Full opinion text
OPINION MURRAY M. SCHWARTZ, District Judge. This is an action for patent infringement of United States Patent No. 3,510,391 brought by plaintiff Grefco, Inc. (“Grefco”) against defendant Kewanee Industries, Inc. (“Kewanee”). Kewanee has counterclaimed for a declaratory judgment of patent invalidity, unenforceability and non-infringement. Jurisdiction and venue are conferred on this Court by 28 U.S.C. §§ 1338(a), 1391(b). Trial in this matter began on March 31, 1980 and concluded on April 28, 1980. Post-trial briefing and argument was completed on June 6, 1980. This Opinion constitutes the Court’s findings of facts and conclusions of law required by Rule 52(a), F.R.Civ.P. 1. BACKGROUND FACTS Grefco, a Delaware corporation and a wholly owned subsidiary of General Refractories Co., was formerly the Mining and Mineral Products Division of Great Lakes Carbon Corp. (“GLC”) and was acquired by General Refractories on or about May 16, 1966. (Stip. No. I). Although at the time of many of the events discussed throughout this Opinion plaintiff was operating as a division of GLC, it will be referred to as “Grefco” unless otherwise indicated. Kewanee is a Delaware corporation into which Apache Foam Products (“Apache”) was merged effective February 3, 1976. Historically, Apache was purchased by the Millmaster-Onyx Corporation on September 29, 1967 from Air Products and Chemical Company. It was a division of Millmaster-Onyx Corporation until September, 1974, when it was incorporated as a wholly-owned subsidiary of Millmaster-Onyx Corporation. In 1976, Apache was merged into Kewanee and Millmaster-Onyx became an independent financial group within Kewanee. (Stip. No. 2). U.S. Patent Application Serial No. 638,-629 (“Bolster application”) (PX-1) was filed on May 15, 1967 in the United States Patent and Trademark Office (“PTO”) on behalf of Lyle R. Bolster (“Bolster”), Harlan E. Tarbell (“Tarbell") and Donald W. Mogg (“Mogg”). Armand McMillan (“McMillan”), then assistant patent counsel for GLC, prepared and filed the Bolster application with the knowledge and consent of General Refractories. On September 23, 1969, Patent Examiner William J. VanBalen (“Examiner”) issued an Office Action indicating that all claims of the application would be allowable if amended. The minor changes suggested by the Examiner were then made and the patent issued on May 5, 1970. (PX-1; Stip. No. 32). Grefco owns the Bolster patent. The Bolster patent is entitled “Perlite Board Bonded to Organic Plastic Foam.” The claims in suit are as follows: 1. A composite board having a U value of not more than 0.2, which comprises (a) a rigid organic plastic foam layer having a K factor not greater than about 0.4, covered on at least one of its surfaces by (b) a perlite board having a minimum thickness of 0.6 inch, a K factor not greater than 0.45, a minimum perlite content of at least about 30% by weight and a combustible fiber and sizing content of not more than about 35% by weight, said layer being adhered to said board. 2. The board of claim 1 wherein the other surface of the foam layer is covered by a material selected from the group consisting of perlite board, roofing felt and paper. 3. The board of claim 1 wherein the rigid foam material is selected from the thermosetting and thermoplastic materials within the class consisting of polyvinyl chloride, polyurethane, polystyrene and epoxy resins. 4. The board of claim 1 wherein the rigid foam layer has a thickness within the range of xk to 2 inches. 5. The board of claim 1 wherein the perlite board has a perlite content of 50 to 90% by weight. 6. The board of claim 5 wherein the thickness of the perlite board is within the range of Vi to 1 inch. 7. A composite structure in the form of a sandwich consisting of (a) a Vi to 1 inch thick base layer of perlite board having a perlite content of about 50 to 90% by weight and a combustible fiber and sizing content of not more than about 30% by weight: (b) a rigid polyurethane foam layer of xk to 2 inches having a density of about 1.5 to 3.5 pounds per cubic foot, and (c) a top layer selected from the class consisting of perlite board, roofing felt and paper, said base layer and said board layer being adhered to said foam layer. 8. [Not asserted by Grefco] 9. [Not asserted by Grefco] 10. The composite structure of claim 7 wherein the rigid foam layer is foamed in place. (PX-2 at 7/19-8/28). The objects of the Bolster patent, as set forth in the patent, are “to provide an insulating structure which overcomes the mechanical and physical disadvantages of plastic foam boards ... [,] to provide a combustion resistant structure based on urethane foam .. . [and] to provide an insulating structure of sufficiently low heat conductance so that it can find application in conventional roof building systems, even when an unusually low U value [the overall coefficient of heat transmission through a complete roof assembly (Stip. No. 36c)] is required.” (PX-2 at 2/38-45). Kewanee manufactures a product known as Millox (DX-A; PX — 370). Although its infringement of the Bolster patent was an issue at the start of the trial, Kewanee admitted infringement midway through the trial. See Tr. 1647. Thus, the issues remaining for disposition are the validity of the Bolster patent and whether Grefco’s conduct before the PTO was fraudulent. II. VALIDITY A. Presumption of Validity “[T]he starting point in analyzing a challenge to the validity of a patent is the presumption that the patent is valid, with the burden of demonstrating invalidity by clear and convincing proof resting on the party asserting it.” Aluminum Co. of America v. Amerola Products Corp., 552 F.2d 1020, 1024 (3d Cir. 1977); see also 35 U.S.C. § 282; Tokyo Shibaura Electric Co. v. Zenith Radio Corp., 548 F.2d 88, 93 (3d Cir. 1977); Universal Athletic Sales Co. v. American Gym, Recreational & Athletic Equipment Corp., 546 F.2d 530, 540 (3d Cir. 1976), cert. denied, 430 U.S. 984, 97 S.Ct. 1681, 52 L.Ed.2d 378 (1977). When relevant prior art has not been considered by the PTO, however, the presumption of validity is weakened or overcome. Aluminum Co. of America, supra; Hadco Products, Inc. v. Walter Kidde & Co., 462 F.2d 1265, 1272 n.33 (3d Cir.), cert. denied, 409 U.S. 1023, 93 5. Ct. 464, 34 L.Ed.2d 315 (1972); PIC, Inc. v. Prescon Corp., 485 F.Supp. 1302, 1312 (D.Del.1980); Azoplate Corp. v. Silverlith, 367 F.Supp. 711, 717 (D.Del.1973), aff’d mem., 506 F.2d 1050 (3d Cir. 1974), cert. denied, 421 U.S. 914, 95 S.Ct. 1572, 43 L.Ed.2d 780 (1975). “[T]he degree by which the presumption is weakened depends on a balancing of the pertinence of the newly cited art against the pertinence of the art actually considered by the Patent Office.” Aluminum Co. of America, supra, 552 F.2d at 1025. Kewanee asserts that the most relevant art was not considered by the Examiner and that therefore the presumption of validity has been overcome. Grefco, on the other hand, contends that the art cited by Kewanee was before the Examiner during his consideration of the Bolster application, or alternatively is no more relevant than the art considered by the Examiner. The Court finds that several important items of prior art under 35 U.S.C. § 102 were not considered by the Examiner and therefore the presumption of validity has been substantially weakened. Specifically, an article in the