Butler v. Shaw

• Decision Date: 20 August 1884
• Citation: Butler v. Shaw, 21 F. 321 (D. Mass. 1884)
• Parties: BUTLER and others v. SHAW.
• Court: U.S. District Court — District of Massachusetts

21 F. 321

BUTLER and others v. SHAW.

United States Circuit Court, D. Massachusetts.

August 20, 1884

W. E Simonds, for complainants.

J. J Coombs, for defendant.

Before GRAY and NELSON, JJ.

GRAY Justice.

This is a bill in equity under section 4915 of the Revised Statutes filed in this court on August 16, 1882, by Francis G. Butler a citizen of Connecticut, and the Vermont Farm Machine Company, a Vermont corporation, as his assignee, against Betsey H. Shaw, a citizen of Massachusetts, assignee of Philander Shaw, to obtain an adjudication that Butler is entitled to a patent for improvements in milk-cans, which has been refused him by the commissioner of patents, upon an interference declared between him and the defendant.

The case cannot be well understood without an abstract of the proceedings in the patent-office, copies of which have been submitted to us, and which were in substance as follows:

On September 10, 1878, a patent was issued to Philander Shaw, on an application filed by him on February 4, 1878. The apparatus described in the specification of that patent was as follows:

'A milk can, a, is closed at the top by a hollow float, and has at the upper end of the side a transparent pane of glass, through which the formation of the cream and its depth can readily be ascertained. The milk-can, after being filled with milk, is placed in a water-jacket, i, surrounded on its sides and bottom with a hollow closed receptacle, l, into which steam and cold water are alternately introduced; the steam, at the side of the receptacle, by a pipe leading from an ordinary heater, m, so as to raise the temperature of the milk to about 130 deg. Fahrenheit, at which temperature cream is most rapidly separated; and the cold water at the bottom of the receptacle, by the force of gravity, through a delivery pipe from an ordinary water-cooler, p, so as to cool the milk gradually from below, prevent downward currents in the milk, and thus form cream more quickly and in greater proportion than in ordinary open cans. Within the can is a tube, d, rising to about two-thirds of the height of the can, and the lower end of which projects through the side of the can near the bottom, and is there provided with a suitable stop-cock. Closely fitted into the upper end of this tube is another tube, f, open at both ends, which can be adjusted up and down, so as to draw off the cream at the level of its junction with the milk, and which has attached to its upper end a graduated scale, g, and an indicator, h, opposite the glass pane, so as to show the depth of the cream, and how much is drawn off.'

The claims in that specification were as follows:

'(1) The herein described apparatus for obtaining cream from milk, consisting of the milk-can, a, the water-jacket, i, the closed receptacle, l, the heater, m, and the cooler, p, as set forth.

'(2) The herein described milk-can, a, for raising cream, in combination with the telescopic tubes, d, f, the graduated scale, g, and the indicator, h, as and for the purpose set forth.'

On November 20, 1878, Butler filed an application for a patent, in which, as afterwards amended to meet objections of the examiners, he described a milk vessel, with a pane of glass near the top of sufficient length, vertically, to show the height of the cream raised upon the milk; and with an outlet at the bottom opening into a discharging tube or faucet, turning on a center pin or arbor, and adjustable so as to bring its discharging mouth at a height above the bottom of the can, equal to the depth of the layer of cream, and automatically discharge all the milk, leaving the cream in the can; and made two claims, the second of which is not now insisted on, and requires no further mention, and the first of which was as follows: '(1) A milk vessel, having an adjustable faucet that can be set to automatically discharge any predetermined quantity of milk, to leave in the vessel a certain quantity of cream, and provided with a glass pane to ascertain the degree or place of adjustment of the faucet.'

On April 12, 1879, the examiner rejected this first claim in Butler's application, on the ground that its subject-matter had been anticipated by the patent already granted to Shaw. Butler thereupon asked that an interference might be declared between his application and that patent. An interference was declared between Butler's first claim and Shaw's patent upon this claim or issue:

'A can for milk and cream separation, having an adjustable automatic discharge faucet, and a transparent pane by which the place or degree of faucet adjustment may be determined.'

In the interference proceedings, Butler stated that in November, 1876, he conceived and practically tested the invention of such a can as described in this issue. Shaw stated that in March, 1876, he embodied his invention in a model; and on April 5, 1880, (Shaw having died in September, 1879,) Mrs. Shaw, at the suggestion of the examiner, filed an application for a reissue, repeating the description and the claims of Shaw's original patent, and inserting a new claim in the words of this issue.

The examiner of interferences decided that Shaw was the prior inventor. On appeal by Butler from that decision to the board of examiners in chief, one of them was in favor of affirming it. But the majority of the board held that the reissue application had materially enlarged the scope of Shaw's claim, and had brought in objectionable new matter to make a conflict, when none existed in fact, between the two devices; that Shaw's other claims covered his real invention and all that he was entitled to; that Butler's first claim was limited to the device which he had invented, and in no way trenched upon the invention of Shaw; that Shaw's device was for separating cream from milk, by drawing off the cream from the top of the milk, leaving the milk in the can, and could not be used to draw off the milk and leave the cream; and Butler's device was for separating milk from cream, by drawing off the milk at the bottom, leaving the cream in the can, and could not be used to draw off the cream and leave the milk; that the two devices were mechanically different, having no feature in common, except the glass panes and the indicators, which were well known, and not patentable by either; that an interference had been declared, and the parties had been contending, on a matter which one had not claimed and which neither was entitled to; and therefore recommended that the interference be dissolved and the case be remanded to the primary examiner, with instructions to reject Shaw's new claim and allow the parties to take patents on their other claims, unless some good reason could be shown for rejection on further examination.

From the decision of the board of examiners Mrs. Shaw appealed to the commissioner of patents in person, who, on September 2, 1881, made the following decision:

'The claim at issue between the parties to this controversy reads as follows: 'A can for milk and cream separation, having an adjustable automatic discharge faucet, and a transparent pane by which the place (or degree) of faucet adjustment may be determined.' Priority of invention is the only question to be determined. While it is true that the devices of the respective parties are different, in principle they are the same, and both are within the terms of the issue. The evidence shows that Shaw completed a model of his invention in March, 1876. Whether the date written upon the model is the correct one or not, is immaterial in this case, as it clearly appears that sometime during that month the model was completed. Butler claims to have conceived his invention in November, 1876. He reduced it to practice in January or February following. I find nothing in the...