Akron Brass Company v. Elkhart Brass Manufacturing Co.

• Decision Date: 03 November 1965
• Docket Number: No. 14847-14848.,14847-14848.
• Citation: 353 F.2d 704,147 USPQ 301
• Parties: AKRON BRASS COMPANY, Plaintiff-Appellant, v. ELKHART BRASS MANUFACTURING CO., Inc., Defendant-Appellee.
• Court: U.S. Court of Appeals — Seventh Circuit

147 USPQ 301, 353 F.2d 704 (1965)

AKRON BRASS COMPANY, Plaintiff-Appellant, v. ELKHART BRASS MANUFACTURING CO., Inc., Defendant-Appellee.

Nos. 14847-14848.

United States Court of Appeals Seventh Circuit.

November 3, 1965.

Thomas E. Fisher, Cleveland, Ohio, Malcolm S. Bradway, Chicago, Ill., Watts & Fisher, Cleveland, Ohio, Welsh & Bradway, Chicago, Ill., for appellant.

Eugene Knoblock, South Bend, Ind., for appellee.

Before SCHNACKENBERG, SWYGERT, and MAJOR, Circuit Judges.

SWYGERT, Circuit Judge.

This appeal concerns the validity and infringement of three patents relating to fire fighting equipment. Akron Brass Company, an Ohio corporation, as the owner of United States Letters Patent No. 2,938,673 and No. Re. 25,037, brought an action for infringement against Elkhart Brass Manufacturing Company, Inc., an Indiana corporation. Elkhart counterclaimed for infringement of its United States Letters Patent No. 2,928,611. The district court held that: (1) Akron's patent No. 2,938,673 was invalid, (2) Akron's patent Re. 25,037 was valid and infringed, and (3) Elkhart's patent No. 2,928,611 was invalid. Both parties appealed.

No. 2,938,673 — The "Imperial"

Akron's patent No. 2,938,673, which will be referred to as the Imperial patent,¹ is a nozzle commonly attached to the end of a fire hose through which either water or water in combination with a foam-producing agent is discharged.

The central claims of the Imperial patent relate to what is known as "constant gallonage." Earlier fire fighting nozzles were operated on much the same principle as the ordinary garden hose nozzle. A single method of adjustment was provided whereby the pattern of discharge could be regulated through the various positions from wide angle to straight stream. The difficulty posed by such single adjustment devices was that the volume of discharge was affected by any change in the stream pattern, thus affecting the protection afforded to the operator of the nozzle. In short, the rate-of-flow and pattern-of-discharge functions were interrelated. Akron's Imperial nozzle, on the other hand, separated these functions. It provided a method for preselecting one of two known gallonage positions, "locking" the nozzle in such position, and thereafter varying the pattern of discharge through its entire range without appreciably affecting the preselected rate of flow. Akron's patent did not technically claim invention in separating the rate-of-flow and pattern-of-discharge functions. It did, however, claim novelty in the application of a locking device to the separated rate-of-flow function, and thus to originality in effecting a known, constant, preselected gallonage discharge.

The Imperial nozzle is of the peripheral jet type. Such nozzles have a body tube through which water flows to strike a baffle plate located near a restricted outlet, and which is larger than the outlet, so as to deflect liquid around the baffle plate. The discharge-pattern function of the Imperial is performed by an axially adjustable sleeve which encircles the baffle disk. The sleeve may be advanced over the baffle head to provide a straight-stream discharge, or withdrawn to permit a wide-angle discharge. Thus the pattern control adjustment remains quite similar to that of the garden hose.

The rate-of-discharge function of the Imperial is controlled by the space between the baffle plate and the restricted outlet. The clearance space is lesser in both locking positions than the space between the pattern sleeve, in any of its positions, and the baffle plate, in order to insure that volume control will not be affected by pattern-sleeve adjustment. The most common Imperial nozzle has 60 and 95 gallons per minute discharge positions (with 100 pounds of pressure at the base of the nozzle). The baffle is carried by a spider and is shiftable manually between the two positions. To reach the 95 gallon position, the baffle is rotated until a spring forces it forward at the point where the spider legs engage notches in the body. The user detects arrival at this maximum gallonage position by a clicking sound which occurs when the spider seats in the notches. No visual indicator is provided. To reach the 60 gallon position, the baffle is simply pressed inwardly against the action of the spring and rotated. Both adjustments of the Imperial nozzle must be made when the flow of liquid through the nozzle has been stopped.

