In re Hellsund

Almond, Judge.

This is an appeal from the decision of the Patent Office Board of Appeals affirming the rejection of claims 1, 2, 4, 7-10, and 21-23 of appellant’s application entitled “Continuous Casting Process and Apparatus.”¹ No claims were allowed.

The invention relates to the continuous casting of polymers into sheets. Appellant’s apparatus can best be understood with reference to Figs, la, lb and 2, reproduced below:

Appellant casts polymeric sheets by feeding a monomer between two moving endless belts and curing (polymerizing) the monomer while it is contained within the space between the belts. Liquid monomer is fed to the top of lower belt 12 at point 18. The monomer is carried between rollers 13 and 16, at which point it becomes enclosed between the lower run of upper belt 11 and the upper run of lower belt 12. The two belts move through the curing zone 29 at the same speed. Curing is effected by heating the monomer, preferably by spraying belts 11 and 12 with hot liquid. The liquid, such as water, is sprayed from noz- 'zles 33 which are positioned above and below the monomer as shown in Fig. 2. The polymer sheet may be postcured in zone 30. Belts 11 and 12 are supjiorted at the desired distance from each other by rolls, such as rolls 37 and 38 in Fig. 2, which are spaced at short distances throughout the curing and postcuring zones.

As can be seen from the drawings, belts 11 and 12 follow a downward inclined path from the point defined by rolls 13 and 16 until they reach postcuring zone 30. The path is inclined in order to avoid problems previously encountered in polymer casting. It appears that continuous polymer casting between horizontal endless belts had previously been known, but that it had been impossible to maintain the spacing between the belts. This resulted in the lack of control over the thickness of the product. This problem was overcome by running the belts at an angle to the horizontal for the length of the curing zone so that a pressure head of the liquid monomer is developed which is sufficient to maintain the spacing between the belts until the liquid is polymerized. Appellant did not discover the use of the inclined path to maintain the spacing between the belts. Appellant’s contribution resides in the suggestion that while the belts are inclined they should follow a curved path which, is defined by their own natural curvature.

Claim 1 is illustrative:

1. A process for preparing substantially rigid sheets and the like which comprises passing a fluid composition comprising a polymerizable organic monomer between and in contact with two moving surfaces, providing a pair of seals between said surfaces such that said fluid composition is confined in a space bounded on two opposing sides by said seals, allowing said fluid to fill the cavity defined by said surfaces and said seals, passing said composition and moving surfaces through at least one zone in which said composition is subjected to conditions which cause said monomer to polymerize, one of said surfaces being disposed above the other of said surfaces in said zone, said upper surface being of such a size and weight that it would how downwardly into said fluid and toward said second surface if said surfaces were horizontal in said zone, the path of said surfaces through said zone being defined by the natural curvature of said moving surfaces and maintaining said surfaces at an incline to the horizontal in said asoné to cause a fluid head to he developed by said fluid composition whereby the fluid pressure exerted by said fluid composition is sufficient-to maintain said surfaces substantially parallel to each other and the spacing between said surfaces at a predetermined distance in said zone, said natural curvature being substantially that which said surfaces would assume if supported only at the upper and lower limits of said incline, bringing said surfaces together to an extent sufficient to compensate for any shrinkage of the composition during polymerization such that said surfaces are maintained in contact with said composition during polymerization, and removing the resultant polymerized sheet from both of said surfaces.

The other claims add limitations concerning the monomer used, specify that the moving surfaces are made of stainless steel, add a postcuring step, or differ from claim 1 in other respects not pertinent here. JSTo distinction between the claims has been drawn, and accordingly they will stand or fall together.

The rejection of the claims was made on the basis of a patent to Opel et al. (Opel).² It is clear from the patent that it was Opel who solved the problems associated with horizontal belt continuous casting by arranging the endless belts so that they are “inclined in such a manner that the pressure of the materials between the belts is sufficient to maintain the spacing between them at a desired predetermined distance.” The Opel patent refers to the present application, treating appellant’s “natural curve” process as a specie of the generic invention of placing the belts at an incline:

As claimed, herein, the inclined path of the moving belts may he a straight line or, as claimed in copending application Ser. No. 490,897, filed on the same date as the present application in the name of Hellsund, and assigned to the assignee of the present application, these belts may follow a curved path which is defined by the natural curvature of the belts.

