# Carbide & Carbon Chemicals Corporation v. Coe

> Court of Appeals for the D.C. Circuit · December 29, 1938 · 102 F.2d 236

URL: https://www.frixlaw.com/law-library/cases/9636640

## Case

- **Full name:** CARBIDE & CARBON CHEMICALS CORPORATION Et Al. v. COE, Commissioner of Patents
- **Court:** Court of Appeals for the D.C. Circuit
- **Decided:** December 29, 1938
- **Citations:** 102 F.2d 236; 69 App. D.C. 372
- **Precedential status:** Published
- **Opinion:** Dissent by Edgerton
- **Judges:** Edgerton, Groner, Stephens
- **Cited by:** 21 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/9636640

## Opinion text

EDGERTON, Associate Justice
(dissenting) .
I think there was no invention here; and I think weight should be given to the presumption of administrative correctness.
As the court states, among the uses of vinyl resin disclosed by Klatte is “an odorless, fireproof film which may be used for coating * * * various substances such as wood, paper,, textile fabric and artificial stone with the effect of imparting high resistance to the action of water, acids, alkalis and atmospheric changes;” and Kratz had applied a vinyl resin film to gelatine to produce “a thin, transparent sheet, substantially moisture proof, and especially adapted for use in the wrapping of candy, bonbons, food and other perishable material.” The Young application shows that films containing vinyl resins (and no tetraethyl lead) had been applied to metals. 1 Before Frazier, then, films of vinyl resin were known to be thin, transparent, odorless, moisture proof, fireproof, and highly resistant to acids, alkalis, and atmospheric changes; they had been applied to a great variety of substances, including metals; and they had been used for coating certain non-metallic food containers. Frazier’s application of these same films to metallic food containers was new, and useful in the extreme; but in the light of the prior art I think it was not invention.
An invention, as Judge Learned Hand has said, is “a new display of ingenuity beyond the compass of the routineer;” the line is between “what seems an easy step and what does not.” Kirsch Manufacturing Company v. Gould Mersereau Company, Inc., 2 Cir., 6 F.2d 793, 794 . Unless “some uncommon talent” is displayed, there is no invention, whatever the utility and success of the device. Textile Machine Works v. *243 Louis Kirsch Textile Machines, Inc., 302 U.S. 490, 499 , 58 S.Ct. 291 , 82 L.Ed. 382, 1938 . Substituting, in the Supreme Court’s language in the Textile Machine Case, our facts for those with which the Court was dealing: “Commercial success may be decisive where invention is in doubt, but an insuperable obstacle to the invocation of that doctrine here is our inability, like that of the court below, to say ‘that an art which knew’ ” the use of metal food containers, and also the use of Vinyl ester coatings for food containers, “ ‘required some uncommon talent merely to conceive of combining the two’ ” ( 302 U.S. 490, 498, 499 , 58 S.Ct. 291, 294 , 82 L.Ed. 382 ) : the more so as vinyl ester coatings had already been applied to metals for some purposes.
The prevailing opinion herein does not question the rule that “it is only when invention is in doubt that advance in the art may be thrown in the scale.” Paramount Publix Corp. v. American Tri-Ergon Corp., 294 U.S. 464, 474 , 55 S.Ct. 449, 453 , 79 L. Ed. 997 . Impliedly recognizing that rule, the opinion observes that “if obviousness is doubtful, the doubt may be resolved by the satisfaction of a need which the art, long knowing, has failed to satisfy.” But decisions and dicta that, when invention is in doubt, long felt want and commercial success “may be thrown in the scale” and may be sufficient to turn it, in my judgment mean just that. They mean that need and success are then entitled to some weight as evidence; not that they are entitled to conclusive weight. The question still is, was there invention? It would be arbitrary to hold that every degree, including the greatest, of doubt concerning invention must be resolved in every case by any showing of need and success. Moreover, with the exception of cases decided in this court, the decisions and dicta cited on this point in the prevailing opinion occur' in infringement cases. There, the question was whether the Patent Office was right in granting a patent, and for that reason the presumption was in favor of invention. Plere, the question is whether the Office was right in refusing a patent; the presumption therefore is against invention. It is two long steps from the proposition that certain evidence justifies a court in sustaining the Patent Office to the proposition .that like evidence requires a court to overrule the Patent Office. If the latter proposition is adopted, need and success, instead of having mere evidential or persuasive value, are made conclusive; and they are used to overcome, instead of support, the usual presumption of administrative correctness.
