Appendix — Raytheon Co. v. Roper Corp.

= A | Office - Supreme Court, U.S.

- FILED

MAY 80 epg

ALEXANDER L. STEV

No. aoe oe CLERK

In the

Supreme Court of the United States.

OCTOBER TERM, 1983.

RAYTHEON COMPANY,

PETITIONER,

V.

ROPER CORPORATION,

RESPONDENT.

Appendix B.

ROBERT A. CESARI,

MARTIN J. O’DONNELL,

STEVEN J. HENRY,

CESARI AND MCKENNA,

312 Union Wharf East,

Boston, Massachusetts 02109.

(617) 523-8100

Counsel for Petitioner

Of Counsel:

JOSEPH D. PANNONE,

WILLIAM R. CLARK,

141 Spring Street,

Lexington, Massachusetts 02173.

(617) 862-6600

BATEMAN & SLADE. INC BOSTON. MASSACHUSETTS

PETITION FOR WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

APPENDIX

VOLUME B

Opinion of U.S. District Court,

Jan. 20, i. ° a eae

Opinion of U.S. Court of Appeals,

Dec. 30, OO eS Se

Order of U.S. Court of Appeals,

Denying Rehearing,

Mar. he |) eres

Roper Exhibit No. hf are

Raytheon Exhibit No. 277......+.+.-Bl27

Roper's Pre-Trial Brief

(Selected Parts).......-.+..-B128

Roper's Answer to Raytheon's

Req. for Admission No. 23....B135

Deposition Transcript of

R. D. Triplett

(Selected Parts) ..cccccccceeeBl36

Stenographic Transcript of Trial

(Selected Parts) .ccccccccceesBl3§

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UNITED STATES DISTRICT COURT

DISTRICT OF MASSACHUSETTS

RAYTHEON COMPANY,

Plaintiff

V. Civil Action

80-2035-MA

ROPER CORPORATION,

Defendant

OPINION

Mazzone, D.J.

January 20, 1983

STATEMENT OF THE CASE

This is a patent declaratory action

brought by Raytheon Company (Raytheon)

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against Roper Corporation (Roper).

Raytheon seeks a declaratory judgment

that Roper's U.S. Patent 4,028,520 ('520

patent) entitled "Air Flow System for

Common Cavity Microwave Oven" is invalid.

1/ The inventor is Sumner H. Torrey.

Roper has denied that its patent is

invalid and has counterclaimed for patent

infringement. Jurisdiction is properly

invoked under 20 (sic) U.S.C. §§1338(a),

2201 and 2202. Venue is proper under 28

U.S.C. §1400.

Specifically, Raytheon claims that

the '520 patent is invalid because (1)

it lacks utility, a requirement of 35

l. A second Roper patent, U.S. 4,028,519

was Originally involved in this suit, but

has been withdrawn by the parties.

B3

U.S.C. §101; (2) it is obvious, 35

U.S.C. §103; and (3) it lacks an

enabling disclosure and fails to

particularly specify the invention, as

required by 35 U.S.C. §112. Raytheon

also seeks attorneys' fees under 35

U.S.C. §285. Roper answers that its '520

patent is valid and further counterclaims

that Raytheon has-~ deliberately and

willfully infringed its '520 patent.

The case was tried to the Court

without jury. The order of trial was

reversed by the Court and Roper, the

patentee, presented its case first on the

issues of validity and infringement. The

issue of damages was reserved for a later

hearing, if necessary. The record

consists of the trial testimony, various

depositions and numerous exhibits.

Pursuant to Fed.R.Civ.P. 52(a), I make

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the following findings of fact and

conclusions of law. 2/

I. FINDINGS OF FACT

Background of the Case

The subject matter of this suit is a

"common cavity” oven with a pyrolytic

self-cleaning feature. This common

cavity oven has the capacity, in the same

oven structure, to perform conventional

thermal cooking (i.e., baking, broiling),

microwave cooking, and combination

2. My conclusion that the patent is

non-operative and, therefore, invalid, is

dispositive of this case. However, given

the efforts of counsel in presenting this

extensive record and mindful that a final

resolution of the case is desirable, I

have set out my findings and conclusions

in a more extended fashion to allow an

appellate court to examine all of the

issues raised by the pleadings.

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thermal and microwave cooking. The oven

also self-cleans by heating the walls to

about 900°F. to break down the soil baked

on the walls, so as to pyrolize it.

In sum, the oven is designed to

perform every cooking method and self-

clean as well. It provides conventional

thermal cooking together with the

advantages of rapid and efficient

microwave cooking. At the same time, it

provides for crisping and browning which

is not always possible with microwave

cooking alone. Pyrolytic self-cleaning,

the third feature, is practically effort

free to the consumer, as contrasted with

continuous cleaning which requires that

the decomposed material on the oven walls

be wiped off and removed manually by the

consumer.

These three functions are not

totally compatible. Thermal cooking

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requires only minimal amounts of air and

ventilation has usually been accomplished

by providing a gap or opening in the oven

door to let air enter and flow upwardly

through the oven and out a vent located

at the top of the oven by natural

convection.

In a microwave oven, microwave

radiation provides the energy that cooks

the food. The microwave radiation is

absorbed by the food and cooks it from

the inside rather than the outside, as is

the case in conventional thermal cooking.

The radiation is supplied by a microwave

feed unit. The unit includes a magnetron

which generates the radiation and an

antenna that transmits it to the oven.

The radiation travels from the magnetron

to the antennna through a hollow metal

tube called a waveguide. The magnetron

has fins projecting from its housing’ to

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help dissipate heat. A fan or blower is

provided to move air through the

magnetron fins and the power supply to

cool them from the substantial amount of

heat generated in tne process.

Microwave cooking produces more

moisture because of its speed and

process. This moisture must be removed

from the oven, and in the conventional

countertop or separate microwave oven,

the moisture is removed by a blower or

fan which is located in the microwave

component area and blows the vapors and

gases out a vent in the top of the oven.

Microwave cooking also requires maximum

sealing of the oven cavity to prevent

escape of microwave energy through gaps

in the oven structure.

The third feature, the self-cleaning

feature, is an additional complicating

factor. Self-cleaning is done without

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oxygen, but some air is needed to flush

out the smoke and volatile products of

the pyrolytic process. This smoke will

flow out any available opening including

backwards through the opening in the

waveguide. If excess air enters, with

the extremely high temperature and

possibly volatile gases, especially if

the oven is very dirty, combustion may

occur in the oven cavity. This

combustion is known as autoignition, and

produces sudden pressure within the oven

which also seeks release through any

opening, including the waveguide. The

products of this combustion could enter

the waveguide and the microwave unit

components, If the autoignition were

fueled by even greater amounts of excess

air, fire inside the cavity could result

Or even an explosion sufficient to force

open the oven door. This case involves

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the combination of these cooking cleaning

modes. Self-cleaning called for’ the

microwave feed system to be sealed to

prevent possible fouling. Sealing the

system meant inadequate ventilation for

microwave cooking. The other possibility

was to provide forced air for moisture-

free microwave cooking, and either giving

up self-cleaning or risking fouling by

autoignition. This patent claims to have

resolved this dilemma.

The Prior Art and Its Teachings

The relevant art encompassed the

fields of microwave ovens, combination

microwave and thermal ovens, and

pyrolytic self-cleaning ovens.

Self-cleaning, common cavity ovens

were first marketed by General Electric

in the mid-1960's. Its first model was

called the "Versatronic." That model was

followed by the "Superstove” model which

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came on the market in the mid-1970's. In

the early 1970's, Litton Industries also

introduced a self-cleaning common cavity

oven. Both of these ovens sealed off the

microwave system to prevent fouling and,

therefore, did not have forced air.

Steam and moisture accumulated in the

cavity during microwave cooking,

presenting discomfort and perhaps a mild

danger to the user when the oven door was

opened after cooking was completed,

especially after cooking a high-moisture

product. Both General fFlectric and

Litton felt this discomfort or danger was

sufficiently worrisome to require a

warning to their customers in their

product manuals.

Other teachings in microwave cooking

included the Boehm patent, No. 3,440,386,

which taught that convected air through

gaps in the door was not sufficient to

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remove steam and adequately ventilate the

oven. Boehm taught that the microwave

mode could be ventilated properly by

forcing air into the cavity with fans.

This required that the microwave feed

system be open and, therefore, subject to

fouling. Boehm also taught that the

magnetron, the tube which generates the

microwave, becomes hot during microwave

cooking and must be cooled. Cooling is

accomplished by using a blower directing

air over the magnetron. This same air

can be directed into the oven cavity to

ventilate it. This same arrangement is

present in French, (sic) Patent

No. 1,249,130. Both the Boehm and French

patents required that the end of the

microwave feed system be open to the oven

cavity and, therefore, vulnerable to

contamination by backflow. And both

patents point out that contamination is

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undesirable because it adversely affects

the oven's' performance. Neither Boehm

nor French included the pyrolytic self-

cleaning feature.

Pyrolytic self-cleaning creates

smoke and other by-products, some of

which can be carbon. The teachings in

this area introduced air to the oven

cavity by convection during sel f-

cleaning. Hurko, Patent No. 3,121,158

pointed out the undesirability of the

presence of carbon especially when

autoignition occurs. While autoignition

does not always occur, Hurko taught the

criticality of limiting the amount of air

allowed to enter the cavity. The Lewis

patent, Patent No. 3,348,023, created a

gap in the door gasket to provide an air

inlet to ventilate the cavity. It was

also known from Long, Patent

No. 2,961,520, that microwave energy

B13

could be supplied to the microwave oven

cavity from the bottom of the cavity.

The prior art also included

variations on the foregoing which will

not be set out here. Generally, the

prior art can be summarized as follows:

(1) Microwave ovens utilized forced

air from a blower which cooled the

magnetron and flowed into the oven cavity

to ventilate it.

(2) Pyrolytic self-cleaning allowed

naturally convected air to enter the oven

capacity during self-cleaning through a

gap or some other aperture, usually in

the door structure.

(3) Microwave energy was supplied

from below the oven cavity.

(4) To prevent contamination of the

microwave feed system by autoignition and

backflow, the end of the system was

sealed.

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The prior art did not teach any

combination of microwave and conventional |

ovens which utilized forced air through

the microwave system and had a pyrolytic

self-cleaning feature. The prior art

said the microwave energy source would be

contaminated if placed below the oven

cavity. Because sealing the microwave

feed system to prevent contamination

meant the cavity was not adequately

ventilated, steaming and moisture was a

marketing problem in the _ self-cleaning

common cavity oven.

The problem was of different

proportions to the concerned parties. To

the home economist who was concerned with

the marketing of the product, the problem

of steaming was a critical one which

called for customer warnings and

engineering improvement. To the

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engineer, the problem was less critical,

if indeed, it existed at all.

A person of ordinary skill in this

field was aware of the efforts to develop

an effective, safe and commercially

acceptable common cavity oven with

pryolytic self-cleaning. Raytheon = and

Roper both employed people skilled in the

art of designing ovens for cooking food

in both microwave and thermal modes.

Their staffs were comprised of graduate

engineers with substantial background and

experience in the design, development and

marketing of ovens. Those people were

all knowledgeable of the prior art, were

aware of the incompatibilities of the

modes, and were continually engaged in

research and development of self-cleaning

common cavity ovens.

B16

Development of the Roper Oven

Roper is a designer and manufacturer

of ovens. In 1973, at the urging of

Sears Roebuck and Company, it began to

work on a common cavity, self-cleaning

oven. Roper was seeking a product which

would be competitive with, if not better

than, the General Electric common cavity

ovens. At that time, General Electric

had the major share of the market.

Sumner H. Torrey, was assigned to

the project. Research was conducted at

Roper's plant in Kankakee, Illinois, and

at its appliance research center at

Purdue University in Lafayette, Indiana,

called the Purdue Research Center.

Roper conducted tests of all

available ovens then on the market and

noted the deficiencies in performance,

such as energy loss, uneven cooking, and

steaming. Torrey had a staff of 3 or 4

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engineers who worked on the project with

him. One of those engineers was Buddy J.

Austin. Austin worked closely with-

Torrey and worked especially on_ the

development of the antennna and

circuitry. In February, 1976, Austin was

a coO-applicant on a patent application

for the Roper common cavity antenna,

No. 4,028,021.

In addition to its own internal

research, Roper contracted with Beverly

D. Kumpfer, of American Microwave, Inc.

as a consultant. Kumpfer made many

helpful suggestions to Torrey and

delivered a prototype oven to Roper to

continue the design research. Their

combined efforts were directed to a

bottom location, as well as_ improved

cavity ventilation. They were also

concerned with microwave leakage and

worked on a better door seal as well as a

ee

B18

microwave "choke," a construction of the

door which further inhibited leakage.

Chokes were utilized on some microwave

ovens examined by Roper. Also, some

models used a small gap in the door seal

to admit air for ventilation purposes.

Eventually, Roper settled on a continuous

door gasket without the gap that allowed

convective air into the cavity. This

design meant the microwave feed system

was the only intended entry through which

air could enter the oven cavity.

Torrey proceeded to design a further

prototype, using a Roper self-cleaning

oven. With Kumpfer's assistance, he

located the microwave system in the

bottom, and used a blower to cool the

Magnetron and force air into the cavity

during the microwave mode. He tested the

model in the self-cleaning mode, using

6 ounces of butter, and, to his surprise,

B19

he found no_- problems; that is, he

noticed no visible contamination of the

microwave feed sveten and concluded that

there was no backflow. There was also

adequate ventilation. Torrey believed he

had now reconciled all the features.

Air to remove microwave cooking

moisture was provided by forcing air

through the microwave system into the

cavity. The door seal was gap-free to

prevent the microwave energy escape which

produced less efficient and uneven

cooking results. By turning off the

Olower and allowing naturally convected

air to enter through the same microwave

System entry now located on the bottom of

the structure, the venting requirements

of thermal cooking were satisfied. At

the same time, this air flow system

appeared to prevent the backflow into the

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microwave feed system which would result

in fouling the system.

