Sutton v. Wentworth

• Decision Date: 19 December 1917
• Docket Number: 1291.
• Citation: 247 F. 493
• Parties: SUTTON et al. v. WENTWORTH.
• Court: U.S. Court of Appeals — First Circuit

247 F. 493

SUTTON et al. v. WENTWORTH.

No. 1291.

United States Court of Appeals, First Circuit.

December 19, 1917

A. S Pattison, of Washington, D.C., for appellants.

Odin Roberts, of New York City (Roberts, Roberts & Cushman, of Boston, Mass., on the brief), for appellee.

Before BINGHAM, Circuit Judge, and ALDRICH and BROWN, District Judges.

BINGHAM Circuit Judge.

This bill in equity was brought under section 4915 of the Revised Statutes (8 U.S. Compiled Statutes 1916, Sec. 9460), and was filed in the District Court October 21, 1914. In it the plaintiffs allege: That before December 27, 1906, they had invented certain new and useful improvements in electrostatic separators and in the method of separating differentiated particles of comminuted material. That on or about the 27th day of December, 1906, they applied to the Commissioner of Patents of the United States for a patent thereon, and as defined in the following claim:

'The method of separating differentiated particles of comminuted material, which consists in passing them through an electrostatic field in contact with an electrode surface directing upon a part of the electrode surface a diffused spray discharge, and shielding another part of said surface by intercepting a portion of the effective spray discharge to allow a separation of the differentiated particles in accordance with the nature of their differentiations.'

That on or about July 14, 1909 (July 25, 1911), their application was adjudged by the Commissioner of Patents to interfere with the pending application of the defendant, Henry A. Wentworth, which contained the claim above stated, 'as will more fully appear from the application papers of the said Henry A. Wentworth on file in the Patent Office of the United States, and a duly authenticated copy of which is ready here in court to be produced. ' That the Commissioner of Patents, on or about July 14, 1909 (July 25, 1911), declared interference No. 33,578 between the plaintiffs' application and that of Wentworth, including therein the subject-matter above stated. That the plaintiffs duly prosecuted their application and claim. That the proofs of record disclose that said Wentworth did not conceive his invention until subsequent to the filing date of the plaintiffs' application. That the examiner of interferences erroneously awarded priority of invention to Wentworth. That on appeal to the examiners in chief the decision of the examiner of interferences was reversed and priority of invention was awarded to the plaintiffs. That upon appeal by Wentworth to the Commissioner of Patents the decision of the examiners in chief was erroneously reversed, and priority of invention awarded to Wentworth. That upon the plaintiffs' appeal to the Court of Appeals for the District of Columbia the decision of the Commissioner of Patents was erroneously affirmed, and priority of invention awarded to Wentworth, and the above claim was finally rejected by the Patent Office, 'as will more fully appear in the duly authenticated copies of said application and of said proceedings in the Patent Office of the said United States and of the proceedings in the Court of Appeals for the District of Columbia ready here in court to be produced. ' That the Commissioner of Patents has refused, and still refuses, to grant letters patent upon the plaintiffs' application for the invention defined in the above-recited claim. That the plaintiffs have no adequate relief except under this bill brought in accordance with section 4915, and pray that it be adjudged: (1) That they are the first, true, and original inventors; (2) that they are entitled to receive letters patent of the United States for their said invention as specified in the before-recited claim of their application; (3) that letters patent of the United States therefore be issued to them; and (4) that they be awarded such other and further relief as the circumstances of the case may require.

On December 7, 1914, the defendant filed a motion that the plaintiffs be required to file certified copies of certain specified documents, some of which they had offered profert of in their bill of complaint, and, on April 5, 1916, under order of the court, they filed certified copies of the required documents, being all the papers in an interference No. 30,637, declared July 20, 1909, and in the interference No. 33,578, declared July 25, 1911, together with all papers in the Patent Office filed in the plaintiffs' application down to the date of the filing of the bill, and in the file on Wentworth's application.

