I. L. MOTT IRoN WORKS ,. STAliDARD KANUF'G CO.
IRON WORKS V. STANDARD MA.NUF'G
(Oircuit Oourt, W. D. Pen1l81lZvanfa. May 28.1892.)
PATIllNTI I'OR INVENTIONS-LIMITATION OJ' CLAIMB-PRIOR ART-BATH OvERFLOWS.
Letters patent No. 170,709, issued December 7, 1875, to William S. Carr. for an improvement in waste valves and overflows for baths and basins, claim: "The tube, a, provided with the collar, 1., and lock nut, Z, for clamping the slab, 'In, in combination with the tubular stem, t, of the valve, e, passing' through the lock nut, l, and means for sustaining the tube, I, when elevated, substantially as set forth. " Held. that, in view of the prior state of the art, as shown specially by the patent of, July 21, 1874, to J. T. Foley, the patent must be limited to the specifio mechanism described.
.. S,A.ME-COMBINATION-UNPATENTABLB AGGREGATION.
Claim 2 of letters patent No. 358,147, issued February 22,1887, to John Demarest for a kindred improvement, is for a mere aggregation of parts without oo-operating . action, and not for a patentable combination. .Where an applicant acquiesces in the rejection of his original claims by filing a disclaimerl submitting modified claims, and accepting a patent therefor, such claims must De striotly construed.
LSAIIE-LIMITATION 01' CLAIM-DISCLAIMER.
In Equity. Suit by the J. L. Mott Iron Works against the StandardManu,flicturing Company for infringement of patents. Bill. dismissed·,· For prior report, see 48 Fed. Rep. 345. Francis Forbes and W. BakeweU &; S0n8, for complainant. QmnoUy Bros., for defendant. Before ACHESON, Circuit Judge, and BUFFINGTON, District Judge.
ACHESON, Circuit Judge. The defendant is charged with the infringement oqetters patent No. 170,709, for an improvement in waste valves and overilows for baths and basins, granted to William S. Carr, December 7, 1875, and No. 358,147, for a kindred improvement, granted to John ,Demarest, February 22, 1887. The specification of the Carr patent states that· overflows for baths and basins have been made of a vertical pipe, passing through the woodwork or slab, and connected at its bottom end with the sewer pipe, and with a branch to the bath or basin, ·and at the intersection is a seat for a valve on the lower .end of an overflow pipe within the vertical pipe. Then follow in succession these two clauses: "In this character of overflow, the cap for the vertical pipe has been conslab by bolts, and the rod that is used to lift the overflow pipe and valve has passed through this cap." "My invention is made for dispensing entirely with the cap, and allowing the upper end of the vertical tube to be filled by a tube that is lifted with the overtlow pipe, and which is capable of being withdrawn whenever it is necessary to take out the valve for cleaning." Here succeeds a reference to the accompanying drawings, and then come some explanations of parts theretofore in use, namely, the exterior vertical pipe, and its connections at the lower end, and the valve and valve seat and valve .stem; and it is explained that when the valve .is upon its seat, water accumulates in the bath or basin until it flows over the upper edge qf, or through apertures in, the hollow valve v.51F.no.3-G
stem, (the overflow pipe;) but, when the valve is raised from its seat,' the contents' oftha', bathGr: basin flow off by tlie :escapepipe. Then follows this clause: relates to a flang-e, i, applied around the upper end of "My the cylinder, a, and a lock nut, I, at the upper end thereof, whereby the table is 'clamped such lock nut and thefla.nge, i." , '':l'he''cylinder, a," is'the "vertical pipe"!llready mentioned,-the staridph'le ,which incloses, the overflow, pipe. 'In the patent drawing the lock nut,l, is shown.tobe a flanged thimble, with a top opening screwed upon the the upper end of the cylinder, a, and resting upon the upper side of the slab, mj and the" flange, i," is shown aEi ,against the under the slab, m. The experts on both sidesstatetbat the drawing represents the flange, i. to be with the cylinder, a. Manifestly upon the face of the drawing this is so.;aad nobhing in the specification silggests any different constructi6h of' those' parts. The spooification states: "The tubular stem, f, of the valve, e, is continued through the lock nut, aqd thereof loosely; and,in this enlal'ged portion. n; of lIueD stem there is anL;shaped slot, as seen in, Fig. 2, so that a screw or phl;o,passi'O'g throllghthe locknut, may ertterthis slot, in order that the valve may be held up; after it has been raised, by' partially turning the tubular stem1forthepin t()(enterthe horizontal portion of that slot. I remark, however, that a spring catch in the tube, n, might be employed to hold the val"", o,t spring upon the upppr end of the lock nut. '" '" '" if deSIred, an ovul stem, with a neck therein, might be employed a lo!>vable cover is placed insidj'l the lock nut, through which this , , stem' passes/'n:. . ' 111 Carr'lJdtiginal application the first two claimsread.thri!l: "(1) The lock nut, I,' and collar, i, in combination with the tube, a, pipes, b' and c, remrivable tUbula'rstem, f, and valve, e, substantially as set forth. "(2) The tUbUlar stem, 11., passing through the lock nut, I, and provided with ,means for sustaining said stem when elevated, in com:bination with the valve,e, and 'tube, a, substantially as set forth." The pat'entlbffice rejec.'ted those claims on a reference to the patent of Foley, and Oarrthel1 amended his application by out said two claims, anti substituting the following disclaimer I1nd claim: "1 do not claim an overflow tube, valve, and tubular stem, nor the device shown ,in the patent ofJ.Ti Foley, Ju'ly 21, 1874. Iolaim as my invention (1) thetubeitJ.provided with the collar, i, 'and look nut, I· .for clamping the slab, m, in oombination with the tubular stem, f, ofthe:valve, e.passing through thelQc!t nut,lt and,means for sustaining the tulle,!. when elevated, ' :', : SUbstantially ls'i1etforth." allowed Plltent issued. , .', ' ThIs The Foley :patent" which was for an improvement in this class of waste ,ahd 'Was "granted originally July 21, 'Ndvember. ,1875; In,his specification, after menUol}the diffi,culty in removing the tube al\'d
