Reynolds Metals Co. v. Acorn Bldg. Components, Inc.
| Decision Date | 18 January 1977 |
| Docket Number | No. 75-2182,75-2182 |
| Citation | 548 F.2d 155 |
| Parties | REYNOLDS METALS COMPANY, Plaintiff-Appellant, v. ACORN BUILDING COMPONENTS, INC., Defendant-Appellee. |
| Court | U.S. Court of Appeals — Sixth Circuit |
James L. Dooley, Sherman O. Parrett, Washington, D. C., Robert L. Boynton, Birmingham, Mich., John F. C. Glenn, Robert C. Lyne, Jr., Reynolds Metals Co., Richmond, Va., for plaintiff-appellant.
Bernard J. Cantor, Cullen, Settle, Sloman & Cantor, Jerold I. Schneider, Detroit, Mich., for defendant-appellee.
Before WEICK, CELEBREZZE and ENGEL, Circuit Judges.
This action was brought in the District Court by Reynolds Metals Company (Reynolds) against Acorn Building Components, Inc. (Acorn) for infringement of Nilsen Patent U.S. Patent No. 3,204,324 entitled "Method For Making An Insulated Frame Construction," of which patent Reynolds was the assignee. Acorn denied infringement and counterclaimed, inter alia, for declaratory judgment of invalidity. The District Court held that the patent was invalid for (1) lack of invention, (2) obviousness under 35 U.S.C. § 103, and (3) failure to comply with the specificity requirements of 35 U.S.C. § 112. The Court further held that if the patent were valid, it had been infringed by Acorn. The opinion of the District Court is published at 185 U.S.P.Q. 30 (1975). Reynolds appealed. We affirm, holding the patent invalid, and therefore we do not reach the infringement issue.
The Nilsen patent claims "a method for forming an insulating construction for use in window and curtain wall systems." 1 The Nilsen claims 1, 3 and 4 describe a method which involves: (a) starting with a one-piece extruded metal structure with two U-shaped channels opposite each other, with at least one metal projection contained in each U-shaped channel; (b) filling the channels and the area therebetween with an insulating spacer by flowing therein a liquid resinous composition; (c) solidifying the composition; and then (d) cutting away the bottom section which connects the two U-shaped channels in order to destroy the thermal conductivity between the two members. This forms a metal-plastic-metal construction, or joint, in which the plastic spacer insulates against the transfer of heat between the metal channel parts.
One of the limitations of a metal frame utilized for windows and wall panels is that it permits substantial heat loss from the interior of the building, as well as moisture condensation upon the interior frame. The insulating construction described in the Nilsen patent minimizes this problem by creating a thermal barrier which prevents the flow of heat or cold from the inside to the outside, or vice versa, of a window frame.
In 1962 the Soule Steel Company was awarded a contract to supply aluminum framed insulated curtain wall and window elements to be used in the construction of a building in Fairbanks, Alaska. The building architect's plans specified that the insulating frames to be used should be those marketed by the Marmet Corporation and manufactured under the Doede Patent No. 3,093,217. Fred Nilsen, a project engineer with Soule, specified that instead of using two separate channels as described in the Marmet frame, a single section should be used in which the top portion should be open and the bottom closed. An epoxy solution should then be poured into the channel and when it solidified the bottom portion should be cut away.
On December 10, 1962 Nilsen filed a patent application for this method. In the first official action the Examiner cited eight patents, or "references of interest", against the Nilsen patent application. These were Luth Patent No. 2,366,274, Kunkel Patent No. 2,781,111, Bernardoni et al. Patent No. 2,835,360, Cole Patent No. 3,037,589, Smith Patent No. 3,070,474, Doede Patent No. 3,093,217, Briggs Patent No 3,114,179, and Swiss Patent No. 356,265. The Examiner cited also four other references to show classification. Two of these patents, which related to the method of forming the structural component, were the Kopplinger Patent No. 1,552,748, and the McCormack Patent No. 2,382,245. The Examiner noted that the patents of interest cited were the result of a cursory search. In the second official action the application was rejected on the ground that the patent failed to comply with 35 U.S.C. § 112. The Examiner also rejected the patent on the ground that it defined:
. . . no invention over McCormack in view of Kunkel who discloses the forming of concavities as broadly required in the claim. It would be obvious to one of ordinary skill in the art to utilize said forming of Kunkel in the method of McCormack.
