MR. JUSTICE ROBERTS delivered the opinion of the Court.
These cases involve the validity, and the alleged infringement, of letters patent No. 1,127,660, of date February 9, 1915, isued to John H. McMichael, and assigned to Concrete Mixing and Conveying Company.
The Court of Appeals of the Second Circuit, in Concrete Mixing and Conveying Company v. Ulen Contracting Corporation, 12 F.2d 929, held the patent valid and infringed. In No. 3 the District Court followed that decision. Its decree was affirmed by the Circuit Court of Appeals of the Second Circuit, 27 F.2d 668.
Meantime, in No. 4, the District Court for the Western District of Washington held the patent void for want of novelty and invention, 23 F.2d 131. Subsequent to the decision of the Court of Appeals of the Second Circuit, that of the Ninth Circuit affirmed the Washington District Court, 27 F.2d 838. In view of the conflict
The patent is for certain new and useful improvements in methods of and apparatus for transporting and treating concrete. The accompanying drawing illustrates the apparatus.
It consists of a chamber 1, for the reception of the material, the lower portion being hopperlike in form, as indicated at 2. The cover 4 is provided with an opening 3, in which there is a door 5. A chain or rope 3a is adapted to be used in partly or entirely closing the door. Air pressure in the chamber also acts to hold this door in closed position. A pressure tank 6 holds compressed air supplied by an air compressor 7, and has a connection 8 leading the air under pressure from the tank to the chamber 1; the air inlet is preferably near the top. An air pipe 10 controlled by a valve 11 also leads into the chamber, the delivery end of this pipe being at or near the discharge or lower end of the hopper.
The apparatus includes a valve-controlled water supply pipe 12 adapted to deliver water at the lower end of
The operation as described in the application for patent consists in depositing material in the chamber, closing the door, turning the air from the reservoir through the pipe 8 into the upper portion of the chamber, thus insuring the immediate firm closure of the door and forcing the material in the hopper downward, it being carried along through the conveying tube 13 until it is finally discharged at 15.
In the application as originally filed, it was stated that, owing to the provision of the U-shaped bend in the conveying tube, the material, immediately after leaving the hopper, will be more or less tightly packed; and it is added that "to loosen the material at the lower end of the hopper should the same become packed, I provide the additional air pipe adapted to discharge air through the material."
It should also be remarked that in the original application the invention was described as useful improvements in apparatus for "elevating and transporting granular and plastic building material, such as sand, plaster, mortar and concrete."
The application was filed in the Patent Office on January 14, 1907. Its prosecution was most dilatory. Claims made were repeatedly disallowed, and at one time it lapsed and had to be renewed. Radical changes were made in the statement of invention, and radically new claims were made in 1911 and expanded in 1913. The applicant eliminated from the scope of his invention the transportation of granular and plastic material generally, and limited it to the transportation and treatment of concrete; and the patent as issued is so limited. While his original assertion that the compressed air admitted to
The device alleged in No. 3 to infringe consists of a container, in all material respects like that of the patent, with a discharge duct. It, however, employs no upper air behind the mass in the container. It has no U-bend in the duct at the outlet of the hopper, nor does it have a pipe terminating in the hopper near the outlet. On the contrary it has a pipe which discharges compressed air into the duct at the right-angle elbow therein immediately below the outlet of the hopper, thus forcing air into and along the duct in the direction in which the material is to move.
The device alleged in No. 4 to constitute an infringement is made under the Hackley patent, No. 1,619,297, of date March 1, 1927. It consists of a cylindrical container set horizontally instead of vertically. The door for admission of the concrete is on the top of the apparatus, a funnel-shaped exit is located at one end, the bottom of said funnel being continuous with the lowest portion of the cylinder wall, and the upper portion of the funnel joining a part of the end of the cylinder. Four pipes are led into the cylinder, the first of which discharges into the funnel and the other three at various distances to the rear of the first, along the bottom of the cylinder and in the direction of the funnel. Its method of operation is that, after the cylinder is filled with concrete and
If the patent in question were valid as disclosing novelty and invention, we should be bound to analyse the differences of structure and operation above indicated, to determine the question of infringement. We have concluded, however, that it does not disclose invention, and that we need not, therefore, narrowly examine the devices and their operation to ascertain whether there is infringement.
