
    377 F. 2d 560
    FARRELL MARINE DEVICES, INC. v. THE UNITED STATES
    [No. 322-60.
    Decided April 14, 1967]
    
      
      Allen Kirkpatrick, attorney of record, for plaintiff. James D. Dooley, and Cushman, Darby <& Cushman, of counsel.
    
      Joseph V. Colaianni, with whom was Assistant Attorney General Barefoot Sanders, for defendant.
    
      • Before Cowen, Chief Judge, Laramore, Dureee, Davis, Collins, Skelton and Nichols, Judges.
    
   Per Curiam:

This case was referred to Trial Commissioner George Willi with, directions to make findings of fact and recommendation for conclusions of law. The commissioner has done so in a report and opinion filed on December 30,1966. On February 28,1967, plaintiff filed a “notice of termination” stating that no exceptions to the commissioner’s report or supporting brief will be filed by plaintiff and, on March 6,1967, the defendant filed a motion that the court approve and adopt the commissioner’s findings of fact and recommended conclusions of law. Since the court agrees with the commissioner’s opinion, findings and recommended conclusion of law, as hereinafter set forth, it hereby adopts the same as the basis for its judgment in this case without oral argument. Plaintiff is therefore not entitled to recover and the petition is dismissed.

OPINION OP COMMISSIONER

Willi, Commissioner: This is a patent suit under 28 U.S.C. § 1498, in which plaintiff seeks reasonable and entire compensation for the United States’ unauthorized use of a patented invention. Plaintiff alleges infringement of claim 2 of U.S. Patent No. 2,707,928, entitled “Ship’s Hatch And Cover,” which issued to Valdemar C. Farrell, plaintiff’s president and controlling shareholder, on May 10,1955. The application had 'been filed by him, on January 9, 1951. Plaintiff, a Delaware corporation, acquired full ownership of the patent in suit by a valid assignment from Valdemar Farrell made more than six years before institution of the present suit.

Applying controlling legal principles to the facts of this case, as detailed in the findings of fact accompanying this opinion, it is concluded that plaintiff is not entitled to recover. Tbe claim, in suit is invalid if accorded the breadth necessary to encompass either type of construction accused herein. If, on the other hand, the claim sued on is ascribed the more limited meaning essential to its validity in the light of relevant prior art, the accused constructions do not infringe. .

Structural Evolution of Ships' Hatch Covers

An important aspect of the profitable operation of a cargo-carrying merchant ship is the minimization of time spent in port for loading and unloading, during which period no revenue is produced. Accordingly, the merchant shipping community has long been interested in means and methods of facilitating and expediting the performance of these functions. One facet of the problem to which considerable attention has been devoted is the matter of efficiency in the removal of the covers used to seal the hatch openings on the top, or so-called weather deck and on the interior or ’tween decks. This action is concerned only with the hatch covers used on the weather decks of certain dry cargo ships owned by or built for the Government.

Various maritime regulations have long required that all weather deck hatches be equipped with a raised steel coaming. A coaming is simply an upright rim, customarily extending nine inches above the surrounding deck surface, that forms a border around the entire hatch opening which is usually rectangular in form, running from fore to aft.

Prior to World War II the type of weather deck hatch cover in general usage consisted of a series of wooden beams spanning the hatch openings and seated in sockets provided on the inside of the coaming. Wooden planks were then laid across the beams and finally a canvas tarpaulin was stretched over the solid surface provided by the planks and made snug by a collar fitted over the outside of the coaming. Both the placement and removal of this type cover were extremely time-and-labor-consuming operations. Moreover, experience in the war demonstrated that ships so equipped were extremely vulnerable to torpedo damage.

Though United States and foreign patents had 'been periodically issued from the early 1900’s for sectional steel batch covers that were removable by various means, it was not until the era of new-ship construction following World War II that watertight weather deck covers of that general type became extensively employed.

Although differing in the means and methods for removal from the hatch opening, the new-type covers were all of the same basic configuration. The cover sections were fashioned in the manner of a series of steel bulkheads of sufficient width to span the hatch opening to be covered. On the underside of the outboard edges of the several sections, the number of sections depending upon the length of the hatch involved, was affixed a resilient gasket material that seated on the ridge or uppermost edge of the upright coaming bounding the perimeter of the hatch opening. A watertight seal was then obtained by manually bolting the outside edges of the cover sections to the coaming. This process is referred to as dogging.

Removal of the cover sections for cargo loading or unloading was typically achieved by a wheel and track arrangement. The track consisted of a 'horizontal ledge mounted on the upper portion of each of the two outboard sides of the coaming. These ledges ran the entire length of the hatch and parallel to both the deck surface and the ridge of the coaming. The cover sections were fitted with wheels mounted in a fixed downward position on the sections’ outboard sides so as to rest on the coaming ledge and support the underside of the sections somewhat above the coaming ridge. In this position the cover sections, hinged together at their intermediate points of joinder across the hatchway, with the outside edge of one end section hinged to the coaming at the end of the hatch (the opposite end section being free), could be rolled clear of the hatch opening and folded together in an upright position at one end of the hatch. The pulling force required for this operation was supplied by the ship’s cargo tackle and winches. If the length of the hatchway was such that more than three sections were required to cover it, the section located at each end of the hatch was hinged to the coaming so that half of the sections could be folded clear at one end of the hatch and the remaining half at the other. The free ends of the two groups of hinged sections met across the center of the hatchway.

With the cover sections extended in a horizontal plane over the hatch opening, their respective supporting wheels resting on the coaming ledges held the underside of the sections ajar of the coaming ridge, as previously noted. To permit the sections to descend until resting on the coam-ing ridge, a slot or opening was provided in the coaming ledges at a point directly under the position occupied by each cover wheel when the sections were fully extended in horizontal position. The number of cover wheels, and corresponding ledge openings, varied with the number of cover sections employed. In any event, the conventional method of supporting, lowering and elevating the cover wheels at the ledge-opening points involved the placement of a manually operated screw jack or similar mechanism, either mounted to the side of the coaming or upright on the deck surface, directly below each of the ledge openings.

Arrangements of the type described above were in relatively wide usage and well known to Valdemar Farrell when, in late 1948 or early 1949, he first turned his attentions to the development of mechanical means by which the manual dogging down of seetionalized steel hatch covers and the manual raising and lowering, called jacking, of individual cover wheels or sets of cover wheels could be altogether eliminated.

The Patent and Claim in Issue

The Farrell patent, applied for January 9,1951 and issued May IQ, 1955 after extensive prosecution before the Patent Office, contains a total of five claims, with only claim 2 involved in this suit.

Claim 2, construed in the light of the specification, as it must be, discloses a rectangular hatch bounded by a coam-ing (which the drawings depict as recessed into the deck rather than extending above it). A slotted ledge is mounted on at least two opposite sides of the coaming to receive the wheels attached to the outboard sides of the several cover sections that come to rest on the ridge of the coaming when the supporting wheels descend through the slots provided in the coaming ledges. Those features of the claim disclose nothing new and the plaintiff does not contend otherwise.

It is the ensuing language of the claim referring to a “unitary elevator means,” located along the coaming and beneath the ledge, by which the cover wheels are “simultaneously” lifted or lowered through the slots in the ledge that describes the novelty of the alleged invention.

Notably, the claim itself in no way defines the “means” referred to. Examination of the accompanying specification discloses, however, that the “unitary elevator means” for jacking, raising or lowering, the cover wheels to seat or unseat the cover sections on the coaming ridge consists of four I beams placed alongside the four sides of the hatch coaming and interconnected at three of the four corners by cables or chains. At the fourth corner a cable or chain is connected to the end of each of the two I beams converging there and the free ends of these cables or chains are run to a nearby winch. An I-beam belt around the outside base of the coam-ing is thus formed. This belt-like assembly is referred to in the specification as a “unitary elevator member.” The belt may be rotated in either direction about the coaming by running the winch in either forward or reverse. A cam-like ramp with a flat platform surface at the top is mounted on top of the I beams at every point on the beams that is directly under a slot in the two or more coaming ledges around the hatch. The height of the ramps is such that the platform surfaces just clear the underside of the coaming ledges and they are located so that each ramp is in the same position relative to the wheel-opening slot above it. When the I-beam belt is positioned so that the platforms atop the ramps are centered under the coaming ledge slots and the hinged cover sections extended in a horizontal attitude over the hatchway, the cover wheels are supported from below by the platform surfaces. In this attitude the undersides of the several cover sections are suspended above and clear of the coaming ridge. When the belt is rotated, the cover wheels descend the ramps until the weight of the cover sections is borne by the coam-ing ridge. In this position the cover is ready for final closing. As previously noted, this closure is conventionally effected by manually bolting the periphery of the cover to the coam-ing. The Farrell patent, however, proposes to dispense with the necessity for this separate time-and-labor-consuming operation by combining an automatic locking feature with the elevating and lowering function of the platform ramps. Ostensibly, this is done by mounting a horizontal pin on the square end of each platform surface, i.e., the end opposite the inclined ramp. Each of these pins is to be engaged by a keeper element mounted on the cover sections and extending downward through a small separate hole adjacent to each wheel-opening slot in the coaming ledge. When the I-beam belt is rotated in the direction causing the cover wheels to climb the inclined surfaces of the ramps, the pins are withdrawn from the keeper elements mounted to the cover. After the belt is rotated sufficiently in the opposite direction to lower the cover wheels down and clear of the ramps, a slight further rotation causes the horizontal pins to engage the hatch cover keeper elements.

Although the locking feature is not included in the claim in suit, it is a relevant factor in interpreting the claim because the “unitary elevator means” relied on as the touchstone of the claimed invention is a dual-purpose apparatus intrinsically concerned as much with the locking function as it is with that of elevating and lowering the cover sections. The extent to which the design and structure of the specified “means” are governed by locking rather than elevating objectives is noteworthy when the question is that of determining the equivalence of the apparatus to other devices designed and employed for the sole purpose of moving a cover to and from its seat on the coaming ridge. The Farrell cover was never built, even on a pilot-model basis.

The Accused Constructions

After the Victory Ship era of World War II, there was little activity in the construction of cargo vessels in domestic shipyards until the onset of the Korean hostilities demonstrated the need for a more modem and efficient merchant fleet. The U.S. Maritime Administration initiated a program of design and construction directed to the development of a vessel suitable for charter to private operators during peacetime while also readily adaptable to use as a cargo-carrying naval auxiliary in time of war.

In April 1950, the Maritime Administration completed its preliminary design work and in October of the same year awarded the Shipbuilding Division of the Bethlehem Steel Corporation a contract for the preparation of bidding plans and specifications for what was to become known as the Mariner-type ship. After receipt of this award, Bethlehem solicited hatch cover design and price proposals from various potential suppliers, including the Seaboard Machinery Corporation, a design and engineering concern without manufacturing facilities that had furnished many hatch cover installations by subcontracting the construction work. At the time, Seaboard had recently supplied the covers for a number of ships, including the U.S. passenger liners Constitution and Independence, both built in Bethlehem yards. The weather deck covers for all of these jobs were of the same general configuration, employing a raised coaming with a slotted ledge and wheel-mounted, hinged cover sections. The largest of the hatch openings required a four-section cover whereas the 40-foot main hatches on the weather deck of the Mariners required a six-section cover. The Seaboard four-section cover was built in two parts, each consisting of two sections hinged together, hinged to the coaming at each end of the hatch. The free ends of the two parts met at the half-way point of the hatch opening. A wheel was mounted on each outboard side of the free ends of the center cover sections. These wheels were mounted in offset position so that when the sections were extended in a horizontal plane preparatory to final closing, they came full abreast of each other at the mid-point of the coaming ledge. Two parallel slots were provided in the ledge to receive the wheels so that the cover could be lowered to its seated position on the ridge of the coaming. A platform arm, hinged at one end to the underside of the coaming ledge, was provided under each pair of ledge openings. Each of the arms was supported from the underside by a manually operated screw-type jack. In all instances, the covers were fastened down by a series of individual bolts or dogs located around the periphery of the cover.

