Claims 4, 5 and 6 of the Turnham patent No. 2,242,408, for a
cashier's counter and movable frame for "cash and carry" grocery
invalid for want of invention. Pp.
340 U. S.
(a) The extension of the counter alone was not sufficient to
sustain the patent, unless, together with the other old elements,
it made up a new combination patentable as such. Pp. 340 U. S.
(b) The mere combination of a number of old parts or elements
which, in combination, perform or produce no new or different
function or operation than that theretofore performed or produced
by them, is not patentable invention. P. 340 U. S.
(c) This patentee has added nothing to the total stock of
knowledge, but has merely brought together segments of prior art
and claims them in congregation as a monopoly. P. 340 U. S.
(d) Commercial success, without invention, does not make
patentability. P. 340 U. S.
(e) The concurrence of the two courts below in holding the
patent claims valid does not preclude this Court from overruling
them where, as in this case, a standard of invention appears to
have been used that is less exacting than that required where a
combination is made up entirely of old components. Pp. 340 U. S.
179 F.2d 636 reversed.
The District Court sustained the validity of certain patent
claims. 78 F. Supp.
. The Court of Appeals affirmed. 179 F.2d 636. This Court
granted certiorari. 339 U.S. 947. Reversed,
340 U. S.
Page 340 U. S. 148
MR. JUSTICE JACKSON delivered the opinion of the Court.
Two courts below have concurred in holding three patent claims
to be valid, [Footnote 1
it is stipulated that, if valid, they have been infringed. The
issue for the resolution of which we granted certiorari [Footnote 2
] is whether they applied
correct criteria of invention. We hold that they have not, and
that, by standards appropriate for a combination patent, these
claims are invalid.
Page 340 U. S. 149
Stated without artifice, the claims assert invention of a
cashier's counter equipped with a three-sided frame, or rack, with
no top or bottom, which, which pushed or pulled, will move
groceries deposited within it by a customer to the checking clerk
and leave them there when it is pushed back to repeat the
operation. It is kept on the counter by guides. That the resultant
device works as claimed, speeds the customer on his way, reduces
checking costs for the merchant, has been widely adopted and
successfully used, appear beyond dispute.
The District Court explicitly found that each element in this
device was known to prior art. "However," it found,
"the conception of a counter with an extension to receive a
bottomless self-unloading tray with which to push the contents of
the tray in front of the cashier was a decidedly novel feature, and
constitutes a new and useful combination. [Footnote 3
The Court of Appeals regarded this finding of invention as one
of fact, sustained by substantial evidence, and affirmed it as not
clearly erroneous. It identified no other new or different element
to constitute invention, and overcame its doubts by consideration
of the need for some such device and evidence of commercial success
of this one.
Since the courts below perceived invention only in an extension
of the counter, we must first determine whether they were right in
so doing. We think not. In the first place, the extension is not
mentioned in the claims, except, perhaps, by a construction too
strained to be consistent with the clarity required by claims which
define the boundaries of a patent monopoly. 38 Stat. 958, 35 U.S.C.
§ 33; United Carbon Co. v. Binney & Smith Co.,
317 U. S. 228
General Electric Co. v.
Wabash Appliance Corp.,
Page 340 U. S. 150
U.S. 364. In the second place, were we to treat the extension as
adequately disclosed, it would not amount to an invention. We need
not go so far as to say that invention never can reside in mere
change of dimensions of an old device, but certainly it cannot be
found in mere elongation of a merchant's counter -- a contrivance
which, time out of mind, has been of whatever length suited the
merchant's needs. In the third place, if the extension itself were
conceded to be a patentable improvement of the counter, and the
claims were construed to include it, the patent would nevertheless
be invalid for overclaiming the invention by including old
elements, unless, together with its other old elements, the
extension made up a new combination patentable as such. Bassick
Mfg. Co. v. R. M. Hollingshead Co., 298 U.
, 298 U. S. 425
Carbice Corp. of America v. American Patents Development
Corp., 283 U. S. 27
disallowing the only thing designated by the two courts as an
invention, the question is whether the combination can survive on
any other basis. What indicia of invention should the courts seek
in a case where nothing tangible is new, and invention, if it
exists at all, is only in bringing old elements together?
