
    (357 F. 2d 978)
    MARTIN DWYER v. THE UNITED STATES
    [No. 205-59.
    Decided March 18, 1966]
    
      
      /ames H. Gallaban for plaintiff. Ralph L. Chappell, attorney of record. Kenyon <& Kenyon, Sprague <& Stem, of counsel.
    
      Jaeh B. Stevens, with whom was Assistant Attorney General John W. Douglas, for defendant. T. Hayward Brown, of counsel.
    Before CoweN, Chief Judge, Reed, Justice (Ret.), sitting by designation, Larakore, Davis and ColliNS, Judges.
    
   Per Curiam :

This case was referred to Trial Commissioner Donald E. Lane wbo, under the order of reference, filed his opinion, findings of fact and recommended conclusions of law on July 1,1964. Exceptions were filed to the commissioner’s findings and recommended conclusions of law by the parties, briefs of the parties were filed and the case has been argued orally. Since the court agrees with the commissioner’s findings, his opinion and his recommended conclusions of law, as hereinafter set forth, it hereby adopts the same as the basis for its judgment in this case. It is, therefore, concluded that patent No. 2,397,114 is valid and that the claims thereof in suit, claims 1,2, 3,4, 6 and 7 have been infringed; that patent No. 2,519,123 is invalid and not infringed; and that patent No. 2,455,242 is invalid. Judgment is entered to this effect with the extent of liability on patent No. 2,397,114 to be determined in further proceedings before the commissioner.

Opinion op Commissioner

This is a patent suit under the provisions of 28 U.S.C. § 1498, in which plaintiff seeks to recover reasonable and entire compensation for the unauthorized use of three patented inventions. Plaintiff charges infringement of claims 1-4, 6, and 7 of U.S. Letters Patent 2,397,114 which issued to one Ealph Anzalone March 26,1946, on an application filed January 21, 1941; claims 1, 4, 6, and 7 of U.S. Letters Patent 2,519,123, which issued to plaintiff and Anzalone August 15, 1950, on an application filed July 10,1947; and claims 1,2,7, and 8 of U.S. Letters Patent 2,455,242, which issued to plaintiff November 30,1948, on an application filed July 21,1945. The patents in suit will be referred to hereinafter as the '114, '123, and '242 patents. Plaintiff was at the time of this suit the owner of the entire right, title, and interest in all of the patents in suit. It is found that the claims in suit of the '114 patent are valid and infringed, that the claims in suit of the '123 patent are not infringed and are invalid, and that the claims in suit of the '242 patent are invalid.

The '114 patent relates to a rocket type signal construction designed to be hand fired and yet capable of carrying a signal to relatively high altitudes. The '123 patent relates to a completely self-contained, hermetically sealed signal device, the alleged inventive feature being the arrangement of the outer container for a rocket signal construction much like the one disclosed in the '114 patent. The '242 patent discloses a combination day-night distress signal in which a flare, used for night signaling purposes, and a smoke compound, used for day signaling, are aligned in spaced end-to-end relationship in a single container. The patent disclosures and the claims in suit are described in greater detail in the accompanying findings of fact.

Plaintiff bas charged that the Army Signal, Ground, White Star, Parachute, Model T-73, hereinafter referred to as the T-73, infringes the claims in suit of both the '114 and '123 patents. The Navy Signal (Distress Day and Night) Mark 13 Mod 0, hereinafter referred to as the Navy Day-Night Signal, is charged to infringe the claims in suit of the '242 patent. Defendant has admitted procurement of at least one of each of the accused structures. The parties have agreed to a separation of issues for trial. The questions of infringement and validity of the claims in suit are now before the court. The several issues of law involved are discussed in the following comments.

Defendant has attempted to avoid liability under the three patents in suit by urging that all of the claims in suit of these patents are invalid as failing to define invention over the prior art, and that none of the claims in suit of the '114 and '123 patents are infringed. It has also been contended that the patentee of the '114 patent was not the first inventor of claims 6 and 7 of that patent, both of which are in suit. Defendant further contended that the claims of the '242 patent are invalid because they recite an aggregation.

Turning first to the '114 patent, it should be noted at the outset that both the T-73 and the '114 Signals perform substantially the same function and obtain substantially the same result. They are both designed to be fired by hand and to deliver a payload comprising a flare attached to a parachute to a relatively high elevation at which point the flare-parachute combination is expelled so that it ban slowly descend with the flare burning. Both structures have what is described in the '114 patent as a “minor launching charge” which provides sufficient force to eject the rocket assembly a safe distance from the firer, at which time a “major launching charge” is ignited and propels the signal to the desired height by rocket action. Defendant has contended that there is no infringement of any of the claims 1-4, 6, and 7 of the '114 patent, because of a number of structural differences which exist between the T-73 Signal and the structure disclosed and claimed in the '114 patent. Of these differences to which defendant has pointed, the only ones warranting consideration are the recitals in claims 1-4 that the vanes of the '114 construction extend outwardly in a substantially radial or radial direction when the rocket projectile is launched, as contrasted with the substantially tangential position which the vanes of the T-73 Signal assume upon discharge of the rocket projectile, and that the vanes of the T-73 have no spring means to urge them open. While the shape of the vanes of the T-73 does differ to some extent from the configuration of the T14 vanes, this difference is not of such significance that infringement can be avoided. The vanes of each of the structures operate in essentially the same way to provide flight stabilization for the rocket signal, and they must under the circumstances be regarded as equivalents. Although the vanes of the T-73 are not urged outwardly by a separate spring means, they have inherent flexibility which constitutes a spring means within the meaning of that term as used in the '114 patent. The claims of the '114 patent are not limited to the specific coil spring embodiment shown. It should be noted that claim 6 contains no recitation of vane structure, and claim 7 which does, includes no recital that the vanes must be radial or substantially radial. Also, claim 7 does not recite a spring means for urging the vanes outward. All of the other differences in structure between the accused T-73 and the '114 construction are immaterial variations which do not alter the substance of the invention. To make out a case of infringement it is not necessary that the accused device conform to that of the claimed structure in every particular, but only that it be sufficiently similar that it is in substance the same thing. See Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 42 (1929). The inconsequential differences of structure between the accused T-73 Signal and the '114 device cannot have any significance attached thereto. The accused structure contains the essence of the invention disclosed and claimed in the '114 patent, and to avoid a finding of infringement under these circumstances would be manifestly unjust.

Defendant has produced numerous prior patents and publications, the more important of which are discussed in detail in the accompanying findings, in an effort to show that the '114,'as well as the '123 and '242 patent claims in suit did not define a patentable advancement in the art.

The pertinent sections of the patent statutes (35 U.S.C.) provide:

§ 102. Conditions for patentability; novelty and loss of right to patent.
A person shall be entitled to a patent unless-
(a) the invention was known or used by others in this country, or patented or described in a printed J?ublication in this or a foreign country, before the invention thereof by the applicant for patent, or
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or
(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or
(f) he did not himself invent the subject matter sought to be patented, or
(g) before the applicant’s invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it. In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last tó reduce to practice, from a time prior to conception by the other.
§ 103. Conditions for patentability: noil-obvious subject matter.
A patent may not be obtained though the invention is- not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been Obvious at the time the invention was made to a person having ordinary skill in the art to which said sub j ect matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

It is defendant’s contention that the invention defined by claims 1-4 and 7 of the '114 patent are invalid under § 103 of the patent statute as having been obvious at the time the invention was made to one having ordinary skill in the art. Specific reliance has been placed upon the teachings of the Driggs et al. patent 1,947,884 when combined with the British patent 2,826 and with the Skinner patent 1,994,490. It is asserted that claim. 6 is fully anticipated by the Driggs '834 patent alone, and that it is invalid in accordance with the provisions of § 102 of the patent statute. The Driggs '834 patent discloses a signal having as a payload a flare-parachute combination contained within a cartridge which is fired to its operating height by the force of the firing charge only. The Driggs '834 patent disclosure is not a rocket device. It has no major propelling charge and would be unable to reach the altitude of the patented signal construction. Defendant has erroneously asserted that a small charge employed by Driggs to release the flare-parachute combination is equivalent to the major propelling charge of the '114 signal; the two charges compared would in no way accomplish the same result. The major propelling charge of the '114 structure provides the forward thrust to propel it to a high altitude whereas the forward thrust provided by the expelling charge of the Driggs flare is negligible. The '114 rocket construction contains adjacent the upper end of the major propelling charge an expelling charge for releasing the flare-parachute combination comparable to the expelling charge of the Driggs device. The Driggs '834 flare signal thus fails to anticipate those features of the claims of the '114 patent with which it is compared. It also follows that none of the claims of the '114 patent in suit, claims 1-4, 6, and 7, are anticipated by the Driggs '834 patent disclosure 'because the other prior patents relied upon, particularly the Skinner patent and British patent 2,826, do not supply the deficiencies of the Driggs '834 patent. The British patent 2,826 is cited merely for its disclosure of vane structure allegedly equivalent to that described in claims 1-4 and 7, and would be effective as an anticipatory reference only if the Driggs '834 device and the rocket assembly of the '114 structure could be regarded as equivalents. The Skinner patent discloses a rocket projectile having a launching charge and a propelling charge which operate in a manner similar to that of the '114 rocket construction; however, the Skinner device is designed to be fired from a mortar and varies sub-tantially structurally and in function and result from that of the '114 construction.

