In re Holt

12 Citing cases

  1. Application of Alford

    300 F.2d 929 (C.C.P.A. 1962)

    I have no doubt that under a long line of cases in this court, as well as in other courts, such proof with respect to an admittedly new combination would have been found acceptable to establish patentability prior to 1952, when the requirement of "invention" was put into the statute, 35 U.S.C. § 103, in terms of what would be unobvious to one of ordinary skill in the art at the time the invention was made. In re Holt, 162 F.2d 472, 34 CCPA 1129. Since section 103 clearly was not included in the statute for the purpose of making it more difficult for the inventors of new combinations to obtain patents on their inventions which produce new, unexpected, and advantageous results which would (by virtue of unexpectedness) not have been obvious, I can see no reason for ignoring established case law. A casual perusal of the legislative history of section 103 will show that the intent was that it should have exactly the opposite effect it is being given in this case.

  2. Ellicott Machine Corp. v. Wiley Manufacturing Co.

    297 F. Supp. 1044 (D. Md. 1969)   Cited 4 times

    * * * The mere fact that elements of appellant's dredge may be found in various patents does not necessarily negative invention. In re Holt, 34 C.C.P.A. 1129; 1947 C.D. 463; 605 O.G. 367; 162 F.2d 472; 74 USPQ 155. Moreover, the concept of doing a thing, the result of which is new and useful and unexpected, must be considered along with the actual means for doing it in considering the presence or absence of invention and patentability.

  3. Application of Glass

    472 F.2d 1388 (C.C.P.A. 1973)   Cited 1 times

    O'Neill shows slower-burning layers in a rocket and Thomas shows separately ignitable electrical squibs in a rocket. Appellant argues that the citation of elements from these and the Damblanc and Zwerina patents amounts to rejecting the claims merely because "every element" is "found" in the prior art, which was held improper by us in In re Holt, 162 F.2d 472, 34 CCPA 1129, (1947). We disagree.

  4. Application of Bulina

    362 F.2d 555 (C.C.P.A. 1966)   Cited 5 times

    * * * the courts should resort not only to an attempt to determine whether an applicant's novel feature is within the capacity of a skilled mechanic in the art, but also to the history and underlying state of the art at or about the time of the alleged invention, the occasion for it, the advantages and successes it achieves. In re Worrest, 201 F.2d 930, 40 C.C.P.A. Patents, 804; In re Bowden, [et al], 183 F.2d 115, 37 C.C.P.A., Patents, 1201; In re Holt, 162 F.2d 472, 34 C.C.P.A., Patents, 1129. Of course the record as to the history of the art before the Patent Office tribunals and this court in an ex parte case would almost invariably be less complete, and perhaps less reliable, than that before a court in an inter partes infringement suit, due to obvious inherent differences in the nature of the two proceedings; and this is a factor to be considered by us in applying the `"history of the art" test.' In re Worrest, supra [201 F.2d 933].

  5. Application of Carter

    212 F.2d 189 (C.C.P.A. 1954)   Cited 3 times

    The concept of modifying or combining features of the prior art to produce unobvious and unexpected results likewise may have patentable significance even though little more than mechanical skill was needed for the embodiment and application of the concept. In re Holt, 162 F.2d 472, 34 C.C.P.A., Patents, 1129; In re Osplack, 195 F.2d 921, 39 C.C.P.A., Patents, 932. Twelve claims covering the invention defined in appellant's application have been allowed, but no reason is suggested which prohibits the allowance of the appealed claims on an independent basis, provided the subject matter thereof is patentable over the cited art. Whenever claims for a patent are rejected by the tribunals of the Patent Office, the reasons for their action, and the pertinence of the references, if not obvious, must be clearly explained to the applicant.

