Plaintiff originally alleged that defendant's overhead garage doors infringed two mechanical patents and a design patent. Before trial the parties stipulated that the earlier mechanical patent ('699)1 was not infringed. With respect to the later mechanical patent ('612),2 the questions are whether the district court, 307 F. Supp. 822, properly construed 35 U.S.C. Sec. 102(b) in holding that the invention was in public use more than a year before the patent application was filed, and if so, whether he properly rejected plaintiff's alternative contention that the '612 patent was entitled to '699's earlier filing date. With respect to the design patent (Des. '094),3 the questions are whether it satisfied the requirements for patentability set forth in 35 U.S.C. Sec. 171, and if so, whether the finding of infringement was proper.

On June 19, 1959, plaintiff made its first shipment of a fiberglass overhead garage door which was thereafter manufactured and sold in large quantities.4 The door was mounted on tracks for movement from a closed vertical position to an open horizontal position within the garage. The door included four rectangular sections arranged (when the door was closed) one above the other, and hinged together to facilitate movement around the curved portion of the track.

Each section included a metal frame enclosing a plastic panel. Each frame performed the dual function of securing the enclosed panel and also forming a hinging joint with the frame of the adjacent section. The joining function is not pertinent here; our attention is directed to the relationship between the metal frame and its enclosed plastic panel. More narrowly, we are specifically concerned with the horizontal rails at the top and bottom of each section.5

In the lower three sections of the door, the top rail contained two horizontal flanges, extending from one end of the door to the other, which, if viewed from a cross section, might be likened to an inverted letter "J." The panel was placed between the two flanges and secured by rivets which pierced the longer rear flange. The shorter front flange was pressed snugly against the panel. The pressure thus applied was intended to effect a waterproof closure, but was not sufficient to embed the aluminum flange into the compressible plastic panel.6

The door which was sold on June 19, 1959, included various novel features which we need not explain. They were described in the application, filed on August 17, 1959, which led to the issuance of patent '699 some four years later.

On July 5, 1960, plaintiff's assignors filed the application which matured into patent '612. That application related particularly to the construction of the door sections and, more narrowly, to the method of securing the plastic panel in the aluminum frame.

Shortly after plaintiff's first shipment on June 19, 1959, it began to use a power driven roller instead of the hand cranked machine to press the short front flange against the plastic panel. Plaintiff later realized that when the short front flange was embedded in the compressible plastic panel by using the power roller, it was held so securely that it was no longer necessary to use rivets to attach the panel to the rear horizontal flange. This discovery led to the development of an improved door model and to the filing of the July 5, 1960, application and the issuance of patent '612.

The district court held that the public sale on June 19, 1959, more than a year before the filing date of the '612 application, invalidated the patent under 35 U.S.C. Sec. 102(b).7 As a matter of law he concluded that the test under Sec. 102(b) is not identity, but whether the difference between the prior sale item and the subject matter of the claims is itself patentable.8 As a matter of fact, he found that the only genuine difference between the sale door and the patent did not constitute invention.9

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Plaintiff thereafter was granted leave to supplement the record by filing a copy of the '699 patent, but the court, 314 F. Supp. 99, rejected the contention that the Sec. 102(b) defense could be avoided by giving the '612 patent the benefit of '699's filing date. The design patent was found valid and infringed. Both parties have appealed.

We first consider the test of invalidity under Sec. 102(b) and whether that test was correctly applied in this case. We shall then discuss the contention that the '612 patent should have the benefit of an earlier filing date. Finally, we shall review the design patent.

There were several differences between the door sold on June 19, 1959, and the improved model described in the '612 patent. In the sale door the front flange was rolled in only on the top rail of the lower three sections; the '612 patent contemplated such rolling on the top and bottom rails of all four sections. The district court found that the flange on the sale door was not actually embedded into the plastic panel; the '612 patent unequivocally describes such embedment. The sale door, although intended to be watertight, actually was subject to leakage between the frame and the panel as a result of capillary action; the '612 patent describes a waterproof closure. In the sale door rivets secured the panel to the rear horizontal flange; the '612 specifications refer to the elimination of such rivets. Thus, it is clear that there was not complete identity between the sale door and the '612 patent.

