Zero Manufacturing Co. v. Mississippi Milk Pro. Ass'n

Citation358 F.2d 853
Decision Date02 May 1966
Docket NumberNo. 21624.,21624.
PartiesZERO MANUFACTURING COMPANY, Inc., Appellant, v. MISSISSIPPI MILK PRODUCERS ASSOCIATION, Appellee.
CourtUnited States Courts of Appeals. United States Court of Appeals (5th Circuit)

Penrose Lucas Albright, Washington, D. C., James Leon Young, Jackson, Miss., Robert F. Davis, Washington, D. C., for appellant.

Edmund C. Rogers, John T. Rogers, St. Louis, Mo., W. E. McIntyre, Jr., Brandon, Miss., Kingsland, Rogers, Ezell, Eilers & Robbins, St. Louis, Mo., for appellee.

Before WISDOM and COLEMAN, Circuit Judges, and DAWKINS, District Judge.

DAWKINS, District Judge:

This action was brought by Zero Manufacturing Company, Inc., under 35 U.S.C. §§ 271, 281 alleging the infringement of two patents1 by Mississippi Milk Producers Association, a Mississippi cooperative which sold and installed milking equipment, manufactured in large part by the Paul Mueller Company, who undertook its defense.

The District Court found both patents to be invalid under 35 U.S.C. § 103, as anticipated by the prior art, thus making it unnecessary to reach the infringement issue, and dismissed Zero's complaint. We affirm.

The facts may be quickly capsulated. After three rejections, G. R. Duncan was issued a patent relating to a vacuum container milking system and apparatus therefor on May 20, 1954, which was reissued with additional claims June 5, 1956. The second patent relates to an elliptical opening in a cylindrical milk tank, which, after one rejection, was issued February 17, 1959. Both patents have been assigned to Zero, who, since 1953, has been successful in the manufacture and sale of the bulk milk vacuum tank unit.

Prior to introduction of the refinements here in issue, the dairy industry was familiar with various milking procedures. The vacuum milking machine, or pipe line milker, with its teat cup assembly attachable to the cow's udder, was in wide usage. Milk was drained into a pail, often slung around the cow's middle, from which it was poured into the familiar five gallon milk can. These cans were convenient both for cooling and transporting milk. However, it often was more convenient, both for the farmer and the trucker, to utilize a larger container; thus the industry saw wide use of the bulk milk tank and the tank truck. Doing away with the milk cans was as welcome as the availability of milking machines. Moreover, the less exposure of milk to unsanitary conditions present in the atmosphere, such as dust and insects, during its movement from cows to processing plant, the better. Proper sanitation also requires that the whole system, particularly the tank, be easily accessible for cleaning by the farmer.

The system here in issue achieved high sanitary conditions in the milking, cooling and storing process performed by the farmer prior to transportation, in that the system was hermetically sealed. It included the teat cup assembly, hoses or lines through which the milk flowed under vacuum, and a milk tank in which milk was cooled, agitated to keep it from separating, and stored. When the tank was empty, the large elliptical opening in it facilitated cleaning and inspection.

The subject matter of the reissue patent comprises two parts, the milking system and a refrigerating means. The former includes a cylindrical vessel with domed ends into which the milk lines and a vacuum line are inserted. When a compressor creates a vacuum inside the vessel, milk is drawn through the lines into the tank. The refrigerating system includes a compressor-condensor which circulates a refrigerant through coils around the tank, to cool the milk therein. The subject matter of the '722 patent relates merely to the oval-shaped opening on the top of the cylindrical vessel which facilitates cleaning and inspection of the interior. Appellant refers to this opening as a "swoop down" opening whose asserted patentable quality is the fact that its sides are lower than its ends, which allows a milk inspector to view the entire interior of the tank from outside.

The basic statutory provisions under which this controversy has arisen are found in Title 35 of the United States Code. Sections 101 and 102 prescribe the requirements of novelty and usefulness in subject matter capable of being patented and section 103 provides, in effect, that a patent may not be obtained when the subject matter claimed would be obvious to a person having ordinary skill in the particular art involved. A concurrence of these three explicit conditions is necessary for patentability. Graham v. John Deere Co., 86 S.Ct. 684 (February 21, 1966).

