by a noninforming public use. In either case. although he may forfeit his entitlement to monopoly protection. it would be unjust to hold that such an election should impair his right to continue diligent efforts to market the product of his own invention.“1 At first glance, the reasoning used by then Circuit Judge Stevens on behalf of the Seventh Circuit has a superficial plausibility, but a closer examination reveals that it is contrary to a fundamental purpose of the patent statute, namely, to provide the public with a teaching of how to practice the invention for which protection is sought. Contrary to the impression the Seventh Circuit would give, the Congress has not interpreted the Constitutional mandate to "promote the progress of science and useful arts63 in any purely economic sense but rather has emphasized the need for full enabling disclosure and description of the invention." Moreover, the case law makes clear that to render an invention obvious the prior art references must be enabling. i.e., they must teach one of ordinary skill in the art how to make and use the invention.65 Secondly, the court's assumption that the public use will result in competitors' ultimately determining the nature of the invention is defective in several respects. First of all, there is nothing in the record to suggest that this would routinely have been the case and indeed it had not occurred at the time that Dunlop's assignor had made his invention. In addition, it ignores the express language of Section 102(g) indicating that it is the activity of the prior inventor rather than of third parties which determines whether there has been suppression or concealment." Finally, there is nothing whatever unjust about the fact that an election by a prior inventor not to pursue patent protection may ultimately result in an impairment of his own right to market his prior invention. That is a risk every 61 188 U.S.P.Q. at 484-85. 62 See note 46, supra. 63 U.S. Const., art. I, §8. clause 8. 64 See the requirements of the first paragraph of 35 U.S.C. 112 as set forth in note 50. supra. 65 See, e.g.. In re Sasse. 629 F.2d 675. 207 U.S.P.Q. 107 (C.C.P.A. 1980); In re Brown, 329 F.2d 1006, 141 U.S.P.Q. 245 (C.C.P.A. 1964); and In re LeGrice, 301 F.2d 929. 133 U.S.P.Q. 245 (C.C.P.A. 1962). 66 See the text accompanying notes 54, 55, supra. inventor takes when he elects trade secret protection over the patent grant. Contrary to the assertion made by the court, a noninforming public use does not contribute the invention to the public. Unlike the situation with Law's invention in Allen wherein public use immediately established the nature of the invention, Wagner's invention was not obvious from the golf balls which he sold or used in public. That being the case, it is difficult to understand the court's view that he contributed it to the public. Again the court's emphasis on commercialization led it to a conclusion not justified by the facts or the law. Perhaps needless to say, Dunlop has also been severely criticized." Even so, in December 1975, less than two months after Dunlop was decided, a district court in Westwood Chemical, Inc. v. Dow Corning Corp." stated: A prior invention" which will invalidate a patent number (?) under §102(g) need not involve use of the invention in public. Prior private or secret knowledge is available as prior art invalidating a patent under §102(g). This independent work of others is also clearly evidence of obviousness.69 This was going well beyond even the liberal views of the Seventh Circuit. No case law was cited in support of the views expressed and Westwood can perhaps best be treated as simply an anomaly in the continuing evolution of Section 102(g) prior invention as prior art. The position taken in Westwood is to be contrasted to the holding of another district court in September 1976 in Farmhand, Inc. v. Lahman Mfg. Co., Inc.," that a prior invention for which a patent was never applied for and which was never described in a public document or publication was deemed to be abandoned under Section 102(g)." This holding was affirmed by the Eighth Circuit.72 Certain of the difficulties faced by district courts in attempting to determine whether prior invention is prior art 67 See, e.g., Pat. L. Persp. §A.3[1] (1976 Dev.). 68 F. Supp. ——, 189 U.S.P.Q. 649 (E.D.Mich. 1975). 69 189 U.S.P.Q. at 666. 70 F. Supp. - 192 U.S.P.Q. 749 (D.S.Dak. 1976). 71 192 U.S.P.Q. at 757. 72 Farmhand, Inc. v. Lahman Mfg. Co., Inc., 568 F.2d 12, 196 U.S.P.Q. 597, 600 (8th Cir. 1978), cert. der ed. 197 U.S.P.Q. 848 (1978). under Section 102(g) were evident in Norris Industries, Inc. v. Tappan Co. decided several months after Farmhand. The record showed that one Shroeder had reduced to practice his prior invention of the subject matter claimed in the Warner patents involved in the infringement action. Schroeder filed a patent application on an improvement over this first embodiment but never sought to claim the original embodiment in the apparent belief that it was obvious from the prior art. Although a patent issued on the improved embodiment, the published record does not disclose whether the original embodiment which constituted the prior invention was disclosed in the issued patent or was rendered obvious by the disclosure of that patent." Apparently because of the view it took that the Schroeder prior invention was Section 102(g) prior art, the court did not address this issue. Nonetheless, the court took the position that the patent application filed on the improvement negated any inference that the prior invention