AO Smith Corporation v. Petroleum Iron Works Co.

ALLEN, Circuit Judge

(dissenting).

I agree with the decision in the secret process ease, but I cannot assent to the conclusion that the claims in suit are invalid. The majority opinion sustains the holding of *540 the District Court that claims 3, 5, 6,14, and 16 lack patentable novelty. This holding was based upon the conclusion that the only contribution made by this still was an increase in capacity and pressure resistance. Such a contribution, however valuable commercially, does not constitute invention. Powers-Kennedy Contracting Corp. v. Concrete Mixing & Conveying Co., 282 U. S. 175, 185 , 51 S. Ct. 95 , 75 L. Ed. 278 . However, the Smith still does more than that. It solves intricate problems never before solved in the cracking of oil.

Prior to the conception of the Smith still, the vessels which were used for the refining of oils were in general low pressure vessels, either riveted or constructed by hammer welding. There were also vessels forged from a single ingot of steel, which were capable of a higher pressure. All of these vessels were considerably smaller, and hence less useful commercially, than the Smith vessel. . The hammer-welded vessels were welded only at the outer and inner edges of the laps which were joined, and were subject to unusual corrosion at the seams. The hammer-welded plates lacked equal tensile strength. The riveted vessels were weakened by the insertion of rivet holes, their efficiency being reduced to 75 per cent. They developed leaks and lacked integrality. The forged vessels which were nearest to the Smith product in performance were limited in size and expensive to .manufacture. It was difficult and costly to fit them with the needed manway connections, and, if variations from the purely cylindrical shape were necessary, the cost was very high. The Smith still in'great degree solved all of the problems presented by these other types of still construction. Most of all it exhibited a unique integrality.

The Smith still withstands the contortions caused by the extremely high temperature and pressure necessary in the production of gasoline under the oil cracking process. In addition, this still is unique in the industry, for its capacity to endure the.stress and strain of unequal expansion and contraction. Owing to the thermal expansion of steel, the diameter of the vessel varies in the oil cracking process with the variation in temperature which is present in different portions of the reaction chamber. In the course of an operation cycle in the Dubbs cracking process there is a wave in the vessel wall which travels down the vessel and then up, causing severe stresses in addition to those created by the extreme internal pressure of the oil cracking operation. The Smith still reacts with oneness as a thing alive, and is able to adapt itself to these unusual stresses.

Thus in a Smith vessel, which was 65 feet, in length, 269,000 pounds in weight, with a wall thickness of 3% inches, and an inside diameter of 7 feet 7% inches, as the cycle of operation proceeded, the following ehangesin the shape and form of the vessel were noted: At first, the hot oil, hitting the bottom of the horizontal vessel and covering the-lower part of it to about one-third of its volume, heated the lower part of the vessel to-a higher temperature than the upper part, the result of which was that the vessel took on a sausagelike shape, that is, it was bent with the lower part larger than the upper part, which curved the ends of the horizontal vessel upw.ards. The tower which was attached to the end of the vessel therefore-leaned in one direction. As the coke deposited and insulated the bottom of the vessel, that part of the vessel became colder than the top and the vessel took a reverse shape. The ends of the vessel ,bent down, and the tower leaned in the opposite direction. At the maximum deflection, the horizontal vessel was pulled away from its support 1% inches. In spite of the deflection, this vessel was safe to operate because it reacted as one unit, flexible throughout its entire length and breadth.

It is not shown in this record that any still prior to the Smith still reacted with such integrality under these strenuous conditions.

The master, in his scholarly opinion which held these patents invalid for lack of novelty, states that there had been large welded vessels composed of separate parts fused together long before the idea embodied in this patent was conceived, and cites the steam boiler, the air tank, and other arc-welded articles. The welding of engine-parts hardly presents a problem analogous to that solved through the Smith still. The boilers described by Holslag, expert witness for the appellee, were’“low pressure boilers;” “under a hundred pounds.” While the air pressure vessels or air tanks arc-welded were subjected to far higher pressure, none of these air tanks were subjected at the same.time to excessive temperature and to marked and sudden shifts in temperature. The Smith stills used in the Dubbs system were compelled to submit to a pressure of from 275 pounds per square inch in the high pressure stills, and to a variation in temperature in the same operation of from 250 degrees F. to 915 degrees F. In the Holmes-Manley system there was a variation of from approximately 900 degrees F. at the bottom of the still to about 420 degrees F. at the top of the bubble tower.

