108 F. 659 | 7th Cir. | 1901
Lead Opinion
The injunction against infringement was asked only upon claims (1), (2), (3), & (4) of the re-issue patent. These are identical with the like numbered claims in the original patent. There is nothing, therefore, in the particular re-issued claims, upon which relief is asked, different from the original claims. The decree of the Circuit Court in following the re-issue, did not expand or alter what would have been appellee's right, had there been no re-issue, and the suit had been brought upon the original Letters Patent.
But it is insisted that the claims added in the re-issue (though not brought into this case as a base for an injunctional order) were not within the right of the commissioner to allow, upon the showing of facts there made; and our attention is invited to the petition for reissue, as failing to show facts sufficient to give the commissioner jurisdiction. It is urged, in view of this, and of the progress of the art between the dates of the original and the re-issue Letters, that the success of the appellee in procuring the re-issue is in the nature of a fraud.
The defect of the argument is that it assumes that we have before us, in this case, all the facts that the commissioner had before him in the application for a re-issue; and that we can, in a collateral proceeding, declare the patent fraudulent, on account of the supposed imposition upon the commissioner. The statute relating to the sub
It will be seen that there is in this statute no provision relating to the medium of the required proof. It is not provided that the proof of the facts upon which a re-issue may he granted — the inoperaüveness or invalidity of the original patent, through inadvertence, accident or mistake, and without deceptive intention — shall he by affidavit, deposition, or oral testimony. It is not provided chat the at-iention of the commissioner shall he called to such facts by any set petition, or other papier writing. This may be done, so far as statutory procedure goes, by oral testimony. All that the statute contemplates is that the judgment of the commissioner shall he satisfied; and this is, of course, presumed from the fact that the re-issue was granted. In the absence of the whole case submitted to the commissioner — petition, affidavits, oral testimony and all — upon which he acted, we can not determine, had we the power, chat there were not before Mm facts sufficient to give him jurisdiction to grant a re-issue, or that the commissioner was misled. There seems to us to be no error in this particular of the case.
This brings us to the questions of invention and patentability. The Iluribut dental spittoon consists of an inner bowl set within an outer howl, the inner one so arranged that it may revolve, without much friction, upon a pin point bearing. Against the inner surface of the inner' howl a jet of water is (brown tangentially, so adjusted in quantity and pressure that, while the bowl is caused to revolve, the revolution is accomplished easily and quietly, and the water permitted to spread like a flushing veil or sheet over the whole surface. Overflow is prevented by an annular ring, and space for the escape of air from the waste pipe is found between the outer surface of the inner bowl and the inner surface of the outer. The effect is noiselessness, a tasteful appearance, and a sense of purity and cleanliness. The spittoon immediately superseded the dental spittoons preceding it.
The 'White dental spittoon, in existence before 1890, seems to have been the point at which the art, up to the Hurlbut spittoon, had reached its climax. The White spittoon was a single stationary bow!, through which rose centrally, nearly to the level of the rim. a vertical rod carrying a water-spraying device that, turning pivotally on suitable bearings, distributed the water over the inner surface of the howl, subjecting its surface to a spray, such as comes to a lawn from a water sprinkler. It was, to a certain degree, cleanly and tasteful, and went into-general use; hut its differentiation from the Iluribut spittoon, ajipearing six years later, is well marked. In the White
The other patents cited — the Finney, Bliss, Fletcher, and Warner —are of a like construction, each having the. stationary bowl, supplied with stationary water distributors. They fall short, therefore, as did the White, of the peculiar adaptation that gives to the Hurl-but spittoon its perfection as a dental bowl.
Usually in any art the approach to the highest attainment is gradual ; the final result reached is but a step beyond its immediate predecessor. But in the art of dental spittoons the approach to the Hurl-but invention seems to have been by a long leap from its immediate predecessor. The transition from the White to the Hurlbut is in the nature of a decided departure, if not a. new creation. We are of the opinion that the thought that conceived this new help to the ills of mankind is invention, and that its embodiment, in the mechanical means employed, completes the act as patentable invention.
But though nothing is brought forward from the dental art as anticipatory of the transition from the White to the Hurlbut spittoon, the Bardsley patent — confessedly in another field — is urged as having made the Hurlbut spittoon so obvious, that what followed could only have been mechanical adaptation. We can not concur in this view.
The Bardsley patent was for a rotary fluid motor. Its sole purpose was to obtain power from a jet of water, and transmit it by a shaft to some other apparatus. It carried with it no thought of, or provision for, the flushing of water that causes self cleansing; it contained, indeed, no purpose of self cleansing. There was in it no basin, as a receptacle for the discharges from the patient; no provision for noiselessness; no suggestion of sightliness; none of the details that, taken together, constitute the tout ensemble of the Hurlbut spittoon. It is true that, the underlying idea of the Hurlbut spittoon, well in mind, a glance at the Bardsley motor might reveal, in rough, the means for its mechanical embodiment; but the gist of invention is just this conception of the underlying idea — the mental, rather than the manual act — the burst of thought, rather than the reduction of the thought to practice. The Bardsley motor, in our opinion, had nothing in it that was calculated to reveal, in its entirety, the Hurlbut dental spittoon.