Journal of Cellular Plastics (“JCP”) (DX-GA) and the Apache brochure (DX-HA), both not before the Examiner, add significantly to the prior art considered by disclosing a combination of urethane and perlite as roofing insulation. B. Anticipation Under 35 U.S.C. § 102, a patent is invalid if the invention was “anticipated” by the prior art. Under section 102(b), a patent is invalid if “the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.” In addition, section 102(a) renders a patent invalid if “the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent.” Thus, the critical inquiries in the determination of anticipation are the date of invention of the patent and an analysis of the pertinent art available prior to invention or more than one year before the application filing date. 1. Date of Invention The date of invention is deemed to be the date of the filing of the patent application. U. S. Expansion Bolt Co. v. Jordan Industries, Inc., 488 F.2d 566, 568 n.3 (3d Cir. 1973). The burden rests with the inventor to demonstrate an invention or reduction to practice prior to the time of filing. See generally Rex Chainbelt Inc. v. Borg-Warner Corp., 477 F.2d 481, 487 (7th Cir. 1973); 1 Chisum, Patents § 3.08[3] (1980); 37 C.F.R. § 1.131. This burden is a relatively heavy one, comparable to the burden imposed upon an alleged infringer to demonstrate prior use under § 102(a). 1 Chisum, Patents § 3.08[3]; United Shoe Machine Corp. v. Brooklyn Wood Heel Corp., 77 F.2d 263 (2d Cir. 1935). Moreover, the uncorroborated and undocumented testimony of the patentee is insufficient to prove invention date. See Bell Telephone Laboratories, Inc. v. Hughes Aircraft Co., 564 F.2d 654, 657 (3d Cir. 1977), cert. denied, 435 U.S. 924, 98 S.Ct. 1489, 55 L.Ed.2d 518 (1978); Kardulas v. Florida Machine Products Co., 438 F.2d 1118, 1121 (5th Cir. 1971); Rooted Hair, Inc. v. Ideal Toy Corp., 329 F.2d 761, 767 (2d Cir. 1964). The Third Circuit Court of Appeals recently set forth the requirements for a reduction to practice: A reduction to practice ‘is not achieved until the inventor has sufficiently tested the prototype to prove its utility and to determine that no further refinements are necessary.’ In Re Yarn Processing Patent Validity Litigation, 498 F.2d 271, 279 (5th Cir.), cert. denied sub nom., Sauquoit Fibers Co. v. Leesona Corp., 419 U.S. 1057, 95 S.Ct. 640, 42 L.Ed.2d 654 (1974). Considerable confusion exists in the cases as to when an invention has been reduced to practice. It is a legal term of art and the apparent conflict has been ascribed to the differing definitions of the term. See id. at 282. Even when a working model has been produced, this does not necessarily connote a ‘reduction to practice’ within the meaning of patent law. Thus, ‘[w]hile it is true that reduction to practice does not require a device embodying the invention to be mechanically perfect, or a commercial success, its practical efficiency and utility must be demonstrated.’ Van Auken v. Cummings, 49 F.2d 490, 492 (C.C.P.A.1931). DeLong Corp. v. Raymond International, Inc., 622 F.2d 1135 at 1143 (3d Cir. 1980) (addressing “reduction to practice” of prior use); see also Standard Oil Co. v. Montedison S.p.A., 494 F.Supp. 370 at 379-382 C.A. No. 4319 (D.Del. 1980). The evidence put forth by Grefco to establish an invention date prior to May 15, 1967 must be analyzed against these legal standards. Grefco contends that products “meeting the terms of claims 1-7 and 10 were made and successfully tested no later than March 1966.” (Plaintiffs Post-Trial Brief at 28). The credible testimony and documentary evidence proffered by Grefco in support of this contention, however, fall short of meeting its burden of establishing a prior invention of the product defined by the patent. While the Court finds that Tarbell made combinations of 1" perlite and urethane and submitted such products to Underwriters’ Laboratories (“UL”) for testing in late 1965 or early 1966 (PX-36, 37, 45), it is not convinced that these products met all the limitations of the patent’s claims 1-7 and 10. For reasons set forth more fully below, see page 865, infra, the Court does not believe that the composite board described in Example 2 of the patent made by Tarbell in January 1966 (Tr. 960) had a density of 3.2 lbs./cu.ft. Grefco produced no documents indicating the production of a composite board with such a density (see Tr. 992), and Tarbell’s uncorroborated testimony, even if credible, would be insufficient to prove prior reduction to practice. There is evidence (DX-S) that Tarbell made a composite board with a density of 3.95 lbs./cu.ft. in January, 1966. Grefco contends that this embodiment of the patent satisfies the limitation of claim 7 that the layer of rigid polyurethane foam have a density of “about 1.5 to 3.5 pounds per cubic foot.” (PX-2 at 8/15-17). Even assuming that this language permits an upper limit of more than 3.5, see National Research Development Corp. v. Great Lakes Carbon Corp., 410 F.Supp. 1108, 1112 (D.Del.1975), Grefco has not carried its heavy burden of demonstrating that 3.95 lbs./cu.ft. is “about” 3.5. Very little evidence on this issue was presented. (Doc. No. 192 at 39—41, 80-83). The testimony indicated that 3.95 was the “average density” of the product described in DX-S; the lower portion of the foam had a density of more than 3.95, while the upper part had a density of less than 3.95. (Tr. 750-51). The parties have stipulated that foam can be used as insulation if it has a density of 4.0 lbs./cu.ft. or less, that “high density foams” are foams with a density of greater than four lbs./cu.ft. and that “[fjoams used for thermal insulation typically had a density in the 1.8 to 2.2 lb./cu ft range.” (Stip. No. 38; see also Tr. 133). Finally, Tarbell referred to the foam produced in January, 1966 as “higher density” foam made by a “vertical pour process” which would not be utilized in commercial production. (PX-37). The foregoing evidence does not demonstrate to the Court’s satisfaction that a density of 3.95 is “about” 3.5. First, there is no evidence that any portion of the foam produced by Tarbell had a density of 3.5. Second, given the stipulation concerning the range of densities for thermal insulating foam, the Court is unconvinced that foam with a density of 3.95 has sufficient utility and efficiency, as compared to foam with a density of 3.5, so as to bring it within the scope of claim 7. While reduction to practice does not require the “invention” to be mechanically perfect or a commercial success, “its practical efficiency and utility must be demonstrated.” DeLong Corp., supra, 622 F.2d at 1143. For these reasons, the Court concludes that reduction to practice of the Bolster patent did not occur prior to May 15, 1967. This conclusion, as noted supra, brings documents such as the Apache brochure (DX-HA) and UL Construction No. 9 (DX-W) within the framework of § 102(a) prior art, even though these documents were not printed publications more than one year prior to the filing date. 2. Analysis of Prior Art To anticipate a patent, “[a] prior art reference must teach the very invention of the patent,” Tokyo Shibaura Electric Co., Ltd. v. Zenith Radio Corp., 404 F.Supp. 547, 558 (D.Del.1975), aff’d, 548 F.2d 88 (3d Cir. 1977); see Paeco, Inc. v. Applied Moldings, Inc., 562 F.2d 870, 875 (3d Cir. 1977); Congoleum