Appendix — Oliver United Filters, Inc. v. Silver

Supreme Court brief1954

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Text

Claim 7 of Silver patent

Tab 12, 8.B.

1. A diffusion process, which

comprises the movement of di-

vided material through a con-

fined treatment zone having a

succession of treatment stages,

2. feeding divided material

into one end of said confined

zone,

“3. flowing liquid by gravity

in a progressive movement

through the succession of treat-

ment stages along a course gen-

erally countercurrent to the di-

vided material travel,

4. introducing the liquid

into the respective treatment

stages near one end of each

stage and in the path of di-

vided material moving into said

Stage,

Note:

Appendix |

THE SILVER PROCESS CLAIMS DO NOT PATENTABLY DISTIN-

GUISH FROM THE DISCLOSURE OF THE KRAUSS PATENT

(FIG. 1), TAB 18, OL. 8-F, AND THE DISCLOSURE OF THE

RAK PATENT, TAB 19, OL. 8-G.

We here compared typical claims of the first and second

Silver patents with the disclosures in Krauss (Fig. 1),

Tab 18, OL. 8-F, and Rak, Tab 19, OL. 8-G.

COMPARISON WITH KRAUSS TAB 18, OL. 8-F.

Krauss (Tab 18, OL. 8-F)

Fig. 1 disclosure.

1. A diffusion process, which

comprises the movement of di-

vided material through a con-

fined treatment zone having a

succession of treatment stages

(Tr. 216),

2. feeding divided material

into one end of said confined

zone (Tr. 216),

3. flowing liquid by means

of pumps in a_ progressive

movement through the succes-

sion of treatment stages along

a course generally countercur-

rent to the divided material

travel (Tr. 216),

4. introducing the liquid

into the respective treatment

stages near one end of each

stage and in the path of di-

vided material moving into said

stage (Tr. 218),

It will be noticed that in Krauss (Fig. 1) the

liquid is discharged into the top of each cell and the

cossettes drop from a higher point into the cell.

5. directing the divided ma-

terial so intermixed with liquid

through substantially the entire

treatment stage in an action in

which the liquid moves coneur-

rently with the travel of divided

material,

6. elevating the divided ma-

terial out of the liquid at the

opposite end of said stage in an

action in which the elevating

movement is utilized to transfer

the divided material from said

stage to the next treatment

stage while draining liquid back

through the divided material

during such elevation and be-

fore it is again brought in con-

tact with the liquid at the point

of intermixture in the next

treatment stage,

Note:

5. directing the divided ma-

terial so intermixed with liquid

through substantially the entire

treatment stage in an action in

which the liquid moves concur-

rently with the travel of divided

material (Tr. 218),

6. elevating the divided ma-

terial out of the liquid at the

opposite end of said stage in an

action in which the elevating

movement is utilized to transfer

the divided material from said

stage to the next treatment

stage while draining liquid back

through the divided material

during such elevation and be-

fore it is again brought in con-

taet with the liquid at the point

of intermixture in the next

treatment stage (Tr. 217),

As Mr. Shafor explained at Tr. 217, the transfer

mechanism of the Krauss Fig. 1 disclosure picks up the

cossettes on the outside of a traveling screen and elevates

them out of the liquid, so as to transfer the cossettes from

one stage to the next treatment stage. During this transfer

to the next treatment stage, the cossettes are, of course,

drained through the screen filter medium. At the same

time the rising liquid level at the discharge end of the cell

drains through the screen filter medium and discharges

with the liquid which is drained from the cossettes for

transfer to the succeeding cell. This draining is effected,

of course, before the cossettes are again brought in con-

tact with the liquid at the point of intermixture in the

next treatment stage.

Notice that the element 6 (above) in the claim does not

exclude the use of a filter such as shown by Krauss, nor

does it exclude the use of differential pressure in effect-

ing drain.

7. then subjecting said liq-

uid to a screening action at a

point adjacent to but below the

liquid level before the liquid

passes from said treatment

stage to the next stage along

its countercurrent course,

7. the liquid is subjected to

a screening action at a point

adjacent to but below the liquid

level before the liquid passes

from said treatment stage to

the next stage along its coun-

tercurrent course.

Note: It will be noticed that in Fig. 1 of Krauss, as

explained by Mr. Shafor at Tr. 217-218, the lower part

of the filters extend below the liquid level so that the

liquid may pass up through the filter to discharge. It is,

of course, screened by the screen filter medium which

maintains the cossettes on the exterior thereof, but per-

mits the liquid to pass therethrough.

8. and discharging the liq- 8. and discharging the liq-

uid and divided material sepa- uid and divided material sepa-

rately from the treatment zone. rately from the treatment zone.

(Tr. 218.)

Note:

claim reads directly on the Krauss Fig. 1 disclosure,

except that the liquid does not flow by gravity between

the cells.

From the foregoing it is obvious that this Silver

Thus, the only distinction between the claim and the

Krauss (Tab 18, OL. 8-F) Fig. 1 disclosure is the flowing

by gravity from cell to cell. In that gravity flow and

pumping are equivalents, the claim does not patentably

distinguish from the Krauss Fig..1 disclosure, and in that

the claim does not exclude the use of a filter such as

ORG LL AO LIL NSE MEL DPE POT DIET EASE I RAR

CP POE A Se

shown in Krauss (Tab 18, OL. 8-F) Fig. 1, it would

include such a transfer construction. Consequently, the

claim is fully met by the Krauss (Tab 18, OL.-8-F) dis-

closure and it does not patentably distinguish therefrom

and is invalid.

Claim 2 of Silver patent Krauss (Tab 18, OL. 8-F)

Tab 12, 8.B. Fig. 1 disclosure.

1. Diffusion apparatus, com- 1. Diffusion apparatus, com-

prising a series of treatment prising a series of treatment

cells interconnected for the pro- cells interconnected for the pro-

gressive movement of divided gressive movement of divided

material therethrough, material therethrough (7r. 216),

2. a feed inlet for divided 2. a feed inlet for divided

material at one end of said ap- material at one end of ssid ap-

paratus, paratus (Tr. 216),

3. conveyor means in each 3. conveyor means in each

said cell for imparting said pro- said cell for imparting said pro-

gressive movement to divided gressive movement to divided

material, material (Tr. 216),

Note: Krauss (Tab 18, OL. 8-F) shows a scroll type

of conveyor, while Silver shows a continuous chain type.

However, the claim makes no distinction between the two.

It is submitted that both are ‘‘conveyor means”’.

4. a plurality of conduit 4. conduit members extend-

members arranged with each ing between two cells of the

member extending between two series with an intervening pump

cells of the series to impart a to impart a flow of liquid in a

gravity flow of liquid in a di- direction generally countercur-

rection generally countercurrent rent to the travel of divided ma-

to the travel of divided material terial, the outlet of each conduit

through the“apparatus, the out- member being positioned adja-

let of each conduit member cent the divided material inlet

being positioned adjacent the end of each cell and the intake

divided material inlet end of of each of such conduit being

each cell and the intake of each adjacent the divided material

said conduit member being ad- discharge end of a preceding

ROTEL I ER AL ENTE RS NS MCP Ne TE EE EM EMS LOLA LEE TS MeN NRENS MET FPR a

jacent the divided material dis- cell, whereby the liquid is

charge end of a preceding cell, caused to flow concurrently with

whereby the liquid is caused to the divided material throughout

flow concurrently with the di- substantially the entire length

vided material throughout sub- of each cell (Tr. 216-218),

stantially the entire length of

each cell,

Note: The conduit members in the Krauss (Tab 18,

OL. 8-F) disclosure are the fluid conductors between the

interior of the filter in one cell and thence through

a pump into the upper end of the succeeding cell, except

that a pump is included by Krauss and not a gravity

flow. The only distinction between the two is the pro-

vision of pumping in lieu of gravity flow. This difference

is an immaterial one, not producing a different result, and

is not a patentable distinction.

5. said conveyor means in- 5. said conveyor means in-

eluding apertured members and cluding an apertured member

a portion of said means extend-_ with a portion thereof extending

ing above the level of liquid ad- above the level of liquid adja-

jacent the discharge end of each _ cent to the discharge end of each

cell to elevate divided material cell to elevate divided material

out of the liquid and drain the out of the liquid and drain the

material before it is again material before it is again

brought in contact with the liq- brought in contact with the liq-

uid at the point of intermixture uid at the point of intermixture

in the next treatment stage, in the next treatment stage

(Tr. 217-218),

Note: As testified to by Mr. Shafor (Tr. 217-218), the

filter medium of the filter, which is a continuous belt, is

foraminous or apertured as is the drum, so that it acts

to elevate the cossettes out of the liquid in the cell, drain

them and deliver them to the point of intermixture in

the next treatment stage by gravity. Obviously, the end-

less belt type of filter is a conveyor means and it does

act to convey the cossettes from one cell to the succeeding

cell and drain them during that transfer.

6. a screening member dis-

posed in the liquid adjacent the

portion of said conveyor means

which elevates divided material

above the liquid level, said

sereening member being adapted

to sereen the liquid before it

passes into the conduit intake,

7. a liquid inlet at the end of

apparatus opposite from that at

which said feed inlet for divided

material is positioned,

8. and discharge outlets for

the liquid and the divided mate-

rial at the ends of the apparatus

opposite their respective inlets.

Claim 1 of Silver patent

Tab 11, S.A.

1. A diffusion process, which

comprises the movement of cos-

settes or the like through a con-

fined treatment zone having a

succession of treatment stages,

Note:

6. a sereening member com-

posed of the filter with its sereen

or foraminous type of endless

belt, which filter has a portion

thereof disposed in the liquid to

elevate the divided material

above the liquid level, and the

sereen effect of the filter is to

sereen the liquid before it passes

into the conduit intake, which is

the filter drum having a dis-

charge pipe connected with it as

would be obvious to the Court

(Tr. 217),

7. a liquid inlet at the end of

apparatus opposite from that at

which said feed inlet for divided

material is positioned (Tr. 218),

8. and discharge outlets for

the liquid and the divided mate-

rial at the ends of the apparatus

opposite their respective inlets

(Tr. 217-218).

Krauss (Tab 18, OL. 8-F)

Fig. 1 disclosure.

1. A diffusion process, which

comprises the movement of cos-

settes or the like through a con-

fined treatment zone having a

suecession of treatment stages

(Tr. 216),

These two elements are precisely the same un-

less the Court finds that the word ‘‘confined’’ implies

gas-tight cover for the treatment zone to confine gases,

pce

etc., as explained in the Silver patent. If the word ‘‘con-

fined’’ is given such an interpretation, then Morton does

not include such an element any more than does Krauss.

2. each said stage including 2.

alternate downward and upward

courses of cossette travel,

each said stage including

alternate downward and upward

courses of cossette travel (Tr.

216),

Note:

legs connected at the bottom just as in the Silver patents

Each Krauss cell has two side by side vertical

so that the cossettes travel downwardly of one leg, then

laterally, and then upwardly of the other leg to the dis-

charge end.

3. feeding cossettes into one 3.

end of said confined zone,

feeding cossettes into one

end of said confined zone (Tr.

216),

Note:

Krauss has a confined treatment zone in the sense of

We again point out that neither Morton nor

a complete gas-tight closure for the purposes of the Silver

device.

4. flowing juice in a progres-

sive movement through the suc-

cession of treatment stages in a

separate course generally coun-

tercurrent to the cossette travel,

Note:

4. flowing juice in a progres-

sive movement through the suc-

cession of treatment stages in a

separate course generally coun-

tercurrent to the cossette travel

(Tr. 216),

Notice that this element of the claim does not

in terms or otherwise exclude pumps or differential pres-

sure systems.

5. moving said juice into the

respective treatment stages at a

point intermediate the ends of

the downward course,

5. moving said juice into the

respective treatment stages at a

point at the upper end of the

downward course (Tr. 218),

SEINE MN DA Rte RRS

Note: Whether the juice is introduced in Krauss (Tab

18, OL. 8-F) at a point intermediate the ends of the down-

ward course depends upon whether the claim means inter-

mediate the downward course of the cossettes or of the

treatment stage. Notice that in Krauss (Tab 18, OL.

