Penn Electric Switch Co. v. Luthe Hardware Co. (63 F.2d 842, 1933)

SANBORN, Circuit Judge.

The parties will be referred to as in the court below; appellant as plaintiff, Luthe Hardware Company as defendant, and United States Gauge Company, intervener.

This is an appeal from a decree dismissing the plaintiff’s bill of complaint in a suit for infringement of reissue patent No. 17,-342, granted June 25, 1929, to Albert Penn upon an application filed February 6, 1929. Tbe original patent was No. 1,674,341, dated June 19, 1928, the application for which was filed December 12, 1927.

The patent in suit is for an automatic air volume controlling device for water storage tanks. The plaintiff is the owner of the patent and manufactures the device. The defendant hardware company sold a water system which used an air volume controlling device, made by the intervener gauge company, which the plaintiff claimed was an infringement of claims of the reissue patent. Suit was brought against the defendant, and the gauge company intervened and assumed the defense. The defenses asserted were lack of invention, noninfringement, and, further, that the claims of the reissue patent upon which the plaintiff relies were invalid. The court reached the conclusion that the claims granted in the reissue patent which were in addition to those contained in the original patent were invalid, being broader than the original invention, and that no inadvertence or mistake was shown which would justify the allowance of such claims, and that there was no infringement of the valid claims of the patent.

The devices involved in this suit are comparatively simple. The water storage tanks with which they are designed to be nsed are those into which water is forced by a pump and expelled by compressed air. They are commonly known as pressure tanks. Theoretically, if only water is pnmped into an airtight tank and only water is expelled from it, the volume of air in the tank 'remains constant at all times. In practice, however, it is found that some air becomes absorbed by or mixed with the water and is expelled with it, so that, in order to prevent the tank from becoming inoperable from, a reduced volume of air, it is necessary to provide means for pumping air as well as water into the tank. This is done by providing an air intake port on the inlet side of the pump. This port has a check valve to permit air to enter the pump cylinder and to be forced into the tank with the water. This valve is known as the snifter valve. When the valve is open, the pump injects both air and water into the tank, and when it is closed, water only. The pumping of water is ordinarily automatically regulated by the air pressure in the tank, that is, the pump operates when the pressure falls below a predetermined amount, and closes when the pressure is again restoi’ed. It was desirable that the volume of air as well as the air pressure should be automatically controlled. Manual operation of the snifter valve required a glass or indicator o

It is settled law that the power to reissue may be exercised when the patent is inoperative by reason of a defective or insufficient specification, or because the original claims were narrower than the actual invention, provided the error has -arisen from inadvertence, accident, or mistake, and the patentee is guilty o-f no fraud or deception, and provided that the reissue shall be for the same invention as the original patent, as such invention appears from the specifications and claims of the original, and shall not cover or embrace what has been previously rejected upon the original application. Topliff v. Topliff, 145 U. S. 156, 170, 12 S. Ct. 825, 36 L. Ed. 658; Corbin Cabinet Lock Co. v. Eagle Lock Co., 150 U. S. 38, 42, 14 S. Ct. 28, 37 L. Ed. 989; Parker & Whipple v. Yale Clock Co., 123 U. S. 87, 102, 8 S. Ct. 38, 31 L. Ed. 100; Miller v. Brass Company, 104 U. S. 350, 26 L. Ed. 783; Kansas City Southern Railway Co. v. Silica Products Co. (C. C. A. 8) 48 F.(2d) 503, 506.

In James v. Campbell, 104 U. S. 356, 370, 26 L. Ed. 786, the court said: “The court ought not to be called upon to explore the entire history of an art in order to ascertain what a patentee might have included in his patent had he been so disposed. ' If he was the author of any other invention than that which he specifically describes and claims, though he might have asked to have it'patented at the same time, and in the same patent, yet if he has not done so-, and afterwards desires to secure it,'he is bound to make a new and distinct application for that purpose, and make it the subject of a now and different patent. When a patent fully and clearly, without ambiguity o-r obscurity, describes and claims a specific invention, complete in itself, so that it cannot be said to he inoperative or invalid by reason of a defective or insufficient specification, a reissue cannot be had for the purpose of expanding and generalizing the claim so as to make it embrace an invention not described and specified in the original.”

