SEAMAN, District Judge
(after stating the facts). The utility and advantages of the complainant’s device clearly appear, and its substantial appropriation by the defendant calls for the utmost liberality which can be extended in favor of the grant within the principles of patent law. The single question presented, however, is this: Do the claims thus involved in the infringement show a patentable combination, or a mere aggregation of the several old devices and their results ? It is plain, and practically conceded by the specifications of the patent, that the elements which enter into each of the claims are old and well-known. Nevertheless:
“A new combination, if it produces new and useful results, is patentable, th'ough all tbe 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 device, 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.” Hailes v. Van Wormer, 20 Wall. 353, 368, 22 L. Ed. 241, 248, and cases noted; Id., 8 Notes U. S. Rep. 319.
[775]*775The doctrine thus stated is well settled, and the authorities clearly exemplify these distinctions. The combination of old elements, whereby “all the constituents so enter into it as that each qualifies every other,” and thus “form either a new machine of a' distinct character and function, or produce a result due to the joint and co-operating action of all the elements, and which is not the mere adding together of separate contributions” (Pickering v. McCullough, 104 U. S. 310, 318, 26 L. Ed. 749, 752), constitutes patentable invention. On the other hand, the assemblage of old devices, “without securing some new and useful result as the joint product of the combination, — something more than' a mere aggregation of old results,”- — is not such invention (Adams v. Stamping Co., 141 U. S. 539, 542, 12 Sup. Ct. 66, 67, 35 L. Ed. 849, 851), but is “a mere matter of mechanical judgment, ‘the natural outgrowth of the development of mechanical skill, as distinguished from invention.’ ” Florsheim v. Schilling, 137 U. S. 64, 77, 11 Sup. Ct. 20, 24, 34 L. Ed. 574, 579. In practice, however, there is frequent room for controversy in the application of these tests to claims granted for combinations; and the testimony of the experts and arguments of counsel on the part of the complainant, conceding the general rule as recited, seek to distinguish the claims in question as combinations and not mere aggregations. Impressed with the “compactness and simplicity” of the device as a whole, which have given it trade popularity, I have examined the mechanism in question in the light of every suggestion in support of patentability, but can find no tenable ground upon which this assemblage of old devices can be classified as a true combination under the definitions above given. The utmost of the contention to that end is thus stated in the brief for complainant:
“Tlie invention is a supply connection tor basins and baths,” and “is intended for use in those basins or baths in which the hot and cold water are supplied through a single nozzle, instead of separate nozzles. Of course, this way of supplying hot and cold water was used long before the patent in suit, and the patentee so states. The invention, therefore, is not a new supply, but a new connection for old supplies. * * * The main purpose of the invention in controversy is to provide a simpler and more easily operated connection between the hot and cold water supply and a slab of a basin or bath, and as a secondary or auxiliary object the standpipe or overflow is by means of said connection made to serve the novel purpose of supporting all the supply devices, as well as the overflow devices. The patentee does not claim anything novel in the overflow devices as such. Overflow devices are only incidental to the invention. The invention lies in the novel character, location, and connection of the supply devices. This is prominently shown in the language of the first claim, which would have been a broad and satisfactory claim, and as such would have been infringed by the defendants, had not the solicitor, with the fatal fancy for details which is common to his profession, specified too literally the location of the parts.”
And it is thereupon asserted “that each claim recites a number of elements, every one of which is dependent upon or modifies the action of one or more of the others, whereby a new and useful and consequently patentable, supply connection is produced.”
The inventor, Mr. Hammann, testifies that he “claimed to have invented a new system of arranging a hot and cold water supply, which system consisted in putting everything except the mere supply [776]*776’•bandies and flange below the slab, out of sight, and bringing the hot' . and cold water together below the slab into a mixing column, by ■ which it rose to the common nozzle, which nozzle I particularly adapted to lie flat on the slab, and reach from the waste or stand pipe forward over the edge of the bowl”; that he thus provided peculiar supporting features, and, “by making the connection between the mixing column and the water ways dependent upon a single coupling nut, [he] devised a means for connecting up the supply” which was “much simpler and more effective than anything before known.”
