# Respondents Brief — Hazeltine Research, Inc. v. Brenner

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Respondents Brief
- **Published:** January 1, 1965
- **Citation:** 382 U.S. 252

## Text

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Ricodecsiisi and s 8
“Tl. Prior to the "gee Patent Act, sagiaaaig
patonts were unquestionably relevant refer- _

ences in determining alate subsequent

table advance

inventions disclosed a

II, The Patent Act of 1952 did not limit the use
of copenditig patents as Teferences relevant.
to patentability

. CITATIONS
a i sender Milburn Co. v. "Davis Bournoncile Co.,
"7 « 1270 U.S. 390
a 9, 11, 12, 13, 14, 16, 17, 19, 20, 21, 22, 23, 27; 2, ‘a9
Deemer Products Corporation v. Universal Slide .
Fastener Co., 172 F. 2d 150

oe pegetaaeey iF. 2d 227.
E Denaro v. Maryland Baking Co., 50 F. 24/1074
E Devola Corp.v. Haseltine Corp., 313 US. 259
14, 15, 20, 21, 23,27

Gregg, Application of, 244 F. 24 316
: Harry, Application of, 333 F. 2d 920
. 5

Cases—Continued
Helene Curtis Industries v. Sales Affiliates, 233 F. 2d

Hotchkiss v. Greenwood, 11 How, 248 6, 9, 15, 16, 22, 23
yon v. Dempster Mill Mig. Co., 275 F. 2d

fake iene at 2d 834
L. Sonneborn Sons, Inc. v. Coe, 104 F. 2d 230

: Minnesota Mining & Myo. Co. v. Coe, 100 F. 2d 429...
Old Town Ribbon & Carbon Co. v. Columbia Ribbon &
Carbon Mfg. Co., 159 F. 2d 379--
Ottinger v. Ferro Stamping & Mfg. Co., 59 F. 2d 640-_-.
Permo, Ine. v. Hudson-Ross, Inc., 179 F. 2d 386
Radio Corporation.of America, et al. v. Radio Engineer-
ing Laboratories, Inc., 293 U.S. 1_...-------------
Seid, Application of, 161 F, 2d 229
Sewall v. Jones, 91 U.S. 171
Sherwin Williams Co. v. Marzali, 190 F. 2d 606
Spencer, In re, 47 F. 2d 806
United Specialties Co. v. Industrial Wire Clo'h Products
Corp., 186 F. 2d 426
Walker, In re, 99 F. 2d 976
Weatherhead v. Drillmaster Supply Co., 227 F. 2d 98_- 26
Western States Mach. Co. v. S. S. Hepworth Co., 147
F. 2d 345, certiorari denied, 325 U.S. 873 16, 17,21
Williams, In re, 62 F. 2d 86
Youker, In re, 77 F. 2d 624
Statute:
Patent Act of 1952:
35 U.S.C. 101
35 USC.
35 U.S.C.
35 US.C.
35 U.S.C.
35 U.S.C.

35 U.S.C.
35 U.S.C.
35 U.S.C.
Miscellaneous:
37 C.F.R. 1.131
Federico, Commentary on the New Patent Act, 35
RE ea ie 24, 28.

Miscellaneous—Continued
Hearings Before Subcommittee No. 3 of the House
Committee on the Judiciary, 82d Cong., Ist Sess., Page

ee 25
‘HLR. 3760, 82d Cong., Ist Sess____......--.- 2-2 - 24
H. Rep. No. 1923, 82d Cong., 2d Sess., p. 7 (1952)__. 24,28
Reviser’s Note to 35 U.S.C. 103__._-....._._______- 23

S. Rep. No. 1979, 82d Cong., 2d Sess., p. 6 (1952)... 24, 28
Senate Subcommittee on Patents, Trademarks and
Copyrights, Efforts to Establish a Statutory Standard
of Invention, Study No. 7, 85th Cong., Ist Sess.,

jn ie t Sure ono aed stu

jae em al

HazELTINE ReEseaRcH, INC., ET AL., PETITIONERS
v. xr t6
COMMISSIONER OF PATENTS:

ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE DISTRICT OF COLUM3IA CIRCUIT

BRIEF FOR THE COMMISSIONER OF PATENTS

OPINIONS BELOW ©

The opinion of the district court (R. 69-74) is re-
ported at 226 F'. Supp. 459. The opinion of the court
of appeals (R. 82-83) is reported at 340 F. 2d 786.

JURISDICTION

The judgment of the court of appeals was entered
on November 25, 1964 (R. 83). The petition for a
writ of certiorari was filed on February 18, 1965 and
granted on April 5, 1965 (R. 85). The jurisdiction
of this Court is invoked under 28 U.S.C. 1254(1).

QUESTION PRESENTED

. Whether a ‘“‘copending patent’’—+.¢., a patent ap-
plied for before the invention and application in issue

but granted after the application in issue—is a relevant
(1)

2

_Yeference in determining whether there has been a
patentable advance in the art under Section 103 of the
died | shdwors Invotvep! 9
Title 35 of the, United States. QGode provides in

pertinent part:

§ 101: Inventions patentable.

_ Whoever invents or discovers any new and
useful process, machine, manufacture, or com-
position of matter, or any new and useful im-
provement thereof, may obtain a patent there-

for, subject to the conditions and requirements

of this title.

§ 102: Conditions for patentability ; novelty and
loss of right to patent.

A person shall be entitled to a patent unless—
(a) the invention was known or used by oth-

ers in this country, or patented or described in
a printed, publication in this or a foreign zoun-
try, before the invention thereof by the appli-
cant for patent, or

* * * * *

(e) the invention was described in a patent
granted on an application for patent by an-
other filed in the United States before the in-
vention thereof by the applicant for patent * * *.
§ 103: Conditions for patentability ; non-obvious

subject. matter.

