community s concern over the failure of the Aeronautical Systems Division at Wright-Patterson Air Force Base to correct these design deficiencies. 10 The towing speed of the trailer, when carrying nuclear weapons, was restricted to ten miles per hour (five mile per hour around curves), due to the failure of the trailer to meet stringent nuclear safety requirements. In the first months of operation, the trailers experienced almost daily failures which impaired their operational and nuclear safety. 11
The in-commission rate of the MHU-173/E loaders for the first six months of their field operation was only slightly better than 50%, sometimes falling below what was required to meet the Strategic Air Command’s Emergency War Orders. Subsequently, the in-commission rate improved, but it never got much better than 70% to 80%. 12 The Strategic Air Command *16 concluded that the MHU-173/E loader was not a good engineering design and that action needed to be taken to remedy the situation. Problems with the MHU-173/E loader, as well as the reinstatement of the B-1B program in 1981 and 1982, prompted SAC, to prepare a Statement of Need (SAC-SON) 26-82 for a new weapons loader. The final version of the SAC-SON, validated on July 13, 1983, stated that: 13
*17 B. BASIS OF NEED
1. The existing Munitions Lift Trailer (MLT) MHU-173/E being used to load B-52 Air Launched Cruise Missile (ALCM) pylons is considerably more complex and costly to maintain than other existing MLTs (MHU-7/M, MHU-123/ M).
2. Existing Munitions Lift Trailers (MLTs) will not, without developing a lift height adapter and making structural modifications, load or unload existing or programmed weapons or weapons packages on the B-1B aircraft.
The B-1B Program
The B-l bomber project, which had been cancelled by the President in 1977, was reactivated by the President in 1981. The newer version of the aircraft is referred to as the B-1B bomber. After resumption of the B-1B bomber program in 1981, SAC had a new requirement for loading the B-1B bomber. This requirement was expressed in the SAC-SON 26-82. It was readily apparent to everyone in the industry that the requirement could not be met with the existing munitions handling equipment, such as the MHU-7-33-123/M or MHU-173/E trailers.
The lift height and weight capacity of the MHU-7-33-123/M trailers was inadequate to meet the requirements of SAC-SON 26-82 as the lift height of the MHU-173/E was 75 or 76 inches and the B-1B bomber required a loader with ten feet of lift. In the summer of 1982, AAI proposed to Rockwell International, the prime contractor for the B-1B bomber, that the MHU-173/E trailer and a powered lift adapter, be used to load the B-1B. The proposal was technically feasible and the amount of research and development funds projected for a powered lift adapter was substantially less than that required for the development of a new trailer to load the B-1B. According to the testimony of Mr. Alfriend, AAI did not propose developing a new trailer because they felt it would have been more cost effective to develop a powered lift adapter.
With the reinstatement of the B-1B program in 1981, Standard recognized that there might be a need for an improved, simplified, less expensive weapons loader that could load both the B-52 and B-1B bombers without auxiliary equipment. In October, 1981, three Standard employees, Dean Oswald, Ray Dean and Harry Man-key, decided to attempt to design a munitions loader which could load both the B-52 and B-1B bombers. Development of a system to load a rotary launcher weapons package into the weapons bays of both the B-52 and B-l bomber with the same trailer *18 in a single stage was a challenging problem. As depicted in Figure 5, loading a rotary launcher weapons package into the weapons bay of a B-52 bomber requires transporting a 75 inch diameter weapons load under the open weapons bay doors of the aircraft, which allows only 77 inches of vertical clearance. This leaves no more than one inch clearance above and below the weapons package.
Figure 5.
[[Image here]]
While loading the B-1B bomber, as depicted in Figure 6, does not present the same problem with vertical clearance as the B-52, loading the same 75 inch diameter weapons package into the B-1B bomber requires that the load pass between the downwardly extending weapons bay doors of the aircraft which provides an opening only 80 inches wide. As the weapons package is lifted into the weapons bay, the position of the bay doors leaves only 2V2 inches of clearance on each side of the weapons package. Moreover, to fully insert the weapons package into the weapons bay of the B-l bomber requires that the weapons package be lifted by the trailer more than ten feet above the ground, a lift height which the MHU-173/E trailer could not provide. Moreover, the loader must be capable of loading the 75 inch diameter weapons load which weighs up to 45,000 pounds into an aircraft in blowing snow, sleet, rain, hail and sand. 14 The load capacity of the MHU-173/E trailer was only 40,000 pounds.
*19 Figure 6.
[[Image here]]
Standard began conceptual work on the B-52/B-1B loader in late 1981. After devoting more than a month to the problem, the inventors at Standard conceived of the solution to the problem that is embodied in the patented invention. Work on the loader design commenced in January, 1982 with five or six employees of Standard working on the project full time until July, 1982, at which point the basic design was complete. At the same time, Standard began work on an unsolicited proposal for submitting the design to the Air Force. Standard referred to its design as the “60K Loader” because the loader was designed to have a lift capacity of 60,000 pounds to meet what Standard believed was the future needs of Air Force weapons packages under development.
In brief, the 60K Loader Unsolicited Proposal described Standard’s newly designed loader as follows:
The Trailer will be a towable six-wheeled, wishbone-type vehicle designed to transport and load weapons and weapons packages on the B-52, B-l and ‘Advanced Technology Bomber.’ The basic concept is the same as that of the reliable, simplified and time tested concept utilized by the MHU-7/M and MHU-123/M Trailers. The Trailer has four lift arms, two on each side frame of the Trailer. Each pair of lift arms support a lift beam which, in turn, supports the weapons package to be transported and loaded. * * *
In terms of reliability, Standard’s unsolicited proposal makes several references to the prior art MHU-7-33-123/M:
The Contractor is well aware of the reliability requirements and has always kept these as a very important ‘must’ during design and development. SMCO [Standard] considers the most important factor in reliability to be ‘concept simplicity’; simple structures, simple systems, minimize the number of components and utilizing ‘time proven’ systems and components. These factors have been proven time after time in all types of equipment. As previously discussed, some very noteworthy facts are: the simplicity of the MHU-7/M and MHU-123/M Weapons Loading Trailers, the fact that these Trailers have been performing most reliably for twenty years, and the fact that the USAF thinks so highly of these Trailers that another fifteen to twenty years of usage has been planned for these Trailers. The proposed 60K Weapons Loading Trailer is the same basic time-proven simple design and nothing less than what has been *20 experienced in the MHU-7/M MHU-123/M Trailers in longevity and reliable performance is anticipated by the Proposed Trailer.
On July 9, 1982, 15 Standard formally submitted Unsolicited Proposal No. PR82-07002, “for Weapons Loading Trailers With 60,000 Pound Capacity, for Loading Weapon Packages Onto Advanced Strategic Aircraft” (the 60K Loader Unsolicited Proposal) to Colonel Peter K. Marchiando, Deputy Director for Munitions at the Air Force Systems Command’s Armament Division at Eglin Air Force Base in Florida. Pursuant to the Federal Acquisition Regulations, 48 C.F.R. § 15.09 (1988), copies of Standard’s unsolicited proposals were marked with the appropriate proprietary rights “USE AND DISCLOSURE OF DATA” legend to ensure confidentiality.
After an initial review of Standard’s unsolicited proposal, in August, 1982, Earl T. Smith, the Assistant Deputy for Munitions assigned to Eglin Air Force Base, wrote to the plaintiff as follows:
1. Your unsolicited proposal has been reviewed and evaluated by the Deputy for Munitions, Armament Division, Eglin AFB FL.
2. The proposed effort appears to offer significant improvement over existing development programs and equipment in this field. It is anticipated that funds sufficient to acquire this effort will be available in the near future. When this occurs, you will be contacted through contracting channels.
3. You can be assured that your unsolicited proposal will not be copied or reproduced without your explicit permission.
4. Your interest in the United States Air Force development program is appreciated.
5. The above should not be interpreted as obligating the United States Air Force in any manner. Any resulting obligation will occur only through the execution of a formal contract.
Shortly after the submission of the 60K Loader Unsolicited Proposal, Standard was invited to brief the 60K Loader at a B-1B/B-52 loading concept meeting held on July 29, 1982, at Andrews Air Force Base. Roughly twenty-five representatives from various Air Force Commands were present at the July briefing. Representatives of AAI were also invited to attend a separate session of the meeting, to brief the auxiliary powered lift adapter it proposed be used in conjunction with the MHU-173/E trailer to provide the extended lift height necessary to load the B-1B bomber.
At the Andrews Air Force Base meeting, Standard employees, including Dean Oswald, Harry Mankey, Ray Dean and Charles Garner, were invited to brief Air Force personnel on the 60K Loader concept. The Standard employees used view-graphs containing information and drawings from the 60K Loader Unsolicited Proposal, but Standard personnel did not take along copies of the unsolicited proposal to the meeting, and left the meeting with the original viewgraphs which they used for their presentation. Moreover, Standard personnel testified that they handed no documents out at the meeting. At the conclusion of their briefing, Standard employees left the conference room and AAI personnel entered the room and began their own briefing of the Air Force personnel.
The AAI staff attending the briefing at Andrews Air Force Base included A1 Wood, Don Tuttle, Theodore Alfriend and Jerry Stuth. AAI briefed the members of the Air Force on its proposed method of loading the B-1B bomber. AAI proposed building a powered lift adapter which would sit on top of the MHU-173/E trailer and provide it with additional lift height capability necessary to load the B-1B bomber. Somehow, during AAI’s briefing, but following Standard’s briefing (at which the AAI personnel had not been present), Don Tuttle obtained and removed copies of drawings from Standard’s 60K Loader Unsolicited Proposal from the briefing room. Mr. *21 Tuttle testified that he showed the papers to a few people and took them back to AAI and placed them in his files, where they were found during the discovery in this case. 16 In a similar vein, Theodore Al-friend testified at trial: “And, it was during our presentation that we found this group of drawings in a manila folder under a chair in the briefing room.” He further testified that when he left the briefing room, they took the Standard materials with them and that when they got back to AAI they looked at the materials and placed them in a file at AAI Corporation which was accessible to AAI staff engineers. 17 In addition to these drawings, the materials AAI took from the July meeting held at Andrews Air Force Base included Standard’s letter to Colonel Marchiando, by which Standard conveyed its unsolicited proposal to the Air Force and which contained Standard’s confidential contract proposal. 18
Following the Andrews Air Force Base meeting, Standard employees briefed personnel throughout the United States Air Force on the proposed 60K loader. The personnel included: the Air Force Systems Command Staff, the Aeronautical Systems Division at Wright-Patterson Air Force Base, the Strategic Air Command, and the Armament Division at Eglin Air Force Base. Additional copies of the 60K Loader Unsolicited Proposal and revisions thereof were sent to a number of USAF personnel, at various Air Force Commands. At least twenty meetings occurred among Standard and Air Force personnel between August, 1982, and December, 1983, concerning Standard’s 60K Loader Unsolicited Proposal. In total, Standard presented more than thirty briefings to more than 100 Air Force personnel on the 60K Loader. During some of these briefings, Standard distributed copies of briefing charts and copies of its 60K Loader Unsolicited Proposal, which all bore proprietary markings. The briefings generated considerable interest and encouragement on the part of the Air Force.
During this same period of time, three air frame manufacturers were bidding on the Common Strategic Rotary Launcher (CSRL) program. The air frame manufacturers included Rockwell International, Grumman Aerospace and the Boeing Military Airplane Company. One of the requirements of the CSRL program was to provide ground support equipment. Standard hoped that its 60K Loader would be chosen as the ground support equipment to load the CSRL. Standard, therefore, began briefing the air frame manufacturers on the 60K Loader.
Standard concluded that if it were forced to wait another year or two before its unsolicited proposal were approved, it would be too late to meet the B-1B bomber’s fielding and support requirements. Accordingly, in an attempt to demonstrate the feasibility of the 60K Loader design to the Air Force, Standard committed eighteen members of its twenty-five person engineering department for a period of six or seven months to design an actual prototype. Designing and building the 60K Loader prototype cost Standard in excess of $1.2 million. Design of the prototype *22 began in the fall of 1982 and was completed by March of 1983. Key officials from various Air Force organizations came to Standard’s facility to view work on, and demonstrations of the prototype. Standard encountered problems in building the prototype of the 60K Loader. There were significant differences between the 60K Loader prototype and the conceptual drawings which were part of the unsolicited proposal. In addition, the 60K Loader prototype differs from the figures which appear in the patent in suit and which depict the first and second embodiments of the invention. Specifically, the conceptual drawings in the unsolicited proposal and in the patent in suit disclose a trailer having a mechanical arc compensator while the prototype trailer uses a hydraulic arc compensator. Harry Mankey, one of the inventors of the ’548 patent admitted that it would have been virtually impossible to make the lifting mechanism disclosed in the unsolicited proposal and the ’548 patent work properly because the depicted mechanical arc compensator would not fit within the allowed space envelope. Accordingly, when Standard built the prototype of the 60K Loader it abandoned the mechanical arc compensator and substituted a hydraulic arc compensator.
In 1982, while Standard was promoting its 60K Loader concept throughout the USAF, AAI was proposing that a powered lift adapter designed to be mounted on top of the MHU-173/E be used to add the additional lift height required to load the B-1B bomber. In January, 1982, AAI submitted a study of alternative means for loading the B-1B bomber to International Rockwell, the prime contractor for the B-1B aircraft. 19 Subsequent to AAI’s submission, Rockwell issued a request for proposal which included the powered lift adapter. Both AAI and Standard submitted bids. While Standard was about to build a prototype of its 60K Loader design, AAI continued to promote the powered lift adapter for loading the B-1B bomber until late in 1983.