Industries, Inc. v. Armstrong Cork Co., 339 F.Supp. 1036 (E.D.Pa.1972), aff’d, 510 F.2d 334 (3d Cir.), cert. denied, 421 U.S. 988, 95 S.Ct. 1991, 44 L.Ed.2d 478 (1975), or disclose “a device substantially identical to that claimed under the terms of the patent.” DeLong Corp., supra, at 1141 (referencing “on sale” bar of § 102). Further, “it must appear that every material element of the claim in question was disclosed by a single prior art reference.” Mueller Brass Co. v. Reading Industries, Inc., 352 F.Supp. 1357, 1367 (E.D.Pa.1972), aff’d mem., 485 F.2d 1395 (3d Cir. 1973); accord, Paeco, Inc., supra, 562 F.2d at 875. In Universal Athletic Sales Co. v. American Gym, Recreational & Athletic Equipment Corp., 546 F.2d 530 (3d Cir. 1976), cert. denied, 430 U.S. 984, 97 S.Ct. 1681, 52 L.Ed.2d 378 (1977), the Third Circuit Court of Appeals cited the following standard of anticipation: For a prior publication to be sufficient to defeat a patent it must exhibit a substantial representation of the invention in such full, clear, and exact terms that one skilled in the art may make, construct and practice the invention without having to depend on either the patent or on his own inventive skills. 546 F.2d at 544, citing Philips Electronic and Pharmaceutical Industries Corp. v. Thermal and Electronics Industries, Inc., 450 F.2d 1164, 1169 (3d Cir. 1971). More recently, in Paeco, Inc., supra, that court stated: [w]hen a claim incorporates an improvement over a product sold prior to the critical date, which product, except for the improvement, is identical to that described in the claim, the improvement itself must be non-obvious under § 103 or the whole claim is invalid [under § 102(b)], 562 F.2d at 877. Thus, when a patentee makes an obvious improvement over a prior art reference, that reference is still anticipatory because the patentee has not relied on his “inventive skills.” Kewanee contends that the Apache brochure (DX-HA), the July, 1965 JCP article (DX-GA), and perlite/urethane field installations anticipate the Bolster patent. The Court turns next to these contentions. a. Apache Brochure (DX-HA) The Apache brochure states in pertinent part: CLASS I ROOF DECK APPLICATIONS-Possible Opportunities At this present moment APACHE does not share in the CLASS I roof deck business; however, as many of you have been told, we expect to have FACTORY MUTUAL rated Class I insulation in the hot too distant future. I wish to suggest that you may be able to pick up some business in spite of the rating limitation. This may be particularly attractive in areas where moderately high “C” or “U” values are required and while rather acute shortages exist in normal Class I rated insulation materials. Factory Mutual would permit use of APACHE over a minimum thickness of rated materials installed in accordance with Factory Mutual specified procedures. This required thickness is 3A" of Perlite Type, Fiberboard, Fiberglas and Cellular Glass. IN APPENDIX A I have listed the effective “C” values obtained by combining % " of the several rated materials with standard APACHE thicknesses. For example, one inch of APACHE combined with 3/i" Perlite Type board will give a combined “C” of 0.114 (ditto, Piberboard), and 0.106 for %" Fiberglas. APPENDIX B lists required thickness of APACHE used with %" of Class I approved materials to give “C” values corresponding to U. S. Department of Commerce No. R257-55. We suggest that you may find exploration of the combination of products potential very worthwhile. DX-HA (emphasis added). Grefco contends that the Apache brochure is not anticipatory solely because it “merely suggests the possible components for several field fabrications” and because “the structures suggested in DX-HA are outside the scope of the claims of the Bolster Patent” which, in its view, is limited to factory-manufactured composite boards. (Plaintiff’s Post-Trial Brief at 31). The Court finds, however, that the brochure is not limited to field fabrications and does disclose the possible combination in a factory of perlite board and urethane foam. Moreover, the Court finds that, contrary to Grefco’s assertions, the Bolster patent encompasses field fabrications of urethane and perlite combinations. The brochure itself, notwithstanding Grefco’s assertions to the contrary, does not either expressly or indirectly limit the product defined by the Apache brochure to a field fabrication of a complete roofing system. In fact, the brochure discusses the “C values” obtained by combining %" board with Apache foam. As stipulated by the parties, C value is “a measure of the thermal conductivity of a given product,” while U value, referred to in the Bolster patent (e. g. PX-2 at 1/13, 2/5, 2/45, 2/60, 2/65, 5/2, 7/19), is “the overall coefficient of heat transmission through a complete roof assembly (including insulation, built-up roofing and the roof deck).” (Stip. No. 36) (emphasis added). See also Tr. 1657-58. Therefore, the use of the term “C value” in the Apache brochure is evidence that it discloses a factory-made product of the type claimed by Grefco to be the subject of the Bolster patent. To determine whether the Apache brochure, as construed by the Court, anticipates the Bolster patent, the Court must analyze the patent and determine whether the “invention” claimed is taught by the brochure. See page 850, supra. As noted, Grefco contends that the invention claimed in the Bolster patent is limited to a factory-made composite of urethane and per-lite boards, and does not teach the making of a field fabrication. The Court finds to the contrary. In defining the invention claimed by a patent, the patent’s “claims are to be construed in the light of the specification and both are to be read with a view to ascertaining the invention.” United States v. Adams, 383 U.S. 39, 49, 86 S.Ct. 708, 713, 15 L.Ed.2d 572 (1966). An analysis of the claims and the specification of the Bolster patent, in light of the evidence presented at trial, leads to a finding that both field and factory fabrication of perlite/urethane combinations are encompassed by the Bolster patent. Grefco contends that the terms used in claims 1 and 7 to describe the invention-“composite board” and “composite structure in the form of a sandwich”-limit the invention to factory fabrication. However, Mogg himself conceded that these terms did not take on a meaning in the roofing industry limited to factory manufacture until several years after the Bolster application was filed. (Tr. 811-13; see also Tr. 95-96, 1673; PX-8; Bolster Dep. 270; Maroni Dep. 83-90). Cf. DX-HE (Chamberlain patent for “Sandwich Roofing Element”; invention is defined as “prefabricated” insulating element and patent claims cover “an integral roof deck and insulation panel”); PX-368 (1969 patent application by Coglianese in which invention is described as “a pre-fabricated panel”). Unlike the Bolster patent, the Chamberlain patent draws a distinction between field and factory fabrication at the outset (DX-HE at 1/11-15). Thus, the claims' of the Bolster patent do not limit by definition the types of structures encompassed by the patent. See Funnelcap, Inc. v. Orion Industries, Inc., 421 F.Supp. 700, 706-07 (D.Del. 1976). An analysis of the specification in light of Mogg’s candid testimony reinforces this finding. The patent contains the following language with