Crane Packing Company v. Spitfire Tool & Machine Co.

• Decision Date: 13 June 1960
• Docket Number: No. 12809.,12809.
• Citation: 276 F.2d 271
• Parties: CRANE PACKING COMPANY, a corporation, Beth Bernice Green, individually and as Executrix of Earl J. Bullard, Deceased, and Ronald Eugene Green and Janis Leanore Green, Minors, by Beth Bernice Green, their Next Friend, Plaintiffs-Appellants, v. SPITFIRE TOOL & MACHINE CO., Inc., a corporation, Defendant-Appellee.
• Court: U.S. Court of Appeals — Seventh Circuit

276 F.2d 271 (1960)

CRANE PACKING COMPANY, a corporation, Beth Bernice Green, individually and as Executrix of Earl J. Bullard, Deceased, and Ronald Eugene Green and Janis Leanore Green, Minors, by Beth Bernice Green, their Next Friend, Plaintiffs-Appellants, v. SPITFIRE TOOL & MACHINE CO., Inc., a corporation, Defendant-Appellee.

No. 12809.

United States Court of Appeals Seventh Circuit.

April 1, 1960.

Certiorari Denied June 13, 1960.

Warren C. Horton, John R. Nicholson, Chicago, Ill., Horton, Davis & McCaleb, Charles F. Voytech, Chicago, Ill., Nicholson, Nisen & Elliott, Charles M. Nisen, Chicago, Ill., for appellants.

Clarence E. Threedy, Chicago, Ill., Edward C. Threedy, Chicago, Ill., for appellee.

Before KNOCH and CASTLE, Circuit Judges, and PLATT, District Judge.

Certiorari Denied June 13, 1960. See 80 S.Ct. 1259.

CASTLE, Circuit Judge.

Crane Packing Company, a corporation, licensee under Patent Re. 23,937, and Beth Bernice Green (individually, as executrix of the estate of Earl J. Bullard, deceased, and as next friend of Ronald Eugene Green and Janis Leanore Green, minors), plaintiffs-appellants, brought suit against Spitfire Tool & Machine Co., Inc., defendant-appellee, for infringement of claims 1 to 4, inclusive, and 9 to 14, inclusive, of the patent.

Patent Re. 23,937 is a reissue of Patent No. 2,565,590 issued August 28, 1951 to Earl J. Bullard on a grinding and lapping device. It was issued February 8, 1955 on an application filed June 25, 1953.

Defendant's answer included assertions of invalidity of the patent and denial of infringement. The District Court did not reach the issue of infringement but found each of the patent claims in issue invalid and entered judgment for defendant. Plaintiffs appealed contending the court erred in its interpretation of the statutes relating to reissue patents, its interpretation of prior art, its interpretation of the law of aggregation, and in its failure to apply the correct criteria of invention.

A lapping machine is a particular type of fine grinding machine designed and intended to impart to a work piece a finely finished surface. It comprises one or more lapping surfaces, each of which is known as a lap plate, generally made of cast-iron, upon which an abrasive compound is applied. The work piece or article to be lapped is then moved over the surface of the lap plate until the desired surface is obtained on the work piece, or as nearly to the desired surface as the capabilities of the machine permit.

The lapping of an article causes wear and abrasion not only on the surface of the article but also on the surface of the lap plate resulting in its becoming grooved or roughened, and losing its "true" or desired surface. When this occurs the lap surface must be "dressed" or restored to its desired or "true" condition.

The patent in suit discloses maintenance of a true flat surface on the lap plate, or changing it from a convex to a flat, or to a concave surface, and vice-versa. A wear ring (or a plurality thereof) is placed on the surface of an annular lap plate having an inner edge around a central cavity, and an outer edge. The wear ring is adapted to hold work pieces which may be placed within the ring in a work holder. A felt pad and a pressure plate are placed over the articles to be lapped. The ring is maintained upon the lap surface by a pivot means or bearings, adjustable so that the ring may be shifted radially on the surface of the lap plate. As the lap plate is rotated, the frictional relationship between it and the ring causes the latter to rotate but not to travel with the lap since the ring is restrained from such travel by the adjustable pivot or bearings. The ring, therefore, rotates on the lap surface and by friction rotates the work holder and work within the ring. In its rotation on the lap and simultaneous rotation of the lap itself, the ring wears away the surface of the lap and maintains the desired true surface, serving to true the lap and hold the work at the same time. By moving the ring radially so that it overhangs the outer edge or the inner edge of the lap the pressure on portions of the lap surface will be made to vary. As a result a flat, a convex, or a concave surface may be produced or maintained on the lap plate, as desired. And grooves or roughness formed on the plate by pressure of articles against the abrasive material are removed as they form.

Claims 1 to 4, inclusive, and 9 and 10 of Patent Re. 23,937 are all claims of Bullard's 2,565,590 and remain unchanged in the reissue patent. Substantially, they cover an apparatus for forming a true surface of predetermined contour upon an article by grinding or lapping. Claims 11 to 14, inclusive, are added by the reissue. Claims 11 and 12 cover the method of preserving the flatness of a plane surface, or of changing the contour of the surface, of an annular lap to cause it to conform to a standard surface whether such surface be flat, convex or concave. Claims 13 and 14 cover an apparatus for forming a plane surface on an article.

The District Court in its findings of fact and conclusions of law found and concluded, inter alia, that claims 1 to 4, inclusive, and 9 and 10 are invalid for lack of invention in view of prior art, and that claims 11 to 14, inclusive, are invalid because the device of these reissue claims was on sale and in use more than one year prior to June 25, 1953, the date of the application for the reissue patent.

The feature of claims 1 to 4, inclusive, and 9 and 10, relied upon by plaintiffs to distinguish them from prior art and to constitute invention is a ring, resting loosely on and rotated by friction with the lap surface, which in addition to serving as a means to hold articles to be lapped may be utilized to loosely encircle, and rotate by friction, a separate work holder causing the articles to be rotated within the ring. The ring being free to rotate on the lap with a total pressure at least equal to that exerted by the articles lapped and thus by wearing the lap maintains a true lap surface during the lapping operation. The ring may be shifted radially on the lap to grind the lap to either a concave or convex form.

The automatic and continuous maintenance of a true surface serves to eliminate shutdown of the machine for a dressing operation with consequent loss of production, an obvious advantage in mass production industries.

The defendant relies on prior art from which the learned trial judge, on the basis of documentary evidence, exhibits, and the testimony of witnesses, found that it was clear that one having ordinary skill in the art would find the claimed invention obvious. This prior art included Desenberg patent 2,352,146 (1944); Hoke patent 1,536,714 (1925); Morton patent...