Appendix — American Air Filter Co. v. Farr Co.

: da

J es |

U NITE D STATES DISTRICT. COURT |

Sou THERN DIsTRICT OF CALIFORNIA

<< E NTRAL DIVISION. o

AMERICAN AIR FILTER. COMPANY, Inc., -

Piaintif | re

US. . | \. Civil Action’

4 ; \ ( No. 858-58¥Y_ ——

~- ) FARR COMPANY, ee ee |

ae - ‘ Defendant.

DECISION *

The above-entitled cause heretofore’ tried, argued and

submitted is hereby decided as follows:

Judgment will be for the plaintiff that the patent in

suit, United States Letters Patent No. 2,807,330, is good:

and yalid in law and it$ claims are infringed by the

~ defendant. | ala

After Judgment shall have become final, question of

+ damages will be referred to a Master, to be appointed by

the Comrt. ;

Costs to the plaintiff. No attorneys” fees.

Findings and Judgment to be prepared by counsel for

the plaintiff under T.ocal Rule 7

Comment

I am of the view that Patent No. 2.807.330 issued-to

R. ‘D. Rivers on September 24, 1957. and duly assigned

‘ to the pl pintitt: is valid and infringed by the defendant's

bie? 5

. [155] arose as to Claim 2, which reads:

« Dectsion. o

device. My only misgiving as to the validity of the Patent

. ‘ %

“2.. In a method of filtering from aif stream

solids: borne thereby, the steps cogSfsting of pro-

gressively remeving -and-expanding: trot core ©,

_ pressed supply web thereof and expansible;compres

» sible filter medium, moving the medium into and

throtigh said air stream.and thereafter progressively

recompressing the thus exposed medium, carrying -

the solids retained in it, into a disposable package.”

And it. concerned the question whether the Claim was

sufficiently distinct as required by Section 111 of Title, 35

UL SoC. AL A study of the matter, in the light of “ the

voluminous record made in this ease convinces me that the -

particular Claim read with the details in the specitications

has the certainty required by law. This being so _it tollpws

that the other Claims have similar certainty.

In my view, Riv ers taught the art something which is

not found in the prior art and, especially, in the Patent to.

Chiistotfersom, Not 1,982,030-jissued December 4, 1934.

Which the detendant’s expert chuims*to contain more of the

features of the patented device than anv other. The. fact ts

that the detendant did not copy Christofferson, which was

betore shy Patent Examiner, or_any of the additional ones

retetred to at the trial. They claim to have embodied -a

device described bythe plaintiff in one of its bulletins more

than one vear betore the date ot the appheation (15

U.S. CAL S$ 102(a)3. Lam convinced that the derendan:

copied the device described in the patent. And if the com

mercial device manufactured by the plaintiff deviated from

that described in the Patent, the plaintiff. was entitled to.

avail itself Of the doctrine of equivalents because the de

3a

Decision

*.

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vice described’ was only one of the modes [156] “con-

templated by the inventor” for “carrying out his invention”

(35 U: S.C. A. §412).. - * we eee

Hence the ¢ tuling, above made. 7 sa

eee. ated. this, 2nd day ot June, 1959

‘s/f LEoN R. YANKWICH.

Judge. [157]

‘| Endorsed] Filed June 2, 1959

tr.

; In THE Pe "Eo sane

UNIT ED STATES DISTRIGT COURT

SOUTHERN DistRIcT oF C ALIFORNIA

CENTRAL DIVISION

- \MERICAN AIR FILieR COMPANY, INC.,

i ee Plaintiff,

: “us. : Civil Action ;

Pee es = No. .858-38¥- -.

". FARR COMPANY, anger

Defendant. J. '

Findings of Fact. Conclusie . of Law and Judgment

Pursuant to Rule 52: of the Rules of Civil Procedure,

8 cause having cme on for trial before this Court on -

- 13. 1089 before the Honorable Leon. R.. Yankwich,

District Judge, and Plainti® and Detendant having pre-

sented their evidence and having orally argued in support

of their respective contentions, .and this Court having en-

tered its Decision herein dated June 2,-1939, and having

directed counsel for Plaintiff to prepare FF indings of Fact,

*¢ “onclusions of Law, and Judgment pursuant to the -pro-

visions of Local Rule 7, the same are hereby adopted by

the Court as its Findings of Fact. Conclusions of Law.

and Judgment: . [169]

FINDINGS OF FACT

@

- |. - Plaintiff corporation is, and has been for many years,

a manufacturer and seller of various air filters, dust col-

Jectors, aud of air filte ring and dust-collecting systems. |

&

Sa

. Findings of, Fact, Conclusions of Law and Judgment

2. Defendant corporation is, and has been for some

years, a manufacturer and a seller of various air filters and:

air Ghering systems.

4. ‘The United States Patent in suit, No. 2,807 330,

was issued to Plaintiff on September 24, 1957 as the assignee ©

of the patentee, Richard 1). Rivers; since that date Plaintiff .

has been and still is the owner of said patent.

4. “Plaintiff has placed the required statutory marking

on air filtering apparatus mé inufactured and-sold by it under

said United States Patent No. 2,807 330 since the date si

- issuance thereof..

. :

5. Mr. Richard Rivers, a young physicistiot very limited

experience in the field of air filtration, conceived the patented

inventions in January, 1953 while observing, as an onlooker,

certain tests being performed by others in Plaintiff” s‘ré-

search laboratory and with which tes ts he had no congection

or responsibility. [170].

6. After Rivers demonstrated that the patented mven-

tions could be practically attained, the design of commercial 7

units embodying the same was undertaken by Plaintiff's

>

——— Department.. ©... a ie

7. The patented inventions were thereafter embodied

in commercial air filters manufactured and sold by Plaintiff.

These filters were-then and, for the most part, are now

’

identified to the trade by, Plaintiff as “Roll-O-Matic” filters.

The initial sales to the trade of the Roll-O-Matic filter,

known as the Model A, commenced in early 1954. The igitial

sales of & redesigned Roll-O-Matic filter, known as Model

Findings of Fact, Conclusions of Law and Judgment ;

_B, to the trade ciommanait’ in December of 1956. Both-the

Model A and Model B Roll-Q-Matic filters are constructed

and operate in acéordance with the. — of the om

_ in suit and come within the scope thereof.

°8. Defendant saw Plaintiff’ s “Roll-O-Matic” filter

literature, and the methods described therein at least aS early

as the middle of 1956 and thereafter took’ steps to build and .

market 2 a virtual copy thereof.

_ 9. Defendant’s infringement of the patent in suit was

caused’by the popularity of plaintiff's patented filters with |

the trade and by the demands of the Defendant’s sales re-

presentatives for such a product [171].

10. Defendant first sold its infringing Shere in anni

1957.

brought immediaté success to Defendant and by November, »

Defendant’s copying of Plaintiff’ s filter ua snethords?

