R. L. JUDD & CO.
v.
FOWLER.
821
have claimed a product, if his description of his invention be true. He says: "Other coloringmatter can be made by similar reactions. The product, as well as the method of producing the same, constitutes a part of the invention, which comprises, therefore, the preparation and the coloring matters above mentioned;" but, when he comes to his claim, he limits his invention to the method by which the coloring matters are to be produced, namely, "by the action of nitroso derivatives," etc. Disconnected from· what precedes it, there is no hint in the claim that the "violet coloring matters" are a new production, which has been invented or discovered by the patentee; and from this omission to claim the product, as well as the method of making it, the inference is reasonable that he would be satisfied with a patent for the process. Other portions of the specifications may, as was said in White v. Dunbar, be resorted to, "for the purpose of better understanding the meaning of the claim; . but not for the purpose of changing it and making it different from what it is." The words "manufacture" and "production," as used in the claim, are not the names of things but of acts. The claim indicates the mode and manner of doing certain things, or of making certain com· binations, in order to produce certain results, and is for the improved process of obtaining those results, i. e. in manufacturing and producing them. It is not stated that violet coloring matters have never been produced, or that they could not be produced by other processes than those described in the claim. The claim is for "the improvement in the manufacture of coloring matters," and describes the improvement as "consisting in the produc· tion of coloring matters by the action of nitroso derivatives," etc. The improvement, that is, the process, is claimed as new, but not the product. The contention that, in the Koechlin patent, the product inheres in the process, and that, therefore, the claim of the one necessarily includes the other, cannot be sustained on principle or authority. The claim is single, and is either for a process or a product; otherwise, if the claim is divisible, one part being for a process, and another part for a product, it would be a double claim, and as such in danger of being held void for ambiguity. The applicant for a patent may separately claim both a process and a product, but cannot properly claim them in one claim. They are the proper subjects of separate and distinct claims. Merrill v. Yeomans, 1 Ban. & A. 55, Fed. Cas. No. 9,472; Goodyear v. Rubber Co., 2 Cliff. 371, Fed. Cas. No. 5,583. The decree of the circuit court is affirmed. H. L. JUDD & CO. v. FOWLER et al. (Circuit Court of Appeals, Second Circuit. No. 141. ,PATENTS-CONSTRUCTION OF CLAIM-INFRINGEMENT.
May 29, 1894.)
In the Fowler, Lingley & Fowler patent, No. 466,940, for an Improved curtain rod, to be held between opposite sides of casings by pressure of springs, the first claim, for the combination, with the rod, of Ua tube hav-
822' lag
FEDERAL. REPORTER,
:vol. 61.
Inclosing and rod, .andharing its end w.,d,iameter, a spring in said tube, and held from longitu.d1na1 moV'ement by said reduced epd of the tube, and a shell or tip carrled by the reduced end of the tube"and adapted to bear against the winnot to be construed, as requiring the spring to be held from longitudinal movement in either direction, which would compel the reduction of the end of the tube, which constitutes the invention, to be effected by compression; but the claim is'to be read with the statement in the specification; -which- is :co-e;s:tensive with the actual luvention, tha t the spi'ing may be: prevented from pushing through the end of the tube, not only by compression, but also by turning over the end of the tube, forming an Internal fiange, or by indenting the end of the tube; and it is infringed by the use of anyone of those methods of construction.
