,Ifth-e {,claim. in: i question ean·· 'bei :regarded 'as freontaining 'invenit must be .limited to the .particular formS: of- construction tion of ,the pipe box described; and, that done,;infringement;; is not proved. The decree below, in each case,should be affirmed, and it is so ordered. STffiRAT etaI. v. EXCELSIOR MANuF'G CO. (Circuit Court of Appeals, Eighth Circuit. No. 341. PA'fIill;NT$.....LuUTNfION 011' ,CLAIMS-WATER-HEATING DEVICE FOR STOVES.
May 7, 1894.)
Sj;i.rrat patent, N'o, 357,874, tor a water-heating device, for stoves, in +ie'Y' <>t the prior state of the art t;he modification.ot the .claims in the patent o:tll.ce, must be strictly !fmited to the' construction described, _ which includes, as an essentlll1 elemllnt of the combination claimed. a ll.olloW', long center plate or a top plate; of a stove havjng a.chamber therewhich the. wl:l,ter heated is cause9, 'toPassi and bence Goes not cover a device containing a$()lid, long center plate witha water box bolted thereto. 60 Fed. 607, a:tttrtned. . .. '
and
,,,
.
j
I
Appeal from the 0ircuit Court of the United States for the Eastern District of Missouri. for appellants. Paul Bakewell, for appellee. Before CALDWELL and SANBORN, Circuit Judges. SANBORN, Circuit Judge, deUvered the opinion of the court. This was a suit for the infringement of letters patent No. 357,874, for a. water-heating device for stoves and ranges,' issued to the appellants .Bobert J. Stirrat and Robert G. Stirrat, February 15, 1887. The defenlre was that there was no patentable novelty in complainants' device, and that the the Excelsior Manufacturing Company, a corporation, did not infringe. The circuit court dismissed the bill on the latter ground. 60 Fed. 607. The device of the. appellants consists of the combination of the hollow, ll>ng center plate of a stove or range,. with a supply pipe, which Jel,lds from the lower part of a wateI1 tank, through the wall of a stove or range, thence in front of, the fire back, and is then inserted in .the under side of the long center plate, near the end furthest. ·from the source of supply; and an edu'ction pipe which leads to the hot-water tank and 'ls,screwedirito the long center plate. at the end opposite to that at'which the.supply pipe is inserted. The device of:the appellee consists of the combination, with the sQMd,long center plate of 8;stove"of It'waterbox, slotted lugs· and; bolt'. 01' i screws, by which 'it may' be fastened to the long center, i'and,! a:J8l1pplyrpipeand,an'oouetion pipe arranged and insertedin the 'water boxinisubstantiaUy the same 'way ihwhich the appellants arrange and hisert the like pipes in their hollow; long i
STIRRAT V. EXCELSIOR MANUF'Q CO.
981
center plate. The device of the appellee is described in letters patent No. 358,123, to O'Keefe and Filley, dated February 22, 1887. In operation, the cold water is led through the supply pipe in front of the fire back, and thence, in appellants' device, through the hollow, long center, and, in the appellee's device, through the water box fastened on the under side of the long center, to the hot· water tank. The claims and specifications of every patent Inust be read and construed in the light of a full knowledge of the state of the art when the patent was issued. A patent to the original inventor of a machine which first performs a useful function protects him against all machines that perform the same function by equivalent mechanical devices, but a patent to one who has simply made a slight improvement on a device that performed the same function before as after the improvement, is protected only against those who use the very improvement he describes and claims, or mere colorable evasions of it. If Robert J. Stirrat, the inventor of the device of appellants, had been the first to discover and to reduce to practical operation a combination of pipes or water boxes or both, to be used in stoves or ranges for the purpose of heating water and tempering the heat of the long center plates or tops of stoves or ranges, and had broadly claimed for his invention the protection of the patent laws, the appellee's device would clearly have been an infringement upon his patent. On the other hand, it is not less certain that, if devices of this character had long been in use before his invention, if the machine used by the appellee, or devices so analogous to it that it required no invention to confoI'ttl them to that of the appellee, had long been known and used for this purpose, and if this invention of Stirrat was nothing more than a slight improvement of wellknown devices in features of construction specifically pointed out in the specifications and claims of his patent, then the appellee ought not to be charged as an infringer here. In other words, the question of infringement or noninfringement in this case must be determined by the limitations placed upon this patent by the state of the art when it was issued, and the specifications and claims of the inventor himself. McCormick v. Talcott, 20 How. 402, 405. What, then, was the state of the art? As early as 1875 two horizontal pipes, placed against the fire back of a stove, the one above the other, and connected together in the form of an ox bow, · so that the cold water should be led into the stove through the lower pipe, and back, when heated, through the upper pipe, to the receptacle for hot water, were in common use. In letters patent to Wood, No. 115,800, June 6, 1871, and to Weldon, No. 227,334, May 4, 1880, a water back for a stove or range with a partition therein extending nearly the length of the box to divide the cold water from the hot, and an arrangement for passing the pipe from each side through the wall of the stove Qr range, :are shown. In letters 'patent No. 258,098, to William<MUlel', May 16, 1882, a fire box lined on each side with a water :back .having a hollow extension ,that supports the panel or long center of the, move Or range,
982,
FEDERAWREPORTER,
vol. 61.
taining the fire box Is shown.' In the specifications' to that patent lfr.
