Petition — Factor v. Commissioner of Patents & Trademarks

| Supreme Court, U.S,

\% FILED

O&C 31 1980

80-1077

= No.. MICHAEL RODAK, JR., CLERK:

In The

Supreme Court of the United States

October Term, 1980

NEAL FACTOR & NAT ZIMMERMAN

Petitioners,

Ve

COMMISSIONER OF PATENTS AND TRADEMARKS

Respondent.

PETITION FOR A WRIT OF CERTIORARI

TO THE COURT OF CUSTOMS AND PATENT APPEALS

EDWARD A. RUESTOW

Attorney for Petitioners

36 ig oe Road

Old Westbury, New York 11568

(516)626-3565

l.

THE QUESTIONS PRESENTED

Has the Patent and Trademark Office

(in effect) restricted the ability to

obtain protection under the United

States Patent laws by its disregard

of prior Court holdings which nar-

rowly interpret the term “prior art",

as used in 35 U.S.C. Section 103, by

declaring that the broad category of

"optical display devices" is a “prior

art” within the meaning of that sta-

tute?

Does the holding, by the Patent and

Trademark Office, that the subject

device is "obvious", ignore the judi-

cially created (standard) that

improvements which substantially

advance the “prior art" are not obvi-

ous if a higher than ordinary level

—

PAGE 2

of skill was. necessary for their

development?

Is the decision of the Court of Cus-

toms and Patent Appeals erroneous as

it is totally unsupported by the

facts?

-

PAGE 3

TABLE OF CONTENTS

The Questions Presented ..ccccccccccee lL.

Opin ions Below. @eeeeoeeseee*exux9eoe#see@*esees¢e#*eseeees2eee? 7

Jurisdiction. @eeeeeoeeoeeeeneeeeeeeneeneneeneeneeeee 7

Constitutional Provisions,

Statutes and ER a ad Oe ale eg wos 8 eb OS i)

Statement of the Case ..cccccccccceee 10

Reasons for Granting the Writ ....... 17

Argument:

I - The Patent and Trademark Office

(in effect) has restricted the

ability to obtain protection

under the United States patent

laws by its disregard of prior

court holdings which narrowly

interpret the term "prior art",

as used in 35 U.S.C. 103, by

declaring that the broad catagory

of “optical display devices”

is a “prior art” within the

meaning of that statute ...ecceeee 19

II - The holding, by the Patent and

Trademark Office, that the subject

device is "obvious", ignores the

judicially created (standard) that

improvements which substantially

advance the “prior art" are not

obvious if a higher than ordinary

level of skill was necessary for

their development ....ccccccsesees 32

PAGE 4

III - The decision of the Court of

Customs and Patent Appeals is

erroneous as it is totally

unsupported by the facts ........- 41

Conclusion @eeeoeeoeceeeee eeaeeeeweveeeeeenee 52

Appendix A - Opinion and.

Decision of the Board of Appeals.. la

Appendix B - Opinion and

Decision of the CCPA eetoeoeeeeneee 7a

Appendix C - Definitions

of the ee a at we oe ob Oe eee eeee 10a

Appendix D - Constitutional

and Statutory Provisions ........ 2la

PAGE 5

TABLE OF AUTHORITIES

A. Kimball Co. v.

Noesting Pin Ticket Co.

262 Fed. 148 (CA 2 1919) eeceescece 50

Application of Antle

“. 444 F.2d 1168 (1971) ...cceeeee 24,29

Baker Manufacturing v.

Whitewater Manufacturing

298 F. Supp. 1389 (1969) ...eeeee- 25

The Barb Wire Patent

143 U.S. 281 (1891) e@eeeoeoeeveee 22,37

Dewey and Almy Chemical Co. v.

Mimex Co.,Inc.

52 USPQ 138 (1942) ....eee2- 36,37,44

Eibel Co. v. Paper Co.

261 U.S. 45 (1922) ...... 17,34,37,44

Graham v. John Deere Co.

383 U.S. 1 (1966) ..-ee- 17,19,20,22,

23,25,30,54

Hotchkiss v. Greenwood

ll U.S. (1850) ecoeececeeeeeeeeee 22,30

In re Adams

364 F.2d 473 (1966) eeeeeseeneeeee800 25

In re Warner

379 F.2d 1011 (1967) ee ee ey ee 25

Krementz v. The S. Cottle Co.

148 0.8. SSH.11692). wcccacccece Alea

Potts v. Creager

155 U.S. 597 (1894) .. 17,24,29,37,38

PAGE 6

Smith v. Snow

294 U.S. 5 (1934) eeeeeveevoevoea eee 22,44

U.S. v. Adams

383 U.S. 1 (1966) @eeeeeeenee2e8ee2e 17,22

United States Constitution

Article I, Section 8, Clause 8 .... 9,52

United States Code:

Title 28, Section 1256 @e@eeevoeeveeaneneoeneee00 8

Title 35, Section 103 . 1,9,10,16,17,19,

20,21,23,24,27

Title 35, Section 141 @eeeeeeeeeneegenseeee? 4

Other Authorities: ;

Rule 17(1) (c) (2) of the U.S.

Supreme Court @eeeeeeeeseeeeeeeneeneneneenenenene 8

Funk and Wagnell’s International

Dictionary @eeeeoeaeeeeweeeeeeeeneeeneenee 13,14

PAGE 7

OPINIONS BELOW

The petitioner respectfully prays that a

Writ of Certiorari issue to review the

judgement of the Court of Customs and

Patent Appeals entered in the above case

on October 2, 1980.

: JURISDICTION

The Board of Appeals” judgment and opin-

ion was entered on November 20, 1979.

Copy of said opinion is set forth in

Appendix A. The Court of Customs and

Patent Appeals” judgment and opinion was

entered on October 2, 1980. Copy of

said opinion is set forth in Appendix B.

The Court of Customs and Patent Appeals

granted stay to petition for Certiorari

on November 21, 1980 to lapse on Decem-

ber 20, 1980. An extention of stay was

petitioned on December 18, 1980, and, if

PAGE 8

granted, will lapse on December 31,

1980.

The jurisdiction of this Court is

invoked under 28 U.S.C. Section 1256 and

pursuant to Rule 17(1)(c) and (2) of

Rules of the Supreme Court.

PAGE 9

CONSTITUTIONAL PROVISIONS,

STATUTES AND RULES

The Constitutional provisions involved

are Article 1, Section 8, Clause 8 of

the United States Constitution. The

statute setting forth the requirement

for patentability is 35 U.S.C. Section

103. Jurisdiction in the Court of Cus-

toms and Patent Appeals was founded on

35 u.S.C. Section 141.

PAGE 10

STATEMENT OF THE CASE

The Patent and Trademark Office and the

Court of Customs and Patent Appeals have

found that petitioners” device is novel

and utilitarian, but have denied ntiedeit

protection to petitioners on the grounds

that it is “obvious" under 35 U.S.C.

