subject matter sought to be patented and that before their invention the claimed subject matter was made in this country by another, namely McLaughlin alone. a different inventorship entity. We also conclude that under the peculiar facts of record in this case, the rejections under 35 USC 102(f) and 102(g) in effect merge. and that the "non-obviousness” requirement of 35 USC 103 should be coupled with the requirements of both 35 USC 102(f) and 102(g) to reject the claims not before us on appeal.

We are convinced that in the case at bar the evidence is fully supportive of our finding that McLaughlin was the sole inventor of all the subject matter sought to be patented. and that McLaughlin and Smith began their collaboration with knowledge of McLaughlin's prior invention. The invention of McLaughlin . . . is thus prior art to appellants here, and our situation falls directly within the Bass doctrine... With regard to our coupling of 35 USC 103 obviousness with 35 USC 102(f) to deem the claims not on appeal also unpatentable, we are aware that generally 102(f) is not considered a "prior art" subsection of the "novelty and loss of right" statutory provisions [noting Judge Rich's opinion in Bass]. However. we must in this peculiar instance concur fully with our colleagues who decided the appeal in Ex parte Andresen . . . . that section 102(f), as well as 102(g), should be coupled with 103 obviousness to reject the claims of appellants who have "acquired particular subject matter or information from another, and thereafter seek(s) to patent either the same or obvious variants of that acquired subject matter or information.``98

Chisum, while generally approving the notion of coupling Section 102(f) prior invention with Section 103 obviousness, has argued that situations such as that in Smith represent a clear exception to any such notion and that the prior invention of A should not be treated as prior art against A & B for the purpose of Section 103 obviousness absent a clear statutory bar." Indeed, the holding in Smith appears diametrically opposite to that of the Fifth Circuit in Shields v. Halliburton Co.100 decided some two months prior to Smith. While the opinion and holding in Shields have been

98 24 P.T.C.J. at 442.

99 D. S. Chisum, "Sources of Prior Art in Patent Law," 52 Wash. L. Rev. 1 (1976).

100 667 F.2d 1232 (5th Cir. 1982).

101

rather sharply criticized in Part 3 of this series of articles," it must nonetheless be recognized that if Smith represents the correct interpretation of the statute then a significant number of U.S. patents are invalid for it is not an uncommon practice for joint inventors to be listed on a patent application under exactly the same circumstances found in Smith to invalidate the claims under 35 U.S.C. 102(f) and 35 U.S.C. 103. It may well be that the positions taken by Chisum and the Fifth Circuit represent greater reality than does that of the Office in Smith.

8. Reconciling the Use of Section 102(f) and Section

102(g) Prior Invention and Admissions Against Interest as Section 103 Prior Art

With the possible exception of Dale Electronics, no judicial opinion has been found which has expressly treated Section 102(f) prior invention as Section 103 prior art. The C.C.P.A. could readily have expressly so held in In re Fout, 102 but for reasons not of record declined the option.

In Fout the solicitor on behalf of the Office set forth the issues as follows:

1. Are the steps recited in the preamble of appellants' claim 1 available as evidence of prior art under 35 USC 103 with respect to appellants, by virtue of their admissions in the record and the Jepson form of the claim?

2. In light of appellants' acknowledgment that "they did not invent the process claimed in the preamble portion" of claim 1, and other circumstances of this case, is that process available as evidence of prior art under 35 USC 103 with respect to appellants by virtue of 35 USC 102(f)?

3. In light of appellants' acknowledgment that their invention was subsequent in time to the process invention claimed in the preamble portion of claim 1, and other circumstances of this case, is that process available as evidence of prior art under 35 USC 103 with respect to appellants by virtue of 35 USC 102(g)? 03

By so setting forth the issues, the solicitor gave the C.C.P.A. an excellent opportunity to discourse on the relationship

101 Walterscheid, op cit., 64 J.P.O.S. at 646-48.

102 675 F.2d 297, 213 U.S.P.Q. 532 (C.C.P.A. 1982).

103 Brief for the Commissioner of Patents and Trademarks, Patent Appeal No. 81-547.

between Sections 102(f) and (g) and admissions against interest. Unfortunately, the court failed to do so, and from its opinion one would never know that issues 2 and 3 above existed. Rather, insofar as the court was concerned the issue was "whether the . . . invention, set forth in the preamble. constitutes prior art under 35 USC 103.*

The so-called Pagliaro invention was described in the preamble and Fout et al. took the position that their concession that they did not invent the Pagliaro process was not an admission that it was "legally available as prior art against the claims.10 The C.C.P.A. responded that it

... has recognized that section 102 is not the only source of section 103 prior art. [Footnote omitted.] Valid prior art may be created by the admissions of the parties. [Citing Nomiya. Hellsund, Bass, Garfinkel, and Lopresti.]