A patent may not be obtained though the in-
vention 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 ard the prior art are such that
the subject matter as a whole would have been
obvious at the time the invention was made to
a person having ordinary skill in the art to
which said subject, matter pertains. Patent-
ability shall not be negatived by the manner in
which the invention was made, ,
STATEMENT
On December 23, 1957, petitioner Robert Regis filed
an application for a patent on a microwave switch
(R. 9-15)." The application was denied by the patent
examiner on June 24, 1959, on the ground that the
elaims set forth therein were ‘‘unpatentable over’’ a
patent (No, 2,822,526) issued to Wallace in 1958, “‘in
view of” a 1949 patent issued to Carlson (No. 2,491,-
644) (R. 23). It is conceded that if Regis’ applica-
tion is judged against the Wallace and Carlson pat-
ents, it. does not disclose a patentable advance within
Section 103 of the Act (35 U.S.C. 103) (precluding
patents on developments “‘obvious’”’ in light of the
“prior art” ‘‘to a person having ordinary skill in the
art”); the question presented is whether the Wallace
patent was, in fact, properly employed as a refer-
ence relevant to the patentability of Regis’ claims.
The Carlson patent had been issued on December 20,
1949, well before Regis’ application and invention,
and was thus indisputably part of the art in light
of which Regis’ claim to a patent was to be judged.
The Wallace patent, however, was a “copending pat-
\? Three days before Regis filed his application, he assigned
his entire interest in the invention and the application to
petitioner Hazeltine Research, Inc. (R. 47).

4

ent” with Regis; that is, although Wallace had ap-
plied. for a patent prior to the Regis mvention and
application, Wallace’s patent | ‘was not issued until
after the Regis’ application was filed.” ‘Petitioners
dtgued before the Patent Office that such a “co-
pending patent” was an improper reference to deter-
mine whether Regis’ invention was a patentable
advance in the art under Section 103. (R. 22, 26-32),
The examiner rejected this contention (R. 23) and his
decision was upheld by the Board of Appeals of the
Paterit Office (R. 42-45).

Petitioners then instituted the sstehieht action in the
district court pursuant to Section 145 of the Act (35
U.S.C. 145), seeking to compel the Commissioner of
Patents to issue a patent on the invention described
in Regis’ application (R: 1-4). The district court
dismissed petitioners’ complaint (R. 75). After not-
ing petitioners’ concession that, if the Wallace patent
was a relevant reference, the combination of Wallace

* The Wallace application was filed on March 24, 1954. The
Regis application was filed on December 23, 1957. A patent
was issued on the Wallace application on February 4, 1958
(R. 34).

With regard to. Regis’ invention date, his complaint (R. 2)
alleged merely that it had been “[p]rior to December 23,
1957” (the date of his application). However, the Exam-
iner’s Answer before the Patent Office Board of Appeals
(R.. 35). reveals that: Regis “has not sworn back of either
reference under the provision of Rule 131 [37 C.F.R. 1.131],”
giving an applicant whose claim is rejected upon the basis
of a reference to a domestic patent an opportunity to al-
lege “a completion of the invention in this country before
the filing date of the application on which the domestic patent
issued. * * *” Hence it is assumed throughout (which peti-
tioners do not dispute) that Regis’ alleged invention, as well as
Regis’ application, was made after Wallace’s application.

5

with Carlson would negate the patentability of Regis
under Section 108 (R. 69), the court held that “copend-

ing patents” were ‘‘ineluded in the ‘prior art’, as that
ternn in ws6d ih'35. 0.8.0: 103.” The court based its
decision upon two considerations: (1) prior ‘to the
enactment of the Patent’ Act’ of 1952, a copending
patent would have clearly been a reference relevant
to show that claims were unpatentable for failure to
make a significant advance in the art; (2) the 1952
Act, as shown by its legislative history: did not
change the law in this respect (R. 70-74). The
court of appeals affirmed, per curiam (R. 82-83).

ARGUMENT

Introduction and Summary

The single question raised by petitioners in this case

concerns the use which may be made, in judging the
patentability of an alleged invention under Section
103 of the Patent Act (35 U.S.C. 103), of disclosures
of prior inventions contained in “copending patents.”
A copending patent, for this purpose, is a patent on
a prior invention which was already applied for at
the time of the invention and application in issue, but
which is not isswed until after the filing date of the ap-
plication in issue; a period of time exists, therefore,
when the two applications are ‘‘copending’’ before
the Patent Office and neither has been granted. The
Wallace patent in this case was, for a short time,
such a copending, patent with respect to the Regis
application which is the subject matter of the litiga-
tion. The Wallace application was filed in 1954—

788-679 —_65—_—2

before Regis’ alleged invention.’ The Wallace patent
did, not issue, however, until February, 1958, a little
more than one month, after ‘Regis’ patent applica-
tion, was filed in December, 1957. The two patents
were thus copending for the short period between
Regis’ filing date in December, 1957, and Wallace’s
patent, date in February, 1958,

In. these, circumstances, the Patent Office, the dis-
trict court and the, court of appeals have held that
the patentability of Regis’ alleged invention must
be judged in light of. the disclosures of the copend-
ing; Wallace patent. just as. if Wallace’s patent had
issued before, rather than a few weeks after, Regis’ in-
vention. It is conceded that, so judged, the Regis in-
vention is not patentable, since the differences between
it and the Wallace patent, viewed in light of a 1949
patent issued to Carlson, would have been obvious “to a
person having ordinary skill in the art’’ within the
doctrine of Hotchkiss v. Greenwood, 11 How. 248,
codified in Section 103 of the 1952 Patent Act. Thus
the sole question is whether Wallace was correctly used
as a reference relevant in judging the patentability of
Regis under Section 103. We submit that it was.

The Patent Office and the courts below invoked the
principle—established by this Court’s 1926 decision
in Alexander Milburn Co. v. Davis-Bournonville Co.,
270 U.S. 390—that, for the purpose of judging the

* See footnote 2, supra, p. 4.

