# Appendix — General Radio Co. v. Superior Electric Co. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385601_1481%3A3 ## Record - **Collection:** Supreme Court brief - **Document type:** Appendix - **Published:** January 1, 1964 - **Citation:** 376 U.S. 938 ## Text * Me: APPENDIX A _ Opinion of February 12, 1960. (in part) - (188 F. Supp. 879.) GENERAL RADIO COMPANY, a Corporation, Plaintiff, ° Vv. ROBERT C. WATSON, Commissioner of Patents. | Defendant. | . Civ. A. No. 4459-56. _ ; United States District Court District of Columbia. ‘ Feb. 12, 1960. Robert. H. Rines, Boston, Mass., and Nelson H. aie, ‘Washington, D. c., for plaintiff. © C.-W. Moore, United States Patent Office, , Washington, D. C., for defendant. | MORRIS, District Judge. This is an action brought under 35 U.S.C. € 145 by the plaintiff, as the assignee of an application for patent by ~ orie of its electrical engineers, Gilbert .S. Smiley, tor = ‘Method of and Apparatus for Improving the Stability of ; | Continuously ‘Adjustable Transformers and the Like,” Serial No. 221,878, filed April 19, 1951, seeking to have the Court authorize the issuance to it of a patent. After the final re- jection by the Patent Office examiner on February 15, 1955, of claims f5 and 23 through 33, the applicant filed on May 10, 1955, a propesed amendment substituting claim 34 for > ; "ag: * all ‘such rejected claifns. On May 17, 1955, the examiner. refused allowance of clain 34, but entered it only for pur- a poses of an ‘appeal. The Board of. Appeals (hereinafter re- ferred to as the Board) on June 18, 1956, affirmed the ex- ’ aminer’s. refusal of claim 34, the single claim before this Court, and which reads as follows: . “34. A variable-impedance auto-transformer hav- ing, in corfibination. a copper-wire single-layer sub- ' stantially toroidal winding wouhd in. successively dis- posed turns. about an annular core to provide along the exterior of the winding a track extending across - the successively disposed turns, there’ being bonded . Silver and nickel,-means for connecting the. winding to the turns along the track coatings selected from the group consisting of gold, platinum, palladium, rhodium, to a source of voltage, the winding being adapted. to be’ connected also with a load circuit to exchange cur- '. rent with the load circuit at values not greater than a predetermined safe value above which the winding ‘ would become damaged by such. exchange of current, and a carboniferous or graphitic resistive brush actua- “ble along the tratk in contact. with the coatings and ? adapted for connection with the load circuit, the widti. . of the brush being greater than the distance between ‘two successive turns of the winding in order that the brush may establish. contact with the coating. bonded to- a turn before, breaking contact with the coating bonded to the adjacently disposed turn with which it last con- tacted. thereby to prevent interruption of the current ‘in the load circuit into the brush: means for connecting a point of the winding and the brush to the load cir- cuit, and the brush being rotatable about the Axis of the toroidal winding along the said track in engage- meént with the coatings of the successively disposeth . turns, the coatings maintaining the resistance between . the brush and the track, during passage of the current wt of the predetermined safe value between them, sub-' stantially constants . £3 * The invention claimed herein consists of plating gold, plati- num, ‘palladium. rhodium, silver and nickel to the turns along the brusis track of the device disclosed in application No. 2,009,013. of- Karplus, et al., dated July 23, 1935 (of which plaintiff is also assignee, and which device has been, manufactured and sold bv it ‘under the trade name of Variac, and by its. licensees in this couptry arid others under differ- ing trade names. for many vears). and of{the discovery of the reason for the failure of the Karplus device, stated in . the applicatien as follows: 6 * “It has been found, however. that when the: ap- paratus is inj continuous use. particularly at elevated and in regions where industrial vapors rOsive influences are esol the copper track detrimenta xidizes, contaminates and cor- - rodes. markedly and rapidly increasing. and thus ren- dering unstable, the resistance of the brush-to-copper- track interface. With long periods of continuous use, . indeed, a progressively destructive cycle is often initi- ‘ated in which the increasing oxidation, contamination and cqrrosion*of the track during ‘the use of the in- strument increases the-brush-to-track resistance which,’ in turn, further increases the. temperature at the con- tact between the brush and’ track. which still further " increases the oxidation, coritamination and corrosion, until failuré or improper operation of the instrument results from the high temperature.” ; Q The original autotransformer, .on which Karplus was issued a patent, operated satisfactorily when used almost“ exclusively, in laboratories, where the use was intermittent and the atmosphere clean. During and after World War II the transformer was. employed more arid more in in- dustrial’ use, where the use was continuous and the _at- mosphere was contaminated. -Then complaints became more and more frequent because the autotransformers were — _ being burned out.