The prevailing opinion does not assert that need and success are conclusive in all cases; but it argues that they are conclusive in this case. If, as that opinion conceives, the other evidence leaves invention in doubt, I think the evidence of need and success should not overcome the presumption of administrative correctness. If that presumption were applied, and if more than’ a formal deference were paid to it, it would, I think, preclude the result which the prevailing opinion reaches. 2 I think the presumption should be applied.
Speaking for a unanimous Court, Justice Cardozo said: “The judicial function is exhausted when there is found to be a rational basis for the conclusions approved by the administrative body.” Mississippi Valley Barge Line Co. v. United States, 292 U.S. 282, 287 , 54 S.Ct. 692, 694 , 78 L. Ed. 1260 . “It has long been settled that determinations of fact for ordinary administrative purposes are not subject to review.” Phillips v. Commissioner of Internal Revenue, 283 U.S. 589, 600 , 51 S.Ct. 608, 612 , 75 L.Ed. 1289 . Accordingly, “it might well be argued, were it not for the terms of this statute [R.S. § 4915, 35 U.S. C.A. § 63], that the decision of the patent office was a finality upon every matter of fact.” Morgan v. Daniels, 153 U.S. 120, 124 , 14 S.Ct. 772, 773 , 38 L.Ed. 657 . Though it is not a finality, the Patent Office decision is entitled to great weight.
“A patent regularly issued * * * is presumed to be valid until the presumption has been overcome by convincing evidence of error.” One who assails its validity “bears a heavy burden of persuasion, and fails unless his evidence has more than a dubious preponderance.” Radio Corporation of America et al. v. Radio Engineering Laboratories, Inc., 293 U.S. 1, 7, 8 , 55 S.Ct. 928 , 931, 79 L.Ed. 163 . This presumption applies regardless of the nature of the attack upon the patent. It covers, e. g., the issue of patentable novelty (Smith, Executor v. Hall, 301 U.S. 216, 233 , 57 S.Ct. 711 , 81 L.Ed. 1049 ) or invention. Gulf Smokeless Coal Company v. Sutton, Steele & Steele, 4 Cir., 35 F.2d 433 , certiorari denied 280 U.S. 609 , 50 S.Ct. 158 , 74 L.Ed. 652 .
*244 The Patent Office is no more likely to err when it rejects an application for a patent than when it grants one. Accordingly it has become established in various courts and in various contexts that the action of the Office in rejecting an application is likewise supported by a strong presumption, and not to be upset unless it is shown to be clearly wrong. The Court of Customs and Patent Appeals, which now has jurisdiction of appeals from the Patent Office, holds that when “two tribunals of the Patent Office have concurred in holding that the claims * * * lack invention” and the art is a technical one, “the decision of the Board of Appeals should be affirmed unless manifestly wrong.” In re Alden, Cust. & Pat.App., 65 F.2d 136, 137 . Cf. In re Pirani, Cust. & Pat.App., 75 F.2d 223 . Similarly this court, when it served as the appellate tribunal for the Patent Office, held in Re Beswick’s Appeal, 16 App.D.C. 345, 350 , that:
“Where patentable novelty has been denied by all of the expert tribunals of the Patent Office, it is incumbent upon one appealing therefrom to make out a clear case of error in order to obtain a reversal. * * * That rule is particularly applicable to this case, which, for its satisfactory determination, requires technical knowledge of an abstruse art that can only be acquired through thorough training.”
Oldroyd v. Morgan, 58 App.D.C. 78 , 24 F.2d 1004 , is an interference case in which this court, on appeal from the Patent Office, applied the same rule. 3 A suit like the present one, under § 4915, differs from an appeal from the Commissioner’s decision in that in these suits and not in those new evidence, in addition to the Patent Office record, may be introduced in court. This increases the provability, but not the probability, of error on the part of the Office. Accordingly it is at least as appropriate in these suits as in those to sustain the Office unless it be shown that it was clearly wrong.
