NO Nelson Mfg. Co. v. FE Myers & Bro. Co.

• Decision Date: 04 April 1928
• Docket Number: No. 4921.,4921.
• Citation: 25 F.2d 659
• Parties: N. O. NELSON MFG. CO. v. F. E. MYERS & BRO. CO.
• Court: U.S. Court of Appeals — Sixth Circuit

25 F.2d 659 (1928)

N. O. NELSON MFG. CO. v. F. E. MYERS & BRO. CO.

No. 4921.

Circuit Court of Appeals, Sixth Circuit.

April 4, 1928.

Charles A. Brown, of Chicago, Ill. (John L. Jackson, of Chicago, Ill., on the brief), for appellant.

H. A. Toulmin, of Dayton, Ohio (H. A. Toulmin, Jr., of Dayton, Ohio, on the brief), for appellee.

Before DENISON, MOORMAN, and KNAPPEN, Circuit Judges.

KNAPPEN, Circuit Judge.

Suit for infringement of three United States patents relating to the pumping art, numbered, respectively, No. 1,385,141, July 19, 1921, No. 1,385,143, of same date, and No. 1,393,306, October 11, 1921 — all issued to P. A. Myers. As declared in the respective patents, the first and third relate to power-heads; the second to pumping apparatus. By due assignments, plaintiff appellee is the owner of all three patents. On final hearing the District Court held each patent valid and infringed.

In the art in question, the power-head is the structure, whether inclosed or open, in or on which is mounted mechanism for reciprocating the plunger rod or piston of a pump for raising water or other liquid from a well. The pump-head is the upper end of the pump cylinder through which the water is so raised to the surface. It also provides the outlet or discharge.

The objects of the invention of the first patent as stated in the specification (but not entirely in the same order) are to provide: (a) An improved power-head and pumping apparatus of simplified construction which will be more economical and effective in construction and operation; (b) a combined power-head and pump-head of such design and construction that the pump-head and its co-operating mechanism may be mounted relative to the power-head and removed therefrom for repairs or adjustments without requiring change in the position of the power-head or its actuating mechanism; (c) an improved gear casing, having a driving mechanism therein, in such a manner that assembling and disassembling of the parts may be quickly and conveniently effected, the parts being reduced in number and simplified as to construction; (d) a power-head having improved means for self-oiling that will be positive and constant in the distribution of oil to the various parts of the mechanism requiring lubrication. By the construction shown in the specification, the self-oiling feature is declared to be not merely a convenience or labor-saving provision in the operation of the apparatus, but a decided feature of economy in operation, by reason of the effecting of large saving in power and a material reduction of wear of the mechanism. There is also shown a type of construction designed to prevent freezing — applicable to conditions of low temperature. Neither the lubricating nor the nonfreezing features are involved here. The claims of the first patent all relate to pumping apparatus.

The second patent (No. 1,385,143) has for its stated particular object the providing of a combined liquid pumping apparatus and air-pressure pump, whereby the liquid will be pumped and the air pressure in the air tank at the same time charged and maintained, so that the liquid will be discharged from the service pipes under air pressure or combined air and water pressure.

The invention of the third patent relates to a type of oiling mechanism used in conjunction with the power-head of the type shown in the two earlier patents here involved, applications for which were copending. The inventions of the three patents were capable of conjoint use, and are all involved in plaintiff's commercial structure. As respects each of the three patents, defendant denies both validity and infringement.¹

1. The claims of the first patent in suit (No. 1,385,141) are the fourth, sixth, and seventh, which we print in the margin.²

Defendant contends that each of these claims must be construed as calling for a detachable securing of the pump-head against a vertical face of the power-head casing; and thus that defendant does not infringe these claims, because in its construction the power-head is not secured to a vertical face of the power-head casing, but underlies and is secured to the base of that casing, against which it bears in a horizontal plane, thus making it necessary to the removal of the pump-head either to remove the power-head casing from it, or to drop the pump-head down and move it from under the base of the power-head.

In the Patent Office, present claims 4, 5, 6, and 7 (and some others) were rejected as not defining a patentable difference over Shorb, No. 1,303,975, May 20, 1919. The Examiner said: "It is believed that by amending the claims to bring out the fact that the pump-head is detachably and directly connected with the power casing along a vertical plane,³ as distinguished from the horizontal connection shown in Shorb, such amended claims would probably be allowed."

