Kelley v. Coe

• Decision Date: 19 September 1938
• Docket Number: No. 6973.,6973.
• Citation: 99 F.2d 435,69 App. DC 202
• Parties: KELLEY et al. v. COE, Com'r of Patents.
• Court: U.S. Court of Appeals — District of Columbia Circuit

69 App. DC 202, 99 F.2d 435 (1938)

KELLEY et al. v. COE, Com'r of Patents.

No. 6973.

United States Court of Appeals for the District of Columbia.

Decided September 19, 1938.

John Boyle, Jr., of Washington, D. C., and George F. Scull, of New York City, for appellants.

R. F. Whitehead, Solicitor, United States Patent Office, of Washington, D. C., for appellee.

Before GRONER, Chief Justice, and MILLER and EDGERTON, Associate Justices.

MILLER, Associate Justice.

On January 13, 1933, appellant George S. Kelley filed with the Commissioner of Patents an application for a patent upon claims involving new and useful improvements in methods of dust removal. The twenty-one claims of the application were rejected by the Examiner on the ground that they showed no invention over the prior art. The Board of Appeals affirmed the Examiner's rejection. Two petitions for rehearing were filed before the Board; the first was denied and the second was dismissed. Kelley and Kadco Corporation — a successor in interest — thereupon commenced suit in the lower court under Section 4915, R.S., 35 U.S.C.A. § 63. This appeal is from a decree dismissing the bill.

At the trial appellants withdrew all claims except 31, 37 and 44. These are the only claims involved on this appeal and are set out in the margin.¹ They relate exclusively to the method or process involved, not to machinery or apparatus.

The references relied upon by the Patent Office were: Prellwitz, No. 1,023,594, April 16, 1912; Ayotte, No. 1,334,430, March 23, 1920; Griffiths (British), No. 7355, March 27, 1906; Korfmann (German), No. 382,007, April 30, 1924; Heldt (German), No. 235,522, June 12, 1911; Fraser (British), No. 100,817, January 6, 1916; German Patent No. 195,964, February 29, 1908. It was not found by the tribunals of the Patent Office, nor is it contended by the Commissioner in this court, that any one of the references relied upon constituted an anticipation of the Kelley method. Nor is it contended that any of the references relied upon were successful in operation. But it is contended that they, as the prior art, taught sufficiently well to prevent Kelley's method from constituting invention.

In rejecting the Kelley application, the Examiner said: "The prior art is full of patented devices which have recognized the advantages of allowing outside air to flow into the hood to mix with the dust ladened air which comes out of the bore hole." And further he said — after describing several of the references relied upon — "In each of the above patented devices a suction means is used to evacuate the dust hood and maintain the inside of the hood at a lower pressure than the pressure of the outside air."

The Board of Appeals said, in affirming the action of the Examiner: "The claims * * * are all directed to a method but when reduced to its simplest form, the method claimed involves, over that inherent in the use of prior art devices, largely a difference in the degree of rarefaction to which the dust-collecting hood is subjected." And in his brief on appeal to this court the Commissioner said:

"It was not new, as shown by a number of the references of record, and as stated by the court below in its findings of fact, to use a fan, or blower, or suction pump, in connection with mechanism designed to remove the dust created in rock drilling, and the patent to Prellwitz shows a device which is intended for exactly the same use as the Kelley device."

While it is true that at first glance Kelley's method may seem to be merely an advance in degree over the prior art, nevertheless, we are of the opinion that the extreme and well-recognized need for an effective method of dust control, the prior but unsuccessful attempts of others over a period of years, and finally, Kelley's success where all others had failed, constitute persuasive evidence of invention.

