C. C. A. 6; 230 Fed. Rep., 120; 144 C. C. A., 418; Cosper v. Gold, C. D., 1911, 387; 168 O. G., 787; 36 App. D. C., 302.) When we seek to apply this rule in this case, we first observe that the alleged new matter was not only permitted by the Patent Office, but was required, because an element claimed was not shown or sufficiently described. The Patent Office has a strict rule on this subject. It fully recognizes that new matter must not be permitted, and it is constantly engaged in defining what is and what is not new matter. The application of the rule must, of necessity, be more or less arbitrary, and the presumption of correctness which attends Patent Office rulings must apply with especial force to this class of ruling; and most peculiarly is that true when the applicant has only complied with the demands which the Patent Office made.

It is clear to us that Kuch's original application did cover and include these features sufficiently to justify the later fuller description and drawing. After reciting that the evolution of heat at the anode was greater than at the cathode, so that the vaporization at the latter was less, he said that the first object of his invention was to so determine the sizes of the two electrode vessels that they should be in the same proportion as the heats developed in them, and that the second object was to connect the cathode with the illuminating tube by means of a narrow intermediate tube. He also says:

It is easy to so proportion the positive and negative electrode vessels that the proportion of the heats given off at both electrodes is approximately the same as the proportion of heats developed at both electrodes.

He also says:

"The size of the cathode vessel in proportion to that of the anode vessel is from the beginning so determined that" the desired results are effected. His first claim was:

In a gas or vapor electric lamp the combination with an illuminating tube of an anode vessel at the one end of said illuminating tube, a cathode vessel, a narrow intermediate tube between the other end of said illuminating tube and said cathode vessel, and a metal liquid doing work in said anode vessel, said cathode vessel and said narrow intermediate tube.

The second claim specified that the sizes of the anode and the cathode vessels should be in proportion to the developed heats. Later claims had specific reference to the function of the narrow intermediate tube in controlling the cathode heat through the aigret action. Thus we find repeated and direct reference to the fact that the anode-bulb is to be larger than the cathode-bulb, and in the very proportion which has always been specified in the claims. Since Kuch did not illustrate this anode vessel, he must be deemed to have referred to the well-known form in common use. (Cosper v. Gold, supra.) In this form, the iliuminating-tube entered the anode-chamber without any constriction, but by an opening which was the full

cross-section area of the illuminating-tube. It follows that when Kuch specified that at the cathode end of the illuminating-tube he had a narrower tube entering the cathode-chamber, he naturally implied that this entrance was smaller than the entrance to the anodechamber at the other end of the illuminating-tube.1 It surely is not the insertion of new matter to put into express words a structural characteristic already fairly implied. The attack upon the patent on this ground must fail. The situation is closely analogous to that in Abercrombie Co. v. Baldwin (post 329; 246 O. G., 567; 245 U. S., 198; 38 Sup. Ct., 104).

(2,3) After most of Kuch's claims, about twenty in number, were allowed, the Office suggested to Bastian sixteen of these claims. Bastian adopted them, and an interference was declared. Since both applicants were foreigners, and Bastian's filing date was earlier, the Office awarded him priority. So far as the inventions pertained to a proportioning of the anode and cathode bulbs, this award of priority is the end of the matter; but at the time of the declaration of interference Kuch's application contained claims identical with 1 and 2 in his issued patent, and these claims were not included in the interference. Like claims 3 and 4, added after the interference, they were characterized and limited by the provision that there should be between the illuminating-tube and the cathode-tube an "intermediate tube" or a "contracted passage" of less diameter than the main part or other end of the illuminating-tube. Count 11 of the interference, which had been one of Kuch's claims and which became claim 11 of the Bastian patent (1,079,926), was:

In a vapor lamp, the combination with the horizontal illuminating tube of an anode, a cathode chamber, a narrow upwardly inclined intermediate tube connecting the illuminating tube and the cathode chamber, an active fluid in the cathode chamber and partly filling the intermediate tube.

