# Petition — National Micronetics, Inc. v. U. S. Philips Corp. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385004_2264%3A1 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition - **Published:** January 1, 1977 - **Citation:** 434 U.S. 859 ## Text tf, Supreme Court, U. §, UV, ais! JUL 23 1977 ‘ ‘ 1s Tas : | wie RODAK, JR., CLERK Supreme Court of the Unite October Term, 1976 No. A-/93/ NATIONAL MICRONETICS INC., Petitioner, U.S. PHILIPS CORP., NORTH AMERICAN PHILIPS CORP., N. V. PHILIPS GLOEILAMPENFABRIEKEN, Respondents. — — — ——_— —— -— - — PETITION FOR WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT ——- —— ———- AbBB FortTas JoHN M. CaLIMAFDE SrerHen B. JupDLOWE Fortas & Koven 1200 29th Street N.W. Hopcoop, CaLIMAFDE, Ka tit, Washington, D.C. BuausTeIn & LizBERMAN Of Counsel 60 East 42nd Street New York, New York 10017 Counsel for Petitioner te TABLE OF CONTENTS PAGE Opinons Below camera RT ORE 1 Jurisdiction aE? SRY IEE acalcbagtedtteas actin 2 Questions Presented ie ree 2 Constitutional and Statutory Provisions Involved .... 3 Statement of the Case eae ahah diedds 3 A. The Issues Presented Te asa 3 The Facts . Le hatadeueh tious aimaatienton i) B. Opinions Below 8 The District Court ............ 8 i I ae. os céllinoiorwesoninnctnicteens . Ae Reasons for Granting the Writ .......................:ceeeee. . a A. In Summary ce aheiptalsablanh-benedinidaag) i" a B. Sammary Argement ..........................:...000003. ae 1. Conflict with Decisions of this Court . 13 2. Conflict with Other Circuits 0S 17 Conclusion ........ abst cies RO IT Appendices: A—Opinion of the United States Court of Appeals for the Second Circuit .... LA ON TDs lie RN Sg ¢ B—Opinion of United States District Court Judge Robert Ward ate SLE te eRe A24 C—Section 8, Clause 8. Patents and Copyrights A66 D— uv 2,3 United States Constitution Article I, Section 8, Clause 8 2000... 3, 12 IN THE Supreme Court of the United States October Term, 1976 Nationa Micronetics Inc., Petitioner, v. U.S. Puts Corp., NortuH American Puiuips Corp., N. V. Puiuips GLOEMLAMPENFABRIEKEN, Respondents. PETITION FOR WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT Petitioner, National Micronetics Inc., prays that a Writ of Certiorari issue to review the jndginent of the United States Court of Appeals for the Second Circuit. Opinions Below The opinion of the Court of Appeals :s reported at 550 F.2d 716, and is reprinted as Appendix A to this Petition. The opinion of the District Court for the Southern District of New York is reported at 410 F.Supp. 449 and is reprinted as Appendix B. Jurisdiction The judgment of the Court of Appeals was entered on January 12,1977. A timely petition for rehearing and sug- gestion for rehearing en banc were denied on March 25, 1977. An application to this Court for an extension of time to file this Petition was granted on June 8, 1977, allowing petitioner until July 23, 1977. The jurisdiction of this Court is invoked under 28 U.S.C. Section 1254(1). Questions Presented 1. Is the Second Circuit’s decision in conflict with this Court’s decisions construing the patent clause of the Consti- tution and Sections 103 and 112 of the Patent Act setting the standards for determining the validity of patents? 2. Did the Second Circuit err in holding that ‘‘a com- bination of existing elements’’ (550 F.2d 722) constituted a patentable invention where nothing novel was added and no synergistic effect was obtained? 3. Did the Second Circuit err in holding that the patent at issue was not invalid for obviousness (35 U.S.C. 103), despite the conceded absence of any novel conception, on the asserted grounds that it solved a problem, despite the holdings of this Court? 4. Did the Second Circuit err in relying upon the as- serted precision obtained by the process where no such claim was made by the patent (35 U.S.C. 112)? Constitutional and Statutory Provisions Involved This case involves Art. I, Section 8, Clause 8 of the Constitution (App. C); and Sections 103 and 112 of the Patent Act of 1952, 35 U.S.C. 103, 112 (App. D). Statement of the Case A. The Issues Presented This action for patent infringement and for an injunc- tion and damages was brought on March 2, 1971, by re- spondent, U.S. Philips Corp., in the United States District Court for the Southern District of New York. Judisdiction was founded on 28 U.S.C. 1338(a). Petitioner seeks review of the decision of the Court of Appeals for the Second Cir- cuit which, by a 2-1 vote, affirmed the judgment of the Dis- trict Court holding valid and infringed certain claims of U.S. Patent No. 3,246,383 (hereinafter the Peloschek pat- ent). The Peloschek patent is directed to the manufacture of magnetic recording heads, particularly for electronic com- puters. It is a combination of known steps, none of which is novel. The particular factor relied on for patenta- bility—the use of capillary action—is ancient and is known to schoolboy-scientists. (550 F.2d at 724.) The District Court recognized that the validity of the Peloschek pat- ent was far from clear, and that the question of obvi- ousness ‘‘is a close one’’ (A 65a).' The majority of the Second Cireuit’s panel acknowledged that ‘‘the elements of the Peloschek patent existed in the prior art of manufac- 1. Reference is to the printed Appendix filed with the Court of Appeals. Statement also appears at 410 F.Supp. at 446. 4 turing electronic and magnetic devices’’ (550 F.2d at 723), but rejected petitioner’s argument of ‘‘obviousness’’ on the grounds that a particular result achieved, although not specified in the patent’s claims, had been ‘‘long sought.’’ This standard has been repeatedly and specifically rejected by this Court: e.g., Paramount-Publiaz?; Dow*; Graham.‘ The issue which petitioner seeks to present to this Court is limited to the validity of the patent. The decision below is in direct conflict with the unbroken line of decisions of this Court and with other Circuits. It is, however, in keeping with a line of decisions of various panels of the Second Circuit (see cases cited, infra, and cf., Roanwell Corp. v. Plantronics, 97 S.Ct. 538 (December 6, 1976) (dis- sent by White and Brennan, JJ., from denial of certiorari to review Second Circuit affirmance of patentability)). The specific issues presented are the constitutional criterion of ‘*invention’’; the standards for determining obviousness; the weight to be given to ‘‘secondary indicia’’; and the legality of deciding the validity of a patent on a basis not stated in the claims. The Peloschek patent is one of a number of patents re- lating to the manufacture of magnetic recording heads, used primarily in electronic computers, which are owned by N. V. Philips Gloeilampenfabrieken and affiliates. Each of the Philips patents claims some improvement or change over its predecessors. Each, of course, was intended to and did extend the attempted Philips monopoly for 17 years. 2. Paramount Publix Corp. v. American Tri-Ergon Corp., 55 S.Ct. 449, 453 (1935). 3. Dow Chemical v. Halliburton, 65 S.Ct. 647, 651 (1945). 4. Graham v. John Deere, 86 S.Ct. 684, 703 (1966). 5) The Peloschek patent was filed in 1963 and issued in 1966. It would have the effect, if valid, of extending the Philips monopoly until 1983. Together, IBM and Ferroxcube, a Philips affiliate, man- ufacture more than 90% of the heads in issue. Micronetics is a relatively small manufacturer of such heads. IBM and Philips have a ‘‘field of the Art’’ agreement under which 1,500 Philips patents are available, including the Peloschek and other Philips patents for magnetic recording heads. The record does not, however, show that IBM is using the Peloschek process. As the Trial Court found, ‘‘There is fonly] some testimony indicating that IBM made use of the process at least until 1969’’ (A 68a), and there is no evidence that anyone contracted to pay for use of the Pelo- schek patent. Accordingly, the Trial Court ‘‘has not at- tached great weight to the proof offered of commercial success’’ (A 68a). For reasons which are totally obscure, the majority of the Second Circuit’s panel disregarded these facts, and relied upon the alleged existence of a prob- lem which Peloschek solved in a ‘‘flash of brilliance’’! The Facts Magnetic recording heads are used in the recording and playback of electronic signals. Familiar examples are in- struments for recording voice or music, but the principal use for magnetic recording heads is in electronic computers. The operative part of the head is a core composed of two magnetic pieces separated by a ‘‘gap’’ of minute dimen- sions which is filled with a non-magnetic material (glass). The core serves electronically to imprint information on magnetic tape, film or disc, which is moved under it. 6 The only issue in this case relates to the method of Ning the ‘‘gap’’ between the two pieces of magnetic ma- terial (ferrite) with glass. The glass, in molten or liquid form, serves to bond the magnetic parts of the core. There is no dispute that all of this including the iden- tical glass-bonded ferrite core was well-known and prac- ticed prior to Peloschek. Magnetic recording is admittedly an old art; the size of the gap is regulated by the insertion of ‘‘shims’’ or spacers, which is concededly prior art in making magnetic recording heads; and filling the ‘‘gap”’ with glass by a variety of alternative means, the glass also serving to ‘‘bond’’ the magnetic pieces, is also well-known art. All of these are taught and disclosed by patents, the major ones (the Duinker patents) being owned by Philips.°® The asserted contribution made by Peloschek, relied upon by the Courts below, is to use the ancient principle of ‘‘capillary’’ action to insert the glass in the gap: That is, to locate the glass outside and adjacent to the gap, and then to heat it so that it ‘‘flows’’ into the gap. Alternative methods in use, prior to Peloschek as well as currently, involve inserting the glass or a glass film in the gap or applying a glass coating to the magnetic pieces and then subjecting the core to heat and pressure so that the glass fills the gap and bonds the magnetic pieces. Peloschek does not claim that he invented the capillary process. Capillary action to fill a minute gap is an old and well-known art. As the dissenting judge in the Court of Appeals stated, the ‘‘capillary’’ procedure is nothing more 5. See 550 F.2d at 725 for citation of specific patents. 7 thai ‘‘an adaption of a physical process familiar to every embryonic schoolboy scientist who has watched his blotter absorb ink’’ (550 F.2d at 724).° Its use in the electronic and magnetic arts is well-established and a number of pat- ents, prior to Peloschek, teach the use of the capillary pro- cedure in those arts for filling minute gaps with a variety of materials. As the Trial Court found: ‘‘The prior art indicates the widespread use of capillary action to fill minute gaps * * *.’’ (A 64a). One of these earlier patents, a German patent, as the Trial Court found, relates specifically to the manufacture of magnetic recording heads (A 60a). The majority below ignores this fact and finding and, without explanation, makes the surprising statement that ‘‘capillarity [is] an element previously unused in the art of manufacturing magnetic recording heads.’’ (550 F.2d at 725). Another, the Grant patent, teaches the use of the capillary process in terms that are indistinguishable from the Peloschek claims, or in the words of the Trial Judge, ‘‘read most directly on’’ the Peloschek patent (A 63a). Grant dis- closes ‘‘a structure consisting of two magnetic parts sep- arated by a minute permanent non-magnetic gap, which also bonds the two together, created by flowing non-magnetic material between the two parts by capillary action’? (410 F.Supp. at 463). ‘‘The function of the claimed invention,’’ according to Grant, ‘‘is to connect said magnetizable mem- bers together and to form therebetween a permanent non- magnetic gap of fixed dimensions.’’ (A 61a). (Emphasis 6. The dissenting judge in the Court of Appeals said : “The schoolboy scientist, were he willing to spend five minutes on research, would have learned that capillarity works most effectively in narrow spaces.” (550 F.2d at 724). 8 supplied.)’ (The majority below discusses Grant at some length, but disposes of it, citing previous Second Circuit decisions,® on the grounds that éven if Grant and others demonstrate that capillarity is part of the prior art, the ‘‘problem”’ of achieving precision in the gap-filling process was solved by Peloschek. In fact, there was no such prob- lem; the Peloschek patent, in its 15 claims, does not assert that its contribution is the solution of any such problem; and the decisions of this Court establish that problem- solving, without ‘‘invention’’ does not sustain patentabil- ity.) None of the prior patents or other prior art relating to the use of the capillary process was before the Patent Ex- aminer or cited by him. For this reason, the District Court expressly ruled that the usual statutory presumption of validity of a granted patent was ‘‘weakened”’ (A 52a). B. Opinions Below The District Court The Trial Judge expressed doubts as to obviousness; he found that the evidence of ‘‘secondary”’ indicia of non- obviousness was meager; and he was unimpressed by the ‘‘meager’’ evidence of commercial success. He neverthe- less upheld the validity of the Peloschek patent on the basis 7. Grant and the German patent speak of the use of materials other than glass for filling the tiny gaps by capillary action, but this is of no significance: (1) There is no dispute that glass has long been known to be subject to capillary action; (2) only three of the 15 claims of the Peloschek patent specify glass; and (3) it is well- established that relevant prior art includes “closely related arts.” Graham at pp. 702-703. 8. 550 F.2d at 722. 9 of the Second Circuit’s Timely Products® opinion which, contrary to this Court’s decisions (see mfra) asserts that the solution of a problem which others have considered and failed to solve, negates obviousness. Tke Trial Judge did not expressly address himself to the question whether the alleged Peloschek contribution to the art satisfied the constitutional requirement for an inven- tion or whether, as the dissent in the Court of Appeals con- cluded, ‘‘His invention did not push back the frontiers of scientific knowledge’’ (citing this Court’s decision in the AP case).”