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R. Milgrim, Trade Secrets (Matthew Bender 1979).
Oisher and Steinhauser. The Role of the Prior Inventor Under
Section 102(g), 45 J. Pat. Off. Soc'y 595 (1963).

Patent Law Perspectives

Pitlick, A Proposed Compromise to the "Prior Art" Controversy Surrounding In re Hellsund and In re Bass, 56 J. Pat. Off. Soc'y 699 (1974).

Rich, Congressional Intent-Or, Who Wrote the Patent Act of 1952, Nonobviousness-The Ultimate Condition of Patentability 1:1.

Rich, Laying the Ghost of the "Invention" Requirement, Nonobviousness-The Ultimate Condition of Patentability 1:501. Rich, Why and How Section 103 Came To Be, NonobviousnessThe Ultimate Condition of Patentability 1:201.

Rivise and Caesar, Interference Law and Practice (Michie 1940). F. Robbins, The Defense of Prior Invention-Patent Infringement Litigation (Prac. L. Inst. 1977).

Rosenstock, Prior Art Under 35 U.S.C. Section 103 Includes Prior Invention-In re Bass and In re Hellsund, 56 J. Pat. Off. Soc'y 263 (1974).

Skillman, 1977 Rules on Duty of Disclosure, 1979 Patent Law Annual 29 (Matthew Bender 1979)

Witherspoon, Current Problems and Considerations Re Section 103 "Prior Art" by Reason of 35 U.S.C. 102(e), (f), and (g), [1980] Current Developments in Patent Law 95 (Prac. L. Inst. 1980).

EDITOR'S NOTE: And see Chisum, Prior Invention and Patentability, 63 J. Pat. Off. Soc'y 397 (1981).

Edward C. Walterscheld

THE EVER EVOLVING MEANING OF PRIOR ART (PART I)

As the Court of Customs and Patent Appeals (C.C.P.A.) has noted, prior art "is a very important term of art in patent law.''' It is not surprising therefore that an immense amount has been written by both the judiciary and the various commentators-concerning this amorphoux concept. Although the very scope and complexity of the subject malter covered by the seemingly innocuous term "prior art' would appear to preclude any simple definition of what is meant thereby, there nonetheless is no dearth of trying. Thus, as but one example, the Seventh Circuit offers the following:

The prior art includes any relevant knowledge, arts, description, and patents which pertain to, but prackite, the invention in question.'

The C.C.P.A., while acknowledging that the "exact meaning is a somewhat complex question of law," weighs in with: Basically, the concept of prior art is that which is publicly known, or at least known to someone who has taken steps which do mako it known to the public,...or known to the inventor against whose application it is being applied.... [Citations omitted.]

Unfortunately, definitions of this kind are not only simplistic but also are subject to a variety of exceptions.*

*Deputy Assistant Dirvetur. University of California, Los Alamos National Laboratory, Los Alamos, New Mexico 87545

-The Los Alamos National Laboratory requests that the publisher identify this article we work performed under the auspices of the U.3. Department of Energy, 1. In re Borgy, 596 F.2d 953, 201 U.8.P.Q. 352, 365 (1979).

2 Mooney v. Brunswick Corp., 663 F.3d 724, 212 U.S.P.Q. 401, 464 (1961). 3 Bergy, supra, al footnote 7. This dufimilion is dictum fur there wHS NO DENBOR other than apparent pique with language used by the Supreme Court for the C.C.P.A. to volunteer it.

4 This will be shown in some detail later in these articles. Suffice to say here that the mere fact that someone has taken steps which do in fact make information publicly known (koes not automatically muku i prior art in the context of the putunl law. Moreover, such a definition literally suggests that the inventar's own invention is always prior art to him since clearly it is known to him. Where there are certain circumstances in which this can be the case, it is certainly not the usual state of affairs. In addition, contrary to the Seventh Circuk definition, in some instances **prior art" can literally post-date nither than pre-date the invention in question.

For reasons which will become clearer as this series of articles progresses, the complex nature of prior art can best be interpreted and understood in terms of the multitudinous case law involving it. Having said that, it is still appropriate to commence within the present statutory framework for the patent law which is the Patent Act of 1952 as subsequently amended. Title 35 of the United States Code is the codification of this Act. The only reference to prior art in the entire Act appears at 35 U.S.C. 103. According to the Senate Report accompanying the Act:

[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." (Emphasis supplied.]

The chief draftsman of the Act made the same point:

The antecedent of the words, "the prior art"... lies in the phrase "disclosed or described as set forth in Section 102" and hence these words refer to the material specified in Section 102 as the basis for comparison.'

Other than this, the legislative history is silent as to any meaning to be ascribed to prior art. Initially, there was very little comment, judicial or otherwise, on this point. This is somewhat remarkable in that there are several subsections of 35 U.S.C. 102 which a perusal suggests should have no relationship to prior art as that term is most commonly thought of. For example, it is difficult to perceive how Section 102(c) concerning abandonment or Section 102(f)

Recently, a district judge in Chko recognized these fuels when he stulud: "Prior art is a difficult concept to define. For instance, a literal definition of it is impossible." (Emphasis supplied.) General Motors Corp. v. Toyota Motor Co., Ltd., 467 F. Supp. 1142, 205 U.3.P.Q., 158, 174 (8.D. Ohio 1979).

