Wm. F. Goessling Box Co. v. Gumb

• Decision Date: 28 February 1917
• Docket Number: 4694.
• Citation: 241 F. 674
• Parties: WM. F. GOESSLING BOX CO. et al. v. GUMB et al.
• Court: U.S. Court of Appeals — Eighth Circuit

241 F. 674

WM. F. GOESSLING BOX CO. et al. v. GUMB et al.

No. 4694.

United States Court of Appeals, Eighth Circuit.

February 28, 1917

Alfred A. Eicks, of St. Louis, Mo., for appellants.

Paul Bakewell, of St. Louis, Mo., for appellees.

Before SANBORN and SMITH, Circuit Judges, and AMIDON, District Judge.

SANBORN Circuit Judge.

The appellants, who were the defendants below, complain of a decree of the District Court, to the effect that letters patent No. 970,237, issued to Gustav C. Kerkow on September 13, 1910, on an application filed on July 26, 1907, now owned by the plaintiffs below, are valid, that the defendants have infringed upon the rights of the plaintiffs secured thereby that the defendants are enjoined from further infringement and that they account for their profits and the damages to the plaintiffs. The claim of the patent well describes the combination it secures, and it reads in this way:

'A shipping case for bottled goods having in its end wall a slotlike handhole formed wholly therethrough, and a substantially rectangular concavoconvex dishlike cover composed of sheet material and attached to the inner face of the case, said cover being disposed with its concavity facing and wholly inclosing the hand-hole, and the upper edge of the cover being disposed sufficiently above the upper margin of the hand-hole to accommodate and protect the fingers of the hand when grasping the case, while at the same time shielding the contents of the box from the exterior.'

The object of the invention was to combine with shipping cases and especially the beer cases generally in use, which when loaded with bottled beer weigh from 100 to 150 pounds each, simple, inexpensive, and effectual hand-hole covers, readily attachable and detachable, which would exclude from the beer the light which causes it to become cloudy, to deteriorate in taste and flavor, and to acquire a noxious odor, which would exclude the dampness and cold, and would nevertheless permit the fingers of the hands to enter the beer cases and wrap around the inside of the upper edge of hand-holes, so that the operator could conveniently and securely grasp the upper border of these holes when lifting and handling the loaded cases. Kerkow stated in his specification that he was aware that the light had been excluded from reaching the bottles through the hand-holes by fastening flat boards or plates upon the inside of the cases over the hand-holes, but that this method of exclusion was impracticable and almost useless, because it allowed only the tips of the fingers to be inserted in the hand-holes to lift a weight of from 100 to 150 pounds. The cover he devised was a dishlike plate of concavo-convex form, having a marginal flange whereby the cover was attachable by any suitable means, such as by tacking or nailing it to the inside of the box in such a position as to provide a hollow cavity behind and above a hand-hole, so as to permit the fingers and knuckles of the hand to enter the hand-hole, and so as to permit the hand to obtain a secure grip as freely as if the cover were not attached. The specification of Kerkow also stated that his cover was desirably made of metal, preferably stamped from sheet metal, and that it may also be stamped or formed from papier-mache or other suitable material, that it was strong, durable, outlasting the cases, and easily attached and removed. His hand-hole cover went into such general commercial use that more than 6,200,000 of them were made and sold between April, 1907, and April, 1916.

It is contended that the combination claimed in Kerkow's patent was anticipated by patent No. 882,470, issued March 17, 1908, to Jetter & Drews, for an improvement in beer curtains; by patent No. 156,582, to Burton Mallory, issued November 3, 1874, for an improvement in mortise locks; by patent No. 254,899, issued to Benjamin S. Atwood on March 14, 1882, for improvements in shipping cases for jars and bottles; and by patent No. 710,789, issued to Augustus F. Mack on October 7, 1902, for an improvement in boxes.

