In re Cornell

• Decision Date: 03 July 1945
• Docket Number: Patent Appeal No. 5105.
• Citation: 32 CCPA 1251,150 F.2d 702
• Parties: In re CORNELL et al.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

32 CCPA 1251, 150 F.2d 702 (1945)

In re CORNELL et al.

Patent Appeal No. 5105.

Court of Customs and Patent Appeals.

July 3, 1945.

Strauch & Hoffman, of Washington, D. C. (James A. Hoffman and William A. Strauch, both of Washington, D. C., of counsel), for appellants.

W. W. Cochran, of Washington, D. C. (E. L. Reynolds, of Washington, D. C., of counsel), for the Commissioner of Patents.

Before GARRETT, Presiding Judge, and BLAND, HATFIELD, JACKSON, and O'CONNELL, Associate Judges.

HATFIELD, Associate Judge.

This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming the decision of the Primary Examiner rejecting claims 22 and 25 to 32, inclusive, in appellants' application (filed January 29, 1943) for the reissue of their patent (No. 2,302,529, issued November 17, 1942) for an invention relating to "a repeating valve shut-off system."

Claim 22 is sufficiently illustrative of the appealed claims. It reads: "22. In a liquid dispensing apparatus of the class described comprising in combination a displacement mechanism, a register, and a speed change mechanism connected to be continually driven by said displacement mechanism and connected to continually drive said register, thermostatic means for adjusting said speed change mechanism to compensate for the expanded or contracted condition due to the temperature of the liquid being measured and manually settable means for adjusting the speed of said mechanism in accordance with the coefficient of expansion of said liquid."

Appellants disclose in their reissue application a "repeating valve shut-off system" which is especially adapted for the measured filling of large containers with liquid, such as lubricating oil. The system comprises a pump which receives the liquid to be measured from a main storage tank and forces it through a liquid measuring apparatus or meter and a shut-off valve to the container to be filled. Provision is made for modifying the action of the liquid measuring apparatus or meter in accordance with the temperature of the liquid being measured, so that the measurement will be accurate regardless of the temperature of the liquid.

Appellants also disclose in their involved application a modified device which may be adjusted for measuring liquids having different coefficients of expansion. However, the details of that device are not material here.

The claims on appeal are drawn to a liquid measuring apparatus or meter per se, and do not include means for shutting off the flow of liquid.

In rejecting the appealed claims, the tribunals of the Patent Office stated that, during the prosecution of their original application, appellants deliberately elected to prosecute claims to the combination of a liquid measuring apparatus and a shut-off apparatus, and not to prosecute claims to the measuring apparatus per se, and that, therefore, their failure to obtain claims in their patent to the measuring device per se was not due to inadvertence, accident, or mistake, but rather was the result of deliberate action by them.

Appellants' original application, as filed, contained twenty-five claims, the first twenty-three of which included, in terms of varying scope, the combination of the liquid measuring apparatus and the shut-off or trip mechanism by which the flow of liquid is shut off. Some of those twenty-three claims included the modification by which adjustment might be made for liquids of different coefficients of expansion, while others did not. The two remaining claims (Nos. 24 and 25), which were limited to the modification which permits adjustment in accordance with the coefficient of expansion of the liquid being measured, did not include the shut-off or trip mechanism but were directed solely to a liquid measuring apparatus, as distinguished from the combination of the liquid measuring apparatus and the shut-off mechanism.

Claim 24 is illustrative of the cancelled claims. It reads: "24. A temperature compensated fluid measuring system comprising a displacement meter terminating in a meter shaft, a driven shaft, means rotatably connecting said meter shaft to said driven shaft, said means including a train of gears meshing with one another and bodily rotated with the shafts, a ratchet wheel secured to one of the gears, a pawl for intermittently moving the ratchet wheel, an oscillatable arm for moving the pawl, a ring movably mounted about the shafts, said oscillatable arm being oscillated by the ring during each rotation of the shafts, temperature responsive means immersed in the fluid being measured and being mechanically connected to the ring for changing the position of the ring in response to change in temperature, and means including a pointer and scale to so change the connection between the temperature responsive means and...