Tate Engineering, Inc. v. United States

Per Curiam :

This case comes before the court on plaintiff’s exceptions to a -recommended decision filed August 1, 1972, by Trial Commissioner Joseph V. Colaianni pursuant to Rule 134(h). The court has considered the case on the briefs and oral -argument of counsel. Since the court agrees with the decision, as -hereinafter set forth, it hereby affirms and adopts the same as the basis for its judgment in this case. Therefore, it is concluded that plaintiff is not entitled to recover and the petition-is dismissed.

OPINION OP COMMISSIONER

Colaianni, Commissioner: This is a patent suit under 28 U.S.C. § 1498. Plaintiff, Tate Engineering, Inc., seeks “reasonable and entire compensation” for unauthorized use by the Government of plaintiff’s patented invention. Only the issue of liability is before the court; accounting, if any, is deferred to later proceedings. The patent in suit is U.S. Patent 3,236,018 (hereinafter the “Graham” patent), issued on February 22, 1966, to Donald C. Graham, Dale E. Hein and George H. Strain on an invention entitled “Load-Supporting Metallic Floor Panels.” All rights to the panel were assigned by the inventors to plaintiff on July 14, 1963, and plaintiff has continuously 'been the sole and exclusive owner of the patent.

Plaintiff moved to join Severn Products, Inc. (hereinafter “Severn”), on the ground that Severn allegedly supplied to the Government, under contract, products embodying the invention described and claimed in the Graham patent and actively induced infringement by the Government of the Graham patent. Severn entered the case as a third-party defendant and was represented by counsel during the entire pendency of the case before this court. Shortly after issue was joined, Severn and the Government filed a joint motion for summary judgment on the grounds that the accused product sold by Severn to the Government did not infringe any of the claims of the Graham patent. The trial commissioner recommended that the motion be denied. Tate Engineering, Inc. v. United States, 166 USPQ 329 (1970). The court affirmed, Tate Engineering, Inc. v. United States, 193 Ct. Cl. 1088 (1970), and remanded the case “to the trial commissioner for further appropriate proceedings.”

This case raises the usual issues of infringement and validity. The Graham patent has eight claims, but plaintiff concedes that claims 1 through 4, 7 and 8 are not infringed by defendants. The issues to be decided include: (1) whether claims 5 and 6 of the Graham patent are infringed by the Severn product; (2) whether these two claims are invalid because they do not meet the standards set forth in 35 U.S.C. § 102 or § 103; (3) whether these clamis are unenforceable and/or invalid by reason of plaintiff’s failure to disclose to the Patent Office during prosecution of the Graham patent allegedly pertinent prior art of which it had knowledge; and (4) whether the claims are invalid because the patent fails to “particularly point out and distinctly claim” the invention as required by 35 U.S.C. § 112.

During the trial, defendants introduced prior art which had not been considered by the Patent Office, and which was not relied upon in their motion for summary judgment. Defendants rely primarily upon this additional prior art to support their joint position relative to the above issues. For reasons expressed below, claims 5 and 6 are held to be not infringed.

Background

Prior to the invention of the Graham panel, plaintiff was not engaged in the manufacture and/or sale of elevated flooring, although several other firms were then in the field. Based on a market study, plaintiff decided to enter the field and contracted with Graham Engineering, Inc., a consulting engineering firm, to develop a unique floor panel. The Graham panel was invented under this contract by Graham Engineering employees, and all patent rights in the panel were assigned to plaintiff on July 15,1963, one day before the Graham application was filed in the Patent Office. Plaintiff began manufacturing and selling the Graham panel in late 1962 or early 1963.

Patent in Suit

The invention disclosed by the Graham patent relates to a metal panel that can be combined with similar panels to form a load-supporting elevated floor. (See findings 8 and 9.) Individual panels, generally square in plan view, are usually supported above a subflooring by pedestals at each corner. The principal objective of such a panel is to support heavy loads without itself being of prohibitive thickness and weight. By way of example, elevated metal flooring is frequently used in connection with computer installations. Heavy computer equipment is easily supported on the elevated flooring, and the many interconnecting power and signal-carrying cables are conveniently routed through the space provided between the elevated flooring and subflooring.

The panel disclosed by the Graham patent is formed from two superimposed flat metal sheets. The upper sheet is im-perforate throughout its entire area and supports the load upon its top surface. (See finding 9.) In the preferred embodiment, however, a finishing material, such as linoleum or floor tiling, is affixed to the top surface. The lower sheet is positioned directly beneath the upper sheet and after a number of incisions and bends, a pattern of square openings arranged in parallel rows and columns is formed in the lower sheet. The rows and columns of square openings are separated by a gridwork of parallel rows and columns of straight metal tension strips that remain in the plane of the lower sheet. These tension strips extend between opposite edges of the lower sheet.

Furthermore, as a result of the incisions and bends, struts are provided at the edges of the openings. The struts project toward the upper sheet, and their terminal ends are bent for attachment to the undersurface of the upper sheet. By design, it is intended that loads applied to the upper sheet will be transmitted through the struts, to the tension strips of the lower sheet. The load-supporting capability of a panel is proportional to the cube of the distance between the upper and lower sheets. Thus, by increasing the length of the struts, the load-supporting capability of a panel will be increased. In addition, the strength of a panel is dependent upon the number of struts and amount of contact area between the struts and the undersurface of the upper sheet.

While the preferred embodiment of the Graham panel has struts formed integral with only two edges of each opening, alternate embodiments of the invention have struts formed integral with all four edges of the openings. However, in all cases no waste occurs and all of the material which is cut and bent in the formation of the openings is utilized.

The edge of the Graham panel is constructed such that an upper bracing flange is formed by bending the edges of the upper sheet toward the lower sheet, and, at the same time, a lower bracing flange is formed by bending the edges of the lower sheet toward the upper sheet. The patent drawings Show (see Fig. 5 accompanying finding 9) that the upper bracing flange fits inside of and, for purposes of rigidity and strength, is welded to the lower bracing flange. Finally, the terminal portion of the lower bracing flange is bent outwardly and upwardly to form a vertical rib extending about the periphery of the panel and spaced slightly from the upper bracing flange. In the instances where a finishing material is applied to the upper sheet, a channel-shaped finishing material can be mounted upon this projecting rib.

The desired goals of the patented invention, as expressed in the patent specification, include the provision of: (1) a structural panel of minimum thickness relative to load-sustaining area and having the capability of supporting substantial concentrated loads in comparison with the weight of such a panel, (2) a plurality of different patterns of struts cut from the lower sheet, and (3) continuous edge flanges on both upper and lower sheets connected together to provide stiffening of the edges of the panel, and, as well, to provide finished surfaces for the edges of the panel.