At the time the patent to Jetter and Drews was offered in evidence, the fact that Kerkow made his invention prior to June, 1907, had been proved, and the parties to this suit had stipulated that his application for his patent was filed on July 26, 1907. In their answer the defendants had pleaded that this patent to Jetter & Drews had shown and described the invention of Kerkow long anterior to the time when he made it. The court sustained the objection to this patent, that it was incompetent, because it was not issued until March 17, 1908, more than a year after the date of Kerkow's invention, and more than seven months after his application for his patent, and this ruling is specified as error. The ruling was not erroneous, for this patent did not tend to prove that the device or combination of Kerkow had been patented or described in any printed publication before May, 1907, when he made his invention. Rev. Stat. Secs. 4886, 4920 (Comp. St. 1916, Secs. 9430, 9466); Bates v. Coe, 98 U.S. 31, 33, 34, 25 L.Ed. 68; Du Bois v. Kirk, 158 U.S. 58, 64, 15 Sup.Ct. 729, 39 L.Ed. 895; Anderson v. Collins, 122 F. 451, 457, 458, 58 C.C.A. 669, 675, 676.

The patent to Mallory was issued to secure the device of an opening through the face plate of a mortise lock in a sliding door into a chamber within the lock by means of which one could insert his finger through the face plate and slide the door. But the art of constructing finger holes and chambers in mortise locks in sliding doors, in order to enable the operator to slide them, is so remote from that of making hand-holes for beer boxes and shipping cases and covers for them, the circumstances under and the purposes for which the former are useful, the essential requirements of structures for those purposes and the functions they are to perform, are so radically different from the circumstances, the objects, the essential requirements, and the functions which condition the latter that the efficiency and practicability of finger holes and chambers in mortise locks in sliding doors would not be likely to suggest to the mind of a skilled mechanic their use or their efficiency as hand-holes in beer boxes to enable workmen to lift and handle weights of from 100 to 150 pounds, and the combination of covers for such holes to exclude the light from the beer. A mechanical device or combination, which was not designed by its maker, nor actually used, nor apparently adapted to perform the function of a patented device or combination, but which was discovered in a remote art, where it was conceived and used under radically different circumstances to perform another function, neither anticipates nor limits the scope of the patent. Ansonia Brass & Copper Co. v. Electrical Supply Co., 144 U.S. 11, 18, 12 Sup.Ct. 601, 36 L.Ed. 327; Topliff v. Topliff, 145 U.S. 156, 161, 12 Sup.Ct. 825, 36 L.Ed. 658; Potts v. Creager, 155 U.S. 597, 608, 15 Sup.Ct. 194, 39 L.Ed. 275; National Hollow Brake-Beam Co. v. Interchangeable Brake-Beam Co., 106 F. 693, 702, 45 C.C.A. 544, 553. The patent to Mallory falls far within this rule, and it is here dismissed.

Atwood stated, in the specification to his patent issued in 1882 for 'improvements in shipping cases for jars and bottles,' that the objects of his invention were (1) better to adapt the boxes for retaining the strips or bars constituting the racks for the bottles and to permit the strips to be easily removed; and (2) to strengthen the ends of the boxes and render them air-tight by locating covering pieces on the inside of the customary hand-holes or openings. Laying aside the method of construction of the sides of his boxes, which his specification describes in detail, each end was required to be made of an outside board, which covered the entire end of the box, except the hand-hole through it. This exterior board was so cut that the lower half of it was thicker than the upper half, so that it had on its inside a projected portion or shelf about half way from the bottom to the top of the box, in which vertical grooves were cut to receive the ends of longitudinal strips that formed a part of the rack for the bottles, and on which an interior board which covered the upper half of the exterior board rested. In this interior board a cavity was cut out opposite the hand-hole in the exterior board, extending also above the upper edge of the hand-hole, and an interior portion of the exterior board, just above the upper edge of the hand-hole was also cut out, so as to permit the hand to grasp firmly the upper edge of the hand-hole. The interior board was...