# Petition for Writ of Certiorari — Parks-Cramer Co. v. American Monorail Co. (No. 533) > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386418_1577%3A4 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition for Writ of Certiorari - **Published:** January 1, 1957 ## Text : ‘Office - Supreme VQun, U.S. PILeo. . | In The JOHM T. FEY, Clerk =| SUPREME COURT of the UNITED STATES : ; ~~ OCTOBER TERM 1957 eee, wo 3 3 . PARKS- CRAMER COMPANY, a Corporation of ad Massachusetts: - Petitioner - > VS. THE AMERICAN MONORAIL COMPANY, a _ Corporation of Ohio, Re spondent . ) - PETITION FOR A WRIT OF CERTIORARI TO + . THE UNITED STATES. COURT . : OF APPEALS-FOR THE | FOURTH CIRCUIT . AND APPENDIX = y; | oF es ene JosePH W. Grier, JR., 400 Law Building ; . . ~ 4 +» * Charlotte 2, North Carolina . eT. gies | _ Counsel for Petitioner - _ Of. Counsel ° Nigar eee a hah . : : angi O° Cepric. W. PORTER, 41 Tremont Street ~ ’ Boston 8, Massachusetts os a sient PSON, 400 Law Building ; pre Charlotte 2, Noftth Carolina . -INDEX. . Opinions Below hitcnnscinenebuonopesniehieaite nO EO ELE - Questions Presented oat Wn | 2 Statement of the Case. . 3 "Reasons tor Allowance of Writ: Jebtrodeactboe cee everett Ne ae I. The Court Of Appesia Erred In Holding That The Patent: In.Suit Was Invalid For Lack Of Invention - Despite The Fact That Many Others Skilled In The Art ‘Had Made Numerous Attempts To Solve ‘The Industry’s Problem Withou: Success And Tite. Peti- tioner’s Device Has Enjoyéd Great. Commercial | RE achat hal eT ae Bes CO we vo _ II. “The Court Of Appeals Erred In Failing To Rec- ognize Fhat Section 103 Of Title 35 Of The United . States: Code Requires It. To Determine Existence Of, alnvention By Reference To What Was Obvious To A Person Having Ordinary Skill In The Art . cig III. The Court Of Appeals Decision That The Standard Of Invention Is A Legal Rather Than A- Factual Question Is Contrary To The Decisions Of This Court And In Direct Conflict With The De-- cisions Of The Great Majority Of The Other Courts © OE TEI ann citing ncn ae - Conclusion .... sak eee an sacistigataanpeae’ Peters eae 23 MMII 8 tii ints diclinesibaewp end i 28 * AppendixA:> . | , _ Opinion of United: States Court of Appeal for the eres econamaicapone 1 Appian: ie hee oh, ee ‘TABLE OF AUTHORITIES = Cases Becton Dickinson & Co. v. R. P. Scherer Corps, aut F. i 2d 835, 843 (CCA 6th 1954) ........ ic scocataeterias ae Blish, Mize and Silliman Hardware Co. v. Time Saver Tools, Inc., 236 F*2d 913, 916 (CCA 1Q@th 1956), . | cert. denied 352 U.S. 1608 FF SS. CA SS 1c. ..... 23 Cuno Engineering Corp. v. Automatic Devices —_ Tl 314 U. S. 84, 62S. Ct. 37, (1941) ...... xhansi ine Rie oe Fauikner v. Gibbs, 170 F. 2d 34, 37 (CCA 9th 1948), caper "affirmed 338 U. S. 267,70 S. Ct. 25 (1949)' 23 Gentzell v. Manning, 230 F. 2d 341, 344 (CCA ‘2d | 1956), ceft. deni 352 U. S. 840, 77 S. Ct. ED ict 18, . ~ Goodyear Tire’ & Rubber Co. v. -Ray-O-Vac, 321 U. S.: 275, 64S. Ct.-593- (GAM Yep neennenenrcene a badass ‘11 Graver Tank & Manufacturing Co. ¢. ann Air Prod- ucts Co., 336 U.S. 271,275, 69 S. Ct 535, 537 (1949) ; 339 U. S. 605, 609, 70S. Ct. 854, 857 (1950) 21 Great Atlantic and Pacific Tea Co. v. Supermarket Corp., 340 U. S. 147, 71 S. Ct. 127 (1980) cro 19 Interstate Rubber Products*Corp. v. Radiator Specialty a Co., 214 F. 2d 546, 548 (CCA 4th 1954) con ig aes ; = Page - Lincoln Stores v. Nashua Mfg. Co., 157 F. 2d 154, 163 | (CCA Ist 1946); cert. denied 329 U. S/ 811, 67 S. Ct. 623 (1947) . jc eA Baa 23 L-O-F Glass Fibers v. Watson, 228 F. 24 40, 47 (ce, of _ Custs. & Pat. App'ls 1955). , rae a = 8 ieee Bausch & Lomb Optical Co. 24K. 2d 530, 535 (CCA 2d 1955), cert. denied 350, U. S. 911, rehear- ing denied 350 U.S. 955 (1956) . 3, 19 Mojonnier Bros. Co. v. Tolan Machinery C Co., 230 F. 2d 850, 851 (CCA teases se saieaiane 18. Safety Car Nething ont Lighting Ca. v. General Elec- tric Co.,.155 F. 2d 937 (CCA 2d 1946) eoeaks 12 Schering Corp. v. Gilbert et al., 153 F. 2d 428, 432 cog (GEA 08 G9) a . 2 ‘Sutherland Paper Co. v. Grant ‘Paper Box Co., 183 F. 2d 926, 935 (CCA 3r@1 90), cert. denied 340 U. >. 906, “dad ca Sacre TO LE REET 23 Sine Chi: i; Gata Oil & Refining Co., 225 F. 2d 725. rae... oe . Thomsox Spot Welder Co. v. Rord Motor Co: , 265 U. S. 445, 446, 44 S. Ct. 533, 834 (1924) on. S a Wasserman v. Burgess & Blacker Co., 217 F. 2d 402, | AU AR: WI I eas ieee iniiecrenictickcenaonnstnciie. 18 Willis v. Town, 182 F. 2d 892, 894 (CCA 8th. 1950) . 23. Other A ogre ie - 28-U:S.C. $1284 (1) Nee heiee one Bee... ee H. R. Rep. No. 1923, 82 Cong., 2a Sess. (2952) -. 