5 103. Condtiions for petentability; non-obvious subject maller

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 10% of the title, if the differences between the subject matter sought to be patented and the prior art are such that the subject muiter as a whole would have been obvious at the time the invention was made in a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not he negatived by the manner in which the invention wan made.

6 Senate Report No. 1979, Råd Cong., 2d Seee., U.S. Code Cong, & Admin. News at 2399.

7 P. J. Federico, "Commentary on the New Patent Act," 35 U.S.C.A. p. I l 20.

8 See text accompanying note 28, supra.

dealing with derivation or improper statement of invention pertain to prior art.

Indeed, that is straightforward, or so at least Judge Rich of the C.C.P.A. seemed to think when he stated in 1973 that "[o]f course, [Section 102] (c), (d) and (f) have no relation to $103 and no relevancy to what is 'prior art' under $103.""" It was his position that these three subsections deal only with originality of invention or loss of right having nothing to do with prior art." In a concurring opinion, Judge Baldwin noted that:

The statute does not contain a definition of the term "prior art." Nor does section 103 require that everything referred to in section 102 must be considered as "prior art" as that term is used therein." Thus, insofar as Judge Baldwin was concerned, ''[nĵo one would contend that section 102(c) has anything to do with prior art."'"

Having said that, he was careful to point out that a literal reading of the language of Section 103 might easily load to the conclusion that "prior art" was intended to include only that material in Section 102 in which something is "disclosed or described."" He suggested that, based on the legislative history of the predecessor language to that which resulted in the Patent Act of 1952, the Congressional intent was not so narrow,"

15

Although Judge Rich and Judge Baldwin had a strong disagreement as to whether Section 102(g) was a prior art section of the statute, they were in full accord in stating their belief that no one would contend that Section 102(c) has anything to do with prior art. No one but the Patent and Trademark Office, that is. Dismissing the views of the C.C.P.A. in this regard as merely noncontrolling dicta, the board of appeals has recently espoused the position that

9 In re Base, 474 F.2d 1276, 177 U.S.P.Q. 178, 189 (1973).

10 Id.

11 Bass, supra, 177 U.S.P.Q. at 193.

12 177 U.S.P.Q. at 193, u. 3.

13 The phrase "disclosed or described" is the exact terminology used in Section 103. See note 5, supra.

14 177 U.S.P.Q. at 193. The legislative history he relies on is set forth at note 4 of the published opinion.

15 See their respective opinions in Buss, supra.

16 Ex pawte Andresen, 212 U.S.P.Q. 100 (1981).

Section 103 includes "all of the various bars to a patent as set forth in section 102" and stated:

We here recognize that some of the bars set forth in section 102 may not be universally applicable to every applicant, but may apply only to certain applicants for a patent. For instance, the bar of section 102(c) may be applicable only to the applicant who has previously abandoned his invention and thereafter attempts to patent the same invention or an obvious modification of the abandoned invention." [Emphasis supplied.]

Needless to say, the delineation of the prior art statutory arena as defined by the various provisions of Section 102 is in a state of evolution. Insofar as can be ascertained, neither the C.C.P.A. nor any other court has ever attempted to consider all aspects of the interrelationship between Section 102 and Section 103.1

Aside from that which is Section 102 prior art, the question arises as to whether there can be other prior art. Such a query is really two questions in one, i.e., is there other statutory prior art than Section 102 and is there nonstatutory prior art? These questions were first inferentially raised in 1964 when the C.C.P.A. emphasized that " 'prior art' means at least those things named in section 102."'" Subsequently, Judge Baldwin pointed out that this language "is, at best, inaccurate-some of the 'things' in section 102 are prior art, such as those in 102(a), and some are not, such as in 102(c)."'" Be that as it may, in 1965 the court modified this language just a bit by stating that prior art "refers to at least the statutory prior art material named in section 102" [emphasis supplied],"

17 212 U.S.P.Q. at 102. It is interesting to note that the board's statements with respect to Section 102(c) were equally as much dicta as those of the C.C.P.A. which it so lightly dismissed.

18 Judge Baldwin was careful to point out in Bass, supra that the court was not there called upon to consider the entire interrelationship. 177 U.S.P.Q. at 193. The district court in General Motors Corp. v. Toyola Motor Co., Ltd., supra, provided an analysis of 12 prior art scenarios suid to arise from the operation of Sections 102(a), (b), (e), and (g). Although acknowledging that other subsections of Section 102 had previously been argued as providing Section 103 prior art, the court apparently did not subscribe to this view and did not discuss Sections 102(c), (d), or (n. See 203 U.S.P.Q. at 175 and in particular note 33.

19 In re Harry, 333 F.2d 920, 142 U.S.P.Q. 164, 167, n. 2 (1964).

20 Bass, supra, 177 U.S..Q. 193, n. 3.

21 In re Yale, 347 F.2d 995, 146 U.S.P.Q. 400, 403 (1965).

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