Respondent's patent covering a water flush system to remove cow
manure from the floor of a dairy barn held invalid for obviousness,
it being a combination patent all the elements of which are old in
the dairy business and were well known before the filing of the
patent application. The system's exploitation of the principle of
gravity to effect the abrupt release of water "did not produce a
new or different function' . . . within the test of validity of
combination patents." Anderson's Black Rock v. Pavement
Co., 396 U. S. 57,
396 U. S. 60.
Pp. 425 U. S.
274-283.
512 F.2d 141, reversed.
BRENNAN, J., delivered the opinion for a unanimous Court.
MR. JUSTICE BRENNAN delivered the opinion of the Court.
Respondent Ag Pro, Inc., filed this action against petitioner
Sakraida on October 8, 1968, in the District Court for the Western
District of Texas for infringement of United States Letters Patent
3,223,070, entitled "Dairy
Page 425 U. S. 274
Establishment," covering a water flush system to remove cow
manure from the floor of a dairy barn. The patent was issued
December 14, 1965, to Gribble and Bennett, who later assigned it to
respondent.
The District Court's initial grant of summary judgment for
petitioner was reversed by the Court of Appeals for the Fifth
Circuit. 437 F.2d 99 (1971). After a trial on remand, the District
Court again entered a judgment for petitioner. The District Court
held that the patent
"does not constitute invention, is not patentable, and is not a
valid patent, it being a combination patent, all of the elements of
which are old in the dairy business, long prior to 1963, and the
combination of them as described in the said patent being neither
new nor meeting the test of non-obviousness."
The Court of Appeals again reversed and held the patent valid.
474 F.2d 167 (1973). On rehearing, the court remanded "with
directions to enter a judgment holding the patent valid, subject,
however, to . . consideration of a motion under Rule 60(b)(2),
F.R.Civ.P., to be filed in the District Court by the [petitioner]
Sakraida on the issue of patent validity based on newly discovered
evidence." 481 F.2d 668, 669 (1973). The District Court granted the
motion and ordered a new trial. The Court of Appeals again
reversed, holding that the grant of the motion was error, because
"the record on the motion establishes that [petitioner] failed to
exercise due diligence to discover the new evidence prior to entry
of the former judgment." 512 F.2d 141, 142 (1975). The Court of
Appeals further held that "[o]ur prior determination of patent
validity is reaffirmed."
Id. at 144. We granted
certiorari. 423 U.S. 891 (1975). We hold that the Court of Appeals
erred in holding the patent valid and also in reaffirming its
determination of patent validity. We therefore reverse and direct
the reinstatement of the District
Page 425 U. S. 275
Court's judgment for petitioner, and thus we have no occasion to
decide whether the Court of Appeals properly found that petitioner
had not established a case for a new trial under Rule 60(b)(2).
Systems using flowing water to clean animal wastes from barn
floors have been familiar on dairy farms since ancient times.
[
Footnote 1] The District Court
found, and respondent concedes, that none of the 13 elements of the
Dairy Establishment combination is new, [
Footnote 2] and many of those
Page 425 U. S. 276
elements, including storage of the water in tanks or pools,
appear in at least six prior patented systems. [
Footnote 3] The prior art involved spot delivery
of water from tanks or pools
Page 425 U. S. 277
to the barn floor by means of high pressure hoses or pipes. That
system required supplemental hand labor, using tractor blades,
shovels, and brooms, and cleaning by these methods took several
hours. The only claimed inventive feature of the Dairy
Establishment combination of old elements is the provision for
abrupt release of the water from the tanks or pools directly onto
the barn floor, which causes the flow of a sheet of water that
washes all animal waste into drains within minutes and requires no
supplemental hand labor. As an expert witness for respondent
testified concerning the effect of Dairy Establishment's
combination:
"[W]ater at the bottom has more friction than this water on the
top, and it keeps moving ahead, and as this water keeps moving
ahead, we get a rolling action of this water which produced the
cleaning action. . . . You do not get this in a hose. . . .
[U]nless that water is continuously directed toward the cleaning
area, the cleaning action almost ceases instantaneously. . . .