The combination of the teachings of the prior patents cited by defendant, particularly the Driggs '834, Skinner, and British 2,826 patents, may now make the construction of the patented device appear obvious; however, obviousness is always more easily conceived after the event than is the solution while the problem remains unsolved. See Brown v. Brock, 240 F. 2d 723, 112 USPQ 199 (4th Cir. 1957). See also Zonolite Co. v. United States, 138 Ct. Cl. 114, 149 F. Supp. 953, 113 USPQ 223 (1957). Numerous rocket constructions and flare signals had been developed in the past, but no one had satisfied the need for a rocket signal capable of being hand fired and yet reaching high altitudes until Anzalone disclosed the '114 patent construction.

It is concluded that it would not have been obvious at the time the '114 invention was made to have combined the mortar-fired rocket projectile of Skinner with the flare signal of Driggs '834 and the wing structure of the British patent 2,826, or to combine any other group of prior patents cited by defendant to produce the hand launched rocket construction disclosed and claimed in the '114 patent. The '114 patent claims in suit are found to be valid.

Defendant has alleged that claims 6 and 7 of the '114 patent are invalid (apparently under § 102 (f) and/or (g) of the patent statute quoted above) because the subject matter described therein was first invented by another, one Guy E. Giroux, Jr. In support of this allegation, defendant has relied solely on the fact that these two claims were presented to the Patent Office in an application submitted by said Giroux prior to the filing of the '114 patent application. The record shows that '114 patent claims 6 and 7 in the identical form in which they now appear were transferred from the earlier filed Giroux application to the '114 patent application ; both applications at the time of the transfer were owned by the same assignee corporation. The fact the two claims first appeared in an earlier application is not in itself conclusive' proof of the inventorship of the subject matter described therein. The original Anzalone application contained claims which the original disclosure fully supported broad enough to encompass the subject matter of '114 patent claims 6 and 7, and the inventor later submitted an oath which had the effect of reaffirming his inventorship of the subject matter disclosed and claimed in the 'lié application. There is also evidence of record to the effect that Anzalone had disclosed his invention to another prior to the filing date of the Giroux application, and it is just as reasonable under the circumstances attendant this case to conclude that Anza-lone was the prior inventor. It is also noted that there is no indication Giroux has ever contested the inventorship of the 114 invention. Defendant has cited the case of United Chromium Inc. v. General Motors Corp. 85 F. 2d 577 (2d Cir. 1936), cert. denied, 300 U.S. 674 (1937), in which a patent was invalidated because the original inventor (not the patentee), who had filed an application for a patent on his invention and whose company had been purchased by the patentee’s company, subsequently filed a concession of priority to the patentee under protest. The facts of that case clearly distinguish it from the situation at hand. As noted above, there is no evidence of record to the effect Giroux contested the award of priority and no facts have been adduced to show that he was the prior inventor other than the fact his filing date preceded that of Anzalone’s by approximately seven weeks, a fact which standing alone is inconclusive. Defendant has failed to overcome the presumption of validity which attaches to the 'll! patent claims 6 and 7, and Anzalone must be regarded as the first inventor of these claims.

With regard to the '123 patent, defendant has urged that none of the claims of the '123 patent in suit are infringed because of limitations made therein during the prosecution of the '123 patent application before the Patent Office, which limitations narrow the scope of the claims to the extent they do not encompass the allegedly corresponding structural features of the accused T-73 Signal. The claims in suit are all directed to the arrangement of the outer container within which the rocket assembly is contained. The T-73 has a complete and separable outer container which encloses the entire rocket assembly including a firing cap which is fitted on the end opposite from the primer of the rocket and is designed to be removed and placed in firing position when one desires to. launch the rocket. Plaintiff has contended that all of the claims in suit are sufficiently broad to be interpreted to include as part of the outer container the internally contained firing cap of the T-73. Under ordinary circumstances, plaintiff’s argument would probably be meritorious since the differences between the accused device and the structure defined by the claims in suit are rather narrow. However, these differences become significant when the prosecution history before the U.S. Patent Office is reviewed. The record shows that in order to obtain the allowance of each of the '123 claims in suit, the applicants limited the claims to a construction in which the outermost casing included the separable firing cap as an integral part thereof. This was necessary in order to avoid the Patent Office examiner’s rejections based on prior art and based on the fact that otherwise the applicants were claiming a “casing for a casing.” Having thus purposely limited the claims to a construction in which the firing cap forms an integral part of the outer container, the plaintiff is now estopped to expand the scope of the claims to recoup that which has been surrendered by asserting that the claims can be interpreted to include the internally contained and completely covered firing cap of the accused structure. It is well settled that patent claims are interpreted in light of the prosecution history, and that where the applicant has narrowed his claims in order to obtain the allowance thereof, the limitations recited or argued cannot be disregarded in an infringement action. See Powder Power Tool Corp. v. Powder Actuated Tool Co., Inc., 230 F. 2d 409, 415, 108 USPQ 155 (7th Cir. 1956). A similar situation to the one confronted here was presented in Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126 (1942), wherein a'patentee had amended his claims which originally provided for a conductor means “carried” by a gaming table to recite a conductor means “embedded” in the table. The court held:

* * * the applicant restricted his claim to those combinations in which the conductor means, though carried on the table, is also embedded in it. By the amendment, lie recognized and emphasized the difference between the two phrases and proclaimed his abandonment of all that is embraced in that difference. * * *
* * * íjí *
* * * The difference which he thus disclaimed must be regarded as material, and since the amendment operates as a disclaimer of that difference, it must be strictly construed against him. * * * As the question is one of construction of the claim, it is immaterial whether the Examiner was right or wrong in rejecting the claim as filed. * * *

The rule announced in the Exhibit case is applicable here. The applicants clearly restricted their claims to an embodiment in which the firing cap constitutes part of the outer casing rather than being in addition thereto. The doctrine of equivalents cannot be invoked to regain that which has been in effect disclaimed.

The '123 patent claims in suit recite a rocket signal having a complete outer cover, including a removable firing member which in its inoperative position is placed at the opposite end from the primer of the rocket and forms an integral part of a complete separable outer enclosure for a rocket assembly. The rocket motor assembly contained within the outer enclosure is recited in the claims, but is not part of the alleged invention.

Defendant, in challenging the validity of the '123 patent claims in suit has referred to 15 prior art references, of which the Pfeil patent 995,174, Hammell et al. patent 2,436,751, and Decker patent 2,120,736 are considered most pertinent. The Pfeil patent discloses a pyrotechnic device, a fusee, having a complete outer casing, said casing having as an integral part thereof a separable plug member which in the inoperative position is positioned opposite the firing end of the fusee. The plug member has a “button” or “scratch” which when brought in contact with an ignition chemical located at the opposite end of the fusee forms a firing means which ignites the fusee. The Pfeil patent discloses all of the salient features of the '123 structure as recited in the '123 claims in suit and is anticipatory thereof. The firing means of the '123 structure and of the Pfeil patent do differ in some minor respects. The Pfeil device em< ploys frictional contact of the scratch with an ignition chemical, whereas the '123 structure is fired by concussion. These different means of firing are fully equivalent and not patentably significant. While the internal pyrotechnic components contained within the respective outer enclosures of the '123 structure and the Pfeil patent are somewhat different, these inner components, as earlier noted, were not regarded as part of the '123 invention. Furthermore, it would have been obvious to have included a rocket assembly such as is disclosed in the Decker patent within the enclosure of the Pfeil patent. The Decker patent shows a rocket assembly within an outer enclosure similar to that of the Pfeil patent.

