# Petition for a Writ of Certiorari — Scott v. Harman > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386417_1155%3A1 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition for a Writ of Certiorari - **Published:** January 1, 1952 - **Citation:** 343 U.S. 965 ## Text INDEX. Petition for Writ of Certiorari. NI ht ee he ok onl ae eh ys aut ig 2 nerdy ad cand Ma eee a ve 2 I Cs tia hace pin 'un ae Pee eames 2 I St leg dig wah s Bee e ERK On TEU RN 3 re ee nt fren ee ARTE Rea COS 3 Specification of errors to be urged.................. 5 Reasons for granting the writ...................... 5 Brief in Support of Writ. EE a ne ee ro ee ey ae ee 6 eer Oe MAUD, ne occ acy coat nk de ven es 7 NR ee tS SL Por ee ee eet SA, eh eR 7 RR re ata eben hipaa Ich gh aie meee, A Me 14 Authorities Cited. Cases. American Tobacco Co. v. Streat, 83 F. 700, 704 ....... 11 A. & P. Tea Company v. Supermarket Corporation, 340 SS aS ee Re Se eee oe Oe Se Cea 6 DO Se SA Bee et. Burt v. Ritchie & Co., 251 F. 909 at 918, D.C. E.D. N.Y. 12 Carbice Corporation of America v. American Patents _ Development Corporation, 283 U. S. 27.......... 13° Cuno Engineering Corporation v. Automatic Devices Corporation, 314 U. S. 84 at 91.................. 9 In re Hodler, 73 F. (2d) 507,C.C. P. A............... 12 In re Hughes, 48 F. (2d) 478, C.C. P. A... 12 In re Smith, 36 F. (2d) 302,C.C. P. A................ 12 Lincoln Engineering Co. v. Stewart-Warner Corpora- oo ree 8 Morgan Envelope Co. v. Albany Perforated Wrapper Paper Co., 152 U.S. 425, 431... .. 10, 11 Motion Picture Patents Co. v. Universal Film Manufac- turing Co., 243 U.S. 502 at 512... _ Toledo Pressed Steel Co. v. Standard Parts, Inc., 307 =H RE SEES ST AE RD st IN THE Supreme Court of the United States OCTOBER TERM, 1951 LAWRENCE B. SCOTT, Petitioner, VS. HAL W. HARMAN, Respondent. PETITION FOR WRIT OF CERTIORARI Petitioner, Lawrence B. Scott, prays that a writ of certiorari issue to review the judgment of the Court of Appeals for the Sixth Cireuit (R. 509) affirming the deci- sion of the United States District Court for the Southern District of Ohio, Eastern Division (R. 456). OPINIONS BELOW The findings of fact and conclusions of law and opinion of the District Court appear in the record on pages 456 to 471, The opinion of the Court of Appeals appears in the record on pages 509 and 510. JURISDICTION The jurisdiction of this Court is invoked under ec. 646, 62 Stat. 928, 28 U. S. C. A. 1254, of the Act of June 25, 1948. The judgment of the Court of Appeals, which the petitioner here seeks reviewed, is dated February 18, 1952. The petition is, therefore, timely. QUESTIONS PRESENTED 1. In the repair of crackfastings, did it amount to inven- tion to use malleable inserts applied in drilled openings across the cracks to hold the parts together when prior art devices showed the use of similar metal inserts, malleable and non-malleable, applied in drilled openings across cracks or joints as fastening devices for holding the sepa- rated parts together? 2. After the decision of this Court in A. & P. Tea Com- pany v. Supermarket Corporation, 340 U. S. 147, should the Court of Appeals of the Sixth Circuit have affirmed the District Court’s decision in this case, when the standard of invention was no higher than that of the invention involved in said A. & P. case? 3. May a patentee claim a combination of a device, and the material upon which the device works, or to which it is applied? ARNE BPE RATS eS IER ESA RRR TS IS OGM TERN CE EOI PO ORE ID MMPS OTOL Gp STATUTE INVOLVED The questions here presented involve the construction of the patent law and more particularly one section thereof, R. S. 4886, 35 U. S. C. 31, the relevant portions thereof being as follows: “R. S. 4886—Inventions Patentable. “Any person who has invented * * ° any new and useful art, machine, or composition of matter, or any new and useful improvement thereof ° not patented or described in any printed publication i in this or any foreign country , a, obtain a patent therefor.” STATEMENT This is an action involving the alleged infringement of United States Letters Patent No. 2,142,896, issued to Hal W. Harman, for a thin cup-shaped metal fastening device for repairing cracks in castings (R. 398, 23, Figs. 5 and 6). The charge of infringement is based upon the use by the defendant of a substantially square bar fastening element also