MILWAUKEE BRONZE CASTING CO. v. AVERY et al., 209 F. 616

KOHLSAAT, Circuit Judge (after stating the facts as above). Whatever invention there may have been in original claims 1, 2, 3, and 4 was distinctly waived by the proceedings in the patent office. Hubbell v. United States, 179 U. S. 77, 21 Sup. Ct. 24, 45 L. Ed. 95. We are of the opinion, however, that said claims involved no invention, and were properly disallowed.’ The only question now presented is whether the combination including the concentrically cast flange and the integral lugs added patentable novelty to the device independently of the subject-matter of the rejected claims.

The use of aluminum or other metal, whether cast or forged, even had that use been new, was not determinative of the question of invention. In the absence of some, not only better, but new, result, patentability cannot be predicated upon the material used. See Walker on Patents (4th Ed.) § 28, and cases there cited. The patent in suit has only to do with reflectors as such, and does not cover the electrical attachments. Perry’s sheet metal reflector is practically the same as Avery’s, differing only in the material from which it is made and the two-piece flange, concentric with its axis.

Ordinarily it is not invention to substitute a one-piece device for a two-piece device. It is only when some new result, not a mere difference in degree, is thereby obtained. Where the prior art already suggests the idea of a device as to form and character of operation and result, mere improvements as to the material used and as to durability and effectiveness do not attain to the dignity of invention. Gardner v. Herz, 118 U. S. 180, 6 Sup. Ct. 1027, 30 L. Ed. 158; Florsheim v. Schilling, 137 U. S. 64, 11 Sup. Ct. 20, 34 L. Ed. 574; Brinkerhoff v. Aloe, 146 U. S. 515, 13 Sup. Ct. 221, 36 L.

Ed. 1068; Gates Iron Works v. Fraser, 153 U. S. 332, 14 Sup. Ct. 883, 38 L. Ed. 734. Appellant has adopted the device of the Perry patent as to form and idea, and carried it- out in cast metal. If the appellee’s cast metal concentric flange is the equivalent of a two-piece flange, then it would seem that Avery is anticipated by Perry. We are of the opinion that there was not invention involved in the conception of the cast metal reflector of Avery, in view of the state of the art. His improvements were only such as would occur to one skilled in the art in attempting to meet the demands of the automobile trade.

It was not invention to make in. one-part the housing cap, which liad theretofore been made in two. Nor was there required any inventive skill- in casting lugs upon the outer surface of the reflector. The metallic reflector with its polished reflecting surface itself suggested the use of this common expedient. It constituted no new use. With regard to the matter of unfair competition, it does not appear that appellee had any trade built up on his form of reflector.

Nor does it appear that his reflector had any features which were distinctive, or that appellant could have given its reflectors any other or distinctive features without departing from the ordinary form of a reflector. No attempt is disclosed on appellant’s part to imitate appellee’s device for the purpose of securing trade. The form used may well have been incident to the use of tire cast metal reflector. We are unable to see what bearing appellant’s undertaking to manufacture reflectors for appellee has upon the question of unfair competition.

For these reasons, the decree of the District Court is reversed with direction to dismiss'the bill for want of equity.