• This is an appeal from a ’decree rendered upon final hearing dismissing the complainant’s bill. Th¿ suit was brought by Dunlap against the manufacturing company and Willbrandt, its president and manager, for an injunction and an accounting ■bécause of an alleged'infringement of letters patent No. 483,435 issued September 27, 1892, to Dunlap, for new and useful improvements in atomizers, and of letters patent No. 620,895, issued to him on March 14, 1899, for new and useful improvements in atomizers and vaporizers and apparatus pertaining to the same. There was also embodied in the bill a charge of unfair competition as distinguished from the alleged infringement of the patents.
1. As to the first patent in suit: The controversy, so far as concerns this patent, is confined to the second claim thereof, which is as follows: ■ ■
“(2) In an atomizer, the two-part spraying-tpbe having a side opening in the lower member and a hollow coupling connecting the two parts, said coupling having a side opening to register with the side opening in the tube, substantially as described.”
The defense is noninfringement. The device of complainant belongs to that class of-atomizers in which the spray or vapor is produced within a closed bottle or • other receptacle, and is then forced out or withdrawn for inhalation, or application. The upper end of the tube, .which is designed to be inserted in the bottle containing the liquid to be vaporized, is screwed into the lid or covering of the bottle, and the lower end is immersed in the liquid, but does not quite touch the bottom. Air under pressure is forced into the tube at its upper end and proceeds downward through the passage therein, through a continuing passage in the coupling, and thence out through the side openings in . the coupling and the lower tube. The exit of the air is above the level of the liquid at the bottom of the bottle. The lower end or nipple of the coupling is beveled on one side, and the space between the beveled surface and the inner surface of the lower tube forms an extension, so to speak, of the passage in the lower tube, upward to the opening in the side thereof. The downward and lateral rush of the air across the opening formed by the beveling of the coupling creates a partial 'vacuum and causes the liquid to rise in the lower passage, and it is then blown forcibly outward through the side opening in the tube and against the side of the bottle, so transforming it into spray or vapor. ’The structures handled by defendants which are alleged.to contain infringing features are known as the “Eureka Nebulizer”.and the “Multiple Comminuter.” The latter may be dismissed from special consideration in this connection because we are of the opinion that it contains no infringing device if none can be found in the nebulizer. There is such similarity that it will be sufficient, for this branch of the case, 'to confine our consideration to the tube of the eureka nebulizer.' This tube is composed of but two pieces which are connected by means of a screw joint. It has no separable coupling, and in this respect differs from the tube of complainant. The atomizing part of the "structure, .■the part where the openings’in .the áir and. liquid passages - come together, is in the lower member of the tube and not in a coupling. The
The complainant was by-no means a pioneer in the art to which his patent relates. Devices for atomizing liquids were well known years before he entered the field, and they involved the use of tubes for, the conduct of air under pressure to a contact with liquids for the atomizing process. There are three patents preceding that of complainant which exhibit atomizing tubes not greatly dissimilar from that of the defendants. The Dighthill patent, No. 365,265, June 21, 1887; shows an atomizer or nebulizer in which the air and liquid tubes are integral and constitute substantially a single straight stem. The vertical air passage at its lower end takes an abrupt turn to the horizontal, and terminates with an opening in' the side of the tube clo-se to the upper exit of the liquid passage. In the Shurtleff patent, No. 379,611, March 20, 1888, there is also an atomizing tube in a single piece which differs in shape, but the operation of which is like that of Dighthill, In the Semple patent, No. 290,486, December 18, 1883, for improvements in inhalers, an air and a liquid tube are shown, and whether they should be fastened together or remain separate is expressed to be a matter of preference. Its operation is similar to that of Dighthill and Shurtleff. Other patents appear in the record indicating the stage of the art, but none of the structures described are sufficiently similar to those here involved to require description.
In view of the state of the prior art the complainant is not entitled to a broad construction of his claim. He came into a field already explored, took a single-piece atomizing tube and divided it into three adjustable parts for convenience in cleansing, and incidentally arranged the discharge openings in conformity therewith. He specified five distinct elements in his structure: (1) The upper tube member; (2) the lower tube member; (3) the hollow coupling; (4) the side opening in the hollow coupling registering with' (5) the side opening in the lower member. It is altogether clear that complainant made the separability of his structure into three parts, the dominant feature of his claim. His reason for doing so is thus clearly expressed in his specification :
“The object of my invention is to produce a simple atomizer which is durable and. comparatively inexpensive, which may be easily operated so that a patient may get the full benefit of the spray, which .is not liable to corrode, which may be easily taken apart or put together, and which, in consequence of its easy separableness, may be conveniently used for producing balsamic sprays, as solutions containing balsam are apt to clog spraying-tubes, and my invention provides for easy cleaning.”
