O'Brien-Worthen Co. v. Stempel

• Decision Date: 11 December 1913
• Docket Number: 3,908.
• Citation: 209 F. 847
• Parties: O'BRIEN-WORTHEN CO. v. STEMPEL.
• Court: U.S. Court of Appeals — Eighth Circuit

209 F. 847

O'BRIEN-WORTHEN CO. v. STEMPEL.

No. 3,908.

United States Court of Appeals, Eighth Circuit.

December 11, 1913

Paul Bakewell, of St. Louis, Mo., for appellant.

J. D Rippey, of St. Louis, Mo. (L. C. Kingsland, of St. Louis Mo., and Omar E. Herminghausen, of Ft. Madison, Iowa, on the brief), for appellee.

Before SANBORN and CARLAND, Circuit Judges, and WILLARD, District judge.

SANBORN Circuit Judge.

On December 10, 1901, letters patent No. 688,446 were issued to the appellee, Herman F. Stempel, Jr., for improvements in gum plasters. This is an appeal from an interlocutory decree against the appellant for an injunction against infringement and for an accounting. As usual, the finding of the validity of the patent and the finding of its infringement are challenged.

The object of the invention, its character, and extent, are portrayed by the following excerpts from the specification:

'The object of the present invention is to provide a plaster which will securely hold itself in the position in which it is applied whether the gum be moist or not. In fact, if moist the plaster will have a greater retaining or adhesive power.

'With this object in view, the invention consists in a plaster for applying medicaments to the gum consisting of an elastic cup having a convex inner surface, to which inner surface is securely fixed an absorbent lining for holding and retaining the medicament, the device being of a size easily covered by the lips of the wearer. * * * In the drawings A denotes a cup, made preferably of rubber, and B denotes a piece of absorbent material secured within the cup. The medicament is placed in the cup and the cup forced against that part of the gum to which it is desired to apply it and will be securely retained in position by the suction due to the forcing of the air from out of the cup in the act of pressing it against the gum. The medicament may be applied to the cup in other ways than by providing the cup with a piece of absorbent material. For instance, a piece of raw cotton made up into a little sphere may be supplied with the medicine, packed into the cup, and the cup then applied to the gum.'

The claim is:

'A plaster for applying medicaments to the gum consisting of an elastic cup having a convex inner surface, to which inner surface is securely fixed an absorbent lining for holding and retaining the medicament, the device being of a size easily covered by the lips of the wearer, substantially as described.'

The alleged infringing device is such an elastic rubber cup as is described in the foregoing specification, in which a medicated absorbent lining, made substantially as follows, is secured to the inner surface of the cup by adhesion. Dextrine is the adhesive substance used upon postage stamps and envelopes. Powdered dextrine and water are mixed to the consistency of a light syrupy paste. To this mixture is added an equal quantity of the medicament oleoresin of capsicum in a liquid form, and about two drops of the paste thus formed are placed in each cup and permitted to dry so that they make a solid lining fastened by adhesion to the inner surface of the cup. Cups made and lined in this way have been manufactured and sold by the appellee under this patent to the value of $46,000; in other words, this cup has gone into general commercial use. For many years the appellant bought these cups of the appellee to the number of 10,000 boxes, but in the later years it has declined to buy and has manufactured in the same way cups of the same character and sold them to its customers.

The specification and claim of this patent demonstrate that the primary object of the invention was the securing of the cup and its lining to the gum, and this was accomplished by the partial vacuum made by the act of pressing it upon the gum. That method of securing a cup to parts of the human body, however, was old and had been often used and described so that the controversy about infringement in this suit rages over the lining of the cup and its fastening within it. The specification plainly indicates that the inventor's preferred method of making and using his cup was to secure within it a piece of absorbent material, such as a piece of muslin, thereafter to saturate this material with the medicament and apply the cup thus medicated to the gum. But the specification does not confine his invention or the monopoly of his patent to that method, but expressly declares that the medicament may be applied to the cup 'in other ways than by providing the cup with a piece of absorbent material,' so that in the absence of limitation of the claim by the prior state of the art, or by a disclaimer or estoppel of the patentee, the cups of the defendant which are elastic and which have absorbent linings securely fixed to their inner surfaces would fall within the terms of the claim and the specification and would constitute infringements of the patent.

But counsel for the appellant insists that the prior state of the art and the acquiescence of the appellee in the rejection of certain claims in his original application by the examiner in the Patent Office so limit the effect of the claim finally allowed to him that the cups of the appellant fall without its legal scope and meaning. Let us turn to the prior state of the art, the file wrapper and its contents.

Letters patent No. 335,799, issued February 9, 1886, to Frank B. Darby, described a dental capsicum plaster consisting of a compound of powdered capsicum, ginger, flavoring spice, and a solution of rubber forming a paste which is spread upon a piece of muslin or cloth to the back of which a gum or rubber tissue or disk is applied. Here was a piece of absorbent material secured to the rubber holder, but the holder was not cup shaped, but flat, and when placed upon the gum it was held in its position solely by the pressure of the lip or cheek upon a cushion upon the back of the rubber disk and not by suction.

On July 22, 1890, letters patent No. 432,798, were issued to Charles S. Hirst, for a cup or receptacle to hold a poultice or other material. In his specification Hirst declared that his cup was preferably made of soft rubber or other pliable elastic or flexible material in the shape of a hemisphere, and that upon the application of the cup with the poultice or other remedial preparation to the affected part the material would be confined within the cup and the latter would retain its hold by suction and would exclude the air. Here was the elastic cup of the appellee and the medicament within it, but there was no absorbent lining to it.

Letters patent No. 624,545, issued May 6, 1899, to Claude A.O. Rosell, disclosed an elastic cup made preferably of pure Para rubber for the primary purpose of increasing the flow of blood to the scalp and the growth of hair thereon by means of the suction caused by the partial vacuum produced by compressing the cup upon the treated part of the scalp. But Rosell declared in his specification that 'besides the special action upon the scalp, the elastic cupping device has numerous and important therapeutic applications in the development of tissue, where needed, in the treatment of atrophied conditions in the various parts of the body, etc.,' and that 'in general therapeutics the pneumatic cup or disk is of the greatest value. ' His specification also contained this paragraph:

'In some cases the cup may be made to fit air-tight by adhesion merely. Generally, however, it is necessary to prevent the air from entering at the edge or periphery. This result is readily attained by internally coating or covering the cup either throughout or merely at the periphery, as shown in Figure II, with a coating of suitable lute or ointment, such as cold cream, petroleum or beeswax, or preferably by a lute possessing desirable medicinal or nutrient properties, in which case the lute serves the double purpose of securing a tight joint and of conveying medicinal or nutrient agencies to the scalp.'

And his fifth claim was:

'A surgical cupping device in the form of an elastic cup or dish with a flaring rim adapted to...