- Many methods were employed to elim-. . _ Ad inate or reduce. these teihaiae: The customers were in- © structed to keep the brush tracks cleaned by removing carbon particles and washing with carbon tetrochloride, the ‘brushes were redesigned. the heat radiators were re- “designed, in 1946 a bervllium-copper brush spring was em- ploved to obtain a uniform spring pressure on the brush, which lost tension ‘under the “hot spot” température in the region of the brush. and which was substituted in. 1949. with a stainless steel brush spring. efforts were made to cool the auto-transformer by blowing air .on it, using a blower and a fan, and by oil cooling pigtails, or conductors, - were emploved to carry.the current from the block con- taining the ., carborf and to help carry the heat out of the block. All ‘these efforts, it was testified. delaved the ‘even- ‘tual burn-out gf the tracks,.but were not successful in. prevengjng their ultimate destruction by such burn-out. In order to save face with its customers, plaintiff eventually dicated by the need of the’ customer. Mr. Smiley. whose _ supplied considerably aa than the size in- assignee plaintiff is respecting the application eran inv olved, testified that in | 1948 (Tr. 86): cs © “* * * we began to sugpect that there was an action . . occurring that we hadn’t spec able to exylain by ordi- nary—these. techniques that we said, the track got\ ° dirty from the ‘brush, goi dirtv from contamination— but there seemed to be something more, and at that time I began to suspect that there was a formation of a high-temperature oxide, the cycle being initiated by some chance or haphazard occurrence, but once that cvcle had been initiated it was a destructive, a vicious circle of oxide forming, poor contact, more heat, more | oxide, and this was the cause of ‘burnout. “So, the first thing we thought was ito keep air away, from the area around ihe brush. and the track. ‘At that time the Dow Corning: Company announced a high-temperature silicone grease, and we tried it, and 4), AS ee a ‘it seemed to help; it ‘wasn’t perfect, but it certainly delaved burnout, and so we recommended it to our customers who were having burnout trouble.” . In addition to the above efforts to correct the apparent in- herent destructive quality of the apparatus, attempted im- — provements in the iron core. around which the copperwire forming the brush track was wound, were madé in an ef- - fort to improve the thermoconductivity so as to lower the temperature of the “hot spot” and thereby reduce the total amount of heat generated in the transformer. This latter ffori also-failed to result in a solution of the problem. At this stage of dev elopments, Mr.. seniley testified ( Tr. 92- * 94): ed “It occurred -to me that since we—no matter what we tried to do we were getting this progressive kigh- | temperature oxidation of the track. and this was a ‘ phenomena associated with copper, that if we could use some other. metal than copper. it might be possible to find a metal that would work. And,, naturally. I think anybody who is familiar witn metals knows that such materials as gold and platinum and silver might be expected to. work. However, they are extremely expensive materials. This is a commercial’ product. You wouldn’t expect to wind a transformer like this’ - with gold or platinum or even silver wire. and be. able with copper w ire. to sell it for the same price that vou sell one’ wound * 7 “I finally thought if possibly [sic] we could apply _ some metal other’than copper to the brush. track. and “ brush track only—that portion of the wire which was bared for contact wit}: the brush—it might be possible to prevent this destructive evcle. ; - oe ee - * * we * = Wohad thought that the brown copper * oxide. the type that forms or a penny—an old penny— A6 was-a good thing because it interposed at this point where we want the resistance—it interposed a fairly stable uniform resistance. In fact. when we would - manufacture these the insulation and part of the cop- per was [sic] removed by a grinding operation.. When thev were Lright and shiny thev verv often would show ‘on our tests too low a registance, and we have a test that shows that at the brush- -to-copper intérface. - “Our standard. procedure then was ‘to put the transformer. aside a week or two—sometimes a month. The track would oxidize with this normal, low-tem- perature oxide, and they would pass the test and we would ship them out.” ° : There can be no question but that the ee discov- ered by Mr. Smiley. emploved by plaintiff, and described in the application constitutes -a marked improvement over the original patented dévice. especially when employed in industrial plants. and that it has completely overcome the failure difficulties inherent in the original device for such use. Depositions of a number of plaintiff's customers were to this effect. as was testimony of employees and an officer of plaintiff. Plaintiff's competitor licensees in this:country and elsewhere have adopted and employed the method in their products, and plaintiff has been issued a British pat- ent thereon. Indeed the Board did not deny the commercial acceptance and the obvious success of the method discov- ered by Mr. Smiley, and affirmed.that “the problem of ‘transformer failure under certain adverse conditions or’ ‘operation was an illusive matter for some period of time,” and that the “‘problem.of transformer failure was not found until an extensive research program was conducted.” The . Board, however, thought the problem recognized and solved by plaintiff Was basically the same as the problem recog- nized and solved by Sedgfield, British Patent No. 620. 