1958 wa about 250 units.

12. a of air, or other gas, to remove solid

particulate matter borne thereby, is an old and crowded art.

Fa

13. /Mir borne solid particulate.matter is broa ly classi-.

fied as “atmospheric dust” and “process dust”. “Process

- dust” refers to all particulate matter generated by or asso-

ciated, with some industrial process.” It is usually homo-

geneous in character, frequently covers a rather narrow |.

range of particle sizes.and usually occurs in high concen-

trations. The collection of lint in textile mills and paper

dust and ink mist in newspaper press rooms’ are two ex-

‘ a ea

Findings of Fact, Conclusions , of Law and Judgment

amples of ‘process dusts. “Atmospheric dust” refers to a

complex mixture of particulate matter commonly found in

the atmosphere for the particular area or location in ques- .

tion. It generally ‘covers a wide range of particle sizes,

occurs in relatively low concentrations and is quite hetero-

geneous in nature. Its constituents vary with the geography

of the location, the season of the year, the wind direction

- and other general factors. A sample of atmospheric dust

at any one_point will generally contain particles of prac-

tically-ev ery matérial common to the locality together with

other wind borne particulate matter-originating in distant

places. Typical constituents may include [172] minute par-

ticles of clay, silica, soot and carbon, decayed animal and

vegetable matter, organic plant fibers,. lint, pollen, mold

spores, bacteria.and other microorganisms. .Atmospheric _

dust particles will range frona submicron sizes, such as

smokes, up to particles at the threshold of visibility, about

50 microns. There are 25,400 microns to the inch.

i: The wrctines encountered in remov ing atmos-_

pheric dusts froni air are different from those encountered

in the renroval' of process dusts. The removal of atmos- —

pheric dust from the air is a specialized art and the de-

vices usec to effect the removal of such atmospheric dust

are known to those skilled in,this art as ‘ventilating air

wusidht

15. ‘The heart of a ventilating air filter is the ‘filter

- medium. The filter mediumy%s 4 structure or thing de-

signed to allow the air to pass ‘but to hold and retain such

solid particulate matter as it is desired :to remove from

the air stream. To effect’ the desired filtering action in a

ventilating air filter, the air is positively driven through the.

.

.

Findings of Fact, Conclusions of Law and Judgment

filter sais and the dirt particles borne in: the air are

caused to ‘contact the surfaces of the filter medium and to

be retained thereby. V ‘entilating air filters for the emoval ;

of atmospheric dust have been broadly classified by the art -

in accordance with their operating characteristics and prin-

“ciple of, operation as . “viscous impingement type” filters,

“dry type”’ filters, and “electrostatic type” filters. The choice

of a particular type of ventilating air filter for effecting the

removal of atmospheric dust depends upon a number. of -

factors which include the desired degree of dust removal

and portent ¥ actical and ecotfomic considerations [173].

*,

_- 16, The classical differetices Renee expressed by the .

separation of ventilating air filters into ° ‘viscous impinge-_

ment type,” “dry type” or “electrostatic type” by the art

areas follows: . , oe ee

“Viscous Impingement type” air filters generally

use the higher range of conventional air velocities

through the media—these being in the order of 300 to

500 feet per minute... They have a moderate order of

effectiveness in the remov al of the dust-and a high order

of dust holding capacity per unit of media .area, all of

which is quite satisfactory for many purposes. ‘The

media employed in such filters is generally formed of °

elernents spaced relatively widely apart and in such, wise

as to give the media appreciable effective depth. Such |

configurations offer a. ‘relatively low resistance to air

flow through the media and. provide a high air handling

capacity. The surfaces of the media clements are gen-

erally liberally coated: or treated with’ some viscous

material (often referred to as “oil” ) which serves to

positively retain and’ hold dust particles which im-

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Findings of an Coren of Law and Judgment

, : : . ‘ O sd

pinge on the toated or treated surface (i.e., in the man-

ner of “fly paper”).

“Dry type” air filters generally use, and are limited

to, the lower range of aif velocities—these | being in the

- order of 10 to 100 feet per minute. They possess\a rela-

tively high order of effectivenesg%in the remiov al of dust

and. a generally low’ dust holding capacity per uni

media‘area. The media employed in such filters is i.

erally fommed of small elements spaced closely together

to provide a dense mat-like structure with tortuous air

paths therethrough and, generally, the elements are

arranged in dense sheets of moderate ‘or small depth.

These configurations lend an inherent high resistance to

air flow [174] through the media and so limit fir han;

dling capacity. The surfaces of ‘the clemens# forming

the media are. generally not treated withe a “viscous or

oily substance, although 1 in Some-inst: ayes small ani unts* ,

of oil are employed to enhance performance.

“Electrostatic type” ventilating ar filters, which:

were. introduced .absut, 1937, utilize an electrostatic

force, rather than the drivi ing action Of the air, to eftect

impingement of the dust particle onsthe filter’ niedium-

Filters which-employ media whic Seve been liberally

coated or treated with a viscous or oily subst: ince are often

loosely called “viscous impingement filters’. Those w hich »

do not utilize filter media which has been so ¢oated or

treated are often loosely calléd “dry” filters. In addition,

the'term “dry” has been loosely used in. other connotations,

such as denoting an automatic viscous impingement type

filter characterized by the absence of ‘a bath or tank of oil.

ia.

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10a ae et .

| Findings of Fact, Conclusions of Law and Judgment

17. Ventilating air filers ¢ both the “viscous im-

pingement type” and the “dry type" are further sub-classi-

fied by the art‘into “unit” or “automatic” air filters and

-each of these eS . are further sub-divided into

I

“permanent” PWpes. and “disposable” types in accordance

with whether the particular media employed was recondi-

tionable by cleaning or whether it was thrown away and

replaced by. fresh unused media.

.

. ?

18. In.the past 30 to 40 years many substances and

structures have been proposed as filter media, but the prac-

tical art has generally used ‘the following’ types | ot media :

{175}

.—metal-membered media built up of metal plates.

screens, wires or sheets

—filamentous ‘media - such as os hair, metallic

wool, giass-fibers and, sometimes, vegetable fibers in

kinked or shredded form : .

——— woven cloth or fabric telts and the like.

