H.J. Wheeler Salvage Co., Inc. v. Rinelli & Guardino, Inc.

• Decision Date: 22 January 1924
• Citation: 295 F. 717
• Parties: H. J. WHEELER SALVAGE CO., Inc., v. RINELLI & GUARDINO, Inc., et al.
• Court: U.S. District Court — Eastern District of New York

295 F. 717

H. J. WHEELER SALVAGE CO., Inc., v. RINELLI & GUARDINO, Inc., et al.

United States District Court, E.D. New York.

January 22, 1924

On Rehearing, February 19, 1924.

W. H Swenarton, of New York City, for plaintiff.

Munn Anderson & Munn, of New York City, for defendants.

CAMPBELL District Judge.

This is an action in equity, brought by the plaintiff to restrain the alleged infringement of a patent No. 1,405,173, issued by the United States Patent Office to Henry J. Wheeler, assignor to H. J. Wheeler Salvage Company, Inc., dated January 31, 1922 and for damages. The defendant answered, alleging invalidity and noninfringement. The plaintiff not only seeks to recover judgment against the corporation Rinelli & Guardino, Inc., but also against Stephen Guardino individually.

Stephen Guardino was an officer of the defendant, and it seems to me that what he did with reference to Nordstrom was done for and on behalf of the corporation, and the provisions of the contract show that the machine to be built was not to infringe any of the patents or copyrights of the plaintiff. I therefore am of the opinion that the complaint in this action should be dismissed as to the defendant Stephen Guardino individually, and the motion made for such dismissal on his behalf is therefore granted, with an exception to plaintiff.

On examination of the certified copy of the pending application of Guardino, I find the same not to be competent, material, or relevant as evidence in this case, and the motion to strike out the same is granted, with an exception to the plaintiff.

The plaintiff bases this action on claims 1 and 2 of the patent in suit, which read as follows:

'1. The herein described method of transferring viscous material directly from the interior of a maritime vessel to an overside receptacle, which consists in creating a high vacuum in said receptacle to thereby suck such material to an elevation and deliver it directly into said receptacle, and admitting air in small quantities into the suction end of the conveying pipe to emulsify said material.

'2. The apparatus described, comprising a series of exhaust tanks, an air pump, a system of unrestricted exhaust pipes connecting said tanks to said pump, means for driving said pump to maintain a high vacuum in said tanks, a system of suction pipes of less diameter than said exhaust pipes, connecting said tanks, a hose connected to said suction system and of the same diameter as said suction pipes, and a suction nozzle having a body of less diameter than said hose and a suction orifice of less area than such body.'

Claim 1 of the patent in suit is for a method. The defendant contends that this claim is invalid for want of invention, and does not describe a true method, as contemplated by the term 'art,' under section 4886 of the Revised Statutes (Comp. St. Sec. 9430), but is in fact nothing more than a description of the function or result flowing from the operation of the apparatus which is shown and described in the patent. The defendant also contends that the method claim is new matter, unsupported by a supplemental oath.

Claim 2 of the patent in suit is for an apparatus, and the defendant contends that it does not represent invention, but simply mechanical skill. The patent in suit states:

'It will be understood that it will serve successfully in transferring liquids, semiliquids, or other materials in any situations in which a lift is required above that attainable by the direct action of a suction pump.'

And in my opinion it thereby makes relevant, as affecting the validity of the patent, much of the prior art that could not otherwise have been received. An examination of the patents offered in evidence by the defendant fails to show any direct anticipation, and no evidence was offered to show prior use. The following patents were offered to show the prior state of the art:

United States patent No. 1,319,797, issued to Edwin M. Rogers, dated October 28, 1919, discloses an air lift apparatus of that class in which the column of water raised is aerated and thereby lightened, to facilitate the raising thereof.

