Bobertz v. General Motors Corporation

• Decision Date: 14 December 1955
• Docket Number: No. 12379.,12379.
• Citation: 228 F.2d 94
• Parties: Gustav H. BOBERTZ, Jr., Appellant, v. GENERAL MOTORS CORPORATION, Appellee.
• Court: U.S. Court of Appeals — Sixth Circuit

228 F.2d 94 (1955)

Gustav H. BOBERTZ, Jr., Appellant, v. GENERAL MOTORS CORPORATION, Appellee.

No. 12379.

United States Court of Appeals Sixth Circuit.

December 14, 1955.

Gregory S. Dolgorukov, Detroit, Mich., for appellant.

Arthur Raisch, Detroit, Mich., for appellee.

Before MARTIN, MILLER and STEWART, Circuit Judges.

MARTIN, Circuit Judge.

The contest here is between Gustav H. Bobertz, Jr., owner of United States Letters Patent No. 1,911,600, covering a transparent automobile hood, and the General Motors Corporation as an alleged infringer of the patent. Plastics Unlimited, Inc., a sales corporation and not a manufacturer, was originally a party to the suit. The suit against that corporation was dismissed on motion, for the reason that the instant litigation was not begun prior to the dissolution of the corporation under the Michigan General Corporation Act, section 450.75. The complaint of Bobertz was served only about two weeks before the expiration of the patent on May 30, 1950. The patent had been issued on May 30, 1933.

Upon denial by General Motors Corporation that the patent was either valid or infringed, issue was joined and a pretrial hearing had. Extensive discovery proceedings ensued. Pursuant to Civil Procedure Rule 56, 28 U.S.C.A., General Motors filed a motion for summary judgment insisting that no genuine issue of material fact was presented; that the patent claims were invalid; and, moreover, that they were not infringed. The prior art was cited and documents filed establishing anticipation of the claimed invention. Several depositions and affidavits were also filed, elaborate briefs were submitted to the court, and oral arguments were presented by both sides. After due deliberation, the district court, in an opinion-order embracing a complete discussion of both the mechanical facts and the applicable law, 126 F.Supp. 780, granted defendants' motion for summary judgment on both grounds and dismissed the suit.

In his deposition, Bobertz asserted that the concept of making a transparent automobile hood came to him through observing a parked Plymouth car which attracted a number of observers because of the fact that its hood was provided with transparent windows for the purpose of making visible the engine underneath the hood. He noticed, however, that people who tried to see the engine through the small openings in the hood gave up in disgust because they could not actually see the engine. His thought was that it would be much simpler if the whole hood were made of transparent celluloid. His first practical application of this thought was to make a transparent hood for a Chevrolet automobile which duplicated in celluloid the 1932 Chevrolet hood, made of sheet steel, consisting of two substantially horizontal members hinged together at their edges along the longitudinal center of the hood. Two vertical side members were hinged to the abutting edges of the horizontal members; and the hood was secured to the chassis by conventional hood fasteners in use by Chevrolet at that time.

The patent in suit displayed a transparent hood in configuration substantially a duplicate of the sheet-metal hood placed on the Chevrolet automobile manufactured by the General Motors Corporation in 1932. Except that the hood is transparent, the claims of the patent in suit substantially describe a 1932 Chevrolet hood. As stated by the United States District Court, the five combination claims of the patent in suit are directed to an automobile hood made of transparent material, consisting of two vertical members, and either one or two horizontal members with a plurality of longitudinally extending transparent reinforcing means connecting the adjoining edges of such members to form a unitary structure therefrom, and securing means adapted to coact with a hold-down latch on the vehicle body to secure removably the hood to the body of the vehicle. The specifications state that the object of the patent is to provide an automobile hood of transparent material permitting at all times full visibility of the engine of a motor vehicle. The specifications declare the novelty of the invention to reside in the transparency of the top and sides of the automobile hood, affording full visibility of the engine. The transparent automobile hood was not intended to be used regularly, but only temporarily to replace the ordinary hood.

The District Court quoted Claim One of the patent as representative. Claim Four is also typical, and reads as follows: "An automobile hood including two transparent vertical members, two substantially horizontal transparent members, a plurality of longitudinally extending transparent reinforcing means connecting the adjoining edges of said members to form a unitary structure therefrom, and means secured to said hood and adapted to permit removable attachment of said hood to a motor vehicle body."

