# Brief for the Respondent in Opposition — Dayless Manufacturing Co. v. Artmoore Co.

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Brief for the Respondent in Opposition
- **Published:** January 1, 1954
- **Citation:** 347 U.S. 920

## Text

FEB 17 1954
HAROLD B. WILEY, Clerk

IN THE

Supreme Court of the United States

Octoser TERM, 1953.

No. 545

DAYLESS MANUFACTURING COMPANY, INC. ayp

LESLIE HOFFMAN,
Petitioners,
vs.

ARTMOORE COMPANY anp NILES METALCRAFT

COMPANY,
Respondents.

BRIEF OF RESPONDENTS IN OPPOSITION TO
PETITION FOR WRIT OF CERTIORARI.

Evucene C. Knosiock,
711-713 J. M.S. Bldg.,
South Bend, Indiana,
Attorney for Respondents.

PAGE
= Fak bMS aie ee way aul uk on aa 1
Supplemental Statement of the Matter Involved... 2
gE RISPER A Hip eittol Sone atia ORD C ENE PAN 2
EE SULA Sc B5ict ach Kn deean died kidsehe e840 kalckh 3
The Error of Petitioners’ Premise............. 3
The Decisions in this Case Applied the Proper
EY Seco i aera aaa cag etic et 7
There Is No Conflict of Decisions.............. 8
EE So sacs LAA Kad eda ew eae ne Gheiinne owe 11
TaBLE OF Cases CiTEp.
Barie v. Superior Tanning Co., 182 F. 2d 727........ 9
Cohens v. Virginia, 6 Wheat. 264, 399; 5 L. Ed. 257,
Dba bb sies Vern Wai Ok od vekndheks sds eoubiadasite 9
Cuno Engineering Corp. v. Automatic Devices Corp.,
ee NCR aah eb oad vod Gneebad obo eeu beackne 8,9
Goodyear Tire & Rubber Co. v. Ray-O-Vac Co., 321
oe EN AN Prey Maas NER AN eT NCL 10
Graver Tank & Mfg. Co. v. Linde Air Products Co.,
Mais vdiks a0 ils eee dtionbaeaw swede 8,10
Great Atlantic & Pacific Tea Co. v. Supermarket, 340
ve rl, ET PE POET OTA MR AT Senn REG T ES 7,8
National Slug Rejectors, Inc. v. ABT Mfg. Corp., 164
DE RS aise i WA a pave ae hee awaR eER He es 9
Radio Corp. v. Radio Engineering Laboratories, 293
IE nd x0 Fae ics se Rede eeesid ee clots 9

Royal Patent Tool Corp. v. Monarch Teol Mfg. Co.,
203 F. 2d 299

pd oo

Supreme Court of the United States

Ocroser TERM, 1953.

No. 545.

DAYLESS MANUFACTURING COMPANY, INC. anp
LESLIE HOFFMAN,

Petitioners,
vs.

ARTMOORE COMPANY ann NILES METALCRAFT
COMPANY,
Respondents.

BRIEF OF RESPONDENTS IN OPPOSITION TO
PETITION FOR WRIT OF CERTIORARI.

To the Honorable Chief Justice and Associate Justices
of the Supreme Court of the United States:

PRELIMINARY.

The petition for writ of certiorari is based upon the
false premise that the prior art patents cited by the peti-
tioners were disregarded by the Court of Appeals and were
more pertinent prior art than that cited by the Examiner,
so that the decision of the Court of Appeals, in holding
claims 7 and 10 of the patent in suit valid and infringed,
departed from the test of invention as announced by deci-
sions of this Court. Petitioners’ premise concerning the
pertinence of the prior art was specifically rejected by the
trial court, and the Court of Appeals also rejected peti-

2

tioners’ premise after reconsideration of the evidence and
the exhibits.

Petitioners present no more than the case of a defeated
litigant attempting to create grounds for the further re-
view of its case by this Court.

Supplemental Statement of the Matter Involved.

Petitioners state, on page 2 (paragraph 4), that each
element of the combination defined by claims 7 and 10 of
respondents’ patent is found in the prior art, and that no
new or different function or operation exceeding the sum
of the functions or operations of the sum of the parts is
performed or produced by the patented device. Petitioners
have advanced this argument throughout this case, and it
was denied by the trial court (R. 319, 322) and by the
Court of Appeals. (R. 382.)

On page 3 of the petition (paragraph 6), it is stated that
the specific combination claimed by Rogers and all of its
inherent advantages is fully disclosed in the prior patent
to Kawasaki No. 1,137,760 (R. 353), and reference is made
to a chart opposite page 14 of the petition. This chart was
before the trial court and the Court of Appeals (Exhibit 9)
and was not accepted at its face value by either of these
courts, the Court of Appeals saying:

‘“We have read the oral testimony, examined the
documentary evidence and physical exhibits, and we
are satisfied that the record supports the findings as
made.’’ (R. 382.)

