Shipp v. Scott School Tp., Montgomery County, Ind., 4597.

• Decision Date: 18 February 1932
• Docket Number: No. 4597.,4597.
• Citation: 54 F.2d 1019
• Parties: SHIPP v. SCOTT SCHOOL TP., MONTGOMERY COUNTY, IND., et al.
• Court: U.S. Court of Appeals — Seventh Circuit

54 F.2d 1019 (1931)

SHIPP v. SCOTT SCHOOL TP., MONTGOMERY COUNTY, IND., et al.

No. 4597.

Circuit Court of Appeals, Seventh Circuit.

December 30, 1931.

Rehearing Denied February 18, 1932.

Herbert A. Minturn and Joseph A. Minturn, both of Indianapolis, Ind., for appellant.

Ernest W. Bradford, of Washington, D. C., and James E. Rocap, of Indianapolis, Ind., for appellees.

Before ALSCHULER, EVANS, and SPARKS, Circuit Judges.

EVANS, Circuit Judge.

Six claims of patent No. 1,711,814 to appellant, covering a radiator box base, were involved in the suit, which resulted in a decree for appellees. The district court found claim 9 noninfringed and the other claims invalid.

In disposing of the case, the court filed "specific findings of fact and conclusions of law." They well state the facts, and we quote therefrom:¹

Infringement turns upon the presence and effect of the words "channel bar of corrugated metal for each edge having a turned edge hooked to a respective one of said base edges." The specifications and the drawings both point to this separate element. The following is taken from the specifications: "The top longitudinal edge 22 of the base in front is set in or indented by an ogee curve 23, to form a recess for a channel bar 24, here shown as formed out of a strip of corrugated sheet metal having one edge bent and hooked over edge 22, and the opposite portion bent to form a channel 25."

Appellant's position is that a full range of equivalents includes a channel bar integral with the bottom wall of the box-base.

Generally speaking, the combination which appellant sought to cover by this patent was a box-base composed of two parts, the front and the back. Each part was in turn composed of two other parts, the upper and the lower parts, the lower part being referred to as the box-base and the upper, as the box. Connection of the two parts is by means of a slip joint. The slip joint was described in this claim as a separate element in this language: "a channel bar of corrugated metal for each edge having a turned edge hooked to a respective one of said edges." This use of the separate channel bar and its construction were stressed as the novel feature in the combination before the Patent Office. There, the applicant sought to distinguish his combination from the prior Bolinger patent and said: "The Bolinger patent shows slip-joints * * * as formed on the lower edges of the diffuser out of the material of the diffuser itself, whereas applicant's corresponding member * * * is formed out of a separate strip of metal and is attached to the base, the other edge up, in a permanent manner by spot welding. * * * This difference in construction secures several substantial advantages: First, it so stiffens and reenforces the edges of the base that they will stand shipment and handling without buckling * * *. This is important in the box base to maintain its shape so the flange * * * will always fit and also to hold the correct shape so the sheet metal of the diffuser can be bent true against it for assembly. Second, it reverses the channel so a cement with which the joints between the diffuser and box are sealed after assembly will not fall out; and, third, applicant's construction cheapens the cost of manufacture because his channel bars are made out of scrap metal that would otherwise be wasted."

The Examiner in the Patent Office concluded that notwithstanding these asserted differences the Bolinger patent prevented the allowance of the claim as originally presented. Applicant thereupon changed the claim so as to make the channel bar "of corrugated metal," and the claim as thus amended was then allowed. Whether the Patent Office was correct in its construction of the Bolinger patent is not of any significance so far as the question now before us is concerned. The Bolinger patent may, or may not, have anticipated the claim as originally presented. On the question of infringement, however, patentee must be held to the plain language of his claim, the construction of which is made clear by his contemporaneous explanation of its novel feature.

We agree with the district court in its conclusion that appellees' structure did not infringe claim 9.

The other five claims cover combinations with entirely different elements. Claim 1 is somewhat typical, and reads as follows: "A radiator box base having end members with half-round openings at their bottoms and having a bottom door opening in the rear half of the base, said base being in two parts divided longitudinally of the bottom at the front line of the door opening and obliquely from the door opening toward the middle of the half round openings and means for removably securing the parts in assembled position."

Appellees contend, and the court found, that these claims were invalid as not exhibiting invention in view of the prior art. Appellant argues that the court erroneously included in the prior art two patents issued to him. But we are not satisfied that the district judge reached his decision because of these two patents being considered as a part of said prior art. In fact, in his special findings he discussed numerous patents issued long prior to the patent in suit. We shall, however, first consider whether the two patents to appellant should be excluded in reaching our conclusion respecting the validity of these five claims.

The patent in suit was issued May 7, 1929, upon an application filed August 28, 1926. The two previous patents to Shipp, Nos. 1,565,294 and 1,575,651, were issued December 15, 1925, and March 9, 1926, respectively, upon applications filed September 15, 1924. They both cover housing construction for steam radiators, though one is called a reheating radiator housing. Neither patent included the claims covered by the patent in suit. However, both patents showed by drawings and specifications the novel elements which form the basis of the claims now under consideration.

It is not necessary to refer more particularly to the disclosures of these two patents because of our conclusion that they were not a part of the prior art. The question involving their...