is available as "prior art" within the meaning of that term in §103 by virtue of § 102(g),37

the court went on to determine what the evidence showed as to priority of the inventions described in the Bass and Jenkins patents, upon which their availability as prior art depended. 38

The evidence of priority in the record consisted of filing dates, the Bass application, the reference patents, statements in affidavits filed and accepted under Rule 131, and statements by appellants' attorneys during prosecution. The evidence established that the invention described in the Jenkins patent was prior to the combination invention of the Bass application.39

The solicitor argued that the invention described in the Bass patent should also be deemed prior to appellants' invention because the Rule 131 affidavits made no attempt to show that it was not. The court rejected this argument stating that it was not incumbent on the applicants to prove it was not prior merely because the PTO thought it might have been. Finding no evidence in the record tending to indicate priority of the invention described in the Bass patent, the court excluded the Bass patent from consideration as prior art in passing on the obviousness rejection.40

Holding that the Jenkins patent was available as prior art and the Bass patent was not, the court went on to consider the obviousness of the claimed subject matter in view of the prior art.

Judge Baldwin, in a concurring opinion joined by Judge Almond, stated:

The principal opinion takes the position that the term "prior art" as it is used in 35 U.S.C. 103 should include all inventions which were made in this country before an applicant or patentee made his invention, regardless of when those inventions are made public or patent applications on them are filed, so long as those inventions are found not to have been abandoned, suppressed or concealed. I disagree with that conclusion. ..

37 id. at 1286-87, 177 U.S.P.Q. at 186 (Rich, J.); id. at 1306-07, 177 U.S.P.Q. at 201 (Lane, J. concurring).

If we allow this subjective, secret knowledge to become the standard against which patentability is judged, we will do the public a disservice by watering down the incentive that the patent system provides for the advancement of the useful arts."

The concurring opinion of Judge Lane indicates he believed both Judges Rich and Baldwin expounded points of law not necessarily involved nor essential to the disposition of the appeal. Judge Lane stated his view to be

the 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, is available as "prior art" within the meaning of that term in §103 by virtue of §102(g).42

The three opinions are concurring since each affirmed the rejection of the appealed claims as obvious in view of references other than the Bass patent and the Jenkins patent, and reversed rejections of the appealed claims as obvious in view of the Bass patent taken with the Jenkins patent and another patent since the Bass patent was not available as prior art. Consequently, all that was said about section 102(g) by Judges Rich and Baldwin was dicta.43

2. In re Bulloch

The issue of a 102(g)/103 rejection was once again before the CCPA in In re Bulloch. The case, however, was decided on other grounds. The issue presented was whether, in an ex parte case involving an application for patent, the disclosure of an alleged prior invention of another in an issued patent was available as "prior art" within the meaning of that term in section 103 by virtue of section 102(g), even though that disclosure was not available to the public prior to the date of applicants' invention.46

41 Id. at 1292-1304, 177 U.S.P.Q. at 190-99.

42 Id. at 1306-07, 177 U.S.P.Q. at 201.

43 See F. Robbins, The Defense of Prior Invention-Patent Infringement Litigation 2 (Prac. L. Inst. 1977) and D. Chisum, 2 Patents §5.03[3] n.48 and accompanying text (Matthew Bender 1980).

44 604 F.2d 1362, 203 U.S.P.Q. 171 (C.C.P.A. 1979).

45 Both the Bulloch application and the application that matured into the reference patent were filed on the same date, and both were assigned to the same company. Id. at 1364 n.5, 203 U.S.P.Q. at 173.

46 Id. at 1366 n. 11, 203 U.S.P.Q. at 174.

Assuming, arguendo, that the alleged prior invention was available as prior art, the court found the claimed invention unobvious in view of the prior art. Consequently, the 102(g)/103 issue was not reached.

Speaking for the court, Judge Miller noted that any proper rejection involving section 102(g), whether or not combined with section 103, must be based upon evidence of an invention prior to that of the applicant." Judge Miller further noted that the patent asserted as disclosing the prior invention of another, was not in fact prior art under section 102(g) because its filing date was too late and there was no evidence that the invention disclosed in that patent was invented prior to the invention in question.

3. In re Clemens

In re Clemens 48 once again afforded the CCPA the opportunity to review Bass. In Clemens, the application for patent (hereinafter the Clemens application) was filed in the names of Clemens, Hurwitz, and Walker,49 and claimed a process for purifying condensate water for a steam regenerating system in which steam is first passed through a steam turbine to generate electricity and is then condensed and recycled back to a boiler. Such a purification process is called condensate polishing.

