Sun Ray Gas Corp. v. Bellows-Claude Neon Co.

DENISON, Before HICK- HICKS, and ENLOOPER, Judges. Circuit Judge. HICKENLOOPER, Circuit Appellants urge invalidity of claim “system 1,125,476, for a of illu- minating (is- luminescent tubes” [neon] January application sued 19, 1915, upon Georges Claude), upon ground of insuf- specification upon ficient disclosure in the allegedly all-important subject essential and pressure; claim, printed and because margin,1 has what a used is said to be meaningless descriptive of ratio as the size ap- the electrodes. also It is claimed that the pellants’ infringe, tubes do elec- in that cap type trodes of the are are used, and these said to be “internal electrodes” nor to specifically “deprived have been of occluded gases,” and because the is said neon not to “previously purified.” We shall consider noninfringement. contention It is true that Claude disclosed specification a of purifying method the neon gas spot,” “on the tube was partially (to exhausted and then filled atomspherie pressure) less than gas, with said and that defendants do not use that method securing practically pure for a neon content their purifica for But this tubes. method of not, think, tion was essence vitally Claude’s He invention. was interested securing pure content, a necessary probably end it was de a method which scribe this could be accom n plished. a He has described such method. just coming At that time into production, by-product liquification air, pump and the various ing apparatus producing for vacuum were they today. much efficient than less A containing “1. A previously pur luminescent provided ified neon and illuminating internal electrodes being deprived said said electrodes having exceeding area occluded decrease ampere, 1.5 decimeters prevent the con vaporization of the electrodes upon the formation walls sequent containing electrodes, deposits proximity to said tube is whereby luminosity main said very period considerable tained constant gas.” without time fresh introduction of 887 pro- complete pressures, can tain practically vacuum be the ratio of at now1 least 1.5 substantially pure ampere duced, and a commercial decimeters of electrode surface is tube, wholly meaningless. admitted to the thus Both neon can then be contentions are necessity provisions dispensing upon the of Claude’s based the § with of Rev. St. 4888 (35 scavenging to 33 process. 33]), § feel U. S. C. We constrained TJSCA that the [35 specification “containing descrip previously the words shall contain “a construe written * ** purified tion of descriptive (invention) as the state neon” the such full, degree purity eoneise, after or exact terms as to en clear, the and any person when tube able troduction into the tube and such skilled in art or the science ready words, to operation. appertains, for In other the or is which it with which it is complete nearly con- connected, make, construct, claim calls most for the tube after to * * * ready operation, compound, same; one as for and use struction and the and and descriptive particu is patentee] a content of a substan- or shall applicant [the larly point distinctly tially pure part, neon. out and claim the improvement, or combination which he claims phrase light, Viewed in the above the discovery.” as his invention or Definiteness being deprived “said electrodes of occluded expressly description is required both the gases” general operates end, also to the same by claims. the terms of the But act although so to the it directed not much specification the also addressed those provision purity neon as to the initial of the art,” specification “skilled in the and should purity and an for a that continuance be held if sufficient a mechanic skilled through the sub- avoidance of contamination art, drawings with the and be gases. sequent Neither release occluded necessity him, fore 'and the without fur may regard- above discussed clauses nature, experiment ther an itself of inventive that, requiring ed as more com- than practice can construct and the invention of con- pleted, contain, the tube shall and shall 62, patent. O’Reilly Morse, 15 v. How. during operation, tinue to contain substan- 118, 119, Tyler 601; Boston, 14 L. Ed. 7 v. tially operatively pure and neon. is there- It Wall. 327, 93; 19 L. v. 330, Ed. Loom Co. fore immaterial the defendant 1177; Higgins, 580, 105 U. S. Ed. 585, 26 L. by puri- for use the methods disclosed Lamp Patent, The Incandescent 159 S.U. removing fying or for its neon the occluded 221; 465, 475, 75, 474, 16 Ct. Ed. S. 40 L. gases from and electrodes. Separation, Ltd., Hyde, 242 Minerals S.U. opinion are of the do- We also 286; 82, 37 