''I am 1 aware It Is not new to support the long centers or top pla.tes ot ranges'qrsimUar cooking apparatu$ .by a coll of water pipes extending from the fr()nt "to the rear of communicating with the water back ot tl:1erange orst9ve. Furthermore, I am aware it is not new to suppOrt these long centers by m'eans of water chambers extending completely across from tp.e frollt to the rear of ranges, etc., as such devices are seen'lItllleveral patents." .
. e..·
it, connected by pipes with a water reservoir. They passagelil in other parts of the top of the stove, and a:ri' 'arrangemetlt for connecting these with the interior of It back, So that the water ma-Y pass through the latter alld in the top of the stove to and from the reservoir. In the speci'llcations these patentees say: . that water piPes !).ave been placed contiguous to the undel' side otstoV!:l tpps and to the rear sideS otstove fire backs, but not entering the body of elther,and .we do not claim the same. In our invention the water comes dtt:eetly into the body of both the top and fire back."
May 8, 1883, show the long center of a stove, WIth water
.p. ··
t. No. 277,009, t6' Newton Cooper an.d
E.
Thus it appears that there was no novelty in suspending pipes in .front.of Jhe fire backs of .stoves or ranges for the purpose of .' that was ;no novelty in making the fire backs ofstQveal1011ow, and heating the. watel7 therein; none in providing the longCElnters or tops of stoves with water passages, through which. the :'Wiater might circulate to and from the reservoir; none in cOI1J;le,eting the holloW .fire back with the passages in the top of the stQVEt,so that the water might circulate from the reservoir through,thei stove top and the fire back, and thence to the reservoir; none in placing water pipes contiguou$ to the under sides of long centers'Qf.$ves; and none in connecting such contiguous pipes with the..1;lollowfire backs or water backs proper of stoves, so that the water. would circulate through the water backs and the contiguous pipes. Vide Miller, No. 258,098, supra. The appellee seems to simply turned over the old device described by Miller and placed the pipe on the fire back, and bolted the water back to the long center. Was this invention, and, if so, was it Stirrat's? In his original application, filed October 23, 1883, Stirrat says: "My impl'Qvement consists' in forming a water passage in the .. center or centers connected with the water tank by· suitable pipes," and his only claim was "the long center of a stove or range, formed with a water passage therein, communicating with induction and eduction . This claim was immediately rejected by the commissioner of patents, with the statement that the. patent to Cooper and ConweU,sQPra, proved that it was old to construct a long center ofa stove torfOJ.'IILa waterbackj that the patents to Weldon, No. 227,. 334, May .and 10 Wood, No. 115,800, June 6, 1871, supra, it was old to construct a water back with a partitiOIl' and the pipes therefrom through the side of the stove j and that ·.StU'rat's;claim contemplated' simply the substitution of,
me
STIRRAT
v.
EXCELSIOR MANUF'G CO.
983
the construction shown by the last-named patents for that of Cooper and Conwell, which did not involve invention. The references made by the commissioner were conclusive proof that Stirrat had not made the invention he supposed he had, and he abandoned it. But the ingenuity and perseverance of his counsel, after repeatedly amending his application, extracted from the commissioner the patent in suit in February, 1887. This patent has three claims, which read as follows: "(1) The combination, with the removable top plate 01' a cooking stove having a chamber therein, of an exit pipe, leading from said chamber at one end of the plate, and an inlet pipe, running parallel to the exit pipe, extending to the other end of the plate, and communicating with the chamber, substantially as described. (2) The combination, with the removable top plate of a cooking stove having a chamber therein, 01' an exit pipe leading from said chamber at one end of the plate, and an inlet pipe, communicating with the chamber at the other end of the plate, and extending dOWLward horizontally and upward beneath the plate, and then parallel to the exit pipe, SUbstantially as described. (3) The combination, with a cooking stove or range, of a hollow, long center plate, supply pipe, F, formed with horizontal section F", and vertical sections F', F"', and the eduction pipe, G, substantially as described."
