General Subconstruction Co. v. Netcher

BAKER, Circuit Judge (after stating the facts as above). Appellant’s brief says: “The problem confronting Kwen was, first, rigidly to hold adjacent streets and heavy buildings on the treacherous soil of Chicago from falling bodily [242] into the deep hole or trench necessary for a deep substructure while the same was being excavated and the walls erected therein; and, second, simultaneously to manipulate the substances under such streets and buildings so as to produce a seal to minimize the escape of fluid or like substances therefrom, to protect the exposed side of the excavation from air-slacking, and to compress such substances sufficiently to accommodate for the change incident to the escape of fluids and solids, air-slacking,, and the like.” The process that Ewen evolved to meet the problem consisted, according to appellant’s statement, of— “digging a continuous trench as distinguished from a series of holes; lining the sides of this trench with separately yielding- flexible members; supporting the trench from such flexible yielding members on one side to those on the other by means-of adjustable and extensible braces; working those braces continuously to expand and enlarge the trench as occasion requires to seal the surface of' the trench, and compress and manipulate: the substances under the streets and buildings: building the wall preferably of vertical steel members between the trench faces, when desirable; transferring the pressure to shorter jacks between the trench lining and the wall, if the wall be not built against the trench lining or be of steel members; and then ultimately transferring the load from the wall to the steel structure within the building.” The essential and distinguishing features of this process are said to be— “the use of the relatively thin, floating, and flexible trench lining in connection with adjustable braces or jack-screws, and the constant operation of the latter to adjust the former so as t.o minimize, during the operation, the subsidence of tbe soil in the vicinity of the operation under the weight of, for example, heavy buildings which may surround the lot where the excavation for the new building is taking place.” Ewen’s process, so the brief declares, recognized the fact that expert house-movers have a delicate sense of feeling, through j'ack-'screws, which is lacking in other workmen; and the real invention, therefore, lay— “in putting into the trench a gigantic, living, feeling, moving mechanism, consisting of flexible, floating lining sections, a multitude of extensible jacks, and men who have ‘the feeling’ not familiar to others, with instructions to climb up and down these jacks day and night to work them to maintain conditions of safety. Ewen created a kind of mechanical Biareus, who, in the depth -of this pit at this place of awful danger,-day and night spreads his hundred hands out over the face of the exposed wall, feels it, and, whenever occasion requires, manipulates it, pushing the flexible lining in here and there in spots, taking up the slack, expanding and enlarging the trench in an irregular manner, so as to make it respond to the changed character, nature, and quantity of the material as revealed here and there over the surface by the hands of this sentient machine.” Thereupon appellant asks that claim 1 (and claims 2 and 10 in like manner) be construed to read: “1. The process -of making and placing in position substructures for buildings and the like, which consists in forming a suitable trench (which may be of any desired length, regardless of the nature of the work, as distinguished from a pocket which must contract as the work increases) where the exterior wall is to he erected, and simultaneously placing in position a (floating and flexible) lining for said trench, from the top downward, as the work of forming the trench progresses, then placing braces (adjustable and extensible) [243] befween the two linings (and manipulating them) so as (adjustably) to transmit. the exterior pressure to the core of earth within such proposed wall, and then erecting within the trench a wall of less thickness than the width of the trench.” The patent is for a mechanical process — a series of prescribed steps to be taken by the user in order to reach a certain mechanical result. Claim 1, as written in the patent, directs the user to take lour steps: (1) To form a suitable trench; (2) to place in position a lining for the trench, from the top downward, as the work of forming the trench progresses; (3) to place braces between the two linings, so as to transmit the exterior pressure to the core of earth within the proposed wall; and (4) to erect within the trench a wall of less thickness than the width of the trench. Comparing this with the proposed interpretation, it will be seen that additions have been made to the wording of the first, second, and third steps. Would a builder, on reading only the claim in the patent, understand that he would be violating instructions if he should use slabs of stone, or concrete, or inflexible wood, instead of “flexible” boards which could be bent and pushed into the wall of the trench here and there in spots? And likewise that he would be outside of the patent if between the linings he should put braces, which, when adjusted and extended, would passively support the external pressure against the core, and should fail to put in braces which could be farther extended so as actively to pack and compress the soil under adjacent structures? We think not. And we do not understand counsel for appellant to contend that the natural and obvious interpretation of the claim, apart from the drawings and description, is otherwise. That the prior art fully anticipates the claim as it stands alone is a fact that needs no elaboration. It is clearly established by the record; and appellant’s insistence upon the proposed interpretation, above stated, is of itself sufficient proof. Appellant, of course, is entirely right in saying that the claim must, be construed in the light of the specification, and that the patent should be treated with a view to save it, if possible. With these principles in mind, it remains to consider whether the specification furnishes such definitions of terms or such statements of the process that, taking the document as a whole and weighing everything within the four corners thereof, a fair