While this Court has sustained combination patents, [Footnote 4
] it never has ventured to
give a precise and comprehensive definition of the test to be
applied in such cases. The voluminous literature which the subject
has excited discloses no such test. [Footnote 5
] It is agreed that the key to patentability
Page 340 U. S. 151
of a mechanical device that brings old factors into cooperation
is presence or lack of invention. In course of time, the profession
came to employ the term "combination" to imply its presence, and
the term "aggregation" to signify its absence, thus making antonyms
in legal art of words which, in ordinary speech, are more nearly
synonyms. However useful as words of art to denote in short form
that an assembly of units has failed or has met the examination for
invention, their employment as tests to determine invention results
in nothing but confusion. The concept of invention is inherently
elusive when applied to combination of old elements. This, together
with the imprecision of our language, have counseled courts and
text writers to be cautious in affirmative definitions or rules on
the subject. [Footnote 6
The negative rule accrued from many litigations was condensed
about as precisely as the subject permits in Lincoln
Engineering Co. of Illinois v. Stewart-Warner Corp.,
303 U. S. 545
303 U. S.
"The mere aggregation of a number of old parts or elements
which, in the aggregation, perform or produce no new or different
function or operation than that theretofore performed or produced
by them is not patentable invention."
To the same end is Toledo
Page 340 U. S. 152
Pressed Steel Co. v. Standard Parts, Inc., 307 U.
, and Cuno Engineering Corp. v. Automatic
Devices Corp., 314 U. S. 84
conjunction or concert of known elements must contribute something;
only when the whole in some way exceeds the sum of its parts is the
accumulation of old devices patentable. Elements may, of course,
especially in chemistry or electronics, take on some new quality or
function from being brought into concert, but this is not a usual
result of uniting elements old in mechanics. This case is wanting
in any unusual or surprising consequences from the unification of
the elements here concerned, and there is nothing to indicate that
the lower courts scrutinized the claims in the light of this rather
Neither court below has made any finding that old elements which
made up this device perform any additional or different function in
the combination than they perform out of it. This counter does what
a store counter always has done -- it supports merchandise at a
convenient height while the customer makes his purchases and the
merchant his sales. T he three-sided rack will draw or push goods
put within it from one place to another -- just what any such a
rack would do on any smooth surface -- and the guide rails keep it
from falling or sliding off from the counter, as guide rails have
ever done. Two and two have been added together, and still they
make only four.
Courts should scrutinize combination patent claims with a care
proportioned to the difficulty and improbability of finding
invention in an assembly of old elements. The function of a patent
is to add to the sum of useful knowledge. Patents cannot be
sustained when, on the contrary, their effect is to subtract from
former resources freely available to skilled artisans. A patent for
a combination which only unites old elements with no change in
their respective functions, such as is presented here, obviously
withdraws what already is known into
Page 340 U. S. 153
the field of its monopoly and diminishes the resources available
to skillful men. This patentee has added nothing to the total stock
of knowledge, but has merely brought together segments of prior art
and claims them in congregation as a monopoly.
The Court of Appeals and the respondent both lean heavily on
evidence that this device filled a long-felt want and has enjoyed
commercial success. But commercial success, without invention, will
not make patentability. Toledo Pressed Steel Co. v. Standard
Parts, Inc., supra.
The courts below concurred in finding that
every element here claimed (except extension of the counter) was
known to prior art. When, for the first time, those elements were
put to work for the supermarket type of stores, although each
performed the same mechanical function for them that it had been
known to perform, they produced results more striking, perhaps,
than in any previous utilization. To bring these devices together
and apply them to save the time of customer and checker was a good
idea, but scores of progressive ideas in business are not
patentable, and we conclude on the findings below that this one was
It is urged, however, that concurrence of two courts below, in
holding the patent claims valid, concludes this Court. A recent
restatement of the "two-court rule" reads,
"A court of law, such as this Court is, rather than a court for
correction of errors in fact, finding, cannot undertake to review
concurrent findings of fact by two courts below in the absence of a
very obvious and exceptional showing of error."
Graver Tank & Mfg. Co. v. Linde Air Products Co.,
336 U. S. 271
336 U. S. 275
The questions of general importance considered here are not
contingent upon resolving conflicting testimony, for the facts are
little in dispute. We set aside no finding of fact as to invention,
for none has been made except as to the extension of the counter,
Page 340 U. S. 154
cannot stand as a matter of law. The defect that we find in this
judgment is that a standard of invention appears to have been used
that is less exacting than that required where a combination is
made up entirely of old components. It is on this ground that the
judgment below is
Claims 4, 5, and 6 of the Turnham patent No. 2,242,408, which
are involved in the controversy, read as follows:
"4. A checker's stand including a counter of the character
described, an open bottom pusher frame thereon, means to guide said
frame in sliding movement so that goods placed on the end of said
counter within said frame may be pushed along the counter in a
group to a position adjacent the checker by movement of said
"5. A cashier's counter for cash and carry type of grocery
comprising a portion spaced from the cashier's stand and upon which
the merchandise may be deposited and arranged, a bottomless three
sided frame on said portion and within which the merchandise is
deposited and arranged, means whereby said frame is movable on said
counter from said portion to a position adjacent the cashier's
stand so that the merchandise may thus be moved as a group to a
point where it may be conveniently observed, counted, and
registered by the cashier."
