# Appendix — Oliver United Filters, Inc. v. Silver

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URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386417_1952%3A2

## Record

- **Collection:** Supreme Court brief
- **Document type:** Appendix
- **Published:** January 1, 1954
- **Citation:** 346 U.S. 923

## 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.

55

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

56

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

57

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-

58

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,

7"

pce

59

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

60

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-

61

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. |

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62

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-

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63

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?

Harowp F. Siiver (an individual),

Respondent.
J

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.

82

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.

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83

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

84

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

ee

85

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.

86

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.

87

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

a

88

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

<a

89

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

90

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

91

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

92

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.

93

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

94

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

95

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).

96

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.

97

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

98

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

99

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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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386417_1952%3A2. Public record. Not legal advice.