The Strategic Weapons Loader Competition — MHU-196/M
As late as August 2, 1983, AAI was briefing the USAF on the use of the powered lift adapter for the MHU-173/E and its advantages over Standard’s proposed 60K Loader. Significantly, during an August 2, 1983 briefing on the advantages of the powered lift adapter over Standard’s 60K Loader Unsolicited Proposal, AAI used briefing papers which included one of Standard’s conceptual drawings, similar to Figure 1 of the patent in suit and identical to one of the figures included in Standard’s unsolicited proposal. Of particular note is that previously, it had been AAI’s contention that the best approach to loading the B-1B bomber was the MHU-173/E powered lift adapter combination. Nevertheless, within approximately three months of August 2, 1983, AAI abandoned the powered lift adapter concept completely. AAI redesigned the MHU-173/E trailer, eliminating or changing more than two-thirds of its parts, significantly reducing the complexity of the design and most significantly, providing the MHU-173/E with a new lift system which enabled it to load the new B-1B bomber without auxiliary equipment.
In August of 1983, AAI began the project to redesign the MHU-173/E. That project resulted in a Value Engineering Change Proposal (VECP) to the MHU-173/E contract, making design changes to the MHU-173/E trailer and enabling it to load the B-1B bomber. Essentially, AAI proposed to replace the lift mast system presently employed by the MHU-173/E loader with a lift system substantially similar to Standard’s patented invention.
AAI’s project to redesign the MHU-173/E trailer began with a meeting held on August 8, 1983. 20 As described by the *23 would-be inventor of AAI’s new loader design, Mr. Thomas DeSalvo, the purpose of the August 8, 1983 meeting was to begin a new project “[t]o take a fresh look at modifying the MLT [Munitions Lift Trailer] to attain the loading capabilities of airplanes other than the B-52.” On direct examination, Mr. DeSalvo was questioned as to when he had first seen the '548 patent or the drawings from Standard’s unsolicited proposal. He claimed that he had seen neither before designing 173 VECP.
At the trial, the notes taken by Mr. DeSalvo of the August 8, 1983 meeting were introduced and give a clear indication of what transpired at that meeting. Mr. DeSalvo’s notes include the front side of three separate pages, clipped together, as well as a copy of the back side of the first page of those notes. Mr. DeSalvo’s notes contain references to Standard’s 60K loader design, most notably the phrase “don’t look at MLT or Standard’s design,” and the statement “STANDARD BEETS [sic] US NOW ... STANDARD HAS HDWR THIS MONTH.” It is curious that, notwithstanding these references in his notes, Mr. DeSalvo testified that he independently derived the conceptual design of the accused trailer, the MHU-196/M, and that his new design concept for a loader capable of loading the B-52 and B-1B bombers was based on the Scott Russell Straight-line Motion mechanism as depicted below in Figure 7. Mr. DeSalvo described his new design concept for the MHU-173/E as having the same lift arms disclosed in Standard’s patent in suit, as well as Standard’s 60K Unsolicited Proposal. Mr. DeSalvo also stated that the lift arm configuration, with offset portions, was a required design in order for the new design concept to load the B-1B bomber. AAI’s modified trailer design, originally referred to as the MHU-173/E VECP, is presently designated as the MHU-196/M loader.
Figure 7.
[[Image here]]
The Scott Russell Straight-line Motion mechanism includes two links. The first link contains points ABC. The second link contains DB. The short link DB is half the length of the longer link ABC and is pivot-ally connected to the mid-point B of the longer link. Point D is pinned and only allowed to rotate. Point C is constrained so that it may only move horizontally. The Scott Russell mechanism was designed to *24 provide vertical motion of Point A if Point C is moved horizontally or Point D is rotated.
AAI submitted its fully documented new design in draft form to the Aeronautical Systems Division at Wright-Patterson Air Force Base on October 27, 1983 as a proposed Value Engineering Change Proposal (VECP). 21 The modifications proposed by AAI were primarily associated with the lifting mechanism of the MHU-173/E trailer. 22 About the time AAI informally submitted its VECP under the MHU-173/E contract, Standard learned from Rockwell that it had been the successful bidder for the powered lift adapter. Upon receipt of AAI’s VECP, the powered lift adapter requirement was cancelled by the B-l System Program Office at Wright-Patterson Air Force Base. AAI’s VECP was formally received by the Aeronautical Systems Division at Wright-Patterson Air Force Base on December 23, 1983, and it was approved seven days later on December 30. Before the VECP was formally submitted, much less approved, the Aeronautical Systems Division at Wright-Patterson Air Force Base had already given AAI permission to use two MHU-173/E chassis, already property of the USAF, to build a prototype VECP trailer. Less than a month after AAI formally submitted its VECP, and only three weeks after the VECP was approved, a preliminary design review for AAI’s VECP was held on January 18, 1984.
On January 25, 1984, Standard protested AAI’s submission and the Air Force’s approval of the VECP, principally on the grounds that the procurement action authorized not a minor modification of the MHU-173/E, but rather a major new design resulting in a new vehicle, and that such action would amount to unfair sole source procurement with AAI and, therefore, would be in conflict with the competitive procurement process for the Simplified Strategic Weapons Loader. The Office of the Assistant Secretary of the Air Force prepared a response to Standard’s claims regarding whether the VECP with AAI was a major new design resulting in a new vehicle and whether it, therefore, should be ineligible for submission as a VECP and also whether the AAI VECP was, perhaps, not responsive to the strategic weapons loader (SWL) requirement. 23
*25 AAI’s YECP was submitted following approval of the Strategic Weapons Loader or Simplified Munitions Lift Trailer program at Eglin Air Force Base. A primary source selection team was chosen to select the winner of the Strategic Weapons Loader competition. Standard, PACCAR and Wilson Manufacturing submitted proposals, and PACCAR was selected as the new contractor for the Strategic Weapons Loader. A comparative evaluation team was then assembled to recommend a winner of the Strategic Weapons Loader program in competition with the AAI’s VECP. The final decision was made in favor of PACCAR; and in August of 1985, PACCAR was awarded the Strategic Weapons Loader contract. However, for reasons apparently beyond PACCAR’s control, PACCAR began development of the Strategic Weapons Loader later than required under the contract schedule. PACCAR never delivered under the contract and, in early 1985, PAC-CAR’s contract for the Strategic Weapons Loader was terminated for default due to an inadequate design and for failure to meet the delivery schedule. 24
*26 Figure 8.
[[Image here]]
AAI was, subsequently, awarded a sole source contract pursuant to the VECP (now designated the MHU-196/M), depicted in Figure 8, and it has manufactured and delivered all of the accused MHU-196/M trailers to date. 25 Following the approval of the VECP, three employees of the Aeronautical Systems Division at Wright-Patterson Air Force Base, Mr. Joe Gordy, Lieutenant Colonel G. Gordon Kissner and Colonel James E. Foster, all involved in the approval of the VECP, retired from the USAF and were, subsequently, employed by AAI. 26
Minor modifications were subsequently made to the MHU-196/M loader design to adapt it to load the Advanced Technology Bomber. The modified version of the trailer is identified as the MHU-204/M. The defendant has stipulated that at least one MHU-204/M trailer has been manufac *27 tured for the USAF. Like the MHU-196/M, procurement of the MHU-204/M, to date, has also been from AAI, by sole source contract.
The Patent in Suit
On February 18, 1982, after working on the new loader design for approximately two to three months, preliminary drawings of the first two embodiments of the invention, depicted in Figures 9 and 10 respectively, 27 were sent to Standard’s outside patent counsel, Michael A. O’Neil, by Mr. Charles Garner, Vice President and in-house General Counsel at Standard. Later in 1982, the third embodiment of the invention, depicted in Figure 11, 28 was conceived. The third embodiment of the ’548 patent was a variation on the first and second embodiments in which the lift mechanism was flipped upside down. On September 28,1982, Standard filed a patent application covering the 60K Loader, disclosing all three embodiments of the invention.
Figure 9.
[[Image here]]
*28 Figure 10 -
[[Image here]]
In the first embodiment of the invention, illustrated in Figure 9, the front and rear lift arms extend in opposite directions. In the second embodiment, illustrated in Figure 10, the lift arms extend in the same direction, and point towards the rear of the trailer. The second embodiment is disclosed in Standard’s 60K Loader Unsolicited Proposal and it is this embodiment of the ’548 patent which Standard built as a prototype.
In the first and second embodiments, the lift arms are pinned to the trailer frame and slide in the lift beams. In the third embodiment, illustrated in Figure 11, the lift arms are pinned to the lift beams and roll or slide in the trailer frame. The third embodiment is virtually identical to the accused MHU-196/M and MHU-204/M trailers.
Figure 11.
[[Image here]]
*29 Standard filed its original patent application on September 28, 1982. The application contained 26 claims, including, in pertinent part the following: 29
1. An aerial weapons handling trailer for receiving, transporting and lifting weapons packages characterized by a predetermined width comprising:
a frame including first and second longitudinally extending beams spaced apart more than the predetermined width and a cross beam interconnecting the front ends of the longitudinally extending beams;
at least two front wheels and at least two rear wheels for supporting the front and rear ends of the frame, respectively;
means supporting the front and rear wheels for pivotal movement between first orientations wherein the wheels support the frame for movement in a direction extending substantially parallel to the longitudinally extending beams of the frame and second orientations wherein the wheels support the frame for movement in a direction extending substantially perpendicular to the longitudinally extending beams of the frame;
drive means for selectively rotating at least one of the front wheels and at least one of the rear wheels to propel the trailer;
at least four lift arms;
means supporting at least two of the lift arms on the first longitudinally extending beam of the frame for pivotal movement with respect thereto;
means supporting at least two of the lift arms on the second longitudinally extending beam of the frame for pivotal movement with respect thereto;
hydraulic cylinder means connected between the frame and lift arms for selecfive actuation to pivot the lift arms relative to the frame;
first and second lift beams;
means supporting the first lift beam on the distal ends of the lift arms that are pivotally supported on the first longitudinally extending beam of the frame;
means supporting the first lift beam on the distal ends of the lift arms that are pivotally supported on the second longitudinally extending beam of the frame;
the distal ends of the lift arms being inwardly offset to support the lift beams in a spaced apart relationship which is not greater than the predetermined width of the weapons package; and
the lift arms being pivotable under the action of the hydraulic cylinder means to position the lift beams beneath a weapons package that is received between the longitudinally extending beams of the frame and thereafter to move the lift beams of the weapons package carried thereby upwardly between the longitudinally extending beams of the frame and further upwardly into the weapons bay of an aircraft.
******
13. 30 The aerial weapons handling trailer according to Claim 1 wherein each lift arm is connected to one of the longitudinally extending beams of the frame for pivotal and sliding motion with respect thereto, wherein the distal end of each lift arm is pivotally connected to one of the lift beams, and further including a bell crank pivotally supported on the frame and connected between the hydraulic cylinder means and the lift arms, said bell crank being responsive to actuation of the hydraulic cylinder means *30 to pivot the lift arm and thereby raise and lower the lift beam.
On March 8,1983, before the First Office Action in the case, Standard filed with the United States Patent and Trademark Office, a Prior Art Statement, pursuant to Rule 1.56 of the Patent and Trademark Office Rules, 31 bringing to the attention of the Patent and Trademark Office prior art which the inventors believed to be material to the application. In the Prior Art Statement, Standard identified the MHU-7/M and MHU-33/M trailers as the closest prior art of which it was aware. Original drawings of the MHU-7/M and MHU-33/M trailers taken from one of Standard’s catalogs were included with Standard’s Prior Art Statement as submitted. These drawings also were included in the ’548 patent issued on June 11, 1985, as prior art references which the Patent Examiner considered before the issuance of the patent in suit. Standard also pointed out in the Prior Art Statement that the MHU-7/M and MHU-33/M, “apparatus manufactured by Standard Manufacturing Company, Inc., have been in public use and on sale more than one year prior to the filing date of the above-identified application. Although other apparatus similar to that of Standard Manufacturing are manufactured by others, they are no more pertinent than the references of this group.”
Standard then distinguished the claims submitted in the original application from the prior art MHU-7/M and MHU-33/M trailers. In doing so, Standard pointed out that:
[T]he references herein comprise weapons loading trailers which are relevant to the present invention in certain respects. Each reference utilizes a frame having a pair of longitudinally extending beams interconnected by a cross beam at the front ends thereof. The front and rear ends of the frame are each supported by at least two wheels. Each of the longitudinal beams of the frame has a pair of lift arms pivoted thereto. Each pair of lift arms has a lift beam pivotally mounted to the distal ends thereof. Hydraulic cylinder means a,re included for pivoting both pairs of lift arms to raise and lower the lift beams.
