subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made. 15

It codified a condition that existed in the law by reason of decisions of the courts since at least as early as 1850.16

Section 103 established an objective condition for patentability based upon obviousness in an attempt to improve the patent law by doing away with the phantom requirement of "invention" created through a "flash of creative genius"." As characterized by Judge Rich, one of the draftsmen of the 1952 Patent Act,

Section 103 speaks of a condition of patentability instead of "invention". The condition is unobviousness, but that is not all. The unobviousness is as of a particular time and to a particular legally fictitious, technical person, analogous to the "ordinary reasonable man" so well known to courts as a legal concept. To protect the inventor from hindsight reasoning, the time is specified to be the time when the invention was made. To prevent the use of too high a standard—which would exclude inventors as a class and defeat the whole patent system—the invention.must have been obvious at that time to "a person having ordinary skill in the art to which said subject matter (i.e., the invention) pertains." But that is not all; what must have been obvious is "the subject matter as a whole." That, of course, is the invention as defined by each patent claim. If, for example, a combination is claimed, Section 103 requires that to invalidate the claim, it must be shown that the combination was obvious, not merely its components.18

The term "prior art" used in section 103, however, is not expressly defined in that section or elsewhere in the 1952 Patent Act, 19 and everything in section 102 is not prior

15 35 U.S.C. §103 (emphasis added). · 16 Federico, supra note 14, at 20.

17 See Rich, Why and How Section 103 Came To Be. Nonobviousness-The Ultimate Condition of Patentability 1:201, 1:209-1:213 (J. Witherspoon ed. Bureau Nat'l Aff. 1980) and Federico, Further Comments and Observations on the Origins of Section 103, id. at 1:301.

18 Rich, Laying the Ghost of the "Invention" Requirement. NonobviousnessThe Ultimate Condition of Patentability, supra note 17, at 1:501, 1:508 (emphasis in original).

19 The House Report on the 1952 Patent Act states: "Section 103. . . refers to the difference between the subject matter sought to be patented and the prior art, meaning what was known before as described in section 102." House Report, supra note 12, at 7, [1952] Code Cong. & Ad. News at 2399. P.J. Federico's commentary on the 1952 Patent Act states: "The antecedent of the words 'the prior art... lies in the phrase 'disclosed or described as set forth in section 102'

art. Judge Rich has indicated that the anatomy of section 102 is fairly clear.

As forecast in its heading, it deals with the two questions of "novelty and loss of right." It also deals with originality in subsection (f) which says that one who “did not himself invent the subject matter" (i.e., he did not originate it) has no right to a patent on it. Subsections (c) on abandonment and (d) on first patenting the invention abroad, before the date of the U.S. application, on an application filed more than a year before filing in the U.S., are loss of right provisions and in no way relate to prior art. Of course, (c), (d), and (f) have no relation to $103 and no relevancy to what is "prior art" under $103. Only the remaining portions of §102 deal with "prior art". Three of them, (a), (e), and (g), deal with events prior to applicant's invention date and the other, (b), with events more than one year prior to the U.S. application date. These are the "prior art" subsections.20

Under the circumstances of Bass, the prior invention of another, who had not abandoned, suppressed, or concealed that invention, was held to be available as prior art within the meaning of that term in section 103 by virtue of section 102(g).21

3. Combining Section 102(g) and Section 103 in the Context of an Ex Parte Rejection

In combining sections 102(g) and 103 in the context of an ex parte rejection, four questions arise due to the wording of these statutory provisions.

(1) Was the invention of another abandoned, suppressed, or concealed within the meaning of section 102(g)?

(2) Which invention was prior, the invention of another or the invention in question?

(3) What is included in the "prior art" within the meaning of that term in section 103?

and hence these words refer to material specified in section 102 as the basis for comparison." Federico, supra note 14, at 20.

20 In re Bass, 474 F.2d at 1290, 177 U.S.P.Q. at 189 (emphasis in original). 21 Accord, Sutter Prods. Co. v. Pettibone Mulliken Corp., 428 F.2d 639, 166 0.3 P.Q. 100 (7th Cir. 1970); Grinnell Corp. v. Virginia Elec. & Pwr. Co., 277 F. Supp. 507, 156 U.S.P.Q. 443 (E.D. Va. 1967).

(4) What would have been known to a person having ordinary skill in the art at the time the invention in question was made?

Each of these questions were in essence addressed ard answered by the court in Bass and Clemens. The answers to these questions form the basis on which these cases are distinguishable.