7

patentability of a subsequent, inyention, a, copending
and.ultimately issued United States patent dates from
the time when the application was filed rather than
from the date when the patent is ultimately, issued,
The instant case comes within this rule because Wal-
lace invented and: filed before Regis did, although
Wallace’s application was not finally processed until
after Regis had applied for a patent, The principle
of the. Milburn case, originally a judicial gloss npon
the patent statute, has since been explicitly codified
in Section 102(e) of the 1952. Patent Act (35 U.S.C.
102(e)), providing that a patent shall not issue if
‘the invention was described in a patent granted on
an application for patent by another filed in the
United States before the invention thereof by the
applicant for patent.” The 1952 Act thus treats co-
pending patents as equivalent to previously issued
patents, which are relevant references under Section
102(a) (35 U.S.C, 102(a)).

Although petitioners appear to concede the general
validity of the Milburn principle under the 1952
Patent Act, they seek to limit its applicability to a
special class of cases. Specifically, petitioners urge
that while the Milburn rule applies when a copending
patent discloses the exact invention claimed in an ap-
plication on a subsequent “invention,’’ the rule does
not apply when the subsequent application contains

some difference from, or variation upon, the eopend-
ing patent. This is so, petitioners argue, even though
the difference or variation, asin this ease, is an in-
significant one which would not constitute a patentable
advance over the copending patent under Section 103,
Petitioners’ argument rests principally upon the
language used by Congress in 1952 in codifying the rule
precluding patents upon variations obvious “to a per-
son having ordinary skill in the art.”” Congress stated
in Section 103 that the relevant references in judging
such obviousness were those in the “prior art” at the
date of the invention in issue. In petitioners’ view, the
words “prior art’? must be taken to refer only to pat-
ents already issued as described in Section 102(a) of
the Act, and cannot refer to copending patents as
described in Section 102(e). Thus petitioners urge
that copending patents are not “prior art’”’—-and hence
are not relevant—for purposes of judging patentability
under Section 103.
We show below that the limitation which petitioners
would thus place upon the use of copending patents
is novel and wholly unwarranted. While there was—
and there remains—some confusion in the use of the
term “prior art” in judicial opinions in the lower
courts, it was, as we show, entirely clear before
the 1952 Act that disclosures of prior inventions in ¢o-
pending patents (whether or not such patents were
technically labelled ‘‘prior art’’) were competent,

)

under the rule of this Court’s Milbarn. decision, to
negate patentability for lack of a significant advance
in the art under Hotchkiss v. Greenwood. When the
Milburn and Hotchkiss rules were codified in Sections
102(e) and 103 of the 1952 Act there was no suggestion
in either the statute or the legislative history that a
limiting change in this use of copending references was
intended; nor has any casé or commentary since the
1952 Act suggested such a purpose. Thus the result
which obtained before 1952 continues to govern today,
as several decisions of the lower courts have held. In
short, copending patents remain relevant references in
determining whether an application discloses a signifi-
eant advance in the art. Indeed, any other rule would
create a danger of numerous overlapping patents
prejudicial to the public and to legitimate prior
inventors.

Finally, Congress’ use of the term ‘‘prior art’”’ in
Section 103 of the 1952 Act, upon which petitioners
principally rely, is fully consistent with the use of
copending patents in Section 103 cases. Whatever
eonfusion once existed in the lower courts, this Court
had made it clear in 1941 that copending patents “con-
stituted prior art,’’ Detrola Corp. v. Hazeltine Corp.,
313 U.S. 259, 265, and it is reasonable to suppose that
Congress so understood the term when it ineorporated
it in Section 108. Hence “prior art’’ in Section 103
includes copending references as described in Section

10

102(e) as well as’ previously ‘issued ——— as
ngry od in Section woes re ef

I

PRIOR TO THE 1952 PATENT. ACT, COPENDING PATENTS
WERE UNQUESTIONABLY RELEVANT REFERENCES IN DE-
TERMINING ‘WHETHER SUBSEQUENT INVENTIONS DIs-
CLOSED A PATENTABLE ADVANCE IN THE ART
It has always been assumed, as petitioners acknowl-

edge, that an invention is unpatentable if the identical

invention, achieved at a prior time by another inven-
tor, is claimed in a copending patent application. This
result follows not from any special rule as to copend-
ing patents, but from the basic and guiding principle
that priority is determinative. This rule of prior
invention is now codified in Section 102(¢) of the

Patent Act (35 U.S.C. 102(g)), which provides that

an applicant shall not be entitled to a patent if, ‘‘he-

fore the applicant’s invention thereof the invention
was made in this country ‘by another who had not

abandoned, suppressed, or concealed it.’? Section 135

of the Act (35 U.S.C. 135) provides for ‘so-called in-

terference proceedings to determine the factual issue
of priority when a question is raised in that regard.
While the problem of copending identical patents ©
has thus always been solved in principle by: a straight-
forward application of the rule of priority of inven-
tion, the answer was not always so clear in cases

where the copending applications did not claim a

patent on exactly the same invention, but where the

11

disclosures in the ‘prior ¢opending patent neverthe-
less would, if considered to be’ part of the relevant
art, affect the patentability of the’ subsequent’ patent
by showing it to be an insignificant ‘advance’ in the
art. A rule- for ‘such ¢ases—similar to the’ rule
applied to identical claims—was, however, established
by this Court in 1926 in Alexander Milburn Co. v.
Davis-Bournonville Co., 270 U.S. 390. It is this rule,
now codified in Section 102(e) of the Act, Whieh’ dis-
poses of the present case.

