In re Bass , 474 F.2d 1276 ( 1973 )

Rich, Acting OMef Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the examiner’s rejection of claims 1-9 of application serial No. 623,721, filed March 16,1967,¹ for “Air Control System for Carding Machines.” All claims are rejected on the ground of obviousness in view of the following references:

- Holden — 1,612,681; Dec. 28,1926

Reiteren — 3,115,683; Dec. 31,1963

Bass, Jr. et al. (Bass) — 3,315,320; Apr. 25, 1967 (filed Aug. 23, 1.965)

Jenkins, Sr. (Jenkins) — 3,318,268; Oct. 21, 1967 (parent filed Oct. 13, 1964)

Fuji, Japanese Patent Application No. 1025/63, published Feb. 14,1963.

Claims 1-9 are all rejected as unpatentable over Bass in view of Fuji. Jenkins was added in connection with claims 1, 6, 7, and 9 and Holden was also added in rejecting claim 9. The statutory basis of this rejection is primarily 35 USC 103, which requires unobviousness of the claimed subject matter in view of “the prior art” of “the subject matter as a whole * * * at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” Additionally, however, 35 USC 102(g) is relied on to establish that the prior inventions of Bass and Jenkins, as shown in their patents, are “prior art.”

Claims 2-5 are'further rejected under 35 USC 103 alone as.un-paténtable over Reiterer and Fuji, each in view of the other, those two references having clear prior art status under § 102 (a) and (b).

The issues raised by this appeal are, first, whether § 102 (g) makes available as “prior art,” within the meaning of § 103, the prior invention of another who has not abandoned, suppressed or concealed it. Section 102(g) is set forth in full in the margin.² The remaining issues are the obviousness of the subject matter of the several claims in view of the available prior art.

The Inmention

The joint invention of Bass, Jr., Jenkins, Sr., and Iiorvat is a vacuum system for controlling and collecting waste on carding machines. Carding is the process of cleaning, straightening, aligning, and forming textile fibers into sliver preparatory to spinning. The specification states:

During the processing of a textile web on a carding machine, the web is fed by a feed roll to a lickerin which in turn transfers the web to the main cylinder of the carding machine which rotates at a surface speed of up to and sometimes exceeding thirty-five miles per hour while the web is carried beneath working fiats which align and attenuate the fibres in the web. Thereafter, the web is removed from the main cylinder by a doffer roll preparatory to forming it into sliver at the calender roll.

The parts above referred to are identified in Fig. 1 of the application drawings here reproduced:

On the left, the lickerin is shown at 12 with its feed roll 14 to the left of it. The large main cylinder is in the center at 11 and the doffer roll is to its right at 13. The flats are shown in the form of an endless belt at 15. All this is conventional. The problem in such machines to which the invention is directed is explained as follows:

(g) before the applicant’s invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it. In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

The rapid rotation of the lickerin and of the main cylinder creates surface air currents which swirl about the periphery of the main cylinder and are carried into the area beneath the main cylinder with the waste from the web. Such waste comprises short fibre, seeds, dirt and foreign matter, all of which is undesirable in the finished web. It is conventional practice to install a screen about the lower periphery of the main cylinder for the purpose of cleaning such waste material as just described from the card clothing on the main cylinder before that portion of the main cylinder passing over the screen again comes into contact with the web delivered to the main cylinder from the lickerin.

In the drawing, the screen is shown at 16, under main cylinder 11. The specification further states:

In the past, the surface air currents along the periphery of the main cylinder have passed through the screen with the waste material, and the air currents have propelled this waste material outwardly from the area beneath the main cylinder and into the atmosphere where it settles on webs being processed and lessens the quality of the webs. Attempts have been made to prevent the blowing of the waste material into the atmosphere by enclosing the air beneath the main cylinder in an effort to contain the waste within that area. However, the super-atmospheric pressure conditions created through continuous delivery of the surface air through continuous delivery of the surface air currents generated by the rapid rotation of the main cylinder into the area therebeneath have invariably resulted in “blowouts”, that is, the propulsion of 'air-borne waste through openings left accidentally in the enclosure, it being virtually impossible to render the area beneath the main cylinder sufficiently air-tight to contain the ever-increasing air pressure therebeneath generated by the rotation of the cylinder and lickerin.

Directed to the solution of these problems, appellants describe their invention in general terms as follows:

To this end, there is provided a unique combination of elements which cooperate with each other to minimize the air pressure beneath the main cylinder without reducing its speed and to control the disposition of waste in the area beneath the main cylinder. More specifically, the invention comprises [1] an enclosure for the area beneath the main cylinder whereby it is rendered as airtight as practical, [2] means closely adjacent the transfer points of the web from the lickerin to the main cylinder and [3] from the main cylinder to the doffer for relieving or drawing off air pressure created through rotation of 'the main cylinder and lickerin to reduce the air pressure beneath the main cylinder and while also drawing off fly and lint released at said transfer points and preferably, [4] means carried by the screen beneath the main cylinder for controlling the flow of air currents toward the center of the carding machine and away from its edges whereby to further minimize the danger of “blowouts” carrying waste into the atmosphere. [Bracketed numbers ours.]