16, 17 . (a; Ei ‘ - , D aes - e-. : | } Page S. Rep. No. 1979, 82 Cong. 2d Sess. (1952) . ne 6,17 ee Hearings before Subcommittee No. 3 of eeu . ‘mittee on Judiciary, 82d'Cong. Ist Sess. 38 (1951)... Frederico, ‘Commentary’ on the. New Patent Act”, 35 2 FORT ER Ain ic eee IC eee -16 Libert, “Section 103 of the Patent Act and the Standard of Invention: Comments on Lyon v. a - Optical Co. 38S. ‘Pat. Off. Soc’y. 304, 325 an a) Qt oo The 7 SUPREME COURT of the UNITED. STATES OCTOBER. TERM, 1987 | No. . _ PARKS-CRAMER COMPANY, a Corporation er . Massachusetts, x Re ee Petitioner — 1. a —————— @ Vs. THE AMERICAN MONORAIL COMPANY, a Corporation of Ohio, = &® Respondent . .-— be - &§ @ a fee eee a cchtnieieiiticpaetenl —— -—-— - aa eae y PETITION FOR A WRIT OF CERTIORARI TO ~A _ THE. UNITED STATES COURT Soa ties OF APPEALS FOR THE. ‘ \AOURTH CIRCUIT s To the Honorable, The Chief Justice of the.United ' ; States and the Associate Justices of the Supreme 5 fe eae Court of the vanes States: 3 Petitioner respectfully prays that’ 2 a writ of certiorari issue to review the judgment of the United States Court . of Appeals for the Fourth Circuit reversing a final judg- ment of the United States District Court far ‘the: Western . " ree ; \ a District of. North Carolian--Wuered originally the peti-_ tioner was as plaintiff and the respondent was ‘defendant. OPINIONS BELOW The o opinion of the United States Conit of. yo" for _ the Fourth Circuit is reported at 245 F. 2d 739 and ‘appears as Appendix A to this petition. The opinion of the United States District Court ‘for the Western District of North _ Carolina is reported at 147 F. Supp. 218 and appears at - — page 17 ta* of. the Record. + JURISDICTION The opinion and judgment sought to be reviewed were entered by the United States Court of Appeals.on.May 27, 1957, and _ _appear—as Appendix A and B of this © ' petition. Petitionet’s timely petition for a rehearing was denied on July 10, 1957. The jurisdiction of this Court to review by writ of certiorari the judgment in question is conferred by Title 28, United States Code, Section , 1 eS i. QUESTIONS PRESENTED (1) Did the Court of Appeals e err.in reversing the trial court and holding that the patent in suit was invalid er _ 7 ‘Cine shale ened dk scteieed Sor wee! ot-tes- Uttiad Swiie "pf Appeals for the Fourth Circuit are filed herewith pursuant . | SAppeedic Of Acpalh ‘containing p aA 8la and | of ppellant” ia to 18la a gray t labeled “Appendix for the ppellee” containing pages 1x _ - for lack of invention, rome the trial de s findings of * fact that: , _ (a) the textile cleaning industry was tenths on ‘the look Sut for and in need of a means of solving the problem which the patentee overcame; -. -.- v. '(b) many men skilled in the-art of textile cleaning, including defendant’s research men, were continuously _ es to devise some means - bed solving, the problem ; ~, * (c) the patentee’s uiaies of the problem met a — 3a response from the textile nore: and has been. highly Anwar _ successful commercially; - : — "> (d) the defendant and other Seaman who had le: -_ viously offered other solutions to the industry found — that such products were not competitive and. turned , to copying the — s device? : Souk (2). Did die Court. of hiioiite err in applying an ¥ improper test of what constitutes patentable invention in view of the enactment of Section 103 of Title: 35 of the _ U.S. Code? . _ . (3) Did the Court of Appeals err in holding that the standard of what constitutes patentable invention, 4s a legal - 2: ne than a factual one? = - STATEMENT OF THE CASE . 1 A as arothom in the manufacturing of bexiile yarns So al fabrics made from cotton and other short staple fibers is the collection of lint which i is shed during the manufactur- ing — collects on the’ textile machines, forms : ev _ bunchés and frequently becomes caught in ne suet tees -are drawn, spun, wound and woven, causing § slubs and other . imperfections_in the-yarns -and fabric. The bunches often ___tause breaks which require piecings, resulting in further © imperfections. A major item, therefore, in the cost of textile” ‘manufactrre lies in keeping the textile machines, room sur-. faces and material in process reasonably free from such . * tint. This, fact is of particular importance oe reference to the spinning « room. : : | Prior to about 1926, cleaning of spinning frames was . - done by hand (28a). ‘The spinning room operatives would . wipe'or brush off-th¢ surfaces where lint had accumulated, ». or would blow the lint off. by fanning» In some mills certain~ _ portions of spinning frames such as underframe and ring _ Tail areas were cleaned periodically by compressed air (23a). The’ air was piped into the.room and a long flexible ‘hose “was attached. This-hose had a metal or other rigid nozzle on the end; which the operative would direct.at surfaces to be cleaned (24a). Since ahout 1926 traveling. blowers, » '. Funning continuously on a track above rows of textile machines, such. as ‘cotton ring spinning frames, winders, __ twister's, spoolers, warpers and, more recently, looms have — - been