In addition to reconciling these two

modes, Torrey added the third mode,

pyrolytic self-cleaning. This mode

required the control of air intake to

prevent autoignition. Torrey claimed the

entry of air was limited by the openings

in the waveguide and the naturally

convected air allowed to enter and flow

through the oven_ provided the air

required for thermal cooking, prohibited

backflow, and protected against

autoignition. Torrey claimed the flow of

air for microwave cooking was within the

range of 3 to 8 c.f.m. when the blower

was on and the flow of convected air for

baking and self-cleaning was within the

range of 0.5 to 2 c.f.m.

In sum, Roper claimed this invention

did not require the choice of pyrolytic

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self-cleaning at the expense of forced

ventilation through the microwave feed

system. This invention provided forced

ventilation for microwave cooking and a

pyrolytic common cavity oven which could

be properly and efficiently ventilated if

the microwave feed system was located

below the oven cavity and an air path was

provided for naturally convected air up

into the cavity for sufficient venting

during thermal cooking and self-cleaning.

In January, 1976, the Roper oven was

demonstrated for the first time at a

trade show in Dallas, Texas. The

industry was now aware that Roper had

entered the field with its own product.

In February, 1976, Roper applied for a

patent for its “Air Flow System For

Common Cavity Oven."

In the summer of 1976, Roper's oven

was marketed nationally under its own

en enti

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name and by Sears, Roebuck & Company

under its Kenmore label. Since then,

about 24,000 of these ovens have been

sold, 70% under the Kenmore label. There

have been no complaints with the

performance of the Roper oven insofar as

steaming Or contamination of the

microwave feed system is concerned. The

Roper self-cleaning, common cavity oven

was and is a successful product.

Development of the Raytheon Oven

Raytheon began to work on a common

cavity oven in early 1975, later than

Roper. Its ovens were designed by its

staffs located at Caloric and Amana, two

of its subsidiaries, as well as at its

own New Product Center in Waltham,

Massachusetts. Raytheon was also seeking

a product to be competitive with General

Electric's oven.

ee aT ee

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Its initial prototype, developed in

December, 1975, had a fan in the rear

wall which also acted as a microwave

antenna. The microwave power supply and

magnetron were sealed below the oven and

a waveguide was run up the back of the

oven to the fan antenna. The microwave

pattern provided by this system proved

unsatisfactory for cooking. Raytheon

also insisted that it maintain a high

power wattage of 600° to 700° F. (sic) in

its microwave cooking mode. There was

also a serious steaming problem during

the microwave cooking mode which

continued to February, 1976, when the

prototype was sent to Caloric and Amana

for further development.

In late January, 1976, Buddy J.

Austin, one of the engineers on Torrey's

staff at Roper, left Roper and went to

work for Raytheon at its Amana

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subsidiary. Thereafter, he worked with

other Raytheon engineers on the

development of Raytheon's self-cleaning

common cavity oven. Austin was able to

identify most of the problems in

Raytheon's development program. He had

not only worked closely with Torrey, he

had also worked on the microwave power

supply and its construction, co-signing

the aforementioned patent application.

There followed several other developments

at Raytheon, with which Austin had some

familiarity. 3/ In April, 1976, Raytheon

began to force air through its microwave

feed system and the steaming problem was

solved in microwave cooking. Then, also

3. There is no suggestion that Austin

acted improperly or unethically in moving

to Raytheon's employ and assisting in the

development of Raytheon's oven. Rather,

it goes to show familiarity with the

Roper-Torrey developments and, if

credited, is evidence of copying.

B25

in April, 1976, the Raytheon prototype

oven was tipped over on its back during

an experiment, thereby placing the

microwave antenna in the bottom of the

oven. This resulted in a satisfactory

microwave pattern and the cooking results

were satisfactory. Raytheon's oven was

now ready for marketing.

Raytheon's oven had started with a

microwave feed system running up the rear

of the oven, and with no forced air into

the oven cavity through the microwave

mode. After an acditional adjustment

which simply increased the amount of air

needed to vent the oven, Raytheon now had

the same arrangement as contained in the

Roper oven. The Raytheon oven now had a

bottom microwave feed system, forced air

through the microwave system to vent the

oven, just as in the Roper oven.

Similarly, there was no steaming problem

B26

and there was no fouling. The Raytheon

oven was both structurally and

operationally similar to the Roper oven.

The differences remaining did not

materially affect the operation of the

oven. The air inlet for Raytheon's oven

was in the bottom front; while the Roper

air inlet was in the bottom rear. The

Raytheon oven door seal retained the

"gap," while Roper's oven had a

continuous door seal. This difference is

not significant. Most of the air for the

ventilation comes from the microwave

system, only slight amounts being

admitted through the Raytheon gap. This

air does not affect the operation of the

Raytheon oven in any material way. Even

the Roper door seal is not a perfect seal

and admits some air. A third difference

is that Raytheon has more than one

constriction in its air passage system.

B27

However, it is the concept that limiting

air through the system that matters. The

Roper claims do not teach only one

constriction. Similarly, Raytheon's

insistence on its high power wattage of

600° - 700° F. (sic) would not materially

affect the operation of the system. In

every material respect, the Raytheon oven

is a copy of the Roper oven.

Proceedings in the Patent Office

The application for patent was filed

on February 26, 1976. Roper was the

assignee. The references cited referred

to microwave ovens alone (Long =

No. 2,860,026; Long - No. 2,961,520;

Fukuda - No. 3,470,942; and Fitzmayer -

No. 3,626,135), conventional thermal

ovens (Eff ~ No. 3,367,316), common

cavity ovens without self-cleaning

(Fitzmayer - No. 3,172,987), or self-

Cleaning with microwave (Maitenaz -

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No. 3,962,561). Roper also cited _ the

Boehm and French patents. There was no

mention of the General Electric or Litton

common cavity, self-cleaning ovens.

A test of the Roper oven was

conducted by Underwriters Laboratories on

July 2, 1976. Underwriters Laboratories

is an independent, non-profit

Organization testing for public safety.

The test consisted of placing 8 ounces of

beef suet into the oven and operating it

for eat? chemo. There was smoke

evolution from the microwave assembly

openings. Vapors within the microwave

asembly ignited once with a flash, but

there wasS no continuous’ burning. The

results of this test were not provided to

the Patent Office.

In summary, it was the object of the

invention to provide a common cavity oven

for every cooking mode as well as

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expelling decomposition products during

the self-cleaning mode. It was a further

object of the invention to provide a

ventilation system which resisted

autoignition or explosion, and backflow,

and, therefore, contamination of the

power supply housing and waveguide.

coesee 6k, hUW}lUC« SG lC RE hCULlC ie CtO

prevent autoiginition. Claims l, 3 and 4

claim to prevent backflow. Claim 6

claims to preclude the escape of

microwave energy.

The claims were allowed by _ the

patent exminer without change or comment.

The patent in suit was issued on June 7,

1977.

B30

Miscellaneous Findings

Both parties conducted extensive

tests in preparation for this case. 4/

Torrey compared and tested the Caloric

oven against the Roper oven. His tests

showed there was no smoke during

autoignition and, therefore, no backflow

in both ovens. Roper also obtained three

Roper waveguides which had been in use in

customers' homes for over six years.

Those waveguides were inspected and

showed no visible fouling or

contamination.

4. The test will not be described here,

but the Roper tests and standards are

recorded in Exhibits #73, #74 and #75.

The Raytheon tests are recorded _ in

Exhibits #271, #272 and #273. As can

been seen from those exhibits, many of

the tests were similar, although the

observations were not.

B31

Another Roper trial expert, Norman

Kirschke, inspected both the Roper

waveguides as well as some Caloric

waveguides and concluded neither were

fouled or contaminated. While all

backflow may not be entirely eliminated,

Roper says the practical effect of these

tests and and the proof of its patent's

validity, is that there is no significant

backflow and there is no fouling or

contamination.

Raytheon, in turn, submitted the

Roper oven to various tests arranged and

observed by Bohdan Hurko, a_ long-time

employee of General Electric and,

Raytheon's expert witness at ttrial.

Hurko was the inventor of the Hurko

patent, U.S. Patent No. 3,121,158, and

has over 50 patents issued. He has had

extensive experience with self-cleaning

ovens.

iia

B32

The tests arranged by Hurko included

a duplication of the single Torrey test

as well as other tests generally used by

Underwriters Laboratories. While these

tests were not typical of normal use,

they were all within the capabilities of

the oven and, therefore, were a fair test

for the presence of backflow and

waveguide fouling. They are also tests

required by Underwriters Laboratories

before they certify the product for home

use. Some of the tests were also run on

the Caloric oven which is the subject of

the infringement charge by Roper. In

every test of the Roper oven, backflow in

the form of smoke was clearly observed.

In certain of the tests, the smoke was

very noticeable. Where smoke was not

readily discernible, evidence of backflow

was provided by the movement of tissue

paper strips placed over the waveguide

B33

opening. The temperature charts

supported the instances of autoignition.

An examination of the waveguide after

these tests revealed no deposits, and,

therefore, no fouling.

Hurko maintained that even if smoke

were not observed, there was- still

backflow in small amounts in the system

which was dispersed inside the waveguide.

Moreover, since the pressure of

autoignition ranged up to 10 pounds

p.S.i. and the convected air was limited

to 0.5 to 2 c.f.m., Hurko stated backflow

can occur at any time when the

autoignition pressure is more than one

pound p.s.i. In any event, Burko says,

despite the presence of backflow, it is

Simply not a problem.

Further, another Raytheon expert,

Bernard Weiss, also inspected the Roper

oven. It was his opinion that the Roper

B34

oven does not prevent backflow into the

waveguide and fouling. However, while

this backflow might absorb energy, it has

no effect on the operation and it burned

off when the microwave mode is’ used.

Weiss also inspected the three Roper

waveguides and claimed he detected a film

or light layer of film on them, but

attached no significance to it because

backflow presented no problems. i206

not surprising that the waveguide showed

no visible fouling. First, autoignition

occurs rarely, about 6 times a year, and

secondly, it is accompanied by short

puffs of smoke, lasting only a second or

two.

Thus, the experts on both sides are

in sharp conflict. Raytheon's experts

claim there is backflow and still no

fouling in both Caloric and Roper ovens.

Roper's experts claim there is no

B35

backflow in both, Roper and Caloric

ovens) and, therefore, there is no

fouling.

I find that the Roper oven does not

prevent backflow of air into the

waveguide regardless of the temperature

achieved within the oven cavity. It is

clear to me that the gentle pressure of

natural convection cannot and does not

resist the sudden and sometime intense

pressure of occasional autoignition. The

essence of this invention is the

prevention of backflow. It does not do

that. Finally, it is also clear to me

that even with the backflow, there is no

B36

discernible or significant fouling of the

waveguide. 5/

5. The parties in this case engaged in

protracted and expensive pre-trial

discovery, assembled 320 exhibits,

including numerous video tapes, took

numerous depositions, engaged several

expert witnesses on each side, and

conducted an 8 day jury-waived trial with

3-4 lawyers in attendance daily for each

party. Yet, the most convincing evidence

was the test, which both parties

conducted over 2 years after the suit was

filed and at approximately the same time

in October to December, 1982. Those

tests persuaded me that the Roper oven

did not prevent backflow, and that even

if it did not prevent backflow, the

waveguide was still not fouled. Those

two claims - prevention 6f backflow and,

therefore, no waveguide fouling - are the

very essence of Roper's patent.

Perhaps more pre-trial discourse between

the parties, with independently conducted

tests, would have resolved the issues, or

at least, narrowed the issues to the

point where the expense and effort of all

of the participants would have _ been

minimized.

B37

II. CONCLUSIONS OF LAW

The two issues in this case are

whether the patent in suit is valid and

whether it was infringed. 6/ Be fore

turning to the issues, several

preliminary conclusions are appropriate.

The invention date is February 26,

1976, the date on which the application

was filed. Accordingly, the prior art

must be viewed from the point in time

just prior to that date. 35 U.S.C. §103;

Monroe Auto Equipment Co. v. Heckethorn

Mfg. & Supply Co., 332 F.2d 406, 412

(6th Cir.), cert. denied, 379 U.S. 888

(1964).

6. Many issues in patent litigation

involve mixed questions of fact and law.

To the extent the following incorporates

factual material, it should be regarded

as a continuation of the findings set

forth above.

B38

Once granted a patent is presumed

valid. The presumption may be rebutted,

and the party challenging the patent's

validity bears the burden of proving that

patent is invalid. 35 U.S.C. §282;

Shanklin Corp. v. Springfield Photo Mount

Co., 521 F.2d 609 (lst Cir. 1975).

Validity

Raytheon challenges the validity of

“the patent in suit on three grounds:

(1) obviousness, 35 U.S.C. §103;

(2) lacking utility, 35 U.S.C. §101; and

(3) failing to contain an enabling

disclosure and failing to point out and

distinctly claim the subject matter of

the invention, 35 U.S.C. §112.

Patentability is dependent on three

essential elements, namely, novelty,

utility and non-obviousness, articulated

and defined in 35 U.S.C. §§101, 102 and

103. These elements constitute separate

B39

tests of patentability, each of which

must be met in order for a patent to be

valid. Graham v. John Deere Co., 383

U.S. 1 (1966); United States v. Adams,

383 U.S. 39, 48 (1966). Accordingly,

even though the test of non-obviousness

under §103 may be met, the patent still

may not issue if the product does not

Satisfy the additional tests of utility

and novelty.

(1) Obviousness

35 U.S.C. §103 provides that an

invention is not patentable 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. The question

of obviousness is to be determined

B40

against the background of several basic

factual inquiries:

Under 6§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.

Graham v. John Deere Co., 383 U.S. at 17.

Applying this three-pronged test to

the facts of this case, I conclude that

the prior art either sealed the end of

the waveguide toc prevent backflow or it

eliminated the self-cleaning mode from

the oven. The General Electric and the

Litton ovens that were on the market did

not have forced air venting through the

waveguide during the microwave cooking

mode, and as a result those ovens had a

moisture problem during microwave

cooking. Rather, those ovens sealed the

oven cavity end of their waveguides to

B41

prevent the backflow of vapors from the

oven cavity.

