## Facts

- Oscar Bass, Jr., Jenkins, Sr., and Horvat filed a patent application as joint inventors for an air control/vacuum system that controlled and collected waste on textile carding machines used to prepare fibers for spinning.
- The examiner finally rejected claims 1–9 as unpatentable for obviousness under 35 U.S.C. § 103 based on five references, including:
  - A U.S. patent issued to Bass and Horvat directed to a suction nozzle relevant to the application’s claimed system, and
  - A U.S. patent issued to Jenkins directed to a main cylinder component used in the system.
- The examiner treated the Bass/Horvat patent and the Jenkins patent as “prior inventions” by another under pre-AIA 35 U.S.C. § 102(g), and combined them with other references (including a Japanese published application) in the § 103 analysis.
- During prosecution, the applicants submitted an affidavit stating they made the claimed invention together as coworkers on a common project, and that they did not jointly invent the subject matter claimed in the separate Bass/Horvat and Jenkins patents.
- The examiner concluded the affidavit did not remove the Bass/Horvat and Jenkins patents as available prior inventions under § 102(g) for purposes of the § 103 rejections.
- The Patent Office Board of Appeals affirmed the examiner’s rejections and reasoning.
- The applicants appealed to the United States Court of Customs and Patent Appeals.

## Issues

1. Whether pre-AIA 35 U.S.C. § 102(g) makes a prior invention by another (not abandoned, suppressed, or concealed) available as “prior art” for an obviousness determination under 35 U.S.C. § 103.
2. Whether earlier patents naming a different inventive entity—here, a subset of the later application’s joint inventors—can qualify as inventions “by another” under § 102(g) as against the later joint application.
3. Whether, treating the earlier Bass/Horvat and Jenkins inventions as available § 102(g) prior art, the Board properly affirmed the § 103 obviousness rejections of claims 1–9.

## Decision

- The court affirmed the Board’s decision.
- The court held that § 102(g) generally makes a prior invention by another available as prior art within the meaning of § 103 when the prior invention was not abandoned, suppressed, or concealed.
- The court treated the earlier Bass/Horvat and Jenkins patents as inventions “by another” relative to the joint inventive entity of Bass, Jenkins, and Horvat on the appealed application, because the inventive entities were different even though individuals overlapped.
- The court agreed the affidavit did not eliminate the earlier patents from consideration as § 102(g) prior inventions in the obviousness analysis.
- Applying the available prior art, the court sustained the Board’s obviousness determinations and left the claims rejected.

## Legal Principles

- A prior invention that qualifies under pre-AIA 35 U.S.C. § 102(g)—i.e., made in the United States by another, and not abandoned, suppressed, or concealed—can be used as prior art in evaluating obviousness under 35 U.S.C. § 103.
- “By another” in § 102(g) is assessed by comparing inventive entities; a reference can be “by another” when it names a different combination of inventors than the application under examination, even if one or more inventors are the same.
- Issuance of a patent and resulting public disclosure are strong indicators that the earlier invention was not abandoned, suppressed, or concealed for § 102(g) purposes.
- An applicant affidavit asserting coworker status and a common project does not, by itself, negate “another” status when the earlier reference reflects a different inventive entity and the record supports treating the earlier work as a distinct invention available under § 102(g).

## Conclusion

In re Bass held that pre-AIA § 102(g) prior inventions by a different inventive entity—so long as not abandoned, suppressed, or concealed—may be treated as prior art for § 103 obviousness, and the C.C.P.A. affirmed the Patent Office’s rejection of the joint application’s claims as obvious in view of combinations that included earlier patents issued to subsets of the same individuals.


In re Bass, 474 F.2d 1276 (1973)