Plaintiff contends that Sec. 102(b) is inapplicable because defendant failed to prove that the '612 invention was "identically disclosed" by the sale door. Moreover, if a test of nonobviousness rather than complete anticipation is proper, plaintiff contends that the district court erroneously failed to make findings required by Graham v. John Deere Co., 383 U.S. 1, 17, 86 S. Ct. 684, 15 L. Ed. 2d 545.

A. Interpretation of Sec. 102(b).

Plaintiff's position is supported by the language of Sec. 103 which implies that no prior reference is within Sec. 102 if "the invention is not identically disclosed or described" therein,10 by comments in several opinions written after 1952, and by one holding which, though subsequently overruled by a divided court, was regarded as a correct statement of the law by a member of the Court of Customs and Patent Appeals.11 We are nevertheless persuaded that the enactment of Sec. 103 was not intended by Congress to incorporate a "strict identity" test into Sec. 102(b). In brief, the reasons for our conclusions are the state of the law prior to the 1952 codification, the fact that the 1952 enactment was primarily intended to restate the law, and the fact that the addition of Sec. 103 was directed to a wholly different problem. We first put to one side the authorities on which plaintiff relies.

Plaintiff's principal reliance is upon this court's description of "the defense of anticipation" in Illinois Tool Works, Inc. v. Sweetheart Plastics, Inc., 436 F.2d 1180, 1182-1183 (1971). We there reiterated a dictum from a Tenth Circuit opinion12 which quoted from two earlier decisions of the Ninth Circuit.13 Neither our opinion, nor any of the earlier references, involved the Sec. 102(b) issue which is now before us. As we expressly noted, we were there considering the defense of anticipation predicated on Sec. 102(a);14 such anticipation "speaks only to the novelty of an invention."15 In that case, as in each of the other cases upon which plaintiff relies, decision actually turned on acceptance or rejection of the defense of obviousness.16

Section 102(a), like Sec. 103, focuses upon the state of the art at the date of invention. Section 102(b), however, is not concerned with prior art which anticipated the invention date; it is concerned with the filing of the patent application. Prior to 1952 it was perfectly clear that an invention had to embody a significant conceptual advance over the state of the art existing (a) when the invention was discovered or made and also (b) one year prior to the filing date of the application. Both time requirements were included in the same statutory provision defining the conditions of patentability.17 The test of "invention" now reflected in Sec. 103 was then applicable equally to the prior art which is now described in Sec. 102(b) as well as to the art described in Sec. 102(a).

A quotation from Hall v. Macneale is appropriate, not because of the similarity between an improvement intended to make safe doors burglarproof and an improvement intended to make garage doors waterproof, but rather because both improvements were discovered after the basic conception had been disclosed and, although novel, neither amounted to invention:

"It clearly appears, from the testimony of the appellant himself, that the idea of making a claim to the invention covered by claim 3 of the patent sued on arose from the introduction into safes, in 1866 or early in 1867, of plates of steel and iron welded together. This enabled the value of the screw-threaded conical bolt to be more fully developed because the screwthread could be made more effective the whole length of the bolt. But the whole invention existed in the bolt of the patent of 1860. There was no invention in adding to the solid conical bolt the screw-thread of the cored conical bolt.

