specifically concurring.
I concur in the decision of the majority in affirming the action of the board in its approval of the rejection of the appealed claims for the want of invention over the cited prior art.
The majority state, “Other matters have been suggested in the brief of appellant which we see no reason to discuss as they are entirely without the issue.”
Appellant relies upon the decision of this court in In re Shortell, 31 C. C. P. A. (Patents) 1062, 142 F. (2d) 292, 61 USPQ 362, where we reversed the Patent Office upon the question of invention relating to a hack saw having teeth on both edges. We there held that it was not in the province of the court to establish new standards of invention since this would be judicial legislation rather than interpretation, and stated:
It follows, from the foregoing, that until Congress shall otherwise legislate, or the Supreme Court shall otherwise specifically hold, this court will continue to hold that if a process or thing constitutes patentable subject matter, is new and useful, and the process performed or thing produced would not be obvious to one shilled in the art, invention should be presumed and a patent may properly issue therefore.
*1045Appellant states that the rejection of the claims involved in the instant appeal was made at a time of “considerable stress in the Patent Office following a number of decisions of other Courts which seemed to change the basis or standard of invention and prior to this Court’s pronouncement above.” He then argues in effect that, under former standards of invention,' with respect to his particular combination, for various reasons assigned, he should be allowed the claims. Pie states that “the presumption of invention is in appellant’s favor.”
It is my personal view, and I speak here only for myself, that one whose claims have been denied in the Patent Office solely on the question as to whether or not the production of the article involved the inventive faculty has, if he sees fit, a right to urge in substance that he is the victim of an alleged changed standard of invention applied by the Patent Office.
I do not agree that in the instant case what appellant did amounted to any more than the exercise of mechanical skill even when he is given the benefit of all reasonable doubts.
Since appellant has the right to raise the question here, I see no impropriety in answering his contentions with respect thereto.
Throughout more than a century of development of the patent law, fundamental principles upon which the determination of the existence of invention rests have been developed and, on the whole, there has been little complaint, until recently, of any change of standard of invention with respect to which we are here concerned. It may be that certain tribunals in the Patent Office have recently sensed and been influenced by a disposition on the part of certain courts to change the standard of invention which, has prevailed for so many years. However, I see no such attitude reflected in the instant record.
The pendulum of thought on subjects like this is prone to swing far in both directions and it would not be a matter of great surprise, in view of other attacks made on the patent system which to me are somewhat alarming, to learn that some applicants have been denied patents in recent days by virtue of a change in the standard of invention. This, if true, in part is due, of course, to the well-recognized fact that the term “invention” has never been, and doubtlessly never will be, satisfactorily defined by Congress or the courts. Necessarily it becomes a matter of individual opinion.
Patents are only prima facie evidence of invention and, as has been true for more than one hundred years, the equity courts, generally speaking, may be trusted, upon more complete records, to correct any mistakes made by the Patent Office in granting patents.
While I personally would deplore as extremely regrettable any attempt to undermine the basic, well-settled legal principles applicable *1046to this particular question, I see no merit in appellant’s contention on the instant record.
Since writing the above I am authorized to state that O’Connell, J., concurs in this concurring opinion.