
    THE KEMODE MANUFACTURING CO., INC. AND FRANK A. PETRAGLIA v. THE UNITED STATES
    [No. 16-62.
    Decided June 11, 1965.
    Plaintiff’s motion for leave to argue on exceptions denied November 12, 1965]
    
      
      Harry Price for plaintiffs.
    
      George P. Hoare, with whom was Assistant Attorney General John W. Douglas, for defendant.
    Before CownN, Chief Judge, Laramore, Dureee, Davis and ColliNs, Judges.
    
   Per Curiam :

This patent case was referred to Trial Commissioner Donald E. Lane with directions to report findings of fact and recommendations for conclusions of law. The commissioner has done so in a report filed September 29, 1964, said report being unfavorable to the plaintiffs. On October 14, 1964, plaintiffs filed a notice of intent to except to the commissioner’s report, but plaintiffs have not filed any exceptions or brief within the extensions of time allowed for that purpose.

On February 25, 1965, plaintiffs filed a motion to dismiss without prejudice. On April 7, 1965, defendant filed an opposition to plaintiffs’ motion and filed a motion urging the court to adopt the commissioner’s report. The court has considered these two motions, the opposition, and the commissioner’s report and concludes that this case be dismissed with prejudice.

Since the court is in agreement with the opinion, findings and recommendation of the trial commissioner, as herein set forth, it hereby adopts the same as the basis for its judgment in this case. Plaintiffs are, therefore, not entitled to recover and their motion to dismiss without prejudice is denied, and plaintiffs’ petition is dismissed with prejudice.

OPINION OP COMMISSIONER

This suit involves a claim for compensation for the alleged unauthorized use and manufacture by and for the U.S. Government of the subject matter disclosed and claimed in U.S. Letters Patent 2,580,509, which issued to Frank A. Petraglia March 18, 1952, on an application filed May 14, 1948. The suit is brought under 28 U.S.C. § 1498. It is found that the patent is invalid, and that it has not been infringed by any soldering iron structures manufactured for or used by defendant.

The subject matter of the patent in suit, hereinafter referred to as the '509 patent, concerns a soldering iron having a self-contained heating unit which does not require connection to an external source of energy. The heating unit is activated when punctured by release of a spring-operated firing pin. The '509 patent has two claims, both of which have been relied upon by plaintiffs. A detailed description of the patented structure is provided in the accompanying findings of fact. The accused structure charged with the infringement of both of the claims of the '509 patent also comprises a soldering iron construction having a self-contained heat generating unit which is activated by the force of a spring-operated firing pin. The structure of the accused iron is illustrated in the drawing reproduced in finding 20. Defendant has admitted the procurement of at least one of the accused structures within the statutory recovery period.

Defendant has raised a number of defenses to the charge of patent infringement, including allegations that the '509 patent is invalid in view of prior art, that the patent claims lack an adequate disclosure and are indefinite, and that even if the patent is valid the accused device does not infringe either of the two claims in suit. It has also been asserted by defendant that, contrary to plaintiffs’ allegation, there has been no showing of commercial success of the patented structure.

In urging invalidity as a defense, defendant has referred to various prior art patents and to the “Heatron Stirrer,” a device which plaintiffs admit was in public use prior to the invention of the '509 device, to show that the development of the soldering iron disclosed in the '509 patent did not amount to patentable invention.

The Heatron stirrer, a device purchased from a New York store by the patentee, is an appliance designed to heat liquids in a container. The Heatron device, illustrated in finding 9, contains every element of the patented structure in almost identical detail with the exception of a soldering tip extending downwardly from the heater receptacle. The Heatron device, by Petraglia’s own admission, inspired him to construct the '509 soldering iron. The question thus presented, so far as the Heatron device is concerned, is whether there was patentable invention involved hi the addition of a tip thereto to produce a soldering iron, sufficient to enable the plaintiffs to avoid the statutory bars to patentability recited in 35 U.S.C. § 102(a) and/or 35 U.S.C. § 103 which 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 publication in this or a foreign country, before the invention thereof by the applicant for patent, * * *. (Emphasis added.)
§ 103. Conditions for patentability; nonobvious 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 subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