The Patent Claims

Claim 5 of the Graham patent reads:

5. A rigid metallic floor panel constructed to be supported in horizontal operative position at the edges or corners and sustain heavy floor loads without appreciable deflection, said panel comprising in combination,

a pair of substantially flat metal sheets arranged in superimposed vertically spaced relationship,

the upper of said sheets being rigid and imperforate to bear and distribute loads supported by said panel

and the lower sheet having a checkerboard grid comprising

a first set of parallel, straight strips extending longitudinally substantially from edge to edge of said sheet

and a second similar set of parallel, straight strips extending transversely to said first set substantially from edge to edge of said sheet,

said strips providing evenly arranged, parallel rows of openings therebetween,

strut members integral with certain edges of said grid strips and extending upwardly therefrom into firm engagement with the lower surface of the said upper sheet and fixed thereto to transmit load forces from said upper sheet to said lower tension-sustaining sheet,

the peripheral edges of at least one of said sheets being bent at right angles to the plane of said sheet to form a marginal bracing flange around all edges of said sheet and connected to the periphery of the other sheet,

the terminal edge of said bracing flange being bent out of the plane of said flange and arranged in conjunction with the periphery of the other sheet to form a narrow longitudinal rib extending around all sides of said panel,

a wear surface layer secured to the top of said other sheet,

and a channel-shaped finishing strip receiving said longitudinal rib within the channel thereof to secure said strip to said panel,

said finishing strip closely surrounding the edges of said wear surface layer and having its top surface flush with said layer.

Claim 6, which is dependent upon claim 5, reads:

6. The floor panel according to claim 5 in which said one of said panels having its peripheral edges bent at right angles to the plane thereof is the lower one having the checkerboard grid.

Infringement

Plaintiff contends that Severn has manufactured and sold elevated flooring to the Government within six years immediately preceding the filing of this suit, which allegedly infringes its patent. The Severn panel (see finding 13) includes an upper imperforate metal sheet upon which is secured a finishing material and a lower perforate metal sheet spaced vertically from the upper sheet by metal struts. Four essentially triangular-shaped struts per square opening are formed by cutting and removing sections of metal from the lower sheet and bending the remaining metal toward the upper sheet. As a result of this operation, the lower sheet is made up of parallel rows and columns of square openings separated by parallel rows and columns of tension strips remaining in the plane of the lower sheet. The edge construction of the Severn panel is formed by first bending the peripheral edges of the lower sheet upwardly into a vertical bracing flange. The terminal portions of the vertical bracing flange are then bent outwardly from the interior portion of the panel flush with the undersurface of the upper sheet and attached thereto. In this manner, a peripheral horizontal lip or flange is formed. A channel-shaped finishing strip then is inserted over this horizontal flange so as to lie flush with the finishing material on the upper sheet.

In considering the question of infringement, it is necessary to initially establish the scope and breadth of the patent claims allegedly violated. In this particular instance, it is therefore necessary to establish the scope of claims 5 and 6 of the Graham patent so as to determine if the claims can be “read” on the accused Severn panel. A claim must be read in light of the specification. Seymour v. Osborne, 78 U.S. 516, 547 (1870); United States v. Adams, 383 U.S. 39, 49, 148 USPQ 479, 482 (1966). Its scope, however, is not limited only to those specific embodiments actually disclosed, but is expanded under the doctrine of equivalents to include embodiments that perform substantially the same function in substantially the same way to produce substantially the same result as the disclosed invention. Graver Tank & Mfg. Co. v. Linde, 339 U.S. 605, 608, 85 USPQ 328, 330 (1950).

The range of equivalents to be accorded will depend upon whether the invention is a pioneer invention or merely a small advance over the prior art. If the former, a broad range of equivalents applies commensurate with the patentee’s contribution to the art. McCullough Tool Co. v. Well Surveys, Inc., 343 F. 2d 381, 401, 145 USPQ 6, 22 (10th Cir. 1965), cert. denied, 383 U.S. 933 (1966); Priebe & Sons Co. v. Hunt, 188 F. 2d 880, 881, 89 USPQ 299, 300 (8th Cir. 1951), appeal dismissed per stipulation, 342 U.S. 801 (1951). If the latter, only a narrow range of equivalents applies. Soundscriber Corp. v. United States, 175 Ct. Cl. 644, 652, 360 F. 2d 954, 961, 149 USPQ 640 (1966); Trusty v. United States, 132 Ct. Cl. 192, 199-201, 132 F. Supp. 340, 344, 105 USPQ 474, 477 (1955), cert. denied, 350 U.S. 975 (1956); Richardson v. United States, 72 Ct. Cl. 51, 65 (1930), 7 USPQ 194, 197, cert. denied, 285 U.S. 543 (1931). Furthermore, the range of equivalents may be limited under the doctrine of file wrapper estoppel if the patentee has narrowed his claims in order to avoid the prior art. Graham v. John Deere Co., 383 U.S. 1, 33, 148 USPQ 459, 473 (1966). Or, as this court has said in connection with an earlier consideration of these doctrines, “The doctrine of equivalence is subservient to file wrapper estoppel.” Autogiro Co. of America v. United States, 181 Ct. Cl. 55, 67, 384 F. 2d 391, 400, 155 USPQ 697, 705 (1967).

From a review of the prosecution history of the Graham application (see findings 14 and 15) while it was pending in the Patent Office, and also taking into consideration the prior art references introduced during trial that were not considered by the Patent Office (see findings 16 and 17), it is concluded that the Graham patent is not a pioneer patent. Therefore, the claims of the Graham patent are not entitled to a broad full range of equivalents.

Establishing the correct scope of claims 5 and 6 of the Graham patent is of particular necessity in this case because of the reasons which defendants advance for their position of noninfringement. First, they contend, under the doctrine of file wrapper estoppel and also because the Graham panel is not a pioneer invention, that the recitation “strut members integral with certain edges of said grid strips” (emphasis added) in the claims must be narrowly construed to cover only those panels having strut members integral with less than all edges of the grid openings. Thus, they argue, since the Severn panel has strut members formed integrally with all edges of the grid openings, the limitations of the claims are avoided. This contention was thoroughly treated earlier in the commissioner’s opinion on defendants’ motion for summary judgment, Tate Engineering, Inc., supra, 166 USPQ at 333. There it was held that, in view of the specification and file history of the Graham patent, claims 5 and 6 are not restricted to a structure having less than four struts per grid opening. Since no additional evidence was presented at trial on this point, and since it is believed that our earlier holding was correct, it is concluded that claims 5 and 6 cover panels having four struts per opening. Therefore, the strut construction of the Severn panel is found to fall within the scope of the above-quoted language of claims 5 and 6.

Defendants next urge that the recitation:

the terminal edge of said bracing flange being bent out of the plane of said flange and arranged in conjunction with, the periphery of the other sheet to form a narrow longitudinal rib extending around all sides of said panel,

found in the claims at issue, when construed in light of the edge structure disclosed by the Graham patent, does not cover the Severn edge structure. For reasons which are explained in more detail hereinafter in connection with the discussion and treatment of the validity of the Graham patent, it is concluded that if this claim recitation is construed narrowly enough to avoid invalidity of the claims, then the claims are not infringed by the accused edge structure. International Glass Co. v. United States, 159 USPQ 434, 442 (1968), aff'd per curiam, 187 Ct. Cl. 376, 394, 408 F. 2d 395, 405, 161 USPQ 116 (1969); Farrell Marine Devices, Inc. v. United States, 152 USPQ 328, 329 (1966), aff'd per curiam, 179 Ct. Cl. 790, 792-93, 377 F. 2d 560, 561, 153 USPQ 361 (1967).

