Kimberly-Clark Corporation v. Johnson & Johnson and Personal Products Company

KASHIWA, Circuit Judge,

concurring.

I join in the judgment of the court except for the matters addressed herein.

1. I find the legal analyses in the section labeled A. Scope and Content of the Prior Art of the Majority Opinion present some difficulties, and therefore, although I concur with the results reached therein, I cannot concur with the reasoning and conclusions therein.

To provide a basis for understanding the difficulties I see raised by the analyses in this section of the Majority Opinion, it is necessary to review the factual circumstances and holdings of In re Bass, 474 F.2d 1276 , 177 USPQ 178 (CCPA 1973), and In re Clemens, 622 F.2d 1029 , 206 USPQ 289 (CCPA 1980), and my construction as to what these cases stand for.

The issue before the court in Bass was the propriety of the U.S. Patent and Trademark Office Board of Appeals’ affirmance of the rejection of the appellants’ 1 claims as obvious under 35 U.S.C. § 103 where part of the prior art relied upon for rejection consisted of the prior invention of another 2 by virtue of 35 U.S.C. § 102 (g). The court stated that “the issue presented by the facts of this case is one of first impression in this court” because “it is the first time we have considered combining § 102(g) and § 103 in the context of an ex parte rejection entirely divorced from the award of priority in an interference which established the prior inventorship relied on *1459 in rejecting.” 474 F.2d at 1283 , 177 USPQ at 183 . After presenting a historical overview of decisions and principles involving § 102(g) prior invention as “prior art” under § 103, the court settled the question of law by ruling “against appellants and hold[ing] that the use of the prior invention of another who had not abandoned, suppressed or concealed it, under the circumstances of this case which include the disclosure of such an invention in an issued patent, is available as ‘prior art’ within the meaning of that term in § 103 by virtue of § 102(g).” Id. at 1286-87, 177 USPQ at 186 (emphasis added). 3 The court noted that the PTO has the initial burden of making out a prima facie case of prior invention for prior art which it intends to rely upon. On the basis of the evidence of record, the court accepted the Jenkins screen, the invention as disclosed in his patent, as prior art, 4 but excluded the BassHorvat reference from consideration as pri- or art. The Bass-Horvat reference was excluded as prior art because the court was .unable to find any evidence of priority over the application filed by the appellants. Furthermore, the court held that it did not consider it “probative of priority of invention” that the Bass-Horvat application was filed approximately seven weeks before the earliest effective filing date of the appellants’ application. An additional factor, although not discussed by the court in Bass , was that at least one of the appellants had knowledge of the prior invention of Jenkins before the making of their invention.

In Clemens , one of the issues before the court was the Board’s affirmance of the rejection of the appellant’s claimed invention as obvious under 35 U.S.C. § 103 based upon the prior invention of another 5 who had not abandoned, suppressed or concealed it which was prior art by virtue of 35 U.S.C. § 102 (g). The court quoted In re Bulloch, 604 F.2d 1362 , 1366 n. 12, 203 USPQ 171 , 174 n. 12 (CCPA 1979), for “the basic rule that ‘any proper rejection involving section 102(g), whether or not combined with section 103 * * * must be based upon evidence of an invention prior to that of the applicant.’ ” 622 F.2d at 1039 , 206 USPQ at 298 . Finding no clear and conclusive evidence on the record before it as to priority between the claimed invention of the appellants and the prior invention of Barrett, 6 the court held that “[bjecause the record does not support a finding that Barrett made his invention before appellants * * * the present 35 U.S.C. § 102 (g)/103 rejection of those claims must fall.” Id., 622 F.2d 1029 , 206 USPQ at 299 (footnote omitted). Although the court had disposed of the §§ 102(g)/103 question of the use of the prior invention of Barrett as prior art against the appellants’ application by this finding, the court continued its discussion, noting that there was no evidence of record that the appellants had any knowledge of the prior invention of Barrett. The court *1460 noted that “[wjhere an applicant begins with knowledge of another’s invention that will be available to the public at a later date as a result of an issued patent, treating this other invention as prior art is justified under facts such as those in Bass.” Id., 622 F.2d 1029 , 206 USPQ at 299 (emphasis added). Since the court had already eliminated the invention of Barrett as prior art under section 103 by virtue of section 102(g), this further discussion of the knowledge requirement may be construed as dicta.