Section 103. This position is based

upon three earlier patents which the

Patent and Trademark Office claim to be

in the same art as petitioners” device.

This "“art" they define as the art of

optical display devices. It is their

contention that when the teachings of

all three patents are taken together -

(the prior art) the petitioners”

improvements become prima facie obvious.

The first of the prior art patents cited

is #1,259,147 granted to McCormick on

February 12, 1918. This patent reveals

PAGE 11

a system which causes motion picture

film to automatically turn light bulbs

on and off behind a translucent screen

on which the film is being projected.

These lights are positioned so that they

can be turned on to provide light

behind the screen when an object which

would normally radiate light is being

projected on the front of the screen.

This device is limited to use in scenes

where the viewer sees the sun, the moon,

a street light, or another source of

illumination being projected on the

front of the screen. McCormick does

make provisions for the slow motorized

movement of the bulbs, provided that the

movement is not required to be in

sychronization with the film.

The second patent #3,181,170 was

awarded to Akin on April 27, 1965. It

is a device in which the information to

PAGE 12

be displayed is scribed on a plate by

means ‘és a concentrated beam of energy.

This device is intended for use with

data processing and computing equipment.

The information is displayed to the

viewer by using ordinary incandescent

light and the esuceukiuhal beam of

enercy is never seen by the viewer.

The third patent #3,757,106 was

awarded to Bau on September 4, 1973,

with a foreign application priority date

of April 9, 1970 (originally a German

patent). It is a lighting effects dev-

ice consisting c* a laser beam which

bounces off or through a_ rotating fil-

tering disk. The laser beam is not

scanned or moved, it is only diffused,

defracted, refracted, or reflected by

the materials in its path. the device is

essentially a motorized laser kaleido-

scope, intended for advertising and

PAGE 13

theater displays. No mention is ever

made of possible use with motion pic-

tures.

Petitioners’ device is a system for

producing special effects in the movie

theater in sychronization with the

motion picture. The system includes a

laser whose beam is projected on the

front of a conventional movie screen or

occasionally through an opening in or

alongside the movie screen, to allow

projection out at the audience. At no

time is any projection onto the rear of

the screen involved. The beam can be

moved anywhere else on or off the front

of the screen with great rapidity. It is

moved at rates so high that’ the human

eye connects the various points at which

the beam is present into continuous

lines (scanning) (definition #6 ©0«0Oof

"scan"; Funk and Wagnell’s New Compre-

PAGE 14

hensive International Dictionary,

copyright 1978). Some of the means which

could be used to scan the laser beam are

similiar in many respects to Akin’s

scanning means (but Akin“’s device and

petitioners’ device contain more dissi-

miliar than similiar components). These

scanning means were not invented by Akin

and his invention was patented despite

their inclusion in his device.

The scanning means are controlled

by a memory system which contains stored

information as to the beam’s movement,

placement, color, etc. The memory sys~-

tem advances synchronously with the film

being projected on the screen. This syn-

chronization feature allows the system

to place laser light patterns in the

correct position in each frame of the

film as the picture is changing at is

regular 24 frames per second rate. The

PAGE 15

laser light patterns become integral

parts of the projected film, e.g. if a

picture of the planet Saturn is to be

depicted as receding on the screer, the

image of the planet is on the film

itself, while the rings of Saturn are

projected by the laser, and as_ the

planet is depicted as receding on the

screen, so are the rings.

The laser patterns are by no means

limited to merely replacing sources of

illumination on the screen, instead they

are actual elements of the motion pic-

ture scene. The advantages of the system

lie in its ability to create images of a

brilliance, intensity, and appearance

which would be otherwise unobtainable

via conventional motion picture projec-

tion. This results from the use of the

laser in the theater. The success of the

effects hinges completely on the fact

PAGE 16

that the viewer sees actual laser light

and not photographs of laser light, as

petitioners discovered from their own

experiments. It should also be noted

that the system provides three dimen-

sional effects when beams of laser light

are projected at the audience (because

the picture is actually coming off the

screen).

The application for patent of peti-

tioners” device was held to be obvious

under 35 U.S.C. Section 103. The Patent

and Trademark Office claimed that to a

person of ordinary skill in “the art",

it would be obvious to combine the

teachings of McCormick, Akin, and Bau to

produce petitioners” device. This posi-

tion was upheld by the Court of Customs

and Patent Appeals.

PAGE 17

REASONS FOR GRANTING THE WRIT

This petition raises substantial

and important questions concerning the

interpretation of 35 U.S.C. Section 103,

which prescribes the threshold of crea-

tivity required for grant of letters

patent. The issues involved are of great

importance to all those involved in

technological progress. Unlike typical

patent cases which require understanding

of highly technical matters, the instant

case is concerned with interpretation of

the law, an area for which this Court is

most highly suited. This Court has spe-

cifically addressed these issues in Gra-

ham v. John Deere Co., 383 U.S. 1(1966),

U.S. v. Adams, 383 U.S. 39 (1966), Eibel

Co. v. Paper Co., 261 U.S. 45 (1922),

Krementz v. The S. Cottle Co., 148 U.S.

556 (1892), Potts v. Creager, 155 U.S.

PAGE 18

597 (1894), but these decisions have

been ignored and contrary holdings have

been reached in the proceedings in the

Patent ane Trademark Office and _ the

United States Court of Customs and

Patent Appeals (hereinafter "C.C.P.A.").

The consequences of this case are far

reaching as the C.C.P.A. has hurled a

stone which can potentially trigger a

judicial avalance. In the past the Court

has repeatedly stressed that the res-

triction of the standards for patenta-

bility is the province of the legisla-

ture and not that of the Patent and

Trademark Office. Petitioners respect-

fully request the Court consider this

petition to prevent such a violation of

these policies enunciated by this Court.

PAGE 19

THE PATENT AND TRADEMARK OFF-

ICE (IN EFFECT) HAS RESTRICTED

THE ABILITY TO OBTAIN PROTEC-

TION UNDER THE UNITED STATES

PATENT LAWS BY ITS DISREGARD

OF PRIOR COURT HOLDINGS WHICH

NARROWLY INTERPRET THE TERM ©

"PRIOR ART", AS USED IN 35

U.S.C. SECTION 103, BY DECLAR-

ING THAT THE BROAD CATAGORY OF

"OPTICAL DISPLAY DEVICES” IS A

"PRIOR ART" WITHIN THE MEANING

OF THAT STATUTE.

Petitioners have been denied patent

protection due to refusal by the Patent

and Trademark Office to apply the stan-

dards enunciated by this Court for

interpretation of 35 U.S.C. Section 103.

This section as enacted in 1952 requires

that the subject matter of a patent not

be an “obvious” improvement over already

existing subject matter. The determina-

tion of obviousness is a question of

law, although it does require the Court

to weigh factual considerations. Graham

PAGE 20

v. John Deere Co., 383 U.S. 17(1966)

(hereinafter "“Graham"). Graham held:

Under Section 103, the

scope and content of the prior

art are to be determined; dif-

ferences between the prior art

and the claims at issue are to

be ascertained; and the level

of ordinary skill in the art

resolved. Against this back-

ground, the obviousness or

nonobviousness of the subject

matter is determined.

