Before WARD, HOUGH, and MANTON, Circuit Judges. HOUGH, Cir. J.: This record reveals no difference of opinion as to the nature of plaintiff's thought, its application to or embodiment in a useful mechanical contrivance,-and his priority in time is no longer open to question. It was well known that railway-cars could be and had been heated by steam piped from the engine; prior to Gold there were two leading and contrasted systems in actual use. What plaintiff calls the "high pressure" appliance received steam at train-pipe pressure into the car-pipes which had an outlet thermostatically closed when the condensation-water was expelled and the hot steam took effect. Then the cars were heated by direct steam as hot as the engine supplied it; when the car got too hot the steam was turned off. This is the แ steam admission pipe pressure" referred to by the court of appeals (ut supre). The second or so-called "vapor system" throttled the train-pipe pressure at the inlet-valve, and reduced it nearly to zero. The outlet is open, containing however a thermostat which regulates or maintains the inlet-valve at the desired approximate closure. This is the "atmospheric pressure" apparatus above referred to by the court of appeals. Each of these heating methods has advantages, and drawbacks. The high-pressure system makes the car warm with a small radiatingsurface, the vapor system gives a mild heat grateful in cool weather, but for a really cold winter day requires a great radiating-surface. Consequently with one appaartus the car is often overheated, and with the other it is at times too cold unless a great extra weight of pipe is carried,—and required perhaps only a dozen days a year. Gold shows and claims as his invention the combination in a carheating apparatus of train-pipe, radiator, admission and outlet valves with "thermostatic means for controlling said valves" to the end that the same pipes, etc., may by turn of a handle be changed from one system to the other, according to the weather. And he was the first man to suggest this or do it, as has been held by the Office and the appellate court of the District of Columbia. But plaintiff Gold was refused a patent on the sole ground that what Weber disclosed could without any substantial change of construction and without any additions or changes that could be called improvements, be made to do what Gold discloses and claims as his invention. The Patent Office authorities went into this matter with such care that one of the Examiners was deputed to attend and witness experi ments with a device said to have been made in compliance with Weber's specification and drawing. In the opinion of that Examiner the machine was fairly made and fairly operated, and the experiment proved that it was an inherent characteristic of (Weber's) apparatus that it could be converted, i. e., changed at will, from a high-pressure to a vapor supply of steam. On this evidence the patent was rejected because to grant it would be to patent a double use. And to this view several Commissioners and the Court of Appeals of the District of Columbia have adhered, although it seems to have been shown in the Office proceedings, and therefore to the appellate court, that both Weber's patent and Weber himself had ended their lives without ever being heard of in the art of heating railway-cars, without the patented device ever receiving commercial development, and although the exact apparatus described and claimed by Weber could never, for mechanical reasons, be used in or about railway-cars. It remains doubtful to what useful purpose Weber's patented apparatus could be put. The probability is that it was intended to be used in the steam-heating of houses. It is much pressed upon us that this suit is an original action in which evidence has been adduced not previously shown either to the Commissioner or to the appellate court of the District of Columbia, (Greenwood v. Dover, 194 Fed. Rep., 91; General Electric Co., v. Steinberger; C. D., 1914, 255; 206 O. G., 1161; 214 Fed. Rep., at 784,) and it is not an appeal from the Patent Office. (Butterworth v. Hoe, C. D., 1884, 429; 29 O. G., 615; 112 U. S., at 61.) In form this is true, but in substance we do not think it is. This record contains no reason for granting Gold a patent that was not shown to the Commissioners, and no reason why he should not have one except the Weber reference. We do not overlook the fact that since the experiments above referred to, plaintiffs have made another embodiment of Weber, and conducted experiments with it, in our judgment with substantially the same results. Perhaps the second embodiment did not work quite as well as the first, but the principle is plain in both. We find the fact to be that the first Weber embodiment worked better than the second because the exact limits of adjustment in order to produce the convertible feature were permanently indicated on the device as first constructed, something not shown or suggested in Weber's disclosure. This we regard as unimportant. On these facts a majority of this court are of the same opinion as the court below, that Gold made "a discovery, and a discovery of great value ". That majority also thinks that if the language of Potts v. Creager (C. D., 1895, 143; 70 O. G., 494; 155 U. S., at 608) can ever be held to justify finding patentable invention in the use of an old device to produce a new result, this is an instance of the applicability of that rule. The same majority is of the opinion that Weber's device was not designed by its maker nor adapted nor actually used for the performance of the functions of the patent now sought by Gold. (Topliff v. Topliff, C. D., 1892, 402; 59 O. G., 1257; 145 U. S., 156.) On the other hand we are all of opinion that the fact of difference among ourselves is reason the more for adhering to the rule of Morgan v. Daniels, (C. D., 1894, 285; 67 O. G., 811; 153 U. S., 120,) and especially so in a case where we have no testimony materially changing the record that was before (and indeed repeatedly before) the court authorized equally with ourselves (though in a somewhat different manner) to deal with questions of this kind, viz: the Court of Appeals of the District of Columbia. In respect of actions like this,.solely against the Commissioner, the jurisdiction still existing under Revised Statutes 