# Application of Frederick C. Foster > Court of Customs and Patent Appeals · July 1, 1965 · 343 F.2d 980 URL: https://www.frixlaw.com/law-library/cases/9450619 ## Case - **Full name:** Application of Frederick C. FOSTER - **Court:** Court of Customs and Patent Appeals - **Decided:** July 1, 1965 - **Citations:** 343 F.2d 980; 52 C.C.P.A. 1808 - **Precedential status:** Published - **Opinion:** Dissent by Smith - **Judges:** Smith, Worley, Rich, Martin, Almond - **Cited by:** 44 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/9450619 ## Opinion text SMITH, Judge (dissenting). Less than two years ago I spoke for a unanimous court in the Palmquist case. Today I find myself the lone dissenter from a decision which overrules it. What has happened in the interim to convince three of the original participants in that short-lived decision that it should be overruled? The answer emerges from the opinions of the majority and from various commentaries on the Palmquist case. 1 Very simply this answer is that neither sections 102 or 103 of the Patent Act of 1952 cover the situation presented here or in Palmquist. To plug the “hole” which has been shown to exist in the Patent Act of 1952, the majority rests its opinion upon the unsupportable premise that sound patent policy dictates that an inventor shall lose his right to a patent in every case in which his invention becomes obvious at any time prior to one year before he files his patent application. I am convinced and shall point out in this opinion: 1) that no such broad patent policy exists and 2) even if it did, that this court is not justified in reaching so far to correct a legislative oversight. I shall also point out some of the very undesirable consequences I see flowing from today’s decision. I. Is there a pervasive patent policy which dictates today’s decision? The answer, of course, is no. There are at least two, and perhaps more situations wherein an invention, unobvious when made, later becomes obvious sometime prior to one year before the application is filed and yet the applicant does not lose his right to patent. The following examples will make this clear. First: At page 986 of the instant majority opinion we find the statement: “Proofs submitted in this case under Patent Office Rule 131 with respect to a reference not before us (because it was overcome thereby) have established that the applicant’s invention date was prior to December 26,1952.” What the majority opinion does not state is that December 26,1952 is the filing date of this “reference not before us,” which is the Greene U. S. Patent 2,762,790 issued a few weeks subsequent to the date on which appellant filed his application. Thus, Greene’s application was co-pending with appellant’s, and Greene’s filing date was something over three years prior to appellant’s. 2 *994 In In re Harry, 333 F.2d 920 , 51 CCPA 1541, we held that 35 U.S.C. § 102 (e) operates not only in situations where the invention is described in a single patent, but also in situations where the invention is obvious in view of a combination of patents. Thus in considering the Greene patent as a reference, appellant’s invention would, under the Harry case, have become obvious as of the filing date of the Greene application. Since that date is considerably more than one year prior to appellant’s filing date, it follows logically from the majority view here that appellant should have been denied his patent because as a matter of law Greene made the invention obvious more than one year prior to the filing date of the Foster application. This is the necessary result it seems to me of the rationale of the majority that an applicant loses his right to a patent under section 102(b) if he fails to file his application for patent within a year after the invention became obvious. What the Patent Office did here as to the Greene reference is consistent with its past position that the right to patent has not been lost in such situations. The Patent Office applies the reasoning of the majority only where the issue date of the patent is more than one year prior to the applicant’s filing date. I am frankly unable to reconcile this anomaly (an example of which occurred in the Palmquist case as well) with the majority’s fundamental proposition that there is an established policy of refusing patents for inventions which have become obvious more than a year prior to filing the application therefor. No such policy is expressed either in section 102(b) or section 103. On the contrary, what the courts and Congress have said is that, if and when under certain express conditions the invention becomes vested in the public more than one year prior to filing the application,- then and only then is there a loss of right to patent. These conditions are stated in section 102(b) and clearly require that the invention be patented, or described in a printed publication, or that it be in public use or on sale. 3 *995 Second: Another example from which it can be seen that there is no such broad policy as stated by the majority, arises from a consideration of section 102(a) and what is meant by the term “known” as used therein. The case law indicates that for an invention to be “known,” the “knowledge” of it must be of a very special kind and quality in order to be effective as an anticipation. This court held, in In re Schlittler, 234 F.2d 882 , 43 CCPA 986, that such knowledge must be available to the public and, moreover, that it must be knowledge of a reduction to practice of the invention against which it is cited. It seems clear that this kind of knowledge — the kind required for anticipation under section 102(a) — certainly puts the invention