254 F. 97 | 6th Cir. | 1918
“The machine for opening or expanding sheet metal the slits in which, have been previously cut, wherein are combined means for feeding the slitted sheets and means acting to open' them, by opening the strands between the slits in a direction substantially at right angles to the plane of the sheet, substantially as specified.”
The other claims of the patent covered, with various breadth of expression, the specific means which Curtis showed and described, and claim 13 must be considered as reaching any suitable feeding means combined with any suitable opening means which automatically bend the strands at right angles to the plane of the sheet as it leaves the end of the feed table. Thus construed, the claim did not express a patentable invention. The history of the transaction makes this clear. Caldwell had devised a machine which gripped the slitted sheet by its edges as it left the horizontal feed table and opened it in its own plane. Curtis, as a mechanical expert, was asked by the owner of the Caldwell invention to see if he could improve it. He knew that the sheet ought to be opened in a transverse plane, and knew that it was common practice to do this manually, and he modified and adopted the Caldwell mechanism so that the grips moved away from each other up and down instead of sidewise. He was entitled to a patent upon the devices by which he caused this to be done and to a fair measure of equivalency; but we see no invention involved in the mere thought sought to be monopolized by this thirteenth claim, that automatic opening mechanism could he made to operate in the transverse plane. To find invention in such thought would be to say that it is broadly patentable merely to do by automatic machinery what has commonly been done by hand, and the general rule is to the contrary. Marchand v. Emken, 132 U. S. 195, 199, 200, 10 Sup. Ct. 65, 33 L. Ed. 332.
The prosecution, under the second patent in suit, is based upon claims 1, 3, 5, 8, 9, and 10. Claim 3 reads thus:
“In a machino for expanding previously slitted shoots, the combination with a support over which the slitted sheet is moved, of means for continuously feeding the sheet lengthwise along said support and means for drawing it away from the plane of the support as it passes off the same, substantially as specified.”
We do not overlook the fact that this diagonal edge is not, in so many words, specified in claim 3; but we conclude that it is imperatively implied. The claim calls for “a support over which the slitted sheet is moved,” and since such a sheet could not be moved lengthwise of the support and drawn away from the plane of the support into expansion as it passes off the same, unless it passes off in a diagonal line, we must conclude that the “support” of the claim is the support thus described. If there were doubt about the nec- • essary presence of this element in claim 3, there could be none as to claim 5.
There is the common controversy whether the patented device has been largely used. If tire patent is of the relatively generic scope claimed for it, then it has been embodied in machines which have been extensively adopted; if it is of the precise and limited scope insisted on by defendant, it has had no commercial use. In such a case, to
Defendant’s machine is very different in appearance from Curtis’, and its operation is obscure. It has been necessary to study it in detail and observe the function of each part, but we are finally satisfied that it responds to the terms of the claim. It clearly accomplishes the general result; it feeds in longitudinally a completely slitted sheet and delivers the sheet at the other end fully expanded and in a plane right-angled to the plane of feed. It accomplishes this by turning the sheet over a diagonal edge in the feed table. This turning is done by a series of cams or wedges each of which meets and
We see no vital distinction in the fact that Curtis’ machine shows a pull transmitted from the further margin through the entire expanded portion, while defendant’s bending and turning force comes directly from the next strand, and is exerted strand by strand. Theoretically, Curtis completes his expansion strand by strand; practically, he probably does not. In theory, defendant’s cam or abutment has served its full office when it has turned a strand away in the other plane and bent the connectors; in practice, the cams are continued so that they control the whole expanding portion. The essence of Curtis’ invention — turning the slitted sheet at an angle as it flows over the diagonal edge of the support — is present just as much if the effective strain comes from the nearest strand as if from one or several further away. There are claims which say or imply that this operating pull is to qome from the further margin of the sheet, according to the form shown in the drawing; not so with claim 3.
Claim 5 we think controlled by the same consideration as claim 3, and it also should be held infringed. Claim 1 when compared with other claims cannot well be confined to a device having the diagonal edge which we think the essence of the invention. It seems intended to be broad enough to reach a sheet moving laterally over the edge of the support. Unless it has this construction, it does not seem to add anything to the other claims, and, with this construction, we think it too broad to be valid. Claims 8 and 10 are invalid for the same reasons. In view of our other conclusions, it is not very important whether claim 9 is valid and infringed; but we think it is. The claim was not rejected on Pitkin, does not contain the limitation to “drawing,” and infringement is clearer than of claim 3. As to validity, Pitkin'comes nearest to anticipating. Since Curtis regards his form as duplex, divided by a longitudinal center line, he must treat Pitkin from the same standpoint; but we cannot regard Pitkin’s series of lower cutting laws, diagonally arranged, as the full equivalent of Curtis’ diagonal edge over which the previously slitted sheet is turned and opened. We are not here constrained by the estoppel from any action by Curtis in the Patent Office.
The decree below is reversed, and the case remanded for the entry of a new decree in accordance herewith and pursuant to the disclaimer practice pointed out in Westinghouse Co. v. Cooper Co., 245 Fed. 463, 470, 157 C. C. A. 625. Appellants will recover one-half the costs of this court.
We give defendant the benefit of ah doubts, by assuming that the effect is the same as if the limiting words had been inserted by amendment.