Home/N.D. Illinois/Appleton Electric Co. v. Efengee Electrical Supply Co.

Appleton Electric Co. v. Efengee Electrical Supply Co.

300 F. Supp. 296, 160 U.S.P.Q. (BNA) 572, 1968 U.S. Dist. LEXIS 12336
CourtDistrict Court, N.D. Illinois
DecidedSeptember 26, 1968
DocketNo. 68 C 23
StatusPublished
Cited by3 cases

This text of 300 F. Supp. 296 (Appleton Electric Co. v. Efengee Electrical Supply Co.) is published on Counsel Stack Legal Research, covering District Court, N.D. Illinois primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Appleton Electric Co. v. Efengee Electrical Supply Co., 300 F. Supp. 296, 160 U.S.P.Q. (BNA) 572, 1968 U.S. Dist. LEXIS 12336 (N.D. Ill. 1968).

Opinion

MEMORANDUM OPINION

DECKER, District Judge.

Appleton Electric Company (hereinafter “Appleton”) owns patent number 2,917,263, entitled “electrical fixture fastener.” Defendant Efengee Electrical Supply Company (hereinafter “Efengee”) sells fasteners within this district which allegedly infringe this patent. In response to the complaint, the defendant asserts that plaintiff did not acquire a valid patent because of obviousness. As no substantial factual questions are presented, both sides have moved for summary judgment. Since plaintiff’s patent fails to meet the requirements of 35 U.S.C. § 103, I grant Efengee’s motion.

Patent 2,917,263 covers a sheet metal device, commonly referred to as a “bar hanger,” which may be attached to building studs for the suspension of an electrical outlet box.1 The transverse metal bar has flanges at both ends which may be positioned against the wood supports and attached thereto by way of a metal prong which is a part of the flange.2 This prong is curved so that it will penetrate the wood when hit with a hammer, thus securing the fastener.

Plaintiff alleges infringement only with respect to claims three and five of the patent. These paragraphs 3 describe the metal prongs as being struck from the flange in such a manner that the fastener does not substantially shift position when the prong is driven into the support, allegedly because the length of the shank from the hinge is about equal to the distance from the hinge to the point where the toe of the prong enters the wood.4

The patent examiner originally rejected the Appleton application because the prior art included all aspects of the bar hanger. Plaintiff then twice amended its application, asserting its particular construction of the prong so that the fastener will remain stationary. Thus, the crucial inquiry is whether this prong is patentable. After discussing the prior art, the opinion will consider the level of ordinary skill in the pertinent art, as required by Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545. (1966).

I. Prior Art

A. Background

Except for the specific dimensions of the prong, all aspects of the fastener were disclosed in the prior art.

Austin patent 2,233,334 provided prongs for temporarily fastening an electrical fixture in place on building joists.5 Plaintiff made no invention in substituting retracted prongs, such as [298]*298those in the Barnett patent 1,850,616, for those shown in Austin’s diagrams. Similarly, McKinley patent 2,732,162 demonstrated a sheet metal outlet box support with telescoping, adjustable sections having end flanges with sharpened studs and a nail for anchoring the device.6

B. The Prong

The general design of the prong claimed by plaintiff was also old in the art. A man skilled in the art would have quickly realized that it was adaptable for use with adjustable outlet box supports.

For example, the Dedge patent 2,423,-757, granted in 1947, showed L-shaped prongs which have a shank and a pointed toe portion, positioned so that the box can be placed dircetly against the wall and the prongs hit with a hammer.7 As stated in the patent:

“One improvement which I have in mind is the provision of temporary setting and anchoring elements. These are denoted by the numerals 10. They are struck-out fingers or tongues Whose free ends 11 are laterally bent to provide spurs such as are designed to be projected by a blow from a hammer or a hammer against a tongue to fasten the same in the ceiling as shown for example in Figure 2.” Column 2, lines 20-29.

Moreover, the Goldner patent 1,386,468 discloses a “Combined Bracket and Fastener” which has a similar L-shaped prong to secure the device.8

II. Plaintiff’s Patent

The contribution to knowledge by the instant patent was minimal. Plaintiff specified the dimensions of the prong, alleging that the bar hanger would not move if the distance of the shank from the hinge were about the same as the distance from the hinge to the point of entry of the toe. Serious doubt exists whether even this contribution was novel, since the diagrams accompanying the Goldner and Dedge patents illustrate prongs which have these approximate dimensions. Assuming that plaintiff’s contribution was new in this one respect, however, it was only the application of elementary geometrical principles to an old and widely known design for a fastening prong.9

III. Level of Ordinary Skill in the Pertinent Art

There are no affidavits or other evi-1 dence concerning the level of skill. Nevertheless, the numerous patents dealing with fastening devices which may be used to mount electrical outlet boxes demonstrate considerable awareness among the trade of possible refinements.10 Prior art .contains patents over forty years old and several within the past fifteen years.

[299]*299 IV. Obviousness

In its 1952 amendment of the patent law, Congress enacted 35 U.S.C. § 103 which declares:

“A patent may not be obtained * * * if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.”

Rather than altering patent law, this section approved existing judicial precedents.

In the Senate and House Reports, the legislature explained one effect of the statute:

“An invention which has been made, and which is new in the sense that the same thing has not been made before, may still not be patentable if the difference between the new thing and what was known before is not considered sufficiently great to warrant a patent.” 11

Applied to the instant patent, section 103 prevented plaintiff’s patent number 2,917,263 from being valid. In light of the prior art, construction of a prong which does not jostle the bar hanger while being driven into the support was obvious to anyone with ordinary skill in the art. See Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966); Gass v. Montgomery Ward & Co., 387 F.2d 129, 132 (7th Cir. 1967). Moreover, it would also have been apparent to anyone familiar with the rudimentary principles of plane geometry which may be acquired in junior high school.

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300 F. Supp. 296, 160 U.S.P.Q. (BNA) 572, 1968 U.S. Dist. LEXIS 12336, Counsel Stack Legal Research, https://law.counselstack.com/opinion/appleton-electric-co-v-efengee-electrical-supply-co-ilnd-1968.