WESTENHAVER, District Judge.
This is the usual patent infringement suit. It is based on United States letters patent 1,108,-[600]*600164, issued to Theodore Kemer, August 25, 1914, on application filed April 15,1912, and by him assigned to plaintiff. Claims 1,2, 3, 5, and 6 are in issue. The defenses are invalidity, in view of the prior art, for lack of novelty. and of patentable invention, and also noninfringement, in view of the specific limitations imposed by the patent claims.
As is usual in patent eases, the record is quite voluminous. Defendant has cited and relies on a large volume of prior art. The parties are disagreed sharply on the question of invention, and also on the interpretation of the claims. Due consideration has been given to all this prior art, and to the respective contentions of counsel. As it is highly improbable that parties or counsel will rest content with my decision, I shall merely state my conclusions briefly, with sueh explanatory comment as will be sufficient to show the basis on which they are rested.
Kemer’s invention is for a garbage and refuse incinerator. The inventor’s object, as stated in his patent, was to dispose of garbage and refuse, sueh as paper, bottles, tin cans, etc., in apartment buildings, hospitals, and residences, in a convenient and sanitary manner, and to utilize for this purpose chim■neys, or flues with which sueh buildings are ordinarily provided, and largely without the aid of other fuel than, the combustible matter of the refuse and garbage. His invention has accomplished these results. It has had marked commercial success. In the early days it was difficult to prevail upon architects and builders to adopt and specify sueh an incinerator as a part of building plans, but, after proving its efficiency, and in recent years, it has been widely installed and used. Undoubtedly Kemer was the first to produce and install an efficient and practical device of this nature. It is not too much to say that he has created a new art or industry. As usually happens when success has been thus attained, others have entered the same field and developed competing devices, having more or less the same characteristics, to accomplish the same purpose. Defendant’s device is of that nature. Its only differences pertain to the form of what is called the bypass, and of what is called the overhanging wall of the cremating chamber.
Of the prior art now relied on to repel novelty and to disprove invention, part was cited and considered by the Patent Examiner. Of the patents considered by him, defendant’s counsel stress, as most pertinent, Close, 380,383; Lowe, 949,986; and Vale, 817,022. Kemer’s patent has been litigated in the District Court of Minnesota, and its validity sust ined in an opinion by District Judge Morris, filed July 9, 1920. So far as the answer in the case discloses, the prior art relied on therein as most pertinent was also that considered by the Patent Examiner. In his opinion, which was delivered orally, District Judge Morris discusses only the patent to Close.
It is now contended by defendant’s counsel that the prior art considered by the Examiner and by Judge Morris is not all, nor even the most pertinent. Of the additional art now cited, defendant’s counsel stresses, specially, Robb, 376,550; Field, 806,127; and Thum, 807,219. In particular it is said that Robb is a complete anticipation. In' my opinion, Lowe, cited in the Patent Office and in the case heard by Judge Morris, is the most pertinent. He was the only inventor consciously intending to devise a structure designed to accomplish the same results as does Kemer. The structure illustrated in Lowe’s drawings and described in his specifications, is, in my opinion, the nearest approximation to Kerner. Robb was trying to accomplish something different. The pertinency of Robb resides more in the language of the specifications, and particularly of the ■claims, than in similarity of structure or of function.
A detailed description of Kemer’s device is unnecessary. His commercial apparatus follows closely Fig. 3. It does not usually include a stove or furnace with the draft pipe entering the ventilating flue or garbage chute. This, however, is not an essential element of Kemer’s invention, nor specifically called for by any of the claims of his patent.
Nor would a detailed description of the structures disclosed in the several prior art patents serve any useful purpose. It is sufficient to say that neither Lowe nor Robb, separately or in combination with the others cited, anticipates Kemer. This, I think, is too clear for controversy. Whether, in view of that art, the quality of invention should be accorded to Kemer, is more difficult. Invention is always a question of fact. It depends upon the special facts of each case. Whether it can be found to exist can be answered only after an examination of all the art. In my opinion, Kemer made a meritorious invention.