The prior Hammell patent discloses a firing cap mounted on the primer end of a signal device which is nearly identical structurally and functionally to the firing cap of the '123 structure. It would have been obvious to one having ordinary skill in the art to have placed the firing cap of the Hammell patent at the opposite end from the primer and to have it form a separable part of a complete outer enclosure in view of the disclosure of the Pfeil patent. The Hammell patent was cited by the Patent Office examiner during prosecution of the '123 patent application and this creates a presumption of validity over this reference; however, this presumption has been rebutted and is particularly weakened where, as here; it is considered in combination with art not cited by the Patent Office. The claims of the '123 patent in suit are found invalid as failing to define invention over the Pfeil patent alone or in combination with either Hammell or Decker.

Defendant has sought to avoid liability under the '242 patent solely on the ground that the claims relied upon are invalid, it being conceded that the accused Navy Day-Night Signal and the structures defined by the claims in suit are substantially the same.

The '242 patent claims in suit recite a signal device including a flare signal and a smoke signal placed in spaced end-to-end relationship in a single container. It is clear that each signal is to be used separately and independently from the other since one is a day signal and the other is for night use. The only possible cooperation between the two signals is that one acts as a handle while the other is being used. The respective individual functions of the two signals which comprise the '242 structure remain unaltered and can be used independently. The elements of the '242 device do not cooperate in any unobvious or unexpected manner. To be patentable an old combination of elements must contribute more than the sum of its parts. “The mere aggregation of a number of old parts or elements which, in the aggregation, perform or produce no new or different function or operation than that theretofore performed or produced by them, is not patentable invention.” Lincoln Engineering Co. v. Stewart-Warmer Corp., 303 U.S. 545, 549 (1938). See also Bocjl Corp. v. United States, 120 Ct. Cl. 347, 396, 100 F. Supp. 600 (1951).

Plaintiff has contended .that the arrangement of the elements in the '242 structure is such that the '242 device can be held in the hand while in use constituted a patentable advancement in the art. The arrangement of the '242 signals in such a manner that one along with its outer casing can be used as a handle during the burning of the other may be convenient, but it does not supply the coaction necessary to permit a finding the '242 device was patentable. The situation presented here is similar to that in the case of Reckendorfer v. Faber, 92 U.S. 347, 356 (1875), wherein the U.S. Supreme Court found the combination of a pencil and eraser to be an unpatentable aggregation even though it provided a highly convenient device. The Court observed:

This combination consists only of the application of a piece of rubber to one end of the same piece of wood which makes a lead-pencil. It is as-if a patent should be granted for an article, or a manufacture as the patentee prefers to term it, consisting of a stick twelve inches long, on one end of which is an ordinary hammer, and on the other end is a screw-driver or a tack-drawer, or, what you will see in use in every retail shop, a lead-pencil, on one end of which is a steel pen. * * * In all these cases there might be the advantage of carrying about one instrument instead of two, or of avoiding the liability to loss or misplacing of separate tools. ' The instruments placed upon the same rod might be more, convenient for use than when used separately. Each, however, continues to perform its-own duty, and nothing else. No effect is produced, no result follows, from the j oint use of the two. * * * The law requires more than a change of form * * * or of tlie order in which they are used, to give patentability. * * * (Emphasis added.)

The doctrine of the Reckendorfer case, supra, was applied in a more recent case, Application of Krivanek, 225 F. 2d 483, 107 USPQ 53 (CCPA-1955) in which an elongated surgical tool designed for the removal of metal fragments from wounds and having a flexible filament in the form of a snare at one end and a magnet at the other was found unpatentable, even though it also was a convenient combination. The court stated:

While we readily agree that the instant device might provide more efficient and speedier means over separate magnet and loop devices, it does not necessarily follow that such a combination is patentable.

All of the claims of the '242 patent in suit, claims 1,2,7, and 8 recite an aggregation of elements and are invalid.

The '242 claims in suit are also found to be invalid as failing to define an invention over the combination of prior patents issued to Le Comte, 2,328,916, Van Kamer, 2,476,125, Miller et ah, 1,273,260, and Holt, 1,360,527. The Le Comte patent discloses a signal which is substantially the same structurally as either of the two individual signals of the '242 device with the possible exception of the arrangement of the cover member and ignition assembly. The Van Karner and Miller patents disclose pyrotechnic devices having cover member and ignition assembly arrangements equivalent to those employed in the '242 signals; The Van Kamer patent is also in most other respects similar to either of the '242 signals which comprise the '242 device. The Holt patent shows two flare signals placed in a tubular container and spaced apart by insulation means. It would not have involved patentable invention to place the cover member-ignition assembly arrangements disclosed in either the Van Karner or Miller patents on the Le Comte signal and enclose two such structures formed thereby in a single container with insulation means therebetween as disclosed in the Holt patent.

It is recommended that the court find that the claims in suit of the '114 patent are valid and infringed, that the claims in suit of the '123 patent are not infringed and are invalid, and that the claims in suit of the '242 patent are invalid.

FINDINGS of.Fact

1. Plaintiff seeks recovery of reasonable and entire compensation under 28 U.S.C. § 1498 for the unauthorized use or manufacture of inventions described and claimed in three U.S. Letters Patent, Nos. 2,397,114, 2,519,123, and 2,455,242, hereinafter referred to as the '114, '123, and '242 patents, respectively. The '114 patent issued March 26, 1946, to K. Anzalone for a “Pocket Construction”; the '123 patent issued August 15,1950, to M. Dwyer and P. Anzalone for a “Hand Operated Pocket Type Device for Signaling and Other Purposes”; and the '242 patent issued November 30, 1948, to M. Dwyer for an “Emergency Day and Night Signaling Device.” The parties have agreed that this court has jurisdiction over the issues raised by the pleadings. The issues now before the court are patent infringement and patent validity.

2. Plaintiff filed his original petition on May 7, 1959, in which he sought recovery for the unauthorized use or manufacture by defendant of the inventions described and claimed in the '114 and '123 patents during the 6-year statutory period preceding this date. An amended petition was later filed on July 18,1961, in which recovery for the unauthorized use or manufacture of the invention described in the '242 patent was sought for the 6-year period preceding the filing of the amended petition.

■ 3. Plaintiff became the owner of the entire right, title, and interest in and to the '114 patent on May 9,1958, and was the owner thereof on May 7,1959, the date the original petition was filed. Plaintiff transferred his entire undivided joint interest in the '123 patent to Aerial Products, Inc., on September 12,1955. Plaintiff became the owner of the entire right, title, and interest in said '123 patent on May 9, 1958, and was the owner thereof on the date the original petition was filed. Plaintiff has been the owner of the entire right, title, and interest in and to the '242 patent from the date of its issue in 1948 and was the owner thereof on July 18,1961, the date the amended petition was filed. Plaintiff relies on the following patent claims: Claims 1-4, 6, and 7 of the '114 patent, claims 1,4, 6,7, and 10 of the '123 patent, and claims 1,2,7, and 8 of the'242 patent.

4. Defendant has admitted that it-was on notice, more than 6 years preceding suit, of its alleged infringement of’ the patents in suit. Defendant further has admitted procurement within the 6-year period preceding the filing of the original petition of one or more of the items depicted in the Department of the Army drawings received in evidence as plaintiff’s exhibit No. 4 and entitled “Signal, Ground, White Star Parachute T-73” which is alleged by plaintiff to infringe both the '114 and '123 patents. Defendant also has admitted procurement within the 6 years preceding the filing of the first amended petition of one or more of the Navy Day-Night Signals which are alleged to infringe the ’242 patent. The Navy Day-Night Signal is shown in plaintiff’s exhibits 5(a)-5(k) and 6, all of which show a structure entitled SIGNAL (DISTKESS DAY AND NIGHT) MAEK 13, MOD 0.

5. Flares of various types, including pistol-launched flares with parachutes, have been in use for many years and date back at least to World War I. By 1935 or 1936, the U.S. Army had experimentally produced pistol-launched parachute flares that could attain an altitude of 100 feet. Parachute flares launched from mortars and rifles were common and with such launching equipment could be fired 600 feet. The mortar-launched flares required a mortar, The rifle-launched flares required a rifle, an adapter, and blank cartridges and had such recoil that they could not be fired from the shoulder but had to be fired with the rifle butt resting on the ground.

