Perey v. Perey Mfg. Co. , 22 F.2d 928 ( 1927 )

L. HAND, Circuit Judge

(after stating the facts as above). We cannot accept Noe’s patent as valid prior art. The plaintiff’s strictures upon it may be well founded, and, if the ease turned upon it, we should require the assistance of persons more adept in mechanics than ourselves. In. short, the issue would have to be tried. As to the other three patents, about which no such question is raised, and which are understandable as they stand, we accept the request made at the argument, and treat them as though properly in evidence here.

Of these, Langslow and Kleinbaum seem to us complete anticipations, but for the fact that the devices are at the foot of the stile. Kleinbaum indeed could not have placed them anywhere else, as he disclosed a revolving door. Passing this difference for the moment, we can see no distinction in the fact that the withdrawal means is electric. Perey claimed this feature generally, and his claim would certainly cover both disclosures. Nor does it seem to us that the conversion by Kleinbaum of a mechanical into an electric cheek is a patentable distinction. The defendant borrows nothing of the patent in that regard, and the claim, to cover at all, must be generalized quite beyond the disclosure.

Therefore all that is left is the fact that bolt and notch and automatic cheek are gathered up close to the arms, with advantage in solidity, in convenience of access, and in avoiding obstacles to the feet of passers. The defendant insists that this feature is not in the claim, but on that we cannot agree. The “single rotatable member” of. the claim contains the arms and the notches. The bolt must be close by, because it engages the notches, and the check must operate on the bolt. Whatever advantages the consolidation of all these parts contributed it seems to us fair to impute to the claim.

We will not say that such improvements in design could never make an invention. Absolutes are dangerous, especially when one is talking of invention. An immediate acceptance of the stile by the art, to ,the exclusion of all older forms, might conceivably prove that what had long been craved was at length contrived. But such eases must be rare, especially when the idea has already been abundantly illustrated. Vide Williams, Beerbower, Brenizer, and Driver. One may add to solidity by diminishing the leverage, as well as by increasing the size. One may remove obstacles to the feet by raising them above the feet, and make parts more accessible by putting them where they can be reached.- In all this we can see nothing but routine designing.

Thus we cannot agree that the case may hang by so slight a thread. Though the art was full of stiles, and any new design might presumptively demand som'e originality, there is a vanishing point even in such a setting, a point which, to be visible, at least demands evidence from more success than this invention has enjoyed. We are confirmed in our conclusion by the fact that all the references, except Ellison, on which we rely, were unknown to the Examiner.

Decree reversed.