~

19. Regardless of whether an air filtgr is, or was,

characterized as a “viscous impingement type” “or “dry

type” filter, air filters always pre.ent the problem of ‘clean-

liness in.the sense that as the atmospheric, dust accumulates

on the filter medium during the filtering of the air there

comes a time when the resistance to the flow of air, caused

by this dirtying of the. filter medium, increases beyond

~ practical limits and, therefore, it becomes desirable to clean

or renew the filter medium. This cleaning or maintenance

problera, which is as old as the art of air filtering, it involves

_———"

maintenance, the possibility of iniproper maintenance or —

ot

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A Findings of Fact, Conclusions of~ Law and Judgment

untimély maintenance ‘and, further, usually necessitates the

shutting down: of the air filter during: the cleaning or re-

newal process. ae

20. Prior to about the middle 1920's the viscous im-

pingement type and dry type filters commercially used in

the filtering of atmospheric dust from air were largely of -

the “fixed”, “panel”, “cell”, or “unit” type (hereinafter

called “unit” type), these terms all denoting the fact that

cleaning ‘or renewing of the filter medium was tot auto- -

matic but was accomplished by the shutting down of the

filtering process at intervals to effect manual cleaning or

replacement of the dirty filter medium. [176}

2B | ; : ° . . 1

>). In or about 1926.there first commercially appeared

in this country the so-called “automatic” air’ filters. These

were machines so designed as to automatically ‘clean, renew

or replace the filter medium, the objective being to decrease

the day by day maintenance and attention, and to prevent,

to a considerable extent, the necessity of shutting déwn the

’ filtering process.

22. The automatic “dry type” of ventilating air‘ filter

is exemplified by the, Mickle, .D: Ninger, Wolthuis, Birkholz

an Christofferson patents, which were cited during the

Patent Office prosecution of the patent.in suit. These patents

do.not disclose the patented inventions or provide‘any teach-

ing that might be considered to render. the patented: inven-

‘tions obvious or apparent to those skilled in the art. “These

automatic “dry type” filters proved commercially unsuccess-

ful as ventilating air filters for the removal of atmospheric

dust, due to inherent air flow limitations and consequent

limited air handling capacity where the media was disposed

\.

12a

Findings of Fact, Conclusions of Law and Judgment

_in.a straight line across the air stream, and the practical

difficulties of effecting the presentation of extended areas

of filter media: surface to the air stream in the air filtering

zone by zig-2agging or pleating thereof.

23. The only true “dry type” automatic machines oper-

ating today are used for the collection of process dust. The

conventional type usually employs -a*bag or ‘cylinder of a

dense felted or fabric media’ and is cleaned by beating or

blowing the accumulated process dust off the media surface .

from time to time. Another atitomatic machine which has

‘been loosely and inappropriately termed a “dry type filter’

and which is in successful [177] operation today .in the.

collecting of certain large sized process dusts in limited

applications, such as textile mill lint -and-pfess room ink

mist, employs ‘an extremely thin, flimsy disposable paper

filter media of a hybrid character that is. because of its

porosity and-thinness, devoid of praggic: al utility in the filter-

ing of atmospheric dust in the general ventilating fields

— Such a lint colléctor has, since 1950, been ‘sold by plaintiff

under the name “Auto Air-mat”. | |

24. Plaintiff's “Auto Air-mat” unit, apart from being

devoid of practical utility in the rernoval of atmospheric

‘dust from air, did not, and does not, incorporate the inven-

tions of the patent in suit nor did it provide any:teaching

that might be considered to render the patented inventions

obvi ious or apparent to those skilled*in ‘the art.

25. The aencanatic ventilating air filters of the viscous

impingement type ot the prior art proved to be commer-

cially successful as ventilating air filters;.from a time

starting in or about 1926 and extending to date, there

13a

: Findings of Fact, Conclusions of Law and “Judgment .

have.been sold, and. commercially used, automatic. viscous

© - impingement type air filters which operate on the follow-.

ing principles: the filter medium is made of metal-mem-

bers such as plates, wire screens, sheets or the like; a tank

or bath of viscous or oily liquid is associated with. the: filter

and provides a reservoir from which the desired viscous

* material may be applied to the surfaces, of the metal-mem-

. bered filter medium; and the * ‘automatic” feature is pro--

vided either by means for moving the metal-membered¢

filter medium on an endless track into and. through the —

Oil’ bath or ta..':, thereby to simultaneously remove at

[178] least a portion of the dirtied oil from the surfaces

of the medium and to renew those surfaces with a coating

of fresher oil, or, the metal- membered filter medium is .

fixed and from time to time the dirtied surfaces. thereof

are cleaned and renewed with fresh oil by flushing er other-

wise Causing oil to’ move across the fixed surfaces of the.

medium. Filters constructed acc irding to these’ principles

-have been utilized for over thirty years in the automatic

filtering of atmospheric dust from air. Such devices. have

been, and presently are, m anufactured and sold by many

of the manufacturers of air filtering equipment, including

_——Moth the plaintiff and the defendant.

S 26. The disadvantages of the use of such automatic

- viscous impingeme nt type filters utilizing metal- membered

filter media and, in conjunction therewith, a bath or tank

of oil, were-arfd had been, well known to the art. Such dis-

advantages arose in large part from the presence of the

oil bath and of liquid oil and included: periodic removal of

a messy oil-dirt sludge from the filtering operation; main-

. tenance and inspection to insure that the oil was being prop- °

erly applied to the filter media ; difficulties and expense caused

l4a .

; 5 She

Findings, of Fact, Conclusions of Law and Judgment

by the maintaining of, or failure to maintain, the many

mechanical moving parts: requirements often made by, the -

Fire Underwriters that: fire preveption systems be inst ralled

because of the presence of large volumes of oil :, periodic

inspection is required to insure that oil levels. are main-

tained in the-oil bath or tank, that water or other liquid

‘ impurities are not present in the oif tank in harmful amounts

and thatthe type of oil desirable for best operation ts. used |

. for replacement; problems, caused. by the probability that

the air, in passing through the filter medium, would remove

from [179] the surfaces of that medium excess oil which’

would be entrained or carried by the air to contaminate

some product er area contacted by the filtered air; and

periodic manual cleaning of the filter media made necessary, ,

er desirable, by physical entanglement of dust or dirt in.

the metallic media‘in such wise that it is not removed by

the normal application of fresk oil to the surfaces of the

media, Additional drawbacks of such filters inelded ex-

cessive Weight arising from their metallic construction and

necessary appurtenances such as tanks arfd pumps; and the

fact. that such filters could not readily be placed in other

than’ a’ vertical position because of . the necessity of main-

taining the oil levels and oil flow.

27. The principle. upon which the automatic viscous im- *

pingement.type filters used by the art prior to Rivers’ inven-

‘tion operated had been, known for over 25 years, Despite

the known disadv antages of such filters, these various auto-

matic ‘viscous impingement type filters developed and

offered iv the trade during this period differed only in de-

sign detail and involved no new principles of construction

or operation. In that period of over 25 years the develop-

nient of .automatic filters had reached a plateau, in the

15a

Findings of Fact, Conclusions of Law and Judgment

sense that-the workers in the art worked to improve the con- |

structional details of units operating on old principles and

feveloped no new approach to the subject. a

28. The development, in about 1926, and, thereafter,

the-use of these successful automatic viscous impingement

type ventilating air filters of the metal-membered medium—

oil tank variety did not eliminate.the use of the “unit” filters,

whether of the “viscous impi4gement type” or of the “dry

type”. Each of these [180] various types of ventilating air

filters has, in the years since 1926, sought its own level, that

level being primarily determined by the needs and desires

of the user. However, because of their automatic feattires,

the automatic viscous impingement type filters came to be-

used by many who had problems concerning the removal |

of the larger particles of dirt f from relatively large quantities

« of air.