6. Plaintiff, previously experienced with pistol flares, became acquainted with the Anzalone rocket device disclosed in the '114 patent, and procured an interest in the patent because of the low recoil coupled with high altitude capabilities of the Anzalone construction. There is evidence indicating that Dwyer improved the Anzalone device with regard to the parachute and the type of powder used, and later successfully demonstrated its superior performance capabilities as contrasted to that of a British rocket device before certain of defendant’s military officials. This demonstration by

plaintiff led to a series of orders for the Anzalone rocket device. There is no evidence of record to the effect that a device with all the capabilities of the Anzalone construction had been previously produced, although as defendant has pointed out, the prior art is replete with various rocket constructions showing separately all of the elements of the An-zalone rocket.

PATENT NO. 2,397,114

7. The '114 patent, of which figs. 1-5 of the drawings are reproduced herein, relates to a rocket-propelled signaling device adapted to be fired from a pistol. The '114 construction includes a cartridge-like casing 14 with a base 10. An exposed primer 24 is located in the base 10 and a launching charge 21 is placed within the base adjacent the primer. The rocket device itself has the lower part positioned within the casing 14 and resting against the disc 25 which separates it from the launching charge 21. Central openings 26 and 46 are provided to receive a fuse 47 which connects the launching charge 21 with the rocket charge 45 contained within body 42. The payload of the device, which may be a flare candle E and a folded parachute D, is carried in a compartment 56 forward of the rocket charge 45 and container 42. The flare candle E is separated from the rocket charge 45 in body 42 by plug 52, release charge 63, and plug 64, all of which have central openings leading into the flare E. The rocket body 42 carries two rings 27 and 37 connected by longitudinally extending rod members 28. Curved guiding vanes 30 are pivotally mounted on the rods 28. When within the casing 14, the vanes 30 are collapsed as shown in fig. 3, and when the rocket is in flight, the vanes 30 extend outward as shown in fig. 4. Springs 32 on the rods 28 urge the vanes 30 outwardly to the positions shown in fig. 4. A pistol for launching the rocket device is illustrated in fig. 5.

8. The '114 patent construction is operated when the firing pin of the pistol strikes primer 24. This in turn ignites the minor charge 21 which expels the device from the cartridge casing 14 which is retained in the pistol barrel by latch 18. During this expulsion, the vanes 30 open outward after leaving the casing 14. The friction of the vanes against the

interior of the casing causes at least partial rearward movement of the vanes. It is stated that this relative movement in the longitudinal direction toward the trailing end of the rocket body occurs as the device emerges from the gun so that it wiH assume the fully extended position shown in fig. 2. The expelling charge 21 while propelling the device a short distance from the point of initial firing ignites fuse 47. Fuse 47 ignites the main rocket charge 45 which propels the device to the desired height. At the termination of the burning of the main rocket charge, another small expelling charge 63 is ignited which releases the illuminating body E together with attached parachute D. The parachute then descends carrying the illuminating body or candle, which has been ignited by the flame generated by the major rocket charge 45 through aligned openings 53, 65, and 66.

9. Claims 1 and 6 of the '114 patent are representative of the six claims, claims 1-4, 6, and 7, charged to be infringed by the Army T-73 signal device. These two claims are set forth below in clauses to facilitate understanding the combinations recited:

Patent Claim 1 of '11I¡.
A rocket device comprising
a cartridge-like casing adapted to be inserted into the barrel of a launching pistol and to be retained therein after discharge of its contents, a minor launching charge within said casing, a projectile supported in said casing, a major charge of rocket-propulsion material within said projectile,
means to ignite the latter upon the firing of said launching charge by said pistol, a member slidably carried on said projectile upon a portion thereof extending within said casing, a second member,
longitudinally extending members joining said first and second named members,
guiding vanes pivotally supported from said longitudinally extending members,
each said vane being adapted in a first or collapsed position to lie against said portion of said projectile within said casing, and in a second or open position to extend from said projectile in a substantially radial direction,
spring means for urging each said vane into its said open position,
abutment means to limit said open position of said vanes,
said vanes being retained against the tension of said spring means in their said collapsed condition by said cartridge casing and in-frictional contact with the latter by said spring means, and being moved longitudinally of said projectile toward the trailing end of the latter upon its discharge from said casing by their said frictional contact with said casing, and then being moved automatically by said spring means into their said open position upon leaving said casing to guide the flight of said projectile, and
means for limiting said longitudinal displacement of said vanes.
Patent Claim 6 of 'UJj.
A rocket device comprising
a unitary cartridge-like casing adapted to be inserted in the barrel of a launching pistol and to be retained therein after discharge of its contents, said casing having
an externally exposed percussion cap at the butt end thereof
and containing a minor launching charge of explosive packed therein immediately adjacent said percussion cap,
a projectile including two aligned containers connected together and supported in said casing beyond said minor charge, the first of said containers having
a major charge of rocket powder packed therein and said latter charge having a fuse recess formed therein adjacent the rear thereof a fuse disposed in said recess and directly exposed at one of its rear ends to a flame propagated by said minor explosive charge,
a supplemental launching explosive charge disposed in the second container adjacent the rear thereof and in proximity to the rocket charge in the other container,
a flare candle disposed in the second container, the rear end of said candle being exposed'to a flame generated by the nearest adjacent portion of the rocket powder in the first container and said supplemental launching explosive charge,
a folded parachute, having its shrouds connected to said candle mounted in said second container adj acent the front end thereof and a separable closure plug forming the nose of said second container and serving to temporarily position therein the aforesaid contents thereof.

10. Claims 2-4 of the '114 patent do not vary significantly from claim 1. Claim 2 specifies that the projectile be supported in the casing beyond said minor charge, that the major charge be adapted to be ignited upon discharge of said projectile from said pistol, that the member slidably carried on the projectile be ring-like, and that the longitudinally extending members be rod-like. Claim 3 differs from claim 2 in that it specifies that the casing have an externally exposed percussion cap at the butt end thereof, that the minor launching charge be immediately adjacent said percussion cap, that the projectile include two aligned containers connected together, that the vanes extend in a radial (as opposed to substantially radial) position, and that the means for limiting the longitudinal displacement of the vanes be a stop means. Claim 4 differs from claim 3 in that it deletes the requirement that the projectile include two aligned containers.

11. Claims 7 of the '114 patent, the only remaining '114 patent claim in suit, is dependent upon claim 6 and adds to that claim recital that the device has a series of collapsible guiding vanes slidably mounted on the first container and means for preventing the rearward escape of said vanes from said container during flight.

ACCUSED T — 7 3 ARMY SIGNAL

12. The Army T-73 Signal shown in plaintiff’s exhibits 4 (a) through 4(k), portions of which are reproduced herein, has a hermetically sealed outer container having a téar strip and an opening key.' The signal which is enclosed within the container comprises a cartridge-like casing having a removable firing cap mounted on the open end and a primer at the opposite end. A launching charge is located adjacent the primer and a projectile rests against the retaining washer, disc assembly, block protector, and a rubber protector, which separate the projectile from the launching charge. The lower part of the projectile contains a rela-

tively large propelling charge which, is connected to the launching charge through a threaded bolt, hollow at the lower end and having openings into the propelling charge near the base thereof. The hollow portion of the bolt provides means for the passage of a flame from the launching charge to the propelling charge in the projectile. The bolt extends through the propelling charge to a delay housing located at the upper end of the propelling charge. The delay housing contains a delay charge adjacent to which is an expelling charge. A flare-parachute combination rests against the expelling charge inside the casing and is held therein by a plug and the firing cap. Collapsible vanes are mounted toward the rear of the projectile on longitudinal ribs, which are welded on a pair of rings the upper of which is slidable on the projectile body, but prevented from escaping by a plug nozzle at the base of the projectile.

13. The T-73 Signal is operated in the following manner: The outer casing is opened and discarded; the firing cap is removed from the open end of the signal and placed over the butt end thereof; and the cap is then struck a sharp blow driving the firing pin of the cap against the primer. This explodes the percussion cap which hi turn ignites the launching charge and thrusts the projectile out of the casing and a short distance away from the user. A flame from the launching charge passes through the hollow bolt, ignites the propelling charge of the rocket, and the projectile is propelled to the desired altitude. The propelling charge when nearly exhausted ignites the delay charge in the delay housing and this charge ignites the flare and expels the flare-parachute combination near the peak of the vertical flight of the projectile. The parachute opens after ejection and allows the burning flare or candle to slowly descend. During the travel of the projectile out of the casing, the tail vane and rib assembly begin to slide rearwardly and upon expulsion the flexible vanes assume flat positions in which each vane is tangential to the body of the projectile.