There are several facets of Bass and Clemens that bear reiteration before I proceed with my analysis of the majority opinion as found in Section A. First, both Bass and Clemens involved ex parte proceedings before the U.S. Patent and Trademark Office which were subsequently appealed to our predecessor court, the Court of Customs and Patent Appeals. Second, both Bass and Clemens involved the use of the prior invention of another as prior art against a claimed invention in a § 103 obviousness determination by virtue of § 102(g) where these prior inventions of others had subsequently issued as patents. 7 Third, both Bass and Clemens involved the use of the prior invention of another as prior art against a claimed invention where there was a commonality of ownership of the prior inventions asserted to be prior art and the claimed invention. 8 Finally, explicitly stated in Bass and implicit in Clemens was the fact that the prior invention of another who had not abandoned, suppressed or concealed it was disclosed in an issued patent.

The district court, in Kimberly-Clark Corp. v. Johnson & Johnson, 573 F.Supp. 1179 , 219 USPQ 217, 219-20 (N.D.Ill.1983), found the prior work performed in Kimberly-Clark’s research department by Champaigne and Mobley to be material prior art. The district court, however, did not elucidate the statutory basis for this finding that the prior work of Champaigne and Mobley was prior art.

The Majority Opinion, in addressing the issue of whether Champaigne’s work qualified as prior art, stated that “[t]o qualify as prior art, this work must meet the requirements of § 102(g).” 9 The court, after an analysis of the question as to priority between Champaigne and Roeder, found that Champaigne’s work could be considered as prior art to Roeder under § 103 by virtue of § 102(g). 10 Thus, my reading of the Majority Opinion is that this court has extended the scope of what constitutes the prior invention of another, under § 102(g), to encompass the prior work of another which has been reduced to practice, in this case the in-house research work of Cham-paigne. 11 Furthermore, the Majority Opinion extends the arena in which the prior invention of another as defined in 35 U.S.C. § 102 (g) is usable as prior art for a section 103 determination to encompass infringement proceedings.

My construction of the phrase the invention was made in this country by another, *1461 as used in 35 U.S.C. § 102 (g), is based on the judicial interpretation of that phrase taken in context with the facts as presented in Bass/Clemens, and is that the invention of another under § 102(g), to be available as prior art for a section 103 determination, must have been disclosed in an issued U.S. patent. 12 Since Champaigne’s work was prior art based solely upon the disclosure of his U.S. patent, his work comports with my construction of § 102(g), 13 and I therefore can concur with the finding of the Majority Opinion that the work of Champaigne does not obviate the claimed invention of Roeder.

2. My principal concern with the Majority Opinion, as I interpret it, is that it extends the scope of the invention of another under § 102(g), which is available as prior art within the meaning of that term in § 103, to encompass the “work” of another, 14 without providing guidelines for lower tribunals and practioners to follow in determining what prior work constitutes invention within the purview of § 102(g), and what procedure is to be followed in proving priority of this invention over the claimed invention.

I believe that several factual findings would be required before the prior work of another, which is not subsequently disclosed in an issued U.S. patent, is used as prior art under section 103 by virtue of section 102(g). 15 These factual findings would include: (1) Does the weight of the evidence support a finding that prior work of another is an invention, i.e., has it been conceived and reduced to practice; (2) does the weight of the evidence support the conclusion that this invention has not been abandoned, suppressed or concealed; (3) does the weight of the evidence support the conclusion that this invention has been disclosed; 16 (4) does the weight of the evi *1462 dence support a finding of priority of this invention over the claimed invention. 17 These factual findings would in turn raise other issues, such as (1) allocation of the burden of proof, 18 (2) quality of proof adduced, 19 (3) quantity of proof required to support a conclusion. 20

I believe that the issue as to Cham-paigne’s work as prior art could have been narrowly resolved in the instant case by a determination that Champaigne’s work qualifies as prior art under section 103 by virtue of section 102(g) because it had been disclosed in an issued U.S. patent. The Majority Opinion, however, leaves the door open for a more liberal interpretation as to what constitutes the invention of another within the meaning of section 102(g) by finding that Champaigne’s work can be considered as prior art to Roeder under section 103. The instant case is not the proper forum to resolve the difficulties I see arising from the Majority Opinion, as set forth in the text above. I would leave for another day, under more propitious factual circumstances, the consideration of whether the prior work of another, which is not subsequently disclosed in an issued U.S. patent, is an invention of another as set forth in section 102(g) which is available as prior art under section 103.