[
Footnote 4] "
Page 425 U. S. 278
The District Court found that
"[n]either the tank which holds the water nor the means of
releasing the water quickly is new, but embrace[s] tanks and doors
which have long been known,"
and further that
"their use in this connection is one that is obvious, and the
patent in that respect is lacking in novelty. The patent does not
meet the non-obvious requirements of the law."
The District Court therefore held that Dairy Establishment "may
be relevant to commercial success, but not to invention," because
the combination "was reasonably obvious to one with ordinary skill
in the art." Moreover, even if the combination filled a "long-felt
want and . . . has enjoyed commercial success, those matters,
without invention, will not make patentability." Finally, the
District Court concluded:
"[T]o those skilled in the art, the use of the old elements in
combination was not an invention by the obvious-nonobvious
standard. Even
Page 425 U. S. 279
though the dairy barn in question attains the posture of a
successful venture, more than that is needed for invention.
[
Footnote 5]"
The Court of Appeals disagreed with the District Court's
conclusion on the crucial issue of obviousness.
It has long been clear that the Constitution requires that there
be some "invention" to be entitled to patent protection.
Dann
v. Johnston, ante p.
425 U. S. 219. As
we explained in
Hotchkiss v.
Greenwood, 11 How. 248,
52 U. S. 267
(1851):
"[U]nless more ingenuity and skill . . . were required . . .
than were possessed by an ordinary mechanic acquainted with the
business, there was an absence of that degree of skill and
ingenuity which constitute essential elements of every invention.
In other words, the improvement is the work of the skillful
mechanic, not that of the inventor."
This standard was enacted in 1952 by Congress in 35 U.S.C.
§ 103
"as a codification of judicial precedents . . . with
congressional directions that inquiries into the obviousness of the
subject matter sought to be patented are a prerequisite to
patentability."
Graham v. John Deere Co., 383 U. S.
1,
383 U. S. 17
(1966). Section 103 provides:
"A patent may not be obtained though the invention is not
identically disclosed or described as set forth in section 102 of
this title, if the differences between the subject matter sought to
be patented and the prior art are such that the subject matter as a
whole would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject
matter pertains. Patentability shall not be negatived by the manner
in which the invention was made. "
Page 425 U. S. 280
The ultimate test of patent validity is one of law,
Great A.
& P. Tea Co. v. Supermarket Corp., 340 U.
S. 147,
340 U. S. 155
(1950), but resolution of the obviousness issue necessarily entails
several basic factual inquiries,
Graham v. John Deere Co.,
supra at
383 U. S. 17.
"Under § 103, the scope and content of the prior art are to
be determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved."
Ibid.
The Court of Appeals concluded that "the facts presented at
trial clearly do not support [the District Court's] finding of
obviousness under the three-pronged Graham test. . . ." 474 F.2d at
172. We disagree, and hold that the Court of Appeals erroneously
set aside the District Court's findings.
The scope of the prior art was shown by prior patents, prior art
publications, affidavits of people having knowledge of prior flush
systems analogous to respondent's, and the testimony of a dairy
operator with 22 years of experience who described flush systems he
had seen on visits to dairy farms throughout the country. Our
independent examination of that evidence persuades us of its
sufficiency to support the District Court's finding
"as a fact that each and all of the component parts of this
patent . . . were old and well known throughout the dairy industry
long prior to the date of the filing of the application for the
Gribble patent. . . . What Mr. Gribble referred to . . . as the
essence of the patent, to-wit, the manure flush system, was old,
various means for flushing manure from dairy barns having been used
long before the filing of the application. . . . [
Footnote 6]"
Indeed,
Page 425 U. S. 281
respondent admitted at trial "that the patent is made up of a
combination of old elements," and "that all elements are
individually old. . . ." Accordingly, the District Court properly
followed our admonition in
Great A. & P. Tea Co. v.
Supermarket Corp., supra at
340 U. S.
152:
"Courts should scrutinize combination patent claims with a care
proportioned to the difficulty and improbability of finding
invention in an assembly of old elements. . . . A patent for a
combination which only unites old elements with no change in their
respective functions . . . obviously withdraws what already is
known into the field of its monopoly and diminishes the resources
available to skillful men. . . ."
