TOLEDO COMPUTING SCALE CO. v. COMPUTING SCALE CO., 208 F. 410

BAKER, Circuit Judge. In this record the greatest thing is the fact that Smith put in the hands of the world’s vendors of commodities the first usable automatic computing scale. Long before Smith’s time, and the length of the interval is a fact of considerable weight, the paper art (Phinney’s patent, No. 106,869, in 1870, and Babcock’s, No. 421,805, in 1890) had professed to teach practical scale-makers how to build automatic computing scales. But when those disclosures were given material bodies, failure was the result.

Just as Smith said in his specification, they would not work twice alike, they were not reliable.

To-day in the light of what Smith accomplished it may be easy enough to see exactly where the difficulty lay; but this record proves that during the long interval between Phinney and Smith some of the brightest and most skillful men in the scale business, realizing what a tremendous commercial success was awaiting a reliable automatic computing scale, did not draw from Phinney’s patent, nor’from elsewhere in the prior art, nor from their own experience as practical mechanics, nor from their own ingenuity, any conception of the necessary means.

In the prior art were combinations of indicator-drums and weighing mechanisms. But the cause of their failure might lie á-t any one of many points. It remained for Smith to discover that the most essential thing in reorganizing the old elements was to make the drum so light that its interference with the weighing operation would be eliminated. And he embodied that conception or “happy thought” in the new means described in the patent and covered by the claims of the first patent in suit.

The evidence in this record (and we have considered, though we have not thought it necessary to discuss, the remoter references to the nonautomatic art), instead of overcoming, has strongly fortified the presumption of invention. Defendant insists, however, that making the drum lighter was merely a matter of degree. Of course the lessening of weight is a matter of degree; but it is not necessarily merely a matter of degree. If the change converts failure into success, something more than a matter of degree is involved. Unreliable automatic computing scales, in the practical art, are no scales at all.

A reliable automatic scale was a new mechanism, a creation, just as in the aspirin case (Kuehmsted v. Farbenfabriken of Elberfeld Co., 179 Fed. 701, 103 C. C. A. 243) this court held that the reduction of the amount of impurities in a compound theretofore known to chemists, whereby a deleterious substance was converted into a valuable medicine, was not merely a change of degree, but was a change of kind, producing a new

article of commerce. A further insistence is made that the patent is void for in-, definiteness, in this, that the degree of thinness of the aluminum frame and of the paper cylinder are not specified. In the quoted part of the specification Smith substantially told those skilled in the art to make the skeleton frame to the last degree of thinness that would support the cylinder, and to make the cylinder of the very thinnest paper they could then or thereafter find in the market, which would be stiff enough to retain its shape when attached to the frame.

This, it seems to us, was very clear and definite instruction. It is also contended that the reissue patent was improperly granted. In McDowell v. Ideal Concrete Machinery Co., 187 Fed. 814, 109 C. C. A. 574, this court considered the requirements of the reissue statute, and found that the new claims in that case were invalid because they were not for “the same invention” that was disclosed as the applicant’s in his original description.

But here the quoted part of the applicant’s original description shows that the idea of the light drum, the purpose to be accomplished by it, and the means by which it was to be produced, constituted the principal part of his invention. But it was not covered except in original claim 2, and there only in combination with particularly described weighing mechanism. So, under the original patent, if any one should alter the weighing mechanism, he could avoid claim 2 and thus appropriate the largest part of what. Smith had stated to be his invention.

Inasmuch as the value of the drum invention was not dependent upon its association with the specific weighing mechanism provided by Smith, he would have been clearly entitled, in our judgment, to have included reissue claims 5 and 6 in his original specification. These claims cover the combination of the Smith “indicator-drum” with any “weighing mechanism,” which, with the drum, will produce a practicable automatic weighing' scale. Though they are broader than original claim 2, they are not broader than the invention described as Smith’s in his original statement of invention.

In his application for reissue, made promptly and before any rights of defendant or the public had intervened, he swore that he had not intended to. dedicate that principal part of his invention to the public, and that the omission of claims of the character of 5 and 6 had occurred through inadvertence. In our view the Commissioner was warranted in granting the reissue. Compare Topliff v. Topliff, 145 U. S. 156, 12 Sup. Ct. 825, 36 L. Ed. 658; Houghton v. Whitin Machine Works, 153 Fed. 740, 83 C. C. A. 84; Gaskill v. Meyers, 81 Fed. 854, 26 C. C. A. 642.

It follows that the finding of validity and infringement of the reissue claims was correct. Claim 2 of the second patent shows that all that Smith contributed to the art, beyond the disclosures of his reissue patent, was to put upon the indicator-drum a column 'of figures, in inverse order to that of the column already there, so that the purchaser might read the weight through an opening in the back of the casing. If the concept involved had been Smith’s, there might not be much difficulty in sustaining the claim, however obvious the application of the concept might seem.

But the whole idea was old. “Back-indication,” by reversing the figures, had long been commonly employed in indicating apparatuses, like cash-registers for example (Pottin’s patent, No. 312,014 and others); and whatever claim might otherwise have been made for ingenuity in modifying and adapting the old means to an automatic computing scale is destroyed by referring to the way Smith had already put upon the drum the column of figures to be read by the seller. This claim, we think, is clearly void for lack of invention. In regard to the acknowledgment of a corporation’s conveyance, the Massachusetts statutes (Rev.

Laws Mass. 1902; c. 127, §§ 7 and 18) required (what is commonly called for in all jurisdictions with which we are familiar) that the notary’s certificate should show that the persons who signed as officers were personally known to the notary, that on oath they stated they were such officers and were authorized by the board of directors to execute the instrument, and that the corporation either had no seal or that its genuine seal was affixed to the instrument, and that they thereupon acknowledged said instrument to be the free act and deed of the corporation.

Execution of the instruments here in question was not proven by testimony. Certified copies of assignments of patents, not duly acknowledged, are not proof of execution. Paine v. Trask (C. C.) 56 Fed. 233; New York v. Cable Ry. Co., 60 Fed. 1016, 9 C. C. A. 336; National Co. v. Navy Co. (C. C.) 99 Fed. 89. As the acknowledgments of these assignments are insufficient in every respect to constitute good corporate acknowledgments, the record is barren of proof of execution.

The decree is reversed with the direction to dismiss the bill on the second patent and to permit complainant to introduce proofs of title to the first patent. On the sufficiency of the acknowledgments defendant cited: Lumbard v. Aldrich, 6 N. H. 269; Bennett v. Knowles, 66 Minn. 4, 68 N. W. 111; Lovett v. Sawmill Association, 6 Paige, Ch. (N. Y.) 60; People v. Deyoe, 2 Thomp. & C. (N. Y.) 142; Malloye v. Coubrough, 96 Cal. 649. 31 Pac. 622; Holt v. Trust Co., 11 S. D. 456, 78 N. W. 947; Endowment Ass’n v. Fisher, 71 Md. 430, 18 Atl. 808; Klemme v. McLay, 68 Iowa, 158, 26 N. W. 53; Machesney v. Brown (C.

C.) 29 Fed. 145. And complainant cited: Tenney v. East Warren Lumber Co., 43 N. H. 343; Banner v. Rosser, 96 Va. 252, 31 S. E. 67; Catherine D. Fitch v. Lewiston Steam Mill Company et al., 80 Me. 34, 12 Atl. 732; The Frostburg Mut. Bldg. Ass’n v. Wm. Brace et al., 51 Md. 508; Ferguson et al. v. Ricketts et al. (Tex. Civ. App.) 55 S. W. 975.