·
j
GUARANTEE TRUST
&
SAFE-DEPOSIT. CO. LIGHT Co.
.;,
et al. v. NEW July 8,1889.)
HAVEN GAS-
Court, fl, PATENTS F(lR RATUS.
GAS PHOCESS AND
ApPA-
Letters patent No. 167;847, .issued September 21, 1875, to Thaddeus S. C. Lowe, for an "improvement in rrocess of and apparatus for the manufacture of illuminating or gas,' contain a process for the manufacture of water·gas, containing but little nitrogen. The presence of nitrogen in illumi· wl)en: it amounts to 9 per cent. or more, it nating gas is deleterious, amounts to a serious fault. The feature of the process consists in producing the gas in a close chamber,-that is, one from which the air is excluded,-or by an alternating. as distinguished: from a continuous, process. All of the essential apparatus was old,exoept the fixing chamber, which is so arranged as to be heated internally by the products of combustion that escape from the generator and envelop the refractory material. Held that, as the invention introduced a very desirable advantage into the process of making illuminating gas, by which the expense is greatly lessened, the facts that the older inventions, which are now claimed to be susceptible of being modified by mere mechanical skill into the one in question, remaitled without modification until the patentee made it"and that his improvement at once commended itself to those skilled in the art, are sufficient to show patentable invention.
In Equity.
Bill for infringement of letters patent.
B. F. Thurston and E. N. Dickerson) Jr.) for complainants. John R. Bennett, for defendant. WALLACE, J.. This suit is founded upon the patent granted to Thaddeus S. C. Lowe, No. 167,847, ·dated September 21, 1875, for "improvelinent in process. of and apparatus for the manufacture of illuminating or heatii1g gas.": The complainants allege infringement by the of the first claillj1 of the patent. That claim is as follows: "(1) For .the manufacture. pf illuminating and heating gas, the process of which consists of dropping or other:wise admitting in limited quantities, continuol1s1y or i.ntermittently, oils or other carbonaceous substances, liqUid or soild, onto the top of.a thick massof coal or other carbonaceolls substance, in a state of incandescence, in a, close chamber previously heated by direct internal combustion, with or without the introduction of steam, and then, for the purpose of superheating and fixing the gases of said chamber, passing them from saiq,qhamber into and through a second chamber, which also has been heated by direct internal combustion, subas set forth." . . . This claim two inveLltions, each of which is a process in the sense that it involves the treatment of materials by successive steps conducted by means of combination of devicf\s. Each process involves the use of apparatus which consists essentially of a cupola or generator, a·su perheater or fixing ChI1Iu,1;Jer having specified characteristics, and certlJ,in pipe connections f9r air, or. air and steam, into the gen.erator, and canying gases generated there to the superheater. The .superheater is. fillep. with .refractory material, such as loosely-laid firebrick, and iEl heated by the hot gases which are produced in the gener-
GUARANTEE TRUST &
C.o. tI. NEW HAVEN GAS-LIGHT CO.
