47 F.2d 704 (8th Cir. 1931), 8935, Buchanan v. Wyeth Hardware & Mfg. Co.

Docket Nº:8935.
Citation:47 F.2d 704, 8 U.S.P.Q. 389
Case Date:February 18, 1931
Court:United States Courts of Appeals, Court of Appeals for the Eighth Circuit

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47 F.2d 704 (8th Cir. 1931)

8 U.S.P.Q. 389




No. 8935.

United States Court of Appeals, Eighth Circuit.

February 18, 1931

Rehearing Denied April 3, 1931.

Enos E. Hook and H. W. Hart, both of Wichita, Kan. (Glenn Porter, of Wichita, Kan., on the brief), for appellants.

Otis A. Earl, of Kalamazoo, Mich. (Chappell & Earl, of Kalamazoo, Mich., and Groves & Watkins, of St. Joseph, Mo., on the brief), for appellee.

Before KENYON and GARDNER, Circuit Judges, and MUNGER, District Judge.

KENYON, Circuit Judge.

This suit, in which appellants were plaintiffs, is for an alleged infringement of patent No. 1,670,235, granted to Isaac W. P. Buchanan May 15, 1928, for a hand-operated liquid variable spray device. The G-V Sprayer Company is Buchanan's licensee. Appellee (defendant) is a hardware company at St. Joseph, Mo. The defenses are the usual ones of invalidity and noninfringement. The trial court held that the Buchanan patent was invalid for want of invention; that it was clearly anticipated by the D. B. Smith patent of August 15, 1911, No. 1,000,447; that Buchanan made only one improvement on the Smith sprayer, and that was the addition of a locknut to secure the sprayer nozzle to any particular adjustment; and that such improvement did not constitute invention; and it is pointed out that the Patent Office had so ruled in connection with this very patent.

The Buchanan patent came into a crowded field. Defendant in its answer cites twenty-two domestic patents and five foreign patents, covering, it claimed, the same thing patented in the Buchanan patent, and defendant alleged that Buchanan was not the first inventor

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or discoverer of any material or substantial part of the things patented in said letters patent, No. 1,670,235; that the Buchanan patent was merely an 'aggregation of old and well-known mechanical expedients arranged for use in an obvious and customary manner and devoid of invention.'

The Buchanan patent relates to a spraying device whereby liquid under pressure is discharged in a solid stream or in varying sprays from a nozzle, the nature of the spray being varied by the adjusted position of the nozzle tip. There is a liquid tube leading from the container centrally arranged with relation to the eduction tube so as to provide an annular air passage open around the liquid tube. The air pressure is supplied by an air pump communicating with the container, which also serves as a handle for directing the discharge toward the object to be treated. The nozzle is threaded upon the eduction tube so that it can completely engage the end of the liquid tube, thus cutting off the escape of air from the air tube and making it possible to discharge a solid stream. It is turned in varying relation with the liquid tube to change the character of the spray. When the kind of spray desired has been determined by turning the nozzle tip, it can be stabilized by the locknut so that the position of the tip is indefinitely maintained. To give an idea of the structure, we set out the drawings forming part of the specifications of the patent.

(Image Omitted)

Figure 1 shows the induction tube and the liquid tube which is open at both ends and that the part of it within the eduction tube is centrally arranged so as to provide an annular air passage. The pump and handle are not shown, but they are the usual bicycle or auto pump device.

Figure 2 is a section on line 2-2 of figure 1.

Figure 3 is an enlarged sectional view through the nozzle part of the device.

Figure 4 is an elevation with parts in section showing modification of nozzle part, and it may be noted there are indentations in the eduction tube to hold the liquid tube in fixed space relation.

Figure 5 is an elevation with parts in section of another modification.

Plaintiff diagrams the two claims of the patent at issue as follows:

'Claim 1, a continuous variable hand operated spraying device comprising:

(1) a container (1),

(2) a follow head (9) thereon and communicating therewith.

