104 F. 345 | 8th Cir. | 1900
after stating tbe case as above, delivered tbe opinion of tbe court.
The decision of tbe case in band binges on the construction which shall be given to claims 1 and 4 of tbe Brown patent, quoted above, and principally on tbe construction which shall be given to claim 1. Tbe contentions of tbe respective parties, stated briefly, are as follows : Tbe appellant insists that the invention of Brown covered by bis first claim must be confined to “a supplemental chamber at tbe side (and not underneath or above) tbe main roasting chamber,” because tbe patentee has expressly limited himself to such a location of tbe supplemental chamber by the language of bis claim, and because tbe margin of invention is so small, in view of tbe state of tbe art when tbe patent was issued, that it will not admit of a broader interpretation of tbe claim. On tbe other band, tbe appellee insists that tbe invention covered by tbe first claim is so far primary that tbe claim should be construed liberally so as to cover tbe actual invention disclosed by tbe specification, and that it should be held to comprehend a supplemental chamber placed underneath tbe roasting chamber, which is designed solely to protect tbe chain and trucks by which the rabbles are operated, as well as a chamber placed at tbe side thereof, and designed for tbe same purpose. Furnaces for tbe roasting and desulphurizing of mineral bearing ores were in use, as a matter of course, long prior to tbe date of Brown’s patent, and it seems that single-deck, double-deck, and possibly multiple-deck furnaces had been constructed and bad been in use for some years. In whatever form they were constructed, whether with a single deck or a double deck, it appears that it bad been found necessary to stir or agitate the ores in tbe roasting chambers so that they would be evenly and effectually exposed to tbe beat, and that various instru-mentalities bad been employed for that purpose. Tbe design or plan of a furnace which Brown annexes to bis specification is that of a double-deck furnace, and be says generally of bis invention that it “relates to that class of horizontal furnaces having two separate longitudinal compartments forming hearths, one above the other, with connecting passages between them, and employing carriages drawn by chains' or cables for gradually conveying the ore from the feeding to the discharge opening.” Further on in his specification, he points out the difficulties that had been encountered in the operation of furnaces, which his invention was intended to obviate, and in that behalf says-:
“A serious objection to many of the furnaces of the type herein shown has been that the chains and their attachments were drawn through the ■center of the furnaces, and were thereby exposed to the destroying action of the heat, dust, and fumes from the ore, and consequently these parts were soon destroyed. A second objection arose from the fact that the plows or stirrers traveled against the floor of the compartment, which, being usually made of brick, would not only soon be cut in channels and worn out, but the plows or stirrers themselves would also quickly be worn away. The essential part of my invention lies in constructing the furnaces so that these objectionable features are avoided, and the moving or carrying parts protected from the direct action of the heat, fumes, and dust.”
He then proceeds to describe the manner in which he obviates the ■difficulties above mentioned, by locating the chains and the trucks
It is no doubt true, as counsel for the appellant suggests, that in furnaces of the double-deck kind the supplemental chamber for housing the rabble-operating machinery, and protecting it from heat, cannot be conveniently located elsewhere than at the side of the roasting chamber, and that it cannot well be placed underneath the hearth, as in the Bopp patent. But it will not do, we think, to argue from this premise, or from the fact that Brown selected a furnace of the double-deck pattern to illustrate his invention, that he did not intend to claim .the supplemental chamber, except as it might be applied to double-deck furnaces, and located at the side of the main roasting chamber. It is most probable, we think, that in formulating his first claim he casually described the location, of the supplemental chamber as it appeared in the drawings of the double-dock furnace annexed to his specification, without intending to make the location of the chamber an essential part of his invention. In that part of his specification where he asserts, in substance, that the essential feature of his invention consists in constructing a supplemental chamber to protect the rabble-operating mechanism, he does not intimate that he regards the location thereof, whether it be above, below, or at the side of the roasting oven, as a matter of importance, while it is obvious, at a glance, that its location is nothing more than a matter of convenience. In a double-deck furnace it is most convenient and practicable to place the supplemental "chamber at the side of the main roasting oven; in a single-deck furnace it is equally convenient to locate it underneath the hearth, making a slot in the hearth, instead of in a partition wall, through which an arm may be projected to support and carry the rabbles. On whichever side of the four sides of the roasting oven the supplemental chamber is located, it operates in the same manner and accomplishes tin; same object. The merit of the invention, or, as the patentee himself says,' the ‘‘essential part” of it, consists in the conception of a supplemental chamber to protect certain important mechanism from the disastrous effects of heat. This conception having been formed, its location in the various kinds of furnaces to which it might be applied with equal effect, to obviate difficulties that were common to all, was purely a matter of choice or convenience.
