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theory is supported by witnesses for the appellee, while those for the appellant hold that the gas and air are commingled in the chamber, and there prepared for combustion. The contention of the appellee seems plausible, and we are in some doubt. The provision of such a chamber was probably intended for the purpose of commingling the gas and air to promote combustion, but it is possible that, in fact, the columns of gas and air retain to some extent a separate identity until after they leave the burner. However, we have in this discussion given the appellee “the benefit of the doubt.”
We lay no stress upon the kind of material of which the burners are composed. That was a mere matter of choice and judgment for the artisan. This third claim does not specify what it shall be, and the specification in that regard states that it is preferably made of lava or other material of a like character adapted to the purpose." Any suitable material meets the requirement.
The first and second claimis are for a process or processes. They seem to us to be nothing else than claims for the function of the apparatus described. No doubt it is competent, when the circumstances permit it, for an inventor in describing a machine or apparatus which he has devised, to make a claim for a process which his patented device is capable of carrying out. But to entitle him to do this the process must be one capable of being carried out by other means than by the operation of his patented machine, and, unless such other means are known or within the reach of ordinary skill and judgment, the patentee is bound to point them out; for, unless the public are informed by what other means the process can be carried on, the process is to them nothing else than the operation of the machine-in other words, the exercise of its functions. In the present case no other means or way of practicing the process are suggested by the patentee than the particular device on which his claim for the apparatus rests. And it is impossible for us to see how the process which is the subject of these claims could be worked by any other means than the particular means described by the apparatus. Certainly it is not explained how else it could be done. Moreover, if the apparatus is not new, its functions are not new. See the observations of Mr. Justice Brown in Westinghouse v. Boyden Power Brake Co., 170 U. S. 537, 18 Sup. Ct. 707, 42 L. Ed. 1136, and the cases there cited by him; and Wessel v. United Mattress Mach. Co., 139 Fed. 11, 71 C. C. A. 403, and American Crayon Co. v. Sexton, 139 Fed. 564, 71 C. C. A. 548, two recent decisions of this court. Besides, the operation of the earlier burners disclosed the practice of the process the patentee proposes to make the subject of his patent. And in this connection it seems proper to repeat that the application for the patent which Dolan verified by his oath did not allege that he had invented a new process.
We are referred to a decision made by the Circuit Court of Appeals for the Second Circuit in Kirchberger v. American Acetylene Burner Co., 128 Fed. 599, 64 C. C. A. 107, in which the Dolan patent was sustained. But with great respect we are not satisfied with the reasoning in the opinion delivered in that case. Some material facts are therein assumed which were not, according to our understanding, sustained by the record, if it was the same as it is here. For instance, it is said at page 604 of 128 Fed., and page 112 of 64 C. C. A., referring to the Bullier burner:
“This burner is in many respects strikingly like that in the present suit. There are, however, these radical differences in construction: The air passages in the Bullier burner are located at such a distance below the head as to afford an opportunity for, if not to necessarily cause, a thorough mixing of the air and gas, wbile in the patent in suit the small chamber and orifice are so located at the uppermost end of the burner as to apparently prevent such mixing."
Now, as we have pointed out, Dolan did not state that his air ducts were at the uppermost end of his burner. He stated only that they came in between the constriction, C, at the lower end of the chamber and the orifice. And this was the very form of Bullier's burner shown in figure 1 of his addition of June 12, 1896, above set forth. Neither Bullier or Dolan states the length of his burner nor the distance of the air openings from the orifice. Neither states the size of his burners, but, whatever that might be, the location of the air openings on the chamber as shown by the respective drawings of Dolan and in Bullier's Addition, figure 1, is about the middle of the length of the chamber in each case, and these drawings are the only means we have of knowing where each would put them. From these it would appear, and especially from Bullier's figure 3 in his original patent, that the air ducts came in nearer to the orifice than do Dolan's, and in Bullier's figure 5 the circular air duct comes in just below the sides of the orifice, with the result of shielding the orifice from deposits as we have before shown. And the whole matter may be summed up in this: That from all that appears the mixing of the gas and air was as likely to occur in Dolan's as in Bullier's and so of the forming of an envelope for the protection of the orifice. The opinion of the Circuit Court of Appeals for the Second Circuit does not deal with the necessity of a definite statement of the locality of the air ducts on the chamber to differentiate his burner from earlier structures. In dealing with the subject of the amendment of the application, that court apparently held that because it did not appear that other inventors whose rights would be prejudiced had entered the field, and because the original drawings sufficiently show and suggest the claims finally made, the amendment was not invalid. As to the first reason, while it is true that in the case cited (Railroad Co. v. Sayles, 97 U. S. 554, 24 L. Ed. 1053) Mr. Justice Bradley referred to the fact that other inventors might be prejudiced by the amendment as a reason for denying its validity, yet that is not assigned as the only reason. It was held by this court in Michigan Central R. Co. v. Consolidated Car Heating Co., supra, that an amendment which brought in the substance of the invention without the verification required by the statute was unauthorized and invalid. We regret to differ from the opinion of the Circuit Court of Appeals for the Second Circuit, but we could not agree without surrendering our own judgment.