The patent further states:

It is to be understood that the word “inclined” as used in the present specification and claims is intended to include straight, curved, angular or other paths which may be defined by a belt moving between a first roller and a second roller wherein the first roller is at a height greater than that of the second roller.

Figures la, lb, and 2-5 of the Opel patent are essentially identical with Figs, la, lb, and 2-5 of the present application, and the description of the apparatus depicted in those figures is correspondingly similiar. The patent also contains Figs. 6 and Y, which are directed to the straight line inclined path process apparently invented by Opel.

Appellant does not contend that he invented the straight line or generic variations of the process. On the contrary, appellant’s application specifically. states:

However, it was not until the process and apparatus described and claimed in eopending application Serial No. [490,945, now the Opel patent], filed on the same date as the present application in the names of Opel et al and assigned to the same assignee as the present application was developed that continuous casting of monomers on a commercial scale became possible. Certain problems continued to be experienced with regard to the use of the Opel et al process and apparatus including the need for extremely tall buildings to house the inclined portion of an apparatus of substantial length and the difficulty in maintaining the inclined portion in the desired position. Furthermore, the inclined portion of the Opel et al apiiaratus required rather massivé supporting structures, and it was desired to simplify this portion of the apparatus.

The examiner rejected the claims under both section 102 and section 103 of the statute. The section 102 rejection, based on the premise that some “natural sag” would occur in even the straight line inclined path embodiment of Opel, was not sustained by the board.

Appellant argued before the board that the section 103 rejection should be reversed on two grounds: (1) that the Opel disclosure was not prior art with respect to appellant’s application since they were both filed on the same day; and (2) that even if the Opel disclosure were available as prior art, appellant’s invention would not have been obvious to one of ordinary skill in the art in view of the Opel disclosure. In his Answer, the examiner contended that appellant had admitted that the Opel invention was prior to his invention, pointing to the statements in appellant’s application quoted above and also referring to statements allegedly made at an interview. The examiner postulated that the Opel disclosure was available as prior art under 35 USC 102(a), (f) or (g).

Appellant submitted a brief in reply to the examiner’s Answer. Whether or not appellant had previously admitted that part of the disclosure of the Opel patent was available as prior art, such an admission was clearly made in that reply brief. The pertinent portions of the reply brief are set forth below, with almost all emphasis being ours:

It is pointed out that the disclosure of Patent No. 3,376,371 is not available in its entirety, dut only insofar as the disclosure therein [is] acknowledged as prior art in the present application. Indeed, it is expressly pointed out at column 2, lines 66-70 of Patent No. 3,376,371 that the embodiment comprising the use of curved belts is not the invention of the paténtees but' rather the invention of Hellsund, the applicant here. The Examiner appears to recognize this distinction at pages 6 and 7 of the Examiner’s Answer, but goes on to find that it is “obvious” because:

1. Natural curvature is known; and

'2. “It is not an unobvious result that continuous casting through a curved path is as feasible as continuous casting through a straight inclined path”.

* * * * * * *

Furthermore, the acknowledged prior art represented l>y part of the disclosure of Patent No. 3,316,871 in no way encompasses many of the specific limitations set forth in the appealed claims. For example, the shape of the curve recited in claim 23 is in no way disclosed or suggested by that part of the disclosure of Patent No. 3,816,371 which is avalladle as a reference.

The board devoted much of its opinion to the determination of “what prior art is available for use, and, if any, the statutory basis on which [it] is [to be] used.” The board concluded that the prior invention of Opel was available as prior art by virtue of 35 USC 102 (g). Before us, appellant argues that the board’s holding was in error, and that the Opel patent is not available as prior art.