After an examination of the various' patents that were introduced by 1he appellant to establish the stale of the art at the time of Brown’s application for a patent, we do not find that any inventor had described a method of protecting the rabble-operating mechanism of an ordinary ore-roasting furnace from the direct effects of heat by placing the mechanism in a supplemental chamber adjacent to the roasting oven, and separated therefrom by a wall or diaphragm. The
This brings us to the crucial question whether Brown’s first claim may be so construed as to embrace a supplemental chamber, located, as in the Ropp patent, underneath .the roasting chamber of a single-deck furnace, although the language of his claim locates it “at the side of the main roasting chamber.” As respects this question, the decision in the case of Winans v. Denmead, 15 How. 330, 14 L. Ed. 717, seems to be very much in point. In that case Winans had obtained a patent for a new method of constructing coal cars, and hr his specification had described the box of the car as circular, and had also claimed it specifically as being made in the form of the frustum of a cone. The defendant had constructed boxes for his coal cars in the form of the frustum of a pyramid, the sides thereof being recti-
We are unable to find in Brown's specification, considered as an entirety, or in the state of the art at the time his application was filed, sufficient reasons to warrant us in holding that he intended to claim less than what now appears to have been his full invention, and that the language of his claim locating the supplemental chamber “at the side of the main roasting chamber” was used deliberately for the purpose of limiting it. We can conceive of no reason for such a self-imposed limitation, since it is obvious that whether the supplemental chamber was placed at the side of the main roasting oven, or underneath, it would operate in the same manner and produce the same result. As we have before intimated, we think that the words stating the location of the supplemental chamber crept into the claim inadvertently, because of the style of furnace that happened to be
In opposition to this view, our attention is challenged to the decision in Keystone Bridge Co. v. Phœnix Iron Co., 95 U. S. 274, 24 L. Ed. 844, where, as it is claimed, a doctrine was announced which is fatal to a recovery in the present instance. In that case the language of a claim which described the lower cords of a truss bridge as a “series of wide and thin drilled eye bars, C, C, applied on edge between ribs,” was construed literally, and held not to comprehend cords made of round bars of iron flattened at the ends. A careful study of the decision, however, has served to convince us that the language last quoted was construed literally, because the court was satisfied by an examination of the specification that the patentee intended to make the form of the cords of the truss as described in Ms claim an essential part of his invention, and because the margin of invention in that case was so small as to necessitate a strict construction of the claim. The reasons which appear to have influenced that decision do not exist in the case in hand, because we are unable to say that Brown intended to claim less than he was entitled to claim, or that the state of the art demands a literal interpretation of his claim.
It is urged finally in behalf of the appellant that the decree which was entered by the lower court must, in any event, be modified so as to exempt it from an accounting for damages resulting from the infringement, because the appellee did not allege in his bill or tender any evidence that he had marked his machines with the word “Patented,” together with the day and year the patent was granted, or prove that the defendant was duly notified of the infringement, as required by section 4900 of the Revised Statutes. In support of this proposition, the appellant cites Dunlap v. Schofield, 152 U. S. 244, 14 Sup. Ct. 576, 38 L. Ed. 426; also Coupe v. Royer, 155 U. S. 565, 584, 15 Sup. Ct. 199, 39 L. Ed. 263. With reference to this point, it may- be said that, as this is an appeal taken under the provisions of section 7 of the act of March 3, 1891 (26 Stat. 828, c. 517), as amended by the act of February 18, 1895 (28 Stat. 666, c. 96), the decree below not having as yet become final, the appeal brings before this court for review only so much of the decree as awarded an injunction. Besides, we do not find that the attention of the lower court was directed to that clause of its decree which authorized an accounting as to the damages, and it may be that no damages will ever be claimed by the appellee or assessed in his favor. In view of these considerations, we do not deem it necessary at this time to wade through the great volume- of testimony to ascertain if there was, in fact, sufficient evidence that notice of the infringement had been given to the appellant to warrant a recovery of damages as well as profits. This question may well be left open for future consideration when there shall have been a final decree which awards damages. With this reservation of the right to consider the question last mentioned, if it shall ever become necessary to do so, the decree below is affirmed.