In this instance, the Patent Examiner, upon- consideration of art as persuasive as any now cited, passed the patent to issue. Upon like consideration, District Judge Morris found in favor of patentable novelty and invention. It does not detract from, the weight to be given his opinion that he [601]*601deemed it unnecessary to discuss any other patent than Close, nor that he did not find time to prepare and file a written opinion. I agree with his conclusion that more than mere mechanical skill was required to develop the Kemer structure from the prior art. Lowe, as late as 1910, attempted to do so, and yet, with Close, Robb, Field, and Thum before him, could do no better than to produce the complicated and impracticable device disclosed in his patent. He was unable to reach Kerneris primary conception of a single flue, capable of serving as a chimney and garbage chute and a ventilating flue, and of a combined garbage receptacle and crematory chamber created by enlarging the lower end of that single flue. Lowe, even more than Robb, was attempting to accomplish what Kerner did, but fell far short. His structure is not capable of realizing the benefits and advantages sought and obtained by Kemer. Aside from the quality of the mental concept, it is evident, from this futile attempt, that more than mechanical skill was required to reorganize and reconstruct Lowe or Robb into the Kemer device, or to assemble therefrom into a practical apparatus the elements of the Kemer patent. In attaining that mental conception, and in devising means to embody it, the other patents cited add little or nothing to Lowe or Robb, and do not call for separate comment.
The authorities have been examined. It will serve no useful purpose to review them. It is unfortunately true that extracts can be quoted from opinions tending to support any side of any contention which one cares to make in this domain of the patent law. It is for this reason that adjudged eases are usually of little help in determining whether invention is present or absent. For purposes of illustration, however, attention is called to Concrete Appliances Co. v. Meinken (6 C. C. A.) 262 F. 958, involving Callahan patent, 946,719, for a concrete distributor. The reasoning of that case is pertinent to the present situation. The considerations making in favor of invention in Kerneris patent are much stronger than were there held sufficient to sustain the Callahan patent. In my opinion, invention over the prior art is much clearer upon the present record than it was in Callahan’s favor upon that record. I am not overlooking the fact that the United States Supreme Court, in Concrete Appliance Co. v. Glomery,1
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WESTENHAVER, District Judge.
This is the usual patent infringement suit. It is based on United States letters patent 1,108,-[600]*600164, issued to Theodore Kemer, August 25, 1914, on application filed April 15,1912, and by him assigned to plaintiff. Claims 1,2, 3, 5, and 6 are in issue. The defenses are invalidity, in view of the prior art, for lack of novelty. and of patentable invention, and also noninfringement, in view of the specific limitations imposed by the patent claims.
As is usual in patent eases, the record is quite voluminous. Defendant has cited and relies on a large volume of prior art. The parties are disagreed sharply on the question of invention, and also on the interpretation of the claims. Due consideration has been given to all this prior art, and to the respective contentions of counsel. As it is highly improbable that parties or counsel will rest content with my decision, I shall merely state my conclusions briefly, with sueh explanatory comment as will be sufficient to show the basis on which they are rested.
Kemer’s invention is for a garbage and refuse incinerator. The inventor’s object, as stated in his patent, was to dispose of garbage and refuse, sueh as paper, bottles, tin cans, etc., in apartment buildings, hospitals, and residences, in a convenient and sanitary manner, and to utilize for this purpose chim■neys, or flues with which sueh buildings are ordinarily provided, and largely without the aid of other fuel than, the combustible matter of the refuse and garbage. His invention has accomplished these results. It has had marked commercial success. In the early days it was difficult to prevail upon architects and builders to adopt and specify sueh an incinerator as a part of building plans, but, after proving its efficiency, and in recent years, it has been widely installed and used. Undoubtedly Kemer was the first to produce and install an efficient and practical device of this nature. It is not too much to say that he has created a new art or industry. As usually happens when success has been thus attained, others have entered the same field and developed competing devices, having more or less the same characteristics, to accomplish the same purpose. Defendant’s device is of that nature. Its only differences pertain to the form of what is called the bypass, and of what is called the overhanging wall of the cremating chamber.
Of the prior art now relied on to repel novelty and to disprove invention, part was cited and considered by the Patent Examiner. Of the patents considered by him, defendant’s counsel stress, as most pertinent, Close, 380,383; Lowe, 949,986; and Vale, 817,022. Kemer’s patent has been litigated in the District Court of Minnesota, and its validity sust ined in an opinion by District Judge Morris, filed July 9, 1920. So far as the answer in the case discloses, the prior art relied on therein as most pertinent was also that considered by the Patent Examiner. In his opinion, which was delivered orally, District Judge Morris discusses only the patent to Close.