Indeed, the Bardsley motor only utilized a well known law of nature- — that a jet of water, applied tangentially to the inner surface of a basin nicely pivoted, would tend to revolve it. This had been partially exemplified, for many years-, in preceding water motors;
There was no error in the decree of the Circuit Court, and it is accordingly affirmed.
Dissenting Opinion
(dissenting). I am not able to agree that the Hurlbut device embodies invention, though, the Bardsley patent out of the way, its patentability I think should be conceded. Its meritorious feature is the re voluble bowl washed by the water which1 revolves it. As a mechanism it is in this particular completely anticipated by the Bardsley device, which in the form illustrated in the patent is capable of use as a spittoon, while if its disk be given the depth and contour of a dental-cuspidor it becomes, the complete exemplification of Hurlbut’s construction. In the patent it was called a “motor,” but was it for that reason any less a. mechanism of which Hurlbut or any other mechanical inventor was bound to take cognizance than if it had been stated in the patent that it might also be used as a self-cleansing cuspidor?
In respect to invention in the adaptation of an existing device to a new use, the rule is thus stated in Potts & Co. v. Creager, 155 U. S. 597, 608, 15 Sup. Ct. 194, 199, 39 L. Ed. 275, 279:
“As a result of the authorities upon this subject, it may be said that, if the now use bo so nearly analogous to the former one that the applicability of the device to Us new use would occur to a person of ordinary mechanical skill, it is only a case of double use; but if the relations between them he remote, and especially if the use of the old device produce a new result, it may at least involve an exercise of the inventive faculty. Much, however, must still depend upon the nature of the changes required to adapt the device to its new use.”
The significance of the last sentence should not be overlooked. The following cases cited in the briefs afford pertinent illustrations of the application of the rule: American Road-Mach. Co. v. Pennock & Sharp Co., 164 U. S. 26, 17 Sup. Ct. 1, 41 L. Ed. 337; Iron Works v. Fraser, 153 U. S. 332, 14 Sup. Ct. 883, 38 L. Ed. 734; Trimmer Co. v. Stevens, 137 U. S. 423, 11 Sup. Ct. 150, 34 L. Ed. 719; Aron v. Railroad Co., 132 U. S. 84, 10 Sup. Ct. 24, 33 L. Ed. 272; Briggs v. Ice Co., 20 U. S. App. 374, 8 C. C. A. 480, 60 Fed. 87; Gustin v. Mill Co., 9 U. S. App. 301, 3 C. C. A. 474, 53 Fed. 120; Thomson-Houston Electric Co. v. Western Electric Co., 34 U. S. App. 186, 16 C. C. A. 642, 70 Fed. 69; Mast, Foos & Co. v. Stover Mfg. Co., 177 U. S. 485, 20 Sup. Ct. 708, 44 L. Ed. 856. These and many like cases, as I understand them, proceed upon the theory that the mechanical art
If it be insisted that the Bardsley device is to be distinguished because its only intended function was as a “fluid motor,” the answer is that in the cuspidor of Hurlbut it has the same function. If it be said to run nothing but itself, it is nevertheless a motor. The rotating part of the cuspidor may be regarded, perhaps, with equal fairness, from either of two points of view,- — as a modified form of the Bardsley motor, or as a Bardsley motor with a bowl attached, to which it imparts a motion identical with its own. The disk on which the water impinges is described in the’ specification as having upon its outer edge a projecting flange, which by preference is bent inward slightly at the top; and the central portion is described as being, if desired, in the form of spokes or open work. To substitute for the central portion, whether solid or consisting of spokes or open work, a bowl, of whatever shape, would not change the essential character of the structure, whether the bowl be attached to, or made integral with, the flange. In either form the presence of tlie Bardsley motor, acting as a motor to revolve the bowl, is evident.
In the case of Johnson v. McCurdy (decided to-day by this court) 108 Fed. 671, it is said:
“Nor can tlie Bardsley patent bo construed to rightfully exclude others from using a jet of water tangentially applied to the inner surface of tlie bowl to revolve the bowl. This was a law of nature, well known before the Bardsley device.”
If this be true, it is equally fatal to the Hurlbut device, which, without the revolving bowl moved by a tangential jet of water, is manifestly without patentable novelty. The other parts of the combination were in familiar use in earlier devices, in substantially similar relations and serving the same uses as in this combination. Neither patent, however, as I conceive, is subject to the objection stated, — not more than a patent for a turbine or other form of wheel
