REPUBLIC INDUSTRIES, INC. v. SCHLAGE LOCK CO.

SWYGERT, Circuit Judge.

Republic Industries, Inc., assignee and owner of the Slaybaugh patent, U. S. Patent No. 3,852,845, instituted this infringement action against Schlage Lock Company. Schlage counterclaimed, alleging invalidity of the patent and noninfringement. Without reaching the infringement issue, the district court in a thorough opinion held the Slaybaugh patent invalid for obviousness under 35 U.S.C. § 103 and entered judgment for defendant. Republic Industries, Inc. v. Schlage Lock Co., 433 F.Supp. 666 (S.D.Ill.1977). We affirm.

This appeal presents a recurrent problem: the proper criteria by which a combination patent is measured for nonobviousness. Increasingly, the district courts in this circuit, not without some confusion emanating from this court, have taken the view that synergism and not the criteria articulated in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), is the controlling test in combination patent claims.1 Before addressing this question, we review the claims of the patent involved in this appeal.

I

The Slaybaugh patent comprises nine claims. Claims 1 through 7 of that patent were not placed in suit by Republic; only claims 8 and 9 are alleged to be infringed. Since Republic concedes that the validity of claim 9 is dependent upon the validity of claim 8, only the latter claim will be discussed.2

The invention of Slaybaugh's claim 8 is a door closer used to hold open and to close fire doors in hospitals, institutional health care facilities, and other public buildings. Republic argues that the Slaybaugh device achieves a unique combination of two functions in a single unit: (1) multiple-point hold-open, whereby a door can be held open at any point along the arc between its closed and fully opened positions; and (2) momentary manual release, whereby a door in any open position becomes self-closing when a person momentarily pushes or pulls the door.3 The Slaybaugh patent was the first device in the history of door closers which combined these two features.

As illustrated by the schematic diagram below, claim 8 of the Slaybaugh device is essentially comprised of seven elements, each of which Republic concedes to be old and known:4

In its commercial embodiment, Republic's unit, called Fire Eye II MR, is completely encapsulated.

As the door is opened to any desired position (the multiple-point hold-open feature), a gear mechanism attached to the door causes the piston in the diagram to move to the left, thereby compressing the closing spring. The electrically controlled solenoid exerts a force on the valve to close off the fluid escape passage, thus preventing the fluid interposed between the piston and valve from escaping. Even though the closing spring is urging the piston toward the right, movement of the piston is blocked because fluid cannot escape from its chamber through the fluid escape passage when the valve is closed. The door remains open as long as the equilibrium between the opposing forces of the spring and solenoid is maintained.

An open door may be closed either automatically or manually. The door is closed automatically by deactivation of the solenoid. The solenoid is connected to an external circuit which usually includes smoke or fire detectors. When the circuit is opened, e. g., by the triggering of the smoke detector, the solenoid releases the force on the valve, thereby unseating it. Once the valve is open, the closing spring forces the piston rightward. The piston in turn forces the hydraulic fluid (interposed between the piston and the valve) past the valve through the escape passage. The gear mechanism attached to the piston swings the door toward closure.

The allegedly unique feature of the Slaybaugh patent is the momentary manual release. Unlike prior door closers which required manual assistance,8 the Slaybaugh device requires only a brief pull or push on the door, whereby the door closes by itself. The force of the momentary pull together with the force of the closing spring are sufficient to overcome the solenoid's effect and unseat the valve, which, when open, allows the door to close by itself.

II

Schlage contends that the Slaybaugh device is invalid because it is merely a combination of old elements having no synergistic effect. It takes this position regardless of whether a synergism test is defined in terms of a combination that produces an unexpected, unpredictable, or surprising result or in terms of individual elements of a combination functioning in a new and different manner. Although it is unclear whether Schlage understands synergism to be a substitute for or an addition to the statutory requirement of nonobviousness as interpreted in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), it nonetheless argues that synergism is required by the Anderson's-Black Rock v. Pavement Co., 396 U.S. 57, 90 S.Ct. 305, 24 L.Ed.2d 258 (1969), and Sakraida v. Ag Pro, Inc., 425 U.S. 273, 96 S.Ct. 1532, 47 L.Ed.2d 784 (1976), decisions. A review of these cases, particularly when placed in historical context, demonstrates otherwise.