Appeal from the Oircuit Oourtof. the United States for the Southern.District of New York. This was a suit by Henry. A. Fowler, John H. Lingley, and Samuel Fowler against H. L. Judd & Co., a corporation, for infringement of a patent.; . The circuit court rendered a decree for complainants. Defendant appealed. On the hearing in the circuit court the following opinion was rendered: Wheeler, District Judge,Thlll suit Is brought upon letters patent No. 466,940, dated-January 12, 1892, lUld granted to the orators Henry A. Fowler and, John' J!r, as. inventors,: to the o,rator Samuel Fowler, as assignee, for an Improvement in curtain rods, to be held between opposing sides of casings by 'the frtction of the ends made to press against the casings by springs. The infringement alleged Is of the first claim,Which is for: "(1) In a curtain rod, the combination, with It rod of a tUbe hll,ving one end inclosing and slid" ing on said rod, and having Its opposite endreduced in diamete,r,a spring in10ngitudin81 movement by. said reduced closed In. Sllid tube, and end of the tube, and a shell or tip carried by the reduced end of the tube, and adapted to bear against the window casing, substantially as described." The defenses are want of novelty; that the two orators were not inventors, and one JohnH. Bennett was,the inventor, of this improvement; and that defen4ant does not infringe. The defendant has pleaued, PlJ,t in evidence, and lelied upon various structures; brackets, rods, and fixtures made before, and patents for such things Issued before, the date of this invention; but none of these things shOW a curtain rod or analogous strJlcture held In place by the mere pressure of springs outwardly from the ends of t1).e rods against opposite parallel casings; and although,hi some or all of them, each of all the parts of the combination of this claim is found, in none of them are all of· these parts in the same combination found,and neither any nor llIl of them appear to anticipate this claim. The orators Fowler and Lingley, and one Carroll W. Dodge, as jo'nt inventors, on July 12, 1889, made an application for a patent for a curtain rod. which contained this claim: In a curtain rod, the combination of a rod or bar upon· which the curtain Is supported, a fiarlng shell forming a tip, a tubular sleeve, with one end of said sleeve inclosing the smaller end of said shell or tip, and forming a tight tit, whereby said shell and tube form practically a single piece, the opposite end of said tube being reduced in thickness, and inclosing and sliding upon the rod, so the curtain held upon said rod wlll slide freely over the tube, a shank preferably formed' integrally with said shell or tip, and concentric with the tube, and a spiral sllring held OIl said shank With' its bore slightly less than the, diameter of the shank, and with its end bearing against the InClOSed end of the rod, substantially as descrlbed,"-on which a patent was granted February 16, 1892, after the p3.tent in SUit, and Is owned by the orators. The specification stated that the tipscould be made of solid pieces of metal, and. the elastic blocks attached thereto, but that they considered it ,better to construct them, as represented In the drawings, of sbeet metal, liItalllped into the delilred form, with !:he rubber blocks
H.L. JUDD & CO. V.FOWLER.
823
inserted in the open ends. The constrnction of stamped tips to go Into the end of the tube, and support the ends of the spring,was not practicaNe. and solid tips were too heavy and expensive. These difficulties appear to have been stated by Fowler and Lingley to Bennett, who was a manufactur('r of the articles for the owners of the patent, and the tip was made to go over end of the tube, so it could be stamped out of sheet metal, and the outer end of the tUbe was reduced in diameter to hold the spring. Bennett appears to have made useful suggestions about these changes to overcome the difficulties. but he did not apply for a patent, nor claim the invention against them, and seems to have done what he did as an artisan, rather than as an inventor; and the presumption that l!'owler and Lingley were the inventors of this improvement, arising from the grant of the patent to them and their assignee. Is not overcome by the proof of what he did about It. It Is argued th:1t som?how the pendency of the application of Fowler, Lingley, and Dodge deprived Fowler and Lingley of the right to claim the Improvements of this patent against Bennett, or account for his failure to apply for a patent for these 1m· provements himself. But they owed him no duty, and he had no rights in the matter unless he was an inventor. Whether he was or not has be2n eonsidered In view of all the circumstances. The patent in suit was expres,ly made subject to the prior application of Fowler, Lingley, and Dodge, then pending, and, of course, covers only improvements upon the invention described in It. For such improvements the patent seems to be valid. The defendant has proceeded somewhat upon the claim of Bennett that he, :and not Fowler and Lingley, was the inventor of this improvempnt, which, a" now considered, falls. Besides this, the defendant has changed the form of the tube by turning In the outer end to keep the spring from being forced through it, illstead of reducing its diameter by a taper, and bent (Jut the end of the wire of the spring, or crooked the spring itself, to engage with the tube, and keep the spring from falling out in putting up or taking down the strncture. The tube reduced, In dIameter of this claim of the patent is said in argument to be a tube reduced in every