Kockum Industries, Inc. v. Salem Equipment, Inc., 25
| Decision Date | 06 October 1972 |
| Docket Number | No. 25,870,874.,25 |
| Citation | 467 F.2d 61 |
| Parties | KOCKUM INDUSTRIES, INC., Plaintiff-Appellant, v. SALEM EQUIPMENT, INC., and Earl R. Hitchman, Defendants-Appellees. KOCKUM INDUSTRIES, INC., Plaintiff-Cross-Appellee, v. SALEM EQUIPMENT, INC., and Earl R. Hitchman, Defendants-Cross-Appellants. |
| Court | U.S. Court of Appeals — Ninth Circuit |
Richard W. Seed, (argued), of Seed, Berry & Dowrey, Seattle, Wash., Kenneth S. Klarquist, of Buckhorn, Blore, Klarquist & Sparkman, Portland, Or., for appellant.
J. Pierre Kolisch, (argued), Jon M. Dickinson, of Kolisch, Hartwell & Dickinson, Portland, Or., for appellee.
Before MERRILL and BROWNING, Circuit Judges, and ZIRPOLI, District Judge.*
Appellant brought suit charging infringement of claim 12 of Andersson patent 2,775,274, and claims 1, 2, 3 and 5 of Leffler patent 2,855,010. The District Court dimissed the action, holding those patents invalid as to the claims in issue and this appeal followed.
The patents in suit relate to ring-type log debarkers in which the debarking tools are carried by a rotating ring through the center of which the logs are fed. The arms on which the tools are carried are biassed inwardly by springs or air pressure to maintain firm contact with the surface of the log and thus, on entry of the log, serve to obstruct its passage through the rotating ring. The tools and arms carrying them must for this reason be "opened" to accommodate the log. They could, of course, laboriously be opened (manually or by adjustment of inward pressure) for each new log. What the industry requires, however, is a self-opening mechanism. Many patents have sought to achieve this objective. The art, if not crowded, is certainly well occupied.
Self-opening has been achieved by relying on two mechanical responses based on ancient and well known principles: The camming or wedging action and the screwing action.
In the case of camming action, the approaching log contacts the sloping plane of a wedge-shaped tool. The tool slides outward on its sloping edge as the log progresses until the tool reaches the periphery of the log and the debarking process commences.
The patent claims in issue purport to utilize screwing action. Here it is asserted the rotating tool follows grooves in the face of the log carrying the tool from a position at the center of the log face to its periphery. The tool of appellant's debarker presents a curved knife edge to the face of the log which, on contact, cuts a curved groove in the log's face from center to periphery, in which groove the tool, spurred by the rotation of its carrying ring, rides outward to the periphery of the log where debarking commences.
It is thus apparent that in the case of camming action the motivating force that brings the tool to the log's periphery is the forward motion of the log, while in the case of screwing action it is the rotation of the tools.
The District Court held that the claims in question had been anticipated by prior art. Our examination of the prior art in evidence convinces us that this was error. In all the prior patents introduced, camming action was utilized rather than screwing action. We conclude that on this record invalidity of the claims on the ground of anticipation is not established.1
A problem remains respecting the scope of the claims. It is the knife edge which is the heart of the self-opening mechanism in issue and on which appellant relies as imparting novelty. However, at this critical point of novelty the claims of the patents revert to descriptions in terms of function.2 The claims of both patents recognize that a reaction known to the laws of mechanics can be initiated by a knife-edge penetration of the oncoming log face, which reaction will serve to carry the tool to the log's periphery. However, the sharp edge is not described (as to configuration or type of groove imparted or point of contact—whether at the center of the log face or its periphery) save in terms of the reaction it is to trigger, and thus in terms of what it is to accomplish.
The claims accordingly do not meet the requirements of Gen. Electric Co. v. Wabash Appliance Corp., 304 U.S. 364, 369, 58 S.Ct. 899, 82 L.Ed. 1402 (1938).
Since that decision 35 U.S.C. § 112, dealing with the specifications contained in a patent application, has been amended to allow language in the specifications to limit and accordingly cure a...
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