Blumcraft of Pittsburgh v. Citizens & Southern Nat. Bank

• Decision Date: 19 February 1969
• Docket Number: No. 12719.,12719.
• Citation: Blumcraft of Pittsburgh v. Citizens & Southern Nat. Bank, 407 F.2d 557 (4th Cir. 1969)
• Parties: BLUMCRAFT OF PITTSBURGH, a Partnership, Consisting of Hyman Blum, Max Blum, Louis Blum, and Harry P. Blum, Appellee, v. CITIZENS AND SOUTHERN NATIONAL BANK OF SOUTH CAROLINA, Daniel Construction Company, Inc., and Colonial Iron Works, Inc., Appellants.
• Court: U.S. Court of Appeals — Fourth Circuit

407 F.2d 557 (1969)

BLUMCRAFT OF PITTSBURGH, a Partnership, Consisting of Hyman Blum, Max Blum, Louis Blum, and Harry P. Blum, Appellee, v. CITIZENS AND SOUTHERN NATIONAL BANK OF SOUTH CAROLINA, Daniel Construction Company, Inc., and Colonial Iron Works, Inc., Appellants.

No. 12719.

United States Court of Appeals Fourth Circuit.

Argued December 2, 1968.

Decided February 19, 1969.

Certiorari Denied June 16, 1969.

Warren N. Williams, Kansas City, Mo., (Gordon D. Schmidt Kansas City, Mo., and Donald L. Ferguson, Greenville, S. C., on brief), for appellants.

James C. McConnon, Philadelphia, Pa., (Henry N. Paul, Jr., and Paul & Paul, Philadelphia, Pa., Ralph Bailey, Jr., and Bailey & Dority, Greenville, S. C., on brief), for appellee.

Before SOBELOFF, WINTER, and BUTZNER, Circuit Judges.

Certiorari Denied June 16, 1969. See 89 S.Ct. 2103.

BUTZNER, Circuit Judge:

This appeal is taken from the district court's ruling that two patents, D-171,963 for design and 2,905,445 for a mechanical device, owned by Blumcraft of Pittsburgh were valid and infringed by railings produced by Architectural Art Manufacturing Co.¹ We hold that both patents are invalid under 35 U.S.C. § 103.

I.

Blumcraft's design patent, D-171,963, was granted April 20, 1954 to Louis Blum for a railing styled for use in buildings of contemporary architecture. His application contained a single claim for the design "as shown" in a drawing. The railing consists of multiple parallel rails offset from vertical posts. The handrails are generally flat with slightly curved gripping surfaces. The posts are rectangular. Inconspicuous L-shaped brackets attach the undersides of the rails to the posts, leaving the gripping surfaces of the rails unobstructed. The multiple, offset, and parallel handrails set up a horizontal plane in opposition to the vertical plane formed by the parallel posts. The result, with the connections between the two planes minimized, is the visual illusion that the handrails are floating free.

The law authorizes the grant of a patent to "whoever invents any new, original and ornamental design for an article of manufacture * * *." 35 U.S.C. § 171. Architectural Art urges that the design patent is invalid under 35 U.S.C. §§ 102 and 103 because it was anticipated by the prior art and its subject matter was obvious to a person having ordinary skill in the art of creating ornamental railings. The Court of Claims recently found Blum's design patent valid. Blumcraft v. United States, 372 F.2d 1014, 178 Ct.Cl. 798 (1967). We agree with it and with the district court that Blum's design was novel because the prior art did not disclose multiple rails offset from posts by inconspicuous connectors presenting the illusion of the rails floating in space. But a design must be more than novel. As Judge Soper wrote in Glen Raven Knitting Mills v. Sanson Hosiery Mills, 189 F.2d 845, 851 (4th Cir. 1951):

"There must be an exercise of the inventive faculty, and if the design lacks this quality, it will not suffice to say that it is new, original and ornamental, and has received wide public acceptance."

Title 35 U.S.C. § 103² denies patentability to a novel design if the differences between the design and the prior art are such that the design would have been obvious to a person skilled in the art of designing ornamental railings. The test for obviousness, which must be applied as critically to designs as to other inventions, is: "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." Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 694, 15 L.Ed.2d 545 (1966).

