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functioning or operation of the apparatus he discloses, and it is therefore unpatentable.

William N. Cromwell, Lewis T. Greist, and Franklin M. Warden, all of Chicago, Ill. (John Taylor Booz, of Chicago, Ill., and William S. Rann and Frederick C. Rupp, both of Buffalo, N. Y., of counsel), for appellants.

Wilhelm & Parker, of Buffalo, N. Y. (Arthur E. Parsons, of Syracuse, N. Y., of counsel), for appellee.

Before WARD, ROGERS, and HOUGH, Circuit Judges.

HOUGH, Circuit Judge (after stating the facts as above). [1] 1. Study of Carrier's plan of operation (without naming it as a process or method) clearly differentiates the prior art relied on by defendants. In the patentee's practice, air tempered (i. e., warmed if necessary) to 40°-45° F. is drawn from without a building into a spraying chamber, and there saturated (i. e., loaded with all the humidity. it can carry) with or by means of water warm enough to raise the temperature to approximately 60° F. It then passes over or through an apparatus, usually of baffle-plates, which removes the free water particles carried by the air, and then passes a thermostat of predetermined range, by means of which if the temperature falls below an approximate 60° water of greater heat is provided, while a rise above said temperature will by thermostatic actuation cut off the hot water. By entirely separate heaters, the saturated air is further warmed (to say 70° F.) before passing into the room for which it is destined; such rise in temperature expands the air, and leaves any given cubic unit thereof with the prearranged relative humidity-because the vapor of saturation or dewpoint is distributed throughout whatever is the increased volume of a cubic unit of air saturated at (say) 60° F., and heated to (say) 70° F.

Thus what Carrier automatically controls is the temperature of saturation, upon which can be predicated with reasonable accuracy (i. e., "within limits") the relative humidity of the air supplied to the room of destination. In so far as the few prior patents relate to anything more than machines for spraying or washing air, they depend on hygrometric control of and through humidity, not on thermostatic control through the temperature at which saturation is effected; much less is there any prior showing of using a rise of temperature above that of saturation, to effect the desired relation of absolute and relative humidities. We agree with the court below that neither anticipation, nor close approximation, is discoverable in the prior art, so far as shown in this record.

[2] 2. Whether Carrier's disclosed apparatus reveals invention is a question not before us-and immaterial. If the office had granted claims for both method and apparatus, that fact would not have vi

1 Bradford 222,234; Huck 476,274; Carrier 808,897; Cramer 813,083; Cramer 821,989.

tiated the patent (Steinmetz v. Allen, 192 U. S. 543, 24 Sup. Ct. 416, 48 L. Ed. 555), and, conversely, no more does the fact that it refused so to do, in the same patent at all events. Carrier had much the same experience in the office as the patentee in Jackson v. Birmingham, etc., Co., 79 Fed. at page 805, 25 C. C. A. 196, whose patent we sustained. No process patent is in theory either helped or harmed by the excellence or worthlessness of the disclosed apparatus by which it is illustrated.

[3] 3. As for infringement, it is uncontradicted that the heating and humidifying apparatus of these Buffalo schools was erected in accordance with specifications, which in our opinion might have been taken from Carrier's application. We think it proven that defendants' device operates on exactly the principle above summarized, and that, on every material point of difference asserted by defendants, the evidence in rebuttal is destructive. This question of fact is sufficiently elaborated in the opinion below.

[4, 5] 4. It cannot be doubted that Carrier discloses and claims a connected series of steps or operations for accomplishing a physical result, and this is often a fair definition of what is protected by a good process patent. Furthermore, he was the first to co-ordinate and disclose this series of operations, and while his result, humidified air, was in a sense not new, air moistened by that method was a successful novelty. Therefore this patent is entitled to a construction as benevolent as that given by us to the desiccated milk process. Merrell, etc., Co. v. Powdered Milk Co. (D. C.) 215 Fed. 922, affirmed 222 Fed. 911, 138 C. C. A. 391.