This court has consistently avoided a broad construction of claims which would legally render them invalid. Instead, a narrow construction of patent claims, “so as to secure to the patentee the just fruits of his true invention,” has been resorted to. Dominion Magnesium Ltd. v. United States, 162 Ct. Cl. 240, 249, 320 F. 2d 388, 394, 138 USPQ 306, 310 (1963); International Glass Co., supra.

Validity

Defendants contend that claims 5 and 6 are invalid under 35 U.S.C. § 112 because they are indefinite. On the basis of the above-detailed consideration of the claims at bar, this contention can be quickly disposed of, and it is found that the claims are definite and comply with all the requirements of 35 U.S.C. § 112.

Defendants next urge that claims 5 and 6 are invalid under 35 U.S.C. § 102(a) ¹ as being anticipated by U.S. Patent 3,196,763 (hereinafter the “ ’763 Eushton” patent), which is described in considerable detail in finding 17. The ’763 patent was not considered by the Patent Office during examination of the Graham patent application. This patent basically discloses a two-sheet metal panel that can be supported in an elevated position by pedestal mounts at its corners. The panel consists of an imperforate metal top sheet that is capable of having a finishing material, such as tile or linoleum, secured to its upper surface. The bottom metal sheet is formed, by a deep drawing operation, into a truss pan that consists of parallel rows and columns of inverted cups or pedestals. The metal between the cups is not displaced or disturbed by the drawing operation, but remains in the plane of the lower sheet to form parallel rows and columns of flat rim areas about the edges of the cups. The truss pan thus resembles a familiar cupcake pan. The bottoms of the cups are flat and are positioned flush with and welded to the undersurface of the top sheet.

The peripheral edges of the truss pan are bent at right angles toward the top sheet to form a vertical flange about the panel. Finally, the terminal portion of the vertical flange is bent outwardly from the interior portion of the truss pan, parallel to and flush with the undersurface of the top sheet. This portion then is spot welded to the undersurface of the top sheet to form a horizontal lip or flange about the periphery of the panel.

Defendants contend that claims 5 and 6 of the Graham patent are anticipated, in accordance with the provisions of 35 U.S.C. § 102(a), by the disclosure of the ’763 patent. To anticipate, a prior art reference must disclose each and every element of a claimed invention, or its equivalent, and the element must function in substantially the same way to produce substantially the same result. Palmer v. United States, 163 USPQ 250, 254, aff'd per curiam, 191 Ct. Cl. 346, 354, 423 F. 2d 316, 321, 165 USPQ 88 (1970), cert. denied, 400 U.S. 951.

While there are similarities in overall appearance and function between the Graham and Bushton ’763 panels, there is not the necessary identity of structure, purpose and result which is required to make out an anticipation within the meaning of 35 U.S.C. § 102. Straussler v. United States, 168 Ct. Cl. 852, 339 F. 2d 670, 143 USPQ 443 (1964). Detailed differences between the ’763 Bushton patent and the Graham invention liave been pointed out in finding 17. It is only necessary to bere point out that the ’763 Eushton patent does not disclose “evenly arranged, parallel rows of openings” in the lower sheet, “a channel-shaped finishing strip” nor “a wear surface layer secured to the top of [the upper sheet] ” as called for by claims 5 and 6. These missing claimed elements prevent the Eushton patent from being an anticipation of the Graham patent within the meaning of section 102(a). Furthermore, no single reference cited by the Patent Office, or defendants, is found to disclose, as is necessary to make out a section 102(a) anticipation, all of the elements of claims 5 and 6.

Defendants also question whether claims 5 and 6 meet the statutory standards set forth in 35 U.S.C. § 103.² Title 35 U.S.C. § 103 requires that in order for a patent to be granted on an invention, the invention must not be obvious to one of ordinary skill in the art at the time it was made. To establish if claims 5 and 6 define an invention that is obvious within the meaning of 35 U.S.C. § 103 requires a factual analysis of (1) the scope and content of the prior art, (2) the differences between the prior art and the claims in issue and (3) the level of skill in the pertinent art. Secondary considerations such as commercial success, satisfying long-felt need and failure of others may have relevance. Graham, supra; Palmer, supra; Martin-Marietta Corp. v. United States, 179 Ct. Cl. 70, 72, 373 F. 2d 972, 973, 153 USPQ 206, 207 (1967).

Defendants, in challenging the validity of claims 5 and 6 under 35 U.S.C. § 103, rely primarily on the ’763 Rushton patent, U.S. Patent 3,008,551 (hereinafter referred to as the “Cole” patent), and a brochure published by Washington Aluminum Co. (hereinafter referred to as “WACO”), a competitor of plaintiff in the elevated flooring business. (See finding 16.) The WACO reference and the ’763 Rushton patent were not cited by the patent examiner during prosecution of the patent application.

Defendants contend, inter alia, that if claims 5 and 6 of the Graham patent are construed broadly to read upon the accused Severn panel, they are invalid. Defendants particularly argue that the prior art references disclose all of the broadly construed elements of the claims, and thus the subject matter of claims 5 and 6, taken as a whole, would have been obvious to a person of ordinary skill in the panel art at the time that plaintiff’s panel was made.

The ’763 Eushton patent (see finding 17) has already been briefly described in connection with defendants’ arguments of patent invalidity under 35 U.S.C. § 102. Defendants, in connection with their § 103 defense, argue that any difference between the patented panel and the prior art ’763 Eushton panel would ¡have been obvious, at the time of the making of the Graham panel, to a person skilled in the prior art.

For example, defendants point out that the prior art ’763 panel does not have struts that are formed, as is the case with the Graham panel, by cutting and bending material from the lower sheet. However, they contend that the upstanding pedestals of the ’763 patent serve the same function as the Graham struts, and can be replaced by struts such as those shown in the Cole patent. As explained in more detail in finding 15, the Cole patent teaches forming a metal panel having an imperforate upper sheet and a perforate lower sheet rigidly separated by struts. The struts are formed 'by incisions, and, after shaping, are attached to the undersurface of the upper sheet. There is no doubt that the Cole patent specifically addressed the problem of inherent depth limitations on drawn panels, such as the ’763 Eushton panel, and the following statement shows Cole’s appreciation of the advantages of a panel which is formed by cutting and drawing over one formed by merely a drawing process:

A further object of the invention is to monolithically fabricate a core panel that is partly split and formed and partly drawn in such a manner as to permit a much greater panel depth than is possible to provide with rigidized cores which are dependent upon the maximum limits of the drawing ability of the metal for their maximum panel depths.

