Strause Gas Iron Co. v. William M. Crane Co.

• Decision Date: 11 April 1916
• Docket Number: 144.
• Citation: 235 F. 126
• Parties: STRAUSE GAS IRON CO. v. WILLIAM M. CRANE CO.
• Court: U.S. Court of Appeals — Second Circuit

235 F. 126

STRAUSE GAS IRON CO. v. WILLIAM M. CRANE CO.

No. 144.

United States Court of Appeals, Second Circuit.

April 11, 1916

This is an appeal by each party from a decree in equity awarding an injunction upon a mechanical patent and dismissing the bill upon a design patent. The subject-matter of each patent is a gas sad iron, which can be kept heated by flexible attachment to an ordinary gas pipe. The mechanical patent, 948,773, was issued on February 8, 1910, to Spahr and Stichler, and contained seven claims, of which numbers 2 and 7 are as follows:

The patent in suit describes an iron with a burner suspended from a gas tube which runs into the handle, the handle and cover of the iron being hinged at the rear, so that the burner may be raised at one end for ignition. In the base of the iron which is thick, runs a chamber or deep longitudinal groove above, and parallel with, which the burner lies when in position. The burner is perforated with two lines of holes so arranged as to throw two series of jets upon the top of the base which flanks either side of the chamber. From the outside of the base a series of air inlet holes are driven from either side, normal to the line of the chamber, and leading into it, whose function is to draw air into the chamber and so up under the gas jets to supply them with a continuous feed of air. The products of combustion are carried off through vents at the top of the vertical sides of the iron. In the specifications nothing was said of the size of the vents or of their area as compared with that of the inlet air-holes. The figures showed three vents and five inlet air-holes; and joint area of the vents proves to be not very perceptively different from that of the holes, and only after the most careful measurement can the difference be ascertained.

The defendant relied upon noninfringement and invalidity. Upon the latter point he relied chiefly upon the British patent to Stichbury already cited, which showed a reversible gas sad iron, in which the vents in one operation served as the air intake holes in the reverse. The operativeness of this iron in practice was sharply contested at the trial, as well as the question whether it was intended to heat the surface in use by the gas jets or only the upper surface. The defendant's iron has its burner supported in the two ends of the vertical sides of the iron and is not suspended from the gas-supplying means at all. It is in other respects substantially like the plaintiff's iron.

The design patent, 42,443, is also for a sad iron, the infringement being a very near approximation to the design. The defenses are that the subjectmatter, being unbeautiful cannot be patented, and that in any case the art pressed too closely about the design to allow invention.

2. In a sad iron, a body having intake passages directly in the base thereof, said base having separated side walls, forming a chamber centrally between the separated side walls of said base, said passages leading to said chamber, and a suspended burner having jet openings deflected to the right and left to said walls, said chamber being between said jet openings whereby air is supplied to the inner sides of the flames produced at said jets.'

7. In a sad iron, a body, and a base therefor, said base being centrally separated forming side walls, there being a chamber centrally between the same, gas-supplying means, air intake passages directly in said base leading to said chamber, and a burner suspended from the gas-supplying means and having jet openings deflected right and left to said walls, said openings flanking the top of said chamber, whereby air is supplied from said chamber to the inner sides of the flames produced at said jets.'

On May 13, 1914, the assignee, who is the plaintiff here, feeling that the validity of the claims in question might be imperiled by the British patent to Stichbury, No. 3,474 of 1874, filed a disclaimer in the Patent Office reading as follows: 'To that part of said letters patent which is described in the second and seventh claims thereof, disclaiming the body described in said claims unless that body has the air escape openings further apart and larger in area than the inner ends of the oppositely located air inlet passages. ' It is upon claims 2 and 7 as so modified that this suit was brought.

Hans von Briesen, of New York City (Arthur von Briesen and Fred A. Klein, both of New York City, of counsel), for plaintiff.

William J. Dolan, and Rogers, Kennedy & Campbell, all of New York City (Odin Roberts, of Boston, Mass., and Donald Campbell, of New York City, of counsel), for defendant.

Before COXE and WARD, Circuit Judges, and LEARNED HAND, District judge.

LEARNED HAND, District Judge (after stating the facts as above).

Upon the mechanical patent we are for reversal, for two reasons First, because the claim is not infringed; and, second, because the disclaimer is invalid. The validity of the patent we do not consider.

We think the claims are not infringed because the use of the term 'suspended burner' in claim 2, and the more definite phrase 'a burner suspended from the gas supplying means' in claim 7, only included a burner which was held by the gas pipe. A careful scrutiny of the action in the Patent Office leaves us no doubt that this was the meaning attributed to the phrase by the examiner, and that it was only when the phrase with that meaning was inserted in the two claims in question that he would allow them over the patent to Nickerson, 406,943. Perhaps it was not necessary, in order to distinguish from Nickerson, that the examiner should have required the insertion of that element; but that was his purpose, and when the patentee consented to the insertion, under the well-settled rule, he accepted the imposed limitation and cannot disregard it now. It is therefore necessary to discuss in some detail what took place in the Patent Office, and for that purpose it is also necessary to take up claim 3.

When the application was originally presented the examiner, in the action of May 10, 1909, at once rejected claims 3, 4, and 5 upon the Nickerson patent. (We may leave out all discussion for the time being of claim 4, because, although the present claim 2 was substituted for it, it is so entirely changed as to leave no resemblance between the two.) Claims 3 and 5 however, became claims 1 and 3 of the patent, and with very little change; but for the purpose in question the history of claim 5 is the more important. The applicant on May 22, 1909, made one change in claim 5: He inserted at the end the words, 'a movable top carrying said burner and its supply tube. ' In other words, he inserted the limitation specifically that the burner must be carried by the...