widely used. These “traveling cleaners” blow the lint ‘f off such machines at approximately five minute intervals. | The air didectbvatingg outlets ‘fn ‘the ‘ale cleaners termi- nated above the machines and above the heads of. the - machine operators when standing. This is illustrated by a photograph of one: of those early cleaners (the Hodge cleaner), appropriately marked to identify various parts of the spinning frame, reproduced on facing page. ( Plaintiff's Exhibit 1.) The Hodge frame cleaner, riding on a track. above the spinning frame, is the cleaner on the right of the - ai identifiable by. the presence ‘of air dain ex- tending toward the- frame. This cleaner, along with the ‘Walker-Smith type ¢Plaintiff’s Exhibit 13, 61x) and Lawrence type (Plaintiff's Exhibit 3, 56x) typify the early . cleaners which were in yse, All of these were manufactured | and sold by either plaintiff or defendant. : Prior to the inventi we represented by the patent. in suit, -/ No. map ate! in 1950, certain areas of spinning frames.such a undersides of the top, middle an bottom creel boards (C, M and D on Plaintiff’s Exhibit 1) were not _ cleaned by the overhead traveling blowers (5x, 9x, 37x).’ No Way had. been found:of delivering air from traveling — blowers to these out-of-line areas. The lower outside sur- faces of these machines, such as ring rail (RR), travelers _(V), ete., also could not be cleanéd effectively since no way had been found of reaching such surfaces with air .of | sufficient. intensity to keep them clean without creating air. currents togyetrong ‘for intermediate areas of the machine, such as the ‘Pving: and drafting rolls (5x-6x,. 39x-40x))\ . Asa rule these lower ftame surfaces and underframe areas | _ were cleaned during shut down periods by the use of com- z pressed air (34x, 39x). \ ; N umerous attempts were made to improve early types of traveling. cleaners and to dévise special cleaners for certain areas. These attempts were far from successful. At best only slightly better cleaning resulted. A good deal of hand cleanigg still had-to be done and. ‘machines had to _ be stopped periodically: for more thorough blowing off. This _ ‘ Tabor was expensive; some production time was lost; and the - quality of the product suffered. Faced with the problem of devising better. means ‘of | _ Plaintiff's Exhibit : Early Hodge: Cleaner. - 6 e! .. cleaning out-of-line and otherwise hard-to-reach areas effectively, plaintiff's Research Director, Grover B. Holtz- claw, conceiveg the ‘novel idea of using extended air outlets (cuffs, nozzles or sleeves) of appropriate sHape and size . * ‘to deliver air currents of the right volumes and velocities ‘at the right places and in the right directions, such outlets being made of flexible material in. order to yield if they _. should come :in contact’ with a. mache operator or other’ obstruction, as the cleaner traveled along at a speed of 100 - feet or more perifginute. The invention had three important “components, each’ of which was. novel in the traveling - cleaner art:. (1) conveying air currents down below head ~ height into the-working area of the room close to surfaces to be cleaned, (2) directing the issuing air currents ac- curately at-controlled volumes and velocities and against surfaces not. previously cleanable, and (3) employing flex-. _ ible materials inamaking the extended sleeves to insure safe operation without injury to operatives or equipment. * Although the canbodlimnent of. the invention illustrated in . the patent featured relatively short flexible cuffs or sleeves, the inventor also contémplated-the use of longer and mul- tiple sleeves if necessary,.to. a thorough cleaning of the » machines {10a-1la, 26x). Numerous émbodiments. were ” developed by the.inventor over a period of years following the issuance of his patent; to which the defendant ‘contri- _ buted nothing. A photograptPof the plaintiff’s “elephant trunk” Ymbodiment, the device copied by the defendant in 1954 (43x-44x) appears on facing page, in.the process of striking arid” passing over an employee (Plaintiff’s Ex- hibit 16). It is to be noted that this elephant-type cleaner . contained short sleeves: with curved end: fdrtions as illus-_ trated in the patent in suit and also longer sleeves featuring a. variety of nearly horizontal inwardly directed air outlets a é f a eee for cleaning many different frame. areas, including the un- | derframe. In December. of 1954, plaintifi learned that. defendant had made and installed equipment which infringed its - patent No. 2,524, 797 and shortly thereafter plaintiff in- stituted this action under. Title 28, § 1338(a) of the United States Code. The -trial court held the plaintiff's patent valid 'and“infringed by the defendant (180a). On appeal by, the defendant, the judgment of the trial court was re- versed by the Court