used for repairing cracks in castings, and illustrated in the record at page 406, 254, Figs. 1 to 4, inclusive. In the complaint as originally filed, plaintiff sued upon three patents, Nos. 2,011,484 (P. Ex. 1, R. 395, 22,), 2,142,896 (P. Ex. 2, R. 398, 23,) and 2,198,167 (P. Ex. 3, R. 402, 23,), involving in all some sixteen claims. Plaintiff was forced, however, in answer to defendant’s motion for a bill of particulars (R. 4) to withdraw two of said patents, Nos. 2,011,484 (P. Ex. 1) and 2,198,167 (P. Ex. 3), and to limit his charge of infringement as to the six claims of the remaining patent now in suit, No. 2,142,896 (P. Ex. 2), to claims 1 and 2 which read as follows: “1, An improved locking fastener comprising a body of substantially thin metal composed of bulged and TY APY OE 4 connected restricted portions, said bulged portions being expansible by pressure, in combination with two separated parts of stock across which is drilled an opening ahventially conforming in size and shape to said fastener, and into which opening said fastener is inserted and compressed. “2. An improved locking fastener comprising a body of substantially thin metal composed of bulged and connected restricted portions, said bulged portions being expansible by pressure and adapted to be flat- tened out to increase the overall dimensions of the bulged and restricted portions, in combination with two separate parts of stock across which is drilled an opening slightly larger than the fastener and into which the fastener is inserted and expanded.” The use of metal fasteners applied across cracks or sepa- rated parts of materials, for holding the parts together, is old as shown in the prior art patents to Pierce (R. 418, 248,), Cordes (R. 409, 240), Richardson (R., 422, 248), Darrach (R., 436 248,), Roberts (R., 446, 248), Buckner (R., 416, 248), and Peckover (R., 440, 248). These prior art devices meet all the elements of claims 1 and 2 in suit in that they are made of metal, having bulged or enlarged portions connected by restricted portions, and are designed to be placed in drilled or recessed openings across two separated parts of stock, and are capable of being locked in place by pressure or force applied to the fastener. In addition to being invalid in view of the prior art, claims 1 and 2 are also invalid in that they claim the fastening device in combination with the material upon which the fastening device is used. SPECIFICATION OF ERRORS TO BE URGED The Court of Appeals erred: 1. In affirming the decision of the District Court holding that the fastening device of claims 1 and 2 amounted to invention. 2. In not holding that the claimed combination consists essentially of old elements which do not demonstrate such a degree of novelty as to constitute patentable invention over the prior art in the light of the strict standards laid down by this Court in Cuno Engineering v. Automatic Devices Corporation, 314 U. S. 84 at 91, and more recently in A. & P. Tea Company v. Supermarket Corporation, 340 U. S. 147 at 153. 3. In not holding that claims 1 and 2 of the patent in suit are invalid because they claim the fastening device in com- bination with the material upon which the fastener is used. REASONS FOR GRANTING THE WRIT 1. The decision of the Court of Appeals affirming the District Court is in direct conflict with the applicable deci- sions of this Court. 2. The decisions of the Courts below affect a large por- tion of the casting repair industry, and will result in ex- tensive litigation in other Circuits against users of devices similar to defendant’s. Wherefore, it is respectfully submitted that this peti- tion should be granted. Lawrence B. Scott By JOHN J. MAHONEY Attorney for Petitioner IN THE Supreme Court of the United States OCTOBER TERM, 1951 LAWRENCE B. SCOTT, Petitioner, vs. HAL W. HARMAN, Respondent. BRIEF IN SUPPORT OF WRIT OF CERTIORARI STATEMENT The opinion below, jurisdiction, the questions presented, the statute involved, and the specifications of errors are stated in the petition. The patent involved purports to cover a thin cup-shaped metal stamping (R. 398, P. Ex. 2, Figs. 5 and 6), for use as a fastening device in the repair of cracked castings. In the use of this device, overlapping holes are first drilled across and lengthwise of the crack in the casting (R. 398, Fig. 1.). The cup-shaped fastener, which is smaller