We do not, however, resort to construction in aid of the claims in suit; for assuming now, as proved, an intelligible statement of process, novelty, and thought of the grade of invention, this patent presents acutely the problem stated by Justice Brown, in declaring that "it may be still regarded as an open question whether the patentability of processes extends beyond," those involving "a chemical or other similar elemental action," or can cover those necessarily involving mechanical operations.2

This query has been answered, with a fullness sufficient for the purposes of this litigation, by Expanded Metal Co. v. Bradford, 214 U. S. 366, 29 Sup. Ct. 652, 53 L. Ed. 1034, holding that a process involving only mechanical operations might be within the protection of the statute.3

It is and always was true that the mere function or effect of the operation of a machine is not patentable; but, if a process be claimed

2 Risdon, etc., Works v. Medart, 158 U. S. 68, 15 Sup. Ct. 745, 39 L. Ed. 899; Westinghouse v. Boyden, 170 U. S. 537, 18 Sup. Ct. 707, 42 L. Ed. 1136.

3 See comment on this case in Macomber's Fixed Law of Patents (2d Ed.) p. 1011; and a full discussion of the effect of the Risdon and Westinghouse opinions in "Patentable Processes," Harvard Law Review, vol. 19, p. 30. For a good illustration of how meritorious processes were fitted to the Risdon Case, before the Expanded Metal decision, see Cameron, etc., Co. v. Saratoga, 159 Fed. at pages 462, 463, 86 C. C. A. 483.

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as a patentable art, the inquiry is vital whether the important thing disclosed is the method of procedure, or the particular means by which it shall or may be practiced. Expanded Metal Case, 214 U. S. at page 381, 29 Sup. Ct. 652, 53 L. Ed. 1034.

If it is not reasonably possible to separate the alleged process from the disclosed means, the former can hardly be more than the function (or at least a function) of the latter. This is no more than applying the doctrine of Leeds v. Victor, etc., Co., 213 U. S. at page 318, 29 Sup. Ct. at page 500, 53 L. Ed. 805:

"A process and an apparatus by which it is performed are distinct things. They may be found in one patent; they may be made the subject of different patents."

If such difference cannot be discovered, they cannot be two things; therefore they must be one thing, i, e., one invention, and that one is usually the means.

[6] But that the means, and the only means of applying the process, are strictly mechanical, is a matter of no moment, so far as patentability is concerned. If the process, when distinguished from the means of performing it, is new, useful, and intellectually rises to the dignity of invention, it is patentable-if it falls within the meaning of the word "art" as used in the statute.

The patent in suit responds to these tests, and this litigation affords an excellent illustration of their propriety. If Carrier had and were suing on a patent for the apparatus pictured and described in his specification, it is very doubtful whether the humidifying plants of these Buffalo schools would infringe; mechanically there is but little similarity. But the series of steps by which "within limits" dry cold air is transformed into an automatically steady stream of humid warm air are, in our judgment and that of the trial court, identical. Where this is the case, it is plain that means and process are separable, and the important thing is the process.

For the foregoing reasons, we agree that Carrier's is a patentable and meritorious mechanical process, and direct that the decree appealed from be affirmed, with costs.

VULCAN SOOT CLEANER CO. v. AMOSKEAG MFG. CO. et al. (Circuit Court of Appeals, First Circuit. November 6 and December 24, 1918.) No. 1356.

1. PATENTS297(2)-SUIT FOR INFRINGEMENT-PRELIMINARY INJUNCTION. It is within the discretion of the court to deny a preliminary injunc tion in an infringement suit, although the validity of the patent has been previously adjudicated.

2. PATENTS

328-VALIDITY AND INFRINGEMENT-BOILER FLUE CLEANER. Order denying a preliminary injunction against infringement of the Eichelberg and Hibner patent, No. 855,563, for a boiler flue cleaner, affirmed.

Appeal from the District Court of the United States for the District of New Hampshire; Edgar Aldrich, Judge.

Suit in equity by the Vulcan Soot Cleaner Company against the Amoskeag Manufacturing Company and others. Complainant appeals from order denying preliminary injunction. Appeal dismissed, and case remanded.

