Brief for the Respondents in Opposition — Deere & Co. v. Hesston Corp.

ee ee ennai gt ok pis ss

RAIS 068: (284 NAAR ae TIED. SAE REAR ELE St ca IRM

INDEX

STATEMENT OF THE CASE _. Rea |

Background. Selueloameteaaae ee |

Allowance of Patent Claims on the Basis of a Hole '

with an Adjustable. Door | weneens g

Claims Relate Only to the Use of:the Old Air Bleed-

In Door with an Old Basic Structure , 3

Prior Material Separation Art Not Cited by the _~

Patent Office Discloses Doors Used to Bleed In -

Air for the Same Purpose as the Claims... 4

The Decision Below Turned on its Own eee - 4

REASONS FOR DENYING WRIT ... 5

Petitioner Itself Is Urging a Test Which Is Incon: |

sistent with the Decisions of This nee 5

In Adopting Two Old Public Domain Principles,

Petitioner Made No Change Whatsoever in the :

prior Art Stractare me Te |

Combining Two Old Principles Without Change

Produced No Wholly Unexpected Operating Char-

acteristics .. |

Finding the Combination Reasonably Obvious to

One Skilled in the ‘Air Separation Art Meets the

Requirements of This Court ... 10

Legal Inferences and Subtest Fail to Tip Scales -

of Patentability 21... 11

Standard of Patentability Herein Applied Con-

forms Fully with the Admonitions of This Court 11

. Table of Authorities

| Caseg

Anderson’s-Black Rock v. Pavement Salvage Co., 1969,

396 U.S. 57, 24 L.Ed. 2d 258, 90 S.Ct? 305 10, 12

xt

II _ INDEX

Blonder-Tongue Laboratories, Inc. v. University of .

Illinois Foundation et al., ........ U.S. ........ , 28 L.Ed.

2d 788, 91 S.Ct. ........ | decided May 3, 1971 ansvrgeansciseen * 12

- Graham v. John Baste Co., 1966, 383 U.S. 1, 15 L.Ed.

2d 545, 86 S.Ct. 684 5, 11, 12

Gray Company v. ‘Spee-Flo Manufacturing Corpo- .

ration, 5 Cir. 1966, 361 F.2d 489 6

Great A & P Tea Co. v. Supermarket Equip. es =

- 1950, 340 U.S. 147, 95 L.Ed. 162 12.

Hensley Equipment Co. v. Esso Corp., 5 Cir. 1967, 383

F.2d 252 6

Metal Arts Company v. Fuller bee 5 Cir. 1968,

389 F.2d 319 ...... 6

— v.. Southern Resin Fiberglass Corp., 5 Cir. sia

- 373 F.2d 866 - 12

- Smith Industries International ' v. Hughes Tool Co., 5

; Cir. 1968, 396 F.2d 735 Pet

' Sterner Lighting, Inc. v. Allied Electrical Supply, Inc.,

5 Cir. 1970, 481 F.2d 539. 6

United States v. Adams, 1966, ‘383 U.S. 39, 15 LEA, ms.

~ 572, 85 S.Ct. 708 4 9

_ Up-Right, Inc. v. Safway slicissahis Inc., 5 Cir. 1966,

. .364 F.2d. 580 -

Williams Bit & Tool Co. v. Christensen Diamond Prod-

ucts Co., 5 Cir. 1968, 399 F.2d 628. 6-7

Zero Mfg. Co. v. Mississippi Milk Pro. Ass’n, 5 Cir.

* 1966, 358 F.2d 853 12

; STATUTES | |

35 U.S.C. 103 Sar meaors 5

SUPREME COURT OF THE UNITED STATES

. OCTOBER TERM, 1970

No. 1797

DEERE & COMPANY ‘

Petitioner, (_. :

eee i:

HESSTON CORPORATION, HESSTON OF TEXAS, ee

INCORPORATED, and JOE ED CRAWFORD, d/b/a

- CRAWFORD EQUIPMENT COMPANY,

Respondents.