basis can be found for adopting the proposed interpretation. What was the prior art as disclosed in the patent? In other words, what was the applicant’s statement of the problem he was undertaking to solve? Did he show to the Patent Office (what the diligence of ap-pellees has brought into this record) that it was old to make substructures “for buildings and the like” by forming a suitable trench where the exterior wall is to he erected, and placing in position a lining for said trench from the top downward as the work of forming the trench progresses, then placing adjustable and extensible braces between the two linings, so as to transmit the exterior pressure to the core of earth within such proposed wall, and then erecting within the trench a wall of less thickness than the width of the trench? Did he [244] point out that this old process, as a p -ocess for building substructures, was all right as a general thing, but that coincidently there was frequently another problem — that of sustaining' adjoining structures, that he was dealing with the latter problem, and tlx.,. his invention lay in packing and compressing the soil under such adjoining structures by means of constantly manipulating extensible braces r gainst fioating and flexible,trench linings, so that underpinning and shoring would be done away with and the structure be sustained without direct contact? Not at all. On the contrary, the evils that he proposed to remedy were those that came from making the complete excavation before beginning to erect the walls. “According to the old method, when the excavation has been completed, the foundations are laid, and then the structure begins to rise story by story from the bottom until it reaches the street level.” One evil was that the removal of all the earth from within the proposed wall in advance of the building operations required the “temporary retaining structure” to be supported by long shores extending to the bottom of the excavation, involving- the danger and expense of shifting the shores and providing longer and longer ones as the work of making the excavation progressed. This evil was remedied by retaining the “core” as a backing against which the “temporary retaining structure” could be supported by comparatively short braces, easily and securely placed in position. The other evil was the delay and loss of time involved in waiting to begin the superstructure until the substructure should be completed. This was overcome also by the “core” method; that is, the naked columns were erected on the foundations in the bottom of the trenches and interior bores, and then the superstructure and the substructure could be bnilt simultaneously, upward and downward from the street level, without waiting for the remainder of the excavating to be done. So, on examination of the entire document, with a view of gathering the applicant’s disclosed idea of his invention, we conclude that the drawings and description accord with the obvious reading of claim 1 in showing that the applicant believed (mistakenly) that he was entitled to a monopoly of the “core” method. The drawings reveal no indications of floating and flexible linings pushed irregularly into unequally plastic trench walls. The quality of flexibility is nowhere stated in the description of'the process. The patent, being for a process, should contain a distinct statement of each step, or, at the least, an unambiguous inference of any step that is not distinctly stated. Claim 1 as written names four steps. Appellant’s brief names five. The additional step (directing the user to manipulate the extensible braces constantly so as to push back and compress the substances under adjoining structures) is the step that is now relied on to distinguish the claim, from the prior art. If it be contended that the step is to be inferred because jack-screws (adjustable and extensible braces) are pictured and named in the specification, then, in our judgment, it was as easy for Ewen to draw the inference from the prior art (McKiernan’s patent, No. 145,116, December 2, [245] J8v3, for instance) as it would be for the skilled builder to draw it from the present patent. But such an inference is not the inevitable one, for adjustable and extensible braces have the capacity of being ad-justably and extensibly used as passive supports as well as active pushers. Practically the whole contention has its basis in the presence of part of one sentence in the specification: •• * * * and in the operation of a large building (the jack-screws) would be constantly attended and operated so as to keep the condition substantially uniform.” This means, we think, that if the process theretofore fully described in the specification was being used alongside a large building, the jack-screws would (if necessary) be constantly attended and operated “so as to keep the condition substantially uniform.” But we do not' deem it fair interpretation to take a single expression in a specification and from that determine the color of a claim. Rather should the single expression take its color from the specification as a whole. So viewed, we think it clear that Ewcri said: “1 have remedied the old excavating troubles by my new ‘core’ process, which consists (claim 1) in forming a trench, placing linings in position as the trench goes down, putting braces between the two linings so as to transmit the exterior pressure to the core of earth within the proposed wall, and erecting within the trench a wall of less thickness than the width of the trench. This process can be employed whether the earth be wot or dry, or plastic or firm, and whether adjoining structures, if any, be small or large. If the tension o£ the braces as originally placed to transmit the exterior pressure to the core should change by reason of the nature of the soil or the amount of weight thereon, of course you should manipulate the braces so as to keep the condition substantially uniform. But such manipulation is no part of the invention that I have hereinabove described and shall presently claim. It relates merely to a contingency that may or may not arise during the practice of my invention, wherein the retention of the core of earth within the proposed wall is the essential and distinguishing feature.” As it is equally impermissible to read the proposed limitations into claims 2 and 10, we affirm tlie decree of the Circuit Court. Affirmed.