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£ert denied
2lred 67379
L'Ed 1144,46 M

257 G.486

10 F.(20) 257 FRENCH et al. v. BUCKEYE IRON &

Appeal from the District Court of the BRASS WORKS.

United States for the Southern District of (Circuit Court of Appeals, Sixth Circuit. Ohio; John E. Sater, Judge. February 16, 1926.)

Suit by Alfred W. French and another No. 4051.

against the Buckeye Iron & Brass Works. 1. Patents w328—No. 1,140,808, for appara

Decree for defendant, and plaintiffs appeal. tus for cooking oil-bearing material, held Reversed and remanded, with directions. valid. French patent, No. 1,140,808, claims 2, 3,

Barton A. Bean, Jr., of Buffalo, N. Y. 6, 7, 11, 12, 15–21, for apparatus for cooking (Charles W. Parker, of Buffalo, N. Y., on the oil-bearing material, held valid.

brief), for appellants.

H. A. Toulmin, Jr., of Dayton, Ohio (H. 2 Patents en 17-That device merely does au

tomatically what formerly has been done A. Toulmin, of Dayton, Ohio, on the brief), manually held not to invalidate patent.

for appellee. That device merely does automatically what

Before DENISON, MACK, and DONAformerly has been done manually held not to invalidate patent, where conception is new, means HUE, Circuit Judges. not obvious, and utility great. 3. Patents'en283(1)-That patented device DENISON, Circuit Judge. [1] The

has never been manufactured held not to af- court below dismissed, for lack of infringefect its validity.

ment, the bill brought by the French CompaThat patented device has never been manu

ny, based upon patent 1,140,808, issued to factured held not to affect its validity.

A. W. French, May 25, 1915, upon an ap4. Patents Om 167(1)-Patent held not con- plication filed April 17, 1911, for a method

fined to particular form shown in drawings to of and apparatus for cooking oil-bearing be preferred one.

material. Cotton seed meal required cookPatent held not confined to particular forming to prepare it for extracting by pressure shown in drawings to be preferred one.

its contained oil. It had been found desir5. Patents 83—That patentee permitted able to cook a batch of the meal in succesprior application to lapse and transferred sive kettles at differing temperatures. This claims to subsequent application held not to required manual, or manually assisted, reshow abandonment of claims.

moval from one kettle to the next. This in That patentee, after claims of prior appli- turn required either the skill of the expert cation were allowed, permitted prior application to lapse and transferred its worth-while cooker, in determining the proper time for claims to subsequent application, held not to each removal or, at least, the constant atshow abandonment of such claims, in absence tention of the operator, if the time of cookof intervening rights creating estoppel.

ing in a particular kettle had been predeter6. Patents 167(1)-That specification sets mined. Prior to the developments to be men

out particular method impossible of attain- tioned, the pertinent art had progressed to ment held not to prevent protection for re

the point where, for the saving of floor sults accomplished.

That specifications of patent sets out addi- space and to get the aid of gravity, the sevtional particular method and advantage, perhaps eral receptacles or kettles had been placed impossible of attainment, held not to prevent one above another, with a door-closed openprotection for results accomplished.

ing in the bottom of each, so that, when the 7. Patents Om 328–No. 1,140,808, claims 17-20, tents would fall into the kettle below. This

door was opened by the operator, the conheld infringed. French patent, No. 1,140,808, claims 17-20.

was known as a stack cooker; but the elefor apparatus for cooking oil-bearing material, ment of personal attention by the operator, held infringed.

and usually the dependence upon his skill,

were not eliminated. As the art has now 8. Patents 112(4) - Manufacture of device

under later patent held not to negative in developed, it has very generally adopted an fringement.

automatic or semiautomatic stack cooker, in Manufacture of device under later patent which when the lowermost receptacle conheld not to negative infringement.

taining the completely cooked meal is emp9. Patents w165—Limitation of narrow claims in motion which, without further attention

tied, or sufficiently emptied, mechanism is set held not to affect broad claims not so limited.

or manual aid, successively passes each one Limitation of harrow claims of patent held of the cooking batches along one step from not to affect broad claims not so limited. kettle to kettle. The record indicates sev

10 F.(20)-17


eral great commercial utilities in this auto again before the one at the top is opened, matic process, and so general an adoption of so that in this way there can be no mixit and discarding of the old manual methods ture of the batches or transfer of any mathat it must be recognized as having worked terial through one kettle until it has rea substantial revolution in the meal-cooking mained therein the predetermined time. art.