4915 is, to say the least, a singularity in law-making. While the statute exists, jurisdiction must be exercised; but we entirely concur with the court below that in order to advise or direct the Commissioner to issue a patent which he has refused and had his refusal approved by the District Court of Appeals, there must be introduced substantially new and persuasive testimony, not adduced before the tribunals with which we are invited to differ. Here we have nothing but an argument, persuasive to a majority only of this court, and even that argument seems to have been the same throughout this long and tangled litigation. Further, a court appealed to under section 4915 must by the evidence shown it, whether new or old, be very fully and amply persuaded of plaintiff's merits before granting relief. The fact of our disagreement on the question of invention, leads to a unanimous. belief that there exists no such certainty of right as should lead, not only to the attempted upsetting of so long a line of considered decisions, but to the present granting of a basic and fundamental patent, which for the next seventeen years would dominate an art that has now obviously advanced beyond anything reduced to practice by Gold at or about the time he framed his disclosure. We have not overlooked the difficult position produced for this plaintiff by the course of litigation in Washington.. It seems quite true that both the Golds were in substance trying to get patent protection for the same thing. When priority was awarded to this plaintiff (Edward), Egbert continued his application ex parte, proposing claims expressed in terms of apparatus, but covering the same thought that Edward has persistently expressed in terms of function,-e. g., in the proposed claims first above quoted. It may be true, as argued, that if Egbert's claims had been allowed after he had lost his demand for priority he would have been compelled to pay tribute to the fundamental claims advanced by Edward, and that therefore he sought to create a precedent against himself in the courts of the District by taking an appeal, which if successful would still have left him an infringer had Edward also succeeded. But when Egbert lost in the appellate tribunal, as he did, he had rendered it impossible, without new evidence or an overruling of solemn judgment once given, for anybody else to get what he (Egbert) had failed to obtain. It may also be true that this was the reason why Commissioner Ewing gave that consent which is the only excuse for jurisdiction in this circuit. Even if we admit all the foregoing, we remain of opinion that the decent and seemly administration of the law does not permit a court of (in this matter) substantially coördinate jurisdiction to overrule (in effect) or disregard all that has hitherto been done, unless and except this whole court is very sure of the matter after considering evidence that is not only persuasive but new. Not being able to arrive at that degree of certainty, the decree appealed from is affirmed without costs. [U. S. Circuit Court of Appeals-Second Circuit.] EDWARD E. GOLD AND GOLD CAR HEATING COMPANY U. NEWTON, COMMISSIONER OF PATENTS. Decided December 16, 1918. 257 O. G., 108. ON PETITION for rehearing. Mr. A. C. Fraser for complainants-appellants. Before WARD, HOUGH, and MANTON, Circuit Judges. PER CURIAM: The opinion heretofore filed (ante, 310; 256 O. G., 649) is misunderstood, when it is represented as a surrender of the majority to the minority. The questions as to which disagreement exists are not of law but fact; and as to such matters the majority remain firmly of opinion that this court, unless strongly and unanimously convinced of the error of other numerous and competent tribunals, should not in effect reverse their findings. Motion denied. [U. S. Circuit Court of Appeals-Second Circuit.] H. WARD LEONARD, INC., v. MAXWELL MOTOR SALES CORPORATION. Decided June 5, 1918; on motion for rehearing, August 1, 1918. 257 O. G., 817; 252 Fed. Rep., 584. 1. APPLICATION-AMENDMENT-NEW MATTER. Where plaintiff's original application disclosed as the preferred form of the invention the combination of a variable-speed engine, a generator driven therefrom through a magnetic clutch adapted to be rendered intermittently operative, a storage battery to be charged by the generator, and a relay in series in the charging-circuit arranged to intermittently energize and deenergize the clutch to hold the charging-current as nearly constant as possible, and where Figure 5 disclosed a continuously-driven generator provided with a rheostatic generator-field regulator adapted to be gradually operated in one direction or the other through relay-controlled magnetic clutches of the same type as used in the preferred form and the purpose of the arrangement of Fig. 5 was also to "maintain constant " a function of the output, and where the invention resided in the combination, the broad idea of regulating the current in such a system being old, and where there was no word of warning that a particular type of relay was essential, Held that amendments are invalid which substitute a pulsating-current theory of operation based upon the action of a particular type of relay, which mode of operation was not originally mentioned and was impossible with Fig. 5, which was accordingly canceled. 2. SAME-SAME-SAME. The practice of amending a case by insertion of nebulous claims and cryptic allusions to possible alternative forms, with the purpose of anticipating subsequent developments in the art, where more explicit amendments would have caused the Examiner to raise the question of new matter, condemned. 3. SAME DISCLOSURE MUST BE DEFINITE. An inventor must do more than give cues for future experiment, and unless he is dealing with elements whose action and reaction are known and certain he is bound to disclose how the combination will operate, a patent being the reward of a tested contribution to the art, not of a pregnant surmise or a promising hypothesis. 4. PATENTS-INFRINGEMENT. Where the combination used by defendant differs from that set forth in the original application of plaintiff by the substitution of an element not the equivalent of any element disclosed by plaintiff, infringement will not be held, even though the plaintiff's claims read on the defendant's device. 84150°-19-23 |