In the Milburn case, the copending patentees were
Clifford and Whitford. (Both patents were issued
by the Patent Office, the question of the validity of
Whitford’s patent being raised against his assignee
in infringement proceedings). Clifford, thé - prior
inventor and applicant, “gave a complete and adequate
description of the thing patented to Whitford [the
subsequent inventor and applicant], but * * * did not
claim it.’’ 270 U.S. at 399. Clifford’s disclosures
were not revealed prior to Whitford except in Clifford’s
patent application ; hence they did not come within the
tule now codified in Section 102(a) of the Act (35
U.S.C. 102(a)), that patentability must be judged in
light of disclosures actually patented or published be-
fore the invention in question. In the district court,
Judge Learned Hand held: Whitford’s patent valid
despite the disclosures in Clifford’s prior copending
patent. In Judge Hand’s view, copending applications
were properly used only to show that a prior inventor
was entitled to the patent claimed. Since Clifford did

12

not claim the disclosures later ¢laimed by Whitford
(although, he described, Whitford’s claims) Clifford.
was not a prior inventor competing for the same pat-
ent and his copending disclosures, not otherwise part
of the known art prior.to Whitford’s invention, could
not bear upon the patentability of Whitford. See 297
Fed. 846, 851-854. . The court of appeals affirmed. 1
FY, 2d..227,., OBE sb

In ‘a, unanimous opinion written by Mr. Justice
Holmes, this Court reversed. The Court held that
copending patents were relevant not .only to resolve
competing. claims between inventors claiming the
same invention, but also, to determine whether a sub-
sequent. inventor has made a patentable invention—
regardless of the identity of his claims with those
made by other inventors, The Court reached this
result by considering as immaterial the delays oc-
casioned in the Patent Office between the filing and
issuing date of a patent application. | It observed that
if Clifford’s patent had actually issued before Whit-
ford applied, his disclosures would have been part of
the relevant art by which’ Whitford’s claims would
be judged, even though Clifford did not claim Whit-
ford’s “‘inyention.’’? This being true, “a sound dis-
tinction cannot. be taken. between that case and a pat-
ent applied for before but not granted until after a
* second patent is sought: } The delays of the patent
office ought not to cut down the effect of what has
been done., * * * Clifford had done all that he could
do to make his description public. * * * We see no
reason in the words or policy of the law for allowing

13

Whitford to profit by the delay and make himself
out to be the first inventor when he was not so in fact,
when Clifford had shown knowledge inconsistent with
the allowance of Whitford’s claim * * *’’ (270 US.
at 400-401). Thus, the Court concluded, since the
prior Clifford patent ultimately issued, the question
whether to issue an additional subsequent patent to
Whitford must be decided in light of Clifford.

As stated in the Reviser’s Note accompanying the
incorporation of the Milburn decision into the 1952
Act (as Section 102(e)), Milburn means that, “for the
purpose of anticipating a subsequent inventor,” “a
United States patent disclosing an invention dates
from the date of filing the application.” Under this
standard, the Regis invention in this case was unpat-
entable, since it disclosed no patentable advance over
Wallace, which had been previously filed in the Pat-
ent Office.

Although there is a factual difference between
the Milburn case and the present one, the cases are not
distinguishable. The prior Clifford application (in-
volved in Milburn) did not claim the subject mat-
ter of Whitford’s patent, but did give ‘‘a complete
and adequate description of the thing patented to
Whitford” (270 U.S. at 399). In the imstant case,
Wallace and Carlson did not thus completely describe
the Regis invention; they did, however, make claims, in
light of which Regis’ invention is unpatentable as an
insignificant advance in the art. The theory of the
Milburn case applies equally to both situations. Delays

788-679—65——8

14

within the Patent Office are to be ignored and the Wal-
lace patent deemed prior to Regis’ invention. Regis
is, consequently, unpatentable whether identically dis-
closed by Wallace and Carlson or merely an insignifi-
eant advance over those two patents.

That the Milburn doctrine of copending patents
thus applies to the present case was demonstrated
beyond doubt by the Court’s express holding, in 1941,
in Detrola Corp. v. Hazeltine Corp., 313 U.S. 259,
that “‘eopending patents,” regardless of whether they
partially or completely disclose the claimed subject
matter, constitute a part of the prior art by which
patentability must be judged. The Detrola case in-
volved the alleged infringement of a patent issued to
Wheeler on a radio circuit. In an infringement
proceeding instituted by Hazeltine, Wheeler’s assignee,
this Court stated (313 U.S. at 264-265; emphasis
added) :

The defendant insisted that the [Wheeler]
patent involved no invention in view of the
prior art and cited patents issued before
Wheeler’s date of conception and others issued
before the patent in suit on applications ante-
dating his. date of invention and pending when
his application was. filed [1.e., copending pat-
ents |.

He of these were for transmission systems
and some for receiving systems. Several dis-
closed automatic amplification control. All

_ | constituted prior art. [Footnote citing Alez-

(ander Milburn Co. v. Davis-Bournonville Co.,
270 U.S. 390.]

15

Indisputably, the copending patents referred to in
Detrola were of the type involved in the instant case,
i.e, patents not identical with the subsequent inven-
tion, but in light of which that invention would have
been obvious to one skilled in the art within the doc-
trine of Hotchkiss v. Greenwood, supra, and Section
103 of the Act. For, after analyzing in detail the re-
lationship between Wheeler’s patent and the prior
art cited against Wheeler, including copending pat-
ents, the Court coneluded, with special emphasis upon
the copending elements in the prior art, that (313 U.S.
at 269; emphasis added) :

Wheeler accomplished an old result by a com-
bination of means which, singly or in similar
combination, were disclosed by the prior art
and that, xotwithstanding the fact he was
ignorant of the pending applications which an-
tedated his claimed date of invention and even-
tuated into patents, he was not tn fact the first
inventor, since his advance over the prior art,
if any, required only the exercise of the skill of
the art.*

* Petitioners contend that the question whether copending
patents which partially disclose the claimed subject matter
constitute prior art was neither presented to, nor decided by the
Court, in Detrola (Pet. Br., pp. 17-18). While the briefs filed
with the Court did not specifically raise the question, it is never-
theless clear that the issue was raised by the facts of the case
and: that the Court explicitly passed on this issue in considering
copending patents revealing only partial elements of Wheeler’s
“invention.” Moreover, shortly after Detrola, in Cuno Engi-
neering Corp. v. Automatic Devices Corp., 314 U.S. 84, 89, the
Court again made explicit use of a copending patent which, it
said, “differed from Mead [the application in question] in
several respects.”