The Patent Act of 1793 required that a device had to be both new and useful to be patentable. Act of February 21, 1793, ch. XI, § 1, 1 Stat. 318. Thereafter a third criterion was judicially created: a device had to be an "invention" as well.9 Defining "invention" proved to be elusive. Nearly a century ago, the Supreme Court said as much about the term:

McClain v. Ortmayer, 141 U.S. 419, 427, 12 S.Ct. 76, 78, 35 L.Ed. 800 (1891). The imprecision of the "invention" standard resulted in an inconsistent and unpredictable body of law because it required that the decision of patentability be based ultimately upon the subjective whims of the reviewing court.10

Congress revised the patent laws in 1952.11 The novelty and utility requirements were maintained and recodified. 35 U.S.C. §§ 101, 102. The retention of these requirements did not, however, completely define the concept of patentability; missing was that essential quality which goes beyond mere newness or usefulness — the "something" that the courts had unsuccessfully strived for by the use of the term "invention." In order to start afresh in a semantic sense and to promote uniformity in the application of the patent laws, Congress added section 103.12 That provision replaced the judicially imposed requirement of "invention" with that of "nonobviousness":13

35 U.S.C. § 103.

Section 103 received its definitive interpretation in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). There, the Court, in calling for "strict observance" of its requirements, laid out the analysis to be followed in cases involving the obviousness standard:

Id. at 17, 86 S.Ct. at 694. It is against this backdrop that Black Rock and Sakraida must be read.

Black Rock involved a combination patent in which each of the elements were known in the prior art.14 In that case the Court recited that it would adhere to the guidelines it had developed in Graham. 396 U.S. at 61-63, 90 S.Ct. 305. Using such analysis, the Court held the patent at issue invalid because "the combination was reasonably obvious to one with ordinary skill in the art." Id. at 60, 90 S.Ct. at 307. Although during the course of its discussion the Court noted that a combination "may result" in a synergistic effect,15 the Court went on to hold that the device in question "was not an invention by the obvious-nonobvious standard," id. at 63, 90 S.Ct. at 309; this phrase could only refer to Graham and section 103.

Similarly in Sakraida, the Court scrutinized the combination patent in issue by considering the scope and content of the prior art together with the differences between that art and the claimed invention.16 In holding the patent invalid, the Court held: "[T]his particular use of the assembly of old elements would be obvious to any person skilled in the art of mechanical application." 425 U.S. at 282, 96 S.Ct. at 1537. Although the Court again discussed synergism, it is apparent from the context of the opinion that the Supreme Court raised the topic only in response to the court of appeals' assertion that synergism was present; the Court simply did not agree that the effect produced by the claimed invention in that case was synergistic.17

Neither Sakraida nor Black Rock can be cited as prescribing some other, special test for the evaluation of combination claims. Nowhere in these two decisions did the Court hold a synergistic effect to be a necessary condition of patentability; nor did it hold that to synergism supersedes a finding of nonobviousness under the Graham analysis. To the contrary, each case quoted Graham with approval. Each turned on whether the claimed invention was nonobvious on the basis of the three-pronged test in Graham. In short, we believe that Sakraida and Black Rock, rather than establishing an additional, different, or substituted test for nonobviousness under section 103, reaffirmed the continuing vitality of Graham.18

The district court, while agreeing that Black Rock and Sakraida did not establish synergism as a requisite for patentability, nonetheless interpreted cases from this court as requiring that every combination invention must have a synergistic effect to be patentable.

