Titanium Metals Corp. of America v. Banner
778 F.2d 775 (Fed. Cir. 1985)

  • TMC filed a patent for a new type of titanium alloy to use in offshore oil wells. The USPTO rejected the patent. TMC appealed.
    • USPTO found that the patent was anticipated by a Russian scientific article.
      • Basically, the USPTO found that if 'someone skilled in the art' had read the article, then it would be pretty obvious for them to have come up with TMC's alloy. Therefore the patent should be denied because of a lack of novelty.
        • See 35 U.S.C. 102.
      • Technically, the article didn't specifically mention the new alloy, but according to the patent examiner, it would be easy to deduce.
  • The USPTO Board of Appeals affirmed. TMC appealed.
  • The Trial Court reversed and order the patent granted. USPTO appealed.
    • The Trial Court found that while the Russian scientists had clearly made the alloy, the article did not discuss the alloys' improved corrosion resistance (so it couldn't be said that the prior art had fully anticipated the patent).
      • 102 requires that each and every element of the patent must be described in a single source of prior art in order for the patent to be denied for being anticipated.
  • The Appellate Court reversed and denied the patent.
    • The Appellate Court found that reading the Russian article would let someone know that the alloy exists, what its general properties are, and how to make it. Therefore the alloy cannot be considered "new." It existed in the prior art.
      • In general, prior art must show how to make the invention (requirement of enablement). It can't just be speculation. However, the Court found that if a metallurgist read the Russian article, they could be easily make the alloy.
    • The Court found that even if the Russian article didn't talk about every single useful property of the alloy, it still enables.
      • Basically, you can't get a patent by simply discovering that the alloy is corrosion resistant. 102 requires that something be new in order to be patented.
      • The Russian article didn't talk about corrosion resistance, but the alloy they discovered was corrosion resistant. TMC didn't discover a new product, they discovered a new use for an old product.
  • The facts of this case show that the TMC inventors had never heard of the obscure Russian academic article and had independently come up with the alloy. Is it fair to penalize them for not knowing about the article?
    • TMC wanted to actually produce the metal, while the Russian researchers had not taken any steps towards production. Is it good public policy to prevent TMC from producing the metal?
    • On the other hand, maybe it is good to encourage people to do research into what the existing art is, so they don't waste time reinventing the wheel.