Attempting to distinguish what it considered the most relevant prior art trailers from the invention disclosed in the application, Standard represented:
Notwithstanding these and other similarities, Applicants respectfully submit that the present invention is patentably distinct from the references of this group [prior art MHU-7/M and MHU-33/M trailers]. For example, the present invention is capable of lifting a weapons package into the weapons bay of an aircraft without the use of auxiliary lifting apparatus. This feature is accomplished by providing lift beams having outside surfaces which are spaced apart no further than the predetermined width of the weapons package. Therefore, the additional expense and operational complications associated with the references of this group [including the MHU-7/M and MHU-33/M trailers], including the need for an auxiliary device to lift and load weapons packages in particular instances, are obviated by the present invention.
On December 29, 1983, Standard submitted a Preliminary Amendment to its application, prior to the first Office Action of the Patent Examiner, Stuart Millman. In the Preliminary Amendment, Standard advanced an additional 9 claims, Claims 27-38, to be appended to its original application. The additional claims read as follows:
27. In a load handling trailer for receiving, transporting and lifting a load having a predetermined width, said trailer including a frame having at least two lift arms connected thereto, wherein said lift arms are supported on said frame for lifting, lowering and supporting said load, a plurality of load engaging means *31 which are each connected to the distal ends of said lift arms, and further including means for selectively actuating said lift arms relative to said frame to lift, lower and support said load, the improvement comprising:
the ends of said lift arms adjacent and connected to said frame being positioned in a spaced apart relationship greater than said predetermined width of said load to provide additional stability for said load handling trailer when a load is supported thereby; and
the distal ends of said lift arms being inwardly offset from their respective points of connection to said frame toward the center of said frame to position said load engaging means, in a spaced apart relationship which is no greater than said predetermined width of said load.
28. The improvement according to Claim 27 wherein each of said lift arms includes a first portion adjacent and connected to said frame, an offset portion positioned at the end of said first portion remote from the point of connection of said lift arm to said frame, extending inwardly therefrom and toward the center of said frame, and a third portion, including the distal end of said lift arm, extending from said offset portion and positioned substantially inwardly from said first portion of said lift arm; and said third portion of said lift arm being disposed directly beneath the bottom of said load.
29. The improvement according to Claim 27 wherein each of said lift arms pivots with respect to said frame in response to said actuation means to lift, lower and support said load.
30. The improvement according to Claim 29 wherein each of said lift arms pivots with respect to said frame along a substantially vertical plane to lift, lower and support said load.
31. The improvement according to Claim 30 wherein said first and third portions of each lift arm are aligned with the vertical plane along which said lift arm pivots to lift, lower and support said load.
32. A method of vertically transporting a load, having a predetermined diameter through an opening of minimal clearance comprising:
providing load supporting means for engaging and supporting said load along the bottom surface thereof at points within the outer-most lateral perimeter of said load;
providing lifting means, operatively connected to said supporting means for lifting, lowering and supporting said supporting means, wherein each of said lifting means includes a first portion positioned within the outer-most lateral perimeter of said load adjacent to and extending from said load supporting means and a remaining second portion of said lifting means positioned outside of the outer most lateral perimeter of said load;
providing a frame operatively connected to and supporting said lifting means at points positioned outside of the outer most lateral perimeter of said load, thereby providing additional stability in the handling of said load; and
actuating said lifting means to selectively pass said load, said load supporting means and some length of said first portion of said lifting means vertically through said opening.
33. The method according to Claim 32 wherein the step of providing lifting means includes providing at least two lifting arms connected to said frame at points which are positioned in a spaced apart relationship greater than said predetermined diameter of said load to provide stability in the handling of said load.
34. The method according to Claim 33 wherein the step of providing lifting means includes providing at least two lifting arms having ends distal from the ends thereof connected to said frame, which are inwardly offset toward the center of said frame to position said load supporting means within the outer most lateral perimeter of said load.
35. The method according to Claim 34 wherein said step of providing lifting means includes providing at least two lifting arms each having a first portion adjacent said frame, an offset portion *32 positioned at the end of said first portion remote from the point of connection of said lifting arm to said frame and extending inwardly therefrom, and a third portion extending from said offset portion and positioned substantially inwardly from said first portion of said lifting arm.
36. The method according to Claim 35 wherein said step of actuating said lifting means includes pivoting each of said lifting arms with respect to said frame.
37. The method according to Claim 36 wherein said step of actuating said lifting means includes pivoting each of said lifting arms with respect to said frame along a substantially vertical plane.
38. The method according to Claim 37 wherein said step of providing lifting means includes aligning said first and third portions of each lifting arm with the vertical plane along which said lifting arm is pivoted.
The first Office Action for the ’548 patent was issued by the Patent Examiner on January 11, 1984. This Office Action documented a telephone conversation held on December 13, 1983, between Michael O’Neill, attorney for the plaintiff, and the Patent Examiner, in which, “a provisional election was made without traverse to prosecute the invention of figures 27-36 claims 1-3, 6-13 and 20-25.” Claims 4, 5, 14-19 and 26 were “withdrawn from consideration by the Examiner as being drawn to a non-elected invention.” Claims 6 and 7 were withdrawn because they are dependent on Claim 5, which is a claim that was not elected. 32 In addition, in the first Office Action, the Patent Examiner rejected remaining Claims 1-3, 8-13, and 20-25. Claim 1 was rejected “under 35 U.S.C. 103 as being unpatentable over Taylor in view of Norris.” The Taylor reference, is an Elevating Dolly disclosed in United States Patent No. 2,929,519. The following diagrams are Figures 1 and 4 of the Taylor reference:
[[Image here]]
*33 Taylor reference Figure 4.
[[Image here]]
The Norris reference is United States Patent No. 3,972,379. The Examiner’s discussion of the Norris and Taylor references reads as follows:
Taylor demonstrates a trailer 11 comprising two longitudinally extending beams 19 and 21, cross-member 22, removable cross-member 26, wheel assemblies 18, fores and aft lifting assemblies 14 and 15 and lifting beams 16. The lifting assemblies are pivotally mounted onto the base frame 12 and their distal ends are both pivotally and slidably mounted on the lifting beams 16. Each of the four lifting assemblies is controlled by a hydraulic cylinder. Norris demonstrates a vehicle drive system that comprises four wheels 16, powered by motors M1-M4, that can be pivoted about a vertical axis to allow a vehicle to move in any desired direction.
It would be obvious to modify the wheel assemblies of Taylor to include the type of driving system taught by Norris.
The Examiner also rejected Claims 2, 8, 9, and 20 “under 35 U.S.C. 103 as being unpatentable over Taylor in view of Norris as applied to claim 1” and “further in view of Ryan.” The Ryan reference is United States Patent No. 2,454,840. The Examiner stated:
Ryan demonstrates a lifting trailer comprised of longitudinally extending beams 2 and 3, cross-member 4, lifting beams 29 and 54 and hydraulic cylinders 36 and 37. The lifting beams 29 and 54 are constrained to remain parallel during the lifting cycle and are pivotally attached to the inside of the longitudinally extending beams 2 and 3.
It would be obvious to modify the lifting arms of Taylor to be pivotally mounted on the longitudinal beams and to have them oriented so that they remain parallel, as taught by Ryan, in a system combining the teachings of Taylor and Norris. The shape of the lifting arms is considered to be only a design choice that adds no new, unexpected or unobvious teaching over the prior art.
Finally, the Examiner rejected Claims 3, 10-13 and 21-25 “under 35 U.S.C. 103 as being unpatentable over Taylor in view of Norris and Ryan as applied to claim 1 above, and further in view of the MHU33M or MHU7M bomb trailers.” The Examiner *34 then continued with the following description of his analysis of the prior art trailers, apparently based upon the two diagrams presented by the applicant, Standard, to the Examiner as part of the Prior Art Statement, filed on March 8, 1983:
The dimensional layouts of the MHU33M and MHU7M bomb trailers show a system including a longitudinal adjustment mechanism for moving the lift beams relative to the lift arms, a bell crank used between the lift arm and the hydraulic cylinder powering it and a connection link between the fore and aft bell cranks that also includes a tilt adjustment mechanism.
It would be obvious to include a selective longitudinal position control mechanism, as shown by the MHU33M or the MHU7M, between the lifting arms and lifting beams of Taylor’s system and it would also be obvious to add the bell crank and connecting link, also shown by the MHU33M or the MHU7M, in combination of the teachings of Taylor, Norris, and Ryan. Also, it would be obvious to modify the connecting link in this modified system to include a tilt adjustment mechanism, like the one taught by the MHU33M or the MHU7M. The powering system for operating the tilt mechanism, and the shape of the lift arms are considered to be only design choices over the systems in the prior art.
Following the first Office Action, the Patent Examiner, Mr. Millman, held a telephonic conference with one of Standard’s patent counsel, Gregory Carr, on January 17, 1984. The Examiner Interview Summary Record documenting the conference states that: (1) no exhibit was shown or demonstration was conducted; (2) the claims discussed were 27 through 38; (3) that an agreement “was reached with respect to some or all of the claims in question;” and (4) in Mr. Millman’s handwriting: “Mr. Carr confirmed that claims 27-38, which were amended on 12/28/83, read on the previously elected species as described in Figures 27-36.”
In a second Office Action, dated February 3, 1984, the Patent Examiner stated that the remaining Claims 1-3, 8-13, 20-25 and 27-38 are rejected. Most notably, in the statement of the Examiner which is part of this Office Action, the Examiner rejected the claims added in the first Amendment, Claims 27-38, “under 35 U.S.C. 102(b) as being anticipated by Taylor.” The Examiner wrote: “Note that Taylor shows lift arms having offset elements.”
In response to these two Office Actions, on April 16, 1984, Standard filed a second Amendment to its application for a patent on its Aerial Weapons Handling Trailer. The Amendment reads as follows: 33
Kindly cancel Claims 27 through 38, inclusive, and amend Claims 1, 2 and 20 as follows:
1. (Amended) An aerial weapons handling trailer for receiving, transporting and lifting weapons packages characterized by a predetermined width comprising:
a frame including first and second longitudinally extending beams spaced apart more than the predetermined width and a cross beam interconnecting the front ends of the longitudinally extending beams;
at least two front wheels and at least two rear wheels for supporting the front and rear ends of the frame, respectively;
means supporting the front and rear wheels for pivotal movement between first orientations wherein the wheels support the frame for movement in a direction extending substantially parallel to the longitudinally extending beams of the frame and second orientations wherein the wheels support the frame for movement in a direction extending substantially perpendicular to the longitudinally extending beams of the frame;
[drive means for selectively rotating at least one of the front wheels and at least *35 one of the rear wheels to propel the trailer;]
at least four lift arms;
means supporting the proximal ends of at least two of the lift arms on the first longitudinally extending beam of the frame for pivotal movement with respect thereto;
means supporting the proximal ends of at least two of the lift arms on the second longitudinally extending beam of the frame for pivotal movement with respect thereto;
hydraulic cylinder means connected between the frame and the lift arms for selective actuation to pivot the lift arms relative to the frame;
first and second lift beams;
means supporting the first lift beam on the distal ends of the lift arms that are pivotally supported on the first longitudinally extending beam of the frame;
means supporting the second lift beam on the distal ends of the lift arms that are pivotally supported on the second longitudinally extending beam of the frame;
[the distal ends of the lift arms being inwardly offset to support the lift beams in a spaced apart relationship which is not greater than the predetermined width of the weapons package; and]
the lift arms being pivotable between a first position, wherein the distal ends thereof are disposed adjacent a plane defined by the bottom surfaces of the trailer wheels, and a second position, wherein the distal ends of said lift arms are disposed above the proximal ends thereof, the lift arms including:
a) first portions, including the proximal ends thereof;
b) third portions, including the distal ends thereof; and
c) offset portions rigidly interconnecting the first and third positions thereof;
the first portions of the lift arms supported on the first longitudinally extending beam being spaced from the first portions of the corresponding lift arms supported on the second longitudinally extending beam a distance greater than the predetermined width of the weapons package, such that clearance is maintained between the first portions of the lift arms and the weapons package as the lift arms pivot between the first and second positions;
the outwardly facing surfaces of the third portions of the lift arms supported on the first longitudinally extending beam being spaced from the outwardly facing surfaces of the third portions of the corresponding lift arms supported on the second longitudinally extending beam a distance no greater than predetermined width of the weapons package, such that the third portions of the lift arms do not extend from within the outermost lateral periphery of the weapons package as the lift arms pivot between the first and second portions;
the first and third portions of each lift arm extending from the offset portion thereof to form an obtuse angle, such that when lift arms are in the first position, the first portions thereof extend downwardly from the frame and the third portions thereof extend substantially parallel to the plane defined by the bottom surfaces of the trailer wheels; and
the lift arms being pivotable under the action of the hydraulic cylinder means to position the lift beams beneath a weapons package that is received between the longitudinally extending beams of the frame and thereafter to move the lift beams and the weapons package carried thereby upwardly between the longitudinally extending beams of the frame and further upwardly into the weapons bay of an aircraft.
2. (Amended) The aerial weapons handling trailer according to Claim 1 wherein each of the longitudinally extending beams of the frame is characterized by an inwardly facing surface, [and wherein each of the lift arms includes a] the first portion of each lift arm is pivot-ally connected to one of the longitudinally extending beams of the frame and *36 [extending] extends adjacent and substantially parallel to the inwardly facing surface of the longitudinally extending beam of the frame, [a second portion positioned at the end of the first portion remote from the point of pivotal connection thereof to the longitudinally extending beam of the frame and extending inwardly therefrom,] and [a] the third portion [extending] of each lift arm extends from the [inwardly] offset portion parallel to the [first portion] inwardly facing surface of the longitudinally extending beam of the frame and is positioned substantially inwardly therefrom.
