DOCKET NO.: 57
DECIDED BY: Warren Court (1965-1967)
LOWER COURT: United States Court of Appeals for the District of Columbia Circuit
CITATION: 382 US 252 (1965)
ARGUED: Nov 17, 1965
DECIDED: Dec 08, 1965
Facts of the case
Media for Hazeltine Research, Inc. v. Brenner
Audio Transcription for Oral Argument - November 17, 1965 in Hazeltine Research, Inc. v. Brenner
Research Incorporated et al., petitioner versus Edward J. Brenner, Commissioner of Patents.
Laurence B. Dodds:
Mr. Chief Justice and Associate Justices, may it please the Court.
Fortunately, the factual situation presented by this case is somewhat less complex than the one heard at the conclusion of the session yesterday.
It can be very simply stated and this factual situation raises a single issue of law.
As to the facts an inventor by the name of Robert Regis made an invention on a microwave switch and filed an application in the Patent Office in 1957.
Briefly, microwave switch is a device which is useful in connecting and disconnecting a microwave transmitter station from it's antenna as principally used for example in radar installations.
However, fortunately since the subject matter is quite complex, the issues involved do not require going into the details of that device.
Now, after that application was filed in 1957 and certain preliminary proceedings in the Patent Office which are not material here, in 1959 the examiner of the Patent Office finally rejected the claims of Regis saying and “as being unpatentable over Wallace in view of Carlson” and that is the Wallace patent 2822526 and Carlson patent 2491644 reproduced in the record.
Those -- that decision of the primary examiner was affirmed by the Patent Office Board of Appeals and by the courts below.
Now, the respondent neither in the Patent Office nor in the courts below contended that either of these two reference patents, the Wallace patent or the Carlson patent individually was in anticipation of the Regis invention, but what it contended was that if one were to combine the invention of Wallace with the invention of Carlson then as imagine -- as an engineering matter that combination would have been obvious and would have resulted in the structure defined by the claims in Regis application.
That would be alright but for this fact.
At the time that Regis filed it's patent application in 1957, the Wallace disclosure was found solely in an application which was maintained in secrecy in the Patent Office and was not available to Regis nor to any other workers in the art who at that time might have been attempting to devise the Regis microwave switch.
The Wallace application and the resulting patent is what has been come to be known in the jargon of the Patent Law as a co-pending patent, that is a patent which was filed before the patent on controversy but did not issue until later.
So that there was a period in which both the so called reference patent and the application or patent under consideration were both pending in the Patent Office and both maintain in secrecy.
Now, the respondent in this case relies solely on Section 103 of Title XXXV United Stated Code, the 1952 Patent Act and they will have a little more to say about that later, and the respondent contends that notwithstanding the fact that the Wallace patent was at the time a secret application in the Patent Office that it was and a “prior art” as that term is used in Section 103.
And therefore, the invention or the disclosure of Wallace could be combined with, taken together with that in earlier patents which were admittedly prior art to show that what Regis did was an obvious thing to do under Section 103 of the statute.
Now as is petitioner's position however, that as a matter of law the Wallace patent, as of it's filing date, was not a part of the prior art as that term is used in Section103 of the statute and was not competent evidence to show whether or not what Regis did would have been obvious to that mythical man skilled in the art at the time that Regis made his invention.
Therefore, the sole issue of law presented on this petition is whether such a co-pending patent which is maintained in secrecy in the Patent Office until it issues is a part of that general fund of knowledge come to be known as the prior art as that term is used in Section 103 of the statute.
Now, this Section 103 is the only section of the patent statutes which define for the term and conditions for patentability which uses this term prior art.
And it reads in part, “If the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made, at the time the invention was made to a person having ordinary skill in the art.”
Now, at the time the invention made as far as we're discussing here was at the time that Regis filed his patent application.
It had not been -- there has been no occasion for attempting to establish an earlier date of invention.
Now, the statutes nowhere explicitly define this term prior art, but there were many decisions of the courts, the lower and the superior courts going back a 100 years which did define the term prior art and in this case there is also, we have some assistance from the report of the Committee of the Judiciary in reporting out the 1952 Patent Act.
That report and referred to that in the petitioner's brief, says that Section 103 was the first statutory statement of this particular condition for patentability which is sometimes been referred to as defining what is invention, an illusive term, and that report said Section 103 states this requirement of patentability in the Title.
It 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.
Now, here we have a definition of prior art.
It is, meaning what was known before as described in Section 102.
But now, it appears that Section 102 was described -- which defines most of the conditions for patentability has seven subsections, but of those only the first ones subsection A refers -- uses this language what was known before.
And the Committee report in discussing this Section 102 (a) again gives a definition of “What was known before,” and I quote again briefly.