*1 & PACIFIC TEA CO. GREAT ATLANTIC EQUIPMENT SUPERMARKET CORPORATION.

No. 10835. Appeals United States Court Sixth. Circuit. 17, 1950. Jan. 10, 1950. As Amended Feb. Glaccum, 'City, H. New E. York John J.

Balluff, Detroit, Mich., Munn, Liddy & Glaccum, City, brief, ap- New York on pellant. Beaman, Mich., Townsend F. Jackson, Patch, Beaman Jackson, Midi., brief, on Greve, Cincinnati, Ohio, on Theodore dock- et, appellee. ALLEN, MARTIN MIL- Before

LER, Judges. Circuit ALLEN, Judge. Circuit appeal

This a judgment out arises finding District Court claims of three patent 2,242,408, May issued application on an filed October infringed. Weingarten, valid and plaintiff below, is assignee Bradley, co-plaintiff below, owned nominal interest.

At stipulated the trial it was Claims valid, 5 and infringed by if were pellant’s Appellees structure. with- then drew hence 6, printed margin, issue.1 including along group posi-

1. 4. A checker’s stand the counter in described, open adjacent of the character bot tion the checker movement pusher thereon, frame of said frame. tom means sliding guide said 5. A frame movement cashier’s counter for cash goods carry type comprising por- end on said coun pushed spaced within said tion ter frame stand cashier’s *2 rack, forth frame or back and a merchan- to be slid covers The Turnham placed pas- upon handler, The customer designed expedite the the counter. dise groceries boy” checking-out frame, “pusher in and sage the a through of customers pushed problem checker. the frame The forward counters in self-serve stores. pushed back to the insti- The frame was then sought solved arose out 'be point waiting, stores, was first the grocery of the where next customer tution self-serve groceries put into the and his in turn were which estab- Piggly-Wiggly, of was the Later, cus- pushed frame and problem lished forward. about 1917. The pack- put tomers became educated to their opening increased the so-called super ages push into them forward for the the frame and around which markets purpose large advantage themselves. A marked of of this case self-serve waiting system is while checker handling of business. the is great stores volume a customer, on one patent specifications the next in line has an As described in the and evidence, opportunity to frame packages the load into the stores expedite and thus the tests deposited the customer in a service. Under purchases bas- regis- ket and are not record the cash controverted basket the ter on it was shown checking the which use this the This was an counter. stores customers, L-shaped device have table, register handled more with the mounted 30% upon formerly, taken in wing. money the L or than The checker took the 30% groceries and basket, them, improved efficiency. thus greatly out of the their sorted amounts, pay- added and received problem While the form arises in marked ment. In Weingarten at stores super is, and markets as one of Houston, Texas, problem which pellant’s said, biggest witnesses of their one had years for several in- existed was problems, it existed as soon as self-serve tensified, particularly during hours, rush stores with checking counters were when a persons number approached of the in persons- 1917. Whenever two more than checking counter at the same time. are at counter, difficulty the checking irritation of the at having customers congestion exists. The conceded to have is line, wait difficulty combined with the problem always been a Saturdays on and of handling customers, created a situa- at rush hours. Turnham, spite Prior to tion which was a real menace to the devel- repeated attempts, of solution was opment of Turnham, the self-serve store. the addition of checking counters. This an employee Weingarten, of as- who was turn meant space the use of very valuable signed the task of solving problem, in- store, near front building ad- vented the device which subject counters, ditional hiring help,, of additional controversy. put He an extension on the which was particularly difficult during checking counter man-power and to shortage this extension he years,, the war attached guide a purchase structure. He with and the regis- additional cash guide structure a three-sided ters. bottomless Since 1939 devices similar to Turn- upon deposited may and arranged, which the merchandise be a bottomless deposited portion arranged, a frame on bottomless said and within which portion deposited three sided frame on said the merchandise and ar- ranged, deposited within whereby which the merchandise is means said frame arranged, whereby por- means said frame movable on said from counter said adjacent position is movable on said tion from said the cashier’s portion adjacent position may stand so that the merchandise thus group point cashier’s stand so that be moved as a merchandise where may may group observed, conveniently thus be moved be as to a it counted point may registered conveniently cashier, where it be ob- said frame served, registered being open adjacent counted and end readily cashier. cashier’s stand movable portion returned over A cashier’s for cash and said as carry type grocery comprising por- the merchandise of another cus- receive spaced occupied tion while the tomer cashier cashier’s stand and with group. previous which the merchandise markets put Co., Metals into self-serve Powder Co. have been v. S. K. Wellman 6 Cir., chains leading grocery appellant

