Carson v. American Smelting & Refining Co.

• Decision Date: 09 April 1925
• Docket Number: No. 4304.,4304.
• Parties: CARSON v. AMERICAN SMELTING & REFINING CO.
• Court: U.S. Court of Appeals — Ninth Circuit

4 F.2d 463 (1925)

CARSON v. AMERICAN SMELTING & REFINING CO.

No. 4304.

Circuit Court of Appeals, Ninth Circuit.

February 16, 1925.

Rehearing Denied April 9, 1925.

John H. Miller, Chas. S. Wheeler, Jr., and A. W. Boyken, all of San Francisco, Cal., for appellant.

John A. Shackleford, of Tacoma, Wash., Frederick P. Fish, of Boston, Mass., Albert M. Austin, of New York City, and J. L. Stackpole, of Boston, Mass., for appellee.

Before GILBERT, HUNT, and RUDKIN, Circuit Judges.

GILBERT, Circuit Judge.

The appellant brought suit for the infringement of the claims of two patents. The suit was dismissed on the ground that the claims were anticipated by the British patent to Siemens, No. 2,413, issued in 1866. The appellant's claims relate both to open-hearth and reverberatory furnaces used in smelting copper ores. His first patent, No. 1,149,495, issued August 10, 1915, is entitled "Metallurgical Furnace." The second patent, No. 1,302,307, entitled "Construction of Roof of Open-Hearth and Reverberatory Furnaces," was issued April 29, 1919, on a divisional application. The application for the first patent was filed January 15, 1907. It contained 12 claims. The appellant acted as his own attorney and drafted his claims and specifications. Owing to that fact and his lack of skill and knowledge of Patent Office procedure, his application met with many objections and much delay. The first objection was that the claims covered two distinct and independent inventions. It was not until August 10, 1915, that the first patent was allowed and issued, with a single claim.

Two months before it issued, the appellant filed the divisional application. It contained five claims, and, as the appellant again acted as his own attorney, it was not until four years later that the patent was granted. The principal ground of objection to that application was that the claims were anticipated by the British patent to Siemens. Upon a second appeal to the Board of Examiners, however, it was held that, while the application was a proper divisional application, the claims were not so worded as to avoid anticipation by Siemens. Said the Board of Examiners: "We think appellant has made an invention that is not disclosed in or suggested by Siemens, although the appealed claim does not define it. That invention may best be expressed in terms of process or method, although it may also be defined in terms of apparatus. Considering it to be the duty of this office to render all reasonable and proper assistance possible to applicants for patents, we are suggesting herein two claims that we think state the invention appellant has made and has been attempting to patent, and we recommend their allowance, if presented in lieu of the appealed claim." The claims so recommended were adopted by the appellant, and they are claims 2 and 3 of the patent as it was finally issued.

The claim of the first patent is as follows:

"In a metallurgical furnace having receptacles arranged above the roof thereof, passages from said receptacles leading to said furnace arranged in such a manner that the material in said receptacles passes out into said furnace by gravity and forms the lining thereof."

In the second patent the claims here involved are as follows:

"2. The method of protecting the walls of an open hearth or reverberatory furnace which consists in feeding the ores or fettling materials into the furnace chamber near the upper part thereof, and in causing the same to form a sloping embankment resting upon the floor of the furnace chamber and along the walls within the chamber between the bath and walls.

"3. In an open hearth or reverberatory furnace, a floor, walls extending upwardly from the floor, and feeding ports leading into the upper part of the furnace chamber and being so located that the ores or fettling materials entering therethrough may have unrestricted vertical movement downwardly to the said floor near the walls and may form sloping embankments against the walls to protect the latter from the heat and corrosive action of the metal bath."

Subsequently the appellant filed a disclaimer eliminating from the claims the words "or fettling materials."

