Appeal from the District Court of the United States for the Eastern Division of the Northern District of Illinois; Walter C. Lindley, Judge.
Before ALSCHULER, EVANS, and SPARKS, Circuit Judges.
Appeal No. 4646. Two questions are involved on this appeal: (a) The validity and noninfringement of appellant's Ramsey patent and (b) the validity and infringement of claims 5 and 6 of the Cousino patent.
Validity of the Ramsey patent must be determined in the light of a crowded and highly developed prior art which showed many dirigible search lights for marine purposes. These lamps when used on boats were generally located on the top of the pilot house and operated from within. All of the adjustable features of the lamp in suit are disclosed in this prior art. They displayed an adjustability highly perfected. This mechanism which produced such splendid results is so alluring that it is difficult to eliminate the means for securing it as a factor in determining the validity of this patent. But the cold fact remains that the prior art concededly showed dirigible lamps with the means and mechanism whereby this desired result was obtained. Counsel for appellant, with commendable frankness, conceded on oral argument that the sole basis for patentable novelty in the Ramsey patent lay in the specific type devised by him for locating the lamp and the means for its operation by one sitting at a wheel in an automobile. In the face of this concession, which goes no further than the record necessitated, we hardly believe it advisable to here reproduce the drawings or quote from the specifications of this patent to show that in it the inventor disclosed but one distinguishing novelty -- the means whereby the lamp was placed laterally to the tube by which it was operated. That is to say, he offset the handle and the lamp. He mounted the lamp on one side of the housing, "i.e., tangent to the tube instead of in line with the tube to get the far simpler and neater arrangement which it provides as compared to the forked bracket commonly employed in a lamp before his time." The difference is well illustrated by an examination of the Hill patent and the Ramsey lamp.
We are not disposed to lightly reject a claim to invention because of the shortness of the step which measures the advance, provided other facts are present to support the inventor's claim to invention. However, it seems to us that in the case at bar Ramsey merely met the problem which confronted one who was required to attach a dirigible lamp formerly used upon a boat to its new use on an automobile. It was the same lamp, and its adjustability was accomplished by the same means as had heretofore been used in the marine service and elsewhere. Ramsey connected the various elements in the old dirigible lamp so that one sitting at an automobile wheel, with limited opportunity to move about, could operate the lamp located outside the car. The offset of a lamp and the elimination of the brackets accomplished this result.
The commercial success asserted by appellant to support its case cannot be accepted at its asserted value. For the tremendous growth in the number of automobiles led to an unprecedented development of accessories in the automobile industry. The changes in the construction of the cars led to the sudden development and to almost as sudden a disappearance of many accessories. Their claim to asserted patentable novelty could not be truly tested by their sudden popularity any more than their disappearance evidenced a lack of merit. In the present case, for example, it is fair to assume that the sudden and tremendous increase in closed cars over open cars accounts for the disappearance of one kind of spotlight lamp and the appearance of the other, although each might have evidenced inventive genius in its making. We have not, however, ignored this evidence of extensive use. Without discussing the Ramsey patent further, we content ourselves with stating our conclusion, to wit: Claims 4 and 7 sued upon are invalid in view of the prior art.
Cousino patent, No. 1,327,945. This patent covered a "spotlight mounting device" and was issued January 13, 1920, upon an application filed February 14, 1919. In his application, Cousino said:
"This invention relates to controllable mountings, especially for searchlights or spotlights.
This invention has utility when incorporated in connection with spotlights for motor vehicles, more particularly for wide range of control from within the car."
He presented "Fig. 1," herewith reproduced, as an illustration of the lamp when applied to an open car. In his specifications, he further says: "For directing the beam of the spotlight upward or downward the hand wheel 24 may be rocked to rock the bracket or housing 15 and with it the second tubular member 14 within its frictional guide 12. This transmits a rocking movement to the outer bracket or housing 16 and thus rocks the spotlight 27."