284, dated March 22, 1949, relating to “wire-wound potentiom- A7 eters” and having “for its object the provision of means for preventing the development of contact irregularities due to corrosion ” ee of the contacting portions of such devices. This object\-is accomplished in the patent by “plating with a metal hich is both corrosion—or tarnish- resistant and hard OO fed to give a good wearing surface to the ‘ ‘winding ated resistance wire whose insulation is removed from adjacent turns to form a track for the wiper” of such potentiometer. The wire of the winding is disclosed as “resistance wire of any desired type.” On July 17. 1956, plaintiff filed with the Board a mo- ~ tion to remand to the primary examiner and motion for reconsideration or rehearing. in which it was stated_it had arranged by sending one of its attorneys to Europe to ob- ‘ tain an ‘affidavit of Mr. Robert Hayes Nisbet, named _in the British patent cited as a’ reference, which affidavit would . be transmitted to the Board promptly upon its receipt. On October 22, 1956, the Board refused the request to remand because its rule that affidavits submitted after appeal will not be admitted without a showing of good and sufficient ‘reasons why they were not copied presented had not been satisfied. At the trial in’ the instant proceédings plaintiff intro- duced into evidence the deposition of the British patentee, Colonel Hugh Sedgfield, and that of his attorney who pre- pared the patent. Mr. Robert Nisbet, The Solicitor of the. Patent Office was also present at the taking of such — ‘ sitions and cross- -examined Colonel Sedgfield. The plaintiff has set forth in an appendix to its brief numerous dissimilarities in the devices involved in its aw plication and in thé Sedgfield patent. From this list of dissimilarities, it is readily discernible - that. while the plating of the-contact tracks of each device ? AS one resolved the difficulty in -each. and such plating in each instance was done to make the contact resistance (between * resistive: ‘carbon brush and copper track in-plaintiffs auto- ‘transformer and between nonresistive metal wiper and metal track in the: Sedgfield potentiometer) constant. there Was quite a difference in the underlying’ problem in each which made such plating and constant resistance necessary. Plaintiff's need for a constant resistance was to prevent high-temperature copper oxide~ contamination and corro- . sion from causing a destructive burn-out cycle which rapidly increased the resistance between brush and track by gen- erating more high temperature, which generated -further - _ high temperature, high-resistance copper oxide, which gen- erated mcre heat, et cetera. until burnout resulted. The need for a constant resistance in the Sedgfield device was to prevent low-temperature corrosion or tarnish or the like from causing “contact irregularities” or “bumps” which caused its delicate wire wiper, while moving back and forth along the track, to “chatter,” and make erratic elec- trical contact, and thus to provide erratic electric sig- nals for correcting the flight of aircraft. The low-tempera- - ture oxide. which was detrimental to and’ the problem respecting the Sedgfield device, is beneficial in plaintiff's - autotransformer, which. needs a bad or resistive contact of finite value to prevent short- -circuiting. Only _one of the metals: rhodium. found to be effective for plating the . '- Sedgfield devicé is also effective for plating piaintiff’s’ autotransformer, and the unqualified expert testimony‘ was that Sedgfield’s teaching that rhodium would not tarnish. or corrode at low- or room-temperature, while operated under controlled conditions. does not teach that rhodium will not corrode or oxidize under the high temperature created by the carb6n-to-copper contact of plaintiff's auto- transformer while operated in industrial and other uncon- ° trolled areas. I am of opinion that plaintiff's method of Q re as etn dine _ AS solution. as.set forth in its application, a very important part of which was the discovery ofthe problem inherent _-in the Karplus autotransformer when employed in industry _ as opposed to a laboratory: is patentable over the cited references of Karplus, et al., Shoemaker and Sedgfield. ' ‘The Patent Office Solicitor introduced the additional reference of’ the prior art as taught by statements con- tained in the Hunt textbook. Electrical Contacts. pub- . lished\in May, 1946. Out of context_and-at first blush, these statements would appear to. ‘teach that - plaintiff's problem and solution” would have been obvious to one skilled in the art. However. as explained by Mr. Smiley on cross-examination by the Solicitor of the Patent Office, and on redirect ‘examination, all ‘the statements relate to low-temperature.