8-F) the juice is introduced at the liquid level in the

downward course, just as in the Morton machine, but

the cossettes drop by gravity from a point higher than

the point of introduction of the juice, just as in the

Morton machine. Thus, if such element includes Morton,

it must include Krauss.

6. directing the juice so in-

termixed with cossettes through

a substantial extent of said

treatment stage concurrent with

the travel of the cossettes,

7. withdrawing said juice

from the succeeding upward

course at a point near the top

thereof to permit draining of the

cossettes before they are again

brought in contact with the juice

at the intermediate position in

the downward course of the next

treatment stage,

Note:

6. directing the juice so in-

termixed with cossettes through

a substantial extent of said

treatment stage concurrent with

the travel of the cossettes (Tr.

218),

7. withdrawing said juice

from the succeeding upward

course at a point near the top

thereof to permit draining of the

cossettes before they are again

brought in contact with the juice

at the intermediate position in

the downward course of the next

treatment stage (Tr. 217),

The juice in Krauss (Tab 18, OL. 8-F) is with-

drawn at the conduit at the center of each filter which

is approximately at the fluid level in the cell. In Krauss

(Tab 18, OL. 8-F) it is drawn by means of a vacuum

pump, whereas in Morton, wherein the withdrawal occurs

at approximately the same point with respect to the fluid

level, the juice discharges by gravity. However, this

element of the claim does not exclude by words of lim-

itation the use of suction pumps, nor is it limited to

a gravity flow alone.

8. and discharging the juice 8. and discharging the juice

and cossettes separately from anc cossettes separately from

the treatment. the treatment (Tr. 218).

It is obvious from the foregoing that this claim of

Silver reads directly on the Krauss (Tab 18, OL. 8-F)

Fig. I disclosure, the only difference being in the use

of the words ‘‘confined treatment zone’’ and ‘‘moving

said juice into the respective treatment stages at a point

intermediate the ends of the downward course’’. These

two differences are completely immaterial differences and

would not be patentable differences, as certainly no

invention would be required to put a gas-tight cover over

the Krauss machine (if the claim is so limited), or to

introduce the juice (instead of into the extreme top

of the downward course) at a point slightly below the

top of the fluid level.

However, it is noted that the treatment zone of the

Morton diffuser is not ‘‘confined’’ in the sense of being

gas-tight for the purposes of the Silver patent, and like-

wise the fluid inlet is at approximately the top of the

fluid level in each cell as in Krauss (Tab 18, OL. 8-F)

Fig. 1. Therefore, if the claim is construed literally and

linguistically, it reads directly on Fig. 1 of Krauss (Tab

18, OL. 8-F) to the exact degree that it reads on Morton

and is therefore invalid. |

Nee Se ee ee tl ce ee ae ene ee ee — ae

red MORRIE WA EY Ee PELE: a ae haba | SPICY BE aa Na

COMPARISON WITH RAK TAB 19, OL. 8-G.

Claim 7 of Silver patent

Tab 12, 8.B.

1. A diffusion process, which

comprises the movement of di-

vided material through a con-

fined treatment zone having a

succession of treatment stages,

2. feeding divided material

into one end of said confined

zone,

3. flowing liquid by gravity

in a progressive movement

through the succession of treat-

ment stages along a course gen-

erally countercurrent to the

divided material travel,

4. introducing the liquid into

the respective treatment stages

near one end of each stage and

in the path of divided material

moving into said stage,

5. directing the divided ma-

terial so intermixed with liquid

through substantially the entire

treatment stage in an action in

which the liquid moves concur-

rently with the travel of divided

material,

6. elevating the divided ma-

terial out of the liquid at the

opposite end of said stage in an

action in which the elevating

movement is utilized to transfer

the divided material from said

stage to the next treatment stage

while draining liquid back

through the divided material

Rak (Tab 19, OL. 8-G)

Disclosure.

1.. A diffusion process, which

comprises the movement of di-

vided material through a con-

fined treatment zone having a

succession of treatment stages

(Tr. 218-219),

2. feeding divided material

into one end of said confined

zone (Tr. 219),

3. flowing liquid by gravity

in a progressive movement

through the succession of treat-

ment stages along a course gen-

erally countercurrent to the di-

vided material travel (Tr. 224),

4. introducing the liquid into

the respective treatment stages

near one end of each stage and

in the path of divided material

moving into said stage (Tr. 223-

224),

5. directing the divided ma-

terial so intermixed with liquid

through substantally the entire

treatment stage in an action in

which the liquid moves concur-

rently with the travel of divided

material (Tr. 223-224),

6.° elevating the divided ma-

terial out of the liquid at the

opposite end of said stage and

then laterally transferring the

divided material from said stage

to the next treatment stage

while draining liquid back

through the divided material

during such elevation and be-

* oe Ms _ ” . . = _ c zu

ae DENTE MAWES Me PAIN Be PILL ENE OE AEN NRT Ey OV TEES a

during such elevation and be- fore it is again brought in

fore it is again brought in con- contact with the liquid at the

tact with the liquid at the point point of intermixture in the

of intermixture in the next next treatment stage* (Tr. 223-

treatment stage, 224),

7. then subjecting said liquid 7. then subjecting said liquid

to a screening action at a point to a screening action at a point

adjacent to but below the liquid adjacent to but below the liquid

level before the liquid passes level before the liquid passes

from said treatment stage tothe from said treatment stage to the

next stage along its countercur- next stage along its countercur-

rent course, rent course (Tab 19, OL. 8-G),

Note: Screens or ‘‘sieves’’ are provided in the Rak

apparatus at the discharge points thereof labeled C2, C3,

C4 and C5 in Fig. 1 of the Rak drawings.

8. and discharging the liquid 8. and discharging the liquid

and divided material separately and divided material separately

from the treatment zone. from the treatment zone (Tab

19, OL. 8-G).

Note: It is seen, therefore, that the Rak disclosure

meets every term of every element of claim 7. It is true

that Rak intends to and does compress the cossettes

during their travel through the treatment stages, but,

however, the claims of the Silver patent do not expressly

exclude any such compression and there are no words

of limitation in them which confine their scope to a non-

compressing conveyance of the cossettes through the treat-

ment stages.

*Mr. Silver so testified in his deposition, Plaintiff’s Exhibit 20,

Tr. 282-283, as follows:

‘*Q. By the way, in the Rak patent there is a period in its

operation that the cossettes are lifted out of the liquid during

a transfer from one cell to a subsequent cell; isn’t that so? A.

I do not recognize that they are lifted out.

Q. It is a fact, however, that there is a lateral transfer—an

upward movement of the cossettes and a lateral transfer and a

deposit into the top of the succeeding cell? A. That is right.”’

ae SYNCS ae AMP REN a EP ARES AMES OT RR METI OER a eR

Claim 2 of Silver patent

Tab 12, 8.B.

1. Diffusion apparatus, com-

prising a series of treatment

cells interconnected for the pro-

gressive movement of divided

material therethrough,

2. a feed inlet for divided

material at one end of said ap-

paratus,

3. conveyor means in each

said cell for imparting said pro-

gressive movement to divided

material,

4. a plurality of conduit

members arranged with each

member extending between two

cells of the series to impart a

gravity flow of liquid in a direc-

tion generally countercurrent to

the travel of divided material

through the apparatus, the out-

let of each conduit member be-

ing positioned adjacent the di-

vided material inlet end of each

cell and the intake of each said

conduit member being adjacent

the divided material discharge

Rak (Tab 19, OL. 8-G)

Disclosure.

1. Diffusion apparatus, com-

prising a series of treatment

cells interconnected for the pro-

gressive movement of divided

material therethrough*® (Tr.

223),

2. a feed inlet for divided

material at one end of said ap-

paratus (Tr. 223),

3. conveyor means in each

said cell for imparting said pro-

gressive movement to divided

material (Tr. 223),

4. a plurality of conduit

members arranged with each

member extending between two

cells of the series to impart a

gravity flow of liquid in a direc-

tion generally countercurrent to

the travel of divided material

through the apparatus, the out-

let of each conduit member be-

ing positioned adjacent the di-

vided material inlet end of each

cell and the intake of each said

conduit member being adjacent

the divided material discharge

*Mr. Silver so testified in his deposition, Plaintiff’s Exhibit 20,

Tr. 281-282, as follows:

“*Mr. Mellin.

The Rak patent. I will name the steps.

_Q. Let us take the steps one by one. Isn’t it true, in Plain-

tiff’s Exhibit 3, there is first a continuous diffusion process?

A. Yes.

Q. Isn’t it true that, in Plaintiff’s Exhibit 3, there is dis-

closed a course of cossette travel which includes upward and

downward courses of treatment? A. Yes.

Q. Isn’t it a fact that the liquid or juice is introduced in

the treatment at an intermediate point in the travel of the

cossettes? A. Yes.’’

SO FR ACETATES ERATE LE RETIN NER GBS ONS A RON I IE NSTI —

end of a preceding cell, whereby

the liquid is caused to flow con-

currently with the divided mate-

rial throughout substantially the

entire length of each cell,

5. said conveyor means _in-

cluding apertured members and

a portion of said means extend-

ing above the level of liquid ad-

jacent the discharge end of each

cell to elevate divided material

out of the liquid and drain the

material before it is again

brought in contact with the liq-

uid at the point of intermixture

in the next treatment stage,

Note:

end of a preceding cell, whereby

the liquid is caused to flow con-

currently with the divided mate-

rial throughout substantially the

entire length of each cell* (Tr.

224),

5. said conveyor means hav-

ing a portion extending above

the level of liquid adjacent to

the discharge end of each cell to

elevate the divided material out

of the liquid and drain the ma-

terial before it is again brought

in contact with the liquid at the

point of intermixture in the next

treatment stage (Tab 19, OL.

8-G),

The only distinction between these two elements

is that the Rak patent (Tab 19, OL. 8-G) discloses a solid

scroll and draining would take place between the exterior

perimeter of the scroll and the cell wall, while in the

Silver patent the flights of the conveyor are perforated.

There is, however, no patentable distinction between these

two as they both perform the same function in substan-

tially the same manner.

6. a sereening member dis- 6. a sereening member dis-

posed in the liquid adjacent the

portion of said conveyor means

which elevates divided material

above the liquid level, said

screening member being adapted

posed in the liquid adjacent the

portion of said conveyor means

which elevates divided material

above the liquid level, said

screening member being adapted

*Mr. Silver so testified in his deposition, Plaintiff’s Exhibit 20,

Tr. 282, as follows:

‘*Q. Isn’t it a fact that the Rak patent discloses a eon-

current or generally concurrent travel of juice and cossettes

through each stage of treatment? <A. Yes.’’

SPRITES ARRAN NET ORCTRS ATEENET EAE TE SPREE. PRL

POI DS RRO RN

to screen the liquid before it

passes into the conduit intake,

7. a liquid inlet at the end of

apparatus opposite from that at

which said feed inlet for divided

material is positioned,

8. and discharge outlets for

the liquid and the divided mate-

rial at the ends of the apparatus

opposite their respective inlets.

Note:

to screen the liquid before it

passes into the conduit intake

(Tab 19, OL. 8-G),

7. a liquid inlet at the end of

apparatus opposite from that at

which said feed inlet for divided

material is positioned (Tr. 223),

8. and discharge outlets for

the liquid and the divided mate-

rial at the ends of the apparatus

opposite their respective inlets

(Tab 19, OL. 8-G).

This claim likewise does not exclude from its

scope the compressing taper of the Rak cells, and, conse-

quently, would include the Rak disclosure within its scope.

The only difference between what the claim calls for and

the Rak disclosure are so minor, as above set forth, as

to be of no consequence.

Claim 1 of Silver patent

Tab 11, 8.A.

