Titanium Metals Corporation Of America v. Banner

778 F.2d 775 (D.C. Cir. 1985)

Purchase the Printed Copy at bsmsphd.com

Nature of the Case

To access this section all you need to do is click here and register.

Facts

Covington and Palmer are employees of P to whom they have assigned their invention and the application thereon. P wants to patent an alloy of titanium (Ti) which contains small amounts of nickel (Ni) and molybdenum (Mo) as alloying ingredients to give the alloy certain desirable properties, particularly corrosion resistance in hot brine solutions, while retaining workability so that articles such as tubing can be fabricated from it by rolling, welding and other techniques. Ps found that iron content should be limited as an undesired impurity rather than an alloying ingredient. The examiner rejected any patent based on an article by Kalabukhova and Mikheyew, Investigation of the Mechanical Properties of Ti-Mo-Ni Alloys, Russian Metallurgy (Metally) No. 3, pages 130-133 (1970). This was based on anticipation and obviousness from the content of the Russian article. The board affirmed but proceeded on the assumption that all three claims had been rejected as anticipated under §102 by the Russian article. The board ignored the obviousness rejection. The Board held that all of the claimed alloys were anticipated even though the Article was silent on one claimed physical feature of the invention. The Russian article was highly technical and contains 10 graphs as part of the discussion. It relates to ternary Ti-Mo-Ni alloys, the subject of this application. The board found that the claimed alloys were not new, because they were disclosed in the prior art. It having been argued that the Russian article contains no disclosure of corrosion-resistant properties of any of the alloys, the board held: The fact that a particular property or the end-use for this alloy as contemplated by P was not recognized in the article is of no consequence. The Board held that anyone who possessed skill in the art would be able see that the claimed alloys were already known and that any silence was irrelevant. Although the article does not discuss corrosion resistance, it does disclose other properties such as strength and ductility. The PTO points out that the authors of the article must have made the alloys to obtain the data points. P brought this complaint alleging that the board's decision 'was erroneous and contrary to law.' D filed an answer denying that Ps were the first inventors of the alloys claimed or entitled to a patent, alleging that the claims are not patentable under the law. After expert testimony, the trial court concluded that claims 1-3 were not anticipated and that claim 3 was wrongly rejected as directed to obvious subject matter. D appealed.