diameter producing a true taper, which wlll, by its reduction In that manner, hold the spring from longitudinal movement, from which the tube and spring of the defendant so differ as not to infringe. This claim originally was for: "(1) In a curtain rod, the combination -of a sliding tube, having its outer end reduced in diameter, as described, a spring with its outer diameter less than the internal diameter of said tube, but slightly greater than the Internal diameter of the reduced section of said tube,by which said spring is held within said tube, substantially as described." This claim was rejected as Incomplete, with a suggestion that it be amended to include the rod, tubes, spring. and caps. The specification was thereupon amended by inserting: ·".rhe ends of the tubes are sufficiently contracted in diameter to prevent the end of the rod from being pushed through the end of the tube, and crowding the disks out of the tip as the spring is being compressed by the sliding motion of the tube on the rod, In the (Jyera· tion of applying the curtain rod to the window casing. The compression of the tube is thus made to serve a double purpose,-in holding the spring from falllng out of the tube when the tUbe is removed from the rod, and also in preventing the end of the spring from being pushed through the end of the tube and against the disk as the spring Is compressed against the end of th,' rod. This latter purpose can obviously be secured by turning over the end of the tube, thereby contracting the opening, and forming an internal flange, by which the end of the spring will be held from contact with the disk, or the end of the tube which Is held in the tip can be indented, so as to reduce its internal diameter, and hold the outer end of the spring from 10ngitudiullI movement while it is being compressed." And the claim was made to be as it now is. The claim Is to be read with reference to the specification. When so read, the description of a tube as reduced In diameter, holding an inclosed spring from longitudinal movement by its reduced end, will as well, although not se> aptly, include the tube of this amendment as that of the other form. If thifl were not so, the changes of form of the end of the tube and of the mode of engaging the spring in the defendant's structure do not alter thelt' mode of ..>peration, and seem to be immaterial. They do the same thing, In substan·
824
nDlmAL REPORTER, vol.
61.
tlallythe ,fatpe way, as the '!Orresponding parts of the patented inventIon, the .ubstance.'ot .which· the defendant appears to have taken-The detendant, therefore, 'appears to infringe. Let a decree be entered for the orator.
Arthur v. Briesen, for appellant. StewartChapiin (D. H. Driscoll, on brief), for appellees. Before 'WALLAOE, LACOMBE and SHIPMAN, Circuit Judges. SHIPMAN, Circuit Judge. appeal calls in question the correctness of a decree of· the circuit court for the southern district of New York, which sustained the validity of letters patent NOJ 466,940, dated January 12, 1892, and issued to the complainants FOWler and Lingley inventors, and to the complainant Samuel Fowle.r as assignee, for an improvement in curtain rods, and which alElOadjudged that the defendant had infringed the, first claim of thE! patent. On July 12, 1889"the inventors, Fowler and LingleY, and Oarroll W. Dodge, applied for letters patent foJ,' an Improved curU;rln rod, which, nUplbered 468,987, w,as issued on February 16, 1892. This patentis'for atube sliding, telescopically over the end ofa Curtain rod, the tube carrying atone end a tip' or head to recei:ve ,an, .' elastic disk' which 'beal's' against the' window casing, and having a spring illclosed within thetube, one end of the spring bearing against the end of the'rod. The tension of the spring forces the tube away from the end of the rod, and thus enables the elastic' disk ,to be held firmly against tIle casing. Previous devices, of this sort were either, fastened to the woodwork, or the ends of the rod were made to press against the casing by a screw thread. The novelty of the invention c6nsisted in holding the rod in place solely by the outward push of a spring. The patentees began tonlanufacturecurtain-rod tips of this sort in June, 1889, and ceased the manufacture during the next month. The device was defective· because the pressure of the spring was exerted directlyagainst the helld, and pushed it out of, the tube, unless it was solid and soldered into the tube,-a construction which made the manufacture too expensive. Fowler and, Lingley, the two inventors named in the patent in snit, thereupon sought for, and invented, an: 'impr0V'em¢nt which should obviate the defect, and ap1890, for a patent therefor, which, was issued as plied, on No. 466,940, and was, by its terms, made subordinate to the Fowler, Lingley, and Dodge application then pending in the patent office. As the dl:!ci$ion of the case depends entirelyu'pon the construction to be.,giyen. to the first claim, and as the const,ruction depends of the claim in connection with the specifiupon an cation, andlwiththe history of the application in its progress through the patent office, it is, important to quote the specification with The material portion iii as follows: "B is a rod' torming the central section of our improved rod, and can be of metal or other material, as wood, or of wood covered with metal, or It can consist of a piece of tubing. Upon each end of the central rod, B, we place the telescopic 'sliding tubes, C, C, with their Inner· ...nds ground or turned down to an edge In order to aUowtlle rings or the hem of a curtain to slide freely