2Y. in the period prior to 1954" the “unit” type of air

filter used as filter medium ail of the types of media pre-

viously mentioned above in Finding-No. 18.

30. Throughout a period of at least twenty years prior

_ to: Rivers’ conception, disposable unit filters of the viscous

impingement type used pads of filamen ntous filter media of

appreciable effective depth havi ing high air handling capacity

and large dust holding capacity. Thése thick ‘pads were in-°

expensive, were readily fabricated and presented a large

effective surface area which could be liberally coated or

otherwise treated with a viscous or oily substance and

1The date of commercial introduction of the invention of the patent

in suit

16a : —_ ;

.

ry §

Findings of Fact, Conclusions of Law and Judgment

included pads formed of animal hair, certain vegetable fibers,

metallic wools and glass wools. =

\ * ° .

3d. Among these relatively thick pads of filamentous

materials which had long been used as filter media in. viscous

[181] impingement type unit filters. before 1954 were a

group which had -expansihle- -compressible properties in, the .-

sense that they were resilient and would, when compressed

for an interval, return, upon release Gf compression, to their

approximate original thickness. The expansible-compres-

sible properties: of such tilter media had long been recognized.

As early as 1925) it had been recognized that the ex pansible-

compreasible properties of such. materials could he usetul

in “unit” types of filters where it was desirable to compress

the media during as A later expand it tor cle: ining

: 32. These relatively thick pads of aes mpres-

sible filter media used in the “unit” type filters were available

to the industry from a very early date. The expansible-

compressible properties ot these m: iterials were well known °

and were also utilized in tields other tham air titering. Thick

pads or webs of animal hair had widespread use as upholstery

‘material, as well as for air filters. Thick pads or webs of

glass fibers had widespread use as house and sound insulation

and as resilient pads, as well as for air filters. Metallic wools’

vere commonplace for many uses.-as Well as tor air filters.

ot]

33. In the spied prior to 1954 the glass nberg “filter

media became the most popular of the. disposable or “throw

away” filamentous media because of its relative cheapness;

because glass is rel atively inert to chemical influence, is fire-

proof and is light in weight [182]

’

. d Rin o

Findings of Fact, « onclusions of Law and Jud®ment

34. The expansible-cot mpressible Alter media-and the |

“specified properties thercod as descrilied and identified in

the specification of the patent in suit were, and are, clearly

descriptive of a well known and recognized class of fitter

‘materials having expansible -compressible properties, and.

are such as ‘to enable those skilied in the art to readily

identity and use the same. The specilic example set forth

in the specification clearly describes an example of the tila:

mentous glass material, which, by 1954, had largely com-

mercially displaced other suitable materials for the reasons

set forth in Finding No. 33.0 Any person skilled in the art

_ would ‘have had no difiiculty in identifying, obtaining and

using, in 1054 or toda iv, the filter media described -by way

of specific c example. 11} ithe specification ef the patent in suit

‘The well known and recognized class of materials

ee to in Findings 31: 32 and 34 is adequately and

distinctly expressed in the Claims by the terms “expansible-

compressible filter medi. “expansi ihle-compre “ssthle wel b”

and ° ‘permeable expansible- soni @essible integral web which

will return to an exparide: i state whe nm released trom a

compronees state”

©

do. ntil Mr. wives invention was ¢ ‘commercially of

tered to the trade in 1054 by plaintiff, the expans! ble- com-

pressible filter media had only been used im the “unit type

ot air filter. :

37. Mr. Rivers did not, by his invention, develop any |

new filter medium but, instead, merely used the well known’

-expansible-compressible [183] filter media which had long ~

previously been available and which, fer many years, had

been used in the non-atitomatic “unit” type ot air filters.

“e

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Findimgs of Fact, Conclusions of Law and Judgment

38. In its preferred torm the method of the Rivers’

patent inciudes providing a supply of ‘the expansible-com-

pressible media im compressed roll form, progressively ex- .

panding the media off this roll and.across the air stream and

then progressively rewinding and compressing the. media,

and its contained solids, into another roll which eventually

may be convemently thrown away. This is the torm in_

which plaintiti commercially offered the Rivers’ invention

to the public in 1954 and this 1s the form in which ‘defendant.

appropriated the invention.

39. There was nothing new in the concept ot placing

a web of filter media in roll form and feeding this web

from its supply roll across. the air stream to be filtered, and

thereadter, rerolling the dirt’ web into al roll which could .

be thrown away: “Such devices had been suggested many

times over the thirty vear period preceding Mr. Rivers’

invention ?

i

_*

.

40. Mr. Rivers was the tirst-to propose the novel mode

of manipulation of the previously well known expansible

campressible filter media, as set forth in the method claims

of the patent in sunt. to produce a new class of automatic ,

filters and- to, thereby, make possible the commercial use of

‘the cheap filament. mus expansible-compressible filter media

in automatic air filtering | 1s4] /

/

/

/

/. *

41. ° There was nothing new in Winding webs on man-

‘drels tor the purpose of convenience in handling and stor-

ing Sot e 2: _ j

/

|

42. Mr. Rivers was the first to propose that a web ot

expansible-compressible filter media be formed into a com-

. H

.

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- Findings of Fact, Conclusions of Law and Judgment

‘auend roll ona waited and be used asa pre-for med filter

media cartridge or package as 2 direct supply of media for

automatic air. filtering operations.

.

re

43. From all the tacts it appears that for. many years

the experienced workers in the air fittering art had-avail-

able to them all of the tools,-and all of the basic knowledge

/used by Mr. Rivers in 1953 in arriving at and carrying out

/ the concepts of his invention. The .commerical ‘rew cards

following from Mr. Rivers’ concepts were extensive. In

the light of these facts the simplicity ‘of Rivers’ concept

a / points to the existence of technological block in the minds

of, the experienced workers of the art w hich was not re-

moved until he anata out the way. a

S

; 44. The inv entions of the patent in suit’ have created

a new class of automatic ventilating. air filters.

"45 ‘Fhe inventions of the patent in suit. have made

available for the first time a conmntercialiy. practical auto-

matic ventilating air filter of .the disposable media type -

[185].