respect to the making of the invention: The polyurethane foam can be formed and stabilized in situ on the perlite board; in this case, it serves as its own adhesive and nó other bonding substance is needed. Alternately, as is the case with other usable plastic foams, ready made board of polyurethane foam can be employed, necessitating recourse to an extraneous adhesive to bond the foam board to the perlite board and to the other facing material that may be used. Any conventional adhesive suitable for the surfaces involved can be used for this purpose, asphalt emulsions and phenolaldehyde adhesives such as phenol-resorcinol-formaldehyde being typical of such well known materials. PX-2 at 4/27-38. Mogg testified that, although he and his co-inventors intended to refer to urethane foam without felt facings in the specification (Tr. 826, 1234, 1492-93), the term “ready made board of polyurethane foam” includes foam made by Apache (DX-B) and other manufacturers which contained felt facings on both sides. (Tr. 599, 840-42; see also Tr. 1234, 1492-93, 2483, 2650-51). Such polyurethane foam board (DX-B) was one of the four main insulating boards in use at the time of the Bolster application. (Tr. 63, 629, 655). Thus, the patent envisions the use of an adhesive to combine a urethane board with felt facings with a perlite board. (See Tr. 622-23). This is exactly what is done in a field fabrication. See note 9 supra. In fact, Mogg conceded, under questioning by the Court, that “as to where the patent draws the line between a factory and doing it in some cruder fashion, I am not really quite sure.” (Tr. 818; see also Tr. 620). The Court therefore concludes that the Apache brochure, whether or not limited to a field fabrication, anticipates the Bolster patent. b. Journal of Cellular Plastics, July 1965 The July, 1965 Journal of Cellular Plastics (“JCP”) contains an article entitled “Cellular Plastics in Construction Applications and Fire Protection.” (DX-HD). Among the authors of this article is Fred Coglianese, a Kewanee employee, who was with Johns Manville Products Co. at the time of publication. Kewanee asserts that a section of this article, written by Coglianese (Stip. No. 76; Tr. 1711-12), anticipates the Bolster patent. That section reads: Roof Deck Insulation-Plastic foams are used [as] roof deck insulation because of low heat transmission, high impact resistance, high compressive strength, low water-vapor transmission and low installation costs. The foams are bonded to metal, wood, concrete or gypsum decks and then topped by a standard built-up roof. In many applications, this system is readily accepted and its use presents no problem. In certain large area industrial applications, however, special precautions are necessary to achieve a system with suitable fire behavior. The major consideration is when a fire exists in an area below the roof. If combustibles in the roof become available fuel, the existing fire is worsened and a spreading, self-perpetuating fire results. Because of their heavy fire resistive nature, concrete and gypsum decks post no problem in this area. Metal decks, however, must be of special construction in order to meet safety requirements. Several large scale tests have been developed to determine suitable safety standards for metal roof deck assemblies.() See Section titled Test Methods. DX-HD at 360-61 (emphasis added). In all of these construction tests, an insulating barrier must be imposed between deck and roof. Plastic foams that offer no resistance under fire conditions would require one inch of fiber board or other barrier over the deck and under the foam in order to qualify. In conclusion it can be stated that: a. In many applications, plastic foams offer excellent service in roof decks and are fully accepted. b. Plastic foams are not suitable for steel deck unless underlaid by a barrier such as fiber board. No problem exists with concrete and gypsum decks. Once again, Grefco contends that the JCP article “does nothing more than suggest or infer . . . that other unnamed materials could be used in combination with urethane foam in a field fabrication. . What materials could be used is left to the reader.” (Plaintiff’s Post-Trial Brief at 32 (citations omitted)). However, Coglianese, a man conceded by Grefco to be of ordinary skill in the pertinent art of rigid thermal insulation (Tr. 1717, 1723, 1730-39), testified that, although the use of perlite board is not expressly disclosed by the article, “to someone with knowledge, to me” the reference to “fiber board or other barrier” would teach that perlite board and urethane foam could be combined in a steel deck roof assembly. (Tr. 1722). The article itself refers in the footnote to a list of “suitable decks” taken from Section 360 RO of the UL Building Materials List. Construction Nos. 1 and 2, the first two such decks listed in the footnote, may contain perlite board as an approved insulation board, a fact known to those of ordinary skill in the art. (Stip. Nos. 17,18, 21, 22; see also DX-JG). Earlier in the article, it is stated that test roof deck systems listed in Section 360 RO are those which “pass” the UL tunnel roof deck test. (DX-HD at 357). Given the inclusion of perlite board as an insulating component of UL Constructions 1 and 2, the Court concludes that the statement that “plastic foams that offer no resistance under fire conditions would require one inch of fiber board or other barrier over the deck and under the foam in order to qualify” discloses to a person of ordinary skill in the art of rigid thermal insulation the combination of urethane and perlite boards. Finally, for the reasons stated at pages 851-852 supra, Grefco’s attempt to distinguish the JCP article because it teaches a field fabrication fails. Under the standard of anticipation in this Circuit, then, the JCP article anticipates the Bolster patent. See Universal Athletic Sales Co., supra, 546 F.2d at 544; Paeco, Inc., supra, 562 F.2d at 875; Johnson & Johnson v. W. L. Gore & Assoc., Inc., 436 F.Supp. 704, 726 (D.Del. 1977). See also Tr. 3213-16 (Testimony of C. Marshall Dann, former Commissioner of Patents and an expert trial witness for Grefco, that if one skilled in the art would read “fiber board or other barrier” as including perlite, then JCP article discloses combination of perlite and urethane). c. Actual Field Fabrications of Perlite Board and Urethane Foam Kewanee presented evidence at trial in an attempt to prove that perlite board was used in combination with urethane foam as roofing insulation in field fabrications prior to the Bolster application. If true, these field fabrications would constitute an invalidating “prior use” of the invention under sections 102(a) and (b). Kewanee, however, has not satisfied its “heavy burden” of proving such prior use. See page 848 supra; 1 Chisum, Patents § 3.05.