Young v. John McShain, Inc.

• Decision Date: 18 August 1942
• Docket Number: No. 4943.,4943.
• Citation: 130 F.2d 31
• Parties: YOUNG et al. v. JOHN McSHAIN, Inc., et al.
• Court: U.S. Court of Appeals — Fourth Circuit

130 F.2d 31 (1942)

YOUNG et al. v. JOHN McSHAIN, Inc., et al.

No. 4943.

Circuit Court of Appeals, Fourth Circuit.

August 18, 1942.

Ralph L. Chappell, of Kalamazoo, Mich. (Earl & Chappell, of Kalamazoo, Mich., Charles Markell and Cook & Markell, all of Baltimore, Md., on the brief), for appellants.

Otto R. Barnett, of Chicago, Ill. (Lawrence T. Barnett and Barnett & Truman, all of Chicago, Ill., and Edwin F. Samuels. Galvin & McCourt, and Edward L. Ward, all of Baltimore, Md., on the brief), for appellees.

Before PARKER, SOPER, and DOBIE, Circuit Judges.

PARKER, Circuit Judge.

This is an appeal in a patent infringement suit involving Young patents Nos. 1,928,748 and 1,938,887. The defenses were invalidity and non-infringement; and the court below held both patents invalid as to the claims in suit.

Both patents are combination patents relating to concrete floor construction with the use of pre-fabricated concrete joists reinforced with steel. Patent No. 1,928,748 covers the combination of a plurality of pre-cast joists, having top and bottom longitudinal reinforcements with cross sheer strands welded thereto, and a floor slab of concrete which embraces the head of the joists. The distinguishing characteristic of the construction is said to be that "the joist with the longitudinal reinforcing members in head and base joined by welded sheer strands is combined with a floor slab which embraces the head of the joist." Claims 2, 4, 6 and 7 of the patent are relied on. Claim 6, which may be taken as typical, is as follows:

"6. A concrete floor or roof construction comprising a plurality of pre-cast concrete joists spaced apart, and the said joists reinforced with longitudinal reinforcing strands in the top and bottom and having cross shear strands welded thereto, and a floor slab carried on forms or centering supported from the joists, the said concrete slab being formed with shoulders embracing the heads of the said joists."

Patent 1,938,887 covers the combination of a plurality of pre-cast joists with a monolithic floor slab, wall and girder construction, in which the floor slab embraces the head of the joists and the walls and girder embrace their ends. Also included are metal rods in the floor slab extending parallel with the joists and over the girders to give continuity to the joists and redistribute the stresses incident to the loading. Claims 4, 5, 8, 9 and 10 of this patent are in suit. The first three of these claims relate to the monolithic construction in which the ends and heads of the joists are embraced in the slab and girder; the last two relate to the use of rods in the slab across the girder and parallel with the joists. Claim 8 may be taken as typical of the first group and claim 9 of the second. They are as follows:

"8. A concrete floor formed with pre-cast joists having wall and girder supports extending between the said joists and embracing the same, the floor slab being formed with extensions embracing the heads of the said joists, the said concrete being continuous and embracing the ends of said joists.

"9. A concrete floor formed with pre-cast joists having girder supports extending between the said joists and embracing the same, a floor slab formed with embracing portions for the heads of the said joists, the concrete being continuous and embracing the ends of said joists, and reinforcement rods in the floor slab above the said girder parallel to the said joists affording cantilever support and continuity."

We agree with the court below that none of the claims is valid but that all cover mere aggregations of devices, which were old in the art of steel-concrete construction, and which perform in the aggregation merely the functions which they performed in the prior art, without any new effect or resultant from their having been brought together. It is well settled that invention cannot be predicated of such aggregation of old elements even though their bringing together may have resulted in a useful product. Hailes v. Van Wormer, 20 Wall. 353, 368, 22 L.Ed. 241; Heald v. Rice, 104 U.S. 737, 755, 26 L.Ed. 910; Powers-Kennedy Contracting Corp. v. Concrete Mixing & Conveying Co., 282 U.S. 175, 186, 51 S.Ct. 95, 75 L.Ed. 278; Doughnut Mach. Corp. v. Joe Lowe Corp., 4 Cir. 67 F.2d 135, on rehearing 4 Cir., 71 F.2d 423; Victor Cooler Door Co. v. Jamison Cold Storage Door Co., 4 Cir., 44 F.2d 288, 293; Morrow v. Oelschlager, 3 Cir., 11 F.2d 524, 525; Turner v. Lauter Piano Co., 3 Cir., 248 F. 930; Turner v. Moore, 8 Cir., 211 F. 466. Nowhere is the rule better stated than by the Supreme Court in the old case of Hailes v. Van Wormer, supra 20 Wall. 368, 22 L.Ed. 241, as follows:

"It must be conceded that a new combination, if it produces new and useful results, is patentable, though all the constituents of the combination were well known and in common use before the combination was made. But the results must be a product of the combination, and not a mere aggregate of several results each the complete product of one of the combined elements. Combined results are not necessarily a novel result, nor are they an old result obtained in a new and improved manner. 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. No one by bringing together several old devices without producing a new and useful result the joint product of the elements of the combination and something more than an aggregate of old results, can acquire a right to prevent others from using the same devices, either singly or in other combinations, or, even if a new and useful result is obtained, can prevent others from using some of the devices, omitting others, in combination."

And the criterion for distinguishing between patentable combination and mere aggregation is thus tersely stated by Mr. Justice Brown in Richards v. Chase Elevator Co., 158 U.S. 299, 302, 15 S.Ct. 831, 833, 39 L.Ed. 991: "Unless the combination accomplishes some new result, the mere multiplicity of elements does not make it patentable. So long as each element performs some old and well-known function, the result is not a patentable combination, but an aggregation of elements."

Nearly a quarter of a century ago the Circuit Court of Appeals of the 3d Circuit in Turner v. Lauter Piano Co., 3 Cir., 248 F. 930, 932, held invalid a patent relating to reinforced concrete flooring on principles which are applicable to the patents here involved. What was said by Judge Woolley, speaking for the court, with relation to the aggregation of devices for meeting load strains in concrete construction is peculiarly apposite. He said:

"Reenforced concrete of the modern kind came into use as a building material about fifty years ago. Its growth has been very rapid; it is now used upon an immense scale in a great variety of structures. During the progress of this art, much has been learned concerning the properties of concrete and great advances have been made in methods of using it. Yet, notwithstanding the knowledge acquired and the advances made, the fundamental problems of the art are the same today as they were in the beginning. They have to do with the peculiar characteristics of concrete and with means for meeting them. It is a matter of general knowledge that concrete is strong in resisting compression strains and weak in withstanding tensile strains. Places at which both strains may be expected, while susceptible of accurate mathematical ascertainment, are so well known that they are determined empirically by many engaged in the art. Therefore, as it is easy to ascertain, in one way...