Crucible Steel Co. of America v. Heller Bros. Co.

• Decision Date: 30 June 1923
• Parties: CRUCIBLE STEEL CO. OF AMERICA v. HELLER BROS. CO.
• Court: U.S. District Court — District of New Jersey

291 F. 175

CRUCIBLE STEEL CO. OF AMERICA v. HELLER BROS. CO.

United States District Court, D. New Jersey.

June 30, 1923

Marshall A. Christy and Bayard H. Christy, both of Pittsburgh, Pa for plaintiff.

Warren B. Hutchinson, of New York City, for defendant.

BODINE District Judge.

The patent in suit is United States letters patent No. 993,631 issued May 30, 1911, to Messrs. Arthur Young and Thomas Rowlands, of Sheffield, England. The patent describes the invention in the following language:

'This invention relates to the manufacture of hollow metal rods, bars, and the like, and particularly to those rods or bars known generally as 'hollow drill steel.' In the manufacture of hollow steel bars or rods the following method has been proposed: A steel bar, billet, or ingot is formed with a central hole, which is filled with appropriate refractory material such as siloxicon, silica, alumina, or other suitable substance, to serve as a core and the ends are plugged. * * * The bar, billet, or ingot, together with its core, is then heated and submitted to repeated rolling operations until a rod or bar of the required dimensions is obtained, after which the core is removed. This removal of the core has hitherto been effected by a drilling operation. This operation gives rise to considerable trouble, particularly when the diameter of the core is small and consequently difficult to remove by drilling, and partly because the core in the course of the rolling operation generally assumes a more or less oval or irregular cross-section, so that parts of it remain in the hole after the drilling. Furthermore, the drilling entails a considerable amount of time, and consequently adds to the expense of the manufacture. Moreover, the material of the core is hard, and quickly dulls and wears a drill.

'The chief object of our invention is to overcome the above-stated difficulties. According to our invention the removal of the core after the rolling operation is effected by means of a fluid which, in the form of a fine jet at a high pressure, is caused to progressively follow and impinge upon the core, whereby the latter is continuously worn down or disintegrated and blown out or discharged from the hollow bar. In this manner the hole in the bar, even if it has become of oval or irregular section in the course of the rolling operations, will be cleared of the core.'

The claims are as follows:

'1. The method of removing a refractory core from a hollow rod or bar which consists in discharging a jet of a gaseous fluid under pressure directly against the end of said core, and progressing said jet through said rod or bar as rapidly as said core is disintegrated by the action of said jet.

'2. The method of removing a refractory core from a hollow rod or bar which consists in discharging a jet of a gaseous fluid under pressure directly against the end of said core, progressing said jet through said rod or bar as rapidly as said core is disintegrated by the action of said jet, and conveying away the particles of said core as they are delivered from said bar by the action of said jet.'

Hollow steel drills play an important part in quarrying stone and in drilling holes for blasting in road building and construction work of all kinds. Prior to the invention, hollow steel drills were made with great difficulty and expense, because of the necessity of drilling out the metal or sand core. The plaintiff's patent introduced a new method into the art-- an inexpensive and effective method.

After the steel billet, with the core filled with sand packing, has been rolled to the proper diameter, the bar is placed against a machine embodying the method disclosed in the patent. The machine has a tube connecting with a compressed air tank. The tube is placed against the bar containing the sand core. As the sand is broken down by the air blast, it is carried off into a reservoir by suction, while the tube is advanced by pressure. The plaintiff's invention has enabled the production of long bars of hollow drill steel at a minimum of expense. Bars 18 feet long are cleaned out in about 30 seconds.

The defendant uses a less degree of air pressure and rotates the tube carrying the air into the bar containing the sand core. Its operation is slower, but its requirements for air pressure are less. As was said by the Circuit Court of Appeals for this circuit in the case of Ford Morocco Co. v. Tannage Patent Co., 84 F. 644, 646, 28 C.C.A. 503, 504:

'The defendant 'does not use the process any less because he uses something in addition to the process.''

If what the defendant does is a new and useful improvement, it might secure a patent. Tilghman v. Proctor, 102 U.S. 707, 731, 26 L.Ed. 279.

The principal defense is that the claims of the patent in suit are invalid for the reason that the patentees never, at any time, made the oath required by the statute. The Patent Office file wrapper shows the original application was for a machine. Finally the apparatus claims were canceled and the two present method claims were substituted. In the original application, the first claim was as follows:

'In the manufacture of hollow drill steel, means for removing the filling of core by high pressure fluid adapted to impinge upon the said core.'

Obviously this claim is as much a description of what was claimed in the invention as the claims allowed. It covered, not only 'a gaseous fluid under pressure,' but high pressure fluid of any kind.

The case of Steward v. American Lava Co., 215 U.S. 161, 30 Sup.Ct. 46, 54 L.Ed. 139, is cited by the defendant. An examination of the opinion in that case is a refutation of the suggestion that it is here applicable. The claim allowed in that case was not predicated upon the theory upon which the inventor was working. The court said (215 U.S.at page 166, 30 Sup.Ct. 49, 54 L.Ed. 139):

'He * * * testified that it (the claim) was his lawyer's contrivance. * * * But the uncertainty indicated even by the language of the patent is important in determining whether it describes a new invention in terms sufficiently precise to be upheld.'

The court, further commenting upon the claims stated (215 U.S. 168, 30 Sup.Ct. 50, 54 L.Ed. 139):

'Vacillation in theory led to uncertainty of phrase. * * * He made no claim for a process and disclosed no invention of a device. This being so, the amendment required an oath that (patentee) might have...