269
ator. One process oftheclaiill1and the process which it is: alleged is etnployed by the, defendant" is for the manufactur.e of water-gas. This intermittent !nthis,process, anthracite or bitu'minous coal; or other solid car.bopaceous substances, are intoduced into the generator and bropghtto a high state of incand'escence by the passage through it ofacunent of air. The products of combustion which are there generated pass down ,through apipeunderneath the fixing chamber and then proceed upward through the fixing chamber, envehJping the refractory material therein by the aid of an air supply introduced at its base. When the carbonaceous matter in the generator has reached a high state of incandescence, the currents of ail' are discontinued, both at the generator and the fixing chamber, and steam is introduced at the base of the generator. The steam, acting upon the incandescent carbon, is decomposed, and a gas composed of hydrogen and carbonic oxide is evolved. At the upper part of the generator, or anywhere on the passage of this gas to the fixing cham bel', a liquid hydrocarbon is introduced into it, and becoming volatilized passes with the other gaseous vapors through the pipe into the fixing chamber, where they are converted into permanent gas. After a time, the action of the steam upon the incandescent carbon in the cupola will have so lowered the temperature that the manufacture of gas cannot be successfully continued. and it becomes necessary to discontinue the current of steam, and to renew the supply of ail', in order to again bring the carbon in the cupola to a high state of incandescence and heat up the contents of the fixing chamber. The gas made by this process consists of hydrogen, carbonic oxide, and a variety of hydrocarbon gases, and contains but little nitrogen. The presence of nitrogen in jJ]uminating gas is deleterious, and when it reaches the extent of percent. becomes so objectionable as to be a serious fault. The feature of the process therefore, which consists in producing the gas in a closechamber,-that is, one from which the air is excluded,-or by an alternating, as distinguished from a continuous, process, is of controlling importance. The second process of the claim is one for producing an oil-gas. This process differs from the other in that no steam is introduced into the generator. This process is included in the claim, because the claim contains the words "with or without the introrluction of steam." This language has no sensible meaning unless it is intended to embody a process in the claim which is referred to in tl1e specification as follows: "In case where gas extremely rich in carbon is desired, the same will be best produced by omitting the steam and generating the gas from oils alone, using the generator, a, either alone or in conjunction with the superheater." It is not alleged that this process is employed by the defendant, and the question of the novelty of t'he process has not been referred to in the testimony of the expert witneSSes. If it were void for want of. novelty, it would. be necessary. for the complainants to file a disch;dmer, and bydoing so their right to recover for infringement of the other invention.of the claim would not be.affected, except as ,respects costs.. Tuck v. BrarnlriU, 6 Blatcbf. 95; Taylor v. 1rcher, 8 Blatchf. 315. .Asthe poi:p,thas not heen made, and as it is
270 not charged that the defendantl'1ses this 'process, this process does nt>t require further consideration. .ltis! plain upon the proofs that the defendant does employ the first process of [the claim. The issue is upon its patentability. The gist of the invention in. controversy consists in the use of a new apparatus for the treatmient of the materials from which the gas is made. 'fhe same materials' had previously been treated by the same series of steps, in the same drder of succession, to produce a similar product. It was old to make illuminating water-gas by first producing a non-illuminous gas by the action of steam upon incandescent fuel, then adding to this gas hydrocarbons, and converting them into vapor or gas, and then passing this mixture throngha fixing chamber; and apparatus of various kinds for performing these operations was old. All the essential apparatus of the patentwaa old, and had preViously been used for carrying out these several steps, except the fixing chamber; and that differs only from previously used fixing chambers in that it is so constructed and arranged, in relation to the generator, that it is heated internally by the products of combustion that escape from the generator and envelopthe refractory material, instead Of being heated by an external fire.. Under ihesecircumstances, the novelty of the invention consists in the novelty of ;cornbining the fixing chamber of the patent with the other devices with which it is to be employed. It is plain, upon the proofs,that the patentee was the first to ernploy a fixing chamber in combination with the other parts, which enabled the products of combustion that escape from the