If the applications of A and B are considered by the Patent Office in interference proceedings, with the result that priority is awarded to B, A’s suit under § 4915 for a patent is brought against B. In such suits it is well settled that grant and rejection alike are accepted by ,the courts as correct unless they are shown to be clearly wrong. Morgan v. Daniels, 153 U.S. 120 ,. 14 S.Ct. 772 , 38 L.Ed. 657 ; cf. Radio Corporation of America v. Radio Engineering Laboratories, Inc., 293 U.S. 1 , 55 S.Ct. 928 , 79 L. Ed. 163 ; Bayer v. Rice, 64 App.D.C. 107 , 75 F.2d 238 ; Gold v. Gold, 7 Cir., 237 F. 84 ; Larson v. Crowther, 8 Cir., 26 F.2d 780 , certiorari denied 278 U.S. 648 , 49 S.Ct. 83 , 73 L.Ed. 560 ; Dowling v. Jones, 2 Cir., 67 F.2d 537 ; Syracuse Washing Machine Corporation v. Vieau, 2 Cir., 72 F.2d 410 , certiorari denied 294 U.S. 717 , 55 S.Ct. 544 , 79 L.Ed. 1250 . In Morgan v. Daniels, supra, the Court said:
“ * * * This is something more than a mere appeal. It is an application to the court to set aside the action of one of the executive departments of the government. * * * It is something in the nature of a suit to set aside a judgment, and, as such, is not to be sustained by a mere preponderance of evidence.” 153 U.S. 120, 124 , 14 S.Ct. 772, 773 , 38 L.Ed. 657 .
As Judge Learned Hand put it in. the Dowling Case, “the findings of the Patent Office must prevail unless we cannot avoid an opposite conclusion.” 67 F.2d 537, 538 .
If, as in the present case, an application is rejected by the Patent Office without being considered in interference proceedings, suit under § 4915 for a patent is brought against the Commissioner of Patents. Neither the statute nor the nature of the case suggests a distinction, in respect to presumptions, between the two suits under § 4915, and I think that Morgan v. Daniels, supra, applies. The point has seldom been considered, but there is express authority for applying here the normal principle that the Patent Office decision stands unless it is shown to be clearly wrong. Robertson, Commissioner of Patents v. Cooper, 4 Cir., 46 F.2d 766 , like this case, was a suit under § 4915 against the Commissioner of Patents. The patent authorities had ruled that an application for a design patent lacked invention. The Court of Appeals for the Fourth Circuit, in the face of a contrary decision by the District Court, sustained the patent authorities. It said:
“ * * * While the judgment of Patent Office officials is not absolutely binding *245 on the courts, it is entitled to great weight, and is to be overcome by dear proof of mistake.” 46 F.2d 766, 768 . 4
Likewise in Austin v. Coe, 63 App.D.C. 94 , 69 F.2d 832 , the Commissioner of Patents had rejected plaintiff’s claim without considering it in interference proceedings, 5 plaintiff’s suit under § 4915 was brought against the Commissioner, and this court applied the presumption that the Patent Office was right.
Suits brought under § 4915 by the loser against the winner of Patent Office interference proceedings have usually turned, like Morgan v. Daniels, supra, on priority of invention or reduction to practice — questions of pure fact. But, as has been shown, the presumption that the Patent Office is right has been repeatedly applied, in other contexts, to the question of invention. Patentable invention is sometimes called a question of fact, 6 sometimes a question of mixed fact and law, and sometiriies a “conclusion of law;” since the answer depends partly on matters of pure fact with regard to the prior art, etc., and partly on measuring such facts against the concept of invention. But there is nothing about invention which should exempt it from the general rule that the Patent Office is presumed to be right. Many questions which our law treats as fact involve the measuring of data against concepts, and leave room for differences of opinion in the process. Findings on negligence, e. g., involve determin-iug what happened and the circumstances in which it happened, and then measuring these results against the concept of due care. 7 The rule that the Patent Office should be sustained unless it is clearly wrong is peculiarly appropriate to the question of invention. That question “must be resolved by a subjective opinion as to what seems an easy step and what does not.” 8 Usually, as in the present case, a distinct science or technical specialty is involved; and in distinguishing easy steps from others, expertness in the special field is, to put it mildly, a great advantage. “The Patent Office has the equipment for deciding intricate and technical questions of this character.” Robertson, Commissioner of Patents v. Cooper, supra. 9 In applying the rule to a similarly technical question, the construction and scope of patent claims, Judge Mack said :
“ * * * it is just such questions that the administrative tribunal is pre-eminently qualified to solve. Even then, of course, the court is not absolved from the duty of examination; but, unless it be perfectly clear that the final expert administrative body * * * erred, relief should not be granted under section 4915.” Gold v. Gold, 7 Cir., 237 F. 84, 86 .
In spite of the presumption the Supreme Court has frequently overturned, for lack of invention and other reasons, the decision of the Patent Office that a claim was patentable. 10 In so doing it has piotected the *246 public against a legal monopoly which the owner of the invalid patent was attempting to assert. Where, as in the present case, the Patent Office has decided that a claim is not patentable, to overturn its decision has exactly the opposite effect; it results in subj ecting the public to a legal monopoly. It follows, in my judgment, that courts should be even less ready to reverse the Patent Office in proceedings of the present type than in infringement proceedings.