The elements above identified as 2, 3, and 4 are located as indicated on Fig. 1 by the letters B, F, and J which we have added and are more particularly described by appellants as follows:

As to B — ■

A lickerin suction nozzle 26 is * * * arranged to draw in air currents passing upwardly from beneath the main cylinder 11 between the main cylinder and 'the liekerin. 12 and which would otherwise pass into the atmosphere carrying lint and fly and other waste material with them * * *. The suction nozzle 26 also preferably includes an opening directed to draw in air currents released adjacent the feed roll 14 and which carry with them short fibres and lint released from the web at the feed roll.

The suction nozzle 26 is preferably of the type shown in prior application Serial No. 481,659 filed August 23, 1965 by Oscar Bass, Jr. and Ivan Horvat .and entitled PNEUMATIC CLEANING MEANS AND METHOD FOR CARDING MACHINES. [This is the Bass, Jr, et al. reference.]

As to P—

In order to further reduce the air pressure in the area beneath the main cylinder, -a second suction nozzle 33 * * * is positioned between the doffer 13 and main cylinder 11 * * *. Positioned as illustrated * * * doffer plenum S3 * * * presents a negative pressure zone which attracts a significant portion of the air currents created through the clockwise rotation of the main cylinder before these currents are delivered into the area beneath the main cylinder. In so doing, the nozzle 33 contributes materially to the reduction of air pressure in the area beneath the main cylinder over prior known installations. The closer the air pressure in the area beneath the main cylinder is brought to atmospheric pressure, the less “blowout" occurs and the more the waste passing through the screen 16 is desirably retained within the enclosed area.

As to J—

Figure 3 is a partial plan view of the main cylinder screen removed from the carding machine for purposes of illustration;

Bares or baffles 40, which extend parallel to the axis of the main cylinder, taper inwardly toward the central rib 41. The surface air currents generated by the main cylinder are thus channeled away from the sides of the screen, and towards its center. The screen is curved to fit the cylinder.

The screen 16 * * * is of the type more fully described in prior co-pending applications Serial No. 403,468 filed October 13, 1964 now abandoned, and Serial No. 582,191 filed September 6,1966 by Robert Bain Jenkins, Sr. entitled SCREEN EOR CARDING- MACHINES. [This is the Jenkins, Sr., reference.]

Claims 1 and 2 are representative (emphasis ours) :

1. A vacuum system for controlling and collecting waste on carding machines of the type having a lickerin, a main cylinder, a screen beneath the main cylinder, and a doffer roll; said device comprising:

(a) a source of suction;

(b) a first suction nozzle disposed above the lickerin and arranged adjacent the point where the surfaces of the lickerin and cylinder diverge to draw off surface air currents created through rotation of the lickerin and main cylinder;

(c) a second, suction nozzle disposed between the main cylinder and the doffer adjacent the point where the surfaces of the doffer and main cylinder converge to draw off surface air currents generated through rotation of the main cylinder as well as lint and fly released at the transfer point of the web between the main cylinder and the doffer;

(d) said screen com/prising:

(i) a frame having a longitudinal axis and including a pair of longitudinally extending parallel side members spaced from each other and on opposite sides of said longitudinal axis; and

(ii) channeling means extending between said side members channeling more of said air currents through said screen intermediate said side members than at said side members, said channeling means comprising a plurality of air obstructing elements, each element having a face, the faces of said air obstructing elements being narrower adjacent said longitudinal axis than adjacent said side members; and

(e) [sic] whereby air pressure in the area beneath the main cylinder is minimized and waste passing through the screen is collected in the central portion of the area beneath the main cylinder.

2. A vacuum system for controlling the disposition of waste generated by processing of a textile web on a carding machine having a lickerin, a main cylinder, and a doffer, said device comprising:

(a) first suction means arranged adjacent the lickerin to draw off surface air currents generated through rotation of the main cylinder and lickerin;

(b) second suction means arranged adjacent the point where the surfaces of the doffer and main cylinder converge to draw off surface air currents generated through rotation of the main cylinder at the nip of the main cylinder and the doffer; and

(c) [sic] said first and second suction means cooperating with one another to reduce the air turbulence in the area beneath the main cylinder.

Claims 3-9 all depend either directly or indirectly on claim 2. Claim 3 recites that the lickerin, main cylinder, and doffer are mounted on a frame and that the area beneath them is enclosed. Claim 4 more specifically describes the two suction means. Claim 5 specifies air flow rates for the two nozzles. Claims 6 and 7 additionally recite appellants’ screen baffle structure. Claim 8 depends on claim 4 and describes the particular lickerin suction nozzle. Claim 9 depends on claim 6 and additionally recites a lickerin screen.

The References

Holden shows the use of a lickerin screen as recited in claim 9.

Reiterer discloses the use of a suction nozzle adjacent the point where the lickerin and main cylinders diverge.

Bass essentially describes the lickerin suction nozzle used by appellants (B in Fig. 1). The patentees are the present appellants Bass and Horvat.

Jenkins essentially shows the main cylinder screen used by appellants (J in Fig. 1) and the patentee is appellant Jenkins.

Fuji discloses the use of a suction nozzle at the point where the main cylinder and the doffer converge (F in Fig. 1).