Foreword.

A. brief analysis of the entire opinion of the Court of
Appeals and the fundamental facts of this litigation will
clearly show that the question presented by petitioners has
no sound basis and presents no special and important rea-
sons why review should be granted.

ARGUMENT.

Respondents contended at trial and upon appeal, and
the trial court found and the Court of Appeals affirmed
that:

(a) Claims 7 and 10 of the Rogers patent 2,108,727 in
suit define novelty and invention over the patent to Kaw-
asaki No. 1,137,760 (R. 329);

(b) The mop of the Rogers patent No. 2,108,727 in suit
possesses a number of advantages resulting from the com-
bination and arrangement of the parts thereof, including
the novel rigid frame unit with the fixed spacing of the
rollers (R. 327); and

(c) The prior art patents cited by petitioners reveal
that workers in the art had sought unsuccessfully for at
least fifty years to provide a commercially acceptable mop
having a wringing attachment provided with wringer
rollers. (R. 330.)

The Error of Petitioners’ Premise.

Petitioners’ question is based upon the false premise
that the Kawasaki patent defines every element of the
claims in suit of the Rogers patent. Further, petitioners’
argument contends erroneously, at page 10, that the evi-
dence in this case is uncontradicted that the Kawasaki
prior patent is more pertinent than any of the prior art
patents cited by the Examiner. Considering the latter
contention first, the fact is that respondents introduced
persuasive evidence that the Kawasaki patent does not
meet or anticipate the patented structure in suit, does not
possess the same combination and arrangement of parts,

“a

ee

4

and does not produce the same advantages. (R. 233, 234,
238, 239-241.)

The Kawasaki patent was considered by the Court of
Appeals in passing on this case. Thus, the Kawasaki
patent was mentioned specifically (R. 382), and the Court
then affirmed the findings of the trial court concerning it,
including the following:

‘*22. Kawasaki patent No. 1,137,760, dated May 4,
1915, was not shown ever to have been used for any
purpose. It discloses a string mop with levers pivoted
to a ring slidable upon a mop handle. The levers
mount wringer rollers which are swung toward or
away from each other by pivoting of the levers. A
spring is required to normally press the wringing
rollers toward each other, and therefore the wringing
rollers are not maintained in predetermined fixed space
relation. A wedge type lock is shown for holding the
levers in fixed relation as set, but this lock accommo-
dates change in the spacing of the rollers at the will
of the operator or according to variation of the mop
element.

‘‘The Kawasaki patent does not disclose a lever
to provide mechanical advantage during the wringing
operation. Separation of the rollers of the Kawasaki
device is required to enable them to move from re-
tracted position to wringing position and to return
from the end of their wringing stroke to retracted
position. The Kawasaki device does not possess the
advantages, nor the structure, nor the mode of opera-
tion of the mop of the patent in suit.

“23. Claims 7 and 10 of the Rogers patent No.
2,108,727 in suit define novelty and invention over the
patent to Kawasaki No. 1,137,760.’’ (R. 328.)

The trial court further referred to devices made in ac-
cordance with Kawasaki patent No. 1,137,760, as follows:

‘27. Devices made in accordance with the Kawas-
aki patent No. 1,137,760 and the Sanguinet patent No.

5

1,352,837 were introduced in evidence by the plaintiffs
and reveal that the constructions disclosed in those
patents are not operative as mops, at least as far as
their wringing attachments are concerned.’’ (R. 329.)

The deficiencies of the Kawasaki patent as an operative
device and as an anticipation of the patent in suit are
discussed in the memorandum of the trial court which
states:

‘Both patents disclose that the rollers are urged
toward each other by springs. The consequent resilient
action leads to the only conclusion that the spacing
between the rollers is not fixed, that neither patent
discloses a rigid frame unit. Without this element,
devices responding to the Kawasaki and the San-
guinet are unable to provide the practical advantages
of the patent in suit. These advantages, furthermore,
cannot be achieved, as the defendants contend, by sub-
stitution of a sponge mop in a Kawasaki or Sangui-
net device. As outlined previously, these advtantages
are due not to the sponge mop alone, but to the com-
bined operation of the elements. Defendants also in-
sist that Kawasaki and Sanguinet disclose fixed spac-
ing of the rollers. Neither the patents themselves nor
the testimony of the defendant’s expert witness sup-
port this contention.’’ (R. 322.)