On PETITION FOR A Writ OF CERTIORARI TO THE

UNITED STATES CourRT OF APPEALS

FOR THE FIFTH CIRCUIT

BRIEF FOR RESPONDENTS IN OPPOSITION

STATEMENT OF THECASE

Background

The four patent claims (15, 16, 18, 19) held invalid

below relate to the air separation of ripe cotton ‘from green

‘bolls through use of a blower arranged to present a so-

» called “jet pump”. The Patent Office considered a prior

2

art patent cited by petitioner (Harazin, Dx 29; Finding

6, App. D of Petition, p. 12a) and disclosing the jet pump

principle for conveying cotton, but failed to locate prior__.

art using the principle for separation. — _

_ The claims were allowed on the additional argument

that the prior art considered by the Patent Office also’

failed to show a certain air regulating principle which pe-

titioner represented to the Examiner as being an important

feature of the-ctaims (Findings 8 and 9, App. D of Peti-

_tion, pp. 12a, 13a).

- However, by a simple patent search, respondents lo-

cated a German patent (Gerson, DX 38, 39) also anticipa-

tory of the jet pump principle which, as distinguished from

Harazin, is used in the Separation of light and heavy ma-_

_ terials, asin the elaims; and a Herz patent (DX 28) dis-

closing the air regulating principle (the important feature)

used with a suction pump for air separation of light and ©

heavy materials (Findings 15, 16, App. D of Petition, pp.

14a, 15a).

Therefore, the two arguments to the Patent Office

lost their significance, leaving petitioner with the problem

of attempting to develop new. arguments in an effort to

_ defend .the validity of the claims. The sole question be-

fore the lower. courts then became that of determining’the

obviousness of the subject matter of the claims in view of |

the prior art relied upon by the respondents.

Allowance of Patent Claims on the Basis of a Hole -

with, an Adjustable Door .

Judge Bell correctly noted “the prime essential in

Deeré’s patent: a regulating means for affecting the in-

tensity of the secondary stream in connection with the _

separation chamber” (App. A of Petition, p. 5a). This af-

firmed Findings 8 and 9 of the trial court (App. D of Pe-

¥

3

tition, pp. 12a, 13a) making significant the initial argu-

ment that such single feature, not shown in the prior art

cited by the Patent Office, was important to the allowance °

of the patent claims in issue (DX _ 25, p. 45). 3

It consists of nothing more than an opening “in the

form of a window on the vertical duct and above the sepa-

ration chamber” (App. A of Petition, p. 2a), In simple

operation, air “is regulated by the degree to which the

window is opened” (App. A of Petition, pp. 2a, 3a). As

conceded by petitioner, the “adjustable’ air-inlet means

(admittedly old, per se)” (Petition, p. 16) is a mere “blead-

_ in door” (Petition, p. 7). —

Claims Relate Only to the Use of the Old Air Bleed-In

Door with an Old Basic Structure

The claims invalidated by the lower courts describe |

in detail that which petitioner concedes to be a conven-

. tional “jet pump as a source of suction (also admittedly

old, per-se)” (Petition, p. 16). Judge Bell recognized that

Harazin (DX 29). “teaches the use of a jet pump in an air

elevator to convey cotton” (App. A of Petition, p. 4a) and

‘that Gerson (the German patent) (DX 38, 39) “employed

the jet pump principle for use in the separation chamber °

and to elevate the lighter materials through a duct to a col-.

lection: point” (App. A of Petition, p. 5a). This affirms

Findings 11, 12 and 16 of the trial court (App. D of Pe-

tition, pp. 13a-15a) as to lack of novelty ‘in the basic struc-__-

ture specified in the claims.

Moreover, petitioner admits that Harazin employed

a jet pump “for the purpose of transporting cotton fiber

to the collection point” (Petition, p. 11), and that Getson;

not cited by. the Patent Office, “discloses the use of a jet |

pump (k) for separating” heavy and light materials, with

the light components “carried upward” and delivered to a

“collection area (h)” (Petition, pp. 11, 12). °

a ee eee eee

EEO

.

.

. “admittedly old, per se” (Petition, p. 16), petitioner is in.

full agreement with the joint findings of the lower courts

P 4 .

Prior Material Separation Art Not Cited by the Patent.

_, Office Discloses Doors Used to- Bleed in Air for the

’ Same Purpose As the Claims

Judge Bell noted that Herz (DX 28) “teaches the use

of windows between the Separation chamber and the ver-_

tical duct as air regulating means to maintain the velocity

of the air stream above the windows while reducing the

velocity below the windows” (App. A of Petition, p. da).