In response to Bethlehem’s bidding solicitations, Seaboard initially proposed to supply covers of the same design, including provision for jacking, as those described above even though certain of the Mariner covers were oversize and therefore consisted of six sections rather than the usual four. Thus, according to the Seaboard proposals, the jacking function was to be achieved by the use of manually operated screw jacks.

It was during the time that Seaboard was formulating its design proposals for Bethlehem that Valdemar Farrell completed work on his application for the patent in suit and filed the application with the Patent Office. He thereupon promptly contacted the Maritime Administration in Washington in an attempt to promote the use on the Mariners of his hatch covers as well as other marine cargo-handling gear that he had earlier patented and perfected. As to the hatch covers, Maritime referred him to Seaboard as the likely supplier for the Mariner program. He was acquainted with the firm because of earlier business dealings with it. In late January 1951, he contacted Seaboard and disclosed the subject matter of his patent application. In addition, he produced and left with the Seaboard representatives, for consideration and review, a preliminary blueprint drawing showing a general outline of the essential features of his hatch cover, including the means for jacking and locking it. Within a week of this disclosure, Seaboard notified Farrell it was not interested in his design.

On February 7, 1951, at about the time of Seaboard’s rejection of the Farrell design, Bethlehem and four other domestic shipbuilders were each awarded Maritime Administration contracts for the construction of five Mariners. In March 1951, Seaboard was awarded subcontracts by the shipbuilders to furnish the hatch covers for all of the Mariners.

The weather deck covers ultimately furnished by Seaboaxd for 12 of the Mariners comprise one of the two categories of accused constructions involved in this case. The earliest Seaboard engineering drawings depicting the configuration of the jacking system used with those covers were completed in the period January-April 1952. The jacking apparatus was the first of its type that Seaboard had used and was essentially different from the individual screw-jack arrangement proposed in its 1950 and 1951 bidding submissions to Bethlehem. The changeover in jacking design occurred well after Seaboard’s discussions with Valdemar Farrell, as previously described.

The covers actually supplied by Seaboard, consisting of six sections for the main hatches and a lesser number for the smaller ones, are similar in all respects, other than jacking mechanism, to those previously sold by it and initially proposed to Bethlehem. Instead of only four cover wheels meeting at the center of the hatch at two jacking points, however, the oversize Mariner covers have four additional supporting wheels on each outboard side of the hatch. Other than that, the actual cover sections are conventionally equipped. Thus, the underside of the sections is fitted with a resilient gasket that seats on the steel coaming ridge when the cover is in its closed position. The cover is fastened down by the traditional method of manually bolting the sections to the coaming.

The apparatus for jacking the cover from its seated position, which according to the plaintiff is its infringing feature, consists of a series of steel plates cut to the same dimensions in the shape of a right triangle. Each plate serves as a supporting platform for a cover wheel. To do this, a plate is hinged at its right-angle corner to the underside of the coam-ing ledge at a point adjacent to a wheel-opening slot. Thus attached, the face of the plate is in a position perpendicular to the deck and parallel to the coaming with its uppermost edge serving as a wheel platform. The several plates on each outboard side of the hatch are interconnected by a horizontal bar to which each plate is attached by a pivot pin at its lower corner. With this arrangement, a back-and-forth lateral movement of the bar causes the platform surfaces of the plates to rise and fall beneath the wheel-opening slots. The force required to move the bar and thereby elevate the wheel-bearing platform surfaces to the plane of the coaming ledge is supplied by a cargo winch. Near one end of the hatch the horizontal linkage bar is attached to a lever arm by a pivot pin. In turn, the arm is attached by a pivot pin through one of its. ends to the underside of the coaming ledge. A short length of cable is attached to the free end of the arm and thence threaded through a deck-mounted pulley and up through an opening provided in the coaming ledge. The free end of the cable, which extends above and clear of the ledge about two feet when the cover is in a closed position, is fashioned into a loop which receives a cargo hook for pulling. When sufficient tension is exerted on this cable, the lever arm pivots about the pin attaching it to the underside of the coaming ledge and causes a lateral movement of the linkage bar which, in turn, causes the platform surfaces of the triangular plates to rise until they come up flush with the underside of the coaming ledge. This position is maintained by the manual insertion of a toggle pin through a hole provided in the linkage bar and into a similar hole in a fixed bracket plate mounted on the coaming. After the toggle pin is thus secured, the cargo hook is disengaged from the pulling wire and, after the same operation is repeated on each outboard side of the hatch, the hinged cover sections are supported clear of the coaming ridge by their attached wheels and may be folded into an upright stowed position at each end of the hatch while the loading or unloading of cargo is in process.

This jacking apparatus is exactly duplicated on each outboard side of the hatch and the two identical sets of gear are in no way physically interconnected as a part of the overall hatch or cover structure. Moreover, the evidence shows that in practice the sets of gear were operated independently of each other.

The second type of accused construction involved in this case is a hinged, sectional cover installed on various U.S. Navy cargo ships by the Piezo Manufacturing Co. and the Greer Marine Corp. It is agreed that the structures furnished by each of these two firms are identical for purposes of this suit.

The Piezo and Greer covers differ relevantly from the covers supplied by Seaboard for the Mariners only in the method provided for jacking. Instead of Seaboard’s mechanical linkage system, Piezo and Greer use ram-type hydraulic cylinders to raise or lower the cover wheels at the wheel-opening points in the coaming ledge.

The main weather deck hatches on the Navy ships are smaller than those on the Mariners so that only a four-section cover was required. Accordingly, the covers were built to part at the center of the hatch with two hinged sections, supported by two cover wheels at their free ends, folding toward each end of the hatch for upright stowage. As in the case of the cover used by Seaboard on the Constitution and Independence, the two wheels on each side of the hatch are mounted on the center cover sections in an offset position so that, when the cover was in a closed position, they come abreast of each other on the coaming ledge where a slot is provided for each. Because of this arrangement, both wheels can be supported by a single platform arm pivot-mounted on the underside of the coaming ledge. This arm is actuated from its underside by an upright hydraulic ram fastened to the deck underneath the coaming ledge. The two rams, one on each side of the hatch, are incorporated in a single hydraulic system so that by operation of a single control switch or valve they move up or down in unison. Both the Piezo and Greer covers rely on the traditional bolt or dog system for final closure and sealing.

Validity

A. The Prior Art

During prosecution of the Farrell patent, the Patent Office cited eighteen United States patents and nine foreign patents as indicating the state of the art.

In challenging the validity of claim 2, the defendant relies on twelve United States patents, three of which were cited by the Patent Office, and three British patents, one of which was cited by the Patent Office.

For validity purposes it is only necessary to consider three of the domestic patents urged by the defendant: Griffin '958, McGray '456 and '946, and Marinello '631.

Griffin '958 discloses the functional attribute of the unitary imseating of a circular, one-piece, submarine hatch cover. The entire perimeter is simultaneously raised from its seat on a sealing gasket by the interaction of mated cam-faced projections located around the edge of the hatch cover and on the surrounding hull. When the cover is rotated from within the submarine, preparatory to final opening, the shoulders of the cam surfaces cause a vertical movement of the cover thereby breaking the seal.

McGray '456 and '946, issued in 1909 and 1915, respectively, teach the use of removable, sectional hatch covers supported by wheels resting on coaming ledges on each side of the hatch opening. Moreover, the ledges are slotted at appropriate points to receive the wheels, in order that the cover sections may be lowered to a seated position in the coaming ridge. Below each slot in the ledge a screw-type jack is mounted in an upright position on the side of the coaming. These jacks serve as the supporting and elevating means for the cover wheels.

Marinello '631 is a more modern adaptation of the McGray principles to a removable cross-section of the roof of a sealed truck body. The removable section is the practical equivalent of a hatch cover section. The sides of the body are as the outboard sides of a hatch coaming. A horizontal ledge is mounted near the top of the body sides. The movable roof section has wheels mounted on each of its outboard sides. Slots are provided in the ledges at each point occupied by a wheel when the movable section is positioned directly over the roof opening. A vertical jack screw, bracket-mounted to the side of the body, is located directly below each ledge slot. A horizontal shaft and worm gear arrangement is mounted on each side of the truck body below the slotted ledge and simultaneously actuates all jack screws on each side of the body to raise or lower one side of the movable section off of or onto its seated and sealed position over the roof opening. The two side-mounted shafts that actuate the jack screws are not physically interconnected. Marinello calls for them to be operated either with a hand crank or by supplementary power such as an electric motor. Given the motors to power the shafts individually, it would be an obvious mechanical expedient to synchronize the two motors so that the shafts would operate in unison.

B. The Prosecution History

Plaintiff’s contention that the claim in suit should be ascribed a meaning as broad as the literal purport of its language will not withstand analysis.

A fundamental principle of claim construction is that a claim should be interpreted in the light of its file wrapper or prosecution history in the Patent Office. Graham v. John Deere Co., 383 U.S. 1, 33, 148 U.S.P.Q. 459, 473 (1966). Reference to such history, detailed in findings 42-53, infra, is illuminating in the present case.

Significantly, none of the 14 claims in the original application specified a simultaneous lifting of all cover sections off their seated position on the coaming rib. This particular characteristic or capability, now said to constitute the essential novelty of the claimed invention, was introduced by a new claim, numbered 15, added in October 1952, more than 21 months after the original application was filed. Parenthetically, it is noted that the addition of this claim closely coincided with the launching of the first of the Mariner ships. In any event, on February 19, 1954, the examiner rejected claim 15 with, the following explanation: “'Claim 15 is rejected as unpatentable over McGray ['767] taken with either Griffin ['958] or Donald ['429 — British]. To provide an elevator means along the hatch coaming of McGray would be a matter of choice since it is old to use an elevator for a like function as shown by each of the latter references. No new or unexpected result would be had by so doing.” (Finding 49, infra.)

On August 23,1954, after an interview with the examiner, the applicant canceled claim 15 and replaced it by a new claim 16 embodying the language contained in claim 2 as ultimately allowed. The applicant accompanied the newly filed claim 16 with a narrative statement setting forth the reasons supporting its allowance. After noting that claim 15 had been disallowed in part on the basis of Griffin (the submarine hatch cover patent previously described), the applicant offered the following explanation in rebuttal: “Griffin does show friction cam means for slightly lifting a cover to break the seal between the cover and the seat; however, he does not suggest the specific structure set out in the claim * * (Finding 50, infra.)

Thus, it is seen that the patentee elected to surmount the prior art obstacle of Griffin on structural rather than functional dissimilarities. He did not attempt to distinguish Griffin in terms of any difference between the result that it produced and that of his claimed invention. Candidly conceding that Griffin taught the simultaneous raising of an entire hatch cover from its seat, he denied that his invention was anticipated because of the unique structural means by which he achieved the same result.

The structural qualifications relied on by the applicant to secure allowance of a claim by the Patent Office cannot be thereafter disregarded as irrelevant.

C. Scope of the Claim

Reference to the specification strongly supports the interpretation of the claim language indicated by the prosecution history.

To support the broad, literal interpretation for which it now contends, plaintiff accounts for too little of the language of its claim when it describes the alleged invention in terms of a capacity “* * * for simultaneously lifting or lowering said supports and unseating or seating said cover preparatory to removing or closing said cover.”

The complete passage that includes the words selected by plaintiff reads as follows: “* * * a unitary elevator means along said hatch coaming beneath said ledge and engageable with said mobile supports when the latter extend through said openings for simultaneously lifting or lowering said supports and unseating or seating said cover preparatory to removing or closing said cover.” (Emphasis added.)

It is seen that the claim specifies that the result described by the language relied on by plaintiff is to be achieved by a “unitary elevator means” but it does not define that “means” in terms of structure, material or otherwise. 35 U.S.C. § 112 directs that such a claim “* * * shall be construed to cover the corresponding structure, material or acts described in the specification and equivalents thereof.” Eesort to the specification as a constructional aid in the present case is further commended by the fact that the claim in suit is a part of a so-called “paper patent” in a crowded field. Jones v. United States, 120 Ct. Cl. 747, 799-800, 100 F. Supp. 628, 658-59 (1951).