of Appeals or the- ground that the ". patent ‘in suit is invalid. for lack of inv ention. Plaintiff's - petition for a rehearing was dered. REASONS FOR ALLOWANCE OF WRIT I ntroduction os | This is a case in which the United States Court of Ap- peals. for the Fourth Circuit, ii? overthrowing the trial court’s finding of. validity, improperly and contrary. to the -Tequirements of. Séction 103 of Title 35: of the United ‘States Code and the decisions of this Court took no ac- count of the fact that many persons skilled in the trade had over a number of years sought unsuccessfully to solv e Whe problem which this patentee. finallyeovercame. Despité the trial court’s finding of fact, the Court of Appeals’ opinion made no mention of such unsuccessful prior atterhpts, hold- ing the patent invalid, for lack of invention on the Basis of > some purely subjgtive and theoretical test unrelated to the talents of a person having ordinary skill in the art. In so doing, the United States Court of Appeals for the Fourth Circuit (1) rendered a decision which conflicts with princi- - ples of law enunciated in the decisions of other circuit | Plaintiff's Exhibit 16. "Elephant". Type. Holtzclaw Cleaner and Operator oe my . o nds, ' > a courts ‘of appeals ; (2) decided an important question of. federal law, to wit, that Section 103 of Title 35, of the United States Code does not restrict the scope of an ap- pellate court’s inquiry’to the issue of whether or not the invention was obvious to a_pérson having ordinary skill ‘in the art, which question has not been,. but should be, settled by this’Court; and (3) so far depatted from the accepted and usual course of judicial proceedings as to.call for an exercise of this Court’s power of supervision. I. The Court Of Appeals Bered In Holding That The : Patent In Suit Was Invalid For Lack Of Invention Despite The Fact That Many Others Skilled In The Art Had Made Numerous Attempts Tg Solwe The Industry's Problem ~ Without Success And The. Petitioner's Device Has En- joyed Great Commercial Success. ran * That thete was a marked and long-felt need for a cleaner © which would perform the cleaning. job made possible by _, the Holtzclaw invention has been demonstrated by the testi- mony of plaintiff’s witnesses (7x, 37x). Two of plaintiff’s witnesses were mill executives who have been confronted with the problem from day to day. Additional eviderice of . such fong-felt need is contained in prior art patents which bear witness to the many other. attempts of men skilled in © & the art to solve this cleaning problem. Plaintift’s testimony has also shown. the: marked com- . -° merGial success which the Holtzclaw flexible sleeve cleaner has.enjoyed. (22x). In the calendar year 1955 alone, plain- | tiff sold to 155 mills 1,395 such cleaning units operating over approximately three and one-third million spindles, * | which is. equal to about one-seventh of the spindles in use ~ in the United States. The gross sales price of such cheaning i o S _ tnits in . 1955 aggregated t three‘ and a half sidllion dollars (Sta), poe ir As was indicated .by the district judge’s finding of fact, | “many men skilled in the art of textile cleaning were con- tinuously undertaking to devise somé means: for cleaning @ the lint from the varioys surfaces of such machines not- ‘ cleaned by the machines (traveling cleaners) of the Walker and Lytton types. . . Holtzclaw has evidently overcome the problem which: confronted the industry for many years and has devised by his invention a means and a method tc | deliver air to out of-line surfaces and at:a prey velocity and in such volume as is foun@, proper. * (173a, 176a). . Prior to Holtzclaw’s invention the problem of cleaning tex- tile machines was made more difficult by the fact that dif-. ferent areas were found to require air streams of different velocities,and directions in order to.provide effective clean- ing without interfering -with “efficient machine operation — ‘and impairing yarn quality. For example, in the roving | and drafting areas, not much air is permissible; velocities here must. be restricted to only a few hundred feet per minute in order to avoid impairing the quality of the yarn—- Midway of the spinning frame, somewhat higher velocti€s are required to reach under the draftipg rolls and-clean _associated areas. Still farther away from the overhead traveling unit, s still higher velocities are needed for clean- ing the spindle areas. The most-remote areas to be cleaned, ‘namely, withjn the underframe, require air velocities many times greate than are permissible up in the creel area. ‘he attempts to solve the problem included (1 ) divid- ° ‘ing the air conduits of overhead traveling cleaners, making them ‘wider so as to provide some adjustability in the- di- rection of the issuing air currents, (2) adding adjustable i wy