Two courts below have concurred in holding three patent claims to be valid,
The District Court explicitly found that each element in this device was known to prior art. "However," it found, "the conception of a counter with an extension to receive a bottomless self-unloading tray with which to push the contents of the tray in front of the cashier was a decidedly novel feature and constitutes a new and useful combination."
The Court of Appeals regarded this finding of invention as one of fact, sustained by substantial evidence, and affirmed it as not clearly erroneous. It identified no other new or different element to constitute invention and overcame its doubts by consideration of the need for some such device and evidence of commercial success of this one.
Since the courts below perceived invention only in an extension of the counter, we must first determine whether they were right in so doing. We think not. In the first place, the extension is not mentioned in the claims, except, perhaps, by a construction too strained to be consistent with the clarity required of claims which define the boundaries of a patent monopoly. 38 Stat. 958, 35 U. S. C. § 33; United Carbon Co. v. Binney & Smith Co., 317 U.S. 228; General Electric Co. v. Wabash Corp., 304 U.S. 364.
While this Court has sustained combination patents,
The negative rule accrued from many litigations was condensed about as precisely as the subject permits in Lincoln Engineering Co. v. Stewart-Warner Corp., 303 U.S. 545, 549: "The mere aggregation of a number of old parts or elements which, in the aggregation, perform or produce no new or different function or operation than that theretofore performed or produced by them, is not patentable invention." To the same end is Toledo
Neither court below has made any finding that old elements which made up this device perform any additional or different function in the combination than they perform out of it. This counter does what a store counter always has done—it supports merchandise at a convenient height while the customer makes his purchases and the merchant his sales. The three-sided rack will draw or push goods put within it from one place to another—just what any such a rack would do on any smooth surface— and the guide rails keep it from falling or sliding off from the counter, as guide rails have ever done. Two and two have been added together, and still they make only four.
Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements. The function of a patent is to add to the sum of useful knowledge. Patents cannot be sustained when, on the contrary, their effect is to subtract from former resources freely available to skilled artisans. A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into
The Court of Appeals and the respondent both lean heavily on evidence that this device filled a long-felt want and has enjoyed commercial success. But commercial success without invention will not make patentability. Toledo Pressed Steel Co. v. Standard Parts, Inc., supra. The courts below concurred in finding that every element here claimed (except extension of the counter) was known to prior art. When, for the first time, those elements were put to work for the supermarket type of stores, although each performed the same mechanical function for them that it had been known to perform, they produced results more striking, perhaps, than in any previous utilization. To bring these devices together and apply them to save the time of customer and checker was a good idea, but scores of progressive ideas in business are not patentable, and we conclude on the findings below that this one was not.
It is urged, however, that concurrence of two courts below, in holding the patent claims valid, concludes this Court. A recent restatement of the "two-court rule" reads, "A court of law, such as this Court is, rather than a court for correction of errors in fact finding, cannot undertake to review concurrent findings of fact by two courts below in the absence of a very obvious and exceptional showing of error." Graver Tank Co. v. Linde Co., 336 U.S. 271, 275. The questions of general importance considered here are not contingent upon resolving conflicting testimony, for the facts are little in dispute. We set aside no finding of fact as to invention, for none has been made except as to the extension of the counter, which
MR. JUSTICE DOUGLAS, with whom MR. JUSTICE BLACK agrees, concurring.
It is worth emphasis that every patent case involving validity presents a question which requires reference to a standard written into the Constitution. Article I, § 8, contains a grant to the Congress of the power to permit patents to be issued. But, unlike most of the specific powers which Congress is given, that grant is qualified. The Congress does not have free rein, for example, to decide that patents should be easily or freely given. The Congress acts under the restraint imposed by the statement of purpose in Art. I, § 8. The purpose is "To promote the Progress of Science and useful Arts . . . ." The means for achievement of that end is the grant for a limited time to inventors of the exclusive right to their inventions.
Every patent is the grant of a privilege of exacting tolls from the public. The Framers plainly did not want those monopolies freely granted. The invention, to justify a patent, had to serve the ends of science—to push back the frontiers of chemistry, physics, and the like; to make a distinctive contribution to scientific knowledge. That is why through the years the opinions of the Court commonly have taken "inventive genius" as the test.
The standard of patentability is a constitutional standard; and the question of validity of a patent is a question of law. Mahn v. Harwood, 112 U.S. 354, 358. The Court fashioned in Graver Mfg. Co. v. Linde Co., 336 U.S. 271,
The attempts through the years to get a broader, looser conception of patents than the Constitution contemplates have been persistent. The Patent Office, like most administrative agencies, has looked with favor on the opportunity which the exercise of discretion affords to expand its own jurisdiction. And so it has placed a host of gadgets under the armour of patents—gadgets that obviously have had no place in the constitutional scheme of advancing scientific knowledge. A few that have reached this Court show the pressure to extend monopoly to the simplest of devices:
Hotchkiss v. Greenwood, 11 How. 248: Doorknob made of clay rather than metal or wood, where different shaped door knobs had previously been made of clay.
