Denaro v. Maryland Baking Co. (40 F.2d 513, 1930)

SOPER, District Judge.

The plaintiff in this case, James Denaro of Cambridge, Mass., is the patentee and owner of two United States letters patent, to wit, No. 1,497,293, applied for October 26, 1915, and issued June 10, 1924, and No. 1,-615,799, applied for December 28, 1925, and issued January 25, 1927, which will be referred to hereafter as the first and second Denaro patent, respectively. Both patente relate to improvements in machines for making ice cream cones. The bill of complaint charges infringement of both patents and seeks an injunction and accounting.

The defendant, the Maryland Baking Company, a Maryland corporation, has filed a counterclaim and set-off to the bill of complaint based upon United States letters patent to Joseph Shapiro, No. 1,460,611, applied for August 29,1919, and issued July 3,1923, and assigned by Shapiro to the defendant corporation. This patent also relates to improvements in machines for making ice cream eones. Shapiro is a stockholder, director, and officer of the defendant corporation.

Both parties to the suit are manufacturers of ice cream cones hy machines, have come in contact with United States letters patent to Bruckman, No. 1,071,027, which was applied for May 11, 1910, and issued August 26, 1913. The defendant holds a license thereunder. It has heen the subject of litigation between its owners and various infringers, including both Denaro and Shapiro. Decisions sustaining the validity of the Bruckman patent are found in the following citations: Eighth Circuit: Roberts Cone Mfg. Co. v. Bruckman (C. C. A.) 255 F. 957; Id. (C. C. A.) 266 F. 986; Bruckman v. Stephens (D. C.) 268 F. 374. First Circuit: American Cone & Wafer Co. v. Denaro (D. C.) 283 F. 1011; Id. (C. C. A.) 297 F. 913; Denaro v..McLaren Consolidated Cone Corporation (C. C. A.) 23 F.(2d) 384; Denaro v. McLaren Products Co. (C. C. A.) 9 F.(2d) 328. Second Circuit: McLaren Products Co. v. Cone Co. (D. C.) 7 F.(2d) 120.

The general character of the machines involved in the pending suit is described in these reports, because, generally speaking, the Bruekman or McLaren machine is similar to those used by the parties to this suit. Referring particularly to the description given in Bruekman v. Stephens, supra, it will be seen that, by use of the device, ice cream eones are automatically made. Batter is introduced into molds; the cones are baked; the molds opened; and the eones stripped loose from the molding surfaces and delivered out of the machines, automatically and without handling. The machine consists generally of a horizontal rotatable turntable or wheel, on a vertical shaft placed at the center. At the periphery, or outer circumference of the wheel, are mounted a plurality of units or baking molds each of which consists of a pair of half mold sections. Each of the mold units contains a plurality of cone-shaped mold cavities and a core element consisting of a plurality of cores affixed to a core bar. The cores are inserted within the mold . cavities with just enough intervening space to form the thickness of the eones. The mold cavities are automatically filled with batter. The cores are then brought into place within the mold cavities, the mold unit is securely locked and the baking of the eones begins. Heat is applied as the wheel rotates, and, because of the small amount of batter used, the extent of the heated surface and the degree of temperature developed, the baking operation is speedily accomplished. By the time it is finished, the unit has gotten to the place in its travel at which it is unlocked. The core har is slightly lifted up by means of a cam track whereby the cores in the mold cavities are separated a short distance from the interior surfaces of the completed cones, while the latter are still retained in the mold cavities by the adhesion of the batter to the surfaces of the mold. Since the cores are raised only a slight distance, they remain still projected inside the cones. While in this position the sections of the mold are separated and the cores act'as stripping fingers, so that the cones, which may adhere to one or the other side of the mold cavities, are stripped free. The eones being free then drop out of the machine.

The decisions, to which reference has been made, show that many, if not most, of the elements in the Bruekman machine were old, as for instance, the horizontal mold carrying rotatable table, and molds having separable halves automatically locking and unlocking. Bruekman, however, added a new element which made practicable the automatic cone manufacturing machine as it is now known. The extraction feature of his machine, whereby the slightly lifted cores remain within the cones during the separation of the mold cavities, was new and important, and was held by the courts in the First and Eighth Circuits, supra, to be entitled to a liberal construction by reason of the new and highly useful results which it brought about.

