255 F. 83 | 2d Cir. | 1918
(after stating the facts as above).
Thus what Carrier automatically controls is the temperature of saturation, upon which can be predicated with reasonable accuracy (i. e., “within limits”) the relative humidity of the air supplied to the room of destination. In so far as the few prior patents relate to anything more than machines for spraying or washing air, they depend on hygrometric control of and through humidity, not on thermostatic control through the temperature at which saturation is effected ; much less is there any prior showing of using a rise of temperature above that of saturation, to effect the desired relation of absolute and relative humidities. We agree with the court below that neither anticipation, nor close approximation, is discoverable in the prior art, so far as shown in this record.
We do not, however, resort to construction in aid of the claims in suit; for assuming now, as proved, an intelligible statement of process, novelty, and thought of the grade of invention, this patent presents acutely the problem stated by Justice Brown, in declaring that “it may be still regarded as an open question whether the patentability of processes extends beyond,” those involving “a chemical or other similar elemental action,” or can cover those necessarily -involving mechanical operations.
This query has been answered, with a fullness sufficient for the purposes of this litigation, by Expanded Metal Co. v. Bradford, 214 U. S. 366, 29 Sup. Ct. 652, 53 L. Ed. 1034, holding that a process involving only mechanical operations might be within the protection of the statute.
It is and always was true that the mere function or effect of the operation of a machine is not patentable; but, if a process be claimed
If it is not reasonably possible to separate the alleged process from the disclosed means, the former can hardly be more than the function (or at least a function) of the latter. This is no more than applying the doctrine of Leeds v. Victor, etc., Co., 213 U. S. at page 318, 29 Sup. Ct. at page 500, 53 L. Ed. 805:
“A process and an apparatus by wliicti It is performed are distinct tilings. They may be found in one patent; they may be made the subject of different patents.”
If such difference cannot be discovered, they cannot be two things; therefore they must be one thing, i. e., one invention, and that one is usually the means.
The patent in suit responds to these tests, and this litigation affords an excellent illustration of their propriety.. If Carrier had and were suing on a patent for the apparatus pictured and described in his specification, it is very doubtful whether the humidifying plants of these Buffalo schools would infringe; mechanically there is, but little similarity. But the series of steps by which “within limits” dry cold air is transformed into an automatically steady stream of humid warm air are, in our judgment and that of the trial court, identical. Where this is the case, it is plain that means and process are separable, and the important thing is the process.
For the foregoing reasons, we agree that Carrier’s is a patentable and meritorious mechanical process, and direct that the decree appealed from be affirmed, with costs.
Bradford 222,234; Huck 476,274; Carrier 808,897; Cramer 813,083; Cramer 823,989.
Risdon, etc., Works v. Medart, 158 U. S. 68, 15 Sup. Ct. 745, 39 L. Ed. 899; Westinghouse v. Boyden, 170 U. S. 537, 18 Sup. Ct. 707, 42 L. Ed. 1136.
See comment on this case in Macomher’s Fixed Law of Patents (2d Ed.) p. 1011; and a full discussion of the effect of the Risdon and Westinghouse opinions in “Patentable Processes,” Harvard Law Review, vol. 19, p. 30. For a good illustration of how meritorious processes were fitted to the Risdon Case, before the Expanded Metal decision, see Cameron, etc., Co. v. Saratoga, 159 Fed. at pages 462, 463, 86 C. C. A. 483.