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5. Claims Not Anticipated

  1. The claims in the ENIAC were not anticipated by or obvious in view of the (1) RCA Reports and the Morton and Flory Patents, (2) Andrews, et.al., patent, (3) Mumma Patent, and (4) claim 142 was not anticipated or obvious in view of the Phelps Patent.
  2. (1)(a) RCA Reports

    1. The RCA Report of February 26, 1942 was an internal RCA Report.
    2. The RCA Report of April 22, 1942 was a classified report to the U.S. Government
    3. Both reports concern a proposed rate device which was to determine the average rate of speed of an aircraft.
    4. The proposed rate device was to be a special purpose tool which was to be very slow and whose only arithmetic function was to be subtraction.
    5. Plaintiff's witness, Dr. Jan Rajchman, a prominent scientist employed by RCA during the time when the reports were prepared, and who also was familiar with the ENIAC machine, was familiar with the reports (his name appears on them) and the work they applied to.
    6. The rate device was never completed or used.
    7. Despite Rajchman's apparent knowledge of the reports and the work they encompassed, he nevertheless recognized that the ENIAC machine was a pioneering enterprise, a machine of enormous consequence that had enormous influence on the field.
    8. The RCA Reports do not describe any operative embodiment and do not describe a programmable computer.
    9. There is no substantial equivalence, in whole or in part, between the RCA rate device and the apparatus described and claimed in the ENIAC patent.
    10. In each of Claims 65, 69, 75, 78, 109, 36, and 122, there are one or more express limitations which cannot be applied to the rate device as described.
    11. Th rate device has utility as an all-electronic computer, capable of performing a computation for whatever purpose.
    12. Claim 109 cannot be applied to the rate device since Claim 109 has several limitations and requirements not met by the rate device.
    13. Each of Claims 36 and 122 are inapplicable to the rate device since each claim has several limitations and requirements not met by the rate device.
    14. Claim 69 cannot be applied to the rate device since Claim 69 has several limitations and requirements not met by the rate device.
    15. Claim 65 also cannot be applied to the rate device since Claim 65 has several limitations and requirements not met by the rate device.
    16. Claim 78 cannot be applied to the rate device since Claim 75 has several limitations and requirements not met by the rate device.
    17. Claim 75 cannot be applied to the rate device since Claim 75 has several limitations and requirements not met by the rate device.
    18. (1)(b) Morton et al. Patent

    19. The Morton et al. patent No. 2,435,841 was considered by the Patent Office during the prosecution of the application for the ENIAC patent.
    20. The Morton et al. patent discloses a function generator for use in a single problem type of apparatus intended to be usable in a fire control device.
    21. The device of the Morton et al. patent is inoperative.
    22. Each of Claims 69, 65, 78, 75 of the ENIAC patent deals with various features of a memory arrangement, which in the ENIAC patent embodiment, includes a function table.
    23. Claim 78 cannot be applied to the Morton et al. patent since Claim 78 has several limitations and requirements not met by the patent.
    24. Claim 69 cannot be applied to the Morton et al. patent since Claim 69 has several limitations and requirements not met by the patent.
    25. Each of Claims 65 and 75 cannot be applied to the Morton et al. patent since each claim has at least one limitation and requirement not met by the patent.
    26. (1)(c) Flory et al. Patent

    27. The Flory et al. patent No. 2,404,047 was considered by the Patent Office during the prosecution of the application for the ENIAC patent.
    28. The Flory et al. patent does not disclose the subject matter of Claims 69, 65, 78 and 75 of the ENIAC patent.
    29. (2) Andrews et al. Patent

    30. The Andrews et al. patent No. 2,977,048 concerns a relay computer.
    31. The Andrews et al. patent application, assigned to Bell Telephone Laboratories (BTL), was in interference in the Patent Office with the ENIAC patent application and thus was considered by the Patent Office.
    32. Andrews, one of the inventors named in the Andrews et al. patent, reviewed the ENIAC patent after it issued and concluded that Claim 36, among others, could not be applied to any BTL relay computer. The Andrews et al. patent disclosed one of the BTL relay computers.
    33. Claim 36 related to the interruption of the operation of the apparatus which controls the sequencing of a computer such that its operation may be stopped manually at a slow rate through steps which it ordinarily would proceed through synchronously at electronic speeds. In contrast, the Andrews relay machine always operates asynchronously.
    34. Claim 36 cannot be applied to the Andrews et al. patent since Claim 36 has several limitations and requirements not met by the Andrews et al. patent.
    35. Claim 122 relates to the ability to stop the computer during its automatic sequencing and to advance it either one add time or one pulse time per depression of a switch and to display, for example, with lamps, quantities contained in the accumulators and other units. In contrast, the Andrews et al. relay machine is asynchronous and thus cannot provide pulse signals in sequence and in definitive groups. The Andrew et al. patent does not even show an arrangement for producing discrete signals in sequence and in definitive groups as required by Claim 122.
    36. Claim 122 cannot be applied to the Andrews et al. patent since Claim 122 has several limitations and requirements not met by the Andrews et al. patent.
    37. (3) Mumma Patent