46. As a Geak of Rivers’ invention, the, commercial

art ot filtering his available. for ‘ie first time, a novel,

highly practical and useful n ide ot operation tor auto

- . matically: utilizing the cheap, -efficient filamentous filter -

media of the: expansible- compressible type which had long /

- proved tobe so useful in the non-autematic types of air”

- filters. EP or or ’ ; :

47. The advantages flowing from the use of Mr. «

Rivers’ invention are the following.:-

20a \

; \ : , %

. . ~ . . - ; ry

‘Findings of Fact, Conclusions of Law and Judginent

(a) For the first time, the useful, cheap and well

proven expansible- compressible filamentous media for.

merly used in non-automatic filters has become conv veni-

* ently available to automatic filtering.

(b) The . filtering art has been provided with an

alternative to the long employed automatic viscous im-

yn

pingement type filters which used metal-membered .

media and oil tanks and is, thus, in a position to avoid

the disadvantages of the older type automatic filters in

such instances. w here such disadvantages are unw anted

or not tolerable. ©

e »

(c) An automatic viscous impingement ‘type filter

and filtering method. have been prov ided which, if de-

sired, will operate for periods of many months and up

to.as long as a year without attention.

(d) The air filtering art is for the first time’ pos-

sessed- of a method by which the inconvenience, and.

uncertainties attendant upon maintenance and _ inter-

rupted performance is reduced to a minimum.

ey Rivers’ inventions as described and claimed+«tn:

the pa in suit include a new mode of operation and the

clothing of apparatus elements w ith. new Tunctions.

49. The siueihien fas provided an ‘entirely Frew mode

" of manipulative operation and thereby his effected an old:

result i.e. the filtering of air, in a novel way which elim-

ifates procedural disadvantagés previously suffered in

automatic air cleaning. /The patentee’s invention brings np

improved result inscfar as the cleaning of the air is con-

’ cerned because.the old filter media which is subjected to the

fe

2la

; : eos :

Findings of ‘Fact, Conclusions of Law and Sais

patentee’ s new mode of manipulative operation does not,

thereby, become enhanced in its air cleaning properties.

50. The customers to w hom filters are sald are,. for

the most part, Of ‘a type well qualified to independently

judge the usefulness of the. product.

51. The response of the trade to the patented inven-

tions was spontaneous, immediate and substantial. ‘There

was immediate widespread acceptance and demand for the

inv ention .

52. Automatic viscous impingenient type air filters

embodying Mr. -River’s’ invention were an immediate .suc-

cess. In the first two vears of their introduction plaintiff

sold about $1,800,000 worth of such filters, In the period

up to January, 1959, plaintiff ‘sold more than 12,000 sec-

tions for a total gross sales | 187 | value-of over $8,000,000.

the prior, art.

33. \The commercial success of plaintiff in marketing

air filters embodying Mf. Riv ers’ jnvention took place with-

out the help, of more adyertising than plaintiff normally

expended on any of its many air filter products.

\

54. The patentee’s inv ention. has been successtul despite

the fact that it does* not necessarily effect its automatic

air cleaning result \at an operating cost lower .than that

previously “encountered in obtaining, an equal result of air

cleaning by the previously used automatic machines. Often

the use of the patentee’s invention increases the oper ating

/Cost. ;

53. The patented inv entions are displacing the auto-

matic viscous imping gement type. ‘ventilating air filters of

—

oe ee

22a

| Findings of Fact, Conclusions of Law and Judgment

56. The: prior art, and other material, upon “which

defendant relies -for its defense of invalidity, is, in all

material respects, the same as, or is not substantially dif-

" ferent than, the prior art known by, and the admissions °

of fact considered by, the United States Patent Office prior

to the grant of the patent in suit. [188],

57. The arguments ‘advanced by defendant contra the

validity of the patent in suit, are,in all material -respects.

the same as,‘or similar to, the matters considered by the

U nited States Patent Office prior to jon @ront of tee patent

in ‘suit. : z

58. The Patent Offce Examiner who handled the

appli¢ation for the patent in suit also concurrently handled

_ an application for paterit on- plaintiff's ““Auto-Airmat” unit

and affidavits filed in the latter application élearly showed

that “Aufo-Airmat” units were made and sold long prior.

to one year before the filing of the application for the

pater:: in suit- , *.

39. The Patent Office was. in no way misled by the

ap »~plicant or his attorneys during the prosecution of the

application for the patent in suit. In fact the following

admissions made by the applicant before the Patent Office

‘Examiner are as good, or better, than any of thé prior art

upon which the defendant has relied :

“The gas filtering art is not a new one; ‘it is, in.

fact. a crowded art in which much effort Kas .been’

expended over a long period of time in devising ap-

paratus by which large volumes of gas could be .

cleaned by devices requiring a minimum of main-

tenance ¢ost and attention. Expansible-compressible

ye Racy

- 23a

Findings of Fact, Conclusions of Law and Judgment

filter media have long. been !.nown in n this art. The

principle of passing a filter medium from.one point

“to another point and, interme liate. thereof, through »

a filtering area is certainly an old concept. Yet °

appears that only the applicant has thought to use

‘a method or ‘apparatus in which. the expansible-

compressible. material is first compressed into a pack-

aged supply, is thereafter released from that supply,

expanded, passed through the filtering area and

thereafter recompressed or otherwise conditioned to

a readily disposable state. In so doing, applicant has’.

removed expansible-compressible filter media from.

its restricted use as a fixed filtér-into a sphere where °

it can be conveniently, automatically and progres-

sively’ presented to a filtering job thus fully and

effectively utilizing the highly desirabie properties

of such media. " igi

. 60. None of the prior art upon which defendant relies

teaches or discloses the inventions of the patent-in suit,

nor does it, taken 2lone or in combination, provide any

teaching or disclosure that can be considered to render the °°

inventions’of the patent in suit obvious or apparent to those

skilled in the art. :

61. The defendant did not copy the prior art but rather

copied the device described and claimed in the patent in suit

62. Defendant makes and sells a preformed package

ot filter medium for use in its “Roll Kleen” filters... This

. . preformed package consists of a web of about 79 fectaf |

permeable glass fiber filter. media conv olutely wound upon

a mandrel member sized and arranged for direct insertion

‘into the “Roll Kleen” filter. The media-has an expanded —

thickness of 2 to 3 inches and is wound in compressed -con

24a

JP .

Findings of Faet,.Cenclusions of Law and Judgment

> . w ay .

dition upon the mandrel into a roll of about 13 inches in

diameter with the convolutely wound layers thereof being

about 15, 100 of an inch in thickness. The media is of such

character as to return to its expanded state when released

from its. compressed state. This preformed ‘package cor-

résponds both in form and substance with Claim.1 of the —

— in suit and said claim is infringed thereby.

