Gomez v. Granat Bros.

• Decision Date: 09 January 1950
• Docket Number: No. 12160.,12160.
• Citation: Gomez v. Granat Bros., 177 F.2d 266 (9th Cir. 1950)
• Parties: GOMEZ et al. v. GRANAT BROS. et al.
• Court: U.S. Court of Appeals — Ninth Circuit

177 F.2d 266 (1949)

GOMEZ et al. v. GRANAT BROS. et al.

No. 12160.

United States Court of Appeals Ninth Circuit.

October 20, 1949.

Rehearing Denied November 28, 1949.

Writ of Certiorari Denied January 9, 1950.

J. E. Trabucco, San Francisco, Cal., for appellants.

Mellin & Hanscom, Oscar A. Mellin, Leroy Hanscom and Jack E. Hursh, San Francisco, Cal., for appellees.

Before GARDNER (sitting by designation), HEALY and ORR, Circuit Judges.

Writ of Certiorari Denied January 9, 1950. See 70 S.Ct. 351.

GARDNER, Circuit Judge.

This action was originally commenced by appellants against appellees under Section 274d of the Judicial Code, 28 U.S.C.A. § 400, 28 U.S.C.A. §§ 2201, 2202, for a declaratory judgment establishing the invalidity of the Granat Patent No. 2,059,228. Defendants filed a cross complaint charging infringement of the patent in suit. On trial the court determined the issues in favor of defendants, found the patent valid and infringed, and entered judgment dismissing the complaint and enjoining plaintiffs from manufacturing and selling the infringing device. Plaintiffs have appealed and in their statement of points relied upon challenge the correctness of the court's findings of fact and conclusions of law. The only issue presented on this appeal is as to the validity of the patent as it is conceded that plaintiffs' device is an infringement of the device described in the patent in suit.

The patent relates to a mechanically locked finger ring ensemble comprising an engagement and wedding ring together with interconnecting means embodying a recess in the side of one of the rings within which lug or projection on the side of the other ring detachably fits. There are four claims in the patent but they are, so far as the question of patentability is concerned, substantially the same. Claim 1 is as follows: "In a ring ensemble, the combination of an engagement ring and a wedding ring, said engagement ring having an undercut recess formed in one side thereof, said wedding ring having a lug formed on one side thereof, said lug having the same configuration as said recess, whereby when said lug is inserted in said recess said rings will be locked together against axial rotation with relation to each other."

In seeking reversal plaintiffs contend that the patent in suit is invalid because (1) the prior art fully anticipates the device described in the Granat patent; (2) the patent claims are fatally defective in that they define an exhausted and old combination consisting of two connected finger rings together with a certain kind of connecting means, namely, a dovetail tongue and groove or mortise and tenon connection, the invention, if any, residing in the connecting means; (3) the combination of the patent in suit does not constitute invention.

The connecting means is the element which forms the basis of defendants' claim of invention. The combination of two finger rings held together in interlocked relationship was well known in the prior art as disclosed by the patents known in the record as Kaas, Bullard, Thomas, Beaujard and Harris. In the device covered by the Thomas patent two finger rings are detachably held in interlocked relationship by means consisting of a key or projection on the side of one ring extending through a key hole or recess in the side of the other ring. In the device described in the Kaas patent, two rings are interlocked, one ring being provided with a crown having a slotted slide opening which is adapted to receive the crown portion of the ring which is very similar in construction to the Granat ring ensemble. All the above named patents described rings held together in interlocked relationship. In the device described in the Kaas patent the mortise on one ring is adapted to receive the crown portion of the other ring. In the device described in the Bullard patent the mortise and tenon type of connecting means is employed. These locked ring ensembles disclosed by the prior art were provided with connecting means which prevented the relative independent rotation of either ring as well as their detachment one from another when worn on a finger.

Referring to the claims of the patent in suit it is to be observed that the expressions "mortise and tenon" and "dovetail tongue and groove" are employed. A dovetail connection or joint is well known. It is defined in all standard dictionaries. In the New Century Dictionary it is defined as, "A tenon or tongue resembling a dove's tail spread or a reversed wedge; also, the mortise or cavity into which such a tenon fits; also, a joint or fastening formed by one or more such tenons and mortises." It is defined in Webster's New International Dictionary as "A flaring tenon or tongue and a mortise or socket into which it fits, making an interlocking joint between the pieces which resist pulling apart in all directions except one."

Kaas, Bullard, Thomas and Beaujard, all prior patents disclose ring ensembles comprising two finger rings arranged in interlocked relationship. Other patents shown in the record show dovetail tongue and groove or mortise and tenon connecting means used in various arts to join two elements together. None of these prior patents were cited or considered by the patent office during the prosecution of the patent application for the Granat patent. In this situation it is argued that the presumption of prima facie validity is greatly weakened if not destroyed when pertinent prior art is not cited or considered by the patent office, and this court has so held. Stoody v. Mills Alloys, 9 Cir., 67 F.2d 807; Mettler v. Peabody Engineering Corp., 9 Cir., 77 F.2d 56; McClintock v. Gleason, 9 Cir., 94 F.2d 115. See, also: France Mfg. Co. v. Jefferson Electric Co., 6 Cir., 106 F.2d 605; Seiberling Rubber Co. v. I. T. S. Co., 6 Cir., 134 F.2d 871. It seems clear that these patents must be classified as pertinent prior art.

The element of invention or discovery is an essential requisite of patentability. Invention must at least involve the production of something new and useful and the trend of recent controlling decisions is to the effect that invention involves the operation of the intellect or of something akin to genius as distinguished from mere mechanical skill. Marconi Wireless Tel. Co. v. United...