67 F. 121 | 6th Cir. | 1895
Having stated the case as above,
delivered the opinion of the court
Prior to Cody’s application for a patent, a variety of devices had been contrived for heating cars by steam or hot water in pipes, and some of them had been patented.* In some there was shown a heater of water or generator of steam under each car, which circulated the water or steam through side coils in the car, and back to the boiler, or, in ease of steam, to a trap. Others took steam from the locomotive, and carried it directly through the body of the cars, either entire, or split into divided currents in each car, where it was circulated at the sides in coils .of pipe, with incidental arrangements for trapping the water of condensation. Still others, approaching more nearly the system in Cody’s patent, taking steam from the locomotive, carried it by a continuous pipe under the whole train, with joints at the end of each car, and with devices for taking off the steam in whole or in part, for the supply of the cars in the train, according to their number. The steam thus taken off was carried up into the car, and there circulated, with more or less efficiency, in 'coils of pipe variously arranged along the sides of the car, and, after being condensed, was drained into a trap. William Martin had in the year 1883 contrived a system in its general features like the last described, and was then experimenting with it upon the cars of the Dunkirk, Allegheny Valley & Pittsburgh Railroad Company,—-a railroad running out of Dunkirk, N. Y., to Pittsburgh, Pa. This system had not yet been perfected. Difficulties were encountered with it, which the author was endeavoring, by study and experiment, to overcome. One of those difficulties, and probably the principal one, was that of so arranging the pipes as to get a continuous flow of steam through the coils of pipes and the drums, unimpeded by pockets of air and water from the condensing steam which would be formed in the circuit by the change in the horizontal plane of the car and pipes in passing over the changing grades of the road. Some other difficulties were to be overcome, which it is not neces sary here to dwell upon. This, as we gather from the proof, was the condition of things, with respect to the Martin system, in the latter part of the year 1883. In November of that year, Cody was employed by the company in which Martin, was interested, and of which he was manager, to work for it in fitting and putting into cars their steam-heating apparatus, and remained in that employment until the following March. During that time certain improvements were introduced into the Martin system which resulted in removing the principal difficulties which had been en
*125 “Second. I supply hot steam to the upper courses of coils in the car, at or near the center, longitudinally, on both sides of the ear, this steam traveling both ways to the end of the car, in pipes inclined downward toward the ends of the car, and on its return it travels from,the ends of the car, in the lower courses of the pipes which incline downward to the center of the car, where they connect with a common waste pipe.”
This was but a short time prior to the application of Martin showing a, device of similar character to that contained in Cody’s amendment, Martin’s application having been filed March 30, 3885, and the proof unquestionably shows that the device had been in use a year or two prior to either application. There is no suggestion in the bill that Cody’s invention had been made prior to his application, and, upon, the face of it, the presumption would be that the invention was contemporaneous with the application. The claim was afterwards further amended, upon objections to its form, so as to stand as it appears in the patent. By the rule of construction to which we have already referred, this second claim, by reference to the specifications as they now stand, is for the invention of a combination which includes, as an element, side coils constructed so as to dip from the center of the car to the ends, and back to the center, whereby effectual drainage and a free flow of steam are secdred.
By section 4892 of the Revised Statutes the applicant is required to make oath that he believes himself to be the original inventor of the improvement for which he solicits a patent. Cody made such oath on making his original application, but did not make oath in respect to the matter brought in by the amendment. bio doubt, it is competent to amend the specifications while the application is pending, so loug as it is done within the scope of the original application; but it is not competent, under color of this privilege, to introduce new matter. Systems of car heating in use at the time of Cody’s alleged invention, such as Sewall’s and Martin’s, showed substantially the same combinations as his, except that they did not contain this characteristic element. It is true, some of the parts of those systems were susceptible of mechanical improvement,—such, for instance, as the substitution of a better kind of trap for discharging the condensed water, but which involved no change in the principle of the combination. We are therefore to inquire whether the matter of the amendment in this case was new. As we have said, this peculiarity of construction did not appear in any part of the application originally. It is admitted by the appellee that it is an essential feature of the patent. If is said by its counsel, in Ms brief:
“Another element in the problem was caused by the faet that, cars seldom stood upon level tracks when cut out from the train, and very frequently were on inclines during the running of the train. In orderto meet this condition, it became necessary to permit steam to enter at the highest point in the car system, from the train pipe, and to give it sufficient decline, and trapping it at the lowest point, so as to permit, at all times, all of the water to run out at the trap, and not to accumulate in the pipes at the lower end of the car. or upon the lower side. An incline of only a couple of inches would he sufficient, but would not show in a patent-office drawing, unless greatly proportionally exaggerated.”