° The Trial Judge recognized that prior to Peloschek, there was ‘‘widespread use of capillary action to fill minute gaps’’; he recognized that prior art, spe- cifically the Duinker Philips patent No. 3,117,367, taught the use of shims or spacers to fix the size of the gap. He admitted that prior art (the Grant patent in particular) used capillary action successfully to fill a gap of ‘‘fixed dimensions’’ (A 61a); he acknowledged that the German patent taught the use of capillarity with specific reference to magnetic recording heads (410 F.Supp. at 463). In his view, however, the Peloschek contribution is patentable because, by the use of capillary action, it achieved a result which other ‘‘skilled workers in the field’’ had not reached: Namely, to insert or inject the glass so as to fill the gap ‘*precisely’’. Other facts and findings of the Trial Judge, however, at least cast doubt upon the premise that Pelo- schek found an answer to a serious problem (even if that premise would support patentability which it does not under the decisions of this Court—see infra) : 9. Timely Products Corporation v. Arron, 523 F.2d 288, 294 (2 Cir. 1975). 10. Great Atlantic and Pacific Tea Co. v. Supermarket Equip- ment Corp., 71 S.Ct. 127 (1950). 10 1. Peloschek and his co-worker were not even instructed by Philips to seek a method of more precisely filling the gap. They were asked to find a more economical manu- facturing method for gap-filling; and within a few months they came up with the use of the capillary procedure. (As the dissenting judge in the Court of Appeals stated, ‘‘ There was no crying industrial demand for the process, either prior to the alleged invention or within a reasonable time thereafter’’ (550 F.2d at 725).) 2. Nota single one of the 15 claims in Peloschek recites or specifies the achievement of greater precision. 3. As the Trial Judge found, after publication of the Peloschek method, there is no evidence of substantial com- mercial use—if there had been a need which Peloschek satisfied, presumably manufacturers would have turned to the use of his patent and would have taken licenses from Philips. 4. On the contrary, the Trial Court found little use of Peloschek except by Philips itself and petitioner Micro- netics, and he concluded that, ‘‘In light of the record, the Court has not attached great weight to the proof offered of commercial success.”’ The Second Circuit Without acknowledging or even referring to the Trial Court’s finding that the German patent had been directed to the use of capillary action in filling gaps in magnetic recording heads, the majority of the Second Circuit panel concluded that ‘‘capillarity’’ was ‘‘an element previously unused in the art of manufacturing magnetic recording 11 heads’’ (550 F.2d 721). This is clearly erroneous. They, however, held that in the present case, Peloschek ‘‘found a solution, however simple, by departing from the norm’’ of prior practice, to ‘‘the industry’s search for a process which would accurately reproduce minute gap dimensions {and which] had been the subject of continuing experimen- tation for nearly a decade’’ (550 F.2d at 722). On this basis, quoting prior Second Circuit statements in Timely Products Corporation v. Arron, 523 F.2d 288, 294 (1975), the majority held that the Peloschek patent was not void for obviousness. Even if we assume, as the majority says, that Peloschek succeeded where others failed, decisions of this Court, as we have noted, make it plain that this fact would not estab- iish patentability.’ But there is no evidence in this record of a demand, unsatisfied by the prior art, for a process having the characteristics of the Peloschek patent. On the contrary, not a single company agreed to pay the price for a license under the Peloschek patent. As the Trial Court found (A 68a) only Philips and Micronetics use the capil- lary process. IBM made some use of the process at least until 1969, but this was under a general ‘‘field of use’’ license under which they have available about 1,500 Philips patents. As the Trial Court further found, ‘‘the court has not attached great weight to the proof offered of commer- cial suecess’’, and ‘‘admittedly the evidence of the ‘second- ary’ indicia of non-obviousness is meager.”’ The plain fact of the matter is that the decision below secures to N. V. Philips and its affiliates a monopoly of 11. Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., Inc., 90 S.Ct. 305 (1969); Sakraida v. Ag Pro, Inc., 96 S.Ct. 1532 (1976). 12 indeterminable scope and incalculable effect, embracing the use of the old ‘‘capillary’’ process in the art of glass and glass-bonding, based upon a patent which is clearly in vio- lation of this Court’s standards. Reasons for Granting the Writ A. In Summary Petitioner respectfully submits that this Court should review the present case: 1. The decision is clearly in conflict with the rulings of this Court with respect to the construction of the patents clause of the Constitution (Art. I, §8, cl. 8); the standards for determining the existence of an ‘‘invention’’ sufficient to sustain the grant of a patent monopoly; and the determi- nation of ‘‘obviousness’’ within Section 103 of the Patent Act. 2. The decision below is in conflict with decisions of other Courts of Appeals on the questions of invention and patentability, obviousness, and the limitation of the patent to its specific claims, for purposes of determining validity. The result is widespread ‘‘forum-shopping’’ in patent cases. 3. The decision below validates a patent on a basis which is not specified or disclosed in the claims or specifi- cation of the patent. This decision is in conflict with the conclusions of other Circuits and of this Court, and it opens a potentially explosive area of patent adjudication. 13 4. The issues are of great importance to the adminis- tration of the patent laws and to the national interest in the preservation of an open, competitive society in which access to the fund of knowledge is not interfered with be- yond the strict limits of the Constitution as construed by this Court; in which competing entrepreneurs, inventors and innovators are encouraged and are not blocked from the use and development of technical, scientific and produc- tion information; and in which competition and innovation generally, and particularly in the high-technology fields, are not constricted by the unwarranted use of monopolies based upon invalid patents. B. Summary Argument 1. Conflict with Decisions of this Court a. Viewed in light of this Court’s prior decisions, the Peloschek patent is invalid for lack of invention und for obviousness. (1) Peloschek does not add to the sum of useful knowl- edge, but seeks to withdraw known processes from public use. It is a combination of prior art. No component or process new to the arts of magnetics or electronics was claimed or disclosed. ‘‘No new mental or physical opera- tion’’ is involved.” The courts below ignored this Court’s repeated admo- nition that a patent, to be valid, ‘“‘must add to the sum of useful knowledge, not subtract from it’: 12. Graham, 86 S.Ct. at 688; Dow, 65 S.Ct. at 649. 14 ‘‘Congress may not constitutionally enlarge the patent monopoly without regard to the innovation, advance- ment or social benefit gained thereby. Moreover, Con- gress may not authorize the issuance of patents whose effects are to remove existent knowledge from the pub- lie domain, or to restrict free access to materials al- ready available. Innovation, advancement, and things which add to the sum of useful knowledge are herent requisites in a patent system which by constitutional command must ‘promote the Progress of * * * useful Arts.’ This is the standard expressed in the Constitu- tion, it may not be ignored.’’ Graham v. John Deere, 86 S.Ct 688. (Emphasis supplied.) A&P, 71 8.Ct. at 130; Hotchkiss v. Greenwood, 11 How. 248 (1851); Dann v. Johnston, 96 S.Ct. 1393 (1976); Dow, 65 S.Ct. at 649. (2) The decisions of this Court establish that the achievement of betler results, even if proved, does not sustain a patent in the absence of true ‘‘invention’’. ‘It is elemental that the mere substitution of equivalents which do substantially the same thing in the same way, even though better results may be produced, is not such an inven- tion as will sustain a patent. Dunbar v. Myers, 94 US. 187, 199, 24 L.Ed. 34; Smith v. Nichols, 21 Wall. 112, 119, 22 L.Ed. 566.’’ Dow, 65 S.Ct. at 651. Greater utility does not establish novelty. Paramount, 55 8.Ct. at 453-4. ‘It is relevant to commercial success, not to invention.’’ Ander- son’s-Black Rock, 90 S.Ct. at 307. ‘‘Greater convenience, cheaper, faster, commercial success prove nothing.’’ Sak- raida, 96 S.Ct. at 1537. The asserted improvement does not sustain patentability where it ‘‘is the work of a skillful mechanic, not an inventor.’’ Sakraida (1976), quoting Hotchkiss (1851); see also Dow, 65 S.Ct. 647, 650, ‘‘mere 15 application of an old process to a new and analogous use’’ is not patentable. (3) Combination patents are suspect. As this Court has held, they must meet a “‘severe test.’? A&P, 71 S.Ct. at 130. This Court has at the present term reaffirmed the following basic principle, quoting from A&P: ‘Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements.... A patent for a combination which only unites old elements with no change in their respective functions .. . obviously withdraws what already is known into the field of its monopoly and dimin- ishes the resources available to skillful men. . . .’’—Sak- raida, 96 S.Ct. at 1537. ‘Strict observance’? of the requirements for patent- ability is essential. Graham, 86 S.Ct. at 694. (4) At most, the differences between Peloschek and the art m use is not enough to justify the grant of a patent monopoly. Small differences between the new thing and what we have known before are not enough. Dann v. Johnston, 96 S.Ct. 1393 (1976); Dow, 65 S.Ct. at 651; Graham, 86 S.Ct. at 692 and 703. (5) The Peloschek combination does not produce a syn- ergistic result, essential to the validity of combination pat- ents. Sakraida, 96 S.Ct. 1532; Anderson’s-Black Rock, 90 S.Ct. 305. (6) The basis of the decision in this and other Second Circuit cases—that the patent solved a problem—even if 16 that statement were warranted here, does not sustaim va- lidity, as this Court has frequently held. The failure of others to come forward with the new use of am oid art is not enough. A claim of long-felt need is not enough in the absence of ‘‘true invention.’’ Dow at 651; Graham at 703. Long search for a solution is not enough. Paramount, 294 U.S. at 476. The fact that other inventors failed to resort to a method proves nothing; it is ‘‘wholly irrelevant’’. Graham at 703. The problem test is ‘‘wholly irrelevant’’. Graham at 703. In Dow, this Court expressly ruled that the fact that no one thought of the new use is not enough. ‘‘He who is merely the first to utilize the existing fund of public knowledge for new and obvious purposes must be satisfied with whatever fame, personal satisfaction or commercial success he may be able to achieve. Pat- ent monopolies, with all their significant economic and social consequences, are not reserved for those who contribute so insubstantially to that fund of pubiic knowledge.’’ 65 S.Ct. 647. Dow at 650. (7) The Peloschek process was obvious. The inventor must be charged with knowledge of the technology. Dann, 96 S.Ct. 1393. Relevant prior art includes ‘‘closely related art.’’ Graham, 86 S.Ct. at 702-703. b. The lower court sustained the validity of Peloschek on the basis of its ‘‘ precise’’ recults—which is not asserted in any of its claims. A patent may not be validated by features not specified in the claims. 35 U.S.C. 112; A&P, 71 S.Ct. 127 at 129; United Carbon Co. v. Binney & Smith Co., 63 S.Ct. 165, 170 (1942). The scope of protection granted by a patent is defined by the language of its claims, and it is the ‘‘claims which define the boundaries of a patent 17 monopoly.’’ AdéP at 128. It is the claims and only the claims which ‘‘measure the invention.’’ General Electric Co. v. Wabash Co., 58 S.Ct. 899, 902 (1938). Moreover, such an ‘‘afterthought’’ cannot sustain va- lidity ; if ‘‘precision’’ of the gap were ‘‘so vital an element in the functioning of the apparatus, it is strange that all mention of it was omitted.’’ Graham, 86 S.Ct. at 697 ; quot- ing Lincoln Engineering Co. v. Stewart-Warner Corp., 303 U.S. 545, 58 S.Ct. 662 (1938); A&P, 71 S.Ct. at 129. 2. Conflict with Other Circuits We respectfully submit that a reading of opinions in other Courts of Appeals involving questions of patenta- bility underscores the need for this Court to review the present case, and to affirm and reaffirm the constitutional and statutory standards which should be applied in all pat- ent adjudications. The present case presents these issues clearly and sharply; and the need is imperative for clear guidance and direction to all circuits as well as to the Sec- ond Circuit where the novel and impermissible ‘‘existence of a problem’’ test has been enshrined in disregard of this Court’s prior decisions.”* For examples of the Second Circuit’s departure from this Court’s precepts, see Timely Products Corporation v. Arron, 523 F.2d 288 (2 Cir. 1975), which gave rise to the ‘*problem’’ test of patentability in dictum reading: ‘‘We can conceive of no better way to determine whether an invention would have been obvious’’ than to apply the ‘*problem’’ test. This Court had since the A¢dP ease in 13. Even within the Second Circuit, various panels have reached conflicting results. 18 1950 prescribed the better way, and in Graham, in 1966, specifically articulated the primary tests as the better way. The Timely opinion was authored by Judge Conner. In the Roanwell case, supra, criticized by Justices White and Brennan, Judge Conner as the Trial Judge held a patent valid because of the existence of an unsolved problem and relied for authority on his dictum in the Timely case (403 F.Supp. 138, 148). The Roanwell decision was affirmed per curiam, 535 F.2d 1397, thus converting the ‘‘problem’’ test dictum to the rule of the Cireuit. The present case ex- pressly followed the dictum of Timely both at the trial and appellate levels in total disregard of the ‘‘long standing principles of patent law’’ mandated by this Court since Hotchkiss in 1851; Roanwell, 50 L. Ed.2d 619. Long prior to the dictum in Timely, the Second Circuit conspicuously, among all of the federal appellate courts, has based decisions of patent validity upon ‘‘secondary considerations’’ which this Court has repeatedly warned against. See, e.g., Reiner v. I. Leon Co., 285 F.2d 501 (2 Cir. 1960); Lyon v. Bausch € Lomb Optical Co., 224 F.2d 550, 535 (2 Cir. 1955); Shaw v. E. B. d A. C. Whiting Co., 417 F.2d 1097, 1104 (2 Cir. 1969). Examples of contrary decisions in other circuits are: 1. In the First Circuit, Eastern Plastics Corp. v. Ronci, 396 F.2d 890 (1970). 