It is concluded that the soldering iron construction disclosed and claimed in the '509 patent fails to meet the standards of patentability specified in the above-quoted statutes. The patented structure represents but an immaterial modification of the Heatron device. The adaptation of a known device in a manner which produces no unusual result and solves no problem of recognized difficulty does not constitute patentable invention. See E. J. Brooks Co. v. Stoffel Seals Corp., 266 F. 2d 841, 121 U.S.P.Q. 333 (2d Cir. 1959).

The obviousness of the '509 structure is underscored when other prior art is considered. The early Mitchell patent 869,140 discloses a self-heated soldering iron having a thread-ably detachable tapered tip. It would have been obvious to one of ordinary skill in 1948 to substitute the Mitchell tip for the flat-bottomed receptacle of the Heatron device. It would likewise have been obvious to combine the tapered soldering tip of the Mitchell patent with the firing mechanism and connected cartridge assembly of the Bennett patent 2,531,548 (filed in 1947) to produce a structure equivalent to that claimed in the '509 patent. The early Bottrill patent, 1,607,508, prior British patent 209,479, and prior French patent 533,039 all disclose soldering irons having self-contained heating units, and while none of them, either alone or in combination, show all of the pertinent features of the patented structure, they do demonstrate that the construction of a soldering iron having a self-contained heat generating means was not a novel concept at the time Petraglia disclosed the device described and claimed in the '509 patent.

There is evidence to the effect that Petraglia along with others later developed a modified soldering iron, and that defendant procured and used substantially the same soldering iron construction as was later developed and sold by plaintiffs. Neither the specification nor the claims of the '509 patent in suit mention these modified features, and it is well settled that a feature or features not disclosed or claimed in a patent, even though they may represent a patentable invention, cannot form a basis for patentability and do not come within the protection of the patent grant. Circuit Judge Soper stated in Sears, Roebuck & Co. v. Minnesota Mining & Mfg. Co., 243 F. 2d 136, 113 U.S.P.Q. 162, 166 (4th Cir.1957):

It is not sufficient for a patent to suggest a field for further experimentation; to be valid it must itself disclose the essential elements of the discovery so that persons skilled in the art may practice it.

The question of commercial success has been raised in this case and defendant has gone to some length in discussing this issue. It is unnecessary to consider to wliat extent if any the '509 structure enjoyed commercial success since it was clearly anticipated by the prior art, and it is well settled that commercial success cannot validate a patent where patentable invention is lacking. See Audio Devices, Inc. v. Armour Research Foundation of Illinois Institute of Technology, 293 F. 2d 102, 130 U.S.P.Q. 323 (2d Cir. 1961), L. M. Leathers’ Sons v. Goldman, 252 F. 2d 188, 116 U.S.P.Q. 219 (6th Cir. 1958). The decisions clearly indicate that it is only in those cases where the question of patentable invention is in doubt that evidence of commercial success can be persuasive of patentability.

In further contesting the validity of the claims of the '509 patent in suit, defendant has pointed to certain imperfections in the claim drafting; namely, that there is no antecedent for the term “said firing pin,” and that the claims specify that the plunger, rather than the contact pin attached thereto as is shown in the specification, is the member which punctures the containing means. It is alleged these defects in the claim drafting render the claims indefinite and invalid. It is settled law that the claims of a patent in order to be valid must define the patented invention with sufficient clarity that the metes and bounds thereof can be determined, but this requirement that the invention be pointed out with particularity does not preclude some latitude in claim interpretation, particularly where the meaning of what otherwise may be confusing recitals in the claims can be ascertained as here by referral to the specification and drawings. See Lincoln Stores, Inc. v. Nashua Mfg. Co., 157 F. 2d 154, 158, 70 U.S.P.Q. 254 (1st Cir. 1946).