More specifically, the Boehm patent

forced air through the waveguide, but did

not self-clean. The Long patent dealt

with supplying microwave energy from the

bottom, but did not self-clean. The Eff

patent and the Maitenaz patent dealt only

with limiting air in self-cleaning ovens.

The Fitzmayer patent dealt with a common

cavity oven, but sealed off the waveguide

to prevent’ fouling. All of these

references were a fair summary of the

prior art at the time of the Roper

application. All of these references

were known by those persons of ordinary

skill in the art. They were unable to

devise a common cavity oven with proper

ventilation with the pyrolytic’ self-

cleaning feature. The fact that they

were unable to do so is evidence of non-

a

B42

obviousness. Timely Products Corp. v.

Arrow (sic), 523 F.2d 288, 294 (2d Cir.

1975). The fact that Torrey, the

inventor, was not able to explain his

invention and was surprised by the

results does not affect the inventiveness

of his product. Reese v. Elhart Welding

& Boiler Works, 447 F.2d 517, 525 (7th

Cir. 1971). Moreover, unexpected results

can evidence non-obviousness.

International Telephone & Telegraph Corp.

v. Raychem Corp., 538 F.2d 453, 457 (lst

Cir. 1976).

The Roper effort differed from the

prior art in three respects. It put the

waveguide on the bottom. It used part of

the cooling air to ventilate the cavity

with a blower during microwave cooking.

And, when not using forced ventilation,

1.@., during the self-cleaning and

thermal cooking modes, naturally

B43

convected air was drawn through the

system into the cavity in just the right

amount to resist backflow.

None of the prior art taught a

combination of these features.

The burden of proof is on Raytheon

to show obviousness by a standard of

clear and convincing evidence. E.I.

DuPont de Nemours v. Berkly & Co., Inc.,

620 F.2d 1247, 1261 (8th Cir. 1980).

Raytheon has not met that burden. The

invention is not obvious under 35 U.S.C.

§103.

(2) Lack of Utility

Raytheon claims7~ the patent is

invalid because it fails to accomplish

two stated objectives. Raytheon says the

patent is ineffective because it fails to

eliminate the possibility of explosion

during the self-cleaning mode and it

fails to eliminate backflow into the

B44

waveguide. This entire claim is based on

various tests run by Raytheon which show

that the Roper oven does not prevent

backflow and even in those tests which

showed backflow, there was still no

waveguide fouling.

Roper appears to agree that the

prevention of backflow and fouling is the

key to the invention and submitted tests

to show the patent was effective to

accomplish those objectives. Roper also

secured waveguides which had been in use

for the 6 years and none showed any

contamination. There was evidence that

there have never been any complaints of

explosion or fouling in the over six

years that the Roper oven has been on the

market.

The question, then, is whether the

system described in the patent is

effective to accomplish the objectives

B45

claimed by it. On the record before me,

I must conclude that it is not. The

tests run by Raytheon show that the Roper

oven does not prevent backflow, as it

claims it does. At the same time, even

with the backflow, there is no waveguide

fouling. Hurko testified unequivocably

that backflow is not a problem even

though it exists in the Roper oven. His

conclusions are fully supported by his

tests which were conducted according to

Underwriters Laboratories’ standards.

According to Roper, there is no

waveguide fouling because there is no

backflow. The evidence, which I accept,

is that there is backflow, but there is

also no waveguide fouling. The

conclusion is inescapable, in my

judgment. The Roper oven does not

substantially accomplish the results

claimed for it in the specifications.

B46

The patent claims a result which it

cannot obtain. 35 U.S.C. §101 states:

Whoever invents or

discovers any new and

useful process

machine, manufacture,

Or composition of

matter, or any new

and useful

improvement thereof,

may obtain a patent

therefor....(emphasis

supplied)

The term “useful" means that the

invention must attain the result claimed

by the inventor in his patent. It must

work and accomplish its objectives.

O'Reilly v. Morse, 56 U.S. 62 (1853);

H.C. Baxter Bros. v. Great Atlantic &

Pacific Tea Company, 266 F. Supp. 601

(D.ME 1964).

Raytheon has sustained its burden of

showing lack of utility by clear and

convincing evidence. The patent is not

useful and is, therefore, invalid. 35

U.S.C. §101.

B47

(3) The Failure to Describe and

Claim the Invention

35 U.S.C. §112 requires that a

patent contain a description of how to

use the invention to achieve the objects

of the invention and the invention must

perform the function claimed. General

Electric Co. v. Wabash Appliance Corp.,

304 U.S. 764 (1978). When an incorrect

or questionable theory of operation is

included in a patent claim, that claim is

invalid. 35 U.S.C. §112; Graver Tank &

Manufacturing Co. v. Linde Air Products

Co., 336 U.S. 271 (1949).

Raytheon claims that the Roper oven

fails to achieve the objects of the

invention, namely, elimination of

autoignition or backflow. The invention

fails, Raytheon says, to describe a

device that achieves the uni-directional

air flow to eliminate backflow. Raytheon

B48

bases this challenge on its tests that

show that there is backflow and

autoignition. This is largely a

restatement of the challenge to the

utility of the Roper oven and need not be

re-analyzed here. Accordingly, the

patent does not disclose the means of

attaining the objects of the invention.

O'Reilly v. Morse supra, at 119;

Mitchell v. Tilghman, 86 U.S. 287, 392

(1873). Raytheon has_~ sustained its

burden of showing the patent is invalid

under 35 U.S.C. §112.

Infringement

Having concluded that the patent is

invalid for lack of utility and

overclaiming, a ruling on infringement is

not necessary. See 7 Deller's Walker on

Patents, §588 at 425 (an invalid patent

cannot be infringed). However, so that

B49

this case can be resolved finally, a

ruling on infringement is desirable.

United Shoe Machinery Corporation v.

Industrial Shoe Machinery Corporation,

335 F.2d 577, 578 (lst Cir. 1964), cert.

denied, 329 U.S. 990, reh. denied, 380

U.S. 927 (1965).

Infringement must be proved by a

preponderance of the evidence. General

Electric Co. v. United States, 572 F.2d

745 (ce. Cl. 1978). To prove

infringement, Roper must show that every

element set forth in at least one claim

be present in Raytheon's oven and that

the Raytheon oven must do substantially

the same work in substantially the same

device. Westinghouse Air Brake Co. v.

Boyden Power Brake Co., 170 U.S. 537, 538

(1898); Graver Tank & Manufacturing Co.

v. Linde Air Products Co., 339 U.S. 605

(1950).

er

B50

Raytheon claims its ovens do not

infringe because its oven fails to

accomplish the same result in the same

way as the claimed device. Specifically,

Raytheon's door contains a gap through

which air flow is designed to enter.

Roper argues that the gap in Raytheon's

door is so small as to be of

insignificant effect on the entry of air.

Roper also claims that no commercial oven

door completely seals against the passage

of air.

Raytheon also says its oven does not

infringe for two additional reasons. Its

oven does not prevent backflow with the

waveguide during autoignition and that

its oven has more than one constriction

of the airflow passageway comprising the

airflow system.

This issue boils down to- the

presence of the “usual gap” in Raytheon's

B51

door and the presence of some backflow.

If the patent were valid, it would be so

because there was sufficient naturally

convected air flow through the waveguide

to prevent significant backflow.

First, the evidence is clear that

the "usual gap" in the Raytheon door does

not materially affect the entry of air.

Most of the air admitted and which is

naturally convected through the cavity

comes through the waveguide. The "usual

gap," therefore, is not a sufficient

alteration. St. Regis Paper Company v.

Winchester Carton Corporation, 410

F.Supp. 1304, 1308-09 (D. Mass. 1975)

(infringement charge cannot be avoided

where a competitior, by substitution or

addition, accepts a somewhat less

desirable result while acting within the

concept of the invention).

B52

A finding of infringement requires

that there be an identity of structure,

of mode of operation and of results

accomplished between the claimed

invention and the accused product.

Graver Tank & Manufacturing Co. v. Linde

Air Products Co., supra, 339 U.S. at 608-

609. A change in form or a change in the

position of one component is not

sufficient to avoid infringement. The

functioning of the air flow system taught

in the Torrey claims is embraced by the

Raytheon oven, and even though it may

vary somewhat, it does not avoid

infringement. The substance of Torrey's

claim is adopted by the Raytheon oven and

infringement can still be had under the

doctrine of equivalents. Graver Tank &

Manufacturing Co. v. Linde Air Products

Co., Supra, 339 U.S. at 609. See

B53

generally 7 Deller's Walker on Patents

§546.

In sum, my review of this record

persuades me that if the Roper patent

were valid, Raytheon's oven would

infringe. It is operationally similar.

It is structurally similar. The evidence

shows that the Raytheon oven development

began with a toatally different structure

and eventually ended up with an oven

which in every essential respect, is a

copy of the Roper oven, as shown in the

diagram on page 29.

Attorney's Fees

35 u.8.C. §285 provides that

attorneys' fees may be awarded to the

prevailing party in "exceptional cases.”

I do not find this to be an exceptional

case. I do not find that Roper has acted

in bad faith or that attorneys' fees are

a

B54

appropriate oor necessary to prevent

injustice. See generally 8 Deller's

Walker on Patents, §760. 7/

Conclusion

The patent in suit is’ invalid

because of lack of utility and failure to

particularly claim the invention. 35

9.8,C.- @8h0s+ teen The plaintiff is

entitled to a declaratory judgment that

United States Patent No. 4,028,520 is

invalid and unforceable.

V6 I am aware of my earlier note that

more of a pre-trial effort by the parties

in testing this oven may have persuaded

them that a trial and the accompanying

expense were not warranted. However, I

cannot attribute the responsibility for

that to either side.

B55

SO ORDERED.

/s/ A. David Mazzone

United States District Judge

B56

ee

at ts)

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ay

:

WAVE GIDE

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MAGNETon 6 I aw

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RAYTHEON S

1975 PRotloTYPE

B57

€

St @ CONDUCTOR

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MAGNET

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ROPER'S OVEN

Al@

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B58

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ali |

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INLET 2 ey oth

RaYTHEon's OVEN

B59

Copy of '520 patent appended to district

court opinion, is omitted; see App. Al.

B60

United States Court of Appeals

for the Federal Circuit

RAYTHEON COMPANY, Appeal

Nos.

83-851

Appellee/Cross Appellant, 83-853

)

)

)

)

)

Ve )-

)

ROPER CORPORATION, )

)

)

Appellant/Cross Appellee.

DECIDED: December 30, 1983

Before MARKEY, Chief Judge, DAVIS,

Circuit Judge, and KELLAM, Senior

District Judge. */

MARKEY, Chief Judge.

Roper Corporation (Roper )

appeals from a judgment of the United

States District Court for the District of

*/ The Honorable Richard B. Kellam,

Senior District Judge, Eastern District

of Virgina, sitting by designation.

B61

Massachusetts declaring U.S. Patent

No. 4,028,520 ('520 patent), issued to

Sumner H. Torrey and assigned to Roper,

invalid for lack of utility and because

its disclosure is non-enabling. Raytheon

Company (Raytheon) cross-appeals a

holding of nonobviousness, a finding of

infringement, and a refusal to award

attorney fees. We reverse in part,

affirm in part, and remand.

BACKGROUND

A. Prior Technology

The Roper patent is directed to

a "common cavity" oven capable of

conventional thermal cooking, microwave

cooking, and pyrolytic self-cleaning

(i.e., heating the walls to about 900°F.

to break down soil baked thereon). Those

three "modes" of operation (thermal

B62

cooking, mircrowave cooking, and

self-cleaning) are not totally

compatible.

At the time of the Torrey

invention, cooking in a thermal oven

required minimal amounts of air.

Ventilation of thermal oven cavities was

accomplished through an opening in the

oven door, air flowing by natural

convection from the opening upwardly

through the cavity and escaping via a

vent at the top of the cavity.

Microwave cooking involved

radiation supplied by a microwave feed

unit. The feed unit included a magnetron

generating radiation and an_- antenna

transmitting the radiation to the oven

cavity. The radiation travelled from the

magnetron to the antenna through a hollow

metal. tube called a waveguide. The

magnetron had projecting fins to help

B63

dissipate heat. A fan or blower moved

cooling air through the magnetron fins

and power supply.

Microwave cooking produced more

moisture than thermal cooking. To remove

mositure vapors from the cavity of a

conventional microwave oven, a blower or

fan was employed to blow them out a vent

at the cavity top. Microwave cooking

also required maximum sealing of the

cavity to prevent escape of microwave

energy. Thus, the opening in the oven

door of a thermal oven was not desirable

in a microwave oven.

Inclusion of a_e self-cleaning

mode further complicated the ventilation

of an oven operable in the thermal and

microwave modes. Though a limited air

supply was needed to flush smoke and

volatile products of self-cleaning,

excess air caused combustion of those

EG a See

B64

products. That combustion, known as

"autoignition", produced sudden pressure

that sought release through any opening,

including "backflow" through the

waveguide. Although autoignition

occurred only occasionally, backflow was

thought to contaminate ("foul") the

waveguide with burnt food _ particles

cleaned from the cavity walls. Moreover,

if autoignition were fueled by even

greater amounts of excess air, as when

forced air removed moisture produced in

the microwave mode, fire or explosion

could result.

Self-cleaning common cavity

ovens were first marketed in the

mid-1960's, but by 1973, the General

Electric and Litton ovens on the market

Still had ventilation problems. To meet

those problems, the ends of the

waveguides in those ovens were sealed to

B65

prevent fouling of the microwave feed

unit by autoignition and backflow. As a

result, moisture and steam developed in

the microwave mode could not be removed

by forcing air to the cavity through the

waveguide. General Electric and Litton

regarded this problem as serious enough

to require customer warnings in their

product manuals.

B. The Torrey Invention

In 1973, Roper began work on a

self-cleaning common cavity oven. Under

Torrey's Supervision, Roper developed an

oven with proper ventilation during the

microwave, thermal, and self-cleaning

modes, and which, to Torrey's surprise,

had no fouling problems.

