Southern Implement Mfg. Co. v. McLemore, 21458.

• Decision Date: 16 August 1965
• Docket Number: No. 21458.,21458.
• Citation: 350 F.2d 244
• Parties: SOUTHERN IMPLEMENT MFG. CO., Inc. and George Partin, Appellants, v. Price C. McLEMORE, Appellee.
• Court: U.S. Court of Appeals — Fifth Circuit

350 F.2d 244 (1965)

SOUTHERN IMPLEMENT MFG. CO., Inc. and George Partin, Appellants, v. Price C. McLEMORE, Appellee.

No. 21458.

United States Court of Appeals Fifth Circuit.

August 16, 1965.

J. J. Breland, Sumner, Miss., Theodore R. Scott, Chicago, Ill., Breland & Whitten, Sumner, Miss., James P. Ryther, Chicago, Ill., for appellants.

Hugh P. Carter, Birmingham, Ala., Jack F. Dunbar, Clarksdale, Miss., Jennings, Carter & Thompson, Birmingham, Ala., Talbot, Sullivan & Dunbar, Clarksdale, Miss., of counsel, for appellee.

Before JONES and BROWN, Circuit Judges, and SHEEHY, District Judge.

JOHN R. BROWN, Circuit Judge:

Appealing from a decree sustaining the validity and infringement of patents 328¹ and 353,² the Infringers³ make two principal attacks. The first charges double patenting, the second prior public use or sale. We reject both and affirm.

The art involved is that of cultivation of growing plants, notably cotton, and other row crops by means of an intense flame. Willingly running the risk that our words will lack the precision of a patent claim and an effort to simplify into understandable terms will likely produce inaccuracies, we would describe this matter in these general terms. Up to this moment at least, the Patentee is officially credited with having first made the basic discovery of such a method followed subsequently by a series of discoveries as to apparatus. Destroying weeds by flame was nothing new. And considerable experimentation had gone on for the use of flames in destroying weeds in the cultivation of growing crops. The technique, however, was essentially to consume the weed by intense direct fire. Flame, in such a practice, had to be kept wholly away from the growing plants. This was done in various ways including, for example, as in one of the cited references,⁴ by metal shields extending from the ground up the plant stalk. Protecting the plant and destroying weeds between the rows, this method had no effect on the weeds growing in the crop row itself. As at least one inventor who had the now superfluous "flash of genius"⁵ from seeing a rotogravure picture of an Italian military tank with flame thrower about 1938, the Patentee's new concept was to subject both weed and growing plant alike to flame. This approach takes into account differences in size and structure of these growing things with the weeds dying from being seared, while the growing plant suffers only temporary damage. To accomplish this, it is necessary that the flame be intense, high temperature, flat and thin. And it must be directed downward only slightly from the horizontal from one side of the crop row through the crop row itself. If the flame is directed too high, it destroys the plant as it does the weed. If the angle of declination is too severe, the flame, striking the ground at or near the base of the stalk, causes the intense heat to be deflected upward with like destruction of the plant.

This method concept was the subject of No. 2,327,204 (see notes 1 and 6) issued August 17, 1943, after division. But there was a substantial problem in translating this method into practice. The problem was one of devising a suitable arrangement to permit burners capable of generating this directionally controlled flame to move continuously down the furrow on each side of the crop row at a proper height above the ground and distance from the plants. There were at least two complicating factors. One was the unavoidable changes in the elevation and conformation of the floor of the furrow. This meant that if elevation of the burner depended on the relative position of the main supporting wheels (such as that of the tractor), there was considerable risk of serious damage to the growing crop as the burner tip rose or fell above or below the required level. The second was the need for being able to raise the burners sufficiently to permit movement of the machine to and from the field and, more so, in making turnarounds at the row ends.

To solve — and successively better solve — these application problems was the object of the Patentee's several patents which are the core of this litigation. The first is 328, filed in 1940 following the division. However, before it was granted in 1946, two additional patents, filed in 1942 and 1943 respectively, were issued in 1945, and 353 was filed in 1945 though not granted until 1949.⁶ Since the Infringers' activities did not commence until after expiration in 1962 of RE 22803 and RE 22836, their validity is not immediately involved. But they are brought under close scrutiny since the Infringers urge that RE 836, if not also RE 803, is indistinguishable from 328 and 353 making either one or both of the latter void for double patenting.