Plaintiff would brush aside defendants’ arguments relating to the ’763 Rushton and Cole patents and the WACO panel by pointing out that the edge construction called for by the Graham claims is not found in any of the prior art references. Indeed, the Cole patent does not show nor does it disclose the use of any type of edge construction. The WACO panel does disclose an edge structure. (See finding 17.) The edge construction of the two-sheet WACO panel is formed by first bending the periphery of the lower sheet toward the upper sheet. The terminal edges are then bent flush with the undersurface of the upper sheet to form, in conjunction with the edges of the upper sheet, a horizontal lip or flange extending about the perimeter of the panel. Finally, the ends of the horizonal flange are bent upward at right angles into a vertical rib spaced slightly from the upper sheet and extending about the panel perimeter. A finishing strip can be secured to the top and inner surfaces of the vertical rib. However, due to inadequate strength dn the horizontal flanges, the WACO panel was not capable of supporting heavy loads with only pedestal supports at each corner. Instead, the WACO panel was intended to be used with “stringers.” Stringers consist of horizontal support beams positioned under the horizontal edge flange of the panel so as to enable the panel to support heavy loads.

Plaintiff argues that its edge construction adds the necessary strength and rigidity to enable its panel to be supported in an elevated position by comer pedestal mounts. Moreover, plaintiff urges that none of the prior art panels, including the commercial form of the Rushton panel, can be satisfactorily supported by corner pedestal mounts. On the other hand, plaintiff points out that:

* * * both the patented and accused panels employed ribs as defined in the claims in combination with other structure to produce panels which were capable of support only at their corners * * *.

Plaintiff thus appears to be arguing that the claims of the Graham patent, for purposes of establishing infringement, cover panels having narrow, strength-reinforcing edge flanges or ribs, such as those employed on the Graham and accused Severn panels, but, in order to avoid invalidity, that the same claims do not read upon panels having somewhat wider, relatively weak edge flanges such as the prior art WACO and Rushton panels.

Plaintiff’s carefully reasoned argument is untenable for the following reasons: first, the prior art ’763 Rushton patent specifically states that the Rushton panels “can be supported by pedestal mounts at their comers”; second, the corner supports for the accused Severn panel are not placed under the narrow edge flange, but are placed under the outer corners of of the tension strips in the lower sheet. Consequently, the Severn panel is not supported by its narrow edge flange. While the narrow Severn edge flange may be better able to resist vertical forces applied to the edges of the panel than the somewhat wider Rushton edge flange, this fact is completely unrelated and irrelevant to plaintiff’s claim that a narrow edge flange enables a panel to be supported by comer pedestal mounts, while a wide edge flange does not enable a panel to be so supported.

Defendants further point out that the horizontal edge flange of the ’763 Rushton patent is structurally identical to the horizontal edge flange of the Severn panel (see the drawing accompanying finding 17), except that the former appears to be wider than the latter. Defendants then argue that a patent claim cannot be construed broadly for the purpose of establishing infringement and, at the same time, narrowly for the purpose of avoiding the prior art. Dommion Magnesium Ltd., supra; International Glass Co., supra. It is, therefore, necessary to determine whether claims 5 and 6, when broadly construed to read upon the accused Severn panel for the purpose of infringement, will not also read upon the prior art panels.

While it is absolutely essential to guard against a piecemeal reconstruction of the Graham invention by using the Graham patent as a blueprint, in this case the testimony of defendants’ expert greatly decreases the chances of such a hindsight reconstruction from happening. Based upon the testimony of defendants’ expert, and, as well, on the clear teaching of the prior art patents and the file history of the patent application, it appears to be a logical and obvious expedient to replace the drawn pedestals of the ’763 Rushton panel by struts such as those shown in the Cole patent which are formed by incisions made in the lower sheet.

Further, to one of ordinary skill in the elevated flooring art, it would be an obvious design expedient to mount a “cliannel-sbaped” finishing strip, such as shown in the WACO panel, on the Rushton floor panel. Thus, the prior art discloses all of the broadly construed elements, or their equivalents, and the manner in which to combine the elements to form the structure defined by claims 5 and 6. Accordingly, it is concluded that claims 5 and 6 of the Graham patent contain limitations that must be narrowly construed to avoid reading on the prior art panels. Particularly, the limitation relating to the edge construction of the Graham panel is found to be limited to the structure shown in the patent drawings or reasonable equivalents thereof. In conclusion, it is specifically found that the claims cannot be read broadly to cover the accused Severn panel, for if the claims are broadly construed to read on the Severn panel, they would be invalid and obvious, within the meaning of 35 U.S.C. § 103, in view of the teachings of the ’763 Eushton and Cole patents and the WACO panel.

Fraud on the Patent Office

Defendants also vigorously assert that claims 5 and 6 should be held invalid and/or unenforceable by reason of plaintiff’s failure to disclose to the Patent Office during prosecution of the Graham patent the prior art WACO panel of which it had knowledge. In essence, defendants contend that plaintiff has perpetrated a fraud on the Patent Office, or is guilty of unclean hands in its dealings with the Patent Office.

Based on the finding that claims 5 and 6 are not infringed by defendants’ accused structure if the claims are narrowly construed to avoid invalidity, it becomes merely academic, and totally unnecessary, to also hold that plaintiff’s patent is unenforceable because of plaintiff’s fraud on the Patent Office.

Defendants, however, also contend that plaintiff’s patent should be found to be invalid because of plaintiff’s failure to call the prior art WACO panel to the examiner’s attention during the pendency of the application in the Patent Office. In support of its position, plaintiff relies on Norton v. Curtiss, 433 F. 2d 779, 167 USPQ 532 (CCPA 1970), and Monsanto Co. v. Rohm & Haas Co., 312 F. Supp. 778, 164 USPQ 556 (E.D.Pa. 1970).

As discussed hereinabove, the WACO panel was used, in conjunction with other prior art, to determine if the Graham invention would have been obvious, within the meaning of 35 U.S.C. § 103, to one of ordinary skill in the art. The WAOO panel is clearly not an anticipation of plaintiff’s invention within the meaning of 35 U.S.C. § 102. Accordingly, this case is distinguishable from both the Norton and Monsanto cases, supra, and all other cases, where the information withheld from the Patent Office was found to be of such a nature that if it had been disclosed the patent would not have issued. Certainly, the information allegedly withheld, the WACO panel, is not so material that one can conclude that the Patent Office would have refused to issue plaintiff’s patent application if it had been aware of it. It is therefore concluded that defendants have failed to make out a case of fraud with the clarity and certainty required. See McCullough Tool Co., supra, at 394-95 (343 F.2d).

Findings of Facts

1. This is a patent suit under 28 U.S.C. § 1498. Plaintiff (hereinafter sometimes referred to as “Tate”) seeks reasonable and entire compensation for the alleged unauthorized use 'by defendant, the United States, of an invention disclosed and claimed in U.S. Patent 3,236,018 (hereinafter referred to as the “Graham” patent), entitled “Load-Supporting Metallic Floor Panels,” issued to Donald C. Graham, Dale E. Hein and George H. Stram on February 22, 1966, on an application filed July 16, 1963. Plaintiff’s petition was filed in this court on August 4,1969.

2. Plaintiff moved to join Severn Products, Inc. (hereinafter referred to as “Severn”), on the ground that 'Severn allegedly supplied to the Government, under contract, products embodying the invention described and claimed in the Graham patent. Severn entered the case as third-party defendant, and filed an answer to plaintiff’s petition on October 10, 1969. Severn was represented by counsel at the trial.

