383 U.S. at 52, 86 S.Ct. at 714. See also John Zink Co. v. National Airoil Burner Co., 613 F.2d 547, 551 (5th Cir. 1980); Application of Marshall, 578 F.2d 301, 304 (CCPA 1978); W. L. Gore Assoc. v. Carlisle Corp., 529 F.2d 614, 619, 41 A.L.R.Fed. 941 (3d Cir. 1976); Gettelman Mfg., Inc. v. Lawn 'N Sport Power Mower Sales Service,Inc., 517 F.2d 1194, 1199 (7th Cir. 1975). The trial court recognized that the teachings of the Morris '058 patent were to the effect that use of I-type serrated fin stock helically wound around a cylindrical tube causes the edge of the fin stock to conform to a series of straight lines rather than a continuous curve, and that this would cause irregularities in the weld.
Returning to the proposition of law originally adverted to in this opinion that obviousness is a question of law, we see little reason for extending the discussion too much beyond the clear statement in Pederson, supra, other than to observe as applicable to the present issue, that this court has never felt it was bound by a determination of nonobviousness at the trial court level resulting in validity even where that finding had been made by a district court judge, whose expertise in the subject presumably would be well above that possessed by a lay jury. See, e. g., Skil Corporation v. Lucerne Products, Inc., 503 F.2d 745 (7th Cir. 1974), cert. denied, 420 U.S. 974, 95 S.Ct. 1398, 43 L.Ed.2d 654 (1975); Panduit Corporation v. Burndy Corporation, 517 F.2d 535 (7th Cir. 1975), cert. denied, 423 U.S. 987, 96 S.Ct. 395, 46 L.Ed.2d 304; Gettelman Mfg. Inc. v. Lawn `N' Sport Power Mower Sales Service, Inc., 517 F.2d 1194 (7th Cir. 1975); and Burland v. Trippe Mfg. Co., 543 F.2d 588 (7th Cir. 1976). The appellees on rehearing en banc relied extensively albeit selectively, on Panther Pumps Equipment Co. v. Hydrocraft, Inc., 468 F.2d 225 (7th Cir. 1972), a case in which the issue of obviousness had been submitted to a jury which had returned a verdict that the patents were valid. The appellees assert that this court affirmed the jury verdict and made no effort whatsoever independently to examine or determine obviousness.
A realistic appraisal of these formulations, however, reveals that synergism is only a figure of speech, for in its literal sense synergism never has existed and never can exist in mechanical or hydraulic inventions when the term is defined as a whole result greater than the sum of its constituent parts. Other definitions have included: the elements must take on a surprising quality, Gettleman Manufacturing, Inc. v. Lawn `N' Sport, 517 F.2d 1194, 1199 (7th Cir. 1975); the combination must produce a result other than the anticipated sum of the separate parts, E-T Industries, Inc. v. Whittaker Corp., 523 F.2d 636, 641 (7th Cir. 1975), cert. denied, 429 U.S. 870, 97 S.Ct. 182, 50 L.Ed.2d 150 (1976); the elements must, in the aggregate, produce new, unusual or striking results, Panduit Corp. v. Burndy Corp., 517 F.2d 535, 539 (7th Cir.), cert. denied, 423 U.S. 987, 96 S.Ct. 395, 46 L.Ed.2d 304 (1975); the results must be unachieved by prior art structures, Reese v. Elkhart Welding Boiler Works, Inc., 447 F.2d 517, 526 (7th Cir. 1971). At least in one basic sense, no result is actually greater than the sum of its parts.
This court has often recognized that such a claim must pass a "rather severe test" of obviousness. Gettelman Mfg. Inc. v. Lawn `N' Sport Power Mower Sales Service, Inc., 517 F.2d 1194, 1197 (7th Cir. 1975); Panduit Corp. v. Burndy Corp., 517 F.2d 535, 539 (7th Cir. 1975), cert. denied, 423 U.S. 987, 96 S.Ct. 395, 46 L.Ed.2d 304 (1975); Skil Corp. v. Lucerne Products, Inc., 503 F.2d 745, 749 (7th Cir. 1974); cert. denied, 420 U.S. 974, 95 S.Ct. 1398, 43 L.Ed.2d 654 (1975); Toro Manufacturing Corp. v. Jacobsen Manufacturing Co., 357 F.2d 901, 904 (7th Cir. 1966). That test, stated "about as precisely as the subject permits," was set forth in Great Atlantic Pacific Tea Co. v. Supermarket Equipment Corp., supra, 340 U.S. at 151, 71 S.Ct. at 129 (1950), quoting Lincoln Engineering Co. v. Stewart-Warner Corp., 303 U.S. 545, 549, 58 S.Ct. 662, 82 L.Ed. 1008 (1938): "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.
Where the claimed nonobviousness of the invention rests on a new combination of old elements, the claimed invention must pass a "rather severe test" consonant with the difficulty and improbability of finding invention in an assembly of old elements. Gettleman Manufacturing, Inc. v. Lawn `N' Sport Power Mower Sales Service, Inc., 517 F.2d 1194, 1197 (7th Cir. 1975), citing Panduit Corporation v. Burndy Corporation, 517 F.2d 535, 539 (7th Cir. 1975); see also Skil Corporation v. Lucerne Products, Inc., 503 F.2d 745, 749 (7th Cir. 1974), cert. denied, 420 U.S. 974, 95 S.Ct. 1398, 43 L.Ed.2d 654 (1975). In considering the question of the obviousness of a combination of old elements, we shall employ the analysis set forth by Mr. Justice Stevens while still a member of this court in E-T Industries, Inc. v. Whittaker Corporation, 523 F.2d 636 (7th Cir. 1975).
Beyer applied the concepts evident in Phillips, McKowen and the Tally-Ho device, but if the refinement fails to rise above the level of mere mechanical skill, that refinement is not a patentable invention. Gettleman Mfg. Inc. v. Lawn n' Sport P.M.S. S. Inc., 517 F.2d 1194 (7th Cir. 1975). In this regard the improvement of the '304 patent over the Goldman concept is analogous to the improvements over the prior art of the patent in Blohm Voss AG v. Prudential Grace Lines, Inc., 489 F.2d 231 (4th Cir. 1973), cert. denied 419 U.S. 840, 95 S.Ct. 70, 42 L.Ed.2d 67.
In a country which has chosen to allow such monopolies only as a reward and inducement for "innovation, advancement, or social benefit", patents for combinations of obvious or already rewarded devices are disfavored. Anderson's-Black Rock, Inc. v. Pavement Salvage Co., Inc., 396 U.S. 57, 90 S.Ct. 305, 24 L.Ed.2d 258 (1969); Graham v. John Deere Co., supra, 383 U.S. at 6, 86 S.Ct. 684; Great A. P. Tea Co. v. Supermarket Corp., 340 U.S. 147, 71 S.Ct. 127, 95 L.Ed. 162 (1950); Lincoln Engineering Co. v. Stewart-Warner Corp., 303 U.S. 545, 58 S.Ct. 662, 82 L.Ed. 1008 (1938); Gettelman Mfg., Inc. v. Lawn `N' Sport, 517 F.2d 1194 (7th Cir., filed June 12, 1975). To approach the patentability of combinations more loosely would remove knowledge which is already in the public use.