Corning Glass Works v. Brenner

470 F.2d 410, 152 U.S. App. D.C. 262
CourtCourt of Appeals for the D.C. Circuit
DecidedOctober 16, 1972
DocketNos. 71-1424, 71-1425
StatusPublished
Cited by6 cases

This text of 470 F.2d 410 (Corning Glass Works v. Brenner) is published on Counsel Stack Legal Research, covering Court of Appeals for the D.C. Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Corning Glass Works v. Brenner, 470 F.2d 410, 152 U.S. App. D.C. 262 (D.C. Cir. 1972).

Opinion

JAMESON, District Judge:

Appellants, Ellen L. Mochel, an applicant for a patent, and her assignee, Corning Glass Works, brought two actions under 35 U.S.C. Section 145 seeking a judgment directing the Commissioner of Patents to issue a patent for an invention entitled “Method of Glass Treatment and Product.” The cases were consolidated for trial, and a judgment of dismissal was entered in each case,1 the district court sustaining the finding of the Patent Office that the claimed subject matter was obvious in view of prior art, and therefore unpatentable under 35 U.S.C. Section 103.2 The district court stated, and the parties agree, that the “only issue here is obviousness.”

Scope of Review

Preliminary to a consideration of the merits of the appeal, we recognize that the factual findings of the Patent Office can be overturned by the district court only on the court’s reaching a “thorough [412]*412conviction” that the Patent Office is in error. A finding that the Patent Office’s rejection of an application is “consistent with the evidence” requires af-firmance of the rejection.3 The presumption of validity given to Patent Office findings, however, is weakened “where an issue has not been the subject of a Patent Office finding, or an assumption underlying the patent office findings is demonstrably inaccurate in a material degree.” 4 With respect to the scope of review in this court, the findings of fact of the district court “shall not be set aside unless clearly erroneous.” Rule 52(a), F.R.Civ.P.

This court has recognized also that the question of obviousness under 85 U. S.C. Section 103 is a mixed finding of law and fact. In Stieg v. Commissioner of Patents, 122 U.S.App.D.C. 361, 353 F.2d 899, 901 (1965) the court said:

“There is no question but that rulings of law as such made by the Patent Office are fully reviewable, free from any ‘clearly erroneous’ rule, by the District Court and by this court. It is just as clear, however, that when the Patent Office applies a proper principle of law to its factual findings, the resulting judgment is entitled to ‘great weight’ and that ‘in the absence of new evidence carrying “thorough conviction” that had not been considered by the Patent Office,’ the action of the Patent Office should be affirmed.”

The distinction between questions of fact and law was stated more precisely by Judge Tamm in Higley v. Brenner, 128 U.S.App.D.C. 290, 387 F.2d 855, 857 (1967):

“We note at the outset that a presumption of correctness accompanies the decisions of the Patent Office. California Research Corp. v. Ladd, 123 U.S.App.D.C. 60, 356 F.2d 813 (1966); Fletcher v. Watson, 92 U.S.App.D.C. 205, 204 F.2d 68 (1953), and substantially the same rule applies to the findings of fact of the District Court. What the prior art is and what the claimed invention is are questions of fact. However, whether the standard of obviousness applied to those facts is correct, is a question of law. Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966).” 5

In Graham v. John Deere Co. the Court pointed out that, “While the ultimate question of patent validity is one of law, * * * the § 103 condition, which is but one of three conditions,6 [413]*413each of which must be satisfied, lends itself to several basic factual inquiries.” The Court continued:

“Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained ; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.” 383 U.S. at 17-18, 86 S.Ct. 684 at 694.

Findings of Fact

In a memorandum opinion the district court described the invention “in essence” as “predicated upon the asserted fact that certain glass composites containing more than an ordinary amount of aluminum oxide, generally called high alumina glasses, when chemically strengthened by a process called ion exchange, retain their greatly increased strength even after extensive surface abrasion” and that “ordinary glass composites strengthened by the same exchange treatment and exposed to surface abrasion lose virtually all the strength so imparted.”

The court was “convinced that the claimed result thus outlined is the result of a mere routinization and experiment and it would have been obvious to a person of ordinary skill in the art when the prior art references were examined in relation thereto.” Specifically the court further found that “ionization is old and the use in the circumstances of the particular glass exposed to such treatment adds nothing new, and no evidence was adduced at the trial which would warrant the conclusion and thorough conviction that the Patent Office was wrong in its evaluation and conclusion.”

The court also adopted and ratified the findings of fact and conclusions of law in defendant’s post trial memorandum.

Appellants’ Contentions

Appellants contend that the district court erred in holding that “no evidence was adduced * * * which would warrant the conclusion and thorough conviction that the Patent Office was wrong in its evaluation and conclusion”, when (1) admittedly the strength results achieved by Dr. Moehel’s discovery are vastly superior to the prior art- results and cannot be achieved as the process was used in the prior art; (2) both the Patent Office and district court ignored undisputed evidence that those skilled in the art could not explain at the time of the invention, or many years later, why the high alumina glasses of Dr. Mochel are permanently strengthened and conventional glass compositions of the prior art are not; (3) the principal prior art author testified that he was “surprised” when he learned of Dr. Mo-chel’s discovery; and (4) the discovery has made the difference between success and failure in the commercial use of the prior art process.

Methods of Strengthening Glass

There are two basic methods of strengthening glass, (1) a mechanical process called “thermal tempering” 7 and [414]*414(2) a chemical process of ion exchange.

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470 F.2d 410, 152 U.S. App. D.C. 262, Counsel Stack Legal Research, https://law.counselstack.com/opinion/corning-glass-works-v-brenner-cadc-1972.