. To the same effect is Finding 15 of the trial court (App.

D of Petition, pp. 14a, J5a). Petitioner admits the pro-. —

.vision in the air separator of Herz of “a pair of openings

- (18) -near the top of the zone in which separation” occurs,

that are “provided’ with adjustable flaps (19)” (Petition, >

pp. 13, 14). ' | ae

Thus, in conceding that both the “adjustable air-inlet

means” and the “jet pump as a source of suction” are

that “the jet. principle was old in a similar field of en-

_ deavor as was the air regulating means”, and that “the

jet principle and the air regulating means principle\are in

the public domain” (App. A: of Petition, p. 6a).

_ The Decision Below Turned on Its Own Facts

The sole question left for decision below was whether,

'- or not it would have been obvious to one skilled in'the art

(of air separation of materials to substitute in the air sep-

.arator of Herz another old type of unmodified air motiva-

ting structure (as taught by Harazin and Gerson), with- -

out changing the air regulating means of Herz in any way.

be readily apparent that this relatively simple case is not

one which is worthy of or requires review by this Court. .

4 ‘

From the: foregoing statement of pertinent facts, not |

_ contested by petitioner, and the argument to follow, it will: -

/

/

-y fs

’ ye | °

The petition fails to present any meritorious reason justify-

ing reconsideration of the uniformity of thought by the two

courts below in their application of the obviousness test to

the particular facts of this case. — oes: :

REASONS FOR DENYING WRIT .

Contrary to petitioner’s contentions as presented

(Petition, pp. 2, 3), the standard of patentability applied

in this case is fully warranted by the law (35 U.S.C.. 103)

relating to obviousness, and is, wholly consistent with the

decisions of this Court; and there is no- conflict, irrecon-

cilable or otherwise, among the. decisions of the various

panels of the Court of Appeals for the Fifth Circuit. While

the only relevant question properly presented herein is —

whether or not the correct test was applied by the panel

sitting in this case, not the correctness of tests applied by

other panels in previous cases, we shall, nonetheless, show

_ that the alleged conflict does not in fact exist.

Petitioner Itself Is Urging a Test Which Is Inconsistent

with the Decisions of This Court 7 |

- In Graham v. John Deere Co., (1966), 383 U.S. 1, 4, _

15 L.Ed. 2d 545, 549, 86 S.Ct. 684, the Fifth Circuit pred-

icated patent validity on the proposition that the com-

bination produced an “old result in a cheaper and other-

wise more advantageous way”. The Eighth Circuit held

the same patent invalid because “there was no new result ©

in the patented combination”, This Court “determined that

neither circuit applied the correct test” and coneluded

“that the patent is invalid under § 103 * * *”,

Yet, in face’ of that test-as required by this Court, .

‘petitioner repeatedly speaks of an alleged “new result”

(e.g., Petition, pp. 8, 16, 17) in its patented combination.

On that note, petitioner then cites several Fifth Circuit de-

| cisions in support of the mistaken contention that therein

‘a test differing from’ that applied in this case was cor-

_ rectly used (Petition, pp. 24-26). But in each such instance,

it was found that more was contributed by the respective

inventors than a mere new, cheaper or more advantageous

result. ;

In Gray Company v. Spee-Flo Manufacturing Corpora-

tion, 5 Cir. 1966,°361 F.2d 489, 491, as pointed out by peti- .

tioner (Petition, p. 24), the contribution was the determina-

tion of a proper size relationship between two orifices to

‘accomplish an improved spray pattern. -

In referring to Sterner Lighting, Inc. v. Allied Elec-

trical Supply, Inc., 5 Cir. 1970, 431 F.2d 539 (Petition, pp.

25, 26), petitioner fails to call to attention the fact that

the patent there.in suit was held valid on the ground that

it was “not broad and general” but provided “a highly

specific solution to a particular set of problems * * *” (431

F.2d 539, 542). .

.. In Metal Arts Company v. Fuller Company, 5 Cir. 1968,

389 F.2d 319, petitioner again points out (Petition, p. 25)

” that the patent therein was not -held valid without basis.