20. (Amended) An aerial weapons handling trailer for receiving, transporting and lifting weapons packages characterized by a predetermined width comprising:
a frame including first and second longitudinally extending beams and a cross beam interconnecting the front ends of the longitudinally extending beams;
the longitudinally extending beams having inwardly facing surfaces spaced apart further than the predetermined width of the weapons package;
at least two front wheels and at least two rear wheels for supporting the front and rear ends of the frame, respectively;
means supporting the front and rear wheels for pivotal movement between first orientations wherein the wheels support the frame for movement in a direction extending substantially parallel to the longitudinally extending beam of the frames and second orientations wherein the wheels support the frame for movement in a direction extending substantially perpendicular to the longitudinally extending beams of the frame;
[drive means for selectively rotating at least one of the front wheels and at least one of the rear wheels to propel the trailer;]
a plurality of lift arms;
means pivotally supporting the proximal ends of at least two of the lift arms on the first longitudinally extending beams of the frame with the lift arms extending substantially parallel to each other;
means supporting the proximal ends of at least two of the lift arms on the second longitudinally extending beam of the frame with the lift arms extending substantially parallel to each other;
[each of the lift arms including a first portion pivotally connected to one of the longitudinally extending beams of the frame and extending adjacent and parallel to the inside surface of the longitudinally extending beam, a second portion extending inwardly from the first portion, in a third portion extending from the second portion substantially parallel to the first portion and positioned substantially inwardly therefrom relative to the longitudinally extending beam of the frame;]
the lift arms being pivotable between a first position, wherein the distal ends thereof are disposed adjacent a plane defined by the bottom surfaces of the trailer wheels, and a second position, wherein the distal ends of said lift arms are disposed above the proximal ends thereof, the lift arms including:
a) first portions, including the proximal ends thereof;
b) third portions, including the distal ends thereof; and
c) offset portions rigidly interconnecting the first and third portions thereof,
the first portions of the lift arms supported on the first longitudinally extending beams being spaced from the first portions of the corresponding lift arms supported on the second longitudinally extending beam a distance greater than the predetermined width of the weapons package, such that clearance is maintained between the first portions of the lift arms and the weapons package as the lift arms pivot between the first and second positions;
the outwardly facing surfaces of the third portions of the lift arms supported on the first longitudinally extending beam being spaced from the outwardly facing surfaces of the third
*37
portions of the corresponding lift arms supported on the second longitudinally extending beam a distance no greater than predetermined width of the weapons package, such that the third portions of the lift arms do not extend from within the outermost lateral periphery of the weapons package as the lift arms pivot between the first and second positions,
the first and third portions of each lift arm extending from the offset portion thereof to form an obtuse angle, such that when the lift arms are in the first position, the first portions thereof extend downwardly from the frame and the third portions thereof extend substantially parallel to the plane defined by the bottom surfaces of the trailer wheels;
a pair of lift beams including [the] a first lift beam supported on the distal ends of the lift arms which are in turn pivotally supported on the first longitudinally extending beam of the frame and a second lift beam supported on the distal ends of the lift arms which are pivotally supported on the second longitudinally extending beam of the frame;
the lift beams having outside surfaces which are spaced apart no further than the predetermined width of the weapons package;
means connecting the distal ends of the [left] lift arms to the lift beams for pivotal movement with respect thereto; and
hydraulic cylinder means connected between the frame and lift arms for selective actuation to pivot the lift arms and thereby raise and lower the lift beams.
Kindly add the following new claims:
39. In a load handling trailer for receiving, transporting and lifting a load having a predetermined width, said trailer including a frame having at least two lift arms pivotally connected to said frame at the proximal ends thereof within said frame, wherein said lift arms are supported on said frame for lifting, lowering and supporting said load, a plurality of loading engaging means which are each connected to the distal ends of said lift arms, and further including means for selectively pivoting said lift arms relative to said frame to lift, lower and support said load, the improvement comprising:
means for supporting said frame at a predetermined distance above an underlying support surface;
said lift arms being pivotable between a first position, wherein the distal ends of said lift arms are disposed adjacent the underlying support surface, and a second position, wherein the distal ends of said lift arms are disposed above the proximal ends thereof;
said lift arms including:
first portions, including the proximal ends thereof, positioned in a spaced apart relationship greater than the predetermined width of said load, such that clearance is maintained between the first portions of said lift arms and said load as said lift arms pivot between said first and second positions;
third portions, including the distal ends thereof, positioned in a spaced apart relationship that is no greater than the predetermined width of said load, such that the outer surfaces of the third portions of said lift arms are spaced apart no more than the predetermined width of said load as said lift arms pivot between said first and second positions; and
offset portions interconnecting the first and third portions thereof;
the first and third portions of said lift arms extending from said offset portions to form an obtuse angle, such that when said lift arms are disposed in said first positions, the first portions thereof extend downwardly from said frame and said third portions thereof extend substantially parallel to the underlying support surface.
40. The improvement according to Claim 39 wherein said lift arms pivot at the proximal ends thereof only about an axis which is substantially horizontal relative to said frame, to lift, lower and support said load.
*38 41. The improvement according to Claim 40 wherein said frame includes first and second longitudinally extending beams spaced apart more than the predetermined width of said load, and wherein each of said lift arms is pivotally connected to one of the longitudinally extending beams.
42. The improvement according to Claim 41 wherein each of the longitudinally extending beams of said frame is characterized by an inwardly facing surface, and wherein the first and third portions of each of said lift arms extend substantially parallel to the inwardly facing surface of the longitudinally extending beam of said frame to which said lift arm is pivotally connected.
43. The improvement according to Claim 40 wherein the first and third portions of each of said lift arms remain ■substantially parallel to a plane which is perpendicular to the relatively horizontal axis about which each said lift arm pivots as said lift arm pivots between said first and second positions.
44. The improvement according to Claim 39 wherein the predetermined distance above the underlying surface at which said frame is supported is at least as great as one-half the height of said load, such that said load is cradled between the longitudinal beams of said frame when said lift arms are in said first position, and such that when said lift arms are in said second position, said load will be raised above the underlying surface to a height that is substantially greater than the height of said load. After the inclusion of the amendments to
the pending patent application, Standard included several pages of Remarks to the Amendment filed April 16, 1984 with the Patent and Trademark Office. In these Remarks, Standard attempted to describe the invention’s uniqueness to the Patent Examiner:
As a result of the previously identified Office Actions, Claims 1 through 3, 8-13, 20-15 and 27-38 stand rejected. Responsive to the grounds of rejection cited in such Office Actions, Claims 1, 2 and 20 are hereby amended, Claims 27-38 are hereby cancelled and new Claims 39-44 are hereby added. Accordingly, Applicants respectfully request reconsideration of and favorable action with respect to all claims presently pending and under consideration in [this] application.
The present invention embodies a number of unique and innovative structural features specifically relating to the lift arms of a load handling trailer. Such features provide a desirable combination of functional characteristics unavailable in prior art devices. Specifically, the load handling trailer of the present invention is capable of lifting and lowering a load having a predetermined width through an opening which allows only minimal side clearance. In addition, the present invention is capable of lifting a load directly from the surface on which both the trailer and the load rest and then transporting the load beneath obstructions providing only minimal overhead clearance. Further, the present invention is more stable than conventional devices when a load is lifted to its fully raised position. These functional characteristics combine to yield a load handling trailer that is far more versatile and reliable than those previously available. As is discussed in greater detail hereinafter, the unique structural configuration of the lift arms of the present invention, as now defined by the claims, provide the aforementioned desirable functional characteristics.
The references cited by the Examiner do not disclose or suggest the structural features providing the highly desirable characteristics of the present invention. A careful review of the structure disclosed by the cited references is necessary for an understanding of the distinctions between the devices disclosed thereby and the present invention. Further, an understanding of the devices disclosed by the cited references will also underscore their respective limitations and conversely, highlight the desirable features of the present invention.
In addition, Standard attempted to distinguish its invention from those inventions *39 cited as prior art by the Patent Examiner in the previous Office Actions:
The patent to Taylor discloses a trailer having lifting assemblies 14 and 15, each supporting a beam 16 connected there-between. The lifting assemblies 14 and 15 are each centrally hinged, such that the assemblies extend and retract in accordion-like fashion. Due to the manner in which the assemblies 14 and 15 extend and retract, the beam 16 cannot be retracted or lowered below the trailer frame 12. In other words, the structural features of the lifting assemblies 14 and 15 limit the range of downward movement of the lift beam 16 to the height of the trailer frame 12. Thus, it is impossible for the device of Taylor to lift a load from the underlying surface or to transport the load below an obstacle allowing only minimal overhead clearance. Furthermore, any attempts to reduce the minimum overhead clearance characteristics of Taylor by lowering the trailer frame 12 would require a corresponding lengthening of lifting assemblies 14 and 15, if the device is to retain the same upper limits of its range movement. Such a correction would reduce the stability of the trailer in Taylor since longer lifting assemblies 14 and 15 are significantly more susceptible to load sway when the lift assemblies are fully extended.
The patent to Ryan discloses a trailer having lift beams 29 and 54 pivotally mounted to the trailer frame 2. The lifting beams 29 and 54 pivot between lower and upper positions to raise or lower a load supported thereby. Although the construction of the Ryan trailer allows for a minimum overhead clearance, the trailer is incapable of lifting a load through an opening allowing only minimum side clearance for the load. Specifically, the entire length of the lifting beams 29 and 54 are spaced apart greater than the width of the load which they support. This is illustrated particularly well in Figure 2 of Ryan, which shows the lifting beams 29 and 54 extending along the sides of the load when they are positioned in the lowered position. However, as if further shown in Figure 2 of Ryan, when the load is lifted into the fully raised position, a portion of the lifting beans 29 and 54 will continuously straddle the sides of the load. Thus, the lifting beams 29 and 54 must extend into any opening through which the load is to be lifted or lowered. Since the lifting beams 29 and 54 are spaced apart a greater distance than the width of the load, the Ryan trailer cannot be utilized to lift or lower a load through an opening allowing only minimal side clearance for the load.
The MHU33M and MHU7M trailers cited by the Examiner are structurally and functionally similar to the Taylor reference. As in Taylor, these trailers are incapable of lifting or lowering a load through an opening which provides minimal side clearance for the load. As is shown by the drawings depicting the MHU33M and MHU7M trailers, the lifting arms extend along the sides of a load supported thereby when the arms are in their lowered position. Therefore, any opening through which the load is lifted or lowered must provide additional clearance for the lifting arms supporting the load. Without such clearance, the MHU33M and MHU7M trailers are incapable of lifting or lowering a load completely through an opening.
Subsequent to Standard’s filing of the Amendment to its pending application, on May 30, 1984, the Examiner issued his third and final Office Action which rejected the plaintiff’s application. The Examiner rejected Claims 1-3, 8-13, 20-25 and 39-44 over the MHU-7/M and MHU-33/M trailers in view of the newly identified Hillberg reference, United States Patent No. 2,934,-228. The relevant elements of the Hillberg reference, specifically, the lift arms which are gradually offset and connected to the outside later surface of the lift beams, can be seen in Figures 2 and 3 of Hillberg patent reproduced below:
*40 Figure 2 of the Hillberg reference.
[[Image here]]
Figure 3 of the Hillberg reference.
[[Image here]]
*41 Specifically, the Examiner’s statement concerning the rejection of the pending claims, attached to the next Office Action stated, in relevant part, as follows:
2. Claims 1-3, 8-13, 20-25 and 39-44 are rejected under 35 U.S.C. 103 as being unpatentable over the MHU33M or the MHU7M trailer in view of Hillberg.
Hillberg demonstrates an article handling trailer comprising a U-shaped frame 12, lift arms 38 and 40, lifting means 36 and lift beams 64. Said lift arms 38 and 40 are shown to be comprised of an offset portion situated between a portion of said at the frame/arm connection 50 and 52 and a portion with pivots at the lift beam/arm connection 66 and 68. This offset portion can be seen best in Figure 3.
It would be obvious to utilize lifting arms with offset portions in the MHU33M or the MHU7M trailers in view of Hillberg’s teaching.
Subsequent to the Patent and Trademark Office’s May 30, 1984 rejection of Standard’s application, one of Standard’s patent counsel, Gregory Carr, appeared, in person, for two interviews with the Examiner assigned to Standard’s application, as well as the Primary Examiner, Mr. Yalenza, in the case. According to the required documentation in the file history of the patent in suit, the first personal interview was conducted on July 19, 1984 between Mr. Carr and Mr. Valenza. The Examiner Interview Summary Record describes the interview by indicating that: (1) no exhibit or demonstration was shown to the examiner; (2) no agreement between the parties was reached; and (3) the parties “discussed importance of third portions 48-54' in applicants structure over the teachings in prior art.” The summary record bears the signature of the primary Examiner, Mr. Valenza.
The file history also contains an Examiner Interview Summary Record documenting the second interview, held on September 10, 1984, with Mr. Carr and Examiners Millman and Valenza present. As described by the Summary Record signed by Stuart Millman, the Examiner during the interview: (1) an exhibit, “photo of prior art, weapons handling trailer” was shown to the Examiners; (2) Standard’s patent counsel and the Examiners discussed Claim 1 of the pending application as well as the “prior art trailers and Hillberg;” and (3) “Examiner suggested deleting in the claims 'width of weapons package’ and inserting ‘width between outermost lateral edges of the lift beams’ and functional language concerning lift beams and third portion of lift arms and operation thereof 34 there widths.”