VALIDITY OP 'll4 PATENT

14. Defendant has urged that the '114 patent is invalid on the grounds that the invention was fully anticipated by the prior art and is invalid under 35 U.S.C. §§ 101 and 102, and that the invention was obvious to those skilled in the art at the time it was made and invalid under 35 U.S.C. § 103. In support of its defense of invalidity of the '114 patent, defendant has cited the following prior patents:

15. Of the above thirty prior patents, all except British 2,826, Detwiller, Driggs et al. 1,782,292, Decker, Scholfield Be. 478, Sibley, Orwig, Brand, and Scholfield 21,278, were cited by the Patent Office examiner during the prosecution of the '114 patent application. Defendant has specifically relied upon the patents to Driggs 1,947,834, Skinner, Pain, and the British patent 2,826.

16. Driggs patent 1,947,834, defendant’s exhibit 11, discloses in fig. 4, a flare signal having a cartridge-like case adapted to be fired in a pistol and to be retained by the pistol after firing. The base of the Driggs patent case contains a powder charge which serves as an igniting charge and as the sole firing charge. This powder charge is ignited by an exposed firing cap when struck by the firing pin of the pistol. The case disclosed in this Driggs patent contains a shell which rests against the powder charge. The shell includes a base member and a tubular sidewall and is fired from the case as a projectile. The base of the shell includes an eyelet containing a powder fuse and includes an expelling charge surrounding the fuse. A parachute and flare are contained in the forward portion of the shell. The powder fuse ignited by the charge which expels the shell from the casing eventually ignites the expelling charge surrounding the fuse, and the latter expels the parachute and attached flare from the shell as the flare is ignited by the expelling charge.

17. The shell of the signal device disclosed in the Driggs '834 patent does not contain a major powder charge and is not a rocket device because of its lack of a propelling means. The expelling charge of the Driggs signal, which defendant has attempted to correlate with the major propelling charge of the '114 structure, does not operate as a rocket propelling means but rather merely as a means to eject the flare and parachute from the shell and gives slight, if any, lift to the flare signal. A device made in accordance with the Driggs patent disclosure would result in excessive recoil if designed for firing by hand to substantial altitudes. Each of the claims in suit recites a major charge of rocket powder and each specifies that it is directed to a rocket device. These features are not disclosed by the Driggs '834 patent signal. The '834 Driggs flare signal does not anticipate the rocket device recited in claim 6 of the '114 patent, the only claim in suit not reciting a vane structure and the only claim to which the Driggs patent has been applied alone; nor does it for the reasons discussed below anticipate any of the claims in suit when combined with any or all of the other prior art patents cited by defendant.

18. British patent 2,826, defendant’s exhibit 31, discloses a projectile having guiding wings which are foldable against the cylindrical surface of the projectile for insertion into a gun and bore, and expandable outwardly from the projectile upon firing. They may also be made to slide to the rear of the projectile. Defendant has urged that the Driggs '834 patent in combination with the above described disclosure of the British patent relating to collapsible wings anticipates claims 1-4, and 7 of the '114 patent, all-of which recite wing structure in combination with a rocket assembly. Even if it were conceded that the collapsible wings of the projectile disclosed in the British patent are equivalent to the vane structure of the ’114 rocket construction, the subject matter of claims 1-4 and 7 would not have been obvious to one skilled in the art because of the differences between the Driggs device and the '114 patent rocket device.

19. Skinner patent 1,994,490, defendant’s exhibit 12, discloses a rocket projectile comprising a body and a tail section. The body is divided into a front compartment containing a bursting charge and an adjoining rear compartment containing an auxiliary propelling charge. The tail portion has at the butt end thereof a primer which is fired by a firing pin and ignites a cartridge and a cartridge case which in turn ignite adjacent propelling charges all located toward the rear end of the tail section. The upper end of the tail section is connected to the lower portion through a tube and contains a delay pellet associated with an igniting charge which ignites the auxiliary propelling charge in the body of the rocket projectile. The delay pellet is ignited by the cartridge. The propelling charge in the tail section propels the '490 rocket from a mortar after which the delay pellet transmits ignition to the major propelling charge in the lower compartment of the projectile body. The tail section of the '490 projectile is provided with fixed fins. The bursting charge in'the Skinner projectile is set off by a conventional contact fuse on the nose of the projectile.

20. The Skinner '490 rocket projectile is designed to be fired from a muzzle-loading mortar and could not be fired from a pistol. In addition, its ultimate function is different from that of either the '114 patent structure or the Driggs '834 patent flare signal. The Skinner '490 projectile could not anticipate any of the '114 patent claims without being combined with other disclosures. Defendant has urged that the Skinner patent disclosure be combined with those of the Driggs '834 patent and British patent 2,826. It would not have been obvious at the time of the '114 invention to have combined the teachings of these three patents to produce the rocket device disclosed in the '114 patent.

21. Pain patent 1,299,217, defendant’s exhibit 4, discloses a cylindrical rocket comprising three separate aligned compartments. The lower compartment contains a propelling charge, the middle compartment contains a detonating charge which makes a loud report when ignited, and the upper compartment contains a flare connected to a parachute. A quick-burning fuse between the propelling charge and an ejection charge is located at the base of the flare-parachute compartment. This fuse ignites the expelling charge and causes the ejection of the flare and parachute prior to the ignition of the central detonating charge. This '217 patent, while showing some of the individual elements of the '114 rocket construction, differs therefrom structurally and operationally and does not, either alone or in combination with any of the other references cited by defendant, anticipate any of the T14 claims in suit.

22. It is found that claims 1-4, 6, and 7 of the Anzalone patent 2,397,114, are not anticipated by the prior art cited by the defendant individually or in any combination, and that it would not have been obvious to one having ordinary skill in the rocket flare field to select and combine features from any group of prior disclosures. The patent claims set out above are found valid.

23. Defendant has urged that claims 6 and 7 of the '114 patent are invalid as having been first invented by one Guy E. Giroux, Jr. The basis of this contention is the fact that patent claims 6 and 7 which were application claims 18 and 19 of the '114 Anzalone patent application, were identical to claims 1 and 2 of Giroux patent application Ser. No. 368,306, filed December 3, 1940, approximately 7 weeks before the '114 patent application was filed. Both the Giroux and Anzalone patent applications were owned by Aerial Products, Inc. Claims 1 and 2 of the Giroux application were allowed therein over art used to reject claims 18 and 19 of the '114 application. This inconsistency was pointed out to the patent examiner and successfully used as the basis for overcoming the rejection of claims 18 and 19 of the '114 application. The Giroux patent application was subsequently abandoned. While claims 6 and 7 of the '114 patent were first presented in the earlier Giroux application Ser. No. 368,306, this is not sufficient evidence to establish that Giroux was a prior inventor of the invention described and claimed in the '114 patent. Plaintiff introduced evidence tending to indicate that the Anzalone '114 invention was known to Anzalone prior to the filing date of the Giroux application. The subject matter of claims 18 and 19 of the '114 patent application was broadly claimed in original application claim 3. There is no indication Giroux ever contested the award of priority to Anzalone. The evidence does not warrant a finding that claims 6 and 7 of the '114 patent are invalid because of the earlier Giroux application.

'll4 INFRINGEMENT ISSUE

24. Defendant has alleged that the Army T-73 Signal, described in finding 12, does not infringe the claims of the '114 patent in suit because the T-73: (1) Does not have a “cartridge-like casing adapted to be inserted into the barrel of a launching pistol and to be retained therein after discharge of its contents” (all '114 claims in suit); (2) that the vanes of the T-73 are not “pivotally supported” (claims 1-4); (3) that the T-73 vanes are not “adapted in a first or collapsed position to lie against said portion of said projectile within said casing” (claims 1-4); (4) that the vanes of the T-73 do not extend in a “radial” or “substantially radial” direction (claims 1-4); (5) that the T-73 has no “abutment means” to limit the opening of the vanes (claims 1-4); (6) that the T-73 vanes are not “moved longitudinally of said projectile toward the trailing end of the latter upon its discharge from said casing by their said frictional contact with said casing” (claims 1-4) at least to the extent that they are in the patented structure; (7) that there are no “spring means” (claims 1-4) to urge the vanes open on the T-73; (8) that the major propelling charge of the T-73 does not have a “fuse recess formed therein adjacent the rear thereof” or a “fuse disposed in said recess and directly exposed at one of its rear ends to a flame propagated by said minor explosive charge” (claims 6 and 7); (9) that the T-73 uses “point” ignition to ignite the major propelling charge as contrasted to what is termed “surface” ignition employed in the patented structure; and (10) that the candle of the T-73 Signal is ignited in a different manner in that it is ignited by a delay charge pressed into an annular groove of a delay housing whereas claims 6 and 7 of the '114 patent call for “the rear end of said candle being exposed to a flame generated by the nearest adjacent portion of the rocket powder in the first container and said supplemental launching charge.”