Our conclusion is that the decree should be reversed, and the bill dismissed, with costs in the court below and in this court.
(155 Fed. 740.)
AMERICAN LAVA CO. et al. y. KIRSCHBERGER et al.
Charles Neave, for appellants.
SEVERENS, Circuit Judge. This is an appeal by the defendant below from an order granting a preliminary injunction in a suit for the infringement of the Dolan patent, No. 589,342.
The suit is one coming from the same court as did case No. 1,612, American Lava Co. v. Steward, 155 Fed. 731, 84 C. C. A. 157, and the order appealed from was doubtless based upon the holding in that case that the Dolan patent was valid. The two causes were heard together in this court. The conclusion which we have announced in the other case is decisive of this, and the order appealed from will be reversed, with a direction to dismiss the bill with the costs of both courts.
(155 Fed. 278.)
POTTER V. LAKE SHORE NOVELTY CO.
(Circuit Court of Appeals, Sixth Circuit. June 26, 1907.)
The Potter patent, No. 689,906, for a detonating device for exploding toy torpedoes, is void for lack of invention and anticipation.
Appeal from the Circuit Court of the United States for the Northern District of Ohio.
In Equity. Suit for infringement of letters patent No. 689,906, for a detonating device granted to George M. Potter December 31, 1901.
The following is the opinion of the Circuit Court by Tayler, District Judge:
This is a bill in equity, wherein the complainant claims that the defendant is infringing patent No. 689,906, relating to a detonating device for exploding toy torpedoes, granted to the complainant. The bill asks for the usual relief. The defendant denies infringement, and also the validity of the patent. The case is liere on final hearing.
Without going into a recital of the nature of the patent and the testimony introduced on the issues made, it is enough for me to announce my conclusion, as follows:
1. If all that the complainant did was to obtain the patent for casting the partition separating the explosion chamber and the socket integrally, instead of forming the partition from a separate piece and securing it in place by a rivet or set screw, then I find that the complainant was not the inventor of such a method.
2. As to the other claim of novelty and usefulness in the patent, I giud that it is not novel, having been anticipated by other patents.
Decree may therefore be entered dismissing the bill, at the complainant's costs.
S. B. Fouts and T. W. Bakewell, for appellant.
PER CURIAM. This cause is affirmed upon the opinion of the court below.
(156 Fed. 1.)
BUTLER BROS. SHOE CO. v. UNITED STATES RUBBER CO.
(Circuit Court of Appeals, Eighth Circuit. October 25, 1907.)
No. 2,496. 1. EQUITY-PLEA OR ANSWER-OBJECTIONS—WAIVER.
Filing a replication and taking the proofs waives no substantial insufficiency of the facts set forth in a plea or answer to constitute a defense.
[Ed. Note.-For cases in point, see Cent. Dig. vol. 19, Equity, 88 664,
665.] 2. CORPORATIONS-FOREIGN CORPORATION-POWER OF STATE TO EXCLUDE OR
CONDITION ITS BUSINESS Not UNLIMITED-EXCEPTIONS.
The broad statement in Paul v. Virginia, 8 Wall. 168, 181, 19 L. Ed. 357, that a state may exclude a foreign corporation from business, or may condition its admission to do business within its borders by such terms as it may deem proper, has been qualified by the decisions of the Supreme Court, and the following exceptions to it are established:
(a) Every corporation empowered by the state of its creation to engage in interstate commerce may carry on that commerce in sound and recognized articles of commerce in every other state in the Union. Every prohibition, obstruction, or burden which the other states attempt to impose upon such business is unconstitutional and void.
(b) Every corporation of every state which is in the employ of the United States, has the right to exercise the necessary corporate powers and to transact the requisite business to discharge the duties of that employment in every other state in the Union, without let or hindrance from the latter.
