Western Elec. Co. v. Sperry Elec. Co.

• Decision Date: 02 October 1893
• Docket Number: 104.
• Citation: 58 F. 186
• Parties: WESTERN ELECTRIC CO. v. SPERRY ELECTRIC CO. et al.
• Court: U.S. Court of Appeals — Seventh Circuit

58 F. 186

WESTERN ELECTRIC CO. v. SPERRY ELECTRIC CO. et al.

No. 104.

United States Court of Appeals, Seventh Circuit.

October 2, 1893

Statement by WOODS, Circuit Judge:

The appellant, as assignee of the inventor, Charles E. Scribner to whom had been granted letters patent No. 420,109, brought this suit to enjoin infringement and to obtain an accounting. The respondents, not admitting that the patent was issued in due form of law, nor that the complainant was the sole and exclusive owner thereof, answered that the invention described was not new nor useful when the application for the patent was made; and that the inventor, Scribner, and the complainant 'actually abandoned the said alleged invention.' In respect to infringement the respondents allege 'that they have not since January 28, 1890,' (as charged in the bill,) 'or at any other time, * * * made, used, or sold any electric lamps embodying the invention described and claimed; * * * that since the 28th of January, 1890, they have-made certain electric arc lamps in accordance with and under and by virtue of the patent to Elmer A. Sperry, dated the 18th day of June, 1889, No 405,440, and the invention therein described and claimed.' The court below found and held that the application for the patent had been abandoned, before the letters were granted, by reason of the failure of the applicant to prosecute the same within two years after action thereon, as required by section 4894 of the Revised Statutes and dismissed the bill for want of equity. Counsel for the appellee insists that the record shows abandonment of the invention as well as of the application.

The facts pertinent to the question of abandonment are as follows: Scribner's application for the patent in suit was filed January 2, 1883. On the 25th of the same month the patent examiner wrote him, to the effect that the claims were rejected on references cited; and nothing further was done until the 26th of December, 1884, when Scribner's attorney wrote to the commissioner of patents, 'Please reconsider last official action,' etc., to which, on January 9, 1885, an examiner replied: 'Further action will be taken in this case when the requirements of office rule 67 have been complied with. No invention has been pointed out in this case over the references of record, and none is believed to exist. The last official action is repeated.' The next movement was made July 25, 1885, when the applicant proposed amended claims, and from that time there were communications, dated, respectively, August 13 1885, July 6, 9, and 16, October 13, 1886, August 10, 1887, and September 15, 1887; the last being to the effect that claims 2 and 3 as they then stood, were indefinite in form, and did not clearly distinguish the construction sought to be covered. To this the applicant made no response nor took other step in the matter until August 30, 1889, when he wrote to the commissioner in support of his claims, and in conclusion said: 'Applicant's attorney, being in doubt whether the action of September 15th, 1887, would be considered a final or second rejection, files this request for reconsideration, and asks that action be had thereon immediately, in order that the appeal may be perfected. If the office holds, however, that the action of September 15th, 1887, was a second action, this paper may be returned to applicant's attorney, and the appeal filed.' The necessary papers and money for the taking of an appeal accompanied the letter. On September 9, 1889, the examiner responded to the effect that the action of September 15, 1887, was of a purely formal character, the repetition of which would not warrant an appeal to the examiners in chief, and concluded by saying: 'As the action of September 15th, 1887, appears, on reconsideration, to have been well taken, it is now repeated, but the appeal filed cannot be entertained for the reasons above explained. Applicant's remedy is by a petition to the commissioner, as indicated.' On October 1, 1889, the same examiner declared the application abandoned, because there had not been proper action by the applicant within two years after September 15, 1887. The action of the office on that date having been upon the form of the case, by the last paragraph of rule 171, the applicant was required, as the examiner held, to treat the formal matter within two years; but instead of doing that he had requested a reconsideration, and at the same time filed an appeal to the examiners in chief, the rule of practice being that action upon the merits cannot be had until all formal objections have been disposed of. On October 29th ensuing this decision was overruled by a new examiner, meanwhile come into office, who, 'in view of the fact that a reconsideration of claims 2 and 3 was requested within the two-year limit after the action of Sept. 15, ' 87, (by which objection to their form was made,) and in view of the fact that such reconsideration was accorded, (as shown by the letter of Sept. 9th, '89, in which the examiner refuses to act upon the merits of the case and file the appeal, and repeats the formal objection,)' held that the ruling that the application had been abandoned was not justified, was made through oversight, and was therefore withdrawn. On December 12, 1889, the applicant presented an amended specification, and on January 28, 1890, the patent was issued to the appellant as the assignee of Scribner.