Thomas A. Connolly and Joseph B. Connolly, both of Washington, D. C. (Connolly Bros., of Washington, D. C., on the brief), for appellant.

Nathan Heard, of Boston, Mass., for appellees.

Before BINGHAM and JOHNSON, Circuit Judges, and BROWN,, District Judge.

BROWN, District Judge. This is an appeal from a decree of the District Court denying a petition for preliminary injunction against infringement of letters patent No. 855,563, June 4, 1907, to Eichelberger & Hibner, assignors to appellant, for boiler flue cleaner.

The patent was held valid by the District Court for the Southern Division of the Eastern District of Michigan, as appears by its opinion. printed in Vulcan Soot Cleaner Co. v. Diamond Power Specialty Co., 237 Fed. 818, 151 C. C. A. 60.

[1] One of the grounds assigned by the District Court for its refusal of a preliminary injunction is that the validity of the patent is at issue. The appellant upon its brief contends:

"In the case of an adjudicated patent, there is before the court the decree of a court which establishes the fact of the patent's validity, not only against the original defendant and his privies, but as against the world, and such decree is entitled to the same respect and consideration as it has in the court entering it, and where application is made in another court for a preliminary injunction, such court has no discretion, but is bound to grant it."

With this statement we cannot agree.

While it is a rule of comity, convenience, and expediency that deference shall be paid to the judgment of a co-ordinate tribunal sustaining

For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes

the validity of a patent, its obligation is not imperative. "If it were, the indiscreet action of one court might become a precedent, increasing in weight with each successive adjudication, until the whole country was tied down to an unsound principle." Mast, Foos & Co. v. Stover Mfg. Co., 177 U. S. 485, 488, 489, 20 Sup. Ct. 708, 710 (44 L. Ed. 856). It is the primary duty of every court to dispose of cases according to the law and facts, and this requires that upon an application for the extraordinary remedy of a preliminary injunction a defendant shall have the right to ask for the independent judgment of the court upon a defense of invalidity. "It is only in cases where, in his [the judge's] own mind, there may be a doubt as to the soundness of his views that comity comes in play and suggests a uniformity of ruling to avoid confusion, until a higher court has settled the law."

The extent to which patent questions already adjudicated inter alios will be reconsidered on petition for preliminary injunction must depend largely upon judicial discretion exercised according to the nature. and complexity of the case, as well as according to the exigency of the situation.

The record of a judgment sustaining a patent in litigation with others gives rise to a presumption of validity, but does not preclude an examination of the grounds upon which the judgment was rendered, nor the right of a defendant to contend that such judgment is wrong in fact or in law. While a defendant may have to overcome the presumption that a judgment was right, it is in no sense binding upon him. It is argument from an authority which he may question.

[2] In the present case the defendant contends that the patent in suit is invalid because anticipated by other structures applied to horizontal boilers, and that the limitation of the claims to soot cleaners applied to vertical boilers does not avoid anticipation. Ordinarily a mere change in the location of parts co-operating in the same way does not constitute invention, and it is not apparent that the application of plaintiff's soot-cleaning device to a vertical boiler was substantially different from its application to a horizontal boiler. In fact, upon pages 125-127 of the record are illustrations from plaintiff's catalogue showing its soot-cleaner applied to both horizontal and vertical boilers.

In the opinion of the District Court for the Southern Division of the Eastern District of Michigan, printed in 237 Fed. 818, 151 C. C. A. 60, it was said of the prior art cited:

"Nowhere in the art, however, is shown a blower, either of the multiple jet or single jet type, mounted on a vertical flue boiler to discharge into the outlet ends."

So far as we are able to ascertain from this opinion, the prior art was held nonanticipatory because it did not disclose a blower mounted upon a vertical flue boiler as distinguished from a horizontal flue boiler.

The Prescott patent, No. 838,898, is referred to as showing a rotatable arm discharging into the outlet ends of horizontal flues against the draft.

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