For many years rock drills, driven by compressed air, have been utilized extensively for drilling in mines, in quarries, for foundations of buildings, and for numerous other industrial purposes. The drill consists of a pneumatic hammer mounted upon a supporting base, which strikes about two thousand times a minute against one end of a bit or drill steel, the other end of which cuts and shatters the rock into dust and small particles. The drill bit is constructed of steel and is slightly hollow, a small hole extending throughout its length. Air is forced into the upper end of this hole and is carried by pressure to the point of drilling. In this way, the dust and small particles of rock are blown from the excavation into the surrounding atmosphere, enveloping the operator of the drill in a cloud of dust. In most localities the dust thus generated by the drills contains silicon in the form of silicon dioxide or quartz, which, if inhaled in sufficient quantities over a period of time, produces a disease known as silicosis. As a consequence, silicosis is very common among drill operators, and in many cases results in a fatal form of tuberculosis. This health peril, known as early as 1900, created an acute need in the rock-drilling industry for a method of controlling the dust. In the United States, as in other countries, the oldest and principal method of dust control — and the only successful one prior to the Kelley process — is known as wet drilling, i. e., forcing water, or a mixture of air and water, through the hollow drill steel into the hole being drilled, or directing a jet of air and water at the face of the hole as the dust emerges. This method, however, has not been entirely satisfactory because of the inefficiency of operation, and because the method creates unhealthy and unpleasant working conditions, e. g., in deep mining, the addition of the water tends to increase the humidity; in outdoor work, the water is likely to freeze in cold weather; and, generally, the drill workers are adversely affected by the dampness and wet footing caused by the presence of the continuous spray. Moreover, wet drilling fails to eliminate the dust completely.²

Appellants' claimed invention relates to a method of eliminating dust by maintaining at all times a sub-atmospheric pressure or vacuum over the mouth of the hole being drilled. Appellants' method accomplishes this result by enclosing the mouth of the drill hole with a casing or hood, to which is connected a powerful fan blower which exhausts from the hood a much greater volume of air per unit of time than is projected into the hole through the hollow drill steel. About five to seven times as much air is thus drawn from the hood through the exhaust as goes into it through the drill steel. At the top of the hood is an aperture through which the drill steel extends. It is essential that this opening be larger in diameter than the drill steel, in order that outside air in substantial quantities may be drawn into the hood. For the same reason, it is essential that the mouth of the hood be spaced at a slight distance from the face of the rock, so that an opening will exist between the hood and the surface. Thus, when the drill and the blower are in operation, air is drawn into the hood at all openings and withdrawn at the exhaust.

The air coming in between the rock face and the hood prevents dust from being blown out around the sides as it otherwise would. With the air entering in this manner the hood is not actually touched by the dust which is coming up from the drill hole, because the air drawn in from the sides makes a curtain surrounding the dust as it comes up and directs it into the exhaust line outlet. Similarly, the incoming air at the top of the hood breaks the velocity of the upcoming dust and chips, and, joining with the incoming air from the sides, makes them turn the corner and flow through the suction outlet of the exhaust line. The sub-atmospheric pressure thus creates an air seal around these openings, rendering escape of dust impossible. The air-flow which results from operation of appellants' process producing the desired elimination of dust is illustrated by the drawing reproduced below, which was introduced by appellants as Plaintiff's Exhibit 4 in the lower court:

The manner of operation of the Kelley process is illustrated by the drawing reproduced below, which was also introduced by appellants as Plaintiff's Exhibit 3 in the lower court. (Page 439) A guide to the important letters is set out in the margin.

The successful operation of Kelley's process and proof of his claims were both clearly established by the evidence; which was unchallenged by the Commissioner except by his offer in evidence of the references upon which rejection was based. Consequently, in determining whether Kelley achieved invention we start with the fact that he has made a distinct and valuable contribution to the art. This the Commissioner concedes when, in his brief, he states "* * * nor is it contended that the device is not useful. No such suggestion was made in the Patent Office and the testimony presented in the lower court shows that the method has gone into quite extensive use."

The use of the Kelley method has produced highly satisfactory results not only in downward vertical drilling but in overhead vertical drilling. The evidence proved that the method is so effective in actual operation that no dust escapes from the hole; and that judged by the hygienic standard the results are more than satisfactory, that is, the air is cleaner with the Kelley method in operation than is necessary for the requirements of hygiene. In recognition of his success in devising a method of controlling silicosis, Kelley received the John Scott Medal from the Board of Directors of the City of Philadelphia, and a certificate of merit from the Franklin Institute.

In addition to conserving the comfort and health of the workers by preventing the escape of dust, appellants' method has great utility in reducing the cost of drilling, by increasing speed and efficiency. In the use of...