# Application of Joseph E. Jendrisak > Court of Customs and Patent Appeals · June 28, 1963 · 316 F.2d 941 URL: https://www.frixlaw.com/law-library/cases/9449193 ## Case - **Full name:** Application of Joseph E. JENDRISAK - **Court:** Court of Customs and Patent Appeals - **Decided:** June 28, 1963 - **Citations:** 316 F.2d 941; 50 C.C.P.A. 1266 - **Precedential status:** Published - **Opinion:** Dissent by Smith - **Judges:** Smith, Rich, Worley, Martin, Almond - **Cited by:** 0 later opinions in the Frix Law Library ## Citator (automated) - No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases. - Full citator and citing cases: https://www.frixlaw.com/law-library/cases/9449193 ## Opinion text SMITH, Judge, with whom RICH, Judge, joins (dissenting). The rejection affirmed by the majority opinion is based upon a hindsight reconstruction of the prior art references in the light of appellant’s disclosures and, as such, reaches a result with which I am unable to agree. I think the strict admonition of 35 U.S.C. § 103 requires that obviousness must be determined “at the time the invention was made”, and this precludes the type of prior art reconstruction relied upon by the examiner and approved by the Board of Appeals and the majority here. An initial point of divergence arises from differences in the analysis of “the subject matter as a whole” for which a patent is here sought. It is clear to me that the majority opinion proceeds from the assumption that the subject matter as a whole is but an arrangement of parts selected from the prior art to form an apparatus for bending glass. In my view the “subject matter as a whole” involves more than this. Before the apparatus in issue could be constructed someone had to know and understand the problems which it was designed to solve. Thus, it is appellant in his specification, rather than anything found in the prior art patents, who points out the problem which the prior art structures failed to solve. Appellant states: “Briefly stated, this invention is concerned with the supporting and bending of glass sheets, into severe curvatures which may closely resembles a U-shape in elevation; on hinged type open molds. Molds of this type have previously been used for simple bends, and it has been customary to locate and support flat glass sheets only at their opposite ends on such molds, to then bring the sheets to the proper bending temperature and to allow them to freely settle into conformity with the shaping surface of the mold. “However, to produce curved shapes of the U-shape or other more complex nature, requires a somewhat different procedure than the conventional ones commonly employed to produce bent glass of a relatively simple curvature. “Moreover, with the advent of the increasingly popular ‘one-piece’ windshield, it has been found that the materially longer, and usually thinner, glass sheets will not withstand the mass weight of the hinged mold when it is allowed a normal freedom of bending influence. * * * >9 To solve the problem which the prior art posed, appellant discloses further: “According to the present invention, the mold of the improved apparatus is so constructed that endwise forces may be directively applied to the glass sheet or sheets in a progressive manner to first support and then to actually fold the ends of the sheet inwardly as the major portion thereof settles into registering support on the shaping surface of the mold. “It is an aim of the invention to provide an improved bending apparatus which includes a hinged mold that is adapted to support glass sheets while flat and to subsequently carry them into final bent shape, while closing to present a properly contoured shaping surface for the glass, together with means coacting with the mold to effect movement of the glass to the shaping surface *946 by application of a progressively increasing force. “Another object is the provision, in a method of bending glass sheets or plates and an improved apparatus therefor, of a bending mold of the open ring, hinged construction wherein sections of the mold are oriented in a balanced open position to receive a glass sheet when flat and are adapted to be moved toward their closed position with progressively increasing force to carry the ends of the glass sheet into bent conformity with the mold shaping surface at the end of the bending operation.” Appellant summarizes his invention in his brief as follows: “ * * * In accordance with the present invention, improved apparatus for bending glass sheets is provided which includes a stationary central section and hingedly related end sections together with means which coacts with the end sections of the mold to initially balance the end sections of the mold and support the glass sheets when the flat glass sheets are first placed therebetween so as to reduce to a minimum the stresses imposed on the cold, relatively stiff and brittle sheets, and which means is automatically operable as the glass softens in the bending furnace to raise the movable end sections to bend and shape the glass sheets to their final configuration. * * * ” I agree with the position of appellant that the prior art does not disclose or suggest the appellant’s concept and that the prior art patents cited by the examiner and relied upon by the Board of Appeals would have to be modified in vital respects in order to obtain the structure, manner of operation and results obtained by the structure defined by the appealed claims. There is no suggestion in the prior art that such modifications ought to be made or how to make them. Thus, it seems to me that the rejection is based on a hindsight reconstruction of the art which can be made only after appellant’s disclosure. 