United States Court of Claims (dissenting):
I respectfully dissent. I feel strongly that the patent in suit passes the test of nonobviousness, formulated by the Patent Act of 1952, 35 U.S.C. § 103 (1964), and construed by the Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). The majority of this court, and the court below, although professing to be guided by the factual inquiries specified .in .Graham,1 in my judgment misapply these tests and thereby reach an erroneous legal conclusion.
A patent awarded by the Patent Office is to be presumed valid, and the burden of establishing invalidity falls on the party asserting it. 35 U.S.C. § 282 (1964). “[T]he primary responsibility for sifting out unpatentable material lies in the Patent Office.” Graham, supra, 383 U.S. at 18, 86 S.Ct. at 694. The majority here gives emphasis to the fact that none of the prior art considered by the District Court was before the Patent Office when it granted the patent in suit. But the party attacking the validity of a claim can always find references which the Patent Office did not consider. The question is whether the references are of such significance that the presumption of validity is overcome and the decision of the Patent Office may be set aside. Otto v. Koppers Co., 246 F.2d 789 (4th Cir. 1957), cert. denied, 355 U.S. 939, 78 S.Ct. 427, 2 L.Ed.2d 420 (1958). Nowhere has appellee attempted to show directly that the prior art which the Patent Office did consider was in fact insufficient in comparison with the references introduced before the District Court.
Of the references before the District Court the most significant was the Cederquist patent, a non-stackable combination step ladder-scaffold. Appellee’s expert testified to a substantial difference between this device and the patent in suit. In an effort to demonstrate the similarity between the Cederquist step ladder-scaffold and the patent in suit, appellee introduced before the District Court two models of the Cederquist device, modified on the basis of the Up-Right scaffold.
A careful reading of the record indicates strongly that it was the modified Cederquist devices which the court below felt could be combined with prior art to disclose the patent in suit. The fallacy in this approach, however, is that the modified Cederquist device is not prior art. It is a common but fundamental error to substitute hindsight for anticipation in assessing patent validity, Diamond Rubber Co. v. Consolidated Rubber Tire Co., 220 U.S. 428, 435, 31 S.Ct. 444, 55 L.Ed. 527 (1911); Topliff v. Topliff, 145 U.S. 156, 161, 12 S.Ct. 825, 36 L.Ed. 658 (1892); Duo-Flex Corp. v. Building Service Co., 322 F.2d 94, 96 (5th Cir. 1963), and this court should disregard any conclusions reached below on the basis of such an error.
The Martin device, discussed by the majority and the court below, has as much in common with the Up-Right scaffold as any other example of prior art. Both are collapsible and easily portable. *585Both stand at relatively the same height. Significantly, the major features which distinguish the two are the same features which distinguish the claims in issue from the Cederquist device: staekability, adaptability for tower construction, location of ladders diagonally within the structure. And it was on the basis of these features that the patent in suit was held valid by the Ninth Circuit in a comparison with the Martin patent. Beatty Safway Scaffold Co. v. Up-Right, Inc., 306 F.2d 626, 629-630 (9th Cir. 1962), cert. denied, 372 U.S. 934, 83 S.Ct. 881, 9 L.Ed.2d 766 (1963).
The question therefore remains not what the modified Cederquist patent (changed to specifically incorporate the distinguishing features) revealed in combination with the Boeing and Southern California devices, but what Cederquist’s original features in combination tell us. I am convinced that an overlay of the patented Cederquist scaffold on either the Boeing or Southern California scaffold, or both, would not suggest the unique combination of features expressed in the patent in suit.
It is also not clear to me what the Boeing scaffold and the Southern California wind tunnel scaffold teach with regard to the claims in issue. The Boeing scaffold is a rigid, non-collapsible structure 18 to 20 feet high. It is movable, in that it is not permanently fixed to the ground, but it is certainly not portable, as the court below and the majority here specifically state, if we are to accept even an approximation of Webster’s definition: “Capable of being carried ; easily or conveniently transported; light or manageable enough to be readily moved.” Webster’s 3d New International Dictionary (Unabridged) (1961). The Southern California wind tunnel scaffold is collapsible, but stipulations show that it takes nine man-hours to disassemble it; it also is movable as opposed to portable. These devices, useful in their own way, are certainly not suggestive of the collapsible separate units of appellant’s device, which can be set up and taken down quickly, which can be stacked to heights of over 300 feet, which can be transported in a truck, or carried place.to place by one man.
