DE LA VERGNE BOTTLE & SEAL CO. v. VALENTINE BLATZ BREWING CO. et al., 66 F. 765

WOODtl, Circuit Judge, after stating the case, delivered the opinion of the court We are of opinion that the circuit judge did not err in holding Hie patent to be limited to a. conical or cone-shaped cork. That, the inventor so understood when he first claimed the combination of bottle and cork is conceded, and is demonstrated by the explicit language both of the claim and the specification.

It is true that the language of the specification and of the claim of the patent is different in this respect from that first used in the application, hut the correspondence contained in the file wrapper discloses no purpose to change ihe character or scope of the invention in this particular. To sky that; the change is immaterial because when in place the stopper necessarily conforms to its seat, and has the same effect as if it had been conical before insertion, is evasive of the question.

Tbe mechanical and practical effect of the stopper may not in any degree depend upon its original form, but a patent limited to a particular form of cork is necessarily more narrow than a patent which covers any form that may be compressed into and made to fill the seat designed for it. The difference's so essential as to be determinative of the question of infringement.

If the claim of the patent is not limited to a cork made in the form of a truncated cone, it is an enlargement beyond the scope of the original application, which alone was supported by the required oath, and for that reason the patent would seem to be invalid. Eagleton Manuf’g Co. v. West, Bradley & Carey Manuf’g Co., 111 U. S. 490, 4 Sup. Ct. 593; Machine Co. v. Featherstone, 147 U. S. 209, 229, 13 Sup. Ct. 283.

We are of opinion, however, that, when the patent is construed with reference to the specification and drawings in their final shape, there can be no reasonable doubt that the claim is limited to a conical cork.

It is only a cork made in that shape which, when inserted in the receptacle, will most completely fill the space, “fit tightly therein, 'and press with force against the converging side,” equally from bottom to top, and give the best effect to that power of lateral expansion, on which, it is asserted, De La Yergne “was the first to grasp the idea” of relying “for making the tight joint, in the first instance.” Fig. 4 represents the cork in the form of a truncated cone. There is no -suggestion in the specification that it may be of a different form.

On the contrary, the following expressions, considered together, are unmistakable: “This invention consists in a bottle or jar having a receptacle for the cork or stopper made in the form of a truncated cone, with its base or larger diameter innermost.” “The said cork or stopper is made larger than the receptacle which holds it, and is compressed and inserted to its seat, where it expands with the elastic force due to compression in an oblique and upward direction, all of which will be apparent, reference being made to the drawings, wherein * * * Fig. 4 is a cross

section of the cork.” “By reference to Figs. 1, 4, and 6 it will be observed that, when the cork is inserted in a bottle or jar, the base or greater diameter of the cone-shaped cork is innermost, and forms a wedge or dovetail, and having been compressed, the converging sides g g press with force against the sides of the cork receptacle.” These expressions cannot without distortion be made to mean that the cork, when forced into the receptacle, becomes cone-shaped.

The clear purpose was to say that, by reason of being cone-shaped and larger than the receptacle, when inserted it will fit tightly, and press with force against the sides. This conclusion does not rest upon an implication, but upon the fair and reasonable construction of the patent.

To say that it deprives the patentee of a part of his invention is to beg the question; and it is scarcely better to say that it deprives him of his whole invention because “every one can see, and it is not disputed, that a cylindrical cork will operate as well as a conical one, and is much more easily and cheaply made.” That argument might be pertinent to the question whether or not upon any construction the patent shows invention, bnt, as against the specification and drawing’s, it is of little weight in determining what the construe* tion should be.

Indeed, unless the patent be limited to a cork of the particular form described, and when so limited can he upheld, we think it clear, in view of the prior art, that it contains no invention. Bottles and jars with receptacles for their stoppers in the form described, it is conceded, are not new. They are shown, in this record, in the patents of Stocker, Cronk, Baxter, Shaw, Parker, and Seybold.

Corks in conical form, and made of rubber, are likewise old, and, of the patents mentioned, are shown in those of Parker, Shaw, Baxter, Seybold, and Stocker; and in some of them the elastic and compressible, or, as it would perhaps be more nearly accurate to say, pliable or flexible, qualities of rubber, perform, and were designed to perform, the same offices as in the combination of De La Vergne. In the case of Temple Pump Co. v. Goss Pump & Rubber Bucket Manuf’g Co., 7 C. C. A. 174, 18 U. S.