16

The same result was also reached in lower court
decisions prior to 1952. In the footnote, we list four
teen cases which we have found in the courts of ap:
peals and the United States Court of Customs and
Patent Appeals, decided after the Milburn case, which
clearly used one or more copending patents to deter-
mine patentability in situations where the individual
copending patents were recognized as not completely
disclosing the subsequent invention, but as only par-
tially disclosing it so as to negate patentability under
the rule of Hotchkiss v. Greenwood.’

The language of many of these cases reads directly
upon the present case. Indeed, in Western States
Mach. Co. vy. S. 8S. Hepworth Co., supra, at 348-349
Judge Learned Hand addressed himself directly to—

5 Sherwin Williams Co. vy. Marzall, 190 F. 2d 606 (C.A.D.C.) ;
United Specialties Co. v. Industrial Wire Cloth Products Corp.,
186 F. 2d 426 (C.A. 6); Permo, Inc. v. Hudson-Ross, Inc., 179
FP. 2d 386 (C.A. 7); Conmar Products Corporation v. Univer-
sal Slide Fastener Co., 172 F. 2d 150 (C.A. 2); Application of
Seid, 161 F. 2d 229 (C.C.P.A.); Western States Mach. Co. v.
S. S. Hepworth Co., 147 F. 2d 345, 348-349 (C.A, 2), certiorari
denied, 825 U.S. 873; Dyer v. Coe, 125 F. 2d 192 (C.A.D.C.);
L. Sonneborn Sons, Inc. vy. Coe, 104 F. 2d 230 (C.A.D.C.);
Minnesota Mining & Mfg. Co. v. Coe, 100 F. 2d 429, 430-431
(C.A.D.C.); In ve Walker, 99 F. 2d 976 (C.C.P.A.); In re
Youker, 77 F. 2d 624 (C.C.P.A.); Zn re Williams, 62 F. 2d 86
(C.C.P.A.) ; Ottinger v. Ferro Stamping & Mfg. Co., 59 F. 2d
640 (C.A. 6); Denaro v. Maryland Baking Co., 50 F. 2d 1074
(C.A. 4) (adopting the opinion of the district court reported
at 40 F. 2d 5138 (D. Md.)). See also Old Town Ribbon &
Carbon Co. v. Columbia Ribbon & Carbon Mfg. Co., 159 F. 2d
379 (C.A. 2) where it is not clear from the opinion whether
or not the disclosures in the copending patent were identical or
partially anticipatory, but where the opinion clearly shows that
that factor is irrelevant.

17

and explicitly rejected—the distinction which peti-
tioners now seek to create—that: copending ‘patents
may only be used to show an identical prior invention,
but not to show’a non-patentable advance in the art.
At the outset, Judge Hand notes that the Milburn
decision (reversing his decision as district judge)
now “makes it proper to speak of a prior applica-
tion as ‘prior art’ ” (147 F. 2d at 348). Judge Hand
then recognizes the contention—made here by peti-
tioners—that “no application will serve to invalidate
the later invention except one that contains in its
disclosure all that is in the later application’’; that:
a copending application, in other words, “could not
be used merely as an encroachment upon the field
which the later invention occupied, even although it
left unoccupied too little to support a patent’’ (tbid.).

Judge Hand goes on (at 348-349):
It is of course possible to reason in this way,
but it appears to us to involve the same pre-
supposition which the Supreme Court overruled
in Alexander Milburn Co. v. Davis-Bournonville
Co., supra * * *. That decision—as we under-
stand it—meant to disregard the fact that an
earlier application did not at the moment en-
rich the art; it proceeded upon the assump-
tion—perhaps not fully expressed, but im-
plied—that since its disclosure would eventually
fall into the public demesne quite as much as
though it were presently published, the interval
during which it remained secret should be dis-
regarded. True, that was not necessary for
the protection of the first inventor, who needed
only that his own claims should be valid; but

18

once the first application ts treated as prior art

when tt. fully anticipates, there seems to be no

reason to deny it whatever effect it could have

as prior art, if it were literally such. [Empha-
sis added.]

* Detitignars on the other hand, point to no case
prior to 1952 where a copending patent was rejected
as a reference on. the ground which they now urge,
namely, that it contained only a partial, rather
than a complete, disclosure of the patent in issue.
They do suggest that, prior to 1952, a number of
eases “held that a copending patent is not embraced
within the prior art as of its filing date but only
as of the issue date.’”’ (Pet. Br. p. A-4). From
this, petitioners reason that copending patents are
not. ‘‘prior art”—that is, are not valid references—
in judging patentability under Section 103, which
makes an invention nonpatentable ‘‘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 in-
vention was made to a person having ordinary skill
in the art * * *.’’ [Emphasis added. ]

While most of the cases cited by petitioner do con-
tain general statements that copending patents are
not ‘prior art,” it is clear from a study of the com-
plete opinions cited that these dicta represent merely
a confusion of terminology in the use of the words
‘‘prior art’’ and not a recognition of rule limiting
the use of copending patents as relevant references in
judging the patentability of subsequent inventions.
Indeed in all but one of the cases upon which peti-