The prior art reference “was aimed at a result opposite to -

that of” the patent in suit; “was aimed at a wholly differ- —

ent problem, performed a different function, and could not

have been used without modification, to accomplish the

ends sought by” the patent in question (389 F.2d 319, 323).

. Hensley Equipment Co: v. Esso Corp., 5 Cir. 1967, 383

F.2d 252, did not involve a mere combination of elements,

all previously known, as in the instant case. In -Smith

Industries International v. Hughes Tool Co., 5 Cir. 1968,

396 F.2d 735, the prior art simply did -not teach the inven-

tion of the patent therein held valid. The novel combina-

tiorr of the patent claim in question in Williams Bit & Tool

| : ‘

_¢* F.2d 628, solved, to a substantial degree, many problems

) 7

ms +

&o. v. Christensen Diamond Prelit Co., 5 Cir. 1968, 399.

concerning which obvious solutions had not previously been

- suggested.

. .

; ye In the instant case, however, J udge Bell found no con-:

tribution other than the fact that “the combination of

these known elements produced a useful function” (App.

A.of Petition, p. 6a); and, as will hereinafter be made clear, -

‘eontrary to petitioner’s’ contentions, the combination did

not even produce a “new” result.

In Adopting Two Old Public Bieta Principles, Peti-

tioner Made No Change has semantic in the Prior Art

Structures ; ee

Petitioner correctly admits hat “the device cover

by the claims of the patent in suit in this case be oe

duced by combining the jet pump shown in the/Harazin

prior art patent and the air regulating means employed in

the Herz patent” (Petition, p. 21). It: ‘not only “can” be

done, but “was” done, and entirely without modification, : =

_ as was demonstrated at the trial (Joint Appendix, p. 351). i.

- ‘Respondents exhibited to the trial court, .as shown ~

Wiestention I hereof, a connection of,the riser 3 of Herz

_ between flaps 19 and hopper 4 (Fig. 1, DX 28) with the

shaft “a” of Gerson between channel “c” (DX 38) and

opening “pr This perfect match, when compared with Fig.

5. (Illustration II) of petitioner’s patent, or for that matter,

Fig. 3 also (Ilfustration III), vividly demonstrated, as*a

fact, that petitioner did no more: than add the air adjusting

means of Herz to the jét pump of Gerson. (Fig. 5 shows °:

. baffle 84 hinged at its sl asath as are the flaps 19 in

. Fig. 4 of Herz.)

| Respondents also iain the trial court (Joint Ap- ;

_ pendix, p, 354),.as seen by Illustration IV, the same con-

4

i , y

8 eg ;

nection of the Herz riser 3-to the conduit 3 of Harazin

above the trough 1 (Fig. 2, Illustration III). Here again,

respondents established, as a fact, that by merely bringing

the diameters of riser 3 and conduit 3° into conformity, pe-

titioner simply added the air adjusting means of Herz to -

the jet pump of Harazin: ves aa

The result is self-evident (Joint Appendix, .pp. 277, -

_ 278). ‘Each structure of Illustrations I and IV has a jet.

pump, precisely as defined by the’tlaims in issue (Find-

‘ings 11 and 12, App. D of Petition, pp. 13a, 13b), provided

“with “air reguldting means on the separating chamber”,

with “the intensity of the secondary stream in relation to»

the mixture” effected in each such structure, as ‘claimed

(Finding 9, App. D of Petition, p. 13a).

Petitioner emphasizes a so-called “compromise” prob-

lem (Petition, pp. 6,.7).* . But Herz carefully explains how

_ to solve the problem by creating enough air to lift the light

materials to the. collecting point while at the same time -

“adjusting the air velocity in.the separating chamber such’

as to not lift foreign matter (DX 28, p. 2, tines 70-95).

What petitioner chooses to ignore is thefact that in Il-

lustrations I and IV there is no suctipn fan; instead, ‘prior

art jet pumps are shown. Obviougly petitioner has not

contended that there would still be a “compromise” prob: -

.lem when Herz’s air regulating -means_is used with the jet -

pumps of Harazin or Gerson. That would be tantamount

to saying that the problem still exists in the apparatus of -

petitioner’s patent. rep

*Significantly, the discussions in the petition as to the alleged

attributes gf the combination of the claims and the reasons given

-

-in support of nonobviousness contentions are, for the most: part,

_ -afterthoughts not embodied in the. patent itself or in-the arguments’ ~~ _—,,

-to the. Patent Office.“ - 3 a

- +

%

.