The synergism test necessarily involves a two-pronged hypothesis: (1) the subject matter of the patent claim comprises a combination of several elements, each of which was known in the prior pertinent art, and (2) the combination is synergistic or at least produces a synergistic "effect." One premise of this hypothesis, at least as applied to mechanical or hydraulic devices, is that all such inventions are merely new applications of known elements and materials in different combinations. As Judge Learned Hand observed:

Reiner v. I. Leon Co., 285 F.2d 501, 503 (2d Cir. 1960), cert. denied, 366 U.S. 929, 81 S.Ct. 1649, 6 L.Ed.2d 388 (1961).19 If this be true (and if new nonobvious combinations are not patentable), then almost nothing would be patentable. See Reeves Instrument Corp. v. Beckman Instruments, Inc., 444 F.2d 263, 270 (9th Cir.), cert. denied, 404 U.S. 951, 92 S.Ct. 283, 30 L.Ed.2d 268 (1971).

Once it has been determined that all of the elements in the combination are known, the next inquiry under the synergism approach is whether the claimed patent is synergistic or produces a synergistic effect. This has been no easy task. Courts have long wrestled with the meaning of synergism and have formulated a number of definitions. The two most common have been that one of the elements functions differently in combination than it did previously, e. g., Burland v. Trippe Manufacturing Co., 543 F.2d 588, 592 (7th Cir. 1976), and that the combination results in an effect greater than the sum of the several parts taken separately. E. g., St. Regis Paper Co. v. Bemis Co., 549 F.2d 833, 838 (7th Cir.), cert. denied, 434 U.S. 833, 98 S.Ct. 119, 54 L.Ed.2d 94 (1977).20 A realistic appraisal of these formulations, however, reveals that synergism is only a figure of speech, for in its literal sense synergism never has existed and never can exist in mechanical or hydraulic inventions when the term is defined as a whole result greater than the sum of its constituent parts.21

There is, in fact, no such thing as a mechanical or hydraulic element functioning differently in combination than it did outside the combination. A spring or valve will always function as a spring or valve, alone or in concert with other components.22 Moreover, mechanical elements can do no more than contribute to the combination the mechanical functions of which they are inherently capable. See Application of Menough, 323 F.2d 1011, 1015, 51 C.C.P.A. 741 (1963). Thus, the overall performance of the combination is always equal to the sum of the functions of its individual components. As Judge William Conner of the Southern District of New York observed: "In the real world, two plus two never equals five." Some Highly Personal Reflections on Section 103, 5 Am.Pat.L.Q. 77, 85 (1977). Compare Great A & P Tea Co. v. Supermarket Equipment Co., 340 U.S. 147, 152, 71 S.Ct. 127, 130, 95 L.Ed. 162 (1950) ("Two and two have been added together and they still make only four.").

A definition of synergism that reflects its etymon is that the elements in the combination must cooperate or interact with each other.23 So defined, synergism distinguishes those inventions in which the parts are merely aggregated,24 and those in which the parts coact with each other so that the result comes from the combined effect of the several parts and not simply from the separate action of each. Under this formulation, the presence or absence of synergism proves little. Today, almost all mechanical devices consist of parts which interact with each other. This interaction has little, if anything, to do with the required nonobviousness of the claimed invention. Although the absence of interaction may demonstrate the obviousness of the combination, the presence of interaction assuredly does not impart nonobviousness to a device clearly suggested by the prior art. As thus defined, synergism is simply too broad to provide a useful yardstick with which to measure patentability.

Putting the definitional aspects aside, there are more fundamental flaws in the use of synergism as a standard for patentability. In enacting section 103, Congress expressly mandated nonobviousness, not synergism, as the sole test for the patentability of novel and useful inventions: indeed, synergism is not even mentioned in the Patent Act of 1952. Moreover, as section 103 applies to all patent claims, there is no justification why patentability of a combination patent should be measured by a different standard than any other type of invention.

More importantly, when using the synergism approach to determine whether one element functions differently or whether the whole somehow exceeds the parts, one is required to look solely to the operation of the elements after they are combined. This analysis suffers from two defects. First, a test which looks exclusively to the functioning of the individual components after they are combined must necessarily be premised on the assumption that it is always obvious to take known elements and combine them. We find this assumption unsound and not based in fact. It may be that in certain circumstances the very choice of the elements to be selected is not obvious. Again, as Judge Hand noted:

B.G. Corp. v. Walter Kidde & Co., 79 F.2d 20, 22 (2d Cir. 1935) (emphasis added). See also Application of Menough, 323 F.2d 1011, 1015, 51 C.C.P.A. 741 (1963).

