Hudson Motor Car Co. v. American Plug Co.

• Decision Date: 13 June 1930
• Docket Number: No. 5199.,5199.
• Citation: 41 F.2d 672
• Parties: HUDSON MOTOR CAR CO. v. AMERICAN PLUG CO. et al.
• Court: U.S. Court of Appeals — Sixth Circuit

41 F.2d 672 (1930)

HUDSON MOTOR CAR CO. v. AMERICAN PLUG CO. et al.

No. 5199.

Circuit Court of Appeals, Sixth Circuit.

June 13, 1930.

Charles Neave, of New York City (William G. McKnight, of New York City, George P. Dike, of Boston, Mass., Beaumont, Smith & Harris, of Detroit, Mich., and MacLeod, Calver, Copeland & Dike, of Boston, Mass., on the brief), for appellant.

Edward N. Pagelsen, of Panama City, Fla. (John B. Macauley, of Chicago, Ill., and Campbell, Bulkley & Ledyard and Harry C. Bulkley, all of Detroit, Mich., on the brief), for appellees.

Before DENISON, MOORMAN, and HICKENLOOPER, Circuit Judges.

DENISON, Circuit Judge.

Infringement suit based on patent 1,058,210, to Welch, for process for closing holes in castings. In order to avoid anticipation and to rest upon what is now seen to be the inventive step, if any there is, in the process, the claims must be limited to a more specific form than the language seems to indicate. The patentee attempts to do this, both by construction and by the effect of a disclaimer. The validity of the disclaimer is the question chiefly argued in this court.

The specification shows special applicability to holes which had been left in hollow castings for the purpose of removing the sand core. Welch proposed to do this by counter-boring from the outside partly through, thereby leaving an annular shoulder, and by inserting from the outside a circular concave disc. Then by flattening this concavity and thereby increasing the diameter of the disc, the hole would be closed. Figures 3, 5, and 6 are here reproduced, and a typical claim, 3, is as follows:

"3. The process of closing a hole in a casting, consisting in enlarging the outer end of said hole so as to form a shoulder, placing a concave disc on said shoulder and flattening said disc to force it against the walls of said opening and bind it in place."

It has developed, and indeed, it is probably apparent upon giving careful attention, that if the disc is first cut out by the ordinary die, leaving its sides cylindrical, and is then concaved by an appropriate stamping operation, the sides will become slightly conical, and if the diameter at the upper edge made a close fit with the counterbored hole, the disc, at its lower edge, would be loose, and when it was restored to its flat condition, it would make at the best an indifferently tight closure. If, however, the disc structure was concaved first and then cut from the sheet by the ordinary die, the sides would be cylindrical and the final expansion would involve pressure against the surrounding hole throughout the thickness of the disc and a much tighter closure. As the special utility of the process has been found to be in closing these openings in the water jackets of gas engines, where the closure must form an efficient hydraulic seal, it has come to be seen that there is no merit in the invention unless it be limited to the use of discs having cylindrical sides; nor indeed, without that limitation, any novelty.

The patentee sought to insure this limitation by filing a disclaimer which provides (among other features not now...