Jorgensen v. Kingsland (83 F. Supp. 319, 1949)

TAMM, District Judge.

The plaintiffs bring this action under the provisions of Title 35 United States Code Annotated § 63, Revised Statutes, § 4915, for the purpose of compelling the defendant, the Commissioner of Patents, to issue to plaintiffs a patent for the subject matter of the plaintiffs’ application for patent, Serial No. 585510, as defined by Claims Nos. 102, 119, 120 and 124 hereinafter described.

Plaintiffs Clarence H. Jorgensen and Peter J. Jorgensen, the latter now deceased, on January 8, 1932, filed in the United States Patent Office an application for a patent; which application was given, in the Patent Office, Serial No. 585510. Plaintiff General Motors Corporation is owner by direct assignment from plaintiffs Jorgensen of the entire interest in the patent application. As will be set out hereafter, the Commissioner of Patents rejected the claims which are the subject matter of this suit.

Plaintiffs initiated the present action on June 5, 1947, with reference to Claims Nos. 102, 119 and 120 and filed a supplemental amended complaint covering Claim No. 124 on September 24, 1948, to compel the issuance to them of the patent they claim. The present litigation relates to the following claims which are set out hereafter verbatim under the numbers by which they have been previously identified:

Claim 102. “In a carburetor, means forming a mixing conduit, said conduit including an air inlet, a fuel inlet, and a mixture outlet, a manually operated valve for said conduit, a valve for controlling the flow through one of said inlets to enrich or lean out the fuel mixture discharged by said carburetor, a heat responsive device capable of operation independent of suction for operating said valve in accordance with the temperature to lean out the mixture upon an increase of temperature, and means for operating said valve to lean out said mixture upon an increase in suction in the carburetor, said last-named means including a suction conduit connected to a point in the mixing conduit posterior to said manually operated valve.”

Claim 119. “In a carburetor, means forming a mixing conduit, means forming a venturi in said mixing conduit, a main fuel nozzle discharging into said venturi, a throttle controlling the discharge of mixture from said carburetor, a second fuel nozzle discharging into said mixing conduit adjacent said throttle valve, a valve for controlling the admission of air to said conduit, said valve being movable toward open position by direct action or suction, suction controlled means operatively connected to said valve, a thermostat opera-tively connected to said valve and tending to close said valve with a force which decreases with increase in temperature, the connection between said thermostat and said valve permitting said thermostat to continue to move after the movement of the valve has been arrested.”

Claim 120. “In a carburetor, an induction passage having an air inlet, a valve controlling the air inlet, a throttle controlling the outlet of the induction passage, a pair of fuel nozzles discharging into the induction passage one discharging adjacent said throttle and the other discharging between said valve and said throttle, a bimetallic thermostat having an overrunning connection with said valve and adapted to close it when cold and to permit it to open when hot, a suction device connected to the induction passage posterior to the throttle and having a movable wall responsive to suction therein, said suction device including yielding means urging said wall in a direction opposite to the force exerted on it by suction, and a one-way actuating connection between the wall and the valve.”

Claim 124. “In a carburetor, means forming a mixing conduit, a choke valve controlling the admission of air to said mixing conduit, said choke valve having a part which is movable toward open position by direct action of suction, suction operated means for opening said choke valve a limited distance only, said suction operated means being constructed and arranged to permit a continuance of the opening of said choke valve after the cessation of movement of said suction operated means, and a heat responsive element connected to said choke valve to control the same in conjunction with said suction operated device.”

The record of the proceedings in the Patent Office relating to the patent claim of the present plaintiffs is a lengthy and involved one. The following Statement of Facts, agreed upon by counsel for both the plaintiffs and defendant, summarize the proceedings insofar as they are pertinent to the present case.

“On September 24th, 1935, three interferences were declared involving the application of Jorgensen et al., S.N. 585,510, filed January 8, 1932, involved in this action and the application of Ernest H. Shaff, S.N. 435,394, filed March 13, 1930 and now patent No. 2,365,910, granted December 26, 1944. These interferences were numbered 71,471, 71,472 and 71,473. The first two of these interferences involved Jorgensen et ah, Shaff and a plurality of other parties, while the third involved Jorgensen et ah, and Shaff only.

