MR. JUSTICE DOUGLAS delivered the opinion of the Court.
This is an action in equity brought by respondent for infringement, inter alia, upon claims 2, 3, and 11 of patent No. 1,736,544, granted November 19, 1929, on the application of H.E. Mead, filed August 24, 1927, for a cigar lighter. The District Court held these claims not infringed. 34 F.Supp. 146. The Circuit Court of Appeals reversed, holding them valid and infringed. 117 F.2d 361. We granted the petition for certiorari, limited to the question whether claims 2, 3, and 11 of the Mead patent are valid, because of a conflict between the decision below and Automatic Devices Corp. v. Sinko Tool & Manufacturing Co., 112 F.2d 335, decided by the Circuit Court of Appeals for the Seventh Circuit.
The claims in question
This inconvenience and hazard were eliminated, according to respondent,
Petitioner makes several objections to the validity of the claims: that they do not comply with the standards for full, clear and concise description prescribed by 35 U.S.C. § 33, R.S. § 4888; that they are indefinite and broader than any disclosed invention; and that they are for a device so imperfect and unsuccessful that a construction of the claims broad enough to include it is not permissible. See Deering v. Winona Harvester Works, 155 U.S. 286, 295. We do not, however, stop to consider these objections. For it is our opinion that the Mead device was not the result of invention but a "mere exercise of the skill of the calling," an advance "plainly indicated by the prior art." Altoona Publix Theatres v. American Tri-Ergon Corp., 294 U.S. 477, 486.
Thermostatic controls of a heating unit, operating to cut off an electric current energizing the unit when its temperature had reached the desired point, were well known to the art when Mead made his device. They had been employed in a wide variety of electrical designs since Hammarstrom, in 1893 (No. 493,380), showed a bimetallic thermostat to break a circuit when it got overcharged. A few examples will suffice. Harley, in 1907 (No. 852,326), included such a thermostat in an electric heater for vulcanizing, so as to limit automatically the temperature attainable. Andrews, in 1912 (No. 1,025,852), showed a bimetallic thermostat in an electrical flat iron, designed to open the circuit at a predetermined temperature. In 1919, Newsom (No. 1,318,168), showed an electric coffee cooker in which a thermostat, actuated by the temperature within the receptacle, operated to open and close the circuit intermittently. Stahl, in 1921 (No. 1,372,207), showed an electric switch automatically released by operation of a thermostat. Hurxthal, in 1925 (No. 1,540,628), showed an electric bread toaster with a
And so the question is whether it was invention for one skilled in the art and familiar with Morris and Copeland, and with the extensive use of the automatic thermostatic control of an electric heating circuit, to apply the Copeland automatic circuit to the Morris removable heating unit in substitution for a circuit manually controlled.
To incorporate such a thermostatic control in a so-called "wireless" or "cordless" lighter was not to make an "invention" or "discovery" within the meaning of the patent laws. As we have shown, both the thermostatically controlled heating unit and the lighter with a removable plug bearing the heating unit were disclosed by the prior art. More must be done than to utilize the skill of the art in bringing old tools into new combinations. Hailes v. Van Wormer, 20 Wall. 353, 368; Pickering v. McCullough, 104 U.S. 310, 318; Thatcher Heating Co. v. Burtis, 121 U.S. 286, 294; Concrete Appliances Co. v. Gomery, 269 U.S. 177, 184-185; Powers-Kennedy Contracting Corp. v. Concrete
We may concede that the functions performed by Mead's combination were new and useful. But that does not necessarily make the device patentable. Under the statute (35 U.S.C. § 31; R.S. § 4886) the device must not only be "new and useful," it must also be an "invention" or "discovery." Thompson v. Boisselier, 114 U.S. 1, 11. Since Hotchkiss v. Greenwood, 11 How. 248, 267, decided in 1851, it has been recognized that if an improvement is to obtain the privileged position of a patent more ingenuity must be involved than the work of a mechanic skilled in the art. Hicks v. Kelsey, 18 Wall. 670; Slawson v. Grand Street R. Co., 107 U.S. 649; Phillips v. Detroit, 111 U.S. 604; Morris v. McMillin, 112 U.S. 244; Saranac Automatic Machine Corp. v. Wirebounds Patents Co., 282 U.S. 704;
Tested by that principle, Mead's device was not patentable. We cannot conclude that his skill in making this contribution reached the level of inventive genius which the Constitution (Art. I, § 8) authorizes Congress to reward. He merely incorporated the well-known thermostat into the old "wireless" lighter to produce a more efficient, useful, and convenient article. Cf. Electric Cable Joint Co. v. Brooklyn Edison Co., supra. A new application of an old device may not be patented if the "result claimed as new is the same in character as the original result" (Blake v. San Francisco, 113 U.S. 679, 683), even though the new result had not before been contemplated. Pennsylvania R. Co. v. Locomotive Engine Safety Truck Co., 110 U.S. 490, 494, and cases cited. Certainly, the use of a thermostat to break a circuit in a "wireless" cigar lighter is analogous to, or the same in character as, the use of such a device in electric heaters, toasters, or irons, whatever may be the difference in detail of design. Ingenuity