6% ‘An the operation of the defendant's +Roll Kleen”

filter an ex pansible- compressible filter medium (of the

character set forth in ‘Finding No. 62) is progressively

remuoved fromra compressed supply web thereof, moved inte

and through an air stream in expanded condition and, after.

exposure in the air stream to accumulate air [190]. borne

contaminants, is thereafter progressively recompressed into

a convolutely: wound roll to forma disposebie package there-

of. This operation corresponds both valiancs and substance

with the subject matter of method Claims 2 and 3 of the

patent in suit ard each of said ckuims ts infringed thereby.

64. Defendant's “Roll “Kleen” filter cinatois, We a filter

. medium, an elongate permeable expansible-compressibie in-

tegral web that will return to an expanded state when

released from a compressed state (ot the specific character

set forth in Finding No. 62 ). The “Roll Kleen” filter in-

cludes a trdme defining an, air filtering area and a passage

for air through said area,a housing disposed at cae side

Vot-the’air-filtering area to receivé and locate a supply af

precompressed filter mediums -and defining a’ supply zone,

a-second housing located to receive’the filter-medium at a

point, bevond said air iltering area and defining a discharge |

zone with said, two hous! nes defining. with said air filtering

area @<path of filter medigyn adva ance, Phe “Rolf Kleen’

°

Findings of Fact, Conclusions of Law and Judgment _

filter includes: a rewind mandrel and a motor’ drive and,

associated controls therefor that serves to progressively

‘displace the precompressed medium in the supply zone from

its compressed state, through said air filtering area and

into the discharge zone. Also included is a backing strip

of ‘Leno-weave cloth on the media which cooper rates with

the driven rewind mandrel to effect a*compression of the

expanded media on said.mandrel as the sanfe is convolutely’

rewound thereon and to thereby progressively condition the

media into. a disposable state. This structure and operation

corresponds’ both in form and substance with the subject

matter of apparatus Claims 4 and 3 of the patent in suit

and each of said claims is infringed thereby [191]. a

65. The structure and 6peration of defendant's Type

H Roll Kleen is the same as thit set forth’ in Findings .

Nos. 62-64 for the standard Roll Kleen filter except that the

media is moved in a horizéntal rather than a vertical path.

The structure and operation of the Type H Roll Neen cor--

responds both in form and substance with the subject matter

of Claims 1-5 of the — in suit in-the same pi articulars

as set forth in the above mentioned findings and’ each of

‘said claims is infringed thereby | 192].

CONCLUSIONS OF LAW

A. United States Letters Patent No. 2,807,330 in suit

was duly and legally issued to Plaintiff, American Air Filter

Company of Louisville, Kentucky; said Plaintiff is the

owner of the entire right, title, and interest in and to said

Letters Patent, together with any and-all rights of action,

claims or demands arising out of or accruing from past

infringement thereof.

26a

Findings of tact, Conclusions of Law and Judgment

B. United States Letters Patent No. 2,807,330 com-

plies fully with all of the provisions of Title 35, United.

States’ Code, discloses and claims a patentable invention,

and is not anticipated by any prior art’ i ‘

C. United, States Letters Patent No. 2,807,330 is good

and valid in law as to all of the claims thereof; said patent

claims cover a new and meritorious invengion. :

. 2. :

I) United States Letters Pafent No. 2,807;330 consti-

e

construction of ite terms

KE. Detendant has intringed Clatms 1 through § of

“nited States Letters Patent No. 2.807.330 by the manu-

facture and sale,of its “Roll Kleen” fitters

KF. Detefdant has infringed Claim 1 of United States

Letters Patent No. 2,807,330 by its manutacture and’ sale

of initially installed medi. and replacement media for its

“Roll Kleen” filter i

43. Plaintiff is entitled to a rudgment for an injunction

and accounting with costs as praved for in fhe Complain

filed herein:

~

Findings: of - Fact, Conclusions of Law and Judgment

JUDGMENT

In accordance with the foregoing F indings owt Fact, and

Conclusions of Law, it is

Ordered, Adjudged, and Decreed

1. That U nited States Letters Ha tent No. 2,807;330

was duly and legally issued on September 24, 1957, and

is good and valid in law.

H.. That Plaintiff, American Air Filter Company,

Inc., is the ownér of said Letters Patent, together with-

all rights of action for infringement thereot.

Iii. That Defendant, Farr Company, has infringed

said Letters Patent-py the manufacture and sale of its

“Roll Kleen” filter and initially installed and replace meht

media therefor

IV. That. Plainutt have. judgment On its Complaint

for infringement of said Lette rs Patent, as prayed tor

[194]. .

.

V. That a writ ot permanent iInjunetion issue out of

and under the seal of this Court in usual form enjoining

Defendant and its officers, agents, servants, employees,

“and attorneys, and those persens in active concert oF

partic’pation with them from infringing said United

States Letters Patent No 2.807.330.

VI. That Plaintiff recover trom De fendint veneral

dam: wes adequate to compensate for said infringenter.t .

by-Defendant, together ith interest sand that this cause

be referred to Thec dore Hocke, Esqeas Special Master

Oras

‘

i ‘of Fact,.Conclusions of Law and Judgment

tor an accounting to Ascertain such ies and report.

the same to this C ‘oaart, said appointment te be effective

only atter interldcutory judgment has become final -

through determination on appeal or failure to appeal.

Vil. That Plaintiff recover*ftrom Defendant. and

have tx ‘cution ‘tor, its taxable costs in the amount of

$937 7.34 : ce

C%

ad

Dated this 22nd day of July, 1950.

, -s Leon R. YANKWICH.

United States District

Judge. [195]

\cknoivledgment oF Service Attac “hed | | 190]. y, ter

LE ndorsed |: Filed jnly 22. 1959. Entered July 23

19359

UNITED STATES COURT OF APPEALS

For THE Nivtir Circuit

Farr Companys a Corporation,

Appeliani,

Us . . pase

No. 16,608

AMERICAN Air FittEr ttoMPANY, INC», May 17, 1963:

. a ‘Corporation,

* al p pellee.

APPEAL FROM THE Unttep STATES District Court

FOR THE SOUTHERN District OF CALIFORNIA

CENTRAL Pitviston

Betore

STEPHENS, heavens and Kornsc H, Circuit Judges ‘

KoELscH, Circuit Judge:

This appeal involves United States Lettérs Patent No

2,807,330, issued to. plaintiff, American Air Filter Com

pany, assignee of Richard D. Rivers, the inventor

In this opinion the parties will be referred to by. their

designations in the District Court. Plaintiff brought this .

action for infringement against the [arr Company, secking

damages and an injunction. Defendant urged as: detenses

anticipation and lack of invention, as well as ov erclaim and

indefiniteness and uncertainty of the patent claims. Judg-

‘ment went for the plaintiff and defendant has appealed. We

conclude that the judgment must be reversed and the action

dismissed.

x

Opinion

The Rivers’ patent relates to a device for filtering atr.

