NATIONAL REGULATOR CO. v. POWERS REGULATOR CO., 160 F. 460

BAKER, Circuit Judge (after stating the facts as above). Reference patents prove that every element of the claims in suit was old. But in combining those elements Powers did something that was new and useful. The inquiry respects invention. Without any aid from Powers a system of supplying heat and fresh air to school and other assembly rooms had been developed. Cold air from outside was conducted into the basement, and was forced along by a blower. One portion of the air passed over steam coils, and was highly heated.

After the chill was taken from the remainder, the two currents in separate ducts were brought together in a trunk at the base of a single delivery pipe. A double damper was placed where the separate ducts united at the base of the single pipe. By means of a chain extending to the room to be heated by the single pipe the double damper could be manipulated. To the extent that one duct was closed the other was opened. This apparatus, minus the chain, is what is indicated in one of the two subcombinations of each of the claims in suit.

Claim 1: “In an air-heating and ventilating system, separate ducts for currents of air at different temperatures in combination with means for controlling the flow of the air currents.” Claim 2: “Separate ducts (as in claim 1) in combination with means for forcing the air, means for heating the current of air passing through one of the ducts and means for controlling the flow of the air currents.” Claim 3: ‘■‘Separate ducts (as in claim 1) in combination with valves or dampers for controlling the ducts.” The other subcombination of each claim relates to an apparatus that obviates the chain, and automatically moves the double damper in response to variations of temperature in the room.

Claims 1 and 2: “A gradually-acting thermostatically-governed motor.” Claim 3: “A pneumaticauy-operated pressure device operating against a gradually-increasing resistance, and a thermostat.” Tong before the patent in suit was applied for, electric regulators were used in residences. The thermostat’s movement in response to variations of temperature in the room to be heated would close a circuit that operated an electric motor located in the basement. The motor was connected with the draft and check dampers of the furnace. The action was rapid, and completely closed one damper while it opened the other.

In 1889 (patent No. 416,947) Powers devised a pneumatic regulator. Commercially he employed it to control the draft and check dampers of residence furnaces. The thermostat’s movement compressed á column of air within a pipe that led to the basement. The compressed air operated a motor that was connected with the draft and check dampers. The motor encountered an increasing resistance, such as is offered by a spring. The result was that the dampers were not rapidly and completely opened and closed, but were held in a balanced relation, gradually responsive to variations of temperature.

This Powers regulator was “a gradually-acting thermostatically-governed motor,” “a pneumatically-operated pressure device operating against a gradually-increasing resistance, and a thermostat.” To the prior art also belongs the application of the electric regulator to the double damper of the -above-mentioned apparatus for heating schoolrooms. Of course the regulator operated in accordance with the law óf its being. It rapidly and completely opened and closed the hot and cold air dampers just as it had the draft and check dampers.

By its automatism it was better than the old manual control, but' it was worse in that it gave alternate blasts of hot and cold air. In putting his pneumatic regulator in the place of the electric regulator, Powers did a new thing. He was the first to make the connection. He also did a useful thing. His combination, while retaining the benefits of automatism, restored the advantage of manual control, namely, the mixing of the two currents of air as they reached the single delivery pipe.

Mindful of the fact that simplicity is often the highest mark of genius, of our duty to view the question as of the time preceding the disclosure of the patent, and of our grave responsibility in overturning a grant that presumptively is valid, we have been unable to escape the conclusion that the claims in suit are void.

The work, and all the work, that Powers did in making the adaptation was to increase the size, in order to increase the power, of the thermostat that he had been using in residences, and to devise a form of double damper that would work more easily than the double damper that was then being operated by the electric regulator. This work may have required the exercise of the inventive faculty.

We do not inquire, because appellant moves the old double damper by a kind of gradually-acting thermostatically-governed pneumatic motor that gets its power, not from the thermostat, but from an independent source, and further, because the claims in suit clearly assert a monopoly in the combination of any sort of double damper with any sort of gradually-acting thermostatically-governed motor. So the case, in our judgment, conies to this: Can a monopoly be properly granted for coupling without modification a motor that will run any kind of machine, to a machine that will run with any kind of motor?

The answer to the question thus stated is found in Blake v. San Francisco, 113 U. S. 682, 5 Sup. Ct. 692, 28 L. Ed. 1070; Royer v. Roth, 132 U. S. 201, 10 Sup. Ct. 58, 33 L. Ed. 322, and numerous other cases. The result was a distinct step in advance. But it was the inevitable result of attaching to each other the unchanged appliances. To have obtained a different result would have required a reorganization that might have taxed the genius of the inventor. We cannot put the claims in the so-called “happy thought” class.

If in truth a burst of inspiration points to the running of A.’s machine with B.’s engine, nevertheless a monopoly cannot be based merely on bringing the two together. Rapse of time before gradually-acting thermostats were applied to the control of double dampers in hot and cold air pipes is claimed to be evidence of invention. In McMillin’s Case, 112 U. S. 244, 5 Sup. Ct. 218, 28 L. Ed. 702, he was the first to apply the then century old steam engine to the exceedingly ancient capstan. The decree is reversed, with the direction to dismiss the bill for want of equity.