Claims 4, 6, and 7 were then amended by inserting the words in black-face type as already printed herein. Later, however, claims 7 and 8 were rejected, as not distinguishable from Shorb, the Examiner saying: "The claims call for a `substantially vertical pump.' Such a pump is shown in the reference." Claim 7 was then amended by inserting "mounted in the casing and" after the words "vertical reciprocating member," substituting "by such shaft and gearing" for the word "thereby" (which had followed "vertical reciprocating member operated"), and by striking out "all mounted in said casing," which words were no longer necessary in view of the changes already named. By letter accompanying the amendment, applicant's attorneys said: "The honorable Examiner's last action has been carefully considered. There seems to be a misapprehension on the part of the office in saying that these claims call for a substantially vertical pump in the sense that such is the supposed novel feature. This is not the case at all. Claim 7 calls for the power-head casing, and a vertical reciprocating member mounted in the casing. In the Shorb patent there is no vertical member mounted in the casing. This member in applicant's case is illustrated by the device 16, which is wholly absent from the Shorb patent. And then the claims call for operating this vertical member by the shaft and gearing, which are also stated as mounted within the casing. Then the claim calls for a vertical pump-head detachably secured to the casing. Again in the Shorb patent there is no pump-head secured to the casing. This pump-head is the instrumentality by which the pump member is supported; accordingly the Examiner will see that claim 7 as now explained is clearly allowable." Claim 8 was then rejected on Shorb and was canceled, the attorneys saying: "This claim has been canceled in view of the other claims in the case which appear to duly cover the invention, thus eliminating the necessity of any further issue on claim 8." The patent was then issued.

As to claims 4 and 6, we are constrained to conclude that the patentee's acquiescence in the requirement that the words "in a substantially vertical plane" be inserted, and the making of the amendments accordingly, estop plaintiff from denying that these claims are for a detachable securing of the pump-head against a vertical face of the power-head casing. Weber Elec. Co. v. Freeman Elec. Co., 256 U. S. 668, 677, 41 S. Ct. 600, 65 L. Ed. 1162; 20th Century Co. v. Taplin (C. C. A. 6) 181 F. 96; Elliott Mach. Co. v. Appeldoorn (C. C. A. 6) 267 F. 983, 987, and cases there cited; D'Arcy v. Marshall (C. C. A. 6) 259 F. 236; Arnold-Creager Co. v. Brick Co. (C. C. A. 6) 246 F. 441, 444, 445.

It results from these views that claims 4 and 6 are not infringed if defendant's structure has a horizontal as distinguished from plaintiff's vertical plane of connection between pump-head and power-head casing. Comparison of the pump-head section of defendant's device with the pump-head section of plaintiff's device shows that in defendant the upper and horizontal faces of the pump-head contact with, and are secured to, the lower and horizontal faces of the power-head casing, thus creating a horizontal connection. True, there were also vertical faces of the two parts (pump-head and power-head casing) which contact; but we are impressed that the defendant's plane of connection is substantially horizontal, and not "substantially vertical." In other words, the pump seems to us to lie essentially below the power-head casing, rather than at the side of it.

Claim 7, however, stands upon a different basis. The words "in a substantially vertical plane" are omitted, and presumably with purpose. They cannot be read into this claim. Cadillac Co. v. Austin (C. C. A. 6) 225 F. 983, 986. The words "substantially vertical pump-head" do not cover the omission stated. In our opinion, claim 7 is not void for lack of invention. Defendant cites a large number of patents in the prior art claimed to show anticipation. We think no one of them has such effect, and see no occasion to make specific comment upon any but the six mentioned by defendant's expert as in his opinion the best anticipations. To consider those references seriatim:

Of the Myers' patent, No. 1,244,534, issued to the same inventor, it would seem enough to say that we find nothing therein showing the prominent element of claim 7 we are considering, viz. a pump-head "detachably secured to said power-head casing."⁴

The specification of the patent in suit declares it "an object of the invention to provide a combined power-head and pump-head of such design and construction that the pump-head and its co-operating mechanism may be mounted relative to the power-head and removed therefrom for repairs or adjustments without requiring change in the position of the power-head or its actuating mechanism." We may look to the specification for construing the language and asserting the meaning of the claim. I. T. S. Co. v. Panther Co. (C. C. A. 1) 260 F. 934, 938, and cases cited. Prior patents are part of the prior art...