THE "ART" \

The proper implementation of the

above scheme hinges on the proper

interpretation of the term “art”, yet 35

U.S.C. in its entirety contains no

definition. In Graham, this Court held

that Section 103 "was not intended by

Congress to change the general level of

patentable invention", but was meant

"...merely as a codification of judicial

precedents...”". Therefore, the defini-

tion of “the art" in cases both preceed-

ing and following enactment of Section

PAGE 21

103 provide guidelines for determining

the normal scope which the term “art”

should be given when evaluating the

“obviousness” of a particular invention.

It is petitioners” contention that

by incorrectly defining "arc" and

grossly overstating the scope and con-

tent of the prior art involved, the

Patent and Trademark Office and the

Court of Customs and Patent Appeals have

committed an error of considerable mag-

nitude. The Court’s consideration of

this issue is therefore of great impor-

tance in light of this country’s ever

increasing rate of technological

advancement and resulting patent litiga-

tion.

Case law can be found by the

volumes in which the Court defines the

applicable “art" in very specific terms,

such as:

PAGE 22

The art of door knob

manufacture, Hotchkiss v.

Greenwood, 11 U.S.(1850) (her-

einafter “Hotchkiss") .

The art of chemical gen-

eration of electricity by bat-

teries, U.S. v. Adams, 383

U.S. 45 (1966) (hereinafter

"Adams").

The art of wire fencing,

The Barb Wire Patent, 143 U.S.

281(1691) (hereinafter "Barb

Wire").

The art of artificial

incubation of eggs, Smith v.

Smith v. Snow, 294 U.S.

5(1934) (hereinafter "Smith").

The art of plow design,

the art of closure devices for

liquid and semi-liquid con-

tainers, Graham v. John Deere

Co., 383 U.S. i Sas See

The art of manufacture of

hollow sheet-metal articles,

Krementz v. S. Cottle Co., 148

U.S. 556, 559.

(See Appendix C attached hereto for

additional cases supporting narrow

interpretation of the term.)

Time and money make it impossible

to review every case on this matter.

PAGE 23

Nevertheless, it can be stated with

certainty that the overwhelming body of

case law for the past century reveals an

extremely specific definition of the

“art”. Although it is irrefutable that

"...-the ambit of applicable art in given

fields of science has widened by discip-

lines unheard of a half century ago" (

Graham, at 19), definitions of

the “applicable art" have always been

consistent with the realities of our

educational and economic systems. That

is to say that one could find a group of

people who practiced or studied a parti-

cular art. In order for Section 103 to

have vitality it must remain consistent

with the real world.

In the real world, individuals are

not given general job assignments such

as: improve the welfare of mankind, or

increase the body of knowledge in the

PAGE 24

field of physics. Instead, they are

hired to design a new tomato slicer, or

reduce emissions from a diesel turbine,

or increase the lifespan of a_ storage

battery. It can indeed be said that the

trend today is decidedly towards spe-

cialization in the field of one’s occu-

pation, as a necessary result of techno-

logical expansion.

Therefore, when an individual ven-

tures out of his art into the morass of

other arts which surround hin, and he

successfully sifts them to find the

solution to a problem in his own art,

his work is not held to be "obvious"

under Section 103, Potts v. Creager, 155

U.S. 597 (1895) (hereinafter "Potts").

As we also said in Win-

slow, “Section 103 requires us

to presume full knowledge by

the inventor of the prior art

in the field of his endeavor. ~

~~ (Application of Antle 444

F.2d 1168 (1971). )

PAGE 25

ANALOGOUS ART

In some cases the Patent and Trade-

mark Office and the Courts have held

patent applicants responsible for know-

ledge in "analogous" or "pertinent

arts”. Usually these other arts have

been extremely similiar to the art

involved.

In the case of Graham this Court

defined the scope of analogous or perti-

nent art to be:

the art to which one can rea~

sonably be expected to look

for a solution of the problem

which the patented device

attempts to solve.

Under this line of reasoning we find

cases in which the courts have taken a

likewise narrow and specific view of

"analogous art", In re Warner, 379 F.2d

1011 (1967); Baker Manufacturing v.

Whitewater Manufacturing, 298 F. Supp.

1389, April 1969; In re Adams, 364 F.2d

. PAGE 26

The position originaliy taken by the

473 (1966).

Patent and Trademark Office was that the

art invoived in this case was the art of

motion picture and audio-visual appara-

tus. When petitioners demonstrated that

individuals in this field had no know-

ledge of laser technology the Patent and

Trademark Office expanded the art by

characterizing it as the art of “optical

display devices." This expansion of the

art is unjustified as petitioners”

claims are extremely narrow, referring

only to motion pictures. This vague

characterization of a particular subject

matter is by no means an “art” in the

legal sense. Were we to postulate the

existence of an optical display mechanic

or engineer, we would have an individual

with ordinary skill and knowledge in

microscopy, skywriting, television, air-

PAGE 27

craft inetrumentation, stadium

scoreboards, data processing, motion

pictures, fireworks, etc. The fact that

such individuals do not exist is fairly

common knowledge, yet the Patent and

Trademark Office has taken a position to

the contrary.

Remembering that Section 103 only

requires creating a hypothetical man in

the art and not a hypothetical art, the

proper boundaries of an "art" should

bear a semblence to the real world. In

examining the real world of the motion

picture arts we find people very

strictly segregated regarding their

skills and training. Each artist is

found within his own niche, and lines

are very rarely, if ever, crossed. For

instance, there is no broad catagory of

designers, rather there are costume

designers or scenic designers; there are

PAGE 28

no electricians, there are set

electricians or lighting electricians.

They each. have different training,

unions, and professional publications.

It has been this way for decades and

will no doubt continue for economic,

historical, and practical reasons.

In trying to pinpoint the individu-

als’ whose art might embrace petition-

ers’ device we would look to lighting

technicians, or special effects techni-

cians, or motion picture projectionists.

Among these three arts, petitioners know

of no one who has used lasers or scan-

ners or any system remotely related to

petitioners”. The Patent and Trademark

Office has provided no reference to the

contrary, ignoring all requests for

such. Furthermore, petitioners know of

no publications in these areas which

mention any comparable systems or

PAGE 29

effects.

It appears that the Patent and

Trademark Office has created an art to

which the three prior unrelated patents

could be included. As previously stated,

this is indeed a great departure from

the usual practice, and petitioners have

gone to great lengths to comprehend the

basis for adopting this position. Peti-

tioners believe the error has its origin

in the unintentional adoption of the

following pattern of reasoning:

1. The introduction of technology into

one art from a distant art is the

work of an inventor and often worthy

of patent protection. ( See Potts,

Smith, Application of Antle, 444 F.2d

1168 (1971). )

2. The introduction of technology into

one art from an analogous art is the

work of a mechanic or engineer and

PAGE 30

not worthy of patent protection.

