The references upon which appellant's claims were denied are two German patents and one Austrian patent. The elements entering into the various inventions are tabulated in the brief of counsel for appellant, as follows:

It appears from the above table that appellant refused to be guided by any one of the foreign patents. He omits the iron filings called for in both German patents, but omitted in the Austrian patent, and he uses sodium silicate used in conjunction with the iron filings in the second German patent, but omitted from the first German and the Austrian patents. It is no argument against patentability that appellant's invention consists of a combination of elements old in the art. (Diamond Rubber Co. v. Consolidated Tire Co., C. D., 1911, 538; 166 O. G., 251; 220 U. S., 428.) The superiority of the invention in issue is set forth in the application, as follows:

I have found that an electrode constructed as described will give a practically steady, strong, white light and will last from one and one quarter to twice as long as other luminous arc electrodes operating under the same conditions, and will be more perfectly consumed so that less soot is deposited than that with any other luminous arc electrode.

It is conceded that the art has not been developed to the point where accurate results may be obtained by reasoning from cause to effect. Development depends almost wholly upon experiments. The present case is not one where the advanced step taken by appellant, even by the combination of elements old in the art, belongs in the realm of mere mechanical improvement obvious to one skilled in the art. This was recognized, and properly so, by the Patent Office in granting the following claims:

2. An electrode for luminous arc electric lamps comprising an iron shell about twenty-five one-thousandths of an inch thick, and a filler within the shell, consisting of powdered rutile and unevaporative residue of water glass, intimately commingled, said rutile and residue being intimately mixed in substan

tially the proportions of twelve pounds of rutile with the unevaporated residue of one quart of water glass, substantially as and for the purpose specified. 3. The herein described process of making electrodes for luminous arc elec tric lamps consisting in mixing pulverized rutile and water glass in substantially the proportions herein set forth, into a plastic mass, evaporating the water of the moist mass, pulverizing the dry product, and filling the same into a metallic tube, substantially as and for the purpose set forth.

We think, considering the experimental status of this developing art, that there is no just reason for confining appellant to the narrow limits of the claims granted. True, in his specification, he avers that the best results have been obtained from the combination of the elements in the proportions set forth in the claims allowed, but that proportion is adopted as preferable only at the attained stage of experimental development. His combination of elements, even where the preferred proportions are not used, nevertheless produce a new result. Appellant should be permitted broadly to profit by possible improvements to be attained in the further development of his invention within the limits of the present specification. Patentability being conceded by the allowance of the narrow claims, we are of opinion that the appealed claims should also be allowed.

. The decision of the Commissioner of Patents is reversed, and the clerk is directed to certify these proceedings as by law required. Reversed.

[U. S. Circuit Court of Appeals-Sixth Circuit.]

ELITE MFG. Co. v. ASHLAND MFG. CO.

Decided October 3, 1916.

234 O. G., 374; 235 Fed. Rep. 893.

1. PATENTS--INVENTION-WHAT CONSTITUTES.

There is no invention in selecting and assembling the most desirable parts of different mechanisms in the same art where each operates in the same way in the new device as it did in the old and effects the same results. 2. SAME-VALIDITY-ANTICIPATION.

The Burkholder patent, No. 1,004,741, for a lift-jack for automobiles, Held invalid for lack of invention and anticipation.

The Burkholder design patent, No. 44,837, for a design for a lifting-jack standard, Held invalid for want of invention, showing neither beauty, originality, nor creative design.

APPEAL from District Court of the United States for the Eastern Division of the Northern District of Ohio; John H. Clarke, judge.

Mr. M. G. Norton for the appellant.

Mr. C. L. Parker for the appellee.

Before KNAPPEN and DENISON, Circuit Judges, and SATER, District Judge.

SATER, Dis. J.:

The plaintiff, as assignee of the Burkholder patents, No. 1,004,741, for a lift-jack for automobiles, issued October 3, 1911, and No. 44,837, for a design for a lifting-jack standard, issued November 4, 1913, lost its infringement suit against the defendant in the lower court on the ground that neither of its patents disclosed novelty or an exercise of the inventive faculty. Relief is sought against such adverse ruling. The claims of the first-named patent are shown in the footnote.1

(1, 2) The lift-jack is not exclusively adapted to automobiles, but may be used for the same general purposes as other lift-jacks. The upright standard on which the parts of the jack are mounted has a wide base, its greatest extension being in front of the standard and beneath the supporting-arm of the head or rest for the automobilehub. The upper surface of the rest is depressed or curved, the better to engage the object to be raised. Lateral flanges project from the front edges of the standard. A lift-bar, having ratchet-teeth on its outer edges, and so attached to the front of the standard by ears or lugs as to permit its sliding on the standard, projects laterally at its top. Through this projecting portion is a tapered vertical hole in which is inserted the shank of the revoluble rest for the automobilehub or other object to be supported. To an extension at the top of the rear of the standard is affixed by an outer pivot a handle or lever used in operating the jack. Its inner extension is bifurcated at an obtuse angle to its main portion, thus forming a crank-handle or lever. To the end of the bifurcated portion of the handle is a yoke or link which extends downward embracing both the standard and the lift-bar, its lower curved part engaging the under portion of the nearest ratchet-tooth and thus holding the lifted object in an elevated position when the jacking-up process is ended. The jack is operated by placing it where it is to stand; the lift-bar is then raised by the handle until it engages the object to be lifted; the yoke is at the same time made to engage the lower surface of the nearest ratchet-tooth with the handle in a raised position. The handle being then depressed to its lowest position, raises such object so as to be supported by the jack.