- metal-to-metal contacts, such as the prob- lems involved in the Sedgfield patent. At the: trial. the © Solicitor read vet another statement from Hunt dealing with rhodium (the only metal which works satisfactory in both plaintiff's application and the Sedgfield patent): “Rhodium is even more inert chemically to most reagents than platinum. but it may tarnish if heated | to high temperatures in air.” Hunt does not deal with autotransformers, copper-to-car-* bon resistive contacts, hor does Hunt disclose the cause of the burn-out difficulties experienced in the autotrans- ‘formers. If Mr. Smiley had followed Hunt’s teachings that ‘rhodium tarnishes “if heated to ayer temperatures in air,” that platinum 3 even less “inert” than rhodium, and that silver can only be used “where as is not frequent,” he may never have tried these metals for the solution of the ‘very high-temperature’ burn-out problem. With reference to the Patent Office Solicitor’s char- acterization of -Mr. Smiley’s testimony as self-serving. the a ALO W . 1s” I Court was impressed with both the integrity and ability of the witness. If the Patent Office wishes to discredit expert or lay testimony, the obvious method would be to ‘provide witnesses for that purpose. _ | - ¢. For the reasons stated. I am of the opinion that there is __ lacking a rational. basis for the finding by the Board, and *. the Commissioner of Patents will ‘be authorized to issue ~ to plaintiff a patent for the invention as specified. in claim Counsel will prepare an seis order fo carry into effect this decision. “7 “ee an) All APPENDIX B ie . UNITED STATES COURT OF APPEALS For THE Tuirp Circuit heieieideesaecis. (321 F.2d 857). _* No, 14.077 ©’, =~ “— GENERAL RADIO COMPANY, Defendant, — Vv. THE SUPERIOR ELECTRIC COMPANY, Plaintiff, Appellee. APPEAL FROM THE-U NITED STATES District COURT FOR THE District oF NEW JERSEY a Argued January 22, 1963 é 3 : Before: Stavey and Smitn, Circuit Judges, and _ Suaw, District Judge. Opinion of the Court (Filed August 23, 1963) -Sautu. Circuit Judge. : The plaintiff. having been notified that an article of its’ manufacture infringed-u patent owned by the defend- ant. brought this action under the Declaratory Judgment Act. 28 U.S.C. $$ 220] and 2202. seeking an adjudication, | of the controversy. . The defendant id an answer and: counterclaim charging the plaintiff with patent infringe- ment and unfair competition. The’ piaintiff filed a reply < pn Al2 in which it pleaded the usual defenses. ‘The present appeal - is from a judgment in favor of the plaintiff‘on the issues of patent validity and unfair conpetition.' , bis PATENT VALIDITY The deferdant js adrmttedly the owner of Patent No. 2,949,592, which issued on the application of one Gilbert Smiley. The patent covers an-article of manufacture therein described as an “adjustable autotransformer” which, like the ordinary transformer, is used to control cuits. The uiiiaiiiaiinns is - placed a across: >the supply | circuit and is so disposed between it and the load circuit as to permit the adjustment of current and voltage, either upwardly or downwardly, to the requirements of the load circuit.- It differs from the ordinary transformer in that one of the windin,’s is connected in series with the other. thereby forming the equivalent of a single winding. The patent contains a single claim which describes the alleged invention as follows: © “A variabie-impedance suto-transformer . having, in combination, a copper-wire single-layer substan- tially toroidal winding wound in successively disposed | “ turns about an annular core to provide along the ex- ‘ terior of the winding. a track extending across thé successively disposed turns, there being bonded to the turns along the track coatings selected from the group _ consisting of gold, platinum. palladium, rhodium, sil- rer and. nickel, means for connecting the winding to a source of voltage, the winding being adapted .o be connected also with a load cir¢uit to exchange current with the load cifcuit at + ‘alues not greater than a pre- 1. The trial court's findings of fact. and conclusions of law are set forth. in a comprehensive and well-reasoned opinion re- ported in 203 F. Supp., at page 864. - Al3 — determined safe value above which the winding would become damaged by such exchange of current, and a carboniferous or graphitic resistive brush actuable along the track*in contact with the coatings and. adapted for connection with the load circuit, the width of the brush being greater than the distance between two successive turns of the winding in order that the brush’ may establish contact with the coating bonded to a turn before breaking contact with the coating bonded to the adjacently disposed tur”. with which it last.contacted, thereby to prevent interruption of the current in the load circuit into the brush; means for connecting a point of the winding and the brush to the load circuit, and the brush being rotatable about the axis of the toroidal winding along the said track - in engagement with the coatings “of the successively disposed turns; the coatings maintaining the resistance between the brush and fhe’ track, during passage of the current of the