[2]c. Although several witnesses testified that they were generally aware of such fabrications (Tr. 1668, 2739-44, 2503-04; Bolster Dep. 166; Sullivan Dep. 176-80), there was no direct testimony as to specific applications of urethane foam over perlite board. See PX-378 (Answer to Interrog. No. 202). Kewanee concedes that a partial roof of urethane and perlite constructed at JohnsManville in the mid-1960’s was experimental and not a prior use under section 102. (Tr. 2748). The overall evidence proffered by Kewanee falls far short of demonstrating that field fabrications anticipated the Bolster patent. C. Obviousness Even assuming arguendo that the Bolster patent is not anticipated by the Apache brochure and the JCP article, the Court concludes that the invention was obvious from the pertinent prior art and therefore the patent is invalid under 35 U.S.C. § 103. In the landmark case of Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), the Supreme Court addressed for the first time the tests to be employed by the courts in determining obviousness under § 103. The Court’s often-quoted language is as follows: While the ultimate question of patent validity is one of law, . . . , the § 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. 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 non-obviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure [to] others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy. 383 U.S. at 17-18, 86 S.Ct. at 694 (citations omitted). See also American Sterilizer Co. v. Sybron Corp., 614 F.2d 890 (3d Cir. 1980); Sims v. Mack Truck Corp., 608 F.2d 87 (3d Cir. 1979); Paeco, Inc. v. Applied Moldings, Inc., 562 F.2d 870 (3d Cir. 1977); Tokyo Shibaura Electric Co. Ltd. v. Zenith Radio Corp., 548 F.2d 88 (3d Cir. 1977). 1. Scope and Content of the Prior Art Several items of prior art, the Apache brochure and the JCP article, have already been analyzed. At a minimum (even assuming Grefco is correct in its contention that the Apache brochure teaches only a field fabrication and that the JCP article does not disclose the use of perlite in combination with urethane), these publications teach the combination of perlite or fiber board with urethane foam in a field fabrication. Another item of prior art, UL Construction No. 9 (DX-W1, also teaches the operability of a field fabrication of urethane foam and fiber board. In addition, DX-HE, Patent No. 3,111,787, issued to Chamberlain in 1963, discloses the invention of prefabricated insulating roofing elements utilizing a “self-adhering” insulated core of foamed plastic, including polyurethane. (DX-HE at 1/29-46). According to the patent, the foamed plastic core may be adhered to the rigid facings identified (plywood, hardwood board, vegetable fiber board, cement asbestos board, aluminum, steel, gypsum board (DX-HE at 2/10-12)) either by preforming the foamed plastic core over the board or by utilizing a bonding adhesive. (DX-HE at 1/29-32, 2/3-6, 3/46 — 49). DX-GD, a DuPont brochure dated March 29, 1961, discloses the manufacture of wall panels with “cores of rigid urethane foam.” This publication states that “[ajlmost any facing material can be used with rigid urethane foam cores” and that such panels may be made by “the foamed-in-place technique” which “has been discussed in Foam Bulletins of October 28, 1960 and January 16, 1961.” (DX-GD at 1, 2). Grefco presented evidence that the prior art was concerned with making urethane foam fire-resistant, see Tr. 72-73, 81; PX-81, PX-341; Stip. No. 57(2). The Court finds that there were those in the roofing industry who were attempting to solve the problem of foam’s susceptibility to heat damage (Stip. No. 57(1)) by the formulation of fire resistant foam. However, a second, and eventually successful, focus of the industry was the use of rigid thermal barriers to protect urethane foam from heat damage. It is this body of prior art which renders the Bolster patent obvious. 2. Differences Between the Prior Art and the Claims at Issue Even if the claims of the Bolster patent are construed to cover only a prefabricated composite of urethane and perlite boards, the differences between the teachings of the prior art and the patent are few. A field fabrication contains an extra layer of roofing felt between the urethane and per-lite boards as well as an adhesive with which to bond the two boards together. See note 9 supra (Tr. 371, 415, 607-08). However, claims 1 and 7 and dependent claims 2-6 specify adhesion of the perlite board to the foam. (PX-2 at 7/28-29, 8/19-21). Since the specification teaches the use of an “extraneous adhesive,” the claims must be interpreted to include a bonding substance, see Tr. 3153, leaving the layer of felt between the urethane and perlite boards as the only difference between the Bolster patent and a field fabrication of urethane foam and perlite board as taught by the prior art. 3. Level of Ordinary Skill in the Pertinent Art In determining the hypothetical person skilled in the pertinent art, the Court must look to those in the industry attempting to solve the problems addressed by the invention and not to the subsequent users of the invention. See Systematic Tool & Machine Co. v. Walter Kidde & Co., Inc., 555 F.2d 342 (3d Cir.), cert. denied, 434 U.S. 857, 98 S.Ct. 178, 54 L.Ed.2d 128 (1977); Universal Athletic Sales Co., 546 F.2d 530 (3d Cir. 1976), cert. denied, 430 U.S. 984, 97 S.Ct. 1681, 52 L.Ed.2d 378 (1977); Komline-Sanderson Engineering Corp. v. Ingersoll-Rand Co., 485 F.Supp. 973 (D.Del.1980). The parties agreed at trial that the relevant art for purposes of determining validity under § 103 is the art of “rigid thermal insulation.” (Tr. 1734-38). Further, Grefco agreed that Fred Coglianese was a man of ordinary skill in this art. (Tr. 1717, 1724-25). The Court finds that a person of ordinary skill in the pertinent art would be conversant with the chemistry involved in making and bonding foam to fire-resistant barrier boards and would have worked for a company making roofing insulation products. As noted supra, considerable attention was being devoted by the industry to reducing the fire risks attendant upon the use of urethane foam, which was recognized as an excellent thermal insulator. (Stip. No. 57(1)). Many of those in the industry were attempting to combine urethane with other, more fire-resistant barriers to form insulating structures, see Stip. Nos. 57(3), (9), and Johns-Manville had actually installed an experimental partial roof of urethane and perlite before the filing of the Bolster application. (Tr. 2748). The Court finds that these attempts to solve the problem addressed by the Bolster patent (see PX-2 at 1/13-15; 1/38-45; 2/38-45) are very probative of the level of skill in the art of rigid thermal insulation. 4. Analysis (a) Graham Primary Tests of Obviousness Under the “practical test of patentability” established by the Supreme Court in Graham, the Court must consider the factual findings made above and reach a conclusion of law as to obviousness. 