United States District Court, Eastern District of Illinois
May 17, 1960
LEWIS E. HAMEL CO., INC., PLAINTIFF,
P & K, INCORPORATED, DEFENDANT.
The opinion of the court was delivered by: Platt, Chief Judge.
Plaintiff, Lewis E. Hamel Co., instituted this action against
the defendant, P & K, Incorporated, alleging infringement of
Patent No. 2,493,344, hereafter referred to as 344, and Design
Patent No. 158,958, hereafter referred to as 958. Plaintiff
dismissed, with prejudice, the allegations in the complaint
alleging unfair competition. Both patents pertain to a plastic
fishhook and snell holder and were issued to Lewis E. Hamel, the
inventor, and assigned by him to the plaintiff.
In patent 344 the application was filed July 12, 1949, and
issued January 3, 1950. The Design Patent No. 958 issued June 13,
1950, upon an application filed July 12, 1949.
The defendant contends:
(1) That both patents are invalid because:
(a) They do not rise to the status of invention in view of the
prior art. 35 U.S.C.A. §§ 102(b), 171.*fn1
(b) The difference between the plaintiff's mechanical and
design patents and the prior art are such that the subject matter
as a whole would have been obvious to one having ordinary skill
in the art. 35 U.S.C.A. §§ 103, 171.
(2) That claims 1, 2, 6, and 7 are broader than the invention
described in the specifications which include the air chambers as
an essential element.
(3) That the accused device does not infringe plaintiff's
Claim one of patent 344 reads as follows: "1. A fishhook and
snell holder comprising a housing consisting of two sections of
plastic material permanently secured together, each of said
sections having a channeled cross-section with slots at one end
to receive spring-actuated retainers and a plurality of series of
transversely arranged hook-receiving openings at the other end."
Claim 2 adds longitudinal grooves in the outer surface of the
housing which receive the snell and ridges between these grooves
extending somewhat above the snells when the latter are in
position. Claim 3 adds a sealed air chamber at the center of the
housing formed when the two sections of the plastic material are
permanently secured together. Claims 4 and 5 add no new element.
Claims 6 and 7 add a spring-actuated retainer component which
consists of slots at one end of each of the two main housing
sections to receive spring-actuated retainers, these sections
having curved grooves in their inner surfaces adjacent to the
slots with springs and spring-actuated retainers seated and
moveable in the grooves and spring guiding plate arranged between
the sections having curved grooves in its opposite surfaces
positioning the springs and retainers. Claims 8 and 9 add no new
element but combine all the elements described in the prior
The plaintiff maintains that all claims are valid and establish
infringement of his fishhook and snell holder.*fn2 The claims
are comprised of the following elements:
(1) A housing made of plastic.
(2) "[A] housing * * * of two sections * * *
permanently secured together, each * * * section
having a channeled cross-section."
(3) "[A] plurality of series of transversely
arranged hook-receiving openings" at one end.
(4) "[S]lots at the [opposite] end to receive
(5) "Springs and spring-actuated retainers seated
and moveable in a cylindrical shaped space formed by
grooves in the inner surfaces of the housing sections
and grooves in the spring-guiding plate which is
positioned between the housing sections."
(6) "[S]aid sections having grooves in their outer
surfaces extending endwise thereof to receive the
snells, and ridges between said grooves extending
somewhat above portions of the snells when the latter
are positioned on the holder."
(7) The housing "sections having inwardly extending
transverse partitions contacting and permanently
attached to each other forming a sealed air chamber
at the center of the housing."
The Niagra holder and the Wilcox holder were admitted in
evidence, without objection, as prior art under section 102(b).
The Niagra holder was manufactured under Buicke patent No.
2,190,647, issued February 20, 1940. The patentee, Mr. Hamel,
testified that he had knowledge of the Niagra holder at the time
he made his first model. The Wilcox holder appears in Wilcox
patent No. 2,624,973, which issued January 13, 1953. The Wilcox
patent did not issue at least one year prior to Hamel's
application filed July 12, 1949, but a Wilcox holder was in
public use one year prior thereto. Wilcox was a manufacturer of
plastic articles. He and two of his associates constructed the
snell holder, which was of plastic material, in February or
March, 1948. They completed the final model shortly before May
1948. Wilcox and his wife used this holder on several fishing
trips in Colorado, where they resided, starting in the middle of
May, 1948. Wilcox testified to these facts in his deposition, and
he was corroborated on the use of the holder by Mrs. Wilcox in
her deposition. The proof of prior use of the Wilcox holder was
not contradicted and was sufficiently clear to establish the
public use. Whiteman v. Mathews, 9 Cir., 1954, 216 F.2d 712. In
its argument plaintiff maintains that the Niagra and Wilcox
holders were not an anticipation of Hamel's holder. They were not
introduced in the record for that purpose but only as prior art.
