# Systematic Tool & MacHine Company v. Walter Kidde & Company, Inc.

> Court of Appeals for the Third Circuit · March 25, 1977 · 555 F.2d 342

URL: https://www.frixlaw.com/law-library/cases/9463846

## Case

- **Full name:** SYSTEMATIC TOOL & MACHINE COMPANY Et Al., Appellees, v. WALTER KIDDE & COMPANY, INC., Appellant
- **Court:** Court of Appeals for the Third Circuit
- **Decided:** March 25, 1977
- **Citations:** 555 F.2d 342; 193 U.S.P.Q. (BNA) 587
- **Precedential status:** Published
- **Opinion:** Dissent by Rosenn
- **Judges:** Rosenn, Hunter, Snyder
- **Cited by:** 21 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/9463846

## Opinion text

ROSENN, Circuit Judge,
dissenting.
What splits this panel is not the pertinent art of designing food slicers but the cutting edge of the appropriate principle to be ap *351 plied in correcting a critical error in the district court’s analysis. The majority believes that remand to the district court for further findings is superfluous and that this court can draw “the ultimate conclusion of law with respect to obviousness.” I, on the other hand, believe that important and essential findings of fact are yet to be made and the case must be remanded to the district court before we can draw any conclusion as to whether or not the patent is obvious.
The question that confronts us is whether the ingenuity displayed in plaintiffs’ tomato slicing device rises to the level of patentable invention. The major controversy in this ease is whether plaintiffs’ unique combination of elements known in the prior art was obvious under 35 U.S.C. § 103 (1970). As we recently stated in Tokyo Shibaura Electric Co., Ltd. v. Zenith Radio Corp., 548 F.2d 88, at 93 (3d Cir. 1977), “[t]he ultimate determination of patent validity is a conclusion of law reviewable for error, but the resolution of the obviousness issue depends on several basic factual inquiries reviewable under the ‘clearly erroneous’ standard of Fed.R.Civ.P. 52(a).”
The three crucial factual inquiries underlying the determination of obviousness are the scope and content of the prior art, the differences between the prior art and the claims at issue, and the level of ordinary skill in the pertinent art. Graham v. John Deere Co., 383 U.S. 1, 17 , 86 S.Ct. 684 , 15 L.Ed.2d 545 (1966); Philips Electronic & Pharmaceutical Industries, Inc. v. Thermal Electronics Industries, Inc., 450 F.2d 1164, 1173-74 (3d Cir. 1971).
The majority has accurately pinpointed the problem with the district court’s decision as its resolution of “the level of ordinary skill in the pertinent art.” In finding that this level of skill was that possessed by a hypothetical person skilled in the slicing of food, the district court took an impermissible shortcut and ended up in the wrong tomato patch.
The district court evidently failed to realize that a determination of the level of ordinary skill in the pertinent art is necessarily a two-step process: first, the pertinent art must be identified; secondly, the level of ordinary skill in that art must be ascertained. An attempt to resolve the issue without breaking it down into its two component steps can only lead to confusion.
I agree with the majority that the district court erred in identifying the pertinent art as food slicing. As the majority holds, the decisions of our sister circuits and our own recent decision in Universal Athletic Sales Co. v. American Gym, Recreation & Athletic Equip. Corp., 546 F.2d 530 (3d Cir. 1976), would indicate that the pertinent art here is not the slicing of food but rather the design of food slicing devices. Having identified the pertinent art, however, we must still ascertain the level of ordinary skill in that art. It is at this point that my views diverge from those of the majority.
The majority simply assumes that the level of ordinary skill in the art of designing food-slicing devices is that of an ordinary mechanic. The majority then proceeds to place great weight on Mr. Karr’s testimony that the patented device “would be an obvious thing for anybody presented with the problem who had the skills of an ordinary mechanic or designer”. (Majority op. at 350.) My difficulty with Mr. Karr’s testimony is twofold: first, although he may be an accomplished engineer of sorts, Mr. Karr’s expertise seems to lie primarily in the design of aircraft propulsion systems and industrial machinery. Referring specifically to his experience in the designing of food-cutting devices, Mr. Karr testified:
Q: Did you ever have anything to do with designing any machines that could be compatible with use in the food industry?
A: I never had occasion to design a food or bread cutting machine. No, Your Honor.