A wealth of jurisprudence exists in this area of patent law. Since Hotchkiss v. Greenwood, 11 How. 248, 52 U.S. 248, 13 L.Ed. 683 (1850), it has been recognized that if an improvement is to obtain the privileged position of a patent, more ingenuity must be involved than the mere work of a mechanic skilled in the art. See Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84, 62 S.Ct. 37, 86 L.Ed. 58 (1941).

It is axiomatic that a patent should not be granted for the discovery of a result that would flow naturally from teachings of the prior art. To do nothing more than combine the teachings available in a manner which would have been obvious to one skilled in the art, even though the device has unexpected advantages, does not create a patentably new invention. For example, in the case of In re Crockett, 279 F.2d 274 (Cust. & Pat. App. 1960), it was held that where the idea of combining ingredients would flow logically from the teachings of the prior art, a claim to their joint use is not patentable.

On the other hand, even though all the constituents in a new assemblage may be old, if their new concourse would not have been obvious at the time the invention was made to a person having ordinary skill in the art, there is patentability. Reiner v. I. Leon Co., 285 F.2d 501 (2 Cir. 1960), cert. den. 366 U.S. 929, 81 S.Ct. 1649, 6 L.Ed.2d 388 ("clamps" used to maintain "formed curls" in a woman's hair). Similarly, in Oliver United Filters, Inc. v. Silver, 206 F.2d 658 (10 Cir. 1953), a combination of known elements was held patentable as having produced such a new and improved result over anything existing in the prior art. There a process for extraction of sugar from a sugar beet solution was so novel and long-sought in the industry, that the combination device was found to constitute patentable invention.

The Supreme Court now has affirmed the principle that a combination of known elements may be patentable if it satisfies the requisite conditions. Thus in United States v. Adams, 86 S.Ct. 708 (February 21, 1966), the Court had before it a patent on a "nonrechargeable, as opposed to a storage, electrical battery," which consisted of two electrodes — one made of magnesium, the other of cuprous chloride — which are placed in a container of either plain or salt water as battery fluid. In upholding the validity of the Adams patent, the Court held:

"We conclude the Adams battery was also nonobvious. As we have seen, the operating characteristics of the Adams battery have been shown to have been unexpected and to have far surpassed then-existing wet batteries. Despite the fact that each of the elements of the Adams battery was well known in the prior art, to combine them together as did Adams required that a person reasonably skilled in the prior art must ignore that (1) batteries which continued to operate on an open circuit and which heated in normal use were not practical; and (2) water-activated batteries were successful only when combined with electrolytes detrimental to the use of magnesium. These long-accepted factors, when taken together, would, we believe, deter any investigation into such a combination as is used by Adams. This is not to say that one who merely finds new uses for old inventions by shutting his eyes to their prior disadvantages thereby discovers a patentable innovation. We do say, however, that known disadvantages in old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness." 86 S.Ct. at 714.

Until recently, the leading case in this area was Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp.,2 where a three-sided rack on a supermarket checkout counter was held unpatentable as merely an aggregation of old elements. After a lapse of 15 years, the Supreme Court now has re-examined the statutory and judicial tests of patentability in Graham v. John Deere Co., supra, and announced what definitive tests of patentability are now required under the 1952 enactment of 35 U.S.C. § 103.

One of the three cases decided by the Supreme Court, consolidated for argument, was an infringement action which had presented a conflict between two Circuits over the validity of a single patent on a "Clamp for vibrating Shank Plows."3 The subject matter was technical, and it suffices to say that it was acknowledged to be a combination of old mechanical elements whose asserted patentable quality was its improved functional result due to the novel relationship of the old mechanical members of the device. Upon elucidating the new test of "nonobviousness" under § 103, the Court found the combination there at issue to lack that condition of patentability. After a lengthy examination of the legislative history of section 103, the Court stated:

"Approached in this light, the § 103 additional condition, when followed realistically, will permit a more practical test of patentability. The emphasis on non-obviousness is one of inquiry, not quality and, as such, comports with the constitutional strictures. U.S. Const. art. I, § 8, cl. 8.
"While the ultimate question of patent validity is one of law, Great A. & P. Tea Co. v. Supermarket Equipment Corp., supra, 340 U.S. at 155 71 S.Ct. 127, the § 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual
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