Compared with Bruckman’s important contribution to the art, the patents at issue in the pending ease disclose only minor improvements upon the structure which has been described. The improvements of the first Denaro patent are two in number and relate first to the manner in which the mold units are mounted in a main baking chamber, and second to the means by which the separable halves of each unit are held tightly together during the baking operation. The first of these improvements consists in the mounting of the separable mold units in a slidable fashion between inner and outer annular walls or rings located concentrically at the circumference of the wheel and in the co-operation of these two walls or rings with a fixed top wall to constitute a main baking oven in which the heat developed for the baking operation is confined. Thus it appears that this improvement comprises two elements, namely, the slidable mounting of the mold units in the annular walls, and the cooperation of these walls with a fixed top to constitute a single baking chamber. In the Bruekman machine, each of the mold units constituted an individual baking oven; while, in the first Denaro patent in suit, the end flat plates of the adjacent mold units are joined together so as to form continuous annular walls. There seems to be no doubt that the introduction of these features combined in the first Denaro patent is of advantage in the manufacture of the cones. There is resulting simplicity and efficiency in the substitution of a single baking chamber for the individual baking chambers of the Bruckman machine in the first place, and in addition the slidable mounting of the separable mold units permits the half mold sections to move in a horizon-, tal plane and in parallelism in their opening and closing movements, and makes it possible for the opposite faces of the split molds to come together in an exact fit when they are joined together. A precise closing of the separable halves is desirable so as to prevent altogether or to reduce to a minimum the escape of batter which tends to follow from the generation of steam and gases during the baking operation. If this escape is not prevented, undesirable extensions or fins are formed on the exterior walls of the cones.

Claims 18, 19, 20, and 22 of the first Denaro patent involve the first improvement which has been noted. Claim 18, which is sufficiently illustrative thereof, is as follows:

“18. In a pastry baking machine, a horizontally rotatable wheel having slidably mounted thereon, between vertical inner and outer walls, a plurality of molds provided with molding cavities, a plurality of core members, the cores of which are adapted to cooperate with the molding cavities, and a fixed top plate enclosing the said molds and core members during the major part of their travel; the said top plate cooperating with the said vertical, inner and outer walls enclosing the molds to form therewith a main . baking chamber.”

The'defendant does not deny infringement of this claim; but it contends that the claim discloses merely a combination of elements old in the art unattended by new and useful results, and therefore does not involve invention. Certain of the prior patents, to wit, Roberts and Roberts, No. 1,375,609, and McGowan, No. 1,238,544, particularly relied upon by defendant to show invalidity of claim 18, were eopending with the first Denaro patent in the Patent Office, and one of them, No. 1,209,939 was the joint invention of one Charles A. Costigan and Denaro himself. It seems to be clear that each of the features of claim 18 is separately shown in one or more of the earlier eopending patents, but none of them discloses the whole combination. On this account the plaintiff says that these earlier copending patents may not be considered at all, contending that, unless an earlier application involves the same combination as a late one, it is of no avail as an anticipation. A difference of opinion formerly existed as to whether matter disclosed in an earlier filed application, but not covered in its claims, could be cited against the claims of a later copending invention or application. The controversy was set at rest by the Supreme Court in Milburn Co. v. Davis, etc., Co., 270 U. S. 390, 46 S. Ct. 324, 70 L. Ed. 651, which held that, even if the earlier applicant did not claim the invention, yet, if he disclosed it, the later applicant was not entitled to a patent. In such case it could not be said that the invention was not. before known or used in this country, but, on the contrary, it would be true that the later applicant was not the original and first inventor, as these terms are used in R. S. § 4886, and the fourth paragraph of R. S. § 4920, as amended by the Act of March 3, 1897, c. 391, §§ 1 and 2, 29 Stat. 692 (35 USCA §§ 31, 69).

