Tool Research and Engineering Corp. v. Honcor Corp.

• Decision Date: 08 November 1966
• Docket Number: No. 20002.,20002.
• Citation: 367 F.2d 449
• Parties: TOOL RESEARCH AND ENGINEERING CORPORATION, Appellant, v. HONCOR CORPORATION, Appellee.
• Court: U.S. Court of Appeals — Ninth Circuit

367 F.2d 449 (1966)

TOOL RESEARCH AND ENGINEERING CORPORATION, Appellant, v. HONCOR CORPORATION, Appellee.

No. 20002.

United States Court of Appeals Ninth Circuit.

September 29, 1966.

Rehearing Decided November 8, 1966.

Thomas P. Mahoney, Robert D. Hornbaker, Mahoney, Halbert & Hornbaker, Los Angeles, Cal., for appellant.

Wm. Douglas Sellers, Richard D. Sellers, Pasadena, Cal., for appellee.

Before JERTBERG and ELY, Circuit Judges, and SMITH, District Judge.

RUSSELL E. SMITH, District Judge:

Plaintiff¹ appeals from a judgment holding invalid J. E. Green et al. Patent No. 2,975,263, a patent on a method of making metallic honeycomb core. The purpose of the core is to maintain the surface sheets of panels used in aircraft and missiles in a spaced relationship with each other. The district court held that the prior art did not teach plaintiff's claimed method but that by reason of the plaintiff's sales of honeycomb core the rights to a patent on the process were lost under Section 102(b), Title 35 U.S.C.²

All the questions in this appeal revolve around two methods of producing honeycomb core — the flat-pack method and the preformed or pre-expanded method.

Honeycomb core produced by either method looks like this:

The text of the application for the patent, filed July 6, 1954, was almost exclusively devoted to the flat-pack method and described a process which appellant's brief fairly summarizes as follows:³

"A first set of flat electrodes or fingers is placed on the top of the table and a flat sheet of stainless steel foil is placed over the first set of fingers. The first set of fingers is connected to a welding transformer. The fingers resemble a comb, and a similar second set of flat fingers is placed over the first sheet of foil with the fingers of the second set located in between the fingers of the first set of fingers. A second flat sheet of stainless steel foil was then placed over the second set of fingers and a welding gun connected at the other side of the transformer and incorporating a welding roller, was rolled across the electrodes or fingers of the lower set of fingers to push the second sheet into contact and then weld the two sheets of foil to each other at adjacent points.

The subsequent steps of the flat-pack method entailed the removal of the lower set of electrodes and its placement on the upper welded sheet of foil and the disposition of successive sheets of foil on the uppermost electrode. The successive sheets were then welded by the use of the welding gun. After the welding was completed, the pack of welded foil was expanded to form the cells of the honeycomb core."

Except that Figure 6 (Figure 6 of the patent application) shown above depicts the core produced by either method (the pins 35 would not be shown in a drawing relating to the preform method), the drawings in the patent relate solely to the flat-pack method and illustrate it as follows Figure 3 (Figure 3 of the patent application) shows the flat foil (No. 16), the fingers (No. 21), the welding gun (No. 28) and the seam welds (No. 17). The drawings here copied do not show it, but the fingers are inter-connected to form what is referred to as a comb. It is clear from the text and the drawings that the structure must be expanded after the welding. This is explained in the patent application:

The final step is to expand the shaped structure. As indicated in Figure 6, this is accomplished by engaging the lowermost sheet (16) with stationary pegs or pins (35) and exerting a uniform pull on the uppermost sheet (16) to produce the structure shown. The expanded core is then utilized in the usual manner, usually being provided with skin elements (not shown) to form the desired sandwich structure.⁴

The only reference in the original application to the preformed method was this:

Additionally, core in the already expanded condition has been produced in accordance with said method. Here, however, the sheets were pre-formed and the comb fingers were of square configuration.⁵

After three years of the usual sparring around in the patent office, plaintiff, in June, 1957, cancelled all claims which at that time remained in the application, and for the purpose of interference copied two claims from the previously granted Wasilisin Patent No. 2,780,716. The effect of this was to abandon all claims relating to the flat-pack method and to rely entirely upon a method using pre-formed foil.

Claim No. 1 of the plaintiff's patent as finally allowed discloses this method and is as follows:

The method of making seam-welded honeycomb core comprising the steps of placing a section of corrugated metal foil on a set of spaced, substantially horizontally disposed fingers of electrically conductive material, so that the lower portions of the corrugations extend down between the fingers while the upper portions of the corrugations rest upon the fingers, placing a second set of fingers in the lower portions of said section, placing a second section of corrugated metal foil on said second set of fingers so that the lower portions of said second section are in alignment with and contacting the upper portions of the first-mentioned section, placing an electrode in at least one lower portion of said second section of foil at a location directly above at least one of the fingers of the first-mentioned set, moving said electrode along said lower portion substantially in alignment with the longitudinal axis of the respective finger of said first-mentioned set while passing electric current between said electrode and said finger through both sections of foil whereby to seam-weld abutting portions of said first and second sections together.

The claims copied from Wasilisin were held to be prior to Wasilisin by the Board of Patent Interference.

That there are differences in the two methods of producing honeycomb core is irrefragable. The one method uses flat foil, employs relatively flat fingers, requires pressure from the welding wheel to bend an upper foil to meet a lower one, and requires a mechanical step of expansion. The other method uses pre-corrugated foil, square fingers, requires no pressure to bring the area to be welded together, and eliminates the expansion step. The pre-formed method lends itself more readily to automation and produces a more uniform core.

The District Court concluded that the Green patent 2,975,263 was invalid because directed to a subject matter in public use more than one year prior to the filing of the application. This conclusion was based on these findings:

XI.

The "said method" using flat material and known as the "flat-pack method" was in public use in 1952 and early 1953, more than one year prior to the filing of Green \'263 on July 6, 1954.

XII.

The Foster plaintiff\'s predecessor sales of core made by "said method" were without limitation as to secrecy, or otherwise, and without any obligation on the part of the buyer to report to Foster upon what had been done with the core purchased.

XIII.

There was no change or experimentation in "said method" in the making of core using flat material after 1952, and the core made and sold was by a method in a perfected state.

There is sufficient evidence to support Findings Nos. XII and XIII and Finding No. XI to the extent that that finding relates to the flat-pack method. There were no sales of core produced by the pre-formed method made more than one year prior to the filing date of July 6, 1954.

The record fairly shows that during the period of 1952, 1953 and 1954 the use of welded stainless steel honeycomb core was relatively new. Major aircraft producers were testing it and experimenting with machines to produce it. During this period standards were being developed for the core. Plaintiff using the flat-pack method prior to June, 1953 produced and filled at least four separate orders for core. The money value of the core definitely shown to have been sold was not great, somewhere between five and six hundred dollars. Some core produced by the flat-pack method was given away. It is probable that most, if not all, of the core sold and given away was used by the purchasers for test and experimental purposes, but certainly plaintiff put no limitation on the use to be made of it. The sales of core were sufficient to put the flat-pack method into public use and we cannot say on the record that the District Court erred in not finding the use experimental.

Having in mind the differences in material used, the steps of production, the adaptability to automation, and the finished product, did the sales of the core produced by the flat-pack method put the pre-formed method in public use? The guide...