Permutit Co. v. Graver Corporation

• Citation: 37 F.2d 385
• Decision Date: 18 January 1930
• Docket Number: No. 7909.,7909.
• Parties: PERMUTIT CO. v. GRAVER CORPORATION.
• Court: U.S. District Court — Northern District of Illinois

37 F.2d 385 (1930)

PERMUTIT CO. v. GRAVER CORPORATION.

No. 7909.

District Court, N. D. Illinois, E. D.

January 18, 1930.

Drury W. Cooper, of New York City, George A. Chritton, of Chicago, Ill., and Mitford C. Massie and Allan C. Bakewell, both of New York City, for plaintiff.

Charles L. Byron and George L. Wilkinson, both of Chicago, Ill., for defendant.

LINDLEY, District Judge.

Plaintiff seeks to enjoin defendant from manufacturing water softeners said to infringe claims 1 and 5 of patent to Robert Gans of Berlin, Germany (J. D. Riedel Aktiengelsellschaft, of Berlin, Germany, assignee) applied for August 5, 1911, issued August 22, 1916, No. 1,195,923, as follows:

Claim 1. "A water softening apparatus comprising a casing, a filter bed consisting of a layer of sand or quartz and a layer of zeolites or hydrated alumino-silicates disposed on the layer of sand or quartz, means for permitting the passage of water through the casing, means for cutting off supply of water on the exhaustion of zeolites, and means for passing through the casing a solution of a salt capable of regenerating the zeolites."

Claim 5. "Water softening apparatus comprising a casing, a filter bed consisting of a layer of zeolites or alumino-silicates, supporting means for said layer, means for permitting the passage of water through the casing, means for cutting off the supply of water on the exhaustion of the zeolites, means for supplying and passing into the casing a solution of a salt capable of regenerating zeolites and means connected to the lowest point of the casing for removing the salt solution so introduced."

Defendant asserts as defense invalidity and noninfringement.

As originally granted, the only substantial difference between the two claims was the addition to claim 5 of the last element, viz., "means connected to the lowest point of the casing for removing the salt solution so introduced."

Pending a similar suit in Detroit, plaintiff, on March 2, 1920, disclaimed from the scope of claim 1 any such apparatus as is therein described in which the water to be softened passes upwardly through the zeolites, thereby limiting claim 1 to the down flow type. Claim 5 is not so expressly limited, and, despite defendant's contention that said disclaimer should effectually likewise limit it, other courts have refused so to hold. Permutit Co. v. Harvey Co. et al. (C. C. A.) 279 F. 713, and Permutit Co. v. Wadham et al. (C. C. A.) 13 F.(2d) 454.

The subject-matter is an apparatus for softening water by means of zeolites, which are chemical compounds existing in nature, but likewise produced chemically, and so produced patented by Gans in patent No. 960,887. They possess the unique and valuable property of being able, when saturated with a solution of sodium chloride, to take up from water passed through them such hardening elements as calcium or magnesium, and, when once thoroughly charged with the latter, to exchange the same for salt when brought in contact therewith. The nature and properties of zeolites are alluring, but they are the subject-matter, not of this, but of prior patents.

The claims here under consideration do not cover the idea of softening water by means of zeolites, the regeneration of said zeolites, or the rinsing thereof by backwashing. They cover only a filtering device for making use of zeolites in such manner as to utilize their known functions in softening water.

The essential elements of water softening are the passage of water through zeolites, the regeneration of such zeolites when exhausted by recharging them with a sodium chloride solution and the rinsing thereof, so that no noticeable tinge of salt remains in the water when reduced to practical use.

When Gans made his application in 1911, all claims were rejected on three Bommarius patents, Nos. 519,565, 632,091, and 707,899 as merely involving the substitution, for the filtering material of Bommarius, of the material disclosed in Gans patent, No. 960,887, where Gans had explained the properties of zeolites, and demonstrated that water may be softened thereby and the exhausted silicates regenerated by a solution of common salt. Gans next urged that a chemical action took place in his process, as contrasted with the mechanical processes of Bommarius. Again the claims were rejected as reciting nothing more than the substitution of a water treating means disclosed in patent applications of record for the water treating means disclosed by the three references. On August 26, 1914, Gans canceled certain claims and asked that claims 4 to 7 stand. Said claim 4 is now claim 1 of the patent, with the limitation "of a layer of sand or quartz."