9 a

Combining Two Old Principles Without ‘Change Pro-

duced No Wholly Unexpected Operating Characteristics

There is no merit to petitioner’s contention that this —

_ case comes under the decision of this Court in United States

2 Adams, 1966, 383 U.S. 39, 15 L.Ed. 2d 572; 85 S.Ct. 708.

Petitioner’s jet pump per se is virtually identical with the

jet pump of Harazin (Illustration III, Fig. 2). It is also

the same jet pump as disclosed by Gerson (Illustration II,

right hand view). As. was obvious to Judge Bell, both“

refererices are in “a similar field of endeavor” (App. A of

- Petition, p. 6a).. Harazin “teaches the use of. a jet pump in —

an air elevator to convey cotton” (App.. A of Petition, p.

4a). Gerson “teaches the use of the jet pump to separate

~artd elevate” (App. A of Petition, p. Sa). “This leaves the ,

air regulating means * * *” (App. A of Petition, p. 5a).

Herz teaches the air regulating means (App. A of Pe-

tition, p. 5a). Illustration I shows the air regulating means y

of Herz coupled with the jet pump of Gerson. Illustra-

tion IV shows the air regulating means of. Herz coupled

with the jet pump of Harazin. No alteration whatever is.

made in Illustration I to the jet pump of Gerson, in Illus- —

tration IV to the jet pump of Harazin, or in Illustrations I

~ -and IV to the air regulating means of Herz, -

~

Tt is impossible, therefore, to find the wholly unex-

_ pected, valuable operating advantages or characteristics in

such combination of old principles found at 383 -U.S. 39,

_91, 15 L.Ed. 572, 580 in the patented’battery of United States

v. Adams. . - ae ;

; ; ° 10

| Finding the Combination Reasonably Obvious to :One

Skilled in the Air Separation Art Meets the Require-

ments of This Court

J a2 | . This petition exemplifies the faint hope’ that if this

Court will oncé again review the factual evidence before

the two lower courts and retry the case a different con-

clusion: will somehow be reached. Petitioner noted the

failure to argue “synergistic result” in Anderson’s-Black

Rock v. Pavement Salvage Co., 1969, 396 U.S. 57, 61, 24

L.Ed. 2d 258, 261, 90 S.Ct. 305, and on ,that clue, argued

| the matter at length (Petition, pp. 2, 3, 14, 23, 24, 26, 27).

‘ . Although the use of the term “synergistic” by this Court

: was not at all necessary to the decision therein and cannot

be regarded as controlling in all patent cases regardless of

. the facts, petitioner -is- assuming that if, in a combination

of old elements situation, the synergism test is raised, the

obvious-nonobvious test will be foreshadowed.

el

The argument carries no weight in this case, however,

because of. the facts. Here we have in the prior art two ~

‘types of devices for producing currents of air to separate

materials. . Gerson does it with a blower arranged as a jet

pump. Herz uses a suction blower. In the apparatus of

petitioner’s patent the bleed door used with the suction _

blower of Ffrz.is now shown by petitioner with the blower

of Gerson or Harazin.

The jet pump shown in petitioner’s patent creates a

- flow of primary and secondary air in the same way as does

. the jet pumps of Gerson and Harazin. The secondary air

raises the light materials out of the mixture precisely as

does the jet pump of Gerson, The heavy materials grav-

itate out of the mixture and the light materials become en-

trained in the primary air after separation so as. to be

blown thereby to a point remote from the separation

chamber exactly as in the case of the jet pump of Gerson.

a

. And the adjustment of the bleed-in die sia in more or —

less air above the separation chamber the same as the

bleed-in flaps of Herz. Thus, eath of the elements of the

claims performs its same respective function in petitioner’ s

combination as it did in the prior art. Peon ,

It matters not an iota whether the use of a simple,

ordinary bleed door helps to produce a new, better or dif-

ferent result when used with the blowér of an old jet pump

as compared with the results of its use with a-commonplace

suction blower. Anyone skilled in the art of air separa-

tion would readily recognize the obviousness of the same -

association of the air bleed-in door of Herz with a differ-

ent type of conventional blower.

