BATES MACH. CO. et al. v. EXCELSIOR HEATER CO., 89 F. 498

WOODS, Circuit Judge, after making the foregoing statement, delivered the opinion of the court. The result of the briefs and of the argument at the hearing, as well as of the opinion of the court below, is that the steam chamber, operating as an oil separator, is the one feature to be considered in determining whether any of the claims in suit cover a patentable combination which has been infringed.

It has long been well understood that exhaust steam, when it comes from a cylinder, is charged with more or less lubricating oil, and, when the steam is employed for the purpose of heating water intended for use in steam boilers, it is important that the oil shall not go with the water into the boilers; and it is clear upon the evidence in the record that, as exhaust steam passes through the chamber of a heater constructed according to the patent in suit, the oil is to some extent separated therefrom and remains in the chamber, and consequently a less quantity is carried to the chamber above, to commingle with the water.

The evidence also shows that any form of enlargement in the passageway of the steaih will cause a separation of the oil from the steam, more or less complete according to the character of the enlargement or chamber. The separation may be aided by the use of baffle plates upon which the current of steam strikes as it enters the chamber; and such plates, though not shown or suggested in the patent, have been inserted for that purpose in the steam chambers of the heaters manufactured by the Excelsior Heater Company.

The controlling question is whether Ferreira was the first to embody in a heater a steam chamber, or its equivalent, which, without a baffle plate, was adapted to separate to a useful extent oil from the passing steam. It is evident that he had no such thought when his application for the patent was prepared.

The specification gives no hint of it, though other and less important functions of the chamber, supposed to result from its location between the water chambers above and below, are carefully explained; and, while other minute and commonplace features of construction are illustrated or specified, the drawings show no outlet for the oil from the bottom of the steam chamber.

On the contrary, it was manifestly the understanding and intention of Ferreira that the oil should float upon the surface of the water, and pass oil through the overflow pipe, K; the pipe, G-, for conducting the heated water to the settling chamber, being so adjusted “as to draw off the water without scum, oil, or other floating matter.” It is, of course, true that the patent is not to be deemed invalid or of less scope because the oil-separating function is not mentioned in the specification; but, when it is considered that in the first heater manufactured under the patent the patentee caused a baffle plate to be inserted in the steam chamber for the purpose of producing or of aiding in producing there a separation of oil from the steam, the reasonable inference is tliat he did not regard the separation so effected (wiih or without a baffle plate) as a characteristic of his invention.

Indeed, he testified that the results accomplished by his device depend “on the exact combination and location of these three chambers”; and the attempt made in another part of his examination to attribute to the solicitor who prepared the application for the patent the responsibility for omitting any reference to the oil-separating function of the steam chamber, — a function which in no degree depended on the relative location of that chamber, — • in view of all the circumstances, is not convincing.

But, whaiever his own belief on the subject, Ferreira was not, in fact, the first to introduce into a water heater an enlargement in the passageway of the exhaust steam, which, by permitting a reduced velocity and expansion of the steam, was, in respect to the function of separating the oil, the equivalent of the steam chamber of the patent. Unmistakable instances of anticipation in that particular are found in the patent of Brighton, Wills, and Rastetter, No. 65,547, and that of Miller, No. 885,769, and less clearly, perhaps, in the patent of Oliphant, No. 384,540.

One of the experts, speaking of the Miller patent, said that he did not regard the steam pipe, S, as a steam chamber; that it was not so described in the patent; that, while somewhat larger than the exhaust pipe, the difference was not enough to enable it to perform successfully the function of separating the oil; that there is no evidence either in the drawing or specification that it was intended to perform that function; and that no means is shown for removing the oil in case it should be separated.

All this, except that the pipe is not called a steam chamber, is no more true of Miller’s heater than of Ferreira’s; and that the pipe in Miller’s construction would in fact separate the oil from the steam in considerable measure is demonstrated by the proof offered by the appellee of the efficiency in that respect of a mere enlargement of the pipe through which the exhaust steam is conducted to the heater in use at 116 Dearborn street, Chicago.

If it is to be supposed that Miller’s pipe did not successfully or completely separate the oil from the steam because not large enough, it required no invention to make the pipe larger. In neither patent is the function mentioned, and there is no direct evidence that without a baffle plate the chamber of the one would separate the oil and steam more successfully than the enlarged pipe of the other. The difference, if any, it is evident, can be only in the degree of efficiency.

The heater of Brighton, Wills, and Rastetter has a steam chamber immediately under the water chamber, and only needs a settling chamber below to embody the exact combination and location of chambers on which, according to Ferreira, the results accomplished by his device depend. The use of a second receptacle or settling- chamber for the heated water, however, is of frequent occurrence in the earlier devices; and to add one to a heater composed of a single water chamber at the date of Ferreira’s application was certainly not an achievement of inventive or creative power.

Besides, it is to be observed, no claim of the patent in suit requires the exact combination and location of the three chambers illustrated in the drawings. The second claim is for the three chambers with connecting pipes, but there is no requirement that one chamber be above or below or in contact with another.

By the third claim the steam chamber is under the water chamber, but it need not be in contact, and no location for the settling chamber is specified; while by the eighth claim the settling chamber is under the steam chamber, but not necessarily in contact, and the relative location of the water chamber is not specified. Manifestly, therefore, if the patentee was right in respect to the beneficial results, he was mistaken if he thought the exact combination and location of the three chambers were required by any of the claims of his patent, or were in fact new and patentable.

It would be obviously absurd to attribute patentability to changes in the relative locations of the chambers unless a distinctly new and useful result were produced; and in respect to the single function material to be considered, of separating oil from the exhaust steam, it is not pretended or conceivable that the location of the steam chamber can affect the operation.

In respect to that function, no witness has testified or declared a belief that the steam chamber of Origliton, Wills, and Bastetter is not quite as well adapted as that of Ferreira to effect the separation; and that it is in fact better adapted for that purpose seems clear, because it is quite equal in size, and, as constructed, its walls and angles must have in a degree the effect of baffle plates. The decree of the circuit court is reversed, with direction to dismiss the bill.