Talk:Gould v. Hellwarth, 472 F2d 1383 (1973)

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Courtney

Patent interference proceeding. The Board of Interference Examiners of the United States Patent Office, Interference No. 94,837, awarded priority of invention to junior party, and the senior party appealed. The Court of Customs and Patent Appeals, Lane, J., held that senior party's application for patent on a so-called “Q-switched” or “Giant Pulse” laser was properly denied on ground that the disclosure of the application was not adequate to enable a person skilled in the art to make an operable device. The determinative issue is whether the disclosure of the Gould application was adequate to enable a person skilled in the art to make an operable device ( 35 U.S.C. § 112). We agree with the board that it was not and affirm its decision.

Hellwarth asserted no date of invention prior to Gould's filing date. No priority evidence was submitted by either party and both parties rely on their filing dates.

This brief history of the attainment of the final operating lasers gives firm support to the board's conclusion that the Gould application was insufficient to teach a person skilled in the art how to make a laser. Whether the “person skilled in the art” is viewed in terms of the laser art, even though an operable laser had not yet been made, or with regard to the art to which the laser “is most nearly connected” (35 USC 112) is not material. The board, as well as the witnesses, considered the case in light of what would be taught to a highly trained person knowledgeable in the fields of microwave masers, spectroscopy, atomic physics and aware of published proposals for making a laser, and we do the same.

We conclude that the Gould application involved herein does not provide an enabling disclosure of how to make the subject matter of the counts. The decision of the board awarding priority of invention to Hellwarth is accordingly affirmed.

Kevin

The Gould specification has much disclosure but much work had to be done subsequent to the filing of the application before an operative laser was made. The patent statutes do not contemplate grant of patents for such a disclosure which is merely a fertile field for experimentation. Cf. In re Joliot et al. * * * [47 CCPA 722, 270 F.2d 954, 123 USPQ 344 (1959);] In re Wooddy, Jr. et al. * * * [51 CCPA 1317, 331 F.2d 636, 141 USPQ 518 (1964).]

The testimony of appellant's witnesses was generally in agreement with Lengyel's view that the application does not disclose a complete set of parameters for a laser as well as his observations as to what knowledge was necessary to produce an operable laser. Opinions of Bloom and Fowles contrary to the board on the ultimate question of whether the Gould disclosure was adequate to enable a person skilled in the art to make an operable laser are incompatible with their testimony as well as that of Lengyel and the other evidence. In arguing that he does disclose the parameters necessary for a particular laser, appellant states that “[p]erhaps the best example of a complete description of a specific embodiment in the Gould application” is a portion which suggests use of “a gaseous atmosphere comprising a mixture of sodium and *1388 mercury” as the working medium. However, both Lengyel, in 1967, and Bloom, in 1968, testified that no sodium-mercury laser had been known to operate. In view of the widespread efforts to obtain laser action in different media which the record shows followed Maiman's initial success in 1960, no basis is seen for accepting this alleged “complete description” as teaching how to make an operable laser. Appellant also refers to TRG's having constructed an operable helium-cesium laser “after the restrictions on Gould were relaxed enough to permit him to make significant contributions to the development.” However, it is plain from the application and the testimony that neither physical dimensions nor particular operating conditions for such a laser are given in the Gould application. Also it was not until between January and April of 1962 that TRG's optically pumped helium-cesium laser was operated. By that time, the state of the art had been advanced by the successful operation of the ruby laser by Maiman and the helium-cesium laser by Javan and his associates. Additionally, a nearly confocal arrangement of mirrors, based on a proposal made by Bell Laboratories in 1961 and not on the Gould disclosure, was used.[14] These circumstances are inconsistent with any claim that the Gould application adequately disclosed how to make an operable helium-cesium laser. Nor does a claim by appellant that his application “discloses the ruby laser” find any factual support. The application merely lists ruby as a possible alternative medium with the suggestion that it be a single crystal. Information as to the type, size or orientation of the crystal and exactly how it is to be excited is not given. While ruby, in certain forms, was a known maser material, reports of TRG work made of record show that its workers considered it as a laser material in early 1960 but rejected it. Maiman made extensive investigation before finding that a particular ruby material, a pink ruby, would provide an operative laser under particular conditions. Appellant also refers to the action of the examiner in denying appellee's motion to dissolve for insufficiency of the Gould disclosure. What significance that action might ordinarily have is overcome by the fact that the examiner did not have the benefit of all the evidence, including particularly the testimony of the witnesses, which persuades us that the disclosure was not adequate. We conclude that the Gould application involved herein does not provide an enabling disclosure of how to make the subject matter of the counts. The decision of the board awarding priority of invention to Hellwarth is accordingly affirmed. Affirmed.

Maura

The Court of Customs and Patent Appeals, Lane, J., held that senior party's application for patent on a so-called “Q-switched” or “Giant Pulse” laser was properly denied on ground that the disclosure of the application was not adequate to enable a person skilled in the art to make an operable device.

The appellant, Gould, is involved on his application serial No. 804,540 filed April 6, 1959.[2] The determinative issue is whether the disclosure of the Gould application was adequate to enable a person skilled in the art to make an operable device ( 35 U.S.C. § 112). We agree with the board that it was not and affirm its decision.

The testimony of all the witnesses is fairly consistent in recognizing that the Gould application does disclose various working mediums, dimensions and theories but there is no information which is complete enough for one *1386 skilled in the art to build an operative laser particularly at a time when one “skilled in the art of lasers” was virtually non-existent.

OPINION Appellant emphasizes that the counts are not drawn to a laser per se but to a laser modified by means for permitting Q-switched or pulsed operation. He also argues that Hellwarth derived the laser per se on which he imposes Q-switching from the ruby laser successfully operated by his then coworker at Hughes Aircraft Company, Maiman, before the Hellwarth application was filed. It is apparent, however, that such circumstances are common, if not usual, with respect to improvement inventions like that involved here, and they have no bearing on the outcome. As in any priority dispute, Gould can prevail only if his application meets the requirements set out in the first paragraph of 35 U.S.C. § 112. The application must include a disclosure of the invention “in such terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.”

This brief history of the attainment of the final operating lasers gives firm support to the board's conclusion that the Gould application was insufficient to teach a person skilled in the art how to make a laser. Whether the “person skilled in the art” is viewed in terms of the laser art, even though an operable laser had not yet been made, or with regard to the art to which the laser “is most nearly connected” (35 USC 112) is not material. The board, as well as the witnesses, considered the case in light of what would be taught to a highly trained person knowledgeable in the fields of microwave masers, spectroscopy, atomic physics and aware of published proposals for making a laser, and we do the same.