# Appendix — Bobertz v. General Motors Corp. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386418_0646%3A2 ## Record - **Collection:** Supreme Court brief - **Document type:** Appendix - **Published:** January 1, 1956 - **Citation:** 352 U.S. 824 ## Text APPENDIX IN THE DISTRICT COURT OF THE UNITED STATES FOR THE EASTERN DISTRICT OF MICHIGAN SOUTHERN DIVISION No. 9399 Yustav H. Boserrz, Jn., Plaintiff, Vv. GeneraL Morors Corporation, Defendant. Order Granting Defendant's Motion for Summary Judgment Plaintiff sues for infringement of Patent .o. 1,911,600 relating to improvement in automobile hoods. Defendant denies infringement and attacks validity of the patent for lack of novelty and patentable invention. Issue was joined, pre-trial hearing had and a pre-trial order entered defin- ing the issues, following which exhaustive discovery pro- ceedings ensued by both parties. Defendant filed motion for summary judgment under Rule 56, claiming absence of any genuine issue of material fact. Oral argument was had and all exhibits were made available to the court, including defendant’s accused de- vice. Briefs were filed fully covering the issues involved. Ordinarily, courts are reluctant to decide important is- sues by summary judgment because of the lack of a record adequate to explain the issues of fact and law. Parke, Davis & Co. v. American Cyanamid Co. et al., (6 Cir.), 207 F. 2d 571, citing Estepp v. Norfolk & W. Ry. Co., (6 Cir.), 192 F. 2d 889. In the latter, a personal injury case, and in Begnaud et al v. White, (6 Cir.), 170 F. 9d 323, a contract case, the court ruled that where a genuine issue of material fact exists summary judgment should not be vranted, but in the Parke, Davis & Co. v. American Cyanamid Co. et al. case, supra, a patent case, the court said, p. 573, ‘*but here the issues are clarified by extensive interrogatories filed by both parties and answe red fully”’ Pe Ler ce Ry OP te eT te IRTP SCT ER eT Tere tn aerate aan Sih IPT a Ge aay ae Varck oni En oes ca. ac Cen ee ora 2a Both parties in this case resorted to extensive discovery proceedings, filing of affidavits and exhibits, and making admissions. The court also had the benefit of the Patent Office file wrapper showing the history of the prosecution of this patent. The thoroughness of the pre-trial activities of both parties resulted in the elimination of any genuine issue of material fact in dispute. Under such cireumstances it has been held that where no factual issues are present and where the patents and products involved are suff- ciently simple to make expert testimony unnecessary, dis- position under Rule 56 is proper. Bridgeport Brass Co. v. Bostwick Leboratories, (2 Cir.), 181 F. 2d 315, 316, 319; Steigleder v. Eberhard Faber Pencil Co. et al. (1 Cir.), 176 F. 2d 604, certiorari denied, 338 U.S. 893; Vulean Corp. y. International Shoe Machine Corp., D.C.D. Mass., 68 F. Supp. 990, affirmed 1 Cir., 158 F. 2d 520, certiorari denied, 330 U.S. 825, 67 S. Ct. 868, 91 L. Ed. 1275; Alex Lee Wallau, Ine. vy. J. W. Landenberger & (o., 121 F. Supp. 555, 556. Defendant’s accused hood is a partially transparent counterpart of the regular steel hood used in all of defendant’s 1949 Oldsmobile ‘‘Rocket En- gine’’ automobiles. Both hoods were available to the court for examination and comparison with plaintiff’s hood of the claimed invention, which in Figure 2 of the patent drawings follows closely the automobile hood structure of defendant’s 1932 Chevrolet automobile. In Steigleder v. Eberhard Faber Pencil Co. et al. ease, supra, the court in approving disposition of certain pat- ent cases under Rule 56 said: ‘*Where it is apparent that there is no genuine issue of fact bearing on infringement, and the structure and mode of operation of the aceused de- vice are such that they may be readily comprehended by the court, and compared with the invention described and claimed in the patent, without the need of technical ex- planation by the testimony of expert witnesses, then the court, if satisfied that there is no infringement, should give summary judgment for the defendant, instead of 3a subjecting the parties to the expense of a trial.’’ To the same effect Smith v. General Foundry Mach. Co., (4 Cir), 174 F. 2d 147, certiorari denied, 338 U.S. 869. The five combination claims of the patent in suit are directed to an automobile hood made of transparent mate- rial, consisting of two vertical members, and either one or two horizontal members with a plurality of longitudinally extending transparent reinforcing means connecting the adjoining edges of said members to form a unitary strue- ture therefrom, and securing means adapted to coact with a hold-down latch on the vehicle body to removably secure the hood to the vehicle body. The specifications state the object of the patent to be an invention to provide an auto- mobile hood formed of transparent material, which per- mits full visibility of an engine of a motor vehicle at all times. Claim 1 is representative.’ This transparent auto- mobile hood would only temporarily replace the ordinary hood and was not intended for regular use in an automo- bile. The novelty of this invention is stated in the speci- fieations to reside in the transparency of the top and sides of the automobile hood, for display or study purposes, enabling the observer full visibility of the engine. The specifications also state that the automobile hood of the invention may be formed of a single sheet of trans- parent material, or a plurality of independent sheets of such material, and while it is also stated in the specifica- tions that the applicants for the patent do not desire to be limited to any type of hood fastening means, nor to a particular shape or configuration of such a hood, but de- sire to avail themselves of all changes in the scope of 1 An automobile hood including two transparent vertical mem- bers, two substantially horizontal transparent members, a plurality of longitudinally extending transparent reinforcing means con- necting the adjoining edges of said members to form a unitary structure therefrom, and securing means adapted to coact with a hold-down latch on the vehicle body to removably secure the said hood to the vehicle body. ee ee Ft hake UR ahd RP else Bilas: 5 4 4a the appended claims, it is clear upon examination of the file wrapper history of the prosecution of this patent, and the language of the claims of the patent, that the claims finally granted are expressly limited to an automobile hood of several pieces made of any transparent material and joined together by transparent reinforcing means to form a unitary structure. The original application filed in the Patent Office had seven claims, all rejected by the Patent Office. A total of nine new claims were filed during subsequent proceedings in the Patent Office, of which five were finally allowed. These rejected claims included language relating to ‘transparent means for enclosing the portion of the ve- hicle between the radiator and the cowl’’; a ‘‘transparent automobile hood formed of transparent material’’; and later, ‘‘of sheet celluloid’’. The rejected claims presented nothing patentable over Rumpler (German) +#+379,379 (1923) which, in claims 1 and 4, deseribe a motor vehicle hood constructed from transparent celluloid. No inven- tion is claimed on the latching means, and the substitu- tion of the temporary hood in place of the conventional hood in an automobile is taught by Martin +1,382,959 (1921). As pointed out by the Patent Office, the combination of a cowl, radiator shell, a hood, and the latching means for the hood, is an old one, as disclosed in Martin. No inven- tion would be involved in substituting sheet celluloid for the wire mesh covering in Martin, in view of the trans- parent hood shown in Rumpler, the moulded celluloid used in Rumpler being equivalent to sheet celluloid, and the use, broadly, of transparent reinforcing means is not a patentable distinction, since an ordinary prudent me- chanie would naturally locate the reinforcing means to conform with the design of the vehicle body. The reinfore- ing rods in Martin are adapted to conform with the de- sign of the vehicle body, as stated by the Patent Office, and afford no basis for a patentable invention. 5a The patent was finally allowed only when the claims were presented in the specific language suggested by the Examiner, limiting the grant to the vertical and horizontal transparent members and reinforcing means disposed to conform the body design of the motor vehicle upon which the hood is placed, with latching means on the vehicle body. The claims of the patent do not disclose the nature of the transparent material of which the hood is made, and although it is stated in the specifications that the hood of the invention may be formed by a single sheet of trans- parent material or a plurality of independent sheets of such material, the Patent Office repeatedly and _ finally