Though it does not contain the exact phrase “unitary elevator means,” the specification clearly defines this element of the claim. It provides: “An I beam is fitted at each side and each end of the hatch and their ends are joined together by flexible members, such as cables or chains, so that they form a continuous belt-like unitary elevator and locking member around the hatch coaming.” (Finding 53, infra.)

Accordingly, the disclosure of claim 2, to which presumptive validity properly attaches, must be limited in scope to a hatch cover having those structural components that are enumerated in the claim plus the capacity for simultaneous raising or lowering by an apparatus comisting of four interconnected I beams aroimd the hatch coaming or the eguiva-lent thereof. This is, therefore, the standard against which the accused constructions must be measured for infringement purposes.

Infringement

The problem of determining the equivalence of the accused constructions to the patented invention must be approached in the light of the long-established principle that where, as in this case, the art is crowded, the range of equivalents to be accorded the claimed invention is narrow. Soundscriber Corp. v. United States, 175 Ct. Cl. 644, 360 F. 2d 954, 149 U.S.P.Q. 640 (1966); Trusty v. United States, 132 Ct. Cl. 192, 199-201, 132 F. Supp. 340, 344, 105 U.S.P.Q. 474, 477 (1955), cert. den. 350 U.S. 975 (1956); Richardson v. United States, 72 Ct. Cl. 51, 65 (1931), cert. denied, 285 U.S. 543 (1932).

With respect to the Seaboard covers installed on the Mariners, it is conceded that the two linkage bars, each of which actuated the platform arms supporting the cover wheels on one side of the hatch, were not physically interconnected so as to necessarily operate in unison. Characterizing claim 2 as an “apparatus” claim, plaintiff insists that this is beside the point. It contends that the critical inquiry is whether the bars were capable of operation in tandem so that all wheel platforms moved as one. It cites two possibilities for such a synchronous operation.

To prove that the Mariner cover was intended to be raised or lowered as a unit, plaintiff points to a patent issued in 1957 to Mr. George Suderow, now deceased, Seaboard’s former chief engineer and the principal designer of the covers furnished for the Mariners. (Finding 28, infra.) Except for showing a sectional cover that folds away to the sides of a hatch rather than to its ends, the Suderow disclosure is identical to the constructions actually installed on the Mariners. At one point in the specification of that patent, Suderow states that the linkage bars on both sides, or ends, of the hatch may be actuated simultaneously by providing pulling cables of sufficient length to permit joinder of their looped ends at a single cargo hook positioned over the center of the hatch. To have done this on the Mariners would have required pulling cables approximately 56 feet in length, in order not to bind on tbe sides of the cover when brought together over the center of the hatch — this instead of the 2-foot length actually employed on the Mariners. There is no evidence that any thought was ever given to equipping the Mariners with such over-length pulling cables. To do so would have entailed added expense and constituted a nuisance without offering any increase in operating efficiency.

The other possibility offered by plaintiff for operating the linkage bars together entails the use of normal-length pulling cables in conjunction with a suitable cargo bridle — a length of cable threaded through a block-mounted pulley and having a cargo hook attached to each end. A bridle hook is engaged with the looped end of each pulling cable and an overhead hook from a cargo winch is inserted in the eye provided on the block housing the bridle’s pulley. The idea is that when the winch-powered cargo hook is raised over the center of the hatch, both pulling cables, and in turn both linkage bars, will be actuated simultaneously. This procedure is impractical for several reasons. First, a bridle of more than 100 feet in length is required for each large weather deck hatch in order to avoid the same binding problem previously referred to in connection with the use of over-length pulling cables. Second, and far more important, there is the problem of pulling-force components. Unless the overhead cargo boom is precisely positioned on the fore-and-aft center line of the ship, unequal vertical components of force will be exerted on the two legs of the bridle. Should this occur, the necessary insertion of the stabilizing toggle pin through the hole provided in each of the linkage bars would become an extremely difficult and even hazardous operation. (Finding 89, infra.)

Theoretical capabilities notwithstanding, the Mariner covers were neither operated to achieve the unitary result disclosed by the claim in suit nor were they intended to so operate. This is best demonstrated by the fact that there was no incentive to do so in preference to the procedures actually employed. The evidence affords no reasonable basis to conclude that any overall time saving or other efficiency would have resulted from raising or lowering both sides of the covers in unison rather than one at a time. (Finding 29, infra.) Moreover, experience with the Mariners demonstrated that, contrary to the thesis on which Farrell predicated the utility of his jacking mechanism, the entire step of jacking the cover as a preliminary to folding it away at the ends of the hatch was superfluous and completely unnecessary for the protection and preservation of the sealing gasket.

After completion of the weather deck covers for only 12 of the Mariner ships, a fire destroyed Seaboard’s rented manufacturing facilities and its engineering plans for the covers as well. (Finding 34, infra.) The result was that all Seaboard contracts were terminated. These events produced a welter of litigation. Seaboard Machinery Corp. v. Bethlehem Steel Co., 120 F. Supp. 591 (N.D. Fla. 1954); Seaboard Machinery Corp. v. Bethlehem Steel Co., 145 F. Supp. 285 (N.D. Fla. 1956); Seaboard Machinery Corp. v. Hanover Fire Ins. Co., 149 F. Supp. 362 (N.D. Fla. 1957); United States v. Seaboard Machinery Corp., 256 F. 2d 166 (5th Cir. 1958), cert. denied, 358 U.S. 932 (1959); United States v. Seaboard Machinery Corp., 270 F. 2d 817 (5th Cir. 1959), cert. denied, 362 U.S. 941 (1960).

At this juncture Bethlehem Shipbuilding undertook to design and build the weather deck covers for the remaining 23 Mariners. Because all Seaboard plans had been lost in the fire, new plans had to be prepared. It was in the course of drawing up the necessary new plans that Bethlehem’s engineers determined to dispense with jacking as a preliminary to the final opening of a cover. The covers that they designed, none of which are accused by plaintiff, are wheel-mounted and made watertight by use of an underside gasket that seats on the coaming ridge. Movable platforms at the ledge openings to raise or lower the cover wheels are completely eliminated. Instead, the length of each wheel opening was reduced to something less than the diameter of the wheel that it was to receive and one end of the opening was beveled to provide a ramp-like curve. The restricted length of the wheel-opening slots permits the cover wheels to recess only slightly into the plane of the coaming ledge. When each wheel is in its lowermost position in the opening, the cover comes to rest on the coaming ridge. When the cover sections are pulled toward their open position, the several cover wheels climb the curved ramps at the end of the wheel-opening slots and roll onto the upper surface of the coaming ledge. Extensive operating experience has demonstrated that gasket life and performance are not impaired by this type of simplified and faster opening procedure that completely dispensed with the preparatory step that is almost the sole concern of the claim in suit. By eliminating the jacking apparatus initial construction cost was significantly reduced and maintenance problems lessened.

In summary, it is concluded that in at least two respects the Seaboard covers fall without claim 2 of the Farrell patent. First, the covers do not have the practical capacity for simultaneously seating or unseating along both sides of the hatch. Second, and in any event, the mechanical apparatus for raising or lowering the wheels mounted on the Seaboard covers is not the equivalent of the “unitary elevator means” of the claim in suit as it must be defined. It is apparent that in designing the Mariner covers, Seaboard did not appropriate any teaching that had been revealed in prior discussions with Valdemar Farrell.

The Piezo/Greer Covers

The hydraulically actuated covers embody all of the structural and functional elements that are specifically set forth in the claim in suit, i.e., the coaming with slotted ledges, the cover wheels, and the capability of all sections being seated or unseated at once. The critical question, therefore, becomes whether the interconnected hydraulic rams are the equivalent of the “unitary elevator means” disclosed in claim 2. Put otherwise, do the rams perform substantially the same function in substantially the same way to obtain the same result? Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 608, 85 U.S.P.Q. 328, 330 (1950).

Upon consideration it must be concluded that the rams perform their function in a manner entirely different from the Farrell “unitary elevator means.” This is most apparent when it is recognized that the rams do no more than replace manually operated screw jacks previously used in removable batch cover configurations that plaintiff acknowledges are old in the art. From the standpoint of the purchaser, the only real difference between the two types of constructions is the added convenience, at considerably higher cost, of the hydraulically actuated jacking platforms. This was exemplified by the ship owners’ refusal to incur the additional initial cost of hydraulic operation for the covers that Seaboard supplied on the Constitution and Independence. (Finding 20, infra.)

Farrell’s “unitary elevator means” performs its elevating function in a manner essentially different from the hydraulic jacks because it was designed to serve not one but two functions having essentially different requirements. The specification, it will be recalled, defines the embodiment of this means as “a continuous belt-like unitary and locking member.” Because the means was adapted to two differing aims rather than one, its structural makeup had to be adjusted accordingly and locking capacity necessarily influenced the configuration of the means as a whole. For example, to do its job the means had to function in two planes, vertical for elevating and horizontal for locking.

As equipment completely interchangeable with ordinary screw jacks, the hydraulic system of the Piezo/Greer covers functions only in a vertical plane and bears no structural or design similarity to the Farrell disclosure. The upright rams and the necessary hydraulic fluid supply lines and pump cannot be said to be the equivalent of “a continuous belt-like unitary elevator * * * member around the hatch coaming.” Especially is this so where, as here, the permissible range of equivalents must be narrow. Soundscriber Corp. v. United States, supra.

Findings of Fact

1. This is a patent suit arising under the provisions of 28 U.S.C. § 1498 for reasonable and entire compensation for the unauthorized use or manufacture by or for the United States of a ship’s hatch and cover described in and covered by claim 2 of U.S. Patent No. 2,707,928, issued May 10,1955, to Captain V. C. Farrell under an application filed by him on January 9,1951.

2. Plaintiff, a Delaware corporation, is, and for more than six years prior to filing of the petition herein has been, the owner of the patent in suit by assignment from Captain Farrell, its president and the owner of 95 percent of its issued and outstanding capital stock.

3. The parties have agreed that the present adjudication be limited to the issues of validity and infringement, with determination of the amount of recovery, if any, reserved for further proceedings.

4. The patent in suit, hereafter referred to as the Farrell patent, relates to a hatch and removable, sectional hatch cover construction for installation and use on cargo-carrying ships. Although the patent contains five claims, the plaintiff relies only on claim 2 in this suit. That claim reads as follows:

A hatch and covering construction comprising a hatch coaming defining a rectangular hatch opening, a ledge on at least two opposite sides of said hatch coaming and having spaced openings therein, a hatch cover seat around said coaming, a hatch cover for removable mounting on said seat and closing said hatch opening, a plurality of mobile supports spaced on said hatch cover and corresponding to the openings in said ledge, said supports resting on said ledge for movement of said hatch cover to and from closed position, said supports passing down through said openings to lower said cover on said 'seat, a unitary elevator means along said hatch coaming beneath said ledge and engageable with said mobile supports when the latter extend through said openings for simultaneously lifting or lowering said supports and unseating or seating said cover preparatory to removing or closing said cover.

5. The claim in suit, as amplified by the accompanying specification, describes a rectangular hatch opening bounded on all sides by an upright frame or coaming, either recessed into the surrounding deck surface or extending upward from it, having a steel ridge on its uppermost edge on which a compressible gasket, mounted on the outboard undersides of the several hinged members of a sectional Steel hatch cover, rests when the cover is in a closed position. Mounted on at least two outboard opposite sides of the coaming, and near its top, there is to be a ledge having a series of spaced openings in it. The extreme end sections of the cover are hinged at their outermost comers to the corresponding corners of the hatch coaming. The outboard sides of the several intermediate sections of the cover have affixed to them one or more wheels, each of which is located in vertical alignment with an opening in the coaming ledge so that, when the cover is in its closed position, the wheels will have dropped down through the spaced openings in the ledge, thereby permitting the resilient gasket on the underside of the cover sections to seat on the coaming ridge, thus forming an air and watertight seal. To open the cover, the wheels 'are first elevated or j acked so that they will be in a position to roll along the top surface of the coaming ledge while the cover is in the process of being brought to its full open position at one or both ends of the hatch. The object of elevating or jacking the wheels, and in turn the hatch cover, is to vertically disengage the cover gasket from the coaming ridge before lateral movement of the cover occurs. This is done in order to absolutely prevent dragging the cover gasket laterally along the coaming ridge and thereby possibly tearing or damaging it so as to destroy its sealing capabilities.