(3) a hand operated air compressing pump (23)

(a) rigidly secured to the head (9) for introducing compressed air into said head and container (1) and

(b) for manipulating the operating device when in use,

(4) an eduction tube (30)

(a) having one end connected to and in communication with the hollow head (9),

(5) a liquid tube (31)

(a) open at both ends extending through the eduction tube (30)

(b) with its outer end protruding from the eduction tube (30)

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(c) and having its inner end portion extending into the container (1),

(d) the delivery end portion of the liquid tube (31) being circumferentially spaced from the delivery end portion of the eduction tube (30) to form an annular unobstructed air outlet passage,

(6) means for immovably fixing the liquid tube (31) relative to the eduction tube (30)

(a) thereby holding its protruding end in fixed relation to the outer end of the eduction tube (30),

(7) an atomizing tip (40)

(a) adjustably mounted on the outer end of the eduction tube (30)

(b) so that it can be moved into sealing engagement with the outer end of the liquid tube (31) or held in spaced relation thereto, thereby wholly or partially preventing compressed air from the eduction tube (30) from contacting the emerging liquid,

(c) and the aperture in the tip (40) being smaller than the outlet from the liquid tube (31), thereby causing, with the adjustment of said tip, a varying back pressure on the merging liquid, and

(8) means (4)

(a) for stabilizing the atomizing tip (4) in its successive positions on the eduction tube (30) and preventing the escape of air and liquid except through said aperture.

'Claim 2 is the same, except subdivision 6, which is as follows:

(6) Said threaded end of the eduction tube (30) comprising adjustable means for immovably clamping the liquid tube (3) against a portion of the head (9) and

(a) thereby holding its protruding end in fixed relation to the outer end of the eduction tube (30).'

The claims as thus diagramed show either definite elements which appellants insist cooperate and bring about a structure successfully used in a commercial way for spraying.

Appellants claim the novelty in the patent is really composed of the combination of four elements, as follows:

'1. A liquid tube passing through an eduction tube and rigidly fixed as to longitudinal movement with reference to that eduction tube.

'2. An adjustable top mounted on the eduction tube.

'3. Stabilizing means which fixes the movable tip in its several positions upon the eduction tube, but which several positions vary from sealed contact to spaced relationship.

'4. A handle connected with the apparatus to give proper directional manipulation,' and that each of the elements is essential to all the others.

No claim is made that any of the elements are new, but it is asserted that Buchanan had the right to draw from the whole field in making his combination, and that in his patent he produced by an ingenious combination of old elements a new and improved result different and more efficient than any sprayer on the market at the time his patent made its advent, that no other sprayer introduced as part of the prior art had a fixed liquid tube, a stabilizing device, and the other elements in his combination, and that after the issuance of the patent the large manufacturers of sprayers copied and appropriated the main elements thereof.

Appellants are entitled to the benefit of the presumptions available by virtue of the issuance of patents, viz. validity, utility, and invention. Acme Foundry & Machine Co. v. Oil Well Improvements Co. (C.C.A.) 2 F. (2d) 530; Zip Mfg. Co. v. Pusch (C.C.A.) 2 F. (2d) 828; Detroit Motor Appliance Co. v. Burke et al. (D.C.) 4 F. (2d) 118; Tropic-Aire, Inc. v. Sears, Roebuck & Co. (C.C.A.) 44 F.2d 580; Lehnbeuter v. Holthaus, 105 U.S. 94, 26 L.Ed. 939; Diamond Rubber Co. v. Consol. Tire Co., 220 U.S. 428, 31 S.Ct. 444, 55 L.Ed. 527. They insist that the commercial success and general use of the patented article are evidence that the device involves invention. Commercial success is to be considered of course on the question of invention where the same is in doubt, but courts, in view of the many elements entering into commercial success, view with some caution such evidence as establishing patentable novelty. In McClain v. Ortmayer, 141 U.S. 419, 12 S.Ct. 76, 79, 35 L.Ed. 800, the Supreme Court said, as to the claim that a patented article having gone into general use was evidence of utility: 'It is not conclusive even of that, much less of its patentable novelty.'

The burden of proof rests upon defendant to overcome the presumption of validity arising from issuance of the patent. Zip

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Mfg. Co. v. Pusch (C.C.A.) 2 F. (2d) 828; Fairbanks, Morse & Co. v. Stickney...

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