2. Inthe Third Circuit, Philips Electronic and Pharm- aceutical Industries Corp. v. Thermal and Electron- ic Industries, Inc., 450 F.2d 1164 (1971), involving another Philips affiliate and a patent relating to a glass-to-metal seal. The Third Circuit in that ease 19 faithfully followed the rule of Graham and found the patent invalid for obviousness although, like the Peloschek patent, it assertedly solved a long felt need and achieved commercial success. . In the Fourth Cireuit, Technograph Printed Cir- cuits, Ltd. v. Martin Marietta Corp., 474 F.2d 798 (1972); Timely Electronics & Systems, Inc. v. Op- tical Recognitions Systems, Inc., 493 F.2d 1222 (1973). . Inthe Fifth Cireuit, Waldon, Inc. v. Alexander M f9. Co., 423 F.2d 91 (1970). . In the Sixth Circuit, Westwood Chemical, Inc. v. Owens-Corning Fiberglass Corp., 445 F.2d 911 (1971); Kaiser Industries Corp. v. McLouth Steel Corp., 400 F.2d 36 (1968); Speakman Company v. Water Saver Faucet Co., Inc., 497 F.2d 410 (1974). - In the Seventh Circuit, Panduit Corp. v. Burndy Corp., 517 F.2d 535 (1975), involved a strap binding tool which was directed to a combination of elements and assertedly solved a long felt want. The Sev- enth Circuit reversed the trial court and found the patent invalid on the ground of obviousness. The Court found the patent invalid by strict application of the Graham tests. . In the Eighth Circuit, American Infra-Red Radiant Co. v. Lambert Industries, 360 F.2d 977 (1966) ; Hadfield v. Ryan Equipment Co., 456 F.2d 1218, 1221 (1972). . In the Ninth Cireuit, Proler Steel Corp., Ine. vy. Luria Brothers & Co., Inc., 417 F.2d 272 (1972); 20 Ashcroft v. Paper Mate Mfg. Co.,, 434 F.2d 910 (1970). 9. In the District of Columbia Circuit, Higley v. Bren- ner, 387 F.2d 855 (1967). We respectfully submit that the Court should put an end to the forum-shopping which these conflicts have invited, and should terminate the situation in which patent validity, access to knowledge, and the survival of competitors to the great patent-engrossers like Philips depends upon Philips choice of forum and the luck of the draw of the panel. Conclusion For the reasons stated, a writ of certiorari should issue to review the judgment and opinion of the United States Court of Appeals for the Second Circuit. Respectfully submitted, Ase Fortas JoHN M. CALIMAFDE Fortas & Koven STEPHEN B. JupLowz 1200 29th Street N.W. Hopcoop, CaLimaFpE, Katit, Washington, D.C. Buausters & LizseRMAN Of Counsel 60 East 42nd Street New York, New York 10017 Counsel for Petitioner APPENDICES Appendix A UNITED STATES COURT OF APPEALS Seconp Circuit I U. S. Puips Corp., Plaintiff-Appellee, v. Nationa Micronetics Inc., et al., Defendants-A ppellants, v. Nortu AMERICAN Puruips Corporation and N. V. Pururrs GLOEILAMPENFABRIEKEN, Counter-Defendants. No. 209, Docket 76-7134. Argued Nov. 22, 1976. Decided Jan. 12, 1977. ES Before MAansFIELD, VAN GRAAFEILAND and MEsKILL, Circuit Judges. MansFIELD, Circuit Judge: National Micronetics, Ine. (‘‘National’’) appeals that portion of a judgment of the District Court for the South- ern District of New York, Robert J. Ward, Juage, holding valid certain claims of U.S. Patent No 3,246,383 (‘‘the Peloschek Patent’’). Appellant does not challenge the dis- trict court’s additional finding that it infringed the patent. A2 Appendix A The plaintiff, U.S. Philips Corporation, commenced this action against National on March 2, 1971, seeking damages and injunctive relief as assignee of three allegedly infringed patents. National denied infringement, challenged the validity of all three patents, and asserted counterclaims for patent misuse and antitrust violations against plaintiff and its assignors, North American Philips and N.V. Philips Gloeilampenfabrieken. Prior to trial plaintiff withdrew one infringement claim and Judge Ward severed and stayed the counterclaims pending the outcome of the infringement action. On January 27, 1976, after a trial without a jury, the district court issued a 50-page opinion finding one of the patents invalid and that claims 1-4, 6 and 8-11 of the Peloschek patent were valid and infringed. National’s appeal is limited to the issue of the validity of the Peloschek patent under 35 U.S.C. §103, which states that: ‘*A patent may not be obtained .. . if the differences between the subject matter sought to be patented and the prior art are such that 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.’’ The Peloschek Patent The Peloschek patent’s subject matter is a process for the manufacture of a magnetic recording head, which is that part of a tape recorder or computer that translates electrical impulses into magnetic patterns on a tape for the purposes of storage. In reverse, the recording head can MMMth es A3 Appendix A ‘‘read’’ the magnetic patterns from the tape, meaning that it retranslates them into electrical impulses which then become sounds, pictures, or a computer printout. A magnetic recording head consists of two basic parts, the first constructed of magnetic material and the second of a non-magnetic material bonded to the first as a ‘‘gap”’ which permits the electrical impulses flowing through the recording head to create magnetized patterns on the tape opposite the gap. The magnetic heads at issue in this case generally have a magnetic portion constructed of two ferrite pieces, bonded together by a non-magnetic portion, usually of a glass-type material. (See Exhibit A hereto). The process for which the Peloschek patent was obtained describes a method of bonding the two ferrite pieces and the gap material to create a single-piece magnetic head with a minute non-magnetic gap. The recording head and the gap in it must be of near- microscopic dimensions in order to maximize the amount of information which can be stored on a given portion of tape. The gap, which determines the size of the magnetized spot on the tape, generally measures no more than 50 to 100 microinches or millionths of an inch. (An average sheet of paper is about 3,000 microinches thick.) The evidence shows that for a given recording head to be able accurately to read or retranslate information which has originally been stored on a tape through use of a different recording head, the gap dimensions in each head must be virtually identical, with allowable deviations or tolerances of no more than 10 to 20 millionths of an inch for the larger heads, and much less in smaller recording heads. Since numerous re- A4 Appendia A cording heads are used in a single computer disc file, it is of vital importance to have all heads conform to prescribed gap dimensions within a few millionths of an inch. Other- wise some of the essential recording heads will not function as the system requires. For nearly a decade prior to the issuance of the Pelo- schek patent the recorder-manufacturing industry was con- cerned over the inability to produce glass-bonded heads which would uniformly meet the precise specifications and conform to the narrow tolerances that were essential to suc- cessful performance and interchangeability. The Peloschek patent addresses itself to this problem. Filed May 3, 1963, and issued April 19, 1966, the patent states its objective as follows: ‘Magnetic heads with very short gaps having lengths between 1 and 20 microns are difficult to manufacture since close tolerances are usually imposed on the length of the gap and the non-magnetic material in the gap must have a good resistance to detrition and must be capable of being readily processed; in addition, the process of manufacture should be as economical and simple as possible. The gap material also must be as homogeneous as possible. It is the primary object of the invention to provide a method of manufacturing magnetic heads with very short gap lengths which is comparatively simple to perform while achieving close tolerances for gap length.’’ (Emphasis added). The claims which were sustained by the district court are: “1. A method of manufacturing portions of mag- netic heads composed of two magnetic circuit parts consisting of sintered oxidic ferromagnetic material A5 Appendix A and having confronting gap surfaces with a gap there- between filled with a nonmagnetic material bonding the circuit parts together, comprising: placing spacing members having a thickness equal to the desired gap length at opposite ends of a first polished gap surface of one circuit part, placing a corresponding polished gap surface of a second circuit part on said spacing members in confronting relationship with said first surface thereby forming a gap between said surfaces, placing a quantity of nonmagnetic material adjacent to the gap, said nonmagnetic material having a melting temperature below that of said ferromagnetic material, and heating the resulting assembly to the melting tem- perature of said nonmagnetic material, whereby said nonmagnetic material melts, fills the gap by capillary action, and bonds the circuit parts together. ‘‘2. A method according to claim 1, wherein said nonmagnetic material is glass. ‘¢3. A method according to claim 1, wherein said magnetic material is enamel. ‘‘4. A method according to claim 1, wherein pres- sure is applied to the assembly during the heating step.’’ Claims 6 and 8 describe the use of the process in making a multiple of recording heads, and claims 10-11 omit the use of spacing members in the process. The claimed manufacturing process for the bonding of the magnetic and nonmagnetic portions of the recording heads may be summarized as: (1) presetting the gap or space between two ferrite pieces at a desired length by placing the surfaces of the ferrite pieces opposite each other, inserting spacing members or shims of precise given A6 Appendix A dimensions between them, and bringing the ferrite surfaces firmly together against the spacers or shims, which serve to fix the gap length at a predetermined distance; (2) plac- ing the nonmagnetic material (e. g., glass) adjacent to the space between the ferrite pieces; (3) heating the assembly to the melting puint of the nonmagnetic material (glass) ; and (4) permitting the melted nonmagnetic material (glass) to flow into and fill up the gap, with the result that the two ferrite pieces are bonded together by nonmagnetic material of a predetermined thickness. The flowing action is created by capillarity, a principle of physics which is defined by Webster’s New Collegiate Dictionary (7th ed.) as ‘‘The action by which the surface of a liquid where it is in contact with a solid is elevated or depressed depending on the relative attraction of the molecules of the liquid for each other and for those of the solid.’’ The district court, in a well-reasoned decision, held that the subject matter of the Peloschek patent would not have been obvious to one skilled in the art of glass bonding at the time it was made, observing ‘*The crucial feature ... is the use of capillary action to fill a preset gap of precise, reproducible dimensions. Nowhere in the prior art ... is there any disclosure which would make it clear to one skilled in the art that such an application of capillary action would be suc- cessful.’’ The district court refused to accord weight to National’s showing that capillary action had been disclosed in patents in the electronics and recording industry. ‘‘The prior art indicates the widespread use of capillary action to fill min- A7 Appendix A ute gaps, but in none is the precise size of the gap of great importance or predetermined.”’ Appellant claims that the capillary process was ‘‘ob- vious’’ under 28 U.S.C. §103 and that the district court erred in inferring from the evidence that the Peloschek patent claimed a level of gap precision and uniformity greater than that found in the prior art. We disagree, and affirm the district court’s finding of validity. Scope of Review To resolve the issue whether the invention was obvious within the meaning of 35 U.S.C. §103, we must examine the scope and content of the prior art, the differences between the prior art and the claims at issue, and the level of ordinary skill in the pertinent art. Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). In doing so, we recognize that the ultimate issue of the validity of a patent is a question of law, and that the district court’s findings of fact will not be disturbed unless clearly erroneous, except that where they are based on un- disputed facts or documentary evidence, we may -ubstitute our own inferences and conclusions for those of the district judge. Maclaren v. B-I-W Group, Inc., 535 F.2d 1367, 1371 (2d Cir.), petition for cert. filed, —— U.S. ——, 97 S.Ct. 531, 50 L.Ed.2d —— (1976). 1. The Supreme Court also made it clear in Graham that long-felt need in th industry and commercial success may also be considered, 383 U.S. at 35-36, 86 S.Ct. 684, although these “criteria are of sec- ondary i rtance,” see Julie Research Laboratories, Inc. v. Guide- line Inst. Inc., 501 F.2d 1131, 1135 (2d Cir. 1974). A8 Appendix A The Prior Art Prior art processes for the manufacture of magnetic recording heads were aimed principally at the discovery or development of a manufacturing process which would pro- duce uniformity in the non-magnetic gap lengths within the tolerances or permitted ranges of deviation that are essential to the proper functioning of recording heads. Another aim was to insure that the non-magnetic material used to fill the gap would not suffer from irregularities, such as bubbles or other defects that would impair the magnetic effectiveness of the ferrite pieces or core. The prior art history, as disclosed in a series of patents issued during the period 1954 to 1962, is one of repeated efforts to solve these problems, which were for the most part un- successful. Although some improvements were achieved in the quality of the recording heads produced, the processes generally resulted in low yields of acceptable heads, ranging from 5% to 50%. The earliest of the patents for manufacture of magnetic recording heads introduced at trial was No. 2,919,312, issued to Georg Rosenberger, et al., on December 29, 1959, on an application filed March 16, 1954. It claimed a process of manufacturing such heads with a ‘‘limited and well defined very narrow working gap,’’ through the cementing of non- magnetic filler material between the ferrite pieces. In 1956, seven years prior to the filing of the Peloschek patent, Simon Duinker and Jules Bos filed a patent application entitled ‘‘Glass Gap Spacer for Magnetic Heads.’’ This application, for which patent No. 3,024,318 (Duinker ’318) was issued in 1962, accurately disclosed the state of the art AQ Appendix A of manufacturing magnetic recording heads at the time. The patent substituted a glass foil material in place of other gap materials. In discussing ‘‘the requirements to be satisfied by the width of the gap,’” the application stated that ‘‘in the present state of the art with respect to magnetic recordings, these requirements have become com- paratively exacting ard the disadvantages attendant on the use of such [foil spacing plates] during manufac- ture are becoming increasingly marked.’’ Duinker 318, by its own terms, sought to achieve the ‘‘correct gap width’’ by placing a thin glass foil between the ferrite sur- faces, heating the assembly, and applying pressure to bond the ferrite and the glass, forming the gap. This process became known colloquially as the ‘‘sandwich’’ technique, as distinguished from Rosenberger, which simply used cement. In patent No. 3,094,772 (Duinker ’772), entitled ‘‘ Method of Producing Magnetic Heads with Accurately Predeter- mined Gap Heights,’’ Duinker once again sought to attain a ‘‘well-defined’’ gap through revision of the technique employed in ’318. He criticized the prior art on the grounds that ‘‘the gap height . . . cannot be determined within narrow limits’’ and stated ‘‘[i]t is also difficult if not im- possible to produce small gap widths.’’ Essentially Duinker ‘772 claimed that it improved the accuracy of the gap lengths through use of more accurately placed and finished ferrite pieces. 2. In the various reports and patent applications, the term “gap width,” “gap length,” and “gap dimensions” are used interchangeably to describe the measurement of the distance between the two ferrite (magnetic material) pieces, which is filled with a glass bonding ma- terial (non-magnetic ). Al0 Appendix A In 1963 patent No. 3,079,470, for which application had been made in 1959, was issued to Marvin Camras of the Armour Research Foundation of the Illinois Institute of Technology. The object of this process, as with its pred- ecessors, was to construct a magnetic recording head hav- ing ‘‘a very precise stable gap structure capable of main- taining precise gap dimensions.’’ This time, the inventor introduced a low melting point gap material and proposed the use of an ‘‘evaporated film’’ as a preliminary gap spacer in the process. The bonding procedure under this patent continued to employ a sandwich-like pressure of the heated gap materials to the ferrite. In 1959 Duinker, still trying to find a way of solving the problem of producing uniform gaps of non-magnetic material, applied for a patent which further refined but failed to depart from the sandwich technique. Duinker now proposed to add ‘‘shims’’ or spacers made of mica to help attain a ‘‘correct gap length.’’ In discussing the disadvan- tages of the prior art, the application, for which patent No. 3,117,367 was issued on January 14, 1964, stated that ‘*the adjustment of the gap length to the correct value is not possible when the glass flows away.’ However, the spacers were largely ineffective in achieving their objective because the glass foil inserted between the faces of the ferrite pieces was thicker than the shims so that when heat and pressure were applied, the gap length was sometimes 3. Duinker’s objective of finding a process for achieving ac- curate gap dimensions is further evidenced by a report he authored shortly after applying for Duinker '367. In “Durable High-Resolu- tion Ferrite Transducer Heads Employing Bonding Glass Spacers,” he stated that for extremely small gap lengths “mica spacers are necessary to ensure predetermined values.” All Appendix A altered by the presence of glass between the ferrite and the spacers or by the movement of the spacers. A patent issued to Robert Pfost of the Ampex Corpora- tion on November 8, 1966, on an application filed April 17, 1961, sought a process for the manufacture of ‘‘ferrite core heads having accurate gap dimensions.’’ It described the prior art techuiques as ‘‘tedious, time-consuming, and un- economical because [the heads] must be manufactured in- dividually to provide proper gap dimensions.’’ The claimed process in this patent consisted essentially of placing spacer strips on one of the ferrite surfaces, a layer of glass on the other surface, and joining them together under high tem- perature and pressure. Finally, in an application filed in July, 1962, less than a year prior to the filing of the Peloschek patent, James S. Hanson, an employee of I.B.M., claimed the invention of a process capable of producing a ‘‘more predictable gap,”’ and ‘‘permitting manufacture of gaps which are uniform throughout the entire dimension thereof.’’ Hanson’s pat- ent, No. 3,217,305, sought to improve the distribution of the glass bonding material within the gap by employing grooves in the ferrite surface. His basic process, like those of his predecessors, was the sandwich technique. Thus the picture of the art of manufacturing magnetic recording heads prior to Peloschek is one in which, although there were some advancements, each of the processes im- mediately preceding Peloschek employed variations on a method which bonded the magnetic and non-magnetic mate- rials through the use of heat and application of pressure in a sandwich configuration, with several of the methods using A12 Appendix A spacers and shims in an effort to set the desired gap size. Each patent criticized the prior art as unable to attain the reproducibility of uniformly accurate gap dimensions. None of these prior art processes, moreover, was able uniformly to meet the stringent gap-length tolerances re- quired by manufacturers of magnetic recording heads. Due to the higher pressures used in the sandwich method the ferrite gap surfaces moved toward one another, result- ing in variations in the gap. Although spacers or shims were used in an effort to hold the ferrite faces apart, the spacers could not uniformly control the gap length because ihe glass foil inserted between the ferrite faces was thicker than the spacers and the pressure applied to -he ferrite pieces varied. As a result, viscous glass would sometimes enter between the spacers and the ferrite pieces or the spacers would move outward rather than remain in place, causing unacceptable variations in the gap length. The Peloschek patent differs significantly from these prior art processes used to manufacture recording heads. First, the Peloschek patent places the glass bonding mate- rial outside of the pre-set gap rather than between the pieces of ferrite. Second, it departs from the use of pressure to accomplish bonding* and relies instead upon the force of capillarity, an element previously unused in the art of manufacturing magnetic recording heads. Addi- tionally, undisputed testimony by plaintiff’s expert witness and by the co-inventor of the Peloschek process established 4. The only pressure used by Peloschek is slight pressure de- signed solely to hold the spacers in place as distinguished from the high pressure used by prior art process to bond the glass to the ferrite faces. In Peloschek the bonding is achieved exclusively by capillarity. Al3 Appendix A that, for the first time, yields of 90% accurate gap dimen- sions were obtained in an economically feasible production process, as compared to only 5% to 50% under prior art processes, As might be expected of one challenging the validity of a patent on grounds of obviousness under §103, National seeks to broaden the scope of the prior art beyond processes for the manufacture of recording heads to those using the principle of capillarity for other manufacturing purposes, such as to cause molten metal or liquid epoxy cement to flow into random irregular spaces or into voids between metal parts held in contact with one another. National contends that these processes show that the use of capillar- ity was predictable and obvious to one ordinarily skilled in the art of manufacturing recording heads. Whether these latter processes, which do not involve use of glass or ferrite and are not aimed at creating minute non- magnetic gaps of precise, predetermined size, are pertinent prior art for present purposes is extremely doubtful. How- ever, we need not resolve that issue for the reason that even if these processes are considered to be prior art, the proof is overwhelming that they do not suggest to one ordinarily skilled in the development of processes for the manufac- ture of magnetic recording heads that capillarity might be used in combination with existing processes as a means of producing very minute gap dimensions within the narrow tolerances demanded by the trade. The patent issued to Grant (No. 2,500,748), for instance, is heavily relied on by National because it claims the use of capillary action to form non-magnetic gaps in a magnetic structure. Despite Al4 Appendix A the superficial similarity of Grant to Peloschek, however, the differences between the two patents make it readily apparent that the capillarity concept would not have been apparent to one searching for a means of filling a pre-set gap of precise, very minute, dimensions. Grant was merely concerned with filling random metal voids with epoxy or metal, not with near-microscopic manu- facture of exactly reproducible gap lengths of fixed dimen- sions, with only a few millionths of an inch variance. In- deed, in Grant there is no such thing as pre-fixed spacing or an effort to create a predetermined gap, much less one of specific dimensions. Moreover, the prior art (Zinke, ‘*Technologie der Glas Verschurelzungen’’) taught that molten glass was unsuitable for capillary action because it tended to remain at the area of application and not to flow into narrow interstices. The apparent inappropriate- ness of capillary action as a means of solving the problem faced by Peloschek and his predecessors is further evi- denced by the fact that, although Grant was issued in 1947, and numerous persons skilled in the art of recording head manufacture, including Duinker, had sought over a period of more than ten years to solve the problem of creating reproducible minute non-magnetic gaps of precise pre- determined size, there is no evidence that any attempt was made to use capillarity. DISCUSSION As we recently said in Timely Products Corporation v. Arron, 523 F.2d 288, 294 (2d Cir. 1975): ‘*We can conceive of no better way to determine whether an invention would have been obvious to per- I Al5 Appendix A sons of ordinary skill in the art at the time than to see what such persons actually did or failed to do when they were confronted with the problem in the course of their work. If the evidence shows that a number of skilled technicians actually attempted, over a substantial period, to solve the specific problem which the invention overcame and failed to do so, not- withstanding the availability of all the necessary ma- terials, it is difficult to see how a court could conclude that the invention was ‘obvious’ to such persons at the time.’’ In Timely Products we found that ‘‘no such evidence exists.’’ Here, in contrast, the evidence clearly demon- strates that the industry’s search for a process which would accurately reproduce minute gap dimensions had been the subject of continuing experimentation for nearly a decade, and that the object was successfully accomplished only when Peloschek abandoned the sandwich techniques in favor of the use of capillarity. Moreover, in contrast to Macla:en v. B-I-W Group, Inc., supra, this innovation was rot foreshadowed by any of the preceding patents for the manufacture of recording heads. Accordingly, we conclude that the Peloschek patent is significantly different from the prior art and represents a distinct advancement in the level of skill in the art. The district court’s conclusion that the Peloschek claims were not obvious is therefore correct. Moreover, it is consistent with the terms of 35 U.S.C. §103 and the cases interpreting its provisions. Even assuming that patents disclosing capil- lary action, such as Grant, were deemed part of the perti- nent prior art, so that the Peloschek patent would represent Al6 Appendix A a combination of existing elements rather than a pure inno- vation,® the invention would still satisfy the ‘‘rigorous’’ standards of §103. Lemelson v. Topper Corp., 450 F.2d 845, 848 (2d Cir. 1971); Maclaren v. B-I-W Group, Inc., supra. The existence of an important problem in the art which has remained unsolved for a long period, despite continued efforts and a series of refinements of the art, until a new combination of concepts produces a solution, is evidence that the combination was not obvious. Shaw v. E. B. & A. C. Whiting Co., 417 F.2d 1097, 1104 (2d Cir. 1969), cert. denied, 397 U.S. 1076, 90 S.Ct. 1518, 25 L.Ed.2d 811 (1970). This case falls under the rule that ‘‘fi]f those skilled in the art are working in a given field and have failed after repeated efforts to discover a particular new and useful improvement, the person who first makes the discovery does more than make the obvious improvement which would suggest itself to a mechanic skilled in the art, and is entitled to protection as an inventor.’’ McCullough Tool v. Well Surveys, Inc., 343 F.2d 381, 399 (10th Cir. 1965), cert. denied, 383 U.S. 933, 86 S.Ct. 1061, 15 L.Ed.2d 851 (1966). See also A. E. Staley Manufacturing Co. v. Harvest Brand, Inc., 452 F.2d 735, 738 (10th Cir. 1971), cert. denied, 406 U.S. 974, 92 S.Ct. 2415, 32 L.Ed.2d 674 (1972). The cases upon which appellant relies are clearly dis- tinguishable. In Anderson’s Black Rock, Inc. v. Pavement Salvage Co., Inc., 396 U.S. 57, 60, 90 S.Ct. 305, 24 L.Ed.2d 5. In Reiner v. I. Leon Co., 285 F.2d 501, 503 (2d Cir. 1960), Learned Hand wrote that, “It is idle to say that combinations oi old elements cannot be inventions; substantially every invention is for such a ‘combination’: that is to say, it consists of former elements in a new assemblage.” Al7 Appendia A 258 (1969), the Supreme Court rejected a combination of old elements to solve a problem in ‘‘blacktop’’ paving processes on the grounds that the combination was ‘‘not critical or essential’’ to curing the problem and did not produce a ‘‘new or different function.’? The Court rested its recent decision in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 96 S.Ct. 1532, 47 L.Ed.2d 784 (1976), on this same finding with respect to a barn-cleaning combination patent. In con- trast to those cases, the evidence in the present case is un- rebutted that the Peloschek patent produced a result unob- tainable with the prior processes. For the first time a proc- ess functioned to produce high yields of accurate gap dimen- sions, curing a problem in the art. In Dann vy. Johnston, 425 U.S. 219, 96 S.Ct. 1393, 47 L.Ed.2d 692 (1976), the Court found that the gap between the prior art and the claimed invention in systems used to record a breakdown of banking customers’ transactions by the nature of the transaction was not great enough to jus- tify patentability of the respondent’s system because it failed to meet the non-obviousness standard. There, all systems sorted out the transactions, albeit by slightly dif- ferent methods. In the present case, on the other hand, the gap between the prior art and the Peloschek patent is enormous—the difference between success and failure. In lieu of an unsuccessful re-refinement of an existing process, Peloschek reveals a flash of brillance which found a solu- tion, however simple, by departing from the norm. It is this type of advancement that has traditionally been rewarded with patent rights, and to deny those rights here A18 Appendix A might unjustifiably deter industry members from seeking to invest, innovate and experiment.