383 U.S. at 17, 86 S.Ct. at 693. This analysis leads inexorably to a conclusion that the Bolster patent is invalid as obvious under 35 U.S.C. § 103. As found at page 855 supra, the only possible differences between a field fabrication and a factory-made, foamed in place composite of urethane foam and perlite board are the addition of a layer of roofing felt and adhesive between the two layers in the field. These are not patentable differences. In Paeco, Inc. v. Applied Moldings, Inc., 562 F.2d 870 (3d Cir. 1977), the Third Circuit Court of Appeals addressed the validity of a patent for “replica wooden beams” made of foamed urethane. The only difference between the beams claimed in the patent and prior art beams was the removal of a skin from the surface of the beam so as to facilitate the mounting of the beam to ceilings. The court affirmed the district court’s conclusion that “the idea of removing the skin of a urethane foam beam for the purpose of making it easier to glue the beam to the ceiling would have been obvious to a person with ordinary skill in the art.” 562 F.2d at 878. Similarly, in the instant case, given the testimony and other evidence regarding the known self-adhering properties of urethane foam when applied directly to other boards (see Tr. 103, Sullivan Dep. 45, PX-8, PX-15, DX-HE, DX-IE), the prior disclosure of the “foamed-in-plaee technique” (DX-GD, DX-IP, DX-JK at 235-39), and the efforts of others in the industry to manufacture foamed-in-place composite structures of perlite and urethane in a factory prior to the filing of the Bolster application (Tr. 2476-80, 2511, 2642-45; PX-70), the Court is compelled to conclude that the Bolster “invention,” even if limited to a factory-made composite as arguably defined by claim 10, was obvious. In addition, the Court finds the use of perlite board in combination with urethane foam obvious from the prior art disclosures of fiber board and urethane composites. Bolster conceded that the industry would have looked, in 1965-66, to materials already rated for use over a metal deck as the most likely candidates for the substrate between a metal deck and a plastic foam. (Bolster Dep. 246; see also Tr. 2644, Maroni Dep. 96-97). These materials were fiber board, fiberglass, foamed glass, mineral wool board and perlite board. (DX-HG, Tr. 69). Mogg and Nash both testified that perlite was even less combustible and more fire-resistant than fiber board. (Tr. 685, 2520; see also Tr. 1061). Moreover, Coglianese, a man of ordinary skill in the art, testified that, to the roofing industry, per-lite and fiber board were “interchangeable” (Tr. 1669-70), and Mogg himself conceded that fiber board was considered equivalent to perlite in the roofing industry. (Tr. 637, 713). Thus, the Court finds it would have been obvious to a person of ordinary skill in the art to combine perlite board with urethane foam in an effort to make a fire-resistant insulating product. (b) Secondary Tests In Graham, the Supreme Court articulated several so-called “secondary considerations,” such as “commercial success, long felt but unsolved needs, failure of others,” which “may have relevancy” to the determination under § 103. 383 U.S. at 17, 86 S.Ct. at 693. Grefco relies heavily upon these secondary considerations as evidence of nonobviousness. (See e. g., Plaintiff’s Post-Trial Brief at 37, 39, 41-42). While these criteria have often engendered confusion, see generally, Witherspoon, Nonobviousness-The Ultimate Condition of Patentability, at 2:501-18 (1980), the Third Circuit Court of Appeals has articulated the weight to be accorded such factors: [T]hese secondary considerations are entitled to ‘only measured weight’ in adjudging obviousness, U. S. Expansion Bolt Co. v. Jordan Industries, Inc., 488 F.2d 566, 572 (3d Cir. 1973); Frank W. Egan & Co. v. Modern Plastic Machinery Corp., 387 F.2d 319, 327 (3d Cir. 1967), cert. denied, 391 U.S. 966, 88 S.Ct. 2036, 20 L.Ed.2d 879 (1968), and they cannot, by themselves, support a finding of nonobviousness if it is otherwise established that a patent’s disclosures are obvious in light of the prior art. Continental Can Co. v. Crown Cork & Seal Co., 415 F.2d 601, 602 (3d Cir. 1969), cert. denied, 397 U.S. 914, 90 S.Ct. 916, 25 L.Ed.2d 94 (1970). Tokyo Shibaura Electric Co. v. Zenith Radio Corp., supra, 548 F.2d at 94-95. Accord, Aluminum Co. of America v. Amerola Products Corp., supra, 552 F.2d at 1025-26. In the instant case, the Court finds that the secondary considerations reinforce its previous conclusion of obviousness. Apache’s urethane/perlite board product, Millox, first joined the roofing insulation market in 1969. (Tr. 2699, DX-DX, PX-359). According to Nash and Coglianese, there was no long felt need or want at that time for a composite product of this type. (Tr. 2527, 2700-01). This was due to the fact that “very few” specifications required insulation as thick and as thermally efficient as Millox. (Id.; see also Tr. 2508-13). Similarly, the commercial success currently enjoyed by Millox (Tr. 2703-05, Stip. No. 84; PX-360) first came about in 1973 when the energy shortage created a need for more energy-efficient roofing insulation. (Tr. 2702-03). “Commercial success provides a basis for inferring nonobviousness only when the success is attributable to the feature which is the subject of the patent claim.” 2 Chisum, Patents § 5.05[2] at 5-247; Marconi Wireless Tel. Co. v. United States, 320 U.S. 1, 35 n. 20, 63 S.Ct. 1393, 1409, 87 L.Ed. 1731 (1943). Contrary to any evidence of “failure of others,” there is evidence of prior independent development of both factory-made composite and field fabrications of perlite and urethane, see pages 854, 856 supra. While this activity may not be § 102 prior art, it is entitled to some weight as a secondary factor showing obviousness. See Graham v. Jeoffroy Mfg., Inc., 206 F.2d 769, 771 (5th Cir. 1953); Schimizzi v. Chrysler Corp., 462 F.Supp. 630, 639 (S.D.N.Y.1978); 2 Chisum, Patents § 5.05[7], Finally, Grefco relies on both Apache’s repeated praise of its Millox product (see PX — 186, 285, 301, 350, 351) and Coglianese’s unsuccessful attempt to patent a composite of perlite and urethane (see PX-368) as “significant and persuasive evidence that the invention defined in the claims of the Bolster Patent was non-obvious.” (Doc. No. 176, Plaintiff’s Proposed Conclusions of Law ¶ 8). See also Plaintiff’s Post-Trial Brief at 29, 41-42, 45). While there is authority emanating from the Seventh Circuit Court of Appeals supporting this proposition, see Reynolds Metals Co. v. Aluminum Co. of America, 457 F.Supp. 482, 496, 507 (N.D.Ind.1978), rev’d on other grounds, 609 F.2d 1218 (7th Cir. 1979); Tracor, Inc. v. Hewlett-Packard Co., 519 F.2d 1288, 1307 (7th Cir. 1975), this Court is of the view that such evidence is entitled to very little, if any, weight on the issue of obviousness. The primary test to be employed by the courts in determining validity under § 103 is the three-prong Graham test. An alleged infringer’s statements in annual reports and advertisements or its efforts to obtain a patent on the product can not override overwhelming proof of obviousness under both the three-prong Graham test and the other secondary considerations. c. The Patentability of Combination Patents As conceded by Grefco, the Bolster patent claims “a composite board made from known materials.” (Tr. 1293-96; see Bolster Dep. 22). Indeed, there can be no dispute that both perlite board and urethane foam were well-known materials in the roofing insulation industry at the time of the Bolster application. There is also no dispute that a person having ordinary skill in this art would have known that urethane was an excellent thermal insulator but was susceptible to damage or degradation when exposed to heat and that perlite board was flame resistant as well as a thermal insulator. Stip. Nos. 57(1), (5). Thus, in combining these two products, the Bolster patent sought to obtain a fire resistant, thermal insulating product. (See PX-2 at 1/13-15, 2/38-45). Although there is some confusion in the law as to whether combination patents should be analyzed for obviousness under a standard different from that set forth