Power v. Mola Washing Mach. Co.

• Decision Date: 29 April 1931
• Docket Number: No. 9101.,9101.
• Citation: 49 F.2d 1009
• Parties: POWER et al. v. MOLA WASHING MACH. CO.
• Court: U.S. Court of Appeals — Eighth Circuit

49 F.2d 1009 (1931)

POWER et al. v. MOLA WASHING MACH. CO.

No. 9101.

Circuit Court of Appeals, Eighth Circuit.

April 29, 1931.

C. Paul Parker, of Chicago, Ill. (Lionel V. Tefft, of Peoria, Ill., and Francis C. Downey, of Kansas City, Mo., on the brief), for appellants.

Eugene A. Thompson, of Syracuse, N. Y. (Denison & Thompson, of Syracuse, N. Y., and Henry S. Conrad, of Kansas City, Mo., on the brief), for appellee.

Before BOOTH and GARDNER, Circuit Judges, and MUNGER, District Judge.

BOOTH, Circuit Judge.

This is a patent suit in the conventional form, the defenses being invalidity of the patent and noninfringement.

The trial court dismissed the bill on the ground of noninfringement, the validity of the patent not being passed upon.

The patent involved is No. 1,288,694, issued December 24, 1918, to Simon E. Schroeder and Charles W. Bird, entitled "Driving Mechanism for Operating Devices."

The specifications state:

"Our invention has particular application to combined washing and wringing devices, but as here presented has special relation to the positioning of the wringer relative to containers used in connection with doing of a family washing.

"Our invention consists of driving parts applied to operate a wringer mechanism interchangeably in different locations relative to containers in different positions upon supporting frame. Said driving connections being associated with independent wringer supports, but having a common driving means."

Claims 10 and 11 only are involved. Claim 10 reads as follows:

"10. In a device of the class described, in combination, a support, a vertical drive shaft in said support, provided with a seating member at its upper end formed for clutch engagement with an opposing member adapted to be positioned relative thereto at varying angles about the axes thereof; an operating mechanism including a horizontally disposed shaft provided with a gear thereon; a vertically disposed short shaft alinable with the vertical drive shaft provided with a gear at its upper end adapted to engage the horizontal shaft of the operating mechanism, and fashioned for detachable engagement with the clutch member of the drive shaft at various angles of placement about the axis of said drive shaft, and manually removable therefrom, and a sleeve member suitably connected to the operating mechanism and supporting said short shaft and fashioned for seating upon the seating member of the drive shaft, whereby the operating mechanism may be lifted from its connection with the drive shaft and positioned at various angles about the axis of the latter without the removal of parts or attaching means."

Claim 11 reads as follows:

"11. In a device of the class described, in combination, a vertical drive shaft, a combined seating and clutch member, at its upper end fashioned to seat and engage opposing members of an operating mechanism at various angles about the axis of the drive shaft, an operating mechanism including a horizontal shaft provided with a gear thereon, and means on the operating mechanism centered with respect to the drive shaft and seating member thereon, and adapted for detachable seating, and to establish driving connection between the seat and clutch members of the drive shaft and the gear of the horizontal shaft of the operating mechanism, but in a relation that will permit the operating mechanism to be lifted bodily from the seat and driving connection on the horizontal shaft and to be placed at varying angular positions about the axis of said driving shaft to establish driving connection at such varying angles thereabout."

The two main elements upon which the present suit turns relate to the support of the wringer in connection with the detachable driveshaft. They are thus stated in claim 10: "* * * A vertical drive shaft in said support, provided with a seating member at its upper end formed for clutch engagement with an opposing member adapted to be positioned relative thereto at varying angles about the axes thereof; * * * a sleeve member suitably connected to the operating mechanism and supporting said short shaft and fashioned for seating upon the seating member of the drive shaft * * *."

The patentee was well acquainted with the prior art covering wringers attached or attachable to washing machines.¹

It is thus apparent from the excerpts that swinging wringers were old in the art.

If further proof is needed, it is found in Cooling, No. 1,340,328; in Schroeder, No. 1,048,215; and in Winger, No. 1,070,761.

Detachable drive shafts were also old in the art. Greenlief, No. 1,082,745, discloses one; Wenzelmann, No. 1,118,980, discloses one; and the evidence shows that the Dodge and Zuill wringer, in use before the application for plaintiff's patent, also disclosed one.

We come then to the combination of the elements as described in claims 10 and 11. These claims were added in the Patent Office. They were both rejected on the reference Wenzelmann. The claims were then modified and were again rejected on the references Greenlief and Winger. They were again modified and applicant's attorney stated as follows: "The new claims 10 and 11 have been drawn with Greenlief cited in view, and also Winger. We have limited the claims to seating and seatable members and opposing clutch members, respectively on the drive shaft and the operating mechanism, the same centering with respect to the drive shaft. The Greenlief structure has never been marketed while applicant's structure has been marketed by the S. E. Schroeder Manufacturing Company quite extensively. The margin of invention between the Greenlief and applicant's structure may not be great, but there is a wide enough difference to serve to commercialize applicant's structure while that of Greenlief has never been on the market to this applicant's certain knowledge." (Italics ours.)

It is apparent that claims 10 and 11 were carefully and closely examined in the Patent Office, and allowed only when narrowed and limited to the form in which they now appear.

The same narrow construction must follow the claims after the patent is allowed.

In the case of Phoenix Caster Company v. Spiegel, 133 U. S. 360, at page 368, 10 S. Ct. 409, 412, 33 L. Ed. 663, the court said: "It is well settled that, where a patentee has modified his claim in obedience to the requirements of the patent office, he cannot have for it an extended construction which has been rejected by the patent office, and that, in a suit on his patent, his claim must be limited, where it is a combination of parts, to a combination of all the elements which he has included in his claim as necessarily constituting that combination."

In the case of Smith v. Magic City Kennel Club, 51 S. Ct. 291, 293, 75 L. Ed. ___, opinion February 25, 1931, the court said: "The case, in our opinion, thus calls for the application of the principle that where an applicant for a patent to cover a new combination is compelled by the rejection of his application by the Patent Office to narrow his claim by the introduction of a new element, he cannot after the issue of the patent broaden his claim by dropping the element which he was compelled to include in order to secure his patent. * * * The applicant having limited his claim by amendment and accepted a patent, brings himself within the rules that if the claim to a combination be restricted to specified elements, all must be regarded as material, and that limitations imposed by the inventor, especially such as were introduced into an application after it had been persistently rejected, must be strictly construed against the inventor and looked upon as disclaimers. * * * The patentee is thereafter estopped to claim the benefit of his rejected claim or such a construction of his amended claim as would be equivalent thereto."

To the same effect are Sargent v. Hall, etc., Co., 114 U. S. 63, 86, 5 S. Ct. 1021, 29 L. Ed. 67; Shepard v. Carrigan, 116 U. S. 593, 597, 6 S. Ct. 493, 29 L. Ed. 723; Morgan Envelope Co. v. Albany Paper Co., 152 U. S. 425, 429, 14 S. Ct. 627, 38 L. Ed. 500; Hubbell v. United States, 179 U. S. 77, 83, 21 S. Ct. 24, 45 L. Ed. 95; Weber Elec. Co. v. Freeman Elec. Co., 256 U. S. 668, 677, 41 S. Ct. 600, 65 L. Ed. 1162; D'Arcy Spring Co. v. Marshall, etc., Co. (C. C. A.) 259 F. 236; ...