The next step in the patent art was also In determining the place which the patent taken by French (patent 909,778, filed April in suit should take in this development, we 23, 1908), and he provided a baffle plate or must examine both the patent art and the dam, adjacent to the opening and depending commercial art. Looking into the former, it into the lower kettle, which aided the tendseems that French was the first ever to ex- ency of the meal in the lower kettle to pile up press the conception of an automatically con- and choke the opening. Still the necessity tinuous step by step stack cooker. Some

Some of preserving the integrity of the batches years before the actual solution of the prob- was not observed, or means therefor provided. lem, he stated it and the great benefits to The next patent in this branch of the art be had from answering it, though the answer is that of Faherty (patent 909,773, filed which he then gave was not the right one. May 2, 1908). Faherty seems to have been For convenience of reference, we will speak commercially associated with French. The of the successive kettles, numbered from the Faherty patent recited that it was an imbottom up, as 1, 2, 3, and 4. French's first provement upon French's patent 852,058, patent was 852,058, filed in 1905. In this and it was issued to French as Faherty's patent he described the advantage in de- assignee. It provided, for the first time,

, creased expense and increased quality which controlling gates which positively closed the would be had by automatically controlling bottom openings in the kettles. The gates the

progress of the meal from one kettle to were pivoted at one side of the opening, deanother, and he said: “The cooker is au- pended into the kettle below, and it was the tomatic in its action and the services of action of the rising meal accumulating in skilled meal cookers are unnecessary.” He the lower kettle that pushed up the gates and placed his kettles in staggered vertical re- held them closed-hence “float gates”; but, lation, so that the discharge was from the as soon as the level of the meal in the lowlower outer edge of 4 into the upper outer er kettle fell even a very little, the gate edge of 3, through a depending spout. When dropped by gravity into a partially open kettle 1, for example, was emptied, there was position, and the progressive operation and no obstacle to the downward flow of the meal the confusion of batches were substantially through the spout from 2 into 1, and this the same as French’s. French tried again, by would continue until the meal accumulating patent 1,000,675, filed November 17, 1908. in 1 rose to the level where it closed the spout This, however, was a division of his applicainlet; and the corresponding transfers were tion, which resulted in patent 909,778, and taking place in the upper kettles. It is at shows only the means shown in that patent once apparent that this was not a step by for controlling the flow of meal, although it step progresssion, but that, as soon as, for says that other suitable means, like those of any reason, the level of meal in 1 fell be the Faherty application of May, 1908, may low the spout inlet, meal would begin to pass be used instead. from 2 into 1, and from 3 into 2, and from This was the state of the patent art in 4 into 3, and the transfers between the dif- April, 1911, when the application for the ferent kettles would be simultaneous, and patent in suit was filed. There had been no mixtures of the batches with each other attempt by any one at any time, except by would result. French did not, in this patent, French and Faherty, to produce an automatobtain any claims upon the automatic process ically progressive step by step batch meal in any broad way, but confined himself to cooker. these spouts, extending into the kettle be- In the commercial field, French or his low, so as to be choked by the rising mate company evidently regarded the above-derial. Clearly he did not disclose what is scribed Faherty form, having the swinging now said to be the essential element of the gates, called “float gates," as being for that successful process, viz. that the openings or some other reason most suitable for sale, from 2 to 1, and from 3 to 2, etc., should and the French Company began to manufacremain closed until the kettle below is emp- ture that form. The first sales do not aptied, and that the bottom door of each ket pear, but in the summer of 1911 several of tle, after being opened, should be closed these stack cookers, built by the French Com10 F.(20) 257 pany in the specific form of this Faherty rate at which the meal is drawn from the patent, were in use in cotton seed oil mills bottom kettle, is required for a particular in the South. They were in a sense auto- batch of meal to pass through the cooker, matic, and were doubtless so named to the with the result that all of the meal is unitrade; but they had the inherent defect above formly cooked." stated. At that time, the French Company He shows, for the first time in the art, and the Buckeye Company, defendant here- mechanism for positively operating the gates in, had been long-time rivals in the manufac- which close the bottom openings, instead of ture and sale of the older forms of non- having the gates merely floating upon and automatic, but manually operated, cookers, rising with the accumulating meal in the lowin stack or other group form, and we find er kettle. He then describes the mechanism during that summer a succession of letters shown in the drawings for this purpose, statfrom the defendant's salesman in this terri