Subsequent to the two interviews during which the Examiners suggested language to clarify the function of the offset in terms of the lift beams, the proximal and distal ends of the lift arms, and the separation between the lift beams and the lift arms, and in response to the Office Action dated May 30, 1984, Standard submitted, on October 1, 1984, its third and final Amendment to its application. The October 1, 1984 Amendment reads, in pertinent part, as follows:
Kindly cancel Claims 27-39 and 41 and amend Claims 1, 20, 40 and 42-44 as follows: 35
1. (Twice Amended) An aerial weapons handling trailer for receiving, transporting and lifting weapons packages characterized by a predetermined width comprising:
a frame including first and second longitudinally extending beams spaced apart more than the predetermined width and a cross beam interconnecting the front ends of the longitudinally extending beams;
at least two front wheels and at least two rear wheels for supporting the front and rear ends of the frame, respectively;
means supporting the front and rear wheels for pivotal movement between *42 first orientations wherein the wheels support the frame for movement in a direction extending substantially parallel to the longitudinally extending beams of the frame and second orientations wherein the wheels support the frame for movement in a direction extending substantially perpendicular to the longitudinally extending beams of the frame;
at least four lift arms;
means supporting the proximal ends of at least two of the lift arms on the first longitudinally extending beam of the frame for pivotal movement with respect thereto;
means supporting the proximal ends of at least two of the lift arms on the second longitudinally extending beam of the frame for pivotal movement with respect thereto;
hydraulic cylinder means connected between the frame and the lift arms for selective actuation to pivot the lift arms relative to the frame;
first and second lift beams;
means supporting the first lift beam on the distal ends of the lift arms that are pivotally supported on the first longitudinally extending beam of the frame;
means supporting the second lift beam on the distal ends of the lift arms that are pivotally supported on the second longitudinally extending beam of the frame;
the lift arms being pivotable between a first position, wherein the distal ends thereof are disposed adjacent a plane defined by the bottom surfaces of the trailer wheels, and a second position, wherein the distal ends of said lift arms are disposed above the proximal ends thereof, the lift arms including:
a) first portions, including the proximal ends thereof;
b) third portions, including the distal ends thereof; and
c) offset portions rigidly interconnecting the first an third portions thereof;
the first portions of the lift arms supported on the first longitudinally extending beam being spaced from the first portions of the corresponding lift arms supported on the second longitudinally extending beam a distance greater than the predetermined width of the weapons package, such that clearance is maintained between the first portions of the lift arms and the weapons package as the lift arms pivot between the first and second positions;
the lift beams having outside surfaces which are spaced apart less than the inner surfaces of said first portions of said lift arms, thereby allowing said lift beams to be lowered between said first portions of said lift arms;
the outwardly facing surfaces of the third portions of the lift arms supported on the first longitudinally extending beam being spaced from the outwardly facing surfaces of the third portions of the corresponding lift arms supported on the second longitudinally extending beam a distance substantially no greater than the distance between the outermost lateral surfaces of said lift beams, thereby allowing said lift arms to pivot upwardly and insert said lift beams, said third portions of said lift arms and the weapons package upwardly through an opening of minimum clearance with respect to the weapons package, [predetermined width of the weapons package,] such that the portions of the lift arms do not extend from within the outermost lateral periphery of the weapons package as the lift arms pivot between the first and second positions;
the first and third portions of each lift arm extending from the offset portion thereof to form an obtuse angle, such that when the lift arms are in the first position, the first portions thereof extend downwardly from the frame and the third portions thereof extend substantially parallel to the plane defined by the bottom surfaces of the trailer wheels; and
the lift arms being pivotable under the action of the hydraulic cylinder means to position the lift beams beneath a weapons package that is received between the longitudinally extending beams of the *43 frame and thereafter to move the lift beams and the weapons package carried thereby upwardly between the longitudinally extending beams of the frame and further upwardly into the weapons bay of an aircraft.
20. (Twice Amended) An aerial weapons handling trailer for receiving, transporting and lifting weapons packages characterized by a predetermined width comprising:
a frame including first and second longitudinally extending beams and a cross beam interconnecting the front ends of the longitudinally extending beams;
the longitudinally extending beams having inwardly facing surfaces spaced apart further than the predetermined width of the weapons package;
at least two front wheels and at least two rear wheels for supporting the front and rear ends of the frame, respectively;
means supporting the front and rear wheels for pivotal movement between first orientations wherein the wheels support the frame for movement in direction extending substantially perpendicular to the longitudinally extending beams of the frame;
a plurality of lift arms;
means pivotally supporting the proximal ends of at least two of the lift arms on the first longitudinally extending beam of the frame with the lift arms extending substantially parallel to each other;
the lift arms being pivotable between a first position, wherein the distal ends thereof are disposed adjacent a plane defined by the bottom surfaces of the trailer wheels, and a second position, wherein the distal ends of said lift arms are disposed above the proximal ends thereof, the lift arms including:
a) first portions, including the proximal ends thereof;
b) third portions, including the distal ends thereof; and
c) offset portions rigidly interconnecting the first and third portions thereof;
the first portions of the lift arms supported on the first longitudinally extending beam being spaced from the first portions of the corresponding lift arms supported on the second longitudinally extending beam a distance greater than the predetermined width of the weapons package, such that clearance is maintained between the first portions of the lift arms and the weapons package as the lift arms pivot between the first and second positions;
a pair of lift beams including a first lift beam supported on the distal ends of the lift arms which are in turn pivot-ally supported on the first longitudinally extending beam of the frame and a second lift beam supported on the distal ends of the lift arms which are pivotally supported on the second longitudinally extending beam of the frame;
the lift beams having outside surfaces which are spaced apart less than the inner surfaces of said first portions of said lift arms, thereby allowing said lift beams to be lowered between said first portions of said lift arms;
the outwardly facing surfaces of the third portions of the lift arms supported on the first longitudinally extending beam being spaced from the outwardly facing surfaces of the third portions of the corresponding lift arms supported on the second longitudinally extending beam a distance substantially no greater than the distance between the outermost lateral surfaces of said lift beams, thereby allowing said lift arms to pivot upwardly and insert said lift beams, said third portions of said lift arms and the weapons package upwardly through an opening of minimum clearance with respect to the weapons package, [predetermined width of the weapons package,] such that the third portions of the lift arms do not extend from within the outermost lateral periphery of the weapons package as the lift arms pivot between the first and second position;
the first and third portions of each lift arm extending from the offset portion *44 thereof to form an obtuse angle, such than when the lift arms are in the first position, the first portions thereof extend downwardly from the frame and third portions therefor extend substantially parallel to the plane defined by the bottom surfaces of the trailer wheels;
[a pair of lift beams including a first lift beam supported on the distal ends of the lift arms which are in turn pivotally supported on the first longitudinally extending beam of the frame and a second lift beam supported on the distal ends of the lift arms which are pivotally supported on the second longitudinally extending beam of the frame;
the lift beam having outside surfaces which are spaced apart no further than the predetermined width of the weapons package;]
means connecting the distal ends of the lift arms to the lift beams for pivotal movement with respect thereto; and
hydraulic cylinder means connected between the frame and lift arms for selective actuation to pivot the lift arms and thereby raise and lower the lift beams.
Also included as part of Standard’s October 3, 1984 filing with the Patent and Trademark Office is a Remarks section in which Standard responded to the final Office Action, dated May 30, 1984, and argued the patentability of its invention over the prior art. The Remarks section states, in pertinent part, the following:
Responsive to the Office Action dated May 30, 1984, independent Claims 1 and 20 are hereby amended to more distinctly define the present invention. Specifically, through such amendments applicants have incorporated language which was suggested by Examiners Millman and Valenza during an interview which took place on September 10, 1984. Independent Claim 39 is hereby cancelled and Claims 40 and 42-44 are hereby amended to depend from Claim 20. Claim 43 is further amended to cure a typographical error cited by the Examiner. Reconsideration of the above-identified application in light of the foregoing amendments is respectfully requested.
Applicants direct the Examiner to the Remarks section of their amendment, filed on April 11, 1984, for its discussion of the desirable features provided by the present invention, but undisclosed by the prior art.
Claims 1-3, 8-13, 20-25, 40 and 42-44 stand rejected under 35 U.S.C. § 103 as being unpatentable over the MHU 33M or MHU 7M trailer, (hereinafter “MHU trailers”) manufactured by the assignee of the present invention, in view of the Hillberg reference. Attached hereto as Exhibit A is a photograph which more adequately illustrates the structure and operation of the MHU trailers than do the materials submitted with the Prior Art Statement filed in the above-identified application. Applicants respectfully submit that the present invention is patentably distinguishable from the reference cited by the Examiner, either singly or in combination.
Exhibit A illustrates that the MHU trailers are incapable of lifting a load from the ground and inserting the load through an opening of minimal lateral clearance. This is due to the construction of the lifting arms of these trailers, which do not contain the dog-leg and offset features claimed in the above-identified application. Therefore, such trailers require that their loads be equipped with lifting pins which extend from the lateral surfaces of the load. Such lifting pins allow the load to be lowered between the lifting arms of the MHU trailers. Clearly the lifting arm arrangement of the MHU trailers requires an opening allowing a substantial amount of clearance adjacent the lateral surfaces of the load to accommodate insertion of both the load and the lifting arms there-through.
The Examiner contends that it would be obvious to combine the Hillberg reference with the MHU trailers to yield the combination of features claimed in the above-identified application. However, Applicants respectfully submit that Hill-berg does not disclose or even suggest the arrangement of lift arms and lift *45 beams claimed in the above-identified application.
Conspicuously absent from the disclosure of Hillberg is any reference to the ability of the lift arm and lift beam arrangement to lift the load above the side beams of the vehicle and to then insert the load through an opening of minimum clearance. In fact, careful study of Figure 3 of Hillberg reveals that the entire length of the lift arms 38 and 40 extend outside of the outermost lateral perimeter of the load which they support. Moreover, rather than incorporating a true offset portion, such as that claimed in the above-identified application, the lift arms of Hillberg gradually extend outwardly from the lift beams to the trailer. This is perhaps more clearly illustrated by the top view shown in Figure 2. Therefore, incorporation of the lift arms 38 and 40 of Hillberg in the MHU trailers would fall far short of providing the highly desirable capabilities found in the present invention.
It is Applicants’ understanding, from the Examiner Interview of September 10, 1984, that the Examiner agrees that the present invention is patentably distinguishable from the cited combination of Hillberg and the MHU trailers. However, Examiners Valenza and Millman suggested that independent Claims 1 and 20 be amended to define the present invention in terms which can he interpreted independently of the particular load with which the claimed invention is utilized. It was also suggested by Examiners Valenza and Millman that Claims 1 and 20 include language describing the function performed by the present invention.
Accordingly, Claims 1 and 20 are hereby amended to define the spacing between the outside lateral surfaces of each pair of lift arms in terms of the spacing between the lift beams which they support. In addition, language is hereby incorporated to emphasize the primary function of the present invention. Please note that many of the amendments hereby effected in Claim 20 were necessary to properly provide an antecedent basis for such additional structural and functional language. Applicants stand ready to work further with the Examiner if necessary, to arrive at acceptable claim language.
9{C Jjt J*S $ S¡C *
Following the submission of Standard’s Amendment, described above, the file wrapper or history of the patent in suit contains a fourth Examiner Interview Summary Record. The fourth interview summary describes a telephonic interview between Standard’s patent counsel, Mr. O’Neil, and Examiner Millman held on October 9, 1984. The record reports that: (1) no exhibit was shown or demonstration was conducted; (2) an agreement was reached with respect to the some or all of the claims in question; (3) the parties discussed Claims 4-7, 14-19 and 26; and (4) the Examiner represents that: “Attorney O’Neil agreed to the changes in the claim which will be done by Examiner’s Amendment attached herewith.” This fourth interview summary record also bears the signature of Examiner Millman.
Following the final interview summary record, the file wrapper contains documents which indicate that the Examiner had concluded to allow certain claims of the pending application. Specifically, the Notice of Allowability, which was mailed October 22, 1984, states that Claims 1-3, 8-13, 20-25, 40, 42, 43 and 44 of the present invention were allowed by the Examiner in view of: (1) the applicants communication filed October 1, 1984; 36 (2) an “interview *46 summarized on the attached Examiner Interview Summary Record;” and (3) the “attached Examiner’s Amendment.” The Notice of Allowability was signed by Primary Examiner Valenza and initialized by Examiner Millman.
The application for the present invention was then reviewed by the appropriate military personnel, including Air Force personnel, Charles Anthony and Colonel Marchiondo, for a determination as to whether the information disclosed therein, in anyway contained classified information. Subsequently, a Notice of Allowance and Issue Fee Due was mailed to Standard’s patent counsel on November 26, 1984. The document indicates that the application for the patent in suit was closed and, following examination, has been found “allowable for issuance of Letters Patent.”
