
    57 F. (2d) 365
    In re The Germantown Trust Co., Executor of the Estate of Charles E. Vawter, deceased
    (No. 3008)
    United States Court of Customs and Patent Appeals,
    April 11, 1932
    
      Penw'e, Davis, Marvin & Hdmonds (TV. B. Morton and Clarence M. Fisher of -counsel) for appellant.
    
      T. A. Hostetler (Howard S. Miller of counsel) for the Commissioner of Patents.
    [Oral argument March 18, 1032, by Mr. Morton ana Mr. Millerl
    Before Graham, Presiding Judge, and Bland, Hatfield, Garbett, and Lenkoot, Associate Judges
    
   Garrett, Judge,

delivered the opinion of the court:

This is an appeal from a decision of the Board of Appeals of the United States Patent Office affirming - a decision of the examiner refusing to allow claims 1 to 9, inclusive, of an application for patent -upon alleged improvements in fuel gages of the type used for indicating the quantity of fuel in the tank of a motor vehicle, the indicating instrument being remote front the tank.

All are combination claims. We quote 1 and 9:

1. In a fuel gage for automobiles, the combination of a pressure-responsive part adapted to be attached to the fuel tank, said part having a diaphragm positioned to be subjected to the hydrostatic xn-essure of the fuel in the tank, an electrical resistance adjacent said diaphragm, a contact member movable ■over said resistance to thereby vary the effective portion thereof and operative •connections between the diaphragm and said member, and an indicating part •adapted to be mounted on the dash of the vehicle, said indicating part indicating in terms of fuel quantity the variations in the resistance as effected by the movement of the diaphragm.
9. In a fuel gauge for automobiles, the combination of a pressure-sensitive part adapted to be connected to the fuel tank and an indicating part adapted to be mounted on the dash of the vehicle for indicating the variations in pressure occurring in the pressure-sensitive part, said indicating instrument comprising a pair of magnetic coils fixedly supported, in spaced relation, a circular armature supported for oscillation at a point between said coils and with the ppposite sides of said armature working in said coils respectively, and an indicating member actuated by the movement of said armature, said armature having the portions of its arms which work through said coils tapered but to different extents whereby the armature will assume different positions on variations in the relative values of the current flowing in the two coils, and a variable resistance forming part of said pressure-sensitive part in circuit with one of said coils.

The references cited are:

(British) McKinlay, 173071, December 23, 1921.
(British) Runbaken et al., 201411, August 2, 1923.
Oustodis, 543336, July 23, 1895.
Henderson, 1152730, September 5, 1915.
Angus, 1506552, August 26, 1924.
Winterhoff, 1591462, July 6, 1926.
Decker, 1657855, January 31, 1928.
Yawter, 1681314, August 21, 1928.

The case presents a somewhat uncommon issue. An has been stated, all the claims are for a combination. It was held by the tribunals of the Patent Office that the combination disclosed was. anticipated by the prior art cited, but it seems to be conceded that the pressure-sensitive rheostat and the specific electrical instrument employed by appellant are themselves novel.

The question presented, therefore, is whether a combination, in itself old as a combination, is rendered patentable as such by reason of its containing elements which as individual features are novel.

Appellant has cited no authority to sustain a contention that under such circumstances there is patentable invention, while the brief of the solicitor for the Patent Office directs attention to a number of cases in which the courts have held to the contrary.

In Langan v. Warren Axe & Tool Co., 184 Fed. 120, 1911 C. D. 490, there was involved the validity of a patent for a combination of grabhooks, employed in skidding logs, and a draft device.

The United States Circuit Court of Appeals of the Third Circuit, in holding the combination patent invalid, said:

Tbe grabhooks and draft appliance of the patent, in combination, coact as grabhooks and draft appliances have always done. The grabhook of the patent, by reason of its peculiar construction and form, is very probably an improvement of no little utility. But the patentee can not, merely because of that fact, have a patent for a combination which shall have, as one of its elements, a pair of such grabhooks. He did not invent the combination-He invented, if he invented anything, an improved grabhook.

The principle enunciated in the foregoing case has been applied by the Court of Appeals of the District of Columbia in a number of cases, such as In re McNeil, 20 App. D. C. 294, 1902 C. D. 563; In re Ratican, 36 App. D. C. 95, 1911 C. D. 267; In re Bliss, 39 App. D. C. 453, 1913 C. D. 325.

We discern no unsoundness in this principle. A combination to ■be patentable as such must disclose a novelty of cooperation between .its elements which produces a new result and amounts to invention, ■and the mere fact that some elements are themselves novel and possibly patentable as individual elements does not render the combination containing them patentable in the absence of such novel ■cooperative relation in the combination itself.

One of -the inferences cited against appellant was his own patent, .No. 1681314 of August 21, 1928, issued upon an application filed •January 8, 1921, and renewed January 13, 1928. This shows and •claims the combination of pressure-sensitive resistance means with an electrical measuring instrument connected in circuit therewith, ■these features or elements being of a somewhat different character from those- composing a part of the combination here claimed.

Appellant insists, however, that said patent is not a proper reference because not issued until subsequent to the filing of the application here involved. He further insists that all the other references, ■except Henderson and Custodis, should be disregarded because, with the exception of those two, all of them were issued after the date of January 8, 1921, when he filed the application which resulted m his patent referred to.

These contentions do not appear to us to be well taken, because the involved application, as stated by the solicitor for the Patent Office, “ is neither division, continuation, nor continuation in part ” ■of said application of January 8, 1921, but is a wholly new and independent application. However, as conceded by the solicitor—

Appellant’s own patent is, of course, pertinent only to the extent of its •claims, as showing wliat subject matter has already been patented to .appellant.

The Decker patent claims relate to an indicating instrument and the method of making same, and in one of the drawings discloses an adjustable rheostat. The application for this patent was filed October 7, 1925, and patent issued January 31,1928. It appears to be a proper reference for the purpose cited, under the ruling of this court in In re Smith, 17 C. C. P. A. (Patents) 752, 36 F. (2d) 522.

Each of the other patents referred to was issued before the filing -date of the involved application.

It is not deemed essential to enter into a discussion or description •of the technical features of the case. That will be found in the decisions of the tribunals of the Patent Office.

We find no errors of fact or law in the said decisions, and that of the Board of Appeals is affirmed.  