In the summer of 1976, Roper

marketed its oven nationally under its

Own name and through Sears, Roebuck &

B66

Company under the Kenmore label. About

24,000 have been sold, with no complaints

respecting contamination of the microwave

feed system. The Roper oven was and is a

successful product.

Torrey's February 26, 1976

application for patent issued without

amendment as the '520 patent on June 7,

1977. The patented invention is depicted

by this simplified drawing, shown

alongside a simplified drawing of the

accused Raytheon oven:

B67

° Top

Vent

Coor7

L

Conductor \

/

Waveguide Blower &

ROPER'S OVEN

heal aaell l|

ost — ’ a Hol low

° | Condéuctér

inlet te

—— .

teri

’ >

Blower & Waveguide

Magnetron

RAYTHEON'S OVEN

B69

In the Torrey invention, the

microwave entry is located at the bottom

of the oven cavity. Air to remove

microwave cooking moisture is forced into

the cavity through the microwave system.

A pattern of small passages is provided

in the wall of the waveguide so that a

portion of the air from the blower, which

cools the magnetron, flows through the

waveguide and hollow conductor. When the

blower is on, the air path is from the

waveguide, through the cavity and venting

through the top. When the blower is off,

during thermal cooking and self-cleaning,

convected air ventilates the cavity via

the same path. The small passages are

sufficiently screened to avoid leakage of

radiation. The patent specification

discloses a forced air flow of three to

eight cubic feet per minute (cfm) and a

convection flow of 0.5 to 2.0 cfm.

B70

There are five independent and

two dependent claims in the '520 patent.

Claim 5, on which claims 6 and 7 depend,

is representative:

5. In a combined

microwave-thermal range, the

combination comprising a frame

having walls defining a

rectangular oven cavity and a

lower space of conforming

shape, a door enclosing and

sealing the front surface of

the cavity against passage of

air and microwave energy, a

thermal element in the cavity,

control means for operation of

the thermal element within a

normal temperature range for

food preparation and at a high

temperature level for a

self-cleaning mode, the walls

of the cavity being insulated,

the bottom wall of the cavity

having an inlet opening, means

defining a cavity air vent at

the top of the cavity, a

microwave power supply having a

housing ivrcluding a magnetron

and blower, the blower having a

blower inlet and arranged to

draw in cooling air for

discharge under slight pressure

to the magnetron, a waveguide

having an inlet connected to

the magnetron and_- exending

under the bottom wall of the

cavity to terminate at_= an

outlet, means for connecting

All

B71

the outlet of the waveguide to

the inlet opening of the cavity

for conduction of microwave

energy into the cavity, the

waveguide being open to passage

of cooling air from the

magnetron so at least a portion

of the pressurized air from the

blower and magnetron’ passes

through the waveguide and into

the cavity for ventilating the

cavity when the magnetron and

blower are turned = on, the

blower inlet being located at a

level below the bottom wall of

the cavity so that when the

blower and magnetron are turned

off and the thermal element is

turned on air is’ thermally

convected through the blower

inlet, magnetron, and waveguide

into the cavity for final exit

through the cavity air vent at

the top therof, the air passage

through the blower, mangetron

and waveguide being

sufficiently constricted so

that the air is convected in

the self-cleaning mode at a

level below that which is

capable of producing an

explosive reaction with’ the

products of thermal

decomposition.

claims are reproduced in.

Appendix.

the

B72

C. District Court Proceedings

On September 9, 1980, Raytheon

sued for a declaratory judgment that the

'520 patent was invalid. Roper

counterclaimed for infringement of all

claims. After trial without a jury, the

district court issued an opinion on

January 20, 1983, and a judgment on

January 28, 1983.

The district court declared the

patent invalid because of a lack of

B73

utility required by 35 U.S.C. 5 101 1/4

and the absence of enabling disclosure

required by 35 U.S.C. § 112. 2/ The

district court also found that the Torrey

invention was a commercial success, held

l/ 35 U.S.C. § 101 states:

Whoever, invents or discovers any new

and useful process, machine,

manufacture, or composition of

matter, or any new and useful

improvement thereof, may obtain a

patent therefor, subject to the

conditions and requirements of this

title.

2/ 35 U.S.C. § 112, paragraph one,

states:

The specification shall contain a

written description of the invention,

and of the manner and process of

making and using it, in such full,

clear, concise, and exact terms as to

enable any person skilled in the art

to which it pertains, or with which

it is most nearly connected, to make

and use the same, and shall set forth

the best mode contemplated by the

inventor of carrying out his

invention.

B74

that the invention would have been

nonobvious, 3/ and found that if the

claims were valid, Raytheon would be

liable for having infringed them. 4/

3f/ 35 U.S.C. § 103 states:

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

obvious at the time th» invention was

made to a person having ordinary

skill in the art to which said

subject matter pertains.

4/f 35 U.S.C. § 271(a) states:

Except as otherwise provided in this

title, whoever without authority

makes, uses or sells any patented

invention, within the United States

during the term of the patent

therefor, infringes the patent.

B75

Because the case was not in its

view an “exceptional"™ one, as required by

35 U.S.C. § 2865, 5/ the district court

refused to award attorney fees to

Raytheon.

ISSUES

Did the disrict court err in

(1) its judgment of invalidity under 35

U.S.C. §§ 101 and 112; (2) its holding of

nonobviousness under 35 U.S.C. § 103; (3)

its finding of anfringement; (4) its

failure to award attorney fees.

S5/ 35 U.S.C. § 285 states:

The court in exceptional cases may

award reasonable attorney fees to the

prevailing party.

B76

OPINION

A. Standard of Review

Raytheon argues the evidence de

novo. As Roper correctly points out,

this court does not review the fact

record de novo. District court findings

must be accepted unless they are

predicated on an improper legal

foundation, see, e.g., W. Le. Gore &

Associates, Inc. v. Garlock, Inc., No.

83-613, Sl. Op. at 8-9 (Fed. Cir. 1983),

or unless they are shown by the party

chailenging them to be "clearly

erroneous", i.e., unless this court is

left with the "definite and firm

conviction that a mistake has been

committed". Inwood Laboratories, Inc. v.

Ives Laboratories, Inc., 456 U.S. 844,

2189 (1982). The clearly erroneous

B77

Standard applies to findings, not to

legal conclusions.

B. Invalidity for lack of utility

Utility is a fact question,

see, e.g., Wilden Pump v. Pressed &

Welded Products Co., 655 F.2d 984, 988,

213 USPQ 282, 285 (9th Cir. 1981);

Nickola v. Peterson, 580 F.2d 898, 9ll,

198 USPQ 385, 399 (6th Cir. 1978), cert.

denied, 440 U.S. 961 (1979). In

determining utility, however, the claims

must first be interpreted to define the

invention to be tested for utility.

Claim interpretation is a legal matter

Ssvoject to review free of the clearly

erroneous standard applicable to fact

findings. Fromson v. Advance Offset

Plate, Inc., No. 83-850, Sl. Op. at 8-9

(Fed. Cir. 1983).

B78

In this case, the district

court's holding that claim 1 is invalid

must be affirmed, but its holding of

invalidity for lack of utility in the

inventions set forth in claims 2-7 must

be reversed because the latter rests on

an erroneous interpretation of those

claims, as well as on other incorrect

legal bases.

l. The district court

correctly interpreted and

held invalid claim 1 but

erroneously interpreted

claims 3 and 4 as requiring

prevention of backflow

during autoignition.

In Linde Air Products Co. v.

Graver Tank & Mfg. Co., 86 F.Supp. 191,

197, 75 USPQ 231, 235 (N.D. Ind. 1947),

212 (7th Cir. 1948), aff'd, Graver Mfg.

Co. v. Linde Co., 336 U.S. 271, 277-79

(1949), certain process claims were held

B79

invalid because they included incorrect

ideas and:

To make a claim for a... .

process in which these

erroneous ideas are

incorporated is to stake out a

process . . . which does not in

point of fact exist within the

invention. While a patent

covering a meritorious

invention should not be struck

down because the patentee has

misconceived the scientific

principle of his invention, the

error cannot be overlooked when

the misconception is embodied

in the claim.

Accord, Noma Lites Canada Ltd. Ve

Westinghouse Electric Corp., 399 F.Supp.

243, 253, 186 USPQ 485, 493 (D.D.C. 1975)

("When an incorrect or questionable

theory of operation is included in a

patent claim, that claim is invalid. 35

U.S.C. § 112."). Because it is for the

invention as claimed that enablement must

exist, and be-ause the impossible cannot

be enabled, a claim containing a

limitation impossible to meet may be held

B80

invalid under § 112. Moreover, when a

claim requires a means for accomplishing

an unattainable result, the claimed

invention must be considered inoperative

as claimed and the claim must be held

invalid under either § 101 or § 112 of 35

U.S.C. See, e.g., General Electric Co.

v. United States, 572 F.2d 745, 755, 198

USPQ 65, 93 (Ct.Cl. 1978); In re Harwood,

390 F.2d 985, 989, 156 USPQ 673, 676

(CCPA 1968); CPC International, Inc. v.

Standard Brands, Inc., 385 F.Supp. 1057,

1061, 184 USPQ 332, 335 (D. Del. 1974);

Novelart Mfg. Co. v. Carlin Container

Corp., 363 F.Supp. 58, 76, 179 USPQ 17,

29 (D.N.J. 1973). Whether the

appropriate basis for holding claim 1

invalid be failure of compliance with the

utility requirement of § 101 or with the

enablement requirement of § 112,

therefore, that holding must be affirmed.

B8i

In the present case, the

district court interpreted claims 1, 3

and 4 as requiring that the inventions

set forth in those claims include a means

for continuing convection during

autoignition. The district court found,

however, that convection did not in fact

occur during occasional autoignition in

the Roper oven, a finding which is not

clearly erroneous. Given that claim

interpretation and finding, the district

court waS compelled under the above

authorities to hold those claims invalid.

However, though the district court was

correct in interpreting and_ holding

invalid claim 1, it legally erred in

interpreting claims 3 and 4.

Claim 1 specifically provides:

“the blower inlet being located at a

level below the bottom wall of the cavity

so that when the blower and magnetron are

B82

turned off and the thermal element is

turned on air is thermally convected from

the blower inlet through the air passages

into the waveguide and into the cavity

for exiting through the cavity air vent

notwithstanding the autoignition pressure

which exists in the cavity under high

temperature self-cleaning conditions"

(emphasis added). Though, as discussed

infra, the phrase is based on Torrey's

erroneous theory respecting the absence

of waveguide fouling, and though the

functional language is introduced by "so

that", we must read the phrase as the

equivalent of one specifying aS _ an

element in the claim "means for

continuing convection during

autoignition". Because the required

continuation of convection (described by

the parties as "prevention of back flow")

during periods of autoignition does not

B83

and physically cannot happen, claim 1

must be held invalid. Graver Mfg. Co.,

supra.

The district court

impermissibly read the above-quoted

language from claim 1 into claims 3 and

4. The impropriety of reading

limitations into claims is dramatized

where, as here, the limitation sought to

be added is already present in another

claim. Environmental Designs, Ltd. v.

Union Oil Co. of California, 713 F.2d

693, 699, 218 USPQ 865, 870-71 (Fed. Cir.

1983). Accord, Fromson v. Advance Offset

Plate, Inc., Supra, sl. op. at 11;

Caterpillar Tractor Co. v. Berco, S.P.A.,

714 F.2d 1110, 1116, 219 USPQ 185, 188

(Fed. Cir. 1983); Kalman v. Kimberly

Clark Corp., 713 F.2d 760, 770, 218 USPQ

781, 788 (Fed. Cir. 1983).

B84

In arguing that claims must be

read in light of the specification, that

prevention of backflow is the’ "essence"

of Torrey's invention, and that all

claims must therefore be read as

including the quoted limitation of claim

1, Raytheon confuses the respective roles

of the specification and claims. That

claims are interpreted in light of the

specification does not mean that

everything expressed in the specification

must be read into all the claims. On the

contrary, aS waS Said in Environmental

Designs, supra, 713 F.2d at 699, 218 USPQ

at 871:

[t]he specification must be

sufficiently explicit and

complete to enable one skilled

in the art to practice the

invention, while a claim

defines only that which the

patentee regards as his

invention. 35 U.8.Ce & tba

The claim, not the

specification, measures the

invention. (Case cited).

[T]he argument that claim 1

iia aialiiiiiaaaiie

B85

must include a limitation found

in the specification is thus

legally unsound. Smith v.

Snow, 294 U.S. 1 (1935).

Raytheon says Roper is

precluded by an “appeal estoppel" from

contesting the inclusion of "no backflow

during autoignition" in all claims

because Roper relied on "no backflow" in

the district court and should not be

allowed to change its theory on appeal.

Examination of the trial record, however,

reveals that Roper there stressed the

theory it urges on appeal, and that it

waS Raytheon which argued that the

"essence" of Roper's invention was no

backflow during autoignition.

In its opening statement at

trial, Roper stressed "no fouling" and

various other objectives without once

mentioning "no backflow" (let alone "no

backflow during autoignition"). In

Roper's forty-page Proposed Findings of

B86

Fact and Conclusions of Law, Roper

mentioned only once (proposed finding 79)

that there is no backflow during

autoignition. In its pretrial brief,

Roper stated that it:

discovered that by positioning

the microwave feed system below

the oven cavity, and providing

an air path from an air inlet

below the cavity through the

microwave feed system

(including the waveguide) and

up into the cavity, natural

convection would draw air

through that path to the oven

cavity and up through it to

result in sufficient venting of

the oven during both thermal

cooking and self-cleaning. For

reasons not really understood,

the waveguide through which

convected air flowed would not

be fouled by normal

autoignition pressures that

occur during self-cleaning,

even though the waveguide entry

location at the bottom of the

oven cavity would seem to be a

place subject to particularly

high contamination. (Emphasis

added)

That is not the approach of one hinging

its entire case and all the claims on "no

B87

backflow during autoignition". The

unchallenged evidence established that

Roper's ovens experienced no fouling or

contamination. There is no basis in the

record, therefore, for the imposition of

an “appeal estoppel" precluding Roper

from reliance on the claims as written

and allowed.