Another reference, a U.S. Patent to O’Neal No. 3,304,582 with a filing date of October 2,1964, no longer relied on, as well as the Jenkins and Bass references, caused appellants to file affidavits under Rule 131-in an effort to antedate these three references. The affidavits were accepted as overcoming O’Neal. As to the Bass and Jenkins references, the examiner said in his final rejection that while the affidavits may overcome them so far as 35 U'SC 102(e) is concerned, because the affidavits antedate the fling dates of those two patents, they are not overcome as disclosing prior inventions of “another” under 35 USC 102(g). He relied on the Board of Appeals decision in Ex parte Robbins and Porter, 156 USPQ 707 (1967), from which he quoted as follows, the opinion being by Federico, Examiner-in-Chief:

However, assuming that the affidavits were sufficient, the reference is not necessarily removed (emphasis added) in view of the relationship of the parties and the common ownership. There is still section 102(g) to consider. Under this provision the prior invention of another, meeting the conditions specified [in § 102 (g) L is prior art with respect to a later invention. The invention claimed in the Porter et al. patent is taken as having been made prior to the date the invention claimed in the present application was made * * *.

That is the end of the examiner’s quotation but the board opinion continued, saying, “in view of the facts present in this case, and hence is available as prior art.”³ Applying the Bobbins statement to the ease before him, the examiner held:

Therefore, under 35 TJ.S.C. 102(g), the affidavits do not remove either Jenkins, Sr., or Bass, Jr., et al. as a reference.

In his Answer, the examiner adhered to this position, adding the following:

Further, it should be noted that the structure of the screen in claims 1, 6, and 7 of the present application is defined word for word as the screen defined in claims 6 and 1 of the Jenkins, Sr. patent.

The practice of antedating a reference is directed to proving that applicant’s invention is of earlier date than the invention of the reference and this could not he the case when, both are of identical origin. The nature of the subject matter claimed in the patents and present application, the relationship of the parties and the apparent common ownership, and the respective order of the filing dates of the applications involved indicate the order in which the inventions were made.

The board agreed with the examiner’s holding on the availability of the Bass and Jenkins patents as references to show prior art. It agreed with and approved his reliance on Ex parte Bobbins. The significant thoughts added by the 'board are the following (emphasis added) :

Proof that the over-all combination recited in the claims on appeal was made prior to the fllmg dates of the Bass, Jr. et al. and Jenkins, Sr. patents does not establish that such combination was invented prior to the subcombinations claimed in said patents.

*******

Tinder the circumstances here involved it does not appear that an affidavit under Rule 131 was the proper procedure to adopt. The proper subject of inquiry is not compliance with that Rule but rather what [the] evidence shows [as to} who invented the subject matter of the references which is relied upon and when.[⁴]

The board then proceeded to a discussion and affirmance of the rejection of all claims for obviousness on the bases first above recited.

Appellants’ argument in this court is along three lines. They argue unobviousness of the inventions of the appealed claims over all the references, unobviousness over the references exclusive of Bass and Jenkins, and the impropriety of using Bass and Jenkins as prior art under § 102 (g). The last point certainly is the point principally argued.

Appellants’ brief refers to the rejection in this case as “a section 102 (g) rejection,” which it is not, and we therefore clarify that matter at the outset. The rejection is for obviousness under § 103 based in part on alleged prior inventions of others which are deemed to be “prior art” within the meaning of that term in § 103 by virtue of § 102(g). The essence of appellants’ argument against this use of § 102(g) is that it is concerned only with “identity of invention.” They say, “The applicants’ invention must be the same as the invention of another.” Since that is obviously not the case here, so their argument runs, § 102(g) “is out and Rule 131 is in.” Appellants argue that the Robbins case is distinguishable because it was a case of identical inventions. This, however, is not so. The examiner had rejected the claims, inter alia, for obviousness and when the board rephrased his rejection, after pointing out certain errors, it did so as follows:

Tbe claims are rejected as unpatentable over Porter et al. and Fucbs et al. on tbe basis of sections 102 and 103 of the statute, the Porter et al. invention being available as prior art on tbe basis of 102(e) as disclosed in tbe specification of tbe patent, no proper aflidavit having been filed, and on the basis of 102(g) as the prior invention of another.

Rejections are not based on § 103 when they are identical with the prior art. They rest, in such a case, on § 102 alone.

In addition to contending that § 102(g) “is out” because the application is claiming separate and distinct inventions from what is claimed in the Bass and Jenkins patents, appellants argue that they are not proper references “since applicants [Bass, Jenkins, and Horvat] were working together on a common project, as evidenced by the facts in the Rule 131 affidavit * * They then add that “the appellants freely admit that they did not invent the claimed subject matter of the Bass, Jr. patent or the Jenkins, Sr. patent * *

Opinion

§ 10% (g) Prior Invention as “Prior Art'’’’ under § 103

Narrowly considered, the issue presented by the facts of this case is one of first impression in this court. This is by no means the first time we have passed on whether § 102 (g) prior invention of another is prior art, as will be shown, or even the first time we have considered whether such prior invention can be combined with other prior art to sustain a § 103 obviousness rejection. However, it is the first time we have considered combining § 102(g) and § 103 in the context of an ex parte rejection entirely divorced from the award of priority in an interference which established the prior inventorship relied on in rejecting.

