Alliance Securities Co. v. JA Mohr & Son

• Decision Date: 25 November 1925
• Docket Number: No. 1280,1299.,1280
• Citation: 14 F.2d 793
• Court: U.S. District Court — Northern District of California
• Parties: ALLIANCE SECURITIES CO. v. J. A. MOHR & SON. SAME v. STANDARD OIL CO.

14 F.2d 793 (1925)

ALLIANCE SECURITIES CO. v. J. A. MOHR & SON.

SAME v. STANDARD OIL CO.

Nos. 1280, 1299.

District Court, N. D. California, S. D.

November 25, 1925.

Samuel E. Darby and Darby & Darby, all of New York City, and John L. McNab and Byron Coleman, both of San Francisco, Cal., for complainant.

Charles W. Owen and Owen & Owen, all of Toledo, Ohio, and J. J. Lermen, William K. White, and Charles M. Fryer, all of San Francisco, Cal., for defendant J. A. Mohr & Son.

Pillsbury, Madison & Sutro and Felix Smith, all of San Francisco, Cal., for defendant Standard Oil Co.

KERRIGAN, District Judge.

These are suits brought under Rev. Stats. § 4921 (Comp. St. § 9467), charging infringement of letters patent of the United States No. 1,196,691, for an invention of means for distributing liquids. The maker and seller, the De Vilbiss Manufacturing Company, has assumed the defense and is the real defendant in each case. Plaintiff is the assignee of Blake F. Hopkins, in whose name the patent originally issued. 27

The defenses which have been set up are invalidity of patent, by reason of the prior art; prior public use; prior invention; want of invention; and fraud and imposition on the Patent Office, which estop plaintiff to maintain these actions.

The patent in suit is broadly defined as a means for atomizing and spraying liquids, and is specifically stated to be designed particularly for the spraying of liquids on surfaces to be coated. Air under pressure is utilized to discharge and atomize the paint, oil, varnish, or other material being sprayed, and the alleged invention is claimed to reside in independently controllable means which are employed for regulating the pressure of discharge air, both into the paint container and from the discharge nozzle. A closed tank 1 contains the spraying material, and an air line 2-4 leads to its interior, from a source of air pressure supply. A reducing valve 6 is disposed in this line. A material discharge tube 14 leads from the tank to the inner tube of a discharge nozzle, while an air tube 15 leads from the air supply to its outer tube. In the air line 2-15 is a pressure regulator 9. Hand-operated spring or stop valves 16 and 16a are placed in the liquid and air discharge tubes 14 and 15, adjacent to the nozzle, and normally act to close those tubes when the apparatus is not in use.

In customary operation of a spraying device of this character, sufficient air pressure is maintained in the tank to force the liquid to and slowly from the discharge nozzle, and the force of nozzle-discharge of air is regulated to suit the material being sprayed, as well as the fineness or degree of atomization. The pressure in the tank is regulated and maintained substantially constant by reducing valve 6, in the air line to the tank, and pressure of air at the nozzle is regulated by a similar valve 9.

A study of the file proceedings leading up to the issuance of the Hopkins patent indicates that the application, which was filed on October 27, 1913, was subjected to a long prosecution before being allowed. The first action of the examiner was to reject it saying: "The claims are rejected on Quest (No. 627,877; June 27, 1899), in view of the fact that it would not be considered to involve invention to place a well-known reducer in a paint-spraying machine. Furthermore, the reducer is shown in Fisher (No. 584,864; June 22, 1897)."

An amendment thereupon was filed, and the examiner again rejected the application, saying that "there would be no invention in applying well-known reducer valves wherever required in a paint-spraying apparatus, such as shown in Quest. This would seem to be nothing more than mechanical skill, especially in view of Fisher of record."

A second amendment was filed, and the application thereupon was finally rejected, with the statement that "to use a reducing valve in any of the tubes of Quest's apparatus in place of the hand-operated valves is lacking in patentable novelty." Then followed an addition of claims, and the primary examiner was requested by plaintiff's present attorneys to withdraw his final rejection. In their argument it was stated that the air pressure in the tank must exceed the pressure of air discharge at the nozzle, and that this could not be accomplished by any of the prior art patents. In a supporting affidavit Hopkins said: "Most, in fact all, of the materials in common use for paint require more pressure to raise them to the point of application than it does to atomize them. * * *" Upon reconsideration, the examiner allowed certain claims and rejected others; whereupon appeal was taken to the Board of Examiners in Chief.