established While in vari- appellant installed them contends in 1942 that Turnham long settled no . problem standing ous stores. because there no- was *3 acute bottleneck at checking the counters found. The District Court 1937, until this by contention is answered patent in 4, “15. 6 of the testimony the appellees’, not but of define combination of suit a new elements its own witnesses. appears by It over by Turn- brought together for the first time whelming weight of the evidence that at provide 'improved check-out to rush -and on days, hours rush -such as Sat counter. urday, problem appeared as soon as or racks “16. bottomless Three-sided self-service in stores was institut pool trays racking balls in had ed. The device satisfied an old and rec prior Also invention. Turnham ognized want, and hence “invention is to More- checking-out were known. counters inferred, rather than the exercise of over, trays had been used guide rails mechanical skill. For mere -skill of the restaurants. art normally would have been called into “However, conception of a action generally known want.” Par bottomless with extension receive a Corp. mount Publix v. American Tri-Er push the tray which self-unloading with gon Corp., 464, 449, 294 U.S. 55 S.Ct. tray of the cashier in front contents of 997; Goodyear L.Ed. Tire & Rubber consti- decidedly novel feature and was a Ray-O-Vac Co., Co. v. S. combination.” tutes a new and useful Ct. 88 L.Ed. 721. One could be blinded similarity between the “17. There no in this simplicity device, case prior patents by the Patent Office cited art might present conclude that it does not dis- the invention or the defendant and degree of higher intelligence held patent.” closed in the Turnham necessary the courts to constitute invention. “18. introduced es- But problem, No evidence was here a long-existing born tablishing prior Turnham with anyone the birth of the self-serve store in tray in com- used a three-sided bottomless 1917 and continually troubling man store checking-out counter.” agements, bination with was never solved until when Turnham -his combination in Appellant’s utili- conceded the witnesses Weingarten’s Houston store. Three wit ty patent, one of them of the Turnham testified nesses to the existence of pusher it obvious that stating problem beginning of self-serv improved efficiency speed of ice Ap- constantly and to the efforts made lines of customers. taking care of the pellant, infringe- however, conceding Appellant recognized solve it. while once ment, conception contends that of problem when it its self-serve stores mechanical skill Turnham involved mere Employees the Midwest. Kroger dignity of inven- does not rise to the Company from 1939 on worked with nu tion. devices, merous such conveyor as belt proved which impractical,

We think the and a counter dolly or wheeled District must affirmed. The find Court rack which was devised carry packages ing that and useful combination the cashier. But get of the inventive it was not resulted from the feasible to exercise rid of this rack and return it finding faculty is fact customer. About 1941 [Faulkner Gibbs, Cir., Kroger adopted F.2d affirmed the three-sided bottomless 7, 1949, tray, up which November 70 S. to this time leads in effici 25; ency Mfg. Co. v. United Shoe handling, Ct. Williams merchandise awith push Machinery Corp., it 316 U.S. S. mere is returned next cus line, process tomer 1537], waiting Ct. sustained and the goes evidence, Milgram stores, substantial should not be set on. which established General self-service in clearly City aside unless erroneous. Kansas found bottom- prior use of the In 1939 concedes that no problem time. acute at shown. less de- rack a combination Milgram up such set a number of sup- evidence guard rails substantial We conclude that vices which had extensions ports Court District findings baskets slid their customers novelty and invention exist. them then lifted front of the cashier and counting. unloading on the counter for 5 and 6 describe here, which un- The combination disclosed physical device terms essential of its before der this record no one conceived in Halli- The rule announced structure. heavy- Turnham, lifting of Walker, eliminated the Cementing burton Oil Well Co. in- baskets and reduced other difficulties not 6, 91 L.Ed. does 67 S.Ct. congested leading to the herent in lines *4 Auto Excel invalidate claims. Cf. these practically 1939 checking counters. Since Mfg. Bishop & Babcock Radiator Co. v. major United self-serve store in the every Co., Cir., 962, 966; Faulkner 6 F.2d 167 system. adopted the Turnham States Gibbs, are supra. 5 and 6 was It that the extended true valid. novelty. guide rails had no old and the err Court did not The District used retain rack had been to A bottomless refusing pass upon of validity to But the u'se billiard balls formation. discretionary 1, 2 and was It combination dis- all these elements of permit court with the whether it should produced and closed new was plaintiffs withdraw these claims a highly beneficial result. While action to the treat their as an amendment and the no sales of the device were made pleadings. Ford Gordon Motor Co. v. subsequent license issued was to the first Co., Cir., Form Lathe 6 90 999. Since F.2d action, industry date of the of this filing permitting Court District did not err paid importance its tribute of Turn- the withdrawal of these it also did claims virtually adoption. ham Cf. unanimous not err in its allowance of costs. Claims Mfg. Knapp- Plating Forestek Co. v. invalid, 1, 2 having 3 not been found 558; Co., Cir., Monarch 6 106 F.2d plaintiffs duty under no to disclaim were Cir., Borg-Warner Corp., Goodwin v. 6 them, U.S.C., and R.S. 35 § § of the F.2d 267. This in the face 157 was apply. does not U.S.C.A. § advertising fact no sales or that extensive The is affirmed. campaign was undertaken. MARTIN, Judge (dissenting). Circuit patents had not Seventeen pat- I am to find invention in the unable during Patent been cited Office ent claims in suit. It seems me prosecution application the Turnham the combination of the ele- admittedly old anticipa introduced as evidence of were ments as described in the claims does not nec tion of the Turnham device. It is not invention, dignity rise and that For essary to discuss these in detail. findings are fact district court nonanalogous part they totally are in most Quite apparently erroneous. clearly Turn- Marois, 1,654,692, is flat mov art. slab patent derived idea underlying his pro and forth under a screen able back from different field a com- utilizing Vamum, 1,- cashier’s window. tecting a monly art, known and long existent 725,494, Dickinson, 1,115,911, pat are racking pool pool balls table. pool ball ents for racks. The racks effect, merely opened apex he In question and are not self-unload closed ordinary pool of an ball rack U-shaped Ar ing, rack. Neither as i’s triangle parallel became legs of the each 1,873,852, nold, 1,708,407, Rorrer, nor perpendicular other the base. 1,384,191, Greenberg, has the bottomless along hand-pushed rack was then Anderson, 1,788,759, ordinary rack. elongated pushing table. The element conveyor. type belt As shown in this automatic, not or mechanical. was even record, patent prior attacked no ant ,by simple presented The result achieved meth- the bottleneck the checkout undoubtedly Appellant od was when store. utilitarian self-serve 6iO