H. L.JUDD & CO. V. FOWLER.
825
over them. The outer ends of the sliding tubes, C, C,· are compressed or reduced in diameter by compression or upsetting. On the reduced outer ends of the sliding tubes, C, C, are placed the tips, D, D, which are either tubular in form, as represented in Fig. 4, or flaring or bell-mouthed, as represented in Fig. 3, the special form of the tip itself being Immaterial. Within the tip, D, and resting upon the ends of the sliding tubes, C, are the dis1l::s, E, and upon the disks, E, are placed the rubber disks, F, F. Springs; G, G, are inclosed within the sliding tubes, C, tJJ.e outer diameter of the springs being larger than the internal diameter of the sliding tubes, C, at their reduced ends, C', C' . The springs are large enough to require considerable pressure to cause them to enter the ends, C' , C', and they are held in place by the pressure of the springs against the inner surface of the sliding sleeves at their reduced ends, C' , C' , and kept from falling out of the tubes when they are removed from the ends of the rod, B. The. opposite ends of the springs, G, G, rest against the ends of the rods, B, and as the entire length of the curtain rod, witQ. the ends as applied, .Is longer than the space between the sides of the casing, so that, when it Is applied to the casing, the springs, G, G, are compressed, their tension exerts a pressure against the sides of the casing, which serves to hold the rod firmly in position. (The ends, C' , C' , are sufllciently contracted in diameter to prevent the spring, G, from being pushed through the end of the tube, C, and crowding the disks, E and F, out of the tip, D, as the spring, G, is being compressed by the sliding motion of the tube, C, on the rod, B, in the operation of applying the curtain rod to the window casing. The compression of the tube, C, Is thus made to serve a double purpose,-in holding the spring, G, from falling out of the tube, C, when the tube is removed from the rod, B, and also In preventing the end of the spring from beIng pUshed through the end of the tube, and against the disk, E, as the spring Is compressed against the end of the rod, B. This latter purpose can obviously be secured by turning over the end of the tube, C, thereby contracting the opening, and forming an internal flange, by which the end of the spring will be held from contact with the disk, E, or the end· of the tube, C, which Is held in the tip, D, can be Indented so as to reduce its internal diameter, and hold the outer end of the spring from longtitudinal movement when it is being compressed.)"
The part of the specification inclosed in parentheses was introduced by amendment. The first claim is as follows: "(1) In a curtain rod, the combination, with a rod, B, of a tube, C, having one end inclosing and sliding on said rod, and having Its opposite end reduced In diameter, a spring inclosed in said tube, and held from longitudinal movement by said reduced end of the tube, and a shell or tip carried by the reduced end of the tube, and adapted to bear against the window casing, substantially as described."
The invention consisted in reducing in diameter the outer ends of the sliding tubes, whereby they received the force of the outward thrust of the springs, which were thus prevented from being pushed through the ends of the tube, and, as the tips no longer needed solidity to withstand the pressure of the springs, they were 1'1aced over the reduced outer ends of the tubes. The compression of the tube, in addition to its preventing the end of the spring from being pushed through the end of the tube, also kept the spring in position by friction, and thus prevented it from falling out when the tube was removed from the rod. In order to accomplish the first and main object of the improvement, the specification states three ways in which the ends can be reduced in diameter: First, by compressing them; secondly, by turning over the end, thereby forming an internal flange which will hold the end of the spring
826 '
FEDERAL, REPOBT:&R,
vol. 61.