United States patent No. 45, 153, issued to T. B. Gunning, dated November 22, 1864, discloses an improvement in oil ejectors for oil wells, and the manner of its operation is shown on page 1, as follows:

'From the above description it will be seen that when the air pump E is operated air will be forced down the tube D, and will pass out through the oblique holes b at its lower part in an upward direction in the lower part of the oil tube B, the oil being forced upward thereby in the tube B and passing into the enlarged part F thereof, from which it escapes through the flap or door G. The enlarged part F of the oil tube B admits of a space c, within it above the surface of the oil, and the tube H communicates with this space and conducts the gas which escapes from the oil to the air pump F, from which it is forced down the air-tube D (the latter being strictly a gas as well as an air tube), and is made again subservient in raising the oil up through the tube B.' United States patent No. 142,200, issued to Reinhold Boeklen and Jakob Fuchs, dated August 26, 1873, discloses an improvement in apparatus for emptying cellars, water-closets, etc., which is described therein as follows:

'This invention relates to the combination of a portable steam boiler, a portable vacuum vessel or pumping and suction chamber, with a cold water sprinkler, and a detachable hose or suction pipe with stopcocks, and a cold water supply pipe or reservoir, and certain connecting pipes and stopcocks between said boiler and vessel for conducting the steam to said vessel and to said hose separately and together, and between said vessel and furnace of said boiler for conducting and burning the foul air from said vessel, and between said cold water supply, said sprinkler and vessel, and said suction pipe, for condensing the steam in said vessel and hose, and cause vacuum and suction therein, and for stopping the outflow from said vessel when filled, and for discharging the contents in said hose back and cleaning the same.'

United States patent No. 167,384, issued to Reinhold Boeklen, dated September 7, 1875, discloses an improvement in apparatus for emptying sewers and sinks. The patent provides for a mouth or entrance to the suction pipe smaller than the pipe, and for the creation of a nearly complete vacuum in the tank, as follows:

'The mouth or entrance of the hose or suction pipe G in the soil to be removed is made smaller than the body of the pipe, so that any substance that can enter the pipe will have a free passage through the same.'

'It is well known that in removing soil, consisting of mixed fluid and solid matter, by a vacuum, the fluid portions are apt to pass through the more dense part, leaving the latter behind, and this is owing to having air in the suction pipe, and producing the vacuum gradually or partially. This is entirely overcome by my invention, as there is a rapid, concentrated, and instantaneous action from the force of a nearly complete vacuum in the tank.'

United States patent No. 248,355, issued to Louis Schutte, dated October 18, 1881, discloses a liquid elevator, and its method is described as follows:

'My method of elevating the fluids is based upon the fact that, if an upright suction or lift pipe communicating at its upper end with a vacuum or partial vacuum or exhausting apparatus be connected at its foot with a fluid supply, the suction will cause the fluid to rise in the pipe to a height corresponding with the degree of the vacuum, never exceeding the limit of 32 feet, and that, if at this time air be admitted into the pipe at a point above the level of the fluid supply and below the top of the column in the pipe, that portion of the liquid standing above the point of air admission will be forced upward through the pipe by the excess of atmospheric pressure represented by the height of the liquid column between the point of air admission and the supply level. In this way the fluid may be carried above the usual limit of 32 feet by a single lift and with a continuous pipe.'

United States patent No. 279,034, issued to Lyman Smith, dated June 5, 1883, discloses a pneumatic and automatic grain transfer apparatus which in part is therein described as follows:

'My invention consists in arranging upon a car of suitable dimensions an air-tight hopper of any suitable design or contour, which hopper is calculated to contain the load of an ordinary grain car, and which hopper is provided with inlet and outlet tubes, and with an exhausting apparatus for producing a vacuum in said hopper, whereby the grain is sucked out of one car into the hopper, and by a reversal of the direction of the exhausting apparatus it becomes a blower, and thus by the same apparatus that causes the grain to rush into the hopper also causes it to be blown out into the car to be loaded, evenly distributing it all over the bed of the car, the grain in the meantime having been weighed by the operator.'

Provision is made for an air tube to aid in forcing the grain out of the discharge mouth:

'When discharging the grain, it sometimes happens that it becomes choked at the point of exit. To overcome this I locate an air tube, f, at a suitable position within the hopper. It extends sufficiently high to prevent the grain from entering its mouth, and down to a point within the discharge opening, so that, when pressure is let onto the hopper, the air passing down the pipe f through the grain to the point of exit forces the grain out of the discharge mouth, and thus not only prevents it choking up, but also facilitates its discharge,'

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