Another exaggeration of petitioners is the statement that
Rogers contributed nothing over the aggregate of the total
of the old elements called for by the two claims in issue.
This clearly disregards the specific findings in this case
that the patent in suit covers a true and inventive combina-
tion and arrangement of parts. The Court of Appeals said:

‘“‘The combination and arrangement of the parts
causes them to maintain their proper relation when
used for cleaning purposes even though no latches and
springs are employed; permits a progressive compres-
sive wringing of the flared part of the sponge between
fixed spaced rollers, with the expansion of the sponge

6

assisting return of the rollers and the operating lever
to an inoperative position and also serving to hold the
same in inoperative position after release of the lever;
and the fixed spacing of the rollers by the rigid frame
unit assures a uniform and regulated action over an
extended period of time. |

‘‘The findings further relate that the patented mop |
possesses a number of advantages resulting from the
combination and arrangement of its parts, and from
its novel rigid frame unit providing fixed spacing of
the rollers.’’ (R. 381.)

The Court of Appeals also said:

‘*In any event, both Kawasaki (issued in 1915) and
Sanguinet (issued in 1920) have long since expired
and, so far as this record discloses, neither during
their lifetime nor since their demise have they been
used for any purpose until they were brought forth
in an effort to invalidate the patent in suit. It is un-
realistic to reason that Rogers did nothing more than
might be expected of the skilled mechanic, when neither
of the owners of such prior art patents nor any mem-
ber of the public after their expiration discovered that
their teachings were worth reducing to practice.
Especially is this true in view of the fact that the
field was wide open and that Rogers was the first to
disclose a sponge rubber mop with a wringing attach-
ment, which was placed in manufacture and on the
market. The wide acclaim with which it was received
by housewives is proof of its utility and is at least
some indication of its novelty. While those of the prior
art disclosed without result, Rogers reduced his dis-
closure to practice, and with success.’’ (R. 382.)

In his memorandum opinion the trial Judge discussed at
length the advantages possessed by the device of the Rogers
patent. (R. 319, 320.) The findings of fact of the trial court
contained the following statement of the advantages of
the Rogers device:

‘*14. Among the advantages possessed by the mop

7

of Rogers patent No. 2,108,727 in suit are the main-
tenance of a uniform and regulated wringing action
over an extended period of time without need for ad-
justment or supplemental manual pressure upon the
rollers; a self-retracting action in which the mopping
sponge serves to assist the return of the wringing
member to its retracted position after the wringing
is completed; a self-positioning action in which the
mopping sponge serves to position the rollers and to
hold the elements in firm relation to avoid chattering
during use of the mop; a self-protecting relationship
of the parts against cutting or shearing of the mopping
element resulting from the engagement of the mopping
member against the rollers and not against the edges
of the metal channel during use; ease of operation due
to the mechanical advantage provided by the wringing
mechanism; avoidance of wetting of the hands of the
user while wringing the mop; and a self-locating action
in which the mopping member cannot force itself
through the rollers and in which the rollers cannot
spread to an extent that necessitates application of
supplemental pressure thereto for wringing purposes. ”’
(R. 327.)

The Decisions in This Case Applied the Proper Legal Tests.

It is clear that the test from Great Atlantic & Pacific Tea
Co. v. Supermarket, 340 U. S. 147, which the petitioners
seek to apply is not proper in the present case because
the parts of the Rogers patented device in suit do co-
operate to produce results not produced in or taught or
suggested by the prior patents, including the Kawasaki
patent, and because many advantages are produced by the
Rogers patented device as compared to the Kawasaki con-
struction as a result of the particular combination and ar-
rangement of the parts defined in the claims of the Rogers
patent.

In deciding this case, the trial court made specific ref-

erence to both Cuno Engineering Corp. v Automatic De-
vices Corp., 314 U. S. 84, and the A ¢ P case, supra, in its
memorandum decision. The trial Judge differentiated
those decisions because of the nature of the facts of the
present case, and because of the novelty of the combination
and arrangement of the parts of the Rogers patented de-
vice and the advantages and new and unobvious results
which that new combination and arrangement of parts pro-
duced. (R. 319.) The Court of Appeals and the trial court
properly applied in this case the rule of this court in many
previous cases, including Graver Tank & Mfg. Co., Inc. v.
Linde Air Products Co., 336 U. S. 271, to the effect that a
new combination of elements producing new and unobvious
results evidences the existence of invention.

The Court of Appeals also followed the provisions of
Rule 52a of the Federal Rules of Civil Procedure in re-
fusing to set aside the decision of the trial court in the
absence of clear error.

There Is No Conflict of Decisions.