"Moreover, the use and sale of the solid conical bolts in the Lafayette and Loraine County safes, even though those bolts had no screw-threads on them, constituted a use and sale of the invention covered by claim 3 of the patent in suit. The application for that patent was made in March, 1867, and the patent was granted under the provisions of the act of July 4, 1936, c. 357, and of the act of March 3, 1839, c. 88. Within the meaning of sections 7 and 15 of the act of 1836, as modified by section 7 of the act of 1839, the invention covered by claim 3 of the patent in suit was in use and on sale more than two years before the appellant applied for that patent, and such use and sale were, also, with the consent and allowance of the appellant, and the use was a public use." 107 U.S. 90, 96, 2 S. Ct. 73, 78, 27 L. Ed. 367.

See also 2 Walker, Patents, 684-685 (Deller's 2d ed. 1964) and cases cited therein.

A mechanical improvement, such as the addition of screw-threads to a solid conical bolt, may give a later device "novelty" even though it does not embody "invention."18 Mere novelty, however, does not qualify an improvement for patent protection. The question here is whether the limitation prescribed by Sec. 102(b) begins to run from the date of disclosure of the basic invention or of the novel improvement.

If we ignore 35 U.S.C. Sec. 103 for the moment and confine our attention to the language of Sec. 102(b) and its statutory antecedents, we find solid support for the conclusion that public disclosure of an invention more than a year before a patent application is filed forecloses patentability, not only of the precise embodiment disclosed, but also of subsequent novel improvements unless such an improvement is itself patentable as an invention.

Section 102(b), like its predecessors, refers to disclosure of the "invention." The purpose of the statute is to require the inventor to exercise diligence in filing his patent application,19 and to prevent him from extending the period of his limited patent grant by means of successive minor improvements, each arguably supporting a new claim on the original invention.20 In addition, it provides a fixed date, often more readily ascertainable than the date of the invention, for evaluating the significance of prior art and resolving issues of priority. The purposes of the statute would be largely frustrated if the limitation bar could be tolled by the development of improvements which, though novel, represent no advance over the basic conception.

Presumably for that reason, the courts which have actually had to decide cases arising under Sec. 102(b) have uniformly rejected the "strict identity" test implicitly suggested by the language of Sec. 103. The leading case is the decision of the Court of Customs and Patent Appeals in Application of Foster, 343 F.2d 980, 52 CCPA 1808 (1965), cert. denied, 383 U.S. 966, 86 S. Ct. 1270, 16 L. Ed. 2d 307, which has been followed by the Third Circuit in Package Devices, Inc. v. Sunray Drug Co., 432 F.2d 272 (1970), cert. denied, 401 U.S. 956, 91 S. Ct. 977, 28 L. Ed. 2d 239. The Ninth Circuit reached a comparable result in Tool Research and Engineering Corp. v. Honcor Corp., 367 F.2d 449 (1966), cert. denied, 387 U.S. 919, 87 S. Ct. 2032, 18 L. Ed. 2d 972; that case is of particular significance because the court expressly noted, and considered inapplicable, its earlier dicta concerning Sec. 102(a).21 Finally, we cite with approval the analysis of the issue in Dix-Seal Corp. v. New Haven Trap Rock Co., 236 F. Supp. 914, 916-920 (D.Conn. 1964).

In his recent opinion for this court analyzing the effect of Sec. 102(a) and Sec. 102(b) on the inventor's own prior art, Judge Duffy quoted the following statement from Dix-Seal:

"'Once the year in which to prepare and file his application has passed, the employment of a standard of patentability less stringent against the first inventor than against . . . others would seem to impair, if not defeat Congressional policy. There should be no distinction between prior art of the inventor's own making and that of others."'

See Illinois Tool Works, Inc. v. Solo Cup Company, Inc. (7th Cir. Jan. 26, 1972, No. 18960 p. 5.) Later in his opinion Judge Duffy stated:

"The balancing process between the encouragement of technological advancement by the granting of legal monopolies and permitting a one-year grace period for application, and the interest of the public in having new advances readily accessible, has been considered by Congress in Section 102(b). The policy to expedite free public use and public disclosure by inventors was the overriding consideration of Congress in passing Section 102(b), which expressly bars an inventor who does not file an application within one year after his invention has been in public use.