His only experience with slieers was in 1961 and these were film splicers, not food slic *352 ers. In short, little weight can be attached to the testimony of Karr, a mechanical engineer, who had no familiarity with the pertinent art as we have identified it. 1 Secondly, Karr’s testimony assumed a fact yet to be proved — that the level of ordinary skill in the art of designing food slicing devices is the skill possessed by an ordinary mechanic. I can find no evidence in the record to support that assumption, which the majority treats as an established fact. Neither Karr nor anyone else testified to the level of ordinary skill in the pertinent art.
In telescoping what should be a two-step inquiry — the identification of the pertinent art and the determination of the level of ordinary skill in that art — the majority suggests that ascertaining the former automatically fixes the latter. Applying this novel theory to the instant case, the majority holds that “we must presume food slicing designers to possess [the skill of an ordinary mechanic].” Majority Opinion at 350 n.9 (emphasis supplied). That the majority cites no authority for making such a presumption as to the level of ordinary skill is not surprising since John Deere, supra, requires that the level of skill be ascertained by a factual inquiry, not somehow “presumed” out of thin air.
The majority also fails to recognize that the level of ordinary skill is defined by those who practice the art, not by the art itself. See, e. g., CBS v. Sylvania Electric Products, Inc., 415 F.2d 719 (1st Cir. 1969), cert, denied, 396 U.S. 1061 , 90 S.Ct. 755 , 24 L.Ed.2d 755 (1970). It certainly does not appear self-evident to me that because the pertinent art in the instant case is the design of food-slicing equipment the level of ordinary skill must be that of an ordinary mechanic. The two questions are quite distinct. The level of skill in the pertinent art is a pure question of fact, Philips Electronic, supra, not the result of a legal equation.
The level of ordinary skill in the art of designing food-slicing devices can be resolved only by evidence as to the skills of those who practiced that art at the time of making the invention. Shanklin Corp. v. Springfield Photo Mount Co., 521 F.2d 609 (1st Cir. 1975); Application of Trbojevich, 361 F.2d 1013, 1014 , 53 CCPA 1241 (1966). The level of ordinary skill may have been high or low, either capable or incapable of producing the patented device. A host of questions may have to be answered, such as: At the time of this claimed invention, who were the people actively engaged in the field? What was their educational background? How much and what sort of experience had they had in the field? How often had they met with success in tackling similar problems? See, e. g., Jacobson Bros., Inc. v. United States, 512 F.2d 1065 (Ct.Cl.1975); CBS v. Sylvania Electric, supra. It is even appropriate to assess the approaches to the sort of problem here involved taken by other practitioners of the art; evidence of the scope and depth of their approaches might be highly probative of the level of skill which they possessed. See, e. g., Shanklin Corp. v. Springfield Photo Mount Co., supra. The level of ordinary skill can be ascertained only by answering questions such as these; no shortcut is defensible. Such an analysis depends on evidence; it requires findings of fact which only the district court can make.
Since the district court failed to answer any such questions, either explicitly or implicitly, we have no choice but to remand. Even if it were permissible for us to determine the level of ordinary skill in the pertinent art, we would be unable to do so on the basis of the present record; the record is completely silent in this area. The testi *353 mony of Karr, on which the majority relies exclusively, is entitled to little weight since Karr, a mechanical engineer, did not provide — and could not provide — any evidence whatsoever as to the level of ordinary skill in the art of designing food-slicing equipment. He candidly conceded that he had no familiarity with the art. Karr’s testimony would have value only if we could determine that the assumptions on which he relied were correct. The record before us, however, provides no basis upon which we can make such determination, one way or the other. The case therefore should be remanded to the district court so that it can properly fill the gaps in the record and make appropriate findings of fact.
Accordingly, I respectfully dissent.
. The majority makes no attempt to justify its reliance on Karr’s testimony; it simply ignores Karr’s near total ignorance of the pertinent art.

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/9463846. Public record. Not legal advice.