“On the same date, the application of Shaff was added in Interference 68,187, which had been declared March 30, 1934, and involved the aforesaid application of Jorgensen et ah and the applications of several other parties.

“The issues of the several interferences referred to above read as follows:

“Interference No. 68,187

“Count 1. In an internal combustion engine, a carburetor in which there is incorporated a choke valve which is so arranged that flow of air into the carburetor tends to open it, a passage connecting the carburetor with cylinders of the engine, an element actuated by variations in pressure within the passage, an element actuated by variations in temperature of the engine, means operatively interconnecting the first and second mentioned elements, and means operatively interconnecting the second mentioned element and the choke valve.

“Count 2. In an internal combustion engine, a carburetor in which there is incorporated a choke valve, a passage connecting the carburetor with the cylinders of the engine, an actuating element operatively connected to the choke valve, an element actuated by variations in pressure within the passage positively connected to the first mentioned element, and an element actuated by variations in temperature of the engine positively connected to the first mentioned element.

“Count 3. The invention claimed in count 2, in which the first mentioned element is resiliently connected to the choke valve.

“Interference No. 71,471

“Count 1. In an internal combustion engine, a carburetor in which there is incorporated a choke valve, a passage connecting the carburetor with cylinders of the engine, an element actuated by variations in temperature of the engine opera-tively connected to the choke valve, and an element actuated by variations in pressure within the passage resiliently connected to the choke valve.

“Interference No. 71,472

“Count 1. A control mechanism for an internal combustion engine carburetor having an unbalanced choke valve comprising, a spring for holding the valve closed to start the engine, vacuum controlled means for removing the tension of said spring from the valve and a thermostat for controlling the degree of opening of the valve as a function of temperature.

“Interference No. 71,473

“Count 1. In combination, an intake pipe, a carburetor connected thereto, an air valve for said carburetor, a pneumatic motor actuated by suction in the intake pipe, and a yielding thermostat forming a connection between said motor and said valve.

“Count 2. In an internal combustion engine having a carburetor and an air valve therefor, thermostatic means connected with said valve and biasing the latter for movement toward a position dependent upon the temperature thereof, a movable member against which said thermostatic means reacts in establishing said bias, and means responsive to starting of the engine for shifting said member while providing for the continued control of the valve by said thermostatic means.

“Motions to dissolve on the ground of non-patentability were made in Interferences 68,187, 71,471 and 71,472 and were several times denied, but ultimately granted by the Primary Examiner after a series of requests for reconsideration. Interference 71,473 was dissolved by the Primary Examiner on the ground that Shaff could not make the counts. Appeals were filed by the parties Jorgensen et al. and Shaff in Interferences 68,187, 71,471, 71,472 and by Shaff in Interference 71,473.

“The decisions of the Primary Examiner were finally sustained by the Board of Appeals in each of the above interferences on the following dates: Interference 68,-187, March 27, 1939; Interferences 71,471 and 71,472, March 25, 1940; Interference 71,473, May 21, 1937.

“During the prosecution of these interferences, motions under Rule 109 [35 U.S. C.A.Appendix] to add counts were presented by Jorgensen et al. and other parties involved. As examples of the claims proposed in these motions, three of the counts urged by Jorgensen et al. to be added in Interference 68,187 appear below. These are claims 64, 65 and 72 of the application which were designated Qaims B, C and A of two motions by Jorgensen et al. to add counts in Interference 68,187, dated June 8, 1935 and January 3, 1936 respectively.

“Serial No. 585,510

“64. A means for supplying a suitable starting mixture to an internal combustion engine under various conditions of temperature, which comprises in combination with the suction intake pipe of an engine of suction operated carburetor means connected to said pipe for mixing two fluids, namely, liquid fuel and air, and conducting them into said pipe, a movable valve which tends to be opened by the inflowing fluid which it controls, said valve controlling the flow of one of said fluids relative to the other, whereby to vary the fuel to air ratio of the mixture, a vacuum chamber having a movable wall, which closes the chamber in all positions of the wall, said wall being actuated by the drop in pressure in the said pipe for producing movement of said valve to decrease the ratio of fuel t