2. The district court

erroneously interpreted

claims 1, 2 and 5-7 as

requiring the prevention of

autoignition.

The district court, at

Raytheon's urging, interpreted claims l,

2 and 5-7 as requiring the prevention of

autoignition. Because autoignition

clearly occurs, that interpretation

apparently led to the holding that those

Claims were invalid for lack of utility.

That interpretation, however, was legally

B88

erroneous, and Raytheon has virtually

abandoned it in its briefs on appeal.

The district court apparently

and incorrectly equated prevention of

"autoignition" with prevention of

"explosive reactions", the latter being

required by claims 1, 2 and 5-7. As the

district court found, autoignition occurs

when the decomposition products of

pryolytic self-cleaning react with some

excess air to produce combustion. It is

only when greater amounts of air enter

the cavity that autoignition might

escalate into an "explosion". Torrey did

not claim to prevent autoignition; he

claimed only to prevent explosions by

restricting the air path to limit the

excess of air to a level below that

productive of explosions. As stated by

Roper in its Proposed Findings of Fact

and Conclusions of Law, "it is well known

B89

in the art that one cannot completely

eliminate the possibility of

autoignition", and “too much air in the

oven during self-cleaning causes’ the

autoignition to become severe and even

explosive". The patent itself addresses

autoignition as something to be

"resisted", not eliminated. Moreover,

the difference in the two concepts is

illustrated by claim l's express

acceptance of "“autoignition pressure" and

prevention of an "explosive reaction".

Thus, although claim 1 was

correctly held invalid as set forth in

section 1 above, there is no basis in the

record on which to hold claims 2-7

invalid for lack of utility.

B90

3. A claimed invention need

not accomplish all

Objectives stated in_ the

specification.

The district court held the

'520 patent invalid in part because

Roper's oven, as set forth in claims

interpreted by the district court as

requiring prevention of backflow and

autoignition, failed to accomplish all

objectives stated in the patent.

Raytheon urged at oral argument that that

holding is compelled by Mitchell v.

Tilghman, 86 U.S. 287, 396-97 (1873) (a

patent is void “if the described result

cannot be obtained by the described

means"). In Mitchell, the described

result was production of fatty acids and

glycerin from fatty or oily substances by

the action of water at high temperature

and pressure. Id. at 296, 380. That was

the single result stated and was an

element of the claim. Id. at 296. To

EE a

B91

interpret Mitchell as requiring that all

claims must set forth inventions

satisfying all objectives would make no

sense. When a properly claimed invention

meets at least one stated objective,

utility under § 101 is clearly shown.

See, e.g., Standard Oil Co. (Indiana) v.

Montedison, S.P.A., 664 F.2d 356, 375,

212 USPQ 327, 344 (3rd Cir. 1981), cert.

denied, 456 U.S. 915 (1982); E.I. du Pont

de Nemours & Co. vy. Berkley & Co., 620

F.2d 1247, 1258 n.10, 1260 n.17, 205 USPQ

1, 8 n.10, 10 n.17 (8th Cir. 1980);

Krantz and Croix v. Olin, 148 USPQ 659,

661-62 (CCPA 1966); Chisum on Patents,

§ 4.04[4) [1983].

Here, the Torrey invention as

set forth in claims 2-7 clearly

accomplished at least one, and a major

one, of the patent's stated objectives,

i.e., a “ventilating system for a common

B92

cavity oven usable in all three modes of

operation and which is safe in all three

modes and which runs no risk of violent

explosion of the products of combustion

in the self-clean mode". The

incorrectness of Torrey's theory

explaining the absence of fouling (i.e.,

that continued convection prevented

backflow during autoignition) does not

undermine the unchallenged accomplishment

of the quoted objective by the ovens set

forth in claims 2-7. Torrey was

attempting to explain in his

specification why his tests showed no

fouling, and a patentee is not

responsible for the correctness of such

theories and explanations when their

correctness is not related to validity of

the claims under consideration. See

e.g., Fromson v. Advance Plate, Inc.,

Supra, Sl. Op. at ll. (In Fromson, the

‘ll

B93

sole issue was infringement, and validity

of non-asserted claims including a

limitation based on the patentee's theory

that an alumino-silicate layer was

produced, was not before the court.)

4. Lack of utility cannot

co-exist with infringement

and commercial success.

The wisdom of the trial court

in deciding validity and infringement,

and the interrelationship of those

issues, are manifested in the present

case. See, Medtronic, Inc. v. Cardiac

Pacemakers, No. 83-820, Sl. Op. at 43

(Fed. Cir. 1983); Gore v. Garlock, supra,

al. (Sic) op. at 40.

The district court's finding on

infringement of claim 1 was clearly

erroneous because Raytheon's proof

establisned the impossibility of its oven

having a means to continue convection

B94

during autoignition. However, the

court's finding on infringement of claims

2-7 was not clearly erroneous. See

secion E, infra. That finding compels

the conclusion that claims 2-7 cannot be

held invalid for lack of utility.

a correct finding of

infringement of otherwise valid claims

mandates as a matter of law a finding of

utility under § 101. See e.g., E.I.

duPont de Nemours & Co. v. Berkley & Co.,

Supra, 620 F.2d at 1258-61, 205 USPQ at

8-ll; Tapco Products Co. v. Van Mark

Products Corp., 446 F.2d 420, 428, 170

USPQ 550, 555-56 (6th Cir.), cert denied,

404 U.S. 986 (1971). The rule is not

related, as Raytheon argues, to whether a

defendant may Simultaneously assert non-

utility ane non-infringement; a defendant

may do so. The rule relates to the time

of decision not to the time of trial, and

B95

is but a common sense approach to the

law. If a party has made, sold, or used

a properly claimed device, and has thus

infringed, proof of that device's utility

is thereby established. People rarely,

if ever, appropriate useless inventions.

Proof of such utility is

further supported when, as here, the

inventions set forth in claims 2-7 have

on their merits been met with commercial

Success. See e.g., Medtronic, InC.,

Supra, Sl. op. at 43; Wilden Pump v.

Pressed & Welded Products Co., supra, 655

F.2d at 988, 213 USPQ at 285; CTS Corp.

v.- Piher International Corp., 527 F.2d

95, 105, 188 USPQ 419, 428 (7th Cir.

1975), cert. denied, 424 U.S. 974 (1976).

In sum, we hold in this section

B that claims 2-7 are not invalid for

lack of utility.

B96

C. Invalidity Under 35 U.S.C.

After stating that Raytheon's

challenge under § 112 was largely a

restatement of its challenge under § 10l,

the district court held that Raytheon had

sustained its burden of proving

invalidity under the former. We agree

that the two defenses rest on the same

foundation in this case. Having reversed

the holding of invalidity of claims 2-7

under § 101, we accordingly reverse the

holding with respect to those claims

under § 112. We conclude as a matter of

law that the specification of the '520

patent contains a clear description

enabling one skilled in the art to make

B97

and use the inventions set forth in

claims 2-7. 6/

D. 35 U.S.C. § 103

>

The district court properly

approached and decided the

nonobviousness/obviousness issue in light

of 35 U.S.C. § 103. First, it recognized

~

the statutory presumption of validity and

6/ Enablement under 35 U.S.C. § 112,

Paragraph l, is a question of law. In re

Hogan, 559 F.2d 595, 604,194 USPQ 527,

535 (CCPA 1977); In re Brandstandter, 484

F.2d 1395, 1405, 179 USPQ 286, 293 (CCPA

1973); In re Naguin, 398 F.2d 863, 866,

158 US > (CCPA 1968); In re

Chilowsky, 306 F.2d 908, 909, 134 USPQ

515, 516 (CCPA 1962). Accord, Plastic

Containers Corp. v. Continental Plastics

of Oklahoma, Inc., 607 F.2d 885, 891-92

n.9, 203 USPQ 27, 32 n.9 (10th Cir.

1979), cert. denied, 444 U.S. 1018

(1980); Hirschfield Vs Banner, 462

F.Supp. 135, 142, 200 USPQ 276, 281

(D.D.C. 1978), aff'd, 615 F.2d 1368 (D.C.

Cir. 1980), cert. denied, 450 U.S. 994

(1981).

B98

that the burden was on Raytheon to

Overcome it by proving facts with clear

and convincing’ evidence. See e€.g.,

Connell v. Sears, Roebuck & Co., No. 83-

841, Sl. Op. at 13 (Fed. Cir. 1983). 7/

Second, the court neither ignored nor

modified the presumption merely because

Raytheon cited prior art not before the

Patent Office. Citation of such art --

even when more pertinent than the art

before the Examiner (which the district

court correctly found was not the case

here) -- does not destroy the

presumption, although it may make it

easier for the one attacking validity to

7/ That presumption, stated in 35 U.S.C.

§ 282, also applies to utility. See

C.g., Medtronics, Inc. V. Cardiac

Pacemakers, Inc., Supra, Sl. Op. at 6.

B99

Overcome the burden set by 35 U.S.C.

§ 282. See Connell, supra, Sl. Op. at

13.

Third, the district court correctly

assessed the evidence in light of the

factual inquiries enunciated in Graham vy.

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

Presumably, the district

court's conclusion of nonobviousness (and

finding of infringment, discussed infra)

applied to all claims, although the

Opinion did not so state (the “patent”

was declared invalid; the "claims" were

found infringed). For purposes of this

appeal, "the claimed invention" in what

follows concerning nonobviousness-~ and

infringement may be read as in light of

representative claim 5. Because’ the

claims were not argued separately on

appeal, and because differences in the

claims cannot here affect the result, all

SE

B100

claims (except claim 1) can be seen to

Stand or fall with claim 5. See e.g. In

re Kaslow, 707 F. 2d 1366, 1376, 217 USPQ

1089, 1096 (Fed. Cir. 1983).

1. The Prior Art

The relevant prior art

encompassed microwave ovens, combination

microwave-thermal ovens, and self-

cleaning thermal ovens. A summary of

relevant prior art teachings is contained

in the "Background" section, Supra.

Additionally, although the prior art

taught placement of a microwave feed unit

below a microwave oven, it taught away

from placing an open feed unit below a

self-cleaning common cavity oven because

the art believed the unit would be

contaminated.

B101

Ze Differences Between the

Prior Art and the Claimed

Invention.

The claimed invention is a

self-cleaning common cavity oven having,

inter alia, (1) an open waveguide located

at the bottom, (2) through which forced,

cooling air from the blower passes during

the microwave mode only, and

(3) ventilation occurs via convection

through the waveguide openings during the

thermal and self-cleaning modes. No

self-cleaning common cavity oven existing

at the time of the Torrey invention

embodied any of those three elements.

3. Level of Ordinary Skill in

the Art

Raytheon and Roper’ employed

people skilled in the art of designing

ovens for cooking food in both microwave

and thezmal modes, among them graduate

B102

engineers with substantial background and

experience in the design, development,

and marketing of ovens.

4. Objective Ev idence of

Nonobviousness

Evidence of long felt need,

unexpected results and commercial success

is outlined in the "Background" section,

Supra.

Se Conclusion on Non-

obviousness

The district court concluded

that Raytheon did not overcome’ the

presumption of nonobviousness, and we

agree. Raytheon has not shown these

findings to have been clearly erroneous:

the findings under 1-3 above; the finding

that persons of ordinary skill were

unable to devise a common cavity oven

B103

with proper ventilation and a pyrolytic

self-cleaning feature; or the finding

that Torrey unexpectedly found that his

invention worked. Those fact findings,

together with those on commercial success

and the prior art's teaching away from

location of the open waveguide at the

bottom of a self-cleaning common cavity

oven, are highly probative, objective

criteria fully capable of serving as a

foundation for the legal conclusion of

nonobviousness.

Raytheon suggests that Roper

merely combined well known elements to

form its oven. In the district court,

Raytheon was more explicit, citing a

Single sentence from the opinion in Great

Atlantic & Pacific Tea Co. v. Supermarket

Equipment Corp., 340 U.S. 147 (1950)

("courts should scrutinize combination

patent claims with a care proportioned to

eS

B104

the difficulty and improbability of

finding invention in an assembly of old

elements"). This court has been unable

to construe the cited sentence, however,

"as a rule of law applicable broadly to

patent cases because virtually every

claimed invention is a combination of old

elements", Medtronic, Inc. v. Cardiac

Pacemakers, Inc., supra, slip op. at 4,

and because the Supreme Court has held

combinations of old elements patentable.

See, e.g., United States v. Adams, 383

U.S. 39, 51-52 (1966). It is moreover

Simplistically unrealistic to employ a

separate test of patentability for

combinations of old elements when the

language of the 1952 Patent Act provides

no basis for either classifying patents

into different "types" or for applying

different treatment to different "types"

of patents. Accord, Richdel, Inc. Vv.

B105

Sunspool Corp., 714 F.2d 1573, 1579-80,

219 USPQ 8, 12 (Fed. Cir. 1983);

Environmental Designs, “td. v. Union Oil

Co. of Cal., supra, 713 F.2d at 698, 218

USPQ at 870.

E. Infringement

Whether an accused device

infringes properly interpreted claims is

a fact question. See e.g., Fromson v.

Advance Offset Plate, Inc., supra, Sl.

Op. at 8-9. Here, the district court

apparently found infringement under the

doctrine of equivalents. The test for

equivalency is whether the accused device

"performs substantially the same function

in substantially the same way to obtain

the same result" as the claimed

invention. Hughes Aircraft v. United

States, 717 F.2d 1351, 1361, 219 USPQ

473, 480 (Fed. Cir. 1983). The finding

B106

on equivalency is subject to the clearly

erroneous standard on review. Thomas &

Betts Corp. v. Litton Systems, Inc.,

No. 83-537, Sl. Op. at 12-13 (Fed. Cir.