S. Ct. 61 L. Ed. Beidler fendants’ electrodes are within call of S., 453, 447, 564, U. S. S. Ct. U.. claim “internal for electrodes.” It well 1006; Paper L. Ed. Eibel Co. v. U. cap improve- lie that electrodes 45, 322, 67 L. S. 43 S. Ct. Ed. 66, Amer cylindrical upon type, op- open ment Steward, 731, ican Lava Co. 155 F. posing ends, were, and that the fact that there 6), 46, 161, C. affirmed 215 S. U. S. A. Ct. might be, designs shapes or more useful Featheredge L. Ed. Rubber Co. cylindrical for the electrodes 565, v. Miller Rubber plate types use, may in common not have then many 6), are a few of the A. es authorities mind of think occurred but we tablishing the rule decision in such eases. distinguish that he intended between In some above authorities (of carbon, graphite, those electrodes or met- vagueness claims were held void or in al) which came into immediate contact with sufficiency description; of the in others the directly and which were connected description adequate. was held The difficul with electric conductors ty rule, applica is not with the but with its electrodes which were external to the tion, applying 1’egard and in due must be operated did not contact given principles to the collateral induction. It is obvious defendant’s (Motion measure the invention claims Picture fall within electrodes the former and not cap Mfg. Patents Film Co. Universal types. two latter 510, 416, U. S. S. Ct. 61 L. Ed. question A somewhat more difficult A. 1918A, is L. R. Ann. 1917E, Cas. presented the contention that the disclo Paper Bag Case, Patent subjects sure vol L. Ed. McClain v. wholly ume of the neon is en Ortmayer, 419, 424, 12 insufficient to U. S. Ct. one, though even of that able time to be 800), L. Ed. that such claims should be liber practice ally uphold considered skilled destroy so as construed invention; that, except regards right inventor, cer- especially Ap generic (Temco Nor ease invention do we consider that Claude was the 170, 72 L. co to conceive that the use of electrodes of 298), vastly a claim is not invalidated and that increased surface area would reduce immaterial, “sputtering” of that well the omission which is volatilization of the elec- easi specification, trodes, known, described in the thus longer conduce to a life ly by particular by supplied one in the decreasing skilled the imprisonment the of gas and atoms of art. That which was understood the in is, plating adjacent the necessary operative be, claim patent to make the electrodes. Moore, 755,- See No. may provided always implied therein, really then be March 1904. What Claude description speci conductivity of the claim discovered was that the aof requirements pure fication is great sufficient to meet the and its resistance to phase change by of the of chemical the rule first above discussed. when rendered luminous Westinghouse Boyden Brake electric Cf. Power peculiarly v. were such toas adapt 707, 42 L. it to use in Co., 170 18 Ct. Geissler tubes of the Moore type. Claude Deering Harvester himself in v. Winona said one instance: 39 “I Works, 286, 302, 15 beyond my 155 have succeeded expectations in way the of Higgins, supra; simple a utilization neon, L. Ed. v. Loom Co. Geissler tubes, similar Evans, 7); Jones to the tube.” (C. 586 C. A. Moore F. subject patent The & was a Sterling Crown Cork luminescent Cork Co. v. & Seal change tube. prior The over (C. the art—-the 6). Seal 217 F. 381 A. In each C. step advance the ef- determine, pri substitution and such ease seek to one must —was maintenance, ficient tube, in a marily, just Moore inventor con what it was lieu of the commoner patent (cf. theretofore sought ceived and to describe (nitrogen dioxide). used This carbon A. Mossberg Nutter, C. [C. employ higher substitution enabled him to 1]); in the if when construed and, the claims pressure (greater volume) gaseous of the prior light art dis of the content, which, being neon also more inert truly valua invention, close meritorious —a gases formerly than used, dispensed the with go step art, ble will advance —courts necessity the periodic replenishment possible upholding as far such claims. as gas through large a breather valve. The Wadham, F.(2d) Co. Permutit Cf. tubes, greatly enlarged electrodes, Eng (C. 6); Cincinnati Cadillac Co. v. C. A. quantity pressure creased F.(2d) (C. lish & Mersick C. possible only neon, intrinsic 6).A. gas nature of the neon itself, all contributed to an longevity increased prior and commercial art in the instant ease The utility. specifica of the of the disclosure extent subject pressure fully upon tion step But this was not a substitution mere upon other opinions rendered set forth in the recognized of materials theretofore avail- as was-, patent adjudications of the in suit. See equivalents purpose; able for such a old; Son, 27 Lights E. Machlett & Neon Claude combination, a true albeit known or 2); (C. case on F.