Timken-Detroit Axle Co. v. Cleveland Steel Prod. Corp.

• Decision Date: 13 April 1945
• Docket Number: 9784.,No. 9783,9783
• Citation: 148 F.2d 267
• Parties: TIMKEN DETROIT AXLE CO. v. CLEVELAND STEEL PRODUCTS CORPORATION.
• Court: U.S. Court of Appeals — Sixth Circuit

148 F.2d 267 (1945)

TIMKEN DETROIT AXLE CO. v. CLEVELAND STEEL PRODUCTS CORPORATION.

Nos. 9783, 9784.

Circuit Court of Appeals, Sixth Circuit.

March 5, 1945.

As Amended on Denial of Rehearing April 13, 1945.

F. O. Richey, of Cleveland, Ohio (F. O. Richey, of Cleveland, Ohio, and Wm. A. Strauch, of Washington, D. C., Richey & Watts, of Cleveland, Ohio, and Strauch & Hoffman, of Washington, D. C., on the brief), for Timken Detroit Axle Co., appellant and cross-appellee.

Newton A. Burgess, of New York City (Evans & McCoy, of Cleveland, Ohio, and Newton A. Burgess and John F. Ryan, both of New York City, on the brief), for Cleveland Steel Products Corporation, appellee and cross-appellant.

Before HICKS, SIMONS, and ALLEN, Circuit Judges.

ALLEN, Circuit Judge.

The parties will be denominated here as they were in the District Court.

These appeals challenge a decree of the District Court which found invalid Powers patent 2,039,607, Wilson patent 2,094,764, and Powers patent 2,107,800, all relating to improvements in oil-burning furnaces. Plaintiff's predecessor, Timken-Silent Automatic Company, was assignee of the three patents, and assigned them to plaintiff. The District Court found that if any claim in suit was valid it was infringed, but concluded that each of the claims in suit was invalid for lack of patentable invention. The court also concluded that each of the patents in suit was invalid for want of adequate disclosure, as required by R.S. Sec. 4888, 35 U.S.C.A. § 33. In addition the court found:

"6. There was a problem and plaintiff made a contribution to the solution of the problem, an improvement in oil burners that was accepted by the public and had commercial success.

"7. Defendant took a temporary license under the patents in suit and paid some royalties to the plaintiff.

"8. Some of the features of the claimed inventions are disclosed in the Heath patent, some in the Bird patent, some in the Kolva patent, some in the Braun patent, some in Exhibit DXM, and some in Exhibit DXN, and were to the extent of such disclosure anticipated by such patents. * *

"10. The improvement over prior art was accomplished by substituting metal for ceramic material and making some adjustments of parts which are mere differences of undefined degree. It merely did better what had been done before."

The court also decided that the defendant owes the plaintiff royalties under a temporary license agreement, and allowed an accounting.

Plaintiff's principal contention is that because the court found that a contribution had been made to the art, the case must be reversed under the rules laid down in the recent case of Goodyear Tire & Rubber Co., Inc. v. Ray-O-Vac Co., 321 U.S. 275, 64 S.Ct. 593, 88 L.Ed. 721.

Powers patent 2,039,607, relates to liquid fuel burners of the rotary wall flame type wherein ignition and combustion take place around the outer periphery of the hearth adjacent to the wall of a combustion furnace. Among the stated objects are to reduce to a minimum the time elapsing between initial ignition and the obtaining of normal combustion conditions, and to enable the burner to properly consume a heavier and less costly fuel than has heretofore been practicable. The specification discloses that the invention consists principally in providing the hearth of such a burner with a peripheral ignition and combustion ring spaced away from the furnace wall and made of metal or other heat-conducting material. Four claims (12, 14, 17 and 18) are in issue. Claim 18, which is typical, reads as follows:

"In a liquid fuel burner of the wall flame type, a combustion chamber having a hearth and a wall extending around the periphery of said hearth, means for spraying oil toward the hearth periphery, a relatively thin combustion ring of material of high heat conductivity spaced inwardly from said wall and presenting a vaporizing face in the path of the sprayed fuel, and means for passing a current of air toward the top of the ring to produce a mixture of fuel and air for combustion in an annular zone extending from a locus above the top of the ring downwardly between said combustion ring and the peripheral wall, whereby the temperature of the vaporizing face will rapidly vary in accordance with any changes of temperature in the combustion zone."