In the specifications, Stirrart: says, among other things: "My invention relates to those water-heating devices in which the water to be heated is caused to pass through the long center and a water back. :My improvement consists in features of construction hereinafter described and pointed out in the claims. · · · 'l.'he long center, C, is cast with a projection having a water passage through it almost from end to end, as shown at C. The under side of the long center is tapped at C', and the section F" 01' the water pipe screwed therein. · · · It will be seen that the construction I have shown provides a combined long center and water back."
Now, it must be borne in mind that the patent to Cooper and Conwell, supra, exhibited a hollow long center, a water passage through other parts of the top of the stove, and a combination of a water back with the hollow stove top, so that the water could pass from the reservoir through a part of the top of the stove and the water back, and :thence be returned to the reservoir through another part of the stove top, The improvement in the construction shown in this patent over that of Cooper and Conwell, if any, is the combination of the water back with the hollow long center, instead of combining it with any other part of the top of the stove. It is unnecessary to consider here whether or not there was any patentable novelty in this improvement. If there was, it is difficult to see how it could extend to the device of the appellee, or how there could have been any novelty in the latter. The evils to be remedied by these devices were that, when too large a por.tion of the fire back of a stove was covered by water pipes or by a water back, the oven beneath would not heat evenly, and that the long center plate would warp and burn out, unless it was protected by water passing through it, or by a water pipe or box contiguous to it. The prior patents to which we have referred show that the device of keeping the long center cool by placing a water pipe or a water box directly beneath and contiguous to it was old and well known. If the two legs of the old ox-bow pipe prevented the oven from heating quickly and evenly, it must have been obvious
984 'to
FEnERAt REPORTER,
any mechanic skilled in:the'al't that, if they werei'aised a few inches, so that the lower one oilly would rest on the fire back, this eviIwould be remedied. It was an old and well-known device to place water boxes or contiguous pipes beneath the long center of stoves to temper their heat. (Letters patent No. 258,098 to Miller, and No. 277,009 to Cooper a:.n.d Conwell, supra.);: To make the upper leg of the ox bowfu' the form of a water box, 'and fasten irt detachably to the long ceuter when it had been' raised from the fire back, was but to adopt this old device for cooling the center pla.te. , The only change to conform the 'old ox bow to the deVice it a few inches in the stove" to makeJ;tle,upper leg'ill' the"fortn 9f a water box, and bolt it to the long center plate. The only change required to conform the old device described in the:pate:nttoMillerl\S a coil of pipes supporting long center, ,a:nd ¢()m-mUJiicating with the water back to that of WaB to. ,that device over, and to attach the water back to the long eenter, and let the coil of pipe rest on the fire back·· Therewasoomifily no invention-no discovery-in making theSe changes. ,'f,liWY si,mple, and so obviously effective to remedy the evUs"complai,ned of, that they must have occurred to such devices who sought"to remedy them, therefore,the; cXaims of this patent warranted a con· strucuQn' broad enough' to cover the detice of the appellee, we should have no, hesiiation in hOldirig it void for want of novelty. Atlantic Works v.Brady, 107 U. ,S.192, 199, 2 Ct 225; ViptC/n v. Ham· ilton, 104 V.S. 485, 491;f;;law,son v. Railroad Co., 107 U. S.649, 658, 2 Sup. Ct 663; King v. Gallun, 109 U. S. 99, 3 Sup. Ct. 85; Double-Pointed Tack Co.v.Two RiverS Manuf'g Co., 109 U. S. 117, 3 Sup. Ct 105; Estey v.Burdett, 109 U. S. 633, 3, Slip. Ct. 531; Bussey 1". Manufacturing Co., 110 u. S.131, 4 8up.. Ct 38; Phillips v. City of D(!If;l'Oit, 111 U., S; 604:, 4 Sup. ct. 58!}; Morris 1". McMillin, 112 U. 8.244, 5 Sup. Ct. 21S; Hollister v. Co., 113 U. S. 59,'0 SUP',Ot. 717; Ellbert 1". Gaslight Co., 50 Fed. 205, 211. But, in our' opinion, the claims of this patent do not warrant any claim of a specific combination or device ina patent is a renuncirution of every claim to any other combinations: or devicesf()f performing the same functions that are apparent from the face' ()f the patent, and are not colorable evasions of the combination or device. claimed. The statute reo .quires the to "pahicularly point' out distinctly claim the part, improvement or combination which he claims as his dis· covery."Rev. St. § 4888. ,,:When, under this statute, the inventor has done th,f.s,' he has thereb;r disclaimed!:llid dedicated to the public all other improvements' arid ''combinations apparent from his specifications and Claims that are nortevasions of the device and combination he as his own. The Claims of his patent limit his exclusiveprh1leges, and, his specifications may be referred to to explainl1nd tprestrict, but never to eXJ?and, them. When the claims and',' specifications df this patent are read in view of, the state of art to which We have adverted, and fairly construed in accordance with these' established rules, no attempt to claim
8TIRRA,'T,V.' EXCEr,sIOR MANUF'G. CO.