The idea of moving fluids and solids through a pipe by air pressure, or other fluid pressure, is old, and was well known at the time of the alleged invention. Both granular and plastic materials had been so moved by devices quite similar to that of the patent. These covered a wide range, from lift-pumps for sand and sulphur, to apparatus for transporting muck, spoil, grout, and concrete.
It is averred, however, that neither an apparatus nor a method such as that devised by McMichael had theretofore been applied to the transportation of concrete. If this be true, its truth must lie in the fact that McMichael either discovered an improvement in apparatus or an improvement in method over the prior art. We think that he did not do so; and we shall call attention to some of the facts which lead us to this conclusion.
The provision of a hopper-shaped bottom for the cylinder, thus causing the mass of material to converge towards the delivery duct, is specified by McMichael as an
The next element to be considered is the introduction of air behind the mass in order to propel it into the discharge duct. This was old in the art. Smith had provided for the employment of such compressed air in an enclosed chamber above the mass in his patent for machinery for laying concrete pavement, of January 2, 1872, No. 122,498. Duckham had employed it in an apparatus for discharging muck or spoil (English patent No. 4400, December 18, 1875). Canniff had used it in his patent above referred to, as had McIlvrid in a grout-mixing and discharging machine, patent No. 958,421, Farnham in a sand-blast apparatus patented December 22, 1903, No. 747,396, and Warren in a similar apparatus in his patent above referred to. Other devices might be cited.
Much reliance is placed upon the pipe 10, with its end or nozzle in the chamber near the outlet. In his original application McMichael described its operation somewhat as follows:
He called attention to the U-bend or trap 14 just below the outlet of the chamber. He stated that this would cause the mass to pack tightly as it was driven down by the upper air pressure, and claimed that the blast of air from the pipe 10 would tend to prevent clogging or arching at this point, thus enabling the material to move more
In the amendment to his specifications, McMichael, while still claiming the function of pipe 10 to be to loosen material at the lower end of the hopper and to assist movement of the mass, added an additional claim, saying that it "serves the double function of preventing choking in the entrance to the delivery pipe and of supplying air under pressure in sharp jets directly to the delivery pipe itself." He says that he has found that this supplemental air pipe 10 is very effective in aiding the passage of the material into and through the conveyor pipe. He claims that this second air pipe "gives to the material the velocity which is needed to carry it to the remote point of delivery." He explains that the upper pipe supplies air which acts by pressure, and the lower pipe supplies air which acts by velocity. Again he states that the air from this pipe "may force itself into the body of the mass," and adds that it "engages with the submasses to push them along." He phrases the matter differently by claiming that this air acts upon submasses successively, and claims as a result "the thorough commingling of the ingredients" with greater rapidity. At considerable length he then elaborates upon the value of the air discharged by this pipe as a mixing agent.
It is conceded that in the commercial form of the patented apparatus the U-bend is entirely discarded. It cannot therefore have any useful function and cannot be the subject of invention. It is further conceded that in the commercial form, pipe 10 is not brought into the chamber and does not terminate in the hopperlike exit. On the contrary, the pipe is led into the elbow in the conduit directly below the hopper and discharges in the direction in which the material is to move. If the function of the pipe is that of a booster or velocity nozzle (as is undoubtedly, amongst other things, claimed in the patent), its use is not invention unless the application of it to concrete is novel and constitutes invention. The use of such nozzles in the conveying of material by compressed air is old in the art. Many of the patents cited and in evidence indicate this, and, apart from them, it is and must be conceded that such use was not uncommon at the time of McMichael's application.
Thomas Leake applied for a patent for an apparatus and method for mixing and transporting concrete, October 7, 1907. In this application he showed two nozzles similar to the pipe 10, discharging into the hopper of
If there be any virtue in the so-called slug theory, Leake has as clearly disclosed it as McMichael did, although neither of them make this method of operation clear in their specifications and claims.
