No. 68 C 23.
September 26, 1968.
Jon L. Liljequist, Chicago, Ill., and E.C. Vandenburgh, Darbo, Robertson and Vandenburgh, Arlington Heights, Ill., for plaintiff.
George N. Hibben, Hibben, Noyes and Bicknell, Chicago, Ill., for defendant.
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. 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. This prong is curved so that it will penetrate the wood when hit with a hammer, thus securing the fastener.
A copy of the patent is attached as exhibit 1.
See figures 1 3 in diagram 1 in the appendix.
Plaintiff alleges infringement only with respect to claims three and five of the patent. These paragraphs 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.
"a pair of L-shaped nailing prongs one struck from each flange, * * * each of said prongs including a shank portion * * * having a length about equal to the distance between the hinge point and the initial point of entry of the toe portion into the support so that the prong pivots about the hinge point while said prong is driven into the support * * *" (claim #5) * * * "so that * * * said toe * * * [enters] the support without exerting substantial force on the member tending to shift it from the original placement on the support." (claim #3).
See figure 3 in diagram 2 in Appendix.
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. Plaintiff made no invention in substituting retracted prongs, such as those 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. B. The Prong
The use of prongs to anchor outlet box supports was also illustrated in the following patents: Dedge 2,423,757; Atkinson 2,316,389; and McKinley 2,732,162.
The Seely patent 2,804,797 also illustrated prongs formed from a tubular body and adapted to be forced outwardly through openings to engage a supporting wall. In addition, adjustable mounting supports for outlet boxes were demonstrated in Buckels patent 2,528,418, Atkinson patent 2,316,389 and Knell patent 1,982,957.
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 directly against the wall and the prongs hit with a hammer. As stated in the patent:
See diagram 3 in Appendix.
"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.
The patent declared:
"While the fastening means has been illustrated and described as used in connection with shade roller brackets, it is understood that the same is merely illustrative of one use of which the invention may be adapted." Page 2, column 1, lines 25-29.
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. III. Level of Ordinary Skill in the Pertinent Art
In attempting to distinguish the Dedge patent, plaintiff stated: "the point of the Dedge prong is the hypotenuse of a right triangle of which shank 10 is one leg and, as any schoolboy knows, the hypotenuse must necessarily be longer than either of the two legs." (Emphasis added.) Similarly, the advantages of plaintiff's dimensions for the prong are common knowledge. See page 299 infra.
There are no affidavits or other evidence 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. Prior art contains patents over forty years old and several within the past fifteen years. IV. Obviousness
The following patents exemplify the advanced state of the art: Appleton patent 2,945,661; Atkinson patent 2,316,389; Knell patent 1,982,957; Crecelius patent 1,299,556; Rudolph patent 2,809,002; and, Budnick patent 3,104,087.
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."
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. Appleton merely observed that the bar hanger would not move so long as the prong pivoted around the hinge point, rather than entering the support at an oblique angle.
"Certainly a person having ordinary skill in the prior art, given the fact that the flex in the shank could be utilized more effectively if allowed to run the entire length of the shank, would immediately see that the thing to do was what Graham did, i.e., invert the shank and the hinge plate." 383 U.S. 25, 86 S.Ct. 697.
This conclusion does not conflict with the statutory presumption of the validity of the patents, 35 U.S.C. § 282. Since the Patent Office failed to cite either the Dedge patent 2,423,757 or the Goldner patent 1,386,468, the presumption is not applicable. T.P. Laboratories, Inc. v. Huge, 371 F.2d 231, 234 (7th Cir. 1966); Novo Industrial Corporation v. Standard Screw Company, 374 F.2d 824, 827 (7th Cir. 1967).
Since plaintiff's patent number 2,917,263 fails to meet the requirements of 35 U.S.C. § 103, I have entered an order today granting summary judgment for the defendant and denying plaintiff's motion for summary judgment.