In this situation the factual evidence we have to go on is what appears from the references themselves in their disclosures, their interrelationship with the application at bar and their filing dates, and what appellants have revealed in their Rule 131 affidavits as to who invented what and when. To these facts we have to apply the law.

This court has several times approved of rejections based on a combination of § 102 (g) with § 103. The first case so holding is believed to be In re Gregg, 44 CCPA 904, 244 F. 2d 316, 113 USPQ 526 (1957). Our opinion in that case states (emphasis added) :

The award of priority in the interference was a final determination that any invention common to appellant’s application and that of Coakwell was made by Coakwell prior to appellant’s invention thereof. Coakwell’s disclosure [⁵] thus constitutes prior art vñtMn the meaning of section 108 (g) of the Patent Act of 1952 and, in accordance with section 103 of that Act, appellant may not obtain any claim which distinguishes from Coakwell’s disclosure [5] only in matters which would have been obvious to a person having ordinary skill in the art at the time the invention was made.

* * * * * * *

We are uñadle to agree wilh appellant that the prior art referred to in section 10S of the 1952 Act is limited to art which was avalladle to the pudlic prior to the date of the applicant’s invention.

In In re Taub, 52 CCPA 1675, 343 F. 2d 556, 146 USPQ 384 (1965), the ex parte rejection under review was of claims to chemical compounds based on the count in an interference which appellant Taub had lost. We found error in the Patent Office notion that every compound within the scope of the lost count was “prior art” in the sense of § 102 (g) as “an invention * * * made in this country by another,” “before the applicant’s invention.” The winning of priority on the broad count was based on evidence of priority with respect to one species only. Taub, however, was the prior inventor as to the species claimed in the application on appeal. We treated the whole question of the prior invention of another, as determined by an interference priority award, as under § 102(g), reversed the rejection, and remanded the case to the Patent Office for a determination of whether the species claimed by Taub was obvious. Obviousness being a § 103 issue, we were thus coupling § 103 with § 102(g) as a basis for determining patentability in the context of a post-interference ex parte patentability determination.

On the same day as Taub, we decided In re Yale, 52 CCPA 1668, 347 F. 2d 995, 146 USPQ 400 (1965), another post-interference ex parte rejection case. Therein we said that the pertinent portions of 35 USC were § 102(g) and § 103 and the significant statement in the opinion is this (emphasis added) :

As we recently pointed out in In re Harry, 51 CCPA 1541, 333 F. 2d 920, 142 USPQ 164, the legislative history of 35 U.S.C. 102 and 103 makes it clear that the "prior art,” which section 103 requires us to compare with “the subject matter sought to be patented” in a given situation, refers to at least the statutory prior art material named m section 102. It seems clear that the three chemical compounds which appellant lost in interference by concession of priority are materials of which it must be said “before the applicant’s invention thereof the invention was made in this country by another.”

Those last-quoted words are, of course, from § 102(g). The opinion continues:

Those compounds become “prior art” with the meaning of 35 U.S.C. 103 and, in accordance with that provision, appellants may not obtain any claim which distinguishes over that “prior art” only in matters which would have been obvious to one having ordinary skill in the art at the time appellant’s invention was made. [Original emphasis.]

This was a clear holding that § 102(g) prior invention is “prior art” within the meaning of that term in § 103, like the other prior art material named in § 102.

Two years later we decided In re Risse, 54 CCPA 1495, 378 F. 2d 948, 154 USPQ 1 (1967). Judge Almond, speaking for the court, said:

Proceeding now to the matter of statutory prior art, we think it is well settled that prior art under 35 USC 103 includes prior invention under 35 USC 102(g). See, e.g., In re Yale, supra.

He then set forth § 102(g), in part, and continued,

At a minimum, prior invention under section 102(g) includes the subject matter of the interference counts, which may be used as evidence of prior art under section 103.

Throughout the rest of the lengthy opinion § 102(g) and §103 are jointly referred to repeatedly as the statutory basis on which the question of obviousness must be decided.⁶

Within a couple of days of Bisse the Patent Office Board of Appeals decided Bobbins, the case relied on by the examiner herein. It held that a copending patent of Porter and Ellerbee, assigned to the as-signee of the appealed Robbins and Porter application, could be relied on under § 102(g) with respect to the invention claimed therein as the invention of another, assumed to be prior under the circumstances which included a common assignee, different inventor entities, filing a year and a half before the application on appeal, and evidence in Rule 131 affidavits and in the application itself indicating the order in which the inventions were made.

From the above decisions it is clear beyond question that in using § 102 (g) prior art to support a rejection it has not been limited to situations involving “identity of invention,” as appellants contend, but has repeatedly been used to support the rejection of claims to different but obvious inventions under § 103.

As a general proposition of law, and particularly considering the way in which full anticipation situations under § 102 shade into obviousness rejections under § 103 because of discernable differences, we cannot sanction an interpretation of the statute under which a prior invention is “prior art” under the former situation but not under the latter.

