271 F. 665 | 6th Cir. | 1921
This appeal involves the questions of the validity and the infringement by appellee of letters patent 999,678, issued August 1, 1911, to C. W. Schultz and E. A. Sweeney. The United States District Court for the Eastern District of Michigan found this patent invalid, and that, even if valid, it was not infringed by the defendant. The original bill of complaint also averred infringement by the defendant of patent 999,677, issued to the same inventors, but plaintiff voluntarily dismissed the action as to this, patent.
The patent in suit relates to seat-back springs for vehicles, especially for automobile tonneaus, and the object of the invention is to provide means whereby particularly the upper part of the seat back may be rendered soft and resilient. It appears from the Patent Office record that the original application for this patent contained four separate claims, all of which were rejected-
“On Warner, 279,998, June 26, 1883, and Bonnell, 630,967, August 15, 1899, In view of German patent 150,293, of 1901, spring seats. See also German patent 99,707, of 1908, and Carre. 54,828, May 15, 1866, spring seats.”
“A seat-back spring construction comprising a frame formed of longitudinal and upright bars secured together, coil springs mounted on the same to project forward, and a series of upright spring ribbons formed by bending resilient wire to form flat sinuous curves, said ribbons connecting to the frame at their lower ends, extending upward over the fronts of the coil springs, and then forming loops, at. the top of this frame, their ends connecting ■ to the frame, and small coil springs connecting the upper portion of the adjacent spring ribbons.”
The application then contained two claims; claim 1 reading exactly as No. 2, except that No. 2 contained the following statement not found in No. 1:
“And small coil springs connecting the upper portion of the adjacent spring ribbons.”
The Patent Office against rejected claim 1, and allowed the new claim 2. The attorneys for the applicants then canceled original claim 1 and renumbered the new claim 2 as claim 1. That patent as issued contains this single claim. No change was made in the original specification.
The inventors accepted as final the adjudication of the Patent Examiner that claims 2, 3, and 4 of the original claims were anticipated by Warner and Bonnell, and amended their claims in accordance with this finding, but still retaining claim 1. Thereafter they accepted as final the rejection of claim 1, canceled the same, and requested that a patent be issued covering the single claim 2, renumbered as 1.
“Krom a review of tliese and other familiar eases, we think it is safe to deduce the proposition that where the claim defines an element in terms of its form, material, location or function, thereby apparently creating an express limitation, where that limitation pertains to the inventive step rather than to its mere environment, and where it imports a substantial function which the; patentee considered of importance to his invention, the court cannot be permitted to say that other forms, which the inventor thus declared not equivalent to what ho claimed as his invention, are nevertheless to be treated as equivalent, even though the court may conclude that his actual invention was of a scope which would have permitted the broader equivalency.”
It is the claim of the appellants that these wire connectors used by the defendant accomplish the same purpose, in the same manner, as the small coil springs specified in the claim in that patent; that in their specifications the only duty ascribed to these small coil springs is that of connectors, which transmits stresses from one arch to the next, and which prevents the upholstering from slipping through between arches; that, this is exactly what is accomplished by the wire loops of the seat-back springs now being manufactured by the defendant. It is evident, however, that these coil springs have a resiliency of their own, wholly independent of the resiliency of the wavy wire ribbon springs to which they are attached, and which they connect. Thai fact is suggested in the specifications in this language:
“The adjacent ribbons 15, may be connected by small coil springs 17, thus forming a soft, resilient cushion for the upper portion of the body and the head.”
This feature, of course, is wholly lacking in the wire loops used by the defendant, and to that extent, at least, these wire loops or connectors are not the equivalent of the small coil springs. However that may be, this record very clearly discloses that these small coil springs are by no means new to the art. In Osborne, 199,096, issued 1878, tliese small coil springs are used for a substantially identical purpose. The same is true of Hamilton, 208,591, issued the same year, and Edgar, 237,679, issued 1881.
It is therefore apparent that the use of these coil springs to conned the springs of the plaintiff’s construction, and which the Patent Office found to be the sole novelty in the claimed invention, was, at the time plaintiff’s application was filed, old in the patent art, and presented no novelty whatever, either in the character of the springs or the use to which they were applied.
For the reasons above stated, the judgment of the District Court is affirmed.