Appendix — Carsonite International Corp. v. Carson Manufacturing Co.

g2-127%

BO essa ctisccmuecs Acres SERAE |

in the Supreme Court of the

United States

OCTOBER TERM, 1982

CARSONITE INTERNATIONAL CORPORATION,

HIGH PERFORMANCE COMPOSITES, INC.,

and DONALD W. SCHMANSKI,

Petitioners,

v.

CARSON MANUFACTURING COMPANY, INC.,

Respondent.

APPENDIX

PETITION FOR WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

VAUGHN W. NORTH,

Thorpe, North & Western

9662 South State

P.O. Box 2609

Salt Lake City, Utah 84110

Telephone (801) 566-6633

BAN

i

TABLE CONTENTS

APPENDIX A —

Opinion of the 9th Circuit Panel .................... la

APPENDIX B —

9th Circuit Order Granting

Rehearing En Banc ...............--0ccecssscesssesseesseeees 16a

APPENDIX C —

9th Circuit Order Defining

Issues For Argument ...............00sceeeseesereseeeees 18a

APPENDIX D —

9th Circuit Order Consolidating Cases

For Oral Argument ................sccccssseesssesseessenees 21a

APPENDIX E—

Opinion Of The En Banc 9th Circuit Court .... 23a

APPENDIX F —

Order For Publication Of Original

Oth Circuit Opinion ................ccscecsessenseseneeeees 33a

APPENDIX G —

9th Circuit Court Order

Denying Petition For Rehearing .................--.-. 34a

APPENDIX H —

Judgment of the 9th Circuit Court Of Appeals ..36a

APPENDIX I —

Transcript Extract of Portions of

Examination of O'Connell .................:c000000+« 37a

Transcript of Concluding Jury Comments ...... 4la

APPENDIX J —

Patent Office Action In Reissue Proceeding .... 44a

APPENDIX K —

Selected Portions of U.S. Patent 4,092,081 ...... 45a

APPENDIX A

CARSON MANUFACTURING COMPANY, INC.,

a California Corporation, Plaintiff-Appellant,

Vv.

CARSONITE INTERNATIONAL CORPORATION,

INC., and High Performance Composites, Inc.,

Nevada Corporations, Defendant-Appellees.

No. 79-4474.

United States Court of Appeals,

Ninth Circuit.

Argued and Submitted April 14, 1981.

Decided Oct. 13, 1981.

Holder of patent relating to driveable, flexible high-

way markers constructed of reinforced fiberglass brought

action seeking damages and injunctive relief for patent

infringement, trademark infringement, and unfair com-

petition. The United States District Court for the North-

ern District of California, Samuel Conti, J., entered judg-

ment for plaintiff on jury verdict, and defendant ap-

pealed. The Court of Appeals, Trask, Circuit Judge,

held that: (1) the patent No, 4,092,081 was invalid be-

cause of obviousness, and (2) neither marks themselves

nor manner in which underlying products were marketed

created likelihood of confusion necessary for liability

under the Lanham Act for trademark violation.

Reversed.

2a

1. Patents 314(5)

Ultimate question of patent validity 4 is a legal one.

2. Patents 112.1

Presumption of validity of a patent can be rebutted

only by elder and convincing evidence. 35 U.S.C.A. §

282.

3. Patents 112.1

Where obviousness of a patent as compared to prior

art is in issue and patent applicant fails to disclose rele-

vant prior art, the presumption disappears; nevertheless,

the presumption remains intact if the undisclosed prior

art is merely cumulative of the cited art. 35 U.S.C.A.

§ 282.

4. Patents 112.1

Prior art undisclosed by patent applicant was mere-

ly cumulative of cited art, and therefore certain claims

of the patent were entitled to a presumption of validity.

35 U.S.C.A. § 282.

5. Patents 26(2)

A combination patent will be upheld only if it pro-

duces an unusual or surprising result.

6. Patents 26(1)

Even though patented highway marker consisted of

a single tangible element, it did not follow that the patent

could not be considered a combination.

7. Patents 26(1)

Whether a patent is a combination patent depends,

3a

not only on unitary or component nature of the patented

invention or on tangibility of its elements, but instead on

whether each element of the invention is old in the prior

art.

8. Patent 18

Question of a patent’s obviousness should be de-

cided against background of three factual determina-

tions; scope and contents of the prior art; differences

between the prior art and claims at issue; and level of

ordinary skill in the pertinent art.

9. Patents 314(5)

Ultimate question in determining a patent’s obvious-

ness is one of law: whether the differences are of such

magnitude that they would not have been evident at time

of invention to one possessed of ordinary skill in the art.

10. Patents 328(2)

Claims 1, 12, 13, 17, and 18 of patent No. 4,092,-

081 relating to a driveable, flexible highway marker con-

structed of reinforced fiberglass were obvious as a matter

of law and invalid.

11. Trade Regulation 334, 464

Question to be decided in determining questions of

trademark violations is whether the marks create a likeli-

hood of confusion such that consumers viewing one mark

would probably assume that the product it represents is

associated with source of a different product or service

identified by the other mark and, though itself a question

of law, this determination is based on six factual in-

4a

quiries: strength of allegedly infringed mark; similarity in

appearance, sound and meaning of the dispuied marks;

class of goods in question; marketing channels; evidence

of intent of party using the infringing mark. Lanham

Trade-Mark Act, §§ 32, 43(a), 15 U.S.C.A. §§ 1114,

1125(a).

12. Trade Regulation 334, 464

Neither trademarks themselves nor manner in which

the underlying products were marketed created likelihood

of confusion necessary for liability under the Lanham Act

for trademark violation. Lanham Trade-Mark Act, §§

32, 43(a), 15 U.S.C.A. §§ 1114, 1125(a).

Appeal from the United States District Court for the

Northern District of California.

Before TRASK and BOOCHEVER, Circuit Judges,

and CURTIS, * District Judge.

TRASK, Circuit Judge:

This appeal stems from a dispute over appellant

Carson Manufacturing Co.’s manufacture and distribu-

tion of a highway marker which is very similar to a pat-

ented marker manufactured and distributed by appellee

Carsonite International Corp. Appellant argues that the

court below erred in awarding damage and injunctive

relief for patent infringement, trademark infringement,

and unfair competition based on a jury verdict of ap-

pellant’s liability. We reverse.

* Honorable Jesse W. Curtis, Senior United States District Judge for

the Central District of California.

6a

U.S. 896, 97 S.Ct. 258, 50 L.Ed.2d 179; see St. Regis

Paper Co. v. Bemis Co., 549 F.2d 833, 838 (7th Cir.),

cert. denied, 434 U.S. 833, 98 S.Ct. 119, 54 L.Ed.2d 94

(1977). However, where the obviousness of a patent as

compared to the prior art is in issue and the patent ap-

plicant fails to disclose relevant prior art, the presump-

tion disappears. Hewlett-Packard Co. v. Tel-Design, Inc.,

460 F.2d 625, 628 (9th Cir. 1972); see Kamei-Auto-

komfort v. Eurasian Automotive Prods., 553 F.2d 603,

605 (9th Cir.), cert. denied, 434 U.S. 860, 98 S.Ct. 186,

54 L.Ed.2d 133 (1977); Alcor Aviation, Inc., v. Radair,

Inc., 527 F.2d 113, 115 (9th Cir. 1975), cert. denied,

426 U.S. 949, 96 S.Ct. 3170, 49 L.Ed.2d 1186 (1976).

Nevertheless, the presumption remains intact if the un-

disclosed prior art is merely cumulative of the cited art.

