holding trial court erred when pivotal precedent “was cited but its guidance was not applied”
How later courts described this case
- holding trial court erred when pivotal precedent “was cited but its guidance was not applied”
- "The test under Sec. 103 is whether in view of the prior art the invention as a whole would have been obvious at the time it was made"
- “The test under § 103 is whether in view of the prior art the invention as a whole would have been obvious at the time it was made”
- noting that they are separate and distinct concepts
Written by the judges who cited it.
The opinion
KASHIWA, Circuit Judge,
dissenting in part.
I respectfully dissent in part.
I join all aspects of the majority opinion except for the discussion under the heading “The Record”. Although the majority states that it is not making factfindings of its own, I believe otherwise. At a minimum, I would remand for factfindings by the district court on the obviousness issue.
I believe remanding this case for fact-findings is the correct disposition since the district court failed to make proper fact-findings regarding the tripartite factual determinations mandated by Graham v. John Deere Co., 383 U.S. 1 , 86 S.Ct. 684 , 15 L.Ed.2d 545 (1965) . Supra, majority opinion at 1529 (The record contains no specific factfindings on the Graham factors). See United Shoe Machinery Corp. v. Kamborian, 160 F.2d 461, 464-65 , 73 USPQ 1, 5 (1st Cir.1947), cert. denied, 335 U.S. 885 , 69 S.Ct. 237 , 93 L.Ed. 424 (1948); see generally Pullman-Standard v. Swint, 456 U.S. 273 , 102 S.Ct. 1781 , 72 L.Ed.2d 66 (1982).
I also disagree with the majority’s characterization that “[t]he probative facts necessary to decision are of record and are not in conflict”, and therefore, the obviousness issue of this case should be decided by this court “[i]n the interest of judicial economy”. Among the 17 paragraphs of “uncontradict-ed” facts, many of which are undoubtedly uncontested, there are factual disputes which cannot be clearly or simply characterized as “uncontradicted.” For example, the evidence regarding the level of ordinary skill was not clear. Mr. Plante, who testified in behalf of the appellants, stated:
[M]y view is that some of the witnesses you have had here would represent the level of skill in the art. I suppose that Mr. Vrana and Mr. Jones might well represent a somewhat higher level of skill, possibly, the higher level of skill.
But what I am saying is that people working in the building industry would be people who are out in the field handling these products.
This apparently is the extent of any evidence regarding the level of ordinary skill in the entire record.
Since the appellee apparently failed to present evidence on this issue and the district court failed to properly find facts, a remand is the correct procedure to either obtain additional facts or formulate proper factfindings. Instead, the majority improperly stepped into the province of the fact- *1535 finder and formulated Paragraph No. 17. See Cloud v. Standard Packaging Corp., 376 F.2d 384, 391 , 153 USPQ 317, 322-23 (7th Cir.1967).