in the possession of the public. And yet, section 102(b) does not base a loss of right to patent on such knowledge unless it has been “packaged,” as it were, in a patent or a publication or in something which has gone into public use or on sale, prior to one year before the filing date of the application. These examples seem to me to show the incorrectness of the majority position that there is a broad policy which demands a forfeiture of the right to patent in every case in which the public has possession of the invention for more than a year prior to filing of the application. II. Even if there were such a pervasive policy, it is an usurpation of the legislative function for this court to rewrite the statute. In Sturges v. Crowninshield, 4 Wheat. (17 U.S.) 122, 4 L.Ed. 529 (1819), Chief Justice Marshall was moved to comment upon the need for a zealous judiciary to exercise restraint concerning inadequate legislative enactments. .His eloquent words, written nearly a century and a half ago, are a remarkably current and valid summary of my views regarding the instant case; thus: “* * * although the spirit of an instrument, especially of a constitution, is to be respected not less than its letter, yet the spirit is to be collected chiefly from its words. It would be dangerous in the extreme, *996 to infer from extrinsic circumstances, that a case for which the words of an instrument expressly provide, shall be exempted from its operation. Where words conflict with each other, where the different clauses of an instrument bear upon each other, and would be inconsistent, unless the natural and common import of the words be varied, construction becomes necessary, and a departure from the obvious meaning of words, is justifiable. But if, in any case, the plain meaning of a provision, not contradicted by any other provision in the same instrument, is to be disregarded, because we believe the framers of the instrument could not intend what they say, it must be one in which the absurdity and injustice of applying the provision to the case, would be so monstrous, that all mankind would, without hesitation, unite in rejecting the application. This is certainly not such a case. * * *” [Emphasis added.] Current validation of this point of view is supplied by Crawford’s The Construction of Statutes at p. 249 which states: * * if the language is unambiguous and the statute’s meaning is clear, the statute must be accorded the expressed meaning without deviation, since any departure would constitute an invasion of the province of the legislature by the judiciary.” The language of sections 102(b) and 103 is unambiguous, its meaning is clear, and I see no valid basis for deviation from it in deciding the present case. 4 Yet, the majority decision amounts to an interpretation of section -102(b) as though it contained the following italicized words: “A person shall be entitled to a patent unless — * * * (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country or unless the invention became obvious more than one year prior to the date of the application for patent in the United States * * * ” Thus, within the rationale of the majority opinion and its construction of section 102, it is no longer necessary for a patent or a publication to “describe” the invention to lay the basis for the loss of right to a patent under section 102(b). It is sufficient that a patent or a publication be found, or that some combination of the same can be put together after the applicant’s date of invention and with the accuracy characteristic of perfect hindsight which make the invention “obvious” more than one year prior to the date of filing the patent application. *997 Thus, in addition to changing the wording of section 102(b) as above suggested, the majority must also intend to rewrite section 103 so that the phrase “at the time the invention was made” now is to be limited by a proviso which reduces this time to a period of one year prior to the filing of the application. Thus it becomes pertinent to inquire whether such was the intent of the drafters of the Patent Act of 1952 or of the Congress in enacting it. While I think it was not, I speak here simply as a minority of one in expressing this point of view. However, I think these considerations support my position that such effects should be accomplished only by legislation, and not by a judicially imposed statutory, construction. A patent statute, like a patent claim, should be more than a mere “nose of wax, which may be turned and twisted in any direction.” Cf. White v. Dunbar, 119 U.S. 47, 51 , 7 S.Ct. 72, 74 , 30 L.Ed. 303 (1886). Often a particularly loosely worded statutory provision can come very near to being all things-to all people. But all statutes have an elastic limit, and stretching them beyond that point results in a flaccid collection of words, vulnerable and open to attack from all sides and a far cry from the legislative instrument that was intended. I am not persuaded by the majority opinion that this court should undertake by “interpretation” to rewrite key provisions of sections 102(b) and 103 according to judicial fiat. I think it is the Congress and not this court which should correct the oversight, if any, which may be present in the statute. in the previous discussion, I have indicated something of the complexities of the problems here involved. Such problems lie peculiarly within the province of the Congress, where the instruments of investigation, public hearings and exhaustive debate can measure and determine the public interest and state the proper public policy far more accurately than it can be done in this court. 