To achieve the raising or lowering of the hatch cover’s wheels when positioned over the spaced openings in the ledges, the claim provides for “a unitary elevator means” located along the coaming and beneath the ledge. The accompanying illustrative embodiment and specification depict the “unitary elevator means” as four I beams, one along each side and end of the coaming and beneath the ledge, mounted on anti-friction bearings and interconnected at three of the four hatch comers by a length of cable or chain. At the fourth corner, a cable length running to a winch is attached to each of the two adjacent I-beam ends. A belt-like mechanism around the hatch coaming and under the ledges is thus formed. The belt may be rotated both clockwise and counterclockwise around the coaming, depending upon the direction of the pull exerted by the winch on the two cables running to it.

A series of identical cam-like ramps with level platform areas at the top are attached to the top side of the I beams and are spaced thereon at intervals corresponding to the spacing of the wheels on the hatch cover and the openings in the coaming ledges. The specification contemplates that when the hatch cover wheels are centered on the ledge open' ings, they will be supported from below by the flat platform surface atop each of the ramps. In this position the hatch cover is positioned ajar, or jacked, over the coaming ridge. To lower it from that position, the winch rotates the interconnected I-beam belt so as to pull the platform surfaces out from under the hatch cover wheels and permit them to roll down the inclined ramp until the entire cover is lowered in unison to its seat on the coaming ridge. To open, the procedure is reversed; the I beams are rotated about the coaming so that the cover wheels are forced to climb the ramp inclines onto the platform surfaces, at which time the wheels have been raised substantially up through the ledge openings. In this position external pulling force is applied to the hinged sections of the covers which are supported above and clear of the coaming gasket by the cover wheels rolling along the top surface of the parallel coaming ledges. By this operation the cover sections first assume a tent-like attitude and ultimately fold into an accordion-like position for stowage at one or both ends of the hatch, depending upon the size of the hatch and the consequent number of cover sections involved.

Though the particular claim in suit does not specify that when the cover is closed its top surface is to be flush with the surrounding deck, both the drawings and the specification depict such an arrangement. This is achieved simply by recessing the coaming into the deck. It does not 'appear, however, that the principle or operation of the cover is affected by whether the coaming is recessed into the deck surface or protrudes above it. In any event, the recessing of the coaming to achieve flushness of the cover top with the surrounding deck area does not constitute invention for purposes of this action.

A further feature of the Farrell cover, not directly involved hi the claim in suit but depicted hi the drawings and specification, is a unitary locking mechanism for securing the hatch cover to the coaming when the cover is in its closed position. Ordinarily, and in the case of the wheel-mounted sectional steel covers employed in the accused constructions, this final closure and fastening is accomplished by a series of bolts, or so-called dogs, fastened in an upright position around the perimeter of the coaming so that when the cover is in its closed position the threaded portion of the bolts protrudes upward through a like number of aligned keeper elements extending outward along the edges of the hatch cover. Nuts are then turned down manually on the bolt threads until the cover is pulled down to the desired degree of snugness on the hatch coaming. The Farrell patent proposes to achieve this final fastening mechanically and without the use of manual labor. Specifically, the drawings and specification show a horizontal pin extending outward from the center of the underside of the platform surface of each of the cam-like ramps used to lower and elevate the cover wheels when the I-beam belt is rotated about the coaming. Immediately ahead of each wheel opening in the coaming ledge is a second and smaller opening through which a keeper element fastened to the underside of the hatch cover protrudes when the cover sections come to rest on the coaming ridge. The respective locations of the pins and keepers are such that when the I-beam belt is rotated so as to completely lower the cover onto the coaming ridge, each of the platform pins will engage a corresponding keeper and will thereby effect a fastening down of the cover. The pins are withdrawn from the keepers when the I-beam belt is rotated in the opposite direction to raise the cover from its coaming seat.

6. Captain Farrell came from a seafaring family and after finishing high school went to sea himself. After serving two years as a seaman, he obtained his first license as an officer in 1925. He sailed continuously thereafter as a ship’s officer until 1941, when he was promoted to master. He served as a master until November 1942, when his ship was torpedoed. Since that time his work has been ashore and has included the conception, patenting, and development of a number of marine cargo-handling devices, some of which have found wide commercial acceptance.

7. In the course of his experiences at sea, he became well-acquainted with the types of hatch covers in general usage. Prior to World War II, the most common type of cover consisted of a series of wooden beams or planks laid across the hatch opening and covered by snugly fitted canvas tarpaulins. Both the placement and removal of this type cover were time-and-labor-consuming operations. This type cover was replaced by wheel-mounted, hinged, sectional steel covers of the same general configuration as that both depicted in the Farrell patent and found in the accused constructions; the essential difference having to do with the means by which the cover is initially raised or jacked from its seat on the coaming ridge preparatory to folding away at the ends of the hatch. Whereas the patented device and the accused constructions simultaneously raise a plurality of the cover’s wheel supports, each wheel on the earlier covers was raised individually by a manually operated jack located directly under each slot in the coaming ledge. Installations of the latter type were widely employed on British and Canadian cargo vessels and improved versions, employing only one hand-operated jack to raise all wheels on one side of a cover, were used in 1949 and 1950 on the U.S. ships Constitution, Independence, and Schuyler Otis Bland.

8. The present suit is directed to two types of accused constructions. One, found aboard 12 United States merchant ships of the Mariner class, utilizes mechanically powered leverage to raise the wheels affixed to the weather deck hatch cover. The other type construction, found on various U.S. Navy cargo vessels, relies on interconnected hydraulic rams to perform that jacking function. These two types of hydraulic constructions are hereafter referred to as the Mariner gear and the Piezo/Greer gear, respectively. The accused Mariner gear was built by the Seaboard Machinery Corp. Part of the hydraulically operated installations were furnished by the Piezo Manufacturing Co. and the remainder by the Greer Marine Corp. It is agreed that for purposes of this action the Greer and Piezo gear are to be treated as identical.

9. It was in late 1948 or early 1949 that Captain Farrell turned his thoughts and attentions to the development of a mechanical means by which the manual jacking of individual wheels on sectionalized steel hatch covers could be altogether eliminated and the manual dogging down of seated watertight covers dispensed with. In approaching the problem he was well-acquainted with the then-current state of the art respecting watertight weather deck covers. Thus, it is not contended that his use of a slotted coaming ledge in combination with wheel-mounted sectional steel covers capable of being jacked in a vertical plane when the cover wheels are aligned with the ledge openings constitutes invention for purposes of this suit. Father, the alleged invention relates solely to the means by which the jacking is done, i.e., the provision of an arrangement actuating all wheels of a given hatch cover in unison.

10. As a result of the Korean hostilities, the need for more efficient cargo vessels for the transportation of defense supplies became apparent. The U.S. Maritime Administration undertook a study directed to this end and in April 1950, completed work on the preliminary design of a new-type vessel to be known as the Mariner. The aim of the program was to create a vessel suitable for charter to private operators during peacetime while also readily adaptable to use as a cargo-carrying naval auxiliary in time of war. Under the program 25 of such ships were to be built for the account of the Maritime Administration (the number was ultimately increased to 35).

11. In October 1950, the Shipbuilding Division of the Bethlehem Steel Corporation was awarded a contract by the Maritime Administration for the preparation of the bidding plans and specifications for the proposed Mariner-type ship.

12. At approximately the same time, i.e., October 1950, Captain Farrell conceived the mechanism exemplified by the patent in suit. He contacted the patent firm of Imirie & Smiley in Washington, D.C., and work was begun on preparation of the patent application. The patent drawings were completed in November 1950, after which Captain Farrell submitted his idea, together with those drawings, to the Marine Manufacturing & Supply Co. of New Brunswick, New Jersey, a marine equipment manufacturing concern. He issued that firm a license for manufacture and promotion, and on December 20,1950, Marine Manufacturing completed a blueprint drawing showing, in general terms, a specific application of the Farrell hatch and cover in a flush-type installation, i.e., an installation wherein the top of the closed cover was flush with the surrounding deck area.

13. Shortly before Christmas 1950, Captain Farrell personally took the Marine Manufacturing drawing to the New York office of the American Bureau of Shipping, an engineering survey organization operated jointly by the Government and the marine insurance carriers to evaluate and classify vessels for insurance coverage and rate purposes. He discussed his device and the drawing with the Chief ABS Engineer and three of his subordinates. On the basis of that informal discussion, the ABS representatives told him that, if his device were built and proven as claimed, they saw no reason why it would not be approved by ABS. In fact, the Farrell cover was never built, even on a pilot-model basis, and was therefore never submitted to or formally approved by the ABS. The evidence adduced in this case fairly indicates that, whatever its theoretical capabilities, the Farrell construction was not practical for at least two reasons. First, there is the matter of the amount of force required to rotate the jacking mechanism about the coaming in order to simultaneously raise all of the cover wheels onto the coaming ledge. Second, there is the problem of achieving a satisfactory watertight seal between the cover and the coaming by use of the Farrell automatic locking device in lieu of the traditional bolts or dogs.

As to the first item, it appears that, in order to make all sixteen wheels on a 20 foot by 30 foot cover simultaneously climb their respective ramps, a total pulling force of over 55 tons is required. Aside from the availability of such a force on a conventional cargo ship, there is the question of whether the cables or chains that interconnect the I beams at the hatch corners could reasonably withstand such a stress.

Regarding the locking mechanism, it is generally recognized that the dimensional characteristics of a ship inevitably undergo change in normal operation. Accordingly, ships cannot be engineered to as close tolerance as land structures. In the case of hatch covers, one-eighth inch is the closest feasible working tolerance and such gear must be so engineered as to perform its intended function when operating at any point within that tolerance range. There has been no showing made, nor does it reasonably appear, that the Farrell locking mechanism can function satisfactorily under such conditions. To achieve the necessary watertight seal between the hatch coaming and cover, it is essential that the cover gasket be seated snugly, with a reasonable uniformity of compression, on the coaming ridge. With the Farrell device this snugness can only be obtained by a correspondingly snug fit of the wheel platform rods into the hatch cover keeper elements extending downward through the coaming ledge. Bearing in mind that for the locking system to operate at all it is essential that all platform rods around the perimeter of a given hatch simultaneously mate with their corresponding-keeper elements, it seems apparent that the system cannot assimilate dimensional changes of as much as one-eighth inch and function satisfactorily.

14. On a number of occasions prior to the October 1950 contract award to the Bethlehem Shipbuilding Division, Mr. Karl Jernstrom, a vice president of the Seaboard Machinery Corporation and one of its top mechanical engineers, called on Mr. Donald MacNaught at Bethlehem’s Quincy Yard to present Seaboard’s ideas and proposals for the design of the hatch covers to be used on the Mariner-type ships. Though without manufacturing facilities of its own, Seaboard had successfully performed contracts for the sale of hatch covers. With respect to such contracts, it provided the patents and all engineering services required for design and installation, subcontracting the actual construction of the covers. For example, in 1941, Seaboard supplied wheel-mounted, sectional steel covers for five ships built by Canadian yards. In 1948, Seaboard furnished the same type covers for three U.S. military cargo ships and in 1949 for two more of such ships, in addition to three American President Line ships. Prior to the Mariner program, Seaboard’s most recent cover sales were with respect to the U.S. passenger liners, Independence and Constitution, and the Schuyler Otis Bland, a Maritime Administration cargo ship that was the prototype of the Mariner. (See finding 7, above.) The Independence and Constitution were built at Bethlehem’s Quincy Yard. Mr. MacNaught was assistant to the naval architect for Bethlehem’s Shipbuilding Division. In that capacity he was in charge of the Division’s structural design proposals for the Mariner project. Hatch covers were included in his area of responsibility.

