555 F.2d 342 (3rd Cir. 1977), 76-1660, Systematic Tool & Mach. Co. v. Walter Kidde & Co., Inc.

Docket Nº:76-1660.
Citation:555 F.2d 342
Party Name:193 U.S.P.Q. 587 SYSTEMATIC TOOL & MACHINE COMPANY et al., Appellees, v. WALTER KIDDE & COMPANY, INC., Appellant.
Case Date:March 25, 1977
Court:United States Courts of Appeals, Court of Appeals for the Third Circuit

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555 F.2d 342 (3rd Cir. 1977)

193 U.S.P.Q. 587




No. 76-1660.

United States Court of Appeals, Third Circuit

March 25, 1977

Argued Jan. 11, 1977.

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Gordon D. Coplein, Darby & Darby, New York City, Richard M. Rosenbleeth, William H. Roberts, Blank, Rome, Klaus & Comisky, Philadelphia, Pa., Jacob C. Kellem, Connolly, Bove & Lodge, Wilmington, Del., for appellant.

Alan H. Bernstein, Caesar, Rivise, Bernstein & Cohen, Philadelphia, Pa., for appellees.

Before ROSENN and HUNTER, Circuit Judges, and SNYDER, [*] District Judge.

SNYDER, District Judge:

Systematic Tool and Machine Co., Systematic Products, Inc., and Dominic D'Ambro, licensees, with Clayton E. Giangiulio, owner of the patent, filed this action for patent infringement. The decision of the district court found valid and infringed Patent No. 3,369,582 (hereinafter "the '582 patent") issued February 20, 1968, for a hand-operated tomato-slicing device. Appeal was taken to this court under 28 U.S.C. § 1292(a)(4) giving us jurisdiction over "Judgments in civil actions for patent infringement which are final except for accounting." Since we find the subject matter of the patent and the prior art relating to this device is obvious, we reverse under 35 U.S.C. § 103. 1


The patent in suit relates to a commercially successful 2 and efficient tomato slicer. As set forth in Claim 1, the device is characterized by the following features:

  1. A pusher to hold the tomato and move it with reference to an array of blades.

  2. The blade array lying at an angle less than 40o with respect to the pusher path of movement.

  3. The angle of separation between the pusher leading arm and trailing arm being greater than 90o .

  4. The angle between the leading arm and the cutting edge of the blades being less than 90o .

  5. The trailing arm of the pusher making a small acute angle with reference to the cutting edge of the blades.

The plaintiffs assert that the tough skin and mushy interior of a tomato present a unique problem in slicing since a direct perpendicular contact of the tomato and blade edge tends to bruise or mangle the tomato. Plaintiffs' claimed invention solved this problem by the various angles between the leading and trailing arms which hold the tomato between the pusher and the angle of the cutting edges of the blades to the pusher. The '582 patent device pushes the tomato in a straight line through the rack of thin blades at an angle less than 40o with respect to the pusher path of movement. See Figure I.

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The original claims filed did not relate the angle of the leading and trailing arms to the physical structure or recite any particular angles for them. The Examiner originally rejected the claims for two reasons: (1) for indefiniteness in not stating relationships between the angles and physical structures, and (2) for obviousness over a combination of prior art slicers with similar structures but having somewhat different angles relating to the blades and pusher. The claims were amended to distinguish the prior art (as underlined by the patentee to make it apparent how the claim differed from the prior art) as follows:

". . . an (relatively small acute) angle less than forty (40) degrees with respect to said pusher path of movement, the angle of separation between said pusher leading arm and trailing arm being greater than 90o , the angle between said leading arm and the cutting edge of said blades being less than 90o with the trailing arm of said pusher making a small acute angle with respect to said cutting edge, . . . whereby said pusher assembly (achieving) achieves a smooth shearing action (by said blades through) with a tomato urged against and through said blades to secure a plurality of thin tomato slices, essentially undamaged, with said tomato holding pocket slots allowing said blades to pass through the tomato." (Additions to the claim are underlined; deletions are in brackets.)


