AURORA MANTLE & LAMP CO. v. KAUFMANN, 243 F. 911

EVANS, Circuit Judge (after stating the facts as above). Appellant’s attack upon the validity of the product patent may be divided into the following heads: (

A) Patentee’s product was merely the application of practical mechanics and did not involve invention. (

B) The steps applied were taken from the prior art. (

C) Patentee’s product is the result of actual aggregation of a number of old steps. It is urged that the.securing of shape and permanency of form by the means adopted by appellee was long known to the art and had previously been covered by patents. For example, caps, mittens, hats, boots, and stockings, etc., have long been made from cloth, and shape and permanency of form secured by the methods here used. It should be borne in mind that appellee’s object was to secure a mantle of greater strength and capable of furnishing greater light.

The mere fact that all the elements of a new combination are old is not sufficient to prevent patentability. The fact that the end was a new and beneficial one, never before attained, is persuasive evidence of invention, even though the elements combined were well known. Loom Co. v. Higgins, 105 U. S. 580, 26 L. Ed. 1177. The result of this combination of known elements was much sought.

Shape, as such, was unimportant ; but any result that made it possible for the manufacturer to produce a mantle, the incandescent material of which was so situated in reference to the flame, that greater luminosity throughout the entire surface was secured, was desired by all manufacturers. Strength, obtained from the seams or ribs was valuable in addition to its mere contribution as a factor in securing permanency of shape, for by it the “speck” or “dark spot” on the apex of the mantle was eliminated, and at the most important part of the illuminating body greater incandescence was secured.

These results so secured, even by means used in other arts, for different purposes, manifested invention. But it is asserted that these claims of strength and increased incandescence were imaginary, mere paper claims, and are not in fact existing, and the results so obtained were self-evident. The evidence as to the extent of the patentee’s contribution to the art, while conflicting, supports appellee’s contention in this respect.

The fact that the completed product, though more expensive than the old form of mantle, is now extensively used, and the further fact that appellant has seen fit to manufacture the product in large quantities, are convincing, if not conclusive. In view of the appellant’s use of the patented invention, the claim is poorly asserted that the improvement contributed no advance in the art. Gandy v. Main Belting Co., 143 U. S. 587, 596, 12 Sup. Ct. 598, 36 L. Ed. 272; Western Electric Co. v. La Rue, 139 U. S. 601, 608, 11 Sup. Ct. 670, 35 L. Ed. 294.

Nor was the solution of the problem confronting Kaufmarm a simpie and self-evident one. An invention, when understood, often seems simple. But it should be borne in mind that the trade demanded a successful inverted mantle. The shirred or tied mantle only partially met the demand. Greally increased sales in gas mantles followed. Nor was it self-evident. Experiments were necessary, according to the evidence, before the final form was perfected. Was there infringement? In view of the testimony of the appellant's expert, this subject is hardly debatable. Its witness admitted infringement.

While such an admission is not binding upon the litigant, yet this court agrees with the witness that there was unquestionably infringement. It follows, therefore, that product j>atent, No. 940,639, is valid and was infringed by appellant. The attack on the process patent, while differently phrased, involves the action of the Commissioner of Patents in striking out several claims appearing in the original application. Kaufmann first attempted to secure a process and a product patent through one application. The examiner ordered the claims for the process patent stricken out.

Applicant was then confronted with the necessity of an appeal or the filing of a new application. The action of the Patent Office was discretionary (U. S. ex rel. Steinmetz v. Allen, 192 U. S. 547, 561, 24 Sup. Ct. 416, 48 L. Ed. 555), which discretion, unless clearly abused, was not subject to review. Kaufmann, therefore, acquiesced in the ruling and made a separate application for the patent on the process. The Patent Office understood the situation clearly, and recognized Kaufmann’s right to a division.

In speaking of the matter the examiner says: “A claim similar to the claims now in this ease was submitted in application No. 283,743, filed October 21, 1905, which has matured into patent No. 910,639, November 16, 1009. Said claim was rejected as involving new matter. Applicant amended the claim, but traversed the rejection o£ the claim as new matter, and later of his own motion canceled the amended claim, with the expressed reservation that claims to such subject-matter might be made in a future application.

The office docs not hold that applicant acquiesced in the rejection of claim 8 of the former application as new matter, as he expressly did not so acquiesce, and in fact no action was taken by the oflice on the amended claim. Moreover, on page 1, line 23, applicant apparently means to say that the application is a division of former application 283,743 of October 21, 1905.” In the light of these facts, appellant’s contentions are not well taken. Its claim that the process patent covers the same invention as the

article patents is unsupported by the facts and contrary to the ruling of the Patent Office. The further objection to the validity of the process patent, that the product can be produced only by this process, and, if sustained, the process patent would unlawfully extend appellee’s product monopoly, fails, because in fact the product patent can be made in other ways. Century Electric Co. v. Westinghouse E. & Mfg. Co., 191 Fed. 350, 359, 112 C. C. A. 8; Leeds & Catlin v. Victor Talking Machine Co., 213 U. S. 301, 318, 29 Sup. Ct. 495, 53 L. Ed. 805.

Its second objection, while disputing its previous position is not supported by the record. Appellant says: “Kaufmann admits that the process in the process patent is not disclosed in the

article patent, and consequently the process application could not be a divisional ease.” Kaufmann’s process patent is disclosed in the original application, and is restricted to the claims covering the process found therein. Appellant’s contention that tire process patent is invalid, because separate application was not filed until more than two years after a public use, is untenable, in view of the fact that the prior application covering the same claims had for two years been pending in the Patent Office and had been rejected because the claims for process patent were included in the application for the

article patent. Noninfringement of Process Patent. As to claims 1 and 3, appellant contends patentee provides five steps, which are not infringed, because steps B, C, and D are employed by the defendant in the order of C, B, and D. Whether the patentee is restricted to the order named depends upon the subject and the character of the various steps so designated. In the present case we conclude that the claims are infringed, even though the order of the three steps B, C, and D, is changed. Gen. Electric Co. v. Hill-Wright Electric Co., 174 Fed. 996, 98 C. C. A. 566.

The other alleged differences in appellant’s process from the steps outlined in appellee’s claims hardly justify separate consideration. We conclude that process patent, No. 975,769, is valid, and claims 1 and 3 are infringed. The decree is affirmed.