The claimed method uses a strong base ion exchange resin derived from vinylbenzylchloride. Applicants discovered that vinylbenzylchoride-based resins (hereinafter VBC-based resins) were superior to the prior art chloromethylated-based resins (hereinafter CME-based resins) in condensate polishing.

Applicants acknowledged as prior art: VBC-based resins per se; the use of VBC-based resins generally for ion exchange purposes; CME-based resins per se; the use of CME-based resins generally for ion exchange purposes; and the use of CME-based resins specifically for condensate polishing. They asserted, however, that the CME-based resns had serious drawbacks when used for condensate pol

+7 Id. at 1366 n. 12, 203 U.S.P.Q. at 174.

-8 622 F.2d 1029, 206 U.S.P.Q. 289 (C.C.P.A. 1980).

Application Serial No. 641,464 filed Dec. 17, 1975. a continuation-in-part of application Serial No. 428.968 filed Dec. 27, 1973.

ishing. Primarily due to their thermal instability at elevated temperatures, the hot condensate had to be cooled to below 60°C before it could be polished using CME-based resins.

The references relied upon by the PTO in rejecting the claims for obviousness included a patent to Barrett. 50 The Clemens application and the Barrett patent were coassigned and the Barrett patent had the earlier effective filing date. Claims 1-10 of the Clemens application were rejected as obvious in view of Barrett (hereinafter the Barrett rejection) and as obvious in view of certain other references (hereinafter the CME rejection).

The Barrett patent disclosed a macroreticular polymer of crosslinked vinylbenzylchloride which can be used to make VBC-based resins. Moreover, the use of resins in condensate polishing was mentioned in the portion of the specification describing the prior art. The specification also indicates that in tests comparing the thermal stability of the VBC-based resins claimed in the Barrett patent with corresponding CME-based resins, the VBC-based resins consistently had greater thermal stability. The applicants' claims were rejected in view of subject matter disclosed, but not claimed, in the Barrett patent.

To remove the Barrett patent as a reference, the applicants filed a declaration under Rule 131 in which they described three tests conducted at their direction prior to the filing date of the Barrett patent. Two of the tests were run to compare the thermal stability of VBC-based resins used in the claimed process with closely related CME-based resins used in prior art condensate polishing. The two tests showed that at temperatures of 110°C and 140°C the VBCbased resins were more thermally stable. Applicants argued these results demonstrated an unexpected superiority of the claimed process. On appeal, appellants (applicants) submitted that in view of the known chemical similarity between VBC-based resins and CME-based resins, one skilled in this art would have expected the two types of resins to have the same physical characteristics and functionality, and therefore, appellants' discovery that VBC-based resins were substantially superior in condensate polishing at high and mod

50 United States Patent No. 3, 843,566 issued Oct. 22, 1974. filed April 16, 1973.

erate temperatures would have been unexpected and surprising.si

In response to applicants' assertion that the Barrett rejection was overcome by the Rule 131 declaration, the examiner stated:

Barrett is applied as a reference, not under 35 USC 102(e), but because he is the prior inventor of the claimed subject matter. Since Barrett invented the claimed composition, it would be logically inconsistent that Clemens et al invented the process of using the composition prior to Barrett inventing the composition per se. The composition's utility, use in boiler steam condensate purification, is seen to be a part of Barrett's invention.52

The board affirmed both the CME rejection and the Barrett rejection, indicating that applicants' rebuttal evidence was directed at establishing the nonobviousness of using VBC-based resins at temperatures of 110°C and above whereas the claims were broad enough to cover treatment at lower temperatures, such as at 60°C, the maximum recommended temperature for CME-based resins.

Regarding the Barrett rejection, the board stated:

There is no showing here that patentee derived his knowledge that VBC anion exchange resins were useful in condensate polishing operations from appellants. There must be sufficient evidence to establish that appellants are the prior inventors of the subject matter disclosed in the patent to Barrett. This is especially true where, as here, the present application and Barrett are coassigned and presumably [the] assignee has possession of the necessary evidence to establish inventorship. Thus, we conclude that appeliants have not sustained their burden of proving facts sufficient to remove the prima facie availability of the Barrett reference.53

Addressing the CME rejection, the CCPA found that the condensate polishing process recited in claims 1-7 and 9-10 differed from the prior art condensate polishing in that the claimed process used VBC-based resins whereas the prior art used CME-based resins. The court held that appellants' evidence of unexpected results at temperatures of 110°C and 130°C was not commensurate in scope to the

51 622 F.2d at 1034, 206 U.S.P.Q. at 294-95. 52 Id. at 1033. 206 U.S.P.Q. at 294.

53 Id. at 1034, 206 U.S.P.Q. at 294.