The District Court asserted that it is clear from consideration of the file-wrapper history of the prosecution of the patent in suit and from the language of the patent claims that the claims finally granted were expressly limited to an automobile hood of several pieces made of any transparent material and joined together by a transparent reinforcing means to form a unitary structure.

All seven claims of the original application filed in the Patent Office were rejected; and a total of nine new claims were filed during subsequent proceedings in the Patent Office whereof five were finally allowed. The rejected claims embraced such language as "transparent means for enclosing the portion of the vehicle between the radiator and the cowl"; "transparent automobile hood formed of transparent material"; and the words "of sheet celluloid."

The District Court found that the rejected claims presented nothing patentable over Rumpler (German) Patent No. 379,379 (1923) which, in Claims One and Four, describe a motor vehicle hood constructed from transparent celluloid. The comment was made that no invention is claimed for the latching means, and that the substitution of a temporary hood in place of the conventional hood was taught in 1921 by Martin in Letters Patent No. 1,383,959.

As pointed out by the Patent Office, the combination of the cowl, radiator shell, hood and latching means therefor is old as disclosed in Martin, no invention being involved in substituting sheet celluloid for the wire-mesh covering employed in Martin, in the light of the transparent hood shown in Rumpler. The court stated that the moulded celluloid used in Rumpler is equivalent to sheet celluloid and the broad use of transparent reinforcing means is not a patentable distinction for the reason that an ordinarily prudent mechanic would naturally locate the reinforcing means to conform to the design of the body of the vehicle. The reinforcing rods in the Martin patent are adapted to conform to the design of the vehicle body, as stated by the Patent Office, and afford no basis for patentable invention.

The final allowance of the patent claims ensued only when the claims were presented in specific language suggested by the examiner. The claims for a one-piece transparent hood were rejected by the Patent Office on the prior art of Rumpler, who disclosed in his patent an automobile hood of transparent celluloid. The claims of the patent in suit do not disclose the nature of the material of which the hood is to be made. The claims of the patent seem specific and limited to a transparent hood consisting of separate vertical and horizontal parts, joined together by reinforcing means, in order to form a unitary structure.

The inventors, while pursuing the application in the Patent Office, cancelled claims sufficiently broad in scope to cover a one-piece hood made of a single sheet of transparent plastic and adopted claims specific as to a multiple-piece hood with reinforcing ribs connecting the individual members.

In Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 220, 221, 312 U.S. 654, 61 S.Ct. 235, 239, 85 L.Ed. 132, the Supreme Court said: "It is a rule of patent construction consistently observed that a claim in a patent as allowed must be read and interpreted with reference to claims that have been cancelled or rejected, and the claims allowed cannot by construction be read to cover what was thus eliminated from the patent. Citing cases. The patentee may not, by resort to the doctrine of equivalents, give to an allowed claim a scope which it might have had without the amendments, the cancellation of which amounts to a disclaimer. Citing cases. The injurious consequences to the public and to inventors and patent applicants if patentees were thus permitted to revise cancelled or rejected claims and restore them to their patents are manifest. See Leggett v. Avery, 101 U.S. 256, 259, 25 L.Ed. 865. True, the rule is most frequently invoked when the original and cancelled claim is broader than that allowed, but the rule and the reason for it are the same if the cancelled or rejected claim be narrower. Citing cases." Cf. Smith v. Magic City Kennel Club, Incorporated, 282 U.S. 784, 790, 51 S.Ct. 291, 75 L.Ed. 707.

The opinion of this court in A. O. Smith Corporation v. Lincoln Electric Co., 6 Cir., 82 F.2d 226, 229, 230, declared that the inventor had created an express limitation pertaining to the inventive step, and would not be permitted to depart from the plain meaning of the language he adopted, or to claim for such language a broad and general construction. It was asserted that the file wrapper confirmed the conclusion that the inventor had deliberately limited his claim in a specified manner and that the claim, read in the light of the specifications, measures the invention. See also Falkenberg v. Golding, 7 Cir., 195 F.2d 482, 485; Midland Steel Products Co. v. Clark Equipment Co., 6 Cir., 174 F.2d 541, 545; D'Arcy Spring Co. v. Marshall Ventilated Mattress Co., 6 Cir., 259 F. 236, 240, 241; R. M. Hollingshead Co. v. Bassick...