25. The accused T-73 Signal includes structures equivalent to those recited in the '114 patent claims in suit. When claims do not read in literal terms on an accused device, the provision of equivalent structure which functions in substantially the same manner to produce substantially the same result may warrant a finding of infringement. Defendant has contended that since the T-73 Signal has no annular groove, it is not adapted to be inserted into the barrel of a launching pistol. This argument is based on the assumption that a groove is necessary to retain the casing after firing. Defendant has also contended that the firing cap of the T-73 does not constitute a pistol. Neither of these contentions has merit. The firing cap of the T-73 with the firing pin mounted at the base thereof functions as a pistol, and the casing of the T-73 is adapted to fit within and to remain in the cap after firing even though there is no groove in the T-73 casing. The guiding vanes of the T-73 Signal are not pivotally supported in the identical manner that the '114 vanes are because the T-73 vanes are spot welded instead of being curled around a rod, and although the T-73 vanes are not urged outwardly by a specific spring means, they possess inherent flexibility which causes them to open outwardly in substantially the same manner as the '114 vanes are opened by coiled springs. The T-73 vanes assume a tangential position which is technically different from the “radial” or “substantially radial” position assumed by the '114 vane construction ; however, the vanes of each construction perform essentially the same function in essentially the same way; that is, they serve as “guiding” or stabilizing means for the rocket projectile in flight. The vanes of the T-73 are collapsed within the rocket casing prior to firing in substantially the same manner as are the vanes of the '114 structure, the inherent springiness and flexibility of the T-73 vanes permits them to conform to the shape of the rocket body. The T-73 Signal does not contain an “abutment means” as such, but the nature of the attachment of the T-73 vanes to the ribs causes the ribs to inherently serve the purpose of an abutment means which restrict the outward movement of the adjacent vanes. Adjacent vanes contact each other in the open position and restrict further vane movement. Any differences in the timing of the opening of the T-73 vanes and the ’114 vanes are immaterial since the vane assemblies of both do to at least some degree slide rearwardly because of frictional contact with the walls of the projectile casings before they are fully released from the casings, and in both projectiles the vanes assume either the same or substantially the same position soon after firing. All of the equivalent structures discussed above relate to patent claims 1-4 and do not have application to the remaining two '114 claims in suit, patent claims 6 and 7.

26. Defendant has alleged that there is no infringement of '114 patent claims 6 and 7 because the longitudinal opening extending axially of the T-73 rocket and the hollow holt with openings extending into the propelling charge do not constitute a “fuse recess” and a “fuse,” respectively. Both the longitudinal opening and the bolt of the T-73 perform exactly the same fuse function in substantially the same way and are equivalent to the fuse assembly of the '114 structure. The defendant’s further argument that the fuse assembly of the '114 rocket construction has “surface” ignition whereas the T-73 has “point” ignition is unimportant from a standpoint of infringement. The '114 claims in suit do not recite “surface” ignition, and even if defendant’s contention is correct that “point” ignition gives greater reliability and more uniform propulsion, infringement would not be avoided because the claims in suit are broad enough to encompass this form of ignition. Defendant’s final argument that the flare or candle of the T-73 is ignited in a different manner from the candle of the '114 rocket device is also without merit. Both flare candles are ignited by a flame generated by the nearest adjacent portion of the propelling charge.

27. Summarizing findings 24-26, it is found that the Army T-73 Signal infringes claims 1-4, 6, and 7 of the '114 patent.

DWYER ET AE. PATENT 2,519,123

28. Patent 2,519,123 issued to M. Dwyer and R. Anzalone jointly on August 15, 1950, on an application filed July 10, 1947. The '123 patent discloses a self-contained signal unit

including a firing means which eliminates the need for a separate' launching pistol. The '123 hand operated rocket type device for signaling and other purposes is similar in many of its internal parts to the accused Army T-73 signal flare and to the rocket device described and claimed in the '114: patent discussed above. These internal parts are not claimed in the '123 patent claims in suit. Selected drawings of the '123 patent are reproduced herein.

29. The '123 rocket device includes an outer casing 11 and a separable tubular cap 12 which provide a complete outer cover. During storage and handling, the cap 12 fits over the front end of the rocket outer casing. The removable cap 12 contains a firing pin 24 and this structure serves as a rudimentary pistol and is used to explode a primer 29 of the percussion type located at the base end of inner casing 13, which casing functions as a rocket launching tube. When the cap 12 is in place over the front end of the casing 13, the rocket cannot be discharged because the firing pin 24 does not have access to the primer 29. In operation, the sealing strip or tape 114, shown in fig. 1, is removed, the outer casing 11 is discarded, the cap 12 is removed from the open end of the inner casing 13 and placed over the opposite end 21 which is closed and contains the primer 29. The operator then strikes the cap 12 and drives the firing pin 24 forward into the primer 29. This action ignites the rocket-motor device and causes the expulsion of the projectile from the casing 13. A modification of the container structure forming the outer enclosure for the '123 signal is shown in figs. 15 and 16 of the patent. In this modification the outer container is formed as a complete unit with a weakened portion 120 constituting a tear strip which is broken and opened by means of a key 121 attached to the outer casing. The remaining components and operation of the ’123 device remain the same.

30. Plaintiff relies upon claims 1, 4, 6, 7, and 10 of the '123 patent. Claims 1 and 10 are representative and are set forth below in clauses to facilitate understanding the combinations claimed:

Patent Claim 1 of '123
A self-contained device of tbe character described comprising complete outer enclosure including
a separable cover part hermetically sealed together,
a rocket-motor propelled element-containing assembly completely contained within said outer enclosure, said assembly including
a rocket barrel,
firing means for said assembly including a primer on said barrel,
said separable cover part being mountable on said barrel in proximity to said primer only after the removal of said assembly from said enclosure, and a firing member on said separable cover part for exploding said primer by concussion after the removal of said assembly from said enclosure and after said separable part has been mounted upon said barrel in proximity to said primer.
Patent Claim 10 of '123
A self-contained device of the character described comprising a unitary completely enclosing outer casing having
a weakened removable portion to open said casing and to separate a cover part from one end thereof, a key connected to said weakened portion to facilitate its removal,
means to prevent accidental operation or loss of said key,
a barrel containing rocket-motor propelled elements, a primer arranged on an end of said barrel,
said barrel being_ positioned within said outer casing with its primer bearing end remote from the cover part end of said casing and
said coyer part being mountable on said barrel in proximity to said primer only after the removal of said weakened portion to separate said coyer part and the removal of said barrel from said casing, and a firing member on said cover part for striking and exploding said primer by concussion after said cover part has been so mounted upon said barrel.

31. The remaining '123 patent claims in suit, 4, 6, and 7 do not vary in any substantial way from patent claim 1.

32. Defendant has urged that the '123 patent is invalid on the grounds that the invention was fully anticipated by the prior art and is invalid under 35 U.S.C. §§ 101 and 102 and that the invention was obvious to those skilled in the art at the time it was made and is invalid under 35 U.S.C. § 103. In support of these allegations of invalidity defendant has relied on the following prior art disclosures:

33. Of the above 15 prior disclosures urged by defendant, all except Pfeil, Decker, Fieser et al., and the Naval Ordnance drawing were cited and considered by the patent examiner during the prosecution of the '123 patent application in the U.S. Patent Office. The Pfeil, Decker, and Hammell et al. patents are considered most pertinent. The Naval Ordnance drawing discloses a mailing tube.

