Rice v. General Motors Corporation, Civ. A. No. 53-178.

• Decision Date: 29 March 1956
• Docket Number: Civ. A. No. 53-178.
• Citation: 140 F. Supp. 247
• Parties: Thomas C. RICE, v. GENERAL MOTORS CORPORATION.
• Court: U.S. District Court — District of Massachusetts

140 F. Supp. 247

Thomas C. RICE, v. GENERAL MOTORS CORPORATION.

Civ. A. No. 53-178.

United States District Court D. Massachusetts.

March 29, 1956.

Melvin R. Jenney, Robert J. Keating, Kenway, Jenney, Witter & Hildreth, Boston, Mass., for plaintiff.

Brinley M. Hall, Choate, Hall & Stewart, John L. Hall, Boston, Mass., Byerly, Townsend & Watson, C. Blake Townsend, New York City, for defendant.

FORD, District Judge.

This is an action for infringement of U. S. Patent No. 1,977,773, issued October 23, 1934 to plaintiff Rice, for a tappet valve clearance compensator. Only claim 9 of the patent is involved in the present action. Defendant moves for summary judgment holding claim 9 of the patent invalid.

In the construction of the train or gear by which motion is transmitted between the cam and the valve stem of an internal combustion engine it is necessary to provide a certain amount of clearance between the metal parts to allow for expansion when these parts become hot during operation of the engine. This means that when the engine is cold when first started, there is some play between the parts which would result in valve noise. The general idea of reducing this noise by interposing a small oil chamber somewhere in the valve train to take up this play between the metal parts is an old one. Cf. Bollee, U. S. Patent No. 1,062,580, issued May 27, 1913.

The Rice patent discloses a particular structure involving the insertion of such an oil chamber into a well known type of valve train, the object being to transfer the clearance in the operating mechanism to this oil cushion chamber, and also to prevent admission of air to this chamber, since when air, which is compressible, is admitted, the efficiency of the oil chamber as a cushion is reduced. Claim 9, which is directed particularly to this air exclusion feature, reads as follows:

9. The combination of an oil chamber, means by which the oil chamber drains oil out very slowly, said oil chamber having an oil inlet and means for conducting a stream of oil to flow over said inlet in a volume greatly exceeding the drainage from the chamber, whereby any air bubbles in the stream of oil are prevented from entering said chamber.

As shown in the figures and specifications of the patent, the Rice construction has a small oil chamber located in an oil valve body in the valve train. This chamber is closed at the bottom by a plunger provided with a packing ring. During operation a small amount of oil leaks out of the chamber past this ring. At the top of the oil chamber is a small hole which is closed by an oil valve inside the chamber. When this valve is open oil can enter the chamber through the hole from a V-shaped oil reservoir formed by the concave top of the oil valve body, the inlet hole being located at the point of the V.

Bearing on an adapter or extension at the top of the oil valve body is a push rod which connects this part of the mechanism to the rocker arm of the intake or exhaust valve stem of the engine. The mechanism is lubricated by oil which flows down the push rod and the adapter and then by way of two slanting passages in the collar at the bottom of the adapter to the oil reservoir. The principle upon which the device is said to operate is that the oil supply flowing down to the reservoir is greatly in excess of the small amount being drawn into the cushion chamber, so that there is an overflow of oil over the edge of the reservoir which carries off any air bubbles past the cushion chamber inlet, so that only pure oil flows into the chamber. This is the feature which, Rice says, embodies the claimed novelty of his invention so far as claim 9 is concerned.

It is apparent on the face of claim 9 that it is completely functional at the precise point of the claimed novelty. The only structural elements described, the oil chamber with means for draining out the oil slowly, and an oil inlet, are old in the art. Novelty, if any, is found only in the remaining words of the claim. While the claim speaks of "means" for conducting the stream of oil, the claim states no specific means for carrying out the function, but only describes the function itself, or at most the scientific principles upon which the result depends. It describes the claimed invention in terms of what it will do rather than by describing its physical characteristics or its part or arrangement in the claimed combination. It has long been held that a function or result or principle of science is not patentable. O'Reilly v. Morse, 15 How. 62, 56 U.S. 62, 14 L.Ed. 601. It has been pointed out that the vice in such descriptions is that if allowed they would extend the monopoly of the patentee beyond his actual invention to include all other means or devices by which the same function could be performed or the same result achieved. General Electric Co. v. Wabash Appliance Corp., 304 U.S. 364, 58 S.Ct. 899, 82 L.Ed. 1402. Rice's claim 9 is squarely analogous to the claim in Walker Patent No. 2,156,519 in which one element of the combination was described as "means associated with said pressure responsive device for tuning said receiving means to the frequency of echoes from the tubing collars of said tubing sections to clearly distinguish the echoes from said couplings from each other." Such a claim was held invalid in Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 8, 67 S.Ct. 6, 91 L. Ed. 3, for failure to make the "full, clear, concise, and exact" description of the alleged invention required by R.S. § 4888, 35 U.S.C.A. § 33.¹ Claim 9 of the Rice patent in suit must, therefore, be held to be invalid on its face as a purely functional claim.

A second ground for holding claim 9 invalid requires a consideration of the history of the Rice application as disclosed in the official Patent Office file wrapper. In the application as originally filed, dated September 3, 1929, the present claim 9 was not included, there was no mention of what was later added as an object of the invention, namely, the exclusion of air from the cushion chamber, and no description of the flow of oil through the reservoir past the inlet of the cushion chamber. In fact the oil flowing down the push rod was then described as collecting on the concave top of the oil chamber rather than flowing over it.

Amendments in May 1930 and March and September of 1931 did not mention this particular phase of the patent. On October 27, 1931 the specification was amended to add to the statement of the object of the invention the words "and to prevent the admission of the air to the cushion chamber and keep air out of it at all times." At the same time an amendment was added to the specification indicating that Rice's explanation as to how this was done was that the concave surface of the oil chamber formed a reservoir in which the oil collected not under pressure so that air in it was free to escape by gravity.

On October 26, 1932 an amendment added claim 19, which after amendment eventually became claim 9 as allowed. This contained the...