It remains to discuss whether there is foundation for the claim that McMichael discovered new principles, namely, that concrete could be moved by compressed air, or that if it could not be satisfactorily moved by pressure of compressed air or other fluid agent, it could so be moved by a nozzle which cut off portions of the mass and drove them through the delivery duct like pistons.
Methods and apparatus for moving concrete by compressed air had been previously invented. See Smith's patent, 122,498. The court below, in No. 3, indicated that this had not been found practicable. There is no support in the record for any such finding and against it stands the presumption of operability from its patenting. In No. 4 there was uncontradicted evidence that it would work, and that Canniff's grout machine (Patent 873,345) had been successfully used for concrete. Other apparatus closely approximating that of the patent in suit had been used for transporting grout. In his specifications McMichael's
We find no adequate ground for saying that McMichael's method operated in a novel and useful manner, by reason of the alleged function of the nozzle discharging into the moving mass, cutting off therefrom slugs or pistons of concrete and driving them forward individually.
The slug theory, so-called, seems to have been advanced for the first time in the Ulen case; and was there credited and relied upon to sustain the patent. In No. 3 the District Court thought it probable, but the Court of Appeals held the patent valid irrespective of the correctness of the theory.
In No. 4 the District Court found it incorrect and untenable. This coincides with our own view. The top pressure behind the mass and that coming through the pipe 10 is the same. There is no mechanism to produce sharp spurts or jets of air out of the end of pipe 10. That air, as the patent specifications in certain paragraphs suggest, mingles with the mass of concrete as it comes down through the hopper. It does not cut off masses and drive them forward like pistons, but acts merely by velocity. The evidence is persuasive that the concrete issues from the end of the discharge pipe in a stream or solid flow and not in surges of lumps. It is proved that it freely passes ninety-degree bends in the pipe. In short, there is neither theoretical nor practical demonstration of any such phenomenon as the owner of the patent asserts.
And, even if the mode of operation is as claimed, it is to be remembered that Leake in his application of October 7, 1907, uses the same words to describe the operation of his nozzles as we find McMichael subsequently inserted
For these reasons we find that the patent is invalid. It consists of a combination of elements all of which were old in the art. Its application to the transportation of concrete did not involve invention. Neither the combination of old elements or devices accomplishing no more than an aggregate of old results (Hailes v. Van Wormer, 20 Wall. 353; Office Specialty Mfg. Co. v. Fenton Metallic Mfg. Co., 174 U.S. 492; Grinnell Washing Machine Co. v. E.E. Johnson Co., 247 U.S. 426) nor the use of an old apparatus or appliance for a new purpose (Roberts v. Ryer, 91 U.S. 150) is invention.
When, in addition, we find that similar combinations had been used for the transportation of granular material, muck and spoil and grout, and that combinations lacking one or another of the old elements of McMichael's had been used to transport concrete, what was said in Concrete Appliances Co. v. Gomery, 269 U.S. 177, 179, applies with equal force to these cases:
"The several elements in the petitioners' claims which we have enumerated embrace familiar devices long in common use, separately or in smaller groups, both in this and in kindred mechanical arts. It is not argued that there is any novelty in such units or groups; and the only serious question presented is whether, in combination in the apparatus described, they constitute an invention."
This court called attention to the fact that the principle of conveying and distributing a mobile substance by
"The observations of common experience in the mechanical arts would lead one to expect that once the feasibility of using `wet' concrete in building operations was established, the mechanical skill of those familiar with engineering and building problems would seek to make use of known methods and appliances for the convenient handling of this new building material."
Here it appears that the use of compressed air for conveyance of granular and plastic materials had long been known and practiced; so that the cited case is clear authority against invention in the instant cases.
The decree in No. 3 is reversed and the cause remanded with instructions to dismiss the bill of complaint. The decree in No. 4 is affirmed.
No. 3, reversed.
No. 4, affirmed.