Lightning Fastener Co. Ltd. v. Colonial Fastener Co. Ltd et al., [1933] SCR 371

Supreme Court of Canada

Lightning Fastener Co. Ltd. v. Colonial Fastener Co. Ltd et al., [1933] S.C.R. 371

Date: 1933-04-25.

Lightning Fastener Company, Limited (Plaintiff) Appellant;

and

Colonial Fastener Company, Limited, and G. E. Prentice Manufacturing Company (Defendants) Respondents.

1932: December 15, 16; 1933: April 25.

Present: Rinfret, Lamont, Smith and Crocket JJ., and Latchford C.J. (Supreme Court of Ontario) ad hoc.

ON APPEAL FROM THE EXCHEQUER COURT OF CANADA (Suit No. 13298)

Patent—Validity—New combination of old elements—Usefulness—Advantages not produced before—Requirement of inventive step.

A new combination of old elements is not a patentable invention simply because it is useful and possesses advantages not produced before.

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The patent in question was held invalid because the improvement for which it was granted did not, having regard to the prior state of knowledge, require such exercise of the inventive faculty as would justify the granting of a monopoly.

APPEAL by the plaintiff from the judgment of Maclean J., President of the Exchequer Court of Canada, dismissing its action for alleged infringement of patent, on the ground that the device described in the patent did not call for sufficient skill or ingenuity to constitute a patentable invention. The appeal to this Court was dismissed with costs.

O. M. Biggar, K.C., R. S. Smart, K.C., and H. G. Fox for the appellant.

D. L. McCarthy, K.C., A. Geoffrion, K.C., and S. A. Hayden for the respondents.

The judgment of the Court was delivered by

Einfret, J.—The appellant brought this action for infringement of Canadian letters patent No. 246727 applied for in the month of May, 1924, and granted on the 10th February, 1925. The action was dismissed by the Exchequer Court of Canada on the ground that the device therein described did not call for sufficient skill or ingenuity to constitute a patentable invention.

The invention relates to a particular type of slider for the now well known separable slide fasteners.

The earliest slide fasteners were of what was called the “tear” type. In these, the slider had a pull only at one end. It was adapted solely to close the fastener, which was opened by pulling apart the stringers on which the fastening elements were mounted, that is: “by tearing the two sides apart like you tear a piece of paper.” Fasteners of that type were open to a great many objections, of which the chief was that they were not adapted for use on articles where the aperture is permanently closed at each end, such as a purse, a tobacco pouch or any kind of a bag. There was no practical way of operating them on the class of articles which call for such openings and which are probably more numerous than the class of articles where the opening is permanently fixed only at one end. There were “other deficiencies, such as weakness in holding the wings against spreading.”

These difficulties were met, in 1916, by the use of a slider with a stiffening yoke running from one end to the other of

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the slider and to which a travelling pull or tab was attached, so that when the slider was being opened the pull would operate from one end of the yoke, while to close it the same pull would operate from the other end. A patent disclosing that type of slider was applied for in the United States on June 20th, 1917, and issued on May 6th, 1919, while a corresponding Canadian patent issued March 18, 1919. This slider was on the market from the year 1916 to the year 1923. Mr. Sundback, the inventor, stated that, while it made a very considerable improvement, it did not permit of complete commercial success, because of the undue cost of its construction and its undue fragility. However, according to the evidence, that was the type of slider used in almost all fasteners until 1923, when it gradually went out of production. It was replaced by the slider covered by the patent in suit.

The specification describes the new slider as an improvement upon previous patents “wherein are shown sliders having the actuating means attached on an end thereof.” The specification goes on to say that

According to this invention, a rigid pull is pivoted at about the centre of the slider, and preferably transversely pivoted to the specially farmed head of the rivet which holds the wings together.

Such a construction is adapted to provide a smooth travel for the slider along the stringers; the actuating force applied at about the centre and above the plane of the stringers has an upward component thereof effective to raise the slider instead of raising only one end thereof, as is the case when the pull is attached at the end. This enables the slider to move more easily and smoothly when the actuating force is applied at a central point between the divergent channels. Another advantage accruing from the location of the pull in the centre is the provision of surfaces on either side of the pull, lengthwise of the slider, against which the operator’s fingers may be pressed to steady the movement of the slider and lessen chatter when the pull is held between the fingers, or more precisely the thumb and forefinger. This invention also comprises a rigid construction of few parts.

The specification then describes the several parts of the slider by reference to the drawings. It sets forth that the slider is formed from a metal blank having wing portions connected by a neck. The wing portions have inturned edges adapted to provide diverging channels through which the locking members pass. The rivet clamps the wing portions and prevents them from spreading. Before insertion of the rivet, the spacer portions are bent down and inserted between the wings to hold them a fixed distance apart when clamped by the rivet. The lower ends of each

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spacer are bent inwardly to form inner walls for the diverging channels. The rivet has a head on one side and a portion, on the opposite side, adapted to be bent down in clamping the wings. Within the rivet are guide grooves forming a wedge at the vertex of the diverging channel; and the grooves are rounded to provide the necessary clearance for the locking members and to serve as guides to the latter. The rivet head, as already mentioned, is preferably formed so that a rigid pull is pivoted to it at about the centre of the slider; but the head may be more elongated to permit of a travelling pull which applies the moving force at either end of the slider, according to the direction of the pull.