ing that this shows his preferred form of tory to it to the effect that, while the auto

construction, but that “other suitable mechmatic cooker which was being sold by the

anism for operating the gates to discharge French Company was only partly success- the kettles successively in the described manful, and. would not do nearly as much as was

ner could be employed.” In the form shown claimed for it, yet it was better than the old

in the drawings, each gate was tilted by a forms, and the Buckeye Company must get horizontal rock shaft extending outside of the up an automatic cooker that would be as

casing. Each rock shaft was positively 'opgood, or better, or else go out of business.

erated by a lifting rod, and each of the This is the earliest suggestion of defendant's three lifting rods was operated by variant interest in the subject-matter.

cams on a horizontal shaft at the bottom. As After French and Faherty had thus made

this shaft was slowly rotated, the appropriate four unsuccessful attempts to devise a really

cam would elevate the lifting rod which automatic batch cooker, French, by the pat

would open the gate from 2 to 1, but the ent in suit, stated the precise difficulty which

lifting rod governing the gate from 3 to 2 had so far interfered, and also disclosed the

would not yet be affected by its cam. The remedy. In addition to the same general advantages which he had recited in his previ

cams were so proportioned and placed that ous specifications of structures, in which his

the gate from 2 to 1 would be opened wide expectations had not been fully realized, he and held there a substantial time, enabling stated that the object of the present inven

the contents of kettle 2 entirely to discharge; tion was “to provide an improved method of

then, as this cam finished its passage beand apparatus for cooking oil-bearing meals, neath its lifting rod, that rod dropped sharpby which all of the meal remains in the

ly by gravity and closed the gate. Immecooker for a predetermined period of time

diately thereafter the next cam opened the and is cooked uniformly.” After thus gen

gate from 3 to 2 and held it open, and then, erally describing his purpose, he then par

in turn, permitted it to close, before the third ticularly stresses the completeness with which

cam opened the gate from 4 to 3. The cam

shaft at the bottom was driven by a gear he preserves the integrity of each batch as it passes through. He says:

wheel, and this, in turn, driven by a con“When the bottom kettle has been emptied,

stantly moving worm shaft connected with or a predetermined quantity of meal drawn

suitable driving power. The gear wheel was therefrom, the other kettles are discharged

mutilated by the removal of enough teeth periodically and in succession by mechanism to span the space of contact with the worm. which first opens the gate of the second kettle The result was that, when the mutilated part to discharge its contents into the bottom ket- of the gear was opposite the worm, there tle and closes this gate, then opens and closes