Strict application of that test is necessary lest in the constant demand for new appliances the heavy hand of tribute be laid on each slight technological advance in an art. The consequences of the alternative course were forcefully pointed out by Mr. Justice Bradley in Atlantic Works v. Brady, 107 U.S. 192, 200: "Such an indiscriminate creation of exclusive privileges tends rather to obstruct than to stimulate invention. It creates a class of speculative schemers who make it their business to watch the advancing wave of improvement, and gather its foam in the form of patented monopolies, which enable them to lay a heavy tax upon the industry of the country, without contributing anything to the real advancement of the arts. It embarrasses the honest pursuit of business with fears and apprehensions of concealed liens and unknown liabilities to lawsuits and vexatious accountings for profits made in good faith." Cf. Mr. Justice Campbell dissenting in Winans v. Denmead, 15 How. 330, 344, 345, 347; Hamilton, Patents and Free Enterprise, Mon. No. 31; Investigation of Concentration of Economic Power, Temporary National Economic Committee, 76th Cong., 3d Sess., ch. VIII (1941).
Such considerations prevent any relaxation of the rule of the Hotchkiss case as respondent would seem to desire.
MR. JUSTICE FRANKFURTER concurs in the result.
MR. CHIEF JUSTICE STONE:
I concur in the result.
I agree that the use of the well known thermostatically controlled heating circuit exemplified by Copeland, with the removable wireless heating unit plug of Morris, in substitution for the manually controlled circuit which had
The commercially successful structure for which respondent claims the protection of the Mead patent, and which the court below thought satisfied a felt need, is not the structure described by Mead. Both embody the combination of a thermostatically controlled heating circuit with a heating unit borne on a removable wireless plug and used as a means to close the circuit. But they differ structurally in a number of particulars.
To mention only the more important, Mead showed a rotatable socket which is turned by manually rotating the plug when placed in the socket, so as to close the heating circuit. A laterally extending pin projecting from the side of the plug, in the Mead structure, engages with a spring latch outside the socket to hold the plug and socket in the circuit-closing position to which they have been rotated, until the latch is released by the thermostatic control, thus permitting the plug and the socket, which is activated by a spring, to rotate back to the open circuit position. The base required for the accommodation of the rotating socket and its externally operated mechanism was large and cumbersome. Respondent's commercial structure, like the alleged infringing device, utilizes a fixed socket within which the thermostatic circuit control is located and into which the heat-unit-carrying plug may be inserted without necessity of rotating it as in the case of the rotating plug with the projecting pin shown by Mead. The thermostatically controlled circuit is closed by pressing the plug further into the socket, the plug being restored to an open circuit position by a spring carried on
The commercially exploited device, because of the differences in its structure from that shown by Mead, is the more compact and easily operated. Its utility as a lighter to be located on the dash of an automobile, which is said to be the merit of the Mead invention, is obvious. If the improvements resulting in such utility involved invention, it is not the invention of Mead. If they exhibited only the skill of the art, their success cannot be relied on to establish invention by Mead, who did not show or make them. The case is therefore not one for the application of the doctrine that commercial success or the manifest satisfaction of a felt need will turn the scale in favor of invention.
MR. JUSTICE FRANKFURTER joins in this opinion.
"3. In a lighting device for cigars and the like, a removable heating member having an electric heater, a support for receiving and holding said heating member, current supply terminals on said support, said heating member being movable on said support to a position where said heating unit is energized from said terminals and means responsive to the temperature of said heating unit for controlling the heating thereof.
"11. In an electric lighter of the class described, a base member, a heater member movably mounted on said base member, an electric heater on said heater member, electrical supply terminals on said base member, said heater member being movable between an energized position where a circuit is established from said terminals to said heater, and an off position where said circuit is interrupted, and automatic means for withdrawing said heater member from the on position to the off position upon heating of said heater."