predetermined safe value between them, substantially constant.” (Emphasis, added). The alleged invention is essentially an iniprovement on the invention described in Patent ‘No. 209.013, granted to Eduard Karplus and William Tuttle, to which specific reference is made in the patent in suit. This patent had expired at the time this action was*brought. The alleged invention is comprised of the -following structural elements: (a) /an impedance or choke coi! con- sisting of insulated copper wire torcidally , wound in stc- cessively disposed*turns’ about an annular core or iron or laminated steel, the adjacent . turns being sufficiently spaced to prevent contact with each other: tb) a circum- ferential commutator track produced by removing thé in-, sulation from the adjacent turns of the coil ‘so as te permit brush-to-track contact at successive radial positions around the track: (c) a coating made of an alloy of anv one of several oxidation- resistant metals such as silver, gold. * Al4 platinum, rhodium and nickel, bonded to the exposed turns ‘of the track; (di a “carbon brush,”* wider than the space between the adjacent turns, rotati.bly mounted on an axial _ shaft and so disposed in relation to the commutator track~ _@s to permit. brush-to- track contact at successive rate positions. 125 6 ° , " The claim ‘to patentable iuvension necessarily rests - as the defendant concedes, on the utilization of an oxida- ticn-resistant coating on the exposed turns of the winding as a means to prevent the formation of -cupric. oxide. which adversely affects the stability of=brush-to-track resistance — essential to the efficient operation of the autotransformer. Except for this’ feature. the patent in suit covers nothing © ‘more than an assemblage of structural elements, fully de- - seribed in the patent to Karplus ahd William, in an auto- transformer in which they perform no functions different from those theretofore performed in earlier devices. The patent in suit must therefore be scrutinized “with a ware proportioned to the difficulty and improbability of finding - invention” in such an assemblage. A. < P.-Tea Company v. Supermarket Corp. 340 US. 147 ( 1950)., The claim to invention must be appraised’ here in the light of the prior art.considered 1n_ ifs entirety. Ibid. . . The British patent to Sedgfield. issued on March. 22. * 1949. more than two vears prior to the application for the patent in suit, relates t6 an improved potentiometer. This is an instrument for measuring galvanometrical!v electro- motive force. thé force which causes the movement of cur- 2° The -carbon brush.” known in the art long prior to the patent in suit. 1% made of a cornposition in which carbon, in one or another of its allotropic fora:s, ts a constituent. The “carbon brush” is employed in autotransform¢rs because of its: low .re- sistance to the flow of useable current and its high resistance to stress resulting from short circuit voltage s Al5 _ rent through a condactor. While the potentiometer differs ‘ from’the autotransformer: in function and operation. it is comprised of structural elements:similar to those of the autotransformer, to. wit, (a) an impedance ‘coil of low resistance wire made of an alloy of nickel, platinum, .gold or silver, known to be resistant to oxidation; (b) a com- mutator track produced by removing the insulation from the adjacent turns of the coil so as to permit wiper-to- track contact; (c) @ “wire wiper,” known in the art, made _of wire of suitable conductivity and so disposed with rela- | tion to the track as to permit contact. It is essential to the operation of the instrument that the wiper-to-track resist- “ance be stabilized at a low level. It was apparently known prior to Sedgfield that the sensitivity of the potentiometer. and consequently its ac- curacy, “was adversely affected by the formation of tarnish on the commutator track." Sedgfield discovered. and ‘recommended that this condition could be _prevented” by electroplating the exposed turns of the impedance coil with an alloy of rhodium, an element of the ‘platinum group. The significance of his patent lies in its disclosure that - - metals susceptibie to tarnish formation. when exposed to deleterious atmospheric conditions, could be protected : against -such formation by coating them with another metal resistant to such conditions. It would have been: obvious to a skilled mechanic, having a knowledge of the disclosure and a basic knowledge of the properties ‘of. metals, that a .copper surface could. be similarly protected against oxidation 6 the application of a coatifig of any one of several suitable metats. 