than the holes, is inserted into the drilled opening and hammered down flat (R. 398, Figs. 2, 3 and 4) until it conforms to the outline of the drilled openings. This acts to lock the metal parts on sed ae 7 opposite sides of the crack preventing it from opening or expanding. Defendant’s device, which is alleged to infringe claims 1 and 2 of the patent in suit, is illustrated in Scott patent No. 2, 195, 741 (D. Ex. K, R. 406, 254 Figs. 1 to 4). It is a substantially square bar with undulating or irregular longitudinal sides which hold it in locked position when forced into the grooves having a complemental outline, and extending across or lengthwise of a crack in a casting. SUMMARY OF ARGUMENT 1. The Harman patent in suit does not involve invention in view of prior art. 2. Claims 1 and 2 of the Harman patent in suit are invalid, because one may not patent a combination of a device, and the material upon which the device works. ARGUMENT 1. The Harman patent in suit does not involve invention. All that Harman did was to drill holes in a casting across or lengthwise of a crack and insert a metal link therein to hold the part together. The idea of holding separated metal parts together by use of a metal link, or bar, inserted in a recess across a crack or joint is shown in a number of prior art patents. Some of such patents are as follows: Pierce (R. 418, 248), Richardson (R. 422, 248), Darrach (R., 436, 248), Roberts (R. 446, 248), and Peekover (R. 440, 248). In order to strengthen its holding that the claims in suit were valid, the District Court found various faults with GE creer thes re en ast Ak PA RA 8 EAN CA REM OT IN DOP - ti . 8 these prior art references. It could not deny, however, that the said patents show the basic concept of the claims in suit, consisting of a metal link inserted or forced into a groove or recess across a crack for holding separated parts together. In addition to the said prior art patents, various other methods of repairing cracks were known prior to Harman. The District Court stated in his opinion (R. 459) as follows: “That castings are subject to cracking is shown by the proof in the case and is, as well, a matter of com- mon knowledge. Before Harman, there were several processes of repair used. One common process was by welding. Another was a ‘shrink link’.” Harman, the patentee, on page 105 of the record, stated that the “shrink link” method consisted of taking a metal link, heating it, and forcing it into a drilled opening or recess across a crack. Upon cooling, the link shrinks and tends to pull the separated parts together. Thus, the ad- mitted prior art “shrink link” met the basie elements of claims 1 and 2 in that it consisted of a metal link forced into a groove across a cracked casting to hold the separated parts together. To the extent that the combination claimed in these claims may be merely combinations of old elements, it is clear that to be patentable, they must demonstrate some- thing new and useful, either in result or the method of its achievement. In Lincoln Engineering Company v. Stewart-Warner Corporation, 303 U. S. 545, 549, this Court held: “The mere aggregation of a number of old parts or elements which, in the aggregation, perform or pro- duce no new or different function or operation than that theretofore performed or produced by them, is not patentable invention.” g 9 To the same effect is Toledo Pressed Steel Co. v. Stand- ard Parts Inc., 307 U. S. 350. It is submitted, therefore, that the claimed combinations consist essentially of old elements, and that the combina- tions do not demonstrate such a degree of novelty as to constitute patentable invention over the prior art, in the light of the strict standards laid down by this Court in Cuno Engineering Corporation v. Automatic Devices Cor- poration, 314 U. S. 84 at 91, and more recently in A. & P. Tea Company v. Supermarket Corporation, 340 U. S. 147 at 153. The fact that there may be some improvement in one or more of the old elements does not make the old combina- tion repatentable as such (Bassick Manufacturing Com- | pany v. Hollingshead Company, 298 U. S. 415). If the Court of Appeals, after having been reversed in the A. & P. case, had followed this Court’s instructions in that case, by scrutinizing the combination claims 1 and 2 of the patent in suit, it is submitted that it could not have affirmed the decision of the District Court. In this case, as in the A. & P. case, the combination claims consist merely in an assembly of old elements, with no change in their respective functions. The Harman patent in suit has merely brought together segments of prior art and claims them in congregation as a monopoly. 