1. A diffusion process, which

comprises the movement of cos-

settes or the like through a con-

fined treatment zone having a

succession of treatment stages,

2. each said stage including

alternate downward and upward

courses of cossette travel,

Note:

Rak (Tab 19, OL. 8-G)

Disclosure.

1. A diffusion process, which

comprises the movement of cos-

settes or the like through a con-

fined treatment zone having a

succession of treatment stages

(Tr. 232),

2. the stages of cossette

travel in this patent include al-

ternate upward and downward

courses of cossette travel ; that is

to say, one stage is upward and

the succeeding stage is down-

ward (Tr. 223),

This is an immaterial difference, however, be-

eause having upward and downward courses of cossette

Oo Sa a ib aa ake Geta ba Seca a a ee a

ABE EPE LEI ERLE ABLE VRE TEE OE RESP AER

travel in each stage is old in the Krauss prior art patent

(Tab 18, OL. 8-F), and no different result is effected.

3. feeding cossettes into one

end of said confined zone,

4. flowing juice in a progres-

sive movement through the suc-

cession of treatment stages in a

separate course generally coun-

tercurrent to the cossette travel,

5. moving said juice into the

respective treatment stages at a

point intermediate the ends of

the downward course,

6. directing the juice so in-

termixed with cossettes through

a substantial extent of said

treatment stage concurrent with

the travel of the cossettes,

7. withdrawing said juice

from the succeeding upward

course at a point near the top

thereof to permit draining of the

cossettes before they are again

brought in contact with the juice

at the intermediate position in

the downward course of the next

treatment stage,

*Mr. Silver so testified in his

Tr. 282, as follows:

““(. Isn’t it a fact that

3. feeding cossettes into one

end of said confined zone (Tr.

223),

4. flowing juice in a progres-

sive movement through the suc-

cession of treatment stages in a

separate course generally coun-

tercurrent to the cossette travel

(Tr. 223),

5. moving said juice into the

respective treatment stages at a

point intermediate the ends of

the downward course,* (Tab 19,

OL. 8-G),

6. directing the juice so in-

termixed with cossettes through

a substantial extent of said

treatment stage concurrent with

travel of the cossettes (Tr.

223-4),

7. withdrawing said juice

from the succeeding upward

course at a point near the top

thereof to permit draining of the

cossettes before they are again -

brought in contact with the juice

at the intermediate position in

the downward course of the next

treatment staget (Tr. 223-4),

deposition, Plaintiff’s Exhibit 20,

the liquid or juice is introduced

in the treatment at an intermediate point in the travel of the

cossettes? A. Yes.’’

tMr. Silver so testified in his

Tr. 282-3, as follows:

‘*Q. By the way, in the

operation that the cossettes

eluiat Gino eee ee ee

LEE RII EILEEN AEA ALANIS EIN EDC NE NS

deposition, Plaintiff’s Exhibit 20,

Rak patent there is a period in its

are lifted out of the liquid during

8. and discharging the juice 8. and discharging the juice

and cossettes separately from and cossettes separately from

the treatment. treatment (Tab 19, OL. 8-G).

Note: Therefore, it is seen that the only difference

between the process called for by this claim and the

process of Rak (Tab 19, OL. 8-G) is that Rak does not

have alternate upward and downward courses in each

stage of treatment, but the stages themselves are alter-

nately upward and downward as admitted by Mr. Silver.

a transfer from one cell to a subsequent cell; isn’t that so?

A. Ido not recognize that they are lifted out.

Q. It is a fact, however, that there is a lateral transfer—an

upward movement of the cossettes and a latera’ transfer and a

deposit into the top of the succeeding cell? A. That is right.”’

Appendix Il

THE DISCLOSURE OF THE NEUFELDT (TAB 16, OL. 8-D) PATENT

AS COMPARED WITH THE ACCUSED MORTON BATTERY.

The Accused Morton Battery.

The accused Morton battery

is constructed and operates as

follows:

1. A plurality of separate

horizontally disposed cells

through which the cossettes

and juice travel generally hori-

zontally from one end of the

cell to a point short of the

other end,

2. the direction of the travel

of the juice through the entire

machines is generally counter-

current to the direction of

travel of the cossettes,

3. the cossettes are intro-

duced into one end of the ma-

chine and travel in a generally

horizontal sinuous course suc-

cessively through the cells from

one end of the machine to the

other,

4. the juice is admitted at

the end of the machine oppo-

site to that into which the cos-

settes are introduced and trav-

els in a sinuous course succes-

sively through the cells from

one end of the machine to the

other by gravity,

5. the direction of travel of

the juice and cossettes is con-

a Sl SERENE NED DUPRE

The Neufeldt (Tab 16, OL. 8-D)

Disclosure.

(See Tr. commencing page 207.)

The battery shown in the

Neufeldt patent is constructed

and operates as follows:

1. A plurality of separate

horizontally disposed cells

through which the cossettes

and juice travel generally hori-

zontally from one end of the

cell to a point short of the

other end,

2. the direction of the travel

of the juice through the entire

machines is generally counter-

current to the direction of

travel of the cossettes,

3. the cossettes are intro-

duced into one end of the ma-

chine and travel in a generally

horizontal sinuous course suc-

cessively through the cells from

one end of the machine to the

other,

4. the juice is admitted at

one end of the machine oppo-

site to that into which the cos-

settes are introduced and trav-

els in a sinuous course succes-

sively through the cells from

one end of the machine to the

other by gravity,

5. the direction of travel of

the juice and cossettes is con-

current and generally horizon-

tal throughout the major por-

tion of each cell,

6. after traveling generally

horizontally through a major

portion of each cell the cos-

settes are elevated by a rotat-

ing mechanism to the adjacent

end of the succeeding cell and

deposited in such cell by grav-

ity,

Note:

current and generally horizon-

tal throughout the major por-

tion of each cell,

6. after traveling generally

horizontally through a major

portion of each cell the cos-

settes are elevated by a rotat-

ing mechanism to the adjacent

end of the succeeding cell and

deposited in such cell by grav-

ity,

The rotating means in Neufeldt is a screw con-

veyor, the lower end of which projects into the cell and

the upper end of which overlies the end of the succeeding

cell (Tr. 208).

7. a draining action of the

eossettes is effected during the

transfer of the cossettes from

one cell to the succeeding cell,

the drainage draining back into

the cell from which the cos-

settes are removed,

8. each cell has a rotating,

propelling and agitating means

revolving on a horizontal axis

extending longitudinally of the

cell to move the cossettes hori-

zontally therethrough and to

rotatively agitate them in the

juice. This means is a ribbon

type of screw conveyor,

9. each cell has a rotating

member for engaging the cos-

settes in the cell and elevating

the cossettes above the fluid

level and transferring the cos-

ee ee MEER TaN AS AM ENTE AIO II PEN RII TE

7. a draining action of the

cossettes is effected during the

transfer of the cossettes from

one cell to the succeeding cell,

the drainage draining back into

the cell from which the cos-

settes are removed,

8. each cell has a rotating,

propelling and agitating means

revolving on a horizontal axis

extending longitudinally of the

cell to move the cossettes hori-

zontally therethrough and to

rotatively agitate them in the

juice. This means is a helical

conveyor not shown whether it

is a solid or interrupted or

ribbon type,

9. each cell has a rotating

member for engaging the cos-

settes in the cell and elevating

the cossettes above the fluid

level and trans¢erring the cos-

settes to the succeeding cell

into which they drop by grav-

ity,

10. the cells are arranged

at successively higher levels

and the travel of the cossettes

is from the cell of the lowest

level through the succeeding

cells in general up-hill fashion,

11. the juice is introduced

in the cell of highest elevation

and travels successively in a

down-hill direction through the

cells of lowest elevation by

gravity,

12. the introduction of the

fluid in each cell is at substan-

tially the fluid level in the cell

and the outlet or discharge

from the cell is just slightly

below the fiuid level in the cell,

13. the cossettes and the

juice are separately discharged

from the machine,

14. there is no recirculation

for heating purposes of the

juice in each cell.

Note:

settes to the succeeding cell

into which they drop by grav-

ity,

10. the cells are arranged

at successively higher levels

and the travel of the cossettes

is from the cell of the lowest

level through the. succeeding —

cells in general up-hill fashion,

11. the juice is ABauced

in the cell of highest elevation

and travels successively in a _

down-hill direction through the

cells of lowest elevation by

pumps, although the flow

through each individual cell is

by gravity,

12. the introduction of the

fluid in each cell is slightly

above the fluid level in the cell

and the outlet or discharge

from the cell is just slightly

below the fluid level in the cell,

13. the cossettes and the

juice are separately discharged

from the machine,

14. there is a partial recir-

culation of the juice in each

cell for the purpose of tem-

perature control.

As Mr. Shafor testified (Tr. 209), recirculation

would not affect the diffusion process.

GI re rere ees

Appendix III

THE DISCLOSURE OF THE KRAUSS (TAB 18, OL. 8-F) PATENT

(FIG. 2 THEREOF) AS COMPARED WITH THE ACCUSED

MORTON BATTERY.

This prior patent (Fig. 2) discloses a continuous dif-

fusion process and apparatus.

The Accused Morton Battery.

The accused Morton battery

is constructed and operates as

follows:

1. A plurality of separate

horizontally disposed cells

through which the cossettes and

juice travel generally horizon-

tally from one end of the cell

to a point short of the other

end,

2. the direction of the

travel of the juice through the

entire machine is generally

countercurrent to the direction

of travel of the cossettes,

3. the cossettes are intro-

duced into one end of the ma-

chine and travel in a generally

horizontal sinuous course suc-

cessively through the cells from

one end of the machine to the

other,

4. the juice is admitted at

one end of the machine oppo-

site to that into which the cos-

settes are introduced and trav-

The Krauss (Fig. 2) (Tab. 18,

OL. 8-F) Disclosure.

(See Tr. commencing page 215.)

The battery shown in Fig.

2 of the Krauss patent is con-

structed and operates as fol-

lows:

1. A plurality of separate

horizontally disposed cells

through which the cossettes and

juice travel generally horizon-

tally from one end of the cell

to a point short of the other

end,

2. the direction of the

travel of the juice through the

entire machine is_ generally

countereurrent to ihe direction

of travel of the cossettes,

3. the cossettes are intro-

duced into one end of the ma-

chine and travel in a generally

horizontal sinuous course suc-

cessively through the cells from

one end of the machine to the

other,

4. the juice is admitted at

one end of the machine oppo-

site to that into which the cos-

settes are intreduced and trav-

els in a sinuous course succes- els in a sinuous course succes-

sively through the cells from sively through the cells from

one end of the machine to the one end of the machine to the

other by gravity, other ,under the influence of

pumps,

5. the direction of travel of 5. the direction of travel of

the juice and cossettes is con- the juice and cossettes is con-

current and generally horizon- current and generally horizon-

tal throughout the major por- tal throughout the major por-

tion of each cell, tion of each cell,

6. after traveling generally 6. after traveling generally

horizontally through a major horizontally through a major

portion of each cell the cos- portion of each cell the cos-

settes are elevated by a rotat- settes are elevated by a mech-

ing mechanism to the adjacent anism to the adjacent end of

end of the succeeding cell and the succeeding cell and depos-

deposited in such cell by grav- ited in such cell by gravity,

ity,

Note: The transfer mechanism of Krauss (Fig. 2)

includes a conventional form of centrifuge (Tr. 220) into

which both the cossettes and the juice are deposited at the

discharge end of each cell. This effects drainage of the

cossettes and a separation of the cossettes and the juice,

and the cossettes are then discharged into a conveyor by

which they are elevated and then deposited by gravity

into the receiving end of the succeeding cell. The juice

meanwhile is directed to its succeeding cell in the general

countercurrent concurrent scheme. This is, of course, one

mechanical way of effecting transfer and drainage and

is merely the equivalent of all other ways in that it pro-

duces substantially the same result in substantially the

same way; ie., effecting separation of the cossettes and

juice, a drainage of the cossettes and a transfer to the

succeeding cell while the juice is directed to its succeed-

ig cell,

7. a draining action of the

cossettes is effected during the

transfer of the cossettes from

one cell to the succeeding cell,

the drainage draining back

into the cell from which the

cossettes are removed,

8. each cell has a rotating,

propelling and agitating means

revolving on a horizontal axis

_ extending longitudinally of the

cell to move the cossettes hori-

zontally therethrough and _ to

rotatively agitate them in the

juice. This means is a ribbon

type of screw conveyor,

7. a draining action of the

cossettes is effected during the

transfer of the cossettes from

one cell to the succeeding cell,

the drained juice being di-

rected into the succeeding cell,

while the cossettes are elevated

and deposited by gravity into

the proper cell,

8. each cell has a rotating,

propelling and agitating rieans

revolving on a horizontal axis

extending longitudinally of the

cell to move the cossettes hori-

zontally therethrough and to

rotatively agitate them in the

juice. This means is a helical

conveyor not shown whether it

is a solid or interrupted or

ribbon type,

Note: We point out here that the Krauss conveyor

and agitator is illustrated as being both a solid scroll

conveyor and an interrupted or paddle type of scroll

conveyor.