in Graham, see generally Witherspoon, supra, at 7:306-310; 2 Chisum, Patents, § 5.04[5], there is no question that such patents have long been subject to the most careful scrutiny. See Great Atlantic and Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 71 S.Ct. 127, 95 L.Ed. 162 (1950). In Anderson’s — Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 90 S.Ct. 305, 24 L.Ed.2d 258 (1969), the Supreme Court, in invalidating a patent on a combination radiant heat burner and a paving machine, stated: The combination of putting the burner together with the other elements in one machine, though perhaps a matter of great convenience, did not produce a ‘new or different function,’ . . . within the test of validity of combination patents. A combination of elements may result in an effect greater than the sum of the several effects taken separately. No such synergistic result is argued here. 396 U.S. at 60-61, 90 S.Ct. at 307-08. More recently in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 96 S.Ct. 1532, 47 L.Ed.2d 784 (1976), the Court invalidated a patent containing a combination of 13 old elements, and stated: We cannot agree that the combination of these old elements . . . can properly be characterized as synergistic, that is, ‘result[ing] in an effect greater than the sum of the several effects taken separately.’ Anderson’s-Black Rock v. Pavement Co., 396 U.S. 57, 61, 90 S.Ct. 305, 308, 24 L.Ed.2d 258 (1969). Rather, this patent simply arranges old elements with each performing the same function it had been known to perform, although perhaps producing a more striking result than in previous combinations. Such combinations are not patentable under standards appropriate for a combination patent Though doubtless a matter of great convenience, producing a desired result in a cheaper and faster way, and enjoying commercial success, [the patent] “did not produce a ‘new or different function’ . within the test of validity of combination patents.” Anderson’s-Black Rock v. Pavement Co., supra, at 60, 90 S.Ct. at 307. These desirable benefits ‘without invention will not make patentability.’ Great A. & P. Tea Co. v. Supermarket Corp., 340 U.S. at 153, 71 S.Ct. at 130. See Dann v. Johnston [425 U.S.] 219 at 230 n. 4, 96 S.Ct. 1393, 1399, 47 L.Ed.2d 692. 425 U.S. at 282-83, 96 S.Ct. at 1537-38. The Third Circuit Court of Appeals recently declined to rule whether a finding of synergism is a precondition to validity in all cases involving combination patents, Sims v. Mack Truck Corp., 608 F.2d 87, 93 (3d Cir. 1979), and in light of this Court’s finding that the Bolster patent is invalid under the Graham test, this issue need not be decided. It is noted, however, that the two elements of the Bolster patent, urethane and perlite, each perform “the same function it had been known to perform.” The “new and useful result” claimed by Grefco-“a unitary product needing no further assembly at the job site that is both thermally efficient and fire-resistant” (Plaintiff’s Post-Trial Brief at 42), while no doubt “a matter of great convenience,” Sakraida, supra, 425 U.S. at 282, 96 S.Ct. at 1537, is not patentable. Application of the three-prong Graham tests, consideration of the secondary factors set forth in Graham and an analysis of the patentability of combination patents all lead to the inescapable conclusion that the Bolster patent is invalid as obvious under 35 U.S.C. § 103. III. GREFCO’S CONDUCT BEFORE THE PATENT OFFICE Kewanee contends that Grefco’s prosecution of the Bolster patent before the PTO involved fraudulent conduct, thereby rendering the patent invalid and unenforceable. Its contention addresses essentially two sections of the patent application: misrepresentation or omission of the most pertinent prior art (PX-2 at 1/29-2/36) and misrepresentation and concealment of the results of experiments and tests referenced in examples 1-6 (PX-2 at 4/45-7/8). A. The Legal Standards Kewanee has the burden of proving Grefco’s fraud “clearly, unequivocally and convincingly.” In Re Multidistrict Litigation Involving Frost Patent, 540 F.2d 601, 603 (3d Cir. 1976) (hereinafter “Frost”); DeLong Corp. v. Raymond International, Inc., 622 F.2d 1135 at 1145-46 (3d Cir. 1980). There are two necessary elements of a finding of fraud. The alleged infringer must first prove that the omission or misrepresentation was “material” in the sense that it made it “impossible for the Patent Office fairly to assess the patent application against the prevailing statutory criteria.” Frost, supra, 540 F.2d at 604 n.9, citing Monsanto Co. v. Rohm & Haas Co., 456 F.2d 592, 600 (3d Cir. 1972). Second, the patentee must possess “an affirmative intent to deceive or at least a gross negligence or recklessness in misrepresenting the truth.” DeLong Corp., supra, 622 F.2d at 1146. Participants in proceedings before the PTO are held to high standards of conduct because of the ex parte nature of such proceedings, see generally PIC, Inc. v. Prescon Corp., 485 F.Supp. 1302, 1309-10 (D.Del. 1980), and because of the Patent Examiner’s relative inability to test the veracity of certain representations made to him. Frost, supra, 540 F.2d at 611 n.36; Norton v. Curtiss, 433 F.2d 779, 793-94, 57 C.C.P.A. 1384 (1970). See Hercules v. Exxon, 497 F.Supp. 661, 690 (D.Del. 1980); Tr. 2951-52. In Standard Oil Co. v. Montedison, S.p.A., 540 F.2d 611 (3d Cir. 1976), the Third Circuit Court of Appeals wrote, one who prosecutes an application for a patent must meet the highest standards of conduct in dealing with the Patent Office. An applicant who seeks to obtain a patent for his invention is asking the government for the grant of a monopoly which concerns not only other private parties who may also be claiming the same invention, but which involves issues of great moment to the general public as well. The circumstances surrounding such a proceeding must be wholly free from fraud and other inequitable conduct. 540 F.2d at 616. This Court has recently stated that “[a] party who withholds information does so at its own risk since it is ultimately the duty of the [Patent Office], and not of the applicants and their attorneys, to determine what information is relevant.” Standard Oil Co. v. Montedison S.p.A., 494 F.Supp. 370, 436 (D.Del. 1980). The Court went on to explain, “[i]t is the province of a patent examiner, and not a party, to determine what data is relevant and to elicit it from the parties. When requested to do so, the parties must supply available information. Although a party may subsequently attack such information as unfair or irrelevant, it cannot attempt to perform the examiner’s function by determining the validity of its own case.” Id. at 444 (emphasis added). At the same time, this Court and the Third Circuit Court of Appeals have consistently recognized that patent applicants and their attorneys are not held to an absolute, inflexible duty of disclosure in their dealings with the PTO. In Johnson and Johnson v. W. L. Gore & Associates, Inc., 436 F.Supp. 704 (D.Del. 1977), Judge Wright stated, The applicant should be accorded the right to exercise good faith judgment. Only when he is guilty of fraud, wilfulness or recklessness indicating a disregard for his duty of candor should enforcement of the patent be barred. Xerox Corp. v. Dennison Mfg. Co., 322 F.Supp. 963, 968-69 (S.D.N.Y.1971). As Judge Stapleton expressed in Tokyo Shibaura, supra [Tokyo Shibaura Electric Co., Ltd. v. Zenith Radio Corp., 404 F.Supp. 547 (D.Del.1975), aff’d, 548 F.2d 88 (3d Cir. 1977)]: A patent attorney has no absolute duty to perceive that which one skilled in the art would have perceived if left in a room to study a display of all the prior art. His duty is one of candor and this duty leaves room for the exercise of good faith judgment even if that judgment ultimately is held to have been faulty. 