On the basis of the foregoing, I cannot accept that the patent in suit was revealed by prior art, considered individually or in combination. The test is obviousness to a skilled mechanic in the field. In Graham, the Supreme Court twice emphasizes that the standard of patentability has not changed. 383 U.S. at 17 and 19, 86 S.Ct. 684. The test has simply been clarified. If what the claims in issue did was obvious, then the majority decision by this court has measurably changed the standard, which in the light of Graham it ought not to do.
In ascertaining the obviousness or non-obviousness we are not limited to an examination of prior art. If validity is in question, then “commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter * * *. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.” Graham, supra, 383 U.S. at 17-18, 86 S.Ct. at 694. Admittedly commercial success in iself does not support patentability, Great Atl. & Pac. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 153, 71 S.Ct. 127, 95 L.Ed. 162 (1950), but once novelty and utility have been established, as they have been with respect to the patent in suit, commercial success weighs heavily against the contention that the claims in issue were obvious to skilled mechanics in the same field. Loom Co. v. Higgins, 105 U.S. 580, 26 L.Ed. 1177 (1881); Otto v. Hoppers Co., supra, 246 F.2d at 799-800.
The commercial success of the UpRight scaffold is not contested, although appellee would have us believe that it was due in large measure to modern materials. What is significant is that in this crowded art Up-Right scaffolds were quickly accepted and purchased in large numbers by government and private enterprise. The buyers were apparently impressed with the ease with which individual components could be transported, erected, *586and later disassembled. The Signal Corps found the ability of the components to be mounted one on the other to be superior to a previously used telescoping device. Testimony was given that sufficient units for a 200-foot tower can be transported in a truck. If these features were obvious, then the classic question remains of why others had not come forward with the improvements. Goodyear Tire & Rubber Co. v. Ray-O-Vac Co., 321 U.S. 275, 279, 64 S.Ct. 593, 88 L.Ed. 721 (1944); Allen v. Standard Crankshaft & Hydraulic Co., 323 F.2d 29, 34 (4th Cir. 1963). And why did appellee copy the Up-Right scaffold with only minor changes? Up-Right, Inc. v. Safway Products, Inc., 315 F.2d 23 (5th Cir.), cert. denied, 375 U.S. 831, 84 S.Ct. 76, 11 L.Ed.2d 62 (1963).
During the last 50 years our country has had the greatest building program any nation has been able to crowd into a half century. Naturally there have developed during that period multiplied thousands of skilled mechanics and builders. Sky-scrapers have been constructed in scores of cities throughout the United States.
During all this time these skilled people have built and torn down scaffolding at individual structures in extensive and time-consuming operations only to build a new scaffolding at the next structure. If appellant’s invention of unfolding and stacking collapsible sections to great heights and, after finishing a structure, quickly folding and hauling the scaffolding to another building under construction, thus economically using the stack-able sections over and over again, was obvious to a skilled mechanic, isn’t it strange that in more than 50 years of continuous building one of these skilled mechanics or artisans did not discover the process.
Then why did the Government rush to purchase thousands of the new invention ? Why did the building trade immediately adopt the new article? Why did the other corporations copy the new method with only slight changes, and no change in the idea, and start into competitive sales ?
My conclusion is that appellant had invented something, something not obvious to others, something not a mere mechanical improvement. It is almost a reflection on the skilled artisans and mechanics of the vast building trade of this country to hold that they overlooked so important a development, but plodded along with clumsier and more expensive methods. I prefer to believe in the skill of these mechanics and artisans. It is plain they welcomed the Up-Right scaffold.
By holding the patent in suit invalid, we have done not only an injustice to appellant but have placed an unreasonable and discouraging burden on future inventors. For these reasons I cannot join the majority.
. “Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined.” 383 U.S. at 17, 86 S.Ct. at 694.