9. each cell has a rotating

member for engaging, the cos-

settes in the cell and elevating

the cossettes above the fluid

level and transferring the cos-

settes to the succeeding cell into

which they drop by gravity,

10. the cells are arranged

at successively higher levels

and the travel of the cossettes

is from the cell of the lowest

level through the suneceeding

cell in general up-hill fashion,

9. each cell is equipped to

discharge the cossettes as well

as the juice into a centrifuge

to separate the cossettes and the

juice, the cossettes being ele-

vated by a rotating scroll and

deposited by gravity into the

next or succeeding cell,

10. the cells are arranged

on the same level and the

travel of the cossettes is from

the cell at one end through the

succeeding cells in general hori-

zontal travel,

11. the juice is introduced

in the cell of highest elevation

and travels successively in a

down-hill direction through the

cells of lowest elevation by

gravity,

12. the introduction of the

fluid in each cell is at substan-

tially the fluid level in the cell

and the outlet or discharge

from the cell is just slightly

below the fluid level in the cell,

13. the cossettes and the

juice are separately discharged

from the machine.

11. the juice is introduced

in the cell at the end of the

machine opposite the end into

which the cossettes are depos-

ited and the juice travels suc-

cessively and generally counter-

current to the cossettes through

the remaining cells but concur-

rently in the cells with the cos-

settes under the influence of

pumps,

12. the introduction of the

fluid in each cell is above the

fluid level in the cell and the

outlet or discharge from the

cell is just slightly below the

fluid level in the cell,

13. the cossettes and the

juice are separately discharged

from the machine.

al ale a a,

aes, ee Ree

Appendix IV

THE DISCLOSURE OF THE DOBLER (TAB 17, OL. 8-E) PATENT

AS COMPARED WITH THE ACCUSED MORTON BATTERY.

This prior patent, Tab 17, OL. 8-E, according to the

evidence commencing at Tr. 210, diagrammatically illus-

trates an apparatus for diffusing sugar in a continuous

diffusing process which, in construction, is substantially

the same as the Morton battery, the only difference being

that in Dobler the flow of juice is countercurrent in each

cell rather than concurrent as in Morton.

The Accused Morton Battery.

The accused Morton battery

is constructed and operates as

follows:

1. a plurality of separate

horizontally disposed cells ar-

ranged in parallelism and dis-

posed on successively higher

elevations,

2. the cossettes are intro-

duced at the end of the lower-

most cell and then sucessively

into each higher cell and travel

generally horizontally through

each cell and are discharged at

the end of the highest cell,

3. the juice is introduced in

the end of the highermost cell

and travels generally counter-

currently to the — cossettes

throughout the machine but

concurrent in each cell,

The Dobler Disclosure

(Tab 17, OL. 8-E).

(See Tr. commencing page 210.)

The battery shown in the

Dobler patent is constructed

and operates as follows:

1. a plurality of separate

horizontally disposed cells ar-

ranged in parallelism and dis-

posed on successively higher

elevations,

2. the cossettes are intro-

duced at the end of the lower-

most cell and then successively

into each higher cell and travel

generally horizontally through

each cell and are discharged at

ihe end of the highest cell,

3. the juice is introduced

into the end of the highermost

cell and travels generally coua-

tercurrent to the travel of the

cossettes through the cells and

travels through each cell con-

currently with the cossettes

therein,

ye ee et Ss pik thee

DR eins SS i a Ste

aes

Tea i ee

4. the travel of the juice in

its horizontal sinuous course is

effected by gravity,

5. after traveling generally

horizontally through a major

portion of each cell the cos-

settes are elevated by a foram-

inous or perforated fork-like

member rotatingly mounted ad-

jacent the end of the cell to

elevate the cossettes out of the

eell and out of the juice

therein and deposit the cos-

settes into the adjacent end of

the cell of next higher eleva-

tion by gravity,

6. a draining action of the

cossettes is effected during the

transfer of the cossettes from

one cell to the succeeding cell,

the drainage draining back into

the cell from which the cos-

settes are removed,

7. each cell has a rotating,

propelling and agitating means

of the seroll type revolving on

a horizontal axis in the hori-

zontal cell and extending longi-

tudinally of the cell to move

the cossettes horizontally there-

through and to rotatively agi-

tate them in the juice; this

means is a ribbon type of

scroll conveyor,

8, each cell has a grid-like

rotating member for engaging

the cossettes in the cell and

elevating the cossettes above

the fluid level and transferring

the cossettes to the succeeding

cell into which they drop by

gravity,

4. the travel of the juice in

its horizontal sinuous course is

effected by gravity,

5. after traveling generally

horizontally through a major

portion of each cell the cos-

settes are elevated by a foram-

inous or perforated fork-like

member rotatingly mounted ad-

jacent the end of the cell to

elevate the cossettes out of the

eell and out of the juice

therein and deposit the cos-

settes into the adjacent end of

the cell of next higher eleva-

tion by gravity,

6. a draining action of the

cossettes is effected during the

transfer of the cossettes from

one cell to the succeding cell,

the drainage draining back into

the cell from which the cos-

settes are removed,

7. each cell has a rotating,

propelling and agitating means

of the scroll type revolving on

a horizontal axis in the hori-

zontal cell and extending longi-

tudinally of the cell to move

the cossettes horizontally there-

through and to rotatively agi-

tate them in the juice; this

means is an interrupted type

of scroll conveyor,

& each cell has a grid-like

rotating member for engaging

the cossettes in the cell and

elevating the cossettes above

the fluid level and transferring

the cossettes to the succeeding

cell into which they drop by

gravity,

Note: In the Morton machine this element is a rotat-

ing fork which is on the same axis or shaft as the scroll

agitator and conveyor. In the Dobler patent each cell

is fitted with a rotating perforated grid member which

revolves likewise about a horizontal axis but which dips

into the preceding cell and lifts the cossettes out in a

manner similar to that of the Morton fork and then drops

them by gravity into the succeeding cell. Although the

construction is different in detail, they both accomplish

exactly the same purpose in almost exactly the same

fashion.

9. the cells are arranged at

successively higher levels and

the travel of the cossettes is

from the cell of the lowest level

through the succeeding cells in

general up-hill fashion,

10. the juice is introduced

in the cell of highest elevation

and travels successively in a

down-hill direction through the

cells of lowest elevation by

gravity,

11. the introduction of the

fluid in each cell is at substan-

tially the fluid level in the cell

and the outlet or discharge

from the cell is just slightly

below the fluid level in the cell,

12. the cossettes and th

juice are separately discharged

from the machine.

Note:

9. the cells arc arranged at

successively higher levels and

the travel of the cossettes is

from the cell of the lowest level

through the succeeding cells in

general up-hill fashion,

10. the juice is introduced

in the cell of highest elevation

and travels successively in a

down-hill direction through the

cells of lowest elevation by

gravity,

11. the introduction of the

fluid in each cell is above the

fluid level in the cell and the

outlet or discharge from the

cell is just slightly below the

fluid level in the cell,

12. the cossettes and the

juice are separately discharge:l

from the machine.

The only difference between the Dobler dis-

closure and the Morton machine is the fact that in Morton

the flow is concurrent in each cell, whereas in Dobler it is

countercurrent. In all other respects, including all struc-

tural respects, the machines are identical. Mr. Shafor

at Tr. 214 said the only thing necessary to do to make

the Dobler machine a countercurrent concurrent machine

is to reverse the discharge and inlet connections between

the cells.

aie AURIS wed UWS,

Iu the Supreme Court

OF THE

United States

October Term, 1953

is scccdaceadusinee

Ouiver Unitrep Fitters [NcoRPoRATED,

Petitioner,

vs. >

Harowp F. Siiver (an individual),

Respondent.

BRIEF IN SUPPIORT OF

PETITION FOR WRIT OF CERTIORARI.

The writ should issue to restore to the public domain

the field of continuous countercurrent concurrent sugar

beet diffusion which the Court of Appeals has subjected

to the monopoly of the Silver patents Nos. 2,390,131 and

2,468,720. The Court should say whether under the Patent

Law:

1. Process and apparatus claims, abandoned in order

to distinguish from the prior art, may be restored to the

patent grant to support a charge of infringement of a

process and apparatus made under such prior art.

2. Process and apparatus claims may not be expanded

and sustained upon a doctrine of equivalents so broad

as to write into the grant processes and apparatus which

are the subject of prior expired patents.

3. Whether the monopoly to a process accorded under

one patent can be extended by the subsequent grant

of another patent to the same inventor claiming essen-

tially the same process claimed in the first patent and

disclosing and claiming essentially the same apparatus

disclosed in the first patent and wherein said process

claims define the inherent functions of said apparatus.

4. Whether a combination of elements shown to be

old by the prior art can be the subject of a valid patent

solely by reason of the fact that improvements have been i

made to one or more of such elements. "|

5. Whether prior art can be disregarded solely because

the processes and apparatus disclosed therein have never

been put into commercial use.

6. Whether an old process can be the subject of a valid

patent merely by reason of the fact that it can be carried

out in modified equipment.

7. Whether the inherent function of a machine can be

the subject of a valid process patent.

8. Whether a structure concededly not designed and

not developed until years after the filing date of a patent

application and in no way disclosed therein can be in-

cluded within the monopoly granted on a patent resulting

from said application.

a awe x 6d “ wine’ Man Bete

Yh Mata APMC ATF RR ne ESM OP RNG AME Ne Pi eon ee ever ee ed see

—— —

Fae. owt

ee MEA

OPINIONS BELOW.

The opinion of the District Court is reported in

93 USPQ 87. The findings are at Tr. 25.

The opinion of the Court of Appeals for the Tenth

Circuit is reported in Tr. 357, 98 USPQ 240, and the

judgment appears at Tr. 370.

JURISDICTION.

As noted in the petition, jurisdiction is invoked under

28 U.S.C. 1254.

STATEMENT OF FACTS.

The essential facts are set forth in this petition.

SPECIFICATION OF ERRORS TO BE URGED.

The Court of Appeals erred:

1. In holding valid and infringed any of the claims

of the Silver patents Nos. 2,390,131 and 2,468,720, and

in affirming the judgment of the District Court with

respect thereto.

2. In reading into the claims of each patent the

process claims cancelled and abandoned by Silver in the

Patent Office proceedings.

3. In determining the question of infringement on the

basis of the disclosures contained in the specifications

of Silver’s patents, Silver’s testimony and the alleged

commercial success of the Silver battery rather than

on the basis of the claims of the Silver patents.

4. In holding that the apparatus claims of the Silver

patent No. 2,468,720 define new and patentable combina-

tions of old elements solely by reason of the fact that

some of these elements were improved by Silver and

irrespective of the fact that the same combination of

elements is shown to be old by the prior art.

5. In giving little or no weight to the prior art by

reason of the fact that such art had not gone into com-

mercial use.