It contains five claims; they detine a roll of filter webbing,

a method of manipulating the webbing in a roll-type filter.

and a filter. apparatus. Specifically, Claim One claims a

preformed supply roll consisting of a strip of “expansible-

compressible” webbing tightly w. und so as to be mipressed

to less than hal! its expanded thickness on a mandrel or

spog!. Claims Two and Three claim the method tor pro-

gressively removing and expanding trom the supply roll:

the “expansible-compressible” web, ‘moving it through an

air stream and, thereafter progressively recompressing and |

winding’ the used web onto a take-up spool to form a dis-

posable package ;.and Claims Four and Five claim.a means -

to condition and «manipulate, the webbing in the manner

specifed in Claims The and Three

The roll filter described in the Rivers’ patent is similar

‘in constructién and operation to the fam¢har ‘roll film

photographic camera, in which a length of unexposed film,

wound on a spool, is adv anced section by section over the*

camera's light chamber, exposed. and then wound onte a

take-up spool for removal... Such filters were not new in

he art; ineved it appears that they were the subject of

/patents long pricr to Rivers’ invention and tHat plaintiff

itself had manufactured and sold them. Peper,

‘Defendant argues that the phrase, “expansible*com-’

; oressible,” used ini the patent t6 characterize and. describe

_ the filter -veb is meaningless: but for the purposes of this —

appeal we assume that the ‘term ~dequately defies a rela

tively. thick, resilient. loosely structiifed, filamentous web

made’ of animal Lair, vegetable fiber, metallic and glass

wool’, and like materials. Such webs permit the passage

of air at: high velocity and. due to their bulk. present a

—_—

bigger | J er

/

Opiniou . .

large effective surface area to screen solids and other

foreign matter from the air stream; they are very efficient .

and for many years have been commonly used in unit fil.ers.

“The unit filter_is much less convenient than the roll filter;

the former makes no provision for a supply of filter ma-.

terial contained on a spool but-employs a single. section of

webbing. rigidly held in a frame or cell, which, must’ be

manually replaced at relatively frequent intervals. ¢

However, defendant vigorously argues that Rivers* in-

- vention: was anticipated, because “expansible-compressible”’

webbing had been previously preposed tor the roll_as well

as the unit filter. The record shows that the Christofferson

Patent No. 1,982,639 for a roll’ filter specifies webbing:

composed ot “very. tinely carded cotton fiber” which: is

“loosely felted” and “ot exceptionally low resistance to the >

passage of air therethrough while at the s same time having .

maximim efficiency in removing 1 purities. "And anether

roll filter patent, Dollinger No. 2,016,991, also desetibes

a material of “extremely fine fibers of paper, cotton, wool,

oashestos, etc, ligt: tly held together ta form a relatively thick

filtering medium in a very loose or porous condition.” Tn

addition, plaintiff's own roll filter marketed under the name

“Auto-ATIRMAT™ used a thin diaphanous paper which

may have been expansible-compressible."”* :

Bat the trial court found that.issue against the defend-

ant.. It further found that the prior art taught only less

‘efficient filter media in roll filters: those tightly structured .

* which. although effective. to ‘screen “smaller solids unduly

* Defendant > expert witness ‘testified wi thott “contradiction tht

actual tests showed that the mere winding on the sup ply spool gaused

Auto-AIRMAT paper to be compressed to less. than: one-half: its

expanded state, precisely: the degree of compression specitied ii the

_ Rivers patent .

a APE Opinion © . :

etd the flow. of air, and those loosely structured which

passed air at high velocity but were too thin to present an

adequate screening surface. We agcept-these factual find- :

ings without pausing to critically examine i.:to their validi ty.

It thus appears that, in defining a method of filtering

air by using webbing, concedediy old) in an apparatus

which-was likewise old. ‘Rivers did contribute something

to the art: he achieved in.one filter the cleaning efficiency

of the unit filter and the automatic feature of the roll filter.

(91 course, without some mechanical alteration, the .old

roll-type filter would not accommodate the substitute ma

terial. “Expansible-comp1vssible™” filter material is resilient

and automatically expands to normal ‘thickness when un-

wound from the supply spool, but te recompress the used

web into a disposable rolk of convenient size. it rust be

tightly wound ard the tension necessary to accomplish this

_latter operation causes the web to stretch and narrow or

“neck”. Necking in the itering zone causes the edge of

the web to retract from the guideways through which it

travels, permittfhg the passage of contaminated air. . To

prevent this the Rivers’ patent describes a power driven’

“hold-dow n” roller and plate located between. the take- -up

spool and ¢ne air filtering zone; together the roller and plate

grasp the moving: web iri somewhat ‘the same fashion as a

wasfing machine wringer and prevent'tie pull exerted by

the take-up roll from being \translated to the section of

web that is being “sed.” In addition, “expansible-compres-

sible” filter material is.of loose composition: and tends to be ;

displaced into a voneave. shape and to be blown apart by.

the force of ‘ae.rapidly moving air stream.. To provide -

ueeded support the Rivers’ patert describes an endless

porous conveyor belt positioned against thé upstream face

of the web. a , s o.

ee | ‘ =

°

= ns Seas ea es i Per eae ot sy ‘

Si ee aS a

"denied, 347 U.S. 989, 348 U, 855 (1954).

33a

Opinion

- a . °

‘There is a presumption of validity which arises from the

opinion of the patent office and is strengthened by. the con-

currence of the District Court. But, here the state of the

prior art and the nature of the Rivers’ contribution are tor

the most part undisptted, and in the areas where a ‘dispute

does ex 3t we have assumed the facts in plaintiff's favor. -

Whether Rivers’ contribution is of sufficient novelty to be

patentable is theretore’a question of law, based upon the

rule that a combination of old.elements is patentable 1 inven-

tion only if the elements take on some néw quality or func-

tion by being ‘brought into concert and -their combination

results in unusual-or surprising consequences. Grect 2

& Pac. Tea Co... Supermarket ie Corp., 340 U.

147: (1950); William T. Aleara lo Saf Co. v. poe

263 F. 2d 926 (9th Cir. 1959), cert. denied, 360 U. S. 910

(1959) ; ofearis Vv, Tinker- é Rasor, 220 F. 2d 49 (9th Cir.

1935), cert. denied; 360 U. S. 830 (1933); Photochart v.

Photo Patrol, luc., 189 F. 2d 625, 627-28 (9% Cir.). cert.

denied, 342 U.S. 867 (1951). The responsibiiity-tor the

determination ot that question is ours and w, cannot abdi-

cate to another court or agency, Awikset Locks, Inc. \V

UWillgren, 210 F. 2d 483, ap RX (Oth Cir. 1954), cert.