We find no need to treat the board’s discussion óf 35 USC 102(g) in view of the above-quoted portions of appellant’s reply brief and the acknowledgments in his application concerning the Opel invention. We are not convinced that the board committed error in holding what appellant has termed “that part of the disclosure of Patent No. 3,376,371 [the Opel patent] which is available as a reference” to be usable against appellant’s invention. In re Garfinkel, 58 CCPA 883, 437 F.2d 1000, 168 USPQ 659 (1971); In re LoPresti, 52 CCPA 755, 333 F.2d 932, 142 USPQ 176 (1964); cf. S. N. Turner, Admissions as Prior Art Under 35 USC 103, 52 J.P.O.S. 249 (1970). Of course, the board did not use that part of the Opel patent which discloses what it acknowledges to be appellant’s invention as prior art against the instant claims. See In re Mathews, 56 CCPA 1033, 408 F.2d 1393, 161 USPQ 276 (1969); In re Facius, 56 CCPA 1348, 408 F.2d 1396, 161 USPQ 294 (1969). As appellant pointed out, the Opel patent is usable against the instant claims “only insofar as the disclosure therein [is] acknowledged as prior art in the present application.”

Having decided that Opel was usable as prior art, the board went on to find that appellant’s claimed invention would have been obvious in view of Opel. The board considered that “straight or natural sagging, and horizontal or sloping, conveyor belts are all well known as engineering maters.” The board discredited appelalnt’s argument that the use of the curved path decreased the necessary height of the casting apparatus by showing that the height of the apparatus used in appellant’s example, which utilized a curved path, was actually greater than the height of the apparatus used in an essentially identical process in Opel Example 2, which utilized a straight line inclined path. We agree with the board’s reasoning on this issue, and conclude that the claimed invention would have been obvious to one of ordinary skill in the art in view of the portion of the Opel disclosure relied on.

The decision of the board is affirmed.

ItiCH, Acting Chief Judge, concurring.

There are several cogent reasons why I cannot join Judge Almond’s opinion. I shall first name them and then discuss them.

1. The opinion does not deal with the issue raised by the board’s decision and briefed and argued in this court.

2. Tlie opinion does not accurately state the ground of rejection before us and is confusing as to the role played in that rejection by the Opel et al. patent.

3. In accepting appellant’s admissions as the sole basis fox’ affirming the board and as support for an obviousness rejection under § 103, the opinion goes further than this court has ever gone before, further than the Patent Office has gone, goes contrary to what the Patent Office did in this case, and creates a very dangerous precedent. (See 5 below.)

4. The opinion declines to consider what, if am/, statutory basis exists for using an applicant’s admission as establishing “prior art” under § 103. Admitted prior invention is not necessarily “prior art” under § 103.

5. By refusing to consider § 102(g) or to relate the use of the admission of prior invention by Open et al, to it in any way, the opinion discards safeguards carefully written into § 102(g) to prevent the use of prior abandoned, suppressed, or concealed, inventions as “prior art,” opening the way to the use of such inventions as “prior art.”

Discussion

It first becomes necessary to state clearly what is the sole rejection on appeal. The rejection is for obviousness under § 103 which says:

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. [My emphasis.]

As the board said,

The major question presented for decision in this appeal is the determination of what prior art is available for use and, if any, the statutory basis on which [it] is used. [My emphasis.]

We said in In re Hilmer, 53 CCPA 1288, 1313, 359 F. 2d 859, 879, 149 USPQ 480, 496 (1966):

Much confused thinking could be avoided by realizing that rejections are based on statutory provisions, not on references, and that the references merely supply the evidence of lack of novelty, obviousness, loss of right or whatever may be the ground of rejection.

We then discussed an illustrative case in which a certain patent was relied on to show what invention had been found, in an interference, to be a prior invention and pointed out, after using that patent for that limited purpose, that the “patent had no relevance, as such.”¹ (As I will show, this has a bearing on what Judge Almond’s opinion says about the Opel et al patent.) The above quotation from Ilibner has-been applied in In re Land and Rogers, 54 CCPA 806, 819, 368 F.2d 866, 875, 151 USPQ 621, 630 (1966); In re Facius, 56 CCPA 1348, 1357, 408 F.2d 1396, 1406, 161 USPQ 294, 301 (1969); and In re Bergstrom, 57 CCPA 1240, 1246, 427 F.2d 1394, 1399, 166 USPQ 255, 260 (1970).

