Gardner v. Buxton

• Decision Date: 28 June 1945
• Docket Number: No. 12825-12857.,12825-12857.
• Parties: GARDNER v. BUXTON, Inc. BUXTON, Inc., v. GARDNER (two cases).
• Court: U.S. Court of Appeals — Eighth Circuit

150 F.2d 242 (1945)

GARDNER v. BUXTON, Inc. BUXTON, Inc., v. GARDNER (two cases).

Nos. 12825-12857.

Circuit Court of Appeals, Eighth Circuit.

June 28, 1945.

John D. Rippey, of St. Louis, Mo., for Leah L. Gardner, individually and as representative of Prince A. Gardner.

Edmund C. Rogers, of St. Louis, Mo. (Robert P. Harvey, of Springfield, Mass., Chapin & Neal, of Springfield, Mass., and Kingsland, Rogers & Ezell, of St. Louis, Mo., on the brief), for Buxton, Inc.

Before GARDNER, WOODROUGH and JOHNSEN, Circuit Judges.

JOHNSEN, Circuit Judge.

The action is one for infringement of a number of patents on improvements in key cases or containers, brought by Buxton, Incorporated, against Prince A. Gardner, Jr., and Leah L. Gardner, his wife. Gardner was the owner of the business which was doing the alleged infringing, but his wife was conducting the business under a general power of attorney, because of his incapacity. Following the decree in the trial court, Gardner was declared incompetent by a Missouri probate court, and his wife was appointed his legal representative, and as such she has now been substituted for him in these appeals.

Buxton alleged infringement of five patents, of which it was the owner — Buxton No. 1,561,906, Buxton No. 1,691,637, Buxton No. 1,922,755, Howe No. 1,959,207, and Buxton No. 1,966,429. The accused key cases were being manufactured under patents Koelling No. 2,201,833, and Dawson No. 2,201,851, of which Gardner was the owner.

The trial court held that the Gardners had infringed on claims 1, 4 and 6 of Buxton No. 1,561,906, and on claims 1 and 2 of Buxton No. 1,966,429, all of which claims it declared to be valid, but that there was no infringement of Buxton's other three patents.

Appeal No. 12,825 is by the Gardners from the decree of infringement on the two patents. Appeals Nos. 12,856-7 are by Buxton from the denial of infringement on its other three patents. The questions on the several appeals will be considered in the order of the numbers of Buxton's various patents.

Buxton No. 1,561,906.

It is the contention of the Gardners that the trial court's finding that the three claims of this patent were valid and infringed is clearly erroneous. The first question that requires consideration therefore is the validity or patentability of the claims.

On the aspect that is here involved, claim 6 may be treated as typical. It reads: "The combination with a key case, of a supporting member of hollow substantially cylindrical form secured thereto and provided with a plurality of substantially transverse slots, a plurality of key retaining members each having near one end a part to slide in one of said slots and shoulders above and below said parts to engage the inner and outer walls of said supporting member adjacent said slots, whereby each retaining member is free to swing about the axis of the supporting member, and an enlargement provided in each slot at one point to permit the upper shoulder of the key retaining member to pass into and out of the interior of said supporting member."

Prior to this patent, there had been key cases in the art, consisting of a leather folder, with a metal plate secured to its back panel, the upper part of which plate had been slotted and then rolled forward into a cylindrical shape, with key hangers, having a widened head, inserted in the slots and capable of being swung or rotated about the cylinder. See Bowen No. 1,404,736. The element which Buxton No. 1,561,906 added to this combination, within the issue here involved, was an enlargement of the opening at the tip of each slot, so as to form with the slot, when the plate was cut, an inverted keyhole, through the enlarged opening of which the head of the key-hanger could pass and allow the hanger to be taken out of or inserted in the rolled cylinder, as desired.

How the concept of enlarging the opening at the tip of these previous slots, in order to enable the head of the hanger to pass through, can be said to rise to the height of invention and to create the right to a patent monopoly, it is difficult to see. The patent-office examiner, as a matter of fact, initially took the position that this was not invention. In a communication to the applicant, which is part of the file wrapper, he declared, "It is a common and obvious mechanical expedient to remove a member from a slot through an enlargement which is connected with some part of the slot." He re-asserted this view in another communication, in response to a request by the applicant for reconsideration, and said, "To enlarge one portion of a slot to permit withdrawal or insertion of a member through the slot is believed to be an obvious expedient in any art." But, by those erosive and mind-grooving processes of unyielding reiteration of concept and ready prestidigitation of words, which seem to be so much a part of the patent-obtaining game, the resistance of the examiner was apparently finally worn down, and he allowed the claims.

