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
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
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
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.