Hatmaker v. Dry Milk Co.

• Decision Date: 03 July 1929
• Docket Number: No. 330.,330.
• Citation: 34 F.2d 609
• Parties: HATMAKER v. DRY MILK CO.
• Court: U.S. Court of Appeals — Second Circuit

34 F.2d 609 (1929)

HATMAKER v. DRY MILK CO.

No. 330.

Circuit Court of Appeals, Second Circuit.

July 3, 1929.

James R. Hatmaker, pro se.

Fritz von Briesen, of New York City, for appellee.

Before MANTON, L. HAND, and CHASE, Circuit Judges.

L. HAND, Circuit Judge (after stating the facts as above).

We quite agree with the disposition of claims 3 and 4. When the original claims were rejected, the plaintiff, with full knowledge of the circumstances, expressly disavowed any claims in which the surface temperature should be lower than 270° F. He was scarcely under a mistake at the time; he had been confronted with Just's patent, in which that had been the higher limit, and he chose to take that part of the field which Just had left open. His mistake, if any, was not in what his claims gave him — that he knew quite well — but in thinking that he was obliged to yield all Just's field to Just. Perhaps he was not; we do not say. The critical thing is that he chose at that time not to contest the question. The statute does, indeed, allow reissues broadly when "the error has arisen from inadvertence, accident, or mistake"; but this has not been extended to claims abandoned or disclaimed in the progress of the original application through the office. Eames v. Andrews, 122 U. S. 40, 7 S. Ct. 1073, 30 L. Ed. 1064, may at first blush seem to be such a case; but the discussion on pages 61 and 62 shows that nothing of the sort was intended, but rather that, had the original claim been in fact limited, the reissue would not have been upheld. In Moneyweight Scale Co. v. Toledo, etc., Co., 187 F. 826 (C. C. A. 7), it was conceded (page 830) that if a claim has once been rejected, and the rejection accepted, it may not be revived by a reissue. Such is the law. Leggett v. Avery, 101 U. S. 256, 25 L. Ed. 865; Union Metallic Cartridge Co. v. U. S. Cartridge Co., 112 U. S. 624, 644, 5 S. Ct. 475, 28 L. Ed. 828; Yale Lock Co. v. Berkshire Bank, 135 U. S. 342, 379, 10 S. Ct. 884, 34 L. Ed. 168; Dobson v. Lees, 137 U. S. 258, 263-265, 11 S. Ct. 71, 34 L. Ed. 652; Corbin Cabinet Lock Co. v. Eagle Lock Co., 150 U. S. 38, 43, 14 S. Ct. 28, 37 L. Ed. 989. In Morey v. Lockwood, 8 Wall. 230, 19 L. Ed. 339, the mistake had arisen from a misunderstanding of the physical construction of a supposed anticipation.

The original claims, which Hatmaker yielded in order to get his first allowance, were in substance the same as claims 3 and 4. Thus claim 1 was for a "surface heated sufficiently high to reduce" the milk "to a dry conservable state"; claim 2, for a "surface heated in excess of 212° F., and as much higher as may be necessary for reducing" the milk "to a dry, conservable state." Claim 3 in suit is for a "surface heated to such a temperature as substantially to expel the contained water"; claim 4, for a "surface sufficiently high to reduce" the milk "to a dry conservable state." Argument is unnecessary and the claims are invalid.

Claim 5 is not infringed, because the defendants did not "condense" any milk before drying it. That word refers back to the specifications (page 1, lines 88-96), which read: "It is not necessary that the milk should be previously condensed, although condensed milk can be dried by the process, in which case the condensing would, in a sense, form a part of the process. With condensed milk, on account of the smaller proportion of water, it will be clear that the material may be dried with a less highly heated surface." In the Just machine and in the defendants' the milk gathers in a well between two rolls closely adjacent, whence it is drawn down on their surface. It boils in the well, and is condensed somewhat while there; wherefore the plaintiff argues that claim 5 covers the process. Of course, if this be true, the other claims were unnecessary, except for machines in which the film was formed on a single roll, and Just's claims fit as well. It is plain that nothing of the sort was intended; the claim was for a process of "first condensing" the milk "somewhat and then exposing it in a very thin film." The defendants did not use "previously condensed" milk, or "condensed milk" at all, in this process; such condensation as occurred was part of the process, and was unavoidable in a Just machine.

The most difficult question is as to the meaning and validity of claims 1 and 2. At the trial it was tacitly assumed that the phrase, "drying surface heated in excess of 270° F.," meant that the actual surface of the rolls should have that temperature while carrying the film. Upon this appeal the plaintiff argues that the meaning is not that, but that the rolls shall be heated by steam of not less than 270°. It is true that he said in the specifications (page 2, lines 36-39): "In practice I have found cylinders heated by 3¼ atmospheres of steam pressure to give excellent results." Three and a quarter atmospheres...