1 This is not the test required by 35 U.S.C. § 103 , namely, that obviousness be determined “at the time the invention was made”. In Diamond Rubber Company of New York v. Consolidated Rubber Tire Company, 220 U.S. 428 , 31 S.Ct. 444 , 55 L.Ed. 527 , the Supreme Court stated: “ * * * Many things, and the patent law abounds in illustrations, seem obvious after they have been done, and, ‘in the light of the accomplished result,’ it is often a matter of wonder how they so long ‘eluded the search of the discoverer and set at defiance the speculations of inventive genius.’ Pearl v. Ocean Mills, 11 Off. Gaz. 2 . Knowledge after the event is always easy, and problems once solved present no difficulties, indeed, may be represented as never having had any, and expert witnesses may be brought forward to show that the new thing which seemed to have eluded the search of the world was always ready at hand and easy to be seen by a merely skillful attention. * * * ” The sole question is whether the appealed claims define an invention unobvious over the combined teachings of the cited prior art. It is my opinion that they do. As pointed out by appellant: “Claims 9 and 22-29 each call for a fixed or stationary center section and contain the limitation that the shaping rails of the end sections form continuations of the shaping rails of the fixed center section to form a substantially continuous shaping surface.” The patents to Sage, Connington and Galey do not teach or disclose a fixed *947 or stationary center section comprising spaced shaping rails in combination with end sections which have shaping rails that form continuations of the center section shaping rails to form a substantially continuous shaping surface. The patent to Smith in no way utilizes a fixed center section and if an attempt were made to modify the center section of this patent to make it rigid or fixed, the Smith mold would be inoperative since the center sections must be movable since its weight is utilized to move the end sections of the mold upwardly toward the center section of the mold. Claim 9 also calls for a pair of shafts mounted for rotative movement, means connecting a shaft to each of the mold sections and extending outwardly therefrom for moving the same from the open to the closed position, and a weighted arm mounted on the shaft outwardly of the mold sections for rotating the shaft. Such a structure is not suggested by any of the references. I do not find any teaching that means could or should be provided connecting a rotatable shaft to each of the movable end mold sections. Inasmuch as there is no disclosure of any rotatable shafts having means for connecting them to end mold sections and extending outwardly therefrom for moving the same from the open to the closed position, the suggestion for such changes appears to have had its origin in appellant’s disclosure. There is nothing in the prior art which teaches or suggests that the end sections be mounted on rotatable shafts which can be rotated by the weight means shown by Sage, thus providing a positive and controlled movement of the movable end sections from the open to the closed position. Claim 22, as well as claim 28 which depends therefrom, and claim 27 not only call for a fixed center section and movable end sections formed of rail portions, but also call for means connecting the weight to the movable mold section to move said section from a first relatively low position to a relatively higher position. Claims 22, 23 and 27 also contain the further limitation that the movable mold sections are mounted for rotation about a fixed axis. In my opinion, the prior art patents do not teach or suggest such a combination of features. Claim 23 further calls for a pivotally mounted rod, while claim 24 not only calls for means mounting the movable mold section for movement about an axis of rotation nearer the innermost ends of the movable rail portions than the outermost ends, but also calls for a movable mounting rod. Claim 26 refers to the embodiment of the invention disclosed in Fig. 1 and, in addition to the other limitations, points out that the outermost shaping surfaces 32 of each of the plurality of movable shaping surfaces is pivotally mounted outwardly of its innermost end upon an adjacent movable shaping surface. No such structure is disclosed or suggested in any of the references. In addition to the other limitations, claims 28 and 29 each call for a fixed rail section, and movable rail sections comprising converging rail portions, as well as means for moving the movable sections from an open position to a closed position where the movable rail portions form substantially a continuation of the rail portions inwardly thereof. All of the appealed claims thus seem to me to patentably distinguish the present invention from the prior art. The concept of doing a thing, the result of which is new and useful, must be considered along with the actual steps of doing it when considering the question of obviousness of the invention as a whole. When this is done here, it is my considered view that appellant’s claimed invention as a whole was not obvious to one of ordinary skill in this art at the time the invention was made. For this reason, I would reverse the decision of the Board of Appeals. . This type of rejection brings to mind Milton’s lines in Paradise Lost, Book VI: “Th’ invention all admired, an each how be to be tk’ inventor missed; so easy it seemed once found, which yet unfound, most would have thought impossible”. --- Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/9449193. Public record. Not legal advice.