2. In addition to being invalid in view of the prior art, claims 1 and 2 are invalid in that they claim the fastener device in combination with the material upon which the fastener device is used. If the patentee made any inven- tion, it was in the fastener per se which the patentee describes (R. 399) on page 1 of the patent in suit, column 1, lines 46 to 52 as follows: “Referring more particularly to the drawing, and for the present to Figures 5 and 6, 12 designates gener- 10 ally one of the improved locking fastenings which is made up of appropriate metal of desired gauge or thickness, and includes a number of bulged or enlarged —- parts separated by diminishing connecting necks.” They are unitary structures that may be sold in quan- tities like nails, screws or rivets. They are punched or stamped out of flat metal to the form shown in Figures 5 and 6 of the drawings. These facts are confirmed by state- ments in the specification of the patent (R. 399), page 1, column 2, lines 11 to 14. as follows: “In other words these fastenings are commercial units which are punched or stamped out of flat metal to the form shown in Figures 5and6 * * *.” In claiming this device, the patentee should not have included as elements of the combination the two separated parts of stock with which his device is used. In doing this he made the claim invalid. That the material upon which the fastener device works is made an element of the combination claims is confirmed by the decision of the District Court who in analyzing the claims in suit said (R. 467): “Tt includes a metal ‘Fastening’ or lock having lobes or, enlarged or bulged portions connected by restricted portions. The other elements include two separated parts of stock which may be the parts on opposite sides of the crack in a casting.” One cannot have a patent for a combination of a device and the materials upon which the device works. This principle of law was enunciated in Morgan Envelope Com- pany v. Albany Perforated Wrapper Paper Company, 152 U. S. 425, 431, in which this Court held as follows: “The first defense raises the question whether, when a machine is designed to manufacture, distribute, or 11 serve out to users a certain article, the article so dealt with can be said to be a part of the combination of which the machine itself is another part. If this be so, then it would seem to follow that the log which is sawn in the mill; the wheat which is ground by the rollers; the pin which is produced by the patented machine; the paper which is folded and delivered by the print- ing press, may be claimed as an element of a combina- tion of which the mechanism doing the work is another element.” The Court abstained from expressing an opinion on whether the paper roll could enter into a patented combina- tion with the holder for it. But it intimated that it could not. It was not necessary for it to decide the case on valid- ity because the facts of the case failed to sustain the charge of infringement. A number of the United States Courts of Appeals and District Courts have interpreted the language of Mr. Jus- tice Brown at page 431 in Morgan Envelope v. Albany Paper Co., 152 U. 8. 425, as prohibiting the inclusion in a patent combination of a device, the material upon which the device works or operates. In American Tobacco Company v. Streat, 83 F. 700, 704 (C. C. A. 4), the Court held that a leaf of tobacco could not be considered an element of the patent claim, stating as follows: “In our opinion, the leaf of tobacco called the ‘sec- ond binder’ is not the mechanical equivalent of the rolling apron described in the Streat patent, * * *. We do not think that an article manufactured in a machine in the manner and for the purposes con- templated when the machine itself was made can be held to be a part of the machine which so produces it.” (Citing Morgan v. Albany, 152 U. S. 425, case as au- thority for its holding.) 