“The function of a sdtaiitt is to add to the sum of usetul

knowledge. © Patents cannot be sustained when, on the con.

trary, their effect is to subtract from.tormer resour ¢s tréely

available to skilled artisans. A patent tof a combination .

which only unites old elements with no change in their re-

epettiy e functions, such as is presented here, oby ously with.

draws what already is known into the field of its monopoly

and diminishes the resources available to skillful men.’

Great Atl. & Pac. Tea Co Vv pupermarnet 7. Corp.,

supra at 132- 53.

~~ FZ on

‘ Opinion

Surely the compressed supply roll of “expansibie-com- .

pressible’” webbing, which was the subject of Rivers’ first .

patent claim, does not satisfy-the strict requirement laid

down by the Supreme Court. There was nothing unusual

or surprising about such a roll, for, long before Rivers con-

ceived his invention this particular kind of webbing was not

only known and in general use for filtering air, but’ was»

_commonly wound in tight rolls to facilitate handlitg and

storage. The Rivers’ patent taught the winding of webbing :

on a spool in the usual way that elongate strips of any mates,

‘rial are woynd on spools and here it is clear that neither the

web nor the spool took on new. qualities or functions by

being so brought into concert.

Likewise Claims Two and Three, the method claims of

the patent, do not meet *the standards of invention. Essen-

tially the Rivers’ method consists of a series of steps in

- which an old filter material is manipulated ina new manner _

in an old filter apparatus to filter air. While the combination |

of operations was a good idea, we are unable to perceive

that any 0f the requisite unusual or surprising consequences

‘resulted. See Kalich v. Paterson Pac. Parchnient C 0.. 137

-F. 2d 649-(9th Cir: 1943). Indeed, the appellee expressly:

acknowledged and the court found that the invention

“brings no improved result insofar as the cleaning of the

air is concerned because the old filter media which is sub-

jected to the patentee’s new mode of manipulative operation

joes not thereby, become enhanced i in its air — prop-

‘erties,’

The means was no on than the Sethod. The : struc-

tural. weakness « f loosely compacte1 webbing and its tend-

ency to stretch under tension were well known facts. What

was required was the addit:on to existing means of elements

-

| Opinion

to counteract these characteristics. We are satisfied that —

if was obvious to-a skilled mechanic that such ordinary

devices as the hold-down roller and-the conveyor backing

would meet this problem. Their ‘adaptation to the roll”

filter did not’ require an exercise of the inventive faculty.

* Plaintiff emphasizes that the filtering of-air is an old’'and

crowdéd art; that although there was a long-fely want fora

filter embodying the advantages ‘of tne Rivers’ device, none

vot the skilled mechanics of the art. had done -more than .

improve constructional details of prior devices; and that

the patented filter ‘met. with prompt commercial success

and even partially displaced prior art devices. Plaintiff

argues that these facts all constitute clear indicia of inven-

_ tion. But, as one court has said with respect to commercial |

success, such factors are “at the most weak reeds for a

patentee to lean upon.” McCord Corp. v.. Beacon luto

Radiator Co., 193 F. 2d ‘985, 989 (Ist Ci: 1952). They

“may tip the scales i in favor of invention where the question

is close and. the court in. doubt, but where invention is

clearly lacking they wipe not make for patentability. <A/toena

: Publix Theatres, Inc. v. American Tri-Ergon Corp: 204

U.S. 477, 488 (1935); Param Publix Corp. v. Amer.

ican + Tri- Ergon Corp., 294 U. S. 404. 474. (1935. ; Photo.

chart v. Photo Patrol, inc., 18 F 2d 625 (9th Cir. 1951)

Our determination a. there has-been nO ‘invention, -

makes it unnecessary to pass on the other issues. The

judgment of the District Court is reversed .

| Endorsed ) Opinion Filed May 17. 1963.

Frank H. Schmid. Clerk

> |

.

-

_ publication in this or

‘s 103. Conditions for patentability ; non-obvious subject matter.

‘shall be pleaded: .

-condition for patentability . . .

\ : ae Tah ae ve

$ ‘ - bs . ¢ “2

| “© fies |

THE CONSTITUTIONAL PROVISION °

Art. 1, sec. 8. ‘The Congress shall have power . . , To promote the progress of science “and useful arts,

by securing for limited times to authors and inyentors thé exclusive right to their respective writings

and discoveriés. - . . . * ; ;

~. «EXCERPTS -FROM® TITLE 35, UNITED STATES CODE

«§ 101. Inventions ‘patentable, , are 3. i

€ $ a . . : # . : *,¢

Whoever ‘invents or discovers any new ‘agd useful process, machine,. manufacture, ot composition

of matter, or any new and yseful improvement thereof, may obtain a patent therefor, subject to the

conditions and requirements btihis title. © 2, ,

§ 102. Condittons for patentability; novelty and loss of right to patent. a

- A person shall be entitled to a patent unless—

- (a) the invention was known or used by others in this country, or patented or described in a printed

ratcign country, before’ the invention thereof by the applicant for patent, or

(b) the invention was patented or described in a printed publication in this or a foreign country or

in public use or gn sale in this country, more than one year prior to the date of the application for patent |

> . . = -#

in the United States, or

(¢) he has abandoned the invention, or = - Ba )

(d) the invention was first patented or caused to be patented by the applicant or his legal representa-

tives or assigns in a foreign country prior to the date of the application for patent in this country on ar

application filed more than twelve months before the filing of the application in the United. States, or

(e) the invention was described in a patent granted on an application for pateht by another filed in

the United States before the invention thereof by the applicant for patent, of ape ae xs

(f) he did not himself invent the subject matter: sought to be patented, or __

(g) sbefore the applicant’s invention thereof the invention was made in this coutttry by another who

had-not abandoned, suppressed, or concealed it. In detérimining priority of invention there shall’ be con-

sidered not orily the tespective dates of conception and -reduction to practice of the invegtidn, but also the

reasonable diligence of one who-was first to conceive and last to réduce to p.actice, from a/time prior to

conception, by the other. : ts ;

A patent may not be obtained though the invention is’ not’ identically disclosed or described as set |

forth in section 102 of this title, if the differences -between the subject matter sought to be patented and

the prior art are such that the subject matter as a whole would have been dbvious at the time the invention

was made.to a person having ordinary skill in the art to which said subject matter pertains. Patentability

shall not Eieratived by the u.anner in which the invention was made. “i

g 282. Presumption of validity; defenses. oa

A patent shall be presumed valid.’ The burden of establishing invalidity of a patent shall rest on a:

party asserting it. A . ’ as fe aaa

The! following shall be defenses‘in any action involving the validity or infringement ef a patent and

(2) ‘Invalidity of the patent or any claim, in suit on any ground specified in part II of this title as a

° ‘ ea

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7: ‘e

3 .

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