(See Hotchkiss).

3. An analogous art is “the art to which

one can reasonably be expected to

look for the solution to the problem

which the patented device attempts to

solve". (See Graham).

4. An art which provides a_ reasonable

solution to “the problem the device

attempts to solve” is an analogous

art.

This last step is erroneous and danger-

ous for it leads inevitably to continu-

ous retroactive expansion of "the art”

involved. This results in negation of

the first premise, as all "distant arts"

become “analogous arts" the moment they

provide a reasonable solution to a prob-

lem in any other art. Such reasoning

presents an extremely tempting trap

where “the problem the device attempts

PAGE 31

to solve" is complex and susceptible to

numerous means Of attack.

Petitioners’ intention was to

develop new special effects for motion

pictures to provide a more dramatic

viewing experience. The art to which

they addressed themselves was quite spe-

cifically motion picture effects. Yet,

petitioners” intentions were not per

ceived clearly in the preceedings below.

The primary examiner thought that

petitioners intended to replace McCor-

mick’s incandescent lights with coherent

(laser) light. The Board of Examiners

believed that petitioners sought to

automate laser light patterns. The soli-

citor thought they intended to update a

rear projection film system. These mis-

perceptions are by no means the product

of inept or incapable minds; they merely

typify reactions to disclosures of sig-

. PAGE 32

nificant advancements in technology.

In attempting to understand new and

unexplored ground, the human mind makes

comparisons to things that are familiar

and well understood. Analogies of this

type are beneficial in understanding how

a new device works, but are not proper

for determining if the requisite degree

of inventiveness is present, for patent

purposes. With each comparison to the

old and familiar the mind perceives a

corresponding reduction in the amount of

creativity apparently needed to con-

ceive of the device.

This retroactive expansion of "the

art" denies the applicant a patent which

results in stifled individual creativity

and concomittent damage to our national

economy.

PAGE 33

II.

THE HOLDING, BY THE PATENT AND

TRADEMARK OFFICE, THAT THE

SUBJECT DEVICE IS "OBVIOUS",

IGNORES THE JUDICIALLY CREATED

(STANDARD) THAT IMPROVEMENTS

WHICH SUBSTANTIALLY ADVANCE

THE "PRIOR ART" ARE NOT OBVI-

OUS IF A HIGHER THAN ORDINARY

LEVEL OF SKILL WAS NECESSARY

FOR THEIR DEVELOPMENT.

The Patent and Trademark Office

contends that the petitioners” device is

an obvious updating of a prior (1918)

patent held by McCormick. The petition-

ers believe they have shown their device

to be a totally unrelated innovation.

However, assuming, arguendo, that

we accept the Patent and Trademark Off-

ice’s contention that the petitioners”

device is an updating of McCormick, it

is by no means an obvious one.

Although the line between the work

of a mechanic and that of an inventor is

often a fine one, this Court has pro-

vided criteria with which the

PAGE 34

demarcation can be more clearly traced.

It can be shown that the Patent and

Trademark Office has ignored established

judicial criteria which are meant as

guides in distinguishing between true

invention and obvious improvement.

One of the key criteria upon which

the Court has focused is the period of

time between prior improvement in the

art and the present claimed invention.

With each moment that time passes, the

likelihood that the new improvement is

obvious diminishes. In Eibel Co. v.

Paper Co., 261 U.S. 45, 68 (1923) (her-

einafter “Eibel") it was held:

The fact that in a

decade of an eager quest for

higher speeds this important

chain of circumstances had

escaped observation, the fact

that when he made known his

discovery, all adopted his

remedy, leave no doubt in our

minds that what he saw and did

was not obvious and did

involve discovery and inven-

tion.

PAGE 35

The Court has also focused its

attention on economic and motivational

factors such as long felt need in the

industry and favorable reactions in the

commercial marketplace. The desire for

new and varied special effects for

motion pictures has not ceased since

their inception. This innovative quest

has brought us devices such as 3D pic-

tures, Cinemascope, and Sensourround.

There was never a specific demand for

these devices as no one had ever imag-

ined such effects could be achieved

before their creation. Yet, inventors

continue to experiment with new effects,

secure in the knowledge that there will

always be interest in new ways of

enhancing motion pictures. It can be

stated quite safely that the reason pet-

itioners” device wasn“t invented earlier

was not a lack of interest in the indus-

—

PAGE 36

try. Therefore, a factor weighing

heavily in petitioners” favor is the

long time span between McCormick’s work

in 1916, the invention of the laser in

1963, and petitioners” invention in

1976. In an industry in which competi-

tion for new effects is quite intense,

it is hard to believe that the many

engineers and mechanics in the field did

not conceive of such an improvement.

Perhaps the only logical explana-

tion is that petitioners” device is

truly an invention and invention adheres

to no time schedule no matter how

intense the demand for it is.

When for example a mater-

ial has been available for

many years, and no one has

thought to use it ina new

physical combination to answer

a need equally old, there is

as much reason for treating

its selection of any other

element;

(Dewey and Almy Chemical

Co. ve Mimex Co., Inc.,

USPQ 138(1942) (hereinafter

PAGE 37

"Dewey"). )

The Courts have on occasion looked

at success in the commercial marketplace

as another factor to aid in determining

whether a particular device is worthy of

patent protection. Petitioners Factor

and Zimmerman have deliberately kept

their invention a secret. This decision

was influenced by the very nature of the

motion picture industry, which thrives

on novel and unique changes. While the

patent application was pending, it would

have been quite possible for someone to

produce a film using petitioners” inven-

tion. Therefore the measure of success

in the commercial marketplace is not

applicable.

Another criterion was established

by this Court in Potts, Eibel (at 63),

and in Barb Wire (at 283). In Potts,

the Court recognized that substantial

PAGE 38

improvement of an old device was

invention. Mr. Potts improved upon a

device that had been used for polishing

wood by merely substituting materials in

order to create a device to disintegrate

clay. This substitution of materials to

create a new device with a new use was

invention.

A brief comparison of the devices

in issue reveals enormous improvement

and innovation on petitioners” part.

McCormick’s device was limited to

turning light bulbs on and off behind a

screen when pictures of light bulbs or

other sources of illumination were pro-

jected on the front of the screen. If

movement of the light source was desired

it could not be done in synchronization

with the film. The light bulbs’ used

were a single color and brightness. Ins-

tallation of this device required modi-

PAGE 39

fication of existing theater equipment

and cumbersome installation procedures.

