Abbott v. Coe

• Decision Date: 20 November 1939
• Docket Number: No. 7280.,7280.
• Citation: 71 App. DC 195,109 F.2d 449
• Parties: ABBOTT et al. v. COE, Com'r of Patents.
• Court: U.S. Court of Appeals — District of Columbia Circuit

71 App. DC 195, 109 F.2d 449 (1939)

ABBOTT et al. v. COE, Com'r of Patents.

No. 7280.

United States Court of Appeals for the District of Columbia.

Decided November 20, 1939.

Rehearing Denied January 15, 1940.

Arlon V. Cushman, of Washington, D. C., and William Gates, Jr., of Boston, Mass., for appellants.

William Wallace Cochran, U. S. Patent Office, of Washington, D. C., for appellee.

Before EDGERTON, VINSON, and RUTLEDGE, Associate Justices.

EDGERTON, Associate Justice.

The Patent Office rejected, on the ground of lack of invention, certain claims in appellants' application for a patent on improvements in a machine for winding yarn. The District Court likewise found no invention, and dismissed appellants' bill brought under R.S. § 4915 (35 U.S.C.A. § 63) to obtain the patent.

The disputed claims fall into three groups.

(1) Some claims relate to the case-hardening of a cam or cylinder. The application states that the case-hardened cam "offers great resistance to wear and is of improved durability." The Patent Office examiner pointed out, and it is not disputed, that case-hardening has long been used where a wear-resistant surface is needed. The applicant, in his testimony regarding the unsatisfactory cast-iron cam of the prior art, referred to "deterioration" of the points of the cam and said: "I should not say it is worn. It is a matter of breaking it; of crumbling it. It is caused by the rapid motion of the dog which strikes against the points." Appellants' counsel urges that the record contains no evidence that case-hardening was known to prevent breaking, and cites Muller's patent No. 1,511,764, which states that case-hardening produces brittleness. Since appellants' application speaks only of reducing "wear," it evidently uses the word "wear" in a sense broad enough to cover the gradual breaking or "crumbling" of the surface which the applicant sought to prevent; and it seems clear that when the examiner stated, as of common knowledge, that "case hardening has long been used in all mechanical fields where a wear resisting surface is needed," he used "wear" in the same sense in which it is used in the application. The applicant himself, when he testified that he adopted a harder metal than cast-iron in order to reduce "breaking" or "crumbling," immediately added: "Case hardening was a well-known process at that time; it is an ancient thing." This apparently admits that it was ancient for the purpose of preventing superficial breaking or crumbling.

The applicant discovered that the breaking of a "slider" against the cast-iron cam of the prior art was caused by the crumbling of the points on the cam and not, as had been supposed, by shock sustained when the movement of the slider was reversed. Case-hardening the cam remedied this difficulty. Appellants urge that this entitles them, as matter of law, to a patent, and quote this language: "Discovery of a source of trouble not before known and the discovery and application of a remedy are well recognized as invention. Eibel Process Co. v. Paper Co., 261 U.S. 45, 43 S.Ct. 322, 67 L. Ed. 523." Gasoline Products Co. v. Coe, 66 App.D.C. 333, 339, 87 F.2d 550, 556. This court, of course, did not rule in the case quoted that the discovery of any source of trouble, and the application of any remedy, however obvious, invariably amount to invention; it ruled only that such factors are persuasive. If it had considered them conclusive, its opinion would have been a brief memorandum, for they were clearly present; whereas the court went fully into the question of obviousness, and found that the resistance of a chromium alloy to sulphur corrosion, which the applicant in the Gasoline Products case utilized, was unknown to the prior art. The Eibel case was an infringement suit in which the Supreme Court, on consideration of all the evidence, agreed with the Patent Office that there was invention.

The applicant's use of case-hardening produced an unexpected result which was not mentioned in the application; it permitted the operation of the machine, even at a greatly increased speed, with little lubrication and no spattering of oil. This result was highly useful. But it was not claimed or disclosed, and it cannot retroactively turn the adoption of case-hardening, for other purposes, into invention. Despite contrary intimations in earlier cases like Diamond Rubber Co. v. Consolidated Rubber Tire Co., 1911, 220 U.S. 428, 31 S. Ct. 444, 55 L.Ed. 527, it is now settled that useful innovation without invention is not patentable, and that innovation is not invention unless it "required some uncommon talent." Textile Machine Works v. Louis Hirsch Textile Machines, Inc., 1938, 302 U. S. 490, 498-499, 58 S.Ct. 291, 82 L.Ed. 297. It is self-evident that an advantage of which the applicant knew nothing when he adopted case-hardening and made the patent claims now in suit, had no influence upon and no connection with his adoption of case-hardening and his making of these claims. It follows that the advantage of case-hardening in relation to lubrication has no tendency to prove that his adoption of case-hardening and his making of the claims required or showed talent. Moreover, even invention is not patentable unless it is disclosed so that people can use it; and it is not at all clear that what Abbott disclosed would lead anyone, unless by accident, to the use of less oil and so to the avoidance of spattering. "Accidental results, not intended and not appreciated, do not constitute anticipation." Eibel Process Company v. Minnesota & Ontario Paper Company, 261 U.S. 45, 66, 43 S.Ct. 322, 329, 67 L.Ed. 523. Nor do they constitute invention.

(2) Some claims relate to making "resilient," "of cork," or "of rubber," certain tires which revolve upon the surface of the cam and at the same time are required to slide. A previous Abbott patent shows a similar tire of "soft metal." This substitution, also, seems to have been a marked improvement. The Board of Appeals of the Patent Office said: "The examiner holds and we think properly, the substitution of cork or rubber for soft metal as a suitable friction ring to cooperate with a driving friction roll is not so unobvious as to amount to invention. Appellant claims it is not obvious that such rubber or cork would slide along a cooperating friction roll. In our view this depends entirely upon the character of rubber and cork and with certain types of cork and...