(231 Fed. 719)

LOVELL-MCCONNELL MFG. CO. v. ORIENTAL RUBBER & SUPPLY CO. (Circuit Court of Appeals, Second Circuit. February 29, 1916.)

No. 131.

1. PATENTS 18-"INVENTION"-OBVIOUS CHANGES IN CONSTRUCTION. The taking of two steps in changing a prior device, both obvious and not involving invention, and unpatentable when taken separately, does not involve "invention" and become patentable when taken in unison. [Ed. Note. For other cases, see Patents, Cent. Dig. § 18; Dec. Dig. 18.

For other definitions, see Words and Phrases, First and Second Series, Invention.]

2. PATENTS 26(2)—INVENTION-COMBINATION OF OLD ELEMENTS.

A combination of old elements, to be patentable, must produce a new result or effect in the combined forces or processes from that given by their separate parts.

[Ed. Note.-For other cases, see Patents, Cent. Dig. § 29; Dec. Dig. 26(2).]

3. PATENTS

328-INVENTION-AUTOMOBILE HORN.

The Hutchinson patent, No. 1,120,057, for a diaphragm horn for automobiles, held void for lack of invention, in view of the prior art.

Appeal from the District Court of the United States for the Eastern District of New York.

Suit in equity by the Lovell-McConnell Manufacturing Company against the Oriental Rubber & Supply Company. Decree for complainant, and the defendant appeals. Reversed.

For opinion below, see 225 Fed. 74.

This cause comes here on an appeal from a decree of the United States District Court for the Eastern District of New York. The patent in suit relates to automobile horns.

Howard P. Denison and Eugene A. Thompson, both of Syracuse, N. Y., for appellant.

George C. Dean, of New York City (Drury W. Cooper and Irving M. Obrieght, both of New York City, of counsel), for appellee.

Before LACOMBE, WARD, and ROGERS, Circuit Judges.

ROGERS, Circuit Judge. This is a suit brought under the patent laws of the United States for infringement of the United States letters patent No. 1,120,057. The patent was applied for on August 14, 1914, by Miller Reese Hutchinson, and the patent was issued on December 8, 1914. The application for the patent having been duly assigned to the plaintiff, the patent was issued in its name, and at the time this suit was brought was, and so far as we are informed still is, the owner thereof.

The inventor had on October 26, 1909, filed his original application, which is serial No. 524,762; and the patent in suit was issued upon an application filed as a division of the original application. The invention of the patent in suit "relates to horns or signaling devices

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

wherein a vibratory member such as a diaphragm is actuated by power derived from a rotatory member or drive shaft, which may be the armature shaft of an electric motor."

In his prior patents, Nos. 923,048, 923,049, and 923,122, Hutchinson had disclosed various means through which movement of a rotary member might be applied to vibrate a diaphragm, so that only a part of the movement of the diaphragm was forced by the driving means, the diaphragm being permitted any desired degree of independent motion preferably on both sides of normal.

In his original application, of which, as we have seen, the application for the patent in suit was filed as a division, the patentee described an arrangement of parts whereby the vibratory motion of the diaphragm could be derived from a drive shaft, when such shaft was arranged at an angle of the plane of the diaphragm, instead of parallel therewith. This he conceived to be particularly desirable in the cases where the armature shaft of an electric motor was utilized as the drive shaft, as it permitted a compact arrangement of the motor within a case which it would not be necessary to extend peripherally outside of the circumference required for inclosing the diaphragm.

He described his invention in the application upon which the patent in suit was issued as follows:

"In the specific arrangement forming the subject of the present application, the shaft is presented endwise to the diaphragm, and is either perpendicular or at a high angle to the diaphragm, and is arranged eccentrically therewith so that its axis does not pass through the center of the diaphragm. With the latter arrangement the diaphragm may have a comparatively small wear piece at its center and presenting a straight line contact surface with which the cams on the face of the rotor may successively engage in the most effective manner and the reaction of the diaphragm on the motor may be taken up by the thrust bearing of the shaft rather than in resistance lateral movement or bending of the shaft. If the shaft be the armature shaft of an electric motor, the latter may be mounted in a casing eccentric to the diaphragm; but its size may not be so great but what it may be disposed entirely within the rearward projection of the periphery of the diaphragm.