34. The Pfeil patent 995,174, fig. 1 of which is reproduced herein, discloses a “Protecting Case for Fusees” which comprises a tubular casing 2 for a fusee 1 of the type commonly •used on railroad trains. The casing 2 is closed at one end by a permanent plug 5, and at the other end by a removable plug member 6 which carries on its interior surface the “scratch” 8. In the assembled form, with the fusee within the container 2, the fusee 1 is positioned with the ignition chemical 3 at the opposite end of the container 2 from the scratch 8 carried on the ping member 6. The specification states that the closure member 6 is intended to perform a double purpose, i.e., close the end of the container 2 and serve as the “button” or “scratch” for the fusee. In order to ignite the fusee 1, the plug member 6 is removed from the case 2, the fusee 1 is withdrawn from the case, and the plug member 6 is reversed to the opposite end of the fusee 1 and its surface 8 is rubbed on the chemical 3 of the fusee. This sequence of operations is similar to the sequence of operation

described and claimed in the '123 patent. The object of the Pfeil invention is said to be to provide:

* * * in combination with any suitable form of fusee, a simple and efficient form of protecting case therefor which is of a moisture proof character to maintain the fusee absolutely dry when not in use * * * and which carries the “button” or “scratch” at a point most remote from the ignition end of the tube and in a manner to protect its scratching surface from injury.

35. Decker patent 2,120,736, figs. 4 and 6 of which are reproduced herein, discloses a hand-held signal comprising a handle 75 on which is mounted a cartridge tube 71 containing a projectile. The upper end of the tube 71 is closed by a plug member 74 on which is mounted a scratcher 73 used to frictionally ignite a powder train 72 located near the lower end of the tube 71. This powder train, in turn, ignites a propelling charge. The contents of the projectile may include a flare 59 linked by suitable means to a parachute 61 held in position within a projectile tube as is shown in fig. 4. The Decker signal is operated by removing the plug member 74 from the tube 71 and igniting the powder train 72 by means of the scratcher 73 which is mounted on the plug member 74. This ignites the propelling charge or rocket charge within the tube 71 which elevates the projectile to the desired height.

36. Hammell et al. patent 2,436,751 discloses in fig. 1 of the patent drawings reproduced herein, a tubular shaped member 10 containing a flare projectile 28, the rear end of which is telescopically received within a cup-shaped member 32. The cup-shaped member 32 has mounted therein a firing pin 36 which is positioned to engage a detonator 20 when the cup-member 32 is struck a sharp blow.

37. Claims 1, 4, 6, 7, and 10, all of the '123 patent claims in suit recite in one form or another a self-contained device comprising complete outer enclosure including a separable cover part. This feature is fully disclosed in the Pfeil patent discussed above which has the complete outer enclosure 2 sealed at one end by the plug member 6 and includes a separable cover part 8 closing the other end. All of the '123 patent claims in suit also recite in one form or another a rocTcet-motor propelled element-containing assembly completely contained within the outer enclosure. The Pfeil patent protecting case contains a pyrotechnic device, a fusee, and it would have been obvious to substitute a rocket-motor assembly for the fusee, particularly in view of the Decker patent, discussed above, which shows a rocket-motor assembly within a complete outer enclosure. During the prosecution of the '123 patent application before the Patent Office, the patentee disclaimed any intention of claiming a specific rocket-motor construction.

38. Claims 1, 4, 6, and 10 of the '123 patent recite a rocket barrel. The Pfeil patent casing for the fusee 1 would operate in a similar fashion. A tubular barrel is shown in the Hammell patent as tubular member 10, and in the Decker patent as cartridge tube 71, either of which could be substituted for the casing shown in the Pfeil patent.

39. Each of the '123 patent claims in suit also recites in one form or another a firing means including a primer. The equivalent of this firing means is shown in the prior Pfeil patent as the ignition chemical 3 which is ignited by frictional contact with scratcher 8. The prior Hammell patent also discloses a firing means, detonator 20, which is similar to that employed in the '123 patent construction. The claims of the '123 patent in suit recite a separable cover part mountable on said barrel in proximity to said primer only after the removal of said assembly from said enclosure, and recite a firing member on said separable cover part for exploding said primer by concussion. The Pfeil patent discloses fully the first of these two recited features of the '123 patent claims. The removable plug member 6 can be used to ignite the chemical 3 on the casing 1 only after removal of the outer casing 2. The scratcher 8 on the plug member 6 of the Pfeil structure is equivalent to the firing member of the '123 device. The cup-shaped member with the firing pin mounted therein of the Hammell patent is substantially the same structurally as the separable cover part and firing member of the '123 patent, and so far as the firing or detonating operation is concerned, the two structures are identical.

40. Claims 4, 6, 7, and 10 of the '123 patent recite that the separable cover be positioned in said outer casing with its detonator bearing end remote from said cover. The Pfeil patent discloses this feature fully. The ignition end 3 is positioned at the opposite end of the casing 2 from the removable cover member 6 of the Pfeil patent. Claim 10 contains two additional recitations not present in the other claims. These recitations are (1) that the outer enclosure which is described as comprising a “unitary” casing has a weakened removable portion to open said casing and to separate a cover part from one end thereof and a key connected to said weakened portion to facilitate its removal, and (2) means to prevent accidental operation or loss of said key. These recitations add nothing of patentable significance to the claim.

41. Claims 1, 4, 6, 7, and 10 of the '123 patent do not define a patentable advancement in the art in view of the prior Pfeil patent which discloses all of the elements of the claims in suit or their equivalents. Said patent claims are invalid. The claims in suit are further invalid since they were unpatentable over Pfeil in view of either Hammell or Decker. It would have been obvious to one skilled in the art at the time the '123 application was filed to have placed the cup-shaped member containing a firing pin of Hammell at the opposite end from the detonator of a rocket assembly and have had it form part of a complete outer casing as shown in the Pfeil patent.

42. Summarizing, claims 1, 4, 6, 7, and 10, all of the '123 patent claims in suit, are found to be invalid.

43. Defendant has urged that the claims of the '123 patent in suit are not infringed by the Army T-73 Signal because the T-73 construction includes a complete outer enclosure, separate and apart from the signal device and the firing cap, and that the firing cap of the T-73 is thus not a part of the outer enclosure. Defendant has urged that all of the claims of the '123 patent are limited to a device in which the outer enclosure includes the firing cap, in other words that the firing cap is an essential and integral component of the outer enclosure.

44. Defendant further charges that plaintiff is estopped to contend that the claims of the '123 patent in issue cover the T-73 Signal because of statements made and limitations inserted in each of the five patent claims 1, 4, 6, 7, and 10 during the prosecution of the '123 patent application in the U.S. Patent Office. The file of the '123 patent shows that patent claims 1, 4, and 6, as initially filed, were rejected as being unpatentable over the Hammell patent in view of the W. D. Jackson patent or S. Jackson patent with the Cimo-rosi patent, all of which are listed in finding 32. Patent claims 7 and 10, as originally filed, were rejected as being aggregative. In response to these rejections, all of the claims were amended in 1948 to recite that the outer casing with a removable firing cap comprises a complete outer enclosure for a rocket assembly. The comments accompanying the amendment stressed the significance of the word comflete as used in the claims. The patentees in attempting to distinguish over the art cited by the Patent Office examiner emphasized the fact the firing cap was part of the outermost protective casing of the '123 construction. The Patent Office examiner again rejected patent claims 1, 4, 6, and 7 as failing to clearly delineate the structure of the outer enclosure. In response to the Patent Office examiner’s rejection, the applicants further amended claim 1 to recite that the comflete outer enclosure including a sef arable cover fart was hermetically sealed together, and amended claims 4,6, and 7 to recite an outer casing including a removable cover.

45. The Patent Office file shows that the inventive feature of the '123 patent was regarded as an arrangement wherein the firing cap served the dual purpose of (1) acting as a firing cap which in the inoperable position was mounted at the opposite end of the device from the detonator, and (2) formed an integral part of the outermost protective casing while in the inoperable position. This arrangement is different from the accused T-73 Army Signal which has a firing cap mounted at the opposite end from the detonator when in its inoperable and handling position, and contains a complete and separate container surrounding the entire rocket assembly including the -firing caf which is enclosed therein and does not form a part of the outermost protective covering of the T-73. Because of this difference in arrangement, none of the claims 1,4, 6,7, and 10 of the '123 patent in suit can be directly applied to the T-73 Signal, and because of

the limitations placed upon these claims in the Patent Office, they cannot be construed to cover the accused T-73 structure even though they define a structure somewhat similar thereto. The claims of the '123 patent in suit must be given this narrow construction in order for them to possibly define an invention over the prior art, cited by the Patent Office examiner, particularly the Hammell patent in view of either of the two Jackson patents.