"Once in public use, that invention becomes prior art and as to all later discoveries in that field anyone else must show some "patentable" change to obtain the legal monopoly. Once the year in which to prepare and file this application has passed, the employment of a standard of patentability less stringent against the first inventor than against these others would seem to impair, if not defeat, congressional policy." Id. at p. 9.

If the language of Sec. 103 were read to incorporate a strict identity test into Sec. 102(b), it would tear a significant hole in the fabric of pre-1952 patent law. No intent to create such a loophole is evident from the legislative history of the 1952 Code. Neither the purpose of the codification as a whole,22 nor the specific reasons for the inclusion of Sec. 103,23 have any application to the issue presented here.

Section 103 was intended to articulate a standard of invention somewhat less strict than that implied by reference to an inventor's "flash of creative genius" and also to remind us to judge patentability against the state of the art at the time the invention was made without benefit of hindsight predicated on subsequent art. The section, however, made no basic change in preexisting law. See Graham v. John Deere Co., 383 U.S. 1, 12-17, 86 S. Ct. 684, 15 L. Ed. 2d 545.

Nevertheless, Sec. 103 does shed this much light on Sec. 102(b). Its use of the concept of "nonobviousness" to identify the level of invention which qualifies for patent protection should also govern the interpretation of the word "invention" in Sec. 102(b). And its admonition to judge the issue in the correct temporal context requires us to determine whether the subsequent developments should have been obvious at the time the disclosure was made, rather than at the later date when the improvement was discovered.24 4] The factual issue under Sec. 102(b) presented to the district court in this case was, therefore, whether the subject matter of the '612 claims should have been obvious to a person having ordinary skill in the art on June 19, 1959.25

B. Sufficiency of the Findings.

Plaintiff contends that the district court's analysis of the obviousness question failed to follow the procedure mandated by the Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 17, 86 S. Ct. 684, 15 L. Ed. 2d 545.

The first step, a determination of the relevant prior art, merely required attention to the sale door itself and contemporaneous documents which were received in evidence. The relevant prior art was adequately identified.

The district court next considered the differences between the sale door and the '612 claims. He attached no significance, and neither do we, to the fact that the "J" configuration of flanges was found in only three horizontal rails in the sale door. Even if the concept had been disclosed in only one, that would have sufficed. Similarly, the fact that the configuration of flanges, followed by the insertion of the plastic panel and the application of pressure to the shorter flange, was intended both to secure the panel in the frame and also to make the door watertight was evident from the door itself.26 Of course, the application of greater pressure would better achieve these purposes: it would reduce the possibility of leakage and the need for rivets.27

The district court specifically found that the shorter flange in the sale door was not embedded in the plastic panel. He found that "the only genuine difference between the door sold on June 19, 1959, and the mechanical patent here in issue is the degree of rolling force utilized." A. 412. Although it might have been more precise to state the difference in terms of the consequence of the application of greater force, we believe this finding was clearly correct and adequately identified the differences between the "prior art" and the claims at issue as required by the second step of the John Deere procedure.

The district court made no findings which expressly discuss "the level of ordinary skill in the pertinent art," but he did unambiguously find that the attainment of embedment was merely the result of "mechanical skill." We are therefore satisfied that his ultimate finding that the attainment of embedment "did not constitute invention" adequately complied with the requirements of John Deere, and that his findings are supported by the record.

Plaintiff contends that if the improvement claimed in the '612 patent was obvious from the sale door, it is entitled to the benefit of the filing date of the '699 application which allegedly described that door "exactly and accurately."

If a later patent application satisfies the four conditions specified in 35 U.S.C. Sec. 120, it is entitled to the benefit of an earlier filing date.28 The '612 application appears to satisfy three of these conditions.29 The question is whether the invention claimed in the '612 patent was disclosed in the '699 application "in the manner provided by the first paragraph of [35 U.S.C. Sec. 112]."

