284 F. 774 | 6th Cir. | 1922
This appeal is from the decree of the District Court dismissing bill for infringement of United States patent No. 903,465, November 10, 1908, to Fulton, assignor to plaintiff. As stated in the specification, the invention relates to flexible, corrugated, tubular walls for confining vapors “whose boiling points are considerably above ordinary atmospheric temperatures.” Such expansible and collapsible walls (frequently called “bellows” walls) had been commonly used for many years, not only in various thermostatic devices, to control and regulate the flow of different materials under changes of temperature, but, as one of the prominent uses,
“3. A flexible corrugated wall for confining a vapor, said wall having corrugations the successive folds of which1 are in sufficient proximity to constitute liquid-retaining recesses, the liquid being retained therein against gravity by capillary action while the wall expands and collapses, and means limiting the expansion of the wall within the limits of capillary action for the corrugations.”
The defenses are lack of patentable invention, lack of sufficient disclosure as well as of utility, and noninfringement. The District Court found in plaintiff’s favor on all of these issues except that of patentable invention, basing its conclusion of lack thereof upon the well-settled proposition that the end or purpose sought to he accomplished by a device is not the subject of a patent, but only the means for obtaining that end, and that, unless such means involve invention, no support is given by the end sought to be secured. As tersely expressed by the District Judge, “Mere concept, without new mechanical means, is not patentable.” Knapp v. Morss, 150 U. S. 221, 228, 14 Sup. Ct. 81, 37 L. Ed. 1059.
The court concluded that the mechanical means for carrying out the concept were not novel, but were anticipated by the prior art, and especially by certain patents therein.
In our opinion, the correct result was reached, whether or not the prior patents in question are regarded as technically anticipatory or as disclosing a state of the prior art which left no room for invention in, the device of the patent in suit. Manifestly, if plaintiff’s patent involves invention, it must be found, not in the use of a corrugated
The drawings of the Graham & Creelman patent, No. 350,881, October 12, 1886, disclose a steam valve with bellows walls containing 13 corrugations. The measurements on the drawing are for pipe of about l1/18 inches external diameter, which in iron pipe would mean an inside diameter of about three-fourths of an inch, which the evidence shows to be a convenient, useful, and commercial size. In a physical embodiment with the same number of corrugations as disclosed in the patent drawing, and made up in accordance therewith, the spacings between the corrugations are less than 2 millimeters, which is only about one-half the maximum spacing in which capillary force concededly is operative. The drawing of the Parsells’ bellows valve (patent No. 600,249, March 8, 1898) shows five corrugations, the pipe opening measuring (outside) three-fourths of an inch.
It is true that in the patents referred to no reference is made to the capillary feature, nor is there anything to indicate that that principle was known to the respective patentees. None of them show retention of the liquid between the corrugations, and none contain statement that the patent drawings are made to scale, and drawings attached to patents are. frequently greatly reduced in size. In the case of Graham & Creelman it appears that the valve shown in the patent was never manufactured (there'is no1 showing of manufacture in the case of the others); and plaintiff’s expert says that a three-fourths inch pipe size is inconsistent with the showing of other parts of the drawings. We recognize that prior patents are part of the prior art only by what they disclose on their face (Naylor v. Alsop Process Co. [C. C. A. 8] 168 Fed. 911, 920, 94 C. C. A. 315; Munising Co. v. American Sulphite Pulp Co. [C. C. A. 6] 228 Fed. 700, 703, 143 C. C. A. 222); that prior accidental production of the same thing, where the character and function were not recognized until the invention of the later patent, does not effect anticipation (Tilghman v. Proctor, 102 U. S. 707, 711, 26 L. Ed. 279; Topliff v. Topliff, 145 U. S. 156, 161, 12 Sup. Ct. 825, 36 L. Ed. 658; Canda v. Mich. Iron Co. (C. C. A. 6) 124 Fed. 486, 492, 61 C. C. A. 194; Munising Co. v. American Co., supra, 228 Fed. at page 703, 143 C. C. A. 222); and that anticipation is not disclosed by a drawing which only incidentally shows a similar arrangement of parts, where such arrangement is not essential to the first invention, and was not itself adopted and used to perform the function which it performs in the second invention, and where the first patent contains no suggestion of the way in which the result sought is accomplished by the second inventor (Gray Telephone Co. v. Baird Co. [C. C. A. 7] 174 Fed. 417, 421, 98 C. C. A. 353; Munising Co. v. American Co., supra, 228 Fed. at pages 703, 704, 143 C. C. A. 222).
But we think these rules do not destroy the probative force of the patent drawings in question, considered in connection with the physical embodiments thereof. The case presented is not one of arrangement of parts. We think these disclosures are not necessarily to be regarded as merely accidental or “incidental,” as related to the number of corrugations and the consequent spacings therebetween, having in mind that the drawings inferably had some relation to commercial sizes in a common and well-known art (plaintiff’s expert apparently concedes that “certain features of certain drawings [apparently those cited as prior references] * * * indicate roughly what the dimensions of the parts might be if the structures were made in accord
We think the conclusion of noninvention is not in conflict with Minerals Separation, Ltd., v. Hyde, 242 U. S. 261, 37 Sup. Ct. 82, 61 L. Ed. 286, where a process which required less of a certain element 'was held patentable. But in that case patentability was not found to reside merely in the use of such smaller amount; the patented process was held to belong to neither of the previously existing processes, but to differ “essentially from the prior processes in its character, in its simplicity of operation, and in the resulting concentrate.” 242 U. S. 266, 37 Sup. Ct 84, 61 L. Ed. 286.
Being of opinion that the District Court rightly held the patent void for lack of invention, it is unnecessary to consider the other grounds' of invalidity asserted.
The decree of the District Court is affirmed.
The only valve structure illustrated in the patent drawings is a steam valve surrounded by an ordinary tubular “bellows” wall. The alleged infringing use was in steam valves.
A one-half inch pipe (presumably inside diameter) is also a standard commercial siza
The physical embodiments of the Graham & Creelman, Parsells, and McCloskey valve walls retain water between the corrugations in the same way as does plaintiffs wall.
The fact that a change of scale in the drawings would affect other dimensions of the corrugations is not a weighty consideration. These other dimensions are not important. The important thing is the spacing between the corrugations.