As correctly stated in the majority opinion, the “plaintiff brought forth something *541 new in oil cracking stills.” Aside from the fact that this something new has enabled gasoline producers to distill better gasoline more cheaply, because the stills are larger, thicker, and of longer life than other stills used in oil cracking, aside from the fact that the extreme thickness of the walls in. these stills and their integrality have greatly reduced the hazards of the process, a new tiling was invented, namely, a large vessel composed of sections united in one piece by electric welding and highly adapted through its integrality for tho cracking of oils under (1) extreme pressure, (2) extreme temperature, and (3) extreme shifts in temperature in tho same cycle of operation.

The elements of combination were old, but the combination and arrangement which attained this end were new. The result was beneficial and had never been attained before. Hence it is evidence of invention. Webster Loom Co. v. Higgins, 105 U. S. 580, 591 , 26 L. Ed. 1177 .

The elements of a combination may all be old, for in making a. combination the inventor has the whole field of mechanics as his source. Diamond Rubber Co. of New York v. Consolidated Rubber Tire Co.. 220 U. S. 428 , 31 S. Ct. 444 , 55 L. Ed. 527 ; Leeds & Catlin v. Victor Talking Machine Co., 213 U. S. 301, 318 , 29 S. Ct. 495 , 53 L. Ed. 805 ; Du Bois v. Kirk, 158 U. S. 58 , 15 S. Ct. 729 , 39 L. Ed. 895 .

The need of the industry for precisely this type of vessel is shown by the fact that, after the Smith still began to he used, it rapidly replaced the prior vessels in the art. 1,088 of them, having an aggregate sale value of $16,000,000, were sold by tho appellant prior to the trial. The appellees (the only competitors in the production of these vessels up to the trial) advertised the peculiar qualities existing in tho Smith still, and imitated in their own still, as meeting a long-felt demand, saying in their circulars:

“That is the purpose of Fluid-Fusion welded pressure vessels — to meet the demand which has always existed in the Oil Industry for cracking stills and equipment capable of resisting terrific degrees of heat and pressure.

“With Fluid-Fusion welded vessels high pressure cracking is carried to limits unknown before and tho Industry is finally rid of the shackles of inadequate equipment.”

If a particular result has been long desired and often sought, but never attained, want of invention cannot he predicated of a device or process which first reached that result, on the ground that the simplicity of the means is so marked in view of the state of the prior art, that many believed they could readily have produced it if required. General use is evidence of utility. Gandy v. Main Belting Co., 143 U. S. 587, 594 , 12 S. Ct. 598 , 36 L. Ed. 272 ; The Barbed Wire Patent, 143 U. S. 275 , 12 S. Ct. 443 , 36 L. Ed. 154 . • The fact that Smith’s still was immediately adopted by oil distillers is pregnant evidence of its novelty and utility. Magowan v. New York Belting & Packing Co., 141 U. S. 332 , 12 S. Ct. 71 , 35 L. Ed. 781 .

“Where tho question of novelty is in doubt, the fact that the' device has gone into general use, and displaced other devices employed for a similar purpose, is sufficient to turn the scale in favor of the invention.” Potts & Co. v. Creager, 155 U. S. 597, 609 , 15 S. Ct. 194, 199 , 39 L. Ed. 275 .

In Krementz v. S. Cottle Co., 148 U. S. 556 , 13 S. Ct. 719 , 37 L. Ed. 558 , the inventive concept was that a collar button might be made of a single continuous piece of metal, in which the head was hollow and round in shape. The Supreme Court of the United States in that ease reversed a decree which had held the patent on this device invalid for want of novelty.

The case of Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U. S. 45 , 43 S. Ct. 322 , 67 L. Ed. 523 , involved a patent which merely changed the pitch of a sieve known as a “wire” from 3 to 12 inches so as to apply tho obvious principle that water will run down hill. However, it revolutionized the process of high-speed paper manufacture so that the output of nondefective paper was increased 20 per cent. This called for less inventive genius and certainly the results were less spectacular than in the case at hand. In'the Eibel Process Case Chief Justice Taft considered the same questions that have arisen here, namely, novelty of invention, long-felt need, resultant use, retrospective obviousness, vague terms of tho patent, failure of the. specifications properly to instruct those skilled in the art, equivalents of the same elements in the new combination, presumption of validity of patent, and infringement. All of these questions were resolved in favor of the patentee.

If the application in increased degree of Newton’s principle of gravitation to the manufacture of paper producing a new result is invention, how can we say that the application of the old art of arc welding to the oil cracking problem producing such a new result as tho Smith still is not invention?

Upon the holding of invalidity, the judgment should be reversed.