12 In Union Paper Bag Machine Company v. Advance Bag Company, 194 F. 126 (C. C. A. 6), it was attempted to use a paper blank upon which the machine worked as an ele- ment of the combination but Judge Warrington, speaking for the Court, held as follows at page 139: “Counsel for complainant rightly concede that the use of the tang in question in place of the lower central gripper does not amount to the substitution of a mechanical equivalent; for that would be to treat the paper made into diamond folds by the machine, as an element of the patent. See Morgan Envelope Co. v. Albany Paper Co., 152 U. S. 425, and language of Justice Brown at page 431, 14 Sup. Ct. 627, 38 L. Ed. 500, although obiter; American Tobacco Co. v. Streat, 83 Fed. 700, 705, 28 C. C. A. 18 (C. C. A. 4th Cir.).” In re Hughes, 49 F. (2d) 478, C. C. P. A., the Court held as follows: “Appellant’s claims involve several elements. Tak- ing, for illustration, said claim 12, it will be observed that an attempted combination is made of the machine and the material or dye solvent used therewith. We have held in Re Smith, 36 F. (2d) 302, 17 C. C. P. A. 644, that a person may not patent a combination of a device and the material upon which the device works, nor limit other persons from the use of similar material by claiming a device patent. If the material which appellant uses here for printing is new to tue art, then such material may be patentable; but he may not take advantage of this in applying for a patent upon a mechanism to apply it.” To the same effect are Burt v. Ritchie & Co., 251 F. 909 at 918, D. C. E. D. N. Y.; In re Smith, 36 F. (2d) 302, C. C. P. A. 1929; In re Hodler, 73 F. (2d) 507, C. C. P. A. In Motion Picture Patents Company v. Universal Film Manufacturing Company, 243 U. S. 502 at 512, this Court made it clear that materials with which or on which a EO ig ISS OO : O11 DO CO bo ee BO ao hy be by by hg bg by — © Patentee Buekner Meldrum Pierce Lovepoy Schranz Williams Williams Darrah Roberts Cordes Peckover Peckover Richardson Number 154,580 1,742,044 1,802,829 1,561,872 1,905,653 1,201,008 1,338,411 1,417,039 1,441,274 1,165,155 390,034 381,811 793,958 Sept. 25, Apr. 24, July 4, Date Sept. 1, Dee. 31, Apr. 28, Nov. 17, Apr. 25, Oct. 10, Apr. 27, May 23, Feb. 20, Dec. 21, 1888 1888 1904 1874 1929 1931 1925 1933 1916 1920 1922 1923 1915 Now the petitioner in his brief before this Court, is rely- ing only upon Pierce, Richardson, Darrah, Roberts and Peckover (Brief, p. 7). 16 3. Prior Art. Pierce P-3 (R., 419 and 469). The Pierce paten shows a resilient link which is obviously formed of hardened metal. It comprises lobes 10 and 11 which are connected together by a narrow interconnecting portion 13. The interconnecting portion 13 is arched as is shown in Fig. 2. Quoting from page 1 of this patent, line 87 (R., 419): “Before the link is applied to the machine elements the arched portions 13 are slightly shorter than the corresponding narrow portions of the recesses and the links will fit into the recesses only upon being stretched or deformed to an extent sufficient to separate the en- larged end portions 11 and 12 to make them register with the enlarged end portions of the recesses. This can be accomplished by depressing or flattening the arched portions 13 until the links snap into place in the recesses.” Obviously the link must be formed of hard material (as distinguished from ductile or malleable material) in order to be resilient. There is no suggestion whatsoever in this patent of compressing or expanding the link by deforma- tion of the material of the link by hammer blow action. Darrah P-9 (R., 436). Darrah is directed to a method of making shims. The body portion 3 of the shim is provided with open side recesses or notches 4 which receive the tongues 2 of the bearing metal 1. The bearing metal is very soft (Babbitt). A shim is employed as a spacer which is clamped by bolts between two bearing retainers. The edge of the bearing metal, opposite the tongues 2 embraces the rotating shaft. Therefore, the bearing metal 1 is held in place by the bear- ,,Dlade. 