3. Tate, the sole owner of the patent in suit, is a corporation organized and existing under the laws of the State of Maryland and having its principal place of business at Baltimore, Maryland.

4. This case was earlier before the court on defendants’ joint motion for summary judgment on the grounds that the accused floor panels procured by the United States did not infringe any of the claims of the Graham patent. The trial commissioner recommended denial of the motion. Tate Engineering, Inc. v. United States, 166 USPQ, 329 (1970). The court affirmed, Tate Engineering, Inc. v. United States, 193 Ct. Cl. 1088 (1970), and remanded the case “to the trial commissioner for further appropriate proceedings.”

5. The Graham patent was issued with eight allowed claims. Plaintiff concedes that claims 1 through 4, 7 and 8 are not infringed by defendant. Therefore, the only issues before the court are (1) whether claims 5 and 6 of the Graham patent are valid under 35 U.S.C. §§ 102 and 103, (2) whether these claims are infringed by the Severn product, (3) whether claims 5 and 6 are invalid and/or unenforceable by reason of alleged “inequitable conduct or bad faith” by plaintiff in prosecuting the Graham application through the Patent Office, and (4) whether the claims are invalid because the patent fails to particularly point out and distinctly claim the invention as required by 35 U.S.C. § 112. The determination of the amount of recovery, if any, is reserved to later proceedings.

6. In the early 1960’s plaintiff conducted a market study to establish the types of metallic access floor panels which were commercially available. Plaintiff at that time was not in the business of manufacturing and/or selling metallic floor panels. Among other things, the study showed that the Commercial Steel Company was manufacturing a three-piece panel that consisted of a core material sandwiched between upper and lower flat sheets of steel. The study also revealed that the Washington Aluminum Company (hereinafter referred to as “WACO”) produced an all-steel, two-sheet, access panel. Pedestals or dimples which were formed in the lower sheet of the WACO panel, by a metal drawing process, were welded to the undersurface of the upper sheet. Tate was not impressed with the WACO design because the panel was expensive, very heavy, and the metal drawing process which was used to form the many dimples in the bottom sheet made it difficult to control the height and load-supporting quality of the panel. As a result of the market study, plaintiff decided to enter the field, and the Commercial Steel Company was contacted to see if they would be interested in manufacturing a panel to plaintiff’s specifications.

7. After failing in its attempt to have Commercial Steel manufacture a panel for it, plaintiff engaged Graham Engineering, Inc., a consulting engineering firm, to design and develop a unique elevated floor panel. The panel, disclosed and claimed in the patent that forms the subject matter of this suit (the Graham patent), resulted from the development work conducted by Graham Engineering, Inc., on behalf of plaintiff. All rights in the panel were assigned to plaintiff on July 15,1963, one day before the Graham patent application was filed. Plaintiff began manufacturing and selling the Graham panel in late 1962 or early 1963.

8. The invention disclosed by the Graham patent relates to a panel that can be combined with similar panels to form a load-supporting elevated floor. The individual panels may be of any size and shape, but generally are square in plan view. In forming a weight-sustaining floor, the panels are usually supported above a subflooring by pedestals at each of their corners. An elevated floor of the type covered by the Graham patent should be capable of supporting heavy loads, and should not itself be of prohibitive thickness and weight.

By way of example, elevated metallic floors are very useful in computer rooms. The heavy computer equipment is easily supported and, at the same time, the many interconnecting power and signal carrying cables are conveniently routed in the space provided between the elevated metallic flooring and the subflooring.

9. More particularly, and with reference to Figs. 2,3, 5,10 and 11 of the drawings of the Graham patent (reproduced herein), the patent describes a panel which is formed from two metal sheets, 10 and 12, arranged in sandwich fashion. The upper sheet 10 is imperforate throughout its entire area, and the load directly rests upon the top surface of the sheet. Alternatively, a finished sheet of material 28, such as floor tile or linoleum can be affixed to the top surface of the upper sheet, see Fig. 5.

Tbe lower metal sheet 12 is positioned directly underneath the upper sheet. A number of incisions are made in the lower sheet forming metal struts 14. The struts 14 are initially bent at right angles to the lower sheet, toward the undersurface of the upper sheet. The terminal edges 20 of the struts are then bent flush with and welded to the undersurface of the upper sheet.

The incisions are arranged in parallel rows and columns in the lower sheet. In the preferred embodiment of the invention “H” and “I”-shaped incisions alternate along each row and each column. Metal tongues formed by an “I”-Shaped incision produce two rectangular-shaped struts disposed along the left and right sides of a square opening in the lower sheet, while tpngues formed by an “H”-shaped incision produce identical struts along the top and bottom sides of the opening.

Several other types of incisions and struts are disclosed in the Graham patent. Of these, however, the only pertinent one is an “X”-shaped incision, shown in Figs. 10 and 11, which produces four triangular-shaped struts 50, one along each of the sides of the square openings in the lower sheet. In this embodiment, the apex 54 of the triangle is bent flush with and fastened to the undersurface of the upper sheet. Since there are four struts per opening, the strut configuration is identical for every opening in contrast to the alternating strut arrangement of the preferred embodiment shown in Fig. 3.

The struts are formed in parallel rows and columns such that narrow metal tension strips 18 remain in the plane of the lower sheet. The strips 18 run between opposite edges of the lower sheet. Thus, the lower sheet in plan view, Fig. 3, appears as a square matrix consisting of parallel rows and columns of square openings separated by parallel rows and columns of narrow metal strips.

The preferred edge construction of the Graham patent is best understood with reference to patent Fig. 5.

The peripheral edges of lower sheet 12 are bent out of the plane of lower sheet 12 toward upper sheet 10 to form a lower bracing flange 24. Similarly, the peripheral edges of upper sheet 10 are bent out of the plane of upper sheet 10 toward lower sheet 12 to form an upper bracing flange 26. The outside surface of flange 26 is formed to abut against the inside surface of flange 24, and flange 26 is preferably shorter than the distance between upper sheet 10 and lower sheet 12. Flanges 24 and 26 impart strength and rigidity to the edges of the panel and provide means, in addition to the terminal edges of the struts, for connecting, such as by spot welding, the upper sheet 10 to lower sheet 12.

The terminal edge of flange 24 then is bent outwardly and upwardly to form a vertical rib 30 spaced from upper bracing flange 26. A channel-shaped finishing strip 32, which may be made of a material similar to surface finishing sheet 28, is placed over rib 30 and lies flush with finishing material 28.

10. (a) The desired goals of the patented invention, as expressed in the patent specification, include:

It is the principal object of the present invention to provide a structural panel which preferably has a minimum thickness relative to load-sustaining area and, more importantly, has a very substantial capability of supporting very substantial limits of concentrated loads in comparison with the weight of such panels * * *.

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Ancillary to the foregoing object, a further objective is to provide a grid arrangement of transversely disposed sets of preferably parallel strips of metal in said lowermost sheet, while the portions of said sheet which are struck therefrom incident to forming said strips or ribbons of metal are bent appropriately to comprise the strut members which maintain the upper, compression or load-sustaining sheet in desired spaced relationship relative to the lower or tension- sustaining sheet.