“The reason is that a pipe that is perfectly level, running from end to end of the car, wouldn’t work when one end of the car was lower than the other is. It would form ¿ trap at the lower end of the car, and the condensed steam would not circulate.”
The leading case upon this subject is that of Railway Co. v. Sayles, 97 U. S. 554. That case involved the validity of Tanner’s patent for a brake to apply to double trucks under railroad cars. Prior to the patent, and prior to the application therefor, various devices for the same purpose had been patented, but the desideratum was a system which could be operated from one end of the car. The original application for the Tanner patent did not show an invention which accomplished this, but an amendment made some years later showed such a device.* It was held that the patent must be limited to the structure shown by the application. And it was said by Mr. Justice Bradley, delivering the opinion of the court, that, if the amended application and model embodied any material addition to or variance from the original,—anything that was not comprised in that,—such addition or variance could not be sustained on the original application:
“The law does not permit such enlargements of an original specification, which would interfere with other inventors who have entered the field in the meantime, any more than it does in the case of reissues of patents previously granted. Courts should regard with jealousy and disfavor any attempts to enlarge the scope of an application once filed, or of a patent once granted, the effect of which would be to enable the patentee to appropriate other inventions made prior to such alteration, or to appropriate that which has in the meantime gone into public use.”
In that case five years elapsed after the application was filed before the amendment was made. In this case a' much less period intervened, but the length of time is not a controlling consideration, as is shown in the cases hereafter to be referred to.
It will be seen from the opinion in Railway Co. v. Sayles that the objection to new matter brought in by amendment of the specifications stands upon the same ground as when it is introduced upon a reissue, and in respect to the latter the statute declares that it shall not be done. Rev. St. § 4916.
Following that case was that of Eagleton Manuf’g Co. v. West, Bradley & Cary Manuf’g Co., in which there was an opinion at the circuit" by Judge Wheeler, which is reported in 2 Fed. 774. The substance of his opinion was adopted by the supreme court in the same case (111 U. S. 490, 4 Sup. Ct. 593), and the judgment affirmed. In that case the application for the patent sued on was made in July, 1868. The applicant died in February, 1870. The specific
In the very carefully considered case of Brush Electric Co. v. Julien Electric Co., 41, Fed. 679, was introduced a patent for a secondary battery element or electrode consisting of a plate constructed of materials therein described, and having grooves, receptacles, or perforations therein. When the application was originally filed, neither the specifications, drawings, nor claims mentioned “perforaiions” extending through the plate. Nearly a year afterwards they were amended by the insertion of that term. Judge Coxe, in discussing the effect of this, said:
‘•The common meaning of ‘perforation’ is a hole or aperture passing through a body. It is argued that the patentee intended this meaning should be adopted, for ho says, ‘Fig. 8 shows a vertical section of a ribbed plate provided with slots or perioral ions extending through the plate.’ And yet other parts of the specifications would indicate that he intended no distinction between peiforarions and receptacles. As before stated, the language quoted first appeared a year after the original application was filed. The court has grave doubt, therefore, whether these facts do not: bring the ease within the rule laid down in Railway Co. v. Sayles, 97 U. S. 563; Kittle v. Hall, 29 Fed. 508, and cases there cited.”
Then, after pointing out that the words found in context with it meant cavities or cells, and that this was a sense in which the word “perforations” was sometimes used, he concludes:
“With considerable hesitation, 1 shall hold that those claims, as thus construed, are valid.”
The question was again presented in Refrigerating Mach. Co. v. Featherstone, 49 Fed. 916; Id., 147 U. S. 209, 13 Sup. Ct. 283. There the applicant for a patent filed his application on the 24th day of November, 1875, and three days afterwards died. The attorneys whom he had appointed amended the specifications in December following, and the patent was granted on March 21, 3876. Just what the amendment was does not appear; and Judge Blodgett, while expressing great doubt whether the changes made in the specifications did not: vitiate the whole proceedings, and
“In Eagleton Manuf’g Co. v. West, Bradley & Cary Manuf’g Co., 111 U. S. 490, 498, 4 Sup. Ct. 593, before referred to, tbe patent was lield invalid because the authority given to Eagleton’s attorneys ended at his death, and the patent was granted upon amendments made by the attorneys without any new oath by the administratrix. And Mr. Justice Blatchford, speaking for the court, said that the file wrapper showed, ‘beyond doubt, that there was no suggestion, in the specification signed and sworn to by Eagleton, of the invention described in the amendment,’ and that ‘in view of the entire change in the specification, as to the invention described, the patent, to be valid, should have been granted on an application made and sworn to by the administratrix. The specification, as issued, bears the signature of Eagleton, and not of the administratrix; and it is sufficiently shown that the patent was granted on the application and oath of Eagleton, and for an invention which he never made.’ In the case at bar there was not only no amplification of the original application by the amendment, but it was within the scope of the original specification, and a limitation and narrowing of the original claim, so that it was the identical invention sworn to by Boyle; and there was no more reason for requiring a new oath from his administratrix than there would have been for requiring it from Boyle himself.”