6. In including within the monopoly accorded to Silver

under his patents a horizontal scroll type cell and battery

concededly not designed or developed by him until long

after the issuance to him of his patent No. 2,390,131 and

until long after the filing date of his patent No. 2,468,720.

ARGUMENT.

REASONS RELIED ON FOR ALLOWANCE OF WRIT.

This Court should grant the writ prayed for because:

I. POSSIBILITY OF CONFLICT REMOTE.

The trial Court has held both patents valid and in-

fringed. The Court of Appeals has affirmed: The possi-

bility of further litigation of these patents is remote for

if the judgment of the Court below is allowed to stand,

petitioner will be eliminated as a competitor of Silver

and Silver has no other competition in this country in

the manufacture and sale of continuous sugar beet dif-

fusers. The cost of a sugar beet diffuser battery of the

character under discussion is about $250,000.00 (Tr. 72),

and by the very nature of this type of equipment, its

development is costly and must be made with the coopera-

tion of a sugar beet mill. The cost to a mill of a shut-

down of one of its batteries during a sugar beet campaign

would far outweigh the cost of the unit itself, and these

two factors would involve a contingent liability on the

part of a manufacturer and on the part of a sugar mill

so large that no one could well afford to assume it. Prior

to the judgments of the trial Court and the Court of

Appeals, the monopoly accorded to Silver under his two

patents could be determined with a certain degree of

accuracy, but in view of these judgments, wherein both

Courts have included within the monopoly accorded to

Silver a horizontal scroll type of diffuser cell and battery

concededly not designed or developed by Silver until long

after the issuance of his first patent and not until long

after the filing date of the application of his second

patent, the public is left without any yardstick for now

determining the metes and bounds of Silver’s monopoly.

Without such a yardstick, it is extremely unlikely that

anyone is going to the expense of attempting to develop

a competitive structure, and until such competitive struc-

ture is developed, there would, of course, be no basis

for further litigation involving the two Silver patents.

Silver, therefore, is likely to maintain a complete mo-

nopoly with respect to continuous diffusers of the con-

current countercurrent type for use in the sugar beet

industry, a very important industry in this country, as

well as for use in other industries.

These circumstances properly call for the issuance

of the writ prayed for. The Court so pointed out in:

Mackay Radio & Telegraph Co. v. Radio Corpora-

tion of America (1939), 306 U.S. 86, 89;

Muncie Gear Works, Inc. v. Outboard, Marine &

Manufacturing Co. (1942), 315 U.S. 759, 765-6;

Exhibit Supply Co. v. Ace Patents Corporation

(1942), 315 U.S. 126, 128;

Schriber-Schroth Co. v. Cleveland Trust Co. (1938),

305 U.S. 47, 50.

In M:z:zkay Radio and Telegraph Co. v. Radio Corpora-

tion of America (1939), 306 U.S. 86, the Court (p. 89):

‘‘oranted certiorari * * * because of the nature and

importance of the case, on a petition which urged as

grounds for its allowance that validity and infringe-

ment * * * were in doubt and that, as petitioner is

the only competitor of respondent * * * further litiga-

tion resulting in conflict of decision among circuits,

was improbable.’’

The writ should likewise issue here.

, eee eS

~~ ~%

II. IMPORTANT PATENT QUESTIONS HAVE BEEN DECIDED

CONTRARY TO THIS COURT’S DECISIONS.

The Court below has applied principles of law which

are in conflict with this Court’s cases. Extended to other

patent causes, the mischief of the principles given sanc-

tion by the Court below will be great.

1. Silver, by expressly disclaiming machines and processes in

which the cossettes flow through a horizontally disposed

treatment zone from the scope of his patent claims in order

to avoid the prior art and to obtain the patent, thereby dis-

claimed and surrendered the right to now contend to the

contrary that his patent claims include such machines and

processes.

When Silver filed his application for his first patent

(Tab 11, S.A), he included twenty claims (pages 18 to 25

of Exhibit C), not one of which was limited to or defined

a process in which each treatment stage included ‘‘alter-

nate downward and upward courses of cossette travel’’.

Therefore, as filed, the claims included not only the ver-

tical cells, or stages, as shown and claimed in the patent,

but also ‘‘horizontal cells and stages’’ as used in the

accused Morton battery and disclosed in the prior art

patents. The Patent Office recognized this and rejected

the claims on the disclosures of prior art patents (Ex-

hibit C, page 29), the most pertinent of which are the

following which are here in evidence:

Steffen (Tab 13, OL. 8-A)

Turrentine (Tab 14, OL. 8-B)

Krauss (Tab 18, OL. 8-F)

Neufeldt (Tab 16, OL. 8-E)

Gazagne (Tab 15, OL. 8-C)

Olier (Tab 20, OL. 8-H)

The Patent Office, in rejecting the claims, stated (Ex-

hibit C, pages 29 and 30):

‘“‘The claims are further rejected as unpatentable

over any of Steffen, Turrentine, Krauss or Neufeldt.

Each of these patents shows a diffusion process which

comprises the progressive movement of cossettes

through a treatment zone having a plurality of sep-

arated treatment stages, in the sense that applicant’s

process is comprised of separated stages, in both of

the disclosed embodiments. Juice flows progressively

through the stages in a course generally counter-

current to the cossette travel, and concurrent in each

of the treatment stages. The references show both

mechanical propulsion and gravity flow, sealed and

unsealed. The rate of flow is not shown to be critical

and whether the rate of flow of the juice be greater

or less than that of the cossettes is a matter of

choice which may well be left to the judgment of the

operator.”’

In response to this rejection, Silver acquiesced therein

and cancelled all of the original claims and substituted

fourteen entirely new claims (Exhibit C, pages 32 to 39).

The new claims likewise did not define the process as

including ‘‘alternate downward and upward courses of

cossette travel’’ and included both vertical machine op-

eration, as shown in the patent, and horizontal machine

operation, as in the accused Morton machine and prior

art machines. These claims were also rejected (Exhibit C,

pages 44 and 46) and were cancelled (Exhibit C, page 47)

by Silver. Silver then submitted another entirely new set

of claims (Exhibit C, pages 47 to 57 incl.) which became

claims 1 to 11 of the patent in suit (Tab 11, S.A). These

claims different from the previously rejected and can-

celled claims in that each and every one of them defines

and limits the process to one in which each treatment

stage includes ‘‘alternate downward and upward courses

of cossette travel’’.

Silver, in arguing that the claims so limited distin-

guished from and constituted invention over the prior art

and that such ‘‘upward and downward courses of cossette

IRATE ARENAS IY ABEL “me il

travel’’ was a material part of his invention, stated as to

such limitation in the claims as follows (Exhibit C, page

58) :

‘In this connection, it should be noted that the

cossettes which are the material being treated vary

considerably in specific gravity, to such an extent

that at times they float on the juice with which they

are mixed, while at other times they sink in such

juice. As a result, any treatment which requires the

movement of the cossettes through a horizontally dis-

posed treatment zone cannot insure adequate and

uniform extraction, as the juice-cossette contact areas

of such zone are relatively small in proportion to the

volumetric capacity of the zone.’’

Note that in such statement (stated by Silver to be

correct in his testimony, R. 116, 117 and 118) Silver

contends that horizontal stages (such as applicant’s and

prior art patents employ) would not insure adequate and

uniform extraction, and from this contended that the

newly submitted claims which excluded such horizontal

stages were patentable over and patentably distinguished

from the prior art patents cited.

Silver, on page 59 of Exhibit C, amplifies the difference

in effect on extraction between his claimed ‘‘upward and

downward courses of cossette travel’’ and the cossette

travel in horizontal cells (like the accused Morton ma-

chine) by stating (Exhibit C, page 59):

*‘Applicant uses the arrangement shown in Figs. 1

and 2 to provide upward and downward courses in

which the juice and cossettes are so intermixed that

all exposed surfaces of the cossettes are continuously

and completely in contact with juice through the

ieee PES EEONAE LOR RESON HNC BREATH NE Sn RNG ce ona

entire range of the concurrent movement. Further,

during said movement the juice is impelled by the

cossettes and tends to drag against said surfaces

to insure a substantial penetration of the juicg Bio

said surfaces.

‘*Particularly in the upward course, the juice is

moved in opposition to gravitational influences until

it reaches the elevated point of withdrawal, and in

this action a substantial penetration of cossette sur-

faces results because of the gravitational urge. Thus,

applicant attains a high degree of extraction in a rel-

atively short treatment interval, while using gravity

flow in the countercurrent circulation of juice. The

operating cost of the operation is very low, while the

efficiency has not been duplicated on a commercial

seale by any other process.’’

Silver reiterated on page 59 of Exhibit C that if the

machine employs a horizontal tank with a spiral type

of conveyor (which the accused Morton battery employs)

for movement of the cossettes in the tank, as shown in

the prior patents, a uniform mixture of juice and cossettes

cannot be obtained. We quote (Exhibit C, page 59):

‘“‘The arrangements shown in Turrentine and

Steffen employ a horizontally disposed tank having

a spiral type conveyor for movement of the cossettes.

With juice in the tank and cossettes fed thereto, they

may either float on the surface of the liquid or sink

to the bottom, depending on their specific gravity,

and thus there would not be a uniform intermixture

of juice and cossettes such as applicant provides.”’

Silver then makes the flat admission that the claims

distinguish from the prior art and are patentable because

they are limited to a process in which each stage includes

upward and downward courses of cossette travel, as fol-

lows (Exhibit C, page 60):

‘“‘The rejected claims have been cancelled and a

new set of claims substituted therefor. All of the new

claims are based on claim 35, which distinguishes

from the cited art practices in reciting the treatment

of the cossettes at each stage in upward and down-

ward courses and the withdrawal of the juice near the

top of the upward course to permit draining of the

eossettes before they are again bronght in contact

with the juice.’’ (Italics ours.)

After these statements and contentions by Silver, the

claims were granted.

After formal allowance (Exhibit C, page 61), Silver

added five additional claims, which are (Exhibit C, pages

62 to 66) claims 12 to 16, inclusive, of the patent in suit

(Tab 11, S.A), each and every one of which include the

express limitation that each ‘‘stage including alternate

downward and upward courses of material travel’’. The

patent (Tab 11, S.A) in suit then issued with all of the

claims so expressly limited.

Although Silver, beginning with line 63 of the left-hand

column appearing on page 2 of his patent No. 2,390,131

(Booklet of Patents, Tab 11, Silver Exhibit A) states:

‘‘While this is a preferred arrangement, it will

be understood that the process also may be performed

in cells disposed horizontally with a positive or

gravity circulation of liquid employed.’’

it is to be observed that nowhere in this patent or in the

later Silver patent does Silver disclose how his process

can be performed in a horizontal type of cell nor the

details of such cell.

Furthermore, Silver, on direct examination, testified as

follows concerning the development of the so-called hori-

zontal scroll type of diffuser (Tr. 52):

“‘Q. I think that is a matter of no particular

consequence. Well, now, when did you first under-

take to develop a modified diffuser of the type you

call the scroll type? <A. In 1946.

Q. When in 1946? A. When I had the initial

difficulty with the breakage of shafts in the Nyssa

machine, which had to be kept operating, I would

like to make that clear, the machine was kept operat-

ing throughout the entire campaign with exceptional

operating results, in spite of mechanical difficulties.

Q. What did you do about pursuing this idea of

a different type of conveyor? A. I approached the

Union Sugar Company early in 1948 with a proposi-

tion that they put in two cells for experimental pur-

poses, full sized cells to be attached to one end of

our chain type diffuser, at Betteravia in order to test

the action of the cossettes and diffusion possibilities

of the scroll type.

Q. You stated, I think, Mr. Silver, that your first

effort in the direction of producing a scroll diffuser

originated in the latter part of ’46 when you were

having this trouble? A. Yes, that is the endeavor to.