Defendant has challenged plaintiffs’ charge of infringement of the claims of the '509 patent primarily on the ground that the claims allegedly contain three limitations which distinguish the claimed soldering iron device from the accused structure. These limitations are (1) that the firing mechanism of the '509 device must puncture the heat cartridge, (2) that the contact pin of the '509 device is slidable through the bore in the cap, and (3) that the spring means of the '509 device does not extend into the handle. In the accused structure the heat cartridge is not and must not be punctured, the contact pin is restrained by a plate from sliding through the bore in the cap, and the spring means extends essentially through the handle. It is thus seen that in each of the three instances adverted to above there is a clear difference between the claimed device and the accused structure. The limitation to a structure in which the firing mechanism punctures the heat cartridge is of particular significance because the term puncture was inserted in the claims in place of “detonate” to avoid a rejection by the Patent Office examiner on the ground that the term “detonate” was “inapt and inaccurate.” It is thus clear that the term pumctwe was purposely inserted into the claims and was intended to convey a specific meaning; namely, that the heat cartridge must be pierced and the contents thereof exposed to the atmosphere. Such a meaning is the only one that can be ascribed to the term puncture which is consistent with other statements in the specification and the prosecution history. To a lesser extent there is indication in the prosecution history the remaining two limitations upon which defendant relies in attempting to distinguish the accused structure from the claimed device were inserted in order to obtain allowance of the claims in the Patent Office. Limitations which are placed in claims during prosecution before the Patent Office have special significance because they point out definitively the bounds of the invention and may be looked upon as a disclaimer of that which they do not clearly include. Martin v. United States, 86 Ct. Cl. 311, 379 (1938). Claims having been narrowed to obtain allowance cannot be given the broad construction to which they might otherwise have been entitled. Roemer v. Peddie, 132 U.S. 313, 317 (1889). Because of the limitations contained in the '509 patent and the manner in which they were inserted, we conclude that there is no infringement by the accused structure.

While the accused structure and later soldering iron models produced by plaintiff Kemode Manufacturing Co. are substantially the same, the issue of infringement is confined to whether the claims of the '509 patent point up the elements of the accused device. See Bauer, et al. v. Yetter Mfg. Co., Inc., 205 F. Supp. 904, 912 (S.D. Ill. 1962). As pointed out above, the claims of the '509 patent are limited to such an extent that they do not embrace the accused structure.

In summary, it is found that the two claims of patent No. 2,589,509 are invalid in view of the prior art, and that if valid, these patent claims have not been infringed by the soldering iron constructions procured or used by defendant.

FiNDings of Fact

1. This is a patent suit filed by the plaintiffs, The Kemode Manufacturing Co., Inc., and Frank A. Petraglia, under the provisions of 28 U.S.C. § 1498, for recovery of reasonable and entire compensation for unlicensed use by the United States of the subject matter disclosed and claimed in U.S. Letters Patent 2,589,509 which issued to plaintiff Petraglia March 18,1952, on an application filed May 14,1948. This patent is entitled “Soldering Iron” and will be hereinafter referred to as the '509 patent. Plaintiff Petraglia is a citizen of the United States and a resident of New York. Plaintiff The Kemode Manufacturing Co., Inc., is a corporation organized and existing under the laws of the State of New York.

2. Counsel for the parties agreed at pretrial to a separation of issues for trial, and that the questions of validity, infringement, and ownership of the patent be first determined, and that the accounting issue, if any, be deferred until resolution of the liability issue.

3. On September 19,1962, Petraglia acknowledged before a notary public an assignment dated June 30,1948, by which he conveyed to The Kemode Manufacturing Co., Inc., entire right, title, and interest in the invention set forth in his application for the patent in suit. There is no evidence of record that plaintiff Kemode was not the owner of the '509 patent during the 6-year period from January 15,1956, to the filing of the petition on January 15,1962. It is found that plaintiff Kemode was the owner of the '509 patent for the period covered by this suit, and that plaintiff Petraglia was not an owner during said period.