19

tioners rely, the copending patents involved. were, in
fact, actually used to: judge patentability despite the
courts’ statements. that they. were not,.part of the
‘prior art.’’? The one exception is In re Spencer, 47
F, 2d 806 (C0.C:P.A.). which does not contain the
general statement that copending patents are not part
of the prior art, and which, although it rejects a
reference as relevant in judging patentability, ap-
parently does so on the ground that the reference was
filed after, rather than before, the patent in issue.
See 47 F', 2d at 807. In all the remaining cases, one or
more copending patents were used as relevant refer-
ences. In some cases, e.g., United Specialties Co. v. In-
dustrial Wire Cloth Products Corp., 186 F. 2d 426
(C.A. 6), this was done without explicit recognition
that use of a copending reference raised any issue of
law.’ In other cases, the opinions contain express rec-
ognition that copending references are valid in judging
patentability. In Old Town Ribbon & Carbon Co, v.
Columbia Ribbon & Carbon Mfg. Co., 159 F. 2d 379, 382
(C.A. 2), for example, Judge Learned Hand, after
citing the Milburn case, states that “[a]ecordingly
we are to treat the disclosure in Foster’s [copending]
specifications * * * precisely as though it had ap-
peared in a printed publication. before Lewis and
Menihan [the patent in issue] had filed their applica-
tion. The validity of the claims in suit therefore
depends upon whether they can survive this disclosure
***,” Finally, five of the cases cited by petitioners
© Thus, in the United Specialities case, the copending Hinkle

reference (186 F. 2d at 428) was used in a group along with
other, clearly prior, references,

as stating’ that copending patents are not. “prior art’
under the doetrine of Section 103, are included in the
citations, compiled’ above in footnote 5, wherein
copending patents were used prior to 1952 although
they contained only partial, ‘rather than identical, dis-
closures of the patent ‘in suit, thus directly. rebutting
petitioners’ argument. (United Specialities Co. v.
Industrial Wire Cloth Products Corp., 186 F. 2d 426
(0.A. 6); Permo, Inc. vi Hudson-Ross, Inc., 179 F. 2d
386 (C.A. 7); Conmar Products Cor poration v. Univer-
sal Shde Fastener Co., 172 F. 2d 150 (C.A. 2); In re
Walker, 99 F. 2d 976 (C.C.P.A.); In re Youker, 77 F.
2d 624 (C.C.P.A.)).

Hence it is clear that statements in the opinions
cited by petitioners, that copending patents are not
“prior art,” are not directed toward the use of co-
pending patents as references relevant to patent-
ability. Any such view would, indeed, be inconsist-
ent with the uniform course of decisions in this
and the lower courts. These statements merely reflect,
we submit, the view that, as a matter of terminology,
copending references are not prior art since they are
not made public until after the patent in issue; they
are, neverthéless relevant art since, under Milburn,
they are constructively deemed issued on their appli-
cation dates. ‘Prior art’? was not a statutory term
prior to 1952 (it appears only in Section 103, which
was added in 1952) and this verbal confusion there-
fore was wholly irrelevant to the decision of the cases
where it occurs. In any event, the verbal uncertainty
was resolved by this Court’s explicit decision in Detrola
Corp. v. Hazeltine Corp., 313 U.S. 259, 265, that co-

21

pending patents were to be viewed as “prior art.’’ See
also, ¢.9., Western States Mach. Co. v. SoS. Hepworth
Co., 147 F. 24345, 349 (C.A. 2), supra, pp. 16-18.

II

THE PATENT ACT OF 1952 DID NOT LIMIT THE USE OF
COPENDING PATENTS AS REFERENCES RELEVANT 10
PATENTABILITY
We have shown above that, prior to the Patent Act

of 1952, it was clear beyond doubt that copending

patents were relevant references, as of their filing
dates, in determining the patentability of subsequent
inventions whether or not competing inventors were
involved in a contest for the same patent. This was
true whether the copending prior reference disclosed
the exact invention in the application. in issue (as
in Alexander Milburn Co. v. Davis Bournonville Co.,

270 U.S. 390) or whether it merely disclosed matter,

in light of which the application in issue failed to

disclose an advance beyond what would have been
obvious to one skilled in the art (as in Detrola Corp,

V. Hazeltine Corp. 313 U.S. 259). Although some

confusion existed as to whether the then non-statu-

tory term, ‘‘prior art,” was properly used in referring
to such relevant copending patents (since such pat-
ents were not in the public domain prior to the sub-
sequent invention), there was no doubt of their rele-
vance and this Court, in the Detrola case, had indeed
included. copending patents within the label, ‘‘prior
art.”

We believe it clear, moreover, that no change was
made by the 1952 Patent Act. Urging the contrary,

petitioners rely upon Section 103 of the 1952. Act,
which, for: the first time, expressly incorporated into
the statiite' the rule of Hotchkiss v.' Greenwood, 11
How. 248; under which changes within the ordinary
skill of the art are not en Section 103 reads
as follows:

A patent may not be obtained though the in-
vention 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 the invention was made to
a. person having ordinary skill in the art to
which said subject matter pertains. Patent-
ability shall not be negatived by the manner in

which the invention was made.
Petitioners are mindful of the fact that, in addition
to codifying the Hotchkiss rule for the first time in
1952, Congress also codified, in Section 102(e), the
rule of Alexander Milburn Co. v. Davis-Bournonville
Co., supra, under which copending patents had uni-
formly been used as relevant references in cases fall-
ing under the Hotchkiss rule. As part of Section
102, subsection (e) is, indeed, one of a group of ref-
erences made specifically relevant in judging patent-
ability. Petitioners argue, despite the explicit incor-
poration of copending patents among these references,
that Section 103 must be considered separately and
that’ it looks only to “prior art” in determining
whether an advance is patentable. ‘Prior art’ in
petitioners’ view, cannot be deemed as a matter of
language to refer to all the references listed in Sec-

23

tion 102, but only to those prior public references in
Seetion 102(a), t.e., matter “known or used by others
in the country, or patented or described in a printed
- publication in this or a foreign co , before the
invention thereof by the applicant patent.”