® In its most favorable light, National’s evidence merely shows that the elements of the Peloschek patent existed in the prior art of manufacturing electronic and magnetic devices. We have consistently held that such a showing alone is inadequate to demonstrate obviousness when the combination of those pre-existing elements results in novel, unanticipated or long-sought results. See Koppers Co., Inc., v. S &€ S Corrugated Paper Machinery Co., Inc., 517 F.2d 1182, 1188 (2d Cir. 1975) ; Carter-Wallace v. Otte, 474 F.2d 529, 539-40 (2d Cir. 1972), cert. denied, 412 U.S. 929, 93 S.Ct. 2753, 37 L.Ed.2d 156 (1973) ; Reimer v. I. Leon Co., 285 F.2d 501, 503 (2d Cir. 1960). The judgment of the district court is therefore affirmed. 6. Defendant’s reliance on Dow v. Halliburton, 324 U.S. 320, 65 S.Ct. 647, 89 L.Ed. 973 (1944), a case predating the 1952 revision of $103, is similarly misplaced. In that case the Supreme Court re- jected a patent which claimed protection of the addition of an inhibit- ing agent to acid used in a previously known process for disintegrating limestone in order to attain more crude oil in drilling operations while protecting the metal pipes from corrosion. The Court upheld the lower court finding of invalidity because both the acid process and the use of an inhibiting agent in cleaning the pipes were already in use in the industry. The Court stated that the fact that inhibitors had not been previously used in the process for drilling was inadequate, “Es- pecially . . . since there is no evidence of anyone trying unsuccessfully to inhibit hydrochloric acid for such purposes.” In the present case the evidence is overwhelming that the industry had been consistently trying to gain precisely predetermined gaps without success. A1g Appendix A EXHIBIT A DrawIneG oF Parts oF PeLoscHEK Macnetic Recorpine Heap, Suown 1n Biock Form, BerorE BonpDinG AND SLICING CROSS - SLICES Saas GLASS ROD /_ 2 ena flere amen 2 f C-BAR- : GAP q | MEMBER GAP rae GLASS ROD SPACER MEMBER \/\cenar -WISE I-@AR SLICE Van GRaaFEILAND, Circuit Judge, dissenting: Reduced to its bare bones, the ‘‘invention’’, for which appellees have been granted a 17-year monopoly, consists of filling a narrow space between two pieces of metal with a melted non-magnetic material such as glass through capil- lary action. The majority say this was conceived in a ‘‘flash of brilliance’’. I find it to be simply an adaptation of a physical process familiar to every embrionic schoolboy scientist who has watched his blotter absorb ink.’ At the very least, I agree with the District Court’s finding that 1. The schoolboy scientist, were he willing to spend five minutes on research,-would have learned that capillarity works most effectively in narrow spaces. See, e.g., J. Bikerman, Surface Chemistry 361 (1958). A20 Appendix A ‘‘the prior art indicates the widespread use of capillary action to fill minute gaps.’” The importance which my colleagues attach to the fact that the gap in this case is preset escapes me completely. Every gap between two intentionally placed objects is pre- set. The use of shims to determine the width of the setting was less than novel and was clearly part of the prior art.* Of course, for capillarity to operate, the liquid involved must be of a type which ‘‘wets’’ the material which sur- rounds it, in order that the molecules of the liquid cling together on the face of the material and pull the liquid with it. However, the prior art clearly showed that molten glass ‘‘wets’’ ferrite,* so that capillary action was an obvious and expected result of a combination of the two.° 2. Earlier patents disclosing the use of capillarity included German patent No. 10546, used in manufacturing magnetic recording heads, the Grant patent, No. 2,500,748, the DeJean patent, No. 3,304,358, the Feinberg patent, No. 3,341,939 in the magnetics field and the Reichenbaum patent, No. 3,029,505, in the electronics field. [A] patent claiming a device that has already been put to use, albeit in a different manner, is invalid; in order to be valid over the prior art, it must claim not novel use, but novel conception.” Beckman Instruments, Inc. v. Chemtronics, Inc., 439 F.2d 1369, 1375 (5th i ee denied, 400 U.S. 956, 91 S.Ct. 353, 27 L.Ed.2d 264 3. Duinker, No. 3,117,367. 4. Duinker, No. 3,094,772 and Pfost No. 3,283,396. 5. Despite the majority’s reference to Zinke, as authoritive prior art, one hour’s research in the library would have taught the inventors that, at a temperature of 1,000 degrees, the differences in the mobili- ties of different glasses are very large, see J. Bikerman, supra, note 1, at 152, and that, although glass is a “slow motion” liquid, it has flow properties on an extended time scale similar to those of ordinary liquids. See G. Jones, Glass 8 (1956). Moreover, the Hill patent, No. 3,065,571, filed for in 1957, clearly utilized the capillarity of molten glass in the manufacture of electrical discharge devices and electrical contacts. In any event, respondent’s patent does not limit its claims to molten glass, claim No. 1 specifying simply the use of a “non-magnetic material”. A21 Appendia A I do not read the record below to indicate that the capil- lary process was the culmination of years of research aimed at solving a pressing problem. There was no crying in- dustrial demand for the process, either prior to the alleged invention or within a reasonable time thereafter. As the District Court stated, secondary indicia of nonobviousness were meager. Proof that, between 1954 and 1969, four pat- ent applications were filed for the manufacture of magnetic heads to be used in the infant field of tape recorders and computers falls far short of establishing the decade of ‘continuing experimentation’’ which my brothers say took place and does not give rise to the inference of invention. Paramount Publix Corp. v. American Tri-Ergon Corp., 294 U.S. 464, 476, 55 S.Ct. 449, 79 L.Ed. 997 (1935). Even as- suming the existence of a long-felt want and the failure of others to meet that want, this is relevant only as a secondary test for obviousness and does not create patentability where invention is lacking. Anderson’s-Black Rock, Inc. v. Pave- ment Salvage Co., 396 U.S. 57, 61, 90 S.Ct. 305, 24 L.Ed.2d 258 (1969) ; Hadfield v. Ryan Equipment Co., 456 F.2d 1218, 1221 (8th Cir. 1972). According to the testimony of Matthijs Vrolijks, one of the inventors, a committee was formed in 1960 or 1961 at N.V. Philips to ‘‘optimize’’ the Duinker procedure by improving its productive yield. Within a matter of months, this result was achieved by using the well-recognized capillary process. In applying the §103 test for obviousness, one should picture the inventors working in their shop with the prior art references hanging on the walls around them. Esso Research & Engwmeering Co. v. Kahn & Co., 379 F.Supp. A22 Appendix A 205, 211 (D. Conn. 1974), aff’d per curiam on the opinion below, 513 F.2d 1341 (2d Cir. 1975). On the wall directly before them would be inscribed the long-known and well- understood physical yrinciples of ecapillarity which, like Boyle’s Law and Dalton’s Law in Esso Research, supra, the inventors must be regarded as knowing. On the walls to their left would be the patents utilizing the capillary fill process, including German patent, No. 10546, used in man- ufacturing magnetic recording heads, the Grant patent, No. 2,500,748,° the DeJean patent, No. 3,304,358, the Fein- berg patent, No. 3,341,939 in the closely related magnetics field and the Reichenbaum patent, No. 3,029,505 in the elec- tronics field. Also on that wall would be the readily available learning concerning the flowing properties of molten glass, the Duinker patent, No. 3,094,772, and the Pfost patent, No. 3,283,396, showing that molten glass will wet ferrite, and the Hill patent, No. 3,065,571 showing the use of capillarity for the insertion of molten glass in the gaps of electrical discharge devices. On their right would be the Duinker patent, No. 3,117,367, showing the use of shims or spacers to preset the gap into which capillarity would draw the molten glass. A glance around the room would disclose ‘‘all the ele- ments of [Vrolijks’] device, both individually and in com- bination’’. Esso Research & Engineering Co. v. Kahn & Co., supra, 513 F.2d at 1341. His invention did not push back the frontiers of scientific knowledge, Great Atlantic & 6. The District Court described Grant in the following language: - In plain English, the patent discloses a structure “corisisting of two magnetic parts separated by a minute permanent non-mag- netic gap, which also bonds the two together, created by flowing non-magnetic material between the two parts by capillary action. A23 Appendix A Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 154-55, 71 S.Ct. 127, 95 L.Ed. 162 (1950) (Douglas, /., concurring), but merely utilized the existing fund of public knowledge for a new and obvious purpose. Dow Chemical Co. v. Halliburton Oil Well Cementing Co., 324 U.S. 320, 326-28, 65 S.Ct. 647, 89 L.Ed. 973 (1945). I believe that the private monopoly granted herein is ‘‘at odds with the in- herent free nature of disclosed ideas’’ and has been too freely given. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 9, 86 S.Ct. 684, 689, 15 L.Ed.2d 545 (1966). I would reverse. A24 Appendix B UNITED STATES DISTRICT COURT S. D. New York —e ee U. S. Puimips Corporation, Plaintiff, v. Nationan Micronetics, Inc., and Nep W. BuvoyMastTER, Defendants, Vv. Nortu American Puriuips Corporation, and N. V. Pumps GLoEILAMPENFABRIEKEN, Counter-Defendants. No. 71 Civ. 921. Jan. 27, 1976. i OPINION Warp, District Judge. This is an action alleging infringement of U. S. Patent No. 3,024,318 to Duinker et al. for a ‘‘Glass Gap Spacer for Magnetic Heads”’ (hereinafter the ‘‘ Duinker patent’’) and U.S. Patent No. 3,246,383 to Peloschek et al. for a ‘‘ Method of Manufacturing Magnetic Heads with Bonding Gap— A25 Appendic B Filling Materials’ (hereinafter the ‘‘Peloschek patent’’). For the reasons hereinafter stated, the Court holds the Duinker patent invalid and the Peloschek patent valid and infringed. I. The Parties, Jurisdiction and Venue Plaintiff U. S. Philips Corporation (hereinafter ‘‘Phil- ips’’) is a Delaware corporation with its principal place of business in New York City whose primary business is licens- ing patents. It owns the rights to the two patents in suit through assignment from N. V. Philips Gloeilampenfab- rieken (hereinafter ‘‘N.V. Philips’’), whose employees de- veloped the inventions which are the subject of the patents. Defendant National Microneties Inc. (hereinafter ‘‘ Mi- cronetics’’) is a New York corporation with its principal place of business at West Hurley, New York. It is in the business of manufacturing glass bonded ferrite cores for use in magnetic recording heads. Defendant Ned W. Buoy- master is one of the founders and President of Micronetics. He resides in Woodstock, New York. This Court has jurisdiction of the parties and the sub- ject matter of this action and venue is properly laid in this district. II. The Pleadings The complaint filed on March 2, 1971 originally charged defendants with infringement of three patents owned by plaintiff. Prior to trial, plaintiff withdrew the infringe- ment claim relating to one of these patents. As to the in- fringement of the two remaining patents, plaintiff seeks a A26 Appendix B declaratory judgment, an injunction and damages. The defendants, by their answer, deny infringement and chal- lenge the validity of both patents on the grounds of obvi- ousiness and indefiniteness. In addition, defendants have counterclaimed against plaintiff and additional defendants on the counterclaim, N. V. Philips and North American Philips Corporation, for patent misuse and violation of the antitrust laws. The counterclaims were severed and stayed pending the outcome of the patent infringement action which was tried to the Court. Ill. Background Magnetic recording heads are devices used to record (‘‘write’’) signals representing sound or information on a moving magnetic medium such as a tape, belt, or dise or to pick up (‘‘read’’) such recorded signals. A magnetic re- cording head consists of a nearly closed ring of magnetic material with a minute non-magnetic gap around which ring a coil of wire is wrapped. The ring and gap structure com- prise the core of the head which is the focus of this litiga- tion. An electric current, when passed through the head, will create a small magnetized spot on the magnetic medium opposite the gap. This spot represents the recorded in- formation. As the medium moves, successive, discrete spots will be magnetized. The smaller the spots and the closer they are spaced, the more information can be stored in the least amount of magnetic medium. This may be re- ferred to as ‘‘high resolution’’ or ‘‘high bit density.’’ The achievement of increasingly higher resolution or bit den- sity depends to a great extent on various qualities of the recording head, including the size of the gap and the ma- A27 Appendix B terial of which the head is made. The shorter the gap, the smaller the magnetized spot. Ideally, the head material has low electrical conductivity to minimize the losses; that is, the least amount of electrical current introduced into the head will be lost to the generation of heat. Magnetic recording is an old art but did not become com- mercially significant until World War II. Although tue device has many applications, the principal use 0: voncern in this litigation has been in computers. IV. The Duinker Patent The Duinker patent, issued March 6, 1962 on an applica- tion filed September 11, 1956, concerns a magnetic recording head having a core formed of sintered ferro-magnetic oxide material, or ferrite,’ with a glass filled gap. The patent addresses itself to the problem of chipping of the gap edges in heads composed of ferrite. It teaches that if the co- efficients of expansion (hereinafter ‘‘CTE’s’’)? of the glass and ferrite are matched to a degree closer than that nec- essary merely to assure a good bond, chipping of the ferrite edges in use will be eliminated. The patent contains four claims each of which is as- serted by plaintiff as infringed by defendants’ products. 