Rubber-Tip Pencil Co. v. Howard, 20 Wall. 498: Rubber caps put on wood pencils to serve as erasers.
Collar Co. v. Van Dusen, 23 Wall. 530: Making collars of parchment paper where linen paper and linen had previously been used.
Reckendorfer v. Faber, 92 U.S. 347: Inserting a piece of rubber in a slot in the end of a wood pencil to serve as an eraser.
Dalton v. Jennings, 93 U.S. 271: Fine thread placed across open squares in a regular hairnet to keep hair in place more effectively.
Double-Pointed Tack Co. v. Two Rivers Mfg. Co., 109 U.S. 117: Putting a metal washer on a wire staple.
Miller v. Foree, 116 U.S. 22: A stamp for impressing initials in the side of a plug of tobacco.
Preston v. Manard, 116 U.S. 661: A hose reel of large diameter so that water may flow through hose while it is wound on the reel.
Hendy v. Miners' Iron Works, 127 U.S. 370: Putting rollers on a machine to make it moveable.
St. Germain v. Brunswick, 135 U.S. 227: Revolving cue rack.
Shenfield v. Nashawannuck Mfg. Co., 137 U.S. 56: Using flat cord instead of round cord for the loop at the end of suspenders.
Florsheim v. Schilling, 137 U.S. 64: Putting elastic gussets in corsets.
Cluett v. Claflin, 140 U.S. 180: A shirt bosom or dickey sewn onto the front of a shirt.
Adams v. Bellaire Stamping Co., 141 U.S. 539: A lantern lid fastened to the lantern by a hinge on one side and a catch on the other.
Patent Clothing Co. v. Glover, 141 U.S. 560: Bridging a strip of cloth across the fly of pantaloons to reinforce them against tearing.
Pope Mfg. Co. v. Gormully Mfg. Co., 144 U.S. 238: Placing rubber hand grips on bicycle handlebars.
Morgan Envelope Co. v. Albany Perforated Wrapping Paper Co., 152 U.S. 425: An oval rather than cylindrical toilet paper roll, to facilitate tearing off strips.
Dunham v. Dennison Mfg. Co., 154 U.S. 103: An envelope flap which could be fastened to the envelope in such a fashion that the envelope could be opened without tearing.
The patent involved in the present case belongs to this list of incredible patents which the Patent Office has spawned. The fact that a patent as flimsy and as spurious as this one has to be brought all the way to this Court to be declared invalid dramatically illustrates how far our patent system frequently departs from the constitutional standards which are supposed to govern.
"4. A checker's stand including a counter of the character described, an open bottom pusher frame thereon, means to guide said frame in sliding movement so that goods placed on the end of said counter within said frame may be pushed along the counter in a group to a position adjacent the checker by movement of said frame.
"5. A cashier's counter for cash and carry type of grocery comprising a portion spaced from the cashier's stand and upon which the merchandise may be deposited and arranged, a bottomless three sided frame on said portion and within which the merchandise is deposited and arranged, means whereby said frame is movable on said counter from said portion to a position adjacent the cashier's stand so that the merchandise may thus be moved as a group to a point where it may be conveniently observed, counted and registered by the cashier.
"6. A cashier's counter for cash and carry type of grocery comprising a portion spaced from the cashier's stand and upon which the merchandise may be deposited and arranged, a bottomless frame on said portion and within which the merchandise is deposited and arranged, means whereby said frame is movable on said counter from said portion to a position adjacent the cashier's stand so that the merchandise may thus be moved as a group to a point where it may be conveniently observed, counted and registered by the cashier, said frame being open at the end adjacent the cashier's stand and readily movable to be returned over said portion so as to receive the merchandise of another customer while the cashier is occupied with the previous group."
"The truth is the word cannot be defined in such manner as to afford any substantial aid in determining whether a particular device involves an exercise of the inventive faculty or not. In a given case we may be able to say that there is present invention of a very high order. In another we can see that there is lacking that impalpable something which distinguishes invention from simple mechanical skill. Courts, adopting fixed principles as a guide, have by a process of exclusion determined that certain variations in old devices do or do not involve invention; but whether the variation relied upon in a particular case is anything more than ordinary mechanical skill is a question which cannot be answered by applying the test of any general definition." McClain v. Ortmayer, 141 U.S. 419, 427.