They were in use one year prior to Hamel's application date and
contained some of the elements described in Hamel's patents and
must be considered as prior art. Whiteman v. Mathews, supra. See
Watson v. Allen, 1958, 103 U.S.App.D.C. 5, 254 F.2d 342; General
Motors Corp. v. Estate Stove Co., 6 Cir., 1953, 203 F.2d 912,
Plaintiff seeks to distinguish 344 from the prior art by the
fact that it is made of plastic housing. The Wilcox holder was
also made of plastic. Substituting plastic material for metal or
any other material which was used in the prior art does not
amount to a patentable invention. Bobertz v. General Motors
Corporation, 6 Cir., 1955, 228 F.2d 94; Associated Plastics
Companies v. Gits Molding Corp., 7 Cir., 1950, 182 F.2d 1000;
Electro Mfg. Co. v. Yellin, 7 Cir., 1943, 132 F.2d 979; Evr-Klean
Seat Pad Co. v. Firestone Tire & Rubber Co., 8 Cir., 1941,
118 F.2d 600.
The other elements of 344 were old in the art. Figure 6 of the
Gardner fishhook holder, Patent No. 1,451,256, issued April 10,
1923, shows a housing of one piece similar to one section of 344.
If two Gardner housings were fastened back to back the result
would be a housing of two sections permanently secured together,
having a channeled cross-section. The Niagra holder has two
sections at either end fastened together by a piece of fiber
material and utilizes both sides of the holder. The duplication
of an old part does not in itself make a device patentable. In re
Abrahamsen, 1931, 53 F.2d 893, 19 CCPA 702. Furthermore, "[a]
mere carrying forward of a known principal, or change in form,
size, proportions or degree, or doing the same thing in the same
way by substantially the same means, with better results, is not
in itself invention." Solar Corporation v. Borg-Warner
Corporation, 7 Cir., 1957, 244 F.2d 940; Tropic-Aire, Inc. v.
Cullen-Thompson Motor Co., 10 Cir., 1939, 107 F.2d 671, 674. The
third element is also found in the Gardner patent which has "a
plurality of series of transversely arranged hook-receiving
openings" at one end. (See upper portion of fig. 5, Gardner.)
Clearly this element is also found in the Niagra holder. "Slots
at the [opposite] end to receiving spring operated retainers" are
utilized in both Niagra and Gardner. The fifth element, "springs
and spring-actuated retainers seated and moveable in a
cylindrical shaped space formed by grooves in the inner surface
of the housing section and grooves in the spring-guiding plate *
* *" were used in Niagra. The sections having grooves in the
outer surface extending lengthwise thereof to receive the snells
as in the sixth element are taught in Cantrell patent No.
667,676, issued in 1901, DeWitt patent No. 2,102,682 issued in
1937, and in the Wilcox holder.
This brings forward the last element in 344, the sealed air
chamber. The purpose of this element was to cause the holder to
float if it was accidentally dropped in the water. Plastic bath
toys with sealed air chambers were in common use by children for
many years prior to 1947. The floating air chamber was likewise
used in fishing poles, lures, bobbers, and minnow buckets. The
use of air chambers in this type of equipment, although all were
not disclosed by the evidence, has been so common that this court
is justified in taking judicial notice of it. Black Diamond
Coal-Mining Co. v. Excelsior Coal Co., 1895, 156 U.S. 611, 15 S.
Ct. 482, 39 L.Ed. 553. The court is of the opinion that 344 is an
aggregation of old
elements clearly shown in the prior art and perform no new
function separately or together in the Hamel holder, and the
patent is therefore invalid. Great Atlantic & Pacific Tea Co. v.
Supermarket Equipment Corp., 1950, 340 U.S. 147, 71 S.Ct. 127, 95
Moreover, in view of teachings shown by the prior art, Hamel's
holder lacks invention because he accomplished nothing more than
would have been obvious to a mechanic having ordinary skill in
the art. 35 U.S.C.A. § 103; Sinclair & Carroll Co. v.
Interchemical Corp., 325 U.S. 327, 330, 65 S.Ct. 1143, 89 L.Ed.
1644; Noble Co. v. C.S. Johnson Company, infra.