Since this count plainly reads upon Kuch's form, and priority was awarded to Bastian, the court took the view that the invalidity of Kuch's patent necessarily followed, and assumed that a decree accordingly was in substantial conformity to the Patent Office decision. We think this view does not give due force to the rule that a device. may be at the same time an infringement upon the relatively generic claim of a prior patent and also be a patentable improvement thereon, and that there is no inconsistency-even presumptive-between these conclusions. (Herman v. Youngstown, C. C. A. 6; 191 Fed. Rep., 579; 112 C. C. A., 185.) The intermediate tube of smaller diameter than the illuminating-tube, or, in other words, the passage to the cathode-chamber constructed so as to be smaller than the illuminating-tube, was a feature certainly not shown by Bastian, and its

1 When he made his new drawing, he showed a passage to the anode which may be slightly constricted, but his claims do not involve this feature.

addition to or substitution in Bastian's structure might well be a patentable improvement upon anything which Bastian had invented. In careful observance of this distinction and purported compliance therewith, the Patent Office reserved out of the declaration of interference two claims which were limited to this additional feature, and later issued to Kuch the patent in suit, based on these and similar claims. To hold these claims invalid on account of the result of the interference is not to affirm but is to reverse the Patent Office conclusions on the subject; and the claims cannot be held invalid for that reason. (4) This leaves only the question whether this so-called improvement, when considered with Bastian, put in the prior art (where, for the fourth defense, he must be placed-Lemley v. Dobson, C. C. A. 6; ante, 223; 246 O. G., 1203; 243 Fed. Rep., 391), involved patentable invention. This is the controlling question in the case. It is not free from doubt, and very likely the decree below was intended to rest substantially upon a negative answer thereto.

Here, again, the patentee has the benefit, in rather unusual degree, of that presumption of correctness which attaches to the Patent Office rulings. After the interference was finished, the Examiner rejected two of the remaining claims of Kuch upon the ground that they were identical with the interference issues, but allowed two others of those reserved from the interference (present 1 and 2). He also rejected, on the same ground, two new claims tendered (present 3 and 4). Kuch finally conceded that the interference adjudication covered the first two just mentioned, but argued that it did not reach 3 and 4, for the same reason that 1 and 2 were not included. To these arguments the Patent Office yielded. Its action in this respect was therefore most deliberate and considered, and especial deference is given to such rulings. (Canda v. Michigan Co., C. C. A. 6; 124 Fed. Rep., 486; 61 C. C. A., 194.)

(5) Plainly when we consider a supposed invention with reference to a prior patent to determine whether there was inventive advance, the claims of that prior patent are wholly immaterial-unless in some possible instances where the claims might interpret an obscurity. We must look, rather, to the structure disclosed by the specification and drawings, and the question is whether there has been any inventive advance upon that structure. If the claims seem to reveal the later form, when the specification and drawings do not, it must be because of the generic language of the claims, interpreted by our knowledge of the later device. We therefore cannot depend upon the language of Bastian's claim 11 (and similar claims, 10 and 12) in which alone there was any reference to a narrow intermediate tube" as distinguished from the illuminating-tube and the cathode-chamber, and we refer to the specification and drawings to see whether Bastian has the equivalent of the "tube of lesser diam

66

་

eter than the illuminating-tube," upon the presence of which the Kuch patent depends. Bastian's specification does not mention any "narrow" tube or any "intermediate" tube. Since Bastian's claim 11 declares that this narrow intermediate tube" is found in connection with the horizontal illuminating-tube, we may well look for it in his Fig. 1, showing his horizontal form, and here reproduced.