We think it obvious, as the examiner originally declared, that to enlarge one portion of a slot to permit withdrawal or insertion of a member through the slot is a common expedient and concept in the mechanical field. Buxton points out here, as the file wrapper shows it also was suggested to the patent office, that the enlargement at the tip of the slot produced "the new and useful result of being able to remove the key holder readily from the support." The applicant in his correspondence with the patent office had urged that "The key hole slot is the means to the end and, while it is used in other arts, its application to the key case art is new and by its use a new and useful result is effected." But the mere application of a common expedient to an ordinary use in another art, especially where it has not been clearly demonstrated that a recognized problem has existed in the immediate field and has defied previous solution, is not generally invention. Cf. Permutit Co. v. Graver Corporation, 284 U.S. 52, 60, 52 S.Ct. 53, 76 L.Ed. 163. The Supreme Court has only recently again emphasized that "He who is merely the first to utilize the existing fund of public knowledge for new and obvious purposes must be satisfied with whatever fame, personal satisfaction or commercial success he may be able to achieve. Patent monopolies, with all their significant economic and social consequences, are not reserved for those who contribute so insubstantially to that fund of public knowledge." Dow Chemical Co. v. Halliburton Oil Well Cementing Co., 65 S.Ct. 647, 650.

In this connection it may be pertinently observed that the concept of enlarging the tip of the slots in a key case, to permit withdrawal or insertion of the hangers, as was said of the patent in Sinclair & Carroll Co. v. Interchemical Corporation, 65 S.Ct. 1143, 1146, "was not the product of long and difficult experimentation." And, as in Frank Adam Electric Co. v. Colt's Patent Fire Arms Mfg. Co., 8 Cir., 148 F.2d 497, 502, it could not be claimed to have "solved any serious problem which had baffled solution." Indeed — though the point is of no importance in the result here — an examination of the working model of the patent, which is an exhibit in the case, suggests that any attempted commercial use of the device, as it stood under the patent, would probably have created more difficulty than utility to a key-case owner, because of the danger of the hangers being shaken from the slots, through the enlargements, when the case should be inverted in use. And, as a matter of fact, no attempt was apparently made to put the concept into commercial use, until after practical means had been devised through other patents (which we shall consider later) for avoiding this hazard. But, without regard to the observation which has just been made, we are unable, as previously suggested, to see how the mere concept of enlarging the opening at the tip of the slots, to permit removal or insertion of the key-hangers, can be regarded as constituting the play of the inventive faculty or as representing anything more than the exercise of such mechanical skill as is reasonably and naturally entitled to be expected from those engaged in the art. It is, of course, not invention, as has been many times said, "to produce a device which a skilled mechanic would produce when required to effectuate a given result." Frank Adam Electric Co. v. Colt's Patent Fire Arms Mfg. Co., supra. "Strict application of that test is necessary lest in the constant demand for new appliances the heavy hand of tribute be laid on each slight technological advance in an art." Cuno Engineering Corporation v. Automatic Devices Corporation, 314 U.S. 84, 92, 62 S.Ct. 37, 41, 86 L.Ed. 58. The trend of the decisions of the Supreme Court in recent years leaves no room, in our opinion, for any patenting of the simple concept or device that is here involved, in its application to the key-case field.

The trial court's decree as to Buxton No. 1,561,906, on the claims before us, is accordingly reversed, with directions to declare the claims invalid.

Buxton No. 1,691,637, Buxton No. 1,922,755, and Howe No. 1,959,207.

As to each of these patents, the trial court held that there had been no infringement by the Gardners, and Buxton has appealed from this part of the decree. Our consideration therefore will be limited to the question of infringement.

All of the three patents, in the aspect that is here material, sought to provide means of mechanically blocking the enlargements at the tip of the slots, which would prevent the accidental dislodging of the hangers and yet permit their removal through the enlargements, when desired.

Buxton No. 1,691,637, under the claims that are relied on in this appeal, read in relation to the description and patent drawings, made provision for two metal plates, one of which was fastened to the center panel of the leather folder and had its upper and lower edges curled, so as to form a...