And it was held that the amendment did not render the patent void. Prom this, it would seem to be the opinion of that court that the statute requiring an oath to an amendment by administrators, etc., does not apply to an amendment which would not require a new oath from the original applicant, if he were still living, and taken in connection with Eagleton Manuf'g Co. v. West, Bradley & Cary Manuf'g Co., above referred to, would seem to indicate the test to be whether the amendment is within the scope of the. original application, or introduces new matter. As was said by Judge Woods in delivering the opinion of the circuit court of appeals in Western Electric Co. v. Sperry Electric Co., 7 C. C. A. 164, 58 Fed. 186, 196:
“So long as he [the inventor] did not change the structure of his device or his invention, he had the right to change the specifications.”.
Robinson on Patents states the law thus:
“Amendments in substance can be made only within certain limits, and under certain prescribed conditions. No new matter can, under any circumstances, be introduced by amendment. New matter is that which is not found in the specification, drawings, or model, as first filed, and which involves a departure from the original invention. Such matter must necessarily be a distinct art or instrument, or a new and separately patentable improvement on the old, and can be now presented only in a separate application. The scope of the amending power is limited to such alterations of description and assertion as do not affect the essential character of the invention or the person of the patentee. Eor a mistake in these the only*129 remedy is by the issue of a new, original patent, upon an independent application.” Sections 561, 635.
Counsel for the appellee, in discussing this subject, and excusing the insufficiency of the drawings to show this feature of the patented device, urges that they do not prevent “such variations in an apparatus, in form, shape, and proportions, as common sense or mechanical skill in that art would suggest. Rather, they are addressed to persons skilled in the art, who can supplement, them with their technical knowledge.” Admitting this to be so, and to be applicable to the written specifications also, still it carries the doctrine to its verge; and, if the drawings and specifications fail to indicate the device to those conversant with the art and having the mechanical skill peculiar thereto, they a.re insufficient, and the patent does not include the device. Applying- this as a further test, and bearing in mind what has already been said by us, and claimed by the counsel for the appellee, in respect, to the problem of getting rid of pockets of air and the water of condensation, the conclusion is inevitable that the taking into the combination of the element of coils of pipe so arranged as to get rid of the difficulty was something new. Would it naturally occur to one possessing merely mechanical skill to arrange the coils in the effective way shown in the patent? If so, then there was nothing new, in the nature of invention, in the mailer covered by the claim, for the obvious hints to the mechanic existed in the systems proposed to be improved upon. If not, it is clear that the invention was that shown by the amendment of the specifications, and only that. The combination is useless without that feature, and the bringing it in would be the last step in reaching success. If it was invention, it was an invention not hinted at in the original application; and, if the patent is to be restricted to the substance of that application, the claim is invalid because the invention was not useful. As has been said, the bill does not allege an invention by Cody prior to the date of Ms application. And the latter does not. carry the invention back to an earlier date. The evidence shows that the device, as patented, had been in public use for some time prior to the date of bis application. If it be permissible, as contended, to maintain Ms patent upon evidence, dehors the proceedings in (he patent office, that he had made the invention at an earlier date than is to be presumed from his application and patent, so as to cany it back to antedate the public use, the proof should be clear and unequivocal that he was the original inventor. Eagleton Manuf'g Co. v. West, Bradley & Cary Manuf’g Co., 2 Fed. 774, 777; Rob. Pat. § 1026, note 14, and cases cited. There is much evidence in this record upon that, subject. Without here going into detail, it suffices to say that we have serious doubt whether Cody was the original inventor of the device represented by this combination of his patent. If the evidence in its favor were fortified by the presumption of validity afforded by the patent in ordinary cases, we might think it right that that should turn the scale, and that this claim in the patent should be held valid. But the presumption does not apply in such circumstances, and the burden of proof is
We are of opinion that the second claim cannot be supported, in view of the history of that element of the combination, without which the invention is not useful, and that the patent, as to that claim, is therefore void. The decree below should be reversed, and the bill dismissed.