generator during the operation of "blowing up" -iofix or render permanently gaseous the mixture of hydrocarbonicoxide and hydrocarbon 'vapors prouuced in a close chamber. A number of prior patents are relied upon by the defendant to defeat the novelty of such a combination. The case would have been much simplified, and the court'relieved of nluch unnecessary labor, if all but two of these patents had been omitted from the record. The patent to Harkness of 1874 describes a process which is in all essentials the process and apparatus in controversy, except that the fixing chamber is aretort· fired by external heat. The English patent to Siemens of 1864 describes apparatus for converting carbonaceous matter into combustible gases, and for their application to the heating or fusing of metals and other substances. The apparatus cohtains a superheater which is a chamber in which fire-bricks are loosely piled, to which' the gas produced the generator escapes, commtmicating heat which will be communicated to the'nextportion: of gas which paSsesthl'ough the superheater. The gas made by this process contains 61 per cent. of nitrogen, and the superheater of the apparatus is not intended or n'sed as a fixing chamber in the ae11se of that term as used in the complainant!;' It is USed to superheat :agasprodncedby combustion, 011 its way to a furnace where it is to be used in heating or fusing metals, ·etc. The other patents relied upon by the defendant are 'moreterilbte from the invention than the HarkneSs patent. The patent to Arbos'of'1863 describes apparatus iIi which the fixingichamberis heated exterimlly, and the gas is made by
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R.<;lontinuous process in which air is constantly blown a bed ,of coals. The British pat,ent of 186& to Benson.& apparatus in w4icp t4ere areemploye<;ltwodistinctandseparate .. The first or' thes.e is a fire in.whichairis admitted at the bottom ofthe combustion a secon,d fire, chamber. Th,e products of combustion are passed maintained by a separate current of air. The.product of the first fire is II ·of nitrogen, carbonic acid, carbonic oxide, and hydrocarbon gases and tarry matters. The object of the second fire is to destroy the tarry matters which are p:resent. The process Is a continuous one, and the gas made by it is not a practical gas for illuminating purppses, onaecount of the quantity of nitrogen which it inevitably contair!s, derived from the two fires supplied with air; and the products of the first fire are not passed through a second chamber which has been previously heated by direct internal combustion. The patent to Lowe of 1872 involves the use of a generator in which bituminous substances are maintained in aatate of slow combustion by the action of currents of air. A distillation of the bituminous matter takes place above the fire, and the combustible gases result. These gases, mixed with the products of combustion, pass to a superheater which is heated externally. The process of this patent is an air process in which the fixing chamber is heated externally, and the product is a gas which is very rich in nitrogen. It sdfices to say of the other patents which have been relied on in the argument for the defendant that the Blair patent describes an air process and an externally heated fixing chamber; and, in the apparatus of the Kirkham patent and of the Saund ers patent, there is no fixing chamber. None of the patents. except the Harkness patent, describe inventions for making the proQ.uct of thecomplainants' process. They were all directed to the production of gas differing essentially in the quantity of the nitrogen present,and involve the air process, or the continuous, as distinguished from the intermittent, process. But the process of the Harkness patent was directed to the production of the gas of the complainants' patent, made in a close chamber after tha air has been excluded, and, as has been sain, involves every essential step and detail of the process of the complainants' patent, except the use of a different fixing chamber. The patent-office rejected the claim now in controversy as void for want of novelty,. until ,it was so amended as to limit it to a process in which the fixing chamber used was one" previously heated by direct internal combustion." V,e1:J plainly, the prior state of the art required this limitation to be made, in order to confine the claim to the realinvention of the patentee. The novelty of the claim accordingly turns upon the questio.n whether novelty is Present or absent in the substitution of t;1e fix1ng chamber described. If it did not involve invention to introduce such a Harkness, there is no novelty in the fixing chamber in the invention claimed, . It «annotpeSliLfely affirmed that those&killed, in the art, having the $iemens paWnt them,; would derive assistance. from i.t in'devising chamber of the pll.tent. The Siemens is, and used in a process of gas-making in which
or