15. Under cover of a letter dated November 13, 1950, Mr. George E. Suderow, chief engineer for Seaboard, sent Mr. MacNaught a Seaboard drawing showing a proposed design for an eight-section weather deck (i.e., the main or top deck) steel hatch cover. Extra large hatch openings requiring eight-section covers were planned for the Mariners. The drawing, showing a wheel-mounted cover operating on a coaming protruding above the deck surface rather than recessed into it, did not include any detail indicating the manner or method by which the cover was to be jacked, i.e., initially raised from, or finally lowered onto, the coaming ridge. Except for showing a greater number of hinged sections than usually employed, the drawing depicted a cover configuration similar to that found on cargo ships built at the time — ships such as the Schuyler Otis Bland.

16. By a written solicitation dated December 28, 1950, Bethlehem Steel invited seven firms, including Seaboard Machinery, to submit price proposals for supplying the weather deck hatch covers to be installed on the Mariner ships. The general specifications accompanying this solicitation were prepared by Mr. MacNaught. While they did not expressly require that the suppliers’ proposals be in terms of a wheel-supported, sectional steel cover to be jacked by the conventional means of individual, manually operated jacks located under the wheel openings in the coaming ledge, the specific reference in the specifications to “jackscrews” showed that Bethlehem contemplated receiving proposals along those lines.

17. Seaboard responded to Bethlehem’s solicitation by a written proposal dated January 9, 1951, signed by Earl Jernstrom and transmitted under cover of a letter of the same date also signed by him. Beading the transmittal letter in light of the undisputed fact that at the time the most advanced type of cover that Seaboard had supplied was that used on the Schuyler Otis Bland, it is clear that the proposal contemplated the furnishing of a wheel-mounted, sectional steel, watertight cover whose sealing gasket would be raised from the coaming ridge by use of manually operated screw jacks. Thus, the cover letter represented that “the satisfactory watertightness and effective simplicity in handling have been proven by over fifteen years of ‘trouble-free’ service” and that “these Hatch Covers on which we quote are fully protected by basic patents and patent applications both in this country and abroad, owned or controlled by Seaboard Machinery Corp.” At the time of this letter there was no patent or patent application owned or controlled by Seaboard covering the cover constructions that it ultimately supplied for the 12 accused Mariners. (See finding 28, infra.)

18. .On January 26, 1951, Captain Farrell went to Washington and called on Admiral E. L. Cochrane, Maritime Administrator, in an effort to persuade the Administration to adopt his hatch and cover construction for use on the Mariners, as well as the cargo-handling gear that he had previously conceived and patented. Fie particularly emphasized the desirability of his flush type of hatch and cover for use on the inner decks of the Mariner ships as a means of obtaining a series of watertight inner deck surfaces and of eliminating the traditional nine-inch upright coaming that surrounded the cargo-hold hatch openings and thereby obstructed the lateral movement of cargo in the holds. Admiral Cochrane expressed interest in the flush feature of the cover from a cargo-handling standpoint. He indicated that this would be of particular benefit on the shelter deck, the first cargo deck surface below the weather deck of the ship. After a discussion along these lines, Admiral Cochrane referred Captain Farrell to Mr. Vito L. Bmsso, chief of the Maritime Administration’s Preliminary Design Division. He proceeded directly to Mr. Russo and made a presentation similar to that which he had made to Admiral Cochrane. Again, his emphasis was on the flush feature of the hatch cover which facilitated cargo-handling across the deck surfaces of the holds. At this meeting Captain Farrell understood Mr. Russo to state that the Seaboard Machinery Corporation had already been selected as supplier for the hatch covers on the Mariner ships so that if the Farrell cover were to be used on the ships, it would have to be by way of a license to Seaboard.

19. Shortly after Ms Washington discussions with Admiral Cochrane and Mr. Russo, Captain Farrell reported the results of those meetings to the officers of Marine Manufacturing, his licensee. It was decided that a contact should be made with Seaboard Machinery. Captain Farrell was familiar with the firm as a result of his earlier efforts to negotiate business on some of his patented cargo-handling gear. He telephoned Mr. Karl Jernstrom and arranged for a meeting the following day at Seaboard’s offices in New York City.

20. At the Seaboard offices, Captain Farrell met with Mr. Jernstrom and Mr. Roy Lemmon, another Seaboard vice president. He displayed the Marine Manufacturing drawing and related the interest expressed by the Maritime Administration in using the Farrell hatch and cover on the shelter decks of the Mariners in order to eliminate the customary nine-inch coaming. As previously found herein, Seaboard was not unfamiliar with the design and construction of sectional, steel, flush-type, watertight hatch covers. Though all of its installations of such covers were of the manually jacked variety, in 1949 it had joined with the Greer Marine Corporation, a hydraulic specialist, in unsuccessfully attempting to persuade the American President Lines to purchase hydraulically operated hatch covers for the three ships for wMch Seaboard ultimately furnished manually jacked covers. The hydraulic feature entailed an additional cost of $2,000 per hatch and was rejected by the purchaser for that reason. In any event, the meeting at Seaboard concluded with the understanding that Captain Farrell would leave the Marine Manufacturing drawing of his device with the Seaboard representatives for further study, and if Seaboard determined that it was interested in Ms cover, the parties would meet again within a week to negotiate a license. At tliis time Seaboard had made no proposals and drawn no plans providing for the jacking of hatch covers by mechanical means other than the use of hand-operated jacks.

21. One week after the above-described meeting with the Seaboard representatives, Captain Farrell attended a second meeting at the Seaboard offices. He was then advised that Seaboard had determined that it was not interested in his hatch and cover. He asked that his Marine Manufacturing drawing be returned. Mr. Jemstrom was unable to locate the drawing at the time but agreed to return it by mail. Captain Farrell never received the drawing from Seaboard.

22. On February 5, 1951, Bethlehem issued Seaboard a second hatch cover bidding solicitation superseding the one that had been issued in December 1950, as described in finding 16, above. This time Seaboard was invited to submit price proposals not only for the Mariner weather deck hatches but for the hatch covers on the second and lower decks as well.

23. On February 7, 1951, Bethlehem was among the five bidders who were each awarded contracts for construction of five of the Mariner ships, the other contractors selected being Newport News Shipbuilding and Dry Dock Co., Ingalls Shipbuilding Corp., New York Shipbuilding Corp., and Sun Shipbuilding and Dry Dock Co.

24. On February 27, 1951, Seaboard responded to the Bethlehem solicitation of February 5. It proposed that all hatch covers used on decks below the weather deck would be flush with the surrounding deck area. This was to be achieved by recessing the coaming into the deck. The weather deck covers were not to be flush-mounted but were to rest on the top edge of a nine-inch coaming surrounding the hatch openings. Both international law and regulations, administered by the Coast Guard and the American Bureau of Shipping, in the case of U.S. ships, prohibited the use of flush-type hatch covers on the weather deck. A raised coaming is required primarily in the interest of crew safety. As in the case of its response to Bethlehem’s earlier bidding solicitation, Seaboard’s proposal contemplated that the weather deck covers would be jacked by the same manual method used on the Schuyler Otis Bland.

25. By a letter of March 28, 1951, Bethlehem accepted Seaboard’s February 27 proposal, as amended by subsequent negotiations, and awarded it a contract to supply all of tlie batch covers for the five Mariner-type ships to be built at Bethlehem’s Quincy Yard. In fact, Seaboard proved to be the only acceptable hatch cover bidder and therefore received contracts to supply the covers for all 25 of the original Mariner ships, plus the 10 ships later added to the program.

26. After receiving the contracts to supply the hatch covers for all of the Mariners, Seaboard determined to equip itself to perform at least some of the manufacturing function rather than subcontracting all of such work as it had in the past. Accordingly, it leased a portion of the Government-owned Wainwright Shipyard at Panama City, Florida, and reserved to itself the manufacture of all of the covers for 10 of the Mariner ships. It subcontracted with Williams-burg Steel Fabricators, Inc. and Northeastern Boiler & Welding Co., Ltd. to manufacture the covers for the remaining ships under its engineering specifications and supervision.

27. In all material respects other than the means and method for jacking, the covers supplied by Seaboard for the Mariners were the same as those that it had installed on previous jobs, such as the Schuyler Otis Bland. The distinguishing feature of the Mariner covers was the elimination of the individual hand-operated jacks to power platform arms pivoted to the coaming ledge underneath each of the wheel openings and the substitution therefor of a series of mechanically interconnected jacking platforms located on each side of the coaming and directly underneath the coaming ledge. The platforms, all of the same configuration, consist of a flat piece of heavy steel plate cut in the shape of a right triangle. Each platform is suspended vertically from the underside of the coaming ledge, adjacent to a wheel-opening slot, by a heavy 'bracket-mounted pivot pin extending- through the right-angle comer of the plate. A second pivot pin is extended through the lower comer of the plate near the end of the triangle’s shorter leg. This pin extends through the side of a steel linkage bar which runs the entire side of the hatch coaming beneath the ledge and parallel to it. When a triangular plate is attached at these two pivot points, the edge of its longer leg forms a platform running along the underside of the coaming ledge and directly under a wheel opening. When the linkage bar is moved laterally, the resulting pivot action on the triangular plates causes the platform surface to rise or fall, depending upon the direction of the bar’s movement, and the cover wheel resting upon this surface will be raised or lowered accordingly. Since all platform plates on one side of the hatch are interconnected by the linkage bar, they move in unison. When the hatch cover is in its closed and seated position, its supporting wheels extend down through the ledge openings and out of contact with the platform surfaces which have pivoted downward toward the deck. Lateral movement of the linkage bar in the opposite direction causes the platform surfaces of the pivoted plates to rise and thereby elevate the cover wheels up through the ledge openings to the level of the upper surface of the coaming ledge. It is along this ledge that the wheels roll while the cover sections are folding, accordion-like, to a full-open position. After the linkage bar is moved sufficiently to raise the wheels to ledge level, it is anchored in place by the manual insertion of a toggle pin through it and into the socket of a heavy bracket plate extending downward from the underside of the coaming ledge. The pin is withdrawn after the cover wheels are returned to their position over the ledge openings preparatory to closing the cover. This frees the linkage bar for lateral movement so that the platforms may rotate downward from the horizontal plane of the coaming ledge, thereby permitting the cover to move downward until it comes to rest on the ridge of the coaming.

Each of the two horizontal linkage bars is pivotally fastened at one of its ends to a jacking lever located at the opposite sides of the coaming immediately adjacent to one end of the hatch. The jacking lever is a steel arm attached by a pivot pin at its upper end to the outside edge of the coaming ledge. Immediately downward on the arm from this pivot point a second pivot hole is provided. A pin is inserted through this hole and through a corresponding hole in the linkage bar. An eight and one-half foot length of cable is attached to the lower and free end of each jacking lever and thence runs through a deck-mounted pulley and up through an opening in the coaming ledge. At its free end, which extends past the coaming ledge approximately two feet when the cover is closed and the jacking platform members in their lowered position, the cable is formed into a loop or eye suitable to receive the hook of a cargo fall. A pulling force on this cable will cause the pivot-mounted jacking lever to move the attached linkage bar laterally, thereby raising the interconnected jacking platforms.

28. The apparatus and jacking system described above was conceived and designed for Seaboard by its chief engineer, George E. Suderow, referred to in finding 15, above. Mr. Suderow died approximately two years before trial of this case. On November 17, 1953, he filed an application for a patent on substantially the identical weather deck hatch cover construction that Seaboard installed on 12 of the Mariners. The patent, Suderow '238, was issued on July 16,1957. Claim 4 of the patent describes the physical components of the Seaboard weather deck cover construction used on the Mariners: “* * * including means for simultaneously actuating the pull rods on each side of said hatch for lowering or raising the wheels on both sides of the hatch simultaneously.” The accompanying specification teaches that the simultaneous actuation is to be achieved by bringing the looped ends of the jacking lever cables together at a cargo hook positioned above the end of the hatch. When the cargo winch raises the hook, both cables, 'and in turn, both linkage bars are moved simultaneously. In short, it is proposed by the means of the cargo hook to interconnect the two separate platform and linkage systems installed on each side of the hatch coaming. The length of jacking lever cables necessary to effect their joinder at a single cargo hook is neither specified nor suggested in the Suderow patent. The patent is also silent as to the means by which equal pulling force on each of the two lever cables can be assured.