je ee “air deflectors of various sorts, and (3) installing entirely separate blower pet within the: undef frame. Certainly Holtzclaw’s solution of the problem of inden an entire textile machine from an overhead traveling cleaner was not’ obyious to Hodge (plaintiff’s exhibits 24, 25, 28, and 30), nor to Smith (plairitiff’s exhibit 29), | nor to Moore (plaintiff's exhibit 27), whose attempts -were ‘made over a considerable period of years. Nor was the solution obvious to Holtzclaw himself. He.did not develop — the cleaner in suit until some ten years after his Parks- Cramer predecessor Hodge had obtained cleaner patents. _despite the fact that he was constantly engaged in develop- * ment and research work, . And costal the solutioti was not obvious to the de- fendant who, even after Holtzclaw’s, application had been. filed, publicly admitted in another | patent application that _ the problem was insoluble (Miller and Becker patent No. ” 2,516, 475, plaintiff's exhibit 8, Col. 1, line 31}: - “Ever Since ‘spinning frames were first used the problem of removing lint from them’ or preventing its accimulation on them has existed and many proposals — have been made to solve this problem. . Air streams could theoretically be used to effect the , desired cleaning but the problem of generating such - streams and delivering them against all the parts in the underframe to be cleaned has apparently been in- soluble. . . A traveling air stream could not be a ee | — from outside the frame. . Lack of obviousness of the Holtzclaw ren is thus especially demonstrated by the work of Miller and Becker, | _defendant’s inventors, who went. to great lengths to de- velop for the defendant the special underframe cleaner dis- closed in their patent. As shown by the record in the present case,, the Miller and Becker cleaner proved to be practically non-saleable in competition with the. improved cleaner of. the Holtzclaw patent in suit..Defendant has virtually aban- _ doned its. Miller and Becker underframe cleaner and has - instead copied plaintiff’s Holtzclaw cleaner. We submit that | -it is inconceivable that the defendant should have made the « investment involved in dev eloping and selling its expensive underframe cleaner of the Miller and. Becker patent. if, as defendant now contends, it were -ebvious alt the — ~ that air for cleaning could be conveyed to the underframe areas by an ov erhead cleaner employing Holtzclaw’ - flexible _ ducts. _ , Despite the significance of these many prior unsuccessful - attempts, no reference whatever was made to them in the opinion of the Court of Appeals. in which the decree of | the trial court was rev ersed. ‘ - That such cidibiniies may be determinative was in- | dicated by Justice Roberts when.writing fo- this Court in Goodyear Tire & Rubber Co. x. Ray-O-Vac Co., 322°U. S. 275, 278, 64 S. Ct. 593, 594 (1944) a case in which the. ; validity of a patent relating to a leakproof dry ceH for a_ flashlight battery was sustained : ‘ “The District /Judge made findings, which have swp- port in the evidence, to the following effect: That the problem presented was old and no solution was attained prior to Anthony’s invention; that the respondent he- gan marketing the patented ‘cell in 1939 and was the first to guarantee its product against sticking in the 2. Ear: oe _ flashlight case; that the cell met with immediate cum- amercial success due tothe adwantages of its construc- ' & tion and not to-extensive advertising . . . In his opinion he examined the prior art and showed that none of . the workers in the art had met the problems of leakage | and swelling in. the way suggested by Anthony and that most of the citied patents had not in fact been addressed to Cee” * * « pie ae seem simple and such as should have been obviotis to’ those who worked in ‘the field, but this is not enough — to negative invention. During a period of ‘half a cen- tury, in which the use of flashlight batteries increased | — : Re “Viewed : after the event, the means Anthony adopted - enormously, and the manufacturers of flashlight.cells — were conscious of the defects in them, nc one devised - a method of. curing such defects. Once the method was discovered it commended: itself to the public | evidenced by marked commercial success. Bg were entitled to weight in determining whether the improvement amounted to invention and should, in a close case, tip the scales in favor of patentability. Ac: . cepting, as we do, the findings below, ——— the patent " valid and oes . ° As is indicated in Jats hanes ail S opinion in, Safety Car Heating and Lighting Co. v. General Electric Co., 155 F. 2d 937 (CCA 2nd 1946), the very best test ae of what constitutes patentable invention -has always been - the pragmatic one of considering the industry’s need for . the invention, ‘the number of those who sought to meet: that need, i eee and : sa 13 4 Pe, | a the reception which the invention received in the market. Judge Hand more recently emphasized the same considera- tions as determinative in Lyon v. Bausch & Lomb Op-- tical Co., 224 F. 2d 530, 535 (CCA 2nd 1955), cert. denied 350 U.S. 911, rehearing denied 350 U. S. 955 ¢ees). There he stated: _. “The most competent utah do. nk tnd ter _ at least ten years been seeking a hardy, tenacious coat- | “ing to prevent reflection; there had. been a number of _ attethpts, none satisfactory; meanwhile nothing. in the ; implementary arts had been lacking to put the advance into operation; when it appeared, it supplanted the - existing practice and occupied substantially the whole ~~ field. We do: no¥ see how any combination of evidence ———— could more completely demonstrate that, simple as it - | ; was, the change had not been ‘obvious * * * toa person having ordinary skill in the ater we”. Mee _ Clearly the Court of Appeals for the Fourth Circuit vi- ‘ olated the fundamental principles of patent law by. disre- garding these pragmatic tests of invention and indulging in a theoretical subjectivity in which hindsight played the _ role. : U. The Court Of Appeals Erred. In Failing To Recagnise That Section 103 Of Title 35 Of The United States Code . Requires It To Determine Existence Of Invention By Ref- erénce To What Was Obvious To A Person Having Ordi- .. nary Skil In oad Art. ae. ; ae We have ‘tiistta nitened out. that this Court and other — ~. federal courts have held that the most satisfactory means . of determining the existence of invention is by euatining « Be, : 44. ; : ~ | 2 Pa i : = ee 4 oe B. D. Watts (Craighill, eaten & Kennety, j. B. } Craighill, Richey, Watts, Edgerton & McNenny, and © F. O. Richey on brief) for Appellant, and Joseph W. | Grier, Jr. (Taliaferro, Grier, Parker & Poe, Sydnor Thompson, Porter, Chittick and Russell, and Cedric W. Porter onteuty for ae. SoBELOFF, Circuit Judge: 2 ~ suit here is a pateie sang to-en improvement in - traveling’ fans. or cleaners installed principally in textile factories to blow lint frem spinning and weaving machines and from yarns and fabrics during the manufacturing process. The plaintiff, Parks-Cramer Company, is the owner . of patent: No.°2,524,797, issued to it on October. 10, 1950, as assignee of the inventor, Grover B. Holtzclaw, its re- search director." The District Court having upheld the plaintiff's contentions on validity and infringement (147 . ‘F. Supp. 218), the defendant, The American MonoRail east —_ the case here on — 'The ‘ios of the patent with which we are re ae concernall is No. _ 6, .as fofiows: “The combination with a traveling cleaner, for blowing lint, dust, and other foreign particles from longitudinally alined machines having a trackway dispased above and longitudinally cenérally of said machines, said - cleaner ‘having a.motor driven carriage and fan with means operable by said motor for propelling the carriage along the trackway and for rotating said fan, and a fan casing enclosing the fan having an inlet and oppositely posi- tioned ‘outlet conduits, of the construction in which the said conduits present a rigid section terminatirig above the heads of the machine operators when standiag,.and in which the said conduits at each side are provided with a cuf of highty- flexible material extending therefrom toward the machines to ‘enable currents of air produced by the fan and discharged through the cuffs * to be directed against the machines and the cuffs to yield upon impingement with an ae ak or other. obstruction in their path of travel.” : A long-standing pre in the textile industry was thes in spinning yarn and weaving it into fabric, minute par- ticles of fibre, called lint, would accumulate on the machines - /_ atid ’on the material being processed. This interfered with _ the proper operation of the machines and caused defects in the product. Various means were employed at different times to remove-lint. Before 1925, it was done largely by hand: operators of the spinning or weaving machines would pick ‘off the lint or wipe or brush off the surfaces where it had. accumulated: Another but still comparatively primitive method was to pipe compressed air.into the spinning’ room. _ Attached to the pipe was a jong, flexible hose with a nozzle on the end, which the spinning machine operator directed as -Ttequired. Like the original hand method, this consumed ‘much of the operator’s time and was not satisfactory. Later came mechanical cleaners—fans or blowers propelled along tracks suspended from the ceiling or otherwise fixed above the spinning machines. The fan is enclosed in a casing or housing with outlets for the air current. ‘Tier ate sew ge established feature of cotton mills. : A shia cenctinin ccndiens wh 6 eng, Ssh enlig the floor and extending the length of the