174 F. 246 | 7th Cir. | 1909
after stating the facts as above, delivered the opinion.
Cox, in his original application, described as one element of his invention, the automatic means for varying the ratio of- the resistances, and limited his claims to a combination of which such automatic means was an element. The application of I,anpliier was for a combination that embodied the varying of the ratio of resistance by manual adjustment. The two applications having come into interference and priority having been awarded to Cox upon the features set forth in his application, additional claims were filed and allowed, which, if valid, extended the patent so as to include the variation, of resistances by manual' adjustment as well as by automatic means. These are the claims here sued upon.
Invention, in the nature of improvements, is the double mental ad. of discerning, in existing machines or processes or articles, some deficiency, and pointing out the means of overcoming it. A reading of Cox’s original application discloses either that Cox did not discern that there was a deficiency in existing meters other than that produced ■by the variation of the plate by temperature; or, discerning that the plate was varied by canses other than temperature, he did not know the means of overcoming them; or (and this probably is the fact), discerning that the disk was varied by causes other than temperature, and knowing the means of overcoming them, he did not regard either the discernment of the deficiency or the perception of the means as something that was new; for, had he regarded such discernment of the deficiency, and such perception of means, as something new, he would have embodied them in his application and original claims. True, the fact that Cox may have mistakenly regarded these things as not new, and therefore not the subject of a patent, would not have prevented him from correcting’ his mistake if done in apt time, by amending his application and broadening his claims. But this must be done by a showing in his application that the conception was his, and that it was new and novel; and this he did not do. Ilis application, cither before or after the new claims were inserted, discloses no conception of the deficiency to which the Eanphicr patent was directed, antedating Eanphicr: and, of course, such conception after the reading of Eanphicr’s application would be anticipated by the Eanphicr disclosures; so that there is nothing in the record before us showing that Cox anticipated Eauphier in either one of the two acts constituting invention, so far as either of those acts relate to the variation of the disk produced by canses other than temperature. The claims of the Cox patent to this extent, therefore, are invalid.
The decree of the Circuit Court is affirmed.
