American Technical Machinery Corp. v. Caparotta
| Decision Date | 31 March 1964 |
| Docket Number | No. 60-C-984.,60-C-984. |
| Parties | AMERICAN TECHNICAL MACHINERY CORP., (Substituted for American Brush Machinery Company, Inc.), Plaintiff, v. Sylvester CAPAROTTA, doing business as Kings Brush Co. and as Kings Brush & Mop Co., Defendant. |
| Court | U.S. District Court — Eastern District of New York |
John M. Calimafde, New York City, for plaintiff.
Samuel Brodsky, New York City, for defendant.
Plaintiff's amended complaint states a claim for patent infringement of Patent No. 2,742,327. Plaintiff, at pre-trial (order dated 4/9/63), narrowed the claimed infringement to claims 2, 6, 13, 16 and 17. The answer pre-dates the amended complaint and is deemed the answer to the amended complaint (pre-trial order). Defendant attacks the validity of the patent on the following grounds:
1. The invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application in the United States (par. 6). See 35 U.S. C. § 102(b).
2. The invention was known or used by others in this country or described in a printed publication before invention by plaintiff (par. 7). See 35 U.S.C. § 102 (a).
3. The subject matter is contained in patents granted to others filed in the United States before the invention thereof by plaintiff (par. 8). See 35 U.S.C. § 102(e), 35 U.S.C. § 103.
4. The patent does not describe an "operable invention" (par. 8); and the claims are "vague, indefinite, and uncertain" (par. 9), and "the claims are broader than the invention" (par. 11).
Application for letters patent for a Fully Automatic Machine for making brushes was filed April 20, 1951, by Theodore Marks (Serial No. 222,007) Exhibit 1A. Letters Patent No. 2,742,327 was issued April 17, 1956. On April 25, 1951, one Hertzberg filed an application for letters patent for an invention under the title "Machine For Making Brushes". In August 1953, the Examiner suggested the language which eventually was numbered claims 16 and 17, for the purpose of interference. Letters patent were issued to Theodore Marks on April 17, 1956, and assigned by mesne assignments to plaintiff. The following patents were cited:
Weber 286,511 1883
Thacher 1,845,209 1932
Boardman 1,851,537 1932
Lipps 1,888,352 1932
Epp 1,941,343 1933
Scully 2,105,334 1938
PLAINTIFF'S CLAIM TO PATENT PROTECTION
Plaintiff claimed invention of an automatic wire brush manufacturing machine. Briefly described, the machine is designed to produce wire-twisted brushes of varying lengths not exceeding approximately 36". An upper and lower wire are continuously fed into the machine from two spools; the upper and lower wires engage pre-cut fibers or bristles fed from a hopper; the two wires holding the fibers or bristles in a more or less firm position, are then drawn into a pre-determined length; the wires holding the bristles are then twisted by a rotating chuck; the twisted-wire brush is then cut. The brush is then complete and ready for packaging, except that in some varieties handles are added.
Plaintiff rests on claims 2, 16 and 17 as typical of the asserted claims. To understand the claims, examination of their component parts is helpful.
Claim 21 describes a fully-automatic machine for forming a brush by having spaced sets of fibers held between twisted wires. The mechanism contains the following elements: (1) a continuous under wire free at one end, (2) a continuous upper wire free at one end, (3) a fiber feeding device, or hopper, that places the pre-cut fibers between the upper and lower wire, (4) a method of pulling the fibers, evenly distributed, and firmly held to a pre-determined length, (5) a twisting operation to lock the fibers between the twisted wires, and (6) a cutting device.
Claim 162 describes the machine providing a means to keep the upper and lower wires parallel and adjacent to each other. The elements found in claim 2 for drawing the wires, feeding the bristles (or fibers) onto the lower wires and between the upper and lower wires, and the mechanism for twisting and cutting are repeated here.
Claim 173 restates the means found in claim 16 for supporting the upper and lower wires substantially parallel and adjacent to each other and the feeding of bristles (or fibers) onto the lower wire and between the lower and upper wires. It also describes the mechanism (1) for gripping the ends of the wires by a reciprocatable and rotatable chuck; (2) for pulling the wires to a pre-determined distance; (3) remote from the exposed ends; (4) rotating the chuck to twist the wires and lock the bristles or fibers.
Plaintiff concedes that all the elements of the claimed invention were part in the public domain except the method of feeding pre-cut bristles between a pair of moving wires (Trans. p. 640-642); but contends the combination of such known elements performs a new and useful purpose, and rises to the standard of inventiveness required by 35 U.S.C. § 1014. Defendant argues the claimed invention is anticipated by the prior art; if not fully anticipated, the advance over the prior art "* * * would be obvious at the time the invention was made to a person having ordinary skill in the art * * *." 35 U.S.C. § 103.
