CITE:  340 U.S. 147
CMON:  Dec. 1950
PLAIN: Great Atlantic & Pacific Tea
DEFND: Supermarket Equipment
COURT: Supreme Court of the United States 
DATE:  December 4, 1950

HISTORY:
CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE SIXTH CIRCUIT.
 
The District Court sustained the validity of certain patent claims.
78 F.Supp. 388. The Court of Appeals affirmed.  179 F.2d 636.  This
Court granted certiorari, 339 U.S. 947, and reversed, p. 154.
 
A combination patent for a cashier's counter equipped with a three-sided
frame, or rack, with no top or bottom, kept on the counter by guides, which,
when pushed or pulled, will move groceries deposited within it by a customer
to the checking clerk and leave them there when it is pushed back to repeat
the operation, was held, in an opinion by Jackson, J., to be invalid as
uniting elements old in mechanics, performing no additional or different
function in the combination than they perform out of it.

SUMMARY:
  Combining old elements, or an old and new element, that perform or
  produce no new or different function or operation than that previously
  performed or produced by them, is not a patentable invention.
  An invention must advance science with its' quality and distinctiveness.

JUDGE: JACKSON, Justice
Vinson, Black, Reed, Frankfurter, Douglas, Jackson, Burton, Clark, Minton
Douglas and Black, JJ., concurred, pointing out that the Constitution does
not sanction the patenting of gadgets.

DECISION:

Two courts below have concurred in holding three patent claims to be valid,
{n1} and it is stipulated that, if valid, they have been infringed. The
issue, for the resolution of which we granted certiorari, {n2} is whether
they applied correct criteria of invention. We hold that they have not,
and that by standards appropriate for a combination patent these claims
are invalid.
 
Stated without artifice, the claims assert invention of a cashier's
counter equipped with a three-sided frame, or rack, with no top or bottom,
which, when pushed or pulled, will move groceries deposited within it by a
customer to the checking clerk and leave them there when it is pushed back
to repeat the operation.  It is kept on the counter by guides.  That the
resultant device works as claimed, speeds the customer on his way, reduces
checking costs for the merchant, has been widely adopted and successfully
used, appear beyond dispute.
 
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." {n3}
 
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.
In the second place, were we to treat the extension as adequately disclosed,
it would not amount to an invention. We need not go so far as to say that
invention never can reside in mere change of dimensions of an old device,
but certainly it cannot be found in mere elongation of a merchant's counter
-- a contrivance which, time out of mind, has been of whatever length
suited the merchant's needs.  In the third place, if the extension itself
were conceded to be a patentable improvement of the counter, and the claims
were construed to include it, the patent would nevertheless be invalid for
overclaiming the invention by including old elements, unless, together
with its other old elements, the extension made up a new combination
patentable as such.  Bassick Mfg. Co. v. Hollingshead Co., 298 U.S. 415,
425; Carbice Corp. v. American Patents Development Corp., 283 U.S. 27.
Thus, disallowing the only thing designated by the two courts as an
invention, the question is whether the combination can survive on any
other basis.  What indicia of invention should the courts seek in a case
where nothing tangible is new, and invention, if it exists at all, is only
in bringing old elements together?
 
While this Court has sustained combination patents, {n4} it never has
ventured to give a precise and comprehensive definition of the test to be
applied in such cases.  The voluminous literature which the subject
has excited discloses no such test. {n5} It is agreed that the key to
patentability of a mechanical device that brings old factors into
cooperation is presence or lack of invention. In course of time the
profession came to employ the term "combination" to imply its presence
and the term "aggregation" to signify its absence, thus making antonyms
in legal art of words which in ordinary speech are more nearly synonyms.
However useful as words of art to denote in short form that an assembly
of units has failed or has met the examination for invention, their
employment as tests to determine invention results in nothing but
confusion.  The concept of invention is inherently elusive when applied to
combination of old elements.  This, together with the imprecision of our
language, have counselled courts and text writers to be cautious in
affirmative definitions or rules on the subject. {n6}
 
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
Pressed Steel Co. v. Standard Parts, Inc., 307 U.S. 350, and Cuno
Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84. The conjunction
or concert of known elements must contribute something; only when the whole
in some way exceeds the sum of its parts is the accumulation of old
devices patentable. Elements may, of course, especially in chemistry or
electronics, take on some new quality or function from being brought into
concert, but this is not a usual result of uniting elements old in mechanics.
This case is wanting in any unusual or surprising consequences from the
unification of the elements here concerned, and there is nothing to
indicate that the lower courts scrutinized the claims in the light of
this rather severe test.
 