Q. Did you do anything? A. To get something

that would be a little simpler than the chain type

diffuser. . if

Q. When did you conceive of the idea of utilizing

the scroll conveyor in a diffuser? A. Oh, that had

been in my thinking as a possibility all along. I had

not worked out a specific design.

Q. When did you work out a specific design for

the scroll type of conveyor? A. In the latter part

of 1947 my ideas were consolidated and we commenced

design the first part of 1948.’’

In this connection, it is to be noted that the application

for Silver’s patent No. 2,390,131 was not filed until

December 4, 1945 and, consequently, it should be clear

that although the scroll type cell was barely mentioned

in the specification of his application and patent, he

obviously was not in a position then either to describe

how his process could be practiced in such a cell or the

details of construction of any such cell.

Thus, it cannot be seriously questioned that Silver in

order to avoid the prior art and obtain his patent (Tab

11, S.A), limitei the patent claims to a vertical type

machine and mechanical process in which each treatment

stage included alternate downward and upward courses

of cossette travel. This limitation was inserted into and

remains in each and every claim of that patent to ex-

pressly avoid the prior art machines and processes in

which the cossettes were directed through a horizontally

disposed treatment zone just as in the accused Morton

machine.

Thus, as a matter of law, as expressed in practically

every circuit, including this circuit, Silver thereby did

disclaim from the scope of his patent all machines and

processes in which the ~ settes and juice are required

**to travel through’’ a ‘‘horizontally disposed’’ treatment

zone. In that the accused Morton machine ‘‘requires

movement of the cossettes through a horizontally disposed

treatment zone’’, such Morton machine and its operation

were expressly excluded by Silver from the scope of his

patent claims. Therefore Silver surrendered and dis-

claimed machines and processes such as Morton and its

operation, and is now estopped from contending to the

contrary, which is that his claims should be ‘‘interpreted’’

to include the Morton machine and its operation.

Therefore, we contend strenuously that as a matter of

law the Silver patent, if valid at all, is limited to a ver-

tical machine and process in which each treatment stage

includes alternate downward and upward courses of cos-

sette travel, and that Silver expressly disclaimed from

his claims all processes and machines in which the treat-

ment zone is horizontally disposed such as the accused

Morton machine.

The law as applied to the facts as disclosed by the record here with

reference to the disclaimer and surrendering by Silver and file

wrapper estoppel.

This doctrine of not permitting a patentee to first

surrender and disclaim certain processes or machines in

seeking his patent and then, after obtaining the patent

on that ground, attempting to broaden the scope thereof

to include the processes and machines thus disclaimed

and surrendered, is one of the most uniformly applied

rules in patent law and has been applied by this Court

and the Tenth Circuit uniformly with the remaining

circuits. The following is the law on the subject:

Sutter v. Robinson (1886), 119 U.S. 530 (p. 541):

‘c# * * is not at liberty now to insist upon a con-

struction of his patent which will include what he was

expressly required to abandon and disavow as a con-

dition of the grant.’’

chibi acisnanatichelrcn coe ana Sala Ce ea SE ee Kees

Schriber-Schroth Co. v. Cleveland Trust Co. (1940),

311 U.S. 211 (p. 218):

‘‘Where the patentee in the course of his application

in the patent office has, by amendment, cancelled or

surrendered claims, those which are allowed are to be

read in the light of those abandoned and an aban-

doned claim cannot be revived and restored to the

patent by reading it by construction into the claims

which are allowed.’’

Texas Co. v. Anderson-Prichard Refining Corpora-

tion, 122 Fed. (2d) 829, 841, 842 (C.C.A. 10):

‘*Where an applicant for a patent acquiesces in the

rejection of claims, and amends the claims or substi-

tutes other claims to meet the objection of the Patent

Office, he will be deemed to have surrendered and

disclaimed what he thus conceded and is bound by

the limitations imposed, and it is immaterial whether

the rejection was right or wrong.’’

Jensen-Salsbery Laboratories, Inc. v. O. M. Frank-

lin Blackley Serum Co., 72 Fed. (2d) 15, 18

(C.C.A. 10):

‘** * * limitations imposed by the applicant, specially

those added by amendment after a claim has been

rejected, must be construed against the inventor and

regarded as disclaimers; and that the patentee is

thereafter estopped to claim the benefit of the rejected

claim or such a construction of this amended claim

as would be equivalent thereto.’’

The above case was cited with approval in Gasoline

Products Co. v. Champlin Refining Co., 86 Fed. (2d) 552,

561 (C.C.A. 10—November 18, 1936).

Sager v. Glove Corporation, 118 Fed. (2d) 873, 874

(C.C.A. 7):

‘‘* * * Tt is at once apparent that the plaintiff is

in the unfortunate position of attempting, at the same

time, to ride two horses traveling in opposite direc-

tions. The argument employed before the Examiner

to obtain his patent—i.e., that the disclosure of a glove

made from a single piece of material was a patentable

improvement, defeats his contention of infringement

by defendant’s glove made from two pieces of mate-

rial.’’

See, also:

Tschappat et al. v. Hinderliter Tool Co., 98 Fed.

(2d) 994, 999 (C.C.A. 10);

Oliver United Filters, Inc. v. Eimco Corporation, et ‘

al., 91 Fed. (2d) 345, 350 (C.C.A. 10); :

Fried, Krupp Aktien-Gesselschaft v. Midvale Steel

Co., 191 Fed. 588, 610;

Lanova Corporation, et al. v. National Supply Co.,

116 Fed. (2d) 235, 238 (C.C.A. 3);

Lily-Tulip Cup Corporation, et al. v. American Lace

Paper Co., 76 Fed. (2d) 130, 131 (C€.C.A. 2).

Therefore, we contend that the position of the Court

of Appeals on this point in the instant case is in conflict

with the decisions of this Court and with its own prior

decisions on the same point, and that in view of the

evidence and the law, the Court below should have found

and this Court should find that Silver is now estopped

from contending for a construction of the claims of his

patents of sufficient scope as would include the accused

Morton battery and its cperation.

We further contend that if those claims ‘‘read’’ on the

Morton battery and its operation, then they likewise and

to the same degree can be ‘‘read’’ on the prior art patents

cited by the Patent Office in rejecting the claims not

limited to ‘‘each stage including alternate downward and

upward courses of material travel’’, in evidence as ex-

hibits Book 1, Tab 13, OL. 8-A, Tab 14, OL. 8-B, Tab 18,

OL. 8-F, Tab 16, OL. 8-E, Tab. 15, OL. 8-C, Tab 20,

OL. 8-H, and are invalid as being completely anticipated

thereby.

Detailed comparisons of the claims of the Silver patents

with the Krauss and Rak patents are set forth in Appen-

dix I hereto.

2. To impart novelty to Silver’s process and claims, the Court

below reached to the specifications.

The Court of Appeals in its decision, in analyzing

Silver’s contribution to the art, stated as follows (Tr. 362,

98 USPQ 240, pages 243, 244):

‘We come then to the question of what Silver has

contributed to the art that constitutes patentable in-

ventions. He first undertook to analyze and discover

wily the countercurrent-concurrent type of diffusion

system had not been successful. The claimed patent-

ability lies in the method or process by which the beet

stock is made to move in the alternate downward and

upward course of travel to cause an enforced sub-

mergence in the countercurrent of the juice in a man-

ner to effect an alternate washing, draining, and

transfer from one cell to the next without mutilating

the cossettes as they move through the course of

treatment. The application of force or pressure to the

cossettes is avoided so that they remain unmutilated

LPMOL EGP BIEL ONE TOLLE LT PEL EELS DERE GTS IIT RN

and in good condition for diffusion activity and

thereby retain most of the impurities. In this drain-

ing process the juice of high concentration, including

the diffusion resistant surface films found on the

cossettes, is removed and it returns to the cell of

relatively high juice concentration from which it was

taken. The district court found that the enforced

submergence of the cossettes from above the diffusion

liquid with a downward and upward movement while

submerged, followed by a drainage of the liquid in

that cell before transfer to the next cell made

Silver’s machine different from those disclosed by the

prior art.’’

cused ae ue ee oe

: Obviously the mere analysis of a problem is not the

q subject matter of patent protection. It is only the solution

; to such problem which may or may not be subject to such

patent protection.

If the claimed patentable novelty as found by the Court

‘‘lies in the method or process by which the beet stock

is made to move in the alternate downward and upward

: course of travel to cause an enforced submergence in the

countercurrent of the juice in a manner to effect an

alternate washing, draining and transfer from one cell

to the next without mutilating the cossettes as they move

through the course of treatment,’’ then the claims are

defective, for nowhere in any of the claims of either of

Silver’s patents is there a limitation concerning enforced

submergence or mutilation. In this regard, by way of

example, claim 1 of the Silver patent 2,390,131 defines

Silver’s process as follows:

““* * * feeding cossettes into one end of said confined

zone, flowing juice in a progressive movement through

the succession of treatment stages in a separate

course generally countercurrent to the cossette travel,

moving said juice into the respective treatment stages

at a point intermediate the ends of the downward

course, directing the juice so intermixed with cossettes

through a substantial extent of said treatment stage

concurrent with the travel of the cossettes, withdraw-

ing said juice from the succeeding upward course

at a point near the top thereof to permit draining

of the cossettes before they are again brought in

contact with the juice at the intermediate position

in the downward course of the next treatment stage,

and discharging the juice and ecossettes separately

from the treatment”’

It will be here observed that there is no limitation

in this claim requiring enforced submergence nor does it

contain any requirement that the process be done without

the mutilation of the cossettes. These factors are found

only in the specifications of Silver’s patents and Silver’s

testimony concerning his process and equipment.

The Court of Appeals, in making its above quoted anal-

ysis of Silver’s contribution to the art, refers to Findings

14 through 17 of the trial court, these findings appearing

as a footnote (at Tr. 362 and 363, page 244 of 98 USPQ

240). Finding 14 is as follows:

“14. Silver, in making his inventions, combined

with the countercurrent-concurrent flow system the

following major features:

* “First: The enforced submergence of the cossettes

by causing them to pass from a point above the level

of the juice to a point below the level of the juice by

giving the cossettes a downward and upward course

of movement with respect to the juice level; and

a m cassie eom

100

‘*Second: A substantial separation of the cossettes

and their associated liquid at the time the cossettes

are transferred from one cell to the next without

the utilization of such force as would mash or damage

the cossettes or interfere with the diffusion activity.’’

While it may be that Silver, in developing his diffuser,

actually used the assemblage of the features set forth

in these findings, this does not give him the right now

to read these features into his claims.

As this Court’s cases have held since White v. Dunbar

(1886), 119 U.S. 47, 51-52, and McClain v. Ortmayer

(1891), 141 U.S. 419, 423-4, ‘‘it is the claims of the patent

that measure the grant, and while they may be limited,

they may not be enlarged by the specifications’’.

The sanie criticism holds true for Findings of Fact

15, 16 and 17 apparently relied upon by the Court in de-

termining the ‘‘claimed patentability’. The above quoted

passage from the opinion of the Court below has been

selected and discussed in preference to other passages of

the opinion for the reason that this passage seems to be

the only one which refers at all to Silver’s ‘‘claimed

patentability’’. The opinion of the Court of Appeals

follows rather closely the opinion of the trial Court and

in neither opinion is there an attempt to analyze the

claims of the two Silver patents or to make a comparison

thereof with the Oliver-Morton diffuser or with the prior

art diffusers. As a result of carefully studying both opin-

ions, it appears that the conclusions arrived at by both

the trial Court and the Court of Appeals with respect

to the scope of Silver’s monopoly, the question of validity

and the question of infringement were arrived at without

101

making any analysis of the claims of the Silver patents but

rather by the specifications thereof and the testimony of

Silver concerning the problems involved in the diffusion of

sugar beets and the alleged commercial success of the

Silver chain type battery.