The '699 application disclosed the basic invention, including the "J" configuration of the flanges on the horizontal rail. It did not include any drawings illustrating the effect of applying sufficient force to embed the shorter flange into the plastic panel-that is, to change the configuration from a "J" into a fishhook. But as the district court found, that modification should have been obvious to a person having ordinary skill in the art. It is therefore not unreasonable for plaintiff to argue that its earlier application should have satisfied the disclosure condition in Sec. 120.

That section, however, requires the prior disclosure to satisfy the first paragraph of Sec. 112. That paragraph prescribes the kind of disclosure which shall be contained in the specification in a patent application.30 It says nothing about the device itself, or what might be obvious from its inspection, use or manufacture. For that reason, notwithstanding the superficial plausibility of plaintiff's argument, it actually confuses two quite different issues.

Under Sec. 102(b) the defendant had the burden of proving that the subject matter of the '612 claims was obvious from the sale door itself, together with the evidence respecting the state of the art on June 19, 1959. Under Sec. 120, however, the plaintiff had the burden of proving that the '699 specification adequately disclosed the best mode contemplated by the inventor for carrying out the invention claimed in the '612 patent. Important evidence supporting the finding of obviousness, and therefore the Sec. 102(b) defense, sheds no light whatsoever on the Sec. 120 issue.

The '699 specification contains no reference to the portion of the aluminum flange which is actually embedded into the compressible panel. This part of the flange was carefully described in the '612 specification31 and identified as the "gripping member" on the '612 drawings.32 The gripping member is one of the elements of the combination claimed in the '612 patent.33

Certain evidence relating to the gripping member supported the district court's finding that the embedment concept was obvious on June 19, 1959. That evidence, though apparently available to the plaintiff before the '699 application was filed, finds no counterpart in the '699 specification.

The evidence included a memorandum indicating that on June 1, 1959, plaintiff had started work on a new machine to roll the flanges into the fiberglass panels34 and an apparently contemporaneous pair of drawings closely resembling the actual configuration of the flanges in the frame of the sale door before and after the application of pressure.35 These drawings strongly suggest, and may actually disclose, the concept of embedment.36 It was entirely proper for the district court to determine the issue of obviousness under Sec. 102(b) on the basis of his study of not only the sale door itself but also the contemporaneous evidence indicating that embedment would result from the application of additional pressure to the front flange.

There is no inconsistency between his finding of obviousness based on that evidence and his rejection of plaintiff's untimely contention that the invention claimed in the '612 patent had been disclosed in the '699 specification in the manner prescribed by the first paragraph of Sec. 112. It is conceivable that elements such as the gripping member, the importance of a relatively hard flange on the horizontal rail,37 and actual embedment, which were painstakingly described in the '612 specification, were inherently disclosed by the '699 application, but that conclusion is by no means obvious. Cf. Schriber-Schroth Co. v. Cleveland Trust Co., 305 U.S. 47, 57-59, 59 S. Ct. 8, 83 L. Ed. 34. In view of the omission from the '699 application of drawings which had previously been prepared,38 and which disclosed the invention in substantially the same manner as drawings used in the '612 specification, it is extremely doubtful that plaintiff made the full disclosure-including "the best mode contemplated by the inventor of carrying out his invention"-required by the first paragraph of Sec. 112.

Even if there might be merit in plaintiff's post-trial assertion that the '612 patent should have the benefit of the '699's filing date, it is clear that the issue presented by the belated argument could not have been resolved summarily in plaintiff's favor. It is equally clear that plaintiff could have advanced this argument as an alternative contention as soon as defendant pleaded Sec. 102(b) as a defense. The district court properly exercised its discretion in refusing to reopen the case to give plaintiff a second chance to try to establish the validity of its patent.