The situation presents a close parallel to the situation under § 102 (e) which was dealt with by this court in In re Harry, 51 CCPA 1541, 333 F. 2d 920, 142 USPQ 164 (1964), and by the Supreme Court a year later in Hazeltine Research, Inc. v. Brenner, 382 U.S. 252, 147 USPQ 429 (1965). In Hazeltine the patentee tried in vain to do the very tiling appellants attempt here, namely, to distinguish between § 102 full anticipation and § 103 obviousness rejections. A parallel attempt was made in Harry with respect to § 102(e). In Hazeltine the Court gave this answer (emphasis added) :

Petitioners suggest, however, that the question in this ease is not answered by mere reference to § 102(e), because in Milium, which gave rise to that section, the co-pending applications described the same identical invention. But here the Regis invention is not precisely the same as that contained in the Wallace patent, but is only made obvious by the Wallace patent in light of the Carlson patent. We agree with the Commissioner that this distinction is without significance here.

In Harry, in discussing the § 102(e) -I-§ 103 rejection, our summation reads (emphasis added) :

In our opinion, the "prior art” referred to in %10S includes, along with the patents, printed publications, public uses and sales of paragraphs (a) and (b) of section 102, prior invention as established by a copending application, if it becomes a patent, as contemplated by paragraph (e) and as held in the Milium case. Such prior invention, as prior art, may ie comiined with other references to sustain a rejection for oiviousness under section 103.

Such being the law as to prior invention established under § 102(e), as it surely is with the Supreme Court’s approval, we see no reason a different rule should prevail when the prior invention is otherwise established, as by the circumstances of the case, an adverse ruling in an interference, admissions by the applicant, or otherwise, the statutory basis for using the prior invention being § 102 (g).

It is not a new idea that what is prior art for one purpose is prior art for all purposes. Judge Learned Hand, speaking for the Second Circuit Court of Appeals in Western States Mach. Co. v. S. S. Hepworth Co., 147 F.2d 345, 64 USPQ 141 (1945), said, at the end of a long discussion of the “plausible” argument that there should be a distinction between a prior invention under the Milburn rule which fully anticipates and one which merely makes obvious,

* * * once the first application is treated as prior art when it fully anticipatest there seems to be no reason to deny it whatever effect it would have as prior art, if it were literally such. [Emphasis added.]

It is our view that the law as applied in the Patent Office must be uniform with the law as applied in the courts in passing on patent validity. It is our belief that that is what it is doing in this case. Oases directly in point are rare but we know of at least two, Sutter Products Co. v. Pettibone Mulliken Corp., 428 F.2d 639, 166 USPQ 100 (7th Cir. 1970) and Grinnell Corp. v. Virginia Electric & Power Co., 277 F. Supp. 507, 156 USPQ 443 (E.D. Va. 1967).

In Sutter the Seventh Circuit Court of Appeals gave extended consideration to an obviousness defense based on prior invention under § 102(g) as the prior art. It first held that a Harrison '134 patent “may be considered as a prior invention under 35 U.S.C. § 102(g),” quoting the statute in full in a footnote. It then considered the argument that even if it could be relied on to establish “anticipation,” it would not be considered “prior art” to show obviousness under § 103, the prior art of that section being confined to matters of public knowledge. That argument it found “without merit.” It cited the Hazeltine case as rejecting the notion that “prior art” included only “publicly available information.” It then said (emphasis added):

Although Hazeltine Research dealt with the specific correspondence between Section 103 and Section 102(e), the considerations expressed are equally applicable to prior invention under Section 102(g). Application of Yale, 347 F.2d 995, 1000, 146 USPQ 400, 403 ([52] CCPA [1668] 1965); Application of Risse, 378 F.2d 948, 956, 154 USPQ 1, 7-8 ([54] CCPA [1495] 1967). The correspondence between the relevant “prior art” under Section 103 therefore includes all material which would he considered to determine novelty under Section 102. See Deep Welding, Inc. v. Sciaky Bros., Inc., 417 F.2d 1227, 1233, 163 USPQ 144, 148-149 (7th Cir. 1969), certiorari denied, 165 USPQ 290.

On this construction of the law, the Sutter patents in suit were held invalid for failure to meet the- requirements of § 103. In discussing standards of patentability, the Deep Welding case, cited in Sutter, said, inter alia,

If the state of the art anticipated or made obvious the invention sought to be patented, 35 U.S.C. § 103 (as well as §§ 102 (a), (b), (e) or (g)) requires a holding of invalidity.

Now considering Grinnell, an earlier decision by a single District Court Judge, the discussion appears under the heading “IV. Suozzo’s Work.” Suozzo was working contemporaneously with the inventor of the patents in suit, and keeping his work secret. The defendant apparently asserted invalidity on the basis of § 102(g) + § 103 and the court found nothing wrong with such a legal proposition. It quoted § 102(g) as being applicable but found, in reliance on the express language of § 102(g), that Suozzo had “suppressed and concealed” his work, for which reason it could not be considered. The court stated (emphasis added) :

The same reasons of public policy which forbid prior suppressed and concealed activities from invalidating a patent under 35 TJ.S.C. § 102(g) are also applicable to 35 TJ.S.C. § 103.

Clearly it was taking the two sections together as a basis for decision. The case is an example of how the “not * * * suppressed or concealed” clause serves to prevent the use of truly “secret” prior invention as prior art under § 103.⁷

In view of the foregoing decisions and principles, we rule against appellants and hold that the use of the prior invention of another who had not abandoned, suppressed, or concealed it, under the circumstances of this case which include the disclosure of such invention in an issued patent, is available as “prior art” within the meaning of that term in § 103 by virtue of § 102(g).

