44 F.2d 580 (8th Cir. 1930), 8849, Tropic-Aire, Inc. v. Sears, Roebuck & Co.

Docket Nº:8849.
Citation:44 F.2d 580, 6 U.S.P.Q. 301
Party Name:TROPIC-AIRE, Inc. v. SEARS, ROEBUCK & CO.
Case Date:September 05, 1930
Court:United States Courts of Appeals, Court of Appeals for the Eighth Circuit

Page 580

44 F.2d 580 (8th Cir. 1930)

6 U.S.P.Q. 301

TROPIC-AIRE, Inc.

v.

SEARS, ROEBUCK & CO.

No. 8849.

United States Court of Appeals, Eighth Circuit.

September 5, 1930

Appeal from the District Court of the United States for the District of Minnesota; John B. Sanborn, Judge.

A. C. Paul, of Minneapolis, Minn. (Richard Paul, Maurice M. Moore, and Paul, Paul & Moore, all of Minneapolis, Minn., on the brief), for appellant.

Otto Raymond Barnett, of Chicago, Ill. (Percival H. Truman, Lawrence T. Barnett, and Barnett & Truman, all of Chicago, Ill., and Doherty, Rumble, Bunn & Butler, of St. Paul, Minn., on the brief), for appellee.

Before KENYON, BOOTH, and GARDNER, Circuit Judges.

KENYON, Circuit Judge.

This is an appeal from a decree of the United States District Court for the District of Minnesota dismissing for want of equity appellant's bill of complaint based on alleged infringement of reissue letters patent No. 17,131, which had been issued to appellant as assignee of Orville S. Caesar, the inventor, November 13, 1928, for an improvement in heating apparatus for automobile vehicles (original patent No. 1,668,490 was issued May 1, 1928).

The trial court held that claims 6 and 7, being the ones alleged to be infringed by appellee's device, were so limited by the prior art that appellee's device was not an infringement thereof. Claim 6, which is also one of the claims of the original patent, is as follows:

'A heating system for motor-driven vehicles, comprising an engine cooling system including an inter-communicating jacket and radiator for a circulating cooling liquid, an air heating and distributing unit embodying a liquid receiving chamber in communication with the engine cooling system to form in conjunction with said system a circuit for circulation of liquid between said receiving chamber and engine cooling system, said receiving chamber being traversed by air passageways for heating air traveling through the passageways by heated liquid received from the engine cooling system, and a variable-speed fan positioned in relatively close relation to the liquid receiving chamber for causing a more or less frequent recirculation of air through the liquid receiving chamber and the interior of the vehicle to be heated for effecting controlled variations of temperature within the interior of the vehicle, said liquid receiving chamber and fan being located within the interior of the vehicle and isolated from exhaust gases and fumes generated by the engine of the vehicle.'

Claim 7 of the reissue application was not included in the application for the original patent. It is as follows:

'A heating system for motor-driven vehicles, comprising an engine cooling system including an inter-communicating jacket and

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radiator for a circulating cooling liquid, an air heating and distributing unit embodying a liquid receiving chamber in communication with the engine cooling system to form in conjunction with said system a circuit for circulation of liquid between said receiving chamber and engine cooling system, said receiving chamber being traversed by air passageways for heating air traveling through the passageways by heated liquid received from the engine cooling system, and a fan positioned in relatively close relation to the liquid receiving chamber for causing a circulation of air through the liquid receiving chamber and the interior of the vehicle to be heated, said liquid receiving chamber and fan being located within the interior of the vehicle and isolated from exhaust gases and fumes generated by the engine of the vehicle.'

Both claims state substantially the same combination of elements. Claim 6, however, adds the limitation that the fan employed 'is a variable speed fan.'