(2d) 702 C. A. the same elements, co-operating produce a new 36 F.(2d) 574, subsequent appeal (C. A.)C. product enlarged! which was available for an Lights v. American Neon Claude Neon prop- commercial use because of its inherent 2); (C. F.(2d) 548 C. A. Light Corp., longer erties and its life. It is immaterial Products, Inc., Bril Neon Electrical apparently regarded Claude peculiar- that Claude F.(2d) C., Sign (D. orange-red light neon,, liant Tube color emitted F.(2d) C. Washington), reversed ignited, (French patent, as a detriment master report special of the 9); 434,525, 6,1912), A. Feb. or that Neale, Corporation v. fully Products understood, in Electrical as not have as is- (2d) (D. C., Cal., So. Inc., to-day, Dist. fact principles underlying the- need not Div.). Repetition detail operation relationship of his Central be- Judge say, as sputtering density It be made. is sufficient tween and current or the- here Case, drop, Maehlett eathode in the second the effect of the- Hand said place; operative- “understood all that took determination of the most efficient prior art electrode, surface area drop, its effect ratio between electrode and cur- the cathode played imprisonment density, part of atoms of the heat in the- resulting rent electrodes, like. consequent volatilization of the exhaustion gas, the enough if would seem he made a It valuable- point of non-con final ratification to the its though' a-. to the even contribution duction.” great hours, present 1,000 and that the ele one of tbe material which substitution utility tubes almost commercial of neon due consisted, provided of those combined ment discovery by exclusively some to the later invention, involved such substitution using pressures as advantages of Goodyear one ease Smith v. think was the here. argu mm., high mm., or even 486, 496, 23 Co., 93 U. S. Dental Vulcanite in establishing falls far short ment still Light v. U. L. Ed. Edison Electric validity. The invention 2); A. Lighting 52 E. subsequent all devel primary one on which Ed.) 66; and com (6th Walker on Patents opments The test is not that were founded. Corp., 276 U. S. pare, Corona Co. v. Dovan operative utility, but rather 72 L. Ed. 610. step. The utility forward light what Construing the claim in liberality of construction to that entitled already said, appropriate pressure been has generic inventions, and so is accorded which must under- operative to the tube be make utility find no lack construed specification stood. The contains a somewhat Telephone Act. The sense of Patent “de ambiguous translation of the Drench 778, L. Cases, 1, 535, 126 U. S. S. Ct. as indi- l’ordre du millimetre de mereure” Mastoras, 863; Hildreth v. 257 U. S. Ed. acceptable cating preferred pressure, an or 27, 112; Mergen Ed. 34, 20, 42 S. Ct. 66 L. immediately by “that is but is followed Linotype Pub. 57 D. Co. Press thaler higher nitro- say least ten times than in to at 502, (C. C., J.); Scott v. Fisher N. gen resulting provision in tubes a (C. Knitting 915, Machine great- is likewise more than ten times which Barnett, 288 2); C. A. A. B. Dick v.Co. indicating er.” There is evidence 799, 2); McDonough C. A. at operated Moore tubes were about two- F.(2d) 375, 380 Johnson-Wentworth and this pressure tenths of a millimeter of 8).A.C. operating pressure of one or two millimeters to this connection it is also be observed In conform with seems to the disclosures although operative pressure an be that, is to May patent 424,190, to Drench implied construing claim, pres- 6, 1911, says that, where he immersion his indicated sure used liquid carbon air, container in “the specification appellants’ con- (according to pressure falls, ternal instance, to one or tention) not does serve to limit the claim to two millimeters due to the fact carbon pressure Paper alone. that and that The gases, absorb that is, will soon all of the Patent, 405, 418, Bag U. S. oxygen, nitrogen, portion all of the and a is 748, 52 L. Ed. 1122. The claim silent to neon the helium.” is also There pressure. limitation, and There is thus no tending prove evidence that Claude was es- to any operative pressures all are therefore pecially in illumination or interested volume failing appellants included. The in the de- that or light, pressures it at of one is nonutility fense of of a tube of one greatest intensity millimeters that the two they pressure, be two millimeters must also lighting appel- is Thus effect