985
the invention of such a combination as that of the appellee will be found, but a. plain disclaimer of any' such iriventi<m. In each of the three claims of the patent the inyentor specifies and claims "a hollow, long center plate," or "the removable top plate of a cooking stove having a chamber therein," as one of the elements of his combination. In his specifications he declares that his invention "relates to those water-heating devices in which the water to be heated is caused to pass through the long center." In the device of the appellee there iii! no hollow long center, nor is it one of those heating devices in which the waIter to be heated is caused to pass through the long center. We think these claims and specifications (especially in view of the state of the art) constitute a fair disclaimer and dedication to public of all right on the part of Stirrat to protection against any such device as that used by the appellee, and hence that the latter, was guilty of no infringement in its use. Keystone Bridge Co. v. Phoenix Iron Co., 95 U. S. 274, 278; Miller v. Brass Co., 104 U. S. 350, 352; McClain v. Ortmayer, 141 U. S. 419, 424, 12 Sup. Ct. 76; Dobson v. Cubley, 149 U. So 117, 121, 13 Sup. Ct. 796; Heine Safety Boiler Co. v. Anheuser-Busch Brewing Ass'n, 43 Fed. 786, 789; Maddock v. Coxon, 45 Fed. 578. The brief and argument of counsel for appellants in this case are instructive and exhaustive. Every authority and suggestion that could be advantageously urged in their behalf seem to have been presented. Perhaps the strongest statement of their claim is that the only difference between the device shown in the patent and that used by the appellee is that in the former the hollow long center plate is made in one piece, while in the latter it is made in two pieces,-a solid long center plate and a water box bolted to it,-and that this simple change in construction cannot be pleaded to avoid infringement. This position would be unan· swerable if Stirrat was a pioneer here, and if he had not expressly restricted his claims to a combination the essential element of which was the hollow long center. But the state of the art to which we have adverted was such when he made his invention that there was no patentable novelty in a combination of a box bolted to the long center with the supply and eduction pipes used by the appellee, and this fact, and the specific limitations he imposed upon himself in his claims, have forced us to the conclusion that his patent was properly restricted by the court below to the special feature of construction he described and claimed, viz. the hollow long center through which the water was caused to pass in 'combination with the connecting pipes. The decree below must ac· oordingly be affirmed, with costs, and it is so ordered.
988'J'BDlIlRAL /," 'F"<F:!. II y. W
REPORTER,
vol. 61. _ ,.;.
: ;." QYOLE
qQ.'
(OlrcllitOourtat, Appeals;lI-lrst Circuit. ," .. No.n. , :'1; ! , ' , ' , 'j,'
Aprll17,lB94.) . , .'
from the. Cjrcuit Court of, the United States for the District of Ml;l;ssaehusetts.. " ',' .",. ", ' Tliii1,;w;a'S"a suit bY41bert H. Oyerman against the Warwick Cycle ManufMturipg Cpmpany to rest,rain infringement of letters 331,001, ,gmnted tp, the ,complainant for a saddle for The bmwas disIllilSsed with costs (54 Fed.. 496), and luid :Edward S. White, for appellant. appellee. , ' bOLT and. PUTNAM, Circuit Judges, and NELSON, Dis-, trict Judge. . , PER CURIAM. The, characteristic feature of the O\Terman patented saddle is its adaptability for removal and replacement at pleasure. This: is the essence of the invention, and constitutes the improvement over prior saddles. The defendant's saddle embodies a form of construction in, which this feature is absent. This is the ground'uPon which the court below held that the defendant's saddle did not infringe the Overman patent. We think the court below was right, and we canMd nothing to the reason so clearly stated in its opinion. 'Decree affirmed.
,
': :
THE DAGO. UNIT.mo STATES v. THE DAGO. Court otAPpeals, Fourth Circuit. No. 67. BILL 011' ;H:lCALTH-:-PORTOll'l D1JU>ARTURE.
May 22, 1894.)
A sllip boulld, tor the UnIted States must (27 Stat. 449) procure a bill ot health "trom the' consul or other consular officer of the United States at the port ofdepatture:"· Held, that "the port 'of departure" is not thelaat port at which the shipstopS'whUe the United States, but the IlQz:t from whlllh ,sh!! cleareq..
,,'
Appeal from'the District Court of :fhl:l'United States for the District of Maryland. This was a libel by the United States against the British steamship Dago to enforce a forfeiture. The district court dismissed the libel, and libellant appeals. John T. Ensor, for the United. States. J. Wilson Leakin, for appellee.