Ace Patents Corporation v. Exhibit Supply Co.

• Decision Date: 16 May 1941
• Docket Number: No. 7402-7404.,7402-7404.
• Citation: 119 F.2d 349
• Parties: ACE PATENTS CORPORATION v. EXHIBIT SUPPLY CO. SAME v. GENCO, Inc. SAME v. CHICAGO COIN MACH. CO.
• Court: U.S. Court of Appeals — Seventh Circuit

119 F.2d 349 (1941)

ACE PATENTS CORPORATION v. EXHIBIT SUPPLY CO.

SAME v. GENCO, Inc.

SAME v. CHICAGO COIN MACH. CO.

Nos. 7402-7404.

Circuit Court of Appeals, Seventh Circuit.

March 12, 1941.

Rehearing Denied May 16, 1941.

Geo. I. Haight, M. K. Hobbs, Geo. H. Simmons, and Clarence E. Threedy, all of Chicago, Ill., for appellants.

Casper W. Ooms, of Chicago, Ill., for appellee.

Before SPARKS, MAJOR, and KERNER, Circuit Judges.

SPARKS, Circuit Judge.

Appellee by three separate actions charged the three appellants with infringement of the Nelson patent, No. 2,109,678. The causes were consolidated for trial in the District Court, and they are likewise consolidated for the purposes of these appeals. The patent was issued March 1, 1938, on an application filed January 12, 1937. The defenses were anticipation by prior patents and publications; a prior knowledge, use, and sale; non-invention in view of the prior art; and non-infringement. Each of the decrees found the Nelson patent valid and infringed, and ordered an injunction and an accounting. From those decrees these appeals are prosecuted.

The invention relates to gaming devices commonly called pin ball games, usually operated by a coin. The patent is entitled "Contact Switch for Ball Rolling Games," and the specific thing claimed is the construction of a switch target in the form of a resilient circuit closer, so disposed on the game table as to be contacted by a freely rolling ball or other playing piece, which momentarily closes the associated electric circuit. The switch comprises a conductor standard mounted in the table and carries a coil spring having a leg pendantly disposed in the conductor ring located in the table slightly offset from the standard. The standard and ring are wired in a circuit with a source of energy and a relay coil in such a manner that when a ball rolling on the table bumps the coil spring from any angular direction, the leg of the spring will be caused momentarily to contact the conductor ring in the board to establish the circuit for operating the relay coil and any desired game auxiliary device.

A standard is mounted in an upright position on the table, the same having a reduced threaded shank passing through the table secured underneath the table by a metallic clip or nut.

The upper end of the standard is likewise reduced to form a threaded shank, the shoulder thus provided carrying a horizontal washer. The shank above the washer carries a cup-shaped cap and between the cap and washer is the end of a coil spring which at its lower end terminates in a pendant spring leg. The spring assembly is made secure by a lock washer and nut at the top of the standard.

Below the pendant leg and offset from the standard, the table is formed with an aperture in which is securely seated a conductor ferrule, into which the pendant leg is suspended and normally out of contact therewith. The ferrule at its lower end is formed with an inturning annular flange and an integral depending extension. The nut underneath the table, and the lower extension of the standard are disposed in an electrical circuit for an electromagnetic relay coil, and with a source of electrical energy.

In use, when a ball rolling on the table hits the spring to rebound therefrom, the impact moves the spring sufficiently to cause the pendant spring leg to contact with the inturning annular flange of the ferrule. This momentarily closes the circuit and causes energization of the magnetic relay coil for any desired purpose. Since the pendant spring leg is normally disposed at the center of the annular ferrule, a ball striking the spring from any angular direction will cause the circuit to close in the manner described.

Any desired number of such spring switch targets may be placed on the board in any suitable spaced relationship, and a single ball may successfully bump and close a number of the switch devices.