Prior Invention

Having settled the question of law, it remains to determine what the evidence shows as to the priority of the Bass and Jenkins inventions, upon which their availability as prior art depends.

From the evidence available to it, the initial burden of making out a prima facie case of prior invention is on the Patent Office. In re Warner, 54 CCPA 1628, 379 F. 2d 1011, 154 USPQ 173 (1967) states:

We think the precise language of 35 TJSC 102 that “a person shall be entitled to a patent unless,” concerning novelty and unobviousness, clearly places a burden of proof on the Patent Office which requires it to produce the factual basis for its rejection of an application under sections 102 and 103, see Graham, and Adams.

When, the Patent Office- has made out a prima facie case of priority the burden would then shift to the applicant to rebut it.

The evidence of priority in the record consists of filing dates, the contents of the application and reference patents, statements in affidavits filed and accepted under Rule 131, and statements by appellants’ attorneys during prosecution.

The earliest date of invention alleged by appellants for their combination is the date of conception, February 10, 1961. Deduction to practice is alleged in April 1964. Their effective filing date is October 11,1965.

First, we consider Jenkins, asserted to be the prior inventor of the tapered bar screen element of the claimed combination. The affidavit evidence asserts that the screen was conceived “before December 6,1963” and built according to a drawing dated December 5,1963.⁸ It was installed in the first prototype of appellants’ combination about April 17,1964. Assuming that to be the first reduction to practice of the screen, as well as of the combination, the record contains an admission of its conception by Jenkins about two months before appellants claim to have conceived the combination. The Jenkins invention would appear, prima facie, to be prior on the basis of prior conception and simultaneous reduction to practice, which makes diligence irrelevant. Whittier v. Borchardt, 33 CCPA 1023, 69 USPQ 382, 154 F. 2d 522 (1946), Lassman v. Brossi, 159 USPQ 182 (Bd. Pat. Intf. 1967). In the absence of any traverse, even in appellants’ brief, this screen appears to be a prior [4] invention under § 102(g). While we have said that there is no necessary relationship between the order of making inventions and the order of filing applications on them, In re Land and Rogers, 54 CCPA 806, 368 F. 2d 866, 151 USPQ 621 (1966), we think there is further evidentiary significance in the fact that Jenkins filed October 13, 1964, and appellants did not file for nearly a year thereafter, on October 11, 1965. On the basis of all the evidence of record, we accept the Jenkins screen as described in his patent, to which reference is made in the application at bar, as prior art.

We turn now to the Bass and Horvat reference (Bass). The invention of these patentees is the “first suction nozzle,” element “(b)” in claim 1, located at the lickerin end of the machine, “B” in Fig. 1. The only argument the solicitor makes on the priority issue is that “the affidavits made no attempt to show that the invention of Bass and Horvat was not prior to the invention of appellants.” We do not think it was incumbent on the applicants to prove it was not prior, merely because the Patent Office thinks it might have been. Like the solicitor, we are not able to find any evidence of priority on the part of Bass. The examiner mentioned none except the filing date of the Bass application “approximately 7 weeks before the earliest effective filing date of the present application.” We do not consider this probative of priority of invention. In re Land and Rogers, supra. The time is too short to be significant. The cross reference in the present application to the Bass application does not indicate that it was a prior invention. While the board correctly said that the proper subject of inquiry is what the evidence shows as to who invented the subject matter of the references and when, it failed to refer to any evidence of priority in Bass.

Appellants’ position with respect to Bass is “that the Bass, Jr. et al. lickerin plenum and the instant combination were part of the same research and development program and were invented simultaneously, as opposed to the Patent Office’s position that the Bass, Jr. et al lickerin plenum was invented previous to the combination merely because it was filed first.” Finding no substantial evidence of record tending to indicate priority in Bass, we believe the appellants’ position to be sound. In fact, it appears as logical on the facts of this case to find that the claimed combination was conceived before the Bass plenum as described in the reference patent. We therefore exclude Bass from consideration as prior art in passing on the obviousness rejection.

The Rejections of Claims

Claims 2, 3, 4, and 5 were rejected as obvious in view of Beiterer and Fuji. We have carefully considered appellants’ argument but agree with the decision on obviousness and this rejection is affirmed.

The rejection of all remaining claims 1, 6,7, 8, and 9, was predicated on Bass combined with Fuji, Jenkins being added in rejecting claims 1, 6, 7, and 9. With the elimination of the Bass reference, there is no suggestion in the remaining references applied of the suction means at the lickerin side of the carding machine and no basis for a holding of obviousness of the combination of which it is a principal element. It is, therefore, necessary to reverse the rejection of these claims.