plied stores, every necessarily mer- improvement not de- pushed along adoption chandise of a well- could faster notes invention and “the purchaser that, known expedient But mechanical within the better served. expected my thinking, Turn- does not constitute skill art.” Co. v. Shaler Cir., Products, ham’s inven- F.2d Rite-Way of old combination elements monopoly degree tive that a should granted him. In the old Atlantic Works v. case of Mfg. Brady, In Williams Shoe Co. United S.Ct. Cir., Corporation, Mach. Bradley declared 27 L.Ed. Mr. Justice Supreme that to Court [affirmed the unanimous in which 1537], monopoly S.Ct. ev- party “grant single to a concurred, made, except dissenter the heel last- seat where ery slight advance highly invention, er in manufacturing shoes above ordi- was somewhat exercise of complicated skill, improvements held nary and the is dis- engineering mechanical or required shown, valid ingenuity unjust principle' to accom tinctly plish than injurious consequences.” of mechanic mere work in its skilled in the art. I think the same Applying principles, am unable these I *5 patent be said relating clutch patent that invention inheres in see single-plate ve clutches motor think Accordingly, I claims 'in suit. Borg-Warner hicles held valid in Goodwin v. court, being district rporation, Cir., 267, Co findings, grounded clearly erroneous present dissenter concurred should reversed. opinion Judge Allen. In Sinclair & Carroll Co. v. Interchemi Corporation, 327, 330,

cal 325 U.S. 65 S. 1143, 1145, 1644, Ct. L.Ed. invalid, holding patent said: long “A of cases line had held it to be an requirement validity essential for the patent subject-matter display ‘in * ** vention’, ingenuity ‘more than work STATES. of a mechanic v. skilled the art.’ TAYLOR UNITED cases). (two SIQUIER, Warden TAYLOR v. [Citing cases.]” 12307, 12272, 12385. Nos. Earlier, Corp. in Cuno Engineering Appeals Corporation, Automatic Devices Court of United States Ninth 84, 90, 37, Circuit. 40, 58, S.Ct. Jan. highest court stated: “We concede performed by functions Mead’s Rehearing Denied Feb. combination were useful. But necessarily that does not make device

patentable. statute, U.S.C., Under the 35 U.S.C.A. R.S. § § § useful’, device must not 'be ‘new and ‘discovery’. it must also be ‘invention’ or Thompson Boisselier, S.Ct. L.Ed. 76. Hotch- Since Co., v. Greenwood kiss How. 13 L.Ed. decided it has recognized improvement if privileged position obtain

is to of a ingenuity must be involved than the work of a mechanic skilled in the [Citing art. This court has said cases.]”