" King-Seeley Thermos Company v. Refrigerated Dispensers, Inc., 354 F.2d 533, 535 (10th Cir. 1965). Defendant denies liability on the following grounds: first, that claim 4 of patent 694 is invalid both as reading on prior art and as obvious at the time of the invention to a person having ordinary skill in the art and, secondly, that even if valid, claim 4 is not infringed by the defendant's machine.
Maloney-Crawford Tank Corporation v. Sauder Tank Company, supra. The law of infringement was enunciated in King-Seeley Thermos Co. v. Refrigerated Dispensers, Inc., 354 F.2d 533 (10th Cir. 1965), by Judge Pickett for this court, wherein he opined: Infringement is not avoided by making a machine which differs in form but appropriates the principle and mode of operation of the patented machine by the use of the same or equivalent means.
This is an appeal by Tastee Freez Industries, Inc. from the judgment of the district court allowing King-Seeley Thermos Co. damages for and an injunction against infringement by Tastee Freez of claims 2 and 4 of King-Seeley's United States Letters Patent No. 2,753,694 ('694), issued July 10, 1956, through its manufacture, use, and sale of certain flake ice making machines. The same patent was litigated in the Tenth Circuit. There the district court held the patent invalid, but the court of appeals reversed, holding the patent valid over the prior art. King-Seeley Thermos Co. v. Refrigerated Dispensers, Inc., et al., 354 F.2d 533 (Dec. 27, 1965). Flake ice consists of small, irregularly sized and shaped pieces of ice.
68. It has consistently been held that even a showing that each of the elements of the patent in suit existed in prior art is, by itself, inadequate to demonstrate obviousness when a combination of those coexisting elements results in novel, unanticipated or long-sought results. United States v. Adams, 383 U.S. 39, 51, 86 S.Ct. 708, 714, 15 L.Ed.2d 572 (1966); King-Seeley Thermos Co. v. Refrigerated Dispensers, Inc., 354 F.2d 533, 536-37 (10th Cir. 1965); U.S. Philips Corp. v. National Micronetics, Inc., 550 F.2d 716, 723-24 (2d Cir.), cert. denied 434 U.S. 859, 98 S.Ct. 183, 54 L.Ed.2d 131 (1977); Santa Fe-Pomeroy, Inc. v. P Z Co., 569 F.2d 1084, 1094 (9th Cir. 1978). Section 103 expressly mandates that the inquiry into patentability must be drawn toward the subject matter as a whole.
13. The Nitsch patent and machine are the most pertinent prior art relied on by Defendant in its effort to invalidate claim 5 of the '694 patent. The Nitsch patent was considered by the Patent Office before it issued the '694 patent and the Nitsch patent and machine have been considered by prior courts in litigation involving the '694 patent, including the Tenth Circuit Court of Appeals in the case of King-Seeley Thermos Co. v. Refrigerated Dispensers, Inc. et al., reported at 354 F.2d 533; by the Seventh Circuit Court of Appeals in the case of King-Seeley Thermos Co. v. Tastee Freez Industries, Inc., reported at 357 F.2d 875; by the United States District Court for the Northern District of Illinois in King-Seeley Corp. v. Cold Corporation of America, reported at 182 F. Supp. 768; by the United States District Court for the District of Colorado in the case of King-Seeley Thermos Co. v. Ice-O-Matic, Inc., et al. in an unreported decision, copy of the Findings of Fact and Conclusions of Law of which is in evidence in this matter. The Patent Office and the Courts have found claims of the '694 patent to be patentable and valid over the Nitsch patent and other prior art.
The defendant must introduce "clear and convincing" evidence in this regard, e. g., Moore v. Shultz, 491 F.2d 294, 298 (10th Cir.), and "every reasonable doubt should be resolved against him," Mumm v. Jacob E. Decker Sons, 301 U.S. 168, 171, 57 S.Ct. 675, 676, 81 L.Ed. 983. See also Radio Corp. of America v. Radio Engineering Laboratories, Inc., 293 U.S. 1, 7-8, 55 S.Ct. 928, 79 L.Ed. 163; Eimco Corp. v. Peterson Filters and Engineering Co., 406 F.2d 431, 434 (10th Cir.), cert. denied, 395 U.S. 963, 89 S.Ct. 2105, 23 L.Ed.2d 749; King-Seely Thermos Co. v. Refrigerated Dispensers, Inc., 354 F.2d 533 (10th Cir.). The rationale for this strong presumption is the expertise of the Patent Office in determining when the conditions for patentability have been satisfied. Neff Instrument Corp. v. Cohu Electronics, Inc., 298 F.2d 82, 86 (9th Cir.).
Moreover, the fact that the elements included in appellants' combination patent were found individually in prior art devices does not defeat novelty. King-Seeley Thermos Co. v. Refrigerated Dispensers, Inc., 354 F.2d 533 (10th Cir. 1965). As the court stated in Shaw v. E.B. A.B. Whiting Co., 417 F.2d 1097, 1101 (2d Cir.), cert. denied, 397 U.S. 1076, 90 S.Ct. 1518, 25 L.Ed.2d 811 (1970):
Union Paper-Bag Machine Co. v. Murphy, 97 U.S. 120, 125, 27 L.Ed. 935 (1878). See McCullough Tool Co. v. Well Surveys, Inc., 343 F.2d 381 (10th Cir. 1965) cert. denied, 383 U.S. 933, 86 S.Ct. 1061, 15 L.Ed.2d 851 (1965); Bewal, Inc. v. Minnesota Mining and Mfg. Co., 292 F.2d 159 (10th Cir. 1961); King-Seeley Thermos Co. v. Refrigerated Dispensers, Inc., 354 F.2d 533 (10th Cir. 1965). In McCullough this court recognized that a patent which constitutes a marked improvement in the art is entitled to a substantial range of equivalents, and every element or its functional equivalent must be found in the accused device in order to have an infringement.
Id. Eimco Corp. v. Peterson Filters and Engineering Co., 406 F.2d at 434; King-Seeley Thermos Co. v. Refrigerated Dispensers, Inc., 354 F.2d 533, 536 (10th Cir. 1965); Mott Corp. v. Sunflower Industries, Inc., 314 F.2d at 877; Admiral Corp. v. Zenith Radio Corp., 296 F.2d at 712; Bewal, Inc. v. Minnesota Mining and Mfg. Co., 292 F.2d 159, 163-164 (10th Cir. 1961); Sitton Septic Tank Co. v. Honer, 274 F.2d at 813; Consolidated Electro Corp. v. Midwestern Instruments, 260 F.2d at 815.Id.
A combination of various elements already known to the art is patentable if it accomplishes either a new or an old result "in a more facile, economical and efficient way in a particular environment which presented peculiar and difficult problems." King-Seeley Thermos Co. v. Refrigerated Dispensers, Inc., 354 F.2d 533 (10th Cir. 1965); Consolidated Electro. Corp. v. Midwestern Instruments, Inc., 260 F.2d 811 (10th Cir. 1958). There is no contention or claim in the patent in suit of the invention of the draining tubing inserted into the wound area, or the joining of a tube or tubes to the main tube to the suction source.