3. I agree with the finding in the Majority Opinion that Mobley’s work is not an invention because the Mobley experiments were not prima facie evidence of a reduction to practice. Since the Majority Opinion has determined that Mobley’s work is not an invention, however, it is unnecessary to discuss the knowledge requirement as discussed in Clemens because the Clemens discussion was presented in the context of an invention. 21

4. I agree with the analysis in the Majority Opinion regarding the presumption of the inventor’s knowledge of the prior art, and that this presumption is not to be applied to an inventor in connection with his duty of disclosure under 37 CFR 1.56. I agree with the Majority Opinion that since the enactment of the 1952 Patent Act that there has been no need to presume that the inventor knows anything about the prior art. Rather, the legal determination under section 103 as to the nonobviousness of the subject matter of the claimed invention is made on the basis of whether 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. But, however we choose to characterize the language of In re Winslow, 365 F.2d 1017 , 151 USPQ 48 (CCPA 1966), and In re An- *1463 tle, 444 F.2d 1168 , 170 USPQ 285 (CCPA 1971), regarding the presumption of the inventor’s knowledge, be it picturesque or rhetoric, I believe it incumbent upon us to recognize and acknowledge the fact that this court has adopted this presumption in Union Carbide Corp. v. American Can Co., 724 F.2d 1567 , 220 USPQ 584 (Fed.Cir. 1984), when the court stated that “the starting place for determining the issue of obviousness is, as In re Winslow * * * with ‘the inventor working in his shop with the prior art references — which he is presumed to know — hanging on the walls around him.’ ” 724 F.2d 1567 , 220 USPQ at 591 (footnote omitted). Since this court has adopted this presumption, I cannot concur with the statement in the Majority Opinion that “We hereby declare the presumption that the inventor has knowledge of all material prior art to be dead” because it is inconsistent with Union Carbide. I believe it would be sufficient to state that the presumption that the inventor has knowledge of all material prior art is not applicable in determining what constitutes an inventor’s duty of disclosure under 37 CFR 1.56.

. The appellants in Bass were Bass, Jenkins, and Horvat.

. The prior invention of another under 35 U.S.C. § 102 (g) relied upon as prior art were disclosed in U.S. Patent No. 3,348,268 (Jenkins) and U.S. Patent No. 3,315,320 (Bass-Horvat).

. The result in Bass was in essence three separate opinions although all five judges concurred in the results. Judge Baldwin, in a concurring opinion joined by Judge Almond, rejected the view that prior invention under § 102(g) constituted prior art for a § 103 determination. Judge Lane, the fifth and deciding vote, stated his view "that the prior invention of another who had not abandoned, suppressed or, concealed it, under the circumstances of this case which include the disclosure of such invention in an issued patent, is available as 'prior art' within the meaning of that term in § 103 by virtue of § 102(g)." 474 F.2d at 1307 , 177 USPQ at 201 .

. This evidence consisted of affidavits which showed a date of conception of his invention for Jenkins prior to appellants’ claim to have conceived their combination, and nearly a year in priority of filing for Jenkins. Id. at 1287 , 177 USPQ at 186-87 .

. This prior invention was disclosed in U.S. Patent No. 3,843,566 (Barrett). The court also enunciated the principle that scope of this prior invention is not limited to what is claimed, but rather that the claims are to be construed in light of the specification and both are to be read together to ascertain the scope of the prior invention.

. In this respect it is of interest to note that Barrett filed a patent application for his invention on April 16, 1973 whereas the appellant’s application, Serial No. 641,464, was filed December 17, 1975, a continuation-in-part of application, Serial No. 428,968, filed December 27, 1973.

. See supra notes 2, 5.

. 622 F.2d at 1039 , 206 USPQ 298 . The prior inventions of Jenkins and Bass-Horvat were referenced in appellants' application which leads to the conclusion that they were owned by a common assignee.

. A question at this point is why Champaigne’s work was not a prior invention under 35 U.S.C. § 102 (e) which provides that a person shall be entitled to a patent unless the invention was described in a patent granted on an application for patent filed in the United States before the invention by the applicant for patent. Cham-paigne’s patent application was filed February 5, 1970 while Roeder’s patent application was filed May 8, 1970. See infra note 10.

. In reaching this conclusion, the Majority Opinion held that the district court’s finding that Champaigne’s invention was a prior reduction to practice over Roeder’s claimed invention was not clearly erroneous. The Majority Opinion further notes, in footnote 1, that the timely filing of a patent application covering the Cham-paigne pad, and the subsequent issuance of a patent thereon, constitutes sufficient proof that Champaigne’s invention was not abandoned, suppressed or concealed, thereby meeting the other requirements of § 102(g).