The second and more basic defect with synergism is that section 103 sets as the standard of patentability the nonobviousness of the invention "at the time the invention was made to a person having ordinary skill in the art . . .." This provision therefore compels the courts to view the invention from the vantage point of the field of art at a specific point in time, i. e., the time the invention was made. See Rich, Principles of Patentability, 28 Geo.Wash.L.Rev. 393, 405-06 (1960). From this vantage point the critical question becomes whether the level of skill in the art was such that the combining of the elements in the manner claimed would have been obvious, not in retrospect, but at the time it was done by the inventor. As the Supreme Court stated in United States v. Adams, 383 U.S. 39, 50, 86 S.Ct. 708, 713, 15 L.Ed.2d 572 (1966), a companion case to Graham:

Synergism, however, precludes this analysis. Because synergism centers exclusively on the performance of the elements after combination and without regard to the obviousness or nonobviousness of making the combination, synergism does not comport with the Graham mandate to apply section 103.

Regrettably, we have heretofore failed to provide clear and consistent guidance regarding the standards appropriate for combination patents. Although we have in fact continued, either explicitly or implicitly, to judge patent validity according to the Graham analysis, we have also from time to time commented on the presence or absence of a requirement akin to synergism in the claimed invention under review. And in St. Regis, we stated our conclusion in such a way that it may seem that we regard synergism as a test separate from and coequal to that for nonobviousness under section 103. Inasmuch as Graham and section 103 continued to be the guiding light, the results of those cases were not in error. But as the foregoing discussion makes evident, this court never intended that synergism be applied literally or that synergism is the sine qua non of patentability. Rather, the concept was employed only as a figure of speech to express the truism that when all the parts of a claimed invention are known, the combination (and the act of combining) is likely to be more obvious to one reasonably skilled in the art.25 See Reeves Instrument Corp. v. Beckman Instruments, Inc., 444 F.2d 263, 271 (9th Cir.) cert. denied, 404 U.S. 951, 92 S.Ct. 283, 30 L.Ed.2d 268 (1971). However, because synergism has prevented the development of a consistent, predictable body of law under section 103, and because the concept does not bear any logical ipso facto relationship to obviousness, the term has little, if any, utility. Therefore until Congress shall otherwise legislate or the Supreme Court shall otherwise specifically hold, this court will continue to apply the Graham analysis as the exclusive means by which to measure nonobviousness under section 103.

Perhaps a caveat is in order: by our holding today we have no intention of departing from the high standard of patentability which is reflected in the Black Rock and Sakraida decisions. Though rendered nearly a century ago, the Supreme Court's discussion in Atlantic Works v. Brady, 107 U.S. 192, 200, 2 S.Ct. 225, 231, 27 L.Ed. 438 (1883), of the purpose behind the patent laws remains true today:

III

Having thus disposed of the synergism issue, we are left with the question of the instant patent's validity. We begin this analysis by noting that a patent is presumed valid. 35 U.S.C. § 282. That presumption, however, is not conclusive, St. Regis Paper Co. v. Bemis Co., 549 F.2d 833, 838 (7th Cir.), cert. denied, 434 U.S. 833, 98 S.Ct. 119, 54 L.Ed.2d 94 (1977); it merely shifts the burden of proof to the party attacking the validity of the patent. Maxon Premix Burner Co. Eclipse Fuel Engineering Co., 471 F.2d 308, 312 (7th Cir. 1972), cert. denied, 410 U.S. 929, 93 S.Ct. 1365, 35 L.Ed.2d 591 (1973). Furthermore, that presumption does not exist against evidence of prior art not before the Patent Office. The Allen Group v. Nu-Star, Inc., 575 F.2d 146 (7th Cir. 1978) (per curiam); Ropat Corp. v. McGraw Edison Co., 535 F.2d 378, 383 (7th Cir. 1976). "Even one prior art reference not considered by the Patent Office can suffice to overthrow the presumption." Henry Manufacturing Co. v. Commercial Filters Corp., 489 F.2d 1008, 1013 (7th Cir. 1972). Observing these considerations, we now evaluate the Slaybaugh patent to determine whether it is obvious under the Graham criteria.

