to "15-25 times per minute." Obviously the original application contained a typographical error. Apart from this, however, an amendment is not new matter requiring supplemental oath, if it contains something which can be deduced from the original specification. It seems perfectly obvious that the original specification, which provides against a possible heat of friction sufficient to melt the lead cannot limit the "relatively low speed" of the claim to any such absurdly low rate of revolution. Not only this, but the whole idea of the specification, and the claim, is the production of powder by "abrasion and pulverization of the lumps." It needs no expert testimony to see that one revolution of a 60-inch drum every three or four minutes would produce so little powder that the method would be, to all intents, inoperative. The whole specification flatly negatives any such rate as originally given, and a rate of revolution, relatively slow, but sufficient to abrade the surfaces of the lead and cause them to get hot may be fairly deduced from it and is inherent in it.
As was said in General Electric Co. v. Cooper Hewitt Electric Co., 6 Cir., 249 F. 61, 63, 64, "The Patent Office has made 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."
The defendant's operation infringes the process claimed in Claim 2 of '149. The last step of the process claimed is "removing the said powder from said vessel by means of said current of air." Dr. Wilson's report shows that the greater part of the defendant's product will, when the air blast is shut off, ultimately leave the rotating vessel by gravity or by pressure from its remaining contents. However, the mere fact that the function of removal can be performed without using air by no means proves conclusively that air, when used, does not perform that function to a substantial degree. Moreover, Dr. Wilson's report also shows that the quantity removed by the defendant's air current is by no means negligible. The defendant's system of dust collection is also an indication that the amount is more than a negligible portion.
Claim 2 of patent '419 is therefore held valid and infringed.
Claim 1 does not include the air blast. Unless limited by the specification, it is invalid by reason of the prior art. I do not think it possible to amend it by the specification in so fundamental a manner, and therefore it is held invalid.
The statements of fact and law contained in the foregoing opinion may be taken as special findings and conclusions.
Judgment for the plaintiff.
Additional Findings and Conclusions.
In response to the plaintiff's requests, the following additional special findings of fact and conclusions of law are made:
Findings of Fact.
1. The application for United States Letters Patent No. 1,584,149 was filed January 30, 1922, and the patent issued May 11, 1926, to Genzo Shimadzu, now the lawful owner, co-plaintiff herein.
2. Northeastern Engineering Corporation, co-plaintiff herein, is the exclusive licensee under said patent.
3. The invention described in the United States Letters Patent No. 1,584,149 discloses a process which involves the use of an air current. Although it does not, in express language, refer to or suggest the oxidizing effect of the air upon the lead, that reaction is inherent in the disclosure. In the light of the disclosure, no more than ordinary operating skill is needed to supply the elements of control of air current and temperature.
4. The Japanese Patent No. 42,563, is directed to a process which consists in utilizing merely an inactive gas to remove product from the mill.
5. Claim 1 of the United States Letters Patent No. 1,584,149 does not specify any air blast.
6. The process set forth in Claim 2 of United States Letters Patent No. 1,584,149 is not for the same invention as disclosed or claimed in Japanese Patent No. 41,728 or Japanese Patent No. 42,563.
7.The invention of Claim 2 of United States Letters Patent No. 1,584,149 is not disclosed by the United States Letters Patent to Bailey No. 846,384, to Fullman No. 1,174,975, or Peters 1,441,168, or the French Patent to Thibault No. 494,270, or the British Patents to Bischoff No. 11,602 of 1890 and No. 13,202 of 1898.
8. The invention of Claim 2 of United States Letters Patent No. 1,584,149 was not patented or described in a printed publication in this or any foreign country prior to the filing of the application.
9. The invention of Claim 2 of United States Letters Patent No. 1,584,149 is not disclosed in any of the prior art.
10. The invention of Claim 2 of United States Letters Patent No. 1,584,149 was not embodied in the alleged use of the Tudor Mill.
11.The steps set forth in Claim 2 of United States Letters Patent No. 1,584,149 are operative, have utility, and constitute patentable invention.
12. The application for United States Letters Patent No. 1,584,149 as originally filed discloses a speed of rotation for the mill sufficient to abrade the surfaces of the lead lumps introduced into "a slowly ratating vessel." A speed substantially greater than 15-25 rotations per hour is inherent in and plainly indicated by the original specification. The change in the application in reference to the speed, made January 4, 1926, simply corrected a typographical error. Such change in the application was not pleaded or raised as a defense nor presented prior to the hearing after remand, nor referred to in any of the oral or printed arguments prior thereto.
13. In the operation of the defendant's process it is necessary to introduce a current of air into the rotating vessel, one of the steps in the process set forth in Claim 2 of United States Letters Patent No. 1,584,149.
14. Powder formed in defendant's mill is removed therefrom by the current of air employed in defendant's process.
15. Defendant has since June, 1921, been using a process embodying all of the steps set forth in Claim 2 of United States Letters Patent No. 1,584,149.
16. The product of defendant's process is a finely divided chemically reactive lead powder of such fineness and activity as to be readily changed chemically on contact with air.
17. The product of defendant's process is that resulting from the employment of the process set forth in Claim 2 of United States Letters Patent No. 1,584,149.