Hartford-Empire Co. v. Obear-Nester Glass Co.

• Decision Date: 30 July 1934
• Docket Number: No. 9286.,9286.
• Citation: 71 F.2d 539
• Parties: HARTFORD-EMPIRE CO. v. OBEAR-NESTER GLASS CO. et al.
• Court: U.S. Court of Appeals — Eighth Circuit

71 F.2d 539 (1934)

HARTFORD-EMPIRE CO. v. OBEAR-NESTER GLASS CO. et al.

No. 9286.

Circuit Court of Appeals, Eighth Circuit.

June 1, 1934.

Rehearing Denied July 30, 1934.

COPYRIGHT MATERIAL OMITTED

A. C. Paul, of Minneapolis, Minn. (John H. Bruninga, of St. Louis, Mo., on the brief), for appellant.

William R. Wood, of Cincinnati, Ohio and Lawrence C. Kingsland, of St. Louis, Mo. (John D. Rippey, of St. Louis, Mo., and Edmund P. Wood, of Cincinnati, Ohio, on the brief), for appellees.

Before STONE and BOOTH, Circuit Judges, and WYMAN, District Judge.

STONE, Circuit Judge.

This is an action for infringement of certain claims of four patents having to do with the feeding of molten glass to molds in which hollow ware, such as bottles and jars, is blown. The patents and claims involved are as follows: Claims 1, 2, 3, and 4 of Peiler, No. 1,405,936, issued February 7, 1922; claims 2, 4, 14, 21, 24, 25, 26, 27, 31, 33, and 36 of Peiler, No. 1,662,436, issued March 13, 1928; claims 24, 26, and 31 of Peiler, No. 1,662,437, issued March 13, 1928; and claim 22 of Ferngren, No. 1,677,436, issued July 17, 1928. From dismissal of its bill on the merits, plaintiff brings this appeal. The appeal does not include the determination of the trial court that the claims of Peiler, No. 1,662,437, were not infringed, so that patent is not before us.

Of the claims involved, all are for appatus (combinations) except claims 24, 25, 26, 27, and 36 of Peiler, No. 1,662,436, which are method claims. The trial court found all of the method claims and claims 31 and 33 of Peiler, No. 1,662,436 and claim 22 of Ferngren invalid. The reason for invalidity of the Peiler method claims was that they were merely for functions of the apparatus disclosed by the patent. The reasons for invalidity of the Peiler apparatus claims 31 and 33 were: (1) That the claims were broader than the disclosure and (2) that they were anticipated by McCauley, No. 1,281,083 and McCauley (Brit.), No. 114,583. The reasons for invalidity of Ferngren claim 22 were that it was an amendment filed long after the original application which (1) was not merely an amplification or clearer statement of anything in the original application, (2) was not supported by the original disclosure, and (3) was not supported by the statutory oath. The court expressly abstained from ruling on the validity of all claims except as above set out.

Noninfringement was found as to all apparatus claims in suit, whether valid or not This resulted from the limitation of such claims to the particular devices disclosed — particularly those features having to do with the organization and operation of the valves controlling the three air pressures used in the feeding operation. The reasons for thus limiting the apparatus claims were: (1) They were for improvements in a crowded art which had been gradually developed over a long period of time; (2) they were limited by proceedings in the Patent Office; (3) they were limited as "paper patents, because never commercially used and too complicated for commercial use"; (4) a broad construction would result in "double patenting" as to the Peiler patents.

We will take up the issues presented by this appeal under certain general headings (with necessary subheadings) as follows: (I) The Ferngren Patent; (II) Validity and Limitation of the two Peiler Patents; (III) Infringement.

I. The Ferngren Patent.

Only claim 22 of the patent is involved in this litigation. This claim first came into the patent during its progress through the Patent Office. It came as an amendment under the original oath to the application. The trial court determined that the claim was void because it was supported neither by the disclosure of the original application nor by a new oath. In addition to the need of a supplementary oath, appellees urged below, and contend here, that the claim is void for three other reasons: Inoperativeness and complete lack of utility; lack of adequate disclosure; and lack of novelty.

(A) Supplemental Oath.

