Lewis E. Hamel Co. v. P & K, INCORPORATED

• Decision Date: 17 May 1960
• Docket Number: Civ. No. 1639-D.
• Parties: LEWIS E. HAMEL CO., Inc., Plaintiff, v. P & K, INCORPORATED, Defendant.
• Court: U.S. District Court — Eastern District of Illinois

185 F. Supp. 278

LEWIS E. HAMEL CO., Inc., Plaintiff, v. P & K, INCORPORATED, Defendant.

Civ. No. 1639-D.

United States District Court E. D. Illinois.

May 17, 1960.

Harold E. Stonebraker, Rochester, N. Y., for plaintiff.

Paul C. Miller of Prangley, Baird, Clayton, Miller & Vogel, Chicago, Ill., and Thomas A. Nutting, Momence, Ill., for defendant.

PLATT, Chief Judge.

Plaintiff, Lewis E. Hamel Co., instituted this action against the defendant, P & K, Incorporated, alleging infringement of Patent No. 2,493,344, hereafter referred to as 344, and Design Patent No. 158,958, hereafter referred to as 958. Plaintiff dismissed, with prejudice, the allegations in the complaint alleging unfair competition. Both patents pertain to a plastic fishhook and snell holder and were issued to Lewis E. Hamel, the inventor, and assigned by him to the plaintiff.

In patent 344 the application was filed July 12, 1949, and issued January 3, 1950. The Design Patent No. 958 issued June 13, 1950, upon an application filed July 12, 1949.

The defendant contends:

(1) That both patents are invalid because:

(a) They do not rise to the status of invention in view of the prior art. 35 U. S.C.A. §§ 102(b), 171.¹

(b) The difference between the plaintiff's mechanical and design patents and the prior art are such that the subject matter as a whole would have been obvious to one having ordinary skill in the art. 35 U.S.C.A. §§ 103, 171.

(2) That claims 1, 2, 6, and 7 are broader than the invention described in the specifications which include the air chambers as an essential element.

(3) That the accused device does not infringe plaintiff's patents.

Claim one of patent 344 reads as follows: "1. A fishhook and snell holder comprising a housing consisting of two sections of plastic material permanently secured together, each of said sections having a channeled cross-section with slots at one end to receive spring-actuated retainers and a plurality of series of transversely arranged hook-receiving openings at the other end." Claim 2 adds longitudinal grooves in the outer surface of the housing which receive the snell and ridges between these grooves extending somewhat above the snells when the latter are in position. Claim 3 adds a sealed air chamber at the center of the housing formed when the two sections of the plastic material are permanently secured together. Claims 4 and 5 add no new element. Claims 6 and 7 add a spring-actuated retainer component which consists of slots at one end of each of the two main housing sections to receive spring-actuated retainers, these sections having curved grooves in their inner surfaces adjacent to the slots with springs and spring-actuated retainers seated and moveable in the grooves and spring guiding plate arranged between the sections having curved grooves in its opposite surfaces positioning the springs and retainers. Claims 8 and 9 add no new element but combine all the elements described in the prior claims.

The plaintiff maintains that all claims are valid and establish infringement of his fishhook and snell holder.² The claims are comprised of the following elements:

(1) A housing made of plastic.

(2) "A housing * * * of two sections * * * permanently secured together, each * * * section having a channeled cross-section."

(3) "A plurality of series of transversely arranged hook-receiving openings" at one end.

(4) "Slots at the opposite end to receive spring-operated retainers."

(5) "Springs and spring-actuated retainers seated and moveable in a cylindrical shaped space formed by grooves in the inner surfaces of the housing sections and grooves in the spring-guiding plate which is positioned between the housing sections."

(6) "Said sections having grooves in their outer surfaces extending endwise thereof to receive the snells, and ridges between said grooves extending somewhat above portions of the snells when the latter are positioned on the holder."

(7) The housing "sections having inwardly extending transverse partitions contacting and permanently attached to each other forming a sealed air chamber at the center of the housing."

