ment in In re Bass1 that Section 102(f) has no relationship to Section 103 and no relevancy to what is prior art under Section 103.82

The Board of Appeals re-entered the fray in 1981 with its opinion in Ex parte Andresen.83 It presented the issue succinctly as

... whether the admittedly prior activities of another, of which activities the appellant had knowledge at the time he made the invention now claimed, may be combined with three patents. to render the claimed subject matter unpatentable under 35 U.S.C. 102(f)/103.

In response to an inquiry from the examiner, the applicant Andresen had admitted, in a paper filed August 18, 1977, that the invention of one Rasmussen (as disclosed in a later issued U.S. patent) not only predated his own invention but that he was aware of it prior to making his own invention.85 The issue came up under Section 102(f) because the Rasmussen work could not be treated as Section 102(g) prior invention in that it was not performed “in this country.

86

The Board began its analysis by stating that Judge Rich's comment concerning Section 102(f) in Bass was simply “noncontrolling dicta" since no Section 102(f) issue was involved in that case. It then quoted certain portions of Federico's commentary and the committee report on Section 103 and concluded:

87

... it appears to us that the commentator and the committee viewed section 103 as including all of the various bars to a patent as set forth in section 102." [Emphasis supplied.]

81 474 F.2d 1276, 177 U.S.P.Q. 178 (C.C.P.A. 1973).

82 177 U.S.P.Q. at 189. It is interesting to note that in the companion case of In re Hellsund. 474 F.2d 1307. 177 U.S.P.Q. 170 (C.C.P.A. 1973), the examiner had postulated a prior invention was available as prior art under Sections 102(a), (f), or (g), but the Board of Appeals limited its affirmance of the rejection of Section 102(g). 177 U.S.P.Q. at 173.

83 212 U.S.P.Q. 100.

84 212 U.S.P.Q. at 101. 85 Id.

86 212 U.S.P.Q. at 102.

87 212 U.S.P.Q. at 101. 88 212 U.S.P.Q. at 102.

It went on to state that:

The decision in the Dale Electronics case... is directly applicable to the issue of a rejection based upon 35 U.S.C. 102(f)/103. and is therefore here controlling. 89

Finally, it suggested that based on certain language from the opinion in In re Clemens" the C.C.P.A. "may not now look with complete disfavor at this approach.

91

Having found no fault with the approach. the Board affirmed the Section 103 rejection predicated on the use of Section 102(f) prior invention as prior art.

A closer look at the Board's rationale. however, shows that it is not nearly as compelling as the Board would have us believe. In this regard. it is interesting to note that the Board cited no judicial authority for its view that Section 103 prior art includes all of the various bars to a patent as set forth in section 102. The reason for this omission is not surprising, because there is no extant case law which supports it. Indeed, the views of the C.C.P.A. judges are directly contrary.

Thus, while Judge Rich and Judge Baldwin disagreed mightily in Bass as to whether Section 102(g) prior invention could be treated as Section 103 prior art. they were in full accord that at least certain provisions of Section 102 were not prior art provisions. According to Judge Rich:

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."

Judge Baldwin, in turn, emphasized that “[n]or does section 103 require that everything referred to in section 102 must be considered as 'prior art as that term is used therein."'93 He pointed out that the legislative history of Section 103 is

89 Id.

90 622 F.2d 1029, 206 U.S.P.Q. 289 (C.C.P.A. 1980).

91 212 U.S.P.Q. at 102. n. 4.

92 177 U.S.P.Q. at 189.

93 177 U.S.P.Q. at 193.

not "inconsistent with the proposition that some of the material in 102 would remain as merely 'anticipatory prior art' "."

Nor is it clear that the "decision" in Dale Electronics is in any way controlling on the Board. As has been previously emphasized." the decision in Dale Electronics appears to have been based on a holding that the claim in question was obvious over Section 102(a) prior art. Thus, the decision itself should have no pertinency to the issue faced by the Board in Andresen. To the extent that the First Circuit in Dale Electronics may have suggested that obvious variants of a Section 102(f) prior invention might be unpatentable under Section 103, that view, according to the Board's own logic, would seem to be non-controlling dicta.

Likewise, by the Board's own logic, its comments relating to Clemens must be dicta and thus non-controlling because the only issue extant in Clemens involved Section 102(g). Moreover, as will be shown later in this article, the holding in Clemens is such as to lead to exactly the opposite conclusion from that drawn by the Board, i.c., it suggests that Section 102(f) prior invention should not be treated as Section 103 prior art.

Be that as it may, the Board has more recently in In re Smith cited Andresen to support a rejection of certain of the claims of a reissue application for Section 103 obviousness over Sections 102(f) and (g) prior invention. The reissue application named Smith and McLaughlin as co-inventors. The examiner rejected 14 of the reissue claims under Section 102(f) on the ground that McLaughlin was the sole inventor and therefore the entity Smith and McLaughlin did not invent the subject matter claimed. The remaining 15 claims of the reissue application were allowed." The Board upheld this rejection, but also determined that the remaining reissue claims were unpatentable under Sections 102(f) and (g), coupled with Section 103, saying:

We hold that the [a]ppellants before us, i.e., the joint inventorship entity of McLaughlin and Smith, did not invent any of the

94 177 U.S.P.Q. at 193, n. 3.

95 See text accompanying notes 68–76, supra.

96 24 P.T.CJ: 441 (1982).

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).

rather sharply criticized in Part 3 of this series of articles, 101 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, 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.