Legal Inferences shail or Fail to Tip Scales of

Patentability |

Judge Bell duly considered the fact that infringement

was not contested (App. A of Petition, pp. 1a, 3a, 6a); the -

problem that faced the industry (App. A of ‘Petition, p.

2a); and successful test results followed by commercial suc-

_ cess (App. A of Petition, p. 3a), all as sanctioned by this

Court in Graham v. John Deere Co., 1966, 383 U.S.,1, 35,

36, 15 L.Ed. 2d 545, 566, 567, 86 S.Ct. 684. Petitioner’s re-

liance again’ on those secondary factors (Petition, pp. 2,

5-10, 19) cannot overcome the fact that the prior art, which

could have been located by a simple search, disclosed the

solution and demonstrated the oe of the subject

_matter of the claims. '

Standard of itecnstitints Herein Applied Conhoeune

Fully with the Admonitions-of This Court

Petitioner complains because the courts below refused

to lower the requirements, stating that the standard as

applied was unwarranted, inconsistent with the decisions

of this Court and in conflict with other — at

12

pp. 2, 3); makes it. impossible to meet by other combina-

tions of old elements (Petition, p. 20); is much too “string-

ent” (Petition, ¥ 23); and precludes advice of counsel

(Petition, p. 26). )

The fact remains that this Court continues to require

“strict observance” of the obviousness test as set forth in

Graham v. Deere at 383 U.S. 1, 18, 15 L.Ed. 2d 545, 556.

See Anderson’s-Black Rock v. Pavement Salvage Co., 1969,

396 U.S. 57, 62, 24 L.Ed. 2d 258, 262.

Moreover, Graham Vv, Deere, 1966, 383 US. I, 19; 15

L.Ed. 2d 545, 547, stated ‘that “it bears repeating that we

- find no ‘change in the general strictness: with which the

overall test is to-be applied”. It is a “rather severe test”

when a “conjunction”, “concert” or “unification” of

= “known elements” is involved. Great A & P Tea Co. Vv.

Supermarket Equip. Corp., 1950, 340 U.S. 147, 152, . 95

L.Ed. 162, 166, 167.

. As stated by Judge Bell in Sisko v. Southern Resin —

Fiberglass Corp., 5 Cir. 1967, 373 F.2d 866, 868, he followed

the decision of Graham v. Deere in Up-Right, Inc. v. Safway

Products, Inc., 5 Cir. 1966, 364 F.2d 580, and in the latter

case, the conclusions were based on the same test (p. 869),

as was,also the basis for invalidity in- Zero Mfg. Co. v.

_ Mississippi Milk Pro. Ass'n, 5 Cir. 1966, 358 F.2d 853,

859. .

Petitioner hes failed to show that the Fifth Circuit

should be admonished for applying the required “severe

. test” when justified by facts such as were fully and clearly |

developed by the record herein.

The decision in Blonder-Tongue ian. ing. ¥.

University of Illinois Foundation a eo. Wee wel :

28 L.Ed. 2d 788, 91 S.Ct. ........ , decided May 3, 1971, relat-

| ing to res judicata and eclineerad estoppel as affirmative

13

defenses, presents no legal basis for writ of certiorari

herein a as ae by petitioner (Petition, p. 27).

CONCLUSION

For the: foregoing reasons this petition for writ of

certiorari should be denied.

Respectfully submitted,

Gorpon D. Scumint’

- 925 Grand Avenue

Kansas City, Missouri 64106

Tel: 816 842-2459

Scumut, J OHNSON, Hovey & WILLIAMS

1800 Federal Reserve Bank en

925 Grand Avenue

Kansas City, Missouri 64106

SPEIR, STROBERG & SIZEMORE

Legal Building

_ 809 Main Street

L _ Newton, Kansas &7114

Tel: . 316 283-1550

| Attorneys for Respondents.

| eer

- .. ILLUSTRATION I .

_ INVENTOR

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ILLUS TRATION , II

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ILLUSTRATION III.

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ILLUSTRATION IV

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$2. }. HARAZIN

COTTON ELEVATOR

Filed May 11, 1932

INVENTO