What, then, is the statutory basis of the rejection before us in this case? All are agreed that Hellsund’s claims were rejected for obviousness under § 103 in view of the prior art. Judge Almond’s opinion correctly states that, “The board concluded that the Opel invention was available as prior art by virtue of 35 USC 102(g).” (Emphasis mine.)

Since the board’s opinion is unpublished² and has not been quoted from, we can see what it actually concluded, and what issue was appealed, only by setting forth its reasoning (all emphasis mine) :

The examiner predicates the availability of the subject matter he is using as prior art upon paragraphs (a), (f) and (g) of Section 102.

The “subject matter” the examiner was using, as the board had just pointed out, was the invention of Opel et al. which -was described in their patent (along with Hellsund’s invention). Eejection was not based on the Opel et al. patent as such. The board continued:

Paragraph (e) of 102 is not applicable since the applications have the same filing date. Paragraph (a), referred to by the Examiner, is not, by itself, considered applicable since the prior knowledge and use referred to in this paragraph is now generally interpreted as referring to public prior knowledge and use. Paragraph (f) would be applicable but the use of this paragraph would require that the present applicant had knowledge of the prior subject matter at the time he made his improvement. This may very well be the case here, but it is unnecessary to consider this matter in view of the presence of paragraph (g) under which this fact would be irrelevant.

Paragraph (g) of Section 102 refers to the prior invention of another. This paragraph is not restricted, to interference proceedings, but is the basis upon which the defense of prior invention may be raised against the validity of a patent in an infringement suit and which, if proven, would render the patent invalid.

The board cited no precedents in support of the last statement but I will supply some: These two are from the Solicitor’s brief: Armour & Company v. Swift & Company, 168 USPQ 269 (D.C. N.D. Ill. 1970), (Findings of Fact 18,19 and Conclusion of Law 2); Lorenz v. Berkline Corp., 137 USPQ 29 (D.C. N.D. Ill. 1963) (Conclusions of Law 11, 17, and 21.) See also Sutter Products Co. v. Pettibone Mulliken Corp., 428 F.2d 639, 166 USPQ 100 (7th Cir. 1970); Grinnell Corp. v. Virginia Electric & Power Co., 277 F. Supp. 507, 156 USPQ 443 (E.D. Va. 1967). There are others which the Patent Office cited to us. The board opinion continues:

Normally, this type of rejection is not made in eos parte prosecution of applications since necessary evidence relating to prior invention is not at hand and is not searched for as such, and a rejection of this kind is normally only applied when an antecedent interference contest between the same parties has established a prior invention. However, when the facts are matters of record, or acknowledged, or not in dispute, 102(g) is used as a basis for rejection in ex parte practice. In this particular case there is no dispute as to the invention of Opel and, Bottoms being prior to the time appellant made his improvement; this is readily evident from the presentation of the cases and is freely acknowledged by appellant. * * *

The prior art used in this ease is the prior invention of Opel and Bottoms, and tlvis is made availahle by paragraph (g) of Section 102. The Opel et al. patent and its claims are used for the purpose of delineating this prior invention * * *. In this sense the patent is the reference as containing a disclosure of the prior invention.

* * * * * * *

* * * the prior invention of another is acknowledged (or admitted) and the statute in Section 102 makes the prior invention available as prior art.

This, then, was the decision from which appeal was taken to this court. The single reason of appeal filed asserted, inter alia, that the record does not permit reliance on the invention disclosed in the Opel et al. patent, “assertedly made available as prior art under 35 USC 102(g).” Appellant’s brief argues this case on the basis of what the conclusion of that brief says are the “primary issues raised by this appeal,” namely “whether or not Section 102(g) has any applicability whatsoever in an ex parte proceeding, and, if so, the extent to which Section 102(g) stands as a source of Section 103 prior art.” The first two points of the Patent Office brief are:

1. Prior invention by another is a proper basis for ex parte rejection under section 102(g).

2. The facts of the case justify a holding that the pertinent portions of Opel are “prior art” made available under section- 102(g).