As stated by this Court in McClain v. Ortmayer above

cited, 12 S. Ct. 76, at page 77:

‘«* * * While the patentee may have been unfortunate

in the language he has chosen to express his actual

invention, and may have been entitled to a broader

claim, we are not at liberty, without running counter

to the entire current of authority in this court, to

construe such claims to include more than their lan-

guage fairly imports. Nothing is better settled in the

law of patents than that the patentee may claim the

whole or only a part of his invention, and that, if he

only describe and claim a part, he is presumed to

have abandoned the residue to the public. The object

of the patent law in requiring the patentee to ‘par-

ticularly point out and distinctly claim the part, im-

provement, or combination which he claims as his

invention or discovery’ is not only to secure to him

all to which he is entitled, but to apprise the public

of what is still open to them. The claim is the meas-

ure of his right to relief, and, while the specification

may be referred to to limit the claim, it can never

be made available to expand it.’’

But that is precisely what the Court below has done. It

has reached to the specification to enlarge the grant. The

result is that the prior art patents above discussed have

been swept into the orbit of the two Silver patents. Thus

the prior art structures and processes which by law were

102

public property have been included within the monopoly

accorded to Silver.

The Court below has misapplied the doctrine of equiva-

lents. Carried to its inescapable conclusion, the Court’s

doctrine will sweep into the patent monopoly, just as it

has here, much that is public property.

Whatever may be the proper scope of the rule of equiva-

lents, it never should be permitted to convert a specifica-

tion into a claim, otherwise the scope of the patent of the

future will differ much from that of the past. So profound

would be the consequences of such a doctrine that no

Court should give it sanction. If the statute, 35 U.S.C. 112,

which requires the inventor to ‘‘particularly point out

and distinctly claim’’ his invention is to be changed, that

is the proper work for Congress.

With regard to findings of fact and conclusions of law,

it is submitted that neither of them could have been of

very much help to the Court of Appeals. These findings

and conclusions were made by opposing counsel on behalf

of the trial Court after the trial Court had made its

memorandum opinion and in compliance with the instruc-

tions therein contained. As stated by the Court of Appeals

in Process Engineers, Inc. v. Container Corporation of

America, 70 F. (2d) 487, page 489 (C.C.A. 7), March 19,

1934:

“It is urged that the court’s findings should be

sustained because supported by some evidence. The

weakness of this argument lies in the fact that the

findings were not made by the court, but are the work

of industrious counsel who combined his argument

and a partisan and unfair statement of facts into one

103

and called it, ‘Findings of Fact.’ It is difficult to dis-

tinguish these findings from the brief of counsel for

appellee.

‘‘Such so-called findings do not help an appellate

court. They reflect the views of counsel who submitted

them and detract from the force and effect which are

ordinarily given to findings made by the trial judge.

When the abuse is aggravated (and the objectionable

practice is growing), the assistance to the appellate

court, which findings when carefully made by the trial

court afford, is lost, and it becomes necessary for us

to study the evidence as though no findings had been

made by the District Court.’’

8. The claims of the Silver patents do not define any new inven-

tions irrespective of any file wrapper estoppel.

The disclosures of the two Silver patents have been dis-

cussed in some detail in the Petition beginning at page 5

and the claims of the Silver patent (Silver Exhibit B,

Tab 12) are compared with the Krauss and Rak in Ap-

pendix I hereto. In Appendix II the Neufeldt patent has

been further analyzed in relation to the Morton battery

and Appendix IV contains a further analysis of the Dobler

patent.

As a result of these analyses, we contend that what was

done by Mr. Silver, as disclosed and claimed in his pat-

ents, did not meet the standards for invention heretofore

set by our Courts as patentable under the law, and that

what Mr. Silver did amounted to nothing more than un-

patentable mechanical skill.

The law has always required that to sustain a patent,

it must disclose more than mechanical skill. Jt must dis-

close an invention. As tested by the following authorities,

104

it will be clear that Mr. Silver did not produce a patent-

able invention.

The last case on this point is by the Supreme Court,

which was decided December 4, 1950, and is The Great

Atlantic and Pacific Tea Company v. Supermarket Equip-

ment Corporation, 340 U.S. 147, 71 S. Ct. 127. In a con-

curring opinion Justice Douglas stated as follows as to

the necessity of invention in a patent:

‘‘Every patent is the grant of a privilege of exact-

ing tolls from the public. The Framers plainly did

not want those monopolies freely granted. The inven-

tion to justify a patent had to serve the end of science

—to push back the frontiers of chemistry, physics,

and the like; to make a distinctive contribution to

scientific knowledge. * * *’’

Picard v. United Aircraft Corporation (C.C.A. 2,

1942), 128 Fed. (2d) 632, 636:

‘** * * Unless we are to mistake for invention the

slow but inevitable progress of an industry through

trial and error, and confer a monopoly merely upon

the exercise of persistent and intelligent search for

improvement, there was no invention in this. * * *’’

See, also:

Cuno Engineering Corporation v. Automatic De-

vices Corporation (Nov: 10, 1941), 314 U.S. 84;

Mandel Bros., Inc. v. Wallace (Nov. 8, 1948), 69 S.

Ct. 73, 75.

Thus, we strenuously contend that all Mr. Silver did

was to provide an apparatus which differed from the

prior art in minof, constructional details, and that he did

not invent or originate any new process and that the

Ptah tama cntacca eee inaaie

105

process claims are merely statements of the functioning

of his machine. This is borne out by the uncontradicted

testimony of Mr. Shafor (Tr. 190-191).’

4. The process claims in suits 7, 9, 10%and 11 of the Silver patent

2,468,720 (Tab 12, Silver Exhibit B) are invalid in that those

claims do not define an invention different and patentably

distinguishable from the process claimed in the earlier issued

patent.

Under this same heading in the Petition beginning at

page 22 the facts pertinent to this point have been dis-

cussed.

**Q, * * * Now, in the process of diffusion, is there any differ-

ence between the process as carried out in the Morton Diffuser of

diffusion that there is in a Robert Battery? A. No.

Q. What is the comparison between the two as far as actual

process of diffusion is concerned? A. Robert’s Battery is essen-

tially a counter concurrent battery from beginning to end. The

only point is that we in the Robert’s Battery have no way of trans-

ferring cossettes from one cell to the next. Therefore, we manually

dump them and get rid of them as soon as they are exhausted. In

the two continuous batteries I have seen here and studied, we sub-

stitute a mechanical means which will do the transferring and end

the manual labor that we use to get them out of the system on the

Robert’s Battery.

Q. Now, then, on the Robert’s Battery, it is a fact, isn’t it, that

the fresh water that is entered into the battery in the process is

first passed through the cossettes most depleted? A. Yes.

Q. And then progressively as that juice picks up sugar, it is

progressively passed through cells of cossettes of lesser depletion ?

A. That is right.

Q. And is that essentially different or essentially the same as the

Morton, except for a continuous mechanical movement? A. Essen-

tially the same.

Q. Is there any step in the Morton picture, by the Morton ma-

chine, which varies this formula, old formula of sugar diffusion

which you have stated? A. No.

Q. Would you state whether or not in the Morton Battery,

whether the cossettes are caused to move up and down or just

agitated in any other direction, would make any difference as far

as diffusion is concerned, or the time rate of diffusion? A. No

difference. Relative velocity is the thing.

Q. Relative movement between the cossettes and juice? A. That

is right, surrounding juice.’’

106

Silver’s first patent (Tab 11, S.A) issued on December

4, 1945, and his second patent (Tab 12, S.A) issued almost

four years later, to-wit, April 26, 1949, on an application

filed September 28, 1945 (three months before the first

patent issued), so that for approximately three months’

time the applications were copending.

However, the law is manifestly clear that unless the

process claims of the second Silver patent define an in-

vention different and patentably distinguishable from the

processes claimed and disclosed in the first issued Silver

patent, then the process claims of the second patent are

totally invalid, because this would constitute an unlawful °

extension of the monopoly granted by the first patent, and

which is commonly called by the Courts ‘‘double patent-

ing’’.

‘The authorities are clear on this point and the double

patenting rule and reasons therefor are clearly set forth

in the following authorities:

In re Thompson (C.C.P.A. Dec. 19, 1932), 62 Fed.

(2d) 90:

‘Much of appellant’s argument is devoted to the

contention that, since his applications were copending,

applicant’s prior process patent is ‘not a legal ref-

erence’ against his apparatus application, and numer-

ous authorities are cited which are claimed to support

the argument, such as In re Lawrence Byck, 48 F.

(2d) 665, 18 C.C.P.A. 1208; Miller v. Eagle Mfg. Co.,

151 U.S. 186, 14 S.Ct. 310, 315, 38 L.Ed. 121; Kaplan

v. Robertson (D.C.) 50 F. (2d) 617; and others.

‘‘The purport of the holdings in all those cases,

sought to be made here applicable, is expressed, ac-

cording to appellant’s brief, in the Miller Case, supra,

Smee

8G A OPA LOPLI

a ee one

107

in the following language: ‘* * * where the second

patent covers matters described in the prior patent,

essentially distinct and separable from the invention

covered thereby, and claims made thereunder, its

validity may be sustained.’

‘‘That this principle of law is sound and that it is

generally followed by the courts is, we think, beyond

dispute, provided always that the claims of the second

patent or application show an inventive advance over

the claims already granted in the first patent. The

rule announced by the Court of Appeals of the Dis-

trict of Columbia in the case of In re Isherwood, 46

App. D. C. 507, has been referred to and applied by

this court in many cases. In re Fischer, 57 F.(2d)

369, 19 C.C.P.A. 1077, and cases cited therein. A dec-

laration of the court in the Isherwood Case, supra,

reads: ‘The patentability of the present claims may

be decided on appellant’s patent by the same rules

which would be applied to test their anticipation by

a patent to another.’

‘‘Wh.", therefore, appellant’s process patent may

not be a ‘iegal reference’ in the technical sense that

a patent timely granted to another would be, the same

rule is to be followed, and, if appellant has been

. already granted a process patent which legitimately

covers the subject-matter of the claims at issue, he is

not, under the authorities, entitled to a second patent

thereon, even though it be expressed in terms of ap-

paratus claims.

‘*There are many cases in which patents issue upon

separate applications for both a process and an ap-

paratus for carrying out the process, but in all such

cases the claims must be for separate and distinct

inventions. If all that is inventive be expressed in

either the process application or the apparatus ap-

108

plication, then a grant of two patents is not proper,

since the result would be double patenting. In re

Fischer, supra.

‘‘The sole question, therefore, as tc appellant’s

claims 5 and 7, is whether they present anything in-

ventive over his patent claims. * * *’’

General Motors Corporation, et al. v. Rubsam Cor-

poration, et al. (C.C.A. 6, 1933), 65 Fed. (2d) 217:

‘«* * * As was held in Saranac Automatic Machine

Corp. v. Wirebounds Patents Co., 282 U. 8. 704, 51

S. Ct. 232, 75 L.Ed. 634, the monopoly of an earlier

patent may not be extended by subsequent patents

which disclose the invention of the earlier patent, and,

in addition, merely mechanical improvements which

do not in themselves involve invention.”’

In re Peiler (C.C.P.A. April 4, 1932), 56 Fed. (2d)

878:

‘““The appellant, having disclosed or claimed no

matter patentably distinct from that claimed in his

existing patent, cannot have a second patent upon

the same invention. In re Robinson, 48 F.(2d) 931,

18 C.C.P.A. 1271; In re Laughlin, 48 F.(2d) 921, 18

C.C.P.A. 1239; In re Byck, 48 F.(2d) 665, 18 C.C.P.A.

1208; In re Hargraves, 53 F.(2d) 900, 19 C.C.P.A.

(Patent)—.’’

See, also:

In re Fischer (C.C.P.A. April 4, 1932), 57 Fed. (2d)

369;

In re Gollmar (C.C.P.A. Dee. 23, 1933), 67 Fed.

(2d) 907;

Application of Ward (C.C.P.A. July 3, 1945), 150

Fed. (2d) 436.

109

One of the underlying reasons is that whatever the

patentee did not claim in his first patent, but which was

disclosed therein, is dedicéted to the public. The early

basis of the rule of the above cases is the leading case of

Miller v. Eagle Mfg., 151 U.S. 186, 198 (1894), 38 L. Ed.

