254 F. 970 | 6th Cir. | 1919
An application for rehearing demonstrates inaccuracy in the opinion filed, and necessitates further discussion.
It was the theory of the opinion that.the diagonally edged support is the essence of the invention, and that the language of the claims which we sustained justifies, and the whole case requires, the conclusion that such support should be implied as an element in these claims. It is now pointed out that this diagonal support is expressly specified in certain other claims not in suit, and hence that it should not be read into claims where it is not named. The rule invoked does not go to the extent which requires its application here. We suppose the reason of the rule is that each claim is supposed to have a distinguishing characteristic, and that no construction should be unnecessarily adopted which would cause two claims to he identical. From this reason, it follows that the prohibition is directed, not broadly against importing into one claim a specific limitation expressed in another, but, when stated with precision, is aimed against .importing a limitation of that character when, by it alone, the two claims come to be different. If we apply the rule thus stated to the present case, and, for example, to claim 3, and compare it with claim 2, which bears the closest resemblance to claim 3, we must concede that claim 2 expressly calls for the diagonal support by saying “the edge of the support being arranged at an angle to the direction of the feed,” while claim 3 includes it only by the implication arising from the call for feeding the sheet lengthwise and expanding the sheet by drawing it away from the plane of the support, thus employing the support with the diagonal edge; but we further observe that claim 2 calls for “means for continuously drawing the sheet over the edge of the support,” while claim 3 calls for “means for drawing it away from the plane of the support,” and that claim 3 specifies, while claim 2 does not, “means for continuously feeding the sheet lengthwise.” These distinctions may not be very substantial; but the draftsman intended them to have distinguishing effect, and we are not inclined to overlook them for the sake of compelling what we think a substantially wrong result. With respect to
In this connection, two models have been submitted with the rehearing application which are designed to show that a structure can be made fully responding to claim 3 and yet having no diagonal edge support. As to that model which illustrates the progressive operation, it is to be observed, first, that for the missing diagonal support it provides an approximate substitute in the form of two points of support diagonally disposed; and, second, that the claim by its terms fairly contemplates expansion as the sheet is drawn off the support; while in the model the sheet “passes off the same” (the support) mostly unexpanded. We are not satisfied that there was error in our construction of the claim in this respect.
The opinion stated that claim 9
The opinion said that claim 5 should also be construed to include the limitation to the diagonal support. This seems to have been an inadvertent reading of claim 6 instead of claim 5. Claim 6 contains this express limitation; claim 5 is the same, verbatim, excepting the limitation. It, therefore, most certainly cannot be read into claim 5; and claim 5 must be classed with 1, 8, and 10, and be considered invalid. Claim 6 was at first sued upon, but later plaintiff omitted it from the list of those upon which he intended to depend. This was done because he adopted a theory of the respective meanings of 5 and 6 which we have not been able to approve, and which seems to have been nothing more than that hypothesis which is not an election.
. There is no occasion to open the case at this stage for further proof regarding defendant’s new machine. Whether that infringes may be considered in the court below in any way in which such questions are commonly presented.
Upon what may be considered the main, meritorious question, re-argued and presented most exhaustively, we are not convinced that we reached the wrong conclusion. We think the substance of Curtis' invention lay in the diagonal supporting edge over which the longitudinally moving slitted sheet was deflected and expanded at an angle to the plane of the sheet, and that defendant’s device is rightly thus described. We also adhere to the view that the sheet is “drawn” over the edge in the fair sense which the whole record requires should be given to that word in the patent.
The application for rehearing and the motion to reopen are denied.
Claim &: “The machine for expanded previously slitted sheet metal wherein are combined means tor feeding the sheet longitudinally and continuously, with means for holding a longitudinal marginal portion of the unexpanded sheet in a fixed plane and means for deflecting the adjacent longitudinal portion of the sheet from said plano and simultaneously expanding it.”
Mr. Justice Holmes in Northern Co. v. Grandview Co., 203 U. S. 106, 108, 27 Sup. Ct. 27, 51 L. Ed. 109.