The plaintiff contends that the defendant failed to overcome
the presumption of validity. The patents which have been used as
prior art by this court were not cited as references by the
Patent Office and this greatly weakens the presumption of
validity if it does not destroy it. Cornell v. Adams Engineering
Company, 5 Cir., 1958, 258 F.2d 874; Noble Co. v. C.S. Johnson
Company, D.C.E.D.Ill. 1956, 139 F. Supp. 868, affirmed 7 Cir.,
1957, 241 F.2d 469. In the instant case the defendant has
overcome the presumption of validity.
Plaintiff's design patent 958 claims the "ornamental design for
a fishhook and snell holder as shown." The drawings, figs. 1, 2,
3, and 4 are identical, except for shadings, as figs. 1, 2, 3,
and 4 of the mechanical patent. The prior art cited against the
mechanical patent is also prior art in considering the validity
of the design patent. In re Hoffmann, 1934, 68 F.2d 978, 21 CCPA
924. The design patent is required to be product of invention the
same as a mechanical patent. 35 U.S.C.A. § 171; Burgess
Vibrocrafters, Inc., v. Atkins Industries, Inc., 7 Cir., 1953,
204 F.2d 311; Spaulding v. Guardian Light Company, 7 Cir., 1959,
267 F.2d 111. Various patents may be combined to show the lack of
originality in the artistic appeal of a design patent. Blisscraft
of Hollywood v. Rona Plastic Corp., D.C.S.D.N.Y. 1954,
123 F. Supp. 552, affirmed 2 Cir., 1955, 219 F.2d 238; Application of
Glavas, 1956, 230 F.2d 447, 43 CCPA 797.
Hamel's design patent when compared with the prior art does not
rise to the level of invention. An examination of the Niagra and
Wilcox models, the drawing in the Buicke patent and Gardner fig.
5 are all rectangular in shape the same as fig. 1 in 958. The
parallel grooves which are shaded in the design patent in fig. 1
appear in Cantrell fig. 1, DeWitt et al. fig. 1, and obviously
Wilcox. The spring-actuated retainers at one end, the
hook-receiving openings at the opposite end appear in Niagra.
Figure 2 of 958 shows a side view with the hook to catch the loop
end of the snell. Niagra from a side view gives a similar
appearance. There is nothing particularly ornamental about the
line down the center of this longitudinal side view. It is
obvious that when two Gardner housings in fig. 6 are placed back
to back, and 17(b) of fig. 6 is extended to meet each end of the
flange there would be a similar appearance. Figure 3 of 958 is an
end elevation from left to right of fig. 1, and is similar in
appearance to Niagra held in the same manner. One-half of fig. 3
of 958 resembles fig. 7 in Gardner. Figure 4 looking at an end
view on the right of fig. 1 appears similar to Niagra. These
references were not cited in the patent. The presumption of
validity is weakened by the absence of these references. Scripto,
Inc. v. Ferber Corporation, D.C.S.D.N.J. 1958, 163 F. Supp. 113,
affirmed 3 Cir., 267 F.2d 308. Every drawing in Hamel's patent
958 when considered with the teachings of the prior art, would
have been obvious to the ordinary designer skilled in the art,
and therefore design patent 958 lacks patentability. Burgess
Vibrocrafters, Inc. v. Atkins Industries, Inc., supra.
Although Hamel claims the design for a fishhook holder in 958
the appearance is dictated by the mechanical and functional
requirements of his mechanical patent 344, and is therefore
invalid. Hopkins v. Waco Products, Inc., 7 Cir., 1953,
205 F.2d 221. The design is rectangular to accommodate the hooks and
snells. The length is required by the length of the snell. The
slots which appear at one end accommodate the hooks. The loops
on the snell catch in the hooks as they appear on the other end.
Thus, the snells with the hooks attached may be carried in a
stretched position. The fisherman will not catch his hand or
garments in the hooks, which was one of the purposes of the
holder in the mechanical patent as shown in 344. Col. 1, line 51
et seq. The appearance is not ornamental but is entirely governed
by the use for which it was intended.
Since there is no doubt as to the invalidity of the mechanical
and design patents commercial success need not be considered.
Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp.,
supra; Burgess Vibrocrafters, Inc. v. Atkins Industries, Inc.,
The court does not reach the question of infringement because
neither of plaintiff's patents is valid. Master Metal Strip
Service v. Protex Weatherstrip Mfg. Co., 7 Cir., 1948,
169 F.2d 700, certiorari denied 335 U.S. 898, 69 S.Ct. 299, 93 L.Ed. 433.
For the reasons stated the plaintiff's suit must be dismissed.
Findings of fact, conclusions of law and final order in
accordance with the views expressed herein will be entered.