App. 229, and 58 Fed. 196, where the patent was “for improvements in expansion rubber buckets for chain pumps,” the quor.uou of infringement turned upon the peculiar qualities of Indie, robber, and the opinion delivered in that case is in some respecte applicable to the present discussion.

Without quoting literally, we may say here, even with more emphasis than we sawl that it cannot be pretended that the characteristics of rubber which are brought into play — its powers of compression, expansion, and elasticity— were not already well understood, anil that, besides its use in the earlier patents in the pai (icular art in question, its employment in various arts and mannfachirek had. made its qualities so well known as to leave but little room for invention merely in devising new forms for old uses.

Witnesses and counsel have not omitted to point out with elaborate precision the particulars in which the bottles and stoppers of We earlier patents differ from each other and from those of the patent in suit, — differences which are accidental, and in most instances might be made to disappear by substituting one form for another, without disturbing the relation and operation of essential parts, and without the display of invention. In considering the force of the prior art in any case, the question is more of the identity than of the differences between the old and the new.

If the novelty claimed for the new is found in the old, in substantially tie same form and performing in a useful degree tbe same function,, ifse anticipation must be recognized, and it becomes a waste of eh'o¡ t to look after details of difference which are irrelevant and cannot affect the conclusion. For example, the patent of Stocker shows a bottle with a receptacle and a cork of similar form and in the same relation to each other as in the patent oí the appellant, and performing in a degree and in the sarao manner the same functions.

The cork is described as (dastic, and, filling the receptacle, it rests upon a shoulder or annular ling below, the necessary and manifest effect of which would be fo prevent the cork being thrust below its proper position, and to-diminish tbe amount of internal pressure exerted on the under su’iface.

It is also declared in the specification that the inner portion of the neck of the bottle should “be expanded or rather wider than the lip of the neck, whereby the cork, by expanding and assuming that form, will be prevented from becoming accidentally * * * withdrawn from the bottle neck, and will be held more firmly therein.” To meet this explicit description and anticipation of every characteristic feature and advantage of De La Vergne’s combination what suggestions are made? 1.

It is urged that the cork of the patent in suit must be inserted in its place under powerful compression by a machine, “so that its original form may be prodigiously distorted, and its available expansive force correspondingly increased”; or, as it is also expressed,- there must be “a bottle neck in combination with a cork to which a prodigious amount of lateral expansion has been given by machine insertion.” That is to say, the cork is to be inserted by machine with such force as to make it tight enough to stay, and, excepting the use of a machine, that is the meaning of Stock-er’s specification.

But the use of machines for inserting stoppers in bottles was already so well understood that there could be no novelty in that mode of insertion, and whatever advantage results from it is of degree merely. Besides, we are not able to agree that the claim of the appellant’s patent is limited to a cork inserted by a machine.

In response to a demand from the patent office, made presumably for the purpose of eliciting evidence of the practical utility of an invention which required the insertion of a cone-shaped cork larger end foremost, he added to the specification the clause concerning “the corking apparatus”; but we do not suppose that it was, intended, or rightfully could have been required, that he thereby should limit his claim to a combination of bottle and cork effected by machinery, and we do not think that his compliance with the suggestion or demand of the office had that effect. 2.

It is said that the receptacle in the neck of Stocker’s bottle was made in the process of blowing’ and for that reaspn is necessarily defective. If the defect be real and more than a matter of degree not affecting the question of patentability, it involved no invention to revert to bottle necks put on by the proee'ss of welding, from which Stocker departed for the sake of economy.

If, too, instead of a bottle for sauces, he had- been planning for liquids which are bottled under pressure, he would have been under no necessity to invent, but simply to adhere to .the use of bottle necks put on in the old way, and to insert his corks by means of machines already in use.

Indeed, his specification says that, “in order to facilitate the introduction of the cork ring or improved stopper,” he preferred “to expand the lip or upper edge of the part, so as to cause it to assume a slightly bell-moutli form”;v and, if unknown before, that would have been a fair suggestion of-.the use of converging tubes as means for compressing and forcing the corks or stoppers into place. 3.

Stocker’s cork, it is said, differs from that of the appellant in that its central portion is made of glass, provided with screw threads and with a roughened or milled glass head; its outer-portion is made of a ring of corkwood, etc., and it is not capabléfof insertion by compression through a tapering tube.