PATENT IN SUIT

4.The Petraglia patent in suit, fig. 1 of which is reproduced herein, discloses a soldering iron having a self-contained heat generating means which obviates any need for an external heat generating source such as connection to a source of electricity. The heat generating means, an exothermic cartridge, is placed within a hollow cylindrical chamber in the soldering iron and is discharged by releasing a retracted spring-operated plunger having a penetrating pin which punctures the cartridge. When the heat generating capacity of the cartridge is exhausted, a new cartridge may be placed in the iron. The disclosure of the '509 patent does not describe the construction of the heat cartridge.

(5. A detailed description of the Petraglia soldering iron is provided in the following language in the '509 patent specification:

*****
* * * Soldering iron 5 has a gripping handle 7 made of a suitable heat resistant material, such as wood or plastic, wherein a firing plunger 16 may be transported. It includes a rod section 12 and a contact pin 25 comprising a cylindrical base 14 and a sharply tapered tip 14a at its end.
For supplying ease of movement to plunger 16, a spring 13 is wound about rod section 12 at a lower portion thereof between a stop 15 and base 14. Spring 13 and the lower section of rod 12 are in turn circumscribed by an annular shell 6. Soldering tip 20 of soldering iron 5 comprises a cartridge chamber 21 formed as by a cylindrical shell 10 having a top 23 open-ended and threaded as by means of threads 9. About the top 23 is a cap portion 8 which screwably joins chamber 21 to annular shell 6. Within chamber 21 there is inserted a heat generating cartridge 11, which is capable of producing, on discharge or firing, great quantities of concentrated heat which may be conducted to a desired focus as by means of screw 18 and tip 17.
The operation of the soldering iron is seen to be rapid and efficient. A heat producing cartridge 11 is inserted in chamber 10 whenever desired. Plunger 16 is then tapped so that tip 14 punctures cartridge 11, whereupon the desired quantum of heat is generated for heating the soldering tip 17.
*****

6. The '509 patent contains two claims, both of which are here relied upon by plaintiffs. Claim 1 is set forth below in clauses to facilitate understanding of the structure claimed by the patentee.

Patent Claim 1 of '509

A soldering iron comprising

(a) a gripping handle of suitable heat resistant material, said handle having a bore therethrough,
(b) means for containing a cartridge having heat generating materials for use in soldering comprising,
(c) a threaded cylindrical hollow chamber having a top portion,
(d) a tapered soldering tip portion for focusing said generated heat developed in said means and being connected thereto,
(e) a threaded cap situated on said top portion opposite said tip portion for engaging and closing said top portion, said cap having a bore therethrough and accommodating said firing pin,
(f) hollow means connecting said gripping handle with said cap,
(g) and a plunger slidably mounted within said handle and connecting means,
(h) a contact pin on said plunger and slidable through the bore in said cap,
(i) spring means mounted between said contact pin and the upper portion of said connecting means,
(j) said plunger being retractable against said spring and upon release adapted to puncture said containing means,
(k) said tip, cap and handle all being axially aligned.

7. Claim 2 is essentially the same as claim 1, differing only in that it recites that the spring means be mounted within said connecting means.

VALIDITY ISSUES

.8. The patentee testified that the conception of the soldering iron disclosed in the '509 patent occurred while he was attempting to develop a “non-electric laundry iron,” and particularly when he became aware of and purchased from a New York store a device known as a “Heatron Stirrer.” The Heatron device, a drawing of which prepared by defendant is reproduced herein, is an implement designed for heating liquids in a small container. The Heatron device 10 has a hollow handle 12 made of a heat resistant material such as plastic. The handle is connected by a tubular member 21 to a cylindrical metal receptacle 14 containing an exothermic cartridge 16. The receptacle 14 is threaded at the top to receive a correspondingly threaded cap 18 having a bore 20 therethrough. A firing rod 22 is slidably positioned within the handle 12 and tubular member 21 and has a contact pin 24 at one end thereof which is adapted to slide through the bore 20 of cap 18. A firing pin 25 is attached to the end of the contact pin 24. A spring surrounds the firing rod 22 between the contact pin and the shoulder 28. The Heatron device is operated by placing the stirrer in a liquid and retracting the firing rod 22 against the spring 26 which upon release causes the firing pin 25 to strike and thereby ignite the heat cartridge 16. While the Heatron device was known to Petraglia prior to his conception and development of the soldering iron disclosed in the '509 patent, there is no indication that the Patent Office examiner was aware of its existence or that the patentee during the prosecution of the '509 patent application called it to the attention of the Patent Office.