The Niagra holder and the Wilcox holder were admitted in evidence, without objection, as prior art under section 102(b). The Niagra holder was manufactured under Buicke patent No. 2,190,647, issued February 20, 1940. The patentee, Mr. Hamel, testified that he had knowledge of the Niagra holder at the time he made his first model. The Wilcox holder appears in Wilcox patent No. 2,624,973, which issued January 13, 1953. The Wilcox patent did not issue at least one year prior to Hamel's application filed July 12, 1949, but a Wilcox holder was in public use one year prior thereto. Wilcox was a manufacturer of plastic articles. He and two of his associates constructed the snell holder, which was of plastic material, in February or March, 1948. They completed the final model shortly before May 15, 1948. Wilcox and his wife used this holder on several fishing trips in Colorado, where they resided, starting in the middle of May, 1948. Wilcox testified to these facts in his deposition, and he was corroborated on the use of the holder by Mrs. Wilcox in her deposition. The proof of prior use of the Wilcox holder was not contradicted and was sufficiently clear to establish the public use. Whiteman v. Mathews, 9 Cir., 1954, 216 F.2d 712. In its argument plaintiff maintains that the Niagra and Wilcox holders were not an anticipation of Hamel's holder. They were not introduced in the record for that purpose but only as prior art. They were in use one year prior to Hamel's application date and contained some of the elements described in Hamel's patents and must be considered as prior art. Whiteman v. Mathews, supra. See Watson v. Allen, 1958, 103 U. S.App.D.C. 5, 254 F.2d 342; General Motors Corp. v. Estate Stove Co., 6 Cir., 1953, 203 F.2d 912, 915.

Plaintiff seeks to distinguish 344 from the prior art by the fact that it is made of plastic housing. The Wilcox holder was also made of plastic. Substituting plastic material for metal or any other material which was used in the prior art does not amount to a patentable invention. Bobertz v. General Motors Corporation, 6 Cir., 1955, 228 F. 2d 94; Associated Plastics Companies v. Gits Molding Corp., 7 Cir., 1950, 182 F. 2d 1000; Electro Mfg. Co. v. Yellin, 7 Cir., 1943, 132 F.2d 979; Evr-Klean Seat Pad Co. v. Firestone Tire & Rubber Co., 8 Cir., 1941, 118 F.2d 600.

The other elements of 344 were old in the art. Figure 6 of the Gardner fishhook holder, Patent No. 1,451,256, issued April 10, 1923, shows a housing of one piece similar to one section of 344. If two Gardner housings were fastened back to back the result would be a housing of two sections permanently secured together, having a channeled cross-section. The Niagra holder has two sections at either end fastened together by a piece of fiber material and utilizes both sides of the holder. The duplication of an old part does not in itself make a device patentable. In re Abrahamsen, 1931, 53 F.2d 893, 19 CCPA 702. Furthermore. "a mere carrying forward of a known principal, or change in form, size, proportions or degree, or doing the same thing in the same way by substantially the same means, with better results, is not in itself invention." Solar Corporation v. Borg-Warner Corporation, 7 Cir., 1957, 244 F.2d 940; Tropic-Aire, Inc. v. Cullen-Thompson Motor Co., 10 Cir., 1939, 107 F.2d 671, 674. The third element is also found in the Gardner patent which has "a plurality of series of transversely arranged hook-receiving openings" at one end. (See upper portion of fig. 5, Gardner.) Clearly this element is also found in the Niagra holder. "Slots at the opposite end to receiving spring operated retainers" are utilized in both Niagra and Gardner. The fifth element, "springs and spring-actuated retainers seated and moveable in a cylindrical shaped space formed by grooves in the inner surface of the housing section and grooves in the spring-guiding plate * * *" were used in Niagra. The sections having grooves in the outer surface extending lengthwise thereof to receive the snells as in the sixth element are taught in Cantrell patent No. 667,676, issued in 1901, DeWitt patent No. 2,102,682 issued in 1937, and in the Wilcox holder.

This brings forward the last element in 344, the sealed air chamber. The purpose of this element was to cause the holder to float if it was accidentally dropped in the water. Plastic bath toys with sealed air chambers were in common use by children for many years prior to 1947. The floating air chamber was likewise used in fishing poles, lures, bobbers, and minnow buckets. The use of air chambers in this type of equipment, although all were not disclosed by the evidence, has been so common that this court is justified in taking judicial notice of it. Black Diamond Coal-Mining Co. v. Excelsior Coal Co., 1895, 156 U.S. 611, 15...