Admittedly the respondent’s slider resembles very closely the slider covered by the patent in suit. The rivet and the spacer walls are substantially the same. The only difference is that the rivet in the appellant’s slider has been bevelled off so as to make a sharp cutting edge for the dividing of the units and the walls or inturned edges are on one wing only in the respondent’s article, while they are on both wings of the appellant’s article. It was not seriously disputed that the respondent’s slider must be held to be an infringement of the slider covered by the patent, and that the appellant’s action must succeed unless the patent be adjudged invalid.

Further it may not be denied that the appellant’s slider was not to be found in the prior art in precisely the form in which it is described in the patent. To a certain extent, it was a new combination and the evidence establishes that it was useful. The learned trial judge found that it was lighter, smaller and neater and possibly more rigid than the earlier sliders, to which may be added that it was capable of being manufactured and sold cheaply. But the learned judge did not “think that these changes are sufficient to constitute subject-matter for a patent, whatever were the reasons for such structural changes.” The result of the appeal, therefore, turns upon the question whether the extent of the advance made over the previous patents showed an inventive step or disclosed an invention in the pertinent sense.

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In order to ascertain the advantages of the invention, it would seem to us that we will be completely fair to the appellant if we allow the specification to speak for itself:

Among the advantages of this invention may be enumerated its simplicity and rigidity of construction whereby the slider body and wings are stamped from a single sheet which also contains the spacer portions. The rivet clamps the wings against the spacers and also prevents spreading of the wings. The rivet is located between the spacers referred to and enables the pull device to be secured in substantially the central part of the slider. This invention provides a rigid slider of minimum overall thicknesses, wherein the pull will naturally lie flat below the top of the rivet. This permits the slider on washable articles to pass readily through a wringer without damage, and also does not provide objectionable projections on articles equipped with this slider. Securing the pull in about the centre of the slider permits a diagonal actuating force to have a component tending to lift the body of the slider instead of only an end thereof to produce smoother travel of the slider. Another feature contributing to smoother travel and resulting from the location of the pull device intermediate the end portions of the slider is the provision of the supporting surfaces on each side of the pull longitudinally of the slider whereby the thumb and finger of the operator may rest against these supporting surfaces to steady the travel of the slider and lessen the tendency to jerks and chatter in its movement. The elongated rivet head provides a very rigid construction for the slider and pull attachment and permits limited travel of the pull relatively to the centre of the slider, which will be desirable in large sliders for heavy work.

It will thus be seen that the slides of this invention comprises only three parts, the wings, neck, spacer and inturned edges being formed integral, the rivet holding these parts in fixed position and near the centre of the slider whereby any tendency of the diverging channels to spread is reduced to a minimum and the attachment of the pull device to the rivet head completes the slider.

This slider is especially adapted for fasteners attached to purses, bags, tobacco pouches, garments, and others, and is in short applicable to any fastener where it is convenient to hold the pull in such manner that the slider is supported by the fingers to retain its position parallel with the interlocking plane of the fastener. The transverse pivotal attachment of the pull facilitates travel of the slider around corner.

The advantages emphasized in the description just quoted are: the slider body (wings, neck and spacers) stamped from a single sheet, the rivet acting as a clamping piece and an anti-spreader, and the attachment of the pull device to the rivet head. Some insistence is made upon “securing the pull in about the centre of the slider”; but this is not given as a characteristic of the invention, since the specification alternatively refers to an “elongated rivet head “providing for a travelling pull. In fact, claim number

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6 selected by the appellant as succinctly stating the combination is in the following terms:

A slider comprising wings having inturned edges forming diverging channels, a clamping rivet passing through said wings between the channels, and a pull device pivoted to said rivet.

Now, all the features claimed herein were old. Sliders comprising wings having inturned edges forming diverging channels, pull devices on various parts of the front of the slider including the centre; and rivets connecting wings were all disclosed in the prior art. In fact, the patent in suit is practically a combination of Sundback’s earlier United States patents Nos. 1219881 and 1302606 with a variation in the location of the rivet in the former and the addition of the rivet head as a hitching post for the pull piece.

No doubt in almost every patent for mechanical combination the elements are old. But merely putting two things together is not a combination patentable in law. The resulting article may be new in a sense and it may be useful, but the combination is not an invention simply because it possesses advantages not produced before (See dictum of Lord Halsbury in Morgan v. Windover & Co,[1]; and Harwood v. Great Northern Ry. Co.[2]; Riekmann v. Thierry[3]).

We do not say that there was no merit in the new combination, but we do not think it was a combination to support a patent, because there was no real step by way of invention within the meaning of the patent law (Wood v. Raphael[4]).

Having regard to the state of knowledge at the time of the application, we agree with the learned President of the Exchequer Court that the improvement did not require such exercise of the inventive faculty as would justify the granting of a monopoly. (Durable Electric Appliance Co. Ltd. v. Renfrew Electric Products Ltd.[5]; Atlantic Works v. Brady[6]). With the sliders already known to the art lying before them, Sundback and Prentice working independently, as the evidence shows, each produced the new article almost at the same time. In both cases, the result

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was brought about by the exercise of mechanical skill. It is not the object of the Patent Act to dignify by the name of invention every slight advance in the domain of mechanism.

The judgment of the Exchequer Court ought to be confirmed and the appeal should be dismissed with costs.

Appeal dismissed with costs.

Solicitor for the appellant: Harold G. Fox.

Solicitors for the respondents: McCarthy & McCarthy.