The petitioners” device projects

laser images on the front of the screen

in precise synchronization with each

frame of the film. As the film images

move or change perspective so does the

laser portion of the scene. Laser

effects can change brightness and color

and are not limited to scenes where

sources of illumination are depicted; it

can depict any number and type of

objects in the scere. The laser effects

can also be projected (safely) out into

or onto the audience to envelope the

viewers in selected scenes. This results

in actual three dimensional effects

never before achieved in the history of

motion pictures. Furthermore, petition-

ers’ system can be installed with great

ease and requires no modification of

PAGE 40

existing motion picture theaters.

Comparing the two systems is like

comparing a zoetrope to a modern color

movie. It can accurately be said that

they have common roots, but to deny that

one is not a vast improvement over the

other surpasses subjectivity and amounts

to falsehood.

The application of any or all of

this Court’s criteria reveals that peti-

tioners” device is the work of inven-

tors. It is evident that in finding to

the contrary the Patent and Trademark

Office and the Court of Customs and

Patent Appeals has ignored all judicial

guidelines in this area.

PAGE 41

IItI.

THE DECISION OF THE COURT OF

CUSTOMS AND PATENT APPEALS IS

ERRONEOUS AS IT IS TOTALLY

UNSUPPORTED BY THE FACTS.

The decision of the Court of Cus-

toms and Patent Appeals is totally uns-

upported by the facts.

In the proceeding below the Court

held:

Akin and Bau et al. evi-

dence that apparatus was

available to construct means

for automatically controlling

and projecting laser beams to

form coherent light patterns

and that such existing appara-

tus is useful in creating var-

ious effects in theaters.

This statement is untrue, as Akin

was never intended to be used theatri-

cally and can not be used as such, but

rather intended solely for use in the

art of data processing. Furthermore,

the viewer never views any laser light,

let alone “patterns” in Akin’s' inven-

tion.

PAGE 42

The C.C.P.A. also held:

To apply modern-day, con-

cedely (sic) known laser

apparatus to McCormick would

have been obvious to one

skilled in the art of optical

display systems, thus render-

ing the claimed subject matter

obvious under 35 U.S.C. 103.

This statement is at best a half

truth because the application of laser

apparatus to McCormick’s teaching would

not produce a device even remotely

resembling petitioners” device.

McCormick”°s device was commer-

cially, industrially, and artistically a

failure. After an exhaustive search,

petitioners” find no recorded commercial

use of McCormick’s device at all. The

effects which it produced detracted

from, rather than enhanced, motion pic-

tures because the simultaneous protec-

tion of light on the front and back of

the screen results in washing out (or

canceling) of each other. Furthermore,

re

‘

PAGE 43

the situations in which a light source

was actually present in a scene were

limited, and when they did occur, the

presence of a light bulb shining behind

the screen presented a rather very sim-

plistic theatrical display.

Also of importance to aote, is the

overwhelming lack of versatility in

McCormick’s system. Modification of

existing screens and projectors would

have been required, and time consuming

placement of electrical fixtures behind

the screen was also necessary. These

requirements posed serious detriments in

an industry where standardization and

ease of installation are quite often the

key to success. These comments are not

an attack upon the validity of McCor-

mick*s patent, but merely a summation of

his teachings on rear screen effects.

Application of laser apparatus to

PAGE 44

McCormick’s teachings would produce

roughly the same device as McCormick’s,

except it would have the ability to pro-

ject much brighter light on the back of

the screen and wash out more of the pic-

ture at considerably higher cost. This,

no doubt, accounts for the complete lack

of interest in such updating of McCor-

mick’s teaching.

The invention of a combination

is not anticipated by earlier

and impracticable experiments,

for the same end, with iso-

lated elements of the combina-

tion. (Smith at 2, 17)

Petitioners” device in no way

resembles McCormick’s, because petition-

ers attempt to solve a totally different

problem (Eibel at 67, Dewey at 138).

While McCormick attempted to make film

more realisitic, petitioners attempt to

make film more futuristic. Their effects

depict things which belong to the world

of fantasy and science fiction. It is

PAGE 45

for this reason that the direct viewing

of laser light is a necessity. Whether

it is projected on the front of the

screen or at the audience, the viewer

looks at laser light.

The laser produces light which is

unfamiliar to the human eye , due to its

unique brilliance, purity and concentra-

tion. Petitioners Factor and Zimmerman

realized that this “special” light,

which doesnt occur in nature, was ideal

for special effects in movies. They then

went about solving the problems of

delivering these new special effects to

the movie viewer. The problem wasnt

applying lasers to McCormick; the prob-

lem was enabling the movie viewing audi-

ence to see laser special effects

applied to film, live, in the theater

itself; and McCormick is of no help in

arrivng at a solution to this problem.

PAGE 46

As admitted by petitioners, some

laser effects had been used in other

arts, but not motion pictures (solici-

tor°s statements to the contrary are

without any documentation). However,

these effects are dissimiliar to peti-

tioners”, as effects for concerts and

theaters are disorganized patterns of

light (as in Bau) whereas petitioners

effects are integral elements in the

motion picture scenes themselves

(requiring great detail and precision).

In trying to apply their effects to

movies, petitioners initially photo-

graphed the laser effects. These

attempts were unsuccessful as_ the pro-

perties of laser light were destroyed

when photographed and then projected

with conventional (incandescent) equip-

ment. The Patent and Trademark Office

attributed these experiments to the work

PAGE 47

of others in the art. During the

C.C.P.A. proceedings, the solicitor

argued that Akin and Bau had disclosed

such work. This argument is without

merit, in that neither Akin or Bau make

any reference to the use of motion pic-

tures. Without the production of evi-

dence to support this claim by the

Patent and Trademark Office, the conten-

tion that petitioners” unsuccessful and

unpublished experiments were known in

the art is clearly erroneous.

Petitioners” initial failures

caused them to conclude that the laser

portion of the motion picture would have

to be generated in the theater. This

presented the new problem of storing the

information which controlled the laser

portion of the movie and synchronizing

it with the film.

The synchronization element of this

PAGE 48

system was addressed by the solicitor in

the proceedings below, albeit incor-

rectly. The solicitor would have this

Court read McCormick as embodying synch-

ronous scanning of light. However, this

reading is clearly spurious, for McCor-

mick makes no claim to having devised a

method whereby moving light would be

synchronized. Rather, he refers specifi-

cally to achieving certain effects by

the nonsynchronous movement of the light

bulbs themselves. In contrast, petition-

ers” device involves the continuously

synchronized scanning of the laser beam.

The solicitor asserts that movement of

McCormick’s light bulbs is the _ func-

tional equivalent of scanning and there-

fore petitioners” device is a mere

“updating” of McCormick’s teaching.

Clearly petitioners have accom-

plished what McCormick could not, for

PAGE 49

the slow rotation of light bulbs is in

no way equivalent functionally or other-

wise to the high speed scanning of a

laser beam. McCormick*’s effects

required the actual physical movement of

the hardware, i.e. the light bulbs. Pet-

itioners” device is addressed to the

scanning of the beam of light (at such

high rates that the beam movement

becomes imperceptable), not the actual

movement of the laser instrument. Both

the ultimate effect, and the manner of

accomplishing the result are in no way

similiar.