Still another embodiment of the invention is to provide a plurality of different patterns or arrangements of fingers or tongues which are struck from the second or lower sheet of metal, * * *.

(b) The significance of the peripheral edge construction is described in the patent in pertinent part as follows:

A still further object of the invention is to provide preferably continuous edge flanges, on both of said sheets, said flanges being inter-related and connected together in such maimer as to afford ample stiffening of the edges of the panel as well as provide finished surfaces for said edges.

* * * $ $

* * * Not only are the dies used to bend the tongues formed by the incisions * * * into the embodiment of struts 14 * * * but elongated marginal areas extending along each side of the sheet 12 likewise are bent, preferably at a right angle to the plane of sheet 12 in order to form marginal bracing flanges 24 which extend along all four edges of the sheet 12 to impart rigidity to the edges of the panels.

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To enhance the utility of the structural panel further, the uppermost edges 30 of the flanges 24, as seen in FIG. 5, preferably are spaced outwardly relative to flanges 26, thereby increasing the rigidity of the sides of said panels, but also in order to accommodate thereon a channel-shaped finish strip 32, * * *.

11. The claims at issue are set forth, below in indented form:

5. A rigid metallic floor panel constructed to be supported in horizontal operative position at the edges or corners and sustain heavy floor loads without appreciable deflection, said panel comprising in combination,

a pair of substantially flat metal sheets arranged in superimposed vertically spaced relationship,

the upper of said sheets being rigid and imperforate to bear and distribute loads supported by said panel

and the lower sheet having a checkerboard grid comprising

a first set of parallel, straight strips extending longitudinally substantially from edge to edge of said sheet

and a second similar set of parallel, straight strips extending transversely to said first set substantially from edge to edge of said sheet,

said strips providing evenly arranged, parallel rows of openings therebetween,

strut members integral with certain edges of said grid strips and extending upwardly therefrom into firm engagement with the lower surface of said upper sheet and fixed thereto to transmit load forces from said upper sheet to said lower tension-sustaining sheet,

the peripheral edges of at least one of said sheets being bent at right angles to the plane of said sheet to form a marginal bracing flange around all edges of said sheet and connected to the periphery of the other sheet,

the terminal edge of said bracing flange being bent out of the plane of said flange and arranged in conjunction with the periphery of the other sheet to form a narrow longitudinal rib extending around all sides of said panel,

a wear surface layer secured to the top of said other sheet,

and a channel-shaped finishing strip receiving said longitudinal rib within the channel thereof to secure said strip to said panel,

said finishing strip closely surrounding the edges of said wear surface layer and having its top surface flush with said layer.

6. The floor panel according to claim 5

in which said one of said panels having its peripheral edges bent at right angles to the plane thereof is the lower one 'having the checkerboard grid.

12. The accused panels sold by Severn Products, Inc., to the United States were manufactured by its affiliated company, Davey Products Co., Inc. (hereinafter “Davey”), of Red Lion, Pennsylvania. Invoices dated December 13, December 20, December 30, 1968, and April 24, 1969, indicate that Severn sold accused infringing panels to the Government within the six-year period immediately preceding the filing date of this suit.

13. The construction of the panel sold by Severn to the Government is shown on the accompanying drawings to include an imperforate upper metal sheet 1, having a finishing material 7 affixed to its top load-supporting surface, and a lower metal sheet 2 spaced vertically from the upper sheet by metal struts 3. The struts are formed by dividing the lower sheet into a grid of squares and cutting and removing sections of metal from each square (as opposed to the method disclosed by the Graham patent where only incisions are made in the lower sheet and no metal is removed) to form four essentially triangular-shaped tongues. The tongues then are bent out of the plane of the lower sheet toward the undersur-face of the upper sheet, and the terminal edges 6 of the tongues are bent flush with and welded to the undersurface of the upper sheet. As in the Graham panel, the formation of the struts in the Severn panel results in a plurality of parallel rows and columns of essentially square openings being formed in the lower sheet and produces a gridwork of narrow metal tension strips between the parallel rows and columns. The metal tension strips extend between opposing edges of the lower sheet in a manner as shown in the accompanying drawings.

As also shown by the accompanying drawings, a comparison between the edge construction of the accused Severn

panel and the edge construction of the Graham patent illustrates and highlights the difference in structure therebe-tween. In the Severn panel, the peripheral edges of the lower sheet are first bent at essentially right angles to the plane of the lower sheet toward the undersurface of the upper sheet to form a bracing flange 4. The terminal portion 5 of flange 4 is then bent outwardly from the interior portion of the panel in the horizontal plane, flush with the undersurface of the upper sheet. The peripheral edge of the lower sheet is spot welded to the upper sheet to form a narrow horizontal metal lip or flange, the thickness of both upper and lower sheets, and extends around the entire periphery of the panel. A channel-shaped finishing strip 8 then is placed over the edge of this flange so that the finishing strip lies flush with the surface finishing sheet, as in the Graham panel.

The Severn panel is supported by pedestals at its four corners which contact only the tension strips 2, but not the horizontal flange 5.

14. The patent application, as filed by Graham, et al., on July 16, 1963, contained 27 claims. Application claim 1 Stated:

A rigid structural metallic panel of predetermined thickness comprising a pair of sheets or similar geometric shape and area, one of said sheets comprising an uninterrupted load-sustaining member and the second sheet having elongated zones comprising tension means extending substantially between opposite edges of said sheet and spaced from said one sheet, said second sheet having portions displaced from the plane thereof at spaced locations generally throughout the area thereof and extending into engagement with said one sheet to transmit load forces from said one sheet to said tension means of said second sheet to render said panel rigid.

Application claims 2-11 were dependent upon application claim 1, and added limitations such as: (1) the top sheet being of thicker gauge metal than the bottom sheet, (2) the two sheets being connected at their edges, (3) the tension means being continuous strips of metal arranged transverse to each other and extending to the periphery of the lower sheet, (4) the displaced portions of the lower sheet being tongue-like struts, (5) the terminal edges of the struts being bent into flat engagement with, the undersurface of the upper sheet, and (6) flanges extending from the perimeter of the lower sheet toward the upper sheet and connected thereto.

Application claim 12 stated:

A rigid structural metallic panel of predetermined thickness comprising in combination, a sheet of metal uninterrupted on its surface and of predetermined geometric shape, a grid arrangement of transversely intersecting sets of spaced strips of sheet metal substantially parallel to and spaced from one surface of said sheet of metal, the ends of said strips being interconnected to the edges of said sheet to serve as tension-sustaining means, ana strut members integral with certain portions of said spaced strips and extending therefrom to the adjacent surface of said sheet and operable to transmit compression forces from said sheet to said tension-sustaining strips and thereby render said panel capable of sustaining substantial load forces comparable with the weight of said panel when applied to the surface of said sheet opposite that engaged by said strut members.

Application claims 13-27 more clearly defined the tension strips and struts, including the various types of struts disclosed in the patent application.