9. In addition to the Heatron device discussed in finding 8 above, defendant has cited the following prior art patents in urging that the claims of the patent in suit did not define a patentable advancement:

PRIOR ART CITED BT PATENT OEPICE

Patentee Patent No. Date

A. G. Kaufman_ 712,938 1902

O. B. Kodgers_ 761,010 1904

Gabriel_ 820,638 1906

J. C. Tomaszewski_ 1,160,343 1915

J. Szotak_ 1,172,405 1916

France_ 533,039 1921

Great Britain_ 209,479 1924

A. Schwartz_ 1,573,872 1926

L. Jarkovsky-._ 1,602,266 1926

W. M. Minto_ 1,826,562 1931

D. H. Bottrill_ 1,838,357 1931

K. H. Homack___ 1, 928,129 1933

D. Lakenbach___ 2,182,636 1939

A. E. Gessler_ 2,289,008 1942

Great Britain_'_ 587,496 1947

ADDITIONAL TRIOR ART NOT CITED BX THE PATENT OFFICE

W. Mitchell_ 869,140 1907

D. La Cour, et a-1_1,417,075 1922

J. H. Gravell_ 1,434,538 1922

D. B. La Cour_ 1,498,323 1924

D. H. Bottrill_ 1,607,508 1926

Germany- 586,016 1933

F. Eggert, et al_ 2,020,292 1935

C. C. Boyd_2,121,728 1938

France- 856,014 1940

Patent of Addition to 856,014_ 50,500 1940

L. P. Young_2,213,438 1940

O. G. Bennett- 2,500,790 1950

(filed 1946)

O. G. Bennett_ 2,531,548 1950

(filed 1947)

10. Of the voluminous prior art relied upon by defendant, the Heatron device, the Mitchell patent 869,140, and Bennett patent 2,531,548 are particularly pertinent.

11. Mitchell patent 869,140, a drawing from which is reproduced herein, discloses a self-heated soldering iron which includes soldering tip K having a recess K'. The soldering tip is threaded at its upper end to a generator body H which has a bore therethrough. The soldering tip K and attached generator body H are connected by tube G with hollow handle A which contains a liquid fuel reservoir C. In operation, the fuel stored in the reservoir of handle A is passed through tube G to the generator body and mixing chamber L where it is ignited and the gas produced thereby is directed into the recess K7 to heat the tip K. The tip K, generator body H, and handle A are all axially aligned.

12. Bennett patent 2,531,548 (application filed August 4, 1947), fig. 2 of which is reproduced herein, discloses an apparatus for heating liquids such as milk or water. The '548 device includes a liquid container to which is attached a heat generating mechanism comprising an exothermic cartridge 1, receptacle 13 therefor, and a firing mechanism 16. The latter is aligned with the receptacle 13 and includes a barrel 17 having a bore 18 in which is movably mounted a firing element or plunger 19, the upper end of which projects out

of the barrel and has, at the upper end thereof, knob 20. The barrel 17 is threaded to receptacle 13. The plunger 19 carries a head 24 at the lower end approximately the diameter of the bore 18, and has at its tip a firing pin 26 aligned with the percussion cap 3 of exothermic cartridge 1. A spring 27 surrounds the plunger 19 between the head 24 and shoulder 23. The '548 device is operated by retracting plunger 19 against spring 27, which upon release of the plunger causes the firing pin 26 to strike and ignite cartridge 1. The heat generated thereby is transferred to the liquid container.