Multiple parallel rails offset from their supporting posts were known to the prior art. Two examples are Hollaender's stair rail, 1949, and Wallach's Jamaica store, 1950. However, neither of these designs, nor the many examples of multiple rails that intersect their posts, gave the floating effect which the district court found in Blum's patent. Prior art also discloses that architects who custom designed railings, not Blum, first appreciated and met the requirements of contemporary architecture for modern railing design. In a church built in the early 1940's, Eliel and Eero Saarinen achieved a floating effect with a single rail offset from balusters by inconspicuous brackets. The rail follows the stairwell from flight to flight with unbroken lines. A similar illusion was obtained in a sanatorium built in the mid-1930's. Photographs of the Kansas City Auditorium, published in 1937, and of a W. T. Grant store, published in 1940, disclose relatively flat, single handrails offset from posts and walls by subdued brackets. A Chicago savings and loan office contains a railing installed in 1952 that follows and reinforces the lines of a curved staircase. The architect accentuated the separation between the horizontal and vertical lines of the railing by offsetting the top rail with brackets.

The differences between the prior art and Blum's design are minor. His predecessors offset multiple rails with prominent connectors and single rails by inconspicuous connectors. Blum merely offset multiple rails by inconspicuous connectors to achieve with several rails the floating effect that had previously been imparted to a single rail. It is apparent from the sophistication of the prior art that designers of ornamental railings, including manufacturers and architects, were highly skilled. Therefore, the fact, which the district court emphasized, that prior art would have to be redesigned to achieve Blum's railing is not decisive. The joining of known components usually requires skill, but this does not necessarily negate obviousness. Cf. Smith v. Whitman Saddle Co., 148 U.S. 674, 13 S.Ct. 768, 37 L.Ed. 606 (1893).

Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), also directs inquiry into secondary indicia of obviousness or nonobviousness, including commercial success and long-felt but unsolved needs. Blumcraft's commercial success lay in the fact that it was the first to offer a railing of acceptable modern design as a prefabricated product. Both Blum and an architect testifying in his behalf stressed this point, and Blumcraft's advertising emphasized the utilitarian advantages of its railing.³ However, commercial success that results from the prefabrication of a known architectural style, and not creative artistry, fails to support patentability. Cf. Battery Patents Corp. v. Chicago Cycle Supply Co., 111 F.2d 861 (7th Cir. 1940); R-Way Furniture Co. v. Duo-Bed Corp., 216 F.Supp. 862 (N.D.Ill.1962).

To prove long-felt, unsolved need, Blumcraft says, "The need for a commercially available railing system compatible with modern architecture had existed for some time prior to the Blum invention." This observation illustrates both Blum's success and the invalidity of his patent. There was no unsolved need for attractive modern railings. Architects were capable of supplying them through custom design. There was a need, however, for a prefabricated railing system embodying modern design. Blum met this need by adapting known custom designs to a prefabricated railing system. Blum's product enabled architects to specify the number and location of posts and the number and spacing of rails to create designs compatible with the architecture of many modern buildings. Blum's contribution to the art was not his design; this was obvious. It was his railing system which was unique. But Blum's railing system is not the proper subject of a design patent. The statutory grant of a design patent is for appearance⁴ and not for a method of manufacture or assemblage,⁵ function, or utility.⁶

II.

Blum's mechanical patent, 2,905,445, was issued September 22, 1959 upon an application filed June 16, 1955. The two claims in suit are Nos. 1 and 3.⁷ The patent, as described by the district judge, "is characterized by a clamping connector for connecting an ornamental handrail in spaced relation to an ornamental post, comprising separate v-shaped clamping means which receive and clamp the dovetail shaped base portion of the handrail." The controversy involves the device that holds the rail offset from the posts. It is depicted in Blum's application as a cylinder attached perpendicularly to the post by a bolt. Attached to the end of that cylinder by another bolt is a second cylinder of the same diameter. Screwed together, the cylinders grip,...