Gray v. Texas Co.

• Decision Date: 07 February 1935
• Docket Number: No. 10008.,10008.
• Citation: 75 F.2d 606
• Parties: GRAY v. TEXAS CO.
• Court: U.S. Court of Appeals — Eighth Circuit

75 F.2d 606 (1935)

GRAY v. TEXAS CO.

No. 10008.

Circuit Court of Appeals, Eighth Circuit.

February 7, 1935.

Leonard L. Kalish, of Philadelphia, Pa. (Thompson, Hessian & Fletcher and Maurice A. Hessian, all of Minneapolis, Minn., on the brief), for appellant.

Lynn A. Williams, of Chicago, Ill. (Orren E. Safford, of Minneapolis, Minn., Casper William Ooms and Williams, Bradbury, McCaleb & Hinkle, all of Chicago, Ill., and Shaw, Safford and Putnam, of Minneapolis, Minn., on the brief), for appellee.

Before SANBORN, WOODROUGH, and BOOTH, Circuit judges.

BOOTH, Circuit Judge.

This is an appeal from a judgment dismissing a complaint after demurrer had been sustained thereto.

The suit was an action at law for damages for infringement by defendant-appellee of United States Patent No. 1,810,826 granted to plaintiff-appellant and covering a "Grease Service Rack."

The demurrer was based upon several grounds and was sustained generally; but the only ground relied upon by appellee in this court is as follows: "The patent which is the subject matter of the action and which is made a part of the complaint, is void upon its face because * * * it describes and claims a mere aggregation as distinguished from a true combination."

The object of the alleged invention is thus set out in the specifications: "It is the object of my present invention to provide means whereby a series of generally similar grease dispensing pumps or grease guns, each containing a different specialized lubricant or other fluid required in the servicing of the automobile, may be arranged and kept at hand so that they may be used with the greatest facility, and so that the danger of confusion of the various lubricants is reduced to a minimum. Thus, it is an object of my invention to reduce to a minimum the possibility of applying to any part of the automobile requiring specialized lubrication or requiring some fluid for specialized servicing, any fluid or lubricant other than the appropriate fluid or lubricant required for the particular part, and at the same time to facilitate the quick and easy selection of the required lubricant or other fluid."

The first claim of the patent may be taken as typical. It reads as follows: "A specialized lubricating service rack including a series of pump supports, for receiving a series of pumps containing different fluids, a corresponding series of dispensing pumps mounted upon said supports, a series of indicia upon said rack in juxtaposition to said series of pump supports, respectively, each indicating a particular part of the automobile requiring a specialized lubrication or service and a series of identification marks upon said pumps, and a corresponding series of identification marks upon said rack in juxtaposition to said pump supports, for identifying each with its particular support and hence with the particular legend denoting the part of the automobile to which said pump is properly applicable."

The service rack includes the following elements: (a) A series of pump supports; (b) a corresponding series of dispensing pumps; (c) a series of indicia upon the rack, close to the supports, each mentioning a particular part of the automobile requiring specialized lubrication; (d) a series of identification marks upon the pumps; (e) a corresponding series of identification marks upon the rack near the supports for identifying each pump with its particular support.

1. It is apparent that the claim is what is generally known as a combination claim. The real question at issue is whether the combination of elements disclosed by the patent is a "mere aggregation" not subject to patent, or is a "true combination" subject to patent within the provisions of the patent laws; in other words, a patentable combination.

A brief review of some of the pertinent authorities will be helpful.

Hailes v. Van Wormer, 20 Wall. 353, 354, 22 L. Ed. 241, involved "improvement in coal stoves" consisting of a combination of old devices. The court in its opinion said (page 368 of 20 Wall.): "It must be conceded that a new combination, if it produces new and useful results, is patentable, though all the constituents of the combination were well known and in common use before the combination was made. But the results must be a product of the combination, and not a mere aggregate of several results each the complete product of one of the combined elements. Combined results are not necessarily a novel result, nor are they an old result obtained in a new and improved manner. Merely bringing old devices into juxtaposition, and there allowing each to work out its own effect without the production of something novel, is not invention."