There are two accused devices know as the TK-I and the TK-II machines. The TK-I, not sold since 1968, is a virtual copy of the plaintiffs' machine and was stipulated to be an infringement of the patent in suit, if the court finds the patent in suit valid. The TK-II, not sold since 1972, is a somewhat different looking method of doing that which the plaintiffs' device (called the "Tomato Tamer") achieves. 3 See Figure II.


The district court filed a preliminary opinion and order holding the '582 patent valid and infringed but allowed 30 days to file exceptions. Exceptions were filed and by its second opinion, the district court denied the exceptions, affirming and readopting its earlier findings of fact and conclusions of law. A third order later denied injunctive relief in view of the defendant's cessation of infringing activities in 1972. 4

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Plaintiffs' principal witness, Clayton Giangiulio, inventor and former delicatessen operator, pointed out that prior to his invention, tomatoes had been sliced with a hand-held knife, a slow process at best, or with an expensive commercial meat slicer which scattered individual slices, released juice, and required time consuming clean-up procedures. He demonstrated that a tomato could be sliced by pushing it with his hand but not as safely and efficiently as with the patented device. He admitted that while the basic elements of a slicer consisting of blades, pushers, bases and relative movement were well known, innovation was claimed in the unique arrangement of otherwise general elements which existed in different relationships in the prior art "the slicing of tomatoes at a rate ten times greater than the prior art as well as providing straighter slices held together in the form of a tomato." (Appellees' Brief, p. 14.)

The defendant elicited through Ronald Karr, an extensively qualified mechanical engineer, a designer, and professor of mechanical design, that the '582 patent was a routine development of old elements in view of prior art patents for straight line slicing devices. He stated on cross examination:

"Q. Now, you have testified with respect to six patents on direct examination?

A. Yes, sir.

Q. Is it your testimony that given these patents and put in a room you could come up with the invention in suit?

A. I would need in that room several tools and materials to produce the invention. And I would have to qualify that a little bit, but yes; I could. And there are about half a dozen others that could do that. Since I don't know every engineer in the country, there might be a thousand people that could do that." (p. 342a). 5

The plaintiff chose not to contradict this testimony but to argue that the six prior art patents relied upon by the defendant did not show a pusher containing slots for the reception of blades, where the blade array lies at an angle of less than 40o with respect to the pusher path movement to achieve thin tomato slices in a single pass of the pusher through the blades.

The district court analyzed the six patents from a functional viewpoint saying for example, that the French patent to Birambeau for a tomato slicer relied on a sawing action which did not foreshadow a mechanical, single pass slicer such as the subject matter of the patent in suit. The court held that the Bever patent for a bun slicer could not pass completely through the tomato and "(n)o reasonable adaptation of the machine will perform such a function. Hence, we conclude that the Bever patent neither suggests nor discloses the subject matter of the patent in suit." The court continued this type of analysis through the other prior patents and concluded:

"We have determined from the patent material submitted by the defendant and discussed above, that the ordinary level of skill in the art of food slicing is that possessed by an individual performing that task. . . .

We have heard the evidence of defendant's expert engineering witness. We understand his testimony to mean that slicers are interesting developments of known technology and that, while a particular slicer may be an extremely efficient, and well-designed piece of machinery, there is no invention in putting a slicer together. However, in light of the prior art, and of our determination of the ordinary level of skill in the art, we disagree with his opinion as to the obviousness of the '582 patent. . . . We find that the subject matter of the '582 patent is not obvious to an individual possessing the average level of skill in the art, in light of the prior art existing at the time the invention was developed and the application was filed; the inventor of the '582 patent, Clayton Giangiulio, did

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not know of the existence of any device which suggested to him the machine he devised. Rather, the '582 patent was the...

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