Comments on Judge Baldwin’s Concurring Opinion

This concurring opinion is in reality a dissent. The only concurrence is with the final disposition of the claims. On the principal point of law involved in this case there is total disagreement. The concurring opinion expresses the view that prior invention under § 102(g) is not “prior art” under § 103 unless the priority happens to have been established in an interference, when it is “prior art” under § 103. Since there has been no interference here, the position taken is that the Bass patented suction nozzle and the Jenkins patented main cylinder screen would not be “prior art” under § 103 even if the priority of these inventions were firmly established by evidence, and so these inventions must be ignored in determining obviousness under § 103, on which basis the same result is reached that we reach. It also expresses the view that although prior inventions under § 102(g) are prior art which can be used to sustain a full anticipation rejection under § 102, they cannot be used to sustain an obviousness rejection under § 103— that prior art is not prior art for all purposes. We consider this position anomalous.

Much of what this concurring opinion says is contradicted by what has already been said above but since certain fundamental considerations appear to have been overlooked they will bear summarizing in the interest of clarifying our position.

First of all, it is tolerably clear that this opinion does not change the law as it has been for 20 years, if not longer, in this court as well as elsewhere. The concurrence has no answer for cases like Sutter Products v. Pettibone Mulliken (7th Cir. 1970) and there is no “long line” of cases in this court being overruled. Only two are named, Newton and Frilette, about which more anon.

We are charged with holding as we do while remaining “silent” as to reasons why we should do so. We have not been silent, we have been ignored. Reason No. 1, supra, is that full anticipation under § 102 shades so gradually into obviousness under § 103 that it is not practicable to try to operate a patent system on the basis that that which is prior art for full anticipation situations is not also prior art for determining obviousness (which is a partial anticipation, using “anticipation” in a nontechnical but realistic sense). Reason No. supra, is that it would be anomalous to have existing, side by side, the law of § 102 (e), Hazeltine, and In re Harry^ which is that an invention which is prior as of the U.S. filing date of an issued patent disclosing it is prior art for both § 102 anticipation and § 103 obviousness rejections, and law as the concurrence would have it, namely, that an invention otherwise established by evidence to be prior to an aplicant’s invention is prior are only for § 102 anticipation and not in determining § 103 ■obviousness. Reason No. S, supra, is that what we hold to be the law is already the law in infringement suits, as the concurrence tacitly admits, though it does not consider such decisions to be “binding on this court.” However, the law must be the same in this court and in other courts which pass on patent validity. Reason No. 1¡. is that if the question here decided were presented to the Supreme Court it would almost certainly, in view of Milburn and Hazeltine, affirm our decision on the applicability of § 102(g).

In short, prior art for one purpose is prior art for all purposes and in all courts and in the Patent Office. On one matter the concurrence maintains a significant silence. Throughout, it takes it for granted that prior invention under § 102 (g) is prior art which will support a rejection of claims to the same or substantially the same invention. Without emphasis on the fact, the entire concurrence carefully limits its discussion to the status of “a non-anticipatory reference.” It attempts to develop, as an assumed part of the law, a spurious distinction between “prior art” and “prior invention,” a “prior art defense” and a iifrior invention defense.” Eegardless of what may have been said in three opinions written in 1902,1912, and 1916, long before Milbum and Hazeltine, prior invention is prior art and always has been. The only distinction which exists is between anticipation and obviousness and the determination of either depends on what is in the prior art. Its status as prior art is not determined by whether it fully discloses or only partially discloses the claimed invention.

The concurrence also admits that lost counts in interference — which is but one way of establishing prior invention — are properly used as the basis for rejections, not only of the same invention but also of those obvious in view of the prior invention thus established. We may now added as Reason No. 5 that it makes no sense to distinguish one prior invention from another according to the manner in which its priority has been established. This brings us to an error of reasoning in the concurrence which treats what we are doing as “pushing back” the effective dates of references and to the use made of our remarks in the first Hilmer opinion.⁹ We are not pushing back the dates of references. As shown above, the evidence of prior invention in this case was not found in the references but in affidavits, admissions, and circumstances taken together with the disclosures of the references identifying the prior subject matter. Hilmer was a different situation altogether where we toere asked to push back reference dates by reason of 35 USO 119 to events taking place abroad, contrary to what we found to be the express desire of Congress and statutory limitations to events in the United States.

The Hession case and its “doctrine of election” by an assignee has no bearing at all on the problem here. The writer has some slight familiarity with that case as the author of the 20-page dissenting opinion. The case is irrelevant because it did not involve two inventions, two inventors, prior invention, or priority. There was a single invention made by a single inventor. Hession. Ziherl fraudulently, or at least erroneously, filed an application on Hession’s invention, having invented nothing himself, as he acknowledged. The election to which the concurring opinion refers was not “with respect to priority,” as alleged, but resided in issuing the patent on the Ziherl application instead of the Hession application when Ziherl was not the inventor. This court’s majority opinion says nothing about anyone being a “first” or a “prior” inventor because we were well aware there was but one inventor.

The concurrence worries about our decision making a lot of issued patents invalid, which presumably would not otherwise be. The concern is misdirected. Since we are making no change in the law — certainty no change as it is applied by other courts in infringement suits — no more patents will be invalid than is already the case. (The Patent Office never has and never will be able to examine applications as to all defenses to validity. See 35 USC 282 (2).) However, should the law be as the concurrence would have it, the Patent Office would be compelled to issue more invalid patents by being barred from applying the law as other courts apply it. This is the amazing choice the concurrence makes out of fear of nightmarish situations of its own imagining. In all the years we have had the law as we now declare it to be none of them has materialized.

