VULCAN SOOT CLEANER CO. v. DIAMOND POWER SPECIALTY CO., 237 F. 818

DENISON, Circuit Judge. The plaintiff below appeals from so much of the decree as held invalid patent No. 705,912, July 29, 1902, to Eichelberger, for-soot cleaners for steam boilers, and patent No. 987,450, to Eichelberger & Plibner, March 21, 1911, for another form of flue cleaner. The defendant below appealed from that part of the decree which held valid and infringed patentyNo. 855,563, to Eichelberger & Hibner, June 4, 1907; but defendant has dismissed this appeal, and the case here involves only the two patents which were held invalid.

As to these, we agree with the reasoning and conclusions of Judge Tuttle in the District Court. With regard to patent No. 705,912, the substance of the matter is that the revoluble live steam pipe, pierced so as to throw out steam jets radially, and called a steam brush, had long been familiar, and had been placed in the various positions which seemed most suitable for reaching and cleaning that particular disposition of water tubes which each structure presented.

Earlier patents, mentioned by Judge Tuttle and not referred to in the Patent Office, disclosed in combination every element of the claim as applied to a single steam brush; indeed, one earlier patentee, whose drawing shows a series of chambers between water tubes suitable for carrying such a steam brush in each chamber, but discloses it in position in one chamber only, in his specification spealcs of this revoluble tube in the plural, and' plainly contemplates using as many as necessary.

Eichelberger adopted that type of boiler in which the combustion products passed in a sinuous course through three partially separated chambers, each of which contained water tubes which would need cleaning. To meet the obvious view that there could be no invention in placing a series of these old pipes in the three respective chambers, where each one operated independently, appellant urges that the three combined produce a new result, in that they sweep along the removed dirt through the 'sinuous passage and into the stack, and thus operate with each other at the same time to clean the tubes and aid the draft.

We are not called upon to decide whether, if this function were sufficiently disclosed by the patent, it would be a new result, which would support patentability. The specification says nothing about this operation or this function; but this is not conclusive. Invention may rest upon a function not described in the specification, or even understood by the patentee, if it is inherent in, and so disclosed, by the device itself. Goshen v. Bissell (C. C. A. 6) 72 Fed. 67, 74, 19 C. C. A. 13. The trouble is that Eichelberger’s structure, as shown and described, did not possess this capacity.

In two out of the three chambers the major action of the steam jets is against the draft; and the conclusive fact is that the patent shows and relies upon a device for collecting the soot at the bottom of the furnace and removing fit therefrom, so that if the invention operated as planned—and in the main it would—the spot could never reach the stack.

The doctrine that patentability may rest upon a nondescribed function and utility cannot reach a case where the presence of these things, in .any substantial degree, is inconsistent with the intended and necessary working of that form of the device which is shown and described. With regard to patent No. 987,450, the patentees cannot avoid the effect of patent No. 855,463, because they were patentees in that patent also.

It had been issued more than three years before the application for the later patent, and it therefore.had its place in tire prior art, with the same effect upon the state of the art as if it had been issued to others. There was no copendency of applications -which could modify the rule. The decree is affirmed.