Vrooman v. Penhollow

• Decision Date: 04 May 1910
• Docket Number: 2,013.
• Citation: 179 F. 296
• Parties: VROOMAN et al. v. PENHOLLOW et al.
• Court: U.S. Court of Appeals — Sixth Circuit

179 F. 296

VROOMAN et al. v. PENHOLLOW et al.

No. 2,013.

United States Court of Appeals, Sixth Circuit.

May 4, 1910

[Copyrighted Material Omitted]

Obed C Billman (A. M. Allen, of counsel), for appellants.

A. L Lawrence, for appellees.

Before SEVERENS, WARRINGTON, and KNAPPEN, Circuit Judges.

SEVERENS Circuit Judge.

The bill in this cause complains of the infringement of two patents, one granted April 19, 1897, to Vrooman & Vrooman, numbered 580,742, and the other to Arba Vrooman (who was one of the patentees in the former patent), dated June 18, 1901, and numbered 676,549. The patentee assigned a one-half interest in this patent to the other Vrooman. The patent of 1897 was for an 'onion topper.' The patent of 1901 was for a 'vegetable topping machine.' The machines, which were the subjects of these patents both related to the same art, and were designed to remove the tops from onions and other vegetables of similar forms, and both possessed similar characteristics.

The machine patented in 1897 was for a combination of elements, and consisted of a long inclined trough supported by a frame and extending downward from the hopper containing the onions to the exit where the onions were delivered topped. This trough was made of two straight flaring sides, opening at the top and converging at the bottom, in cross-section like the letter V. The lower edges did not meet, but there was left a long slot along the whole length of the trough through which the tops of the onions, as they rolled down the trough, would pass out of the trough in such a manner that they would be gripped and removed by the rollers next to be described.

Below this trough and of the same length with it and running parallel therewith and secured on the same frame with the trough were located two parallel rollers placed quite close together and turning over toward each other when in operation. The space between the rollers was arranged in such near proximity to the slot at the bottom of the trough that the protruding tops of the onions would be engaged by the rollers and would be pinched and pulled off. The onions after being disengaged from their tops would go on to their destination. The minor details of construction are not now important. This machine was the first of its kind adapted to perform the work of topping vegetables. It is claimed by the inventors to have been a pioneer in the art. This claim is denied by the defendants, who insist that it was merely the extension of older inventions of machines intended for a like purpose and they instance threshing machines, machines for husking corn, and machines for stripping grains from their vines, as peas and beans. On account of the existence of such machines, the court below was moved to think that the Vrooman machine had no claim to be ranked as a pioneer, but, on the contrary, was one standing on narrow ground. In this the court seems to have followed the idea of the examiner in the Patent Office, where the patentees had much trouble from references to husking machines and the like. We must say, in passing, that the classification of such machines as are here referred to with an onion topping machine seems to us a rather distant call. For there are few points of resemblance. But it is not worth while to spend much time in fixing the rank or classification of the machine. Whether an invention be a pioneer, or, being of small importance, is ranked at the foot of the line, the rule is that each shall be judged on its own merits; that is to say, according to the advance it has made in novelty and utility beyond the former art. McSherry Mfg. Co. v. Dowagiac Mfg. Co., 101 F. 716, 41 C.C.A. 627; Penfield v. Chambers Bros. Co., 92 F. 639, 34 C.C.A. 579; Paper Bag Patent Case, 210 U.S. 405, 28 Sup.Ct. 748, 52 L.Ed. 1122. And in its own peculiar field it is not upon this record to be denied that this invention of the Vroomans' was the first, and for that reason and because it has proved useful to the public should be dealt with as one standing at the head of its line and entitled to be protected accordingly. But assuming all this to be so, in the absence of further defense, it is still contended with confidence that the pretensions made for this invention by the Vroomans were shorn away by the proceedings on their application at the Patent Office, to the extent that the patent is narrowed to a combination of the specially described elements of claim 5, which is the one mainly relied upon by the complainant at the hearing in this court. Claim 5 reads as follows:

'In a machine for topping vegetables a frame having two parallel rollers engaging the tops to pull them from the vegetables, and a trough running over the rollers, the trough having a longitudinal opening in its lower portion leading directly to the space between the rollers by which trough the vegetables are held so that only their tops may engage the rollers, substantially as described.' In this connection, we exhibit Figs. 1 and 2 of the drawings:

(Image Omitted)

Fig. 2 is a cross-section of Fig. 1 on the line 2, 2. In Fig. 2 it is seen that the onions rest in the trough, and the tops of the onions are presented vertically downward therefrom into the space between the rollers and are engaged by the latter in that position; while in Fig. 1 the onions are resting partly on roller 21, which is the right-hand roller in Fig. 2. The left-hand roller, 20 of Fig. 2, is not shown in Fig. 1. It could not be without impairing the view of roller 21. The significance of what is shown by Fig. 1 will appear later. The defendants contend that claim 5 is limited to a trough which performs the whole function of supporting the onions and delivering the onion tops to the rollers, with which the onion bulbs do not come in contact. This is a vital matter for the defendants. For the defendants' machine is substantially a facsimile of the complainants' in all other respects than this. A cross-section of it is shown by Fig. 2 of an exhibit which is admitted to be a correct representation:

(Image Omitted)

One round roller is shown, 4. 12 is not round, but is a revolving bar with sharp plates set out from the corners. The sharp plates almost touch the opposite roller. Both roll over toward each other, and the onion top is detached in like manner as in Vroomans' 1897 patent, except that it is cut off instead of being pinched off. This may be an improvement; but it is only an improvement, taken from the Vrooman patent of 1901, as we shall presently see. It is also seen from the above Fig. 2, just shown, that a part of the surface of the roller, 4, supplies the place of the bottom of the trough.

The onions coming down the trough plates 6, 7, and on the roller, 4, protrude their tops through the open space between the roller, 4, and the lower edge of the plate, 7, and become engaged between the roller, 4, and the sharp-edged plates of 12 and are cut off. These conditions establish the necessity upon the defendants of showing that the complainants' patent of 1897 does not cover a form of construction in which the onions come in contact with the rollers. And to aid in this contention they urge that the word 'engage,' in the next to the last line of claim 5 of the patent, includes also the idea of 'coming in contact.' But this conclusion is refuted by several reasons. The words themselves are not synonymous. There may be contact without engagement which means in its mechanical sense a seizure, a laying hold of, an active prehension, and does not include mere contiguity. And in this patent the words are used to signify different things. In the following claim (6) the word 'contact' is used to signify another meaning than the word 'engage' in the fifth claim. Stress is laid upon the following paragraph in the specifications:

'It will be seen that the purpose of the trough is to prevent the rolls from engaging the onions. If the rolls engage the onions, the onions will be bruised and peeled, but by resting them in the trough the tops only are permitted to engage the rolls.'

But we think this does not aid the argument. It is the engagement of the onions between the rollers which is here meant. It is that which would bruise and peel the onions, and not the being carried along on a smooth roller so as to protrude their tops and be turned over into the opening, that would be likely to bruise and peel them. They have the same treatment in the Vrooman machine of 1901 and in the defendants'; and there does not appear to have been any trouble on that score. The gist of the controversy over the infringement of this patent depends upon this contention as to whether the patentees are limited to a form of construction which does not expose the onions to contact with the rollers or either of them. It is important to observe, in this connection, what has already been shown, that one of the forms shown in the drawings discloses the onions resting on, in contact with, a portion of the surface of one of the rollers.

We turn next to see whether the proceedings in the Patent Office require this limitation. In 1895 the Vroomans filed a caveat on their invention in the Patent Office in which they described their invention with a drawing to illustrate the form in which they proposed to embody it. They described a trough with an opening at the bottom and a pair of rollers 'adapted to engage the tops of onions or other vegetables, so as to pull the tops from the vegetables and deposit the said tops beneath the machine, while the vegetables themselves roll down and are delivered at the lower end of the machine. ' And they showed one form in which the bottom of the trough was wide and a roller supplied the bottom of the trough, and apparently conveyed the onions to one side for engaging the...