follows: "A spinning ring having an annular groove formed in the inner wall thereof and a radial opening extending outwardly from said groove, and an absorbent wick arranged within said groove and extending through said opening."
Claims 1 and 12, while adding some additional elements to the combination, differ mainly in using the expression an "annular disposed groove" instead of merely an "annular groove," and in calling for contact between the traveler and the wick.
Now, I think it plain that when Whiteley called the groove "annular" or "annular disposed" he meant a groove extending all the way around the inner surface of the ring. His specification and diagrams give no hint of any other kind. And I think it equally plain that when the Patent Office issued the letters it was upon that understanding. The file wrapper history shows that Whiteley's original claims were drawn for a ring having an "helical, oblique or any other form of groove or grooves." This claim was rejected as fully met by Towers (1,583,431) and Evans (1,742,241). Now, Towers was the patent which had an elongated slot, the opening of which together with the surface of the wick in it of course conformed to the curve of the ring.Functionally, that is so far as getting oil from the wick to the wall of the ring and the bearing of the traveler is concerned, there is not the slightest difference between the slot and the groove, and the Patent Office, when it rejected a claim for "any other form of groove" upon a reference which disclosed an elongated slot, must have been of that opinion. Whiteley met the objection by canceling his claims and substituting claims which called for annular and annular disposed grooves. He also canceled a portion of his specification which described his invention as comprising a wick contained "in an internal annular or other groove," and substituted a new portion which contained the statement, "it is essential that the wick (hereafter fully described) shall encircle the inner part of the ring." In other words, the Patent Office held that the slot of the Towers patent, while it was the equivalent of a groove, was not annular or annular disposed, and the patent was granted upon the agreed interpretation that those terms meant a groove going all the way around the ring. Apart from the proceedings in the Patent Office, that would certainly be the natural construction, and it requires a good deal of straining to say that a groove extending over possibly ten degrees of a circle is ring-shaped, which is what the term annular means.
So construed, the defendant does not infringe the patent either in his one-spot or two-spot ring. The "spot idea" is plainly quite outside the Whiteley theory of lubrication; a fact which seems to be in line with the plaintiff's own views of the matter, expressed in advertisements in which it again and again insists, for example, that "Eady ring lubrication is utterly different from one-spot lubrication," or "Our exclusive patented design gives lubrication all around the ring instead of in only one spot," and similar statements.
If another reason for noninfringement were necessary I should not hesitate to hold that one is to be found (so far as claims 1 and 12 are concerned) in the matter of contact between the traveler and the wick. When Whiteley calls for such contact he means that the bearing point of the traveler comes fairly against the surface of the wick. In fact, he points out in his specification that he makes his annular groove slightly oblique so that "it will make contact with the traveller across practically its whole bearing surface during each revolution."
It is extremely doubtful whether the defendant's device gives any contact whatever between the traveler and the wick. There is no difficulty in accepting the defendant's view that the ordinary seepage of oil from the wick, perhaps assisted by the windage of revolution, is ample to lubricate the ring surface.There is no doubt that the defendant intended and tried to avoid contact. It may be that its traveler, as it revolves, touches what were called the "whiskers" or fine filaments extending from the wick; but this is certainly not what is meant by the traveler "extending across said groove so as to contact with the absorbent wick," as stated in the claims.
In the Powrie patent the problem was, as has been suggested, to work out a way of using the Whiteley patent, with its allaround lubrication and rather deep groove, in connection with thin rings. To do this it was necessary to take out whatever stiffening had been used for the wick and find some other way of holding it in place. Hence the idea of lacing the wick in and out through holes drilled in the ring, which requires the use of short segmental grooves in the place of one groove extending all the way around.
I do not know why this thought would not have occurred to any person skilled in the art who was given the job to do. As a matter of fact, the only prior spinning ring lubrication patent in which this problem had arisen solved it in the same way. Evans had a wick which had to be held in place because it was on the under side of the ring and would fall out. He held it up by lacing. The expedient is almost too simple to make it proper to say that Powrie combined the Evans patent with Whiteley, because that would imply that the idea might not have been hit upon without resort to them. It is certainly not an inventive advance.
In addition, there is no harm in saying that if the patent were valid it would not be infringed by the defendant's structure. The claims (1, 2, and 4 are in suit) are not to be construed any more broadly than Whiteley's.If the Patent Office proceedings be examined it will be seen that, in granting Powrie his patent, the Office held him inexorably to the idea of a wick threaded in and out of grooves. The applicant was compelled to cancel claims calling for a wick threaded in and out of a ring around or partly around the interior surface thereof and a ring with a groove or grooves and a wick threaded in and out of said groove or grooves. In his drawings he had a Fig. 8 which showed exactly the defendant's structure and, after canceling the claims referred to, he tried again with a new one to the same general effect, pointing out that unless it was granted he would "not secure exclusive rights as to the device shown in Figure 8." This claim was rejected, however, upon the same references with the suggestion that the applicant could appeal if dissatisfied. The applicant then canceled. Of course Fig. 8 should have come out of the drawings, because there was no claim left to cover it, but it was apparently overlooked.
Here we have an interpretation on the claims by the Patent Office, fully acquiesced to by the applicant, which limited them to one wick, all around the ring, threaded through openings in a multiplicity of grooves, and which excluded the defendant's device not only in words but by reference to a drawing; excluded it, too, after the applicant had pointed out that the interpretation he asked for was necessary to give him rights in the structure represented by the diagram. The intention could not have been plainer had the applicant brought one of the defendant's structures into the Patent Office and agreed to its exclusion from his claims as a condition for the grant of the patent.
Conclusions of Law
(1.) The defendant's devices in evidence do not infringe claims 1, 10, and 12 of the Whiteley patent.
(2.) Powrie, 1,899,635, is invalid for want of invention.
(3.) The defendant's devices in evidence do not infringe claims 1, 2, and 4 of the Powrie patent.
The validity of Whiteley 1,781,828 is not determined.
No finding or conclusion is made upon the question of the priority of invention as between Powrie and Aldrich.
The bill may be dismissed, with costs.
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