Claim 5 in its present form was introduced into the application on March 26, 1915. It was rejected as disclosing nothing more than a double use of the apparatus disclosed by each of the patents to Bommarius. On June 30, 1915, Gans amended, and again the claim was rejected. On April 21, 1916, another amendment was made, and on May 6, 1916, claim 5 was finally rejected. Then on June 16, 1916, claim 5 was amended by adding these words: "And means connected to the lowest point of the casing for removing the salt solution so introduced." The Patent Office found no basis for patentability until this last mentioned element was added.

The Patent Office did not mention any of the references hereinafter discussed, all of which are German in their origin. In view of their direct relevancy and pertinency to the questions then before the Commissioner, the only fair inference is that the office had no knowledge thereof.

In addition to the Bommarius patents mentioned by the Patent Office, covering three forms of apparatus for water filters, consisting of a casing with layers of filtering materials through which the water was passed, as indicative of the state of the art, defendant has submitted to the court the Feldhoff article of September 7, 1907; the Technische Rundschau article of January 27, 1909; the Gans article of April 15, 1909, all German publications; the German Leister patent, No. 211,064; German Gebrauchsmuster, No. 341,512; German Gebrauchsmuster, No. 313,671, and certain other patents and a thesis published in German, known as the "Weiss Thesis."

The expressed elements of claim 1 are an apparatus comprising: (1) A container (casing); (2) a filter bed of sand; (3) a layer of zeolites on the sand; (4) means for permitting the passage of water through the container; (5) means for cutting off the water; (6) means for passing through the casing a solution of salt to regenerate the zeolites. The elements of claim 5 are the same, with the addition of the means for removal of the salt solution to be connected with the lowest point of the container.

Under the Bommarius patents a container with a filter bed of sand and means for permitting the passage of water there-through were old. Nor was there anything new in the substitution of zeolites for the filtering material of Bommarius.

The claim of invention finds basis eventually in the asserted inclusion in each of the claims of an element, not expressed therein, but claimed by plaintiff, and recognized in the cases cited, to be necessarily implied, viz., a requirement that the bed of zeolites mentioned shall be open, i. e., that there shall be an open space between the top of the zeolites and anything above them, thus furnishing opportunity to the silicates to spread out when flooded, and the inclusion in claim 5 of the element that the means for draining the salt solution from the casing shall be connected thereto at the lowest point. If the claims do not necessarily imply a free or open bed of zeolites as contrasted with "a locked bed," or if the inclusion of such implied element in the combination did not bring about invention claim 1 fails, and, if in addition the element of attachment of the drain for salt water at the lowest point was not invention, claim 5 fails.

The Gans article was published on April 15, 1909, under the heading "The Technique of Water Purification." He therein stated: "The process is in its most simple form a pure exchange process by which the calcium and magnesium of the water are taken up by the zeolite and the sodium is given off to the water. * * * The regeneration is performed by washing off the zeolites, which have been saturated with calcium or magnesium, with a common salt solution, by which means a sodium zeolites is again produced which is again able to soften new quantities of water. * * * There are already several filters of this sort in use, some to prepare soft water for boiler feed purposes and other for laundries. The filter plants are remarkable through the simplicity of their arrangement. * * * The softening is complete with cold water. * * * The apparatus consists of an iron or wooden filter. The height of the permutit (zeolite) bed is determined by the hardness of the specific water and the rapidity of filtration. The useful effect is greater the more slowly the water flows through the permutit filter and the finer the grain thereof. The permutit bed lies upon fine sand, which becomes coarser at the bottom." The proper translation of the next sentence is in dispute. Defendant's translators read it as follows: "At the top it is best closed off by a sand filter placed about one-third to one-half meter above the surface of the permutit layer." The remainder of the paragraph is not in dispute, and is as follows: "The sand filter under many conditions can be replaced by a limestone filter, for instance, when treating water containing iron and acids. This arrangement of the upper sand or limestone filter will also prevent that by back-washings, the specifically lighter permutits are not mechanically washed away."

If the defendant's translation be accepted, it would appear that Gans in 1909, more than two years before the filing of his patent, published to the world a description of a water softener containing every claimed...