, "My invention rellates toad improvement that Is made for allowing the 'valve andovel'flow tO'be eaMly removed;" l"orthis purpose the val ve 'and its
J. L. MaTT IRON WORKS,
tubular stem is continued up throngh the marble or wooden slab or table contiguous to the basin or bath. and provided with a removable cap. through which the stem to the handle passes." The special features of Foley's improvement are thus explained in his specification: "The stand pipe, f," of the bath or basin overflow passes up through the slab, and is provided with a removable cap, .. preferably screwed upon the tube, f," and through this cap is a rod, 'Ill, with a "handle, n," at the upper end, and the lower end of the rod is connected by a briJge or bail with the "tubular stem, 0," which is within the tube, f, or stand pipe, and forms the overflow pipe. The rod, m, is so made that when it is raised and partially revolved it will suspend the tubular stem and valve. For this purpose the rod, m, is maJe "oval sectionally, with a circular neck at the proper place," to allow a turning motion when the valve has been.lifted the proper distance. If necessary to remove an oLstruction, or for cleansing purposes, the stem and valve may be drawn out by removing the cap. l'he drawing shows a screw connection between the removable cap and the tube or stand pipe, f. The defendant's stand pipe is not providerl with the flange or lar, i, of the Carr patent, or with any equivalent thpreof, but is the same as the Foley stand pipe. There is in the defendant's structure a tubular flanged sleeve, which screws upon the upper threaded end of the stand pipe, and this screw connection is substantially identical with the connection between the corresponding parts shown in the Foley patent. This tubular flanged sleeve is exteriorily screw threaded, toreceive a' nut to clamp the sleeve to the taLle or slab, and this attachment of the sleeve to the table or slab is secured irrespective of whether the sleeve is attached to the stand pipe or not. The upper portion of the defendant's overflow tube is screw threaded, and to it is screwed a handle cylinder, having thereon two diametrically opposite projecting vertical lugs at different heights, and this handle cylinder extends up through the tubular flanged sleeve. This sleeve has an inwardly projecting annular flange, which acts as a cap or cover for the annular space between the stand pipe.and the overflow tube within it. The inwardly projecting flange has extending through it a vertical groove, which co-operates with the prqjecting lugs on the handle cylinder, thue.: When the overflow tube is lifted, the upper lug passes through the vertical groove, and if the handle cylinder is then turned the upper lug will rest u]Jon the upper surface of the tubular sleeve, and support .the overflow tube lind valve in a raised position; but if it is desired to withdraw the overflow tube and valve altogether, this can be done by turning the handle cylinder until the lower lug register8 with the vertical grovve. These devices for mllnipulating and sustaining the overflow tube when elevated, we think, are substantially diflerent from the means shown or suggested .in the Carr patent. . We now tur4 to a consideration of the construction to be given to the Carr patent. A careful study of the ·proofs has convinced that Carr's invention was by po means one of any primary He
was an improver simply, and if his improvement called into exercise the advance made was not great. Undoubtedly, inventive Foley had previously conceived the idea of making the valve and its tubular stem easily removable from the stand pipe,and had devised means to accomplish that result. Hence, when Carr's original claims were rejected On the Foley patent, he struck out the word" removable" as applied to his" tubular stem, f," and aJso discarded tqe"tubular stem, n," as a distinct element of his combination. Again it is worthy of notice that in his !lecond original claim the flange or collar, i, was not mentioned; but in his claim as finally formulated he inserted the words, H the tube, a, provided with the collar ,i." Clearly, this became an essential part of the combination. Indeed, it seems to us that the specific devices disclosed for connecting the slab and stand pipe constitute the especial feature of the invention as finally claimed. This view is greatly strengthened when we read, in connection with Carr's disclaimer and amended clttim, the declaration contained in his specification:
"My improvement relates to a flange, i, applied the upper end of the cylinder, a, and a lock nut, l, at the upper end tbereof, whereby the table or slab, m, is clamped between such lock nut and the flange, i."
