skilled in the art to reach the patented invention certainly, directly, and without the necessity of any experiment, and this rule is enforced with peculiar strictness when the alleged disclosure is found in a foreign patent or publication.' Hoskins Mfg. Co. v. General Electric Co., D.C., 212 F. 422, 429; Seymour v. Osborne, 11 Wall. 516, 555, 20 L. Ed. 33; Berry v. Wynkoop-Hallenbeck-Crawford Co. [2 Cir.], 84 F. 646, 651, 28 C.C.A. 505; Westing-house Air-Brake Co. v. Great Northern Railway Co., [2 Cir.], 88 F. 258, 263, 31 C.C.A. 525; Consolidated Car-Heating Co. v. West End St. Ry. Co., 85 F. 662, 665, 29 C.C.A. 386."
Again in Davies v. Coe, 65 App. D.C. 345, 83 F.2d 602, 603, the Court restated the rule: "The disclosure of a foreign patent is to be measured not by what may be made out of it, but what is clearly and definitely expressed in it. In re Ek, 57 App.D.C. 203, 19 F.2d 677; Carson v. American Smelting & Refining Co. [9 Cir], 4 F.2d 463."
In American Stainless Steel Co. v. Ludlum Steel Co., 2 Cir., 290 F. 103, 106, the Court said: "* * * it requires more than prophecy of what may be done, or than declarations of what ought to be accomplished, to make a good patent reference, not to speak of anticipation. It is necessary to show with reasonable certainty how the desired result can be accomplished." (Italics supplied)
In Skelly Oil Co. v. Universal Oil Products Co., 3 Cir., 31 F.2d 427, 431, the rule is again stated that: "Inferences as distinguished from disclosures, especially when drawn in the light of after events, cannot be accepted as a basis of anticipation. A patent relied upon as an anticipation must itself speak."
In Carson v. American Smelting & Refining Co., 9 Cir., 4 F.2d 463, 465, the rule as to anticipation in a foreign patent was forcefully stated: "A foreign patent is to be measured as anticipatory, not by what might have been made out of it, but by what is clearly and definitely expressed in it. An American patent is not anticipated by a prior foreign patent, unless the latter exhibits the invention in such full, clear, and exact terms as to enable any person skilled in the art to practice it without the necessity of making experiments."
The above precedents are quoted to illustrate how our courts have measured the claims on foreign patents set up as anticipations and references. The more the lines 86 to 93 are studied, the more one is convinced that they do not meet the tests laid down in the cases referred to.
In passing on the language in issue here, which, if sufficient in certainty, would serve as an anticipation, it should be borne in mind that we are not considering solely the preferred embodiment of the British patent but a variation or a modification of what the patentee claimed as his perfected device. This of itself reasonably suggests the inquiry whether he really knew or believed his modification in fact was a meritorious claim, or whether he was guessing, prophesying or hoping that it might be.
Turning again to the words "effective to scavange the products of combustion formed at both points of interruption", no doubt another aperture would serve to exhaust the gases at each port, but the plaintiff's device does more than that, and it cannot be surmised by reading the lines 86 to 93, that the patentee, when he wrote the modification, was certain that the vent of the gaseous elements would be equal; that the arcs would be separated, and the oil itself would serve as a barrier between the arcs.
This court is not unmindful of the rule that the decisions of the Patent Commissioner are presumed to be fair, correct and legal, yet this court, in a de novo hearing in equity on the merits of the controversy, feels that such a presumption alone should not serve to deny the applicant the fruits of his genius and labor. No one questions the soundness of a presumption that officials do their duty, and there has been no charge here that their findings are other than fair and correct as they saw the facts. None of us, however, can be said to be free from possible error, and in passing on the merits of causes like this, the language of Judge Learned Hand in the case of Kirsch Mfg. Co. v. Gould Mersereau Co., Inc., 2 Cir., 6 F.2d 793, 794, is impressive as he refers to one "skilled in the art": "An invention is a new display of ingenuity beyond the compass of the routineer, and in the end that is all that can be said about it. Courts cannot avoid the duty of divining as best they can what the day to day capacity of the ordinary artisan will produce. This they attempt by looking at the hostory of the art, the occasion for the invention, its success, its independent repetition at about the same time, and the state of the underlying art, which was a condition upon its appearance at all. Yet, when all is said, there will remain cases when we can only fall back upon such good sense as we may have, and in these we cannot help exposing the inventor to the hazard inherent in hypostatizing such modifications in the existing arts as are within the limited imagination of the journeyman. There comes a point when the question must be resolved by a subjective opinion as to what seems an easy step and what does not. We must try to correct our standard by such objective references as we can, but in the end the judgment will appear, and no doubt be, to a large extent personal, and in that sense arbitrary."
After much consideration and examination of precedents affecting the issue presented here, this court is of the opinion that the disclosure in the modification of the preferred embodiment of the British patent 371,340, lines 86 to 93, page 1, do not teach the invention of the plaintiff Nye, and do not bar the granting of a patent to him on his claims 14, 16, 20, 21 and 22, as set forth in his application serial number 15,999. An order to this effect has been entered.
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