rejected claims for a one-piece transparent hood, in view of Rumpler whose patent disclosed an automobile hood of transparent celluloid. In 1949 defendant caused to be made and distributed to its Oldsmobile dealers a quantity of ‘‘plexiglas’’ trans- parent automobile hoods made of sheet plastic material, to be used in displaying and demonstrating its Oldsmobile “Rocket Engine’’ and other parts of an automobile usually located under the hood, without the necessity of raising the hood for each individual display or demonstration. This hood was made of a single sheet of material variously referred to as plexiglas, celluloid, and plastic. The trans- parent portion, in the center of the hood covers about two- thirds of its surface. The claims of plaintiff's patent are specific and limited to a transparent hood consisting of separate vertical and horizontal parts joined together by reinforcing means, in order to form a unitary structure. Defendant’s ac- cused hood is made in one piece, with six ordinary serew- fastenings openings for attachment to the body and chassis of the car, without separate vertical members and without any reinforcing means connecting together the several pieces of transparent material comprising the structure of the patent. ec chee | Pettis peecon. 6a During the prosecution of his application in the Patent Office plaintiff cancelled claims sufficiently broad in scope to cover the one-piece hood which was made of a single sheet of transparent plastic and took the claims of the patent which are specific to the plural-piece hood as illus- trated in Figures 1 and 2 of the patent, with the reinfore- ing ribs connecting the individual members. By cancelling his origina] claims plaintiff created an express limitation relating to the inventive step, and cannot now be _per- mitted to depart from the plain meaning of the language he adopted or to claim from such language a broad and generic construction. A. O. Smith Corporation vy. Lincoln Electrie Co., (6 Cir.), 82 F. 2d 226, 229. In determining the scope of a patent, intent and inventor’s own appraisal of the nature of the invention are important; that which is not literally within a claim does not infringe. Directo- plate Corp. v. Donaldson Lithographing Co., (6 Cir.), 51 F. 2d 199, 202. Having finally drawn his claims narrowly to avoid the prior art and obtain allowance of the claims, plaintiff cannot now attribute a broader construction to the words of his claims. Falkenberg v. Golding et al., (7 Cir.), 195 F. 2d 482. Plaintiff’s claims must be read in the light of the invention disclosed and cannot be given a construction broader than the teachings of his patent as shown by the claims allowed. Ford Motor Co. vy. Gordon Form Lathe Co., (6 Cir.), 87 F. 2d 390, 392: Blane vy. Curtis, (6 Cir.), 119 F. 2d 395, 397. In Midland Steel Products v. Clark Equipment Co., (6 Cir.), 174 F. 2d 541, 545, the court quotes from D’Arey Spring Co. v. Marshall Ventilated Mattress Co., (6 Cir.), 259 F. 236, 240, 241, ‘‘* * * where the claim defines an ele- ment in terms of its form, material, location or function, thereby apparently creating an express limitation, where that limitation pertains to the inventive step rather than to its mere environment, and where it imports a substan- tial function which the patentee considered of importance to his invention, the court cannot be permitted to say that ite 7a other forms, which the inventor thus declared not equiva- lent to what he claimed as his invention, are nevertheless to be treated as equivalent, even though the court may conclude that his actual invention was of a scope which would have permitted the broader equivalency.”’, citing R. M. Hollingshead Co, y. Bassiek Mfg, Co., (6 Cir.), 73 FP. 2d 543, 548; Firestone Tire & Rubber Co. v. United States Rubber Co., (6 Cir.), 79 F. 2d 948, 955; United Shoe Machinery Corp. v. O'Donnell Rubber Products Co., (6 Cir.), 84 F. 2d 383, 386; Shearer v. Atlas Radio Co., (6 Cir), 04 F. 2d 304, 306; A. O. Smith Corporation v. Lincoln Electric Co., (6 Cir.), 82 F. 2d 226, 229.’ See also Whitman et al. vy. Andrus, (6 Cir.), 194 F. 2d 270. When claims are rejected and withdrawn while inven- tion is pending in the Patent Office the patentee is estopped to contend that the allowed claims should be given the came breadth and interpretation as the abandoned claims. Baker-Cammack Hosiery Mills v. Davis Co., (4 Cir.), 181 F.2d 550, 563: Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 136. In the case of Schriber-Schroth Co. v. (Cleveland Trust Co., 311 U.S. 211, 220 the court said: ‘‘Tt is a rule of patent construction consistently observed that aclaim in a patent as allowed must be read and interpreted with reference to claims that have been cancelled or re- jected, and the claims allowed cannot by construction be read to cover what was thus eliminated from the patent.”’ And. in Smith v. Magie City Kennel Club, Ine., 282 U.S. 784.790 the Supreme Court stated the rule as follows: “The applicant having limited his claim by amendment and accepted a patent, brings himself within the rules that if the claim to a combination be restricted to specified ele- ments, all must be regarded as material, and that limita- tions imposed by the inventor, especially such as were introduced into an application after it had heen persist- ently rejected, must be strictly construed against the in- ventor and looked upon as diselaimers. Sargent v. Hall Safe & Lock Co., 114 U.S. 63, 86; Shepard v. Carrigan, INL ESO a ey ee Sa supra, 598; Hubbell v. United States, supra, 85. The pat- entee is thereafter estopped to claim the benefit of his rejected claim or such a construction of his amended claim as would be equivalent thereto. Morgan Envelope Co. v. Albany Paper Co., 152 U.S. 425, 429.”’ Besides the Rumpler patent, there are others in the art prior to Bobertz who taught the use of transparent hoods on automobiles, such as the French publication La Locomo. tion, issued February 11, 1911, and filed in the United States Patent Office January 6, 1931, showing a trans- parent glass hood on an automobile, and The Motor, a publication of London, England, dated July 2, 1912, show- ing a Cadillae automobile with a transparent glass hood, Also, in the Kelsey patent, No. 1,045,152, (1912) there is disclosure of a removable transparent dome of an air- plane covering the hatechway, and a series of concave and convex transparent sections conforming to the curvature of the housing set in the bottom and sides of the housing to permit inspection of the exterior mechanisms and surface helow. A transparent automobile hood was old in the art. Whether it be made of glass, plexiglas, cel!uloid or plastie, its function prior to the patent here was identieal with its function in this patent. The several pieces of transparent material constituting plaintiff’s inventive effort function in the same manner and serve the same purpose as the prior art patents and publications without regard as to the type of transparent material described. The Bobertz patent here does not come up to the high standard of patentable invention required to sustain combination claims such as the claims in this snit. Great Atlantic & Pacific Tea Co, v. Supermarket Equipment Corp., 340 U.S. 147; Cuno Engineering Corp. v. Automatie Devices Corp. 314 U.S. 84. The claims in suit are not limited to transparent plastic and this limitation cannot be read into the claims in 9a order to save them from invalidity; Patrol Valve Co. v. Robertshaw-Holton Controls Co., (CLA. 6), 210 F. 2d 146; Aluminum Company of America v. Thompson Products, Inc., (C.A. 6), 122 F. 2d 796; Parke, Davis & Co. v. Ameri- ean Cyanamid Co, et al., supra, in which the court stated (p. 574): “The appellant therefore is estopped to deny the limiting effect of the language in the claims because these limitations are adopted to avoid the earlier grounds of rejection and refusal and to obtain allow- ance of the patent.’’? Citing Shepard v. Carrigan, 116 U.S. 593, 598: I. T. S. Rubber Co. v. Essex Rubber ('o., 272 US. 429. 433-434: Smith v. Magie City Kennel (lub, Inc., 282 U.S. 784. 790, and «© * * * An applicant cannot qualify the effect of his acquiescence in the re- jection of a claim by stating to the Patent Office that it is not an acquiescence and that he expects to insist upon his right to cover the same ground which the rejected claim covered under other and amended claims. As declared by this court through Chief Justice Taft, then Presiding Judge, in Thomas v. Rocker Spring Co., 6 Cir., 77 F. 420, 431-432, an appli- cant ‘eannot thus destroy the effect of a patent-office ruling.’ ’’ As in the Smith v. Magic City Kennel Club, Ine. case, supra, plaintiff here, resorts to the doctrine of equivalents, claiming that defendant’s accused structure contains hori- zontal and vertical members. Though this be a far fetched argument, by comparing plaintiff’s structure with the ae- cused hood, there is in any event an absence of ‘‘a plurality of longitudinally extending transparent reinforcing means connecting the adjoining edges of said members to form a unitary structure therefrom’’. In the Smith v. Magie City Kennel Club, Inc. ease, supra, the court further points out, p. 790, ‘*The petitioner resorts to the doctrine of equiva- lents, insisting that the rigid horizontal arm of the re- spondents is to be treated as the equivalent of the arm of the patent, and that the limiting specifications of the claims may be ignored. What has already been said disposes of 10a this contention, for where a patentee has narrowed his claim, in order to escape rejection, he may not ‘by resort to the doctrine of equivalents, give to the claim the larger scope which it might have had without the amendments which amount to disclaimer.’ Weber Electric Co. v. Free. man Electric Co., 256 U.S. 668, 677, 678; I. T. 8. Rubber Co. v. Essex Rubber Co., supra. It should also be ob. served that the difference here was both in structure and in mode of operation and result.’’ Bobertz obtained no new and unexpected results whieh would rise to the dignity of patentable invention, since the substitution of one material with known characteristics for another material is not invention. In Electro Mfg. Co. v. Yellin, the court said, 132 F. 2d 979, 981, ‘*Plastic products have been made for many years They are lighter in weight than metal, are translucent, and permit greater variation in color. Nemeroff did not disclose a new material, he mer ely substituted a plastic material for a material which was used in the prior art, and the seep Court held that this did not amount to invention. See Hotehkiss v. Greenwood, 11 How, 248, 52 U.S. 248; Evr-Klean Seat Pad (Co. y. Firestone Tire & Rubber Co., 8 Cir., 118 F. 2d 600. ** * we do say that there was no patentable genius involved in Nemeroff’s disclosures. This was the Dis- trict Court’s conclusion, and we think it was correct.’ See also James Heddon’s ign v. American Fork & Hoe Co., (C.A. 6), 148 F. 2d 230, 23 ; Seiberling Rubber (Co. v. L.'T. &. Co, (0.4.6), 138 FB: Ae 71; Goodwin v. Bore- Warner Corp., (C.A. 6), 157 F. 2d 267; Timken-Detroit Axle Co. v. Cleveland Steel Products Corp., (C.A. 6), 148 ™. 2d 267, 271. The claims in suit are limited to reinforeine means shown as strips 9. The mere strengthening or reinforce- ment of Rumpler’s plastic hood would not amount to pat- SN ag Ne lla ontable invention. Associated Plastic Companies, Ine. v. Gits Molding Corp., (C.A. 7), 182 F. 2d 1000, 1005. Pefendant’s accused automobile hood does not infringe plaintiff’s patent. The patent itself is invalid for want of patentable invention and lack of novelty. Defendant’s motion for summary judgment is granted. Arruur A. Kosctnski Arthur A. Koscinski, District Judge Dated: August 20, 1954 U.S. District Court Eastern District of Mich. ss I hereby certify that the foregoing is a true copy of the original on file in this court and cause. Frank J. DINGELL, Clerk By (Sgd.) Josepnine M. Bowman Deputy Clerk Dated: Aug. 20, 1954 ees Eee | “d % * 12a No. 12379 UNITED STATES COURT OF APPEALS FOR THE SIXTH CIRCUIT Gustav H. Bopertz, Jr., )} ApreaL from the Appellant, United States Dis- V. - trict Court for the General Morors Corporation, Kastern District Appellee. of Michigan. Decided December 14, 1955. Before Martix, Mitter and Srewart, Cireuit Judges, Martin, Cireuit Judge. The contest here is between Gustav H. Bobertz, Jr., owner of United States Letters Patent No. 1,911,600, covering a transparent automobile hood, and the General Motors Corporation as an alleged infringer of the patent. Plastic Unlimited, Ine., a sales corporation and not a manufacturer, was originally a party to the suit. The suit against that corporation was dismissed on motion, for the reason that the instant litigation was not begun prior to the dissolution of the corporation under the Michigan General Corporation Act, section 450.75. The complaint of Bobertz was served only about two weeks before the expiration of the patent on May 30, 1950. The patent had been issued on May 30, 19383. Upon denial by General Motors Corporation that the patent was either valid or infringed, issue was joined and a pre-trial hearing had. Extensive discovery pro- ceedings ensued. Pursuant to Civil Procedure Rule 56, teneral Motors filed a motion for summary judgment in- sisting that no genuine issue of material fact was pre- Aen ae ete 13a sented; that the patent claims