The parties agree, and the district court found, that the Martin patent, U.S. Patent No. 3,696,462, is pertinent prior art relating to the Slaybaugh invention. The Martin patent, also owned by Republic, describes a hydraulic door closer with multiple-point hold-open but without momentary manual release. The innovative feature of the Martin device was the introduction of an electrically controlled valve in the escape passage of the hydraulic fluid which, when energized by a solenoid, blocked passage of the fluid, thereby preventing further movement of the piston in the closing direction.26 Use of the solenoid-operated hold-open valve in this manner had two distinct effects: (1) an open door would close automatically at a controlled rate when the solenoid valve circuit was interrupted, e. g., by triggering of a smoke detector,27 and (2) the continuing force of the solenoid on the valve made it possible for the door to have a multiple-point hold-open feature. Because of the addition of the valve-solenoid structure, the Martin patent was the first device in the door closer art which had a multiple-point hold-open feature and which could be closed automatically.28

The Slaybaugh patent is similar in construction and operation to the Martin device in many respects. Like Martin, Slaybaugh employs a spring and a piston with a cylinder filled with hydraulic fluid. Like Martin, Slaybaugh also uses an electronically operated solenoid hold-open valve apparatus. As a result, it to has the multiple-point hold-open and automatic closing features. The distinctive and, in Republic's view, the innovative feature of the Slaybaugh device is the addition of momentary manual release to the door closer art.

Republic argues that Slaybaugh's contribution to the art — momentary manual release — was achieved by adding components to the Martin patent and by proportioning key elements. The crux of Slaybaugh's improvement over Martin and the principal difference which allows momentary manual release is the employment of a dual area valve. As illustrated in the diagram below, a dual area valve is constructed with a face area (B) which is larger than the area of its seat when the valve is closed (A):29

Once the valve is opened by the combined force of the closing spring and the momentary push, the fluid pressure acts on a larger face area than it did when the valve was closed. Since force is the product of pressure times area, the high pressure fluid acting on the entire projected valve face area, exposed when the valve is open, develops a force sufficient to overpower the opposing force exerted on the valve by the solenoid. Because the solenoid is overpowered, the valve stays open until the fluid escapes and the door closes by itself, without additional manual assistance.30

The Martin patent, however, is not the only pertinent prior art. Other patents, which Republic failed to disclose to the Patent Office, teach the concept of dual area valves.31 Because Republic did not disclose these, the presumption of validity does not obtain for the Slaybaugh patent against this evidence of prior art. The Allen Group, Inc. v. Nu-Star, Inc., supra; Ropat Corp. v. McGraw-Edison Co., supra.32

The use and effect of dual area valves in hydraulic systems was described at least as early as 1945 in a publication entitled Basic Hydraulics. That article explained the principles of operation involved in a hydraulic pressure relief valve where the area of the valve seat is smaller than the area of the valve face and discussed the effect of this differential area on the valve operation. See note 30 supra. It showed that by intentionally proportioning the force of the main spring, the valve seat area, the valve face area, and the amount of force holding the valve closed, one can, by momentarily adding pressure, open a closed valve, then remove that added pressure and yet have the valve remain open.