29. The earliest Seaboard engineering drawings depicting the jacking system used on the Mariners were completed in the period January-April 1952. Bethlehem Shipbuilding approved those drawings on April 25, 1952, and in so doing did not contemplate that the separate but identical jacking systems located on each side of a weather deck hatch would be opera/ted in tandem as later suggested by Suderow in bis patent specification. For example, tbe coaming binges at tbe end sections of the cover were slotted to accommodate tbe flexing action resulting from raising one side of tbe cover at a túne. Moreover, as a matter of practice tbe Seaboard Mariner covers have been operated by jacking one side at a time and have proved completely serviceable under that method of operation.

To open the batch, a cargo book is first engaged in tbe eye of one of tbe pulling cables, force exerted until tbe linkage bar can be anchored in a fixed position by manual insertion of its toggle pin (at which point the cover wheels are elevated to the top surface of tbe coaming ledge), and then tbe same operation is repeated on identical equipment located on the other side of the hatch. After this is done, the cover sections, rolling on their supporting wheels, are pulled into their fully folded position by an independent winch and cable arrangement that is not material to the issues in this suit.

30. The Old Dominion was the first Mariner-type ship completed. It was delivered by the Newport News Shipbuilding & Dry Dock Co. on October 8,1952. Captain Farrell visited the Newport News shipyard about that time and observed the weather deck hatch covers and jacking gear that had been furnished by Seaboard.

31. In a letter of October 25, 1952 to Seaboard, Captain Farrell asserted that the jacking system installed on the weather deck hatch covers of the Mariner-type ships infringed the design embodied in the patent application filed by him on January 9, 1951. Specifically, he stated: “The apparent encroachment is on my idea for raising or lowering the entire hatch cover off or to its sealing seat simultaneously with mechanized power.” The letter concluded with the proposal that the parties negotiate a settlement of the claimed infringement.

32. By a letter dated November 1,1952, Seaboard’s general counsel acknowledged receipt of the Farrell letter and declined to recognize the validity of the infringement claims set forth in it. Accordingly, the proposal to negotiate was rejected.

33. By the end of November 1952, Seaboard had completed construction of the 10 shipsets of covers that it had reserved to itself. Production by its subcontractors was lagging badly, however. The yards holding contracts for construction of the Mariners pressed Seaboard to take over performance of the subcontracts that it had let to Williamsburg Steel Fabricators and Northeastern Boiler & Welding.

34. On December 22, 1952, while negotiations between Seaboard and the shipbuilders were in process, Seaboard’s rented plant at Panama City and all of its contents, including the engineering plans for the Mariner covers, were destroyed by fire. Notwithstanding the fire, negotiations for Seaboard’s resumption of the contract work continued, but to no avail. Finally, in March and April 1953, all of the yards terminated their supply contracts with Seaboard. At that time, only 12 shipsets of the Seaboard-type weather deck covers had been completed. These covers were installed on the following 12 Mariner ships: Old Dominion, Keystone, Old Colony, Tar Heel, Free State, Lone Star, Cornhusker, Buckeye, Mountain, Pine Tree, Magnolia, and Cotton. Twenty-one of the 35 Mariners were delivered during 1952 and 1953. The last ship of the program was delivered on June 15,1955.

35. With Seaboard’s cover-supply contracts terminated and with its manufacturing facilities demolished, the contracting shipyards 'and the Maritime Administration determined that Bethlehem Shipbuilding, as the lead yard for the Mariner program, should furnish the 23 shipsets of hatch covers required to complete the program. Since the Panama City fire had destroyed even the engineering and construction plans for the Seaboard-type covers, it was necessary for Bethlehem to draw up new working plans before any construction could begin. The result of the planning and deliberations directed to the development of such plans was a determination by Bethlehem to eliminate, as unnecessary for gasket preservation and unduly expensive, the jacking apparatus of the Seaboard covers, i.e., the pivot-mounted individual wheel platforms, the linkage bars, the lever arms, and the pulling wires.

Under the new Bethlehem design, the weather deck covers move from seated to fully open position in a single pulling operation, this as contrasted with the two-step operation for opening either the Seaboard covers or the cover described by the claim in suit. To achieve this single-step type of operation, the coaming ledges were provided with longer slots at each wheel opening — a length approximately twice the diameter of a wheel. In one end of each opening a fixed ramp was inserted, sloping downward from coaming ledge level and extending half the length of the opening. When a cover wheel reached the lower tip-end of this ramp, it had descended to a point where the cover had come to rest on the coaming ridge. When the cover was to be opened, the lateral pulling force exerted on the cover sections by the overhead cargo gear forced the wheels to climb their respective wheel-opening ramps and attain the level of the coam-ing ledge along which they then rolled toward the end of the hatch as the several cover sections were folding together. The wheel-opening slots were arranged in a staggered position in the coaming ledge so that once a wheel ascended from the slot that it occupied when the cover was in closed position, it had a solid path of ledge on which to roll as the sections moved to fully open position. In short, the Bethlehem design, which was economical in first cost and later proved highly satisfactory in service, demonstrated the fallacy of the notion that cover-gasket damage could only be avoided by breaking the seal with a completely vertical parting of cover and coaming ridge before any lateral movement of the cover occurred. Under the Bethlehem fixed ramp system, the cover seal was broken by an initial cover movement that was both vertical and horizontal. It was found, however, that the degree of initial horizontal movement was not so great as to cause any gasket damage by reason of drag along the steel coaming ridge. The Bethlehem-made covers are not accused in this suit.

36. By a letter of June 1, 1953, enclosing a copy of his earlier letter to Seaboard, Captain Farrell advised the Shipbuilding Division of Bethlehem Steel that he understood that Bethlehem and the other yards building Mariners were still using the Seaboard weather deck cover design on new construction. He went on to state that: “The Seaboard Machinery Corporation’s designed lever jacks in tandem for raising or unseating the entire hatch cover with a powered unitary mechanism before raising it on the hinges infringes the patent I have pending. Actually, it is a weak copy of my designed cams in tandem mechanism for accomplishing the same action or idea which I revealed to their engineers; * *

37. In fact, Bethlehem and the other yards were not at that time using the Seaboard weather deck hatch cover design for the covers to be installed on the Mariners. As previously noted, the contracts with Seaboard had been terminated earlier in the year. Moreover, when the December 1952 fire occurred at Seaboard’s rented plant at Panama City, the engineering plans for the covers that it had been supplying were destroyed. After the shipyards agreed that Bethlehem would assume responsibility for manufacturing the hatch covers needed to complete the Mariner contracts, the Engineering Division at the Quincy Yard was assigned the function of drawing new plans for the Mariner hatch covers. In the course of that work, it was concluded that the bulkiness and costliness of Seaboard’s movable platfonn-type jacking system should be eliminated in favor of a fixed ramp arrangement. That plan was adopted for reasons other than the avoidance of patent infringement liability.

38. On July 30, 1953, Captain Farrell went to the Bethlehem Yard at Quincy in an attempt to promote the use of his cover for the weather deck hatches on the Mariners remaining to be built. ITe met with Bethlehem’s naval architect, Mr. J. H. McDonald, and its assistant naval architect, Mr. Donald MacNaught, and presented his plans and proposals to them. McDonald and MacNaught concluded that the Farrell gear did not represent a feasible system and advised Captain Farrell to that effect. By a subsequent letter of August 6, 1953, Farrell again advised Bethlehem that he considered the Seaboard jacking mechanism to infringe the claims in his patent application.

39. The identical but physically separate platform jacking systems located on each side of the weather deck hatches in the Seaboard design are theoretically capable of simultaneous operation by means of a single pulling force supplied by a cargo winch. Two possibilities exist for obtaining such operation. In his patent, Suderow, Seaboard’s former chief engineer and designer of the Mariner weather deck construction supplied by Seaboard, teaches that simultaneous operation is to be achieved by joining the looped ends of the two pulling cables at a cargo hook suspended from a boom positioned over the end of the hatch at which the cables come up through the coaming ledge. Aside from any problem of securing equal pulling force on each of the two cables when the cargo hook is raised, the Suderow method is impractical for use on 30-foot wide hatches such as those on the Mariners because of the excessive cable length required to join the ends of the two cables at the hook above the end of the hatch. To accomplish this joinder without having the cables bind on the upper edge of the hatch cover, and thereby prevent it from opening, requires that each be approximately 56 feet long. When the cables are not in use, a formidable stowage problem is presented that far outweighs the convenience or efficiency that might result from being able to raise the hatch cover in its entirety rather than one side at a time. Notably, the pulling cables actually installed on the 12 accused Mariners only extended up past the coaming ledge approximately two feet when the covers were closed. Accordingly, the Suderow method for tandem pulling with a single cargo hook could not have been employed on the Mariners as actually equipped.

The second possibility for a unitary jacking of the cover entails the use of a cargo bridle — a length of cable threaded through a block-mounted pulley with a cargo hook attached to each end. Using this arrangement, with the free ends of the pulling cables running from the jacking levers extending past the coaming ledge two or three feet, the hooks at the end of the bridle are engaged with the looped ends of the pulling cables and the hook from an overhead cargo boom is engaged with an eye provided on the block housing the bridle’s pulley. When the cargo hook rises, the bridle assumes a tent-like attitude exerting tension on the two pulling cables. Provided that the cargo boom and hook are aligned with the center line of the ship, a pulling force on the legs of the bridle, equal as to both vertical and horizontal components, is obtained. If the boom is not directly over the center line of the ship, unequal vertical components of force will be exerted on the two bridle legs. The practical difficulty with use of this jacking procedure relates to the insertion of the toggle pins that stabilize the linkage bars that actuate the jacking platforms. As previously noted, when the bars have moved laterally to the point where the jacking platforms have elevated the cover wheels to the level of the upper surface of the coaming ledge, they are fixed in place by toggle pins manually inserted through a round hole provided in each of the linkage bars and thence into a socket provided in a bracket member affixed to the coaming. With a simultaneous pulling of the jacking lever cables, it is necessary that the toggle pin on each side of the hatch be inserted before tension on the bridle can be released. Exerting equal force on the two linkage bars so that their toggle holes will both be in registry with their mated coaming socket members at the same time, while theoretically possible, is not likely to obtain under normal operating conditions. Certainly, this procedure, requiring stowage of bridles over 100 feet long for each hatch, offers no efficiency premium over the one-side-at-a-time jacking method actually used in the operation of the weather deck hatches on the 12 accused Mariners. Moreover, the accused Mariners carried no bridles of that length.

40. As previously noted (finding 8, supra), the second category of accused constructions involved in this suit consists of four-section hydraulically actuated covers installed on certain U.S. Navy cargo-carrying ships by the Piezo Manufacturing Co. and the Greer Marine Corp. Each of these suppliers’ constructions, concededly identical for purposes of this suit, is generally similar in configuration to Seaboard’s Mariner covers (in all significant respects other than the apparatus for jacking), and even more like the covers that Seaboard had earlier supplied for the Independence, Constitution, and Schuyler Otis Bland. Thus, the hinged cover sections, the supporting cover wheels, the raised coaming, and the coaming ledge slotted for wheel openings are common to all.

41. Because tlie hydraulically jacked covers consist of only four sections, a section hinged to each end of the hatch coam-ing with one additional section hinged to it, only four wheels per hatch are required. One wheel is fastened to each outboard side of the free ends of the center cover sections. Just as on the Schuyler Otis Bland cover, the wheels are mounted in an offset alignment so that when the entire cover is closed, the two wheels on each side of the hatch come full abreast of each other over a single slot in the coaming ledge. On the underside of the coaming ledge and to one side of the wheel opening, a platform arm is mounted on a pivot pin permitting the arm to move in a vertical plane from the underside of the coaming ledge to the deck. The free end of the arm is moved up and down by a vertically positioned hydraulic ram mounted on the deck surface directly beneath the midpoint of the underside of the arm. When the arm is in its raised position, the top surface of its free end moves into the wheel-opening slot in the coaming ledge to a point even with the upper surface of the ledge on which the cover wheels roll when the cover sections are moving to and from their full-open position. When the piston in the hydraulic ram is lowered, the free end of the platform arm which it supports is correspondingly lowered, and the cover wheels are thereby permitted to move downward through the ledge opening until the cover sections come to rest on the coaming ridge. The identical arrangement is duplicated at the center of each side of the hatch, and the two hydraulic pistons are interconnected by the same fluid pressure line so that a single-control valve actuates the two in unison. For all practical purposes, the Piezo and Greer cover systems are the same as that installed on the Schuyler Otis Bland by Seaboard except that the manually operated screw jacks on the Bland are replaced by piston rams forming a part of a single hydraulic system. The use of a hydraulic ram to perform the function of a screw jack is simply a mechanical expedient.