On March 25, 1985, prior to the issuance of the patent in suit, Standard filed a document transmitting formal drawings for inclusion in the application for Standard’s patent entitled Aerial Weapons Loading Trailer and filed a Supplemental Information Disclosure Statement. Pursuant to the duty of disclosure outlined in the Rules of the Patent and Trademark Office, Standard determined that it should supplement the prior art references already in its application with any additional references which might have been pertinent to the investigation of its application. Following a list of supplemental references, Standard’s filing, dated March 25, 1984, includes a Remarks section in which Standard attempted to distinguished the prior art references cited in the supplemental disclosure statement. As indicated in the file wrapper, the March 25, 1985 Supplemental Information Disclosure Statement was “placed in the file but ha[s] not been considered since the provisions of MPEP [Manual of Patent Examiners Procedures] for information filed after the claims have been indicated as allowable have not been satisfied,” and, further, Standard did not file a “petition under 37 CFR 312(b) with appropriate fee.” 37
The ’548 patent for the Aerial Weapons Handling Trailer was issued to Standard, as assignee of the inventors, on June 11, 1985. As issued, the pertinent claims of the patent in suit, Claims 1 and 9, read as follows:
1. An aerial weapons handling trailer receiving, transporting and lifting weapons packages characterized by a predetermined width comprising:
a frame including first and second longitudinally extending beams spaced apart more than the predetermined width and a cross beam interconnecting the front ends of the longitudinally extending beams;
at least two front wheels and at least two rear wheels for supporting the front and rear ends of the frame, respectively;
means supporting the front and rear wheels for pivotal movement between first orientations wherein the wheels support the frame for movement in a direction extending substantially parallel to the longitudinally extending beams of the frame and second orientations wherein the wheels support the frame for movement in a direction extending substantially perpendicular to the longitudinally extending beams of the frame;
at least four lift arms;
*47 means supporting the proximal ends of at least two of the lift arms on the first longitudinally extending beam of the frame for pivotal movement with respect thereto;
means supporting the proximal ends of at least two of the lift arms on the second longitudinally extending beam of the frame for pivotal movement with respect thereto;
hydraulic cylinder means connected between the frame and the lift arms for selective actuation to pivot the lift arms relative to the frame;
first and second lift beams;
means supporting the first lift beam on the distal ends of the lift arms that are pivotally supported on the first longitudinally extending beam of the frame;
means supporting the second lift beam on the distal ends of the lift arms that are pivotally supported on the second first longitudinally extending beam of the frame;
the lift arms being pivotable between a first position, wherein the distal ends thereof are disposed adjacent a plane defined by the bottom surfaces of the trailer wheels, and a second position, wherein the distal ends of said lift arms are disposed above the proximal ends thereof, the lift arms including:
(a) first portions, including the proximal ends thereof;
(b) third portions, including the distal ends thereof; and
(c) offset portions rigidly interconnecting the first and third portions thereof; the first portions of the lift arms sup-
ported on the first longitudinally extending beam being spaced from the first portions of the corresponding lift arms supported on the second longitudinally extending beam a distance greater than the predetermined width of the weapons package, such that clearance is maintained between the first portions of the lift arms and the weapons package as the lift arms pivot between the first and second positions;
the lift beams having outside surfaces which are spaced apart less than the inner surfaces of said first portions of said lift arms, thereby allowing said lift beams to be lowered between said first portions of said lift arms;
the outwardly facing surfaces of the third portions of the lift arms supported on the first longitudinally extending beam being spaced from the outwardly facing surfaces of the third portions of the corresponding lift arms supported on the second longitudinally extending beam a distance substantially no greater than the distance between the outermost lateral surfaces of said lift beams, thereby allowing said lift arms to pivot upwardly and insert said lift beams, said third portions of said lift arms and the weapons package upwardly through an opening of minimum clearance with respect to the weapons package, such that the third portions of the lift arms do not extend from within the outermost lateral periphery of the weapons package as the lift arms pivot between the first and second positions;
the first and third portions of each lift arm extending from the offset portions thereof to form an obtuse angle, such that when the lift arms are in the first position, the first portions thereof extend downwardly from the frame and the third portions thereof extend substantially parallel to the plane defined by the bottom surfaces of the trailer wheels; and
the lift arms being pivotable under the action of the hydraulic cylinder means to position the lift beams beneath a weapons package that is received between the longitudinally extending beams of the frame and thereafter to move the lift beams and the weapons package carried thereby upwardly between the longitudinally extending beams of the frame and further upwardly into the weapons bay of an aircraft.
$ * * # * *
9. The aerial weapons handling trailer according to claim 1 wherein each lift arm is connected to one of the longitudinally extending beams of the frame for pivotal and sliding motion with respect *48 thereto, wherein the distal end of each lift arm is pivotally connected to one of the lift beams, and further including a bell crank pivotally supported on the frame and connected between the hydraulic cylinder means and the lift arms, said bell crank being responsive to actuation of the hydraulic cylinder means to pivot the lift arm and thereby raise and lower the lift beam.
* * * * * *
DISCUSSION
The plaintiff, Standard Manufacturing Company, Inc. (Standard), filed this action to recover compensation for the government’s alleged use of the subject matter claimed in United States Patent No. 4,522,-548 (the ’548 patent), entitled Aerial Weapons Handling Trailer, filed September 28, 1982.' The defendant contends, however, that it is not liable for infringement of the patent in suit because: (1) the defendant has proven at trial, by clear and convincing evidence, that the ’548 patent is invalid for anticipation and/or obviousness, because the claimed invention would have been obvious to one of ordinary skill in the art at the time the invention was made, and/or (2) the defendant has proven by clear and convincing evidence that the ’548 patent is unenforceable in view of Standard’s alleged inequitable conduct committed before the Patent & Trademark Office because of inadequate disclosure and misrepresentation of its own MHU-7-33-123/M trailers.
I. Obviousness
The defendant challenges the validity of Claim 9 of the ’548 patent on the grounds of obviousness. The defendant contends that dependent Claim 9 of the ’548 patent is invalid for obviousness because the ’548 patent claims a trailer which would have been obvious to one with ordinary skill in the art at the time the inventors made their claimed invention. The defendant’s obviousness claim has two prongs. First, the defendant claims that Claim 9 of the ’548 patent is obvious in view of the MHU-7/M, the MHU-33/M and the MHU-123/M series trailers and in view of the Scott Russell Straight-line motion mechanism. 38 The prior art status of the trailers and the Scott Russell Straight-line motion mechanism are not in dispute. Alternatively, the defendant contends that Claim 9 is obvious over the MHU-7-33-123/M prior art trailers in view of AAI’s design work developed and “optical mockup” built with respect to the MHU-145/M project. This contention raises a secondary issue over whether AAI’s design work on the MHU-145/M trailer, specifically the optical mockup, qualifies as prior art to the patent in suit. In its obviousness claim, the defendant argues that the prior art MHU-7-33-123/M trailers or the optical mock-up include substantially all of the elements of Claim 9 of the ’548 patent. Therefore, according to the defendant, the only issues of contention with respect to the claim of invalidity due to the obviousness of the invention are whether a trailer having offsets, which is recited in independent Claim 1 of the ’548 patent, and the reversal of the orientation of the sliding and pivoting connection, recited in Claim 9 of the ’548 patent, would have been obvious in view of the prior art MHU-7M and MHU-33/M trailers or the optical mock-up.
A. Presumption of Validity
According to the applicable statute, the granting of a patent by the United States Patent & Trademark Office carries with it a presumption that the patent is valid.
*49 A patent shall be presumed valid. Each claim of a patent (whether in independent, dependent, or multiple dependent form) shall be presumed valid independently of the validity of other claims; dependent or multiple dependent claims shall be presumed valid even though dependent upon an invalid claim. The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.
The following shall be defenses in any action involving the validity or infringement of a patent and shall be pleaded:
(1) Noninfringement, absence of liability for infringement or unenforceability,
(2) Invalidity of the patent or any claim in suit on any ground specified in part II of this title as a condition for patentability,
(3) Invalidity of the patent or any claim in suit for failure to comply with any requirement of sections 112 or 251 of this title,
(4) Any other fact or act made a defense by this title.
In actions involving the validity or infringement of a patent the party asserting invalidity or noninfringement shall give notice in the pleadings or otherwise in writing to the adverse party at least thirty days before the trial, of the country, number date and page numbers of any publication to be relief upon as anticipation of the patent in suit or, except in the United States Claims Court, as showing the state of the art, and the name and address of any person who may be relied upon as the prior inventor or as having prior knowledge of or as having previously used or offered for sale the invention of the patent in suit. In the absence of such notice proof of the said matters may not be made at the trial except on such terms as the court requires. Invalidity of the extension of a patent term or any portion thereof under section 156 of this title because of the material failure—
(1) by the applicant for the extension, or
(2) by the Commissioner,
to comply with the requirements of such section shall be a defense in any action involving the infringement of a patent during the period of the extension of its term and shall be pleaded. A due diligence determination under section 156(d)(2) is not subject to review in such an action.
35 U.S.C. § 282 (1988). In other words, “[a] Patent is born valid.” Roper Corp. v. Litton Systems Inc., 757 F.2d 1266, 1270 , 225 U.S.P.Q. 345, 347 (Fed.Cir.1985). This court, therefore, must approach the defendant’s challenge to the validity of the patent in suit by presuming that the patented invention is useful, novel and nonobvious under the relevant statutes. 35 U.S.C. § 282 ; Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1570 (Fed.Cir.1987) (footnote omitted), cert. den., 481 U.S. 1052 , 107 S.Ct. 2187 , 95 L.Ed.2d 843 (1987); see also Solder Removal Co. v. United States International Trade Com., 582 F.2d 628 , 65 C.C.P.A. 120 , 199 U.S.P.Q. 129 (CCPA 1978).
In Panduit v. Dennison Mfg. Co., the Federal Circuit stated:
It is neither necessary nor appropriate for a court to declare a patent valid. A trial is required by Congress, 35 U.S.C. § 282 , ... to say only whether the patent challenger carried its burden of establishing invalidity in the particular case before the court. When the burden has not been carried, a court need only so state. When the burden has been carried, the court should declare the patent invalid.
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d at 1569-70 (footnote & citation omitted); see also American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1359 (Fed.Cir.), cert. denied, 469 U.S. 821 , 105 S.Ct. 95 , 83 L.Ed.2d 41 (1984). That burden is constant and never shifts. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1534 (Fed.Cir.1983). “Though the presumption of validity remains in existence until rebutted and the burden of persuasion continues throughout the litigation on him who asserts invalidity ...,” Solder *50 Removal Co. v. United States International Trade Com., 582 F.2d at 633 , the party attacking the validity of a patent must prove that the patent is invalid by clear and convincing evidence. Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1459 (Fed.Cir.1984) (citing Radio Corp. v. Radio Laboratories, 293 U.S. 1 , 55 S.Ct. 928 , 79 L.Ed. 163 (1934)); RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444 (Fed.Cir.), cert. dismissed, Hazeltine Corp. v. RCA Corp., 468 U.S. 1228 , 105 S.Ct. 32 , 82 L.Ed.2d 923 (1984) (citing Railroad Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506, 1517 (Fed.Cir.), cert. denied, 469 U.S. 871 , 105 S.Ct. 220 , 83 L.Ed.2d 150 (1984)).
In addition to the presumption of validity, in appropriate cases, a presumption of administrative correctness attaches to the decision by the Patent & Trademark Office to issue a patent. Specifically, when a party attacking the validity of a patent relies on prior art, which was specifically considered by the Examiner during the prosecution of the application leading to the issuance of the patent, that party bears the burden of overcoming the deference due a qualified government agency official presumed to have performed his or her job. American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d at 1359 .
The presumption mandated by 35 U.S.C. § 282 is applicable to all of the many grounds for challenging a patent’s validity. Panduit Corp. v. Dennison Mfg. Co., 810 F.2d at 1570 . To arrive at a conclusion concerning the obviousness or nonobviousness of an invention disclosed in a patent, the court is required to consider that “once a patent has been issued, it is presumed valid, and the burden of persuasion on the issue of obviousness is on the party asserting invalidity.” Vandenberg v. Dairy Equip. Co., Div. of DEC International, Inc., 740 F.2d 1560, 1564 (Fed.Cir.1984) (citing 35 U.S.C. § 282 ). Following the application of the obviousness test, if the court is left uncertain as to the correct conclusion, in view of 35 U.S.C. § 282 , the obviousness inquiry should be ended and the patent held to be valid. Panduit Corp. v. Dennison Mfg. Co., 774 F.2d 1082, 1097 (Fed.Cir.1985), vacated, 475 U.S. 809 , 106 S.Ct. 1578 , 89 L.Ed.2d 817 (1986), on remand, 810 F.2d 1561 (Fed.Cir.), cert. den., 481 U.S. 1052 , 107 S.Ct. 2187 , 95 L.Ed.2d 843 (1987). The burden of persuasion created by the presumption of validity of the patent as issued is more easily met when evidence is introduced of more pertinent prior art than that considered by the Patent Examiner during prosecution of the patent application. Solder Removal Co. v. United States International Trade Com., 582 F.2d at 633 . Whether a challenger to the validity of a patent has successfully rebutted the validity of the patent as issued “requires careful consideration of whether the prior art relied upon does in truth render the claimed invention anticipated or obvious.” Id., 582 F.2d at 632 . These presumptions set the framework or boundaries for the court’s discussion of the obviousness/nonobviousness issue, as well as for discussion of the inequitable conduct defense raised by the defendant.