"When the device is secured in position with the axis of the diaphragm horizontal, I preferably drop the motor down, but keep its axis in the same vertical plane as the axis of the projector. Thus the center of gravity of the device is low and the device more stable, with less strain on its support, while the projector is on a higher level, and hence somewhat better adapted to project the sound clear of any interfering substructure of the automobile.”

There are 14 claims; but in the court below the suit was narrowed down to one claim. It is conceded that the maintenance of the suit depends upon the validity and infringement of claim 12. That claim reads as follows:

"12. In an alarm or signaling device, a diaphragm, a pair of opposed diaphragm clamping members, one of said members having a sound outlet opening therethrough concentric with the diaphragm and the other of said members carrying a rearwardly extending cylindrical motor casing eccentrically disposed in respect to said diaphragm a motor within said casing having its armature shaft presented endwise to said diaphragm, a wear piece on said diaphragm at the center of the latter, a face cam carried by said armature shaft and engaging said wear piece, the eccentricity of said motor casing in respect to said diaphragm being substantially equal to the effective radius of said face cam, and means for adjusting the armature shaft and rotor axial

ly to vary the degree of overlap of the face cam projections on said wear piece."

The elements of claim 12 have been enumerated and compared with plaintiff's prior patents in the brief of counsel for appellant as follows:

5. A motor within said casing having its armature shaft presented endwise to said diaphragm.

6. A wear piece on said diaphragm in the center of the latter, a face cam carried by said armature shaft and engaging with said wear piece, the eccentricity of said motor casing in respect to said diaphragm being substantially equal to the effective radius of said face cam.

7. Means for adjusting the armature shaft and rotor axially to vary the degree of overlap of the face cam projection on said wear piece.

4. The other of said members, as 2,

carrying a rearwardly extending cylindrical motor casing (concentric with the diaphragm, but no new function is performed by mounting the casing eccentric of the diaphragm).

5. A motor within said casing (having its armature shaft parallel with the diaphragm, but no new function is performed in placing it endwise of the diaphragm).

6. A wear piece on said diaphragm at the center of the latter, a cam carried by said armature shaft and engaging with said wear piece. (The eccentricity of the casing is purely a matter of form or arrangement, and the amount of the eccentricity is purely a matter of taste or design, and the amount specified in this element of the claim is sufficient to make the motor casing fit the motor, which is the natural way any mechanic would design it.)

7. Means for adjusting the armature shaft and rotor to vary the degree of overlap of the face cam projections on said wear piece. (This adjustment is found in patent No. 923,049. See Figures 4 and 8. See 81, Figure 8.) The specification, line 16, page 5, says: "The extent of this rearward movement is determined and set by adjusting screw 81 threaded into the back side of the case at 82, bearing upon 66. By these means the cam 59 may be adjusted nearer to or farther from the diaphragm cam surface 69.

Three expressions in claim 12 defining arrangement or positions alone are not found in the prior Hutchinson patents. These expressions are:

1. "Eccentrically disposed in respect to said diaphragm" (referring to the casing).

2. "Having its armature shaft presented endwise to said diaphragm." 3. "The eccentricity of said motor casing in respect to said diaphragm being substantially equal to the effective radius of said cam."

The first defines the position of the casing as eccentric; whereas in patent No. 923,122 it is concentric. This, as appellant contends, is purely a matter of form or arrangement, not affecting in any way the operations of the device, nor varying in any way its functions.

The second defines the armature shaft of the motor as presented endwise to the diaphragm and provided with a face cam, whereas it was parallel with the diaphragm in patent No. 923,122. This, too, is a mere matter of form position or arrangement. The movement of the diaphragm is the same, the sound produced is the same, and the instrumentalities for producing it are identical, whether the shaft is parallel with or perpendicular to the diaphragm.

The third defines the eccentricity of the casing as being equal to the effective radius of the cam. The eccentricity of the casing is also purely a matter of form or arrangement. The amount of eccentricity in no way affects the operation of the device.

The comparison already made of the horn of the patent in suit with the horn of the prior Hutchinson patents discloses that the motor shaft of the old "Klaxon" horn of the earlier patent has been turned up to a horizontal position so that the cam wheel will engage the wear piece on its face rather than on its edge. This is well shown in the following drawings:

There has been a rearrangement of exactly the same elements found in plaintiff's prior patents. Hutchinson's prior patents show a cam operated horn with an adjustable impact. They also indicate an electrical motor for sounding the horn. Later it occurred to Hutch