All of the originally filed 27 Graham claims were rejected by the Patent Office on the basis of British Patent 168,616 to Rogers and United States Patent 3,018,209 to Dijksterhuis, et al. Three other references, of which United States Patent 3,008,551 to Cole is the most pertinent, were also cited. As a result, the originally filed 27 claims were cancelled and new claims 28-35 were submitted. Claims 28-35 ultimately became claims 1-8, respectively, of the Graham patent. Plaintiff’s assignors, in the same amendment which substituted claims 28-35 for original claims 1-27, stated:

* * * [Additional neV? claim 32 [Graham patent claim 5] is presented in which the terminal edge connecting means of the two sheets are set forth still differently from the manner in which they are recited in Claims 28 and 31 [which claimed the edge structure illustrated by Fig. 5 of the patent], but said terminal edge structure nevertheless is believed to be patentable because it is not shown in the prior art and is meritorious.

Application claims 28, 31 and 32 (patent claims 1, 4 and 5) all call for “strut members integral with certain edges of said grid” (emphasis added). In arguing the allowability of application claims 28 and SI to the examiner, applicants urged that the preferred panel construction had only two strut members bent at a single pair of opposite side edges of the square openings in the lower sheet. This arrangement provided ample open access to the space between the upper and lower sheets, facilitating connection of the bent terminal edges of the struts to the upper sheet and connection of the overlapping peripheral bracing flanges. Applicants then stated:

In respect to both the British Rogers patent, as well as the U.S. Dijksterhuis et al patent, it will be seen that, in every embodiment, the spacing struts extend downwardly from every edge of the various square openings in the perforated sheet, thereby barring ready access to the space between the strips from which the struts extend and the spaced imperforate sheet, particularly at the terminal margins thereof. This distinction is submitted to be of distinct significance and applicants’ arrangement is urged to be substantially superior to that of the reference structures, including all of the references cited by the Examiner, and not merely the 2 principal ones applied in the Official Action. [Emphasis added.]

The examiner allowed claims 28-33 (patent claims 1-6), and, after a successful appeal to the Patent Office Board of Appeals, claims 34 and 35 (patent claims 7 and 8), which did not contain any recitations to the edge structure of the panel, were also allowed.

15. The prior art references primarily relied on by the Patent Office in the prosecution of the Graham application are British Patent 168,616 (hereinafter the “Rogers” patent), United States Patents 3,008,551 (hereinafter the “Cole” patent) and 3,018,209 (hereinafter the “Dijksterhuis” patent).

(a) The Rogers patent discloses a structural panel formed of two superimposed metal sheets. One sheet is imperforate and the other is perforated with “X”-shaped incisions at staggered intervals to form four triangular-shaped tongues per incision. The tongues are bent toward the imperforate sheet to form struts separating the sheets and rectangular openings in the perforate sheet, with four struts per opening. The terminal portions of the tongues then are bent flush with and either spot welded or riveted to the imperforate sheet. The peripheral edges of the perforate sheet are bent at right angles toward the imperforate sheet and then bent inwardly toward the interior portion of the panel.

Several differences exist between the Rogers panel and the inventions of claims 5 and 6 of the Graham patent. First, the area between sheets is intended to be filled with concrete or similar material. Consequently, when it is used for flooring, the perforate sheet is positioned above the imperforate sheet. Concrete then is poured through the openings onto the im-perforate sheet. 'Second, the rectangular openings in the perforate sheet are staggered and do not form a “checkerboard grid.” Third, because the openings are staggered, parallel tension strips extend the length of the perforate sheet in only one direction; transverse strips are staggered, each one extending only between two adjacent lengthwise tension strips. Fourth, since the edges of the perforate sheet are bent inwardly toward the interior of the panel, there is neither a “longitudinal rib,” nor a “channel-shaped finishing strip” affixed thereto. Finally, the Kogers patent does not disclose the use of a wear surface layer secured to the top surface of the imperforate sheet.

(b) The Cole patent discloses a structural panel having two superimposed metal sheets: an imperforate surface sheet and a perforate core sheet. Incisions are cut into the core sheet at regular staggered intervals. By a forming and drawing process, openings are made in the core sheet shaped like equilateral triangles with round comers. The three rounded corners of each opening are bent toward the surface sheet to form stretch flanges that prevent buckling in the core sheet. Metal tongues extending from the three straight sides of each opening are bent at less than right angles toward the surface sheet to form struts. The terminal edges of the stmts then are bent flush with and secured to the bottom portion of the surface sheet. An object of the Cole patent is to provide greater spacing between the surface sheet and core sheet than is possible in panels having drawn core sheets where the maximum spacing depends upon the drawing limits of the core sheet, and, accordingly, the stmts are formed by splitting, forming, and drawing- tbe core sheet. This desire is expressed in the specifications of the Cole patent, wherein it is stated :

A further object of the invention is to monolithically fabricate a core panel that is partly split and formed and partly drawn in such a manner as to permit a much greater panel depth than is possible to provide with rigidized cores which are dependent upon the maximum limits of the drawing ability of the metal for their maximum panel depths.

(c) The Dijksterhuis patent discloses a structural panel having two imperforate outer sheets spaced apart by an inner separator. This panel is preferably made of cardboard, and is intended for use in cardboard containers. The inner separator is made by cutting a grid of alternate “H” and “I”-shaped incisions into a flat sheet to form rectangular-shaped tongues, and then 'bending the tongues at right angles to the flat sheet. This last step produces in the flat sheet a “checkerboard grid” of square openings separated by parallel rows and columns of straight strips that is identical in construction to that found in the Graham patent. The end portions of the tongues then are cemented or glued to a flat surface of one of the outer sheets, and the straight strips remaining in the plane of the separator sheet are similarly secured to a flat surface of the outer sheet.

Several differences also exist between the Dijksterhuis panel and the claims. First, the Dijksterhuis patent does not disclose that the panel can be made of metal or that it can be used as rigid flooring. Kather, the only material disclosed is cardboard, and the only use disclosed for the panel is in the manufacture of containers for insulation purposes and the like. Necessarily, there was no disclosure of, or consideration given to, the use of a wear surface layer secured to one of the outer sheets. Second, three sheets are used in the Dijksterhuis panel; two imperforate outer sheets and one perforate inner sheet. Third, the Dijksterhuis patent does not disclose any edge structure for the panel. Consequently, there is no disclosure of peripheral flanges, a “longitudinal rib,” or a “channel-shaped finishing strip” affixed thereto.

16. Although defendants relied on a number of patents in their motion for summary judgment, the following table lists the only patents relied on by defendants in their requested findings of fact:

The ’763 and ’892 Rushton patents were assigned to WACO. In addition, defendants also rely upon a brochure published by WACO prior to the date of the Graham invention for its showing of elevated floor panels manufactured by WACO prior to the July 16,1963, filing date of the Graham patent. This brochure was not considered by the Patent Office.

17. For our present purpose it is necessary to consider, in addition to the previously discussed Cole patent, the ’763 Rushton patent, and the WACO publication. Neither of these references was before the Patent Office during its consideration of the Graham application.

