The Weber patent, defendants contend, was cited by the Examiner only after the case had been allowed. They urge this Court to adopt the precedent established by the late Judge Shaw of this District in Worthington v. Southern New Jersey Newspapers Inc., 323 F. Supp. 443 (D.N.J. 1970), where he held a patent invalid, and, referring to a cited, but nonapplied, reference, stated as follows ( 323 F. Supp. at 462-63): These facts indicate that although the Smith 044 patent is a file reference in the 460 patent, it was not duly considered by the patent office, but merely added as a reference after final allowance of the claims in the patent; prosecution on the merits was not reopened to consider the Smith 044 patent.
Both the work at ACC and at Metal Flo was considered confidential (PRM 2536 [ACC] and Gardner Dep. Tr. 95-96 [Metal Flo]). As stated in Worthington v. Southern New Jersey Newspapers, Inc., 323 F. Supp. 443, 464 (D.N.J. 1970), "the knowledge relied upon must be accessible to the public." In Worthington, as here, reliance was placed on drawings and the like in company files and some experimental work not accessible to the public.
"To anticipate a combination, the combination in its entirety must be old." Bristol v. Otis Elevator Company, 52 F.2d 772 at 773 (3rd Cir. 1931); see also Worthington v. Southern New Jersey Newspapers, Inc., 323 F. Supp. 443 (D.N.J. 1970). Here, the elements of the invention derive from two prior art references, the diagonal taffeta film and the Smith, et al. patent or other films with square-to-the edge orientation.
As indicated above, under § 102(b) the patented process or article is compared against each alleged prior use individually while under § 103 the question of the obviousness of the patent claim is determined with reference to the prior art as a whole. Worthington v. Southern New Jersey Newspapers, Inc., 323 F. Supp. 443, 458-459 (D.N.J. 1970). § 102(b) does allow public use for a period of one year prior to the date of the patent application.
In order to meet the statutory requirement of novelty, the invention must possess statutory newness as defined in 35 U.S.C. § 102. If an invention does not meet the requirements of Section 102, it is anticipated and cannot be valid. "Invention" is not to be confused with novelty and anticipation. A device may possess novelty but lack invention and thus be unpatentable by virtue of 35 U.S.C. § 103 which requires that a device to be patentable, although "new", must not have been obvious to one skilled in the art to which it pertains. Worthington v. Southern New Jersey Newspapers, Inc., 323 F. Supp. 443 (D.N.J. 1970). See also 1 Deller's Walker on Patents, 2d Ed. § 56.