a;waY{l"9Dl the disk thitdly,byrindenting the end: ,of the tube. ' .ys that in itseurtain-rodtipS·"'the The of the tubejs turned ip:ward slightlya,tlts extreme end, and Ms ears; bent in ,from a point or short distance 'back from the in'fQrnl a 'stoP to prevent the end of the spring from being pushe4;,t.1u:Oughtheouter end of the tube," and that "the result is that a simply abuts against the stops formed by theseintornedears, andis not held froIlllongitudinal JD,Qvement by the reduced'el1d of the tubel' It is further said that the,reduced ends do not hoJ4: retain 'the springs, but ,that they are. kept from falling or ,bowed 9utwardly, so as to beat" a,gaJ,nst the out teriar of ,the tube and friction with it, and consequently that reduced ends perform only one function of the patented, metl1.od ,of construction. A further distinction is said to exist the two structures, in ;that whereas, in .the complainantlfpatent,the reduced outer ends of the tubes form a neck or seat the tip, in the construction of the defendant's articles the 'tlpgQe$ overih,e! reduced end" and is forced upon that portion of tAeexteriorof the outer end of the tube whicbris not reduced . in diameter;: Tlle #teIIttltto avoid infringement rests mainly, if not entirely, upon such a cOnstruction of the llrstclaimas to limit it to one mode of reducing the end of the tube, viz. by compression, and to exclude the modes named in the amended specillcation,-Hby turning over. the end of the tube,"orby indentation. The theoryof the defendant is that ijle clabn, as finally allowed by the patent office, was so reduced in scope as to limit it to that feature of construction which, would the spring from longitudinalmovement in either direction. "The original application contained three claims which were properly rejected as "incomplete and vague." The amendment in· cluded in parentheses was then made, and three new claims were written,thefft'rst of which is as follows: "In acUJ.'tal,nrod, the combination with a rod,B, of a sliding tube, C, having its outerenQ;reduced to hold !J.n Inclosed spring from longitudinal a spring in li!aid sliding tube, and a tip carried by said sliding tube, a.nd adapted to bear against the window casing, sUbstantially as described."
The second' ,and third clnims referred to particular features of the device,and are not important in this case. The first and second claims were rejected H .the patent to La Dow, in connection with on patent of raeord." The patent to Charles La Dowdated April22i ,1884-wllsfor a suspensory rod, which consisted of a rod provided at one end with a socket button, and at the opposite end with a· nut upon the screw-tbreaded end of the rod. TMfrictional contactwith the opposing surfaces of the win· dow casings was e1fectedby the rotation· of the screw-threaded rod. The patent to JamesB. Sttlyth-No.:192,663, dated July 13,1877was fop an improvement, in a rotating ,window-shade roller, .so that the roller could be Illade longer or The only part of the deviceW:hichseems to have any relation to the patented device of the patent in suit is tha'tthe axle of. a pulleY wheel at the end of
JVl?D "'.
co..1'·. FOWLER.