A number of patents33 have employed the concepts articulated in Basic Hydraulics and have used them to advantage in fluid control relief valves. Although the valves described in these patents vary in their structure and precise mode of operation, each of them teaches use of the differential area concept to keep a valve open at a reduced pressure once it has been opened at a higher pressure. The valves in these patents are constructed in a similar fashion, perform similar functions, and achieve results similar to those achieved by the valve construction defined in claim 8 of the Slaybaugh invention.34

Republic argues, however, that these patents are not in the pertinent prior art because they are related to the valve and fluid handling art rather than the door control art.35 Such a restricted view of the applicable art is not justified. Cf. Graham v. John Deere Co., 383 U.S. 1, 35, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966); see also Dann v. Johnston, 425 U.S. 219, 228-29, 96 S.Ct. 1393, 47 L.Ed.2d 692 (1976). The prior art that is relevant in evaluating a claim of obviousness is defined by the nature of the problem confronting the would-be inventor. The problem confronting Slaybaugh in developing momentary manual release was to devise a way the door control valve would stay open after it had been manually forced open. Once the problem was recognized, the place to find the solution became apparent. At that point, the art most pertinent to Slaybaugh or any other practitioner in the door closer art was the valve and fluid handling art, not the door control art. Accordingly, the valve art is pertinent to the claimed invention.

Having determined that the differences between Slaybaugh and the pertinent prior art are small does not end our inquiry. "[T]he obviousness test of § 103 is not one which turns on whether an invention is equivalent to some element in the prior art but rather whether the difference between the prior art and subject matter in question is a difference sufficient to render the claimed subject matter unobvious to one skilled in the applicable art." Dann v. Johnston, 425 U.S. 219, 228, 96 S.Ct. 1393, 47 L.Ed.2d 692 (1976) (internal quotes omitted). In making that determination, obviousness is measured by what would be obvious to one reasonably skilled in the applicable art, not by what would be obvious to a layman. Id. at 229, 96 S.Ct. 1393. See also Graham, supra, 383 U.S. at 37, 86 S.Ct. 684. And obviousness is measured not by considering what was obvious to actual artisans but by considering whether a hypothetical person, having all of the prior art at hand, would have found the same solution when addressing himself to the same problem. Popeil Brothers, Inc. v. Schick Electric, Inc., 494 F.2d 162, 167 (7th Cir. 1974); see Systematic Tool & Machine Co. v. Walter Kidde & Co., Inc., 555 F.2d 342, 348 n.8 (3d Cir.), cert. denied, 434 U.S. 857, 98 S.Ct. 178, 54 L.Ed.2d 128 (1977); Malsbary Manufacturing Co. v. Ald, Inc., 447 F.2d 809, 813 (7th Cir. 1971), (Stevens, J., dissenting). The district court found, and we agree, that such a hypothetical person in the door closer art would have knowledge of basic hydraulics. This knowledge would have included safety and pressure relief valves which teach use of the dual area concept to keep a valve open after the initial pressure is reduced.36

Even with this awareness, Republic argues that Slaybaugh advanced the art because of his proportioning of the force of the main spring, the valve seat area, the projected valve face area, and the counter-force of the solenoid. This, however, amounted to little more than the mathematical task of filling in the variables of a given equation. We find this proportioning simply to be "the work of a skillful mechanic, not that of the inventor." Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248, 267, 13 L.Ed. 683 (1851).

Republic strenuously argues that we should weigh such secondary considerations as commercial success, long felt need, and failure of others. See Graham, supra, 383 U.S. at 17-18, 86 S.Ct. 684. Even assuming the presence of these factors in this case — of which we have some doubt — we decline this invitation. While such secondary considerations may be "indicia of obviousness or nonobviousness," id. at 18, 86 S.Ct. 684, "those matters `without invention will not make patentability.'" Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 61, 90 S.Ct. 305, 308, 24 L.Ed.2d 258 (1969). Only in a close case, in which application of the primary criteria of nonobviousness under section 103 does not produce a firm conclusion, can these secondary considerations be used to "tip the scales in favor of patentability." Panduit Corp. v. Burndy Corp., 517 F.2d 535, 541 (7th Cir.), cert. denied, 423 U.S. 987, 96 S.Ct. 395, 46 L.Ed.2d 304 (1975). Because we hold that the claims made here are clearly obvious under section 103, we deem it unnecessary to examine these secondary considerations.

The judgment of the district court is affirmed.