5 III. Some logical problems and the undesirable consequences of the majority viewpoint. In concluding, I shall comment on some of the undesirable consequences of today’s decision. Others will undoubtedly perceive different problems, and the passage of time will surely create even more, but in the following paragraphs I shall outline some of the matters that have been and are troubling me. Consider what the majority has done in its opinion. One would have supposed, in view of the fact that the issue appears to be “loss of right to patent” under section 102(b), that the majority would have decided this issue. Thus, one would have supposed the majority would first determine whether there was a right to a patent. I think the record is clear that Foster met every statutory standard to establish patentability of his invention on its merits. Clearly, the invention is new and unobvious under sections 102(a) and 103, respectively, since neither the Binder nor the Greene references were in existence at the time the invention was made. On the present record Foster had a right to a patent. Thus the only remaining question is whether he lost that right, under the provisions of section 102(b). And the majority’s answer to *998 this is (after overruling Palmquist): Yes, he lost his right to patent, since the Binder reference made the invention obvious more than a year before Foster filed his application. Contrary to this simple approach and what might be supposed from these considerations, the majority opinion does not decide this issue. In overruling Palm-quist, the majority gives lip service to the truism that “section 103 per se has nothing whatever to do” with the issue of loss of right to patent, but then proceeds to decide the case as one of obviousness using Binder as prior art under section 103, which it most emphatically is not, since it did not exist “at the time the invention was made.” 6 If the four members of the majority of this court cannot make clear which section of the statute or which underlying rationale they are applying, I hesitate to guess what an applicant in the future will face in the way of indefinite and evasive rejections from the Patent Office. Today’s decision destroys any meaningful differences that may have existed in the past between sections 102(a) and (b) and section 103. This is evident from the way in which the majority opinion vacillates between sections 102 and 103 to support its affirmance of a rejection of the claims as “unpatentable over” the Binder reference. Despite my past hopes that the Patent Office would adopt a policy of articulation regarding the statutory ground of rejection, it now seems clear that the majority is satisfied with a simple “unpatentable over” rejection.. And since such a rejection can be for the reason that the claimed invention is old, or obvious, or for the reason that the right to patent has been lost, the applicant is put in the position of guessing as to which ground is intended and arguing against each of these reasons, without knowing which one the Office really means or which one will be relied upon in the event of appeal. The many powerful implications in the term “due process” apply to the patent law as well as they do to other fields. I am frankly unable to reconcile the procedural due process requirements of 35 U.S. C. § 132 with the failure of the Patent Office here to comply with the notice requirements of this section. 7 Certainly *999 one needs look no further than the majority opinion to see that the words “un-patentable over” do not impart such information as to enable an applicant to “judge of the propriety of continuing the prosecution of his application” as contemplated by section 132. 8 Most disturbing of all is the fact that from this day forward obviousness under section 103 will be tested, not as of the time the invention was made, but as of one year prior to the filing date of the application. Prior to the enactment of section 103, the determination of “invention” and the evaluation of the prior art relevant thereto always was made as of the time the invention was made. To now change the meaning of section 103 so that obviousness is tested as of one year prior to the filing date of the application, as it seems to me is required by the rationale of the majority, I think we should have some definite indication that such a change was within the contemplation of Congress in enacting section 103. Certainly, such a change should require more than an inaccurately stated principle of an alleged public policy to engraft the forfeiture provisions of section 102(b) onto section 103. The majority in its construction of section 103 clearly embraces the historically rejected “hindsight” reconstruction of the prior art for all times except one year before the filing date of the application, a result I feel certain Congress intended to preclude by the very precise wording of section 103. A recent writer in observing that ‘hindsight’ is one of our best-developed faculties” 9 has given current expression to the ancient observation recorded in Ecclesiastes 1:9, 10. 