"6. A cashier's counter for cash and carry type of grocery
comprising a portion spaced from the cashier's stand and upon which
the merchandise may be deposited and arranged, a bottomless frame
on said portion and within which the merchandise is deposited and
arranged, means whereby said frame is movable on said counter from
said portion to a position adjacent the cashier's stand so that the
merchandise may thus be moved as a group to a point where it may be
conveniently observed, counted, and registered by the cashier, said
frame being open at the end adjacent the cashier's stand and
readily movable to be returned over said portion so as to receive
the merchandise of another customer while the cashier is occupied
with the previous group."
339 U.S. 947.
Finding of Fact No. 15 of District Judge Picard, whose opinion
appears at 78 F. Supp.
E.g., Keystone Mfg. Co. v. Adams, 151 U.
; Diamond Rubber Co. of New York v.
Consolidated Rubber Tire Co., 220 U.
The Index to Legal Periodicals reveals no less than sixty-four
articles relating to combination patents and the theory and
philosophy underlying the patent laws. Among the many texts are 1
Walker on Patents (Deller's ed.1937); Stedman, Patents; Toulmin,
Handbook of Patents; Merwin, Patentability of Inventions; Amdur,
Patent Law and Practice, and 1 Roberts, Patentability and Patent
With respect to the word "invention," Mr. Justice Brown
"The truth is the word cannot be defined in such manner as to
afford any substantial aid in determining whether a particular
device involves an exercise of the inventive faculty or not. In a
given case, we may be able to say that there is present invention
of a very high order. In another, we can see that there is lacking
that impalpable something which distinguishes invention from simple
mechanical skill. Courts, adopting fixed principles as a guide,
have, by a process of exclusion, determined that certain variations
in old devices do or do not involve invention, but whether the
variation relied upon in a particular case is anything more than
ordinary mechanical skill is a question which cannot be answered by
applying the test of any general definition."
McClain v. Ortmayer, 141 U. S. 419
141 U. S.
MR. JUSTICE DOUGLAS, with whom MR. JUSTICE BLACK agrees,
It is worth emphasis that every patent case involving validity
presents a question which requires reference to a standard written
into the Constitution. Article I, § 8, contains a grant to the
Congress of the power to permit patents to be issued. But, unlike
most of the specific powers which Congress is given, that grant is
qualified. The Congress does not have free reign, for example, to
decide that patents should be easily or freely given. The Congress
acts under the restraint imposed by the statement of purpose in
Art. I, § 8. The purpose is "To promote the Progress of Science and
useful Arts." The means for achievement of that end is the grant
for a limited time to inventors of the exclusive right to their
Every patent is the grant of a privilege of exacting tolls from
the public. The Framers plainly did not want those monopolies
freely granted. The invention, to justify a patent, had to serve
the ends of science -- to push back the frontiers of chemistry,
physics, and the like; to make a distinctive contribution to
scientific knowledge. That is why, through the years, the opinions
of the Court commonly have taken "inventive genius" as the test.
Page 340 U. S. 155
is not enough that an article is new and useful. The
Constitution never sanctioned the patenting of gadgets. Patents
serve a higher end -- the advancement of science. An invention need
not be as startling as an atomic bomb to be patentable. But is has
to be of such quality and distinction that masters of the
scientific field in which it falls will recognize it as an advance.
Mr. Justice Bradley stated in Atlantic Works v. Brady,
107 U. S. 192
107 U. S. 200
the consequences of a looser standard:
"It was never the object of those laws to grant a monopoly for
every trifling device, every shadow of a shade of an idea, which
would naturally and spontaneously occur to any skilled mechanic or
operator in the ordinary progress of manufactures. Such an
indiscriminate creation of exclusive privileges tends rather to
obstruct than to stimulate invention. It creates a class of
speculative schemers who make it their business to watch the
advancing wave of improvement, and gather its foam in the form of
patented monopolies which enable them to lay a heavy tax upon the
industry of the country without contributing anything to the real
advancement of the arts. It embarrasses the honest pursuit of
business with fears and apprehensions of concealed liens and
unknown liabilities to lawsuits and vexatious accountings for
profits made in good faith."
The standard of patentability is a constitutional standard, and
the question of validity of a patent is a question of law. Mahn
v. Harwood, 112 U. S. 354
112 U. S. 358
The Court fashioned in Graver Tank & Mfg. Co. v.
