Shanklin Corporation v. Springfield Photo Mount Company

521 F.2d 609, 187 U.S.P.Q. (BNA) 129, 1975 U.S. App. LEXIS 13043
CourtCourt of Appeals for the First Circuit
DecidedAugust 20, 1975
Docket75-1061
StatusPublished
Cited by23 cases

This text of 521 F.2d 609 (Shanklin Corporation v. Springfield Photo Mount Company) is published on Counsel Stack Legal Research, covering Court of Appeals for the First Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Shanklin Corporation v. Springfield Photo Mount Company, 521 F.2d 609, 187 U.S.P.Q. (BNA) 129, 1975 U.S. App. LEXIS 13043 (1st Cir. 1975).

Opinion

LEVIN H. CAMPBELL, Circuit Judge.

Plaintiff Shanklin Corporation sued Springfield Photo Mount Company for infringement of its patent, No. 3,583,888. The claimed infringing device, “Weldo-tron Model 5872 Automatic L Bar Package Forming System,” is manufactured by Weldotron Corporation, which is the real party in interest defending in this action. The district court held that the patent was invalid and unenforceable, 387 F.Supp. 345 (D.Mass.1975), and Shanklin appeals.

Shanklin’s patented apparatus is an “in-line” packaging machine, a term used when the articles to be wrapped follow a straight-line path to*- and through the machine. The wrapping material, a thermo plastic film, must be heat seala-ble so that its edges can be sealed around the articles being wrapped, and it may be heat-shrinkable so that the pack *612 ages formed- by the machine can be passed onto a conveyor and through a hot air tunnel to be shrunk into a ti-ghtwrap. A supply roll of the film is located out of the straight-line path of the articles, and the film is drawn from the roll into the articles’ path, where it makes a 90° turn to follow the remainder of the path. The film must be in a folded condition (longitudinally along its center) while on the roll or before it turns the corner. By being tracked over a u-shaped rod called an “inverting head,” 1 the folded film is able to turn the corner into the article path and in the process effectively turned inside out so that its sides are separated and capable of receiving an article passing along the in-line article path through the inverting head. The article to be wrapped, passing between the film’s open sides, presses against a previously made transverse seal across the film to advance the film into a sealing area. There an L-shaped bar (“L-sealer”) seals the film longitudinally along the side of the article and transversely behind the article, thus forming a complete closure around the article. The film is severed at this transverse seal in such a way as to separate the completed package from the roll of film and also to provide the forward edge for the next article to be packaged. The articles can be passed either manually or automatically by a mechanical pusher.

The application for the Shanklin patent was filed on April 10, 1969. The Patent Office examiner initially rejected all claims, principally on the basis of Deans, et al. patent No. 3,420,035, which shows an in-line continuous-motion packaging machine. The examiner stated that it would be obvious to modify the Deans machine in accordance with prior art L-sealers (Hosso patent over sealing mechanism and Krai patent over feeding mechanism, which conveys articles to be packaged at right angle to the straight-line path of the film) to achieve the Shanklin claims. In particular, the examiner stated,

“The patent to Deans et al. discloses a packaging method and apparatus, the apparatus comprising film supply means 19 for feeding film transversely to the path of an article infeed conveyor and to an inverting head 22 having edges at approximately 45 degrees to each path (Fig. 1), which head folds the film about the articles so that longitudinal and transverse seams may be made to form packages, the transverse sealing means being used to draw film through the inverting head. While roll 20 is flat sheet, the apparatus of the patent to Deans et al. does fold the sheet to a V-shape as at 21, Fig. 1, prior to the inverting operation. The patent to Hosso shows that it is conventional, in apparatus for packaging articles in U-folded webs, to provide a generally U-shaped film spreader member 20, 24 having generally parallel upper and lower surfaces. In view of this teaching it would be an obvious modification, if such were desired, to bend member 22 of the patent to Deans et al. to a U-shape.”

Shanklin responded that the Deans patent was deficient in its disclosure of the folding head — that it showed the desired result of folding the web without showing how to accomplish the result. Shanklin pointed out that in the Deans machine the web could not be folded into a v-shape prior to an inverting operation as stated by the examiner. In any event, according to Shanklin, it was unnecessary for Deans to describe the folding mechanism in detail because folding heads are old in the art and have been frequently used to wrap flat film around a mandrel, or forming head, to form a tube while articles to be packaged are passed through the mandrel into pouches as they are formed. Shanklin stated that, by contrast, the present invention involved pre-folded film turned inside out around an inverting head, thus per *613 mitting the film to pass through the sealing machine in a single plane simply, efficiently, and without elaborate film guides — a result which is particularly useful in L-sealers. Shanklin stated,

“Because of the structural requirements of the machine frame, L-sealers have used center folded film since they were first invented. Unfortunately, the center folded film has made it necessary to insert the product into the folds of film at right angles to the direction of travel of the film. The inverting head turns the prefolded web of film inside out thus permitting the product to be inserted in the same direction as the travel of the film through the sealing head while still using center folded film and thereby obtaining the advantages of the horizontal film webs. The product, in effect, is placed on the ‘outside’ of the webs of film which becomes the ‘inside’ upon passing over the inverting head. Prior to the invention of the inverting head, this was not possible.”

The Patent Office examiner, in a “final” action, rejected the argument that the Deans folding head was insufficiently disclosed and again rejected all claims for the reasons stated originally. The inventor, F. Garrett Shanklin, subsequently had an interview with the examiner, and this was followed by an amendment submitting revised claims and containing remarks of what had transpired at the interview. The amendment states that at the interview Mr. Shanklin, in addition to showing three short motion pictures to demonstrate his machine, explained that it was a great improvement over prior art L-sealers, in which articles followed a right-angle path, because the Shanklin machine provided increased speed of operation and ease of adjusta-bility for packaging articles of varying size. As for the Deans patent, Mr. Shanklin explained that when he first started to develop a straight-line L-sealer, he had tried a film feed and folding means similar to Deans’s, using a roll of flat film mounted vertically and centered on a horizontally oriented and u-shaped folding head:

“This proved to be unsuitable for an L-type sealer where the film is advanced by the motion of a package pressing against a previously made seal in view of the fact that when the final transverse seal is made as to any given package all tension on the film is released and the film goes slack until the leading edge of the next succeeding package presses against the previously made seal. While the film in the experimental head would track as long as constant tension was maintained on the film, the film tended to slide down off of the folding head whenever the film was permitted to go slack.

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Bluebook (online)
521 F.2d 609, 187 U.S.P.Q. (BNA) 129, 1975 U.S. App. LEXIS 13043, Counsel Stack Legal Research, https://law.counselstack.com/opinion/shanklin-corporation-v-springfield-photo-mount-company-ca1-1975.