In effect petitioners realized the

solution to their problem would require

making two separate "movies" (one of

conventional film images and one of

laser images), neither of which would

make sense without the other. Then they

created a device to intertwine the two,

PAGE 50

so as to work in unison. Such an idea

was not, and still has not, ever been

thought of outside of petitioners”

minds. Yet, petitioners went further and

designed and tested a system which made

their dreams into reality. In an art

where no one had worked with lasers,

such a transformation is surely the work

of inventors.

It is, of course, urged,

and naturally, that no more

than a mechanic’s skill was

needed to take the final step.

But a mechanic is one who

applies his trade by rule or

rote, and only uses what he

learned yesterday to do the

work of to-day in the same old

manner. He may do it excel-

lently, but if he has, not

only hindsight, but insight or

foresight, first to comprehend

the problem and use even the

learning of yesterday to do

the new thing in a new way,

that mechanic has usually

earned bag ry geal title.

(A. mball Co. v. Noest-

ing Pin fone Co. 262 Fed.

148 (CA 2 1919) )

Petitioners realize that the Court

PAGE 51

is loathe to overturn the decision of a

lower court, particularly when such

court has special expertise in a parti-

cular field. But the holding in this

case is in such blatant conflict with

the facts that no technical expertise is

required to realize that this decision

must be set aside.

PAGE 52

CONCLUSION

An injustice has been done to peti-

tioners, but injustices must sometimes

be tolerated for the sake of preserving

the law. Consideration of this petition

is of great importance, as failure to do

so will place the law in jeopardy, and

that is intolerable. The protection of

intellectual property was deemed of such

great importance as to warrant inclusion

in our Constitution (Article I, Section

8, Clause 8). At a time when natural

resources and labor are less expensive

in many other countries, there is even a

greater need for its preservation and

development. If the Patent and Trademark

Office’s position is allowed to stand as

precedent it will erode the protection

which the Congress has deemed proper to

provide for inventors. If such protec-

tion is to be withdrawn, it should be by

PAGE 53

decision of those who rightly granted it

and not by the misinterpretations of an

agency. The path the Court has decided

to follow, as evidenced by volumes of

case law is quite clear. The Court has

taken consistent positions time and

again in its decisions to either grant

or deny patent protection. This Court

cannot, nor do we suggest that it

should, hear all parties who are agg~-

rieved by agency action. However, when

an egregious situation presents itself,

it is encumbant upon this Court to

review and rectify the action taken by

the agency charged with administering

the law.

Just as the public is now clamoring

and creating movements to foster the

American economy by waving banners and

carrying slogans, such as “buy American

cars", we are asking to aid in the

PAGE 54

spirit of American invention. Prior

Court holdings have indicated that pre-

serving American creativity is of utmost

importance. This theme echoes throughout

each opinion. In the landmark case of

Graham v. John Deere Co., the Court in

discussing Jefferson’s philosophy on the

nature and purpose of the patent mono-

poly stated (at p. 9):

The patent monopoly was

not designed to secure to the

inventor his natural right in

his discoveries. Rather it was

a reward, an inducement to

bring forth new knowledge

(emphasis applied).

Petitioners have heeded the advice

of our forefathers and have worked

steadily to create a device new and

beneficial to the American economy.

Their invention satisfies all criteria

for patent protection set forth by this

Court. It would indeed be unfortunate if

a similiar device received recognition

PAGE 55

not having its origin in our country,

but rather as being the product of a

foreign inventor.

We, as a nation, are presently com-

peting fiercely with foreign nations in

order to maintain our lead in progress

in technology; we must not take steps

which will hinder our advancement. In

other countries, inventors are being

encouraged to continue their work; crea~

tivity is actively supported. The denial

of a patent can be used as a weapon, 4a

weapon to stifle or kill all creative

endeavors. We are asking this Court to

continue to use patent protection as a

shield, to shield against granting pri-

vate monopolies to designs not worthy of

protection, yet freely granting patent

protection to devices, such as_ the

instant device, which display the true

qualities of invention.

PAGE 56

Respectfully submitted,

EDWARD A. RUESTOW

Attorney for petitioners

36 Valley Road

Old Westbury, New York 11568

(516) 626-3565

APPENDIX A

OPINION AND DECISION

OF BOARD OF APPEALS,

NOVEMBER 20, 1979

Before Bennett and Spencer, Examiners-

in-Chief, and Craig, Acting

Examiner-in-Chief.

Bennett, Examiner-in-Chief.

This is an appeal from the

final rejection of claims 24 through 37.

Claim 24 is reproduced below:

24. A system for the synchro-

nous projection of film images and com-

plementing coherent light patterns com-

prising:

means for projecting suc-

cessive film images to a

screen;

a coherent light source;

and means’ for projecting

a coherent light beam from

said source to form coherent

light patterns to compliment

said film images synchronously

with said film images includ-

ing:

beam scanning means for

scanning said beam over

the area desired for said

coherent light patterns;

an information storage

|

PAGE 2a

device for storing

information corresponding

to the visual content of

said coherent light pat-

terns;

and means responsive to

said information storage

device for controlling

said beam to form. said

coherent light patterns.

The references relied on

are:

McCormick 1,256,147 Feb. 12, 1918

Akin 3,181,170 April 27, 1965

Bau et al. 3,757,106 Sept. 4, 1973

(Bau)

In addition to the above cita-

tion of prior art by the examiner,

appellants acknowledge that they were

not the first to complement film images

with enhancing light; brief, page 2.

Nor were they the first to use laser

light to generate optical theatrical

displays and visual patterns; descrip-

tion, page 3.

All claims stand rejected

under 35 USC 103. As evidence of obvi-

PAGE 3a

ousness, the examiner cites the

well-known practice of utilizing a laser

for generating visual and lighting

effects; and in addition, the examiner

cites McCormick, Akin and Bau as addi-

tional evidence in support of his rejec-

tion. We refer to the examiner’s answer

for a statement of his position.

OPINION

We sustain the rejection. The

essence of the invention is that the

laser beams are controlled by a storage

device. In other words, appellants are

attempting to obtain a patent on the

concept of automatic as contrasted with

the manual control of a laser display.

Nothing in claim 24 requires that the

laser display be projected on the screen

itself. All that the claim requires is

PAGE 4a

that the laser beams are projected and

"compliment" the film images - whatever

that means. In short, where the prac-

tice was to manually control the beams

(if that was the practice) appellants

now control the beams automatically. As

a general rule, it is obvious to do

automatically things that were formally

done manually. Furthermore, the concept

of automation and projecting light on

the screen is suggested by McCormick.

Although appellants have not contended

otherwise, Akin and Bau confirm that

hardware was available from which to

construct a means for automatically

controlling the beam to form coherent

light patterns. The broad concept of

doing so would have been obvious to a

worker in the art.