13. The Heatron stirrer, a device admittedly on public sale “prior to the invention of the soldering iron disclosed in the patent in suit, contains all of the structural features or their equivalents recited in the two claims of the '509 patent and is anticipatory thereof. The only difference worthy of notation between the Heatron device and the patented device is the fact the cartridge receptacle of the latter does not have a tip to “focus the heat” generated by the exothermic cartridge when ignited within the receptacle. This structural difference is immaterial since it would have been obvious to add a tapered extension or tip to the bottom portion of the cartridge receptacle of the Heatron device.

14. The soldering iron construction recited in the '509 claims was also anticipated by either the combination of structure of the Mitchell '140 patent with that of the Bennett '548 patent, or by the combination of the previously sold and used Heatron device with the Mitchell patent disclosure. The firing mechanism and connected cartridge containing assembly disclosed in the Bennett '548 patent are substantially the same as the corresponding structure used in the patented device or the Heatron device, and the addition thereto of the soldering tip K of the Mitchell patent to produce a structure like the '509 patent device would have been obvious to one having ordinary skill in the art. It would have been equally obvious to add the soldering tip K of Mitchell to the bottom portion of the cartridge receptacle of the Heatron device, which as previously noted, includes all other features of the '509 patent device, to provide a soldering iron meeting the recitals of either of the two claims in suit.

15. Bottrill '508 patent, British patent 209,479, and the French Schou and La Cour patent 583,039 also disclose soldering irons having self-contained heat generating means which obviate the need for an external heat source.

16. There is some evidence that plaintiff Petraglia in conjunction with others developed, subsequent to the filing date of the patent in suit, a modified soldering iron having novel features. However, these modifications are not disclosed in the specification of the patent in suit nor were they claimed therein. It is unnecessary to determine whether these later features might have been patentable. There is also testimony to the effect that the soldering iron disclosed in the '509 patent met with commercial success. This testimony was uncorroborated and does not fully coincide with other evidence and testimony of record indicating that it was a later improved soldering iron developed by Petraglia and others which met with commercial success and not the soldering iron disclosed in the '509 patent.

17. Defendant has urged that the claims in suit are invalid on the ground that they are not supported by an adequate disclosure and that also they are indefinite. Defendant’s contention that the '509 patent disclosure is inadequate is based principally upon the fact the patent in suit does not disclose certain modifications or improvements in the '509 soldering iron later developed by Petraglia and others, which improvements or modifications are contained in later models purchased by defendant and in those sold commercially by plaintiff Kemode. Defendant has pointed out that the '509 patent does not specify that the firing pin be “blunt,” a feature necessary to prevent puncturing of the primer with resultant backfire of the heat cartridge used in the accused structure as well as later Kemode models, and that the '509 patent does not disclose the spring tension range which Petraglia testified he had found to be safe for operation of his later modified or improved soldering irons. While the '509 patent does not disclose these refinements later made in the soldering iron construction shown therein, the '509 disclosure is found to be adequate.

18. Defendant has contended that the two claims of the '509 patent are invalid on the ground that they are indefinite since there is no antecedent in the prior portion of the claims for the term “said firing pin” recited therein, and that the meaning of this term is not clarified by referring to the '509 disclosure because the '509 specification does not mention a “firing pin.” It is further asserted the claims are indefinite because they provide for “said plunger being retractable against said spring and upon release adapted to puncture said containing means,” it being alleged that according to this recital the plunger must be the member which makes contact with the heat cartridge rather than the sharply tapered tip of the contact pin which is mounted on the lower end of the plunger. These imperfections in the claim drafting do not render the claims in suit indefinite. The '509 specification does not mention specifically a “firing pin” but does refer to a “sharply tapered tip 14a” which obviously functions as a firing pin and is the only member described in the '509 patent which could function as such. The '509 patent specification shows that this tip forms part of the contact pin 25 mounted at the lower portion of the plunger and that it is this tip which actually makes contact with the heat cartridge.