1983). Here, the district court's

ultimate finding of equivalence (except

in respect of claim 1) has not been shown

to have been clearly erroneous.

Raytheon asserts three

differences between its oven and the

claimed invention. First, the former has

a gap in its door, and the claim inciudes

"a door enclosing and sealing the front

surface of the cavity against passage of

air and microwave energy”. Raytheon's

gap precludes a finding of literal

infringement but not a finding of

infringement under the doctrine of

equivalents. The district court found

that Raytheon's gap does not materially

affect entry of air, most of which comes

’

B107

through the waveguide, only the most

minor amounts being admitted through the

gap. The district court said, "[t]he

functioning of the air flow system taught

in the Torrey claims is embraced by the

Raytheon oven". That finding has not

been shown to have been clearly

erroneous.

Second, Raytheon says its oven

does not prevent backflow and

autoignition, and all claims should be

interpreted as requiring prevention of

both. As above indicated, however, only

claim l1 contains a "no backflow"

limitation, and no claim contains a "no

autoignition”" limitation. Hence, only

the court's finding that claim 1 is

infringed is clearly erroneous.

Third, Raytheon argues’~ that

convection air does not~ enter its

waveguide through its blower inlet, as

B108

required by claims 2 and 4-7, nor through

the blower inlet and housing vent as

called for in claim 3, but through a hole

in the duct attached to its waveguide.

Raytheon's convection air from its

attached duct, however, "performs

substantially the same function in

substantially the same way to obtain the

same result" as convection air from the

blower inlet, and the district court's

finding of equivalence in convection air

inlet locations has not been shown to

have been clearly erroneous.

Attorney Fees

Under 350 6 UBC. iS 285, a

district court may award such fees to the

prevailing party in "exceptional" cases.

The decision to award or deny fees is

discretionary with the district court.

See e.g., Orthopedic Equipment Co. v. All

B109

Orthopedic Appliances, 707 F.2d 1376,

1384, 217 USPQ 1281, 1287 (Fed. Cir.

1983). No basis has been shown for a

determination that the district court

abused its discretion in denying attorney

fees to Raytheon.

CONC LUSION

The district court did not err

in holding claim 1 invalid, in holding

that the inventions set forth in claims

2-7 would have been nonobvious, in

finding claims 2-7 infringed, or in

denying Raytheon's request for attorney

fees. The district court did err in

holding claims 2-7 invalid under 35

U.S.C. § 101 for lack of utility and

under 35 U.S.C. § 112 for lack of an

enabling disclosure.

Accordingly, we affirm’ the

judgment that claim 1 is invalid, affirm

B110

the judgment that claims 2-7 are not

invalid under 35 U.S.C. § 103, affirm the

judgment that claims 2-7 are infringed by

the accused Raytheon ovens, affirm the

denial of attorneys fees to Raytheon,

reverse the district court's judgment

that claims 2-7 are invalid, and remand

for further proceedings consistent

herewith.

AFFIRMED IN PART; REVERSED IN _ PART;

REMANDED

Blll

APPENDIX -- CLAIMS OF ROPER PATENT

1. In a combined microwave-

thermal range, the combination comprising

a frame having walls defining a

rectangular oven cavity and ae lower

Space, a door enclosing and sealing the

front surface of the cavity against

passage of air and microwave energy, a

thermal element in the cavity, control

means for operation of the thermal

element at a normal temperature level for

food preparation and at a high level for

a self-cleaning mode, the walls of the

cavity being insulated, the bottom wall

of the cavity having an inlet opening,

means defining a cavity air vent at the

top of the cavity, a microwave power

Supply including a blower and a magnetron

having cooling fins, the blower having a

blower inlet for drawing in cooling air

and an outlet for supplying such air

B112

under slight pressure to the cooling

fins, a waveguide having. an inlet

connected to the magnetron and extending

under the bottom wall of the cavity to

terminate at an outlet, means’~ for

connecting the outlet of the waveguide to

the inlet opening of the cavity for

conduction of microwave energy into the

cavity, means defining air passages of

limited cross section for conducting air

from the magnetron into the waveguide so

that a portion of the pressurized air

passes through the waveguide and into the

cavity for ventilating the cavity when

the magnetron and blower are turned on,

the blower inlet being located at a level

below the bottom wall of the cavity so

that when the blower and magnetron are

turned off and the thermal element is

turned on air is thermally convected from

the blower inlet through the air passages

B113

into the waveguide and into the cavity

for exiting through the cavity air vent

notwithstanding the auto ignition

pressure which exists in the cavity under

high temperature self-cleaning

conditions, the convection path of the

air being sufficiently constricted so

that air is convected in the self-

cleaning mode at a level below that which

is capable of producing an explosive

reaction with the products of

decomposition.

2. In a combined

mocrowave-thermal range, the combination

comprising a frame having walls defining

a rectangular oven cavity and a lower

space, a door enclosing and sealing the

front surface of the cavity against

passage of air and microwave energy, a

thermal element in the cavity, control

means for operation of the’ thermal

B114

element within a normal temperature range

for food preparation and at a high

temperature level for a self-cleaning

mode, the walls of the cavity being

insulated, the bottom wall of the cavity

having an inlet opening, means defining a

cavity air vent at the top of the cavity,

a microwave power supply having a housing

including a magnetron and blower, the

blower having a blower inlet and arranged

to draw in cooling air for supplying

under slight pressure to the magnetron

with discharge of at least a portion of

the air into the housing to create slight

pressure therein, a waveguide having an

inlet connected to the magnetron. and

extending under the bottom wall of the

cavity to terminate at an outlet, means

for connecting the outlet of the

waveguide to the inlet opening of the

cavity for conduction of microwave energy

B115

into the cavity, means defining a pattern

of small air passages from the housing to

the waveguide so at least a portion of

the pressurized air from the housing

passes through the air passage _ and

waveguide and into the cavity for

ventilating the cavity when the magnetron

and blower are turned on, all portions of

the waveguide and housing including the

blower inlet being located at a level

below the bottom wall of the cavity so

that when the blower and magnetron are

turned off and the thermal element is

turned on air is thermally convected from

the blower inlet through the small air

passages and waveguide into the cavity

for exiting through the cavity air vent,

the convection path of the air being

sufficiently constricted so that air is

convected in the self-cleaning mode at a

level below that which is capable of

B116

producing an explosive reaction with the

products of thermal decomposition.

3. In a combined microwave-

thermal range, the combination comprising

a frame having walls defining a

rectangular oven cavity and ae lower

space, a door enclosing and sealing the

front surface of the cavity against

passage of air and microwave energy, a

thermal element in the cavity, the walls

of the cavity being insulated, the bottom

wall of the cavity having an inlet

opening, means defining a cavity air vent

at the top of the cavity, a microwave

power supply having a housing including a

magnetron and blower, the blower having a

blower inlet and arranged to draw in

cooling air from outside the housing for

Supplying under slight pressure to the

magnetron, the cooling air being

discharged from the magnetron into the

ae

B117

housing for creating internal pressure

therin, a waveguide coupled to the

magnetron and extending along the housing

and under the bottom wall of the cavity,

the waveguide having an outlet alined

with the opening in the bottom wall of

the cavity, a hollow open-ended conductor

extending through the opening for

coupling the outlet of the aveguide to

the cavity, means for securing the upper

end of the hollow conductor to the bottom

wall of the cavity and the lower end of

the conductor to the waveguide for

conduction of microwave energy into the

cavity, the wall of the waveguide having

a pattern of small openings communicating

with the housing so that a portion of the

pressurized air from the blower = and

magnetron passes through the waveguide

and hollow conductor into the cavity for

ventilating the cavity when the magnetron

B118

and blower are turned on, the housing

having a relatively large vent opening

though which the pressurized air

therefrom passes outwardly to reduce the

internal pressure in the housing thereby

to reduce the flow of air through the

pattern of small openings and into the

cavity to a predetermined low level, the

blower inlet and large vent opening being

located at a level below the bottom wall

of the cavity so that when the blower and

magnetron are turned off and the thermal

element is turned on flow of air through

the large vent opening is reversed in

direction flowing inwardly through such

vent opening into the housing and through

the small openings via the waveguide into

the cavity with final exiting through the

cavity air vent.

4. In a combined microwave-

thermal range, the combination comprising

it

B119

a frame having walls defining a

rectangular oven cavity and ae lower

Space, a door enclosing and sealing the

front surface of the cavity against

passage of air and microwave energy, a

thermal element in the cavity, the walls

of the cavity being insulated, the bottom

wall of the cavity having an inlet

opening, means defining a cavity air vent

at the top of the cavity, a microwave

power supply having a housing including a

magnetron and blower, the blower having a

blower inlet and aranged to draw in

cooling air for supplying under slight

pressure to the magnetron, a waveguide

coupled to the magnetron and extending

under the bottom wall of the cavity, the

waveguide having an outlet alined with

the opening in the bottom wall of the

cavity, a hollow open-ended conductor

extending through the opening for

eae

B120

coupling the outlet of the waveguide to

the cavity, means for securing the upper

end of the hollow conductor to the bottom

wall of the cavity and the lower end of

the conductor to the waveguide’ for

conduction of microwave energy into the

cavity, an antenna element centered in

the hollow conductor and projecting into

the cavity for guiding microwave energy

to the latter, means for conducting at

least a portion of the pressurized air

from the blower and magnetron through the

waveguide and hollow conductor into the

cavity for ventilating the cavity when

the magnetron and blower are turned on,

the blower inlet being located at a level

below the bottom wall of the cavity so

that when the blower and magnetron are

turned off and the thermal element is

turned on air is convected through the

blower inlet, waveguide and_ hollow

B121

conductor into the cavity for exiting

through the cavity air vent at the top

thereof.

5. In a combined microwave-

thermal range, the combination comprising

a frame having walls defining a

rectangular oven cavity and a lower space

of conforming shape, a door enclosing and

sealing the front surface of the cavity

against passage of air and microwave

energy, a thermal element in the cavity,

control means for operation of the

thermal element within a normal

temperature range for food preparation

and at a high temperature level for a

self-cleaning mode, the walls of the

cavity being insulated, the bottom wall

of the cavity having an inlet opening,

means defining a cavity air vent at the

top of the cavity, a microwave power

Supply having a housing including a

B122

magnetron and blower, the blower having a

blower inlet and arranged to draw in

cooling air for discharge under slight

pressure to the magnetron, a waveguide

having an inlet connected to the

magnetron and extending under the bottom

wall of the cavity to terminate at an

outlet, means for connecting the outlet

of the waveguide to the inlet opening of

the cavity for conduction of microwave

energy into the cavity, the waveguide

being open to passage of cooling air from

the magnetron so at least a portion of

the pressurized air from the blower and

magnetron passes through the waveguide

and into the cavity for ventilating the

Cavity when the magnetron and blower are

turned on, the blower inlet being located

at a level below the bottom wall of the

cavity so that when the blower. and

magnetron are turned off and the thermal

B123

element is turned on air is thermally

convected through the blower inlet,

magnetron, and waveguide into the cavity

for final exit through the cavity air

vent at the top thereof, the air passage

through the blower, magnetron and

waveguide being sufficiently constricted

so that the air is convected in the self-

cleaning mode at a level below that which

is capable of producing an explosive

reaction with the products of thermal

decomposition.

6. The combination as claimed

in claim 5 in which the constriction in

the air passage through the blower inlet,

magnetron and waveguide is in the form of

a pattern of small openings in the wall

of the waveguide and in communication

with the housing, the openings being of

sufficiently small dimension so as to

ll

B124

preclude the escape of microwave energy

therethrough.

7. The combination as claimed

in claim 6 in which the openings in the

wall of the waveguide and the vent

opening are sufficiently limited in total

area aS to limit the flow of air for

microwave cookery to within the range of

three to eight c.f.m. when the blower is

on and to reduce the flow of convected

air under baking and self-cleaning

conditions to within the range of 0.5 to

2 Cof Ma

B125

United States Court of Appeals for the

Federal Circuit

RAYTHEON COMPANY,

Appellee,

No. 83-851

83-853

ROPER CORPORATION,

Appellant.

ORDER

A petition for rehearing and a

Suggestion for rehearing in banc having

been filed in this case,

UPON CONSIDERATION THEREOF, it

is Ordered by the court that the petition

for rehearing be, and the same is hereby,

Denied.

The suggestion for rehearing in

banc is declined.

FOR THE COURT

/s/George E. Hutchinson

George E. Hutchinson,

Clerk

March l1, 1984

Date

cc:Frank P. Porcelli

Martin J. O'Donnell

iil

B126

ROPER'S EXHIBIT NO. 13

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B128

ROPER TRIAL BRIEF,

September 30, 1982

(pages 3 - 4)

Wnat severely complicates the

Situation is the introduction of

pyrolytic self-cleaning. The basic

thermal breakdown of the oven soil in

pyrolysis is done without oxygen.

Nevertheless, some air is needed to

ventilate the oven during self-cleaning

to flush the ake and other volatile

decomposition products produced by

pyrolysis out of the oven through the

vent located at the top of the oven. An

inlet for this air is provided at the

bottom of the oven cavity, often by

making a gap in the oven door gasket at

the bottom. However, because extremely

high temperatures are involved, because

the gases produced by pyrolysis may be

combustible, and because there is some

B129

oxygen present in the oven during self-

cleaning, Spontaneous combustion may

occur right in the oven cavity during

self-cleaning, particularly if the oven

or the broiler is very dirty. This

combustion, which is distinct from

oxygen-free pyrolysis, is known as

autoignition. When it occurs, it creates

sudden increases in pressure within the

oven cavity, and this pressure surge can

cause smoke and volatile decomposition

products to escape from the oven cavity

through any opening.’ Furthermore, if

excess air were allowed into the oven

during self-cleaning, this autoignition

phenomenon might become so aggravated and

Prolonged as to result in violent

explosions.

Autoignition, therefore, is a

Serious enough concern in aé_e standard

self-cleaning oven, and many efforts have

B130

been made to develop flame arresters and

anti-flashback devices to protect air

entry points into the oven. But it is

far more serious in a common cavity oven.