Judge Almond’s opinion declines to deal with these issues raised by the appeal, passing them by with the statement that “We find no need to treat the board’s discussion of 35 USC 102(g) in view of” Hellsund’s admission.

Hellsund’s admission goes only to the existence of the Opel et al. prior invention. He has vociferously denied'in this court that it could be used against him as “prior art” under § 103. Judge Almond’s opinion uses admissions about the priority of the Opel et al. invention without answering that argument and without saying what, if any statutory basis exists for using it as § 103 prior art. So far as the opinion goes, the admitted prior invention is used without any statutory basis.

The evident effect, if not the intent, of Judge Almond’s reasoning is to make all admissions by applicants of prior invention by others “prior art'!'> without limitation. The Patent Office tied its use of the Opel et al. prior invention as “prior art” under §103 to § 102(g) which contains the safeguard that the prior invention is not usable, as § 103 “prior art” or otherwise, if “abandoned, suppressed, or concealed.” Judge Almond’s opinion discards this safeguard. It does Dot limit use of another’s prior invention to § 102(g) or to § 103 but makes it available even for a § 102(a) rejection which the board was careful to limit to knowledge or use which was public. Admitted prior invention under this opinion could thus be held to be support for a § 102(a) rejection on the ground that “the invention was known * * * by others in this country * * * before the invention thereof by the applicant” even though the invention of the other had been abandoned, suppressed, or concealed. Discovery procedures might well bring to light such prior invention of others. I am not imagining this. The examiner made that very rejection in this case. The Board of Appeals refused to sustain him.

In point (2), supra-, I said the role of the Opel and Bottoms patent as a basis for the rejection, as explained’in Judge Almond’s opinion, is confusing.-1 will explain why.

In its initial discussion of the rejection, the opinion says: “The rejection of the claims was made on the basis of a patent to Opel et al. (Opel),” and points out in a footnote that the application for that Opel and Bottoms patent was filed on the same day as the Hellsund application at bar. Though the opinion does not mention the legal results which necessarily follow from that fact, they are that the patent is not a reference as of its issue date (35 USC 102(a) or (b)) and not a reference as of its filing date (35 USC 102(e)) to show prior invention. The rejection was not “on the basis of a patent to Opel”. It was on the basis of evidence, only part of which is in the patent, of a prior invention by Opel and Bottoms, and its statutory ground is found in both § 102(g) and § 103. That is what this case is all about. The priority of Opel’s invention rests entirely on admissions, without which the Opel patent would have no effect whatever, but the use of the admissions is predicated on § 102(g) or on nothing.

Finally, I refer to the fact that this court has limited statutory jurisdiction in ex parte patent appeals, limited to review of “the decision of the Board of Appeals,” a jurisdiction still further restricted by the points raised by the reasons of appeal. 35 USC 141-144. Ordinary notions of procedural due process dictate that our decision should be based on and limited to the issues decided below and raised here by the appeal and argued by the parties.

The issue decided below, except for the obviousness question, raised by the solitary reason of appeal, and argued and briefed by the parties, is whether a prior invention of another, made in this country, and established by evidence and admissions of the appellant, constitutes “prior art,” within the meaning of that term in §103, hy virtue of § 102(g). My answer to that question is in the affirmative. Judge Almond’s opinion finds “no need to treat the board’s discussion of 35 USC 102(g).” On this point, appellant’s brief concludes that “much has been said in this regard — it is time the matter be decided.” It has now been decided in In re Bass, Appeal No. 8660, decided concurrently herewith, but not applied here.