1. Ferrites are non-metal magnetic materials composed of zinc oxide, iron oxide, etc., mixed in powdered form and sg sengeny and heated at high temperatures so that the separate particles fuse to form one solid body. 2. Sometimes referred to as the coefficient of thermal expansion, this term refers to the expansibility of a material upon change in temperature, measured as the change in length for a given tempera- ture change divided by the total length. A28 Appendia B These claims are set out in full in the margin.* The first and second claims differ only in that the former indicates the CTE’s of the ferrite core and the glass gap-filler are substantially equal at the termperature of use whereas the latter indicates the CTE’s are substantially equal in the entire temperature range from the temperature of use to the softening point of the glass. The third and fourth claims add to the first and second a glass fillet, a small additional portion of glass within the loop formed by the ferrite parts. 3. The claims of the Duinker patent are: 1. An annular magnetic recorder head for recording or re- producing magnetic recordings comprising at least two circuit parts of sintered ferromagnetic oxide material with an effective gap between said circuit parts, said gap being filled entirely with a glass material mechanically joining and bonding to each other said circuit parts, said glass material being the sole bonding agent between said circuit parts, said glass material having a coefficient of expansion substantially equal to the coefficient of expansion of said sintered ferromagnetic oxide material at the temperature at which the magnetic recorder head is used. 2. An annular magnetic recorder head for recording or re- producing magnetic recordings comprising at least two circuit parts of sintered ferromagnetic oxide material with an effective gap between said circuit parts, said gap being filled entirely with a glass material mechanically joining and bonding to each other said circuit parts, said glass material being the sole bonding agent between said circuit parts, said glass material having a softening temperature, said glass material also having a coefficient of ex- pansion substantially equal to the coefficient of expansion of said sintered ferromagnetic oxide material throughout the entire tem- perature range lying between the temperature at which the mag- netic recorder head is used and the temperature at which the glass begins to soften. 3. An annular magnetic recorder head for recording or re- producing magnetic recordings comprising at least two circuit parts of sintered ferromagnetic oxide material having inner and outer surfaces with an effective gap between said circuit parts, (footnote continued on next page) A29 Appendia B Defendant Micronetics has admitted that its products contain every feature of the claims with the exception of the matched CTE’s. Inasmuch as the equality of the CTE’s is a limitation of each claim, defendants assert they do not infringe. Additionally, they assert that the patent is in- valid because the term ‘‘substantially equal’’ is indefinite and because matching of CTE’s is obvious in view of the prior art. A. Infringement To determine whether an accused device infringes a pat- ent, resort mnst be had to the claims. Infringement is said gap being filled entirely with a glass material mechanically joining and bonding to each other said circuit parts, said glass material being the sole bonding agent between said circuit parts, said glass material and said circuit parts forming a closed annu- lar space, part of said glass material extending into said space in contact with the inner surfaces of said ferromagnetic oxide ma- terial, said glass material having a coefficient of expansion sub- stantially equal to the coefficient of expansion of said ferromag- netic oxide material at the temperature at which the magnetic recorder head is used. 4. An annular magnetic recorder head for recording or re- producing magnetic recordings comprising at least two circuit parts of sintered ferromagnetic oxide material having inner and outer surfaces with an effective gap between said circuit parts, said gap being filled entirely with a glass material mechanically joining and bonding to each other said circuit parts, said glass material being the sole bonding agent between said circuit parts, said glass material having a softening temperature, said glass material and said circuit parts forming a closed annular space, part of said glass material extending into said space in contact with the inner surfaces of said ferromagnetic oxide material, said glass material having a coefficient of expansion substantially equal to the coefficient of expansion of said ferromagnetic oxide material throughout the entire temperature range lying between the temperature at which the magnetic recorder is used and the temperature at which the glass begins to soften. A30 Appendix B made out when the accused product falls clearly within the claim. Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 607, 70 S.Ct. 854, 94 L.Ed. 1097 (1950). Each of the claims specifies that the CTE’s of the glass and the ferrite should be substantially equal. Turning to the Micronetics products, the following table indicates the CTE’s of the glasses and ferrites at the temperature of use and the percentages by which they differ in different cores: Glass Glass Ferrite Ferrite %o Part No. Type CTE Type CTE Diff. 35058 2109 7.4X 10° LM211 7.2X 10° 2.7 30239 2107 7.4X 10° M211 7.3X10° 2.7 30152 1303 7.7X 10° M211 7.3X10° 5.5 30331 1303 7.7X 10° LM211 7.2X10° 6.5 30134, 1303 7.7X 10° M210 7.1X 10° 8.5 30245, 30156 30005 1201 6.3 X 10°° M210 7.1X10° 11.3 30037 2205 6.0 X 10° M210 7.1X10° 15.5 30085 2205 6.0 X 10° M211 7.3X10° 178 30064 2104 5.1 X 10° M211 7.3X10° 30.1 As can be seen, the variation in the CTE’s ranges from 2.7% to 30.1%. Plaintiff asserts that all of these products infringe claim one with respect to the CTE limitation. To determine whether Micronetics products infringe the patent, we must construe the limitation in the claims that the CTE’s of the glass and ferrite be ‘‘substantially equal.”’ In order to construe this term, resort must be had to the specifications for it is axiomatic that claims are to be con- strued in light of the specifications. United States v. Adams, 383 U.S. 39, 49, 86 S.Ct. 708, 15 L.Ed.2d 572 (1966) ; Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, A3l Appendix B 217, 61 S.Ct. 235, 85 L.Ed. 132 (1940). The specifications contain the following description of the invention: ‘When the coefficients of expansion are equal to one another at the temperature at which the magnetic recorder head is used (with a tolerance of 5%), the tensions occurring in the glass are small thus prevent- ing the production of strains in the ferrite which would also tend to facilitate chipping of the ferrite edges of the gap by the mechanical forces exerted by the opera- tion of the magnetic recording earrier;....’’ The interpretation that must be placed on this language is that to practice the inven ion one must make the CTE’s as equal as possible with a maximum allowable difference of 5%. The examples of suitable matches given by the in- ventor are all well within this 5% limit. ‘hus, the term substantially equal, as used in the claims, should be given the meaning ‘‘matched within 5%.’’ Turning to the accused devices, only two Microneties heads fall clearly within the range claimed by the patent, parts numbered 35058 and 30239 and could be said to in- fringe. Plaintiff argues that all the cores manufactured by Micronetics infringe under the doctrine of equivalents. Courts have recognized that infringement may be made out even though the accused device does not duplicate every literal detail of the patented invention. The test of in- fringement under the doctrine of equivalents is whether the device ‘‘ ‘performs substantially the same function in substantially the same way to obtain the same result.’ ’’ Graver Tank & Mfg. Co. v. Linde Air Products Co., supra, 339 U.S. at 608, 70 S.Ct. at 856. The range of equivalents to A32 Appendiz B & be accorded a patent varies with the circumstances of the particular case. A primary, or pioneer, invention may be accorded a broad range of equivalents whereas an improve- ment patent is not entitiled to such a broad range of protec- tion. 4A. Deller, Deller’s Walker on Patents, §232, at 82-83 (2d ed. 1965). Basically, the inquiry is whether the inven- tive principle has been appropriated and the changes made insubstantial. The sole claimed invention in Duinker is the discovery that ferrite gap edge-chipping may be avoided by matching the CTE’s of the glass and ferrite within a tolerance of 5% at the temperature of use and 10% over the range from room temperature to the softening point of the glass. The prior art concerning magnetic recording heads is crowded and the claimed invention is narrow. To construe the range of equivalents to be accorded the Duinker patent to em- brace all of the Micronetics cores would render the term ‘‘substantially equal’? meaningless and “vould have the effect of reading it out of the patent altogether. This term is an express limitation pertaining to the inventive step and implies, in effect, that anything beyond the limitation will not produce equivalent results. Inasmuch as the inventor has declared combinations, such as those found in the ac- cused devices, not equivalent, we cannot treat them other- wise to find infringement. See Dow Chemical Co. v. Skinner, 197 F.2d 807, 810 (6th Cir.), cert. denied, 344 U.S. 856, 73 S.Ct. 94, 97 L.Ed. 664 (1952); Preformed Line Products Co. v. Fanner Manufacturing Co., 225 F.Supp. 762, 774 (N.D. Ohio 1962), aff’d, 328 F.2d 265 (6th Cir.), cert. denied, 379 U.S. 846, 85 S.Ct. 56, 13 L.Ed.2d 51 (1964). A33 Appendix B Nor can a change in the match of the CTE’s be consid- ered an insubstantial alteration in the practice of the inven- tion. The whole inventive principle in the patent lies in the match of the CTE’s. When the CTE’s are not matched in the manner specified the inventive principle is not ap- propriated. Thus, although the accused devices accomplish the same result; that is, they are commercially acceptable cores free from undue chipping, they do so in a different manner. First, as plaintiff’s expert testified, improve- ments in ferrites have to some extent reduced the chipping problem to which Duinker is directed. Second, Micronetics devices follow a different teaching. Micronetics cores are produced according to the principle that glass is strongest under compression and, thus, ferrite of a higher CTE than the glass is used. This is nowhere taught by Duinker. Therefore, it cannot be said that all the Micronetics cores infringe plaintiff’s patent under the doctrine of equiv- alents. The Court has examined plaintiff’s other arguments in support of a finding of infringement and finds them to be without merit. Accordingly, the Court finds that only Microneties parts numbered 35058 and 30239 infringe the Duinker patent. B. Indefiniteness Defendants argue that the Duinker patent is invalid because it lacks the definiteness of description required by 35 U.S.C. §112. They contend that the term ‘‘substantially equal,’’ as used to describe the degree of CTE match, is vague and indefinite. Further, they contend that there is no such thing as a CTE at the temperature of use and that this A34 Appendix B meaningless relationship compounds the indefiniteness of the claims and specifications. Although the statute requires an exact description of the invention, it does not require description in terms of exact measurement. All that is required is that the claims, when read in light of the specifications, inform those skilled in the art how to practice the invention and how infringe- ment may be avoided. Libel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, 65, 43 S.Ct. 322, 67 L.Ed. 523 (1923); Georgia-Pacific Corp. v. United States Plywood Corp., 258 F.2d 124, 136 (2d Cir.), cert. denied, 358 U.S. 884, 79 S.Ct. 124, 3 L.Ed.2d 112 (1958). Whether a given claim has the requisite definiteness depends upon the facts in each ease. Georgia-Pacific Corp. v. United States Ply- wood Corp., supra. Applying these standards to the facts of the instant case, the Court finds that the specifications and claims are sufficiently definite to meet the statutory standard of 35 U.S.C. §112. There are many instances where claims with adverbs such as ‘‘substantially’’ have been upheld against a challenge of indefiniteness. See, e. g., Eibel Process Co. v. Minnesota & Ontario Paper Co., supra; Borg-Warner Corp. v. Paragon Gear Works, Inc., 355 F.2d 400 (1st Cir. 1965), petition for cert. dismissed, 384 U.S. 935, 86 S.Ct. 1461, 16 L.Ed.2d 536 (1966); Arnold Pipe Rentals Co. v. Engineering Enterprises, Inc., 350 F.2d 885 (5th Cir. 1965) ; H. H. Robertson Co. v. Klauer Mfg. Co., 98 F.2d 150 (8th Cir. 1938). Thus, such terminology is certainly not in- definite as a matter of law. Defendants rely on expert testimony, arguing that neither side’s expert could precisely define what was meant A35 Appendia B by ‘‘substantially equal’’ as used in the claims. However, the Court does not view the testimony of either expert as persuasive on this particular point. Rather, the patent speaks for itself. The Court finds that the term ‘‘substantially equal’’ as used in each claim of the patent is not so indefinite as to render the patent invalid. ' Nor does the discussion of matching CTE’s at the tem- perature of use, when added to the imprecision of the term ‘‘substantially equal’’ render the patent invalid under §112. The premise underlying Duinker’s invention is that edge- chipping results from the heat generated by the movement of the recording head over the magnetic medium. Defend- ants’ expert testified that the CTE at any given tempera- ture was meaningless, that one needed a range between one temperature and another. Although the patent speaks of the ‘‘temperature of use,’’ or room temperature, it is clear from the patent as a whole, particularly the examples given, that this refers to the range of temperature between 0°C and 40°C. Thus, the claims dealing with the CTE’s of the glass and ferrite at the temperature of use are not meaningless. C. Obviousness The principal question raised with respect to the validity of the Duinker patent is whether the invention would have been obvious at the time it was made to a person having ordinary skill in the art. 35 U.S.C. §103. Resolution of the question requires application of the procedure set out in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). That is: A36 Appendia B Under §103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonob- vieusness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, ete., might be utilized to give light to the circumstances surround- ing the origin of the subject matter sought to be pat- ented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy. Id. at 17-18, 86 S.Ct. at 694. The parties agree that this is