Probably the worst possible place for

contamination from the smoke and

decomposition products of both self-

cleaning and autoignition is in the

microwave feed system, and in particular

the waveguide.

B131

ROPER TRIAL BRIEF,

September 30, 1982

(page 5)

Thus the common cavity oven

designer is faced with a dilemma. If the

designer wants to incorporate a pyrolytic

self-cleaning feature into a common

cavity oven, the designer would normally

seal up the microwave feed system and

either do without adequate venting or

find some other, less efficient way to

effectuate it. And if the designer

chooses to have forced venting through

the feed system, he must give up

pyrolytic self-cleaning or risk dangerous

contamination of the waveguide.

B132

ROPER TRIAL BRIEF,

September 30, 1982

(pages 7 - 8, footnotes

omitted)

The Invention

Proceeding directly contrary to

the thinking of the previous designers of

common cavity ovens with pyrolytic self-

cleaning, and to the teaching of the

prior art patents that would rule out

pyrolytic self-cleaning in an oven that

used microwave feed system ventilation,

Sumner Torrey, head of the Research

Center at Roper, discovered that a

pyrolytic common cavity oven could indeed

be vented through the microwave feed

meson, if the system were properly

arranged.

Specifically, he discovered

that by positioning the microwave feed

system below the oven cavity, and

providing an air path from an air inlet

B133

below the cavity through the microwave

feed system (including the waveguide) and

up into the cavity, natural convection

would draw air through that path to the

oven cavity and up through it to result

in sufficient venting of the oven during

both thermal cooking and self-cleaning.

For reasons not really understood, the

waveguide through which convected air

flowed would not be fouled by normal

autoignition pressures that occur during

self-cleaning, even though the waveguide

entry location at the bottom of the oven

cavity would seem to be a place subject

to particularly high contamination.*

Based on Mr. Torrey's familiarity with

the teachings of the prior art as to

ventilating common cavity ovens and as to

the problem of autoignition in self-

cleaning ovens, the fact that waveguide

fouling did not occur in this system came

a

B134

as a complete surprise to him. In

addition, Torrey's new system had the

added benefit that the very same air path

could be used for forced ventilation of

the oven during microwave and combination

cooking by using the blower for the

magnetron to force air through the

waveguide rather than rely on natural

convection.**

B135

REQUEST FOR ADMISSION NO. 23

In Roper's common cavity oven, backflow

from the oven cavity to the waveguide is

not prevented during auto ignition.

khkhkak

RESPONSE

Denied. Such backflow is prevented, so

that fouling does not occur, in normal

self-cleaning even if auto ignition does

occur. Also, such backflow is prevented

so that fouling does not occur, even if

the soil load is heavy. Backflow,

however, may occur under some abnormally

heavy conditions involving extremely

heavy loads such as those used by U.L to

test for fire and explosion hazards.

B136

DEPOSITION TRANSCRIPT OF ROBERT D.

TRIPLETT

Exhibit 265

(Page 58, line 14 to page 59,

line 16)

Q. Well, in your discussions with

those who were working on the design of

the common cavity oven, did you discuss

the position of the microwave feed?

A. Yes.

Q. And what was the substance of

those discussions?

A. As far as I can recall, all of

those discussions for product

considerations or proposals were bottom

fed.

Q. Were any reasons given to you

for feeding from the bottom?

A. The one I recall of real merit

was most eco-omical approach to the

design.

B137

Q. And it was the most convenient

place to position it?

A. The most economical.

Q. Economical in what respect?

A. Manufacturing costs.

Q. Is that because there was

Space beneath the oven cavity to position

the feed?

A. Yes.

Q. And st would be less

economical, for example, to position it

in back of the oven or at the top?

A. Yes.

Q. In terms of manufacturing

costs?

A. Yes.

B138

TRIAL TRANSCRIPT

WITNESS: TORREY

(Vol. 2, page 34,

19)

lines 17 -

The microwave feature by

itself is not Significantly

different than what one might

find in the prior microwave art.

B139

TRIAL TRANSCRIPT

WITNESS: TORREY

(Vol. 5, page 152, line 21 to page

153, line 4)

Q When operating in the microwave

mode, your air flow system does

not operate any differently, for

example, than the RR4 oven when

operating in the microwave mode,

does it?

A Physically it operates no

differently. The air entry point

is at the bottom of the oven and

one is at the top.

Q And that's the only difference,

isn't it?

A Correct.

B140

TRIAL TRANSCRIPT

WITNESS: TORREY

(Vol. 1, page 142, line 18 to

page 143, line 8)

Now, let's say you shut the

blower off and if Boehm is

suggesting you would get fouling,

what is so bad about fouling?

Fouling in the pyrolytic mode can

be severe. Boehm is concerned

about it just with cooking

vapors, and in the self-cleaning

modes you are dealing with not

just grease but grease which can

be raised to a high temperature

and ignite within the waveguide,

Or you are dealing with excess

air and explosions that are

forcing materials back in there,

such as carbon that can be

generated during the cleaning

B141

process, and I have sort of

indicated what those sorts of

problems can do. They can be

very, very detrimental to the

waveguide feed, much more so I

believe than Boehm, and damage

the components within the oven,

as well as the magnetron and

waveguide.

B142

TRIAL TRANSCRIPT

WITNESS: HURKO

(Vol. 8, page 33, line 2 to

page 34, line 18)

rr YO

r Oo YF VOD

What is autoignition?

Well, in the oven during this

process, sometimes there is a

right combination of air,

pressure, and combustion products

and temperature. And this

movement flows out the ignition.

So it ignites this product. It's

just like to say in motor, in the

motor in the car.

You say in a car ignition?

Yes, in cylinder.

What causes ignition in the car?

Well, the spark.

The spark?

But, say, the process is similar.

Now following

ignition is sudden temperature

B143

rise and pressure rise. And you

may qualify this like explosion.

In other words, the autoignition

is the beginning of the process?

Yes.

When it ignites?

When it starts.

And followed by an increase in

pressure?

Yes.

And you term that an explosion?

Yes.

B144

TRIAL TRANSCRIPT

WITNESS: TORREY

(Vol. 4, page 52, line 9 to

page 53, line 25)

Q Let's say as of January 1, 1974,

were there waveguide dump systems

which had waveguides which

allowed microwave energy into an

oven cavity through an opening in

the waveguide directly into the

cavity and through which air also

passed?

A Yes.

Q And whose systems were those, who

manufactured product containing

that feature?

A Amana employed that method.

Q And do you know, can you name any

specific products of Amana which

employed that method as of that

time?

A You mean by model number?

tenant iile

B145

Q Yes, or any other designation by

which we could perhaps recognize

it, name it.

A I believe their RR4, for example,

but that's only because I heard

the number. I have a hard enough

time with our own model numbers.

Q You are familiar with the RR4, in

fact, aren't you?

A I was at one time.

Q And in fact, you were familiar

with it at least as early as

1973, weren't you?

A I can't recall the date.

Q You were familiar with it prior

to the time that you began

development work on common cavity

microwave ovens, weren't you?

A I believe that to be the case,

yes.

iinet

B146

Q Ane you had examined in detail an

RR4 oven, hadn't you?

A I wouldn't say Y examined it in

detail, but I knew how it

operated, yes.

Q And in fact, you had one at the

Purdue Research Center didn't

you?

A ' I suspect so. I don't know for

sure, but I expect that we did at

one time.

Q And it was there for the purpose

of seeing how it operated, wasn't

it?

A We had that, as well as other

competitor products that we would

Operate from a cooking’ mode

standpoint and examine them from

that aspect.

Q And would normally also

disassemble them to examine their

al

B147

construction and internal

operations?

A Yes.

B148

TRIAL TRANSCRIPT

ROPER OPENING STATEMENT

(Vol. 1, page 11, line 3 to

page 12, line 6)

Now, it was conventional

thinking, up to the time that Torrey came

along, that you could not have an open

waveguide; that is, with its open end

into the oven, if the oven were going to

have a self-cleaning feature, because it

was known universally, that during the

self-cleaning cycle, the products of the

pyrolytic treatment would back up into

the waveguide, and there would be a

build-up possibly of carbon and other

materials which would interfere with the

passage of the microwaves.

Indeed, during the self-

cleaning pyrolysis cycle, sometimes with

a heavy load of soil, flames will appear

inside the oven, and that is one of the

a

B149

reasons, of course, that in all these

ovens with self-cleaning features, there

is an interlock on the door so the

housewife cannot open the door when sel f-

Cleaning is in Progress, because if the

door will open, there might be an

explosion from the gases inside.

Now, that phenomenon of

possible burning or possible flaming

during part of the cycle, which doesn't

always occur -- sometimes it does,

Sometimes it doesn't -- is called auto

ignition. That is another term which

will be used by the witnesses. If there

is autoignition, it is believed that

Substantial build-up of pressure within

the cavity occurs, and that was thought

would force the products of combustion

down into the waveguides; therefore, it

was felt you could not have an open

waveguide...

B150

TRIAL TRANSCRIPT

ROPER COUNSEL COLLOQUY WITH

COURT

(Vol. 1, page 66, line Zl to

page 67, line 11)

The other thing is that

perhaps I didn't make it clear that if

you have a steam problem in a combination

microwave oven and you solve it by

letting air in through the waveguide, the

industry thought the waveguide would be

in jeopardy of being contaminated and

Said: Don't do it. Whereas, if you

solve the waveguide noncontamination

problem by closing it up, you can't

ventilate. So that is the dilemma that

Mr. Torrey solved.

THE COURT: I understand

that is the initial issue, that is, was

there a problem, and, if there was no

problem, it is going to make this rather

easy. It might make it rather easy if it

B151

is a problem. I want to get in on the

issue that I can most easily understand

and deal with at the beginning. That is

the issue: Was there a problem?

B152

TRIAL TRANSCRIPT

WITNESS: TORREY

(Vol. 1, page 140, lines 2 -

18)

How would self-cleaning cause this

contaminating material to go into

the waveguide if you shut the blower

off? At least, how was that thought

to occur?

The pressures develop due to

autoignition.

What is autoignition?

Autoignition is essentially a

combusion (sic) producing very high

pressures, unusually high, sometimes

caused by burning within the oven.

The burning can produce gases and

smoke. And the smoke aspect also

has a pressure head to it. And

either one of these two can force

vapors back into the oven during the

B153

-- or back into the waveguide system

in this case, during the cleaning

process.

Which is more safer, the problem of

convection flow during cooking back

into the waveguide or the self-

cleaning backflow problem?

The problem with self-cleaning ovens

is far worse.

B154

TRIAL TRANSCRIPT

WITNESS: TORREY

(Vol. 2, page 69, lines 3 -

18)

What does your patent teach with

respect to autoignition, if it's not

teaching eliminating autoignition?

It teaches a way of living with that

such that you essentially restrict

Or -- I guess I'm grasping for the

word -- reduce the pressure. I

don't want to get too technical. To

backflow or flow that would go into

the waveguide and create fouling.

So there is a

pressure restriction within the

system that we teach to prevent

autoignition from fouling the

waveguide, providing that

autoignition is within the normal

levels of consumer soils.

B155

Is this a fair characterization of

what you are saying, what is on

Column 1 of your patent at Line 42?

Yes, it is more specific, obviously,

to provide a ventilation system

which is capable of reducing

autoignition pressure of the --

B156

TRIAL TRANSCRIPT

WITNESS: TORREY

(Vol. 1, page 120, lines l -

11)

Which of the two, can you say which

of the two is more important, the

cooking vapors or self-cleaning

vapors as far as keeping them out?

Definitely self-cleaning vapors.

And why is that?

Because they have far more hazards

associated with the self-cleaning

vapors as I indicated earlier,

problems of grease and fire hazards

we much more significant there.

Products of decomposing

products, such as carbon, is more

Significant in that aspect and the

problem of redeposition would be far

worse.

B157

TRIAL TRANSCRIPT

WITNESS: TORREY

(Vol. 1, page 128, lines 13 -

20)

So what is the real difference as

far as heat between the self-

cleaning and normal cooking?

Well, the temperature is basically

the only difference. The problem

really deals with the food deposits

that are left in the oven cavity or

deposited on the oven cavity and

decomposed during the process, and

this is a far more’ significant

problem from the fouling standpoint

than is normal cooking vapor.

B158

TRIAL TRANSCRIPT

WITNESS: TORREY

(Vol. 2, page 4, lines 14 -

20)

Well, why don't you just turn the

blower off in a self-cleaning oven?

The self-cleaning oven would not

function with the blower’ being

turned off from the standpoint of

the reactions that take place are

very high pressure and it would back

up into the waveguide if it's open

to the oven.

B159

TRIAL TRANSCRIPT

ROPER COUNSEL COLLOQUY WITH

COURT

(Vol. 1, page 66, line 21 to

page 67, line 4)

The other thing is that

perhaps I didn't make it clear that if

you have a steam problem in a combination

microwave oven and you solve it by

letting air in through the waveguide, the

industry thought the waveguide would be

in jeopardy of being contaminated and

said: Don't do it. Whereas, if you

solve the waveguide noncontamination

problem by closing it up, ycu can't

ventilate. So that is the dilemma that

Mr. Torrey solved.

B160

TRIAL TRANSCRIPT

WITNESS: TORREY

(Vol. 1, page 142, line 13 to

page 143, line 8)

Does this present a dilemma, if you

follow the teachings of the Boehm

and French patents?

It definitely presents a dilemma if

we follow the teachings of this

compared to the self-cleaning oven

teachings before and the self-

cleaning oven needs.

Now, let's say you shut the blower

off and if Boehm is suggesting you

would get fouling, what is so bad

about fouling?

Fouling in the pyrolytic mode can be

severe. Boehm is concerned about it

just with cooking vapors, and in the

self-cleaning modes you are dealing

with not just grease but grease

Bl61

which can be raised to a high

temperature and ignite within the

waveguide, or you are dealing with

excess air and explosions that are

forcing materials back in there,

such as carbon that can be generated

during the cleaning process, and I

have sort of indicated what those

sorts of problems can do. They can

be very, very detrimental to the

waveguide feed, much more _ so I

believe than Boehm, and damage the

components within the oven, as well

as the magnetron and waveguide.