However, after further proceedings the Nilsen patent was finally approved on September 7, 1965.
In 1969 the Nilsen patent was assigned to Reynolds. Reynolds entered into a program with Acorn to supply Acorn with aluminum extrusions with plastic-filled channels made under the Nilsen method. The extrusions were used by Acorn in its manufacture of patio doors. Acorn, after dissatisfaction with the filling material and delays in delivery, ceased purchasing extrusions from Reynolds and began using a method which the District Court found was similar to that described in the Nilsen patent claims.
The District Court determined the prior art to be "comprised of numerous patents describing insulating constructions utilized in windows and curtain wall systems." The prior art considered by the Court included the following patents:
(1) Kunkel Patent No. 2,781,111 (1957)
This patent describes an insulating metal window construction which uses a one-piece metal extrusion with a U-shaped channel. A solid, but resilient, plastic spacing element is placed into or over the channel and is connected to the metal by adhesive and mechanical interlock. The bottom portion of the U-shaped channel is then cut away to separate the metal and thereby to form an insulating construction. "One object of the invention is to provide a metal window which obviates or reduces to a minimum the conduction of cold or heat through the same." (Patent specification App. 262)
(2) Owen Patent No. 2,125,397 (1938)
This patent was not considered by the Patent Office during the processing of the Nilsen patent; rather, it was one of many of the prior art patents cited by the appellee Acorn. This patent discloses an insulating frame to be used in constructing double structures. A liquid or putty-like synthetic resin is flowed into the channel formed by the base flanges of two L-shaped metal strips. The insulating material then hardens and is fastened to projections formed in the metal channel by adhesive and mechanical interlock. The resinous material provides insulation between the two metal strips, but it does not serve as a "thermal break" in the sense that it does not insulate the indoor atmosphere from the outdoor atmosphere; rather, it insulates the interior elements of the construction from each other.
(3) Briggs Patent No. 3,114,179 (1963)
This patent discloses an insulated metal frame to be used in constructing heat insulated double-panelled closures such as windows, doors, and the like. Briggs describes a structure having the spaced apart U-shaped channels with metal projections contained in each channel. A plastic insulating strip is inserted between the channels and interlocked to the channels by the metal projections to form an insulating barrier.
(4) Kessler Patent No. 2,654,920 (1953)
This patent discloses a thermal insulating construction for use in a window system. The structure has spaced apart U-shaped channels. An insulating spacer is inserted in the channels and the metal projections in each channel interlock the spacer to the channels. An object of the invention is to insulate the members "by interposing a material of low heat conductivity, breaking the metallic continuity of the metal members between the exterior and interior surfaces of the window closure and thereby substantially reducing the heat transfer." (Patent specification App. 249)
(5) Doede Patent No. 3,093,217 (1963)
This patent discloses an insulating construction for use in a window or curtain wall system, having the two metal channels with projections on the channel walls. A rigid, thermo-setting plastic insulating spacer is inserted into the channel and secured by an adhesive, and interlocked to the channels by the projections.
Although the Nilsen patent did not specifically disclose that it produced a "thermal break" construction, the record is clear that it did, in fact, produce a "thermal break". As defined by the District Court a thermal break is
. . . a frame construction with a non-conductive material completely separating conductive materials whereby a thermal barrier is created preventing the flow of heat or cold from the outside to the inside of a window frame.
The District Court found that the thermal break resulting from the application of the Nilsen method is not new. Thermal break constructions were described by the Doede, Kunkel, Briggs, and Kessler patents.
The District Court also made other findings relative to the prior art. The Court found that the use of electrical and thermal insulating materials such as liquid urethane and polyurethane, commonly known as potting compounds or caulks, was well known prior to 1962. The Court also found that one of ordinary skill in the art of making insulating constructions for use in windows and curtain wall systems, would have been expected to know that:
1 Liquid plastic resins could be utilized in constructing insulating frames;
2 Liquid resins were commonly used in building insulating constructions and that such plastics were readily available;
3 A one-piece extruded channel is easier to handle than a two-piece channel, and that in order to fill such channel with liquid the bottom portion of the channel would have to be closed. After the channel was filled it would be...
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