Linde Air Products Co.,
Page 340 U. S. 156
271, 336 U. S. 275
a rule for patent cases to the effect that this Court will not
disturb a finding of invention made by two lower courts in absence
of a very obvious and exceptional showing of error. That rule,
imported from other fields, never had a place in patent law. Having
served its purpose in Graver Tank & Mfg. Co. v. Linde Air
it is now, in substance, rejected. The Court now
recognizes what has long been apparent in our cases: that it is the
"standard of invention" that controls. That is present in every
case where the validity of a patent is in issue. It is that
question which the Court must decide. No "finding of fact" can be a
substitute for it in any case. The question of invention goes back
to the constitutional standard in every case. We speak with final
authority on that constitutional issue, as we do on many
The attempts through the years to get a broader, looser
conception of patents than the Constitution contemplates have been
persistent. The Patent Office, like most administrative agencies,
has looked with favor on the opportunity which the exercise of
discretion affords to expand its own jurisdiction. And so it has
placed a host of gadgets under the armour of patents -- gadgets
that obviously have had no place in the constitutional scheme of
advancing scientific knowledge. A few that have reached this Court
show the pressure to extend monopoly to the simplest of
11 How. 248: doorknob made of clay,
rather than metal or wood, where different shaped door knobs had
previously been made of clay.
Rubber-Tip Pencil Co. v.
20 Wall. 498: rubber caps put on wood
pencils to serve as erasers.
Union Paper Collar Co. v. Van
23 Wall. 530: making collars of parchment
paper where linen paper and linen had previously been used.
Page 340 U. S. 157
Brown v. Piper, 91 U. S. 37
method for preserving fish by freezing them in a container
operating in the same manner as an ice cream freezer.
Reckendorfer v. Faber, 92 U. S.
: inserting a piece of rubber in a slot in the end of
a wood pencil to serve as an eraser.
Dalton v. Jennings, 93 U. S. 271
thread placed across open squares in a regular hairnet to keep hair
in place more effectively.
Double-Pointed Tack Co. v. Two Rivers Mfg. Co.,
109 U. S. 117
putting a metal washer on a wire staple.
Miller v. Foree, 116 U. S. 22
stamp for impressing initials in the side of a plug of tobacco.
Preston v. Manard, 116 U. S. 661
hose reel of large diameter so that water may flow through hose
while it is wound on the reel.
Hendy v. Golden State & Miners' Iron Works,
127 U. S. 370
putting rollers on a machine to make it moveable.
St. Germain v. Brunswick, 135 U.
: revolving cue rack.
Shenfield v. Nashawannuck Mfg. Co., 137 U. S.
: using flat cord instead of round cord for the loop
at the end of suspenders.
Florsheim v. Schilling, 137 U. S.
: putting elastic gussets in corsets.
Cluett v. Claflin, 140 U. S. 180
shirt bosom or dickie sewn onto the front of a shirt.
Adams v. Bellaire Stamping Co., 141 U.
: a lantern lid fastened to the lantern by a hinge
on one side and a catch on the other.
Patent Clothing Co. v. Glover, 141 U.
: bridging a strip of cloth across the fly of
pantaloons to reinforce them against tearing.
Pope Mfg. Co. v. Gormully & Jeffery Mfg. Co.,
144 U. S. 238
placing rubber hand grips on bicycle handlebars.
Page 340 U. S. 158
Knapp v. Morss, 150 U. S. 221
applying the principle of the umbrella to a skirt form.
Morgan Envelope Co. v. Albany Perforated Wrapping Paper
Co., 152 U. S. 425
oval, rather than cylindrical toilet paper roll, to facilitate
tearing off strips.
Dunham v. Dennison Mfg. Co., 154 U.
: an envelope flap which could be fastened to the
envelope in such a fashion that the envelope could be opened
The patent involved in the present case belongs to this list of
incredible patents which the Patent Office has spawned. The fact
that a patent as flimsy and as spurious as this one has to be
brought all the way to this Court to be declared invalid
dramatically illustrates how far our patent system frequently
departs from the constitutional standards which are supposed to
* "Inventive genius" -- Mr. Justice Hunt in Reckendorfer v.
Faber, 92 U. S. 347
92 U. S. 357
"Genius or invention" -- Mr. Chief Justice Fuller in Smith v.
Whitman Saddle Co., 148 U. S. 674
148 U. S. 681
"Intuitive genius" -- Mr. Justice Brown in Potts v.
Creager, 155 U. S. 597
155 U. S. 607
"Inventive genius" -- Mr. Justice Stone in Concrete Appliances
Co. v. Gomery, 269 U. S. 177
269 U. S. 185
"Inventive genius" -- Mr. Justice Roberts in Mantle Lamp Co. of
America v. Aluminum Products Co., 301 U.
, 301 U. S. 546
Cuno Engineering Corp. v. Automatic Devices Corp.,
314 U. S. 84
314 U. S. 91
"the flash of creative genius, not merely the skill of the