B1l62

TRIAL TRANSCRIPT

WITNESS: TORREY

(Vol. 2, page 5, line 13 to

page 8, line 6)

What was your’ solution to- the

problem? What was your invention?

My invention was, basically, to

locate the feed system at the oven

bottom such that when you opened the

air inlet and brought convective air

in through the waveguide and

expelled that air out through the

normal vent system, the catalytic

vent system, in a manner that did

not foul the waveguide.

I could expand on this by

indicating that once that discovery

was made, we actually could have

convected air flow through the oven

that we could apply the blower and

force air through the waveguide and

B163

expell steam from the oven. This

solved essentially all three

problems that we were dealing with.

So how did it solve all three

problems?

It solved the problems of limiting

‘the amount of air through the

waveguide and properly expelling

that out the catalytic vents such

that smoke and reactions that went

on in the oven were contained within

the oven and the by-products of

self-cleaning were expelled from the

vent without any other associated

problems of smoke or flame.

Was that because the blower was on

or off?

That's because the blower was off.

Okay.

The steaming problem was_ solved

Strictly by the forced air flow with

B164

the blower on to remove oven vapor

through that same microwave feed

passage and vent system to expell

the vent, or, the steam in the

manner that wouldn't be a consumer

hazard.

The fouling of the

waveguide, I believe, basically, was

solved by the location of the

waveguide and the fact that we had

constricted air flow through that in

an inlet well below the oven bottom,

that the discovery indicated did not

cause waveguide fouling.

Would placement of the feed at the

bottom have been likely to have been

better with respect to preventing

fouling?

It would appear ,based on the

teachings and my own knowledge of

the product, the location on the

B165

oven bottom perhaps would be worse

than any other place in the oven due

to the fact that most of the soil

appears or is accumulated on the

oven bottom.

So aS opposed to somewhere else in

the oven, you're saying what about

putting the feed at the bottom and

making it open?

I'm saying, basically, that goes

counter to all of the teachings that

I saw and everything that I thought

about how to deal with these

problems. I did realize that if the

opening were at a higher location

that there would be a strong

tendency by natural convection to

force both cooking vapors and the

by-products of combustion into that

waveguide system from a natural

convection standpoint, or force.

B166

With respect to the problem in self-

cleaning that you mentioned

yesterday of autoignition, what

about the placement at the bottom of

the waveguide opening, would that

likely cure it?

It did not appear to me from a

thought process standpoint prior to

trying it that it would cure it, but

apparently it did resist the

pressures involved, such that it

didn't foul.

What was your reaction when you saw

it did resist the pressures of

fouling?

I was quite surprised and felt we

had finally a solution to all three

problems.

B167

TRIAL TRANSCRIPT

WITNESS: TORREY

(Vol. 2, page 74, lines 9 -20)

How can that be? How can this tiny

pressure coming through the

waveguide resist this big

autoignition pressure?

Well, I know autoignition exists,

and the only theory that I've ever

been able to deal with or resolve

the problem deals with a fact that

in the normal use, the energy

content is so small that perhaps

this pressure may not be_- great

enough to overcome it, but it still

does not seem reasonable to me, thus

I'm in a quandary. All I know is we

do not foul or waveguide because

there is resistence in the system to

autoignition pressures.

B168

TRIAL TRANSCRIPT

WITNESS: TORREY

(Vol. 2, page 75, lines 4 -

11)

Are you saying a combination at the

bottom plus the convection?

The bottom of the oven plus the

convection, locations, and the way

it's arranged. I'm not- really

saying convection, probably just the

fact that it's limiting air entry

and may provide some kind of a

pressure chamber which prevents it

from backing up into that waveguide.

B169

TRIAL TRANSCRIPT

WITNESS: TORREY

(Vol. 2, page 83, line 22 to

page 84, line 25)

THE WITNESS: Pardon me?

THE COURT: You can't measure

the air coming through?

THE WITNESS: We measure the

flow rate, the pressures are very

difficult to measure, and so you can only

deal with them by equations or theory.

In other words, you can measure

how much air is flowing in terms of CFM,

but it's extremely difficult to measure

the convected air flow in this oven

because it is so small. It is on the

Order of inches of water. We measure

blower pressures involved very

accurately. In other words, the air

pressure the blower generates.

B170

THE COURT: You can measure

that, but you can't measure the naturally

convected air through that?

THE WITNESS: It is very

difficult to measure. It is a case of

trying to take a -- I don't know if we

ever really tried to absolutely measure

it -- but it is essentially a very, very

low number, just based on equation and

theory relative to what the pressures and

temperatures are.

THE COURT: But somehow there is

a balance in there? Somehow, however it

happened, you have managed or this system

manages to allow enough air to go through

so that it resists air coming down and

fouling the waveguide, correct? It

resists a backup?

THE WITNESS: In normal cooking.

THE COURT: And self-cleaning?

B171

THE WITNESS: Normal, after

normal food soil and going through a

self-cleaning process, I believe there is

a restriction that prevents that which

means that whatever the backkup pressures

are, they are apparently either

diminished so quickly or not large enough

that still the convection system works.

THE COURT: You say in the self-

cleaning mode, there was pressure in

every --

THE WITNESS: In every

direction.

THE COURT: In every direction.

So, therefore, there would be

pressure down into the waveguide?

THE WITNESS: Yes.

THE COURT: Somehow that

pressure becomes resisted or dissipated?

THE WITNESS: Correct.

B172

THE COURT: And the only

explanation is from the convected air up

through the waveguide, there is no other

explanation for that, is there?

THE WITNESS: I don't believe

there is any other real good explanation.

At the same time, it surprises me.

B173

TRIAL TRANSCRIPT

WITNESS: TORREY

(Vol. 2, page 85, lines 1 -

17)

THE COURT: Yes, I understand

it. You may not know how it works, and

that many not make any difference; but

something is happening to resist the

downward pressure into the waveguide. At

the same time, if I understand you, this

naturally convected air is not so large

as to add to the pressures already in the

cavity to provide more -- to provide an

explosion due to the greater increases in

air.

You see what I mean? It

prevents autoignition. It doesn't

Prevent it, it doesn't help it.

THE WITNESS: It doesn't prevent

it, but there is no dangerous condition

caused when it occurs.

B174

THE COURT: So it is so low it

can't assist in the- production of

autoignition and, yet, it is high enough

to resist the effect of that autoignition

downward into the guide?

THE WITNESS: I could buy that.

B175

TRIAL TRANSCRIPT

WITNESS: TORREY

(Vol. 5, page 56, line 13 to

page 57, line 16)

[Q] What does Newton's law tell you

under those conditions? When you

have two pressures diametrically

opposed to each other, one of which

is up to 100 times as great as the

other, what does Newton's law tell

you about the direction in which

matter will go?

4X One would expect the greater

pressure to dominate, the motion

would go in the direction of the

greater pressure.

Q in other words, you would expect the

materials flow right into~ that

waveguide from the oven through the

aperture A?

A This is what I expected and was

concerned about from the very

B176

beginning of how to treat convected

flow rate in a common-cavity

pyrolytic oven.

This is a fundamental exception to

Newton's laws that you have

discovered, isn't it?

I don't consider it a fundamental

exception.

One unit of pressure can resist 100

units of pressure, that's

fundamental, isn't it? This is the

first time there has been such an

extraordinary exception in

nonrelativistic physics?

You are dealing with fluidic theory,

or whatever theory you want to, I am

just saying that we have a system

that apparently --or does -- resist

fouling, redeposition in spite of

all that we have been discussing

here. And I don't know how it

B177

works. I have said I don't know how

it works.

All I know is it works.

B178

TRIAL TRANSCRIPT

WITNESS: TORREY

(Vol. 5, page 58, lines 5-20)

[Q]

Have you written any papers to

teach the scientific community or

engineering community about this

very fundamental exception to the

basic laws of physics that you

have discovered?

Obviously not. I have a patent,

and that is the only thing that

has been written that I know of.

Have you tried to explore it?

Have you tried to test it?

No.

You haven't done any

measurements, have you, which

would give any substance or

credence to your theory that a

pressure of one-tenth of a pound

per square inch can_ somehow,

B179

mysteriously, magically, outweigh

a pressure of 100 pounds -- 14 to

100 pounds per square inch, have

you?

No.

B180

TRIAL TRANSCRIPT

WITNESS: TORREY

(Vol. 3, page 105, lines l1 -

22)

Cross Examination by Mr. O'Donnell

Mr. Torrey, I take it that you now

admit that the air vent system that

you say you have developed now does

not prevent all backflow down

through the waveguide from the oven

cavity, is that correct? We don't

have any more question about that

now, do we?

I have no question about the fact

thatit (sic) does prevent. It's

just a case of what the conditions

are that it prevents.

Does it prevent all backflow into

that waveguide?

B181

Obviously it does not prevent all

backflow from a standpoint of UL

conditions.

Does it prevent all backflow into

that waveguide, Mr. Torrey?

As far as I am concerned from the

interpretation of the patent, it

takes care of all backflow in the

waveguide.

Is backflow physically prevented

into that waveguide?

I believe there is resistance to the

autoignition in the reaction to take

place in the oven.

B182

TRIAL TRANSCRIPT

ROPER OPENING STATEMENT

(Vol. 1, page 11, lines 3 =

12)

Now, it was conventional

thinking, up to the time that Torrey came

along, that you could not have an open

waveguide; that is, with its open end

into the oven, if the oven were going to

have a self-cleaning feature, because it

was known universally, that during the

self-cleaning cycle, the products of the

pyrolytic treatment would back up into

the waveguide, and there would be build-

up possibly of carbon and other materials

which would interfere with the passage of

the microwaves.

B183

TRIAL TRANSCRIPT

ROPER OPENING STATEMENT

(Vol. 1, page 11, line 22 to

page 12, line 6)

Now, that phenomenon of

possible burning or possible flaming

during part of the cycle, which doesn't

alwayS occur -- sometimes it does,

sometimes it doesn't -- is called auto

ignition. That is another term which

will be used by the witnesses. If there

is autoignition, it is believed that

substantial build-up of pressure within

the cavity occurs, and that was thought

would force the products of combustion

down into the waveguides; therefore, it

was felt you could not have an open

waveguide...

B184

TRIAL TRANSCRIPT

WITNESS: TORREY

(Vol. 5, page 2, line 1 to

page 5, line 23)

SUMNER H. TORREY, Resumed

CROSS-EXAMINATION BY MR. O'DONNELL,

Continued

Q Mr. Torrey, will you please tell us

what you mean by backflow?

A By backflow I mean the products

within the oven cavity such as air,

vapors, and in the case of self-

cleaning, products of degradation

can be, shall we say, pushed back

into an air entry system into that

cavity.

Q How about a waveguide?

Now, let's assume for the

moment, let's accept your statement

at face value for some unexplained

ee

B185

reason the air and vapor which we

will just call generically vapor

including air and all the other

products that may be in the oven,

grease, et cetera -- let's assume

for some reason the vapor doesn't

flow into the waveguide as you tell

us, but if it did, would that be

backflow?

If vapor did come into the

the waveguide from the oven, would

you call that backflow?

If you would define "vapors" as any

contaminants in the oven whatever,

yes.

Air, grease --

I would say collectively, not

individually.

Okay.

So we'll understand vapors

B186

to include whatever is in the oven,

not referring to any separate part

but whatever is in the oven at any

particular time, is that fair

enough?

A Well, self-clean, in the self-

cleaning mode dominantly.

Q Thermal mode, also, vapors are in

the thermal mode?

A Correct.

Q And there are present vapors in the

self-cleaning mode?

A Yes.

Q If any of those vapors were to flow

back into the waveguide, would you

say that is backflow?

A Yes.

Again, I didn't hear the word

"particulates," but if that's

included, yes.

|

B187

So if anything comes from the oven

into the waveguide, you would

consider that backflow, is that

correct?

Not “anything,” but anything that's

a contaminant.

What would you consider coming back

into the waveguide that would not be

backflow?

I would see nothing harmful about

air, nothing harmful about vapors

that don't cause fouling.

In your definition of the word, the

term "backflow," you exclude

anything that might cause fouling,

is that correct?

I'm sorry, includes only

that which could cause fouling and

excludes everything else?

I believe that's the essence of the

invention is to prevent fouling.

B188

Q Now, is there some mechanism which

separates the harmful constituents,

that is those constituents which

would lead to fouling, from those

constituents which would not lead to

fouling?

Is that another magic

feature of this invention?

A When you are talking about

"mechanism," I really don't know how

the invention works, and, therefore,

I have a difficult time answering

that specific question.

Q Do you believe that there is

anything in the air flow system that

you say you developed that separates

out from entry into the waveguide

constituents which would cause

fouling from constituents which

would not cause fouling?

ef

B189

I believe there is a resistance, but

I can't define the mechanism that

does any separation, no.

There is no differential resistance

to the various constituents, is

there?

There is nothing you have

incorporated that would cause you

(sic) waveguide to resist entry of

one product more than another, isn't

that correct?

That's correct.

So that if anything from the oven

comes into the waveguide, you have a

backflow into the waveguide, don't

you?

Would you repeat the question,

please?

If anything from the oven comes into

the waveguide, you have a backflow,

don't you?

B190

In that condition, yes.

Whether Or not that backflow

contains vapors that would cause

fouling, it is a backflow, isn't it?

Yes.

And there is-~ nothing in your

invention that prevents that

backflow, is there?

I'm not sure that there isn't

anything in the invention. The fact

that we do not get vapors indicates

there is some mechanism in there --

or fouling of the waveguide, I

should say -- indicates some

mechanism exists that prevents that.

Do you know of any such mechanism?

Can you identify any such mechanism?

I theorized it could be the

convected flow as a resisting means,

I have also indicated it could be

the fact that there is some vertical

B191

shielding in the inside of the oven

cavity relative to any vertical

direction of backflow impacting on

the bearing cover.