827
the roller is held against the bearing, which is attached to the casing, and by which the roller'is supported,by the tension of a spiral spring, and thu,s the roller is prevented from. detached from its bearings. The roller 'is not held between the two casings by frictional contact. These two references seem to have little connection with the invention of the patent. But the real imperfection of the claim was that it did not clearly and with precision express how the various parts co-operated with each other. Thus, by "a sliding tube reduced to hold an inclosed spring from longitudinal move· ment," the draughtsman obviously meant that the reduced end was the 'means which held· the spring from longitudinal movement; but the operative character of the combination was much better expressed by the langUage subsequently The defendant insists that the language of the claim, as finally amended, which was that the spring was held from longitudinal movement by the reduced end of the tube, requires that the reduced tube should prevent the spring from moving longitudinally in either direction, and that such requirement compels the reduction to take place by compression. If this construction was necessary, in view of the state of the art, or of the limitations in the specification, or of the requirements of the patent office, it would merit favor; but it is not required by either of those considerations. The specification was coextensive with the actual invention, and described three ways in which the spring could be prevented from being pushed through the end of the tube,-by compression, or by forming an internal flange, or by indenting the end so as to hold the outer end of the spring Irom longitudinal movement. The claim requires the end to be reduced in diameter, and specifies that the spring was to be held from longitudinal movement by the reduced end, the specification having particularly described three ways in which the end of the spring could be thus held. The claim does not limit the invention to such means of reducing the internal diameter as shall entirely prevent the spring from movement. The defendant took one of the methods of construction described in the specification, and included in the claim. It is not of importance that it did not take the best method which waS' so described. The defendant's remaining answer to the charge of infringement! is that, by a proper construction of the claim, the reduced end is to form the entire seat for the neck of the tip, whereas. in the defendant's device, the tip is said to be carried or have its seat by that portion of the end of the tube back of the reduced podion, which is of full diameter. The point seems too wire-drawn to require discussion. The specification said that "on the reduced outer ends of the sliding tube, 0, 0, are placed the tips, D, D." This part of the patented invention consisted in the fact that the reduced end of the sliding tube received or carried, or upon it was placed, the neck of the tip. The decree of the circuit court is affirmed, with costs.
&28
FEDERAL REl'ORTER,
SHAPLEIGH T. CHESTER ELECTRIC LIGHT & POWER 00. et al. (CIrcuit COurt, E. D. Pennsylvania. May 29, 1894.)
f-l'llerl:lllaplelgh patent No. 433,187, for a "safety cut-olf" for electrical apconstrued, and held not infringed.
This. 'vasa bill by M. S. Shapleigh against the Chester Electrio Light & Power Compap,y and others, for 'iDfringement of a patent. Hea,ra on the pleadings and proofs. ' Mark W. Collet, JohnJt. Bennett, and Randall Morgan, for com· plainall.'t. . . & Taylor, for respondents. ,:,'1' i. ,,'," .., ','
DALLAS, Circuit Judge. suit is brought by Marshall S. Shapleigh upon letters:patent No. 433,187, dated July 29, 1890, granted to him for a "safety cut-off." The claims which he alleges the defendants have infringed areas follows: "(1)' 'rhe combination of& pair of spring clamps; a fuse placed between the jaWl:\< of said clamps .and automaUcally clamped thereby, and terminals providedwitQ lateral suPPOrts operating to compress the jawl'l of said clamps externallY,sub,smntially as described. . ' "(2) The combination of a pair of spring clamps insulated from each other except through the fuse, terminals placed on a suitable insulating biock, arid provitled With lateral supports, between which the jaws of said clamps pass, andareCOIllpressed externally, and a automatically held by and betweeB the ja,ws of,said clamps, substantially as described." . "(4) The combInation of a pair of spring contact clamps, made of an elastic condu,ctingiwaterlal, and provided with jaws, by and ·between which the tuse Is ,pIaQe4and automatle&lly with a pair of terminals placed on a. sulPl-ple Ipsulating block, and prO,vtded with lateral supports operating to, compress the jaws of the clamping contacts externally, substantially as described." . , , "(7) The combination of a block provided with two terminals, supports of conductillg material connected to said. terminals, and in permanent mechanical connection therewith, a pair of spring clamps prOVided with jaws connected by an insulating piece, and a fuse, the whole being arranged so that the jaws are pressed up-on the fuse automatically, and complete the circuit between .theterminals." "(9) The Combination ofa pair of spring clamps Insulated from each other, and provided with jaws, a fuse automatically held by and between the jaws of said clamps, and terminals provided with lateral supports sufficiently close to compress the jaws, substantially as described."
Safety cnt·o:lts were new with this inventor. Before the pat· ent in suit was applied for, they were well known, and, as in the complainant's device, their principal constituent was a strip of metal more fusible than. the conducting wire employed throughout the system generally. These more fusible pieces are themselves without fusing, the current intended to be capable ot transmitted, and, being interposed as a part of the continuous conductor! they simply form, so long as the normal current is not exceeded, a small section of any circuit to which they are applied; but if and when, from any cause, the ordinary current is materially