237 F. 602 | 6th Cir. | 1916
(after stating the facts as above). The patented device is very simple. If only one staple is considered the device is seen to be a mere driving guide of suitable shape, and its
This case is an appropriate one for giving some force to public use in determining whether the new step taken by the patentees was so simple and obvious that it cannot be called patentable invention. Fastening belt ends together by staples of this kind was known, but there was no tool of this class for doing the work. The patent was followed by a 'considerable sale, in the exact patented form, and if the invention was of the scope we have supposed, it is embodied in the later forms, which 'had a very large sale. We conclude that Mitchell and Gunn were entitled to a patent covering the use of this retaining pin in this situation, whereby the series of otherwise independent slots were united into one combination for the purpose and with the result of getting perfect alignment ; and the patent which they secured is entitled, so far as the language of its claim will permit, to a range of equivalents accomplishing this measure of monopoly.
The dissimilarity which we observe when such a plate or base as-the patent shows is compared with a pair of pivoted jaws is only superficial. Not only is the lower or anvil member of a pair of jaws the plain, equivalent of a separate plate having the same resisting and forming functions; but this very pivoted jaw construction was proposed by the patentees as one form of using their invention. When they filed their application, they said that the necessary closing of the staples could be accomplished by hammering from above, or by applying a suitable pressure plate, or by uniting their forming plate with such a pressure plate in the form of pivoted jaws; they say the separate base plate, used alone, is the “simplest form” of their invention. Although
When we say “integral,” we may be thinking of structure or we may be referring to performance and function. When two parts, though made separately, are permanently fastened together, so that they work in the same way as if they were a physical unit, they may well be said to be functionally integral. In this sense, they are to be distinguished from two parts which operate independently of each other, and in this sense, defendants’ parts may be called integral. The lower part and the raised part are held permanently in the 'same substantial relation to each other, and neither part can be removed or made inoperative. The guiding slots with openings for the pin are always ready to receive, hold, and position staples resting on the lower part, and during both the forming and the driving of the staples the two parts do not lack the smallest fraction of co-operation which they would have if they were structurally of one piece. True, they have an additional capacity. They have the strength and permanency of association and capacity to co-operate in resisting opposing strains, which would be found if they were made o.f one piece, and, in addition to this, they have some relative adjustment in one direction only. That this difference in functions is in addition, and not in substitution, is apparent from an exhibit in which these two parts and the jaw which carries them in defendants’ tool have all been united rigidly by welding; and this modified device, for the appropriate size of staples, is just as operative as plaintiff’s or defendants’ unmodified device. It would be an equivalent variation from the patented form to give the raised por
“It should be particularly noted that, in the present application, the stepped portion of the bracket is formed integrally therewith and is immovable on the base portion. This, I contend, forms a much simpler device than Southwick’s and, I think, shows a patentable difference, such as is claimed in claim 1.”
The Patent Office again rejected the claim upon the same citation. Thereupon applicants inserted the reference to the transverse holes and pin, and the patent issued. The reasons for the repeated rejections of the claim, after it was amended by inserting the word “integral,” were not given by the Patent Office; but it must be assumed that the rejections were because of the familiar principle that there is, normally, no patentable difference between making an article in one piece or in two pieces. In this ruling the applicants acquiesced, and so we find applicants and Patent Office agreeing that the patentability of the invention over the references did not lie in the feature of integrality. It is evident that if the applicants had finally erased this reference to integrality, and left the claim in this particular the same as it was originally, the patent would have issued just the same. Neither is it now sought to give the claim such construction as would cover South-wick and similar devices. They are of a different class from the one in which both plaintiff and defendants are found. They do not contain at all the chief characteristics of the present invention; i. e., trans
Although it cannot be arbitrarily disregarded because it was unnecessary and voluntary, and because it had nothing to do, and was not finally thought to have anything to do, with patentability, yet the defendants’ stepped staple holder, which is otherwise the full equivalent of the patented bracket, will not be denied such .equivalency merely because the two portions are not, in every sense, integral, if they do, nevertheless, in any fair way, respond to that word. Although the Patent Office proceedings do not raise an estoppel, they do aid in determining the meaning of this limitation. It was intended by the applicants to distinguish from Southwick. In the applicant’s device, the base or clinching face portion and the slotted portion were always and permanently held in a certain relation to each other, whereby the slotted portion was always in a position to receive and hold the series of staples ready for driving. From the beginning to the end of the using process, the slotted portion lay at the end of and stepped above the clinching face. It could not be removed from that position, unless one destroyed the tool instead of using it. In Southwick, the upper slotted portions of the tool were necessarily removed from position and swung out of the way to allow the belt to enter, and when they were united to make a complete staple guide, they were clamped in position over the lower plate and held rigidly in reference to each other only by a binding screw or such other temporary adjustment as might be made. Both by the use of the word and by the communications addressed to the Patent Office, applicants showed that they intended “integral” to referto a device having the characteristics of the former class as distinguished from the latter. They pointed out that, if one of the Southwick members were opened and turned away, it would be inoperative with such a staple as theirs, while, in their device, the slotted portion was immovable on the base portion, and they urged that they were justified in claiming a device in which the vertical slots for holding the staples are “stationary.”
Applying this differentiation to defendants’ tool, we see that it is to be classified with Mitchell and Gunn rather than with Southwick. In defendants’ tool, the base portion and the slotted portion- are permanently held together. The slotted portion lies at the end of and rises above the base portion, and is always ready to receive and hold staples. This mutual working relationship of the two parts- cannot be changed, uniess one destroys the tool instead of using it. The precise fixed lateral relationship of the two parts cannot, in any wise, be varied; such variation as there may be is vertical only. Interpreting the term by the intent thus evidenced, and by its entire immateriality in giving patentable invention, and by the very strong presumption that there could have been no intent to make the patent worthless through a provision that, by an improvement, the patent would be avoided, we do not hesitate to conclude that the two parts of defendants’ bracket are integral in that functional sense which is sufficient to bring them within the field to which the patentees confined themselves.
We conclude that defendants infringed the first claim of the patent, and thus it becomes unnecessary to consider whether their backwardly resisting rear slot wall is or is not the full equivalent of the patentees’ backwardly resisting pin, as specified in .the second and narrower claim.
The judgment must be reversed, and the case remanded for the usual injunction and accounting.