And Mr. Serrell, on the same behalf, as expert, thus describes the invention:
“The novel devices of the patent in suit relate to the nozzle of particular and convenient form, the, mixing column connected thereto and supported thereby, the lateral water way extending from the mixing column to the valves for the hot and cold water supply, and a support for these parts, which support is preferably connected to the standpipe as a fixed member. An additional feature of said invention relates to a ring extension of the said nozzle through which the standpipe passes; said part, with the slab, being securely fastened to the standpipe. In this device all of the parts were concealed, except the operating handle for the hot and cold water valves, the nozzle and its ring, and the upper end of ilie standpipe and upper end of the overflow pipe; this arrangement making it i)ossible to supply substantial and workmanlike devices without expensive finish or design, the parts finished and plated being only those visible.”
In these several versions of the alleged invention, as throughout the argument in its support, there is failure to define the feature on which patentability can be predicated. No co-operation is pointed out by these old elements in a new way for a new unitary result.
Free access — add to your briefcase to read the full text and ask questions with AI
SEAMAN, District Judge
(after stating the facts). The utility and advantages of the complainant’s device clearly appear, and its substantial appropriation by the defendant calls for the utmost liberality which can be extended in favor of the grant within the principles of patent law. The single question presented, however, is this: Do the claims thus involved in the infringement show a patentable combination, or a mere aggregation of the several old devices and their results ? It is plain, and practically conceded by the specifications of the patent, that the elements which enter into each of the claims are old and well-known. Nevertheless:
“A new combination, if it produces new and useful results, is patentable, th'ough all tbe 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 device, 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.” Hailes v. Van Wormer, 20 Wall. 353, 368, 22 L. Ed. 241, 248, and cases noted; Id., 8 Notes U. S. Rep. 319.
[775]*775The doctrine thus stated is well settled, and the authorities clearly exemplify these distinctions. The combination of old elements, whereby “all the constituents so enter into it as that each qualifies every other,” and thus “form either a new machine of a' distinct character and function, or produce a result due to the joint and co-operating action of all the elements, and which is not the mere adding together of separate contributions” (Pickering v. McCullough, 104 U. S. 310, 318, 26 L. Ed. 749, 752), constitutes patentable invention. On the other hand, the assemblage of old devices, “without securing some new and useful result as the joint product of the combination, — something more than' a mere aggregation of old results,”- — is not such invention (Adams v. Stamping Co., 141 U. S. 539, 542, 12 Sup. Ct. 66, 67, 35 L. Ed. 849, 851), but is “a mere matter of mechanical judgment, ‘the natural outgrowth of the development of mechanical skill, as distinguished from invention.’ ” Florsheim v. Schilling, 137 U. S. 64, 77, 11 Sup. Ct. 20, 24, 34 L. Ed. 574, 579. In practice, however, there is frequent room for controversy in the application of these tests to claims granted for combinations; and the testimony of the experts and arguments of counsel on the part of the complainant, conceding the general rule as recited, seek to distinguish the claims in question as combinations and not mere aggregations. Impressed with the “compactness and simplicity” of the device as a whole, which have given it trade popularity, I have examined the mechanism in question in the light of every suggestion in support of patentability, but can find no tenable ground upon which this assemblage of old devices can be classified as a true combination under the definitions above given. The utmost of the contention to that end is thus stated in the brief for complainant:
“Tlie invention is a supply connection tor basins and baths,” and “is intended for use in those basins or baths in which the hot and cold water are supplied through a single nozzle, instead of separate nozzles. Of course, this way of supplying hot and cold water was used long before the patent in suit, and the patentee so states. The invention, therefore, is not a new supply, but a new connection for old supplies. * * * The main purpose of the invention in controversy is to provide a simpler and more easily operated connection between the hot and cold water supply and a slab of a basin or bath, and as a secondary or auxiliary object the standpipe or overflow is by means of said connection made to serve the novel purpose of supporting all the supply devices, as well as the overflow devices. The patentee does not claim anything novel in the overflow devices as such. Overflow devices are only incidental to the invention. The invention lies in the novel character, location, and connection of the supply devices. This is prominently shown in the language of the first claim, which would have been a broad and satisfactory claim, and as such would have been infringed by the defendants, had not the solicitor, with the fatal fancy for details which is common to his profession, specified too literally the location of the parts.”
And it is thereupon asserted “that each claim recites a number of elements, every one of which is dependent upon or modifies the action of one or more of the others, whereby a new and useful and consequently patentable, supply connection is produced.”