Claim 4 is in issue.¹

To defeat the claim in suit appellants rely upon the following prior art: Fisher, No. 501,777; Quain, No. 1,057,879; Dabos, No. 541,079 (French); Nakashima, No. 1,678,573; Hooker, No. 2,042,786; Design Patents to Tratsch, numbered respectively 94,290; 94,291; and 94,714; the application of Mabs (subsequently dismissed); the prior use of the Bolo device, made by Pacent Novelty Company; and and the prior use by Fitch while employed by the Pacent Company. Concerning the prior use of Fitch the District Court said: "I do not believe the testimony in respect to that prior use. I do not believe there was any such prior use." A reading of this testimony convinces us that the court's conclusion in this respect is supported by substantial evidence. It is not claimed there is any ambiguity in the language employed by the court in expressing its conclusion on this point, and we are precluded from differing with it.

Appellants contend that the claim in suit is anticipated by Fisher, Quain, and Dabos, and that it lacks invention over the other prior art cited. That argument is based upon their assumption that the Nelson patent comprises merely a spring contact switch. The District Court agreed with appellee in denial of the assumption and we feel impelled to hold that there was no error in that ruling. Fisher, Quain, and Dabos merely disclose devices and methods of closing electric circuits in burglar alarms. The first two were considered by the Patent Office. The District Court said that neither Fisher nor Dabos suggests a target for a pin table in which the target is formed of a simple coil spring, pendantly supported, which also forms the contact switch for the electrical circuit. This we think is obvious. Moreover, it is not suggested how either could be used in the environment disclosed by Nelson, and if so constructed, it would neither meet the terms of the claim, nor possess the advantages of the Nelson structure. True, appellants exhibited models alleged to embody the disclosures of Fisher, Dabos, and also Hooker. However, they are not full disclosures, or they are combinations of disclosures from more than one patent, and fail to read on the claim, either separately or in combination. If they did so read, they could not constitute anticipation of Nelson's combination claim, for no single prior art device cited discloses all the elements of Nelson. Chicago Lock Co. v. Tratsch, 7 Cir., 72 F.2d 482.

Quain discloses a burglar alarm in which a coil spring is mounted within a ring with which it may come in contact if the device is moved. If employed on a pin table in the form suggested by appellants, it would be inaccessible to a ball rolling on the table. If Quain were reconstructed, like appellants' reconstruction of Fisher and Dabos, it would have the same disadvantages as all other such devices wherein the entire mounting is beneath the board. If Quain alone be incorporated in a pin table according to Nelson's suggestions it would not differ in this respect from Fisher and Dabos, and would have none of the advantages of the Nelson structure. We think the District Court was correct in holding that the claim was not anticipated by Fisher, Quain or Dabos.

Appellants next contend that the claim does not disclose invention. Hooker was not pleaded or identified in the notices under Section 4920 of the Revised Statutes, 35 U.S.C.A. § 69. Hence it was admissible only for the purpose of showing the state of the art and the lack of invention.

Both Hooker and Nakashima employ a leaf spring switch. In the former this spring is mounted to protrude through the playing board so that the rolling ball may strike it. The spring is not pendantly hung from above the board, and is operable to close the switch only when the ball strikes it from the front. In the latter the spring does not protrude through the hole, but forms the seat of the hole into which the rolling ball perchance may come to rest, and thus by its weight close the switch. In each of these devices the mounting is beneath the table, thus causing a disadvantageous limitation which Nelson overcame.

Concerning the Bolo device, the District Court said, in substance: "It shows a number of comparatively complex switches mounted beneath the board, upon each of which a small replica of a bowling pin is mounted above the board and forms the target for the ball. When this pin is struck it pivots upon the board and serves as one end of a lever to swing a long wire into contact with an annular ring mounted beneath the board. The coil spring employed is in conical form and merely restores the bowling pin to its upright position after the pin has been struck. The spring is not struck by the ball and is not pendantly supported. This device is wholly mounted beneath the table and is more complex than that of Nelson. It does not perform the same function as the Nelson device nor does it perform its function in a similar manner." We agree with this conclusion of the court.

The Tratsch design patents merely show the use of small spiral springs on playing boards of pin tables, but they do not show or even suggest the use of these springs as switches in electrical circuits.

What is referred to as the Mabs application discloses a lever type...