Saf-Guard Prods., Inc. v. Service Pts., Inc., 532 F.2d at

1271 (quoting Schnadig v. Gaines Mfg. Co., 494 F.2d

383, 391 (6th Cir. 1974)).

Claims 20, 24, and 25 are clearly not entitled to a

presumption of validity, because they were declared in-

valid by the examiner during the reissue proceedings.

Claims 1, 12, 13, 17, and 18, however, were declared

valid even after presentation of previously uncited prior

art references during those proceedings.

[4] Only one prior art reference, the Trelleborg

patent, was not cited to the examiner at any stage of

the proceedings. However, there is nothing about this

reference that is not suggested by one or more of the ref-

erences that were eventually cited to the examiner at

some point in the proceedings. Thus, the Trelleborg

7a

patent is merely cumulative of the cited art, and, there-

fore, Claims 1, 12, 13, 17, and 18 are entitled to a pre-

sumption of validity.

2

[5] A combination patent is an invention totally

composed of old elements which are combined in an un-

precedented manner. See Sakraida v. Ag Pro, Inc., 425

U.S. 273, 280-81, 96 S.Ct. 1532, 1536-37, 47 L.Ed.2d

784 (1976); M C Inds. v. Precision Dynamics Corp.,

634 F.2d 1211, 1213 (9th Cir. 1980); Herschensohn v.

Hoffman, 593 F.2d 893, 895 (9th Cir.), cert. denied,

444 U.S. 842, 100 S.Ct. 84, 62 L.Ed.2d 55 (1977).

Such patents are subject to a more rigorous test of valid-

ity: A combination patent will be upheld only if it pro-

duces an “unusual” or “surprising” result. M-C Inds. v.

Precision Dynamics Corp., supra, 634 F.2d at 1213;

Hewlett-Packard Co. v. Tel-Design, Inc., 460 F.2d 625,

629 (9th Cir. 1972); Regimbal v. Scymansky, 444 F.2d

333, 337-40 (9th Cir. 1971).’ The rationale for height-

ened scrutiny of combination patents is to ensure that

knowledge is not withdrawn from the public domain into

the protected monopoly of one whose invention has not

really advanced the art. See A & P Tea Co. v. Super-

market Equip. Co., 340 U.S. 147, 152-53, 71 S.Ct. 127,

130-31, 95 L.Ed. 162 (1950). The issue here is whether

each element of the Schmanski patent is old in the art.

It is evident from the record that each element of

1 Sometimes this test is referred to as “synergism’’—i.e., the whole

must exceed the sum of its parts. See, e.g., Herschensohn v. Hoff-

man, supra, 593 F.2d at 897 n.1 (quoting Astro Music, Inc. v. East-

1236, 1238 (9th Cir. 1977)); Hewlett-Packard Co. v.

2d

Tel-Design, Inc., supra, 460 F.2d at 629.

8a

the patent is indeed old in the art. The fibergless formula

(Claim 1), the variable El concept as it relates to drive-

ability and flexibility (Claim 1), installation by means

of driveable rigid body casings (Claims 12 and 13), the

marker’s shape (Claims 17 and 18), are each suggested

by one or more of Humphrey, Schmanski-Rose, Barnett,

the German patent, and Trelleborg.

Nevertheless, appellee argues that the Schmanski

patent should not be considered a combination patent,

because it protects a unitary object and not a mechanical

or other device composed of discrete component parts.

According to appellee, only the latter fall within the defi-

nition of a combination patent.

[6] The Schmanski marker does indeed consist of

a single tangible element. Nevertheless, it does not fol-

low that the patent cannot be considered a combination.

The defining language used by the cases does not limit

combination patents to devices composed of discrete com-

ponent parts. See, e.g., Great A & P Tea Co. v. Super-

market Equip. Co., supra, 340 U.S. at 152, 71 S.Ct. at

130 (“an assembly of old elements,” “unites old elements

with no change in their respective functions”); Sakraida

v. Ag Pro, Inc., supra, 425 U.S. at 280-81, 282, 96 S.Ct.

at 1537 (combination of old elements); M-C Inds. v.

Precision Dynamics Corp., supra, 634 F.2d at 1213

(“combines old elements in a different way”); Herschen-

sohn v. Hoffman, supra, 593 F.2d at 895 (“All . . . ele-

ments are old in the art”). But see SSP Agricultural v.

Orchard-Rite, Ltd., 592 F.2d 1096, 1101 (9th Cir. 1979)

(“mechanical” combination of old elements). Moreover,

9a

Schmanski combines a number of abstract teachings and

concepts which are individually old in the art. This court

has long held that a patent need not be exclusively com-

posed of tangible elements to be considered a combin-

ation. Hewlett-Packard Co. v. Tel-Design, Inc., supra,

460 F.2d at 629-30 & n.10; see Santa Fe-Pomeroy v.

P & Z Co., 569 F.2d 1084, 1091 (9th Cir. 1978); Grif-

fith Rubber Mills v. Hoffar, 313 F.2d 1, 3 (9tk Cir.

1963).

[7] The cases compel the conclusion that whether

a patent is a combination patent depends, not on the

unitary or component nature of the patented invention

or on the tangibility of its elements, but instead on

whether each element of the invention is old in the prior

art. Under this analysis, we find the Schmanski patent to

be a combination patent. Accordingly, we will uphold

it only if we find that it produces an unusual or surpris-

ing result.

B

Appellant argues that the Schmanski patent is in-

valid because of obviousness, anticipation, overbreadth,

and fraud. We find it necessary to consider only the first

argument.

[8, 9] Nonobviousness is a statutory requirement

of patentability. See 35 U.S.C. § 103. The question of

a patent’s obviousness should be decided against the back-

ground of three factual determinations: (1) the scope

and content of the prior art, (2) differences between the

prior art and the claims at issue, and (3) the level of

ordinary skill in the pertinent art. Graham v. John Deere

10a

Co., supra, 383 U.S. at 17, 86 S.Ct. at 693.? These

factors were drawn from language in the legislative his-

tory of Section 103:

An invention which has been made, and which is

new in the sense that the same thing has not been

made before, may still not be patentable if the

difference between the new thing and what was

known before is not considered sufficiently great

to warrant a patent.

If this difference is such that the subject matter

as a whole would have been obvious at the time

to a person skilled in the art, then the subject

matter cannot be patented.

Graham vy. John Deere Co., supra, 383 U.S. at 14, 15,

86 S.Ct. at 692 (quoting S.Rep.No.1979, 82d Cong., 2d

Sess. 6 (1952); H.R.Rep.No.1923, 82d Cong., 2d Sess.