Reckendorfer v. Faber, 92 U. S. 347, 23 L. Ed. 719, involved one of the lead pencil cases. The court in its opinion said (page 357 of 92 U. S.): "The combination, to be patentable, must produce a different force or effect, or result in the combined forces or processes, from that given by their separate parts. There must be a new result produced by their union: if not so, it is only an aggregation of separate elements. An instance and an illustration are found in the discovery, that, by the use of sulphur mixed with india-rubber, the rubber could be vulcanized, and that without this agent the rubber could not be vulcanized. The combination of the two produced a result or an article entirely different from that before in use. Another illustration may be found in the frame in a saw-mill which advances the log regularly to meet the saw, and the saw which saws the log; the two co-operate and are simultaneous in their joint action of sawing through the whole log: or in the sewing-machine, where one part advances the cloth, and another part forms the stitches, the action being simultaneous in carrying on a continuous sewing. A stem-winding watch-key is another instance. The office of the stem is to hold the watch, or hang the chain to the watch: the office of the key is to wind it. When the stem is made the key, the joint duty of holding the chain and winding the watch is performed by the same instrument. A double effect is produced or a double duty performed by the combined result. In these and numerous like cases the parts co-operate in producing the final effect, sometimes simultaneously, sometimes successively. The result comes from the combined effect of the several parts, not simply from the separate action of each, and is, therefore, patentable."

Pickering v. McCullough, 104 U. S. 310, 26 L. Ed. 749, involved an improvement in the manufacture of moulding crucibles and pots used in the manufacture of steel. The court in its opinion said (page 318 of 104 U. S.): "* * * It is perfectly clear that all the elements of the combination are old, and that each operates only in the old way. Beyond the separate and well-known results produced by them severally, no one of them contributes to the combined result any new feature; no one of them adds to the combination anything more than its separate independent effect; no one of them gives any additional efficiency to the others, or changes in any way the mode or result of its action. In a patentable combination of old elements, all the constituents must so enter into it as that each qualifies every other; to draw an illustration from another branch of the law, they must be joint tenants of the domain of the invention, seised each of every part, per my et per tout, and not mere tenants in common, with separate interests and estates. It must form either a new machine of a distinct character and function, or produce a result due to the joint and co-operating action of all the elements, and which is not the mere adding together of separate contributions. Otherwise it is only a mechanical juxtaposition, and not a vital union."

Richards v. Chase Elevator Co., 158 U. S. 299, 15 S. Ct. 831, 39 L. Ed. 991, involved an improvement in a grain transferring apparatus. The court in its opinion said (page 302 of 158 U. S., 15 S. Ct. 831, 833): "Unless the combination accomplishes some new result, the mere multiplicity of elements does not make it patentable. So long as each element performs some old and wellknown function, the result is not a patentable combination, but an aggregation of elements. Indeed, the multiplicity of elements may go on indefinitely without creating a patentable combination, unless by their collocation a new result be produced."

Grinnell Washing Mach. Co. v. E. E. Johnson Co., 247 U. S. 426, 38 S. Ct. 547, 62 L. Ed. 1196, involved improvements in washing machines. The court in its opinion said (page 432 of 247 U. S., 38 S. Ct. 547, 549): "It is not always easy to decide this question, as the difference of opinion in the Circuit Courts of Appeals in this case illustrates. Generally speaking, a combination of old elements in order to be patentable must produce by their joint action a novel and useful result, or an old result in a more advantageous way. To arrive at the distinctions between combinations and aggregations definite reference must be had to the decisions of this court."

The court reviews the cases above cited and then proceeds (page 433 of 247 U. S., 38 S. Ct. 547, 550):

"Applying the rule thus authoritatively settled by this court, we think no invention is shown in assembling these old elements for the purposes declared. No new function is `evolved from this combination'; the new result, so far as one is achieved, is only that which arises from the wellknown operation of each one of the elements.

"* * * So in this instance we think the combination accomplished by Phillips fails to show that exercise of invention, producing a novel and useful result from the co-operating action of the elements, which is essential to distinguish patentable combination from an aggregation of old elements so placed by mechanical skill as to do work more rapidly and economically."

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