None of these declared objects are subserved by the arrangement of the discharge openings within the tube. In the defendants’ device two of the complainant’s elements are lacking, namely, the hollow coupling and the side opening in the hollow coupling registering with a similar opening in the lower tube member. The complainant calls his device a “two-part spraying tube with a hollow coupling,” but it is really composed of three. The third is the coupling .itself, and it is indispensable
The complainant here, invoking the doctrine of equivalents, claims that the defendants’ tube composed of two members without a separable coupling is mechanically the same as his. • It is- no doubt true that the mere joinder' of two elements into one integral part or the separation of one part into two may be an infringement if the change in the structure accomplishes the same results in substantially the same way; but we are of the opinion.that this rule does not help the complainant. The
2. The second patent in suit: The charge is that the defendants have infringed claims 2, 3, and 8. The defenses are invalidity and non-infringement in respect of claims 2 and 3, and noninfringement in respect of claim 8. The claims are as follows:
“(2) In an atomizer or vaporizing apparatus the combination of an atomizing device; a chamber or receptacle for the storage of the atomized vapor; a tube or nozzle leading therefrom ; means for controlling the passage from said chamber so that the vapor can be stored and delivered under pressure for rapid or extensive use, as specified.
“(3) In a .vaporizer or atomizer apparatus the combination of a suitable atomizer; a chamber for storing the atomized vapor under pressure; a valved outlet constructed to open and close in rapid succession to control the discharge therefrom for the purpose specified.”
“(8) In an atomizer or vaporizer the combination with an atomizing or vaporizing device of a receiver provided with an outlet, a valve for closing the outlet of the receiver having a suitable stem, the valve-stem being provided with a head at its outer end and with a collar or shoulder a short distance therefrom, and an adjustable stop, through which the portion of the valve-stem between the head and shoulder or collar works, substantially as described.”
The subject-matter of the patent as exhibited in the claims above set forth is an apparatus designed for the treatment of diseases of the ear, nose, throat, and lungs by means of vaporized medicaments under pressure administered in either a continuous or intermittent current. The claims in question relate to certain features of a structure which may be briefly described as follows: A number of medicine flasks or bottles are supported on an air supply tube, each flask or bottle being provided with an atomizer tube communicating with the air supply pipe; the passages connecting the air supply pipe with the atomizer tubes being controlled by valves. All of the flasks or bottles are in open communication with a central receiver by means of tubes; the receiver being provided with an outlet leading to a discharge tube which is controlled by a valve. The three claims differ principally in the description of the means of controlling the passage of the vapor through the discharge, tube.
Methods for making and administering nebulized or vaporized medicaments under pressure and the ihterruption of the current so as to render it intermittent, thus producing what is properly called a “vapor massage,” did not originate with the complainant. His patent was issued March 14, 1899. The application therefor was filed April 22, 1897. In an article by Dr. George F. Hawley, published at Chicago in the Journal of the American Medical Association of the issue of May 12, 1894, an apparatus for nebulizing nonvolatile medicaments and a method of administering the vapor by' the process of forced dilatation was described in detail. In the same year the article was published in-pamphlet form for distribution. The apparatus which was described and-also illustrated consisted of a number of glass’bottles, one for'
“Tlie undulations of tlie impacted nebula will render the mouth of the Eustachian tube more patent and act as a massage on the diseased tissues of the midlde ear, equalizing the circulation and tending to break up adhesion of the ossicles by causing them also to vibrate.”
Again:
“In my practice, however, in massaging the diseased, paralyzed, atrophied, or hypertrophied tissue and in dilating the Eustachian tubes, and in medicating and breaking up adhesions in the middle ear, the best results have been obtained by using a pressure of from 30 to 50 pounds.”
Again:
“But nebula, impacted from nonvolatile medicaments and administered by forced dilatation with gentle but rapid vibration, offers the only safe and efficient method for medicating and massaging the middle ear.”
The assertion by the complainant that he discovered a novel method of treatment which may be termed “vapor massage” is in view of this article which preceded his entry into the field certainly unfounded. The method is particularly described and the term “vapor massage” is plainly suggested by the language of the article; and it required no inventive faculty to discover that the desired intermittent effect of the current of vapor could also be produced either by compressing and releasing the discharge tube if it were sufficiently pliable, or by the manipulation of .a control faucet at the top of the storage bottle. If, in the apparatus which the author of the article described, there had been a valve in the discharge pipe constructed to open and close rapidly, and to thus control the discharge of the vapor, it would have completely, anticipated the second and third claims of complainant’s patent.