The known advantages of using

laser light, as described by appellants

PAGE 5a

on page 2 of their brief, is a further

reason why the invention would have been

obvious. Appellants do not assert that

they were the first to recognize the

advantageous properties of lasers. The

contrary was true. The desirable pro-

perties of laser light as described by

appellants were known to workers in the

art. Therefore, the results of using

lasers to make light patterns as claimed

would have been expected rather than

unexpected. Expected beneficial results

are evidence of obviousness. In re

Skoner, 186 USPQ 80 (CCPA 1975).

Although appellants mention in

their brief that the dependent claims

recite further details of their device,

no argument urges that these details

render the invention unobvious over and

above parent claim 24. Therefore all of

the claims stand or fall together.

PAGE 6a

Accordingly, the decision of

the examiner is affirmed. AFFIRMED

s/ R.D. Bennett

Examiner-in-Chief

)

)

)

)

s/ Richard Spencer BOARD

Examiner-in-Chief OF

) APPEALS

s/ Terry D. (illegible) )

Examiner-in-Chief )

(Acting) )

PAGE 7a

APPENDIX B

UNITED STATES COURT OF

CUSTOMS AND PATENT APPEALS

IN RE NEAL FACTOR ) Appeal No. 80-541.

and NAT ZIMMERMAN )

)

) Serial No. 708,206.

Decided: October 2, 1980

Before MARKEY, Chief Judge, and

RICH, BALDWIN, MILLER

AND NIES, Associate Judges.

BALDWIN, Judge.

DECISION

The decision of the United

States Patent and Trademark Office Board

of Appeals affirming the rejection of

claims 24-37 under 35 USC 103 is

affirmed.

PAGE 8a

OPINION

Appellants admit that they are

not the first to complement film images

with enhancing light, that light gener-

ated from lasers has been used in thea-

trical and concert lighting, and that

their system utilizes already existing

components. McCormick teaches the

synchronous projection of actual light

patterns in cooperation with the projec-

tion of film images to enhance visual

effects for motion pictures. Akin and

Bau et al. evidence that apparatus was

available to construct means for auto-

matically controlling and projecting

laser beams to form coherent light pat-

terns and that such existing apparatus

is useful in creating various effects in

theaters.

To apply modern-day, concedely

(sic) known laser apparatus to McCormick

PAGE 9a

would have been obvious to one skilled

in the art of optical display systems,

thus rendering the claimed subject mat-

ter obvious under 35 USC 103.

PAGE 10a

APPENDIX C

Definitions of "The Art" in the follow-

ing cases:

Dann v. Johnston

425 U.S. 219 (1976)

The art of data processing systems used

for financial record keeping.

True Temper Corp. v. C.F. & I. Steel

Corp.

601 F.2d 495 (1979)

The art is manufacturing systems of

railway anchors.

Application of Gyurik and Kingsbury

596 F.2d 1012 (1979)

"The art of record... describes the

specific benzimidazoles in issue."

Cathodic Protection Service v.

American Smelting & Refining Co.

594 F.2d 499 (1979) 7

The art is the field of cathodic

protection.

Republic Industries Inc. v.

Schlage Lock Co.

592 F.2d 963(1979)

The art of door closing; the art of

valve and fluid handling.

Application of Herschler

591 F.2d 693(1979)

The art is one of the class of steroids

(involved in tissue penetration).

Centsable Products Inc. v. J.H. Lemelson

591 F.2d 400(1979)

The art comprised velcro and an earlier

game using a “cocklebur missle...thrown

PAGE lla

to fibrous hairy surface".

Application of Swan, Wood, et al.

582 F.2d 638(1979)

The art is chemical compounds

",...possessing antimicrobial activity...

(involving) derivatives of pteridine and

pharmaceutically acceptable salts.

Solder Removal Co. v.

U.S. International Trade Commission

582 F.2d 628 (1978)

"...the solder and flux art”.

Application of Goodwin, et al.

576 F.2d 375(1978)

The art of molds used in glass

manufacture.

General Electric Co. v. United States

572 F.2d 342(1977)

The art of position control devices.

Systematic Tool, etc. v.

Walter Kidde & Co., Inc.

555 F.2d 342(1977)

The art of design of food

slicing devices.

Aluminum Co. of America v.

Amerola Products Co.

552 F.2d 1020(1977)

The art of making baseball bats.

Lerner v. Child Guidance Products Inc.

552 F.2d 1020 (1977)

The art of keyboard instruments capable

of making sounds of other instruments for

purposes of toy design ( eg. toy piano

sounds like carillon, xylophone, etc. )

PAGE 12a

Universal Athletic Sales Co. v.

American Gym, Recreational & Athletic

Equipment Corp.

546 F.2d 530 (1976)

The art of design of body-training

devices.

Application of Lamberti

545 F.2d 747 (1976)

The art of hydroxyaryl sulfonium halide

compounds.

Tanks, Inc. v. Reiter Industries, Inc.

545 F.2d 1276 (1976)

The art of aerating and cleaning milk

tanker trucks.

ITT v. Raychem Corp.

538 F.2d 453 (1976)

The art of production of electrical

insulators.

Ortho Pharmaceutical Corp. v.

Am Hospital Supply

534 F.2d 89 (1976)

The art of blood coagulent testing agents

CMI Corp. v. Metropolitan Enterprises,

Inc.

534 F.2d 874 (1976)

The art of granular material loading

equipment.

Forbro Design v. Raytheon Co.

532 F.2d 758 (1976)

The art of regulated power supplies.

Saf-Gard Products, Inc. v.

Service Parts Inc.

532 F.2d 1266 (1976)

The art of internal combustion engine

cooling systems.

PAGE 13a

Application of Kuhle

526 F.2d 553 (1975)

The art of conductivity- measuring

devices.

Shanklin Corp. v. Springfield Mount Co.

521 F.2d 609 (1975)

The art of “in-line” packaging machines.

Tracor Inc. v. Hewlett-Packard Co.

519 F.2d 1288 (1975)

The art of electron-capture devices.

Application of Buehler

515 F.2d 1134 (1975)

The art of melting and pouring titanium

and high titanium alloys.

Deere and Co. v. Sperry Rand Corp.

513 F.2d 1131 (1975)

The art of mower-conditioners ( in hay

harvesting ).

Jacobson Bros. Inc. v. United States

512 F.2d 1065 (1975)

The art of underwater television.

Charvat v. Commissioner of Patents

503 F.2d 138 (1974)

The art of production of grinding wheels.

Research Corp. v. Nasco Industries, Inc.

501 F.2d 358 (1974)

The art of ". . . changes in hair

pigmentation (of animals) following

freezing.”

Application of Meng

492 F.2d 843 (1974)

The art of dairy food packaging,

specifically, slices of cheese.

PAGE l4a

Cool-Fin Electrical Corp. v.

International Electric Research Corp.

491 F.2d 660 (1974)

The art of electron tube shields.