3. The noble metals such as gad, silver, etc., although highly resistant to oxidation, are susceptible to the formation of tarnish, Da thin film of the metallic sulfide, when exposed to certain, at- masapeert ie conditions. . heey ot Ale . . ‘ F ty A . bi P ; Ati apposite reference is Hunt, “Electrical Contacts,” a textbook published in M: ty of 1946, from which the fol-~ lowing. quotations were t taken: ; ° : / ‘ o ik : P dl “Copper, . . . Cannot be “tegarded as suitable material{s|] for contacts ‘> applications where a flow contact resistance is required. Even at room tempera- ture i @u‘icient!y thick im forms on copper in a few hours 10. inerease. the comitact resistance mony times as eompared with-that ohtanéd with chemicaliv eietn contacts. (p. 17). ‘ “Him formationGwill causd increased contact re- sistance, and can lead toa tictous spiral of increasing . temperature rise and increasing film formation. In this connection therefore the relative tendency of each - material to form owvile, satphide or other films under . . ¥arving conditions cui be appreciated. (n, 75 “Corner. which is widetv used. has the advantage of pessessing high thermal conductivity and high spe- cific heat. but has serio. s limitations in another re- Cd spect which make it unsuitable for contactor contacts | as conditions increase in seferity. Tt is'Tiable to severe over-heating owing’ to the formation of a -high-resist- ance oxide film, a vicious ctrele. being set up as the " te perature rises, causing further oxidation and stil! greater rise of temperature. Such overheating leads to increased electrical wear and to wekling-of .the contacts. Eren on light duties, howerer, it will be found that silrer shows a considerabig acrantagg orer copper, particulamewhere operatien is not ‘traboent, and. the long idle periods give rise to films of keopper oxide. (p. 50). ; nae “Overheating of the contacts can be prevented almost entirely by. the use of fine silver. The usual ‘procedure is to insert 2 fectng of stirer, of the ofder = one-sixteenth inch in thickness. into the ae aad con- vt by’ silver brazing. the sie of facing depending a the area over which contact is made.” (p,.51): (Emphasis added). > deen “8 4 Att : bets Hunt also teaches that the copper contact may be faced or... coated also with either platinum or rhodium, which are highly resistant to both oxidation and tarnish; in fact,, platinum is immune to oxidation and rhodium oxidizes only at ssp high temperatures: Ree also Wise, “Electrical Contags.’ i ‘When the Hunt disclosures -are considered with refer- .. ence to’ the common knowledge of the art, their relevant _ significance becomes apparent. It was known that’in the operation of the autotransformer the. brush-to-track re-_ Sistance produced heat. It was also known that when ex- . -posed to atmospheric ‘conditions and under . moderate temperatures, copper is susceptible to the formation of cuprous oxide, a- low-resistance oxide which increased the brush-to-track resistance. It wag likewise knowr that _. when exposed to atmospheri ic comfitions': ‘and under higher temperatures, -cuprous , 03 idee although comparatively stable. was conv erted to Ssapric oxide: a high- resistance ox- ide which’ fa rther increased the brush-to-track resistance. This phénomenon\ was recognized by Hunt and Wise. who taught that the formation of copper oxide on the contact ‘surface. arid the-resulting operational difficulties; could be prevented ‘by coating the. copper with silver. platinum or rhodiumg metals known to be resistant to oxidation. The trial court found, on the basis of the references hereinabove discussed. and other evidence, that the. subject matter of the patent in suit would have been obvious: at’ the time o1 the alleged invention to a person possessed of the ordinary knowledge and skill-of the art, and was ° therefore not patentable. 35 U.S.C. $ 103. This finding, with which we are in full accord,’is challenged by the- defendant as clearly erroneous. — ' The alleged invention ‘of the patent in suit was. di- rected to the solution of a. probleri explained by Smiley’ as follows: mis “The transformer is initially designed to prov ide. — a: satisfactory brush-to-track resistance within resistance limits. It has been found. however. that when the apparatus is in continuous use, particularly at elevated temperatures and in regions where indus- trial vapors or other corrosive influences are present. the copper track ‘detrimen‘all: oxidizes, contaminates - and corrodes, markedly and rapidly increasing, cnd " thus rendering unstable. the resistance of the brush- to-copper track interface. With ‘long periods of con- tinuous use. indeed. a progressively destructire cucle is often ‘initiated in which the incredsing oxidation. contamination and corrosion of the track during the - use of the instrument increases the. brush-to-track resistance, which, in turn, further increases the tem, perature at the contact between the brush’ and track which still further increase the oxidatton, contamina- tion and corrosion, until failure or improper Operation of the instrument results. from the high temperature.’ OQ. (Emphasis added. Ne This was substantialv the explanation offered by Hunt. The only difference is _ found: in the- descriptive language emploved. The defendant argues that Smiley was the first to. discover that the operational: difficulties inherent in the ° autotransformer were attribuiable to the formation of cupric oxide, identified by Hunt as “high-resistance oxide.” and not fo other suspected causes. The argument is refuted V a. substantial | evidence to the contrary and fails to accord the Hunt and Wise disclosures their full,gnd proper significance. - However. assuming that Smiley. ¥ was the first - to discover the ‘cause of the operational ‘difficulties, the - present: claim to_ patentable” “invention is not . thereby enhanced. ~ The defendant concedes’ (iat prior to the application for the patent: it. Suit it was common shel te that the A19 ‘formation of low-resistance oxide could be prevented by - applying a coating of silver. or-other suitable metal. to ‘the commutator track. However. the defendant argues that Smilev’s invention is distinguishable ‘in that therein the silver coating is utilized a¥ a means to prevent the forma- tion of high-resistance. oxide. ‘This is a hypercritical dis- . tinction without a difference. are ; There is no feature which distinguishes the coated - track defined by Smiley from that desgribed by both Hunt and Wise except the function ascribed to it by: the defend- ant. This functional feature neither enhances the claim’ to ‘patentable invention nor detracts from the pertinency of the prior art. General Electric Co. v. Jewel Co., 326 US. 242 (1945): DeForest Radio Co. v. Generali Electric Co.. 283 US: 664 (1931): Risdon Loc omotir e Works v. Medart, 158 U.S..68 (1895): American ‘Sign & Indicator Corp. v. Schulenburg, 267 F.2d 388 (7th Cir. 1959, cert. den. 361 U.S. 886 (1959); Application of Lawson, 228 F.2d 249 (C.C.P.A. 1955). It has been recognized since Knapp v. Morss, 150 U.S. 221, decided in, 1893, ‘that patentable in- vention consists in the embodiment of new and useful. ‘means to-achieve.a desirec result anc not in the functions attributed to the means. Where. as here, the allegedly nove] feature of thé claimed” invention is a structural ‘ele- ment substantially similar to one of the prior art, even though iis function may be different. the similarit® is suffi- cient to negative patentability. [bid. . Once it was known that the copper track could be pro ° tected against oxidation by the application of.a coating of silver: or other suitable metal, it would have béen obvious to the skilled artisan that the same coating would prevent the formation of both the low-resistance and high-resist- ance oxides. “THis ‘is unmistakabiy the teaching of Hunt, although the defendant disputes it. We are of the view 0) a -_— A20 that Smiley contributed nothing to the advance of the art. Assuming that he did. his contribution consjsted of nothing _ more than the application of known means to an analogous use in the same art. This is not invention even though the .- use was not theretofore contemplated. . General Electric Co. v. Jewel Co., supra; Cuno Corp. v. Automatic Devices ‘Corp., 314 U.S. 84 (1941): Vandenburgh ,v, Truscon Co.., 261 U.S. 6 (1923): B. & M. Corp. v. Koolvent Aluminum Awning Corp., 257 F.2d 264 (7th Cir. 1958): United. Mat- tress Mach, Co. v. Handy Button Mach. Co., 207 F.2d 1 (3rd Cir. 1953); R. G. Le Tourneau, Inc. v. Gar Wood Industries, 151 F.2d 432 (9th Cir. 1945), cert. den. 327 U.S. 782 (1945). Such applications are regarded as in- volving nothing more than expected mechanical skill. Ibid. The trial court found the patent invalid also on the ground thai the alleged invention was known and used by others long prior to Smiley's application for the patent in suit, hich was filed in April of. 1951. 35 U.S.C. § 102. . It found that one Alfred B. Nelson. a former emplovee of the ‘defendant: and president of the plaintiff since 1946. first, conceived the alleged invention: second. reduced it to practice in 1941: and third, thereafter “proceeded to silverplate its commutator tracks, and to sell these plated : .. transformers to customers: ... .” The evidence upon which these findings were predicated is fully summarized ‘in the opinion of the court. 203 F. Supp.. at pages 872-4. Any further summarization would be unnecessarily repetitious. cae eB / The defendant chaljenges the pertinent. findings as clearly erroneous. It.is argued that there is no evidence “of which defendant js aware that in any way supports | these facts. except for innuendos: to be drawn from several oral, unsupported and uncorroborated statements. of Mr. Nelson, given over.twenty years after the supposed event . dees : and directly contradictory of the documentary evidence _and the conduct of the plaintiff.” We concede that if the findings rested solely on the testimony of Nelson. there would be a serious question as°to the sufficiency of the evidence. Smith v. Hall, 201 U.S. 216, 222 (1937); Ander- son Company v.. Trico Products Corporation, 267 F.2d 700 (2d Cir. 1959). However, we find upon examination of the entire record’ that the findings are supported by sub- stantial evidence. While it appears that Nelson was the principal witness, it also appears that his testimony was amply corroborated by testimonial affd documentary evi- dence which the trial court apparently found to be credible. ‘The findings of fact must therefore be accepted by this Court. Fed. Rules Civ. Proc., Rule 52a), 28 US.C.A.: Jiffu Enterprises, Inc. v. Sears, Roebuck & Co., 306 F.2d 240 (3rd Cir. 1962):.cert. den. 371 U.S. 922 (1962); R. M. : Palmer Company v. Luden’s, Inc., 236 F.2d 496 (3rd Cir. : 1956 ). UNFAIR COMPETITION The parties to this litigation are admittedly competi- tors-engaged in the manufacture and sale of autotrans- formers. The product of.the defendant is sold under the | register ed trade name “V ARIAC.” and that of the plaintiff is sold under the registered trade name “POWERSTAT.” However, the clatm of unfair competition does not involve trade name infringement. . 