17 ing retainer bolts and is prevented from displacement by the rotating shaft. There is no suggestion whatever in this patent of utilizing the bearing metal as a lock across the fissure of two pieces of metal. Roberts P-13 (R., 446 and 469). Roberts’ patent was cited by the Patent Office and over- come by the applicant. Roberts is directed to welding locks in position. In each embodiment, including Fig. 10, the locking members 4, are held in position by welding only. Roberts states (R., 449, line 67): “The edges of each plate and the apertures are bevelled as shown at la, 5a, respectively, and the edges of the locking pieces + are also bevelled as shown at da, Fig. 3, so that when the plates and locking pieces are assembled a bed or channel is formed to receive the metal added by the welding operation.” It is not only the costly welding that patentee eliminates but also the great cost of tearing down the machinery to remove the cracked casting, the building of an improvised oven in the field for slowly heating the casting to be welded which heating must be gradual, particularly for large castings which will otherwise crack beyond repair (some- times this heating requires days), warping during heating and welding, gradual cooling, and then often remachining because of warping. Also, by the present invention, re- pairs can be made which are impossible to make by welding. Peckover P-10 (R., 439) and P-11 (R., 443). Both Peckover patents were cited by the Patent Office and overcome by applicant. The earlier of these two patents (Exhibit P-11) is directed to a removable saw tooth, having grooves b’ (Fig. 3), or the equivalent, a flange (Fig. 7), for retaining the tooth in the saw blade A. Only one saw tooth can be inserted in a single opening on the . ag . PS DR wy tehees emai | 2 ha 18 The second Peckover patent (Exhibit P-10, R., 441), shows a key E having grooves, like b’ in Exhibit P-11, for holding the same in position. Only one key can be inserted in the stock. Obviously, structures of the Peckover patents could not be used for repairing a deep crack in a casting. The Patent Office recognized the dissimilarity of the problem the patentee solved and the disclosure of Peckover. It is interesting to note that these patents issued in 1888, yet between 1888 and the time that the instant inventor made his invention, millions of dollars’ worth of castings were scrapped because they could not be repaired by the then known locks and processes. Richardson P-14 (R., 422 and 469). The Richardson patent is entitled “Method of Making Brazed Joints”. R., 423, line 10, reads: “This invention has relation to a method making* brazed joints, * * *”, Line 17 reads: “My invention is particularly applicable to the braz- ing of broken joints in cast-iron or high-earbon steel.” The brazing material in each figure is designated by the letter B. In Fig. 2, the pieces 7 and 8 are welded together, and brazing material is also indicated at 4. A reinforcing piece 5, having spaced bulged portions and a connecting neck is socketed in suitable recesses 6—6 in the pieces 7 and 8. The patentee states (R., 423, line 100): “s * this reinforeing piece 5 being made of ma- terial of such character that the brazing material will flow freely over its surface during the brazing opera- tion and will tighly braze it in the recesses 6—6”, 19 The patentee states (R., 424, line 31): “The particular material which I prefer to employ for the joining strips and for the reinforcing pieces is steel, noe as distinguished from malleable material which can be compressed and expanded. The Claims in Issue Are For a New Combination of Elements. Claims 1 and 2 of the patent in suit include a limitation not disclosed nor suggested by the prior art. These claims are limited to the fastener (lock) “compressed” (claim 1), “expanded” (claim 2) in the opening. They call for a new combination of elements. None of the patents in themselves or in combination teaches or suggests the combination. The question immediately arises, if such patents teach the in- vention, why wasn’t it practiced? Castings have been cracking ever since they were first used. Why were mil- lions of dollars’ worth of castings scrapped? Why make repairs which required days and weeks when they could have been made in hours? Why did the skilled Mr. Scott wait until he was taught how to use the invention by the instant patentee? The present case falls squarely under the doctrine of Diamond Rubber Co. v. Consolidated Rubber Tire Co., 220 U.S., 428 at 434, 435: “Many things, and the patent law abounds in illus- thations, seem obvious after they have been done, and, ‘in the light of the accomplished result,’ it is often a matter of wonder how they so long ‘eluded the search of the discoverer and set at defiance the speculations of the inventive genius.’ Pearl v. Ocean Mills, 2 Bann. & Ard., 469, Fed. Cas. No. 10,876, 11 Off. Gaz., 2. Knowledge after the event is always easy, and prob- 20 lems once solved present no difficulties, indeed, may be represented as never having had any, and expert wit- nesses may be brought forward to show that the new thing which seemed to have eluded the search of the world was always ready at hand and easy to be seen by a merely skilful attention. But the law has other tests of the invention than subtle conjectures of what might have been seen and yet was not. It regards a change as evidence of novelty, the acceptance and utility of change as a further evidence, even as demonstration. And it recognizes degrees of change, dividing inven- tions into primary and secondary, and as they are, one or the other, gives a proportionate dominion to its patent grant. In other words, the invention may be broadly new, subjecting all that comes after it to tribute (Chicago & N. W. R. Co. v. Sayles, 97 U. S., 554, 056, 24 L. Ed., 1053, 1054); it may be the successor, in a sense, of all that went before, a step only in the march of improvement, and limited, therefore, to its precise form and elements, as the patent in suit is con- ceded to be. In its narrow and humble form it may not excite our wonder as may the broader or pretentious form, but it has as firm a right to protection.” and in the recent decision in Goodyear Tire and Rubber Co., Inc., et al. v. Ray-O-Vac Co., 321 U. S. 275, Justice Black stated: “Viewed after the event, the means Anthony adopted seem simple and such as should have been obvious to those who worked in the field, but this is not enough to negative invention.” The novel combination cannot be anticipated by piece- meal selection of component parts of the combination from a number of prior art patents, which prior art patents did not themselves solve the problem. 21 A leading case which laid down this principle is Parks v. Booth, 102 U. S., 96, 104, wherein the United States Supreme Court said: “Where the thing patented is an entirety, consisting of a separate device or a single combination of old elements ineapable of division or separate use, the respondent cannot make good the defense in question by proving that a part of ‘the entire invention is found in one prior patent, printed publication, or machine, and another part, in another, and so on indefinitely, and from the whole or any given number expect the court to determine the issue of novelty adversely to the complainant. Bates v. Coe, 98 U.S., 31.” Other leading cases illustrating the application of this principle are The Barbed Wire Patent, 143 U. S. 275 and Keystone Manufacturing Co. v. Adams, 151 U.S. 139. In the case of Metropolitan Device Corporation v. Cleve- land Electric Illuminating Co., 36 F. (2d), 477, 479, C. C. A. 6, 1929, the Court said in holding a combination patent valid and infringed: “Nor was plaintiff's invention anticipated by the prior art. The cable, the insulating compound, the sleeve with its soldered joint, and possibly the cable joint construction, were all old, but they were not old in combination. In the new combination they pro- duced a new result and therefore were not anticipated. Webster Loom Co. v. Higgins, 105 US 530, 591, 26 L. Kd. 1777; Detroit Carrier & Mfg. Co. v. Dodge Bros., 33 F (2d) 748, 747 (CCA 6); Michigan Carton Co. v. Sutherland Co., 29 F (2d) 179, 183 (CCA 63; Ferro 669 (CCA 6); Kellogg Switchboard & Supply Co. v. Concrete Constru. Co. v. Concrete Steel Co., 206 F 666, Dean Elee. Co., 182 F. 991, 998 (CCA 6).” A & P and Cuno Cases Not Applicable. Obviously, in view of the findings of fact made in this case (R. 466-471), the principle of law established in the Pee ARATE PE EIT UNLOVE II TIE LIL LULL DL A AGLE BPE EY SPP IE POULT PY YE OE PEE ANH TDPRI | 22 A & P Tea Co. v. Supermarket Corp., 340 U. S. 147 has no application. In that case the trial court explicitly found that each element in the device was known to the prior art. The court did not find that the old elements performed any additional or different function in the combination than they performed out of it. That court held that the grocery counter with an extension to receive a bottomless open- ended tray for pushing groceries along the counter consti- tuted a novel feature and a new and useful combination. The extension was not mentioned in the claims, however. There