11. In a device of the character described, a standard, having flanges at its front edges, a lift bar having slidable engagement on said flanges and provided with an outward projection integral with the front edge thereof, and a head having a free pivot on said projection to rotate horizontally. and means to raise said lift bar in respect to said standard.

2. In a device of the character described, a standard, a lift bar mounted upon the edge thereof and provided with an integral arm at its top and a socket in its extremity and a head having a transverse depression on its top adapted to engage the object to be raised and a spindle on its bottom rotatable in said socket.

The lifting-jack art is so old and so highly developed as to afford slight opportunity to inventive genius. Claims submitted by the patentee were repeatedly rejected by the Patent Examiner. The defendant rightfully contends that the two claims finally allowed and here involved are substantially the same as those declared invalid for want of patentable novelty in the interference proceeding between the patentee and Willour, the only difference aside from that of descriptive wording being the inclusion of flanges in claim 1 and a pivot and socket in claim 2. The decision made in that proceeding was not assailed and remains undisturbed. The plaintiff answers that such inclusions, in view of the state of the art, are obviously secondary matters and that the primary feature of its device is the lift-bar with an integral arm and a rotatable head; but these features were also old in the art. A comparison of the plaintiff's jack with the numerous prior patented devices shown in the record would be tedious and is not deemed necessary. Reference to a few will suffice. In construction and principle of operation the Rikard device, Patent No. 375,769 (1888), excepting as to flange and pivot and socket features, bears a strong family resemblance to that of plaintiff. But the flanges and every other element, excepting the rotatable head, called for by claim 1, is seen in earlier patents-that of Huber, for instance, No. 362,085 (1887). Excepting the spindle rotatable in its socket, t..c Cox patent, No. 468,965 (1892), embraces all the elements of the second claim. Rotatable heads are found in a number of earlier patents—some of which are Parks, No. 240,330 (1881), Garcin, No. 303,504 (1884), Aiken, No. 480,685 (1892), and Wands, No. 806,088 (1905). A head or rest with a transverse depression is seen in several of the patents. Heads of that character susceptible of being turned, like that in the plaintiff's device, to any desired position for placing the jack for lifting purposes, appear in the Welles patent, No. 750,740 (1904), and in that of Wands, who specifically mentions this characteristic of his jack. The particular means specified in claim 2 for rotating the head is covered by the patents of Aiken and of Ammidown, No. 60,114 (1866). The various elements shown in plaintiff's patent and mentioned in its respective claims are all found in the prior art, performing respectively the same function in the same way and producing the same result as in plaintiff's device. We are not unmindful that to combine old parts in such manner as to produce a new result by their harmonious coöperation may be patentable; but where the combination is not only of old parts, but obtains old results, without the addition of any new and distinct function, it is not patentable. There is no invention in merely selecting and assembling, as Burkholder did, the most desirable parts of different mechanisms in the same art, where each oper

ates in the same way in the new device as it did in the old, and effects the same results. (Goodyear Tire & Rubber Co. v. Rubber Tire Wheel Co., 116 Fed. Rep., 363; 53 C. C. A., 583; Overweight Counterbalance Co. v. Henry Vogt Machine Co., 102 Fed. Rep., 957; 43 C. C. A., 80; Sheffield Car Co. v. D'Arcy, 194 Fed. Rep., 686; 116 C. C. A., 322.) All of these cases were decided by this court. It requires only the commonest kind of skill, such as any mechanic ordinarily skilled in the art could and would have exercised, to borrow, as the patentee did, from well-known styles of jack one or more of their operative parts and put the same into another, there to perform the same function as such respective parts performed in the first. The plaintiff's lifting-jack patent, for want of novelty and patentable invention, cannot be sustained.

(3) The plaintiff's design patent shows the lifting-jack standard with its base, such standard having projecting strengthening-flanges and elliptical openings placed at intervals between the base and a point beneath the attachment of the handle. The openings are such as any mechanic would make to economize material and reduce the weight of the jack without materially reducing its strength. The production of such a design did not call for an exercise of the creative faculty. Originality is wanting. The beauty of the design is not impressive. For these reasons, the patent must be held invalid. (Chas. Boldt Co. v. Nivison-Weiskopf Co., 194 Fed. Rep., 871; 114 C. C. A., 617, C. C. A., 6.)

The judgment of the lower court is affirmed.

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