William Hodges & Co., Inc. v. Sterwood Corp.

CourtUnited States District Courts. 2nd Circuit. United States District Court (Eastern District of New York)
Citation176 USPQ 49,348 F. Supp. 383
Docket NumberCiv. A. No. 68 C 329.
PartiesWILLIAM HODGES & CO., INC., Plaintiff, v. STERWOOD CORP., Defendant.
Decision Date26 September 1972

Henry L. Burkitt, Jamaica, N. Y., and Caesar, Rivise, Bernstein & Cohen, by Alan H. Bernstein, Philadelphia, Pa., for plaintiff.

Charles Sonnenreich, New York City, for defendant.


NEAHER, District Judge.

This is an action by William Hodges & Co., Inc., a Pennsylvania corporation, against Sterwood Corporation, a New York corporation, for alleged infringement of United States Design Patent No. 209159 issued November 7, 1967 to Sol Kessilman, Hyman B. Penn and Milton Kravitz for a period of fourteen years (hereinafter "Hodges patent"). All right, title and interest to the patent was assigned by the inventors to Green Valley Products, Inc. on March 22, 1968.1 The case was tried before the court on the issues of validity and infringement. For the reasons set forth below the court finds for the defendant on both issues.


The Hodges patent is a design patent for a silver washing basket. Such a basket is used in the restaurant trade to hold soiled silverware in an upright position while passing through an automatic dishwasher. The basket is designed to fit in a dishwashing rack which in turn is placed in the washing machine. After completion of the cleansing process the silver is retained in the removable basket until needed for service of restaurant patrons.

35 U.S.C. § 171 governs the issuance of design patents. It reads:

Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.
The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.

By virtue of the last sentence 35 U.S.C. § 103 is made applicable to design patent applications. It reads:

A patent may not be obtained . . . if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

In Graham v. John Deere Co., 383 U. S. 1, 17, 86 S.Ct. 684, 694, 15 L.Ed.2d 545 (1966), the Supreme Court clarified the application of this section.

Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined.

The Hodges basket consists of a unitary, one-piece design for a plastic silver washing basket. The basket, rectangular in shape, is divided into eight compartments and is approximately 5' in depth. The sides, ends and bottom of the basket are of a latticework nature. The handles, part of the single mold design, are placed on a 5% slant and protrude about 1¾" above the end wall. They consist of two vertical poles connected by a horizontal bar containing four chambers in its top. This design leaves an opening of one inch between the bottom of the horizontal bar and the top of the end wall of the basket. The end walls are recessed approximately ¾". The side walls are also slightly indented and molded into the handles so as to form an arcuate or bow shaped design.

The prior art in the trade consists of the Maslow basket, holding Design Patent No. 204076, and the Plastisol silver rack manufactured by the plaintiff since 1960 (Pl.Exh. 6, p. 19). The Maslow basket has a rectangular boat shaped design, latticework sides and end walls of solid plastic. It consists of eight compartments and has slanted handles. However, it is not constructed from a single mold. Two sections, each containing four compartments, are riveted together to form the basket. The handles, not a molded part of the plastic basket, are formed in part by metal slats riveted to the ends of the side walls of the basket. A unit consisting of two vertical poles 5" in height, connected by a horizontal bar, is attached to the metal slats to complete the handle. The unit is fastened in such a manner as to permit it to stand upright for carrying purposes or to be lowered to the bottom of the end wall when placed in the washing machine.

The Plastisol basket, rectangular in shape, is constructed of wire mesh coated with plastic. It has eight compartments and attached handles protruding above the end walls of the basket. Although not manufactured by use of a single mold, as is the wholly plastic Hodges basket, its latticework sides, ends and bottom present a unitary design.

The inventors of the Hodges basket applied for a design patent on March 7, 1966. The Patent Office, after considering the prior art, principally the Maslow basket, rejected the design as being within the ordinary skill of an industrial designer. After consultation between the Patent Examiner and inventor's counsel the application was reconsidered and the design patent granted on November 7, 1967.2

Plaintiff asserts its basket has nine novel features which distinguish it from the prior art and as such "the subject matter as a whole would not have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." 35 U.S.C. § 103. They are: (1) unitary design; (2) slanted handles; (3) boat shaped silhouette; (4) arcuate design in the side walls; (5) depressed ends; (6) pleasant relationship between length and height; (7) openings of proper size in the side of the basket; (8) chambers in the top of the handles; and (9) an opening between the top of the end wall and the bottom of the handle (Pl. Post-trial Br., p. 8).