46. Summarizing, it is found that there is no infringement of claims 1, 4, 6, 7, and 10 of the '123 patent by the Army T-73 Signal.

DWYER PATENT 2,455,242

47. Patent 2,455,242 issued to M. Dwyer on November 30, 1948, on an application filed July 21,1945. The '242 patent discloses an emergency day and night signaling device. Selected drawings of the '242 patent are reproduced herein.

48. The '242 device includes an outer tubular casing 10 and two aligned and centered inner containers which are separated by heat insulating means 35. One of the inner containers 40 is filled with a flare compound M and the other inner container 19 is filled with a smoke compound C. An air space 20 exists between the inner container 19 and the outer container 10. A similar air space 41 exists between the inner container 40 and the outer container 10. The contents of the two inner containers are thus spaced from each other by the heat insulating means and from the outer container by the air spaces. Each of the inner containers 19 and 40 is hermetically sealed within the outer container 10. Access is had to the contents of each individual inner container by means of a tear strip 53 or 17 to which is attached a pull ring 54 or 18. Each of these tear strips is also attached to an igniter mechanism for igniting the particular contents of the inner container concerned. The two inner containers are essentially the same except for the fact that each contains a different compound and container 19 is longer in length than container 40. In operation, one pulls either ring 54 or 18, as desired, while holding the opposite end. This causes the tear strip to be pulled loose which, in turn, causes ignition, of the particular compound in that end of the device.

49. The Navy Day-Night Signal which plaintiff alleges to be an infringement of the '242 patent is substantially identical in structure and operation to the device illustrated and described in the '242 patent.

50. Plaintiff relies upon claims 1, 2, 7, and 8 of the '242 patent. Claim 8 is representative and is set forth below in clauses to facilitate understanding the combination claimed:

Patent Glaim 8 of '21$
In a device of the character described, an outer container,
an imperforate inner container for smoke-producing compound or the like,
a covering member for one end of the outer container,
means for centering said inner container within the outer container so as to provide a uniform air space between the side walls of the inner and outer containers,
a second imperforate open-ended inner container for receiving flare producing compound or the like aligned with said first-named inner container,
means for spacing and heat insulating the two inner containers from each other, the open end of said second inner container facing toward the other end of said outer container,
a covering member for said other end of said outer container, said two covering members being joined to said outer container to hermetically seal its contents,
removable tear strips, one for each covering member, and
igniting means in conjunction with each tear strip and secured thereto automatically to ignite the contents of that inner container exposed upon removal of the respective one of the tear strips.

51. Claims 1 and 2 of the '242 patent are in most respects broader than claim 8. Claim 1 does not refer to the covers, refers to the ignition assembly in terms of means rather than reciting specific structure, and recites in much less detail the centering and spacing arrangement of the two inner containers. Claim 2 is substantially the same as claim 1 but defines in greater detail the arrangement of the two inner containers which are said to be arranged end to end and each havmg an open end facing toward opposite ends of the outer container. Claim 7 is substantially the same as claim 8, differing only in that it contains slightly broader language referring to the ignition assembly of the '242 structure.

52.Defendant has urged that the '242 patent is invalid on the grounds that it was- fully anticipated by the prior art and is invalid under 35 U.S.C. §§ 101 and 102, and that the invention was obvious to those skilled in the art at the time it- was made and invalid under 35 U.S.C. § 103, and is further invalid because the claims in suit recite an aggregation. In support of its allegation that the '242 patent was anticipated by the prior art, defendant has relied on the following patents:

53. Each of the above listed patents has an effective date prior to July 21, 1945, the effective date of the '242 patent. Of the above 13 prior patents, the patents issued to Le Comte, Van Kamer, Miller et al., and Holt are considered most pertinent. No finding is made regarding the anticipatory nature of Dwyer patent 2,481,987, of which the '242 patent in suit is a continuation-in-part.

54. Holt patent 1,360,527, defendant’s exhibit 65, discloses a flare for use on aircraft, the flare having two inner compartments each containing combustible material. The '527 flare includes an outer container and two inner compartments separated by spaced discs of wood and cardboard. Each flare compartment is provided with an igniting means. The '527 patent specification states:

The first object of the invention is attained by isolating two or more portions of the flare material from each other so that one portion can bum away without igniting another, the separate portions of flare material being either contained in different compartments _ of the same casing or in separate casings, and providing separate igniting means for the different flare portions preferably controlled from the same switch.
In a practical form of the invention * * * two portions of flare material are contained in the same casing one above another but are separated by spaced discs of wood and cardboard having an air space between them or by a solid block of wood or other nonconductor of heat.

The Holt patent was cited by the examiner during the prosecution of the '242 patent application but was not applied to any claims by the examiner.

¡55. Le Comte patent 2,328,916, defendant’s exhibit 56, discloses a floating smoke signal comprising a heat-proof tubular outer container completely surrounding a tubular inner container concentric therewith and spaced therefrom. The inner container is filled with a combustible powder. Cover members are provided to close both ends of the outer container. The Le Comte signal includes an ignition assembly at the upper end having as the activating means a wire attached to a ring which when pulled causes ignition.

56. Miller et al. patent 1,273,260, defendant’s exhibit 64, discloses a signal fusee having a hermetically sealed cover to which is attached a pull cord which acts as an ignition means. The fusee is ignited by unsealing and removing the cover and thereby drawing the cord through frictionally ignitible material with which it is in contact.

57. Van Earner patent 2,476,125, defendant’s exhibit 74, filed November 14, 1944, discloses a smoke signaling device in the form of a tubular container, the top of which has an extension forming a neck. The inside wall of the container is lined with an insulation means and a smoke producing material is enclosed within the inner surface of the container formed by the insulation means. A removable cap fits over the neck of the container and has attached thereto an igniting means which upon rapid removal of the cap, ignites the smoke producing material. A wire handle is provided to hold the signal during operation.

58. The two separate signals which comprise the '242 device are substantially the same in structure and operation, the only differences being that one (the smoke signal) is longer in length and different pyrotechnic compounds are used. Each of the two '242 signals is also substantially the same as the signal disclosed in the patent to Le Comte, the only difference of any significance being the fact the cover member of Le Comte is not connected directly to the ignition assembly. The Van Earner patent, which is also substantially the same structurally and operationally as the signals comprising the '242 device, shows the connection of a cover member to an ignition assembly in essentially the same manner shown in the '242 patent, to be an old expedient. The Miller et al. patent also shows that such an arrangement of a cover and ignition means for a pyrotechnic device was well known prior to any date available for the '242 patent disclosure. It would not have involved patentable invention to arrange the cover member and ignition assembly of the Le Comte patent signal in the manner disclosed in the Van Earner or Miller patents, nor did it involve invention to enclose two of the devices produced thereby in a single container with an insulation means placed therebetween in view of the teachings of the Holt patent, which shows an insulating means separating two aligned flares in a single container.

59. The combination day and night signal described and claimed in the '242 patent is in essence two separate signals combined into a single exterior casing with an insulating material placed between them. The only relationship the two signals have with each other is that the outer covering of the one serves as a handle for the other when it is ignited. Since one of the signals is for day use and the other for night use, the two signals function completely independently of each other and their combination into a single casing does not enhance the operation of either of them. Cooperative action between the flare signal and the smoke signal is lacking, and their combination in a single casing constitutes an aggregation.

. 60. Summarizing findings 52-59, inclusive, claims 1, 2, 7, and 8 of the '242 patent are found to be invalid as being unpatentable over combinations of prior patents issued to Le Comte, Miller et al., Van Earner, and Holt, and are found tp.be invalid for the reason that they recite an aggregation of old elements.

61. In the event the '242 patent claims 1, 2, 7, and 8 in suit are held to be valid, it is found that the accused Navy Day-Night Signal includes all the parts and elements set forth in these claims and infringes each of them.

Conclusion of Law

Upon the foregoing findings of fact, which are made part of the judgment herein, the court concludes as a matter of law that patent No. 2,397,114 is valid and that the claims thereof in suit, claims 1,2,3,4, 6, and 7, have been infringed ; that patent No. 2,519,123 is invalid and not infringed; and that patent No. 2,455,242 is invalid. Judgment is entered to this effect. The extent of liability on patent No. 2,397,114 will be determined in further proceedings before the Commissioner.  