7 (1952)). The finder of fact must ascertain the state

of the prior art, the differences between the disputed

patent and the prior art, and the level of ordinary skill

in the art. The ultimate question, however, is one of law:

2 Graham also states that ‘secondary considerations” such as ‘“‘com-

mercial success long-felt but unsolved needs, failure of others,

etc.”” may be relevant as indicia of obviousness. 383 U.S. at 17-18,

86 S.Ct. at 694. See also Photo Elect Corp. v. England, 581 F.2d

772, 782 (9th Cir. 1978) (that a patented invention was copied is

evidence of nonobviousness). The general (though by no means

exclusive) pattern in this circuit has been to consider

indicia only when the issue of obviousness is still in doubt after con-

sideration of the three primary determinations. See, e.g., SSP Agri-

komfort v. Eurasian Automotive Prods., supra, 553 F.2d at 606; Hew-

1966); Walker v. General Motors Corp. 362 F.2d 56 at 60. But see

Saf-Guard v. 532

lla

Are the differences of such magnitude that they would

not have been evident at the time of invention to one

possessed of ordinary skill in the art?

[10] The jury did not render a special verdict dis-

closing specific findings on the Graham inquiries, so we

do not know how the jury arrived at its conclusion that

the Schmanski patent was valid. We need not review the

record, however, because we conclude that the Schmanski

patent is obvious as a matter of law. Every element of

the patent is old in the art. Thus, the patented combina-

tion of these elements—a driveable-flexible marker—must

yield an unusual or surprising result to be upheld. We

find it impossible to maintain that, in light of the teach-

ing of the German patent, it would not have occurred to

an inventor familiar with and skilled in the pertinent art

to construct the Humphrey marker of reinforced fiber-

glass. Similarly, it is an obvious innovation, in view of

the teachings of Telleborg and Humphrey, to remove the

longitudinal rib and accentuate the curve of the Rose-

Schmanski “T” marker.’ Either innovation would yield

a driveable-flexible marker virtually identical to the

Schmanski marker.

This evidence of obviousness is sufficiently strong

to overcome the presumption of validity properly ac-

corded to Claims 1, 12, 13, 17, and 18. The Schmanski

patent is neither an unusual nor surprising advance in

the art, and we accordingly hold it invalid because of ob-

viousness. The verdict of patent infringement is hereby

reversed.

* This innovation was suggested by appellee’s own advertisements.

12a

II

[11] Appellant claims that there is insufficient

evidence to support the jury verdict that appellant is

liable for violations of Sections 32 and 43(a) of the Lan-

ham Trademark Act, 15 U.S.C. §§ 1114, 1125(a).* In

issue here are the names or marks under which appellant

and appellee market their respective highway markers.

The question that we must decide is whether the marks

create a likelihood of confusion such that “consumers

viewing [one] mark would probably assume that the

product it represents is associated with the source of a

different product or service identified by [the other]

mark.” Alpha Industries, Inc. v. Alpha Steel Tube &

Shapes, Inc., 616 F.2d 440, 443 (9th Cir. 1980) (quot-

ing Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d

1225, 1229 (3d Cir. 1978); accord Jockey Club, Inc. v.

Jockey Club of Las Vegas, Inc., 595 F.2d 1167, 1168

(9th Cir. 1979) (quoting Fleischmann Distilling Corp.

v. Maier Brewing Co., 314 F.2d 149, 151-52 (9th Cir.

1963) ). Though itself a question of law, this determina-

tion is based on six factual inquiries: (1) the strength of

the allegedly infringed mark; (2) the similarity in ap-

pearance, sound and meaning of the disputed marks; (3)

the class of goods in question; (4) marketing channels;

(5) evidence of actual confusion; and (6) evidence of

4 Appelle also asserts that ‘“‘{o)ther general allegations of unfair

competition were made and were proven at trial {which) went be-

yond Section 43(a)."’ This is simply untrue. No federal common

law or pendant claims were alleged by appellee in its counterclaim;

the sole jurisdictional bases plead for the claim were federal sta-

tutes involving patent and trademark infringement. Because ap-

pellee’s asserted unfair competition claims were suggested for the

first time on appeal, they cannot serve as a basis for upholding the

jury verdict. Therefore, we decline to consider them.

13a

the intent of the party using the allegedly infringing mark.

Id.; see Alpha Industries, Inc. v. Alpha Steel Tube &

Shapes, Inc., supra, at 444.

(1) Carsonite is a fictitious name that does not cor-

respond to anything in the real world. Consequently, it

is sufficiently “fanciful and distinctive” to receive the

greater protection accorded strong marks. See Jockey

Club, Inc. v. Jockey Club of Las Vegas, Inc., supra, 595

F.2d at 1168.

(2) The parties differ on names of the marks in

issue. Appellant contends that its mark is “Roadmarker,”

and the appellee’s mark is “Carsonite.” Appellee con-

tends that its mark is “Carsonite Roadmarker,” and that

appellant’s mark is “Carson Roadmarker.”

“Roadmarker” is at best a descriptive term that is

not protectible as a trademark in the absence of evidence

of secondary meaning. Appellee has supplied no such

evidence. Indeed, its registered trademark is “Carsonite,”

and not “Carsonite Roadmarker.” Moreover, appellant

markets its highway marker as “Roadmarker,” and not

as “Carson Roadmarker.” “Carson appears in appellants

advertising only as part of the designation of appellant's

company—“Division/Carson Mfg. Company.” The rec-

ord shows that “Carson Mfg. Company” is a bona fide

business name that appellant has used for nearly 100

years. Finally, appellants use the distinctive “boomer-

ang” logo of Carson Mfg. Company in marketing their

“Roadmarker”, whereas no logo at all appears on ap-

pellee’s advertising. We conclude that the marks in issue

“I4a

are “Carsonite” and “Roadmarker.” These marks are not

at all similar.

(3) The products denominated by the respective

marks are virtually identical—driveable-flexible highway

markers constructed of reinforced fiberglass.

(4) The manner in which markers are marketed

tends to reduce the possibility of confusion. Orders are

placed direct to the manufacturer; there is no central re-

tail/ wholesale outlet where a buyer could go and purchase

appellant’s product thinking it was appellee’s. In bidding

for state highway contracts; each manufacturer usually

submits its own bid, and each such bid is generally given

a separate file number.

(5) Appellee cites as evidence of confusion a Cali-

fornia.Department of Transportation (CalTrans) memo

issued to clarify that appellee’s marker was CalTrans-

approved, whereas appellant’s was not. It also relies on

an order for “Carsonite Roadmarkers” which was erron-

eously placed with appellant. Appellant concedes that

some confusion was evident in the several months im-

mediately following its entry into the market, but that

such confusion quickly dissipated once appellant estab-

lished itself as a competitor to appelle. Appellee cites no

examples of confusion that occurred significantly after

appellant’s initial entry into the market.

(6) There is no evidence of intent that appellant

intended to confuse buyers and trade off appellee’s good-

will when it chose the name for its marker. When orders

for “Carsonite Roadmarkers” were placed with it rather

15a

than with appellee, appellant explained to the buyers that

the marker it sold was not the “Carsonite Roadmarker.”

According to appellant, the orders were filled only after

the buyers understood that there were two different com-

panies and two different products.