. Arguably this interpretation is tempered by the Majority Opinion’s later statement that Champaigne’s in-house work as prior art is based entirely on the disclosure of Cham-paigne’s patent.

. Walterscheid, "The Ever Evolving Meaning of Prior Art (Part I),” 64 J.Pat.Off. Soc'y 457, 479 (1982).

. I agree with the Majority Opinion that the record does not support Roeder’s assertion of a reduction to practice of his claimed invention prior to Champaigne’s filing date. Based upon my construction that the invention of another is available as prior art when it is disclosed in an issued U.S. patent, a presumption arises that this prior invention was constructively reduced to practice as of its filing date, and the burden of proof to rebut this presumption would logically fall on Roeder. Kimberly-Clark avers in their brief that the Roeder Affidavit showed that Roeder's actual reduction to practice occurred several months before the Champaigne application was filed. This document, however, was not part of the appendices submitted to this court, although it was listed as part of the record in the court below.

. I agree that the meaning of the invention of another, as used in § 102(g), is a matter of statutory interpretation, and can be broadly interpreted to encompass any prior invention of another, when the prior invention of another has met criteria as to conception, reduction to practice, and abandonment, suppression or concealment. See, e.g. I. KAYTON, KAYTON ON PATENTS 5-26 to -29 (2d ed 1983). Our predecessor court, the CCPA, however, has interpreted the statutory language of § 102(g) in both Bass and Clemens and has limited the use of the prior invention of another under § 102(g), usable as prior art under section 103, to those circumstances where the prior invention of another has been disclosed in an issued U.S. patent. 622 F.2d at 1038 , 206 USPQ at 298 ; 474 F.2d at 1286-87 , 177 USPQ at 186 .

. I do not, based upon my previous statements, proffer any opinion as to whether this statutory interpretation is apposite. I merely use this as a vehicle to present some of the difficulties I foresee as arising from the Majority Opinion.

. As the Majority Opinion points out, there is no personal knowledge requirement contained in § 102(g). Nor, in my interpretation of § 102(g), is disclosure required. It is my opinion, however, that a showing that a prior invention has not been abandoned, suppressed or concealed does not necessarily lead to the conclusion that this prior invention has been disclosed. An illustrative example of this circumstance would be government research work which results in an invention which is subsequently used by the government, but for which no patent is applied for. Typically, knowledge of this invention is not disclosed or known outside of the government, and in many instances, knowledge of this invention is restricted to the particular agency which has conducted the research work. My construction of Bass/Clemens is that these cases impose a disclosure requirement, equivalent to the disclosure afforded an issued U.S. patent, which must be met before an invention of this ilk is available as prior art under § 103. This may have been the point the Clemens court was attempting to reach in their discussion of the knowledge requirement.

. Under my construction, because the invention of another under § 102(g), which is prior art under § 103, has subsequently been disclosed in an issued U.S. Patent, there would arise presumptions that: (1) the prior work is an invention and was constructively reduced to practice as of its filing date, which also establishes a presumptive date of priority; (2) the prior work has not been abandoned, suppressed or concealed; and (3) the prior work has been disclosed. Clearly presumption (3) would be irrebuttable in this instance. Presumptions (1) and (2) may be rebuttable. Regarding presumption (2), see Walterscheid, “The Ever Evolving Meaning of Prior Art (Part 2),” 64 J.Pat.Off. Soc’y 571, 571-73 (1982), for i. discussion of abandonment, suppression, and concealment in the context of interference proceedings.

. Presumably the party contending the prior work of another is an invention of another available as prior art under section 103 by virtue of section 102(g) would bear the initial burden of proof as to these factual findings, with úle opposing party subsequently having the opportunity to offer rebuttal evidence.

. Both Bass and Clemens involved ex parte proceedings before the U.S. Patent and Trademark Office. In these circumstances, evidence as to priority was adduced through the use of affidavits as provided for under 35 CFR 1.131. The instant case, however, involves an infringement action, and I do not believe that affidavits alone constitute sufficient factual proof to establish the factual findings enumerated above.

. Is substantial evidence, clear and convincing evidence or a preponderance of the evidence necessary to support the factual findings enumerated above?

. If the Majority Opinion is attempting to abrogate this "dicta” in Clemens , I don’t believe the factual circumstances here are the proper setting to accomplish this, for the reason that the Majority Opinion’s discussion on this point can also be construed as dicta.