Eisele v. St. Amour

• Decision Date: 25 March 1970
• Docket Number: No. 19398.,19398.
• Citation: 423 F.2d 135
• Parties: Andrew EISELE, dba Zero Internal Gauge Company, Plaintiff-Appellant, v. John P. ST. AMOUR, Defendant-Appellee.
• Court: U.S. Court of Appeals — Sixth Circuit

423 F.2d 135 (1970)

Andrew EISELE, dba Zero Internal Gauge Company, Plaintiff-Appellant, v. John P. ST. AMOUR, Defendant-Appellee.

No. 19398.

United States Court of Appeals, Sixth Circuit.

March 25, 1970.

Willis Bugbee, Detroit, Mich., for appellant.

Martin J. Adelman, Birmingham, Mich., Barnard, McGlynn & Reising, Gerald E. McGlynn, Jr., Birmingham, Mich., on the brief, for appellee.

Before WEICK and EDWARDS, Circuit Judges, and O'SULLIVAN, Senior Circuit Judge.

EDWARDS, Circuit Judge.

This is an appeal from a judgment entered after trial before the United States District Court for the Eastern District of Michigan dismissing appellant Eisele's complaint. The complaint sought a declaratory judgment that St. Amour's patent No. 2,998,656 was invalid and not infringed by Eisele's devices.

Most of this lengthy record on trial and on appeal pertains to the issue of infringement. Since we conclude that St. Amour's device was novel, useful, but fatally obvious, and, hence, unpatentable, we do not reach the infringement issue.

St. Amour's patent No. 2,998,656 claimed an improved "hole location and concentricity gauge." These gauges are used in the automobile industry in connection with a master fixture to test the location and the concentric accuracy of various holes drilled in automobile parts.

Both parties are inventors who had been supplying such gauges primarily to the Ford Motor Company. Plaintiff Eisele appears to have been in the gauge business first. He secured a number of patents on such concentricity gauges and had a commercially successful one in existence. This Eisele gauge, however, had an indicator dial for the inspector to read which turned 360° while the gauge was being turned in the hole which was to be inspected. As St. Amour's counsel stated, it meant "the workmen had to stand on his head." St. Amour's "invention" was to devise a very similar gauge where the body of the gauge and the indicator dial remained stationary while the operator turned the probe (the part which measured concentricity of the hole) by a knob contained in the body of the gauge which he could turn with his fingers.

St. Amour developed the improved gauge, put it on the market, and applied for a patent. Before St. Amour's patent was actually issued, however, Eisele had found out about the improvement, made a very similar change, applied for a patent and received it. There is no dispute that plaintiff St. Amour's patent has priority as to time of invention and use.

St. Amour's patent described the operation of his gauge as follows:

"The part to be checked will be clamped in the master or reference gauge. Then, the pilot body 20 would be inserted in a closely fitted hole in the master gauge. The sleeve 48 would then be rotated by means of rotating knob 52, with the thumb and forefinger. The feeler 78 may then contact the wall of a bore or hole being checked, and because of the cam surface 86 and the ball 90, the feeler 78 will cause the pointer 110 to register any out of roundness of the hole as well as the position of the hole being checked in relation to the master gauge hole. Thus, since the location and also the diameter of the hole being checked will be registered by the pointer 110, an operator using this device may interpret this reading so as to determine the correct location and concentricity of a hole."

The improvement on which the patent was claimed and granted is explained somewhat more understandably as follows:

"A knurled knob is provided within the chamber in the body and is fixed to the sleeve, so that rotation of the knob will also rotate the sleeve, and the feeler, so that 360° of concentricity may be determined. While the sleeve, feeler and knob are rotatable, the rest of the gauge is not, and the indicator remains stationary, so that it is always facing the operator even while the sleeve is being rotated."

St. Amour's gauge was certainly the first hole location and concentricity gauge to have a stationary dial. It was "novel" at least in this respect. This record (which shows its commercial success) demonstrated its "utility."

To any layman a "hole location and concentricity gauge" is an intricate and sophisticated piece of equipment. It is not by any means a device which would be termed "obvious" in the ordinary understanding of that term.

The Constitution of the United States authorizes Congress "To promote the Progress of * * * useful Arts, by securing for limited Times to * * * Inventors the exclusive Right to their * * * Discoveries." U.S.Const. art. I, § 8, cl. 8. In seeking to define these terms, Congress set forth in the 1952 Patent Act the requirements of novelty and utility (35 U.S.C. §§ 101, 102 (1964)), and then defined the third critical element as follows:

"A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, 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. Patentability shall not be negatived by the manner in which the invention was made." 35 U.S.C. § 103 (1964).

Thus, the term "obvious" has a distinctly special meaning in the patent law. There it is obviousness "to a person having ordinary skill in the art," which is of importance.

In Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), the United States Supreme Court discussed the tests of obviousness under § 103:

"While the ultimate question of patent validity is one of law, Great Atlantic & Pacific Tea Co. v. Supermarket Corp., supra at 155 340 U.S. 147, 71 S.Ct. 127, 95 L.Ed. 162 (1950) the § 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. 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. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy." Graham v. John Deere Co., supra at 17-18, 86 S.Ct. at 694.

The question before the District Court, and now before us, is whether or not the improvement in the hole location and concentricity gauge which resulted in the indicator dial remaining stationary was obvious within the meaning of patent law. As Justice Clark observed in the Graham case, "He who seeks to build a better mousetrap today has a long path to tread before reaching the Patent Office." Graham v. John Deere Co., supra at 19, 86 S.Ct. 684.

The District Judge made the following findings and conclusions on the obviousness issue:

"St. Amour disclosed and claimed a hole location having a stationary indicator whereas the prior art taught rotating-indicator rotating-probe hole location and concentricity gauges, and a stationary indicator gauge for measuring the out-of-roundness of an aircraft cylinders sic and operating on a different principle than the gauge of St. Amour. These prior art devices were in existence for many years and yet while the art of hole location and concentricity gauges was one in which there was considerable patent activity, it was not until an outsider, St. Amour, entered the field that a stationary indicator hole location and concentricity gauge was forthcoming. Thus, the St. Amour invention was not obvious to one skilled in the gauge art at the time the invention was made.

* * * * * *

"The invention disclosed and claimed in the St. Amour patent would not have been obvious to a man of ordinary skill in the gauge art at the time of the invention."

It should be noted that the patent in suit makes no claims either as to the hole location or concentricity gauge itself, or as to the indicator and the mechanism which connects it with the concentricity probe. In short, this is a claim of invention resulting solely from the combination of two parts well known in the art in such a fashion that one could...