[12] As a matter of law, we conclude that appel-

lant is not liable to appellee under either Section 32 or

Section 43(a). The evidence is simply insufficient to

support the conclusion that a violation occurred. It is

clear from the record that neither the marks themselves

(Section 32) nor the manner in which the underlying

products are marketed (Section 43(a)) create the likeli-

hood of confusion necessary for liability under the Lan-

ham Act. Cf. Alpha Industries, Inc. v. Alpha Steel Tube

& Shapes, Inc., supra (holder of registered mark “AL-

PHA” given no relief under Lanham Act for defendant’s

use of “ALPHA STEEL TUBE” or “ALPHA STEEL

TUBE & SHAPES”). The verdicts of liability under Sec-

tions 32 and 43(a) are hereby reversed.

The judgment is REVERSED.

léa

APPENDIX B

UNITED STATES COURT OF APPEALS

FOR NINTH CIRCUIT

Filed March 3, 1982

No. 78-3270

ROBERT SARKISIAN,

Plaintiff-A ppellee,

vs.

WINN-PROOF CORP., WILLIAM A. WERNER, and

WER-NEL ENTERPRISES, INC.,

Defendants-A ppellants.

No. 79-4474

CARSON MANUFACTURING COMPANY, INC., a

California Corporation,

Plaintiff-A ppellant,

vs.

CARSONITE INTERNATIONAL CORPORATION,

INC., and HIGH PERFORMANCE COMPOSITES,

INC., Nevada Corporations,

Defendant-Appellees.

No. 79-4589

ORDER

PETER A. HAMMERQUIST,

Plaintiff-A ppellee,

Vs.

CLARKE’S SHEET METAL, INC.,

Defendant-A ppellant.

17a

Before: BROWNING, Chief Judge, WRIGHT, CHOY,

GOODWIN, WALLACE, SNEED, KENNEDY, AND-

ERSON, HUG, TANG, SCHROEDER, FLETCHER,

FARRIS, PREGERSON, ALARCON, POOLE, FERG-

USON, NELSON, CANBY, BOOCHEVER, NORRIS,

and REINHARDT, Circuit Judges

Upon the vote of a majority of the regular active

judges of this court, it is ordered that these cases shall

be reheard by an en banc panel of the court pursuant to

Rule 25 of the Rules of the United States Court of Ap-

peals for the Ninth Circuit. The previous three-judge

panel assignments are hereby withdrawn.

JAMES BROWNING,

Chief Judge

18a

APPENDIX C

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

Filed April 2, 1982

No. 78-3266

ROBERT SARKISIAN,

Plaintiff-A ppellee,

v.

WINN-PROOF CORP., WILLIAM A. WERNER, and

WER-NEL ENTERPRISES, INC.,

Defendants-A ppellants,

No. 78-3270

ROBERT SARKISIAN,

Plaintiff-Cross-A ppellant,

V.

WINN-PROOF CORP., WILLIAM A. WERNER, and

WER-NEL ENTERPRISES, INC.,

Defendants-Cross-A ppellees.

No. 79-4474

CARSON MANUFACTURING COMPANY, INC., a

California Corporation,

v.

CARSONITE INTERNATIONAL CORPORATION,

INC., and HIGH PERFORMANCE COMPOSITES,

INC., Nevada Corporations,

Defendant-A ppellees.

19a

No. 79-4589

ORDER

PETER A. HAMMERQUIST,

Plaintiff-A ppeilee,

v.

CLARKE’S SHEET METAL, INC.,

Defendant-A ppellant.

Before: BROWNING, Chief JUDGE, WRIGHT,

GOODWIN, WALLACE, ANDERSON, TANG,

SCHROEDER, FARRIS, FERGUSON, NELSON and

CANBY, Circuit Judges

The parties shall submit supplemental briefs not to

exceed 25 pages addressing the following questions as

they apply to their respective cases:

1, Is “synergism” or an “unusual or surprising re-

sult” a requisite to a finding of non-obviousness of a

“combination” patent?

2. In determining non-obviousness, what questions

may or must the trial court submit to the jury, and what

questions may or must it reserve to itself?

3. What are the proper standards of review in this

court of the answers of the trial court and of the jury to

these questions?

Appellants’ briefs shall be filed by April 30, 1982.

Appellees’ briefs shall be filed by May 20, 1982. Ap-

21a

APPENDIX D

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

Filed June 4, 1982

No. 78-3266

ROBERT SARKISIAN,

Plaintiff-A ppellee,

v.

WINN-PROOF CORP., WILLIAM A. WERNER, and

WER-NEL ENTERPRISES, INC.,

Defendants-A ppellants,

No. 78-3270

ROBERT SARKISIAN,

Plaintiff-Cross-A ppellant,

v.

WINN-PROOF CORP., WILLIAM A. WERNER, and

WER-NEL ENTERPRISES, INC.,

Defendants-Cross-A ppellees.

No. 79-4474

CARSON MANUFACTURING COMPANY, INC., a

California Corporation,

v.

CARSONITE INTERNATIONAL CORPORATION,

INC., and HIGH PERFORMANCE COMPOSITES,

INC., Nevada Corporations,

Defendant-A ppellees.

22a

No. 79-4589

ORDER

PETER A. HAMMERQUIST,

Plaintiff-Appellee,

v.

CLARKE’S SHEET METAL, INC.,

Defendant-A ppellant.

These cases shall be consolidated for oral argument.

Each side in each of the cases shall be allowed 20 min-

utes. Counsel for all parties shall confer and agree upon

an orderly presentation that will avoid duplication.

23a

APPENDIX E

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

Filed September 21, 1982

Nos. 78-3266

78-3270

DC# CV 75-1131

(D. Oregon)

ROBERT SARKISIAN,

Plaintiff-Appellee/

Cross-A ppellant,

Vv.

WINN-PROOF CORP., WILLIAM A. WERNER, and

WER-NEL ENTERPRISES, INC.,

Defendants-A ppellants/

Cross-A ppellees.

No. 79-4474

DC# CV 78-1763

(N.D. Cal.)

CARSON MANUFACTURING COMPANY, INC., a

California Corporation,

Plaintiff-A ppellant,

v.

CARSONITE INTERNATIONAL CORPORATION,

INC., and HIGH PERFORMANCE COMPOSITES,

INC., Nevada Corporations,

Defendant-A ppellees.

24a

No. 79-4589

DC# CV 76-766

(D. Oregon)

OPINION

PETER A. HAMMERQUIST,

Plaintiff-Appellee,

v.

CLARKE’S SHEET METAL, INC.,

Defendant-A ppellant.

Appeals from the United States District Court

for the District of Oregon,

District Judge Otto R. Skopil, Presiding,

and from the United States District Court

for the Northern District of California,

District Judge Samuel Conti, Presiding.

[Argued and Submitted June 14, 1982]

Before: BROWNING, Chief Judge, WRIGHT, GOOD-

WIN, WALLACE, ANDERSON, TANG, SCHROED-

ER, FARRIS, FERGUSON, NELSON and CANBY,

Circuit Judges.*

25a

PER CURIAM:

Pursuant to Ninth Circuit General Order 5.5(d),

we ordered rehearing en banc to address issues of patent

law raised in three recent cases. Sarkisian v. Winn-Proof

Corp., .....- Pale, inscte (9th Cir. 1981); Hammerquist v.

Clarke’s Sheet Metal, Inc., 658 F.2d 1319 (9th Cir.

1981); Carson Manufacturing Co. v. Carsonite Interna-

tional Corp.., ...... Fe bcbeos (9th Cir. 1981). They are:

1. Is “synergism” or an “unusual or surprising re-

sult” a requisite to a finding of nonobviousness of a

combination patent?