42. The Farrell patent application, as originally filed on January 9, 1951, contained 14 claims. Neither the phrase “unitary elevator means” nor any specific reference to a “simultaneous” lifting or lowering of hatch cover wheels appeared in the original claims or specification. The “means” for jacking the cover was referred to for claim purposes only in terms of an enumeration of component parts illustrated in the drawings and described in the specification. Thus, claim 5 referred to “mobile mounts” depending from the hatch cover, a “ledge having openings for the passage of said mounts,” and a “belt-like support including] a plurality of spaced ramp-like runways for supporting said mounts and moving said cover vertically to accommodate said sealing rib and channel.”

43. In an action of November 5,1951, the examiner rejected substantially all of the claims, including claim 5, as “indefinite.”

44. By an amendment to the application, filed May 6,1952, various language changes were made as to several of the claims. No changes were proposed as to claim 5, however. The amendment’s only specific reference to claim 5 was an observation made in narrative form to the effect that certain prior art did not preclude patentability in the reference to “mobile mounts and ramps set forth in claim 5.”

45. On October 15,1952, Farrell filed a supplement to the amendment of May 5,1952, adding a claim 15 to the application, as follows:

15. A hatch and cover construction, comprising a hatch coaming defining a rectangular hatch opening, a ledge around the hatch coaming and having spaced openings therein, a hatch cover seat around said coaming, a hatch cover for removable mounting on said seat and closing said hatch opening, a plurality of mobile supports spaced around said hatch cover and corresponding to the openings in said ledge, said supports being mounted on said ledge for movement of said hatch cover to and from seated position and passing down through said openings to mount said cover on said seat, and unitary elevator means around said hatch coaming beneath said ledge for simultaneously lifting said supports up through said openings and unseating said cover preparatory to removing said cover.

It was by this supplemental amendment that the phrase “unitary elevator means” and reference to “simultaneously” lifting or lowering the cover wheels were first included in the application.

46. On November 12,1952, Farrell filed a further amendment effecting certain insubstantial language changes in the newly added claim 15.

47. By an action of January 16, 1953, the examiner rejected claim 15 as unpatentable over certain prior art and as indefinite. In amplification of the matter of indefiniteness the examiner stated: “It is not clear what structure is referred to by ‘mobile supports’, line 5. It is further not clear what iunitary elevator means’ are thereby described.” The file wrapper does not reflect any direct response to the latter inquiry by the applicant.

48. On July 20,1953', Farrell filed a further amendment to his application in which no specific reference to claim 15 was made.

49. In an action of February 19, 1954, the examiner rejected claim 15 with the following explanation:

Claim 15 is rejected as unpatentable over McGray ['767] taken with either Griffin ['958] or Donald ['429-British]. To provide an elevator means along the hatch coaming of McGray would be a matter of choice since it is old to use an elevator for a like function as shown by each of the latter references. No new or unexpected result would be had by so doing.

50. By an amendment of August 23,1954, Farrell canceled claim 15 and added the following new claim 16:

A hatch and covering construction comprising a hatch coaming defining a rectangular hatch opening, a ledge on at least two opposite sides of said hatch coaming and having spaced openings therein, a hatch cover seat around said coaming, a hatch cover for removable mounting on said seat and closing said hatch opening, a plurality of mobile supports spaced on said hatch cover and corresponding to the openings in said ledge, said supports resting on said ledge for movement of said hatch cover to and from closed position, said supports passing down through said openings to lower said cover on said seat, a unitary elevator means along said hatch coaming beneath said ledge and engageable with said mobile support's when the latter extend through said openings for simultaneously lifting or lowering said supports and unseating or seating said cover preparatory to removing or closing said cover.

In the narrative portion of tbe amendment Farrell explained his newly added claim 16 as follows:

Applicant thanks the Examiner for the courteous interview accorded himself and counsel.
In accordance with the agreement reached during the interview claim 15 is rewritten as claim 16 so as 'to properly distinguish over the references of record.
* ❖ * *
Claim 15 was rejected on McGray taken with Griffin or Donald, but during the aforementioned interview it was agreed that when revised as now submitted as claim 16 the claim would be properly allowed over these references. The claim defines a ledge around the hatch coaming and having spaced openings therein, a hatch cover seat around the coaming and a plurality of mobile supports spaced on the hatch cover and passing through the openings in the ledge when the cover rests on the seat, and unitary elevator means beneath the ledge and engageable with the mobile supports when the latter extend through the openings in the ledge for simultaneously lifting or lowering the supports and unseating or seating the cover. McGray discloses a cover having mobile supports on each side with sockets within the deck to receive the wheels of the supports. McGray fails to suggest a ledge with openings therein and unitary elevator means beneath the ledge and engageable with the supports when they extend through the openings. McGray removes the wheels from the sockets by a hand lever, each wheel being individually lifted by this lever. Thus, McGray clearly fails to suggest the basic concept of the present invention.
McGray likewise fails to provide any basis for a combination with the teachings of the secondary references to Donald and/or Griffin, and which will approach the structure set out in the claim. The British patent to Donald does not disclose mobile supports and is concerned solely with the latching of the cover. As this reference is a foreign disclosure it is necessarily limited to its exact disclosure and consequently completely fails with respect to the present claim. Griffim, does show friction cam means for slightly lifting a cover to break the seal between the cover and the seat; however, he does not suggest the specific structure set out in the claim nor can this disclosure be combined with McGray to meet the claim. To modify McGray in accordance with Griffin, Griffin’s cams would be disposed on the under side of the cover for cooperation with latching means around the hatch opening for retaining the cover in position. This combined structure is a far cry from the definition of the claim. Accordingly, it is submitted that claim 16 is now in condition for allowance. (Emphasis added.)

51. By an action dated September 3, 1954, the examiner notified the applicant that claim 16 was allowable. This claim became claim 2 of the Farrell patent as later issued.

52. Claims 3 and 4 of the patent in suit read as follows:

3. A hatch and cover construction comprising a hatch coaming defining a rectangular hatch opening, a ledge extending around said coaming and having spaced openings therein, a hatch cover fitting said hatch coaming and having down-turned edge flanges resting on said ledge when said cover is in closed position, apertured lugs fixed to said cover and extending below said cover flanges for passage through said ledge openings when said cover is in closed position, and unitary locking means including a 'belt-like member mounted beneath said ledge and carrying a plurality of pins for respective insertion in the apertures in said lugs to lock said cover in closed position.
4. A hatch and cover construction as defined in claim 3 wherein said cover is provided with a plurality of depending mobile supports, said ledge having a second series of spaced openings for the passage of said supports, and said 'belt-like member including a plurality of space [d] ramp-like runways for supporting said supports and moving said cover vertically to lift said cover from and seat it on said ledge.

53. Although the complete phrase “unitary elevator means” appearing in claim 2 of the patent in suit is nowhere contained in the specification and is therefore not expressly defined therein, the word “unitary” and its intended connotation are set forth in the following passage from the specification (Column 3, lines 30-44) :

When the hatch cover is closed, the said wheels 10 or supports 11 and lugs 13 will be in vertical alignment with slots or openings 16 — 16' respectively in a plate 17 forming a ledge or angle on which the hatch cover bears when closed. Beneath this plate and in parallel relation thereto, I beams 18 are movably mounted on brackets 19 supporting anti-friction bearings 20. An I beam 18 is fitted at each side and each end of the hatch and their ends are joined together by flexible members 21, such as cables or chains, so that they form a continuous belt-like wnitovry elevator and locking member around the hatch coaming 7. This continuous wnitary member is preferably enclosed by an apron or auxiliary coaming 22 depending from the plate 17 and around the brackets 19 and thereby define the actual hatch opening. (Emphasis added.)

54. In contesting the validity of the claim in suit on the grounds that the claimed invention was fully anticipated by the prior art and that, when made, it was obvious to those skilled in the art, the defendant relies on the following United States and British prior patents:

The above-listed patents to Griffin, McGray (1,607,767), and Groppell, and the British patent to Donald were cited by the Patent Office during the prosecution of the application for the patent in suit. The others were not.

55. Beid '734 discloses a sectional cover system for over-length hatches on ore-carrying ships. Under this arrangement none of the several cover sections may be totally removed from over tbe Fateh opening described by the upright coaming. Eather, the sections are designed to telescope so that the hatch opening is unobstructed except for the width of one cover section. The outboard edges of each cover section are turned down and then flanged inwardly toward the coaming. Telescoping is achieved by providing a sufficient difference in the dimensions of this contour to permit the several adjacent sections to clear each other when aggregated over a single portion of the hatch opening. The Eeid drawings show a two-section cover wherein the section with the smaller end-view profile moves laterally along the hatch opening by a series of rollers contacting a solid ledge mounted along the top edge of the coaming. The bottom flange of the larger section, into which the smaller one telescopes, rests on a ledge running the full length of the outboard sides of the coaming. This ledge, which is slotted, is mounted sufficiently far down on the side of the coaming to permit total clearance of the smaller-dimensioned adjacent cover section and its supporting ledge. The larger cover section rests on, and does not move laterally while in contact with, the ledge that bears its weight. Immediately below the lower ledge is a shaft, running the entire length of the coaming, on which are mounted a series of cams, one for each slot in the ledge directly above. When the shaft is rotated, the cam surfaces engage the underside of the flange on the cover section and the section is thereby raised from its resting place on the ledge and enabled to slide laterally on the cam surfaces. Identical ledge, roller, cam, and shaft apparatus are provided on each outboard side of the hatch coaming. The specification speaks in general terms of connecting the ship’s engines to the cam shafts so as to elevate both sides of the larger hatch cover section at once, though the specific mechanics of this unified method of operation are not detailed. In any event, the patent does not show the two cam shafts as being permanently interconnected in any way.

56. Griffin '958 discloses a circular watertight submarine hatch, the entire perimeter of which is simultaneously raised by the interaction of mated cam-faced projections affixed to the hatch and to the surrounding hull. When the cover is rotated from within the submarine (preparatory to final opening), the shoulders of the cam surfaces cause a vertical movement breaking the cover seal. This initial vertical movement is the equivalent of jacking in the case of a watertight hatch cover on a cargo ship.

57. McGray '456 and '946, the latter issued as an improvement patent over the former, disclose a watertight sectional hatch cover system that is removable by a rolling away of each of the wheel-mounted sections on a slotted ledge mounted on the outboard sides of the coaming. The fore-to-aft width of each cover section is slightly less than twice the height of the coaming above deck level. A wheel is mounted at the center point of each outboard side of every section. A continuous ledge is provided extending throughout and beyond the entire length of the outboard sides of the upright hatch coaming. This ledge is mounted sufficiently high on the sides of the coaming that when the cover section wheels are riding on it, the underside of the sections will be raised above the top of the coaming ridge. Thus, the sections may roll laterally across the length of the hatch opening and after clearing the end of the opening may continue onto the ledge extensions at which point they may be tilted upright and aggregated for stowage while loading or unloading is in process. To close the hatch, the sections are returned to the horizontal and rolled back on the ledge until the entire length of the hatch opening is covered by sections resting ajar of the coaming ridge. To lower the sections onto a seated position on the coaming ridge, slots in the coaming ledge are provided directly under each cover section wheel station. Immediately below each ledge slot, a vertical screw jack is bracket-mounted to the side of the coaming. When these jacks are turned down, the cover wheels are permitted to descend into the slots in the ledge until the outboard sides of the cover sections come to rest on the coaming ridge. At that point final closure and sealing of the cover is effected by bolting or dogging each section down to the coaming. The jack provided under each slot in the coaming ledge is actuated manually and functions independently of all others.