the standard to be applied. They disagree, however, on what constitutes the pertinent prior art and on the conclusion this Court should reach in applying the agreed standard to the prior art. 1. Scope and Content of the Prior Art Defendants cite as pertinent prior art U.S. Patent Nos. 2,071,196 to Burger et al.; 2,167,482 to Hull et al.; 2,371,627 to Kingston; an article by Chynoweth, dated August, 1955 and a German publication entitiled ‘‘The Methods of Fus- ing Ceramics to Glass and Metal,’’ dated 1942. They argue that these authorities fully disclose that which Duinker claimed as his invention. Plaintiff, on the other hand, con- tends that each of these authorities is merely concerned with achieving good bonding and that none discoses in- formation which would make it obvious to one skilled in the art to match CTE’s of the glass and ferrite to an extent closer than that needed to achieve good bonding in order to A387 Appendia B alleviate ferrite gap edge chipping. A closer examination of each of the cited items is necessary. The Burger Patent This patent, issued in 1937, concerns glass-to-metal-seals in general. It is directed at resolving the problem posed by failure of the seal in use, although a good seal may have been initially created. According to the patent, differences in the CTE’s of the glass and metal introduce strains in the seal which result in fissures or cracks in the glass. In the language of the patent, In the prior seals, the glass and metal members, even though they may have had substantially the same co- efficients of expansion at room temperature, have had different thermal expansions at the different tempera- tures involved in the process of making the seals and these members have undergone individual expansions and contractions in size during the heating and cooling cycles. Consequently, such seals have involved strains introduced at the higher temperatures which were car- ried through to the lower temperatures. Even though these residual strains may not have been greater than the elastic limit or breaking strength of the glass, depending upon the amount and kind of metal em- ployed, at the time the seal was made, there has always been the possibility that the seal might eventually fail due to aging of the glass and the reduction of its elastic limit over a period of time, and many failures may be attributed to this cause. In view of these considera- tions, it is evident that none of the seals of the prior art has been entirely free from strain over the whole temperature range between room temperature and the softening temperature of the glass. A38 Appendix B Even though this strain is not sufficient to produce eracks or fissures at the time the seal is made, the glass is weakened at the joint and the seal is much more liable to failure, when the tube is operated at elevated temperatures, or even when it is idle and at room temperature. It is apparent that when an electric dis- charge tube of which the seal constitutes a part of the envelope is heated during operation, the temperature reached may be one of those temperatures at which there is a substantial difference in the respective thermal expansion coefficients of the glass and metal. This difference of expansion may serve to accentuate the residual strain or perhaps introduce additional strains. As a solution to the problem of strain in glass-to- metal seals, the patent discloses that the CTE’s of the glass and metal should ‘‘substantially coincide’’ at room temperature and through the temperature range to the softening point of the glass. The patent discloses a metal alloy and a glass having this characteristic. The graph which illustrates the invention shows the CTE’s of these materials as matched to a degree of equality even closer than that disclosed by Duinker. The Hull Patent This patent, issued in 1939, on an application filed in 1936, is for an improvement in the glass-to-metal seal disclosed by Burger. It discloses new metal alloys and glasses which when combined in a seal will have ‘‘substan- tially corresponding’? CTE’s. The CTE graphs which il- lustrate the invention show a CTE match approaching iden- tity and closer than that disclosed by Duinker. A39 Appendiz B The Kingston Patent Issued in 1945, on an application filed in 1939, this pat- ent relates to metal alloys and glasses for use in forming vacuum tight seals over long periods and over a wide tem- perature range. It likewise discloses the importance of matching the CTE’s of the glass and metal up to the soften- ing point of the glass. The Chynoweth Article Entitled ‘‘Ferrite Heads for Recording in the Megacycle Range,’’ this article appeared in the August, 1955 issue of Tele-Tech & Electronic Industries. The article reports on research conducted with ferrite recording heads. Specifical- ly, it concerns the wearing quality of ferrite heads with short gap lengths used in contact with a magnetic medium. According to the article, the gap edges chipped in use and this poor wearing quality represented a serious deficiency in ferrite heads. The article then discloses that: A technique which holds some promise, [for decreas- ing this gap edge erosion] is to fill in the gap with a glaze material which is non-magnetic, bonds well to the gap faces and is hard. According to the article such a head was constructed and the glazing technique was successful in increasing the head’s resistance to wear. The German Article This article, concerning the methods of fusing ceramics to glass and metal, appeared in the German publication A40 Appendiz B Keramische Rundschau in 1942. The article discloses that when bonding glass and ceramic, ‘‘no stresses will exist between the two materials only if the expansion curves have exactly the same course.’’ Since this ideal is not practically attainable, the author suggests using a ceramic with a higher CTE than the glass. 2. Differences Between the Prior Art and the Claimed Invention From the above recitation, it is apparent that all the individual elements claimed in the Duinker patent are shown by the prior art. However, no single item of the prior art shows the whole Duinker invention. Defendants contend that the German article when read with the Chynoweth article fully discloses the Duinker in- vention. Plaintiff argues, on the other hand, that the German article was published before the development of ferrites and, thus, does not apply to ferrites. Further, plaintiff argues that Chynoweth does not disclose a gap completely filled with glass but merely glazed gap surfaces. Above all, plaintiff argues that none of the prior art refer- ences discloses that ferrite head edge-chipping is caused by unequal CTE’s and that the solution lies in matching the CTE’s to a degree closer than that necessary to attain a good bond. Comparing the prior art with the claimed invention, as the Court must, the Court finds the following differences between the Duinker patent and the prior art: The patents to Burger, Hull, and Kingston disclose the importance of matching CTE’s very closely to obtain strain-free glass-to- metal bonds. However, none of these patents deal with A41 Appendia B ferrites. Although they disclose that failure of the bond will result from use, if CTE’s are not matched to substantial equality, in practical application the failure results in cracking of the glass in glass-to-metal bonds. Thus, they do not read exactly on the problem faced by Duinker. The German article is concerned with bonding glass to ceramics, generally. It discloses that ideally CTE’s should be equally matched to achieve a good bond. It is true that the article was written prior to the development of ferrites; however, it is undisputed that ferrite is a ceramic. Given this agreed fact and the article’s concern with ceramics in general, the German article reads directly on the Duinker invention insofar as it indicates the desirability of matching CTE’s in glass-to-ceramiec bonds. It does not, however, disclose the more particular app.ication of this principle claimed by Duinker. The Chynoweth arti le does disclose glazing in the gap as a solution for improving the wearing problems in ferrite core gap edges. It is silent, however, on the CTE’s of the materials used. Plaintiff seeks to make much of these differences. As noted above, no one item of prior art fully discloses the Duinker invention. However, the proper standard to be applied is not whether the prior art fully discloses the precise invention claimed, but rather whether, in light of this prior art, the claimed Duinker invention would be ob- vious to one skilled in the art. See, e. g., Koppers Co. v. S & S Corrugated Paper Machinery Co., 517 F.2d 1182 (2d Cir. 1975); Julie Research Laboratories, Inc. v. Guild- line Instruments, Inc., 501 F.2d 1131 (2d Cir. 1974) ; Formal A42 Appendix B Fashions, Inc. v. Braiman Bows, Inc., 369 F.2d 536 (2d Cir. 1966). Applying this standard to the facts of this case, the Court holds that the Duinker patent is invalid for obvious- ness in light of the prior art. First, Burger fully discloses that in glass-to-metal bonds failure occurs in use, even though a good bond is achieved in manufacture, if the CTE’s of the glass and metal are not nearly equal, not only at room temperature but throughout the entire tem- perature range from room temperature through the soften- ing point of the glass. Burger fully discloses that the heat generated in use elevates the temperature sufficiently to result in failure of the bond unless the CTE’s are so matched. The prior art in making glass-to-metal bonds demonstrates that it was well known that CTE’s should be closely matched to achieve good wearing qualities in use. Plaintiff argues that the problems posed by glass-to- metal bonds are not analogous to those encountered by Duinker and these items should not be considered prior art. Plaintiff stresses that in glass-to-metal bonding the concern is with the glass whereas the glass is not a problem in bonding glass to ferrite. Prior to the introduction of ferrites, magnetic recording heads were constructed of metal, often metal laminations. In the Duinker patent file wrapper, the Court finds at least one instance where glass was bonded to the metal pole pieces of such a metal head in order to join the two pole pieces. Thus, it appears that bonding glass to the metal heads was known in the magnetic recording head field. Also, in light of the German article it would have been obvious that there were no significant differences with 2 evactaat. —— A43 Appendix B regard to the role of CTE’s between ceramic-to-glass bonds and metal-to-glass bonds. The patent examiner considered glass-to-metal bonds to be prior art in considering the patentability of the Duinker invention. The Court is constrained to likewise consider it. The only testimony presented at trial on the question is found in the conflicting opinions of the experts who testified on behalf of the respective parties. The Court is unpersuaded that the problem of ferrite gap edge chip- ping is completely different from the problem of glass breakage. Both are caused by strains in the bond. In glass-to-metal bonds the metal is not likely to crack or chip, therefore, it is the glass which suffers the effect of the strains. The inherent granularity of ferrite was well known and it seems obvious that the strains known to be in the bond would cause the ferrite to chip. Thus, when one considers the disclosures of Burger to- gether with the teaching of the German article, it would be obvious that making the CTE’s substantially equal would alleviate chipping of the ferrite. When these references are read together with the Chynoweth article, the invention claimed by Duinker becomes an obvious solution to the problem of making ferrite cores for recording heads with good wearing qualities. Plaintiff relies on the presumption of validity accorded a patent. In the Second Circuit the presumption of validity is weakened when the patent examiner did not consider all of the pertinent prior art. See, e. g., Julie Research Lab- oratories, Inc. v. Guildlime Instruments, Inc., supra; Formal Fashions, Inc. v. Braiman Bows, Inc., supra. In the instant case, the patent examiner did not consider the A44 Appendix B Burger patent or, most important, the German article. Thus, the presumption of validity to be accorded the Duinker patent is considerably weakened. In addition, plaintiff relies on the secondary considera- tions enunciated in Graham v. John Deere Co., supra as indicia of the non-obviousness of the Duinker invention. Because of the danger of slipping into hindsight and read- ing into the prior art the teachings of the Duinker inven- tion, the Court has considered the evidence of commercial success and long-felt but unsolved need. This inquiry has served only to reinforce the Court’s judgment that the Duinker patent is obvious in view of the prior art. First, plaintiff introduced no evidence of contemporane- ous commercial success. The only evidence introduced rel- evant to this issue concerns the use at the time of the action of the Duinker invention by Ferroxcube Corporation, a wholly-owned subsidiary of North American Philips Cor- poration which manufactures glass bonded ferrite recording heads, and Micronetics. However, none of the cores pro- duced by Ferroxcube utilize the Duinker invention, accord- ing to the Court’s construction of the patent, and the majority of Micronetics’ product, also, fall outside the invention. Likewise, there is no evidence of any long-felt want. Ferrites were first introduced around 1950 and Duinker first filed for his patent in 1955. The evidence indicates that this was a crowded art with considerable activity during this period. The witnesses who testified painted a picture of a milieu where as soon as one group of researchers dis- covered a problem others set about solving it. Cf., Julie amen ist nal AD A45 Appendiz B Research Laboratories, Inc. v. Guildline Instruments, Inc., supra; Indiana General Corp. v. Krystinel Corp., 421 F.2d 1023, 1030-31 (2d Cir.), cert. denied, 398 U.S. 928, 90 S.Ct. 1820, 26 L.Ed.2d 91 (1970). In sum, the Court holds that the Duinker patent is in- valid for obviousness in light of the prior art. There may be some novelty in the Duinker invention but novelty is in- sufficient to meet the non-obvious requirement of §103 when the novel element would have been obvious to a person skilled in the art. See Lemelson v. Topper Corp., 450 F.2d 845 (2d Cir. 1971), cert. denied, 405 U.S. 989, 92 S.Ct. 1253, 31 L.Ed.2d 456 (1972). Next, the Court turns to the Peloschek patent. V. The Peloschek Patent The Peloschek patent, issued April 19, 1966 on an appli- cation filed May 3, 1963, is directed to a process for man- ufacturing bonded magnetic recording heads of a kind described by Duinker. The patent addresses itself to the problems of manufacturing magnetic recording heads with very short gap lengths, simply, and achieving close gap length tolerances. The patent teaches that if the gap is pre- set by placing the two magnetic pole pieces in a confronting relationship with the interposition of a shim, or spacing member, equal to the desired gap length and the glass is placed adjacent to the pre-set gap and the assembly is heated, the glass will flow into the gap by capillary action 4. “Close tolerance” refers to the small degree of deviation from the desired gap length or the slight “margin of error.” Inasmuch as the patent speaks of gap lengths of 1 to 20 microns, the acceptable deviation, or tolerance, is very slight. A46 Appendix B and fill it, thus, producing a core with the desired gap length. The patent contains fifteen claims. With the exception of claims 7, 12 and 13, all are assertedly infringed by de- fendants. The claims in issue are set out in full in the margin.” The several claims differ from each other only in minor respects. Claim 10 is the broadest claim and comprises a method whereby the two confronting circuit parts or pole pieces are separated by a space equal to the desired gap length, the non-magnetic material is placed ad- jacent to the gap, and the assembly is heated to the melting 3. 