  6. Application of Hall

    208 F.2d 370 (C.C.P.A. 1953)   Cited 7 times

    Where the combination, of elements is old the mere improvement of one element of that combination, without a corresponding improvement in the operation of the combination as a whole, does not make a new combination. In re Cook, 134 F.2d 494, 30 C.C.P.A., Patents, 935; In re Holt, 162 F.2d 472, 34 C.C.P.A., Patents, 1129; In re Lambert, 165 F.2d 441, 35 C.C.P.A., Patents, 839. In the Lambert case, supra, 165 F.2d at page 443, 35 C.C.P.A., Patents, at page 842, this court said,

  7. Application of McKenna

    203 F.2d 717 (C.C.P.A. 1953)   Cited 23 times

    This court has frequently stated that, in attempting to ascertain the presence or absence of invention, the courts should resort not only to an attempt to determine whether an applicant's novel feature is within the capacity of a skilled mechanic in the art, but also to the history and underlying state of the art at or about the time of the alleged invention, the occasion for it, the advantages and successes it achieves. In re Worrest, 201 F.2d 930, 40 C.C.P.A., Patents, ___; In re Bowden, 183 F.2d 115, 37 C.C.P.A., Patents, 1201; In re Holt, 162 F.2d 472, 34 C.C.P.A., Patents, 1129. Of course the record as to the history of the art before the Patent Office tribunals and this court in an ex parte case would almost invariably be less complete, and perhaps less reliable, than that before a court in an inter partes infringement suit, due to obvious inherent differences in the nature of the two proceedings; and this is a factor to be considered by us in applying the "`history of the art' test." In re Worrest, supra [201 F.2d 933].

  8. Application of Madsen

    197 F.2d 536 (C.C.P.A. 1952)

    We are fortified in this conclusion not only by the affidavits of record showing the superiority of the subject matter defined by the claims in question but also by the wide commercial success which for the three years from 1947 to 1950 resulted in the sale of more than 2½ million units of the claimed article. In re Holt, 162 F.2d 472, 34 C.C.P.A. (Patents) 1129; Wahl Clipper Corporation v. Andis Clipper Co., 7 Cir., 66 F.2d 162, 165. In the case last cited, Judge Alschuler made the following pertinent comment:

  9. In re Bendersky

    187 F.2d 749 (C.C.P.A. 1951)

    Appellant contends in effect that the concept of the claimed combination never has been heretofore suggested or thought of; that not only do the references utterly fail to disclose appellant's invention, but it would not be possible to construct appellant's device from the specific elements taught by the references; and that the conception of a structure such as is defined here by the appealed claims constitutes invention, even though the assembling of the various elements thereof may involve, after such conception, little more than mechanical skill. In re Emmey, 161 F.2d 754, 34 C.C.P.A., Patents, 1097; In re Holt, 162 F.2d 472, 34 C.C.P.A., Patents, 1129. The Solicitor for the Patent Office concedes in his brief the existence of patentable invention defined by the allowed claims 18 and 40. He contends, however, that the record presented definitely establishes that the appealed claims define only a combination of elements, or the assembly of desirable features, all old in the prior art, and that no invention or inventive concept whatever was involved in the combining of the elements disclosed or suggested by the references, individually and collectively.

  10. Application of Moore

    181 F.2d 1014 (C.C.P.A. 1950)   Cited 2 times

    That appellant has clearly made a great advance in an already crowded art may not properly be ignored. A new combination of old elements cooperating in a new, useful and unobvious manner to produce an improved result is patentable. Williams Manufacturing Co. v. United Shoe Machinery Corp., 316 U.S. 364, 62 S.Ct. 1179, 86 L.Ed. 1537; Loom Co. v. Higgins, 105 U.S. 580, 591, 26 L.Ed. 1177; In re Holt, 162 F.2d 472, 34 C.C.P.A., Patents, 1129; In re Emmey, 161 F.2d 754, 34 C.C.P.A., Patents, 1097; In re DeLancey, 159 F.2d 737, 34 C.C.P.A., Patents, 849; In re Bencker, 96 F.2d 326, 25 C.C.P.A., Patents, 1097; In re Hofmann, 95 F.2d 257, 25 C.C.P.A., Patents, 975. The decision of the Board of Appeals is reversed.