7 The autotransformer of the defendant is enclosed in a six-sided steel heusing of simple design. which the defendant here asserts has acquired a secondary meaning. . The. structure is. adequately and clearly described in the opinion of the court below. The ciaim for. unfair compe- titien is predicated salely on the charge that the. plaintiff's ~ autotransformer is enclosed in‘ a housing which, in Style is ! =A” aid general appearance, is confusingly similar to the defendant's housing. There is'1o0 evidence that the plaintiff either misrepresented the source of jts products or palmed them: off as thase of the defendant. The burden was upon the defendant to prove by a preponderance .of evidence that: first, its housing was so distinctive in design and general appearance as to identif, the source of the enclosed autotransformer; second, pur- chasers were moved ‘to buy the product because of its source; and third, the secondary meaning had_ been estab- lished when the plaintiff adopted the, allegedly. similar housing. Sylvania Electric Products v. Dura Electric Lamp Company, 247 F.2d 730, 733 (3rd Cir. 1957); Lucien Lelong. Inc. v. Lander Co. 164 F.2d 395. 397 a Cir. 1947): Gum v. Gumakers of America, 136 F.2d 957. 959 (3rd Cir. 1943); American Fork & Hoe Co: v. prcenies Corporation, 125 F.2d 472. 475 «6th Cir.- 1942): Crescent Tool. Co. v. Kilborn & Bishop Co.,.247 Fed. 299, 300 (2nd Cir. 1917). The buraen was upon the defendant to show ~ that the primary significance of its housing in the minds of the prospeciive purchasers was not the product but the manufacturer. Kellogg Co. v. Nat. Biscuit Co., 305 US. 111, 118 (19358). The trial judge, applying these established principles, concl aided that the defendant had failed to sus- tain the: burden of proof. .We are in accord with this conclusion. The trial judge found affirmatively that the imitated features of the defendant’s housing were functional. The defendant now argues that the finding was limited to certain features which the trial judge emphasized in his opmion. We cannot agree with this narrow construction: it clearly appeays from the trial court’s opinion that everv . element of the Gefendant’s structure was considered. How- ever, assuming the narrow construction to be gormect. we A223: consider those features of the plaintiff's housing which the defendant now urges were nonfunctional and the use _ of which should have been enjoined. . The defendant’s brief points to seven structural ele- ments of the plaintiff's housing as nonfunctional. After an examination of the testimony, the photographs and physi- cal exhibits, we are convinced that’ these elements were functional in that they contributed to the utilitv and effi- °° ciency of the housing and ‘its general appearance.- How- ever, even assufing that these features were nonfunc- tional, the claim of secondary meaning cannot ‘be upheld The burden was upon. the defendant to prove that it was fromn these features that the claimed secondary meaning was derived. Crescent Tool Co. v. Kilborn & Bishop Co., supra. The burden was not sustained. . . However, assuming that the defendant's housing had° acquired a secondary meaning, as here contended, but that. its imitated elements were functiona!. as’ the trial court correctly found, the defendant was not entitled to prevail.” Absent proof. of misrepresentation or palming- off. the - essence of unfair competition is the probability of con-_ sumer confusion. Surgical Suppli Service, Inc. v. Adler, ‘F2d . (3rd Cir. 1963); Fhntkote Co. v Tizer, 266 F:2d 849. 852 (3rd Cir. +1959); Lucien Lelona, Inc. v. Lander Co., supra. If the imitated features of an- article’ of manufacture are functional but have also-*ac- quired a secondary meaning. the imitator may be required to take reasonable precautions to protect prospective pur- chasers against the probability of deception as to the source of the product. Sylvania Electric Products vo Dura Electric Lamp Cc., supra, at page 734: Restatement of the Law, Torts. £ 741(j). Such precautions had been taken by ‘ the plaintiff before this ‘action was brought “ —e A24 - The face of the defendant's housing bears a plate on which there prominently | appears the name “VARIAC,” accompanied by a stylized letter “R.” disposed within a circle immediately to the right of that name. The name and address of the defendant also appear on the plate. The top surface of the plaintiff's housing bears a plate on which there prominently appears, in red letters, the ‘namie “POWERSTAT.” The name and address of the plaintiff -also appear on the plate. The similarities in the housings are solely in their functional features, and to these the defendant may not claim a right to exclusive use. Sae the cases hereinabove cited. We might add that there is nothing in the general appearance of the plaintiff's housing that would mislead even the most casua! purchaser . as to the source of the product. The judgment of thé District Court will be affirmed. A true Copy: | Teste: Clerk of the United States Court of Appeals . for. a Third Cireuit. --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385601_1481%3A3. Public record. Not legal advice.