2. In determining nonobviousness, what questions

may or must the trial court submit to the jury and what

questions may or must it reverse to itself?

3. What are the proper standards of review of the

answers of the district court and of the jury to these

questions?

INTRODUCTION

I.

Synergism is one of a number of words and phrases

used by the courts to express that the degree of innova-

tion required to meet the Constitutional test of invention

or nonobviousness set forth in 35 U.S.C. § 103 is rarely

found in a combination of old elements. The Supreme

Court has not precisely defined the word, and circuit and

26a

district courts have variously described it.' Those various

definitions have produced uncertainty in litigation requir-

ing preciseness. Use of the word, therefore, should be

avoided unless the combination in issue is synergistic in

the literal sense.

We often have referred to the principle of synergism

1 Although the Ninth Circuit has long equated synergism with “‘un-

usual or surprising’ consequences, other circuits have adopted com-

peting definitions. See, e.g., NDM Corp. v. Hayes Products, Inc.,

641 F.2d 1274 (9th Cir.), cert. denied, 102 S.Ct. 970 (1981); Tveter v.

AB Turn-O-Matic, 633 F.2d 831 (9th Cir. 1980), cert. denied, 451 U.S.

911 (1981); Rex Chainbelt Inc. v. Harco Products, Inc., 512 F.2d 993

(9th Cir.), cert. denied, 423 U.S. 831 (1975).

The Seventh Circuit, which has rejected the “synergism” test due

to what the court felt were insurmountable definitional problems,

defined synergism:

A definition of synergism that reflects its etymon is that

the elements in the combination must cooperate or interact

with each other. So defined, synergism distinguishes those

inventions in which the parts are merely aggregated, and

those in which the parts coact with each other so that the

result comes from the combined effect of the several parts

and not simply from the separate action of each. Under

this formulation, the presence or absence of synergism proves

little. Today, almost all mechanical devices consist of parts

which interact with each other.

Republic Industries, Inc. v. Schlage Lock Co., 592 F.2d 963, 970 (7th

Cir. 1949).

The Second Circuit, see Champion Spark Plug Co. v. Gyromat

Corp., 603 F.2d 361, 372 (2d Cir. 1979), cert. denied, 445 U.S. 916

(1980), and the Tenth Circuit, Plastic Container Corp. v. Continental

of Oklahoma, Inc., 607 F.2d 885, 904-05 (10th Cir. 1979), cert.

U.S. 1018 (1980), have followed the Seventh Circuit in

its rejection of “‘synergism.’’ In Chief Judge Markey’s address, ‘‘The

Synergism Virus: Cause and Cure,”’ 496 BNA Patent, Trademark &

Copyright Journal D-1 to D-3 (Sept. 18, 1980), he condemned synerg-

ism as an impossible standard: ‘‘ ‘Synergism’ in the dictionary sense

y to chemistry where, for example one may combine

two gases to produce a liquid, or to the allied drug act, where two

drugs may have an effect greater when combined than when taken

:

:

8

27a

in our patentability opinions concerning combination in-

ventions. A close reading of those decisions reveals that

this circuit always has regarded synergism as a functional

equivalent of the “unusual or surprising results” test as

the proper means of assessing nonobviousness under 35

U.S.C. § 103.”

To reduce the unforeseen confusion that this un-

necessary use of equivalent terms has injected into the

law of patentability in this circuit, we now hold that the

unusual or surprising results test is the sole and exclusive

measure of patentability for mechanical combination

patents in this circuit. See Great Atlantic & Pacific Tea

Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152

(1950).

The Sarkisian disquisition on the meaning of synerg-

ism, which attempts to distinguish between the “r

meaning of synergism and the unusual or surprising test,

disavows the long-established test. The unacceptable

effect of the Sarkisian analysis is to lower the standard

of patentability for combination patents.’ The standard

of patentability expressed in the unusual or surprising

2 See NDM Corp. v. Hayes Prods. Inc., 641 F.2d 1274 (9th Cir.), cert.

denied, 102 S.Ct. 970 (1981); Tveter v. AB Turn-O-Matic, 633 F.2d

831 (9th Cir. 1980), cert. denied, 451 U.S. 911 (1981); Satco, Inc. v.

Transequip, Inc., 594 F.2d 1318 (9th Cir.), cert. denied, 444 U.S. 865

(1979); Herschensohn v. Hoffman, 593 F.2d 893 (9th Cir.), cert.

denied, 444 U.S. 842 (1979); Penn Int’l Indus. v. Pennington Corp.,

583 F.2d 1078 (9th Cir. 1978).

8 The Sarkisian opinion correctly notes the axiom that hindsight is

not relevant in litigation. What may seem surprising prior to the

combination of old elements is more likely to appear common by

t. We reiterate that the test for obviousness should scrut-

inize the combination as of its announcement.

28a

test indicates the need to exercise caution when deciding

to permit the patenting of a combination of old elements.

In reaffirming the unusual or surprising test as ap-

plied to a combination of old elements, we comply with

the Constitutional standard set out in Graham v. John

Deere Co., 383 U.S. 1, 17 (1966), and necessarily em-

bodied in § 103. As applied to a combination of old

elements, “obviousness” is a term of art. The unusual or

surprising formulation clarifies the obviousness standard

as applied to combinations of old elements. That formu-

lation has been successful in so doing* and should be re-

tained.

II.

The Constitutional standard of patentability set forth

in Graham v. John Deere Co., 383 U.S. 1 (1966), re-

quires three findings of fact to support a conclusion about

obviousness: (1) the nature of the prior art, (2) the

differences between the prior art and the patented device,

and (3) the level of ordinary skill in the pertinent art.

4NDM Corp. v. Hayes Products, Inc., 641 F.2d 1274, 1280 (9th Cir.),

cert. denied, 102 S.Ct. 970 (1981); M-C Industries, Inc. v. Precision

Corp., 634 F.2d 1211, 1214 (9th Cir. 1980); Tveter v. AB

Turn-O-Matic, 633 F.2d 831, 835 (9th Cir. 1980); Palmer v. Orthokin-

etics, Inc., 611 F.2d 316, 323 (9th Cir. 1980); Satco, Inc. v. Trans-

equip, Inc. 594 F.2d 1318, 1322 (9th Cir.), cert. denied, 444 U.S. 865

(1979); Herschensohn v. Hoffman, 593 F.2d 893, 896-97 (9th Cir.),

cert. denied, 444 U.S. 842 (1979); Penn Int’l Industries v. Pennington

Corp., 583 F.2d 1078, 1081 (9th Cir. 1978); Photo Electronics Corp. v.

England, 581 F.2d 772, 775, 781 (9th Cir. 1978); yg ge dey

v. Harco Products, Inc., ella Tec oy Rhee denied,

29a

Id. at 17. These factual determinations are made by the

fact finder, preferably by detailed special interrogatories

in jury trials, and by detailed findings in nonjury trials.

Fed. R. Civ. P. 52(a).