(a) The ’763 Rushton patent discloses a panel structure designed to be used in conjunction with other similar panels as an elevated floor. The panels are designed to be supported by pedestal mounts at their comers. Furthermore, the ’763 Rushton patent discloses that the elevated floor can be used to support electronic computer equipment. The panel consists of an imperforate top metal sheet that is either flat or has a serrated nonslip surface and a bottom metal sheet that is formed into a truss pan. If the serrated surface is omitted, tile blocks can be secured to the upper surface of the top sheet. The truss pan consists of parallel rows and columns of inverted cups or pedestals formed in the bottom sheet by a deep drawing operation. The metal between the cups remains substantially undisturbed in the plane of the bottom sheet to form flat rim areas about the edges of the cups extending the length and width of the bottom sheet in parallel rows and columns. The truss pan thus bears a striking resemblance to an ordinary cupcake pan. The bottoms of the cups are flat and are positioned flush with and welded to the underside of the top sheet. The peripheral edges of the truss pan are bent at right angles toward the top sheet to form a vertical flange about the panel. Then, the terminal portion of the vertical flange is bent outwardly from the interior portion of the truss pan, parallel to and flush with the undersurface of the top sheet. This portion is spot welded to the top sheet to form a horizontal lip or flange about the periphery of the panel. See the accompanying drawings which compare the edge structure of this panel to the Severn edge structure.^*

The ’763 Rushton panel differs from the structure of claims 5 and 6 of the Graham patent in the following respects: First, the ’763 Rushton patent does not disclose the use of a channel-shaped finishing strip secured to its horizontal flange. Second, the rim areas between pedestals in the bottom sheet do not form “straight strips” since the cups are drawn from circular areas of metal in the lower sheet. However, the rim areas extend in parallel rows and columns to the edges of the lower sheet. Consequently, in each row or column of rim area, a straight line axis can be constructed to define a lon-

gitudinal direction of tension sustaining capability extending the entire length or width of the bottom sheet. Third, while the drawn pedestals form voids in the plane of the lower sheet, there are no true “openings” or holes in the lower sheet, such as called for by claims 5 and 6 of the Graham patent. This, of course, prevents any access to the area between the upper and lower sheets.

(b) The WACO brochure illustrates a two-sheet elevated floor panel of the type which was manufactured and sold by WACO prior to the filing date of the Graham patent. The upper sheet is imperforate and has a wear surface layer secured to its top surface. “Pedestals” or “dimples” are drawn from the lower sheet into contact with the upper sheet. These “dimples” differ from the pedestals of the ’763 Rushton panel, however, in that they are conical shaped and terminate in small tips at the undersurface of the upper sheet. Furthermore, the “dimples” are so closely spaced throughout the area of the lower sheet that the drawing operation produces undulating hills and valleys in the metal between the “dimples.” This differs from the flat rim areas in the plane of the lower sheet that are shown in the ’763i Eushton patent. The peripheral edges of the lower sheet are bent at less than right angles toward the upper sheet, and then bent horizontally out so as to form, in conjunction with the edges of the upper sheet, a horizontal flange extending about the periphery of the panel. The terminal edge of the lower sheet is then bent upward at right angles into a vertical rib spaced slightly from the upper sheet and extending about the periphery of the panel. Finally, a finishing strip is secured to the top and interior surfaces of the vertical rib and positioned flush with the wear surface layer. Due to inadequate strength in the horizontal flanges, this panel was intended to be used with horizontal support beams positioned about the perimeter of the panel under the horizontal flange, commonly referred to as “stringers” in the trade, and was not capable of supporting heavy loads with only pedestal supports at each comer.

The WACO panel differs from claims 5 and 6 in the following ways: First, the edges of the lower sheet of the WACO panel are bent at less than right angles toward the upper sheet. Consequently, they do not form the exact same type of bracing flange disclosed and claimed by the Graham patent. Second, the horizontal flange of the WACO edge structure is not found in the Graham edge structure, which is formed with only a vertical bracing flange 24. Third, the WACO finishing strip differs in detail from the Graham finishing strip in the latter’s inclusion of a vertical section positioned flush with the exterior surface of the vertical rib. Fourth, the metal drawing operation which was employed to form the “dimples” resulted in the formation of undulating tension strips. However, while the WACO tension strips are not flat and straight as the “Graham” tension strips, they do define a grid-work of parallel rows and columns of “dimples” that extend the length and width of the lower sheet about which the strips undulate.

18. Prior to the filing date of the Graham patent, plaintiff had actual knowledge that WACO was manufacturing the panel described in finding 17. Notwithstanding, plaintiff did not call the Patent Office’s attention to the WACO panel during the prosecution of its application. While no reasons or explanation were given, plaintiff apparently felt that this was not necessary because of its belief that the Graham panel was a substantial improvement over the WACO panel. This belief appears to be based on the following facts: First, the Graham panel did not require “stringers” for support, but, due to its improved perimeter construction, only needed pedestal supports at the four corners. Second, tension strips in the lower sheet of the Graham design were flat, thereby providing greater tension strength than the undulating tension members of the WACO panel. Third, the drawing operation used to form the cups in the WACO panel limited the depth and spacing of the cups, and since the amount of load that a panel can support is proportioned to the cube of the thickness of the panel, the WACO panel was not caj)able of supporting the same size loads as the “Graham” panel which was able to achieve a wider separation between sheets by providing for longer strut length. Finally, the conical-shaped dimples of the WACO panel provided less support area than the struts of the Graham panel. This is an important factor in panel design, since the deflection strength of a panel is dependent upon the amount of such contact.

No evidence was introduced to show that plaintiff willfully failed to disclose the WACO panel to the Patent Office so as to perpetrate a fraud upon the Patent Office by reason of such nondisclosure.

19. No evidence was introduced at the trial to show the existence of: (1) long-felt but unsatisfied need for a solution provided by the inventions of claims S and 6, (2) solution to long-felt need which was long sought unsuccessfully by those of at least ordinary skill in the floor paneling art, despite the availability of the implementary components, (3) the prior art teaching away from the inventions of claims 5 and 6, (4) significant acceptance of the claimed invention through licensing by other manufacturers, (5) conspiracy by other manufacturers not to take licenses under the claimed invention, or (6) new or unexpected results emanating from the inventions of claims 5 and 6.

20. Sales of panels by plaintiff of the kind disclosed in the Graham patent have totaled approximately 30 million dollars from the date of the invention to the time of trial in this suit. Plaintiff was, at the time of filing the petition in this suit, the largest supplier in sales volume of elevated flooring. Plaintiff’s advertising budget, exclusive of direct promotional selling efforts, is probably less than one percent of sales, although plaintiff admits that its promotional costs are “substantial.”

21. The only evidence of the level of ordinary skill in the elevated floor paneling art indicates that the engineers engaged in the design of such paneling are at least college graduates.

Conclusion of Law

Upon the foregoing findings of fact which are made a part of the judgment herein, the court concludes as a matter of law that plaintiff is not entitled to recover, and the petition is dismissed.

1 § 102. Conditions for patentability; novelty and loss of right to patents.

A person shall be entitled to a patent unless—

(a) the invention was known or used by others In this country, or patented or described In a printed publication In this or a foreign country, before the invention thereof by the applicant for patent, * * *.

2 §10S. Conditions for patentability non-obvious subject matter.

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

* See following illustration.