404 F.Supp. at 569. 436 F.Supp. at 732. In DeLong Corp., supra, the Third Circuit Court of Appeals held that without more the mere misstatement in the patent application that there had not been a prior sale of the invention for more than one year prior to the date of the application, particularly when the circumstances pertaining to the transaction required a sifting of the facts, will not support a finding of fraud 622 F.2d at 1146. It is against this legal framework that Kewanee’s allegation of fraud must be examined. B. Prior Art Section Kewanee contends that McMillan fraudulently misrepresented the state of the art in the prior art section of the Bolster application. Specifically, it cites his alleged failure to disclose that perlite board and rigid urethane foam were among the four leading roofing insulation boards in commercial use prior to the application and his failure to disclose the substance of the JCP article which indicated that fiber board and urethane combinations “qualified” on industry construction tests and which, it has been found herein, constituted a disclosure of perlite board and urethane foam to a man of ordinary skill in the art. Grefco contends that McMillan’s description of the pri- or art was “fair and adequate.” In the prior art section of the Bolster patent, McMillan did not refer the Examiner to specific pieces of prior art, but rather attempted to summarize developments in the roofing industry and the findings or teachings of several publications. (Tr. 1214, 1235, 1329). The discussion of urethane foam states that “[rjigid plastic foam boards are unusually good thermal insulators and have thus found wide and varied use in industry” (PX-2 at 1/29-31) and that “[ujrethane foam board, in particular, exhibits unusually low thermal conductivity and is for that reason the preferred plastic foam material of the building industry.” (PX-2 at 1/31-34). The section goes on to state that “[tjhese boards, however, have serious drawbacks for use in building construction,” in that their high flammability precludes them from qualifying for use “in the more incombustible types of steel deck roof construction.” (PX-2 at 1/36-44). After describing (and criticizing) attempts to develop more fire resistant foam (PX-2 at 1/44-52), the application notes urethane foam’s “very poor resistance ... to abrasion and other types of physical abuse” and its susceptibility to “thermal degradation and softening when exposed to even moderately elevated temperatures, such as those obtained at the surface of roof insulation board when the board is mopped with molten bitumen.” (PX-2 at 1/52-59). McMillan’s statement with regard to urethane board concludes as follows: “it will be readily seen why the use of urethane board is undesirable for roof insulation even in cases where the combustibility and the smoke generating properties of the urethane might be tolerated.” (PX-2 at 1/59-63). Mogg testified that the conclusory statement was accurate only with respect to urethane foam boards without felt facings on either side of the foam. (Tr. 654). Indeed, Mogg testified that facings such as roofing felt were placed on urethane foam “to protect the foam from physical abuse or the weather,” thereby addressing the specific disadvantage attributed to urethane foam. (Tr. 85-86; see also, Tr. 2648). There is also evidence that the urethane foam boards with felt facings on both sides, made both by Apache and Barrett, were “a major factor in the market.” (Tr. 2651). Finally, there is evidence that urethane foam board was “one of the four main roof insulation boards” in use prior to the Bolster application. (Tr. 63, 629, 655). It is thus readily apparent that the discussion of urethane foam in the Bolster patent was somewhat inaccurate with respect to the use of such boards in the roofing industry as well as their drawbacks. However, “under the totality of circumstances,” Monsanto, supra, 456 F.2d at 600, Frost, supra, 540 F.2d at 611, the Court does not find that these inaccuracies were fraudulent. Attempts to address the problem of physical abuse were disclosed as were the facts that rigid foam boards were widely used and that urethane foam was the preferred foam material of the building industry. The Court therefore does not believe that McMillan’s description of the use and properties of urethane foam precluded the Examiner from “assessing the patent application against the prevailing statutory criteria.” With respect to perlite board, the patent application states that this is “another type of board much used in construction” (PX-2 at 1/63-64), praises its resistance to heat, reaction to molten bitumen, and performance on standard flame spread tests (PX-2 1/64-69), and notes the low insulating capacity of perlite board (PX-2 at 1/69-2/7). The discussion of perlite board concludes with the following statement: The excessive thickness of perlite board that its higher conductivity requires causes building design and construction problems which have generally resulted in the exclusion of perlite board from such applications. In other words, the use of conventional perlite board is generally limited to buildings in which a moderate amount of insulating value is required. PX-2 at 2/7-14. While it is true that perlite board was one of the four main roofing insulation materials in use at the time of the Bolster application (Tr. 63, 629, 655), the Court does not find that the discussion of perlite in the prior art section of the Bolster patent fraudulently misrepresents the facts. On the whole, the Court finds the discussion to be reasonably balanced, although perhaps moderately exaggerative with regard to the “limited” use of perlite board. Kewanee’s final contention with respect to Grefco’s “misrepresentations” of the pri- or art concerns the JCP article. The prior art statement of the Bolster application discussed the use of “dense, incombustible materials” in combination with urethane foam. Those materials listed, taken from a variety of sources reviewed by McMillan (e. g., DX-GA, DX-GC, DX-GD, DX-GE; see Tr. 1217-18), were “asbestos cement board, procelained or enameled steel, aluminum, tempered glass.” (PX-2 at 2/21-23). With regard to the findings of the JCP article, McMillan wrote, it is interesting to note that plastic foams are considered unsuitable for use in roof deck insulation when a steel deck is employed; fiber board has been suggested as a barrier between the deck and the foam in such a ease. (PX-2 at 2/29-33) (emphasis added). McMillan testified that the information concerning the use of fiber board came from the JCP article (Tr. 1330-31), and that, although the JCP article is nowhere referenced in the application, he intended to disclose “the substance” of the article to the PTO. (Tr. 1338). However, McMillan also testified that his understanding of the statement in the JCP article that “plast