Tropic-Aire, Inc. v. Cullen-Thompson Motor Co.

• Citation: 107 F.2d 671
• Decision Date: 19 December 1939
• Docket Number: No. 1905.,1905.
• Parties: TROPIC-AIRE, Inc., v. CULLEN-THOMPSON MOTOR CO.
• Court: United States Courts of Appeals. United States Court of Appeals (10th Circuit)

107 F.2d 671 (1939)

TROPIC-AIRE, Inc., v. CULLEN-THOMPSON MOTOR CO.

No. 1905.

Circuit Court of Appeals, Tenth Circuit.

November 6, 1939.

Rehearing Denied December 19, 1939.

Harold Olsen, of Chicago, Ill. (Morrison Shafroth, of Denver, Colo., on the brief), for appellant.

Drury W. Cooper, of New York City (John A. Blair and Harness, Dickey & Pierce, all of Detroit, Mich., and Frederick Sass, of Denver, Colo., on the brief) for appellee.

Before LEWIS, PHILLIPS, and HUXMAN, Circuit Judges.

HUXMAN, Circuit Judge.

This is an appeal from a decree of the United States District Court of Colorado, dismissing for want of equity appellant's bill of complaint, charging an alleged infringement of all claims except Claim 8 of Reissue Letters Patent No. 17,131, dated November 13, 1928, to Tropic-Aire, Inc., as assignee of Orville S. Caesar. The patent in suit is a reissue of Patent No. 1,668,490, granted May 1, 1928. The court held Reissue Patent No. 17,131 invalid on the ground of non-invention, and the further ground that the claims of the patent were so limited by the prior art that appellee's device was no infringement thereof.

The objects of the patent are stated as follows:

"This invention relates to new and useful improvements in apparatus for heating the interiors of automotive vehicles such, for instance, as sedans and buses, and an object of the invention is to provide such an apparatus comprising a heating member having a connection with the water-circulating system of the vehicle engine whereby hot water will be circulated through the member, means being provided in connection with the heating member for forcing the air within the vehicle body therethrough to heat it and to keep such heated air in continuous circulation within the vehicle body.

"A further object of the invention is to provide an air-heating member adapted to be mounted within a vehicle body and having a connection with the water-circulating system of the engine and, further, having means for diverting substantially all or a portion of the water through the heating member to heat the interior of the vehicle body.

"A further object is to provide such an apparatus including an air-heating member comprising a plurality of horizontally disposed, spaced tubes, each adapted to be surrounded by water, said member having means for connecting it to the water-circulating system of an internal combustion engine, whereby a circulation of hot water may be established therethrough, a valve being interposed in the connection between the intake and discharge conduits of the heating member whereby the flow of water through the heating member may be controlled.

"A further object is to provide a combination hot water and air-heating apparatus for automotive vehicles, comprising a heat-radiating member having an electrically operated fan mounted adjacent thereto for circulating the air within the vehicle body through the heating member, and means such as a rheostat for controlling the speed of the motor-driven fan whereby the circulation of heated air within the vehicle body may be controlled independently of the vehicle engine.

"A further object is to provide a hot water heating member, comprising a plurality of horizontally disposed tubes arranged in spaced parallel relation, whereby water-circulating passages will be provided between the tubes and each tube will be completely surrounded by water, thus providing a heating member which will quickly heat the air circulated through the tubes by the action of the fan or blower means mounted adjacent to the heating member.

"A further object is to provide a heating apparatus for automotive vehicles of simple and inexpensive construction, comprising few parts, and, which may readily and quickly be installed in a vehicle and connected to the usual water-circulating system thereof, in a comparatively short period of time without the necessity of having to make numerous alterations to the usual connections or fittings of the vehicle engine."

What shall be construed as an invention within the meaning of the patent laws is always difficult of determination. Fine distinctions have been drawn between inventive genius and mechanical skill. Justice Brown, speaking for the Supreme Court of the United States, said:

"The truth is, the word cannot be defined in such manner as to afford any substantial aid in determining whether a particular device involves an exercise of the inventive faculty or not. In a given case we may be able to say that there is present invention of a very high order. In another we can see that there is lacking that impalpable something which distinguishes invention from simple mechanical skill. Courts, adopting fixed principles as a guide, have by a process of exclusion determined that certain variations in old devices do or do not involve invention; but whether the variation relied upon in a particular case is anything more than ordinary mechanical skill is a question which cannot be answered by applying the test of any general definition." McClain v. Ortmayer, 141 U.S. 419, 12 S.Ct. 76, 78, 35 L.Ed. 800.

The statutes of the United States provide that anything to be patentable must be new and useful. 35 U.S.C.A. § 31. Novelty and utility are therefore two essential requisites to patentability.

It is not claimed that this patent brings into existence new elements, but rather that Caesar combined old devices and elements in such a way as to produce a new result. As against this, appellee contends that Caesar in his patent produced nothing new; that he brought into existence no new elements or new combinations of old elements to produce a new result so as to meet tests of invention; that all Caesar did was to apply mechanical skill to an old device to produce an improved result; and that any skilled mechanic could have arranged these known elements in the same way in which they were arranged by Caesar and produced the same results.

Courts have laid down numerous tests to determine combination patentability. In Hailes v. Van Wormer, 20 Wall. 353, 368, 22 L.Ed. 241, the court said: "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."

In Mallon v. William C. Gregg & Co., 8 Cir., 137 F. 68, 76, the court said: "The application of an old device to a new use is not in itself an invention or capable of protection by a patent. * * * It is only when the new use is so recondite and remote from that to which the old device has been applied, or for which it was conceived, that its application to the new use would not occur to the mind of an ordinary mechanic, skilled in the art, seeking to devise means to perform the desired function, with the old machine or combination present before him, that its conception rises to the dignity of invention."

Merely combining old devices, each performing its old function and working out its own effect, without producing anything novel or new as a result of the combination is not patentable. Adams v. Bellaire Stamping Co., 141 U.S. 539, 12 S.Ct. 66, 35 L.Ed. 849; Ide v. Ball Engine Co., 149 U.S. 550, 13 S.Ct. 941, 37 L.Ed. 843. Neither is it invention to use an old machine for a new purpose. Roberts v. Ryer, 91 U.S. 150, 23 L.Ed. 267; Western Willite Co. v. Trinidad Asphalt Mfg. Co., 8 Cir., 16 F.2d 446; Ford Motor Co. v. Parks & Bohne, 8 Cir., 21 F.2d 943; Pearce v. Mulford, 102 U.S. 112, 26 L.Ed. 93; Florsheim v. Schilling, 137 U.S. 64, 11 S.Ct. 20, 34 L.Ed. 574; C. & A. Potts & Co. v. Creager, 155 U.S. 597, 15 S.Ct. 194, 39 L.Ed. 275.

What Caesar did was to place inside an automobile a unit consisting of a small hot water radiator with a small electric fan placed behind it to blow the hot air into the car. The fan was connected with the battery of the...