was no engagement, but when the gear was the gate of the third kettle to refill the second rotated very slightly it made contact with the kettle therefrom, and closes this gate before worm, and then was carried around for one opening the gate of the next kettle above, nearly complete rotation. The cams were so which operation is continued until the meal is adjusted and arranged that one complete rodelivered from each kettle of the series, ex- tation of the cam shaft first opened and then cept the bottom kettle, to the kettle next be- closed each of the three gates in succession. low. In this way substantially uniform quan- As French expressed it: “The operation tities or charges of meal pass from each of the cooker is thus made automatic, the kettle to the next at regular intervals, and gates being actuated in succession to deliver a definite period of time, depending upon the the meal from one kettle to the next one below.” In his preferred form he also con- in the third, 3, 6, 17; and in the fourth 20. templated that there should be an automatic Claim 18 is given in the margin.? starting of the cycle, and he accomplished Pending the application and before any this by providing a float on top of the meal cookers had been put on the market, and inin the bottom kettle, which float was con- stead of the specific gate-operating mechannected to a pivoted lever arm extending out ism shown in French's drawings, Faherty near the edge of the gear wheel, so that, when devised another form therefor. It is shown the float fell to a predetermined point and in his application, filed June 8, 1914, which the outer end of the arm rose, it actuated a resulted in patent 1,112,128, issued to the dog, which rotated the gear wheel slightly French Company as Faherty's assignee. and put it in contact with the rotating worm. When this was first put out does not appear, Of the starting device he said: “This can but it was the form which the French Combe done by hand, but it is preferably accom- pany adopted as most suitable for exploitaplished automatically," etc. Other portions tion in carrying out the step by step, integral of the specifications, referring to further fea- batch, automatically progressive conception. tures, are not now important.

It is by plaintiff characterized as adopting It may be said that the cooking art, or the broadest conception of the French inveneven the art of cooking meal for oil extrac- tion, as we have stated it, and uniting theretion, was a crowded art; but in that part of with assistance from the older conception the field devoted to automatic batch progres- that the accumulating meal rising in a ketsive cooking French was practically the only tle should operate a float gate. Plaintiff inoccupant for several years, and through sev

sists that it infringes both the process claims eral efforts. He was the first to observe the and some of the mechanical claims of what final difficulty, and to correct it by providing we call the first group. In this Fahertypositive mechanism for automatically succes- French device, if we should assume kettle 1 sive gate operation. Before that, no one had to be emptied and the others full, the cycle done this. Since, no one has failed to do it. was started by tripping open the gate from His advance involved meritorious and sub- 2 to 1, the meal in the former being disstantial invention. Giving it that relatively charged into the latter, and as it accumulated pioneer scope to which it is without dispute raising a float which actuated a lever arm, entitled, if the field is confined to the au- which finally closed the gate and locked it tomatic progression of integral batches, it in the shut position. The chain of mechanis apparent that French was entitled to four ism thus started then proceeded to open the groups of claims: First, those relating some- gate from 3 to 2, and the operation conwhat broadly to the conception that each bot- tinued successively and automatically until tom gate should be opened, the kettle emp- the shift of batches was complete. In this tied, and this gate closed, all before the gate form of structure, marked as patented unnext above was opened, and this conception der both the patent in suit and the secmight rightly be expressed both in terms of ond Faherty and other patents, the device method and in terms of means; second, those sold by the French Company has had a large based on this broad conception, but covering acceptance, and, apparently with no persistfurther the subordinate idea that the gate- ent competition, excepting from the defendoperating mechanism should come to rest aft- ant company, has occupied the whole of this er each cycle of operation, and remain at particular field. rest until again started; third, those rest- As against the validity of the patent in ing on the same basis, but contemplating, al- suit, many earlier patents are cited. We see so, that the chain of mechanism should be au

no occasion for referring to those in the mealtomatically started by the lowering of the cooking art, for no one of them disclosed or meal in the bottom kettle; fourth, those more suggested the patented subject-matter. The specifically relating to the selected mechan- nearest approach to the idea, in any art sugisms by which the thought of the other gesting analogy, is found in some grain drigroups was carried out. Claims were finally allowed and issued chambers arranged in a descending series, and

1 The combination of a plurality of heating representing these four classes, and some of each chamber above the lowest having a disthe first, second, and third groups and one

charge opening arranged to deliver the material of the fourth are here sued upon. We classi- into a lower chamber, gates controlling said

discharge openings, and driven mechanism fy them thus: In the first group claims 2, which opens and closes the gates of said cham7, 11, 12, 18, 19; in the second, 15, 16, 21; bers one after another at regulated intervals.