272 the gas has no hydrocarbon vapors to be up and flied. Hydrocarb6ngnses and vapors are' destroyed if exposed toa too high temperature; andtne Siemens patent does not seem to offer a suggestion to assist an expert to ascertain that the. superheater could be practically employed'ihtreating hydrocarbon gases as they are required to be treated in the fixing chamber of the Harkness process, or the process of the complainants' patent. One of the experts for the complainants testifies, in substance, that the Siemens superheater was not designed to perform the fundtiotlil ofafixing chamber; that "fixing" in gas-making is a term which is unquestionably limited to cracking up condensible hydrocarbon vapors into permanent hydrocarbon gases to effect a chemical decomposition, destroying one set of substances not suitable for illuminating gas, and creating another set of substances extremely valuable in illuminating gas; a.nd that no such materials or products occur in the Siemens opel1ttion, lUld no such chemical changes result in the regenerating chamber of the Siemens apparatus. The patent is no more an anticipation of the present invention than the Harkness patent is. Any prior apparatus which would not produce the same results as the apparlltus of the present invention cannot be substantially the same apparatus. The patent shows that a secondary chamber through which gas from a generator passes can b,eheated by placing refractory material within it to be enveloped by the gas. To this extent it is of some value, as showing the use of appliances, in principle like those of the complainants' patent, for a cognate purpose; and beyond this it is not valuable. The Harkness patent exhibits the'present invention more nearly than does the Siemens patent, but the Harkness patent is not an anticipation of it, because the parts of the apparatus i,n combinatio"1 do not operate in the same way to produce the lnvention was not necessarily absent in making the substitution(\[ the fixing chamber of the patent for the fixing chamber of Harkness because 'Siemens had previously used his device to superheat a different gas. It would have been absent if the Siemens device had beenobviollslyadapted to supply the place of the externally heated fixing ch,a'mber in the' tHarkness appara'tus. But the inquiry is whether adaptiibilityofthe Siemens superheater to fix the gas of the Harkness patent was seffcevident to the intelligence of those skilled in the art. 'Ififhad,beeri,""1}y was not the snbstitution made? It introof making .illuminating duced verydesirbHe advantages into the' watercgas,.'fhe, experts on both sides concede 'that the fixing chamber of the pateht: icanbe heated more economically and more quickly than the ifixingchambers which were previously used as in the Harkness apparatus, or.insirrlllar appamtus. , .If the 111aking of this change had been an obvious thing, falling within the range of ordinary mechanical adaptation, it'l:s 'probable that those skliled in the art wduldhave sought to avail them.selves o{ its adVIl.lltages; yet, as appel.lrs by the prior patents in the record, the more expensivl;l of fixing 'ttle gas in retorts heated by6J(ternal fires was everywhere followed:,'Tbevarious manufacturers in this country whowre making gas abcording ·to the Tessie du Motayprocess, and usingtheaxternally nredretort, didncit discover
PHILADELPHIA NOVELTY MANUF'G CO. fl. ROUSS.
278
what it is now asserted was an obvious thing. The fact that the older organizations which it is now claimed were susceptible of being modified by mere mechanical skill into the apparatus of the patent remained without any such modification until the patentee made it, and his improvement when made was so useful and valuable. as to commend itself at once to those skilled in the art to which it relates, is sufficient to resolve any doubt whether the improvement embodies invention in favor onhe patent. A decree is ordered for the complainants.
PHILADELPHIA NOVELTY :M:ANUF'G CO. V.
Rouss.
(Circuit Court, S. D. New York. 1.
July 8, 1889.)
PATENTS FOR INVENTIONS-REISSL"E-HAIR-CRnIPERS.
Complainant's original patent embraced hair-crimpers of two kinds,-one in which the fabric is stitcbed to tbe soft metal core: tbe other in wbicb tbe fabric is fastened to tbe core by a metal fold, made by turning over the tbin edges of tbe core, or of a strip of sbeet-Iead inside the fabric over the core. The original contained the clause: "I also modify my invention in various other equivalent ways, such as would suggest themselves to any intelligent mechanic," etc. The reissued patent contained claims for fastening tbe fabric to the core by cementing them together. fJeld, that the reissue was invalid, being an expansion of the original, and embracing a new, invention, If it be conceded that the inventions claimed in the reissue were described in the original, then, such claims being expansions, and more than three years having elapsed after the original was granted before the reissue was applied for. the doctrine of laches applies, and tbe delay must be held unreasonable in the absence of explanatory averments in the bill.