spinning room. _ Above are three interspaced boards or shelves, running the - length of the base. These are known as cree! boards, and “they support, the bobbins of roving or raw fibre, and the. ‘spindles. The boards, together with the’ equipment they hold, are referred to as the creel, when it is desired to dis- ang Gih.gan 6 Ge cones teen Ge eww pant, which is often called the underframe. | | Spinning machines are usually arranged in.a series of - rows, with aisles between the rows. In the aisles, operators pass frequently in attending the. machines. The blower eo APPENDIX - | mechanism on the overhead sesitasias wayele the length of the machine slowly and continously to blow away the lint. t even after the introduction of this overhead apparatus, . it\remained a problem to/get the air in proper volume and intensity between the creel boards, to clean their, under- ‘surfaces; and especially the underframe areas were’ not: | satisfactorily cleaned by such mechanisms. It still remained | ~ necessary to do. considerable cleaning by hand. ’ : anaes of various design, attached to the on housing, were in use from time to time to direct air currents in the removal of lint from the’ machines. Holtzclaw’s patent ap- plication explains that “in usual traveling cleaners, the end of each air conduit extending from the fan casing is pro- vided with two preferably adjustable sleeves or nozzles, one of which directs the blast of air downwardly by‘ the side of the machine therebeneath and the other of which directs _ the air transversely across the machine.” In describing the 7 problem to which he addressed himself, Holtzclaw says: “Each of the sleeves or nozzles usually terminates above the top of the machine and is ineffective in satisfactorily pre- venting deposition or accumulation of lint and the like upon — rigid parts of: the machines not located in the direct paths of the blasts of air, or upon mechanism for the. material 7 being treated located closely therebeneath. For example, in the use of the traveling cleaner for cleaning’ a spinning ; frame, blasts of air are not fully effective in preventing ac- cumulation of lint and the like upon the lower-face of .the creel board and.upon the spools of roving located closely therebeneath and the deposition or accumulation of bunches — of lint upon the roving running from said spools.” | See qpeitatty | lared aim was to provide the well known overhead blower type of cleaner, with a noazle, eeve, oF if \ \ . _ cuff that would reach down lower than a man’ s height, and thereby more « fectively: prevent the accumulation of lint on the underside of the creel board and on the spools. ‘He undertook to do so with P“highly flexible” cuff which would — _ yield on contact with an action. Previously, such.ex-— * tensions of the conduit or v= were not allowed to.go be- _ low the normal height of a person standing in the aisle, for although the fan usually traveled at a speed of only» ‘one @undred feet per minute, it was deemed unsafe or | . otherwise undesirable for a part made of rigid material t to . | extend low enough to strike an: operator. The issue is whether, according to applicable _ stand- | ards, this:is a patentable invention. _ conchude that itis | not. 7 , The base thea eh elas soft sleeve or pipe to convey air, | fluids, or other materials is very old and has been applied many times. Repeatedly it has been held that the: use of _ known devices in.an analogous field is not invention. In a not too dissimilar context, the Supreme * Court said that ‘ such adaptations are “but the display of the expected skill _of the calling and inyolve only the exercise of the ordinary faculties of reasoning. . . .” Concrete Appliances: Coa. vs. Gomery, 269 U.S. 177. The patent which was thete held invalid was for an apparatus to raise wet concrete at one place in a building under construction and distribute it ~ through spouts to other parts of the building. The Court pointed to the familiar use of similar methods and ap- pliances to distribute water and other mobile substances, such as grain and coal. The arrangement provided by Holtzclaw, which adapts to a particular use the well known ~ flexible pipe, is no.mofe novel than the adaptation effected in the Gomery case. The use of flexible pipes is a familiar 2 cutiansiaginee, anid oea-ealp 16 eoahinns Indeed, li ta man who has ever lifted the hood of his automobile will . not have failed to notice the use of flexible pipes or tubes — connected with rigid conveyors of fluids and gases. Holtz- claw himself testified that he was familiar with the use of _ a flexible hose attached to a rigid pipe through which ‘fluids _ , or air or sand was passed. As he said, “You can see that ee AEE eee Without minimizing the ‘ailiaias of Holtzclaw’s de: vice, it is still true that not every idea that may be interest- ing