The pertinent rules of law are settled. Patents are purely statutory. They are limited to discovery of things which are "new and useful" and have not been "in public use or on sale" for more than two years prior to application. USCA title 35, § 31. The statute (Id. §§ 33, 34) requires a formal application for a patent wherein the applicant shall set forth such discovery and clearly describe the novelty thereof. It requires (Id. § 35) also that the applicant shall support the declared discovery and novelty by an oath. As well said in Westinghouse Elec. & Mfg. Co. v. Metropolitan Elec. Mfg. Co., 290 F. 661, 664 (C. C. A. 2), this last section requires that the applicant "shall swear to his invention, and all of it." Therefore it is clear that any amendment made after filing the application cannot go further than the discovery disclosed in the original application unless it be supported by a supplementary oath covering the extended matter. "A claim is not a disclosure; but every claim must be justified by the disclosure. If, therefore, a new claim needs for its justification or validity an additional or new disclosure, such additional allegations of fact assuredly need a supplemental oath, not because they are to be used for an amended or new claim, but because they tell some fact of invention not told before" (Westinghouse Case, supra, page 664 of 290 F.), and "whether any given new or amendatory matter does or does not enlarge or add to the disclosure as it stood before amendment is a question of fact" (Westinghouse Case, supra, page 665 of 290 F.). Also see Cleveland Gas Burner & Appliance Co. v. American Heater Corp., 38 F.(2d) 760, 763 (C. C. A. 8).

It is this character of fact question which is the issue here. Is claim 22 for an invention broader than, or different from, what is disclosed by the specifications and drawings of this application? Although the specifications and drawings have been amended, those upon which the patent was granted do not essentially differ from those of the original application in so far as disclosure of the invention. Therefore we may examine the present question on the basis of the disclosure in the patent as granted. Claim 22 is: "In an apparatus for separating molten glass into mold charges, the combination of a receptacle for the glass having a submerged outlet, a member within the receptacle having a chamber opening toward the outlet, and having its lower edge submerged in the glass, and automatic means operating in a predetermined order and time, for periodically creating a vacuum within the chamber to prevent the discharge of glass from the outlet, and for supplying compressed air to the chamber to discharge the glass from the outlet."

The view of the trial court is: "The drawings and specifications originally filed disclosed a glass-feeding structure where the application of vacuum in the cup to draw or suck the charge from the opening of the forehearth was essential. It could not be worked any other way as the patentee expressly stated. No disclosure was made of a structure `for supplying compressed air to the chamber to discharge glass from the outlet'. Since the patentee by his device could not carry out that process it cannot be said that claim 22 is merely an amplification or clearer statement of something in the original application. It speaks in a language of a different period of the glass-feeding art."

The Ferngren conception, as revealed by his disclosure, was not a suspended gob feed, and was not a feed directly into a parison mold. In a suspended gob feed, the amount in the charge and the shape of the charge are incorporated in the suspended gob, which then drops into the parison mold. Ferngren came into the art in 1913, before much development of the principle of suspended gob feeding, and, so far as this record shows, before an appreciation of the problems of such gob feeding. He had no such principle in mind. His conception was to segregate the amount of glass required for a charge before the charge left the orifice and then to eject the segregated charge into a cup wherein it was carried to be dumped into a parison mold. His active agency in such segregation and ejection was air force. He uses suction within a lowered air bell (located in the forehearth) to segregate the desired charge amount in the orifice tube. He uses simultaneously coacting compression in the bell to push down and pull down suction in the cup to eject the charge into the cup.

The trial court thought this claim broader than the disclosure because it included something not in the disclosure (compression in the bell), and did not include an essential feature of the disclosure (suction in the cup). We think the disclosure included compression in the bell (patent, pages 1, lines 18-20; 2, lines 8-13; and 3, lines 18-22), and therefore the court was mistaken in this respect. As to the other matter (suction in the cup), the disclosure is that such suction was to be applied, and no alternative where no such suction was to be used is anywhere suggested. This, however, is not determinative of the matter we are now considering. It is a common and permissible practice to file claims for individual features of a device, and under some circumstances such may pass to patent. Whether they should so pass may involve other questions than the necessity for an oath to an amendment, which we are now examining. As to the oath, the question is solely whether the disclosure is as broad as the claim. This disclosure reveals every element of this claim, as follows: A receptacle for glass having a submerged outlet; a member therein (the bell) having a chamber opening toward the outlet with its lower edge submerged in the glass; automatic (air force) means operating in a predetermined order and time (suction to retard or prevent and compression to increase discharge) for periodically creating a vacuum to prevent and compression to discharge...