10 F.(20) 257 ers, best illustrated by the Rhodes patent, idea of the patent in suit, infringes some of 92,096, of June 29, 1869. This is a "device the claims, and constitutes commercial use to operate the tilting floors of malt kilns.” and adoption of the patented invention, nor The floors, one above another, consisted of a whether, even if this were not so, and even succession of over-lapping slats, all of which if it were important that there should have could be tilted at once, and would thereby been some other manufacture and sale of the drop the malt onto the floor next below. A patented structure, that would be found in sprocket chain carrying a trip successively the use by Procter & Gamble, and on a conengaged corresponding trips on the tilting siderable scale, of the Carr form, built undevices. In this broad way, it resembled de- der a patent, some claims of which were latfendant's Trace form of cooker; but the re- er adjudged to French and were included in semblance goes no further. Whatever anal- the patent in suit. ogy there is in the arts is so remote that the [5] In view of the scope of the invention, as thought of transfer is not natural, and, in we interpret it, and the rule of strict proof order to be useful with a meal-cooking pro- in such cases, the alleged anticipating uses cess, the device must be reconstructed in do not require serious consideration. Neialmost every particular. Potts-Creager Case, ther is there force in the claim of abandon15 S. Ct. 194, 155 U. S. 597, 39 L. Ed. 275. ment of claims 13–18. These claims were The claims in suit were allowed by the Pat- allowed in January, 1912, in an application ent Office over Rhodes, when it was pointed filed in 1910, disclosing a somewhat cruder out that the essential principle—bottom clos- apparatus; but in the meantime the 1911 apure before top opening—was not taught by plication had been filed, with a disclosure Rhodes, nor shown, unless obscurely. Claim ample to support the old claims, as well as 18, in suit, is not fairly capable of an in- its own, and it was decided to let the 1910 apterpretation broad enough to cover Rhodes. plication lapse, and transfer its worth-while [2] In our judgment, the most forceful at- claims to the other case. In this we see no tack upon the validity of the broad mechan- symptom of abandonment; nor were there ism claims of the patent lies in the proposi- intervening rights, such as might sometimes tion that there is no invention merely in arise by way of estoppel. doing by automatic machinery what had for- [6] We do not overlook that the specificamerly been done manually. While in a limit- tion sets out an additional particular methed way this is often a right conclusion, it od and advantage which were perhaps imposmay not be safely taken as a general rule. sible of attainment; but that should not Though, after French had the complete con- prevent due protection for the results which ception of carrying out this process automat- were accomplished. ically, so as to have the necessary time rela- [7] Coming to infringement: Inspired seemtion between the opening and closing of the ingly by the necessities stated by its salesdoors, there may have been no great diffi- man, the defendant, in the summer or fall culty in devising the specific means, yet this of 1911, got out its first device of this class. cannot serve to invalidate bis patent, where Then, or later, it settled down for its comthe conception was new, the means not ob- mercial form on that shown in the Trace vious, and the utility great.

patents, 1,115,133 and 1,254,745, assigned to [3, 4] Attack is made upon the patent, also, the defendant. This structure is not to be because it is said the patented device has distinguished from that of the patent in suit, never been' manufactured. This proposition, save as to the specific means by which the if true, is of so little importance (Paper Bag successive gate opening was accomplished. Case, 28 S. Ct. 748, 210 U. S. 405, 422-430, Instead of a series of cams on the shaft, 52 L. Ed. 1122) that it does not justify the which, through lifting rods, successively entime which has been spent upon it; but it gaged the rock arms of the gates, Trace used is not true. It is based on the fallacy that the same shaft to drive a sprocket chain, the patent is confined to the particular form which chain carried cams or trips which shown in the drawings as the preferred one. successively engaged with the rock arms. This specific form has not been manufac. Trace also provided that this sprocket chain tured; but, if the patent is confined there- should come to rest after each complete revoto, that is the end of the case, for the defend- lution, and so remain until it was again startant has never made that form. We do not ed. It is this form, save for one change, need to decide whether the second Faherty with which the defendant continued to be form, which the French Company adopted on the market in competition with the French for manufacture, embodies the fundamental Company until this bill was filed.

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