were invalid; and, more- over, that they were not infringed. The prior art was cited and documents filed establishing anticipation of the claimed invention. Several depositions and _ affidavits were also filed, elaborate briefs were submitted to the court, and oral arguments were presented by both sides. After due deliberation, the district court, in an opinion- order embracing a complete discussion of both the me- chanieal facts and the applicable law, granted defend- ants’ motion for summary judgment on both grounds and dismissed the suit. In his deposition, Bobertz asserted that the concept of making a transparent automobile hood came to him though observing a parked Plymouth car which at- tracted a number of observers because of the fact that its hood was provided with transparent windows for the purpose of making visible the engine underneath the hood. He noticed, however, that people who tried to see the engine through the small openings in the hood gave up in disgust because they could not actually see the engine. His thought was that it would be much simpler if the whole hood were made of transparent celluloid. His first practical application of this thought was to make a transparent hood for a Chevrolet automobile which dupli- cated in celluloid the 1932 Chevrolet hood, made of sheet steel, consisting of two substantially horizontal members hinged together at their edges along the longitudinal center of the hood. Two vertical side members were hinged to the abutting edges of the horizontal members; and the hood was secured to the chassis by conventional hood fasteners in use by Chevrolet at that time. The patent in suit displayed a transparent hood in configuration substantially a duplicate of the sheet-metal hood placed on the Chevrolet automobile manufactured by the General Motors Corporation in 1932. Except that the hood is transparent, the claims of the patent in suit substantially describe a 1932 Chevrolet hood. As stated ! TRAIN Mes io Satie Da RTA DITA ION kA NS ped’ ieee * pot l4a by the United States District Court, the five combination claims of the patent in suit are directed to an automobile hood made of transparent material, consisting of two vertical members, and either one or two horizontal mem- bers with a plurality of longitudinally extending trans. parent reinforcing means connecting the adjoining edges of such members to form a unitary structure therefrom, and securing means adapted to coact with a hold-down latch on the vehicle body to seenre removably the hood to the body of the vehicle. The specifications state that the object of the patent is to provide an automobile hood of transparent material permitting at all times full visi- bility of the engine of a motor vehicle. The specifications declare the novelty of the invention to reside in the transparency of the top and sides of the automobile hood, affording full visibility of the engine. The transparent automobile hood was not intended to be used regularly, but only temporarily to replace the ordinary hood. The District Court quoted Claim One of the patent as representative. Claim Four is also typical, and reads as follows: ‘‘An automobile hood including two trans- parent vertical members, two substantially horizontal transparent members, a plurality of longitudinally ex- tending transparent reinforcing means connecting the adjoining edges of said members to form a unitary strue- ture therefrom, and means secured to said hood and adapted to permit removable attachment of said hood to a motor vehicle body.’’ The District Court asserted that it is clear from consideration of the file-wrapper history of the prosecn- tion of the patent in suit and from the language of the patent claims that the claims finally granted were ex- pressly limited to an automobile hood of several pieces made of any transparent material and joined together by a transparent reinforcing means to form a unitary structure. lda All seven claims of the original application filed in the Patent Office were rejected; and a total of nine new claims were filed during subsequent proceedings in the Patent Office whereof five were finally allowed. The re- jected claims embraced such language as ‘‘transparent means for enclosing the portion of the vehicle between the radiator and the cowl’’; ‘‘transparent automobile hood formed of transparent material’’: and the words “of sheet celluloid.”’ The District Court found that the rejected claims pre- The opinion of this court in A. O. Smith Corporetion y. Lincoln Electric Co., 82 F. (2d) 226, 229, 230 (C. A. 6), declared that the inventor had created an express limita- tion pertaining to the inventive step, and would not be permitted to depart from the plain meaning of the lan- guage he adopted, or to claim for such language a broad and general construction. It was asserted that the file wrapper confirmed the conclusion that the inventor had deliberately limited his claim in a specified manner and that the claim, read in the light of the specifications, measures the invention. See also Falkenberg v. Golding, 195 F. (2d) 482, 485 (C, A. 7); Midland Steel Products (‘o. y. Clark Equipment Co., 174 F. (2d) 541, 545 (C. A. 6); D'Arcy Spring Co. v. Marshall Ventilated Mattress (‘o,, 259 Fed. 236, 240, 241 (C. A. 6); R. M. Hollingshead (‘o, v. Bassick Mfg. Co., 73 F. (2d) 5438, 548 te, . A, Os Firestone Tire & Rubber Co, v. United States Rubber Co., 79 F. (2d) 948, 955 (C. A. 6); Directoplate Corporation v. Donaldson Lithographing Company, 91 F. (2d) 199 (. A. 6); BakerCammack Hosiery Mills v. Davis Co., 181 F. (2d) 550, 563 (C. A. 4). 17a The claims of a patert are to be interpreted, not only in the light of the specifications, but also with reference to file-wrapper history. Whitman v. Andrus, 194 F. (2d) 970, 275 (C. A. 6); Schriber-Schroth v. Cleveland Trust Co,, supra. In addition to the German patent issued to Rumpler, No. 379.379, there is in the record documentary evidence, which was presented to the trial judge, that the prior art before the Bobertz patent disclosed an automobile hood of such transparent material that the engine could he viewed. In the issue of February 11, 1911, of a French publication, La Locomotion, there was depicted a glass hood for demonstrating the engine of an automobile of that period. The fact that the hood revealed in La Loco- motion. was made of glass and not of plastie is im- Sete? lel ae Dies ens Cee seas a SOMONE teen, NE SR; Laat Wate § ieee Hb A | A aa ee ie Tete Lat WG 8 ASR POOR hee EL ee a ee Stee eee oe ay main 18a material, for the claims of the patent in suit are not limited to plastic, the use of which in automobile hoods had been revealed in Rumpler. In United States Letters Patent No. 1,045,152, issued to Kelsey on November 26, 1912, covering a ‘‘flying machine,’’ transparent sections of celluloid or other transparent material were directed to be so placed that the operator could view ‘‘both the operation and adjustment of the mechanism below the plane.’’ A journal published in London, England, The Motor, in its issue of July 2, 1912, showed a Cadillac automobile with a transparent glass hood. In another publication, The Autocar, of date September 28, 1914, this sentence appears: ‘‘A very striking feature about the car is a glass bonnet that Mr. Bennett has introduced for trial and demonstration work, and one which ap- parently attracts a great deal of interest to the ear, [A Cadillae.]’’ The District Court logically reasoned: ‘*‘A transparent automobile hood was old in the art. Whether it be made of glass, plexiglas, celluloid or plastic, its funetion prior to the patent here was identical with its funetion in this patent. The several pieces of transparent material con- stituting plaintiff’s inventive effort function in the same manner and serve the same purpose as the prior art pat- ents and publications, without regard as to the type of transparent material described. The Bobertz patent here does not come up to the high standard of patentable in- vention required to sustain combination claims such as the claims in this suit. Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U. S. 147; Cuno Engineering Corporation y. Automatic Devices Corp., 314 U.S. 84. The claims in suit are not limited to transparent plastic and this limitation cannot be read into the claims in order to save them from invalidity.’’ Patrol Valve Co. y. Robertshaw-Fulton Controls Co., 210 F. (2d) 146 (C. A. 6); Aluminum Company of America v. Thompson Products, Inc., 122 F. (2d) 796 (C. A. 6); and Parke- 4S — oa See OF eee ee ee a eS ee 19a Davis & Co. v. American Cyanamid Co., 207 F. (2d) 571 (C, A. 6), were appropriately cited as authority. Mere substitution of materials, when no new results are accomplished, does not attain the dignity of invention. Timken-Detroit Axle Co, v. Cleveland Steel Products Cor- poration, 148 F. (2d) 267, 271 (C. A. 6); James Heddon’s Sons v. American Fork and Hoe Co., 148 F. (2d) 230 (Cc. A. 6); Seiberling Rubber Co, vy. I. T. 8S. Co., 134 F. (2d) 71 (C, A. 6); Goodwin v. Borg-Warner Corporation, 157 F. (2d) 267, 274 (C. A. 6); United States Appliance Cor- poration V. Beauty Shop Supply Co., 121 F. (2d) 149, 150 (C. A. 9); Hinehman v. Jim Robbins Co., 113 F. Supp. 992, 304 (KE. D. Mich.; Levin, J.). The Court of Appeals for the Seventh Cireuit, in Elec- tro Mfg. Co. v. Yellin, 132 F. (2d) 979, 981 (C. A. 7), said: “Plastie products have been made for many years. They are lighter in weight than metal, are translucent, and per- mit great variation in color. Nemeroff [inventor of the patent there in suit] did not disclose a new material, he merely substituted a plastic material for the metal which was used in the prior art, end the District Court held that this did not amount to invention. [Citing cases. ] Moreover, the use of transparent and translucent ends for lighting fixtures is old. We do not say that the design patents referred to anticipate the patent in suit, yet we do say that there was no patentable genius involved in Nemeroff’s disclosures. This was the District Court’s conclusion, and we think it was correct.’’ It seems almost idle to reiterate that quite a high standard of invention is now exacted to sustain combina- tion claims embracing old elements in a patent. This was made plain fourteen years ago in the opinion of the Supreme Court in Cuno Engineering Corp. v. Automatic Devices Corp., 314 U. S. 84, 90-92. Any lingering doubt as to the intention of the Supreme Court to require strict rather than liberal construction of combination claims was certainly dispelled by its opinion in Great Atlantic he ans 4 SESH ome Oe ae teed “\y pase PPL WEL SPOR +N ATI hee NS 20a & Pacific Tea Company vy. Supermarket Equipment Corp,, 340 U. S. 147, 154, where the majority opinion concluded that the standard of invention used in the lower courts was less exacting than that required where a combina. | tion was made up entirely of old components. ; In General Motors Corp. v. Estate Stove Co., 203 F. (2d) 912, 917, 918 (C. A. 6), Judge MeAllister thus ex. pressed the view of this court: ‘In an able and ingenious argument, appellee submits that, in specifying anew statutory standard of invention, the Act does not treat combination patents on a different basis from other pat- ents. as it is claimed the Supreme Court did treat them in Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U. S. 147, 71. S. Ct. 127, 95 L. Ed. 162; that the new Section 103 defines a single standard of invention for all patents; that the subject matter as a whole would not have been obvious at the time the inven- tion was made; and that the extent to which the Great Atlantic & Pacific Tea Co. ease required a different, or more exacting standard, or a more severe test for combi- nation claims than the single standard of invention for all patents, was rejected by Congress in the new ! automobile manufactured and sold by General Motors Cor- poration in 1932. This was admitted by the patentee Bo- bertz (D. App. 70b, 75b) and the Court of Appeals so found (228 Fed. (2d) 94 at 99). This is also evident from a com- parison of the drawings of the Bobertz patent in suit (copy appended at page Ib) with the 1932 Chevrolet hood (photo- graph appended at page 2b; also D. App. 52b, 53b). The claims of the patent in suit are limited to a hood made from a plurality of transparent pieces or members connected at their adjoining edges by reinforcing strips in order to form a unitary structure. Both the District Court and the Court of Appeals so found (126 Fed. Supp. 780, 782; 228 Fed. (2d) 94, 97). In 1949 respondent introduced to the public the Oldsmo- bile ** Rocket” V-8 engine and displayed the ‘* Rocket’’ en- gine by means of a plastic hood (photographs of respond- ent’s accused plastic hood appear in defendant’s appendix pages 63b-66b and also plaintiff’s appendix page 63a). Re- spondent’s hood in form or shape was a duplicate of the metal production hood used on the 1949 Oldsmobiles but was made from a single sheet of transparent plastic mate- rial the border areas of which were blocked out by opaque paint to provide a central window through which the **Rocket’’ engine could be observed (D. App. 20b). Photo- graphs of the 1949 Olds steel production hood appear in Defendant’s Appendix 56b-62b. Respondent based its motion for summary judgment on the following incontrovertible, self-proving documents; namely, 2 @ 4 ‘ ee Bettas. ancl AN 4 (1)