The application for the Imperial patent was filed on May 2, 1958. At that time, the prior art included the "Santa Rosa" nozzle² and patent No. 2,763,514, issued to Edward H. Hansen and Harry L. Stettler, Jr. in 1956, and owned by Elkhart.

The Santa Rose nozzle provides separate adjustment of pattern and gallonage discharge through independent movement of the baffle and the pattern sleeve. As in the Imperial nozzle, the rate of discharge is controlled by the spacing between the baffle plate and the restricted outlet or throat. In the Santa Rosa, control of the rate of flow is effected by a relative rotation of screw-threaded parts, making possible an infinite number of gallonage adjustments between discharge extremes. The Santa Rosa offers no visual indicator of gallonage discharge; however, when tested at the Imperial nozzle discharge rates of 60 and 95 gallons per minute, the discharge rate remained constant through the full range of independent spray pattern adjustment. The rate of flow varied materially during pattern adjustment only in the wide open discharge position.

The Hansen patent, incorporated commercially into Elkhart's "Select O Stream" nozzle, exhibits a locking device to control spacing between baffle and outlet. The nozzle itself is of the single adjustment type, relative rotation of the parts serving simultaneously to adjust the pattern of discharge and the rate of flow. However, one of the relatively adjustable body parts has a spring-pressed lever pivoted thereto and pressed into engagement with the other body part. The latter part has notches into which the lever may seat to prevent any accidental or unintentional adjustment of the nozzle.

The district court held the claims of the Imperial patent relating to constant gallonage invalid. In its judgment, the application of a locking device to a nozzle having independent discharge-pattern and rate-of-flow adjustments did not rise to the level of invention in view of the prior art disclosed by the Hansen patent and the Santa Rosa nozzle.³ We agree.

35 U.S.C. § 103 states the following condition for patentability:

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.

The aggregation of old parts or elements into a new combination does not constitute invention, regardless of the added convenience or utility of the result achieved. More than the "skill of the calling" is required. Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84, 91, 62 S.Ct. 37, 86 L.Ed. 58 (1941).

Akron contends that the combination of the Hansen locking lever and the independent rate-of-flow and discharge-pattern adjustments of the Santa Rosa nozzle does not in fact produce the Imperial patent. But obviousness does not require that the combination of prior art references precisely duplicate the patented article. It is sufficient that the subject matter of the patented article taken "as a whole" has been disclosed by the prior art. This conclusion may also be applied to Akron's contention that the Hansen patent did not disclose a "locking" device in the same sense as its Imperial nozzle. The fact that the holding means provided by the Hansen patent was releasable by a turn of the pattern sleeve does not alter the fact that it contained notched spring-lever means for holding the nozzle in a set volume and pattern-discharge position.

Akron also urges that the district court failed to give sufficient weight to certain testimony that the fire service had indicated a need for a nozzle producing constant gallonage. The evidence, however, demonstrated some disagreement as to the extent of this need. In addition, the mere fact that there may have been a recognized need for such a nozzle prior to the Imperial patent does not impress the realization of that need with the quality of invention. Such a factor, of course, may indicate inferentially that the achievement was somewhat less than obvious to persons skilled in the art. On the other hand, it cannot be said that the development of an item for which a need has been expressed may not be "obvious" in the patent law sense even though it is shown that some effort toward satisfying the need has been expended. The test which must be applied is whether, given the known prior art, the subject matter "would have been obvious * * * to a person having ordinary skill in the art." We think the district court correctly held that no inventive concept was inherent in the disclosure of Akron's Imperial patent. The Imperial nozzle may be recognized as an advancement; it is, however, an advancement "in accord with the prior art." Autographic Register Co. v. Uarco, Inc., 182 F.2d 353, 357 (7th Cir.), cert. denied, 340 U.S. 853, 71 S.Ct. 82, 95 L.Ed. 625 (1950).

In view of our agreement with the district court that the Imperial patent is invalid for lack of invention, we do not reach the court's further holding that Elkhart's "Select O Flow" nozzle does not infringe the...