314 U.S. 84 (1941), 37, Cuno Engineering Corp. v. Automatic Devices Corp.

Docket Nº:No. 37
Citation:314 U.S. 84, 62 S.Ct. 37, 86 L.Ed. 58
Party Name:Cuno Engineering Corp. v. Automatic Devices Corp.
Case Date:November 10, 1941
Court:United States Supreme Court

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314 U.S. 84 (1941)

62 S.Ct. 37, 86 L.Ed. 58

Cuno Engineering Corp.


Automatic Devices Corp.

No. 37

United States Supreme Court

Nov. 10, 1941

Argued October 22, 23, 1941




1. Claims 2, 3, and 11 of the Mead patent, No. 1,736,544, for improvements in lighters (commonly used in automobiles) for cigars, cigarettes, and pipes, held invalid for want of invention. P. 88.

2. Mead's addition to the so-called wireless or cordless lighter of a thermostatic control -- which, after the plug was set "on" and the heating coil had reached the proper temperature, automatically returned the plug to its "off" position -- was not invention, but a mere exercise of the skill of the calling, and an advance plainly indicated by the prior art. P. 89.

3. That Mead's combination performed a new and useful function did not make it patentable. The new device, however useful, must reveal the flash of creative genius, not merely the skill of the calling. P.9 900.

117 F.2d 361 reversed.

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Certiorari, 313 U.S. 553, limited to the question whether claims 2, 3, and 11 of the Mead patent No. 1,736,544 are valid. In a suit for infringement, the judgment of the District Court that the claims were not infringed, 34 F.Supp. 146, was reversed by the Circuit Court of Appeals, which held them valid and infringed.

DOUGLAS, J., lead opinion

MR. JUSTICE DOUGLAS delivered the opinion of the Court.

This is an action in equity brought by respondent for infringement, inter alia, upon claims 2, 3, and 11 of patent No. 1,736,544, granted November 19, 1929, on the application of H. E. Mead, filed August 24, 1927, for a cigar lighter. The District Court held these claims not infringed. 34 F.Supp. 146. The Circuit Court of Appeals reversed, holding them valid and infringed. 117 F.2d 361. We granted the petition for certiorari, limited to the question whether claims 2, 3, and 11 of the Mead patent are valid, because of a conflict between the decision below and Automatic Devices Corp. v. Sinko Tool & Manufacturing Co., 112 F.2d 335, decided by the Circuit Court of Appeals for the Seventh Circuit.

The claims in question1 are for improvements in lighters,

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commonly found in automobiles, for cigars, cigarettes, and pipes. There were earlier lighters of the "reel type." The igniter unit was connected with a source of current by a cable which was wound on a spring drum so that the igniter unit and cable could be withdrawn from the socket and be used for lighting a cigar or cigarette. As the removable plug was returned to the socket, the wires were reeled back into it. The circuit was closed either by manual operation of a button or by withdrawal of the igniter from its socket. In 1921, the Morris patent (No. 1,376,154) was issued for a so-called "wireless" or "cordless" lighter. This lighter eliminated the cables and the mechanism for winding and unwinding them, it provided for heating the igniter unit without removing it from its socket, and it eliminated all electrical and mechanical connection of the igniter unit with the socket once it was removed therefrom for use. Several types of the "wireless" or "cordless" lighter appeared.2 Morris represented a type in which the circuit was open when the plug rested

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in the socket and closed when the plug was pushed farther into the socket against the resistance of a spring. In Zecchini (No. 1,437,701), the operator pressed and held down a push-button to close the circuit. In Metzger (No. 1,622,334), the operator closed the circuit by depressing and rotating the plug. In each, the operator was obliged to hold the plug, or the circuit-closing part, in place until the heating coil became hot enough for use. After he concluded that it had become hot [62 S.Ct. 39] enough (by observation or guesswork), he removed the plug, using it like a match or hot coal, and then replaced it in the socket. Thus, these lighters were said to require rather continual attention on the part of the person using them, so that there would be no overheating or burning out of the heating coil.

This inconvenience and hazard were eliminated, according to respondent,3 by the automatic feature of the Mead patent. Mead added to the so-called "wireless" or "cordless" lighter a thermostatic control responsive to the temperature of the heating coil. In operation, it automatically returned the plug to its "off" position after the heating coil had reached the proper temperature. To operate Mead's device, the knob on the igniter plug was turned to a point where an electrical connection was established from the battery through the heating coil. There, the plug remained temporarily latched. When the heating coil was sufficiently hot for use, the bimetallic elements in the thermostat responsive to the temperature condition of the heating coil caused the igniter plug to be released and to be moved by operation of a spring to open-circuit position. The plug might then be manually removed for use in the manner of a match, torch, or ember.

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When replaced in the socket after use, it was held in open-circuit position until next needed.

Petitioner makes several objections to the validity of the claims -- that they do not comply with the standards for full, clear, and concise description prescribed by 35 U.S.C. § 33, R.S. § 4888; that they are indefinite and broader than any disclosed invention, and that they are for a device so imperfect and unsuccessful that a construction of the claims broad enough to include it is not permissible. See Deering v. Winona Harvester Works, 155 U.S. 286, 295. We do not, however, stop to consider these objections. For it is our opinion that the Mead device was not the result of invention but a "mere exercise of the skill of the calling," an advance "plainly indicated by the prior art." Altoona Publix Theaters, Inc. v. American Tri-Ergon Corp., 294 U.S. 477, 486.

Thermostatic controls of a heating unit, operating to cut off an electric current energizing the unit when its temperature had reached the desired point, were well known to the art when Mead made his device. They had been employed in a wide variety of electrical designs since Hammarstrom in 1893 (No. 493,380) showed a bimetallic thermostat to break a circuit when it got overcharged. A few examples will suffice. Harley, in 1907 (No. 852,326), included such a thermostat in an electric heater for vulcanizing, so as to limit automatically the temperature attainable. Andrews, in 1912 (No. 1,025,852), showed a bimetallic thermostat in an electrical flat iron designed to open the circuit at a predetermined temperature. In 1919, Newsom (No. 1,318, 168) showed an electric coffee cooker in which a thermostat, actuated by the temperature within the receptacle, operated to open and close the circuit intermittently. Stahl, in 1921 (No. 1,372,207), showed an electric switch automatically released by operation of a thermostat. Hurxthal, in 1925 (No. 1,540,628), showed an electric bread toaster with a

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thermostat for stopping the toasting when the bread reached a given degree of temperature. Copeland (No. 1,844,206), filed April 18, 1927, before Mead, showed an electric lighter for cigars and cigarettes with thermostatic control. It differed from Mead in several respects. Thus, in Copeland's device, a cigar was inserted in a tube at the end of which was a heating coil. By pressing the cigar against the heating coil (or in another form, by pressing a push-button), a spring was overset and the circuit closed. When the desired temperature of the heating unit was reached, a thermostatic bar pushed back the spring and opened the circuit. Thus, in the Copeland device, the cigar (or the push-button) was the "means for moving" the "heating member" of the Mead claims so as to establish the energizing electric heating circuit. The advance of Mead over Copeland was the use of the removable plug bearing the heating unit, as in Morris, to establish the [62 S.Ct. 40] automatically controlled circuit...

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