The reverberatory furnaces in use prior to the appellant's invention were rectangular in shape, usually 120 feet long, 20 feet wide, and covered by an arched roof about 9 feet above the floor. The walls were perpendicular. The ore was introduced through a series of openings extending along the center of the line of the roof. The heat was introduced at one end. It was necessary to bank clay or similar material against the side walls in order to prevent disintegration caused by the excessive heat. The operation of leveling the piles of ore and the operation of banking the clay against the sides of the furnace were performed through apertures in the sides of the furnace. Both operations entailed loss of time and loss of heat. The appellant's invention consisted in supplying the ores through openings in the roof at the sides of the furnace and in utilizing the ore itself as it fell and was piled against the sides of the furnace as a protection against injury to the sidewalls in the smelting operation. It marked a distinct forward step in the construction and operation of reverberatory furnaces, and of its utility there can be no question.

Upon a careful consideration of the evidence, we are of the opinion that the Board of Examiners at the Patent Office correctly held that the appellant's invention is not anticipated by the Siemens patent. The Siemens patent, granted in 1866, was for a blast furnace designed for the proposed purpose of producing steel directly from iron ore, although Siemens added that it might be "used with advantage for the reduction of copper and other metallic ores." Siemens declared his invention to consist in exposing a mass of ore, "which may or may not be mixed with reducing agents or fluxes, to the surface action of intense heat produced by the combustion of highly heated air and gaseous fuel." The anticipatory feature of the Siemens furnace is claimed to be the sloping side walls of the reducing chamber, into which ore was to be supplied by gravity, so as to maintain the mass of ore upon the sides of the chamber in proportion as it is converted and fused, "so as to protect the walls or inclined surfaces thereof from the heat of the furnace and the corrosive action of the slags or cinders of the metallic bath by the interposition of the ore itself."

There was nothing new in constructing the bottom of the furnace with inclined sides. In so doing Siemens adopted the well-known and usual form of blast furnaces. Certain expressions in the Siemens patent are relied upon as indicating the anticipation of the appellant's patent. Thus he refers to the fact that the mass of ore is maintained upon the inclined planes by its own gravity, and that the principal advantage of his furnace is that the sides are protected against fusion by the presence of the ore or other substance to be melted, "particularly at the surface line of the liquid cinders where brickwork is rapidly destroyed," and in the specifications he says that his invention "consists in exposing a mass of ore to the surface action of intense heat, * * * the mass of ore being arranged in such a manner, by preference upon inclined plane and upon inclined surfaces, that the fused metal produced at the surface readily passes away therefrom, so as to leave such surface always exposed to the action of the heat."

But the oral testimony in the case, including the evidence furnished by two of the appellee's expert witnesses, fully supports, in our opinion, the finding of the Board of Examiners when they said: "It seems quite probable, therefore, that the layers of ore on the inclined walls of the Siemens furnace are relatively thin, as compared with the sloping walls of the appellant's furnace, and that the ores would not press on the surface of the heavy molten bath with a sufficient weight to sink through to the floor. If such be the case, the ores will not protect the walls just where they most need protection, and appellant's invention will not be realized." The Board further said: "We do not feel warranted in giving full credit to Siemens' statement in his fourth claim that the walls are protected from the high and corrosive heat of the slags or cinders of the metallic bath by the interposition of the ore itself. However, the slags or cinders are probably floating on the bath, so that, even if the ore on the sloping walls should serve to protect the walls from these slags or cinders, it would not protect the walls from the bath itself."

In brief, the Board were of the opinion that, if the angle of the inclined side walls was sufficient, as Siemens declared it to be, to maintain thereupon the ore by its own gravity, there was lacking the essential feature of the appellant's invention, in which the ores rest upon the floor of the furnace and against the side walls thereof, and by their own weight, unimpeded by an inclined surface, sink as rapidly as is permitted by the fusion of the mass upon the floor of the furnace. The Siemens patent was a failure, and it never went into use, and while it may be conceded that Siemens was the first to conceive the idea of utilizing the ores to protect the side walls of a furnace, the fact remains that, if his invention was ever at any time adopted in a reverberatory furnace, it must have resulted in failure, for we find for 40 years thereafter, and up to the time of the appellant's invention, that there was universal use in reverberatory furnaces of perpendicular side walls, the banking of materials against them for protection thereof, and the supply of ores through openings along or near the center line of the roof, and never at the sides.

A foreign patent is to be measured as anticipatory, not by what might have been made out of it, but by what is clearly and definitely expressed in it....