Bergman

(concurring).

I think that Judge LEMMON’S opinion performs a particularly useful service in doing away with a frequent misapprehension that the question of the validity of a claim of a patent is solely one of fact. In this case there was no patentable invention for the simple reason that it comes precisely within the language of Lincoln Engineering Co. of Illinois v. Stewart-Warner Corp., 303 U.S. 545, 549 , 58 S.Ct. 662, 664 , 82 L.Ed. 1008 : “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.” The quoted statement is a rule of law. It sets a legal standard or test of invention. For failure to meet this legal standard appellee must fail. Thus we determine that there is no invention here as a matter of law.

This is not to say that the decision in a patent case may not turn upon a question of fact; as for instance where the court must determine whether the mechanical device or the process now claimed to be invention was something that existed or was known or used in the past. But it is necessary in reading…

Twilight is falling upon “gadgets” as subjects of patents. The dusk commenced to gather half a dozen years ago when, in an epochal decision, 1 the Supreme Court fixed its canon against dignifying combined “segments of prior art” with the title of “inventions”.

In a concurring opinion in that case, Mr. Justice Douglas compiled a devastating list of “gadgets” that have been placed “under the armour of patents”. 2 The specification at bar proclaims at the outset that it is a “drain slot which forms the basis of this invention”. If the trivial devices listed by Mr. Justice Douglas are “gadgets”, then, in the hierarchy of invention, a slot should be classified as a sw&gadget — comparable to the hole in a doughnut!

This is the second time that the patent in suit, Korter No. 2,631,552 has been before this Court. The first appeal was dismissed because the so-called decree of the Court below was not a final decision, within the meaning of 28 U.S.C.A. § 1291 , and was therefore not appealable. Bergman v. Aluminum Lock Shingle Corp. of America, 9 Cir., 1956, 237 F.2d 386, 387 .

This second appeal is on the merits. For our present purposes, the earlier opinion contains a sufficient…