Seiberling Rubber Co. v. ITS Co.

• Decision Date: 12 April 1943
• Docket Number: No. 9323.,9323.
• Parties: SEIBERLING RUBBER CO. et al. v. I. T. S. CO.
• Court: U.S. Court of Appeals — Sixth Circuit

134 F.2d 871 (1943)

SEIBERLING RUBBER CO. et al. v. I. T. S. CO.

No. 9323.

Circuit Court of Appeals, Sixth Circuit.

April 12, 1943.

J. Ralph Barrow, of Akron, Ohio (Hawgood & Van Horn, Arthur H. Van Horn, and J. Ralph Barrow, all of Cleveland, Ohio, on the brief), for appellants.

F. O. Richey, of Cleveland, Ohio (F. O. Richey, H. F. McNenny, J. D. Douglass, and Richey & Watts, all of Cleveland, Ohio, on the brief), for appellee.

John J. Darby, of Washington, D. C. (Wood, Arey, Herron & Evans, of Cincinnati, Ohio, John J. Darby, of Washington, D. C., Simon E. Sobeloff, of Baltimore, Md., and C. Willard Hayes, of Washington, D. C., on the brief), for Holtite Mfg. Co., Inc., and Cat's Paw Rubber Co., Inc., amici curiae.

Before SIMONS, MARTIN, and McALLISTER, Circuit Judges.

SIMONS, Circuit Judge.

Stripped of immaterial matter, consideration of weight of evidence, innuendo, and unsustained and unsustainable defenses, the determination of the present patent infringement suit involves decision on the single issue of invention. We confine ourselves to the question whether improvement made by the patentee over prior art is such as denotes inventive quality. The District Court held that it did, and entered decree for injunction and accounting. As to infringement it perceived no debatable issue. Neither do we.

The patent involved is No. 1,987,573, granted to C. W. Ingwer January 8, 1935, upon an application filed May 31, 1930. It proclaims itself as for a composite rubber article, but is, in essence, directed to a rubber composition for lifts to be attached to heels, particularly the high wooden heels of women's shoes. Three claims were allowed, which are printed in the margin,¹ and the patent, as originally granted, was assigned to and is now owned by the appellee.

In the fabrication of women's shoes the high wooden heel demanded by past and current fashion is covered with satin, silk, or soft leather, enclosing the back and sides of the heel. The covering is drawn tight with the material adjacent to the top of the heel, folded over and glued to the wood. The rubber lift is then attached by nails driven into the center of the heel. If the leather or the fabric folded over the top of the heel is dislodged for any reason, the shoe becomes unsightly. It is said that prior to Ingwer's invention the flexing of the rubber heel lifts in and out as the wearer threw weight upon it, would pump the edges of the fabric outward, make the heel unsightly and receptive to dirt and water, causing a condition not to be tolerated by the wearers. The problem envisioned by Ingwer was to produce a minute, relatively soft rubber heel lift which would effectively seal the seam between it and the wooden heel, and would not dislodge the ends of the fabric folded over its top. The principal rubber heels in use in 1918 at the time the problem is said to have arisen, were the flat rubber and the concavo-convex rubber heel lifts, and both are said to have been inadequate since both, by the so-called pumping action, tended to push the edge of the fabric from under the lift and cause it to be exposed. It is urged that this problem, though recognized in 1918, was not solved until the Ingwer patent issued in 1928, although much effort was expended for ten years both by Ingwer and others in search of solution.

It will be observed that Ingwer claims a heel lift with a concavo-convex rubber body and a sheet of thin fibre molded and vulcanized to its entire concave surface to prevent lateral displacement at the edge of the heel. The inextensibility of the fibre was proclaimed as preventing the pumping action and the concavo-convex form as tending to seal the joint between heel and lift at its outer edges. Ingwer's application had a stormy voyage through the patent office. When first filed with 17 claims, including article and method, it was rejected upon prior patent disclosures. Amended claims were likewise rejected upon Roberts No. 1,783,980, Feinstein No. 1,594,162, and Rudman No. 1,696,173. It was said by the examiner that the layer used by Warren No. 1,681,961, was inextensible and that the claims read directly on Roberts. The claims were reduced in number and again amended, but, for the third time, were rejected on the references of record, particularly on the ground that the patent to Feinstein stated that the thin fibre sheet is vulcanized to the rubber and that the patent to Bard No. 1,702,958, describes vulcanizing of fibre to rubber. The claims were then reduced to four, but were rejected as failing to distinguish patentability from the Warren patents wherein part of the concave face of the heel has a sheet of fabric molded and vulcanized thereto. Final rejection of claims revised and reduced to 3, followed on November 18, 1933. An appeal to the Board of Patent Appeals resulted in the issue of the claims now relied on, upon the sole ground that if the attachment of the fabric to the upper surface of the lift prevented relative movement between lift and fabric, this conception was not disclosed in the citations.

The failure of the Board to mention the Feinstein patent wherein is disclosed an attachment of inextensible fabric to the upper surface of the lift, is assailed by the appellant as indicating failure of the Board to consider the Feinstein patent. It was, however, referred to in the report of the examiner and cited in the briefs. We are not concerned with the mental processes by which the Board of Appeals reached decision, but with the question whether inventive advance is disclosed in the Ingwer patent. We have sketched patent office history merely to indicate lack of unanimity in the patent office and to point to decision there as based primarily on lack of precise anticipation, a not unusual characteristic of patent office decision. The District Court found invention to reside in the patent, influenced largely by the commercial success of the appellee.

We have found it necessary to give careful consideration to prior art in the application of the higher standards required, in recent years, by the decisions of the Supreme Court for the determination of invention,² and so to ascertain just what it was that Ingwer did that had not, in essence, been done before, and whether it denoted invention or was within expected routine skill of those laboring in the art. The concavo-convex form of rubber heel was, of course, not the invention of Ingwer, nor does he claim it to be. In I. T. S. Rubber Co. v. Essex Co., 272 U.S. 429, 434, 47 S.Ct. 136, 138, 71 L.Ed. 335, it is pointed out that it is a characteristic of the concavo-convex type of rubber heel, because of the tendency of rubber to resume its original curved form to keep tightly pressed against the heel, — a characteristic called the "tight-edge effect" — and that it was referred to as early as 1889 in Ferguson's patent No. 638,228. The Tufford heel, reissue patent No. 14,049, owned by the present appellee and by it litigated in the Essex case and elsewhere, is of the concavo-convex type. Its merit in sealing the joint between lift and heel was widely proclaimed. It was old to insert an inextensible plate of metal, leather, or fabric, between the rubber lift and the wooden heel, as shown by the patents of Warren No. 1,564,158, No. 1,681,961, and Ross No. 1,604,659. The examiner pointed out that there was no patentable distinction between molding and vulcanizing fabric to a portion of the concave surface of a rubber heel, and covering its entire surface...