In their brief on appeal, counsel made similar representations with regard to the relative pressures of air in the paint tank and in the air lines to the nozzle. The examiners in chief, by a vote of two to one, refused to allow additional claims, and in affirming the rejection said that "in the Fisher patent there is an automatic valve E-4 which determines the air pressure which will be applied to the tank * * * and valves C-4 in both the air and paint pipes by which the pressure at which each is supplied to the atomizer nozzle may be independently regulated."

Thereupon appeal was taken to the Commissioner of Patents, and briefs containing the same arguments were filed, together with another affidavit, to which reference hereinafter will be made. The Commissioner of Patents reversed the decision of the examiners in chief, allowing all the claims, and on August 29, 1916, patent finally issued.

To the question of infringement little attention need be given. The spraying apparatus used by defendant, of a type manufactured by the De Vilbiss Manufacturing Company, comprises a closed tank for the liquid to be sprayed, a spray nozzle, air pressure lines to the tank and nozzle, and a liquid line from the one to the other. A double air pressure regulator is mounted on the top of the tank, and is independently operable to regulate the pressure of air entering the tank, as well as that of the air passing to the nozzle. The purpose of mounting these regulators on the tank is to provide them with a single mount, and to increase the convenience of adjustment, as well as of carriage.

Defendants assert that the claims of the Hopkins patent are limited to an independent arrangement of the air regulators, and that if the present tank constitutes an infringement, this could be avoided by arranging the regulators in series; in other words, that by placing reducer 9 between the air supply and reducer 5, so that the air will pass through both regulators before entering the tank, the claims of Hopkins may be avoided. Passing this interesting but doubtful contention, it is sufficient to say that the defendants' apparatus now before the court contains and employs the combination of elements defined in Hopkins' claims; that those elements have identically the same relation and relative arrangements as there is described; and that his specifications just as aptly apply to the defendants' structure as to that shown in the drawings of the Hopkins patent. A rearrangement of valves has been made, it is true, but without the accomplishment of a new result. An infringement therefore is clearly made out.

Turning to the prior art, it is important to determine the nature of this alleged invention. An analysis of claim 1 shows that it is for a combination of the following elements: (1) A closed liquid receptacle, or tank; (2) a spray nozzle, with inner and outer discharge members; (3) a liquid conduit XX-XX-XX-XX-XX from the tank to one of the members of the nozzle; (4) a compressed air supply conduit 2; (5) branch pipes 4 and 5 connected therewith, leading respectively to the tank and to the other nozzle member; (6) independently controllable reducing means 6 and 9, interposed in these branch air pipes, permitting variation of the pressure in either without affecting that in the other. Plaintiff asserts, as indeed it must, that if any one of these elements were removed, without its replacement by something equivalent in purpose and function, the usefulness of its entire structure would be destroyed, and makes a similar contention with regard to each of the other claims. The central thought running through all of them is the supplying of atomizing air and liquid to a stray nozzle, the latter by pressure applied to the liquid itself, and the former by connection with an air compressor; both pressures being under independent and relatively variable control, so as to be maintained at constant, uniform values and ratios. This concept, the defendants maintain, because all of its elements are old, does not amount to invention.

What is aggregation, and what is patentable combination, are old and certainly most vexed questions. Where the elements of a composite structure do not perform a joint function, as is the case where a rubber eraser is united to one end of a lead pencil, we have a case of aggregation. Reckendorfer v. Faber, 92 U. S. 357, 23 L. Ed. 719. The elements of lead and rubber do not co-operate with each other, or mutually contribute to the desired result, and the omission or elimination of one of them in no way would impair the function or operation of the other. The often quoted rule of Pickering v. McCullough, 104 U. S. 310, 318 (26 L. Ed. 749), requires that a combination "form either a new machine of a distinct character and function, or produce a result due to the joint and co-operating action of all the elements, and which is not the mere adding together of separate contributions," before it will be held to constitute an invention.

That these tests are met in the instant case seems to me quite plain. As will be shown, infra, a great improvement has been made in the paint-spraying art by the combination of elements described, and the result so obtained would be impaired, if not destroyed, by the omission of any one of them. However, it...