In Morgan v. Daniels, supra, the Supreme Court relied on the presumption to the point of reversing the Circuit Court which, in a suit under § 4915, had reversed the Patent Office on a question of priority. In the Robertson case the Fourth Circuit relied on it in reversing the District Court, which had reversed the patent authorities on a question of invention. In the Morgan case the court said:
“The variety of opinion expressed by the different officers who have examined this testimony is persuasive that the question of priority is doubtful, and, if doubtful, the decision of the patent office must control.” 153 U.S. 120, 125 , 14 S.Ct. 772, 773 , 38 L.Ed. 657 .
If variety of opinion between the Patent Office and the trial court leaves it doubtful whether the Patent Office is wrong, -unanimity of opinion between the Patent Office and the trial court makes it far more doubtful whether the Patent Office is wrong. That is the situation here. The presumption that the Patent Office is right is reenforced by the presumption that the trial court is right.
“There is always a presumption in favor of that which has once been decided, and that presumption is often relied upon to justify an appellate court in sustaining the decision below.” 153 U.S. 120, 123 , Í24, 14 S.Ct. 772, 773 , 38 L.Ed. 657 .
“Under the rule settled in this jurisdiction, while we are not absolutely bound by a chancellor’s findings of fact, we are not to disturb them on appeal unless upon an examination of the evidence they are clearly wrong.” 11 The situation is closely *247 analogous to that in which the Supreme Court has said: “The two courts below are in agreement as to the inferences fairly to be gathered from the facts, and their findings are not to be disturbed unless clearly erroneous.” United States v. Commercial Credit Company, Inc., 286 U.S. 63, 67 , 52 S. Ct. 467, 468 , 76 L.Ed. 978 .
I think the decree dismissing appellant’s bill should be affirmed.
Since the lining of many food packages is subjected neither to heating nor to long exposure, Young’s erroneous assertion that such films, when used on metals, tended to disintegrate on long exposure and to darken when heated conveyed, in my opinion, no broadly adverse suggestion with respect to the use of the combination of vinyl resin and metal for food-packing purposes. However that may be, the fact remains that the combination, metal with a vinyl resin coating, was known.
Cf. Federal Trade Commission v. Algoma Lumber Co., 291 U.S. 67, 73 , 54 S.Ct. 315 , 78 L.Ed. 655 .
A line of cases like In re Coykendall, 58 App.D.C. 280 , 29 F.2d 868 , hold that doubt as to the validity of rejected claims should be resolved, on appeal, in favor of the applicant. These cases are contrary not only to those just cited but to the whole current of authority. In effect they presume that (1) the Patent Office is wrong and (2) one who demands a legal monopoly is entitled to it.
The Court of Appeals of tile District of Columbia at the time had supervisory jurisdiction in the administration of tile patent laws (Butterworth v. Hoe, 112 U. S. 50, 60 , 5 S.Ct. 25 , 28 L.Ed. 656 ; Postum Cereal Company v. California Fig Nut Company, 272 U.S. 093 , 47 S. Ct. 284 , 71 L.Ed. 478 ), and had affirmed the decision of the Commissioner of Patents. This circumstance did not aifect the decision of the Circuit Court of Appeals. The same is true of Gold v. Gold, supra.
Plaintiff had tardily and unsuccessfully sought to have his claim included in certain interference proceedings which were pending in the Patent Office. The question discussed by the court was whether the refusal of the Office to include it was a correct application of the Office rules.
The question is “admittedly one of fact,” although it gives rise to “acute differences of opinion as to the inferences to be drawn from facts in themselves uncontradictecJ” and “may ‘be answered differently by persons of equal intelligence.’ ” Kurtz v. Belle Hat Lining Co., Inc., 2 Cir., 280 F. 277, 279, 280, 281 .
The issue of invention “necessarily depends upon a shifting standard, just as in cases of due care.” L. Hand, J., in Kirsch Mfg. Company v. Gould Mersereau Company, Inc., 2 Cir., 6 F.2d 793, 794 .
Kirsch Manufacturing Company v. Gould Mersereau Company, Inc., 2 Cir., 6 F.2d 793, 794 .
Cf. Lucke v. Coe, 63 App.D.C. 61, 64 , 69 F.2d 379 .
