Davis-Bournonville Co. v. Alexander Milburn Co.

Decision Date08 January 1924
Citation297 F. 846
PartiesDAVIS-BOURNONVILLE CO. v. ALEXANDER MILBURN CO.
CourtU.S. District Court — Southern District of New York

Dean S Edmonds, of New York City, for plaintiff.

James A. Watson, of Washington, D.C., for defendant.

Patent 874,666.

LEARNED HAND, District Judge.

This patent was applied for on April 5, 1907, when the art was in its infancy. It is reasonably clear that the patentees at the time did not recognize the full value of their invention, but the fact remains, whether they did or not, that they happened upon a device which became the accepted form, which has displaced all others, and which seems likely to be the final tool by which metals will be cut under this process. As such the patent is entitled to much favor from a court, especially as it appears that for nearly its whole life it has secured the substantial acquiescence of the trade. The nature of the attack upon it confirms the impression which these considerations suggest.

The defendant's first complaint is that the invention is not disclosed, because the specifications do not definitely show that there must be a series of holes for the combustible gas. It is quite true that the patentees did not limit their invention to such a series completely encircling the oxygen jet, and in so doing they betrayed their incomplete knowledge of what later experience has disclosed. On the other hand they showed beyond question that they meant to have the oxygen jet surrounded for a substantial arc anyway with combustion holes, and that this was the sole purpose of their invention distinguishing it on the one hand from Manne, who had a ring of flame, and from Jottrand, who had a single flame in advance. That there were advantages in this as against either extreme, time has amply proved.

It would scarcely seem necessary to go over the text of the patent to prove that this was in fact the disclosure, were it not for the insistence of the defendant. The patent leads off (page 1, lines 13-15) with a statement that the invention consists of bringing to the work the heating gas 'in a plurality of streams.' Again (lines 25-29), that the heating gas is led to the metal 'in several independent streams * * * to bring about a more intense heating. ' The diagrams show at the least three holes for heating, and the specifications always speak of the heating holes in the plural. Indeed, there is not the faintest color for a contrary supposition, except that at one place (page 1, lines 42, 43) the patentees speak of the possibility of 'leading the combustible only at one of the gas outlets ' That the tool may be so used is true enough, but the patent is not for a process, but for a mechanical device, and the patentee in this passage merely shows how it is possible if desired, to use the tool in the ways of the prior art.

The next attack depends upon the fact that the examiner required the patentee to insert in all his claims a limitation that the heating outlets and the cutting outlet must be parallel. The specifications refer to these outlets, but nowhere describe them as parallel, though the drawings clearly show them to be such. The defendant argues that one may not look to the drawings to supply a defect in the specifications. Gunn v. Savage (C.C.) 30 F. 366; Windle v. Parks & Woolson Mach. Co., 134 F. 381, 67 C.C.A. 363; Fulton Co. v. Powers Regulator Co. (C.C.A.) 263 F. 578, 581; George Cutter Co. v. Metropolitan etc. Co. (C.C.A.) 275 F. 158, 162. If so, he says, there is an element in the claim which is not found in the specifications and the disclosure is void. Since the limitation is so simple that the mere statement of it is enough, it is obvious that there could not be a more technical and formal objection to a meritorious invention.

There are, however, two answers, each complete. The first is that the rule in question has never gone further than to refuse to allow diagrams to supply an element altogether lacking from the specifications; and, second, that the parallelism is not a feature of the specifications at all, but merely a limitation imposed upon the claim. All the cases cited, except the last, recognize that the drawings are admissible to clear up any details of the specifications which are ambiguous. The last case cited does not dispute this rule. In the case at bar the relative direction of the outlets is not specified, but they are merely mentioned, since it was scarcely necessary to describe them at all. One must look to the drawings for a definite understanding of how the tool is to be organized in this regard; but, since all the features are mentioned and described generally, one has the right to do so. If it were essential to the practice of the invention, which it is not, that the outlets should be parallel, the drawings might therefore be resorted to to show their direction and shape.