On the basis of these findings, the court must deter-

mine obviousness as a matter of law. Great Atlantic &

Pacific Tea Co. v. Supermarket Equipment Corp., 340

U.S. 147 (1950). It may submit the question of ob-

viousness to the jury for its guidance, cf. Velo-Bind, Inc.

v. Minnesota Mining & Mfg. Co., 647 F.2d 965, 971

(9th Cir.) (obviousness finding by the jury), cert. denied,

102 S.Ct. 658 (1981), but retains the duty to decide the

question independent of the jury’s conclusion.

The Hammerquist opinion affirmed a jury’s conclu-

sion that a patent was not obvious. It focused on the

court’s instructions to the jury and the jury’s conclusions

and findings. Nevertheless, we are satisfied that the Ham-

merquist panel found a sufficient intervention by the

judge. It noted:

We are satisfied that the trial judge carefully

performed his duty in reviewing the jury’s verdict.

He adopted as his own the jury’s law application.

658 F.2d at 1323.

Portions of Hammerquist appear to approve com-

mitting the ultimate question of obviousness to the jury

upon proper instructions in the law. E.g., id. at 1322

(“The question of obviousness for the purpose of allocat-

ing the work between judge and jury is a question for the

30a

trier of fact upon proper instruction on the law.”). Be-

cause we hold that the court ultimately must decide ob-

viousness specifically as a matter of law, we disapprove

any language or procedure apparently to the contrary in

Hammerquist.

II.

The appropriate standard of appellate review simply

depends on which portion of the obviousness inquiry is

in issue. The predicate factual determinations are re-

viewed under the appropriate standard for findings of

fact. If made by the jury, we review for support by sub-

stantial evidence. California Computer Products v. In-

ternational Business Machines Corp., 613 F.2d 727, 734

(9th Cir. 1979). We review a judge’s findings under

the clearly erroneous test. Fed. R. Civ. P. 52(a).

The ultimate question of obviousness, including

whether the combination in issue displays an unusual or

surprising result, is a question of law. It is subject to our

independent review.

IV.

In summary, we hold the following:

1. A determination of an “unusual or surprising

result” is a requisite to a finding of nonobviousness of a

combination patent.

2. (a) In determining nonobviousness in all pat-

ent litigation, the trial court in a jury trial must submit

to the jury determination of (i) the nature of the prior

art, (ii) the differences between the prior art and the

patented device, and (iii) the ordinary level of skill in

3la

the pertinent art. Graham v. John Deere Co., 383 U.S.

1, 17-18 (1966).

(b) The court may submit the ultimate fact of ob-

viousness to the jury for a nonbinding advisory opinion.

Cf. Velo-Bind, Inc. v. Minnesota Mining & Mfg. Co., 647

F.2d 965, 971 (9th Cir.), cert. denied, 102 S.Ct. 658

(1981).

(c) The court must, in all cases, determine obvious-

ness as a question of law independent of the jury’s con-

clusion. Constitutional standards of patentability must

not be evaded by improper fact finding. Great Atlantic

& Pacific Tea Co. v. Supermarket Equipment Corp., 340

U.S. 147 (1950); see also Speed Shore Corp. v. Denda,

605 F.2d 469, 471 (9th Cir. 1979).

3. (a) On appeal to this Court, we review the

factual findings made by the jury under the substantial

evidence test and those by the judge using the clearly

erroneous test of Fed. R. Civ. P. 52(a).

(b) The legal question of obviousness is subject to

independent review by this Court, free of the restraining

influence of the clearly erroneous rule.

CONCLUSION

We remand the Sarkision case to the panel for de-

termination, in accordance with this opinion, whether the

patented device produced an unusual or surprising result.

In Hammerquist, the court adequately determined

whether the jury’s conclusion of obviousness was ap-

32a

propriate as a matter of law. Any portion of that opinion

that implies the question of obviousness is simply a ques-

tion of fact, subject to the substantial evidence test, is

disapproved. All statements in Hammerquist that ap-

prove the use of the term “synergism” are disapproved.

The Carson opinion is not in conflict with this opin-

ion. Any statement therein that may reflect approval of

the use of the word “synergism” is disapproved.

oS

-

33a

APPENDIX F

IN THE U.S. COURT OF APPEALS

FOR THE NINTH CIRCUIT

No. 79-4474

ORDER FOR PUBLICATION

CARSON MANUFACTURING COMPANY,

a California corporation,

Plaintiff-A ppellant,

vs.

CARSONITE INTERNATIONAL CORPORATION,

INC., and High Performance Composites, Inc., Nevada

Corporations,

Defendant-A ppellees.

Before: BROWNING, Chief Judge, WRIGHT, GOOD-

WIN, WALLACE, ANDERSON, TANG, SCHROED-

ER, FARRIS, FERGUSION, NELSON and CANBY,

Circuit Judges.

It is ordered that the panel opinion filed on October

13, 1981, and later withdrawn from publication, will

now be published.

FOR THE COURT:

EUGENE A. WRIGHT,

US. Circuit Judge

September 17, 1982

34a

APPENDIX G

Filed November 1, 1982

Nos. 78-3266

78-3270

DC# CV 75-1131

(D. Oregon)

ROBERT SARKISIAN,

Plaintiff-Appellee/

Cross-A ppellant,

Vv.

WINN-PROOF CORP., WILLIAM A. WERNER, and

WER-NEL ENTERPRISES, INC.,

Defendants-A ppellants/

Cross-Appellees.

No. 79-4474

DC# CV 78-1763

(N.D. Cal.)

CARSON MANUFACTURING COMPANY, INC.,

a California corporation,

Plaintiff-A ppellant,

Vv.

CARSONITE INTERNATIONAL CORPORATION,

a Nevada corporation, HIGH PERFORMANCE COM-

POSITES, a Nevada corporation,

Defendants-A ppellees.

36a

APPENDIX H

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

No. 79-4474

DC No. CV 78-1763 SC

CARSON MANUFACTURING COMPANY, INC.,

a California Corporation,

Plaintiff-A ppellant,

v8.

CARSONITE INTERNATIONAL CORPORATION,

INC., et al.,

Defendants-A ppellees.

APPEAL from the United States District Court for

the Northern District of California.

THIS CAUSE came on to be heard on the Tran-

script of the Record from the United States District

Court for the Northern District of California and was

duly submitted.

ON CONSIDERATION WHEREOF, It is now

here ordered and adjudged by this Court, that the judg-

ment of the said District Court in this Cause be, and

hereby is reversed,

Filed and entered October 13, 1981.

37a

APPENDIX I

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF CALIFORNIA

Civil Action No, C78-1763 SC

CARSONITE INTERNATIONAL CORPORATION,

a Nevada corporation; HIGH PERFORMANCE COM-

POSITES, INC., a Nevada corporation; HPC, INC., a

Nevada corporation; and DONALD W. SCHMANSKI,

an individual,

Plaintiffs,

v.

CARSON MANUFACTURING CO., INC.

a California corporation,

Defendants.

CARSONITE INTERNATIONAL CORPORATION,

et al.,

Counterclaimants,

v.

CARSON MANUFACTURING CO., INC,

et al.,

Counterdefendants.

[TRANSCRIPT EXTRACT-PORTIONS OF

EXAMINATION OF O'CONNELL, PRESIDENT

OF CARSON MANUFACTURING CO, RT 638-650. ]

Q. MR. NORTH: Did you know that the word

“Carsonite” was a registered trademark?