The short answer to petitioners’ argument is that,
in codifying Milburn and Hotchkiss in 1952, Congress
showed no purpose, either within the statute or in the
legislative history, to: decrease the role of copending
patents under those decisions; hence their previous
use as relevant references was retained. That codifi-
cation ‘alone was intended is apparent: Thus the Re-
viser’s Note to Section 102(e), codifying Milburn,
states that “Paragraph (e)-is new and enacts the rule
of Milburn v. Davis-Bournonville, 270 U.S. 390, by
reason of which a United States patent disclosing an
invention dates from the date of filing the applica-
tion for the purpose of anticipating a subsequent
inventor.”” The Reviser’s Note to Section 103, eodify-
ing Hotchkiss, states that the section incorporates a
rule as to “lack of invention or lack of patentable
Novelty’? which “has been followed since at least as
early as 1850.’’ If, as petitioners argue, the 1952
Act—for the first time—meant to exclude the use of
copending patents in Section 103 cases, the Reviser
surely would have noted the change.

- We conclude, therefore, that “prior art” in Section
103 means to refer—as this Court held in Detrola
Corp. v. Hazeltine Corp., 313 U.S, 259—to copending
references as well as to all of the other references
set forth in the subsections of Section 102. There is no
basis for limiting the reference to subsection (a) of Sec-

24

tion 102: alone. Explicit confirmation of this eonely-
sion that “prior art’’ refers generally to all of the ref-
erences described in Section 102 is contained in the
Committee Reports accompanying Section 103, where .
it is stated that the section, “refers to the difference he-
tween the subject matter to be patented and the prior
art, meaning what was known before as described in
section: 102’? (emphasis added), H. Rept. No. 1923,
82d Cong., 2d Sess., p. 7 (1952) ; S. Rep. No. 1979, 824
Cong., 2d Sess., p. 6 (1952). Indeed; P. J. Federico,
Examiner-in-Chief of the Patent Office and an
active participant in the 1952 vision, could not
have made this clearer when he stated, with regard to
this question, that “[t]he antecedent of the words
‘the prior art’? * * * lies in the phrase ‘disclosed or
described as set forth in Section 102’ and hence these
words refer to material specified in Section 102 as the
basis for comparison.’’ (Commentary on the New
Patent Act, incorporated in Title 35, United States
Code Annotated, at pp. 1, 20; emphasis added.)
Henee “prior art,’’ as that term is used in Section 103,
refers to all of the references described in Section 102,
including the copending references defined in sub-
section (e).”

*An additional element in the legislative history supports
the conclusion that “prior art” in Section 103 refers to all the
references described in Section 102, including the copending
references defined in subsection. (e). The version of Section

103 originally introduced into the First Session of the Eighty-
Second Congress (H.R. 8760) would have provided that (em-
phasis added): fy
A patent may not be obtained though the invention is not
identically disclosed or described in the prior art set forth
in section 102 of this title, if the differences between the
subject matter sought to be patented and that prior art are
such that the subject matter as a whole would have been

25

.Dhe cases decided since the 1952 Act where the, ques-
tion has been fully considered uniformly adopt. this
construction. For example, in Application, of Harry,
333, F. 2d 920, 923 n. 1, the Court of Customs and
Patent Appeals said that ‘‘the legislative history of
the 1952 Act makes it clear that, ‘copending patents’
were intended to be part of the, ‘prior, art’ [within
the meaning of Section 103].” See also, A pplication
of Kander, 312 F. 2d 834 (C,C.P.A.) ; Application of
Gregg, 244 F. 2d 316, 319 (C.C.P.A.). and the decision

obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject. matter
; s**#*
Had this version directly become law, it would have been clear
beyond doubt from the face of the statute that the “prior art”
by which advances in the art were to be judged under Section
103 was “the prior art set forth in section 102”—hence, that it
included the copending art described in Section 102(e). —

The changes made in Section 108 before enactment, however,
indicate that the final version of the bill was meant to broaden
even further—rather than to narrow—the “prior art” relevant
under that section. These changes were made in response to a
suggestion by the Bar Association of the City of New York
that the language of the proposed Section 103 be changed so as
“to make it clear that all prior art is here meant and not
merely the prior art referred to in section 102 which is limited
to anticipatory art.” Senate Subcommittee on Patents, Trade-
marks and Copyrights, Effects To Establish a Statutory Stand-
ard of Invention, Study No. 7, 85th Cong., 1st Sess. p, 15. Specifi-
cally, the Association recommended that this be accomplished
through the substitution of the word “as” for the phrase “in
the prior art” in. the original bill and by the substitution of
the word “the” in place of the word “that” immediately follow-
ing the conjunction “and” in the original. Hearings Before
Subcommittee No. 3 of the House Committee on the Judiciary,
82d Cong., Ist Sess., p. 221 (1951). These changes were made
and incorporated into the final bill as enacted. Thus “the prior
at? in Baotion 103 indubitably means to include copending

references as described in Section 102(e)

26

of the district court in this case (226 F. Supp. 459;
R. 69; 73), with which the ae of appeals, acting
per curiam, agreed:

‘Petitioners cite three cases allegedly to the con:
trary: Weatherhead v. Drillmaster Supply Co., 227 ¥.
2d 98° yore 1); Helene Curtis Industries v. Sales
Affiliates, 233 F: 2d 148 (C.A. 2); and John Blue Co. y.
Dempster Mill Mfg: Co.; 275 F. 2d 668 (C.A. 8) (see
Petitionér’s Brief at p. A-4 and pp. 15-20). The John
Blue case reveals nothing in petitioner’s favor beyond
some continuing confusion regarding terminology ; the
copending patent there involved was, in fact, used as a
relevant reference to judge patentability. Thus after
noting that the Blue Patent, cited against the patent in
issue, was copending, the court said: ‘‘ It is true that the
application for the Blue Patent cannot be considered
as prior art in the technical sense, but it is a widely
recognized rule that the application for such patent
ean nevertheless be used as defense material to prove
that Blue and Johnson were not the original and first
inventors or discoverers * * *’’ (275 F. 2d at 672),
Weatherhead, it is true, does contain a statement that
a copending patent ‘‘could be shown to prove a prior
inventor but not to show the state of the art for the
purpose of determining whether the second patent
disclosed invention’’ (227 F’, 2d at 101) and similar lan-
guage appears in Helene Curtis (see 233 F. 2d 156).
These statements are dicta since, in both cases, the
claims at issue were ultimately held unpatentable
in the light of the prior art. In addition the Weather-
head case involved a situation of double patenting

27

by ‘a single inventor, where special considerations
apply which are inapplicable when different. copend-
ing patentees are involved; and Helene Curtis con-
tains the statement, seemingly in contradiction to the
dictum relied upon by petitioners, that copending
patents were ‘anticipatory under the doctrine of
Alexander Milburn Co. vv... Davis-Bournonville
0o.,* * * now codified in 35 U.S.C.A. §.102(e)”’ be-
cause ‘‘a portion of each of these patents falls within
the, area of” the invention in issue (233 F. 2d at 158),
Finally, neither of these decisions makes reference
to this Court’s decision in Detrola Corp. v. Hazeltine
Corp., supra, explicitly holding copending patents
“prior art’’ for purposes of showing lack of patentable
invention over the art; nor do they refer to the explicit
legislative history to the same effect accompanying the
1952 Patent Act. To the extent.that these dicta mean to
indicate a preclusion of the use of copending patents
as relevant art under Section 103, therefore, we
submit that they are plainly erroneous.
» Finally, petitioners argue that ‘‘{s]imple principles
of equity and fair play’’ require that copending pat-
ents not be included in the art relevant under
Section 103. (Pet. Br., pp. 23-25). Sinee such
copending patents must “be kept in y the
Patent Office’ (35 U.S.C. 122) petitioners urge that a
worker skilled in the art would not, in fact, be aware
of them before his subsequent invention and, hence,
that his invention should not be judged in their light.
It is true that under the rule applied to copending
patents since the Milburn decision, inventors who may

have everyreason to believe that they have arrived at
a patentable invention may be denied patents because
of’ information: disclosed in copending: patents of
which they could not have known. The test: of -pat:
entability, however, is not whether the ‘applicant be-
lieves: that he has made’ an invention in the subjective
sense (see Radio’ Corporation of America, et al. v.
Radio. Engineering~ Laboratories, Inc., 293 U.S.. 1,
11-14; Sewall.v. Jones, 91 U.S. 471, 180; Evans vy.
Eaton, 3' Wheat.-454, 513-514; see also Federico, Com-
mentary on the New Patent Act, 35 U.8.0.A. 1,
21); it is whether the invention represents a signifi-
cant advance over the art, objectively viewed. (See H.
Rep. No. 1923, 82d Cong., 2d Sess., p. 7 (1952) ;‘S. Rep.
No. 1979, 82d Cong., 2d Sess., p. 6 (1952)). Thus,
whether or not the inventor actually knew, or could
have known, of the ‘‘prior art’? material at the time
he made his invention is irrelevant. The relevant
question is whether his ‘‘invention,’’ if patented, would
constitute a significant contribution in light of other
elements available to the public at the time his patent
would issue, and a prior copending patent which is
ultimately issued would be such a previously publicly
available development.

This preeise situation confronted the Court in Mil-—
burn. ‘There, as here, a copending application, the
existence of which the later applicant could not have
known, disclosed the subject matter of the subsequent
application. Notwithstanding the rule requiring the
secrecy of patent applications, the Court held the
teachings of the prior copending application relevant
in testing the patentability of the later application.

Fe

Petitioners’ suggestion (Pet. Br., p. 24) that “unfair-
ness” in the Milburn case was overbalanced by the
need to reward the prior of two rival inventors, is not
porne out. In Milburn, the prior copending patentee
did not claim the invention elaimed in the subsequent
application, and: the two inventors were not rivals.
It was this factor,whieh led, the district court and
court of appeals to hold the subsequent patent valid
and it was the relevance of the presence of such a
competing prior patentee which this Court explicitly
rejected in reversing those decisions below. See pp.
11-13, supra.

Petitioners, on ‘2 other hand, ignore the unjustifi-
able burdens upon the public and the prior inventor
that would potentially be caused by the issuance of
two or more overlapping patents which, except for
non-patentable variations, would cover the same sub-
ject matter. If both the Wallace and Regis patents
were to issue, for example, a member of the public
wishing to use the single patentable innovation em-
bodied in both might have to obtain licenses from both
patentees, and Wallace, the prior inventor, might
have to obtain a license from Regis in order to make
use of Regis’ non-patentable variation. In addition,
the Regis patent would improperly extend the monopoly
on the basic invention vis-a-vis the general public be-
yond the statutory period previously awarded to
Wallace. For these reasons, as well as those made
explicit in the Milburn decision and the legislative
history of the 1952 Act, the copending and ultimately
issued Wallace patent was properly used to judge the
patentability of Regis’ application under Section 103
of the Patent Act.

‘opyt alt CONCLUSION. )
judgment of the court of appeals should be
« Respectfully submitted.
rs THURGOOD MARSHALL,
Solicitor General.
JoHN W. Dovctas,
Assistant Attorney General.
PavuL BENDER,
Assistant to the Solicitor General.
LAWRENCE R. SCHNEIDER,
Attorney.

OcTOBER 1965.

U.S, GOVERNMENT PRINTING OFFICE: 1968

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386411_0194%3A05. Public record. Not legal advice.