121, 14 S. Ct. 310, wherein the Court stated as follows:

* «Tn Odiorne v. Nail Factory, 2 Mason, 28, the

reason for the rule * * * was stated to be that * * *

a new and later patent for the same invention would

operate to extend or prolong the monopoly beyond

the period allowed by law.’’

When the process claims 7, 9, 10 and 11 of the second

Silver patent are compared with the disclosure and claims

of the first Silver patent, it is obvious, first, that the two

are directed to exactly the same process. Second, that the

process claims of the second Silver patent define nothing

different or anything which constitutes an invention over

the process claims issued in the first Silver patent. The

difference between the two sets of process claims of both

patents: was succinctly stated by cuunsel to the District

Court, and we adopt such a statement as follows:

‘“‘Claim 7 (of the second patent), which is typical

of the process claims in this patent, is also of in-

terest, but it will not be set forth in full here because

it will be simpler to consider it as including all of the

steps of claim 1 of the first patent, plus the improve-

ment step of—

‘* ‘subjecting said liquid to a screening action at a

point adjacent to but below the liquid level before the

liquid passes from said treatment stage to the next

stage along its countercurrent course.’

‘*In other words, this claim is a process claim cov-

ering the same steps as those constituting the process

110

of the first patent, except that it is limited to the new

and improved feature of draining below the liquid

level, as illustrated in Figure 5 of the patent.’’

Therefore, obviously, the only difference between the

processes claimed in the two patents is the point at which

the liquid is screened before it discharges from one cell

to another. This difference is not a difference in substance:

but merely a difference in words, as Mr. Silver so aptly

pointed out in his testimony at Tr. 105-106, where he tes-

tified on this exact point as follows:

**Q. There is practically no difference in point of

elevation of the discharge of the juice from a cell in

the first and second patents, is there? A. That is

right.

Q. The only difference is that in one you get a

larger screen area to effect screening? A. In the

second.

Q. In the second yes, and in the second patent you

have foranimous trays which aids in thé drainage?

A. That is right.

Q. And that is the only difference between the first

patent and the second patent, material difference?

A. The only material difference.’’

In view of that testimony, it cannot be seriously con-

tended that the process claims of the second patent can

be held as patentably distinguishing from the process dis-

closed in and claimed by the first patent. It is true that

in claim 11, for example, there is an additional limitation

over claim 7, which adds to claim 7 that the liquid moves

at a different rate than the divided material along the

course of concurrent movement of said materials. There

is no proof in the record that this is the case in the

111

Morton battery, but even if it is so, this step added noth-

ing patentable to the claims as was so aptly expressed by

the Patent Office examiner (Exhibit D, page 92):

‘‘Since the rate of flow is not crittral the recitation

in claim 45 of ‘a different rate’ does not constitute

a patentable limitation.”’

We strenuously urge that the process claims of the

second Silver patent are invalid and non-infringed by the

Morton battery for the reasons above set forth.

We also urge that if the process claims of the second

patent in suit can be interpreted so as to include the

Morton battery and its functions, then they include to the

same extent the batteries and processes of the prior art

and are invalid, as set forth herein in connection with

the process claims of the first Silver patent. To hold

otherwise would be to permit Silver at this late date to

recapture as a monopoly part of the public domain dedi-

cated to the public by the prior art patents.

5. The Court of Appeals improperly held Silver's claims to be

valid combination claims.

Pertinent to this point, the Court below in its opinion,

98 USPQ 240, at page 243, stated as follows:

‘‘He (Silver) readily concedes that all the elements

of his combination were known to the art long prior

to his inventions but contends that his combination is

new. The law is that a combination of old elements

is patentable if it accomplished either a new or an

old result, in a more facile, economical and efficient

way in a particular environment which presented pe-

culiar and difficult problems.”’

OT ON De 0 ei eee NER NR TYE TE Le SOTO

112

This statement of the law is too broad for it disregards

the requirement that to be patentable, the assemblage

of elements in question, in addition to constituting a com-

bination of elements rather than an aggregation thereof,

must be a new combination. Negatively expressed, the

combination to be patentable must not be an exhausted

combination.

As pointed out in the Petition, this Court in Bassick

Mfg. Co. v. R. M. Hollingshead Co., 56 S. Ct. 787, page

791, made the following statement:

‘«* * * Secondly, he invented an improved form of

coupler to be attached to the end of the hose leading

from the pump to the fitting. Instead of patenting

this, as he did the pin fitting, he claimed a combina-

tion of -pump, hose-coupler, and pin fitting, and em-

bodied in the combination his improved form of cou-

pler. No. 1,307,734, the patent in suit; claims 1-6, 8,

and 10. He further claimed the combination between

his patented pin fitting and any form of grease gun

whether that claimed in his patent or unpatented and

2. old in the art. Claims 14 and 15. The question then

} is whether, by this method, the patentee, by improving

one element of an old combination whose construction

and operation is otherwise unchanged, may, in effect,

repatent the old combination by reclaiming it with

the improved element substituted for the old element.

That this cannot be done is shown by numerous cases

in this and other federal courts.’’

As abundantly appears from the facts recited in the

petition and the analysis of the prior art structures made

in the Appendix I hereto, there was nothing new at the

time that Silver made his alleged inventions in a counter-

113

current-concurreat diffusing system involving the use of

a diffusing battery including a plurality of contiguous cells

and wherein each cell is provided with means for moving

a mixture of cossettes and juice from one end to the other,

with means at the discharge end of the cell for effecting

the separation of the juice and cossettes, with means for

transferring the drained cossettes to the intake end of the

next succeeding cell and with means for delivering the

juice from the discharge end of the cell in question to

the intake end of the preceding cell. The prior art dis-

closes various methods of effecting the separation of the

cossettes and juice and various methods for transferring

these components respectively into the intake end of the

succeeding cell and the intake end of the preceding cell.

The fact that Silver may have disclosed a different type

of transfer mechanism and a different type of draining

{ mechanism in no way alters the combination. It is still

the same old combination disclosed in the prior art refer-

ences and the selfsame process of diffusion is effected

therein. If Silver has done anything, it is to make an

OS aban Seon LSS" oe

improvement only in isolated elements of the combination.

It is, therefore, submitted that Silver, by virtue of these

alleged improved elements, has attempted to repatent the

combinations shown to be exhausted by the prior art

references and that the Court of Appeals, in holding that

Silver’s patents cover a new combination, has done so

in direct conflict with the decisions of this Court and its

: own decisions.

Deen NaC Rin ti? bia HER

The Court below, in supporting its statement of the law,

‘‘The law is that a combination of old elements is

patentable if it accomplishes either a new or an old

; REG gtee: RANE reeN ene naps rreiet

114

result, ‘in a more facile, economical and efficient way

in the particular environment which presented pe-

euliar and difficult problems.’ ’’ (Tr. 361-2, USPQ 240,

p. 243)

cites a number of cases in support thereof. However, a

careful review of these cases shows that they are not

dealing with the question of exhausted combinations but

rather with a situation wherein it was assumed that either

old or new elements had been brought together into a new

combination. The last case cited by the Court, A & P Tea

Co. v. Supermarket Corp., 340 U.S. 147, as a matter of =

fact deals with the distinction between combinations and

aggregations but not with exhausted combinations. Our

contention here is not that the elements of the Silver

diffuser constitute an aggregation of elements, each of

which performs its old function and which together do not

coact to produce a new and unitary result, but rather that

the combination into which these elements have been

brought is an old or exhausted combination.

6. The Morton machine and process does not infringe any of

the claims of either of the Silver patents.

The facts covering this point have been set forth in

the Petition beginning with page 24 and a detailed

analysis and comparison of the Morton structure and

process with those of the prior art references as well

as with the Silver claims appears in the appendix hereto.

It is submitted that this analysis and comparison amply

support petitioner’s position that the Silver claims cannot

be read on the Morton structure and process but if this

Court holds tha¢ they can, then by the saine token and

SWNT NEI ED PRE PES TN LS PIR EN Fi REL SRT ITY S EIR CE CLA ENA SEE AED: I BO ROLE HT ARS i UR nt

’

115

using the same yardstick of equivalents, Silver’s claims

are readable on the prior art references and are, there-

fore, anticipated and should be held invalid.

7. Prior art patents are good as anticipations even though never

put into commercial use.

The careful reading of the opinion of the Court of

Appeals and that of the trial Court indicates that both

Courts felt loathe to use the prior art patents for the

purpose of anticipating the claims of the Silver patents

largely for the reason that none of these prior art patents

had gone into commercial success.

It is submitted that prior art patents, regardless of

whether or not they have gone into commercial success,

should always be used where pertinent for the purpose

of anticipation. As stated by Judge Learned Hand, speak-

ing for the Court of Appeals in In re Frank B. Kilian &

Co. v. Allied Latex Corp., 89 USPQ 219, at page 221:

‘«* * * The phrase, paper patent,’ is a mere bit of

rhetoric, usually employed as a makeweight by judges

who wish to support the patent in suit, but are em-

barrassed by a reference, of an escape from which

they are not too confident. It is a meaningless plati-

tude.”’

While neither the Court of Appeals nor the trial Court

in their decisions used the phrase ‘‘paper patent,’’ both

Courts appear to have considered the prior art as falling

within this category. Most of the prior art patents here-

tofore discussed have been within the public domain for

some years and the effect of the judgment of the lower

Court is to regrant to Silver the disclosures therein con-

tained.

a ieteereeececensereennermnermernmme PORE RAT yet eon

116

8. The commercial success of the machine shown in the patents

is unimpressive in this record and even if the contrary were

true, commercial success cannot be substituted for invention.

The pertinent facts concerning the commercial success

of the Silver machine and process have been set forth

in the Petition beginning with page 43.

Silver sold a total of 14 chain type diffusers between

1942 and 1948 and thereafter sold only his scroll type

which was developed in 1948. As set forth in the Petition,

Mr. Silver testified that as a result of having developed

his scroll type of cell, he saw no reason why he should

sell any more of the chain type. This limited number of

sales in a fairly large and important industry during the

period of six years, coupled with Mr. Silver’s statement

that after the development of his scroll type of cell he

would no longer sell the chain type, hardly supports

Mr. Silver’s contention for great commercial success. Here

we would again like to call the Court’s attention to the

fact that contrary to the suggestion of the trial Court and

the Court of Appeals, the evidence amply shows that

Mr. Morton developed his horizontal scroll type of cell

long prior to the development by Mr. Silver of the same

type of cell. It may be that Mr. Morton had some early

knowledge concerning Mr. Silver’s chain type of battery.

but that would hardly justify the inference made by the |

Court below to the effect that Mr. Morton’s unit was

developed only after knowledge of Mr. Silver’s scroll type

of cell.

In any event, even if the record is considered as: proving

commercial success, it has been widely held that com-

PAINS TSP AR ae IMRT SN ANI RALLI EE NOL PONG EAI IAL I RES RESILIENT SAY ER IN A ETM —_

’

117

mercial success cannot be substituted for invention. See

the following cases:

Shaffer v. Armer, et al. (C.A. 10, Aug. 11, 1950),

86 USPQ 427, 431: ya ee

* * * But no amount of commercial success: “ean

bridge the gap between mechanical skill and inven-

tion. Dow Chemical Co. v. Halliburton Co., 324 U.S.

320, 330 (64 USPQ 412, 416) ; Jungerson v. Ostby and

Barton Co., 335 U.S. 560, 567 (80 USPQ 32, 24-35).”’

The writ should issue.

Dated, San Francisco, California,

October 12, 1953.

Respectfully submitted,

Oscar A. MELLIN,

LeRoy Hanscom,

Jack E. Hursu,

Attorneys for Petitioner.

PREECE yD. . ‘

Ee Le TIEN SAN STE IRE Bt RE RIM TERRE AGP DISSE A NOON A p Reagreetan a

* sda Seat an

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