Vernon K. Charvat v. Commissioner of Patents

503 F.2d 138, 164 U.S. App. D.C. 47, 182 U.S.P.Q. (BNA) 577, 1974 U.S. App. LEXIS 7902
CourtCourt of Appeals for the D.C. Circuit
DecidedJune 28, 1974
Docket71-1731
StatusPublished
Cited by6 cases

This text of 503 F.2d 138 (Vernon K. Charvat v. Commissioner of Patents) 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
Vernon K. Charvat v. Commissioner of Patents, 503 F.2d 138, 164 U.S. App. D.C. 47, 182 U.S.P.Q. (BNA) 577, 1974 U.S. App. LEXIS 7902 (D.C. Cir. 1974).

Opinions

PER CURIAM:

Like others1 before him who have presented an issue as to obvious[139]*139ness in patent litigation, Charvat has here contended that there was error in the rejection of his application Serial No. 304002 for a grinding wheel. The Patent Office and the District Court concluded that Charvat’s Ramron wheel would have been obvious to one possessed if ordinary skill in the art in light of a single reference, that of Toc-ci-Guilbert who already possessed U.S. Patent No. 3,252,775 covering a polishing wheel. Protracted exchanges of views among the members of this sitting division only have emphasized that what is “obvious is not a question upon which there is likely to be uniformity of thought in every given factual context.” Graham v. John Deere Co., 383 U.S. 1, 18, 86 S.Ct. 684, 694, 15 L.Ed.2d 545 (1966). The difficulties in these situations must be resolved on a case-by-case basis. Id., 18, 86 S.Ct. 684.

The Court in John Deere recognized that there is a notorious difference between the standards applied by the Patent Office and by the court, adding: “While many reasons can be adduced to explain the discrepancy, one may well be the free rein often exercised by Examiners in their use of the concept of ‘invention.’ ” Id. And see Kewanee Oil Co. v Bicron Corp., 416 U.S. 470, 488-489, 94 S.Ct. 1879, 1889, 40 L.Ed.2d 315 (May 13, 1974).

In the instant situation, the tribunals of the Patent Office were well aware that the prior art included various means for the production of grinding wheels but nevertheless allowed the Toc-ci-Guilbert patent expressly designed by the patentee for use in the polishing art. The District Court, for its part, seems to have misconstrued the degree of difference between Charvat and all prior art and quite clearly to have ignored factors established at trial through un-contradicted evidence which had not been before the Patent Office.

In this state of the record, we should note at once that Charvat already had been granted a patent on the process for the construction of his Ramron wheel. In determining how to approach the present issue, arising under 35 U.S.C. § 103, concerning his product claims, we turn again to John Deere, supra, where, at 17-18, 86 S.Ct. at 694, we are instructed :

[T]he 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 nonob-viousness 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.2

We will hereinafter discuss in detail the processes and the structures involved, having in mind particularly the differences between Charvat’s disclosures and those apparent from the Toc-ci-Guilbert patent, the only reference cited by the Patent Office as defining the prior art. What emerges here is a combination of disparate elements already known to the art. From Tocci-Guilbert, Charvat could perceive the use of plastic resins and the notion of foaming to achieve uniform dispersal of the abrasive. Then came his centrifuging, entirely lacking in Tocci-Guilbert. From the prior art of grinding wheels, he could have taken the idea of clustering the grains at the perimeter of the wheel. His combination was not at all [140]*140made obvious by the prior art. Not only had Tocci-Guilbert never claimed a wheel such as Ramron, he purposefully sought to disclose a polishing wheel. Charvat on the contrary combined his centrifuging process with all other elements so as to set a novel grain configuration which produced his grinding wheel far superior to any known.

To the foregoing general observations as to just what is involved, we may add one additional criterion. The Court has emphasized that while the claims of a patent limit the invention and specifications are not to be utilized to expand the patent monopoly, “it is fundamental that claims are to be construed in light of the specifications and both are to be read with a view to ascertaining the invention”. United States v. Adams, 383 U.S. 39, 49, 86 S.Ct. 708, 713, 15 L.Ed.2d 572 (1966). (Citations omitted) (Emphasis added). Put another way, the Court’s discussion does not forfend against our narrowing the extent of patentability. Here the prior art disclosed other grinding wheels. Tocci-Guilbert disclosed the process and the structure of polishing wheels. Even though such elements were well known in the prior art, Charvat, like Adams, has presented us with a new combination which is entitled to recognition. Justice Clark, speaking for the Court,' surely has authorized us to take the approach to be developed in light of the record before us. He made it clear that “known disadvantages in old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness”. United States v. Adams, id. at 52, 86 S.Ct. at 714.

After extensive consideration of all aspects of this case as to the facts and applicable legal principles, we conclude with “thorough conviction” that we must reverse the District Court. “Processes, machines, manufactures, compositions of matter and improvements thereof, which meet the tests of utility, novelty, and nonobviousness are entitled to be patented . . . ”. Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 483, 94 S.Ct. 1879, 1887, 40 L.Ed.2d 315 (Sl. Op. 12, May 13, 1974). We are satisfied further that Charvat has complied with the requirements of 35 U.S.C. § 112, and hence is entitled to a patent on his Ramron grinding wheel.

I.

THE NON-OBVIOUS NATURE OF APPELLANT’S CLAIMS

It is fundamental that an applicant may not be entitled to a patent if his claims are so similar to the prior art that they would be “obvious to a person having ordinary skill in the art”. 35 U.S.C. § 103. It does not follow that the mere existence of the basic teachings in the prior art will render obvious a new claim combining such teachings. Courts have long since held that even if all of the elements

used are old, a new result, an unexpected result, a far more efficient result, or a more economical result will satisfy the requirements of patenta-bility.3

Thus, in Blaw-Knox Co. v. I. D. Lain Co.4 the court validated a patent consisting solely of elements old in the art because the patentee had solved a problem that previously had inhibited use of the particular product.5

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503 F.2d 138, 164 U.S. App. D.C. 47, 182 U.S.P.Q. (BNA) 577, 1974 U.S. App. LEXIS 7902, Counsel Stack Legal Research, https://law.counselstack.com/opinion/vernon-k-charvat-v-commissioner-of-patents-cadc-1974.