Gross v. Frank

• Decision Date: 06 November 1923
• Docket Number: 2034.
• Parties: GROSS v. FRANK.
• Court: U.S. Court of Appeals — Fourth Circuit

293 F. 702

GROSS v. FRANK.

No. 2034.

United States Court of Appeals, Fourth Circuit.

November 6, 1923

Arthur E. Dowell, of Washington, D.C. (Alexander & Dowell, of Washington, D.C., on the brief), for appellant.

Cyrus W. Beale, of Richmond, Va. (Williams & Mullen, of Richmond Va., on the brief), for appellee.

Before WOODS and WADDILL, Circuit Judges, and GRONER, District Judge.

WADDILL Circuit Judge.

This case involves the validity of claim 3 of patent No 1,380,058, dated May 31, 1921, granted to the appellant Gross, for a parking light for automobiles.

The appellant, hereinafter called the plaintiff, on the 4th day of August, 1920, filed his application to have issued to him a patent for certain new and useful improvements in parking lights for automobiles, claimed to have been invented by him. The patent was duly granted, claim 3, the subject of the litigation, being an amendment and enlargement of claims 1 and 2 of the petition for patent. The District Court decided that, while the infringement on the part of the appellee hereinafter called the defendant, of the plaintiff's alleged patent was clear, the patent itself was invalid for want of novelty, and accordingly dismissed the plaintiff's bill, from which the appeal in this case was taken. The assignments of error present this single question for the consideration of the court. The District Court held that, while there is no question that a high order of inventive genius may be shown in combining old things so as to produce new results, there must be a real patentable combination of them, as distinguished from a mere aggregation of such elements; in a word, that the court's view was there was not only lack of novelty in the plaintiff's claim, but also that it did not contain such real combination of old elements as to produce new and useful results.

After giving to the case the fullest consideration, we find ourselves unable to agree with the trial court in either of the positions taken. Claim 3 of the patent in suit is as follows:

'(3) In a parking light, a tubular supporting member having its upper end formed with a bayonet slot for engagement with the pin of a lamp shank and having an integral exterior supporting flange adapted to rest upon the top of the fender; means for clamping the flange to a fender; a small T-shaped casing comprising a cylindrical body open at its opposite ends and a depending tubular T portion adapted to telescope over the upper end of the tubular supporting member above the flange; multi-faceted lenses secured in and projecting beyond each end of the casing; a socket screw for fastening the T portion of the casing to the upper end of the socket member, the outer end of said screw being substantially flush with the exterior of the part in which it is threaded, an insulating block fixedly secured in the lower end of the tubular supporting member; and means in said block for making electrical contact with the contacts in the shank of a lamp when the latter is inserted in the upper end of the socket member, the parts being so proportioned that the lamp is approximately in axial alinement with both lenses, substantially as described.'

Plaintiff, describing the advantages of such a light over prior lights, which the proof fully sustains, says of it:

'The size and strength and simplicity of construction, the ease with which the bulb can be renewed, the large light it gave and the way it was fastened to the fender, the substantial method of being attached to the fender, made it stay there, and could not be vibrated loose. * * * The features of this heavily set screw that could be used to remove the top very easily was that the bulb could be removed. After it is renewed, you simply put the top on and tighten up the screw, and you can align it, without any trouble, fore and aft, with the car. It is very substantially installed on the fender by the use of a large nut, and in our advertising we guarantee that the light will outlast the car, where the old light used to last anywhere from three to six months.'

He further states that in his light the jewels are made of glass, and are--

'Slipped in and the metal spun over the edge of the jewel, which makes it very strong and permanent. You have to break the jewel in order to get it out. The projections here and the facets on each side throw the rays of the light sideways as well as forward, making it very big.'

The plaintiff further described the method of attaching his light as:

'By simply loosening the set screws it goes through and connects with the supporting members, slips the top right off, and you remove the bulb and put the top back on and tighten up your set screws and wind it up in the position it ought to be, and tighten it up good and solid, and it is permanent there. In installing them you bore a hole through the fender, and slip this down through, and put the nut up underneath and clamp it tight.' It is not shown in the record that any prior light had been produced with a small metal T-shaped body and projecting faceted lenses in each end thereof, as in the case of the plaintiff's light. This was the essentially novel feature of the plaintiff's invention, and what made his light a success was the small T-shaped casing with the projecting multi-faceted lenses in each end thereof. No one had previously conceived this idea, and used a lense with

...