But the plaintiff contends that the rule of the Milburn Case is applicable only where, as in that case, the earlier applicant gives a complete and adequate description of the thing patented upon the later application; and hence is-not applicable in the case at bar, because no earlier application shows more than a part of the structure covered by claim 18. The cited cases do not throw much light on the subject. See Sidney Blumenthal & Co. v. Salt’s Textile Mfg. Co. (D. C.) 21 F.(2d) 470; Traitel Marble Co. v. U. T. Hungerford Brass & Copper Co. (C. C. A.) 22 F.(2d) 259; Hazeltine Corp. v. Elec. Ser. Eng. Corp. (D. C.) 18 F.(2d) 662. No case subsequent to the Milburn Case seems to have decided whether the same rule should apply to a partial disclosure as to a disclosure of the entire subject matter. The plaintiff contends that it does not apply; but the common sense of the situation points the other way. If an independent inventor of a device gets nothing because,. although unknown to him, it has been completely described in an earlier copending application in the Patent Office, it would seem to follow that an inventor is entitled to no qredit for using in a new combination one element shown in an earlier application. He fails to show that he is the first inventor of the part in the same manner as, in the decided case, the later applicant failed to show he was the first inventor of the whole. Invention, indeed, may reside in the new combination, but the ease must be considered in the same light as if the earlier application had been published to the world.

It seems equally clear that the copending joint invention of Costigan and Denaro may be properly cited against the patent in suit. Obviously the subject-matter of the prior joint invention was known to the later single applicant, and he cannot claim to be the first inventor of what it contains. Nor is he entitled to be treated as if he were the sole inventor of the joint patent. It is well settled that an inventor may claim in a later application matter which was covered by the disclosure, but not the claims of an earlier one. Montgomery Ward & Co. v. Gibbs (C. C. A.) 27 F.(2d) 466. But an applicant may not claim in a later application and secure a sole patent upon subject-matter previously invented and disclosed by the joint efforts of himself and another. On the contrary, the joint invention of two inventors is a good anticipation to the later invention of either. Dwight & Lloyd Sintering Co. v. Greenawalt (C. C. A.) 27 F.(2d) 823.

Validity of Claim 18 of the First Denaro Patent.

As we have seen, the gist of this claim lies in the provisions for a main baking chamber formed by the association of a fixed top plate with vertical inner and outer annular walls, and the slidable mounting of the mold units between these walls. Invention is said to reside in the combination of these two features. The defendant shows, however, that neither of these features waá new in itself.

The prior patent to Flagstadt, No. 1,200,-600, of February 10,1914, depicts a machine equipped with a horizontal rotatable wheel, on whose periphery are inner and outer walls on which a plurality of mold units are mounted, and with a fixed top plate co-operating with the walls to form a baking chamber. The device preceded the Bruekman invention; its mold cavities are solid and not separable, and hence it lacks the automatic extraction step now almost universally employed. It lacks also the slidable mounting of the mold sections. Its relevancy to this discussion is its showing of spaeed annular walls on a horizontal rotatable wheel co-operating with a fixed top to form a single oven.

The prior joint eopending application for the Costigan and Denaro patent, No. 1,209,-939 (applied for March 27, 1914, and issued December 26,1916), also- shows a single baking oven, as distinguished from those structures in which each mold unit is installed in an individual baking chamber. A stationary top plate is placed close above the top of the molds and extends over and is in close contact with the upper edges of plates which are connected with the ends of the molds, thus forming a closed cavity above the molds. This machine, unlike Flagstadt’s, is furnished with separable mold units permitting the automatic extraction of the cones, but,, like Flagstadt’s, it lacks the slidable mounting of the mold sections between oven plates which is disclosed in claim 18 of the first Denaro patent in suit.

The prior copending application for the Roberts and Roberts patent, No. 1,375,609 (applied for June 24,1912, and issued April 19, 1921), also shows' a horizontal rotatable wheel with inner and outer walls on its circumference, and a plurality of mold units between them; and in this ease, there are found, upon the walls at points opposite the ends of the mold units, certain blocks equipped with slideways into which slide bars attached to the closing ends of the mold units are inserted. The construction is not so simple as that of Denaro, wherein the annular walls themselves are made up by the joining together, edge to edge, of the flat plates which form the ends of the mold units; but it is as true in one case as in the other, paraphrasing the language of daim 18, that the molds are slidably mounted on the wheel between vertical inner and outer walls. Thus the second feature of the claim is disclosed. It may also be added that, although Roberts and Roberts have separate individual ovens for the several mold units in place of the main single oven of Denaro, nevertheless the idea of a main baking chamber is not totally absent. There is a fixed continuous oven top with depending sides which forms a kind of tunnel, and tends to preserve the heat produeedi by the separate individual ovens during a large part of their circular progress on the wheel.