19. Summarizing findings 8 through 18, patent claims 1 and 2 of the '509 patent are found to be invalid as failing to define a patentable invention over the prior art.

INFRINGEMENT ISSUES

20. The accused soldering iron, plaintiffs’ exhibit 16, a drawing of which has been prepared by defendant and is reproduced herein, includes a hollow handle 12 made of a heat resistant material such as plastic to which a cartridge receptacle 14 is connected by a tubular member 84. The receptacle 14 carries a soldering tip 16 at one end and is threaded at the other end to receive a cap 20 which is attached to the lower end of the tubular member 34. A firing mechanism 36 is slidably positioned within the axially aligned handle 12, tubular member 34, and cap 20, and comprises a firing rod 38, a knob 40 at one end of said rod, an adjustable member 42 including a cylindrical base 44 and a firing pin 46 at the other end of said rod, and a spring 50 surrounding said rod between the member 42 and knob 40. The cap 20 has a plate 48 having a small central bore 49 through which only the firing pin 46 can extend. The accused structure is operated by inserting an exothermic cartridge 24 into the receptacle 14; the firing rod 38 is then retracted against spring 50 which upon release of the rod drives the firing pin 46 against the cartridge 24 and causes it to ignite. The cartridge 24 is detonated by a primer 28 and puncturing is not required.

21. Defendant has urged that the accused soldering iron does not infringe either of the two claims in suit principally because of three limitations contained in these claims. These limitations are: (1) that the firing mechanism must be designed to pwnctwre the heat cartridge, (2) that the contact pin

is slidable through the bore in the cap, and (8) that the spring means does not extend into the handle. Defendant has contended that the accused soldering iron does not infringe either of the two claims of the patent in suit because it is designed to detonate rather than puncture the heat cartridge used therewith; because the contact pin is not slidable through the bore in the cap in its entirety, and because the spring employed in the accused construction extends into the handle thereof. While both of the claims and the specification of the patent in suit recite or state that the firing mechanism of the patented structure punctures the heat cartridge, exactly what is meant by the term puncture is not explained. The member which actually contacts the heat cartridge when the cartridge is ignited is designated as “sharply tapered tip 14a” which is attached to the end of the contact pin 25. At the trial, the patentee described this tip 14a as a “point.” Some indication of the meaning of the word puncture may be found by examination of the patent application prosecution record. Originally filed claims 7 and 8 used the term “detonate” in describing the operation of the heat cartridge. The Patent Office examiner in rejecting these claims stated that the word detonate was inapt and inaccurate. These claims were rewritten as claims IS and 14 which eventually issued as claims 1 and 2 of the patent in suit and the word “detonate” was discarded by the applicant in favor of the word puncture. The clear implication is that the term pwncture when used in the '509 patent was intended to mean an actual piercing or opening, so as to expose to air, the contents of the heat cartridge. The accused structure requires that the heat cartridge be detonated; puncturing is avoided for safety reasons.

22. In contending that there is no infringement because of differences in the structure and operation of the contact pins of the patented structure and the accused structure with respect to their movement through the bore of the respective caps of the two devices, defendant also has pointed to the fact that the contact pin of the patented structure slides through the bore in the cap in its entirety whereas in the accused structure the firing pin only is able to pass through the bore in the cap.

23. The two claims in suit recite tbat the spring means is located between the contact pin and the upper portion of the hollow tube which joins the handle to the cap. The spring means of the accused structure extends from the contact pin into and nearly through the handle.

24. Summarizing findings 21 through 23, it is found that claims 1 and 2 of the patent in suit have not been infringed.

CONCLUSION OK Law

Upon the foregoing findings of fact, which are made a part of the judgment herein, the court concludes as a matter of law that patent No. 2,589,509 is invalid and that the two claims in suit have not been infringed. Plaintiffs’ petition is dismissed with prejudice.  