side of said decks each provided with a laterally flexible portion adjacent the area of articulation of said sections, scrapers arranged to travel upon said decks between said flanges for the movement of material, an endless chain connected to said scrapers and transmitting movement thereto, means operative to drive said chain, and means for effecting adjustment of said adjustable section."
By disclaimer filed in the Patent Office on October 29, 1938, the assignee of the patent, the defendant in this case, filed a disclaimer defining in more limited terms the "conveyor means of the endless-chain type."
Arentzen utilizes two conveyors, a gathering element and a delivery element. The gathering conveyor slopes upwardly from the floor and delivers the material gathered at the forward end of the machine into a hopper in the discharge-end of the hopper, whence it is carried to the point of discharge. The charge of infringement is based entirely on the construction of the delivery section of defendant's Jeffrey L-400 loader. The defendant alleges that novelty rests in the Arentzen patent in the combination with an articulated conveyor, one section of which is adapted to swing laterally with respect to the other, in which the material-conveying means comprise an endless chain which extends around the floor or deck of the conveyor trough or channel so as to lie above and below the same in a plane substantially vertical thereto.
The defense is that the Arentzen patent is invalid because of the prior art disclosed in the two Morgan patents in suit, and that the disclaimer filed by defendant renders the patent invalid because of delay in filing it. It seems the defendant wrote the Jeffrey Manufacturing Company about the alleged infringement by Jeffrey of the Arentzen patent. Jeffrey, through its counsel, replied on May 1, 1936, contended that the Arentzen patent claims were completely anticipated by the two prior Morgan patents here in suit.
The plaintiffs' complaint in this case was filed August 25, 1936. The defendant's answer and counterclaim on the Arentzen patent were filed March 31, 1937. The disclaimer was filed October 29, 1938, and notice thereof was served on plaintiffs on February 1, 1939. We cannot find that this is undue delay in the instant case. No court has found the original claims of this patent invalid. As we view the law, the patentee was not obliged to disclaim any part of his claims until they have been passed upon by the highest court to which the case could be taken. See O'Reilly v. Morse, 15 How. 62, 56 U.S. 61, 121, 14 L. Ed. 601; Ensten v. Simon Ascher & Co., 282 U.S. 445, 454, 51 S. Ct. 207, 75 L. Ed. 453; Excelsior Steel Furnace Co. v. F. Meyer & Bro. Co., 7 Cir., 36 F.2d 447, 449. Therefore, we hold the disclaimer in the instant case to be timely, because no court, at the time the disclaimer was filed, had held the original claims of the Arentzen patent invalid. But, as the disclaimer was filed after the counterclaim was filed, it may be effective to deprive the defendant of costs on his counterclaim, if the court finds the claims, as restricted by the disclaimer, to be valid and infringed. See Ensten v. Simon Ascher & Co., supra.
The plaintiffs further urge the court to hold the claims of the Arentzen patent invalid, because the defendant has brought into his claims a new element, i.e., a particular type of endless-chain conveyor, towit, "a single endless chain that extends around said decks so as to lie above and below the same in a plane substantially vertical thereto." This, the plaintiffs claim, is adding a new element to the three claims in suit, which cannot be done, under the ruling of the Supreme Court in Altoona Publix Theatres v. American Tri-Ergon Corp. et al., 294 U.S. 477, 490, 491, 55 S. Ct. 455, 79 L. Ed. 1005. However, we cannot see that defendant has introduced a new element by its disclaimer. The endless chain was in the original specification, and, by the disclaimer, is limited to a particular type of endless chain.
Plaintiffs also contend that the Arentzen patent is invalid, because the disclaimer defines a different invention than that of the original patent.We cannot find that the disclaimer in the instant case does that. As we view the disclaimer, it limits the claims in suit to a specific type of endless chain, thereby bringing the disclaimer within the class where a claim is limited to a specific type of the general class to which it was applied.See Altoona Publix Theatres v. American Tri-Ergon Corp., supra.
As to the contention of the plaintiffs that the three claims of the Arentzen patent, as modified by the disclaimer, are invalid because the only novel element introduced rests in the particular type of endless chain used, which performs no new function in the combination, and therefore the claims are invalid under the doctrine of Lincoln Engineering Co. v. Stewart-Warner, 303 U.S. 545, 58 S. Ct. 662, 82 L. Ed. 1008, there is merit in this contention. As we view the case, Arentzen cannot, by inventing a new type of endless chain, or a new type of laterial swing of the rear section of an articulated conveyor, extend the monopoly of his invention to cover the entire field of loading machines by the mere use of a combination claim which combines his new or improved elements to old parts or elements which, when operated together, have no new function. His claim for invention should have been confined to the new element he introduced into the combination. As we have already said in regard to the Morgan patents, loading mechanisms were old in the art, and the plaintiff cannot recapture the old combination by merely changing the form of one or more of its elements. See Bassick Mfg. Co. v. R.M. Hollingshead Co., 298 U.S. 415, 424, 56 S. Ct. 787, 80 L. Ed. 1251; Lincoln Engineering Co. v. Stewart-Warner Corp., 303 U.S. 545, 549, 58 S. Ct. 662, 82 L. Ed. 1008.
We therefore conclude that defendant has not infringed the Morgan patents in suit, and that, even if it had, plaintiffs' laches would prevent any recovery, and that as to the Arentzen patent, by the subject-matter of defendant's counterclaim, we hold the claims of the patent to be invalid.
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