43 F.2d 898 (7th Cir. 1930), 4390, Permutit Co. v. Graver Corporation

Docket Nº:4390.
Citation:43 F.2d 898, 7 U.S.P.Q. 51
Case Date:October 20, 1930
Court:United States Courts of Appeals, Court of Appeals for the Seventh Circuit

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43 F.2d 898 (7th Cir. 1930)

7 U.S.P.Q. 51




No. 4390.

United States Court of Appeals, Seventh Circuit.

October 20, 1930

Appeal from the District Court of the United States for the Eastern Division of the Northern District of Illinois.

Suit by the Permutit Company against the Graver Corporation. Decree for defendant (37 F.2d 385), and plaintiff appeals.


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

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

Before EVANS, SPARKS, and PAGE, Circuit Judges.

EVANS, Circuit Judge.

This appeal presents for determination the validity, and appellee's infringement, of claims 1 and 5 of the Gans patent, No. 1,195,923 covering an apparatus 'for Softening of Water.' The District Court found both claims invalid and dismissed the suit.

The Gans patent has been before the courts on numerous occasions. The two claims in question (1 and 5) have been upheld by two Circuit Courts of Appeal. 279 F. 713; 13 F.2d 454. They have also been sustained by three District Courts, but only two opinions have been reported. 292 F. 239; 274 F. 937. The same claims have been held invalid by two District Courts, the decision of Judge Tuttle (294 F. 370) being reversed in 13 F(2d) 454. In the instant suit the District Court, in a well-reasoned opinion, expressed its unwillingness to follow the above-cited decisions because convinced that both claims were clearly void.

The inventor thus describes his invention:

'This invention relates to an apparatus for softening water in the use of zeolites or hydrated alumino-silicates.

'It is known that zeolites or hydrated alumino-silicates have the property of softening hard water and the present invention has for its object an apparatus in which the zeolites or alumino-silicates can be used in a filter and be regenerated therein so as to be capable of continuous use for the softening of water.

'The zeolites or hydrated alumino-silicates that occur in nature are ill adapted, without special treatment for the purpose, inasmuch as their capacity for the exchange of their base, upon which their property of softening hard water depends, is relatively small, while they have little or no capacity for regeneration or reconversion to their original condition, whereby they can be continuously used.

'Furthermore zeolites or hydrated alumino-silicates for use in softening hard water through them must not only possess a high capacity for exchange of their base and a high capacity for regeneration or re-conversion to their original condition, but they must be hard and large grained, and adapted by their physical qualities for use as filtering media.'

In speaking of the patent, the Court in 13 F.2d 454, 455, says:

'Without repeating the details found in these opinions, it is sufficient now to say that it had long been known with regard to zeolites, a somewhat rare natural mineral combination, that they had the faculty of taking up the lime from hard water, thereby making it soft. This having been accomplished, and

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the zeolites then being charged with this lime, it in turn could be removed by putting them in salt water, after which they would again be ready to perform the softening operation. It seems that this process continued practically only a laboratory operation until Dr. Gans invented an artificial zeolite, which could be produced in large quantities at a practicable cost. * * *

'The process has gone into enormous use in this country, and rarely is there a case where a new art and industry are founded solely upon, and grow entirely from, a patent, so clearly as in this case.'

The two claims in issue read:

'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 the supply of water on the exhaustion of the zeolites, and means for passing through the casing a solution of a salt capable of regenerating the zeolites.'

'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 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.'

About four years after the patent was issued, a disclaimer was filed which reads as follows:

'The Permutit Company, * * *, represents that it is the owner of the entire right, title and interest in and to patent No. 1,195923, dated August 22, 1916, this patent having been granted on an application filed by Robert Gans, of Berlin, Germany, to J. D. Riedel Aktiengesellschaft, of Berlin, Germany, as the assignee of Robert Gans, and having been duly assigned to your petitioner, * * *; that it has reason to believe that, through inadvertence, accident or mistake, the specification and first claim of said patent are too broad including that which said Robert Gans was not entitled to claim in said patent.

'Your petitioner, therefore, does hereby disclaim from the scope of claim 1 of patent 1,195,923, any water softening apparatus including a layer of zeolites or hydrated alumino-silicates disposed on a layer of sand or quartz in which the water to be softened is so introduced into the casing that it passes upwardly through said layer of zeolites. * * * '

It will be observed that the invention deals not with the use of zeolites as such, nor with the regeneration of zeolites, but rather with an apparatus which makes use of zeolites as a water softener and which also permits of the injection and removal of salt into the casing to regenerate the zeolites which have lost their potency through use. The discovery of zeolites and their use as water softeners long antedate the application for the patent in suit. Gans was a pioneer in the field of chemistry dealing with water softeners. Several years before applying for the patent in suit, he made application for a patent on artificial zeolites and a process of producing the same. In the specifications for this patent he recognized the then existing state of the art respecting the use of zeolites when he said:

'The purification or the softening of water may be effected in a simple manner by filtering the water through a layer of zeolites or alumino-silicate containing sodium.

'On the saturation of the zeolites with the bases of the salts contained in the hard water, the zeolites may be reconverted or regenerated by filtering through them a solution of a sodium salt, by which a sodium alumino-silicate is again produced.'

Thus it will be seen that we are confronted by a combination product patent only. Utility of zeolites or the effect of salt on zeolites is not involved.

The two claims as originally allowed differed only in one respect, in the appearance in claim 5 of the last-named element, to wit, 'means connected to the lowest point of the casing for removing the salt solution so introduced. ' After the disclaimer was filed the differences between the two claims increased as the disclaimer only applied to claim 1.

Appellee argues that the disclaimer should also apply to claim 5. But we are unwilling to accept this contention. For while it might be said that the same reason existed for limiting his apparatus to such structures as introduced the water into the casing from the top, the fact remains that patentee specifically limited his disclaimer to claim 1. A disclaimer is the act of the patentee. The extent of such disclaimer must be determined by the words used. Here the disclaimer specifically limited its application to claim 1. We are,

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therefore, not at liberty to extend it beyond the clear and binding limitations which patentee described.

In view of our conclusion respecting the validity of the two claims, it is not necessary to describe the various forms of apparatus which appellee made and sold, some of which quite obviously did not infringe either claim 1 or claim 5 while others apparently did infringe one claim or the other.

Claim 1. Appellee contends, first, that the structure described by Gans, in claim 1, for the use of zeolites as a water softener and for regenerating zeolites, did not, regardless of the prior art, constitute invention. It also argues, as an alternative, that the validity of this claim must be denied in view of the prior art which showed similar structures, namely, a casing at the bottom of which was an unconfined body of zeolites through which the water passed either upwardly or downwardly, and means for the introduction of salt into the casing that the zeolites might be regenerated.

Appellant on the other hand denies the existence of an anticipating prior art or a prior art sufficient to teach the skilled mechanics how to make the apparatus defined and described in the patent. It asserts novelty over the prior art in two respects: (a) An unconfined bed of zeolites, and (b) means for causing the water to pass downward through the zeolites.

Appellant's counsel describes the novelty of the Gans invention, thus:

'The apparatus of the patent is relatively simple. It comprises a cylindrical container near the bottom of which is a...

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