It thus appears from a consideration of the patents to Flagstadt, Costigan and Denaro, and Roberts and Roberts, that the two important features of claim 18, although not combined in any one patent, are separably described and foreshadowed. It is of course well settled that invention may exist in a new combination of elements, old in themselves, which produce new and useful results, but it is equally true that the selection and putting together of the most desirable parts of different machines to make a new machine is not invention if each part operates in the same way as it operated before and effects the same results, for the reason that such combinations are merely evolutions of the mechanic’s aptitude, rather than creations of the inventor’s faculty. United States Industrial Chemical, Co. v. Theroz Co. (C. C. A.) 25 F.(2d) 387, 391; Huebner-Toledo Brew. Co. v. Mathews Grav. Carrier Co. (C. C. A.) 253 F. 447; Webster Loom Co. v. Higgins, 305 U. S. 580, 591, 26 L. Ed. 1177. The plaintiff claims that such new and useful results were produced by the first Denaro patent by a greatly increased, and hitherto unknown, capacity of the machine. This matter will be discussed hereafter, for it involves the consideration, not only of claim 18, but also of claim 24. It is sufficient to say at this point that there is nothing in the record in this case to indicate that the association of the idea of a unitary baking chamber of the Flagstadt and Costigan and Denaro patents with the idea of slidably mounting the separable mold sections found in the Roberts and Roberts patent is attended by any advantage other than one might expect from the putting together of the most promising parts of different machines. It therefore follows that claim 18 lacks invention, unless it may be found in the great commercial advantage springing from an unlooked for increased capacity. The same thing may be said of elaims 19, 20, and 22.

Claim 24 of the First Denaro Patent.

The capacity of an ice cream cone machine is of course affected’ by the number of cavities in each mold unit depending upon the size op length of the unit. It is said that the peculiar structure of the Denaro machine made possible a longer mold than was known at the time when the application for the.patent was filed, and that the second improvement cf the first Denaro patent now to be discussed contributed to this end, since it provided an efficient means for keeping the molds tightly closed during the baking of the cones and thus prevented the formation of fins. This feature is described in the concluding clause of claim 24 of the patent which is as follows:

“24. In a pastry baking machine, a female mold unit, comprising two half mold sections located between vertical, spaced plates and slidably mounted in horizontal guideways therein, whereby the said mold sections are permitted to move in order to join or separate, and means located between the said vertical, spaced plates adapted to hold said mold sections in closed position whereby tendency of the mold sections to separate under pressure of generated steam or gas is positively resisted.”

The particular closing means located between the annular walls of the Denaro mar-chine are shown in the specification of the patent. They consist of metal fingers applied directly to the back surfaces of the half mold sections. The fingers are rigidly attached to and react against a rock shaft which is journaled in the side oven walls, in which the mold sections are also slidably mounted. The operation of the closing fingers is controlled by a mechanism outside of the outer oven wall, but this mechanism does not contribute in any way to the maintenance of close contact between the mold sections after they have been brought together. When a mold unit approaches the station of discharge, a stationary cam track causes a slide in the outside of the outer oven wall to operate and to rotate the rock shaft. The fingers being integral with the shaft are thereby rotated away from the half mold sections which by suitable mechanism are then separated from each other in the slideways in a horizontal and parallel movement. The baked cones are then dropped out of the molds, and the separated mold units approach the next operation. By means of another stationary cam track, the slides on the outside of the baking oven are operated in the opposite direction, whereby the rock shaft is turned towards the closed position. The ends of the fingers are brought against the backs of the molds; the molds are forced into a closed position and held tightly together by the wedging of the fingers between the shaft and the mold sections.' By this operation the tendency of the mold sections to separate under the pressure of the generated gases inside is positively resisted.

It is manifest that the vertical spaced plates described in claim 24 are the inner and outer annular walls of the machine which have been heretofore described. The require