was no problem in that case as was solved by the patentee-Harman in the case at bar. Neither were there any findings in the A & P case, such as in the case at bar, to support the finding of invention and the further finding that “the patent in suit, if not indeed a basic one, at least is one of high rank.” (R. 461). Similarly, the Cuno Engineering v. Automatic Devices Corporation case (314 U. S. 84) can be distinguished from the case at bar on the facts. In that case a well-known thermostatically controlled heating unit was incorporated in an automobile cigar lighter having a removable plug bearing the heating unit, which was also old and well known in the prior art. This Court held that this was a combination of old or well-known devices requiring only the work of a mechanic skilled in the art to assemble. Such a case is clearly distinguishable from the one at bar where it was explicitly found that the invention is more than and beyond the ordinary and expected mechanical or engineer- ing skill of persons skilled in the art of repairing cracked castings (Finding No. 11 R. 568). 23 Claims Not Directed To A Machine and Its Product. The argument, now advanced by the petitioner, that the claims in suit are invalid because they claim a fastening device in combination with the material upon which the fastener is used, is not based upon fact. The lower courts did not make any such finding, and neither does the record support any such contention. Findings of fact Nos. 8 and 27 speak for themselves. (R. 467, 470) All of the cases cited by the petitioner, of which Morgan Envelope Co. v. Albany Perforated Wrapper Paper Co. (152 U.S. 425) is an example, are not applicable to the case at bar since the claims in those cases were all directed to an attempt to claim the machine per se and the article produced by the machine, or worked upon, as a combination. It is to be noted that in each case the machine is an entity in itself— a completely operative device separate from the product or work, i.e., independent thereof. In the instant case the lock of the patentee-respondent is merely one element of a combination of elements that cooperate to produce a new product. (Finding No. 27 R. 470). In Continental Paper Bag Co. v. Eastern Poper Bag Co., 210 U. S. 405, the patent claims were for a mechanical combination of parts for folding a bag. The lower courts designated the invention as one entitled to “high rank.” The Supreme Court held that where both of the lower courts find the inventor has done what has not been done before, and that there has been infringement, it will not disturb their findings unless they appear to be clearly wrong. The case at bar should be governed by these prin- ciples. PESO NOLO SEITE AONE INE SERN TET LO Ne PRR eT RE eM Te PN Pa i 24 CONCLUSION. 1. This is an ordinary patent case involving only the usual issues, an interlocutory order and no conflict of de- cisions. 2. The concurrent -findings of the lower courts are all supported by the record, and not shown to be in error. 3. Claims 1 and 2 of the patent in suit disclose patentable subject matter and are valid when tested by the principles of this Court as established in Parks v. Booth, 102 U. S. 96, 104; Diamond Rubber Co. v. Consolidated Rubber Tire Co., 220 U. S. 428 and Keystone Mfg. Co. v. Adams, 151 U.S. 139. 4. The decision of the Court of Appeals affirming the District Court is not in conflict with any applicable deci- sion of this Court. For the reasons stated, the respondent prays that the petition filed herein be dismissed with costs. Respectfully submitted, WAYNE S. GERBER, AUBREY A. WENDT, 50 W. Broad St., Columbus 15, Ohio, Attorneys for Respondent. INDEX. Reason for this brief Petition for writ of certiorari should be denied Answer to petitioner’s questions presented Statement (To correct inaccuracies and omissions of petitioner’s statement) Regarding petitioner’s brief Summary of argument Argument Conclusion ee ee Table of Cases. Carnegie Steel v. Cambria Iron Co., 185 U. 8., 403 Diamond Rubber Co. v. Consolidated Tire Co., 220 U. S., 428 Goodyear Tire & Rubber Co., Ine., et al. v. Ray-O-Vae Co., 321 U.S., 275 Looms Co. v. Higgins, 105 U. S., 580 Ray-O-Vac v. Goodyear Tire & Rubber Company, et al., 45 Fed. Supp., 927. ps: eeeee Im OV --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386417_1155%3A1. Public record. Not legal advice.