The drawing which accompanied the original application has not been changed, and the specification remains substantially the same as at first, except that by the amendment of December 12, 1889, the part in brackets was added. The specifications, claims and drawings of the patent are as follows:

'My invention herein set forth relates to electric arc lamps, in which a regulating magnet is attached rigidly to the frame of the lamp, and a suspending lifting magnet is employed, as hereinafter described and claimed. In lamps now in common use, including those in which the lifting magnet is wound differentially, one winding being a portion of the main circuit and the other a portion of a shunt around the arc, and also including those lamps like the Von Hefner Alteneck, (United States patent No. 243,341, June 21, 1881,) in which the lifting solenoid in the main circuit and the solenoid in the shunt of the arc act upon the same carbon rod, the current of the main circuit acts in opposition to the current of the shunt of the arc. In all these lamps the armature of the lifting magnet, in order to compensate or feed, moves away from the poles of said lifting magnet. This movement of the lifting armature away from the poles of its magnet, which produces the feed, is caused chiefly by the variations in the strength of the current of the shunt of the arc. As the strength of the current in the shunt of the arc increases, the armature of the lifting magnet moves away and causes the feed. The compensation for the inequalities of the current is caused chiefly by the variations of the strength of the current of the magnet in the main circuit. In my lamp, however, as herein described, the electro-magnet in the shunt of the are does not act in opposition to the electro-magnet in the main circuit. The strength of the lifting magnet is not changed, nor is the position of the armature of the lifting magnet changed relatively to the poles of said lifting magnet, by variation in the strength of the electro-magnet in the shunt of the arc.

'The accompanying drawing, which is illustrative of my invention, shows a front elevation of an electric arc lamp.

(Image Omitted) 'The circuit may be traced from hook, a, by wire, b, through the suspended lifting magnet, c, and thence to the carbon rod, d, and thence through the arc, c, and by wire, f, to hook, g. The regulating magnet, h, is included in the shunt of the arc, and attached rigidly to the frame, i, of the lamp, and controls the regulating mechanism of the lamp. The three pieces k, l, and m, pivoted as shown, form a kind of pivoted armature lever supporting the lifting magnet, c, the poles of which extend toward the lifting armature, n, that carried the usual friction clutch, o. The lifting armature, n, with its suitable movable supporting parts, is carried up and down with the lifting magnet. It should therefore not extend either above or below the poles of the lifting magnet. The two ends of the lifting armature come, preferably, opposite the centers, respectively, of the two poles, as shown. The armature, p, of the regulating magnet is mounted upon the pivoted armature lever. The frame is held suspended by means of the adjustable retractile spring, q. Armature, n, of the main-circuit magnet is mounted upon armature levers, n¹, pivoted to the frame of the lamp. The clutch, o, is suspended directly upon the lower one of these two pivoted levers upon which the armature, n, is mounted.

'The operation of my lamp, as thus described, is as follows: As soon as the circuit is closed, the armature, n, is raised by the lifting magnet, and the clinch, o, lifts the rod, thus separating the carbons, and establishing the arc, as shown. The action of the magnet, h, will at the same time draw upon its armature against the tension of spring, q. The spring, q must therefore be adjusted to sustain its armature lever and the parts it supports after the lifting magnet has raised the rod. The armature, n, will move as the magnet, c, moves. It has also a compensating motion up and down, as the strength of the magnet, c, increases and diminishes. As the resistance of the are increases, the regulating magnet becomes more strongly magnetized, and the armature, p, is drawn downward, and also piece, i, which carried the lifting magnet, c. The lifting armature, n, it is evident, will...