# Appendix — American Air Filter Co. v. Farr Co. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385601_1214%3A3 ## Record - **Collection:** Supreme Court brief - **Document type:** Appendix - **Published:** January 1, 1963 - **Citation:** 375 U.S. 903 ## Text : da J es | U NITE D STATES DISTRICT. COURT | Sou THERN DIsTRICT OF CALIFORNIA ——— 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- ~ wee . eR irha e : ote a -* Qa = . i 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. “Se oe 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 lla 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 18a 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 . 19a - 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 @ 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. | . - _ 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 : - 7: ‘e 3 . “ a ae --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385601_1214%3A3. Public record. Not legal advice.