The inventor, Mr. Hammann, testifies that he “claimed to have invented a new system of arranging a hot and cold water supply, which system consisted in putting everything except the mere supply [776]*776’•bandies and flange below the slab, out of sight, and bringing the hot' . and cold water together below the slab into a mixing column, by ■ which it rose to the common nozzle, which nozzle I particularly adapted to lie flat on the slab, and reach from the waste or stand pipe forward over the edge of the bowl”; that he thus provided peculiar supporting features, and, “by making the connection between the mixing column and the water ways dependent upon a single coupling nut, [he] devised a means for connecting up the supply” which was “much simpler and more effective than anything before known.”
And Mr. Serrell, on the same behalf, as expert, thus describes the invention:
“The novel devices of the patent in suit relate to the nozzle of particular and convenient form, the, mixing column connected thereto and supported thereby, the lateral water way extending from the mixing column to the valves for the hot and cold water supply, and a support for these parts, which support is preferably connected to the standpipe as a fixed member. An additional feature of said invention relates to a ring extension of the said nozzle through which the standpipe passes; said part, with the slab, being securely fastened to the standpipe. In this device all of the parts were concealed, except the operating handle for the hot and cold water valves, the nozzle and its ring, and the upper end of ilie standpipe and upper end of the overflow pipe; this arrangement making it i)ossible to supply substantial and workmanlike devices without expensive finish or design, the parts finished and plated being only those visible.”
In these several versions of the alleged invention, as throughout the argument in its support, there is failure to define the feature on which patentability can be predicated. No co-operation is pointed out by these old elements in a new way for a new unitary result. Conceding that the water supply (hot and cold) and the water discharge are well-known devices operating the old way, it is contended in general terms that the supply connection is new. But this is not true, in the sense of patentable novelty, so far as relates either to the means of connection or to its operation, while it may be true, as stated by counsel in the brief, “that nobody, prior to this invention, ever had a water-supply connection for basins or baths in which an unseen supply below the slab was connected through a mixing column tó a visible nozzle above the slab, and no supply connection for' hot and cold water was ever before known in which the connection became the supporting agent for all the parts, including the basin and slab, instead of being itself a weight which required support from the slab.” The water-supply device, as an entirety, is well described in the testimony of Mr. Bates, defendant’s expert, as consisting “of four parts: (i) The two valves, one for hot and one for cold water; (2)-connecting water ways connecting them; (3) a nozzle or bib; and (4) a channel, called a ‘mixing column,’ connecting the bib and the water ways,” — and the connection between the ‘water supply and water discharge “is in a ring at the back end of the bib or nozzle, through which ring the tubular coupling of the standpipe extends, thus providing an additional fastening locking the bib to the slab; the bib being already locked to the basin by its connection with the im'xing column, connecting water ways, and valves of the water supply.” Aside from the “secondary” feature, as mentioned by counsel for complainant, whereby the standpipe “is by means of said con[777]*777nection made to serve the novel purpose of supporting all the supply devices, as well as the overflow devices,” no element appears in this assemblage of devices which is not substantially a reproduction from prior structures for like purpose and with like operation. Indeed, the only other element of which novelty is asserted is in the peculiarity of the nozzle and ring device, and that is an obvious adaptation of the Clifford faucet for like purpose, as shown in patent No. 238,855. Moreover, these old water-supply devices and the old water-discharge devices each operate in the old way in the aggregate structure, and neither group modifies in any particular the action of the other. As remarked by Mr. Bates, “There is no sort of interaction between these two.”
The so-called “supporting feature,” which thus appears as the final contention for patentability, is a plain expedient by obvious means whenever such form of the structure seemed desirable. It is a mere incidental provision, as indicated in the terms of the patent, and there is no such co-operation therein of the several elements entering into the entire structure as required for a valid combination.. The provisions to that end act independently of the water supply or water discharge, — each of those parts operating in the same old way without modification; and the remarks in J. L. Mott Iron Works v. Standard Mfg. Co., 3 U. S. App. 386, 404, 4 C. C. A. 28, 53 Fed. 819, and authorities there cited, in reference to a combination claim in Demarest’s patent, No. 358,147, are equally applicable here. The double use is not patentable. Reckendorfer v. Faber, 92 U. S. 347, 356, 23 L. Ed. 719.
The bill must be dismissed for want of equity, and the decree will be entered accordingly.