Contrary to the contentions of the petitioners, there is
nothing in the decisions of the trial court or the Court of
Appeals in this case which evidences that either of these
courts observed a different criterion for invention than is
observed by other Courts of Appeals. No reference was
made by the Court of Appeals in this case to any of the
authorities to which the petitioners refer on pages 11 to
13. Therefore, reference to those decisions goes entirely
outside of the record in this case and constitutes an effort
by petitioners to set up a straw man.

Petitioners’ arguments that a different rule of law or a
different criterion for invention exists in the Seventh
Cireuit than in other Circuits is devious and untenable.
The particular statement quoted by petitioners on page

9

11, taken from the case of National Slug Rejectors, Inc. v.
A.B.T. Mfg. Corp., 164 F. 2d 812, was a part of a discussion
by the court in that case preliminary to a consideration of
the issues in that case. In considering the issues, the court
disposed of the case on the ruling that prior patents cited
against the patent in suit did not anticipate the patent in
suit and that the patent in suit involved invention over the
prior patents. Thus any language of the court mentioning
a difference in measuring standards is mere dicta, not
establishing any rule of law and not controlling in any
subsequent suit. Cohens v. Virginia, 6 Wheat. 264, 399; 5
L. Ed. 257, 290.

Petitioners next refer to the case of Royal Patent Tool
Corp. v. Monarch Tool & Mfg. Co., 203 F. 2d 299, in which
the Court of Appeals for the Sixth Circuit affirmed the
proposition that the presumption of validity attending
the grant of a patent does not exist where prior patents, not
cited by the Patent Office, embody substantially the same
idea as the patent in suit. This rule of law is not peculiar
to the Sixth Circuit, although usually it is stated differently.
Thus it is usual to refer to proof ‘‘overcoming’’ the pre-
sumption of validity, and the rule was stated in Radio Corp.
v. Radio Engineering Laboratories, 293 U. 8. 1, as follows:

‘*A patent regularly issued, and even more obviously
a patent issued after a hearing of all the rival claim-

ants, is presumed to be valid until the presumption
has been overcome by convincing evidence of error.”’

The fallacy in attempting to apply the exception of that
principle here is that the Kawasaki patent is not pertinent,
as previously shown.

Petitioners close their specious argument by mentioning
a reference in Barie v. Superior Tanning Co., 182 F. 2d 727,
to the so-called ‘‘flash of creative genius’’ test stated in
Cuno Engineering Corp. v. Automatic Devices Corp., 314

10

U.S. 84. It is interesting to observe that in the Barve case
the Court of Appeals for the Seventh Circuit denied the
existence of patentable invention because the patents there
considered did not involve more than the skill or ingenuity
that would be shown by a workman skilled in his line of
work. Furthermore, insofar as the doctrine of the Cuno
case is concerned, it was considered and mentioned in this
case, the trial court commenting about it:

‘The difficulty with this position lies in the fact that

it is not applicable (o the case before the bar.” (R.
319.)

The affirmance of the decision of the trial court by the
Court of Appeals contains no statement in any way de-

tracting from the above quoted statement of the trial
court.

In the case at bar, the Court of Appeals considered the
novelty of the combination defined by the claims of the
patent in suit, the novel and unobvious advantages and
results secured by and flowing from that novel combina-
tion, and considered the failure of the cited prior art to
meet the structure, the mode of operation and the benefi-
cial results and advantages which the device of the patent
in suit produced. In applying this test, it followed the
rules earlier laid down by this court in Graver Tank &
Mfg. Co. v. Linde Air Products Co., 336 U.S. 271, Goodyear
Tire & Rubber Co. vy. Ray-O-Vac Co., 321 U. 8. 275, and
many other cases.

There is nothing erroneous about the decisions of the
Court of Appeals and the trial court in this case. There is
nothing about this ease which indicates that, had any
court in a different circuit passed upon it, a different ruling
would have applied. It is clear that the Court of Appeals
properly ruled that the finding of the trial court that the
patent was valid was sustained by the novelty of strue-

11

ture, the novelty of cooperative relation of parts, and the
novelty of results and advantages which the record re-
veals is possessed by the device of the patent in suit, so
that it could not but say

‘*We discern no reason to ignore the findings thus

made, and certainly we cannot hold that they are
clearly erroneous.’’ (R. 382.)

CONCLUSION,

The question raised by the petition involves no substan-
tial question of law, no matter of great or any public im-
portance, no conflict of decisions, no unsettled questions
of law, and no departure by the Court of Appeals from
the accepted and usual course of judicial proceedings.

The questions raised by the petition further are based
upon premises which are totally erroneous and unsupport-
able in point of fact.

The petition is wholly without merit and should be denied.
Respectfully submitted,
Kucene C. Kxosvock,
711-718 J. M.S. Bldg.,

South Bend, Indiana,
Attorney for Respondents.

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386417_2024%3A2. Public record. Not legal advice.