    38. The Mumma patent No. 2,422,428 discloses a non-programmable console calculator apparatus which can perform a single addition, a single subtraction, or a single multiplication only.
    39. The Mumma patent was considered by the Patent Office in the prosecution of the ENIAC patent application as early as March of 1950, when it was first cited by the Examiner, and it appeared as a reference on the printed ENIAC patent when it issued.
    40. Claims 52, 55, 56, and 57 relate to certain features for programming a data processor. In contrast, the calculator apparatus disclosed in the Mumma patent fails to meet these claims since it is not an electronic digital computer so arranged as to allow one to program it to carry out a series of mathematical operations.
    41. In the Mumma calculator apparatus, data is entered manually on a set of keyboards by key depression and another button must be pressed for a multiplication, for example, to occur; and thus Mumma's calculator only performs one operation per key depression and pushing of a start button.
    42. Mumma himself acknowledged that the tally impulse generator of the device disclosed in the Mumma patent merely keeps track of a single value and thus involves no selectivity such as is called for by Claims 56 and 57 of the ENIAC patent.
    43. Claim 56, and also Claim 57 which is dependent on Claim 56, cannot be applied to the Mumma patent because each claim has several limitations and requirements not met by the Mumma patent.
    44. Claims 52 and 55, which also relate to programming, cannot be applied to the Mumma patent because each claim has several limitations and requirements not met by the Mumma patent.
    45. Claim 109 cannot be applied to the Mumma patent because it has several limitations and requirements not met by the Mumma patent.
    46. The Mumma patent cannot meet the language of either Claim 8 or Claim 9, each of which calls for more than one arithmetic operation. Mumma himself recognized that his apparatus fails in this respect; additionally, each of these claims has several other limitations and requirements not met by the Mumma patent.
    47. (4) Claim 142 of the Phelps Patent

    48. The Phelps patent No. 2,624,507 concerns a multiplying device and not a programmable electronic digital computer.
    49. The Phelps patent discloses two embodiments and Honeywell relied on the first embodiment which discloses a relay multiplier.
    50. An IBM patent attorney, while preparing the application for the Phelps patent, suggested the second embodiment which is the electronic version.
    51. In contrast to that which is described and claimed in the ENIAC patent, the device disclosed in the Phelps patent cannot chain together a series of multiplications to be carried out in a desired order or otherwise, much less can it perform multiplications and other operations in accordance with a program.
    52. Claim 142 of the ENIAC patent relates to a timing mechanism having a stepping circuit.
    53. Claim 142 requires, among other things, an output signal which must be a single pulse repeated regularly but with a lower frequency related to the source frequency. In contrast the Phelps patent does not disclose a signal, but rather a burst of ten pulses, and does not disclose a stepping circuit.
    54. Claim 142 cannot be applied to the Phelps patent since Claim142 has several limitations and requirements not met by the Phelps patent.
    55. The application for the Phelps patent was filed in the Patent Office on September 27, 1945.
    56. Honeywell has not met its burden of proving that nay of Claims 69, 65, 78, 75, 109, 36, or 122 of the ENIAC patent is identically disclosed in either or both RCA reports.
    57. Honeywell has not met its burden of proving that any of Claim 69, 65, 78, 75, 109, 36, or 122 of the ENIAC patent is anticipated by either or both RCA reports.
    58. Honeywell has not met its burden of proving that any of Claims 69, 65, 78, 75, 109, 36, or 122 of the ENIAC patent was obvious in view of anything described in the RCA reports.
    59. Honeywell has not met its burden of proving that any of Claims 69, 65, 78, or 75 of the ENIAC patent is anticipated by the Morton et al. patent or the Flory et al. patent.
    60. Honeywell has not met its burden of proving that any of Claims 69, 65, 78, or 75 of the ENIAC patent was obvious in view of the Morton et al. patent or the Flory et al. patent.
    61. Honeywell has not met its burden of proving that either Claim 36 or Claim 122 of the ENIAC patent is identically anticipated by Andrews et al. patent.
    62. Honeywell has not met its burden of proving that either Claim 36 or Claim 122 of the ENIAC patent is obvious in view of Andrews et al. patent.
    63. Honeywell has not met its burden of proving that any of Claims 8, 9, 52, 55, 56, 57, or 109 of the ENIAC patent is identically anticipated by the Mumma patent.
    64. Honeywell has not met its burden of proving that any of Claims 8, 9, 52, 55, 56, 57, or 109 of the ENIAC patent is obvious in view of the Mumma patent.
    65. Honeywell has not met its burden of proving that Claim 142 of the ENIAC patent is anticipated by the Phelps patent.
    66. Honeywell has not met its burden of proving that Claim 142 is obvious in view of the Phelps patent.

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