We think the decree of the District Court, which held this patent invalid for want of adequate disclosure, must be affirmed.

The patent fails to comply with the requirements of Section 4888, R.S., Title 35, U.S.C., Section 33, 35 U.S.C.A. § 33, as to disclosure. The pertinent portion of the section reads as follows:

"Before any inventor or discoverer shall receive a patent for his invention or discovery he shall make application therefor, in writing, to the Commissioner of Patents, and shall file in the Patent Office a written description of the same, and of the manner and process of making, constructing, compounding, and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, construct, compound, and use the same; and in case of a machine, he shall explain the principle thereof, and the best mode in which he has contemplated applying that principle, so as to distinguish it from other inventions; and he shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery."

In General Electric Co. v. Wabash Appliance Corporation, 304 U.S. 364, 58 S.Ct. 899, 82 L.Ed. 1402, the Supreme Court held that it was not necessary under that record to inquire into the existence of invention or anticipation, for a claim which fails to make a disclosure sufficiently definite to satisfy the requirements of the statute is invalid on its face.

Powers, the inventor of patent 2,039,607, is chief engineer of plaintiff's oil burner division, and is plaintiff's principal expert witness. As testified by him, there were two essential elements of invention alleged to reside in patent 2,039,607: (1) The use of a metal combustion ring or rim rather than ceramic, and (2) the spacing of the metal rim away from the boiler wall.

The patent describes the rim as made of metal or other material that is a good heat conductor, and of "comparatively thin section"; as "comprising a thin fuel vaporizing wall of high heat conductivity," as "an upright sheet metal member," as "a heat resistant sheet metal combustion ring," and as "a relatively thin combustion ring of material of high heat conductivity." While in interference proceedings with reference to this patent Powers contended that the thinness of the rim is essential, and concedes this here, no dimensions of thinness are given in the patent. Experts for both parties testified that starting with a certain thickness which Powers estimated to be .025 of an inch, as the thickness was increased the claimed advantages of the structure would gradually disappear. Powers stated that at about three-eights to one-half inch there would be no advantage in the use of a metal rim over ceramic.

Plaintiff contends that the specification, since it designates the distance between the hearth and the upper part of the rim as approximately two inches, makes it possible for any mechanic to secure the dimensions of the rim by the simple use of a rule; but applying this method, the thickness of the rim is about .091, or over three times as much as the inventor has testified the rim should be.

Nor is the plaintiff aided by the fact that the specification states that the combustion ring is spaced three or four inches away from the wall of the combustion chamber. Assuming, as plaintiff would have us, that the drawings are made to scale, this dimension, if applied throughout, results in a rim about four to seven times as thick as the preferred thickness of .025 testified to by Powers. Since the thinness of the metal rim is essential and is not definitely limited either in the claims or in the specification, one skilled in the art would be compelled to experiment in order to determine the proper thickness of the part. But this is strong evidence that the requirements of Section 4888, R.S., have not been followed. Cf. Libby-Owens Glass Co. v. Celanese Corporation, 6 Cir., 135 F.2d 138.

The terms "high heat conductivity" and "good heat conductivity" are repeated seven times in the claims, and the necessity that the material in the rim have this quality is again emphasized by the phrase "metal or other heat conducting material" found in the specification. What degree of heat conductivity is intended is not specified. Powers admitted that different materials have very different heat conductivities. Copper, for instance, possesses about twenty times the heat conductivity of chromium steel, whereas chromium steel, in comparison with ceramic material, has a relatively high heat conductivity. Since these important elements of the claims have not been specifically defined, we conclude that the District Court correctly held that proper disclosure has not been made under the statute. General Electric Co. v. Wabash Appliance Corporation, supra, 304 U.S. 364 at page 369, 58 S.Ct. 599, 82 L. Ed. 1402. Certainly the patentee here did not give any precise description of the new characteristic for which protection was sought.

If we are wrong in concluding that the patentee failed in his disclosure, we affirm the decree of the District Court as to the claims in suit (Nos. 12, 14, 17 and 18) for other infirmities in patentability.

The patent involves nothing but the substitution of one material, metal, for another, namely, ceramic. It was Powers' first conception of his invention that he was substituting a metal hearth tile for the refractory hearth tile then in use, and no other improvement was relied on. In the first entry in his notebook on February 23, 1932, he stated, "Continuing work on...