In Kirchberger v. American Acetylene Burner Company, 128 Fed. 599, 64 C. C. A. 107, this court, affirming the decision in (C.C.) 124 Fed. 764, held that the burners of this complainant, claimed to be made under the patents here in suit, infringed this defendant’s Dolan patent, No. 589,342. The claims in suit, Nos. 6 and 7 of patent No. 617,942, hereafter called the first patent, cover “a tip for acetylene gas burners composed of a single *746piece of refractory material having the inlet and discharge passages at an angle with each other,” or “at right angles to each other.”
The Dolan patent showed curved metallic arms fitted with steatite tips having the inlet and discharge passages connected in a curved line.
In a burner manufactured by defendants prior to the Shaffer patent, and known as the “Napheys burner,” the metallic arms supporting the steatite tips were angular instead of curved. The sole difference between this prior burner and that of the first patent in suit consists in the fact that in the former the angular turn was in the metal part, and in the latter in the extended steatite part, of the burner or tip. 'All that Shaffer did in effect was to lengthen the prior steatite tips so that both passages could be included therein. The two tips are structurally and mechanically identical, the single difference being that necessarily resulting from a change in the point of juncture between the metal and the steatite. It would seem from the testimony of complainant’s own witness, Dong, that this change, involving the angular arrangement, was both conceived of and suggested to Shaffer by Dong.
The second patent, No. 634,838, chiefly relied on to support this appeal, covers not merely a tip but a complete “double-jet gas burner made entire of a single piece of refactory material, with divergent arms,” passages, etc. The limitation upon the scope of this patent is well shown by the following statement in the specification:
“My invention relates to burners for acetylene gas having divergent arms provided with diverging gas-passages and converging gas-exits and suitable air-passages to produce a flat flame, such as have heretofore been made entire of metal and also with metal arms and separable refractory tips.”
The patent, therefore, structurally covers merely the substitution of refractory material for metal, or metal and refractory material, in making the burners of the prior art.
But it is contended that this substitution of material involved invention for the following reasons, namely: The arrangement of the burner arms permitted the boring of the passages from the outside of the burner, thereby dispensing with the molding operation and consequent necessity for the use of plugs, as suggested and shown in the Dolan patent and other prior constructions, and thus provided a cheaper and more accurate burner.
The patentee further claimed that this construction obviated an objection necessarily attendant upon the use of metal burner arms with steatite tips, namely, the difficulty in adjusting the tips so as to insure a suitable alinement of gas exits and jets, and in thereafter maintaining them in such position by reason of the action of the heat on the metal. That is, as stated by counsel, the claim covers something more than substitution of material, namely, “burners made of refractory material in a certain way and of a certain construction, whereby they not only accomplish all the desirable results incident to the use of the material itself, but they can be readily and cheaply constructed.” The patentee, however, says as follows:
“It was suggested in patent No. 618,239, granted me January 24, 1899, that burners of the character therein set forth might be made entire of refrac*747tory material. The present improvement relates to a distinct class of burners, which are adapted for and heretofore have been provided with refractory tips inserted in divergent arms and having gas-exits directed toward each other to produce a flat flame, the object being to remedy the before-mentioned defect in such burners.”
In said earlier patent “the whole burner is preferably formed in a single piece of any suitable material such as lava, * * * the jet tubes are inclined toward each other as shown at an angle preferably of about forty-five degrees/' and a comparison of the specifications and drawings of the two patents seems to show that in mechanical construction the burners belong not to distinct classes, as asserted by the patentee, but to the same class, and that they apparently operate substantially in the same way. No reason is shown why the securing of “a suitable alinement of the gas exits and jets,” claimed to be secured by the one-piece construction of refractory material of the second patent in suit, would not also be secured by the preferable construction of lava suggested in patent No. 618,239. It is further contended that the invention of the second patent consisted, inter alia, in providing a one-piece burner with arms arranged to so diverge upwardly as to permit the gas and discharge passages and apertures to be bored therein up from the lower end of the arms and down in their faces, etc., so as to leave a structure with integral walls, and dispense with the use of plugs.
But there is nothing in the second patent to indicate that the patentee made or thought he had made any such invention. The only reference to boring in the patent is that of the air supply passages, and this has no relation to dispensing with the use of plugs. Some of the drawings show that it would be impossible to bore the gas passages in the manner now suggested without cutting off a portion of the lower end of the arms. If the burners of the prior art were thus cut off, the same result might be accomplished. The specification shows that the sole object of the invention was to provide by the substitution of a “burner body and arms of one piece of non-metallic refractory material” a construction “arranged to produce the desired form of flame with certainty and without testing and altering, as in the case of composite burners, and without danger of subsequent torsion by heat.” The claims cover such construction to insure and maintain a “flat flame” or the “proper form of the flame.” The file wrapper shows that the patentee originally claimed this particular form of construction of burner, made with or without metallic connections, and that he was forced to abandon these claims, to admit that said construction was “such as have heretofore been made,” and to limit himself to such a burner, made from one piece of refractory material.
In these circumstances,, we concur in the conclusion of the court below that the patents in suit merely covered the substitution of one well-known material for another. It is clear that said substitution developed no new uses or properties in the burner itself, and that no invention was required in making said change, but that it was the result of the exercise of mere mechanical skill.
The decree is affirmed, with costs.