2.
SAME-REISSUE-LACHES.
In Equity. Bill for infringement of patent. On demurrer to bill. Joshua Pusey, (H. F..Penton, of counsel,) for complainant. John.J. Jennings, for defendant.
W ALI.ACE, J. All of the claims of the reissued patent in suit are for inventions not shown or suggested in the original patent, with the exception of claims 5 and 6. The invention of the original patent embraced haircrimpers of two kinds,-one in which the fabric is applied to the soft metal core by stitching, and another in which the fabric is fastened to the core by a metal fold made by turning over the thin edges of the core, or of a strip of sheet-lead inside the fabric over the core. Two of the claims (the third and sixth) were for the core separately, with modifications, and all the others were for the core with the fabric attached to it in one of these specified ways. The specificatibn of both the original and the reissued patent closes with this clause: "I also modify my invention in various, other equivalent ways, such as would suggest themselves to any intelligent me9hllnic to meet special requirements." It is insisted now for the complainant that fastening the fabric to the core by cementing them together is an equivalent mode of fastening them to stitching or turning v.o9F.no.4-18
274,
iJ;l .1llteraledges ()fthe sUPl1Wting Clai?llj·l,,: 2 1 ,?, 4, aql11 are expansions .of c1;aims of ;original, appareJ;ltJ,y tR, er;l.lbrace the cemented ffisteJ;\iIlg,inthe claim-s,as well,as stitching;or: turning over tp.e edges of the ,metal. If it is true, as argued, that this is, only the introdu.;lti9P of an I;\q\livalent into the daims, it was be assumed that the patentwholly l,mnecessarYi and it D;lay office did not .so consider it. It must be held that thes.e claims were designed to expand the claims of the. original, and take in inventions which are not found in the original, arld are therefore invalid. If it should be conceded that the inventions now claimed were dr-scribed in the original patent, then, as the claims of the reissue are expansions, and more than three years elapsed after the original was granted before the reissue was applied for, the and the delay must be held unreasonable in the absence of any explanatory averments in the bill lVollensak v. Reiher, 115 U. S. 96,5 Sup. Ct. Rep. accounting for 1137. The special demurrers to the bill are sustained. As the principal controversy has been upon the matters raised by these demurrers, costs are allowed to the defendant. The general demurrers are not sustained because, unless the patent is invalid for want of novelty, the fifth and sixth claims are good, and entitle the complainant to a decree for infringement; and the court cannot decide as matter of law upon the face of the patent without the aid of extrinsic evidence that those claims are destitute of inventive novelty.
THOMPSON et al. v. A!I'.ERICAN BANK-No'1'E CO. (Oircuit Oourt, ,So
n. New
York.
June 28,1889.)
PA.TENTS FOR INVENTIONS-S.rAPLE·DRIVING MACHINE-INFRINGEMENT.
Complainants' patent was a combination of an inclined and retreating anvil to sustain the wire of a staple while being bent, and to sustain the staple whilebeing driven, withthe bender·foot and driver, in a wire-stapling machine. The bender·foot boxed the prongs of the staples on all but their inner sides, while the inclined and retreatinj:( anvil filled tbe space between the prongs, retreating. from the crown it was p.riven, and thus the prongs were supported at all points while being dri:ven. Held infringed by a machine in which the anvil was the same in shape and operation except that it did not fill the space between the prongs entirely to the crown, where support was unnecessary.
'In Equity. On bill for infringement of patent. Horace f3arnard, for complainants. . H .. D. Donnelly, for defendant.. WHEEUllR, .J. The pl:ltent in.this ca.se was before. this court in Thornpaon v.Gildersleeve, 34 Fed. apd the validity of th.e thjrq claim It was before this court, on the,same queswas tion ofinfringement that ishere ,now, in Thompson v. Bank-Note Co., 35. , .', . '"", ' , ' -1 ..' . , 'it, ,