We have already adverted to the fact that the patent drawing plainly shows that the flange or collar, i, on the standpipe is rigid, and no hint to the· contrary is discoverable in the specification. Nor is any alternative device for securing the stand pipe to the slab, m, suggested, although we do find several different suggestions as to means for sustaining the overflow tube when elevated. It is therefore quite inadmissible to· adopt the theory of the plaintiff's expert that the described means for clamping the slabs were merely illustrative of anv suitable means. Snow v; Railway 00., 39 O. G. 1081, 121 U. S. 6i7, 630, 7 Sup. Ct·. Rep. 1343. Again, the action of the patentee upon the rejection of his original claims requires· that his claim as allowed shall be construed strictly against him, and in favor of the public. Sargent v. Lock 00.,310. G. 661, 114 U. S. 63, 5 Sup. Ct. Rep. 1021; Roemer v. Peddie, 49 O. G. 2151, 132 U. S. 313, 10 Sup. Ct. Rep. 98. Finally, in.view of the previous state of the art, especially as found in the Foley patent, we are of the opinion that the plaintiff must be restricted to the specific forms of mechanism shown in Carr's patent, (Railway 00. v. Sayles, 15 O. G. 243,97 U. S. 554; Braggv. Fitch, 39 O.G. 829, 121 U. S. 478,7 Sup. Ct. Rep. 978;) but, as we have seen, the· defendant's structure does not contain the flange or collar, i, or any equivalent therefl)r, and in other respects his devices are not colorably .but materially different from those of the Carr patent. The claim of the Dernarest patent which it is alleged' the .defendant infringes is as follows:
"(2) The combination with the horizontal waste. pipe, C, and· vertical Iltandpipe,E, of the socket, G, screwed upon the exterior of the stand' pipe., E, and having a flange resting upon the slab, and an in wardly projecting pin, 17, theovertlowpipe and valve within the stalldpipe,the tubular cap, P,
JOHNSON BAILROAD SIGNAL CO. V. UNION SWITCH ·
screwed upon the exterior of the overflow pipe, and slotted for thereceptlon of the pin, 17, and the lock nut, 16, at the lower end of the tubular .cap, P, substantially as and for the purposes set forth."
In our apprehension, we have here seyeral groups of devices, performing distinct functions without co-operative action. The particular means for attaching together the socket, G, and the stand pipe,E, are quite independent in operation and function of the devices for sustaining the overflow pipe when raised, namely, the pin, 17, and the communicating slots in the cap, P. So, too, the means by which the Bcrew attachment of the cap, P, to the overflow pipe is effected and kept secured by the lock nut, 16, are distinct from and independent of either of the other two groups of devices. Guided by the rulings in Pickering v. McCullough, 21 O. G. 73, 104 U. S. 310j Hendy v. Iron Works, 43 O. G. 1117, 127 U. S. 370, 8 Sup. Ct. Rep. 1275; Royer v. Roth, 49 O. G. 1987, 132 U. S. 201, 10 Sup. Ct. Rep. 58; SetfN CO. V,, Keith, 55 O. G. 285, U. S. 530, 11 Sup. Ct. Rep. 621, and other cases,-we reach the conclusion that this claim is for a mere aggregation of parts, and not a patentable combination; but, if a different view of this claim were allowable, and patentable novelty were conceded, still no infringement of the combination is shown, for the defendant does not employ the inwardly projecting pin, 17, and the slots in lar cap, P,but means substantially different. It may be added that if Carr's invention was not a primary one, much less was Demarest's, and therefore the principleof the cases of Railway Co. v. Sayles, supra, and Bragg v. F'Uch, supra, has here full application. ' . We are of the opinion that the plaintiff's case fails all to both the patents sued on. Let a decree be drawn dismissing the bill of COmplaint, with costs. . ,
District Judge, concurs.
10HNSON RUT,ROAD. SIGNAL
tI. UNION SWITCH
(otrcuit Oourt, W D. Pennsylvwnia. April 11, 1892.)
PATBNTS FOB INl'iBNTIONS-ASSIGNMBNT AND LIClIlNSB-POWBR OF A'M'Oll'NET. '
C., the owner ot letters patent, by a power ot attorney appointed Y, his "sole agent" for the of working and developing the,husinessof the said patents, " for and in consideration of a specified royalty "upon e'Vary lever fitted' upon any railway in the United States, "etc., to be paid by Y. to C., "with power 'for'the' said Y. to the sale 01 said patents upon terms to be agreed npon. n, Held;, that the power. tpns conferred did no.t warrant Y. in making an abeolute ll8.1e ot ' the patents· without the concurrence ofC. .., . .
.I. SAMB. ' By an instruDlent of writing executed by Y·.in his own name, and.all his.ownaci and deed, withou1: the consent or k,nowle,dge, of nor his subseqnent ll.Clluleseence, Y. granted toacorpQratioJl,· its successorS. anaMSigns, "the. sole; andexplualve '