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 field of its monopoly and
diminishes the resources available to skillful men.  This patentee has added
nothing to the total stock of knowledge, but has merely brought together
segments of prior art and claims them in congregation as a monopoly.
 
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 cannot stand as a matter of law. The defect that
we find in this judgment is that a standard of invention appears to have
been used that is less exacting than that required where a combination
is made up entirely of old components.  It is on this ground that the
judgment below is
 
Reversed.
 
CONCURRENCE
 
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, Section 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, Section 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. {n7}  It is not enough that an article is new and useful.  The
Constitution never sanctioned the patenting of gadgets. Patents serve a
higher end -- the advancement of science.  An invention need not be as
startling as an atomic bomb to be patentable. But it has to be of such
quality and distinction that masters of the scientific field in which it
falls will recognize it as an advance.  Mr. Justice Bradley stated in
Atlantic Works v. Brady, 107 U.S. 192, 200, the consequences of a
looser standard:
 
    "It was never the object of those laws to grant a monopoly for
    every trifling device, every shadow of a shade of an idea, which
    would naturally and spontaneously occur to any skilled mechanic
    or operator in the ordinary progress of manufactures.  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."
 
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, 275,
a rule for patent cases to the effect that this Court will not disturb a
finding of invention made by two lower courts, in absence of a very obvious
and exceptional showing of error.  That rule, imported from other fields,
never had a place in patent law.  Having served its purpose in Graver
Mfg. Co. v. Linde Co., it is now in substance rejected.  The Court now
recognizes what has long been apparent in our cases: that it is the
"standard of invention" that controls.  That is present in every case
where the validity of a patent is in issue.  It is that question which
the Court must decide.  No "finding of fact" can be a substitute for it
in any case.  The question of invention goes back to the constitutional
standard in every case.  We speak with final authority on that
constitutional issue as we do on many others.
 
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.
 
    Brown v. Piper, 91 U.S. 37: A method for preserving fish by freezing
    them in a container operating in the same manner as an ice cream
    freezer.
 
    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.
 
    Knapp v. Morss, 150 U.S. 221: Applying the principle of the umbrella
    to a skirt form.
 
    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.


FOOTNOTES:

{n1}  Claims 4, 5, and 6 of the Turnham patent No. 2,242,408, which are
involved in the controversy, read as follows:
 
"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."
 
{n2}  339 U.S. 947.

{n3}  Finding of Fact No. 15 of District Judge Picard, whose opinion
appears at 78 F.Supp. 388.

{n4}  E.g., Keystone Mfg. Co. v. Adams, 151 U.S. 139; Diamond Rubber Co.
v. Consolidated Tire Co., 220 U.S. 428.
 
{n5}  The Index to Legal Periodicals reveals no less than sixty-four
articles relating to combination patents and the theory and philosophy
underlying the patent laws.  Among the many texts are 1 Walker on Patents
(Deller's ed. 1937); Stedman, Patents; Toulmin, Handbook of Patents;
Merwin, Patentability of Inventions; Amdur, Patent Law and Practice;
and 1 Roberts, Patentability and Patent Interpretation.
 
{n6}  With respect to the word "invention", Mr. Justice Brown said: "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.

{n7}  "Inventive genius" -- Mr. Justice Hunt in Reckendorfer v. Faber,
92 U.S. 347, 357; "Genius or invention" -- Mr. Chief Justice Fuller in
Smith v. Whitman Saddle Co., 148 U.S. 674, 681; "Intuitive genius" --
Mr. Justice Brown in Potts v. Creager, 155 U.S. 597, 607; "Inventive
genius" -- Mr. Justice Stone in Concrete Appliances Co. v. Gomery,
269 U.S. 177, 185; "Inventive genius" -- Mr. Justice Roberts in Mantle
Lamp Co. v. Aluminum Products Co., 301 U.S. 544, 546; Cuno Corp. v.
Automatic Devices Corp., 314 U.S. 84, 91, "the flash of creative genius,
not merely the skill of the calling."