Caesar's original claims were all rejected by the Patent Office, the rejection stating, in part: 'It is also not a matter of invention to use an air circulator with an air heater, as in claim 4, this being an expedient old and common in the heating art. * * * Since the combination covered by claims 1 to 6, inclusive, is shown to be old by the art cited, these claims are each rejected. ' Caesar acquiesced in the rejection of his original claims by canceling them. He then substituted six additional claims, one of which was canceled and the others allowed after various amendments and conferences. Appellee maintains that appellant in claims 6 and 7 is contending for exactly what was covered in original claim 4, which is as follows:

'The combination with an internal combustion engine including a water-jacket, a water-cooling radiator and a connection between the water-jacket and the radiator, of an air-heating member mounted within the vehicle body, conduits connecting said member with said connection, means in the connection for diverting substantially all or a portion of the water through said member, and means adjacent to said air-heating member adapted to force air therethrough and circulate the heated air within the vehicle body.'

That it bears some similarity to claims 6 and 7 of the reissue patent application is apparent. It is unnecessary, however, in our view of the case to discuss how claims 6 and 7 of the reissue application may be affected by the rejection of claim 4 of the original application.

It is appellant's theory that claims 6 and 7 of the Caesar patent present a new combination of old elements resulting in a 'small compact liquid receiving chamber, in communication with the engine cooling system of a motor driven vehicle, being traversed by air passageways for heating air traveling through the passageways by means of the heated liquid received from the engine cooling system, and a fan positioned in relatively close relation to the liquid receiving chamber for causing a circulation of air through said chamber and the interior of the vehicle to be heated, the liquid receiving chamber and fan being located within the interior of the vehicle and isolated from exhaust gases and fumes generated by the engine of the vehicle'; that said combination so set forth is valid and the structure described therein discloses a radical improvement over anything in the prior art of automobile heating and has practically revolutionized the same; that it is the last word in automobile heating devices, simple, efficient, and practical, and has achieved great commercial success; that manufacturers of Packard, Cadillac, and Hupmobile cars, and also the General Motors Company, have endeavored to secure licenses to manufacture the same, all of which appellant argues tends to show novelty and invention. It relies upon the well-established proposition of law that a combination patent may be valid even if all the elements are old, provided the combination is new and produces a new result, or an old result in a new and more efficient way.

Appellee maintains that its device is in no way an infringement; that in view of the prior art there is no invention in the Caesar device; that Caesar entered the field after the possibility of heating automobiles by means of a radiator supplied with hot water from the heating jacket was fully known, and after many other patentees had shown the desirability of a heating unit comprising an incased radiator and an electric fan to recirculate the air of a compartment from the radiator, and especially after Modine had developed with great commercial success a form of such heating unit with radiator of the cellular type, and had taught to the public that such structure was far more efficient than the commonly used type of heating radiators, and that such radiating units could be made of any size required to adequately heat any specified compartment; that the commercial success of appellant's heater carries no implication of patentable novelty, but is due to the

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publicity methods employed, assisted by the decree in the Jumper case and an alliance between appellant and its licenses; that claims 6 and 7 of the Caesar patent disclose nothing of originality or patentable novelty; and that, to use the words of appellee's brief:

'Caesar did nothing but to accept such teaching by replacing the less efficient coil radiators of previous automobile hot water heaters with a heater unit of the Modine type, making the unit of no larger size than was adequate to heat the compartment in which it was located, to wit, the interior of an automobile.

'In so doing there was no 'adaptation' of the Modine device to automobile heating. Caesar simply disconnected the heating radiator of prior devices from the hot water pipes connecting the interior of the car with the water jacket and coupled on a Modine heater unit of a suitable size for the work required.'

We set forth figures 1 and 2 of the Caesar device which illustrate the general plan of operation:

(Image Omitted)

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13 is the connecting pipe leading from the top of the engine jacket 11 to the top of the cooling radiator 12 by a valve not designated on these diagrams. The cooling water may pass direct from the top of the engine jacket into the cooling radiator and thence through the radiator and back to the engine jacket or part of the water may be directed into pipe 35 leading to the heating radiator inside of the car and thence back through pipe 30 to a connection which fits into 32 as a connection to 13 to the top of the cooling radiator. The heating radiator is in series with the cooling radiator and the water jacket, so that the water of the cooling system passes through the cooling radiator regardless of whether some or all of such water is diverted through the heating radiator before it reaches the cooling jacket.

Appellee's device is on the market as the Mephisto hot water heater, and sells for practically one-half the price of appellant's device. The directions for installing the same are in the record and the process is very simple. An illustrative diagram of the same...

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