Marshall v. Pettingell-Andrews Co.
| Decision Date | 25 September 1908 |
| Docket Number | 754. |
| Parties | MARSHALL v. PETTINGELL-ANDREWS CO. |
| Court | U.S. Court of Appeals — First Circuit |
Sherman L. Whipple (Whipple, Sears & Ogden, on the brief), for appellant.
Hubert Howson (Howson & Howson, on the brief), for appellee.
Before COLT, PUTNAM, and LOWELL, Circuit Judges.
The Marshall patent, No. 784,695, issued March 14, 1905, is for an insulating lining for the outer metallic shell of an incandescent lamp socket. Prior insulating linings were made of hard fiber. The Marshall lining is made of paper.
The present bill is brought for infringement of claims 5 and 9 of the Marshall patent:
The Circuit Court held these claims invalid and dismissed the bill. The ground of the decision was that the invention covered by these claims involved merely the substitution of one well-known insulating material for another well-known insulating material, with no change in result except of a minor character.
The Marshall invention will be better understood if we first consider the prior hard fiber lining shown in the Painter patent No 718,378, and note the difference between the two linings.
The following drawing from the Painter patent illustrates the outer metallic shell of an incandescent lamp socket and the prior hard fiber lining:
(Image Omitted)
In this cut the upper and lower figures show the two parts of the shell, and the middle figure the lining ready to be inserted in the shell. The shell is composed of a piece of tubular metal of different diameters-- that is, about half the length of the tube is of a smaller diameter than the other half-- and a shoulder is formed where the two parts of different diameter unite. The lining is made of hard fiber, and corresponds to the form of the shell; that is, it is a tube of different diameters, with a shoulder which unites the part of larger diameter with the part of smaller diameter.
The Painter lining was made by taking a piece of hard fiber tubing about the length of the shell, and of a proper diameter to fit within the larger end of the shell, and by the action of dies reducing or compressing the proper portion of the length of the tube to the smaller diameter required to enable it to fit within the smaller part of the shell.
The Painter lining met the substantial requirements of a satisfactory lining, and went into extensive commercial use. It was, however, open to some not very serious objections.
It is desirable that the lining should be retained in the shell when the parts of the shell are taken apart for wiring or other purposes, and at the same time should be so held in the shell that it may be quickly and readily removed for the purpose of refinishing the shell.
The defect in the hard fiber lining was that it was liable to drop out of the shell when it was desirable it should be retained, or was liable to be held too firmly in the shell when it was desirable to remove it.
Marshall conceived the idea of remedying this defect by making the lining of paper, and having a portion of the periphery of the lining of greater diameter than the part of the shell within which it is to fit, so that as the lining is inserted in the shell this portion will be compressed and by its elasticity will maintain a moderate pressure on the shell, sufficient to prevent the lining from falling out and at the same time permit of its ready removal. It will be observed that the Marshall conception involved both a change in material and a change in form.
The method adopted by Marshall in making his lining was the same as the method shown in the Painter patent. Marshall took a piece of paper tubing about the length of the shell and of a proper diameter to fit within the larger end of the shell, and by the action of dies substantially the same as the Painter dies reduced a portion of the length of the tube to the smaller diameter required to enable it to fit within the smaller part of the shell; in other words, the dies were so shaped, just as in the Painter patent, as to give the lining when held by them the size and shape corresponding to the size and shape of the shell in which it is to be inserted. In submitting a paper tubing to this operation Marshall says he discovered that when the tube was released from the dies a portion of the reduced end at or near the shoulder would spring outward, thereby forming an elastic portion somewhat larger than the diameter of the part of the shell in which it was to fit.
A sectional view of this lining is illustrated in Fig. 4 of the Marshall patent:
(Image Omitted)
In this figure the dotted lines show the shape of the lining when held by the dies, and the solid lines show the expanded or holding portion of the lining, which is of slightly larger diameter than the portion of the shell into which it is to fit.
It thus appears that the Marshall lining differs from the Painter lining in two particulars: First, it is made of paper instead of hard fiber; and, second, it has a new structural feature consisting of a raised or enlarged portion of its periphery, which is of larger diameter than the part of the shell within which it is to fit. In other words, the Marshall lining differs from the Painter lining not only in the material of which it is composed, but in its shape or form.
While this is the way Marshall says in his patent that he accomplishes the object of his invention, and while this is the form of lining specifically described in his patent and illustrated in the drawings, some of the claims of the patent cover a broader invention.
These claims do not limit the invention to a paper lining having the novel structural feature we have described, but they cover broadly a paper lining as distinguished from a hard fiber lining, or a paper lining which is held in frictional engagement with the shell by the resiliency of the paper.
The question of invention, therefore, arising under the claims of the Marshall patent, assumes a double aspect: First, was there invention in making a lining of paper with this new structural feature? And, second, was there invention in making a lining of paper with no change in its form? In the first case we have to support invention, not only the substitution of paper for hard fiber, but also a change in the form of the lining, while in the latter case we have only the substitution of paper for hard fiber.
The complainant in the present suit has seen fit to rely upon claims 5 and 9 of the Marshall patent, and the only question before us is whether these claims are void for want of invention.
To decide this question we must first determine the invention which is covered by these claims. Are the claims, or either of them, limited to the particular form of paper lining described in the patent, or do they cover broadly a lining made of paper instead of hard fiber?
The answer to this question requires a somewhat full consideration of the specification and claims of the Marshall patent.
The important parts of the specification may be stated as follows:
It is desirable that the insulating linings for incandescent lamp sockets should be retained in the shell when the parts are taken apart in wiring or for other purposes, and at the same time should be so held in the shell that they may be quickly and readily removed when desired, as for the purpose of refinishing the shell.
The linings which have gone into practical use have heretofore been made of insulating fiber tubing, and have been shaped to fit the shell as perfectly as possible. It has been found impracticable to make these linings fit the shell with just the requisite closeness to prevent the linings falling out, and still allow the ready insertion and removal of the linings. Moreover, if a lining under certain conditions properly fitted the shell, it would not do so under varying conditions as to moisture and temperature. The danger of these linings dropping out has been a recognized defect, and attempts to remedy this defect have not led to satisfying results.
The object of this invention is to provide a lining...
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