To those not privy to the esoteric mysteries of this calling, there might be some wonderment why a system which moves no faster than the patent-issuing process allows the inescapable difficulties of patent law to be magnified by processing separate but nonetheless related applications at separate times and in separate ways as though none of the others existed.⁷ A likely explanation here as to 328 is that the Examiner — perhaps taking his cue from "the ant-like persistence of patent solicitors" made famous by Judge Learned Hand's observation⁸ — twice rejected critical proposed claims, was twice reviewed by the Board of Appeals and twice reversed. In any event during the six-year period of gestation for 328, the forerunners of RE 803 and RE 836 involving apparatus no less complicated came out in three and two years respectively.

Again, in a very rough way, we summarize the various disclosures broadly. In 328 the apparatus is essentially a part of a vehicle such as a tractor with the burners, in one proposed embodiment, being suspended vertically from each side of the tractor and in another from a transverse bar across the front of the tractor. However, these burners are wholly suspended from the vehicle having no contact with the ground (except accidentally). A substantial disadvantage is that this pretty well immobilizes the tractor for any other use. In RE 803 the fittings on the tractor become perhaps less permanently attached. The burners are affixed to vertical members suspended from a transverse bar at the front end of the tractor. Each has a small bracketed wheel and a plunger-type spring device so that the burner would rise and fall with changes in elevation of the furrow. In another embodiment, the vertical member is pivoted freely to the transverse bar. A lever arrangement permits the burners to be raised to an inoperative position. In RE 836 the design is essentially one for a flame cultivator to be attached temporarily for time of use to a standard tractor. It consists essentially of side pieces which are fastened to the tractor rear axle housing to form the bottom part. And top members inclined upward and held firmly in position by diagonal braces to which there is affixed the lever device for lifting the burners to an inoperative position. For the first time, the burners are mounted to vertical standards affixed to metal skids, the forward top ends of which are pivoted to pieces fastened to a transverse member in the rear of the tractor. Raising the burners to the inoperative position was accomplished by depressing a lever at the top of the frame (preferably by hydraulic power) which, by cables, lifted the trailing edge of the skids. This aim of a readily removable cultivator was a principal object in 353. It consists of an attachment frame with two sidearm portions to be fastened to the tractor frame and axle housing. To the rear of the tractor there is a horizontal draw shaft, sometimes called a rocker shaft, on which vertical draft arms are pivoted. The draft arms lead diagonally down to a pivoted connection with a metal skid. On each skid is a verticle standard to which a burner is mounted at adjustable heights. Each of the skids, pivoted on the draw shaft, rises and lowers freely as elevation of the furrow changes. The skid-burners are raised to inoperative position by rotating the transverse draw (rocker) shaft. There are lugs welded to this rocker shaft to which a transverse member is fixed. As the rocker shaft is rotated the transverse member strikes the bottom leading edge of the draft arms raising all of them in a vertical direction.

Whatever its patent significance, it is evident that 353 is the culmination of a series of practical improvements producing an apparatus which efficiently meets the problems through burners independently suspended, readily capable of adaptation to changes in the ground level, with sufficient leeway to permit side-wise movement to adapt to the contour of the furrow and a simple, effective means of raising the burners to an inoperative position.

The parties seem to differ slightly, if at all, on controlling legal principles. Double patenting is forbidden. But a single patent may be obtained for a single invention. Although co-pending applications of a single inventor (see note 6, supra) are not prior art as to each other, it is essential that each of the claims be patentably distinguishable. None may be identical. Stating it conversely, comparing claim by claim as between the several co-pending applications, patentable differences must exist. And, of course, in that process, it is proper to consider what is disclosed by the prior art. Application of Russell, 1956, 239 F.2d 387, 388, 44 C.C.P.A. 716; Application of Ockert, 1957, 245 F.2d 467, 469, 44 C.C.P.A. 1024; S. H. Kress & Co. v. Aghnides, 4 Cir., 1957, 246 F.2d 718, 726; Weatherhead Co. v. Drillmaster Supply Co., 7 Cir., 1955, 227 F.2d 98; Plax Corp. v. Precision Extruders, 3 Cir., 1957, 239 F.2d 792, 796; 1 Deller's Walker on Patents § 62 (2d ed., 1964); 2 Walker on Patents § 280, p. 1279 et seq. (Deller's ed. 1937).⁹ As a possible point of divergence, the Patentee urges the apparently accepted principle which recognizes validity, indeed...