The concurrence makes the erroneous statement that in past cases we have based our thinking on “the proposition that everything in section 102 is prior art” (original emphasis). The anatomy of § 102 is fairly clear. As forecast in its heading, it deals with the two questions of “novelty and loss of right.” It also deals with originality in subsection (f) which says that one who “did not himself invent the subject matter” (i.e., he did not originate it) has no right to a patent on it. Subsections (c) on abandonment and (d) on first patenting the invention abroad, before the date of the U.S. application, on an application filed more than a year before filing in the U.S., are loss of right provisions and in no way relate to prior art. 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.

The concurrence discusses many of our prior decisions dealing with “double patenting” rejections. They are not germane to the present case. Rejections for double patenting have nothing in common with rejections based on prior invention. The two types of rejection rest on different legal footings. Among the cases classed by the concurrence as double patenti/ng decisions are the two which constitute the “long line” of cases we are supposed to be overruling, Newton and Frilette. It is well to understand that they are double patenting cases and were. de-> cided as such and therefore are not germane.

In Newton the issue was whether there was only one invention, on which two patents could not issue, or two inventions. The Patent Office said there was only one and rejected for double patenting. There was no § 103 rejection and hence no occasion to consider what is “prior art.” We held there were two inventions, that a terminal disclaimer overcame the double patenting rejection, and reversed. That was the case. The only way § 102(g) came to be mentioned in the opinion was that the Solicitor for the Patent Office said in his brief that the rejection “can be considered under 35 U.S.O. 102(g), such as to be immune from any avoidance by the terminal disclaimer.” But the rejection in no way involved § 102(g) and it was fitting we should have said “We find the solicitor’s reliance on 35 U.S.O. 102(g) * * * inapplicable here.” Truly, it had no applicability to the issue before us and we made no other decision about it. We cannot be said to have rejected a theory of law never relied on in the Patent Office in making the rejection and which was not before us. Briefs cannot create issues that do not exist or rejections that have not been made.

In Frilette there were two rejections, one for double patenting and one based on § 102(e). We affirmed the latter. The concurrence can find no decision in the opinion relating to § 102(g) because, there is none. The section is referred to only in footnote 8 in which we merely pointed out that at the time of MiTbv/rn the statutory law for first inventorship was in R.S. 4920, which had been repealed and replaced by § 102 (g). The footnote concludes, “The requirement for first inven-torship, considered in MiTbum, is thus implicitly continued in the present statute.” That is all there is to Frilette. We are not overruling it any more than we are overruling Newton, both cases still being sound law and neither dealing with the issue here.

On what basis it can be suggested that the present decision in any way touches any of our double patenting decisions escapes our comprehension. We are not here presented with any double patenting issues.. Furthermore, even if, arguendo, we take Newton and Frilette as having said something inconsistent with the present opinion, there remain in opposition thereto, the contrary statements we have referred to in the four opinions in Gregg, Taub, Yale, and Bisse.

OoncT/usion

The decision is affirmed as to claims 2, 3,4, and 5 and reversed as to claims 1,6,7,8, and 9.

1 The application is stated to be a continuation-in-part of application serial No. 494,391, filed October 11,1965.

2 § 102. Conditions for patentability; novelty and loss of right to patent.

A person shall be entitled to a patent unless—

* * * * * , *, *

3 This and related discussion in the case may be characterized as dicta for two reasons: The affidavits were held not to he sufficient and the claims on appeal were held to be unobvious even when the Porter et al. patent was treated as prior art. Even as dicta, the statements stand as the view of at least that panel of the board on the legal effect of § 102 (g) in establishing the prior invention of another as prior art under § 103.

4 Compare this statement with footnote 4 in In re Facius, 56 CCPA 1348, 408 F.2d 1396, 161 TJSPQ 294 (1969), and footnote 11 in In re Land and Rogers, 54 CCPA 806, 368 F.2d 866,151 USPQ 621 (1966).

5 In order not to mislead, attention is called to the fact that, as to using the whole disclosure, Gregg was later modified in this respect by a number of decisions including Tmibj Yale, and Risse, discussed hereinafter, and also by In re Bandel, 52 CCPA 1775, 348 F.2d 563, 146 USPQ 389 (1965). Bandel likewise recognizes using § 102(g) prior art in making a § 103 rejection, but without .specific reference to either section.

6 Recently in In re Smith, 59 CCPA 1025, 458 F.2d 1889, 173 USPQ 679 (1972), another part of the Bisse opinion was modified but the matter of using § 102(g) prior invention as “prior art” under § 103 was not thereby affected.

7 It may be wondered why, In the twenty years since § 102(g) came into effect, there have not been more adjudicated cases reported relying on it to show “prior art” in support of a § 103 rejection. The answer probably is that there are many other defenses much easier to establish and it is a rare case where the effort of going back to the date of invention of a prior inventor is worth the cost. In particular, § 102(e) makes patents unquestioned prior art for all purposes as of their United States filing dates and the date of invention is usually not enough earlier to make a difference in the result.

8 The affidavit states, apparently erroneously, that the drawing was “made December 6, 1963.” The drawing is dated “12-5-63.”

9 53 CCPA 1288, 359 P.2d 859, 149 USPQ 480 (1966).