Fassett v. Ewart Manuf'g Co.

58 F. 360, 1893 U.S. App. LEXIS 2873

• Court: U.S. Circuit Court for the Northern District of Illnois
• Decided: April 3, 1893
• Status: Published

Opinion

WOODS, Circuit Judge.

Suit for infringement of patent and injunction. In the opinion of the court, the patent in suit, in respect to the claims alleged to have been infringed, is invalid, for two reasons: Hirst, because it is not covered by the reservation contained in patent Ko. 347,338, (Case A;) and, second, even if the reservation were sufficient, the matter of this patent (Case C) was not divisional, or properly severable from the matter of the first patent, (A,) whether the severance be considered as direct, or as made through Case B.

The contention of the complainant is that the claims in the patent of Case A, and the claims of Case B and of the Howe patent, with which B was put into interference, were for specific constructions,— the first for an endwise, and the others for a sidewise, coupling machine, — while the patent in suit is fundamental and generic, and covers a machine made up of the parts named or described, whether arranged and combined for coupling by an endwise, sidewise, or other kind of thrust, and that, the first applications being specific, the reservation in Case A operated, as it was designed to do, to save to the applicant the right to put into Case B generic, claims, and that, having been prevented from doing that by reason of the declaration of interference between Case B and the Howe patent, Case 0 was a legitimate means of attaining the desired end. The reservation will not bear that construction. The reference, instead of being to broad or generic claims, was plainly to claims more specific than those of the patent, which were already to be found in Case B, covering the sidewise thrust, and not to any which were thereafter to be formulated, and addeded to the application in that case. The entire reservation is as follows;

“The feed chute, guide way, and means for pushing- the assembled links forward, a delivery wheel or device, the fulcrum plate or corner, operating mechanism, and such details of construction as are not herein broadly claimed, — form the subject of a separate application, (serial No. 174,982.)”

In other words, whatever is “broadly claimed” is to be found herein, but, for the elements specified with such details of construction as are not herein broadly claimed, reference is made to Case B, of which they “form the subject.” > The patent granted, though for an endwise coupling, showed the entire machine, with all its so-called fundamental or generic elements; and the evident purpose of the reservation was to guard the patent against being construed so broadly as to include the claims in Case B for the sidewise movement; the avowed object of the separation having been to bring about a declaration of interference between Case B and the Howe patent, and meanwhile to enable Case A to go, as it did, to un-delayed issue. There was necessity for guarding against such construction. The patent itself contains a suggestion of the applicability of the machine to the coupling of other “forms or patterns of chain links,” and in the caveat which Fassett had filed the mode, of construction for sidewise thrust had been expressly described and illustrated. Indeed,- — to my mind, though it is not a point necessary to be decided, — once the machine for the endwise coupling had been invented, it was only a matter of mechanical skill, and not invention, to adapt it to the sidewise thrust, and if Fas-sett was, as it seems clear he was, the first to invent the machine for the endwise thrust, the interference with Howe should have been resolved in his favor, on the ground that Howe’s patent was a. mere mechanical modification of Fass-ett’s device. Besides the manner of coupling shown in Howe’s patent, the sidewise coupling might have been effected without removing the chain guide or channel from its location directly under, and in the same vertical plane with, the feed chute. This could be done by causing each link, as it reaches the bottom of the chute, to be pushed a proper distance to-one side, and then either to be lowered or moved forward into position to be pushed into coupling by a counter sidewise thrusu A skilled mechanic would readily supply the means for these movements, and perhaps suggest other more simple or familiar modes of accomplishing the result. But, whether the decision upon the-interference was right or wrong, it is conclusive between the parties, since no steps were taken tp set it aside. Indeed, there has been an avowed acquiescence in the ruling.

In view of the terms of the reservation, and of the fact that the : applications in Cases A and B were prepared with the intention :that the latter should be put into interference with the Howe patent, the assertion that the complainant discovered that his. 'generic claims had been omitted from Case B when, on account of the interference, it was too late to add them, must be regarded as. an afterthought.'

Some of the considerations already advanced go far to establish the proposition that the matter of Case C was not severable from Case A, and that, by taking out the patent for a device arranged' to operate in a specific manner, the claimant abandoned to the public the more general claims which might have been predicated upon the same combination of parts. The conclusive consideration is that the so-called fundamental or generic claims and the specific claims, found in Cases A and B and in the Howe patent are for the same machine, as a whole, and not for different parts thereof, and are distinguishable only in respect to their scope. The generic claims are for a chain-link coupling machine, composed of the following elements, (as named in the reservation,) without restriction of the manner in which the coupling should be effected, viz. the feed chute, guide way, pusher, delivery wheel, fulcrum, and operating mechanism; while the specific claims are for the same machine composed of the same physical elements combined in the same general manner, but so arranged as to effect the coupling of the links in one case by an endwise, and in the other case by a sidewise, movement. Except those two, it does' not appear that any other mode of effecting the coupling-had been thought of as feasible or desirable, though it is conceivable that other modes might be used; and there was therefore no practical reason for prosecuting the generic claims, except to procure a patent which should dominate the other two, the effect, of which would be to nullify the decision in favor of Howe upon the interference, and to extend for eighteen months the monopoly acquired by the complainant under his first patent.

These results are perhaps not conclusive of the invalidity of the patent, but they justify and require a strict application of the doctrine of the patent office that applications for patents shall not be severable except upon structural lines; meaning, as I think must be held, upon physical lines which actually divide tlie machine into separable parts. It may happen, in proper cases for division, that some of the parts will be dominating; but 1hey must be less than the whole device, and separable upon a structural line from other physical parts. If the claims in question here were properly severable, it is difficult to suppose a case in which broad and narrow claims covering the same devices or combinations of elements might not be severed.

It has been argued that the action of tlie patent office in allowing a separation of the claims is conclusive, but the proposition is deemed unsound, and not established by the authorities cited in support of it.

The court, upon the whole; case;, finds for the defendant, and that the bill should be dismissed for want of equity.