In Russell v. Dodge, 93 U. S. 460, 462, 23 L. Ed. 973, Mr. Justice Field, speaking for the court, said: “Where a useful result is produced in any art, manufacture, or composition of matter by the use of certain means for which the inventor or discoverer obtains a patent, it is, as justly observed by the presiding justice, of the Circuit Court, too plain for argument, that the means described must be the essential and absolutely necessary means, and not mere adjuncts which may be used or abandoned at pleasure.”

In Gill v. Wells, 22 Wall. 1, 24, 25, 22 L. Ed. 699, the Supreme Court, speaking of the grantee of a patent for a combination of old elements, said:

“Such a patentee as the one last mentioned may subsequently discover that he can accomplish a new and useful result by a combination embracing less than the whole number of the ingredients included in the prior patented combination, but he cannot secure the right .and privilege of a patentee in the combination of the smaller number of the ingredients by a surrender of his first patent and a reissue of the same which shall include the second combination as well as the first, because the reissued patent in that event would not be for the same invention as the surrendered original.

“Nor could that change be allowed under the present P’atent Act for another reason equally decisive, which is that the description of the other combinations, beside the first, would constitute a new matter, the introduction of which into the specification of a reissued patent is expressly forbidden by the fifty-third section of that act.”

In Huber v. Nelson Manufacturing Co., 148 U. S. 270, 292, 13 S. Ct. 603, 610, 37 L. Ed. 447, it was said: “There is nothing in the original patent which suggests any such combination as is claimed in claims 1, 2, and 4 of the reissue, or which suggests the possibility that Boyle’s invention could be operated by a combination which omitted the flushing chamber as an element thereof. Every one of the elements which is made a part of the several combinations claimed in the original patent is thereby made material to such combinations.”

See, also Olin v. Timken, 155 U. S. 141, 146, 147, 15 S. Ct. 49, 39 L. Ed. 100.

In Brown & Bigelow v. Louis F. Dow Co. (C. C. A. 8) 42 F.(2d) 785, 787, the court approved this language of a law examiner: “While mere changes in terminology may not be objectionable in a reissue application, when such changes go to the substance of the invention and modify it in material respects either as to form or relationship of its elements or as to its principle of operation, then they are objectionable as involving new matter.”

The court below was of the opinion that the invention disclosed by Penn in his original patent was not the same invention as that which he sought to cover by the expanded claims of the reissue patent, and we have reached the same conclusion. The purpose of Penn’s original invention was not to dose a screw-threaded opening in a storage tank with a screw-threaded fitting, or to demonstrate that a float and float arm could be mounted upon a fitting so as to operate a valve also attached to the same fitting, which was not new, or that such a float and float arm might be passed through a hole of suitable size in a tank. That a float and float arm could be used to operate directly a valve was not only clearly shown by the prior art, but was something well within the mental grasp of any ordinary mechanic familiar with household plumbing. Penn’s efforts were directed to providing- a mechanism for automatically removing the cap of the snifter valve upon a pump used to supply a storage tank, and his invention consisted of his combination of old elements which used the force of the float-induced rotation of a shaft to operate a cam which in turn raised the cap of the snifter valve. There is a clear distinction between the means shown by the patent for accomplishing the result and the means employed by the defendant which did not include several of the elements of Penn’s combination which are essential to its operation. The defendant’s device, since it omits these elements, does not infringe the original claims. Dunbar v. Meyers, 94 U. S. 187, 202, 24 L. Ed. 34; Reedy v. Scott, 23 Wall. 352, 366, 23 L. Ed. 109.

While it may be doubtful whether, in view •of the prior art, there was in fact any patentable novelty in Penn’s later device or in the claims of the reissue patent which read upon it, we do not need to deeide that question. If there was patentable novelty and Penn was the first one to conceive the idea, he can obtain a patent for this later invention upon the application which the record shows he has filed.

We regard claims 3, 4, and 5 of the reissue patent as invalid, and the decree of the lower court is affirmed.