The unitary appearance of plaintiff's basket was partially achieved by forming its eight-compartment structure from a single mold rather than by riveting together two four-compartment sections. This look is enhanced by substituting latticework ends for the solid plastic ends of the Maslow basket. The ends of the Hodges basket are clearly anticipated in the latticework sides of the Maslow basket. As such they can be considered neither novel nor nonobvious. Furthermore the overall unitary design, while perhaps not present in the Maslow basket, is evidenced in the totally latticework design of the Plastisol basket previously manufactured by the plaintiff.3

Items 2, 3, 6 and 7 are clearly visible in the Maslow basket. The handles, though riveted to the unit, are placed on a distinct slant. The silhouette is clearly boat shaped. The relationship between the inside depth and length of the two baskets is nearly identical. Nor is there a significant difference between the latticework sides of the two baskets. Certainly all of these elements must be considered obvious to a person having ordinary skill in the art of industrial design.

Items 4 and 5, the arcuate design and the depressed ends, are neither wholly unanticipated in the Maslow basket nor unobvious to a person having skill in the art. Indeed the latticework sides of the Maslow basket are slightly indented with the top of the wall forming an outwardly protruding lip. The indentation and lip on the plaintiff's basket may thus be seen in the prior art. The sole distinction is the blending of the side walls into the handles to form the arcuate design. This may be aesthetically pleasing but it is not sufficient ". . . merely to show that the design is novel, ornamental, or pleasing in appearance." International Silver v. Pomerantz, 271 F.2d 69, 71 (2 Cir. 1959). Rather in order to satisfy the requirement of nonobviousness it must ". . . reflect `some exceptional talent beyond the skill of the ordinary designer' . . . ." G. B. Lewis Company v. Gould Products, Inc., 436 F.2d 1176, 1178 (2 Cir. 1971) citing Neufeld-Furst & Co. v. Jay-Day Frocks, Inc., 112 F.2d 715, 716 (2 Cir. 1940). See Hygienic Specialties Co. v. H. G. Salzman, Inc., 302 F.2d 614, 617 (2 Cir. 1962).

The remaining factors, the chambers in the top of the handles and the opening above the end wall, are a description of the design of the basket's handles. Each handle consists of two vertical poles protruding 1¾" above the ends of the basket. They are joined by a horizontal bar, ¾" thick, leaving an opening of 1" between the bottom of the handle and the top of the end wall of the basket. This opening permits a person to insert his hand easily and obtain a firm grip on the basket. It differs from the handle on the Maslow basket in that it is plastic, rigid, contains four chambers in its top and extends six inches less above the end wall of the basket. Aside from the chambers the design of the handle is common to that seen on numerous items including luggage and typewriter cases. It is ". . . immediately obvious . . . and . . . wholly wanting in ornamental ingenuity. . . ." G. B. Lewis Company v. Gould Products, Inc., 297 F.Supp. 690, 695 (E.D.N.Y.1968).

Although it might be argued that every detail of the Hodges basket is not anticipated in the prior art, it cannot be said the design of the basket was unobvious to an industrial designer possessing ordinary skill in his trade. All the essential elements of plaintiff's basket are seen in the Maslow and Plastisol baskets and, in the case of the handles, numerous containers and trays used for carrying implements.

It is settled law that a combination of previously known elements will not necessarily prevent patentability of the new product. However, the Supreme Court has cautioned the courts to ". . . scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements." Great Atlantic and Pacific Tea Co. v....

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  • Coleco Industries v. UNITED STATES INTERN., ETC., Appeal No. 77-21.
    • United States
    • United States Court of Customs and Patent Appeals
    • 6 Abril 1978
    ...324 F.Supp. 889, 170 USPQ 25 (E.D.Va. 1971), aff'd mem., 469 F.2d 694, 176 USPQ 193 (CA 4 1972); William Hodges & Co. v. Sterwood Corp., 348 F.Supp. 383, 176 USPQ 49 (E.D.N.Y. 1972) 11 Note 6, supra. --------...

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