The court finds that, based upon the evidence presented in the instant case, the defendant has failed to overcome the applicable presumptions and has failed to prove by clear and convincing evidence that the differences between the subject matter of the invention disclosed in the patent in suit, which incorporates the claim at issue, as a whole, and the prior art, would have been obvious to a person having ordinary skill in the art to which the subject matter pertains, at the time the invention was made. Additionally, upon a balance of the equities, the defendant has failed not only to overcome the presumptions concerning the validity of the patent in suit, but it has also failed to prove by clear and convincing evidence that Standard, or its attorneys and representatives, acted improperly with respect to the prosecution of the patent application which resulted in the ’548 patent.
B. The Obviousness Test
According to 35 U.S.C. § 103 (1988):
*51 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.
Subject matter developed by another person, which qualifies as prior art only under subsection (f) or (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.
Id.
Obviousness is a question of law. Graham v. John Deere Co., 383 U.S. 1, 17 , 86 S.Ct. 684, 693 , 15 L.Ed.2d 545 (1966); see also Great Atlantic & Pacific Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 155 , 71 S.Ct. 127, 131 , 95 L.Ed. 162 (1950) (Douglas, J., concurring), reh den, 340 U.S. 918 , 71 S.Ct. 349 , 95 L.Ed. 663 (1951) . Like most legal conclusions, it is reached after answers to a series of potential fact questions have been found. Graham v. John Deere Co., 383 U.S. at 17-18 , 86 S.Ct. at 693-94 . The court’s findings of fact are subject to the “clearly erroneous” standard. Vandenberg v. Dairy Equipment Co., 740 F.2d at 1565 ; Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d at 1535 .
In deciding the question of obviousness under 35 U.S.C. § 103 , it is necessary for the court to carefully review the following factual evidence and determine: (1) the scope and content of the prior art; (2) the level of ordinary skill in the pertinent art; (3) the differences between the claim(s) of the patent in suit and the prior art; 39 and also to review (4) the existence of objective criteria of nonobviousness, such as commercial success, long felt, but unsolved need, failure of others, acceptance by experts in the field and copying. 40 It is these *52 factors which the court must utilize as the most reliable indicators of the level of ordinary skill in the art. Moreover, the determination must be made by the trial court on a case by case basis. Loctite Corp. v. Ultraseal, Ltd., 781 F.2d at 873 (Fed.Cir.1985); In re Durden, 763 F.2d 1406, 1410 (Fed.Cir.1985).
In Graham v. John Deere Co., the Supreme Court explicitly stated that a court must have a well reasoned factual basis for upholding or invalidating a patent.
This is not to say, however, that there will not be difficulties in applying the nonobviousness test. What is obvious is not a question upon which there is likely to be uniformity of thought in every given factual context. The difficulties, however, are comparable to those encountered daily by the courts in such frames of reference as negligence and scienter, and should be amenable to a case-by-case development.
Graham v. John Deere Co., 383 U.S. at 18 , 86 S.Ct. at 694 .
To reach a proper conclusion under section 103, the court must step backward in time and into the mind of a person of ordinary skill in the art at a time when the invention was unknown, and just before it was made. In light of all the evidence, the court, then, must make specific factual determinations of whether the patent challenger has convincingly established that the claimed invention as a whole would have been obvious at the time of the invention to a person of ordinary skill in the art.
As stated in W.L. Gore & Associates, Inc. v. Garlock, Inc.,
It is difficult but necessary that the decisionmaker forget what he or she has been taught at trial about the claimed invention and cast the mind back to the time the invention was made (often as here many years), to occupy the mind of one skilled in the art who is presented only with the references, and who is normally guided by the then-accepted wisdom in the art. Had that been here done the inventions set forth in the claims 3 and 19 of the '566 patent could only have been held non-obvious to those skilled in the art at the time those claims inventions were made.
W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed.Cir.1983), cert. denied, 469 U.S. 851 , 105 S.Ct. 172 , 83 L.Ed.2d 107 (1984).
Although the possibility of near simultaneous inventions by two or more inventors may perhaps be considered as an indication of obviousness, and, therefore, of some evidentiary value, Stewart-Warner Corp. v. Pontiac, 767 F.2d 1563, 1570 (Fed.Cir.1985), Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d at 1460, Title 35, Section 103, of the Code demands that obviousness be tested as of “the time the invention was made.” Loctite Corp. v. Ultraseal, Ltd., 781 F.2d at 873. Thus, the obviousness test cannot include a requirement that the invention demonstrate unusual or surprising results or have an effect greater than the prior art, since this would focus on facts determinable only after the invention was made. Kansas Jack, Inc. v. Kuhn, 719 F.2d 1144, 1150 (Fed.Cir.1983). As such, it is incorrect to ask whether the invention is or would be obvious; rather, the proper inquiry should be phrased as whether the invention would have been obvious at the time it was made.
*53 The trial court, clearly, has a difficult task. The judge must determine whether the invention would have been obvious to those skilled in the art who knew only about the prior art, and who do not have the benefit of hindsight and, often extensive trial testimony on both sides of the issue. The judge must view the prior art without reading into it the patent’s teachings. Vandenberg v. Dairy Equip. Co., 740 F.2d at 1564 . Additionally, although a person of ordinary skill in the relevant art is presumed to know the prior art, the prior art in question is only that prior art which that individual would have selected in the field of his endeavor and in analogous arts. Union Carbide Corp. v. American Can Co., 724 F.2d 1567, 1572 (Fed.Cir.1984). Hindsight, according to the Federal Circuit, is a tempting, but forbidden zone. Loctite Corp. v. Ultraseal Ltd., 781 F.2d at 873. Moreover, the courts, when making an obviousness determination, have been cautioned by the Federal Circuit to remember that lawsuits arise out of the affairs of people, real people facing real problems. Rosemount, Inc. v. Beckman Instruments, Inc., 727 F.2d 1540, 1544 (Fed.Cir.1984).
When making the section 103 obviousness determination, the court must view the totality of the evidence to avoid the “hindsight syndrome wherein that which, only the inventor taught is used against its teacher.” In re Corkill, 771 F.2d 1496, 1500 (Fed.Cir.1985) (quoting W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed.Cir.1983), cert. denied, 469 U.S. 851 , 105 S.Ct. 172 , 83 L.Ed.2d 107 (1984)).
The Federal Circuit has stated that the obviousness inquiry rests upon a foundation constructed of all relevant and probative facts found in light of all of the evidence; if that foundation crumbles, the legal conclusion on which it rests will, in turn, fall. See Connell v. Sears, Roebuck & Co., 722 F.2d 1542 (Fed.Cir.1983). Of particular importance is that each patent, including each prior art reference, must be evaluated as a whole. Schenck v. Nortron Corp., 713 F.2d 782, 785 (1983). The combined teachings of prior art as a whole must be considered. E.W.P. Corp. v. Reliance Universal Inc., 755 F.2d 898, 906 (Fed.Cir.), cert. denied, 474 U.S. 843 , 106 S.Ct. 131 , 88 L.Ed.2d 108 (1985).
The fact that the patent is an improvement over other prior art references will not necessarily save it from a finding of invalidity. It matters not that the device works better than the prior art device, if the improvement would have been obvious to those of ordinary skill in the art at the time of the invention. What matters is that the gap between the prior art and what is being claimed must be sufficiently great as to render the latter nonobvious. It is clear that obviousness does not require predictability, but a reasonable expectation of success is necessary. In re Clinton, 527 F.2d 1226, 1228 (C.C.P.A.1976).
As indicated above, obviousness, within the meaning of 35 U.S.C. § 103 , is a legal conclusion. It is a question of law to be determined from the facts. In re Geiger, 815 F.2d 686, 688 (Fed.Cir.1987); Aktiebolaget Karlstads Mekaniska Werkstad v. United States International Trade Com., 705 F.2d 1565, 1575 (1983); In re De Blauwe, 736 F.2d 699, 703 (Fed.Cir.1984).
A determination that an invention would have been obvious when it was made to one of ordinary skill in the art under § 103 is thus a conclusion of law based upon fact. The “degree to which” it is one of fact is solely that degree required to erect a foundation of facts capable of supporting the conclusion, those facts having been found by applying correct legal standards and expressed in findings free from clear error and based on clear and convincing evidence.
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d at 1568 .
In Panduit Corp. v. Dennison Mfg. Co., the United States Court of Appeals for the Federal Circuit very carefully laid out the standards for review of a trial court’s determination of nonobviousness:
On review of a judgment based on a conclusion of obviousness under 35 U.S.C. § 103 , this court must consider not only whether there is legal error, but also whether the underlying findings are *54 either nonprobative, or clearly erroneous, or both. If ... a district court had not made findings necessary to resolution of the § 103 question, and legal error were present, an appellate court would vacate in view of that legal error and remand for the district court to make the missing findings. Loctite Corp. v. Ultraseal, Ltd,., 781 F.2d at 872-75, 228 U.S.P.Q. 90, 97-99 (Fed.Cir.1985). If unassailable findings were made but could not support the appealed judgment under a proper application of law, an appellate court may vacate or reverse but not make its own findings. Icicle Seafoods, Inc. v. Worthington [ 475 U.S. 709, 714 , 106 S.Ct. 1527, 1530 , 89 L.Ed.2d 739 (1986)].
If findings necessary to support a legal conclusion are clearly erroneous, the conclusion cannot stand. If those facts were such as to permit only one of two possibilities, or if the burden of proving those necessary facts had been on appellee, reversal would not mean the appellate court found facts in defiance of Rule 52(a) [Federal Rules of Civil Procedure]. If, unlike the present case, appellee did not bear the burden below, a remand-requiring fact-finding function might remain.
To obtain reversal without remand, an appellant-patentee must convince this court that the patent challenger failed at trial to carry its statutory burden, 35 U.S.C. § 282 , of proving by clear and convincing evidence sufficient facts to support the obviousness conclusion. One way to do that is to show that a proper application of the law to unassailable findings compels reversal. Another is to show that the findings on which the obviousness conclusion rested are clearly erroneous and that nothing of record warrants a further exercise of the fact-finding function or indicates any possibility that the appealed judgment might be sustained by such exercise.
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d at 1565-66 .
It is also of note that the Federal Circuit has declared that the burden of overcoming the trial court’s findings is a heavy one and that the appellate court should not repeat the role of the trial judge in finding their own facts. Polaroid Corp. v. Eastman Kodak Co., 789 F.2d 1556, 1559 , cert. denied, 479 U.S. 850 , 107 S.Ct. 178 , 93 L.Ed.2d 114 (1986).
1. The Invention in Suit
The threshold question to be resolved in 35 U.S.C. § 103 analysis is what is the claimed invention. As the United States Court of Appeals for the Federal Circuit recently explained in Panduit Corp. v. Dennison Mfg. Co.:
Analysis begins with a key legal ques tion — what is the invention claimed? Courts are required to view the claimed invention as a whole. 35 U.S.C. § 103 . Claim interpretation, in light of the specification, claim language, other claims, and prosecution history, is a matter of law and will normally control the remainder of the decisional process.
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d at 1567-68 (emphasis in original and footnote omitted).
It is well settled that an invention is construed not only in light of the claims in the patent, but also with reference to the file wrapper or prosecution history in the Patent & Trademark Office. Graham v. John Deere Co., 383 U.S. at 33 , 86 S.Ct. at 701 (citing Crawford v. Heysinger, 123 U.S. 589 , 8 S.Ct. 399 , 31 L.Ed. 269 (1887); Hogg v. Emerson, 47 U.S. (6 How.) 437 , 12 L.Ed. 505 (1850)). In Graham v. John Deere Co., the court stated:
Claims as allowed must be read and interpreted with reference to rejected ones and to state of the prior art; and claims that have been narrowed in order to obtain the issuance of a patent by distinguishing the prior art cannot be sustained to cover that which was previously by limitation eliminated from the patent.
Id., 383 U.S. at 33 , 86 S.Ct. at 701 (citing Schriber Co. v. Cleveland Trust Co., 311 U.S. 211, 220-21 , 61 S.Ct. 235, 239-40 , 85 L.Ed. 132 (1940); Powers-Kennedy Co. v. Concrete Co., 282 U.S. 175, 185-86 , 51 S.Ct. 95, 99 , 75 L.Ed. 278 (1930)). Additionally, as a general rule, when interpreting *55 the claims of a patent, the “[w]ords in a claim ‘will be given their ordinary and accustomed meaning, unless it appears that the inventor used them differently.’ ” Casler v. United States, 15 Cl.Ct. 717, 741 (1988), (citing Envirotech Corp. v. Al George, Inc., 730 F.2d 753, 759 (Fed.Cir.1984) (quoting Universal Oil Products Co. v. Globe Oil & Refining Co., 137 F.2d 3, 6 (7th Cir.1943), aff'd, 322 U.S. 471 , 64 S.Ct. 1110 , 88 L.Ed. 1399 (1944))), aff'd without op, 883 F.2d 1026 (Fed.Cir.1989). It, however, has been held that the inventor may be his/her own lexicographer — and is not confined to normal dictionary meanings— as long as the inventor uses words consistently in both the claims and in the specifications. 41 Fonar Corp. v. Johnson & Johnson, 821 F.2d 627, 632 (Fed.Cir.1987), cert. denied, 484 U.S. 1027 , 108 S.Ct. 751 , 98 L.Ed.2d 764 (1988); Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565, 1569-70 (Fed.Cir.1983); Autogiro Co. of America v. United States, 384 F.2d 391, 397 , 181 Ct.Cl. 55, 62 (1967).