obtained. that, failed the defense under held have in urge that lants foundation is laid for the 4888 (35 33), USCA the de- § Kev. St. argument that, pressure operative if an is permit scription is one skilled insufficient be it at implied, mm., exceed cannot practice invention, in for the the art to pressure the want patent must fail for that at teaches construction least life utility, that a of at least best, pressure and kind. of a tube of that At l,000„hours required, is that at even two pressure of more greatly increased pressure millimeters the life of the would improvement is which modern device but requirement be minimum far less patent. original invalidate the not operation. No is for successful contention however, made, inoperative Finally, that the tube was is that at the indicated it claimed pressures, say, mm., or that 1.5 pressure at lower the use the ratio of these pressure at ten surface area em- times the com- decimeters electrode previously arbi- greatly pere claim, moner used did stated and, meaningless, increase life of tube. The con- since it was this trary 2 mm. tention is that it increase life of not to exceed which Claude did not Conceding mind, rep- at 1,000 pres- least hours. had in indicated did not ratio competitive above all was day require point,” ent conditions life a “critical which a resent hours, good bad, all was 1,000 below which and this contemplated that Claude say 2 mm. We do pressure, pres- use of invalidated the claim. not deem at this necessary, claim, that uphold the life of in order to sure the tube would less be much area, designate a critical as tral and similar tubes, pressures stated ratio averaging by Judge Manton of millimeter; was found a that, multiplying so 5/10 by F.(2d) 702, (C. A.) ten, Maehlett contemplating Case Claude was dis- closing a applicant that an a perhaps It seems us use of 5 mm. If this view arbitrary partly correct, in the selection of were it would remove much' of the below difficulty coming limitation above claims and which from a somewhat uncertain pub which invention to the he abandons his translation of a phrase; French idiomatic Separations, Ltd., Hyde, probably, lic. Minerals which phrases Eng- sueh indo 286, lish, 242 U. 61 L. Ed. S. Ct. meanings takes variant from con- variant expressly point. Patent Doubtless the view, texts. too, This makes the stated am- many eases, requires pere-eleetrode Office limitation sueh indicate, ratio critical indefiniteness has greater point while others in any sense, close approxima- but an Mowry Whitney, tion, suggests been allowed. See that, including this ra- 620, 644, Tilghman 20 L. Wall. Ed. tio as an claim, Claude has.- Proctor, 26 L. Ed. 102 U. S. failed to inclose a fraction of his field.. Carnegie Iron Steel v. Cambria 46 L. Ed. S. Ct. Paper Co., 261 Eibel Co. v. L. and other eases already ap The rule which cited. UNITED STATES ex rel. CHERWONICK et pellant sueh relies forbids limitations SMITH, al. v. District Director Im wholly arbitrary, is, in no which migration. true define the nature of sense describe or UNITED STATES ex rel. v. SAME. departure from the invention its POLJAK UNITED STATES ex rel. GINOVICH v. prior art. Sueh is not the ease here. The SAME. vastly in descriptive of 1.5 of a ratio Nos. creased surface of the electrodes over area prior used in the tubes of spectral those Appeals, Circuit Court of Seventh Circuit. employing tubes theretofore April 29, 1931. pressures content of neon. At some the ratio pres point.” At all indicate a “critical important sures it is indicative no have serious the invention. We doubts connection, but, had, if we this we should to resolve them'in favor of feel constrained finding validity, in .consideration Mast, Mfg. Co.& v. Stover doctrine of Foos Co., 177 L. Ed. 856. organizers The individual and officers of Ray Corporation defendant were Sun Gas defendants, made and were included injunction; accounting but was not de- against creed as Under the facts them. dis- record, opinion are of closed we injunction, least, proper. See Proudfit Loose Leaf Co. v. Kalamazoo D’Arey 120,140; Leaf B.

Loose Spring Co. v. Ventilated Marshall Mattress decisions of both this court.

Affirmed. Judge.

DENISON, Circuit but, concur; together I take publications which incorporates, reference the record indicates me, fairly satisfactory way though— clearly not as as would be desirable —that the in familiar spec- older were use in the

Case Details

Case Name: Sun Ray Gas Corp. v. Bellows-Claude Neon Co.

Court Name: Court of Appeals for the Sixth Circuit

Date Published: May 12, 1931

Citation: 49 F.2d 886

Docket Number: 5644

Court Abbreviation: 6th Cir.