Recent decisions of the Supreme Court, considered as a group, indicate that the Patent Office tends to be too liberal rather than too strict in granting patents. Since the summer of 1933 the Court has written opinions in some eighteen infringement suits in which it considered the validity of patents. In six cases, five patents were upheld. Radio Corp. of America v. Radio Engineering Laboratories, Inc., 293 U.S. 1 , 55 S.Ct. 928 , 79 L.Ed. 163 , priority of invention; *246 Smith v. Snow, 294 U.S. 1 , 55 S.Ct. 279 , 79 L.Ed. 721 , and Waxham v. Smith, 294 U.S. 20 , 55 S.Ct. 277 , 79 L.Ed. 733 (a single patent, later held invalid in Smith v. Hall, 301 U.S. 216 , 57 S.Ct. 711 , 81 L.Ed. 1049 ), invention; Bassick Co. v. Hollingshead Co., 298 U.S. 415 , 56 S.Ct. 787 , 80 L.Ed. 1251 , invention; Crown Cork & Seal Co. v. Ferdinand Gutmann Co., 304 U.S. 159 , 58 S.Ct. 842 , 82 L.Ed. 1265 , timeliness of application; General Talking Pictures Corp. v. Western Electric Co., 304 U.S. 175 , 58 S.Ct. 849 , 82 L.Ed. 1273 , affirmed on rehearing Nov. 21, 1938, 59 S.Ct. 116 , 83 L.Ed. —, timeliness of application. Also, in United States v. Esnault-Pelterie, 303 U. S. 26 , 58 S.Ct. 412 , 82 L.Ed. 625 , the decision of the Court of Claims in favor of validity was accepted as conclusive.
In twelve cases, fourteen patents were held invalid. Electric Cable Co. v. Edison Co., 292 U.S. 69 , 54 S.Ct. 586 , 78 L.Ed. 1131 , lack of invention; Keystone Co. v. Northwest Eng. Corp., 294 U.S. 42 , 55 S.Ct. 262 , 79 L.Ed. 747 (two patents), lack of novelty, and lack .of invention; Paramount Publix Corp. v. American Tri-Ergon Corp., 294 U.S. 464 , 55 S.Ct. 449 , 79 L.Ed. 997 , lack of invention; Altoona Publix Theatres, Inc., v. American Tri-Ergon Corp., 294 U.S. 477 , 55 S.Ct. 455 , 79 L.Ed. 1005 , lack of invention; Stelos Co. v. Hosiery Motor-Mend Corp., 295 U.S. 237 , 55 S.Ct. 746 , 79 L.Ed. 1414 , lack of invention; Essex Razor Blade Corp. v. Gillette Safety Razor Co., 299 U.S. 94 , 57 S.Ct. 68 , 81 L.Ed. 60 , lack of invention; Smith, Executor, v. Hall, 301 U.S. 216 , 57 S. Ct. 711 , 81 L.Ed. 1049 (holding invalid patent formerly upheld in Smith v. Snow and Waxham v. Smith), prior use; Mantle Lamp Co. v. Aluminum Products Co., 301 U.S. 544 , 57 S.Ct. 837 , 81 L.Ed. 1277 , lack of invention; Textile Machine Works v. Hirsch Textile Machines, 302 U.S. 490 , 58 S.Ct. 291 , 82 L.Ed. 382 , lack of invention; Lincoln Engineering Co. v. Stewart-Warner Corp., 303 U.S. 545 , 58 S.Ct. 662 , 82 L.Ed. 1008 , claim too broad; General Electric Co. v. Wabash Appliance Corp., 304 U.S. 364 , 58 S. Ct. 899 , 82 L.Ed. 1402 , insufficient disclosure, etc.; Schriber-Schroth Co. v. Cleveland Trust Co., 59 S.Ct. 8 , 83 L. Ed. — (Nov. 7, 1938; two patents), insufficient disclosure.
Where the issue was strictly that of invention, as the foregoing lists show, two patents (including one later invalidated) were held valid and eight invalid.
During the same period the Court wrote opinions in some ten patent suits in which it did not pass upon the validity of the patent.'
Hazen v. Hawley, 66 App.D.C. 266, 271 , 86 F.2d 217 , certiorari denied 299 U.S. 613 , 57 S.Ct. 315 , 81 L.Ed. 452 . The question there, whether a zoning regulation was arbitrary and- therefore unconstitutional, involves as large an element of. opinion, in the measuring of facts against a concept, as the question whether a, patent claim discloses invention.

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/9636640. Public record. Not legal advice.