1. A method of manufacturing portions of magnetic heads composed of two magnetic circuit parts consisting of sintered oxidic ferromagnetic material and having confronting gap sur- faces with a gap therebetween filled with a nonmagnetic material bonding the circuit parts together, comprising: placing spacing members having a thickness equal to the desired gap length at opposite ends of a first polished gap surface of one circuit part, placing a corresponding polished gap surface of a second circuit part on said spacing members in confronting relationship with said first surfaces, thereby forming a gap between said surfaces, placing a quantity of nonmagnetic material adjacent to the gap, said nonmagnetic material having a melting temperature below that of said ferromagnetic material, and heating the resulting ~ assembly to the melting temperature of said nonmagnetic ma- terial, whereby said nonmagnetic material melts, fills the gap by capillary action, and bonds the circuit parts together. 2. A method according to claim 1, wherein said nonmagnetic material is glass. 3. A method according to claim 1, wherein said nonmagnetic material is enamel. 4. A method according to claim 1, wherein pressure is ap- plied to the asseiably during the heating step. 5. A method of manufacturing portions of magnetic heads composed of two circuit parts consisting of sintered oxidic ferro- (footnote continued on next page) adz Appendix B temperature of the glass so that the gap is filled by capillary action. Claim 1 differs from claim 10 only in that it recites that the unfilled gap is pre-fixed by the placing of a spac- ing member or shim between the confrgnting pole pieces. Claim 5 adds to claim 1 the step of thermally etching the circuit parts before they are placed in a confronting rela- tionship. Claim 6 is like claim 1 with the addition that the finished assembly is cut perpendicularly to form a plurality of cores. The remaining claims variously recite that the non-magnetic material is either glass or enamel or that pressure is applied during heating. Defendant Micronetics admits that its products contain every feature of the claims with the exception of the gap magnetic material and having gap surfaces with a gap therebe- tween filled with a nonmagnetic material bonding the circuit parts together, comprising: heating the two circuit parts, cooling the two circuit parts, placing spacing members having a thickness equal to the desired gap length at opposite ends of the first pol- ished gap surface of one circuit part, placing a corresponding polished gap surface of a second circuit part on said spacing members in confronting relationship with said first surface there- by forming a gap between said surfaces, placing a quantity of nonmagnetic material adjacent to the gap, said nonmagnetic ma- terial having a melting temperature below that of said ferro- magnetic material, and heating the resulting assembly to the melting temperature of said nonmagnetic material, whereby said nonmagnetic material melts, fills the gap by capillary action, and bonds the circuit parts together. 6. A method of manufacturing portions of magnetic heads composed of two circuit parts consisting of sintered oxidic ferro- magnetic material and having gap surfaces with a gap therebe- tween filled with a nonmagnetic material bonding the circuit parts together, comprising: placing spacing members having a thickness equal to the desired gap length at opposite ends of at least two polished gap surfaces of one circuit part, placing the corresponding polished gap surfaces of a second circuit part on said spacing members in confronting relationship with the gap (footnote continued on next page) A48 Appendia B space or spacer being equal to the desired gap length and the thermal etching step. Inasmuch as the equality of the shim and the desired gap length is a limitation of each claim, defendants assert they do not infringe. Additionally, they assert that the patent is invalid because the term ‘‘equal to”’ is indefinite and because the claimed invention is obvious in view of the prior art. A. Indefiniteness As with the Duinker patent, defendants argue that the Peloschek patent is invalid because it lacks the definiteness of description required by 35 U.S.C. §112. They contend surfaces of said one circuit part thereby forming gaps between said surfaces, placing a quantity of nonmagnetic material adja- cent to the gaps, said nonmagnetic material having a melting temperature below that of said ferromagnetic material, and heat- ing the resulting assembly to the melting temperature of said nonmagnetic material, whereby said nonmagnetic material melts, fills the gaps by capillary action, and bonds the circuit parts to- gether, cooling the assembly, and then cutting the assembly mutually perpendicular axes to form a plurality of head portions. * * * 8. A method according to claim 6, wherein said nonmagnetic material is glass. 9. A method according to claim 6, wherein said nonmagnetic material is enamel. 10. A method of manufacturing portions of magnetic heads composed of two circuit parts consisting of sintered oxidic ferro- magnetic material and having confronting gap surfaces with a gap therebetween filled with a nonmagnetic material bonding the circuit parts together, comprising: placing a polished gap surface of one circuit part in confronting relationship with a correspond- ing polished gap surface of a second circuit part, said surfaces being separated by a gap equal to the desired gap length, placing a quantity of nonmagnetic material adjacent to the gap, said nonmagnetic material having a melting temperature below that (footnote continued on next page) lute wok ett ow ee ee ee ee er Eo ee a at a A49 Appendix B that the term ‘‘equal to’’ as used to describe the relationship between the spacer and the desired gap length is without ascertainable meaning. The Court finds that the specifications and claims are sufficiently definite to meet the statutory standard. As of said ferromagnetic material, and heating the resulting assembly to the melting temperature of said nonmagnetic material, where- by said nonmagnetic material melts, fills the gap by capillary action, and bonds the circuit parts together. 11. A method according to claim 10, wherein said nonmag- netic material is glass. - 2! *@ 14. A method of manufacturing portions of magnetic heads composed of two circuit parts consisting of sintered oxidic ferro- magnetic material and having confronting gap surfaces with a gap therebetween filled with a nonmagnetic material bonding the circuit parts together, comprising: heating the circuit parts, cool- ing the circuit parts, placing a polished gap surface of one circuit part in confronting elationship with a corresponding polished gap surface of another circuit part, said surfaces being separated by a gap equal to the desired gap length, placing a quantity of nonmagnetic material adjacent to the gap, said nonmagnetic ma- terial having a melting temperature below that of said ferromag- netic material, and heating the resulting assembly to the melting temperature of said nonmagnetic material, whereby said non- magnetic material melts, fills the gap by capillary action, and bonds the circuit parts together. 15. A method of manufacturing portions of magnetic heads composed of two circuit parts consisting of sintered oxidic ferro- magnetic material and having confronting gap surfaces with a gap therebetween filled with a nonmagnetic material bonding the circuit parts together, comprising: thermally etching the gap surfaces of the two circuit parts, placing a polished gap surface of one circuit part in confronting relationship with a correspond- ing polished gap surface of another circuit part, said surfaces being separated by a gap equal to the desired gap length, placing a quantity of nonmagnetic material adjacent to the gap, said nonmagnetic material having a melting temperature below that of said ferromagnetic material, and heating the resulting assembly to the melting temperature of said nonmagnetic material, whereby and bonds the circuit parts together. A50 Appendia B already noted, the gap dimensions are exceedingly small and absolute precision in measurement cannot ‘always \be achieved. Just as a certain tolerance is acceptable in terms of the final core, an equivalent tolerance should be per- mitted with regard to the shim. The claims, when read with the specifications more than adequately inform those skilled in the art how to practice the invention and how to avoid infringement. B. Obviousness As with the Duinker patent, the principal challenge raised by defendants to the validity of the Peloschek patent is that the invention would have been obvious at the time it was made to a person having ordinary skill in the art. Thus, it is necessary to examine the scope and content of the prior art and the differences between the prior art and the Peloschek claims. 1. Scope and Content of the Prior Art ™, Defendants cite as pertinent prior art U.S. Patent Nos. 2,900,748 to Grant; 3,024,318 to Duinker et al.; 3,029,505 to Reichenbaum ; 3,094,772 to Duinker; 3,117,367 to Duinker et al.; 3,283,396 to Pfost; 3,304,358 to De Jean et al.; 3,341,939 to Feinberg et al.; 3,065,571 to Hill; German pat- ent 10546; and two German articles. Defendants contend that in light of this prior art the use of capillary action to manufacture glass bonded ferrite cores would have been obvious and represented merely routine engineering. Plain- tiff, on the other hand, contends that all the cited prior art which is relevant to the problem points toward the non- eee = A5d1 Appendix B obviousness of the patented invention and that none shows the capillary process in the recording head industry. The Three Duinker Patents Duinker ’318 is the patent here in suit and discussed above. The method of manufacturing the invention dis- closed by the patent consists of placing a glass foil which exceeds in size the ultimately desired gap width by a few percent between two confronting polished ferrite gap sur- faces. This assembly is then heated to a temperature within the softening range of the glass and pressure is applied until the correct gap-width is reached. This can be referred to as the ‘‘sandwich’’ technique. Relevant, also, is a method of manufacturing the glass fillet consisting of placing a glass rod inside the ferrite loop near the gap so that during heating the glass spreads to form the fillet. Duinker °722, issued June 25, 1963 on an application filed June 26, 1957, discloses merely a further refinement and expanded discussion of the manufacturing technique disclosed in the first Duinker patent. Additionally, it in- cludes the disclosure of slicing the ferrite glass assembly to form a multiplicity of cores. ( Duinker ’367, issued January 14, 1964 on an application filed June 15, 1959, discloses a further refinement of the sandwich technique by the addition of shims or spacers, ‘‘the thickness of these spacers being substantially equal to the finally desired gap lenth.’’ The description explains that the spacers were intended to alleviate the problem of glass flowing away in heads with a gap length of greater than 10 microns. The function of the spacers is to fix the A52 Appendia B gap length. They are placed at the ends of the sheet of glass and between the ferrite bars prior to the heating and compression steps and are then ground away after cooking. The Pfost Patent This patent, issued November 8, 1966 on an application filed April 17, 1961, exemplifies another variation of the sandwich technique. The method disclosed consists of depositing spacer strips on one ferrite surface and a thin layer of glass on the other ferrite surface, placing the two ferrite surfaces in a confronting relationship, and heating the assembly to a temperature of 550-900 degrees centigrade under high pressure. The patent, also, discloses heating the ferrite blocks to a temperature of 600 degrees centigrade prior to coating with either glass or spacer in order to remove contaminants. Of significance to this litigation is the disclosure in the specifications that at temperatures be- tween 550-900 degrees centigrade, glass will wet the ferrite. The Hul Patent This patent, issued on November 27, 1962 on an applica- tion filed October 10, 1957, concerns a composite material of platinum alloy and glass for use in making glass-to- metal seals. The parties are in dispute as to what this patent discloses. Defendants contend that the patent dis- closes that capillary action is a customary method for bond- ing glass and metal. Plaintiff argues capillarity is dis- cussed in general terms. The Court finds that capillary action is discussed in general terms as the physical prin- ciple which is the foundation for the invention. The patent eo cl Ad3 _ Appendia B discloses that glass is a liquid and will behave as a liquid insofar as capillary action is concerned. Thus, in order to achieve a good glass-to-metal bond, the patent claims an alloy which exhibits superior wetting action. Prior Art Processes Utilizing the Principle of Capillary Action A group of defendants’ prior art references may be conveniently categorized as illustrations of the use of capil- lary action in connection with manufacturing processes with materials other than glass and ferrite. The patent to Reichenbaum, issued April 17, 1962 on an application filed September 29, 1958, falls in [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385004_2264%3A1. Public record. Not legal advice.