(C) Every corporation of every state has the absolute right to institute, maintain, and defend in the federal courts, and to remove to those courts its suits in any other states in the cases and on the terms prescribed by the acts of Congress.
[Ed. Note.-For cases in point, see Cent. Dig. vol. 10, Commerce, $$
7, 100; vol. 13, Courts, § 860; vol. 42, Removal of Causes, § 64.] 3. SAME-PROHIBITION WITHOUT DISCRIMINATION OF ALL BUSINESS, UNCON
STITUTIONAL AS TO INTERSTATE COMMERCE.
Where a corporation of one state is engaged in both interstate and intrastate commerce in any other state, the prohibition or the conditioning by the latter state of its exercise of its right to do business within its borders, without discriminating between that which constitutes interstate commerce and that which constitutes intrastate commerce, is uncoustitutional and void, so far as it relates to the former.
4. COMMERCE–INTERSTATE COMMERCE IN SOUND ARTICLES FREE FROM STATE
REGULATION WHERE CONGRESS HAS NOT ACTED.
Interstate commerce in sound and well-recognized articles of commerce must be free, and any prohibition, obstruction, or burden of it by a state by any method is unconstitutional. Such commerce may not be regulated by a state at all. The exclusive power to regulate commerce among the states is vested in the Congress.
(Ed. Note.—For cases in point, see Cent. Dig. vol. 10, Commerce, $ 7.] 5. SAME-FACTORAGE CONTRACTS BETWEEN CITIZENS OF DIFFERENT STATES
TRANSACTIONS OF-CONDITIONAL SALE AND FACTORAGE CONTRACT DISTINGUISHED.
A manufacturing corporation of New Jersey made annual contracts with a corporation of Colorado engaged in the wholesale business in that state, whereby the former agreed to send from its mill and warehouse in Eastern states to the latter in Colorado, upon its orders, rubber boots, shoes, and other rubber goods during the year for sale, and the latter agreed to receive, to store, and to sell them in its name as consignee, and to pay to the former for the goods which the latter sold certain agreed prices, which were so much less than its selling prices to its customers that it secured thereby the expenses of carrying on the business and a liberal commission. The contracts provided that the latter was appointed the agent of the former to sell the goods, that the latter should make advances when requested, that to the amount of its profits it guaranteed the sales, that the goods and their proceeds, until the latter paid the agreed prices, should be the property of the former, and that the latter assumed the risk of the receiving, storing, handling, and selling. The manufacturing corporation shipped the goods as agreed. It had no office, warehouse, or place of business in Colorado, and it neither incurred nor paid any of the expenses of receiving, storing, and selling the goods. The Colorado corporation ordered, received, stored, and sold the merchandise at its own expense, in consideration of the factorage secured to it by the contracts. Held:
(a) The agreements were factorage contracts, and they were not contracts for conditional sales.
(b) The making of the contracts and their performance by the New Jersey corporation were transactions of interstate commerce, which could not be lawfully prohibited or trammeled by the legislation or action of the state of Colorado.
[Ed. Note.-For cases in point, see Cent. Dig. vol. 43, Sales, § 1335 ;
vol. 10, Commerce, $ 29.] 6. CORPORATIONS-FOREIGN CORPORATION-CONSTITUTION
STATUTES COLORADO REGARDING, IF LITERALLY CONSTRUED, UNCONSTITUTIONALTHEY SHOULD BE INTERPRETED TO RELATE TO INTRASTATE COMMERCE AND THE COLORADO COURTS ONLY.
The Constitution and statutes of Colorado by their plain terms prohibit every foreign corporation from doing any business whatever, from exercising any corporate power, and from prosecuting or defending any snit in that state, unless it files certain writings, pays certain fees to certain officers and an annual license fee of 2 cents for each $1,000 of its capital stock, and they provide that a failure to pay the annual license fee shall constitute an absolute defense to all actions and proceedings brought by it in any court within the limits of the state, upon any transaction growing out of such business, until the license fee is paid. Held :
(a) This legislation, if literally interpreted, is unconstitutional and void, in so far as it prohibits or conditions the exercise by a corporation of another state of its right to carry on the business of interstate commerce in Colorado, and in so far as it prohibits or limits the exercise in that state by a foreign corporation of its right to institute and defend in the national courts suits for and against it arising out of that commerce.
(b) The true construction of this legislation is that it was intended to govern intrastate commerce and suits in the state courts in Colorado only,