10 I had supposed, very naively as it now appears, that section 103 was bottomed on an awareness of the most human of all failings and that Congress had for this reason required that the determination of obviousness was to be made “at the time the invention was made.” Instead, I now learn from the majority opinion that the clear language of this section does not mean what it says. Make no mistake about it, hindsight now is an accepted technique for rejection of an application under section 103 unless the effective date of the reference or combination of references is less than one year prior to the filing date of the application. . See Sobe!, Prior Art and Obviousness, 47 J.Pat.Off.Soc’y 79 (1965), a substantial portion of which is given over to a discussion of Palmquist and related cases. Palmquist is noted in 13 Am.U.L. Rev. 211 (1964) and 32 Geo.Wash.L.Rev. 656 (1964). . The underlying condition specified in rule 131(a) is that the invention be substantially shown or described, but not claimed, in the domestic patent used as the reference. In accepting the affidavits under this rule and removing the Greene patent as a reference, we must assume that the Patent Office considered that this underlying condition of rule 131 had been met and that Greene did describe Foster’s invention. . I have found no ease law which sanctions the forfeiture of the right to a patent except in those situations where the invention is “described” in a prior patent or printed publication or has gone into public use or on sale. This exception is explicitly stated in 35 U.S.C. § 102 (b) and is supported by such landmark cases as Bates v. Coe, 98 U.S. 31 , 25 L.Ed. 68 (1878) and Parks v. Booth, 102 U.S. 96 , 26 L.Ed. 54 (1880). In Bates v. Coe, the patent in suit related to a hand drill and screw cutter consisting of five elementary parts. The defense pleaded that the invention was old and the proofs consisted of several prior patents, each of which disclosed certain of the elementary parts of the patented combination. In rejecting this defense, the Court stated: “Where the thing patented is an entirety, consisting of a single device -or combination of old elements, incapable of division or separate use, the respondent cannot escape the charge of infringement by alleging or proving that a part of the entire thing is found in one. prior patent or printed publication or machine, and another part in another prior exhibit, and still another part in a third one, and from the three or any greater number of such exhibits draw the conclusion that the patentee is not the original and first inventor of the patented combination.” [ 98 U.S. at 48 , 25 L.Ed. 68 .] While the primary issue in Bates v. Coe was whether the patentee was the first inventor, it is clear that the Court intended the stated principle to apply to the other statutory defenses as well. In Barks v. Booth, the defendant offered proofs that the patentee was not the original and first inventor of the improvement patented, which proof consisted of twelve patents or specifications. The Court, in denying this defense, stated: “ * * * Suffice it to say in that regard that all of them have been carefully examined to the extent of the means furnished by the transcript, and the court is of the opinion that no one of the documents is of a character to sustain the issue that the complainant is not the original and first inventor of the improvement. “Most or all of the inventions described in those publications bear more or less resemblance to that claimed by the complainant, and it may be that if *995 it were allowable to test the validity of the invention in question by comparing the same with the whole as if embodied in a single exhibit, the evidence might be sufficient to support the views of the respondents in respect to the defence under consideration. Were that allowable it might well be suggested that the screen is found in one, the box in another, and the means to produce the lateral shake in a third, and so on to the end; but it would still be true that neither the same combination in its entirety nor the same mode of operation is described in any one of the patents or printed publications given in evidence. “Attempt is scarcely made in argument to show that any one of these exhibits embodies the entire invention of the complainant, but it is insisted that every feature of the patented improvement is found in some one or more of those publications. Suppose that is so, still it is clear that such a concession, if made, could not benefit the respondents, unless they can be allowed to extend the same comparison to two or more exhibits, as they do not contend that the entire invention is superseded by any one of their exhibits. “Where the thing patented is an entirety, consisting of a separate device or of a single combination of old elements incapable of division or separate use, the respondent cannot make good the defence in question by proving that a part of the entire invention is found in one prior patent, printed publication, or machine, and another part in another, and so on indefinitely, and from the whole or any given number expect the court to determine' the issue of novelty adversely to the complainant. Bates v. Coe, 98 U.S. 31 [ 25 L.Ed. 138 ]. “Common justice forbids such a de-fence, as it would work a virtual repeal of so much of the Patent Act as gives to inventors the right to a patent consisting of old elements, where the combination itself is new and produces a new and useful result. New elements in such a patent are not required, and if such a defence were allowed, not one patent of the kind in a thousand of modern date could be held valid. Nor is such a defence consistent with the regulations enacted by Congress in respect to the procedure in litigations in respect to patent-rights.” [ 102 U.S. at 103-104 , 20 L.Ed; 54.] . Webster’s New International Dictionary (2d ed. 1954) defines “describe” in pertinent part as “2. To represent by words written or spoken * * * to state in detail the particulars of; * * * now esp., to give a mental image of; to depict verbally; as to describe a view, a person.” The same source defines “obvious” as “2. Easily discovered, seen, or understood; plain; evident * * Thus it would appear that the choice of language in section 102(b) requiring, as