One issue never present or argued in this case is whether all admitted prior invention — regardless of abandonment, suppression or concealment — is to be considered “prior art” under § 103. If there had ever been such an issue, we surely would have had arguments that we have not had; yet, without benefit of argument, that is what Judge Almond’s opinion seems to regard as the law. The opinion cites in re LoPresti and In re Qarfinkel, neither of which cases has ever been considered to stand for any such broad proposition. Of course, the article cited, by Turner, whose qualifications are missing, is authority for nothing. It is mere discussion and speculation. In Garfinkel we said (58 CCPA at 887):

Because appellant has from the beginning treated the information in Kistler [a publication] as “prior art,”² we will do likewise.

By contrast, Hellsund has argued from the beginning of this case that the Opel and Bottoms prior invention is not “prior art” under any part of the statute. In LoPresti we said “The Graggs and McCann patent * * * is prior art as expressly provided in 35 USC 102(e).” Buie 131 affidavits overcame it as sueh but LoPresti admitted in his application and brief that his invention was an improvement upon the prior Craggs and McCann invention as disclosed in the § 102(e) reference patent. We used that admitted prior invention as a basis for affirming a § 103 rejection. We neglected to say what section of the statute authorized us to use the admitted prior invention as § 103 prior art. We considered that we had the patent before us as “prior art” under § 102(e) and we said “the case must be decided on the assumption it is prior art notwithstanding the affidavits.” It is not one of our better-reasoned opinions and has long been an anomaly in the law. The board opinion in this case has bailed us out, saying, in discussing LoPresti,

Our analysis of the question merely expands the court’s condensed reference to an admission of prior art and gives the statutory basis [§102(0)2; the prior invention of another is acknowledged (or admitted) and the statute in Section 102 makes the prior invention available as prior art. [Emphasis mine.]

The present case is the first in which it has been proposed to altogether detach admitted prior invention of another from the statute, relying only on the admission without any statutory basis whatsoever for doing so. In Garfmkel we were sure a basis was to be found somewhere in § 102; in LoPresti we thoiight we had it in § 102 (,e). In Judge Almond’s .opinion it is said to be .unnecessary to discuss § 102(g), the only part of the statute which authorizes use of Opel’s invention as prior art. I consider that a very dangerous legal proposition for the reasons hereinabove stated.

Since I consider the Opel and Bottoms prior invention to be available under § 102(g) and § 103 “prior art” and as I agree that Hellsuncl’s invention has been shown to be obvious within the terms of § 103, I agree to affirmance.

It will be evident from the opinions in the case of In re Bass, decided concurrently herewith, that a majority of the court deciding that case holds the view that prior invention of another within the terms of § 102(g) constitutes “prior art” under § 103. I deem it to be in the best interest of a sound patent system to make that point entirely clear and to base rejections on statutory grounds whenever they apply. I consider it highly undesirable to affirm a rejection which was squarely based on the statute on an applicant’s admission without tying it to any statutory provision, as is being done here, for the reasons I have stated. An admission of prior invention, as distinguished from an admission of “prior art,” is not enough to create a statutory ground of rejection and the opinion here leaves the law afloat without compass or rudder. The Bass majority opinion also contains an analysis of § 102 which answers some comments in Judge Baldwin’s concurring opinion in this case.

1 Serial No. 490,897 filed September 28,1965.

2 U.S. Patent No. 3,376,371, issued April 2, 1968, to C. J. Opel and P. H. Bottoms, on an application filed September 28, 1965, the same day appellant’s application was filed.

1 While there may be a possibly unique exception to this truism in obviousness-type double patenting rejections, which are based on case law, In re Zickendraht, 50 CCPA 1529, 319 F.2d 225, 138 USPQ 22 (1963), concurring opinion, the statement is certainly true of the kind of issues in this case, lack of novelty or obviousness over prior art. These are certainly rejections based on statutory grounds.

2 It would be a public service to publish it in view of the importance of the real issue in this ease and in the companion case of In re Bass, decided concurrently.

2 From the record we are uncertain whether the type of “prior art” referred to is of the § 102(f) or § 102(g) variety or whether it is of the “known * * * in this country” type as in § 102(a). What is clear, however, is that appellant has admitted that as to him the information in Kistler is prior art of some type. [My emphasis.]