66

Yielding to the Patent Office conclusion that Bastian could make this claim on his disclosure, it follows that this element must be there somewhere. It cannot be a part of the cathode-bulb. It therefore must be that end of the illuminating-tube which turns downwardly into the cathode-bulb. It is rather an awkward conception that, of a unitary tube of constant diameter all of which seems to be the illuminating-tube, part is illuminating-tube and part is a "narrow intermediate tube" between the illuminating-tube and the cathode; but there is no other solution. Bastian's "narrow tube" is therefore an extension of the illuminating-tube, and of precisely the same diameter, and is "narrow" only with reference to the greater diameter of part of the cathode-bulb, while Kuch's tube is also narrow with reference to the illuminating-tube. Is Kuch's form only such a variation as any one skilled in the art might naturally make? Defendant insists that the vital relationship is between the size of the intermediate tube and the size of the cathodebulb, and that, since it was common practice to increase the size of the illuminating-tube proportionately to the increase in the current to be used, there was no invention in maintaining that part of Bastian's tube which served as the cathode extension at the small size shown by Bastian, and then expanding the remainder of the tube into any size which the current required.

We are not convinced that we should accept this conclusion. In the first place, Bastain certainly contemplated nothing of the kind. Not only is it evident that his entire illuminating-tube must be of such very small diameter that superficial tension will prevent the flow of the mercury along the horizontal part, but in another patent, issued upon a divisional application, he expressly claimed this feature. Next, we observe that in Kuch, the mercury arc initially fills the main illuminating-tube and usually extends part of the length of the intermediate tube. So far as shown by the records in this and in the companion case (No. 3,028) relating to the same art (249 Fed. Rep., 69)

there had never been a lamp with mercury electrodes in which the arc or its containing-tube was constricted at or toward the cathode; on the contrary, the area of the active cathode-surface had always been at least as great as the cross-section area of the arc-tube; and we cannot now say that. an innovation in this respect presented no new problems as to radiation, amperage, or other elements. If the arc has becomes limited to a central "string," then the constriction would be of the space between the arc and the tube-walls, and there is no presumption that this would be immaterial. The Bastian device was inoperative, except with a small amperage. That its beneficial effects could be retained, and that it could be made to operate with a high amperage, by expanding part of the tube and leaving the remainder untouched, seems now entirely obvious to the defendant's expert; but we think we have no right to say that this was ordinary skill in 1906. Such a change would involve, not only expanding part of the tube, but (probably) changes in the quantity of mercury to be vaporized and readjustment of the anode and cathode sizes-in fact, every factor involved would be disturbed and subject to recomputation if not to experimental research.

When to these considerations we add the fact that defendant, owner of the Bastion patent, has abandoned his specific form and adopted Kuch's, thus paying the "tribute of imitation" (Diamond Co. v. Consolidated Co. C. D., 1911, 538; 166 O. G., 251; 220 U. S., 428; 31 Sup. Ct. 444), we conclude that the presumption of validity is not sufficiently overcome, and that there must be the usual degree for injunction and accounting.

[U. S. Circuit Court of Appeals-Seventh Circuit.]

SCHRAM GLASS MFG. Co. v. HOMER BROOKE GLASS CO.

Decided January 25, 1918; rehearing denied April 5, 1918.

252 O. G., 1143; 249 Fed. Rep., 228.

1. PATENTS-VALIDITY AND INFRINGEMENT.

The Brooke patent, No. 723,983, for an apparatus for cutting and distributing molten materials, which automatically cuts an uninterrupted flow of molten glass into a mold when the mold is filled and supports the severed stream until another mold is brought into place, was not anticipated, discloses patentable invention of a highly-meritorious character, and is valid; also Held infringed.

2. SAME CONSTRUCTION OF CLAIMS-QUALIFYING CLAUSE.

A clause at the beginning of the claims of a mechanical patent, stating the purpose of the device, is not to be ignored as not describing any element, but is a modifying clause, to be read upon every element thereafter described.

1 We do not overlook Fig. 2 of Hewitt Patent No. 682,690 (using one mercury electrode). The inserted guide or collar which produced restriction was for a different purIt is not more than a pose, and was of opaque and non-heat-conducting material.

suggestion of one element of Kuch's combination. If it were more, it would anticipate Bastian's claim 11.

84150°-19-20