The twisting mechanism as described by plaintiff's patent was well known in the brush-making machine art. It was disclosed in the hand-twisting device of the Boardman patent 1,851,537 (1932), and in the Baumgartner patent 2,234,641 (1938), which disclosed a twisting operation by mechanical rotation of a chuck and providing longitudinal movement for the chuck to compensate for the reduced length of the twisted wires.
The twisting mechanism of plaintiff's patent is fully disclosed in A. L. LeFebvre, et al. 2,542,686 (1947) (Ex. J-13).
One of the problems in the art prior to the advent of semi-automatic machines (1942) was the retaining of the bristles in position for twisting before the twisting operation commenced. H. Cave, et al. 2,358,443, (1942), claimed invention of a brush-making machine whereby a pre-cut wire is first placed on a carrier, the carrier moves to a position to receive a measured lot of bristles from a magazine; the carrier then moves to another position to receive another wire; the carrier then positions the bristles so held by two wires, between two chucks. The twisting mechanism operation then follows the conventional procedure of twisting the wires by rotating chucks that grasp them at both ends. Earlier, Lipps 1,888,352 (1932) (Ex. J-16) claimed invention for a method of supplying fibers from a hopper on to an assembly rack. The bristles were held in place by manually clamping and then applying core wires; this assembly was then manually transferred to the twisting mechanism.
A. L. LeFebvre 2,572,498 (1946) (Ex. J-12) disclosed a brush-making machine similar to H. Cave, et al.
The semi-automatic brush-making machines disclosed a mechanism for spreading fibers on a wire and the placing of a wire topside, so that the fibers were between two wires. In this position, the fibers held between the wires were transported to the twisting device that provided the mechanism for the final operation prior to insertion into a handle.
At the time of the filing of the Marks application, the brush-making machine art did not disclose a machine capable of making wire brushes from spools or rolls of wires, that would trap and twist fibers or bristles. Spools or reels of wire continuously fed in a machine is disclosed in a Finnish patent granted to Paavo Emil Valisalo 23,347 published July 7, 1949 and in the U. S. Patent Office September 19, 1949 (Ex. J-23). The patent describes the device as a machine for "making pipe cleaners, lamp brushes, steel brushes, Xmas decorations, etc., where cotton, nylon, or metal are used and which are fastened with 2 or more intertwining metallic core-wires." The method described by the claim is the winding of a thread about one core wire, simultaneously twisting the core-wires together. The thread is cut after the twisting operation has secured it. The patents granted to H. P. Ruf 1,801,388 (1930) (Ex. — 20) for a machine making a twisted cord known as ruff cord and chenille and to Henri-Guido Le Moine 876,067 (French) applications filed June 11, 1941, published in the U. S. Patent Office October 13, 1942, for a machine making twisted fringes or coils of metal threads containing threads as fibers, also teach continuous feeding of wire into a machine.
The use of a hopper or magazine for holding pre-cut fibers and the feeding mechanism was disclosed. The gripping device as disclosed by Marks was obvious to one skilled in the art. The vital question is, whether the means for feeding pre-cut fibers, more or less evenly spaced between an upper and lower wire substantially parallel and adjacent with each other, was either anticipated or obvious to one skilled in the art. The feeding of continuous wires from rolls was disclosed by machines designed for making chenille, pipe cleaners, etc., previously referred to. Such machines did not, however, disclose means for supporting upper and lower wires substantially parallel and adjacent to each other. The materials used in such machines were cut after twisting. The problem in brush making — of holding bristles between wires prior to twisting — was not present producing chenille or similar items.
The means described by Marks shows the wires pulled by a chuck over tension roller wheels. The upper wire passes immediately over the bristles position on the under wire to grip them between the two wires which are in tension (Marks Ex. 3 — Col. 4 — 1. 65-68). A wire-holding fork, in an intermediate position permits the wires, holding the bristles, to pass through to a pre-determined length. The holding fork is lowered to its ultimate positions. Two jaws of a vise...
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American Technical Machine Corp. v. Caparotta, 47
...the exposed ends, and means for rotating the chuck to twist the wires and lock the bristles therebetween. 2 Whose opinion appears in 229 F.Supp. 479. 3 Defendant, who was then using a Marks machine, employed Briglia to invent a machine to supplant Marks. In May 1960 Briglia filed a patent a......