and useful rises to the level of invention. /mgersoll- ’ Rand Co. vs. Black and Decker Mfg. Co., 4 Cir,, 192 F. 2d 270. Many progressive ideas in business anid industry are ~ not patentable.Great A & P Tea Cov. vs. — | a Corp., 3 340-U-S- 147° (1953). tack of invention... | The ouimesielah success of the plaintifi’s ‘aati has | been heavily stressed, but we do! not think that it can aid the patent in this case. es - Commercial success is not a substitute for i invention. It may be invoked: to aid a patent only if the question of in- vention i is doubtful. In the Great A & P case; above cited, ‘the alleged invention consisted of a three-sided frame, with . no top or bottom, which, when. pushed or pulled across a: store anter, ‘moved the articles deposited within | it by a e -k to repeat the operation. The device worked as claimed, speeded the customer ,and saved checking costs for the merchant. Indisputably, it had a quick and wide- spread ae success, but’ it was held unpatentable for ae ULS a a + _ Each patent case’in which the issue of invention is raised _ présents a separate problem, /and it is difficult to find a sure guide in any prior decision. Nevertheless, we must endeavor _ as best we may to derive f | the adjudicated cases a gen- eral principle with r to the question of invention. In | | our view, prior decision: idcarasive of the general prin- ciple indicate the absence of invention here. In Atlantu — - Works vs. Brady, 107 U.S. 192, for example, the patentee — devised a. complicated piece of machinery, consisting of a specially designed propeller-like means ‘for dredging rivers, and devices for flooding compartments of a boat, at will for the purpose of sinking it! to the desired draught of water, and: with pumps to remove the mud dislodged from the river bottom. In phe eae the Court, at page 199, said: “The process of Pear sity in Shines creates ~ a constant demand for’ néw appliances, which the skill of ordinary head-workmen and engineers is generally adequate to devise, and which, indeed, are the natural. _ * and proper. outgrowth | of such development. Each step | forward prepares the way for the next, and each is usually taken by spontaneous trials and attempts in a hundred different places. To grant to a single party a _ monopoly of every slight advance made, except where the exercise of. invention, somewhat above ordinary mechanical or engineering skill, is distinctly shown, -. _is unjust in principle and injurious in its consequences. “The design of the patent laws is to reward those who make some. substantial discovery or invention, which _adds to our knowledge and makes a step in advance in’ | the useful arts. Such inventors are worthy of all favor: | It was never the object of those laws to grant a mo- a SS, en shade of an idea, which would naturally and spontane- ously occur to any. skilled mechanic or operator in the ordinany progress of manufactures. Such an indiscrim- inate creation of exclusive privileges tends rather to. obstruct than to stimulate invention.” of r the dredge:boat in that case was invalid, ine how the flexible cuff here can velty and invention. | z Hf the patent it is difficult to survive the test of . Not unmindful of the rule which requires us not to die- '. turb the District Judge’s findings of fact unless they are clearly erroncou$, we have given his findings deferential consideration. Rule 52a, Federal. Rules of Civil Procedure. We must, however, conclude that he fell into error in at-. } tributing decisive weight to commercial success. Moreover, the appropriate standard. of invention is a tegal, rather than _a factual, question. We think that, for the lacl®ef inventign, .' the patent should not have been granted in the Patent Office | si : or sustained i in ' the District Court. Digits om Decree reversed with costs. APPENDIX B _ °. UNITED STATES COURT OF APPEALS . FOR THE FOURTH CIRCUIT oF ote ——~ S. . eeee The nastaiin MonoRail Company, Appellant .versus _ Parks-Cramer Company, . Appellee 8. Appeal from the United “States District Court for the: ad estern District of North Carolina. | This cause came on to be heard on the er from the : United States District Court for the Western District of ~ North C arolina, and was argued se counsel. ~ On saath whereof, It is now here ordered, ad- _ judged and decreed by this Court that the decree of the said District Court appealed from, in this cause, be, and . ~the same is hereby, reversed with costs; and that this cause “ bevand the same is heréby, remanded to the United States District Court for the Western District of North Carolina, ~. at Charlotte, for further proceedings in accordance with € opinion of this Court. : May 27, 1957. United: States Circuit Judge. SIMON E. SOBELOFF | --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386418_1577%3A4. Public record. Not legal advice.