On May 8, 1916, the defendant moved to dismiss the bill on grounds, in substance, as follows:

1. That the judgment of the United States Patent Office refusing the patent to the plaintiffs was by an inferior tribunal with respect to which this proceeding does not lie, and was acquiesced in by the plaintiffs without appeal.

2. That said judgment was rendered more than one year prior to the filing of this bill, and became final June 7, 1911.

3. That the proceedings in the Patent Office and the Court of Appeals in interference No. 33,578 arose out of a mistake of law, but finally terminated in a judgment to the effect that the judgment of June 7, 1911, in interference No. 30,637, was conclusive against the plaintiffs.

4. That the plaintiffs have no right to a patent for the subject-matter stated in interference claim No. 33,578, because the subject-matter of that claim is not disclosed in their application.

The records produced from the Patent Office show that the date-- July 14, 1909-- in the two places where it appears in the bill of complaint was incorrectly stated; that interference No. 33,578, to which the allegations of the bill relate, was declared July 25, 1911, which fact would appear to have been overlooked in the opinion of the District Court.

The records also show that prior to interference No. 33,578 a previous interference No. 30,637 was declared July 20, 1909, on the respective applications of the parties, but upon a different claim, which reads as follows:

'The method of separating particles of comminuted material differentiated as to electrical conductivity, which consists in passing them through an electrostatic field in contact with an electrode surface, opposing the repellent effect of the electrode surface by directing thereon a diffused spray discharge, and shielding another part of said surface by intercepting a portion of the effective spray discharge, thus allowing the repelling effort on the shielded part of the surface to set free the more conductive particles, and thereafter separately collecting the differentiated components of the material.'

In interference No. 30,637, declared July 20, 1909, the record in the Patent Office discloses that Wentworth filed a motion before the primary examiner to dissolve the order of interference, on the ground that the plaintiffs' application did not disclose a machine performing the process of the claim then in issue, and stated therein that repulsion was the gist and vitality of the process under that claim. He admitted, however, that the apparatus disclosed in the plaintiffs' application 'would work in and according to the manner and process described in the Sutton et al. file,' and was a nonrepulsion or gravity separation process. But the primary examiner denied the motion, holding that the process of plaintiffs' application was separation by repulsion, and allowed the interference to stand.

When the matter of this interference issue came before the examiner of interferences, he held that the plaintiffs' application did not expressly disclose 'the invention in issue' nor indicate 'with any sufficient degree of clearness that Sutton et al. contemplated using the apparatus disclosed therein in a manner which would necessitate the practice of the method which constitutes said invention,' and, in describing the process of the plaintiffs' application, he said, 'When removed from the influence of the convective discharge, the large particles would be first released from the conveyor electrode, but not by repulsion, as they would drop therefrom as soon as the force of gravity exceeded the electrical attraction;' that, although the plaintiffs' machine could be made to operate in different ways by opening and closing certain electrical switches by which the conveyor electrode 2 might be connected either to the ground or to the negative terminal of the generator, it was clear that, if the conveyor electrode was grounded, its potential was zero, and it could not repel particles of material from its surface; that the operation would more nearly approach that of Wentworth if the conveyor electrode were connected with the negative terminal of the generator, and electrode 1 was connected continuously with the positive terminal; but that, even under such conditions, it was not at all necessary that in the operation of the machine Wentworth's method of repulsion should be practiced. He therefore held that the invention of the issue then in question was not patentable to the plaintiffs, because their application did not disclose separation by repulsion, and awarded priority to Wentworth.

On appeal to the examiners in chief, they affirmed the decision of the examiner of interferences, and awarded priority of invention to Wentworth, but suggested a claim embodying a method of separating differentiated particles of comminuted material, which still embodied a separation of the particles by repulsion. Wentworth asked for a rehearing, stating that whatever may be the actual operation of the plaintiffs' device there was no disclosure in their application of a separation of differentiated particles by repellent action. The petition for rehearing was granted, and...