We hold that appellants admission that they had actual knowledge of the prior Pagliaro invention described in the preamble constitutes an admission that it is prior art to them. The Pagliaro process was appellants' acknowledged point of departure. and the implied admission that the Jepson format preamble of claim 1 describes prior art has not been overcome. It is not unfair or contrary to the policy of the patent system [footnote omitted] that appellants' invention be judged on obviousness against their actual contribution to the art.106

The court's reference to the use of the Jepson format as creating an implied admission that the preamble is prior art was necessitated by the opinion in In re Ehrreich 107 to that effect. 108

Compare now the situation in Fout with that in In re Clemens.109 In Clemens the C.C.P.A. held that:

104 213 U.S.P.Q. at 534. The court also stated that if the preamble could be so used, a second issue was whether when combined with the other cited art, the preamble rendered the claimed subject matter obvious to a person of ordinary skill in the art at the time the invention was made. It held that it could and did.

105 213 U.S.P.Q. at 535.

106 213 U.S.P.Q. at 535–36.

107 590 F.2d 902, 200 U.S.P.Q. 504 (C.C.P.A. 1979).

108 For a critical analysis of Ehrreich, see E. C. Walterscheid, "The Preamble of Jepson-Type Claims as Prior Art," 62 J.P.O.S. 85 (1980).

109 622 F.2d 1029, 206 U.S.P.Q. 289 (C.C.P.A. 1980).

Where an applicant begins with knowledge of another's invention that will be available to the public at a later date as a result of an issued patent, treating this other invention as prior art is justified under facts such as those in Bass. No such consideration is present when the applicant does not begin with such knowledge. 110

As has been pointed out in Part 3 of this series, it is doubtful that the court intended to limit its holding in Clemens to public disclosure in an issued patent, since it is the public disclosure that is the key and not necessarily the manner in which the public disclosure is made." The critical point, however, is that by this language the court held that a prior invention known to the inventor of a later invention, such prior invention later becoming public knowledge, as by the issuance of a patent, may be treated as Section 102(g) prior art against the later invention, but only under these precise circumstances.

The Pagliaro invention found to be prior art in Fout was made in this country and was not suppressed, abandoned, or concealed, i.e., it was publicly disclosed." That being the case, the C.C.P.A. could have found the invention of Fout et al. to be obvious over the Section 102(g) prior invention of Pagliaro et al., citing Clemens and Bass with which it appears factually indistinguishable."13

114

The authors of Patent Law Perspectives have recently suggested that based on the holdings in Clemens and Fout the C.C.P.A. has established two distinct classes of "prior art" against which patentability under Section 103 is to be measured. The first class, which they call "public prior art," is said to be that generally defined in Sections 102(a), (b), (d), and (e). The second class, called "private prior art, is said to consist of all information derived from others actually known to the patent applicant prior to the date of his invention, apparently regardless of whether or not that

110 206 U.S.P.Q. at 299.

111 Walterscheid, op cit., 64 J.P.O.S. at 635.

112 See In re Pagliaro, 657 F.2d 1219, 210 U.S.P.Q. 888 (C.C.P.A. 1981). 113 While there was no Jepson-type claim in Bass, the real issue in Fout was whether the admitted prior invention of another of which Fout et al. were aware could be used as prior art against the later invention of Fout et al. This, in turn, paralleled the factual situation in Bass.

114 1 Pat. L. Persp. §2.3[2](2d ed.) at pp. 2-67 and 2-68.

information would have fallen within some section of 35 U.S.C. 102 or would have been prior art to the public at large.

According to these commentators.

the court could have preserved the applicability of both "public" and "private" prior art without abandoning 35 U.S.C. §102 as the statutory definition of prior art by relying on 35 U.S.C. §102(f) as tantamount to a prior art section."'s

The difficulty with this approach is that it effectively removes and does away with the constraints on the use of “prior art" set forth in Sections 102(a) and (g) and renders such constraints meaningless. As Stiefel has pointed out. for a prior invention to be prior art under Section 102(g), the work must (1) have occurred "in this country.“ (2) have been actually reduced to practice. and (3) have not been suppressed, abandoned, or concealed: however. none of these requirements apply to Section 102(f) prior invention used as Section 103 prior art." It may well be for this reason alone that the C.C.P.A. has refused to treat Section 102(f) prior invention as Section 103 prior art. For to do so is in effect to judicially amend and write out of the statute certain express language of Section 102(g).

Unfortunately, the approach adopted by the C.C.P.A. in Fout not only appears to suffer from the same defect but presents the added problem of permitting decisions on patentability to be predicated on nonstatutory "prior art. Consider for a moment the treatment of the so-called “admission" in Fout. The court held that the acknowledgement by Fout et al. that they had prior knowledge of the Pagliaro invention constituted, without more, an admission that that invention was prior art as to them." In other words, by the simple fact of acknowledging that they had prior knowledge of the Pagliaro invention Fout et al. are deemed to have admitted that that invention is prior art with respect to their invention. But they in point of fact made no such admission!

The net result of this approach is to shift the burden of

115 Id. at p. 2-68.

116 Stiefel. op cit., 61 J.P.O.S. at 743.

117 213 U.S.P.Q. at 536.