We doubt that plaintiff's '699 specification disclosed the invention claimed in the '612 patent in the manner required by Sec. 112. This doubt buttresses our holding that plaintiff's election to try the case on the theory that the differences between the sale door and the '612 claims provided an adequate response to the Sec. 102(b) defense, without relying on Sec. 120 as an alternative contention, forecloses any challenge to the district court's summary rejection of plaintiff's post-decision attempt to inject new issues into the case.

The patented design is reproduced in the margin.39 There is no novelty in the fact that the door is comprised of four sections composed of a corrugation of alternate broad planes and narrow grooves. Three other features were stressed in supporting allowance of a patent: (1) the entire garage door is surrounded by a narrow border; (2) the broad plane surfaces in the corrugation are substantially equally spaced; and (3) every third plane is bisected by the horizontal bars which hinge two sections together.40

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

The prior art submitted to the Patent Office Examiner included catalog references and mechanical patents, but no design patents. He rejected the application on the ground that the design lacked invention.41 In response to a request for reconsideration, the Examiner again concluded that the design did not present "anything patentably ornamental" and finally rejected the claim as lacking invention.42

The Board of Appeals reversed the Examiner's rejection. It held that the three features identified above produced "a design which is not similar to or suggested by the references."43 Its opinion adequately explained why plaintiff's design was novel, but does not expressly consider the requirement of "invention."

The district court found the design patent valid and infringed. The court expressed the opinion that the design satisfied the test of "creative originality in artistry."44 In reaching this conclusion the court expressly relied on the presumption of validity45 and the appearance of the exposed aluminum at the hinges.46

Defendant's denial of infringement was predicated on the fact that the sections of its door are hinged in the narrow grooves which separate the broader planes instead of bisecting every third broad surface. The district court concluded, however, that the overall appearance of the two doors was substantially identical because on both doors the hinges were almost entirely concealed. The court also stated, erroneously, that the Patent Office Board of Appeals placed no reliance on the location of the hinges.47

In order to support its claim of infringement, plaintiff construed the scope of its monopoly grant as broadly encompassing doors with substantially equally spaced grooves surrounded by a narrow border, regardless of whether the hinging horizontal framing members bisect a broad surface or a narrow groove. As so construed, we hold that the patent is not supported by a presumption of validity because we do not think the Board of Appeals' decision can be read as giving the plaintiff the monopoly it asserts. Without that support we think the Examiner was clearly correct in finding that the design was lacking in invention.

There are several reasons for our conclusion that the monopoly claimed by plaintiff is not presumptively valid. We first note that a patented design, like the subject matter of a mechanical patent, must embody invention. The purpose of the statute is to reward, and thereby to encourage, creative artistic activity rather than mere changes of detail which may produce "novelty" but do not reflect "invention." The inventor must make a "contribution to the public which the law deems worthy of recompense." Gorham Company v. White, 14 Wall 511, 81 U.S. 511, 525, 20 L. Ed. 731.48

In this case the Examiner plainly and repeatedly expressed his judgment that the claimed design was lacking in invention. The Board of Appeals' opinion carefully articulated differences between plaintiff's design and the specific prior art references to support its conclusion that the design was novel, but the opinion contains no comment on the separate and important requirement of invention.49

If we read into the opinion a finding that the design reflects creativity, significance must be attached to the Board's express reference to the hinging horizontal framing members which bisect every third broad surface. Since a more normal location for the hinges would be in the narrow grooves, greater originality is reflected in this feature than in either the narrow border or the roughly equal spacing of grooves. A construction of the patent which eliminates this feature, therefore, removes any basis for presuming that the Board of Appeals sub silentio found that plaintiff's otherwise commonplace design did attain the status of invention.

We therefore conclude that the design patent, as construed by plaintiff, is clearly lacking in invention, as the Examiner found.50

The judgment of the district court is affirmed insofar as it holds Patent No. 3,169,612 invalid; insofar as it holds Design Patent No. 194,094 valid and infringed, it is reversed.