## Facts

- Inventor Robert Regis (associated with Hazeltine Research, Inc.) filed a patent application on December 23, 1957 for an improvement in a microwave switch.
- The Patent Examiner rejected the application as obvious under 35 U.S.C. § 103 based on the combined teachings of two references: the Carlson patent and the Wallace patent.
- The Carlson patent issued in 1949 and was undisputed prior art.
- The Wallace application was filed March 24, 1954, remained pending when Regis filed, and issued as a patent on February 4, 1958 (43 days after Regis’s filing).
- Regis argued that the Wallace disclosure could not be used as “prior art” because it was contained in a co-pending, nonpublic application when Regis filed.
- The Patent Office Board of Appeals affirmed the rejection.
- Regis and Hazeltine brought a civil action under 35 U.S.C. § 145 to compel issuance of the patent; the district court upheld the Patent Office.
- The D.C. Circuit affirmed, relying on Alexander Milburn Co. v. Davis-Bournonville Co.
- The Supreme Court granted certiorari.

## Issues

1. Whether an earlier-filed patent application that was pending (and not publicly available) when a later application was filed constitutes “prior art” under 35 U.S.C. § 103 once it matures into a patent.
2. Whether the Patent Office may use the disclosure of such a later-issued patent in combination with other references to support a § 103 obviousness rejection of the later application.

## Decision

- The Supreme Court unanimously affirmed.
- The Court held that a patent application pending in the Patent Office when a later application is filed constitutes part of the “prior art” under 35 U.S.C. § 103 once it issues, effective as of its filing date.
- The Court followed Alexander Milburn Co. v. Davis-Bournonville Co. and concluded that the 1952 Patent Act did not displace that rule.
- Because Wallace’s application was filed before Regis’s application, its disclosure could be used (with Carlson) to show Regis’s claimed subject matter was obvious.

## Legal Principles

- For § 103 obviousness, “prior art” includes an earlier-filed patent application that later issues as a patent; the reference is treated as available as of the earlier application’s filing date.
- Congress’s enactment of § 103 did not indicate an intent to narrow prior-art doctrine so as to exclude earlier-filed, later-issued applications.
- The confidentiality of an earlier pending application at the time of the later filing does not prevent its disclosure, once patented, from being applied against later applicants under § 103.
- The Patent Office may consider such earlier-filed disclosures to prevent issuance of patents on subject matter that would be obvious in view of what was already disclosed in earlier-filed applications.

## Conclusion

The Court sustained the Patent Office’s § 103 rejection, holding that an earlier-filed application—though nonpublic when a later application is filed—becomes § 103 prior art once it issues, effective as of its filing date, and may be combined with other references to prove obviousness.


Hazeltine Research, Inc. v. Brenner, 382 U.S. 252 (1965)