B. Relevant Case Law

The relevant case law construing and applying rejections based on a combination of sections 102(g) and 103 include In re Bass,22 In re Bulloch, 23 and In re Clemens.24 1. In re Bass

In re Bass 25 was not the first time the CCPA considered whether section 102(g) prior invention of another is prior art, or whether such prior invention can be combined with other prior art to sustain a section 103 obviousness rejection. What was considered for the first time was combining section 102(g) and section 103 in the context of an ex parte rejection entirely divorced from the award of priority in an interference which established the prior inventorship relied on in the rejection.26 The court held that the prior invention of another who had not abandoned, suppressed, or concealed it, under the circumstances of that case which included the disclosure of such invention in an issued patent, was available as "prior art" within the meaning of that term in section 103 by virtue of section 102(g).27

A patent application28 (hereinafter the Bass application) was filed in the names of Bass, Jr., Jenkins, Sr., and Horvat and claimed an improved vacuum system for controlling and collecting waste on carding machines. References relied upon by the Patent and Trademark Office (hereinafter the PTO) in rejecting the claims for obviousness included a

22 474 F.2d 1276, 177 U.S.P.Q. 178 (C.C.P.A. 1973). 23 604 F.2d 1362. 203 U.S.P.Q. 171 (C.C.P.A. 1979). 24 622 F.2d 1029, 206 U.S.P.Q. 289 (C.C.P.A. 1980). 25 474 F.2d 1276, 177 U.S.P.Q. 178 (C.C.P.A. 1973). 26 Id. at 1283, 177 U.S.P.Q. at 183.

27 Id. at 1286-87, 177 U.S.P.Q. at 186.

28 Application Serial No. 623,721, filed March 16, 1967.

patent issued to Jenkins, Sr." (hereinafter the Jenkins patent) and a patent issued to Bass, Jr. and Horvat.30 (hereinafter the Bass patent). Patentees Jenkins, Sr., Bass, Jr., and Horvat were the applicants named in the Bass application.

The Jenkins patent. the Bass patent, and the Bass application were all coassigned. Of the three, the Jenkins patent, which essentially shows one element of the vacuum system claimed in the Bass application, was filed first. The Bass patent, which essentially shows another element of the vacuum system claimed in the Bass application, was filed second. The Bass application was filed last.

The claims in the Bass application were essentially rejected by the PTO on the basis of section 103, with sections 102(e) and 102(g) being relied upon to make certain patents available as "prior art". Applicants filed Rule 13131 affidavits to show who invented what and when.

In his final rejection, the examiner indicated that while the Rule 131 affidavits may overcome the Jenkins patent and the Bass patent so far as section 102(e) was concerned since the affidavits show that applicants' invention antedates the filing dates of the two patents, the patents were not overcome as disclosing prior inventions of "another" under section 102(g), relying on dicta in the opinion of Examiner-in-Chief Federico in Ex parte Robbins.32

The PTO Board of Appeals (hereinafter the board) agreed that the Jenkins patent and the Bass patent were available as prior art, and stated, in pertinent part:

Proof that the over-all combination recited in the claims on appeal was made prior to the filing dates of the Bass, Jr. et al. and Jenkins, Sr. patents does not establish that such combination was invented prior to the subcombinations claimed in said patents. ...

Under the circumstances here involved it does not appear that an affidavit under Rule 131 was the proper procedure to adopt. The proper subject of inquiry is not compliance with the Rule but

29 United States Patent No. 3.348.268. issued Oct. 24, 1967. parent filed Oct. 15. 1964.

30 United States Patent No. 3.315,320, issued April 25, 1967, filed Aug. 23. 1965.

21 37 C.F.R. § 1.131.

32 156 U.S.P.Q. 707, 709 (Pat. Off. Bd. App. 1967). See In re Bass, 474 F.2d at 1281 n.3. 177 U.S.P.Q. at 182.

rather what [the] evidence shows [as to] who invented the subject matter of the references which is relied upon and when.33

On appeal, appellants (applicants) argued that their application was claiming separate and distinct inventions from what was claimed in the Bass patent and in the Jenkins patent, and that these patents were not proper references because applicants Bass, Jenkins, and Horvat were working together on a common project as evidenced by facts recited in the Rule 131 affidavits. They admitted that they did not invent the claimed subject matter of either the Bass patent or the Jenkins patent.

Addressing the legal question of what is included in the "prior art" referred to in section 103, Judge Rich, in a lead opinion joined by Judge Rosenstein,34 indicated that

prior art for one purpose is prior art for all purposes and in all courts and in the Patent Office. . . . [P]rior invention is prior art and always has been. The only distinction which exists is between anticipation and obviousness and the determination of either depends on what is in the prior art.35

Section 102(g) prior invention of another is prior art, even in the context of an ex parte rejection entirely divorced from the award of priority in an interference which established the prior inventorship relied on in rejecting.

Of course, [§§102] (c), (d), and (f) have no relation to §103 and no relevancy to what is "prior art" under §103. Only the remaining portions of §102 deal with "prior art". Three of them, (a), (e), and (g), deal with events prior to applicant's invention date and the other, (b), with events more than one year prior to the U.S. application date. These are the "prior art" sections.36

After settling the question.of law and holding that the use of prior invention of another who had not abandoned, suppressed, or concealed it, under the circumstances of this case which include the disclosure of such invention in an issued patent,

33 474 F.2d at 1282, 177 U.S.P.Q. at 183 (emphasis in original).

34 The Honorable Samuel M. Rosenstein, Senior Judge, United States Court of International Trade, sitting by designation.

35 474 F.2d at 1289, 177 U.S.P.Q. at 188.

36 Id. at 1290, 177 U.S.P.Q. at 189 (emphasis in original).