In re Ryan

480 F.2d 1388 (1973)

The art of regenerating ion exchange

resins.

Application of Roberts

470 F.2d 1399 (1973)

The art of making rolls of PET

(polyethylene Terephthalate) film.

Die Craft Metal Products, Inc.

461 F.2d 5 (1972)

The art of the design of auto

accessories.

Flour City Architectural Met. v.

Alpana Aluminum Products, Inc.

454 F.2d 98 (1972)

The art of “thermal break" (window)

frames.

Application of Kamm

452 F.2d 1052 (1972)

The art of the inhibition of polymer-

ization on molecular sieves.

Tapco Products Co. v.

Van Mark Products Corp.

446 F.2d 420 (1971)

The art of brakes for bending and

folding sheet metal.

Westwood Chemical Inc. v.

Owens-Corning Fiberglass Corp.

445 F.2d 911 (1971)

The art of the treatment of glass

fibers.

PAGE 15a

Application of Antle

444 F.2d 1168 (1971)

The art of equipment for commercial

farming.

In re Facer

442 F.2d 976 (1971)

The art of masonite sheeting; the art

of aluminum sheeting.

Uarco Inc. v. Moore Business Forms, Inc.

440 F.2d 580 (1971)

The art of “continuous business forms."

Burgess Cellulose Co. v.

Wood Flong Corp.

431 F.2d 505 (1970)

The art of paper making; the art of

stereotype mat making.

Waldon, Inc. v. Alexander

Manufacturing Co.

423 F.2d 91 (1970)

The art of earthmoving bulldozer-type

equipment.

Indiana General Corp. v. Krystinel Corp.

421 F.2d 1023 (1970)

The art of soft ferrite compounds with

high frequency communications

applications.

Deep Welding Inc. v. Sciaky Bros., Inc.

417 F.2d 1227 (1969)

The art of deep welding.

Continental Can Co. v.

Crown Cork and Seal Co.

415 F.2d 601 (1969)

The art of molding and curing plastisol.

PAGE l6a

Ellicott Machine Corp. v.

United States and American M. & M. Co.

405 F.2d (1969)

The art of hydraulic-type dredges;

the art of bucket-type dredges (for

removing soil, etc. from riverbeds).

Grinnell Corp. v. Virginia Electric &

Power Co.

401 F.2d 451 (1968)

The art of servomotors; the art of high

temperature piping systems.

Kaiser Industries v. McLouth Steel Corp.

400 F.2d 36 (1968)

The art of refining, oxidizing and

removing impurities from molten pig iron.

Erwin-Newman Co. v. United States

393 F.2d 819 (1968)

The art of ". .. structures utilizing a

suspended cantilever member."

Gass v. Montgomery Ward & Co.

387 F.2d 129 (1967)

The art of construction and design of

automobile accessories, specifically

bumper guards.

Leach v. Badger Northland, Inc.

385 F.2d 193 (1967)

The art of the design of silos for silage

(corn, grain, etc.)

U.S. Gypsum Co. v. Dale Industries Inc.

383 F.2d 497 (1967)

The art of interior wall construction.

In re Warner

379 F.2d 1011 (1967)

The art of crayon making was held anal-

ogous to the art of cosmetic pencil manu-

PAGE 17a

facture.

Application of Grout

377 F.2d 1019 (1967)

The art of beekeeping.

Application of Uhlig

376 F.2d 320 (1967)

The art of producing printing plates

by electrophotographic techniques.

Hensley Equipment Co. v. Esco Corp.

375 F.2d 432 (1967)

The art of design of heavy construction

equipment.

Application of Baum

374 F.2d 1004 (1967)

The art of ferro-metallurgical processes.

Application of Cochran

374 F.2d 1017 (1967)

The art of design of weeders.

Sisko, v. Southern Resin & Fiberglass

Corp.

373 F.2d 866 (1967)

The art of construction of laminated

boat hulls.

Application of Martin

372 F.2d 556 (1976)

The art of humidifier construction and

design.

In re Winslow

365 F.2d 1017 (1966)

The art of bag opening equipment.

Up-Right, Inc. v. Safway Products, Inc.

364 F.2d 580 (1966)

The art of scaffolding

a

PAGE 18a

In re Adams

364 F.2d 473 (1966)

The court held the art of paper coating

distinct and separate from the art of

electrophotography.

Skirow v. Roberts Colonial House, Inc.

361 F.2d 388 (1966)

The art of design and construction of

containers for storage of cups.

King-Seeley Thermos Co. v.

Refrigerated Dispensers, Inc.

354 F.2d 533 (1965)

The art of Ice-making machines.

Marston v. J.C. Penney Co.

353 F.2d 976 (1965)

The art of construction of flexible

buoyant materials (rubbers, foam

rubber, etc.).

Application of Legator

352 F.2d 377 (1965)

the art of using chemicals (bactericides)

in controlling microorganisms in paper

mill waters.

Application of Ford

352 F.2d 381 (1965)

Cellulosic materials in the insulation

art.

Application of Altmann

352 F.2d 389 (1965)

The art of removing coating on coated

paper.

Application of Long

347 F.2d 651 (1965)

The art of design of two-compartment

containers.

PAGE 19a

Application of Fay

347 F.2d 597 (1965)

The art of gasoline compounding.

In re Lettvin

339 F.2d 249 (1964)

The art of analgesic treatment of female

disorders involving pain in the vaginal

area.

In re Rossetto

292 F.2d 300 (1961)

The art of photocomposing machines.

Reiner v. Leon Co.

285 F.2d 501 (1960)

The art of the manufacture of hair

curlers.

O.M.I. Corp. v. Kelsh Instrument Co.

279 F.2d 579 (1960)

The art of stereoscopic map making.

In re Roth

275 F.2d 743 (1960)

The art of crypt building.

Glatt v. Murphy Co.

270 F.2d 137 (1959)

The art of fabric coating.

In re Irmscher

262 F.2d 85 (1958)

The art of tea bag manufacturing equip-

ment.

Mojonnier Dawson Co. v. U.S. Dairies

Sales Corp.

251 F.2d 345 (1958)

The art of filling containers in dairy

industry and aerosol industry.

PAGE 20a

Baker Manufacturing v. Whitewater

Manufacturing

298 F. Supp 1389(1969)

The art of pitless adapters for water

wells.

PAGE 2la

APPENDIX D

The Constitution of The United States

Article I, Section 8, Clause 8:

The Congress shall have power

To promote the progress of science

and useful arts, by securing for limited

times to authors and inventors the

exclusive right to their respective

writings and discoveries;

35 U.S.C. 103:

Conditions for patentability; non-

obvious subject matter. A patent may

not be obtained though the invention is

not identically disclosed or described

as set forth in section 102 of this

title, 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 obvi-

PAGE 22a

ous at the time the invention was made

to a person having ordinary skill in the

art to which said subject matter per-

tains. Patentability shall not be nega~

tived by the manner in which the inven-

tion was made.