38a

A. MR. O'CONNELL: I know that the name “Car-

sonite” is a registered trademark.

Q. When did you first learn of that?

A. Again, it was probably sometime in 1977 but I

can’t speak of the month. My awareness came about

with seeing the name “Carsonite” with the registered

mark after the name.

ne a“ a

Q. Did you realize that a registered trademark con-

stitutes notice to the whole world in a particular field

that someone else should not come in and introduce a

product with a confusingly similar name?

A. I would guess that I would have assumed that.

me Me ne

Q. Therefore, is it a fair conclusion to state that

Carsonite had a registered trademark in the field as we

have discussed for these delineators of composite struc-

ture prior to your involvement in the field of highway

delineation?

A. That’s correct.

Q. I suppose in laymen terms then we could say

that comparing these two parties of Carsonite . . . and

Carson Manufacturing, which one of these two parties

would be the newcomer in the field of highway deline-

ation?

A. In terms of the registered trademark, Carson

Manufacturing would be a newcomer.

m aie He

“AM

Q. Mr. O'Connell, I’m showing you exhibit marked

Plaintiff's Exhibit 97 [the alleged infringing Carson de-

lineator]. Would you state — is it true that there is the

name “Road Marker” on this delineator?

A. That’s correct.

Q. Isn't it also true that the name “Carson” is im-

mediately below the name “Road Marker”?

A. Not the name “Carson,” no, sir. It says “Car-

son Manufacturing Company,” which is the corporate

identity.

Q. That's right. But included in that corporate

identity is the word “Carson”; isn’t that true?

A. Is the name “Carson,” that’s correct. It’s not

a word, it’s a name.

Q. It’s a name. So the name “Carson” then ap-

pears with the name “Road Marker”?

A. Yes, sir. Yes, sir, it does.

ac ok *

Q. You have never heard anyone refer to your

product as a “Carson Road Marker”?

A. I have heard our product called a great many

things.

Q. Did those include the reference “Carson Road

Marker”?

A. I would have to guess that that was one of the

names that they referred to it as.

ck ae *

Aad sale or oN ae enh

40a

Q. The issue we're dealing with here is a very

simple one, Mr. O'Connell. We have a client here, a

party who has a registered trademark.

A. Yes, sir.

Q. And it’s very clear that the trademark says, “for

structural members made of composite.” Now, we've in-

dicated that this structural member, Road Marker, Divi-

sion of Carson Manufacturing, is, indeed, a very product

of that description. Is that not true?

A. I don’t know that that’s been totally ascertain-

ed, but it is a similar product.

Q. Is it made of composite of fiber and resin

and —

A. Yes, it is.

a ae a

Q. Mr. O'Connell, can we agree that there was at

least some level of actual confusion in the marketplace

among people using the road markers representing Car-

son and Carsonite?

A. There may well have been, Mr. North.

eo ee

Q. Has Carson Manufacturing ever received a re-

quest for a delineator product from a purchaser which in

effect was requesting a Carsonite road marker?

A. Yes, sir.

Q. You have received those?

A. Yes, sir.

4la

Q. Did you ever supply any Carson Road Markers

in response to those requests for a Carsonite road marker?

A. Ultimately, yes, sir, we did.

[TRANSCRIPT OF CONCLUDING

JURY COMMENTS]

THE COURT: One question I want to ask you,

what was the dictionary used for? What Word?

THE FORELADY: A couple of words.

THE COURT: What were they?

THE FORELADY: Ultimately, what we were look-

ing for, non-destructive deformation, but we couldn’t find

non-destructive, but we used it for trade secret, which

was very valuable.

THE COURT: And do you find that this type of a

case should be tried to a jury?

JUROR NUMBER SEVEN: Yes.

JUROR NUMBER FIVE: I am not so sure.

THE COURT: Let’s go down the list. Do you

think this type of a case should be tried by a jury?

JUROR NUMBER ONE: I really have no comment,

JUROR NUMBER TWO: Yes.

42a

JUROR NUMBER THREE: I disagree. I don’t

think the lay person has enough knowledge of the laws

of patents. It’s very involved and I thought it was. Yes.

I don’t think it should be.

JUROR NUMBER FOUR; I think it should be, al-

though it was very, very technical.

THE COURT: Even though it’s technical, you think

it should be tried by a jury?

JUROR NUMBER FOUR: Yes.

JUROR NUMBER FIVE: There are more things

than just the technicalities involved and if it were just

technical people judging it, too much would be left out,

but I do think we need a little, perhaps, one or two

technicians on the jury.

THE COURT: Uh-huh.

JUROR NUMBER SIX: I think it should be tried

by a jury.

THE COURT: Jury.

JUROR NUMBER SEVEN: This was a very dif-

ficult case. We found that out today. We have worked

hard.

THE COURT: I know you have.

JUROR NUMBER SEVEN: But it was an educa-

tion as well for all of us.

43a

THE COURT: What do you think, if you had a

patent, would you want it tried before a jury?

JUROR NUMBER THREE: No, honestly.

THE COURT: And the forelady?

THE FORELADY: I think it’s part of the process

and the advantage of having more people. You tend to

look at the truth differently, or look at an item differ-

ently, and you get a different perspective.

THE COURT: Suppose you had a patent. Would

you want it tried before a jury?

THE FORELADY: I think I would.

THE COURT: You would.

THE FORELADY: I think I would.

THE COURT: Okay. Fine.

Well, thank you again and we hope to see you soon.

(Whereupon, the trial was concluded.)

+ TO Were Ba De ie Mie / - ¥ 7.

Be 6 teat To 4 ca va

| SERIAL NUMBER | FILING DATE | FIRST NAMED APPLICANT _[ATTORNEY DOCKET NO.

r _ See =

Vaughn W. North

Univ. of Utah cineecqemenmnindensnetl

2045 Annex ART PAPER

Salt Lake City, Utan 684112 H

Pe Kite

OATE MAILED:

This is & communication {rom the cxaminer in charge of your application. APR 27 1979

COMMISSIONER OF PATENTS ANDO TRADEMARKS

GROUP 350

Sef spentin n an varied ye to m filed on fv Jog Ca)atth section is made final,

—i Pa Tene

A shortened statutory period for response to this action i set to 3 month(s), en dapetoum the date of this letter.

Failure to respond within the period for response will cause the shotdoned. 35 USC. 133

Past FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:

L. of References Cited, Form PTO-892. 2. [) Notice of tnvormal Patent Drawing, PTO-98.

3. [7] Notice of informal Potent Application, Vurm PTO-152. ee eMC 7/0 ea eae

Part tt = SUMMARY OF ACTION

a L= FO are pending in the application.

Of the above, claims ESS Fe a ee en ee 0 Withdrawn from consideration.

2. Docraims feat) have been cancelled,

3. Cocaim VOCE PSAP ck Ps ane S __ ate allowed.

+ [own Po. EF i

5: Hawi —l= IY. boy i . ____ ate objected to.

6. Do ciaims ase subject Lo restr tue oF ebes on requirement.

7. the format drawings fiied on 5 a intent passant 100 GSDAGAEIMS

8. [[] Me drawing correction request filed on _ has been [Japproved. ([) disapproved.