It is now contended by defendant’s counsel that the prior art considered by the Examiner and by Judge Morris is not all, nor even the most pertinent. Of the additional art now cited, defendant’s counsel stresses, specially, Robb, 376,550; Field, 806,127; and Thum, 807,219. In particular it is said that Robb is a complete anticipation. In' my opinion, Lowe, cited in the Patent Office and in the case heard by Judge Morris, is the most pertinent. He was the only inventor consciously intending to devise a structure designed to accomplish the same results as does Kemer. The structure illustrated in Lowe’s drawings and described in his specifications, is, in my opinion, the nearest approximation to Kerner. Robb was trying to accomplish something different. The pertinency of Robb resides more in the language of the specifications, and particularly of the ■claims, than in similarity of structure or of function.
A detailed description of Kemer’s device is unnecessary. His commercial apparatus follows closely Fig. 3. It does not usually include a stove or furnace with the draft pipe entering the ventilating flue or garbage chute. This, however, is not an essential element of Kemer’s invention, nor specifically called for by any of the claims of his patent.
Nor would a detailed description of the structures disclosed in the several prior art patents serve any useful purpose. It is sufficient to say that neither Lowe nor Robb, separately or in combination with the others cited, anticipates Kemer. This, I think, is too clear for controversy. Whether, in view of that art, the quality of invention should be accorded to Kemer, is more difficult. Invention is always a question of fact. It depends upon the special facts of each case. Whether it can be found to exist can be answered only after an examination of all the art. In my opinion, Kemer made a meritorious invention.
In this instance, the Patent Examiner, upon- consideration of art as persuasive as any now cited, passed the patent to issue. Upon like consideration, District Judge Morris found in favor of patentable novelty and invention. It does not detract from, the weight to be given his opinion that he [601]*601deemed it unnecessary to discuss any other patent than Close, nor that he did not find time to prepare and file a written opinion. I agree with his conclusion that more than mere mechanical skill was required to develop the Kemer structure from the prior art. Lowe, as late as 1910, attempted to do so, and yet, with Close, Robb, Field, and Thum before him, could do no better than to produce the complicated and impracticable device disclosed in his patent. He was unable to reach Kerneris primary conception of a single flue, capable of serving as a chimney and garbage chute and a ventilating flue, and of a combined garbage receptacle and crematory chamber created by enlarging the lower end of that single flue. Lowe, even more than Robb, was attempting to accomplish what Kerner did, but fell far short. His structure is not capable of realizing the benefits and advantages sought and obtained by Kemer. Aside from the quality of the mental concept, it is evident, from this futile attempt, that more than mechanical skill was required to reorganize and reconstruct Lowe or Robb into the Kemer device, or to assemble therefrom into a practical apparatus the elements of the Kemer patent. In attaining that mental conception, and in devising means to embody it, the other patents cited add little or nothing to Lowe or Robb, and do not call for separate comment.
The authorities have been examined. It will serve no useful purpose to review them. It is unfortunately true that extracts can be quoted from opinions tending to support any side of any contention which one cares to make in this domain of the patent law. It is for this reason that adjudged eases are usually of little help in determining whether invention is present or absent. For purposes of illustration, however, attention is called to Concrete Appliances Co. v. Meinken (6 C. C. A.) 262 F. 958, involving Callahan patent, 946,719, for a concrete distributor. The reasoning of that case is pertinent to the present situation. The considerations making in favor of invention in Kerneris patent are much stronger than were there held sufficient to sustain the Callahan patent. In my opinion, invention over the prior art is much clearer upon the present record than it was in Callahan’s favor upon that record. I am not overlooking the fact that the United States Supreme Court, in Concrete Appliance Co. v. Glomery,1 decided November 16, 1925, held the Callahan patent invalid; but this conclusion was reached upon the basis of additional prior art, and it is said that the conflict with the Meinken Case is apparent, and not real, because the invalidating prior art was not then brought forward. Upon principle, the Meinken Case remains a persuasive authority.
