American Air Cleaning Co. v. General Compressed Air & Vacuum Machinery Co.

BAKER, Circuit Judge (after stating the facts as above). [1] I. Patent No. 634,042. No review of the prior art (beyond a reference, possibly, to the statement in the former litigation between these parties, reported in 125 Fed. 761, 60 C. C. A. 529) is needed to appreciate the narrowness of claim 1; for not only does the language of the claim particularize the elements by description of function and location, but the file-wrapper clearly discloses the tight place that the applicant squeezed through. Rejection of original claims 1 and 2, which would easily have dominated appellant’s structure, was received with acquiescence. In support of the first substitute for these claims an attempt was made to differentiate from Nation by stating that: ‘•Nation shows the blast directed straight down midway through the opening in the bottom of the casing, whereas by applicant’s construction a definite direction is given to the blast to carry the dust into the chamber.” But the office replied in effect, No, you must limit your claim more closely to your specification; to change slightly the direction of the Nation blast, which is directed straight down midway through the opening, requires no invention. So the applicant amended again and procured the allowance of his second substitute by making limitations in two respects: First, the nozzle. It must be located, not midway of the opening through the bottom of the casing, but in the casing, “to one side of said opening”; and, further, the change of angle from Nation’s perpendicular is not slight. It is material and has an important function. The nozzle must be arranged at an angle “substantially as described,” “so as to project an air-blast at an angle onto or into and through the carpet,” whereby the dust-laden air may be forced out through the passage at the opposite side of the opening. Second, the “tangential” passage into the dust-receiving chamber. While the use of “tangential” may not be mathematically accurate, this limitation in the cláim refers unmistakably to that curved construction of the passageway, particularly described in the specification and pictured in the drawing, “whereby the particles of dust in the air are thrown downwardly by centrifugal action andl deposited in the bottom of the chamber.” Now, appellant’s cleaner has neither of these essential elements of the claim. Its nozzle is located “midway of the opening” in the bottom of the casing, and the blast is “directed straight down”; both of those particulars being the very ones on account of which Thurman distinguished the machine of his claim I from the Nation patent. Appellant’s cleaner also manifestly lacks the curved or “tangential” passageway into the dust-receiving chamber, whereby “centrifugal action” throws the dust downwardly upon the bottom of the chamber. Appellees have placed their main reliance upon an argument which would be passed unnoticed except, for the fact that it seems to have been accepted by the Circuit Court as the basis for the decree. Skel [750] etonizéd it is this: In thé Nation suit Thurman claimed that his alleged infringing device was made in accordance with his patent now-in suit. His alleged infringement was found to proceed upon a different theory of operation from that of the Nation patent. We said: “Except for convenience of manufacture, the nozzle, instead of being cast in one piece with the hood, might be made separately and bolted to the outer wall of the hood. The air is discharged into and through the carpet outside of the hood, and reaches the hood by reason of being deflected forward at an angle from the floor, and is aided in this course by the forward lip’s being narrower than the rear lip of the orifice. If the nozzle, the orifice being in the same loca-, tion relative to the hood as now, were directed rearwardly at an angle of 45 degrees, the air, as the machine moved forward, would escape under the rear lip, up through the carpet, into the room. As it is, the air escapes under the forward lip, up through the carpet, into the hood. * * * If Nation’s air-blast penetrates the carpet and rebounds from the floor, it is an incident, and not an essentia], of the device’s operation. The air is discharged within the hood. • It is true that the height of the orifice above the plane of the base is' left by Nation to the builder’s discretion. But it is an essential condition that the orifice be within the hood and opposite (which cannot be in the same plane with) the opening in the base through which the air blast reaches the carpet. In Thurman’s machine it is an essential condition of operation that the air be discharged into and through the carpet, outside of the hood. It reaches the hood only after striking the floor and passing up through the carpet.” This was an adjudication, the argument proceeds, of the nature and scope of the Thurman patent. If it is found in the present suit that appellant, owner of the Nation patent, has departed from its teachings and has adopted the principle of operation of Thurman’s alleged infringing device in the Nation patent suit, then Thurman’s patent is infringed. • Therefoi-e the only inquiry in this court is whether the Circuit Court correctly answered the question, “Is defendant’s (appellant’s) device a physical embodiment of ‘the Nation patent?” A more obvious non sequitur could hardly be framed. In the Nation suit and in this, as in all other infringement suits, the questions (the validity of the claims being admitted) are two: What is the scope of the claims ? Does the alleged infringing device (no matter what assertions are advanced that it was made under patents, prior or subsequent) come.within the grasp of the patent? As the Thurman specification and claim contain no suggestion of the theory and means of the Thurman device in the Nation suit, whereby infringement of the Nation patent was avoided, it is immaterial where or how appellant learned to make its present machine. [2] II. Patent No. 690,084. From the statement of the case it will be perceived that appellant’s handle is an infringement of the claims, unless regard be given to the words thereof “substantially as described.” Applicant stated that the objects of his invention were to provide a handle which could be locked in adjusted positions, and which should be provided with. a downward extension ending in a roller, whereby when the handle was locked in a lowered adjustment the rear edge of the casing would be fixedly held off the floor. “With these objects in view the invention consists in the construction, arrangement, and combination of the several parts, all as will hereinafter be described and afterward pointed out in the claims.” Thurman made no disclosure and oath, • as- foundation for a claim, that he was [751] tiie inventor of a generic combination of pneumatic-cleaner casing, yoke pivoted to the casing, hollow handle fastened upon the yoke, and flexible air-conduit from the lower end of the handle te the butt of the nozzle. If lie had made such a claim, it would have been the duty of the Patent Office to reject it, as we do now, on reference to Burger. For the claims in suit to have any validity, in view of the statement of the nature and scope of the invention made in the specification and particularly in view of the prior art, the words “substantially as described” must be taken to limit the claims to a structure which will accomplish the stated objects of the invention in substantially the manner described in the specification. State Bank v. Hillman’s, 180 Fed. 732, 736, 104 C. C. A. 98; Pope Mfg. Co. v. Gormully & J. Mfg. Co., 144 U. S. 248, 253, 12 Sup. Ct. 641. 36 L. Ed. 423; Westinghouse v. Boyden Power Brake Co., 170 U. S. 537, 568, 18 Sup. Ct. 707, 42 L. Ed. 1136; Singer Mfg. Co. v. Cramer, 192 U. S. 265, 284, 285, 24 Sup. Ct. 291, 48 L. Ed. 437. So limited, the claims are not infringed. Appellant has the old, common swinging handle, which Burger had already proved could .easily be adapted to an air-cleaner by making the handle hollow and providing a flexible hollow connection from it to the nozzle. The decree is reversed, with the direction to dismiss the bill for want of equity.