58. McGray '767, allegedly an improvement over McGray '456 and McGray '946 (finding 57, supra), discloses an essentially flush, watertight hatch cover consisting of a series of sections independent of each other. Each section has two wheels, one mounted at the center of each outboard side. These wheels run on an angle iron channel bolted to the deck at the base of the recessed coaming and extending well past each end of the hatch. By rolling to the portions of the channel extending past the ends of the hatch, the cover sections may be moved clear of the hatch opening. A half-moon well is recessed into the deck at each point along the channel where a cover wheel will rest when all of the cover sections are positioned over the hatch opening preparatory to closing. A sliding member is provided adjacent to each recess well so that the well may be either exposed or covered over at the level of the angle iron channel. When the sections are rolled to their position for closing, a manually operated lever is employed to individually raise each cover wheel so that the sliding member may be pulled aside and the wheel lowered into the exposed half-moon recess until the weight of the cover section is borne by the ridge of the recessed coaming. When this is done with all wheels on all sections, the sections are bolted together where they join across the hatch opening and bolted down around the full periphery of the opening. Basically this patent differs with the prior McGray patents only in that it is adapted to an essentially flush-type coaming rather than to the traditional raised coaming.

59. MarineUo '6:30 and '631, which were co-pendiug in the Patent Office and issued the same date, deal with the means and methods by which a section of the roof of a sealed truck body may be removed in order to provide additional headroom for the loading and carriage of oversized cargo not requiring a sealed enclosure during transit. Though not referred to as such by the inventor, the structure is quite similar in principle and configuration to a hatch cover construction on a cargo ship.

Marinello’s object is to provide an opening in the roof of a sealed truck body by constructing the roof with a removable cross-section located at the front, center or rear of the body, wherever desired. This removable section is the equivalent of a section on a ship’s hatch cover. The sides of the body are the equivalent of the outboard sides of a hatch coaming. A ledge is provided along the upper portion of the body sides. The movable portion of the roof has wheels mounted on its outboard sides. Slots are provided in the ledge directly below the roof section’s wheel locations when the section is centered directly over the roof opening. A vertical jack screw, bracket-mounted to the side of the body, is located directly below each slot in the ledge. A horizontal shaft and worm gear arrangement on each side of the truck body underneath the ledge, actuates all jack screws on one side of the body simultaneously. The jackscrew’s function is to permit the movable section’s wheels to descend into the ledge openings and thereby permit the section to assume a seated and sealed position over the roof opening or to raise the wheels up to the level of the top surface of the ledge so that the section may be rolled clear of the roof opening and over the portion of fixed roofing adjoining the opening at either end. The two side-mounted shafts that actuate the jack screws are not physically interconnected. The patente© speaks of these shafts as being operated either with a hand crank or by supplementary power such as an electric motor. Given the motors to power the shafts individually, it would be a mechanical expedient to synchronize the motors so that the shafts would be actuated simultaneously.

69. Mercier '604 discloses a system for the use and control of hydraulic fluid pressure as a means of regulating two or more pistons where it is desired that such pistons assume either of two different positions; for example, a raised and a lowered position. The Mercier system, controlled by a single selector value, is adaptable for use in the Greer and Piezo hatch cover designs as the means of raising and lowering the jacking platforms used to move the cover wheels up and down through the coaming ledge openings.

61. Groppell '286 discloses an essentially flush-type hatch cover for use on the second and lower decks of a conventional cargo ship. The covers, of the hinged, sectional, wheel-mounted variety, do not purport to be watertight and therefore are held down in closed position only by their own weight. Moreover, the coaming ledge along which the cover wheels roll is not slotted or otherwise indented at the places occupied by the wheels when the cover is in its closed position. Accordingly, no jacking is involved in the operation of the cover. The cover is raised by polling force exerted on two cables attached to the center section of the cover and then threaded through pulleys or sheaves rotably mounted on the underside edge of the hatch coaming of the deck immediately above and thence engaged by an overhead hook from the ship’s cargo-handling gear. Tension on these cables forces the hinged cover sections to assume a tent-like attitude and to ultimately fold against each other in an upright position at the end of the hatch. For closing, the cables are again attached to the cargo hook and the sections are permitted to assume their horizontal and closed position by the force of gravity with cable tension maintained to prevent slamming.

62. Greer and Mercier '261 discloses a system for folding and unfolding wheel-mounted sectional covers over a hatch opening by means of a hydraulically powered actuating system built into the several cover sections. This invention is not concerned with the jacking of the cover sections from their seated position on the coaming ridge. It deals only with movement of the cover sections to and from fully stowed position. Such a system was employed in the case of the accused Piezo covers, whereas both the Mariner and Greer constructions utilized cargo winch-powered cables to perform this opening and closing function.

63. The Jernstrom reissue patent '959 discloses a watertight hatch cover assembly structurally similar to that installed by Seaboard on the Constitution, Independence, and the Schuyler Otis Bland. Whereas the covers on these ships fold away at the ends of the hatch opening, the Jernstrom patent calls for them to fold toward the sides of the hatch. This difference simply entails locating the coaming ledges along the ends rather than the sides of the hatch. Also, Jernstrom employs a hand-operated scissors jack rather than a screw-type jack to raise and lower the jacking platforms at the two wheel openings on each hatch. These platforms are in no way interconnected and no suggestion is made that they be mechanically operated in unison.

64. Greer and Mercier reissue patent '238 [a reissue of Greer and Mercier '261 (finding 62, supra) ] is concerned solely with improvements on their hydraulically powered apparatus for the folding and unfolding of wheel-mounted sectional hatch covers. As in the original patent, jacking of the cover off its seat on the coaming ridge is not involved.

65. Donald '429, a British patent, is not concerned with either the opening or closing of a hatch cover. It deals only with a means for fastening down a closed cover so that a watertight seal is formed by compression of the cover gasket against the coaming ridge. The object of the invention is to dispense with the traditional requirement of effecting final cover closure by manually turning down a series of nuts or dogs located around the periphery of the cover. To achieve this result, Donald proposes the use of a steel draw-bar running the length of each of the four sides of the hatch coaming directly above the coaming ledge. The bars have a series of inclined notches provided in their upper edges, one for each lug protruding outward from the turned down edges that form the periphery of the hatch cover. After the cover lugs are initially received in the notched openings of the draw-bar, the bar is drawn laterally by a manually operated screw-type arrangement. This lateral movement forces the cover lugs to follow the downward contour of the angular draw-bar notches thereby forcing the cover gasket to seat down on the coaming ridge. Each of the four bars around the hatch operates independently of the others.

66. Gade et al. '231, a British patent, discloses a watertight two-section removable hatch cover. The sections are hinged together across the center of the hatch. The extreme ends of the sections are beveled downward toward the deck, and curved bracket arms, extending past the end of the cover and descending toward the deck, are affixed to these beveled surfaces. On one end of the cover three of these arms are hinged to the deck while the two curved arms at the other end are each equipped with a wheel at the outer end. These two arms are offset from the outboard sides of the cover so that their wheels may run in a channel alongside the coaming while they travel the full length of the hatch hi the course of opening and closing the cover. When the cover is closed, the bracket-mounted wheels at its free end rest on pivoted platforms that operate as extensions of the fixed channels running along the outboard sides of the hatch. The platform’s pivot action permits the cover wheels to descend into wells in the deck. When this occurs, the cover comes to rest on the coaming ridge. To open the hatch, these pivoted platform members are to be raised to deck and wheel channel level by a means not specified in the patent. The two cover sections are brought together in an upright position at the hinged end of the hatch by tension exerted on a cable attached to the center of the hinged section. This upward pull, supplied by a cargo winch, causes the cover to tent at the center of the hatch as the wheels on the free end roll toward the end of the cover that is hinged to the deck. No special or unique means of fastening down the closed cover to secure a watertight seal is disclosed or suggested by the patent.

67. The Gas Light & Coke Co. '124, a British patent, discloses a two-or four-section removable, watertight hatch cover. Since the four-section cover involves only a duplication, at each end of the hatch, of the cover-lifting apparatus provided at one end for operation of the two-section cover, the description herein will be in terms of a two-section cover.

The hatch is of the conventional configuration, with a raised coaming having a ledge that runs from one end of the hatch to the other on a slightly inclined plane. At the end of the hatch where the coaming ledge is highest, a cover section is hinged to the coaming. The second section is hinged to the first at a point approximately midway of the hatch opening. At the outboard sides of the free end of the second section, roller wheels are affixed which travel on the inclined ledge previously described. When the cover is in its closed position, these wheels are at rest at the lower end of the ledge incline. At that point the cover sections are permitted to come to rest on the coaming ridge preliminary to the final bolting down necessary to watertight sealing.

The patent is concerned with raising the cover in a single operation. Thus, it does not contemplate a two-step operation in which the cover is first jacked and then moved to full-open position.

A slotted bar is mounted on each outboard side of the cover section that is hinged to the end of the coaming. The bars are mounted in a position somewhat inclining from near the end of the cover toward the center of the hatch. One end of a curved bar is attached to each of the bars by a fixed pin extending through the slot and capable of lateral movement within it. The other end of the curved arm is attached to a deck-mounted threaded shaft by a sleeve the inside surface of which is also threaded. The threaded shafts are mounted in an inclined position with the upper end, with which a worm gear engages, at approximately the level of the coaming ridge at the hing'ed end of the hatchway, and the lower end, inserted in a fixed, socket-type bushing toward the center of the hatch, at approximately deck level. The worm gears on each side of the hinged end of the hatch cover are interconnected by a horizontal jack shaft running across the end of the hatch. When this shaft is turned, either by a crank or by external mechanical power, the threaded shafts turn in unison and force the threaded sleeve members to climb the inclined surfaces of the shafts. In turn, this forces the pin in the upper end of each curved arm to exert both an upward and lateral force on the slotted bars attached to the sides of the end cover section. This force causes the end cover section to rise, pivoting about its hinges at the end of the hatch coaming. As this occurs, the hinge point of the two cover sections at the center of the hatch rises with the free end of the cover being supported clear of the coam-ing by its wheels running in the ledge or channel. Movement in this manner continues until the bottom surfaces of the two sections come together in an upright position at the end of the hatch. The cover is closed by turning the jack shaft in the opposite direction which causes the arm-mounted threaded sleeves to descend the threaded shafts.

Conclusion of Law

Giving the claim in suit the broadest scope consistent with its validity, neither of the accused types of constructions infringes. The petition is therefore dismissed. 
      
      The opinion, findings of fact, and recommended conclnsion of law are submitted under the order of reference and Rule 57(a).
     
      
       The parties have agreed, as authorized by Rule 47(c)(1), that present consideration should be limited to the issue of plaintiff’s right to recover, with determination of the amount of recovery, if any, reserved for further proceedings.
     
      
       Claim 2 reads:
      A RatcR and covering construction comprising a RatcR coaming defining a rectangular RatcR opening, a ledge on at least two opposite sides of said RatcR coaming and Raving spaced openings tRerein, a RatcR cover seat around said coaming, a RatcR cover for removable mounting on saidi seat and closing said RatcR opening, a plurality of mobile supports spaced on said hatch cover and corresponding to tRe openings in said ledge, said supports resting on said ledge for movement of said RatcR cover to and from closed position, said supports passing down tRrougR said openings to lower said cover on said seat, a unitary elevator means along said RatcR coaming beneatR said ledge and engageable witR said mobile supports wRen tRe latter extend tRrougR said openings for simultaneously lifting or lowering said supports and unseating or seating said cover preparatory to removing or closing said cover.
     
      
       In relevant part, 35 U.S.C. § 112 provides as follows :
      
        Specification
      
      * * * * *
      An element in a claim for a combination may- be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
     
      
       It is covered by claim 3 of the Earrell patent.
     
      
       Griffin 958 (finding 56, infra), McGray 767 (finding 58, (infra), and Groppell 286 (finding 61, infra).
      
     
      
      
         Donald '429 (finding 65, infra).
      
     
      
       Finding 57, infra.
      
     
      
       Finding 59, infra.
      
     
      
       Finding 45, infra.
      
     
      
       As previously noted, the Farrell cover was never built.
     
      
       85 U.S.C. § 282.
     