Infringement is denied chiefly because of the limited nature of all the claims of the Kemer patent in issue. It cannot be denied that defendant’s apparatus functions in precisely the same way and realizes the same results in no different or better manner. It was testified by Burt Sanborn, janitor in charge of the apartment in which defendant’s infringing structure was installed, that he operates it in the manner described in Kerneris specifications, rather than in the way described in defendant’s advertising literature, using supplementary fuel only at intervals, in order to incinerate the noneombustible residuum of the refuse and garbage. As already indicated, the substantial difference is in the by-pass and the overhanging wall. Defendant’s device distributes the bypass from the ash pit below the grate to the cremating chamber above the garbage and refuse around all four sides of the garbage receptacle; whereas Kemer places the bypass at one side. Defendant places the flue in the center of the top of the cremating chamber, with a wall formed by the top of the crematory chamber, overhanging all the bypasses; whereas Kemer placed his flue at that side opposite the by-pass, thereby forming a more extended overhanging wall. In function and in result there is no substantial difference.
All the claims in issue of Kerneris patent call for a cremating chamber “having an overhanging wall at its top to one side of the flue leading therefrom,” and also a by-pass from the ash pit below the grate, opening at its upper end “into the space above the refuse receptacle and beneath the overhanging wall.” It is insisted that these are specific limitations imposed in the Patent Office and accepted by Kemer, in order to avoid the Patent Examiner’s interpretation of the prior art and to get a patent, and that Kemer is so limited that any structure modifying the overhanging wall or by-pass into a substantially different form does not infringe. It is true Kerneris original claims were all rejected, and that thereafter two amendments were made to his specifications, one in lines 51 to 53, page 1, and the other in lines 90 to 97, page 1, and that an entirely new set of claims was presented, all of which contain the language above quoted. These amendments and substituted claims were presented after a personal interview between Kerneris solicitor and the Patent Examiner.
[602]*602The extent to which claims are limited, and the range of equivalency to which Kemer is entitled, are questions not free from difficulty. However, the original specification and claims call for a cremating chamber, formed by the enlargement of the flue at its lower end; a refuse receptacle, formed by the grate and the enlarged portion of the 'flue; a grate of the form shown either in Fig. 1 or Fig. 2, and a by-pass to permit the unobstructed circulation of air from the ash pit below the grate, around, through, and across the top of the refuse or garbage. The' primary function of the by-pass was to permit this free and unobstructed circulation of air, either with or without the aid of artificial means from below the mass of refuse or garbage, through, around, and over it, in order that the garbage or wet refuse might be dried preparatory to burning it. This was Kernels primary conception. In his original specifications, no exact location was given for the by-pass or the flue. The by-pass might have been in a vertical line with the flue. The amendment gave the flue and the by-pass distinctive positions. The added object, if any, to be thus attained, was to direct the aif currents across the refuse material in the receptacle. The function, however, of maintaining an unobstructed draft, either with or without artificial means, through, around, and over the garbage, was fully and clearly disclosed in the original specifications. It does not seem to me that a particular form of overhanging wall was intended to be imposed as a limiting element in the claims.
Kemer is entitled to a range of equivalents commensurate with his contribution to the garbage and refuse incinerator art. He has made a meritorious invention, which has gone into wide use. It would be a narrow construction to limit his claims to an incinerator having an overhanging wall on one side and a flue positioned on the opposite side, or to a single by-pass at one side of the cremating chamber, having its upper end discharging under that wall. In my opinion, nothing in the Patent Office proceedings, the claims, or the law requites such a narrow construction. The lateral enlargement of the lower end of the draft flue or garbage chute produces overhanging walls. If the flue is at one side, the overhanging wall will be on the other. If the flue is in the center the wall will overhang all around it, just as in an ordinary stove. Defendant, by placing its flue in the center of the top of the crematory furnace, has created an overhanging wall of lesser extent on all four sides of the chamber. In addition thereto, defendant has distributed the by-pass around all four sides of the chamber, but the function of defendant’s different by-pass is to permit the free and unobstructed circulation of air from the ash pit below the grate, through, around, and above the garbage or wet refuse, whereby it may be dried, preparatory to being burned. Thus it appears that the substantial purpose and function remain the same. The changes of form in the grate, by-pass, overhanging wall, and in the location of the flue, do not introduce any new principle of operation. In my opinion, all the claims in issue are infringed.
A decree will be entered in conformity to the views herein expressed. Plaintiff will also recover costs. If desired, an accounting of profits and damages will be ordered.