Pyrene Mfg. Co. v. Boyce

Citation292 F. 480
Decision Date11 July 1923
Docket Number3020.
PartiesPYRENE MFG. CO. v. BOYCE et al.
CourtUnited States Courts of Appeals. United States Court of Appeals (3rd Circuit)

Rehearing Denied October 4, 1923.

Francis B. Bracken, of Philadelphia, Pa. (Frederic P. Warfield and L A. Watson, both of New York City, of counsel), for appellant.

Charles Neave and Edmund Quincy Moses, both of New York City, and Joseph H. Milans, of Washington, D.C., for appellees.

Before BUFFINGTON, WOOLLEY, and DAVIS, Circuit Judges.

WOOLLEY Circuit Judge.

The respondent appeals from a decree of the District Court holding valid and infringed Letters Patent No. 1,090,776 issued March 17, 1914, to H. H. Boyce for an indicating system and apparatus for internal combustion engines. All claims are in suit. Infringement is denied and the validity of the patent is challenged mainly on grounds of anticipation, prior use, and lack of invention.

The patent apparatus is the small thermometric device positioned in the top opening of the radiator of a motor car, familiar to automobilists. Claim 2, a typical claim, reads as follows:

'In a system for indicating abnormal conditions in an internal combustion engine provided with a liquid circulation cooling system for the cylinders of the engine, said cooling system including a radiator having an air space at the top thereof, the combination with the radiator of an indicating device having an indicating part outside the radiator and having a temperature responsive element controlling the operation of said indicating part and exposed to the temperature in said air space above the level of the liquid in the radiator and means for maintaining the temperature responsive element in place in the radiator during the normal operation of the engine.'

The respondent says that this claim, stripped of its technical wording, discloses nothing more than a thermometer stuck through the radiator cap of an automobile. On first view this would seem to be true. It further urges that the only function of the thermometer, so positioned, is the ordinary one of showing the temperature inside. This would seem to be obvious. The respondent therefore maintains that in placing a thermometer in a cooling system to determine the heat of the engine nothing of invention is involved. This, too, was our first impression. But on closer examination of the patent it appears that a purpose is intended and, by reason of the particular location of the device, a result is obtained different from and definitely more useful than the mere registration of heat.

On the major issue of validity we shall first inquire whether the conception for which the patent was granted involves invention. Because of the lack of a definite rule, questions of this kind are often perplexing. It is a trite saying that invention defies definition. Yet, through long use, the word has acquired certain characteristics which at least give direction to its meaning. Invention is a concept; a thing evolved from the mind. It is not a revelation of something which exists and was unknown, but is the creation of something which did not exist before, possessing the elements of novelty and utility in kind and measure different from and greater than what the art might expect from its skilled workers.

The inventive conception of the patentee is substantially as follows:

First, the invention relates to a system for indicating the condition of internal combustion engines of the type wherein the cylinders are cooled by a fluid medium (water or alcohol) circulating around them. While the invention is generally applicable to stationary explosive engines, it is especially adaptable to automobile engines whose cylinders are cooled by a liquid delivered and thermally stabilized by a suitable medium such as a radiator placed some distance from the engine. Although the invention is not limited to the latter use, we shall for convenience speak of it as an automobile accessory.

Next, the invention is based on the known construction of internal combustion engines and on known conditions arising from them, and particularly on changes in temperature of the engine and cooling system. A combustion engine generates much heat. When possible, overheating should be avoided. This condition may be due to a variety of things as, for instance, operating with the throttle wide open and the spark retarded, insufficient lubrication, frozen or clogged pipes, insufficient water, loose fan belt, defect in pump whereby the circulation of the cooling medium is arrested. The invention of the patent does not correct any of these evils. Its purpose is to disclose them, and to disclose them to the operator of the machine in time for him to correct them before injury results. The patentee, therefore, has aptly named his invention an 'indicating system and apparatus.'

Finally, the inventive conception of the patent is embodied in the familiar little device, circular in shape, box-like in character, the front and rear made of glass, the front open and the rear closed (except for an open circle at the top), enclosing what the patentee terms a 'temperature responsive element' (which for our purpose is a thermometer of magnifying glass and colored alcohol visible through the open face) extending down through a threaded and perforated prong. The device is commercially known as 'Boyce Moto Meter.' Lying in one's hand it looks like a thermometer of unusual design and suggests nothing of invention. When in use, however, the device is substituted for the inlet cap at the top of the radiator and is screwed upon the inlet opening. Its protuberant part or prong, enveloping the bulb of the thermometer, extends into the air space or pocket above the level of the liquid in the radiator where the bulb is exposed to and its action regulated by the temperature of the air within.

Postponing for later discussion the question of prior use, we shall here dispose of any question of anticipation by prior patents by announcing our conclusion, in harmony with that of the Circuit Court of Appeals for the Second Circuit in Boyce v. Stewart-Warner Speedometer Corporation, 220 F. 118, 136 C.C.A. 72, that all references having to do with temperature indicators whose parts are immersed in the circulating fluid or attached to the machinery itself are so different in construction and mode of operation from that of the patent that they play no part in the case. We are also in accord with the Circuit Court of Appeals for the Second Circuit that, before the invention in suit, there was no thermal indicating device shown by the evidence which was positioned in a like air space below the opening of the radiator and which depended upon the temperature to which it was there exposed as the source of the information which it carried above and disclosed. We have paused to lay stress on the position of the lower extremity of the thermometer in the air space above the level of the liquid in the radiator because, if there is invention in the system and apparatus of the patent, it must be found in the selection of the air space of the radiator inlet as the place for the novel behavior of the thermometer.

On first view this place would seem to be of little importance. Yet it developed that it has distinctive characteristics of which the patentee took advantage and of which, apparently no one else had thought. They...

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    ...846, 35 L.Ed. 521; Symington Co. v. National Malleable Castings Co., 250 U.S. 383, 386, 39 S.Ct. 542, 63 L.Ed. 1045; Pyrene Mfg. Co. v. Boyce (C.C.A.) 292 F. 480, 481. Though the mental concept is embodied or realized in a mechanism or a physical or chemical aggregate, the embodiment is not......
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    ...Co. v. Willimantic Linen Co., 140 U. S. 481, 489; Symington Co. v. National Malleable Castings Co., 250 U. S. 383, 386; Pyrene Mfg. Co. v. Boyce, 292 F. 480, 481. Though the mental concept is embodied or realized in a mechanism or a physical or chemical aggregate, the embodiment is not the ......
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    ...and utility in kind and measure different from and greater than what the art might expect from its skilled workers." Pyrene Mfg. Co. v. Boyce, et al., 292 F. 480, 481, cert. den. 263 U.S. 723, 44 S.Ct. 231, 68 L.Ed. 525 a. The 090 Patent. The conclusion of the district court that the plow d......
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1 books & journal articles
  • Combating Hindsight Reconstruction in Patent Prosecution
    • United States
    • Emory University School of Law Emory Law Journal No. 64-4, 2015
    • Invalid date
    ...in kind and measure different from and greater than what the art might expect from its skilled workers." (quoting Pyrene Mfg. Co. v. Boyce, 292 F. 480, 481 (3d Cir. 1923)) (internal quotation mark omitted)); Glynn S. Lunney, Jr. & Christian T. Johnson, Not So Obvious After All: Patent Law's......

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