The opinion of the court was delivered by: MCDUFFIE
This is a suit brought under the provisions of Section 4915, Revised Statutes, 35 U.S.C.A. § 63, by the plaintiff, Henry V. Nye, against Conway P. Coe, Commissioner of Patents, defendant, in which it is sought to have the Court find that plaintiff is entitled, according to law, to receive a patent for his invention as specified in claims 14, 16, 20, 21, and 22 of his application, Serial No. 15,999, filed April 12, 1935, as set forth on pages 2 and 3 in the Amended Complaint.
It is admitted that the disposition and showing in Figure 4 of the preferred embodiment of the British patent 371,340, upon which the defendant relied as a bar to the issuance of a patent to the plaintiff in this cause, does not of itself bar the grant of a patent to plaintiff on his claims 14, 16, 20, 21 and 22.
It is likewise admitted that the Hobson patent, U.S. 2,159,829, is no bar to the relief sought by the plaintiff and therefore the only question in this case is whether or not the modification of the preferred embodiment in lines 86 to 93, page 1, of the British patent 371,340, teach the invention of plaintiff's claims 14, 16, 20, 21 and 22.
Lines 86 to 93, page 1, of the British patent are as follows: "In a modification of the preferred embodiment of the invention, an aperture in the enclosing box is provided adjacent each of the pairs of cooperating contacts so that the pressure developed within the box may be effective to scavange the products of combustion formed at both points of interruption."
The patent sought by plaintiff in his above entitled application is for an invention including an improved oil circuit breaker provided with oil-immersed series-connected pairs of arcing contacts within a baffle structure forming an enclosure confining the oil therein. Freely venting (similar or identical) ports are provided in the baffle structure (enclosure) immediately adjacent each pair of separable contacts thus providing immediate venting of the electrically conductive gases and metallic vapors formed by the arcs. By providing similar or identical ports similarly positioned relative to the separable arcing contacts, these conductive gases and metallic vapors are immediately vented equally from each arcing region, thereby maintaining the oil between those arcing regions as a barrier definitely assuring isolation of one arcing region from the other. Such isolation of the arcing regions prevents intermixing of the highly conductive gases with oil that is utilized for extinguishing the arc, so that the (electrically insulating) oil would remain a mechanical barrier between the pairs of contacts and the arcs be drawn down into intimate contact with the cool oil.
By providing equal venting and the consequent assurance of an effective barrier between the arcing regions in a circuit breaker, the plaintiff has obtained therein a greater uniformity of operation than was obtainable in prior art circuit breakers. By providing for immediate and free venting of the conductive gases, a circuit breaker embodying the invention of claims 14, 16, 20, 21 and 22, was found to be superior to circuit breakers of the prior art as typified by the cross blast circuit breaker of the British patent 371,340 relied upon by defendant. This superiority is evidenced by operation with less arcing time, arc length, arc energy and pressure (as admitted by the defendant, T. 124 to 137).
As shown by plaintiff's Exhibits 2, 3, 4 and 5 and the testimony (T. 32 to 36), this invention developed not from a cross blast type of breaker shown in British patent 371,340, but instead from the explosion pot type of circuit breaker. By providing for immediate and free venting of the electrically conductive gases and metallic vapors, pressures could be reduced and extinguishing action of the oil on the arc could begin immediately without wasting the time consumed by drawing the arc into the throat as in the explosion pot type of circuit breaker. This action was provided, as shown in plaintiff's Exhibits 2 and 3, by placing a port in the enclosure surrounding the arcing region immediately adjacent the separable contacts.
This concept of invention was applied to a two-break circuit breaker as shown in plaintiff's Exhibit 3 by placing one freely vented explosion pot around each pair of separating contacts (T. 34). It was then conceived that a single enclosure could be provided for two pairs of series-connected arcing contacts in a single enclosure with the mechanical barrier replaced by a barrier of oil, if the ports immediately adjacent the pairs of separating contacts were so positioned and related in size so that equal venting was obtained therethrough (T. 36). This concept is embodied in Plaintiff's Exhibit No. 5 and any seeming resemblance to the structure of Fig. 5 of British patent 371,340, is entirely coincidental, as the cross blast structure in Fig. 4 was developed on an entirely different theory and principle of operation, that is, as a refinement of prior circuit breakers utilizing interaction of one arc on another.
The preceding four paragraphs constitute what the court believes to be an accurate and fair description of the plaintiff's invention, and were copied from his brief.
Upon a casual reading of the modification of the preferred embodiment of the British patent 371,340, the language impresses one as an anticipation of the plaintiff's claim, but upon a careful study and analysis of that language, together with Figure 4 of the British patent referred to, one becomes more and more convinced that the writer of the modification was in a field of speculation or prophesy. It becomes more and more difficult, and indeed impossible to read in lines 86 to 93 a full and clear disclosure of the Nye invention defined by claims 14, 16, 20, 21 and 22, as to both structure and contemplated functional utility such as to warrant a denial of plaintiff's right to these claims.
It is not difficult to understand how an examiner could read in the modification of the British patent the anticipation claimed for it, after actually having before him the plaintiff's invention. This, however, would mean the exercise of "hindsight" as that rather expressive word was used by Mr. Justice Stephens in the case of Becket v. Coe, 69 App.D.C. 51, 98 F.2d 332, 336, in which he said: "With the Becket application before us it is possible to look back upon the Hadfield (French) and Commentry (French) patents and to say that they suggested what he found, but such hindsight should not, we think, defeat his application. Hadfield and Commentry seem neither to have sought nor to have found an alloy which is both stainless and deep-drawing, and though it be true that the scope of their ranges embraces the claims of Becket, this speaks of the extent of their desire rather than of the breadth of their discoveries."
The cross blast theory was undoubtedly in the mind of the British patentee, and the additional aperture may have been provided in the top of the baffle, "adjacent the opposite pairs of contacts". No one could say that the modification contains words clearly indicating the isolation of one arc from another, and equal venting through apertures identical in size, the creation of a barrier between the arcs by the oil itself, and the results in more efficient circuit ...