The Court of Appeals recognized that the patent combined old
elements for applying water to a conventional sloped floor in a
dairy barn equipped with drains at the bottom of the slope and that
the purpose of the storage tank -- to accumulate a large volume of
water capable of being released in a cascade or surge -- was
equally conventional. 474 F.2d at 169. It concluded, however, that
the element lacking in the prior art was any evidence of an
arrangement of the old elements to effect the abrupt release of a
flow of water to wash animal wastes from the floor of a dairy barn.
Ibid. Therefore,
Page 425 U. S. 282
"although the [respondent's] flush system does not embrace a
complicated technical improvement, it does achieve a synergistic
result through a novel combination."
Id. at 173.
We cannot agree that the combination of these old elements to
produce an abrupt release of water directly on the barn floor from
storage tanks or pools can properly be characterized as
synergistic, that is, "result[ing] in an effect greater than the
sum of the several effects taken separately."
Anderson's-Black
Rock v. Pavement Co., 396 U. S. 57,
396 U. S. 61
(1969). Rather, this patent simply arranges old elements with each
performing the same function it had been known to perform, although
perhaps producing a more striking result than in previous
combinations. Such combinations are not patentable under standards
appropriate for a combination patent.
Great A. & P. Tea Co.
v. Supermarket Corp., supra; Anderson's-Black Rock v. Pavement Co.,
supra. Under those authorities, this assembly of old elements
that delivers water directly, rather than through pipes or hoses,
to the barn floor falls under the head of "the work of the skilful
mechanic, not that of the inventor."
Hotchkiss v.
Greenwood, 11 How. at
52 U. S. 267. Exploitation of the principle of gravity
adds nothing to the sum of useful knowledge where there is no
change in the respective functions of the elements of the
combination; this particular use of the assembly of old elements
would be obvious to any person skilled in the art of mechanical
application.
See Dann v. Johnston, ante at
425 U. S.
229-230.
Though doubtless a matter of great convenience, producing a
desired result in a cheaper and faster way, and enjoying commercial
success, Dairy Establishment "did not produce a
new or
different function' . . . within the test of validity of
combination patents." Anderson's Black Rock v. Pavement Co.,
supra at 396 U. S. 60.
These
Page 425 U. S. 283
desirable benefit "without invention will not make
patentability."
Great A. & P. Tea Co. v. Supermarket
Corp., 340 U.S. at
340 U. S. 153.
See Dann v. Johnston, ante at
425 U. S. 230
n. 4.
Reversed.
[
Footnote 1]
Among the labors of Hercules is the following:
"Heracles now set out to perform his fifth Labour, and this time
his task was to cleanse the stables of Augeas in a single day.
Augeas was a rich king of Elis, who had three thousand cattle. At
night, the cattle always stood in a great court surrounded with
walls, close to the king's palace, and as it was quite ten years
since the servants had cleaned it out, there was enough refuse in
the court to build up a high mountain. Heracles went to Augeas and
asked if he would give him the tenth part of his flocks if he
thoroughly cleansed his stables in a single day. The king looked
upon this as such an absolutely impossible feat that he would not
have minded promising his kingdom as a reward for it, so he laughed
and said, 'set to work, we shall not quarrel about the wages,' and
he further promised distinctly to give Heracles what he asked, and
this he did in the presence of Phyleus, his eldest son, who
happened to be there. The next morning Heracles set to work, but
even his strong arms would have failed to accomplish the task if
they had not been aided by his mother-wit. He compelled a mighty
torrent to work for him, but you would hardly guess how he did it.
First he opened great gates on two opposite sides of the court.,
and then he went to the stream, and when he had blocked up its
regular course with great stones, he conducted it to the court that
required to be cleansed, so that the water streamed in at one end
and streamed out at the other, carrying away all the dirt with it.
Before evening, the stream had done its work and was restored to
its usual course."
C. Witt, Classic Mythology 11120 (1883).
[
Footnote 2]
The District Court found as follows respecting Claims 1 and 3,
the only claims involved in the case:
"1. I find that the 'dairy establishment' as described in United
States Letters Patent 3,223,070 is composed of 13 separate items,
as follows:"
"(a) ' . . . a smooth, evenly contoured, paved surface forming a
floor providing a walking surface. . . .'"
"(b) ' . . . drain means for draining wash water from such floor
opening to the top of the floor.'"
"(c) ' . . . said smooth, evenly contoured surface which forms
such floor sloping toward said drain. . . .'"
