121 F.2d 149 (9th Cir. 1941), 9616, United States Appliance Corp. v. Beauty Shop Supply Co.

Docket Nº:9616.
Citation:121 F.2d 149, 50 U.S.P.Q. 40
Case Date:June 14, 1941
Court:United States Courts of Appeals, Court of Appeals for the Ninth Circuit

Page 149

121 F.2d 149 (9th Cir. 1941)

50 U.S.P.Q. 40




No. 9616.

United States Court of Appeals, Ninth Circuit.

June 14, 1941

Rehearing Denied Aug. 19, 1941.

Paul D. Flehr, of San Francisco, Cal., for appellant.

Oscar A. Mellin, of Oakland, Cal., for appellees.

Before WILBUR, HANEY, and HEALY, Circuit Judges.

WILBUR, Circuit Judge.

This is an appeal from a decree for the defendants entered by the United States

Page 150

District Court for the Northern District of California, Southern Division, in an action for the infringement of U.S. patent No. 1, 984, 585 for hair waving apparatus issued to the plaintiff as assignee of the defendant Ralph M. Keele.

At the time of the trial the appellant relied upon the twelve claims of the patent in suit, except claims 8 and 9. Of these claims it states in its brief that claim 3 is typical and is as follows: '3. In permanent hair waving apparatus, a jacket adapted to be applied about a waving form, said jacket being formed of a single integral piece of resilient rubber, and a holder to which said jacket is detachably secured, said holder including opposed relatively movable members secured to opposed wall portions of the jacket.'

It will be observed that this is a very narrow claim, consisting of but two very simple elements, one being a jacket of 'a single piece of resilient rubber ' to be applied over a 'waving form', (a short rod known to the trade as a 'curler') and a 'holder' for applying this jacket. In practice this holder, or clip, consists of two pieces of metal hinged together and when in place held in closed position by a spring. Such a holder was previously known to the art. In using the device covered by the claim steam is allowed to enter the rubber jacket through a nipple in the rubber and to exhaust through another similar opening in the rubber jacket. The steam is conducted to the jacket by a tube from a boiler. The trade name of the plaintiff's complete outfit is 'Pyro-mist'. The use of rubber as a lining for the enclosing jacket was known in the art. Plaintiff's claim resolves into 'the use of a jacket constructed of a single piece of resilient rubber' which, according to appellant's brief was 'strongly urged as a feature of plaintiff's patent during its prosecution before the Patent Office' and was given particular significance by the Patent Office in allowing the claims.

The nature of the alleged infringement is thus stated in appellant's brief: 'Specifically, defendant's Koolerwave device makes use of a single one piece jacket formed of resilient rubber, detachably secured to a holder, and adapted to be clipped upon a conventional croquignole curler to provide a steam space about the wrapped hair.'

The answer of Beauty Shop Supply Company, Inc., and the other defendants alleged that plaintiff's claims here in suit were invalid by reason of having been previously patented in every essential part and gave notice that they would introduce in support of this allegation twenty-nine domestic patents and six foreign patents. It is unnecessary to consider all of these patents, although all were offered in evidence.

A consideration of these prior patents shows similar devices and it will be found that the patented device merely substitutes flexible rubber for other material used in the prior art to make a jacket. A substitution of one material with known characteristics for another material does not rise to the dignity of invention. Rubber Tip Pencil Co. v. Howard, 20 Wall. 498, 22 L.Ed. 410; Oliver-Sherwood Co. et al. v. Patterson-Ballagh Co., 9 Cir., 95 F.2d 70. Similar jackets...

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