Claims define the invention in which property rights are created and the patent as a whole, particularly the detailed description of a particular embodiment of the invention in the specifications, teaches how to make and use the invention. It is, therefore, understandable that in interpreting the claims’ boundaries, reference to the rest of the specification is necessary. This is particularly so, for example, where part of a claim is vague or when a claim is very broad and uses generic language. “The descriptive part of the specification aids in ascertaining the scope and meaning of the claims inasmuch as the words of the claims must be based upon the description. The specification is, thus, the primary basis for constructing the claims.” Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 452 (Fed.Cir.1985). Therefore, it is imperative that, as indicated above, the words be used consistently throughout the specification. Fonar Corp. v. Johnson & Johnson, 821 F.2d at 632 . Clearly, as the Supreme Court teaches, it would be inappropriate to deny property in an invention simply because the inventor is not familiar with the vocabulary of those in the trade, or may not have understood, recognized or be able to state the scientific principles underlying his or her invention. Diamond Rubber Co. v. Consolidated Rubber Tire Co., 220 U.S. 428, 435-36 , 31 S.Ct. 444, 447 , 55 L.Ed. 527 (1911).
The invention in suit is an “Aerial Weapons Handling Trailer.” One of the issues in this case concerns the proper construction of the terms “offset” or “offset portion” as used in Claim 9 of the patent as issued. The defendant contends that the MHU-7/M and MHU-33/M series trailers contained the “offset” or “offset portions” in the rear lift arms, while the plaintiff contends that the structure which the defendant calls an “offset” in the prior art trailers is a “clearance bend” which provides clearance for an arc compensator. As discussed, the starting point for determining the construction given by the inventor to the term “offset” or “offset portion” is an analysis of the plain and ordinary meaning of the term, unless it appears that the inventor chose to use the term differently. Cosier v. United States, 15 Cl.Ct. at 741 . If it appears that the inventor chose to use the term differently, then the court should find that the meaning of the term as used in the specifications which accompany the patent, as well as used in the file wrapper, applies.
A standard dictionary definition for the term “offset” includes: “[i]n general, that which sets off, springs, or is derived from, or is set off from, before, or against something.” Webster’s New International Dictionary, 2d Ed. (1951). The plaintiff, however, contends that the term “offset” or “offset portion” in Claim 9 was more specifically defined and given a different meaning in the patent specifications and claims. Specifically, the plaintiff argues that the patent specifications give a func *56 tional definition to the term “offset” or “offset portions.” In Column 11, lines 44 through Column 12, line 5 of the specifications of the ’548 patent, the inventors state:
******
Referring to FIGS. 4, 23, 24, 25 and 26, each of the lift arms 48, 50, 52 and 54 includes an offset or dog leg portion 410. By means of the offset portions 410 the lift beams 62 and 64 are positioned substantially inwardly with respect to the beams 42 and 44. This feature comprises one of the most significant aspects of the invention in that upon downward pivotal movement of the lift arms, the lift beams are positionable at the level of the underlying surface, whereby a weapons package WP supported on a handing adapter HA which is in turn supported on the underlying surface may be lifted directly therefrom without the necessity of using any auxiliary lifting apparatus whatsoever. Of course, the handling adapter HA having the weapons, package WP supported thereon may also be lifted from a support, such as the support SP shown in FIG. 4.
Referring specifically to FIG. 26, the provision of the offset portions 410 in the lift arms 48, 50, 52 and 54 is even more significant when the trailer 30 of the present invention is utilized to lift the weapons package WP supported on the handling adapter HA into the weapons bay of an aircraft. Because of the use of the offset portions 410, the lift beams 62 and 64 may be positioned at points that are within the outermost dimensions of the weapons package WP. For this reason the weapons handling trailer 30 of the present invention may be utilized to lift a weapons package into the weapons bay without danger of interference with the weapons bay doors. Again, no auxiliary lifting apparatus is required in order to accomplish this function.
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This specification, indeed, appears to further delineate the definition of the term “offset.”
Throughout the prosecution history in this case, the inventors consistently employed the term “offset” or “offset portion” in the claims and in the specifications to describe the interconnecting portion of the lift arms connecting the proximal and distal portions of the lift arm and having a dual function: first, of spacing the proximal (lower) portions of the lift arms sufficiently far apart to permit the weapons package to be lowered between them, and second, of spacing the upper (distal) portions of the lift arms close enough together to bring them within the outermost dimensions of the weapons package, thus, enabling the lift arms of the trailer to lift the weapons package and fit it within an opening of minimal clearance. Both functions were expressed in the original claims filed in the application and in the claims added by the preliminary amendment. This dual function, as described in the patent, was consistent with the inventors’ claims in the Prior Art Statement that the invention included lift beams having outside surfaces spaced apart no further than the predetermined width of the weapons package.
In response to the first Office Action, the inventors amended the claims of the patent to define more clearly the lift arms in relation to the proximal, distal and connecting offset portions. The amendment stated, in pertinent part: 42
the first portions of the lift arms supported on the first longitudinally extending beam [of the frame] being spaced from the first portions of the corresponding lift arms supported on the second longitudinally extending beam a distance greater than the predetermined width of the weapons package, such that clearance is maintained between the first portions of the lift arms and the weapons package as the lift arms pivot between the first and second positions;
the outwardly facing surfaces of the third portions of the lift arms supported on the first longitudinally extending beam being spaced from the
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outwardly facing surfaces of the third portions of the corresponding lift arms supported on the second longitudinally extending beam a distance no greater than the predetermined width of the weapons package, such that the third portions of the lift arms do not extend from within the outermost lateral periphery of the weapons package as the lift arms pivot between the first and second portions
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In the final amendment, which resulted in allowance of the claims in the patent in suit, the inventors, at the suggestion of the Patent Examiner, again rewrote the description of the functional characteristics of the “offset portion” independently of the width of the weapons package. The claims were rewritten to contain the following limitations:
* * * * * . *
the lift beams having outside surfaces which are spaced apart less than the inner surfaces of said first portions of said lift arms, thereby allowing said lift beams to be lowered between said first portions of said lift arms;
the outwardly facing surfaces of the third portions of the lift arms supported on the first longitudinally extending beam being spaced from the outwardly facing surfaces of the third portions of the corresponding lift arms supported on the second longitudinally extending beam a distance substantially no greater than the distance between the outermost lateral surfaces of said lift beams, thereby allowing said lift arms to pivot upwardly and insert said lift beams, said third portions of said lift arms and the weapons package upwardly through an opening of minimum clearance with respect to the weapons package, such that the third portions of the arms do not extend from within the outermost lateral periphery of the weapons package as the lift arms pivot between the first and second positions.
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In the accompanying remarks in that amendment, the inventors distinguished the Hillberg patent, which described a trailer having offset lift arms, explaining that “rather than incorporating a true offset portion, such as that claimed in the above-identified application, the lift arms of Hill-berg gradually extended outwardly from the lift beams of the trailer.” The inventors further distinguished the offset disclosed in the Hillberg reference by pointing to that trailer’s inability to insert a load through an opening of minimal clearance.
While the term “offset” or “offset portion,” as used in the patent in suit, would fall within the dictionary definition of the term “offset,” the dictionary meaning is sufficiently vague for the court to adopt the functional or operational meaning of the term as described in the claims of the patent in suit submitted to the Patent & Trademark Office, and as allowed by the Examiner. The term “offset” or “offset portion,” as used in the patent in suit, refers to a structure which positions the distal portions of the lift arms within the outermost dimensions of the weapons package {i.e., within the shadow of the load) and simultaneously positions the proximal ends of the lift arms outside the weapons package in the lowered position. Indeed, the inventor is entitled to be his own lexicographer. See Fonar Corp. v. Johnson & Johnson, 821 F.2d at 632 ; Autogiro Co. v. United States, 384 F.2d at 397 , 181 Ct.Cl. at 62 .
In sum, therefore, the invention in suit is an “Aerial Weapons Handling Trailer,” “for receiving, transporting, lifting and positioning aerial weapons, and more particularly an aerial weapons handling trailer for use with large weapons packages.” The invention includes lift arms which have an “offset portion,” interconnecting the proximal and distal portions of the lift arms, which has the dual function of spacing the proximal (lower) portions of the lift arms sufficiently far apart to permit the weapons package to be lowered between them, and of spacing the upper (distal) portions of the lift arms close enough together to bring them within the outermost dimensions of the weapons package. This “offset” enables the patented Aerial Weapons *58 trailer to lift the weapons package from the underlying surface, and fit the weapons package within an opening of minimal clearance.
2. Scope and Content of Prior Art
After making the determination concerning “what is the claimed invention,” the court must then review the four factual criteria of obviousness and make factual findings as mandated by Graham and the subsequent case law in the United States Court of Appeals for the Federal Circuit. Initially, this analysis begins with a determination as to what is the pertinent prior art. To determine the relevant art pertaining to the patent in suit, it is proper to consider the nature of the problem confronting the inventor. Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1009 (Fed.Cir.1983) (citing Weather Eng’g Corp. v. United States, 614 F.2d 281, 287 , 222 Ct.Cl. 322, 334-5 (1980)). In this portion of the obviousness inquiry, hindsight in the selection of the pertinent prior art must be avoided at all cost. Loctite Corp. v. Ultraseal Ltd., 781 F.2d at 873 . “It is wrong to use the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.” Orthopedic Equip. Co. v. United States, 702 F.2d at 1012 . Accordingly, the nature of the problem with which the inventor was working defines the relevant prior art. Weather Eng’g Corp. v. United States, 614 F.2d at 286-87 , 222 Ct.Cl. at 333-34 . The court must look to the relevant prior art of record. Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 314 (Fed.Cir.1985). If a given reference is not within the field of the inventor’s endeavor, the court then looks at whether the field of the reference is reasonably pertinent to the problem. Finish Eng’g Co. v. Zerpa Indus., Inc., 806 F.2d 1041, 1043 (Fed.Cir.1986); Bausch & Lomb, Inc. v. Barnes-Hind Hydrocurve, Inc., 796 F.2d 443, 449 (Fed.Cir.1986), cert. denied, 484 U.S. 823 , 108 S.Ct. 85 , 98 L.Ed.2d 47 (1987), on remand, 10 U.S.P.Q.2d 1929 (N.D.Cal.1989); In re Deminski, 796 F.2d 436, 441 (Fed.Cir.1986); Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 620 (Fed.Cir.), cert. dismissed, 474 U.S. 976 , 106 S.Ct. 340 , 88 L.Ed.2d 326 (1985). The person of ordinary skill in the art also is presumed to have the ability to select and utilize knowledge from references which, although not strictly within the applicable field of art, are easily seen to be within a field analogous, thereto, and the teachings of which can be properly combined with the other prior art references. See Cable Elec. Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 1025 (Fed.Cir.1985). The court in In re Keller, 642 F.2d 413, 425 , 208 U.S.P.Q. 871, 881 (CCPA 1981) wrote, “[r]ather the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”
“A reference must be considered for everything it teaches by way of technology and is not limited to the particular invention it is describing or attempting to protect.” E.W.P. Corp. v. Reliance Universal Inc., 755 F.2d at 907 (emphasis in original). But the fact that a reference may be directed at a different problem does not mean that it is not pertinent art, if those skilled in the art would recognize its broader application. The use of patents as references goes beyond that which the patentee describes: “ ‘they are part of the literature of the art, relevant for all they contain.’ ” In re Heck, 699 F.2d 1331, 1332-33 (Fed.Cir.1983) (quoting from In re Lemelson, 55 Cust & Pat App, 1294, 397 F.2d 1006, 1009 , 158 U.S.P.Q. 275 , 277 (1968)).
In 1973, the Court of Customs and Patent Appeals issued its Opinion in In re Hellsund, 474 F.2d 1307 (CCPA 1973), in which the court indicated that an applicant’s declaration in his specification in the patent application or in other papers submitted during the patent prosecution that certain subject matter is prior art to him is an admission and converts that subject matter to prior art even though it is evidenced by documents or events which fall under no subsection of 35 U.S.C. § 102 (1988). Tyler Refrigeration v. Kysor Industrial Corp., 777 F.2d 687 (Fed.Cir.1985) (In Tyler Refrigeration v. Kysor Industri *59 al Corp., there was an explicit admission as to the prior art by the attorney representing the applicant to submit a wrap-up amendment to the application in which he cited a reference as the most pertinent prior art known to the applicants); see also 2 D. Chisum, Patents § 5.03[3][e] (1989). Our attention is also drawn to In re Nomiya, 509 F.2d 566 (C.C.P.A.1975), in which foreign applicants clearly labeled two figures of drawings as “prior art” and included their verbal description thereof in the specification under the heading “Description of the Prior Art” and their claims were rejected. In In re Nomiya, the court included the following footnote:
Although the author of this opinion did not join the opinion of the court in Hellsund , there was no disagreement among the members of the court with the basic proposition that a statement by an applicant, whether in the application or in other papers submitted during prosecution, that certain matter is ‘prior art’ to him, is an admission that matter is prior art for all purposes, whether or not a basis in § 102 can be found for its use as a prior art. The point of controversy in Hellsund was not whether a binding admission had been made, but what was
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