But the whole argument misconceives the action of the Examiner and the patentee. The parallelism of the outlets was not a necessary element to the disclosure. Indeed, Murphy's patent, on which the original claims were rejected, showed converging outlets. Perhaps the best tool will not be so made, but there is no reason whatever to say that, if the outlets are not parallel, the torch will not cut. Thus the detail added was in no sense a necessary part of the disclosure. All that happened was that the Examiner refused to allow the claims as broadly as the disclosure would have justified. That does not make a patent void, of course, and the patentees quite sensibly agreed to the limitation, because the claims still gave them all that they really wanted.

There is no relevant prior art but Menne and Jottrand, from each of which the patentees diverged. If it was an easy step from either to the patent in suit, it is curious that the art did not at once see it. The fact is that it took considerable experience and knowledge to see that in metal cutting it was necessary to 'preheat' an area considerably larger than the cut, in order to get the metal to the requisite temperature for actual combustion. Indeed, Menne's machine was not a cutter at all, though in view of Linde Air Products Co. v. Morse Dry Dock Co., 246 F. 834, 159 C.C.A. 136, it should be regarded as a relevant reference. Still one cannot make proper cuts with a heating ring, and the division of such a ring into 6 to 8 small flames was as much an invention as to multiply Jottrand's single flame.

The patent is not, indeed, a pioneer, but it was apparently final, and stabilized the cutting torch. I cannot see on what theory it can be declared invalid. The plaintiff may take the usual decree on claim 1.

Patent 1,028,410.

There is no doubt as to the infringement of this patent, and that issue requires no discussion. The defendant's tip has merely flattened the cone of the patent upon itself into a flat surface, and the claims in suit, Nos. 3, 6, and 7, read upon it literally, as well as functionally. Thus the case turns upon validity. There can be no pretense for claiming a broad invention; the disclosure is important only because it enabled a quick change of tip for variations in the necessities of the work. Yet there is no reason why, so far as it went, it should not be protected. The defendant's position depends upon two classes of anticipations: First, those which issued before Whitford filed his original application, March 4, 1911; and, second, those which were filed before that date, but had not issued till later.

In the first class there is strictly only Bruckner, 935,458. This torch was not a cutter at all, but a welder, and the invention was primarily to allow the angle between the handle and the head, with its tip, to be varied, so as to accommodate itself to difficult corners of the work. I agree that, so far as Whitford's disclosure was a welder, this would be a complete anticipation. The tip is unitary; in Figure 5 and Figure 3 (vide page 2, lines 4-6) the two gases are led into a common duct, which forms a mixing chamber in an almost identical way with Whitford's. They do not mix until they reach that duct, and their proportion could be controlled by the caliber of the ducts. What, then, it may be asked, was there left to do, except to add an independent duct for the cutting jet and connect it properly to a source? There was, indeed, nothing more to do, and for that matter nothing to do after the welder patent in suit, 880,099, but to add a cutting jet and make it integral with the tip. Yet, though the patent to Rodrigues-Ely, 880,099, was issued in 1908, application was not made for the patent in suit till 1911. Even if there are no great mechanical obstacles of design, once you wanted a unitary tip, the idea had never before appeared in the art, which had proceeded by the awkward expedient of bringing the cutting jet to the work in an independent tip with a separate pipe. The added convenience of the combination was very considerable.

The defendant tried to prove a prior use of the invention in suit by one Wright. The evidence is not clear as to when Wright sold the torches which are disclosed in Figures 4 and 5 of his patent, as exemplified in Exhibits B1 and A1 respectively. The documents offered in support of his testimony, Exhibits C1 and D1, do not identify the kind of torches to which they refer, and Exhibit D1 in February, 1911, refers to work still experimental. It is, of course, possible that Wright may have marketed some of his torches between the date of his application, January 27, 1911, and Whitford's original application, on March 4, 1911, and perhaps it is not unlikely that he did so before January 31, 1912, the date of the divided application. But, as it is the date of the original application which counts, the proof is insufficient to show beyond doubt that his...

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