But Fig.. 3 of the drawings of Stocker shows a solid block of cork, from which a piece, it is explained, is to be removed for the admission of the glass portion, and it manifestly required no invention to reject the glass head, and by forcing the solid piece of cork into place, either by hand or by machine, to produce the exact combination of the appellant’s claim. Instead of devising or using now corks with screw-threaded glass heads, it was only necessary to employ the old and familiar forms, and to put them in place by means which were not less well known. 4.

It is said that the stopper of Stocker’s patent is not a solid or one-part stojiper, such as is required by the claim of the patent in suit. Whatever significance there is in that objection is answered by wliat has jnst been said. It required no invention to revert to old and simple forms. We do not perceive, however, that the word “'solid’’ in the claim of appellant's patent requires that the cork shall be of “one part” or one material, “homogeneous throughout.” Thai is not among the

definitions of the word, and, if it were, its application to this patent is forbidden by the specification which recognizes it as “evident that some cheaper material, such as pottery, clay, or cheap metal, might be inserted in the central part of the cork to lessen its cost.” If it were conceded that the solid cork means one made of a single homogeneous material, the appellees have not infringed, because their cork, though solid, contains different’substances.

If there were nothing else, the presence of the metal ring or staple would be enough, under the definition, to distinguish the stopper of the appellees from that of the appellant. Though the ring is designed mainly to be used in extracting (be cork, yet the end imbedded in the body of cork, it is evident, constitutes a different and nonhomogeneous substance; and, if considerably enlarged, it might, by reason of the cheapness of the metal as compared with caoutchouc, serví; materially to lessen the cost.

At the same time, it is manifest that a, cheaper substance within the body of the cork, if the exterior parts be sufficiently thick, will not affect the fitness of the cork for insertion and use in appellant’s combination; and, this being so, it is evident that, unless limited to a conical cork, the combination is fully anticipated by the patent of Parker. It is not material that Parker's invention may have been intended mainly for putting up and preserving fruit.

The appellant’s jar is adapted and was designed in part for the same purpose, and the patent, whether considered as related to bottles or jars, contains no fea tun; of construction, unless it be in the cone-shaped cork, nor principle or mode of action, which is not illustrated in the specification and drawings of Parker. Ho, too, in the patents of Shaw and Baxter, there needs only to be a return to the solid cork, from which they sought to escape, and in each there is a perfect anticipation of De La Vergne’s patent.

It is true that the corks of Shaw and Baxter extend above the lips of the bottle, but, if the complainant’s invention be Worthy of the name, it cannot be evaded by making a part; of the cork to protrude from tbe mouth of the bottle. It is an unessential incident, easily removed, which would not affect- the operation and efficiency of a cork the main body of which had been compressed into the converging receptacle.

The specification' and claim of De La Vergne do not in terms require that the cork be “wholly seated within the neck of the bottle,” and we do not perceive it to be true, as contended, that “if, when inserted, any part remained above the neck, that part would tend to pull the rest out of the bottle.” Unless that part were the larger, its tendency would be rather to follow the greater mass into the receptacle, — the disposition of elastic bodies when compressed or distorted being always to return to the original or normal form.

It is evident that if the Shaw stopper were solid, and had been thrust into place by means of “prodigious compression,” shortening the lateral and increasing the vertical diameter, and thereby creating a “prodigious power of lateral expansion,” the portion outside the lip would have no effective power to pull out the parts within the neck.

On the contrary, the vertical diameter both inside and outside being abnormally extended, upon withdrawal of the compressing forcé of the machine the force of lateral expansion alone, both within and without the receptacle, would come into action, and the portion of the cork outside the receptacle would gather or at least tend to gather into a cap or bulb over the mouth of the bottle, with shortened vertical and extended lateral diameter. To say the least, the tendency to pull out would not equal the tendency to be drawn in, because of the greater mass being within the receptacle.

But, without further consideration of the prior art, we deem it sufficient to add that if the De La Vergne claim is not limited to a cork in the form described it necessarily follows that the patent covers any and all kinds of stoppers made of rubber, common cork, or other elastic and pliable material, when inserted in a cone-shaped bottle neck, under such compression as to cause it 'to fit tightly and press with force against the converging sides of the receptacle, no matter what the form before insertion.

The art of stoppering bottles had long been too well advanced to admit of a claim so broad; the patentee did not conceive it; and no ingenuity of argumentation or charm of eloquence can justify his efforts to appropriate it. The decree below is affirmed.