it does, that the invention be described, has carried into the statute the legal concepts expressed in Bates v. Coe and Parks v. Booth, supra note 3 , i. e. that “anticipation” within the purview of section 102 requires that a description of the entire invention, not just some part of it, must be found in the patent or printed publication relied upon. This view is supported also by the express language of section 103, which is to apply when “the invention is not identically disclosed or described as -set forth in section 102 * * (Emphasis added.) Under section 103 it is sufficient if the invention be “obvious” from the prior art. The section also includes the safeguard that this determination must be made “at the time the invention was made” and thus negates the “hindsight” and “piecemeal” reconstruction of the prior art which the Supreme Court recognized as a danger in Parks v. Booth. Quaerei If an invention is “obvious” under section 103 (although not “at the time the invention was made”), and the majority equates it with a “described” invention under section 102, do “obvious” and “described” now mean -the same thing in the field of patent law? . For a further exposition of these considerations, see the dissenting opinions of Justices Frankfurter and Harlan in Baker v. Carr, 369 U.S. 186, 266, 330 , 82 S.Ct. 691 , 7 L.Ed.2d 663 (1962). With respect to the instant majority’s characterization of section 102(b) as presenting “a sort of statute of limitations,” see Eclipse Lumber Co. v. Iowa Loan & Trust Co., 38 F.2d 608, 610 (8th Cir. 1930): “While the general rule is that statutes of- limitation are to be given a liberal construction as statutes of repose * * * [citing eases], they are not to be extended to cases not within their provisions. * * * [Citing cases.] “A statute limiting the time to bring an action to enforce a mechanic’s lien cannot be extended, by construction, to include within its terms the equitable action, authorized by section 3103, given to persons who can have no mechanics’ liens. Where the language of a statute is plain, there is no room for construction. * * * [Citing cases.]” . “The language of section 103 seems to leave no doubt that the date an applicant made an invention is the point of reference regardless of the existence of the statutory one-year bars. Such bars must be considered alone and not as part of the general knowledge to be imputed to the ‘person having ordinary skill,’ if later than said date of invention.” Woodcock, “What is Prior Art?” in Dynamics of the Patent System 309 (1960). . A rejection so vaguely stated may well amount to a denial of the procedural safeguards provided in 35 U.S.C. § 132 . The affirmed rejection of claims as “un-patentable over” Binder may be a rejection for the reason that Poster’s invention was “described” by Binder within the meaning of section 102; or that the statutory bar of section 102(b) has resulted in a loss of right to patent; or that the Poster invention was obvious in view of Binder under the conditions specified in section 103. A rejection so vaguely stated does not discharge the statutory duty imposed on the Commissioner of Patents by section 132. Certainly, it does not provide “such, information [to the applicant] * * * as may be useful in judging of the propriety of continuing the prosecution of his application.” It furnishes, instead, a constantly shifting ground so that the statutory basis for the rejection by the examiner may well differ from that of the Board of Appeals, even as it affirms the examiner’s rejection. Under such circumstances, what issue may then be assigned as error for appeal to this court under 35 U.S.C. § 142 and be relied on by us for decision under 35 U.S.C. § 144 ? The burden on an applicant is quite different in meeting rejections made under sections 102 and 103. A rejection under section 102 involves a comparison between the subject matter disclosed by the reference and that claimed by the applicant, in order to determine whether the claimed invention is “described” in the reference. See, e. g., In re Sheppard, 339 F.2d 238 , 52 CCPA 859. Section 103, on the other hand, requires consideration of the differences between the *999 claimed invention and the prior art, for the purpose of determining whether the claimed subject matter as a whole would have been “obvious” to one of ordinary skill in the art. Thus, the issues arising under the two sections are vastly different,. and call for the production and introduction of quite different types of evidence. . Another aspect of procedural due process which continues to concern me in the present case arises where the rejection appears now to be predicated upon section 103. The Commissioner of Patents has failed to provide a procedure by which an applicant can establish his date of invention as contemplated by section 103. Unless the date of invention be within one year from the filing date of the application, there is no remedy. If the date be within one year from the filing date there is a partial remedy under rule 131. By its context, however, rule 131 precludes an applicant from using it to establish a date of invention more than one year prior to his filing date. . Eugene S. Ferguson, “The Origins of the Steam Engine,” Scientific American, Vol. 210, pp. 98, 107 (January 1964). . “9. The thing that hath been, it is that which shall be; and that which is done is that which shall be done: and there is no new thing under the sun. “10. Is there anything whereof it may be said, See this is new? It hath been already of old time, which was before us.” --- Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/9450619. Public record. Not legal advice.