"(d) ' . . . multiple rest areas with individual stalls for each
cow and with each of said stalls having a bottom which is also a
smooth pavement. . . .'"
"(e) ' . . . which is disposed at an elevation above the paved
surface forming the floor. . . .'"
"(f) ' . . . said stalls being dimensioned so that a cow can
comfortably stand or lie in the stall, but offal from the cow falls
outside the stall bottom and onto the floor providing the walking
surface in the barn. . . .'"
"(g) ' . . . said barn further including defined feeding areas
having feeding troughs. . . .'"
"(h) ' . . . a cow-holding area.'"
"(i) ' . . . a milking area.'"
"(j) ' . . . a transfer area all bottomed with the walking
surface forming said floor in the barn. . . .'"
"(k) ' . . . and floor washing means for washing the floor
providing the walking surface in the barn where said floor bottom,
said feeding, holding, milking and transfer areas operable to send
wash water flowing over the floor with such water washing any cow
offal thereon into the said drain means, said floor washing means
including means located over a region of said floor which is uphill
from said drain means constructed to collect water as a pool above
said floor and operable after such collection of water as a pool to
dispense the water as a sheet of water over said floor.'"
"(l) A tank on a mounting, so that it can be tilted, and the
water poured out to cascade on the floor to form a sheet."
"(m) A floor-washing means comprising a dam for damming or
collecting water as a pool directly on the floor, which such dam
abruptly openable to send water cascading as a sheet over the floor
towards the drain."
"2. I further find that each of the items above-described were
not new, but had been used in the dairy business prior to the time
the application for the said Gribble patent, made the subject of
this action, had been filed in the Patent Office of the United
States on November 5, 1963."
[
Footnote 3]
The District Court found:
"[M]any of the items going to make up Plaintiff's claim for a
patent were disclosed in prior patents, known respectively as the
McCormack patent, the Holz patent, the Ingraham patent, the
Kreutzer patent, the Bogert patent, and the Luks patent; and that
the statements of the Examiner's opinions refusing to issue a
patent are true as to all items there stated to be covered in prior
patents or publications."
[
Footnote 4]
This witness further testified:
"[W]ater has energy, and it can be used in many different ways.
In a hose, the energy is used by impact, under pressure, external
force that is applied to this pressure -- to this water, whereas
the water that comes down as a sheet or wall of water has built in
energy because of its elevation, and, as this water is released, it
does the same thing water does in a flooded stream. As this water
-- I will try to make this clear, and I hope I can, on the surface
of this pavement there are these piles of manure droppings. This
pavement is smooth and this water moves down over this manure. The
water at the bottom has more friction than this water on the top,
and it keeps moving ahead, and as this water keeps moving ahead, we
get a rolling action of this water which produced the cleaning
action. That is the key to this method of cleaning. You do not get
this in a hose. You do not get it in a gutter, as has been used in
the past. I might just mention a little bit about the hose. This
squirting water on a floor -- probably have done it on our own
sidewalks or walkways, and I just mention that, that, unless that
water is continuously directed towards the cleaning area the
cleaning action almost ceases instantaneously. Now the movie that
was shown earlier very dramatically illustrated that point. The
cleaning action -- as soon as the hoses moved to one side the
cleaning action ceased here and that is why this hose was moved
back and forth, to drive this stuff on down to where we want
it."
[
Footnote 5]
The court also concluded that,
"while the combination of old elements may have performed a
useful function, it added nothing to the nature and quality of
dairy barns theretofore used."
[
Footnote 6]
The court stated:
"I therefore find as a fact that each and all of the component
parts of this patent as listed under the applicant's claims set out
in said patent, were old and well known throughout the dairy
industry long prior to the date of the filing of the application
for the Gribble patent. I further find that what Mr. Gribble
referred to in his deposition as the essence of the patent, to-wit,
the manure flush system, was old, various means for flushing manure
from dairy barns having been used long before the filing of the
application for the Gribble patent, the general idea in that
connection being a hard surfaced sloping floor onto which the cows'
offal was dropped, and some system of introducing water in
sufficient quantities and force onto said floor to wash the offal
therefrom, with a ditch or drain to carry the offal so washed away
from the barn, either into a manure container or otherwise."