9. []Acknowtedgment is made of the claim for priority under 35 U.S.C. 119. The certified copy has

Codeen received. ()not been received. (C)been fited in parent application, serial no, at ey

10 since this application appears to be in condition for allowance except fur formal matters, prosccution as to the merits is closed in ac:

cordance with the practice under x parte Quayle, 1935 C.D. 11, 453 O.G. 213,

i. a

Claims 1-19 and 21-30 avoid the prior art, and rejections of record.

tif

HH

rt

4

5

as

cS

=

co

[EXTRACTS]

46a

1

ROADWAY/TRAFFIC DELINEATOR

BACKGROUND OF THE INVENTION

1. Field of the Invention

_ This invention relates to roadway markers or guide

posts. More particularly, it is concerned with resilient

posts which permit nondestructive deformation upon

impact by a moving object.

2. Prior Art

Vehicle traffic control requires the use of road signs

and markers as aids in solving the various problems

associated with traffic safety and direction. It has been

found that a useful characteristic for such signs and

markers is that these posts have the ability to withstand

vehicle impact, without requiring subsequent replace-

ment. An attempt has been made to fill this need with

various configurations of posts. However, the structural

design of such posts has involved the consideration of

two opposing structural features, i.e. the elasticity re-

quired during dynamic conditions to permit the post to

nondestructively bend with vehicle impact and the longi-

tudinal rigidity required during static conditions to with-

stand forces resulting as the post is driven into a hard

surface.

The elasticity is necessary in view of frequent high

speeds associated with impacts between a moving ve-

hicle and stationary post. In such cases, if the post could

not bend it would likely shear off, and would have to be

replaced. Mere bendability, however, is not sufficient,

since each time a post was bent it would have to be

47a

straightened before it could again be functional. This

could involve high maintenance costs. Ideally, a post

should also have sufficient elasticity that it will auto-

matically assume its proper upright configuration after

dissipation of any impact forces.

While elasticity is desirable, the elasticity may pre-

sent a practical problem when installation of the post is

considered. In the past, when deformable plastics have

been used as post material, installation has frequently re-

quired predrilling a hole or insertion of some support

receptacle into the ground, with the subsequent posi-

tioning of the plastic post into the hole or receptacle.

These preliminary steps were required because such

previously known elastic posts would not withstand a

buckling force applied during attempts to drive the

posts into hard surfaces. Consequently, the same elastic

properties which permitted the nondestructive deform-

ation upon impact caused the buckling of a post sub-

jected to a driving force along its axis.

Attempts have been made to incorporate the dual

requirements of elasticity and rigidity by utilizing a

spring within an otherwise rigid post, and with the rigid

parts of the post being secured on opposite ends of the

spring. Installation was by compressing the spring and

then pounding along the now rigid longitudinal axis.

After installation, the deformable character of the post

was accomplished by the transverse elastic property of

the included spring.

This configuration, however, has several apparent

48a

disadvantages. The rigid portion of the structure has

customarily been made of strong materials which may

dent or otherwise damage the impacting vehicle. Fur-

thermore, the use of such rigid materials and springs

and the assembly requirements result in exclusive costs

for the posts.

U.S. Pat. No. 1,875,720 discloses a second approach

to the problem, of providing elasticity in a post that can

be driven. In this patent a post is formed by a bundle of

flexible rods that are clamped together to obtain the

desired rigid property required during the static instal-

lation stage of the post. Deformation of the post during

dynamic conditions is permitted by deflection of the

various flexible rods away from the central axis of the

post structure. Here again, however, economic factors

appear to have impeded utilization of such structure

despite the growing need for such a post.

OBJECTS AND SUMMARY OF THE

INVENTION

It is therefore an object of the present invention to

provide a deformable post configuration having both

longitudinal rigidity and bending elasticity to facilitate

driving emplacement and subsequent impact without de-

structive deformation.

It is a further object of the present invention to ob-

tain this dual character by utilization of a geometrical

configuration adapted to minimize bending stress while

at the same time retaining the high modulus of elasticity

necessary to preserve longitudinal rigidity.

49a

An additional object of the present invention is to

accomplish the aforementioned dual character by means

of reinforcing a web structure with a suitable arrange-

ment of fibers.

A still further object of this invention is to develop

the desired Jal character of elasticity and rigidity by

incorporating reinforcing rib structure longitudinally

along the post structure.

It is yet another object of the present invention to

provide a post structure having transverse flexibility to

\ permit lateral contortion and/or deformation to a mini-

mal thickness and thereby reduce moment of inertia and

bending stress.

It is also an object of this invention to provide means

for protecting attached marker materials from impact

and weather degradation.

These and other objects of the present invention are

realized in a post configuration (hereinafter referred to

as a delineator) wherein the delineator comprises an

elongated web and associated reinforcing structure. The

web portion of the delineator provides the flexible prop-

erties which permit bending of the delineator in response

to a bending impact force. The reinforcing structure is

necessary to develop a high modulus of elasticity along

the longitudinal axis of the delineator. Such reinforcing

structure is implemented by specific utilization of fiber

orientation within the web structure or by configuring

the structure geometrically to provide ribs having the de-

sired high modulus of elasticity which will complement

5la

having sufficient inner surface conformity with said

delineator to restrain bending movement of said portion

when said driving load is applied.

13, A delineator as defined in claim 12, wherein

said casing further comprises an impactable cap for re-

ceiving said driving force and for retaining said casing

at an upper portion of said delineator.

17. A delineator as defined in claim 1, wherein said

web structure is concavo-convex at the forward and rear-

ward faces thereof.

18. A delineator as defined in claim 17, further

comprising longitudinal rib structure at side edges of said

web structure, said rib structure adding additional lon-

gitudinal rigidity to withstand said buckling loads occur-

ring, during installation of said delineator.

20. A delineator including:

a web structure of unibody construction having a

tapered base to facilitate insertion thereof into a

hard surface and being constructed of a material

composition substantially uniform along the

length of said delineator which develops a modu-

lus of elasticity (E) sufficiently high, when taken

in combination with the moment of inertia (1) of

said web structure, to develop a maximum buck-

ling load (Px) in accordance with a delineator

length parameter (L) as defined by the relation

Py == (** El)/L* wherein the resulting buckling

load (Px) is capable of withstanding an impact

52a

force to be applied near the top of a longitudinal

* axis of said delineator during static installation

conditions at said hard surface;

said product of El being variable in response to de-

formation of said delineator by a lateral impact

force which modifies said geometic structure to

decrease the moment of inertia (1) and develop

a delineator bending radius (R) as defined by the

relationship R » El/M, wherein M is the bend-

ing moment of said delineator, said bending

radius being sufficiently low to permit passage of

a vehicle over said delineator, said material com-

position having sufficient elasticity to restore to its

upright orientation upon dissipation of said im-

pact force;

said geometric structure comprising a nonplanar im-

pacting surface of said web structure which re-

sponds with angular contortion upon occurrence

of said impact, thereby decreasing the moment of

inertia of said delineator during bending motion,

reducing said El product from a longitudinal

rigid structure to a flexible structure during de-

formation,

24. A delineator as defined in claim 20, wherein the

web structure comprises a concavo-convex structure for

the front and backside of said delineator.

25. A delineator as defined in claim 24, wherein

longitudinal ribs extend from sides of said concavo-con-

vex web structure.