was suppressed or concealed." It also held that because Schroeder's original embodiment had not been hidden at the General Electric facility where it had been reduced to practice and his fellow employees had not been admonished about keeping his invention secret, it could not be considered to have been suppressed or concealed." Accordingly, it held that the Schroeder prior invention constituted anticipation of the subject matter of the Warner patents which were declared invalid." The Ninth Circuit thereafter affirmed." It is questionable whether the failure to keep an invention under wraps in a corporate facility is equivalent to disclosing the invention to the public. Nor does it automatically or routinely follow that suppression or concealment under Section 102(g) requires an affirmative act and intent to 73 F. Supp., 193 U.S.P.Q. 521 (C.D.Cal. 1976). 74 193 U.S.P.Q. at 526. 75 Arguably this was not the case because the court failed to find the patents in question invalid under Section 102(e) which it presumably would have done in view of the fact that the Schroeder patents were filed long before the Warner inventions were made. See 193 U.S.P.Q. at $26. 76 193 U.S.P.Q. 21 526. 77 193 U.S.P.Q. at 526–27. 78 193 U.S.P.Q. at 531-32. 79 Norris Industries, Inc. v. Tappan Co.. 599 F.2d 908, 203 U.S.P.Q. 169 (1979). suppress or conceal. The failure to take affirmative steps to make the prior invention publicly available may in the appropriate circumstance be a controlling factor. Moreover, whether the filing of a patent application which subsequently issued as a patent on an improvement is conclusive of public disclosure would seem to depend on whether the issued patent had a disclosure which was enabling with respect to the prior invention or at least rendered it obvious when taken in combination with the teaching of other prior art. Yet another example of the problems faced by district courts in attempting to ascertain whether a prior invention is Section 102(g) prior art is evidenced by Continental Copper and Steel Industries, Inc. v. New York Wire Co.80 decided in December 1976. At issue was the validity of a patent by Stauffer. The record indicated that one Webber had reduced to practice his prior invention and had filed a patent application which was subsequently abandoned. A critical point of contention was whether the process disclosed and claimed in the abandoned application had been abandoned as well.81 Relying upon Allen,82 the district court held that since there had been no showing of abandonment prior to the filing date of Stauffer, the Webber invention was not abandoned under Section 102(g) and rendered obvious Stauffer's later invention. According to the court: The concept of abandonment of an invention is not tied to the question of paten: applications or abandonment of an application. Instead, the factual issue is whether Webber invented the process and in any way revealed his invention to the public, regardless of whether or when he sought a patent. The court finds that he did reveal his process to a segment of the public prior to the Stauffer application on October 28, 1959. Samples of the product . . . were revealed to the trade in several instances . . . .83 66 .... The court held that " the process was so obvious that an examination of the finished product was enough to disclose the so-called invention."'84 80 F. Supp.. 196 U.S.P.Q. 30 (M.D.Pa. 1976). 82 196 U.S.P.Q. at 35. 83 196 U.S.P.Q. at 37. 84 Id. Based upon the record adduced in Continental Copper it is difficult to know whether the holding with respect to Section 102(g) is good, bad, or indifferent. Perhaps it might best be termed "suspect." It is elementary patent law that the claims define the invention for which the patent grant is sought. Unfortunately, the district court in Continental Copper never saw fit to reproduce the claim of Stauffer which it invalidated and the record does not make clear whether it was a process claim or a claim directed to an article of manufacture. The confusion arises from the fact that at one point the court stated “the plaintiff secured the patent for the claim at issue primarily through detailed alteration and refinement of the shape and size of the band. Likewise the portion of the claim that is reproduced refers to certain specific geometric limitations of elements of the product or article and these were said to be what convinced the examiner to allow the claim. But at a later point in the opinion the court indicates that both Webber and Stauffer invented processes." It may be that Stauffer's claim was a process claim with product limitations in it. 86 In any case, the court relied heavily on the fact that the claims of the abandoned Webber application and the original claims of Stauffer were directed to a nearly identical process," which it believed was readily obvious from examination of the finished Webber product." In so doing, it seems to have failed to clearly address the central question which was not whether the invention as originally claimed by Stauffer in his application was identical to or obvious over that of Webber but rather whether the claim which ultimately issued in the Stauffer patent and specifically its geometric process limitations were obvious from the Webber product "revealed to the trade." While the court seems to have concluded that such geometric limitations were obvious over the art of record, it also seems to have relied on its view that the Webber process was obvious from the Webber 85 196 U.S.P.Q. at 33. 86 Id. 87 196 U.S.P.Q. at 35. 88 Id. 89 196 U.S.P.Q. at 37. |