In the Emery patent, No. 196,206, October 16, 1877, the apparatus is adapted, among other things, to the treatment of weak or diseased lungs. It shows a storage chamber for vapor or air, medicated or pure, under pressure, in connection with a separate receptacle for water,’ medicated liquid, gas, or any suitable substance or composition wherewith it is desired to saturate or charge the air in the chamber. , In this receptacle is a dependent tube through which the air is forced on its
1 The apparatus set forth in the Kennedy patent, No. 422,802, March 4, 1890, is for medicating, compressing, and administering air into the respiratory organs. There is a combination of a compressed air reservoir connecting on one side with an air pump, and upon the other with a number of bottles in each of which is a dependent tube. The connecting pipes into and out of-the air reservoir are equipped with stopcocks. Tibe connection with the bottles is so arranged that air under pressure is forced into them and down the tubes to a contact with the contents. In each bottle is an outlet port having immediate connection with a flexible discharge pipe, to the end of which is attached a nozzle for insertion in the mouth or nose of the patient. The stoppers of the bottles in which are located the inlet and outlet ports are equipped with valve plugs. The inlet ports are larger than the outlets to assist in the maintenance of the pressure. In the specifications it is said that in practice the bottles “are designed for the reception of the medical agents with which the air' is intended to be medicated in the usual manner by vaporizing small portions thereof in passing through said agent.” We therefore have in the Emery patent all of the elements of claims 2 and 3 of complainant’s patent, excepting,-possibly, the atomizing device, and substantially all of them in the Kennedy patent—an atomizing device, a chamber for storage under pressure, a valved outlet, and a tube or nozzle leading therefrom. It is true that there is no detailed description-of the atomizing tube in either of these patents, but none of any special structure is required by the second and third claims of complainant’s patent, and any device capable of atomizing would suffice. It will be noticed in this connection that Kennedy speaks of the vaporizing of small portions of the solution by the passage of air under pressure through his tube. In the Kennedy apparatus each bottle serves the double purpose of containing the atomizing device and constituting the storage chamber. In this respect it is similar to the eureka nebulizer, which, notwithstanding such construction for the double purpose, the complainant contends infringes his patent.
The Robertson patent, No. 549,822, November 12, 1895, discloses an apparatus “for atomizing, mixing, and administering liquid medicines,” which is precisely like that of complainant, excepting that an outlet valve is lacking. With the outlet valve of Emery or Kennedy for the purpose of controlling the discharge of the vapor we would have in all respects a structure built upon the lines of complainant’s. There is in Robertson’s the same collection of bottles, each equipped with an atomizing tube of the eureka type, each connected with a tube conveying compressed air, a large central receiver bottle in which the vapors from the atomizing bottles are collected and mixed, and from which they escape by means of a discharge tube ending with a nipple for insertion into the mouth or nose.
The Palmer patent, No. 386,025, July 10, 1888, is for an apparatus for- atomizing liquid by compressed air received from a reservoir.
It seems clear from the foregoing that the complainant simply pursued a road previously opened and improved by others, and that he secured an old result by substantially the same means that had theretofore been employed.
There is another matter that deserves notice in connection with thesp claims. While the complainant’s application was pending in the Patent Office, claim 2 was rejected by the examiner because of anticipation by the Emery and Palmer patents. The examiner said:
“This patent [the Palmer] shows a receiving chamber above the atomizer, and there is no invention in providing the outlet from the receiver with regulating means as this feature is shown in the Emery, No. 196,206, October 16, 1877.”
And claim 3 of the patent (it was claim 4 of the application) was also rejected on the same references, “because the cut-offs shown in Emery may be opened and closed in rapid succession.” After amendment by the applicant it was then held by the examiner that claim 2 was not changed in substance and stood rejected, and that the claim which is now numbered 3 in the patent was also rejected on the previous references. The examiner added:
“The references show that it is old to store vapor under pressure and to provide a valved outlet. The rapid operation of the discharge valve has reference to the manner of using the apparatus and not to its construction.”
In this connection attention is directed to the action taken with reference to claim 17 of the application. It was as follows:
“In a vaporing [vaporizing] inhaler the combination of a vaporizer; a receiver or chamber for storing the vapor under pressure; a delivery pipe or tube; a tip for said pipe or tube adapted to insert into the nose or mouth; and a valve adapted to open and close the pipe in rapid succession to control the passage of vapor through the pipe for the purpose specified.”
Upon rejecting this claim the examiner said:
“Claim 17 is considered to present nothing patentable over the references in the case which show that it is old to store vapor under pressure, to provide delivery tubes with tips, and to have controlling valves, which may be operated more or less rapidly.”
An appeal was taken by the complainant from the action of the primary examiner to the board of examiners in chief, with result that the rejection of claims 2 and 3 was reversed and the rejection of claim 17 was affirmed. As to the latter the board said:
“Claim 17 is anticipated by the Emery patent. The substitution of an old form of tip in that device requires no new construction. Every other element of the claim is found in such device.”
Claim 17 was therefore canceled and does not now appear in the patent. The significance of all this is that, while claim 17 of the applica
“Although we have used the term ‘atomizer,’ it will be understood that in ordinary practice, blowing in liberal quantities of warm dry air ready to absorb the vapor, the liquid is in the course of the treatment evaporated, and its vapor mingles with the air and is conveyed to the lungs through the inhaling tube in the form mainly of vapor. The terms ‘atomizer’ and ‘vaporizer’ may be .used in this relation as equivalents.”
The result of- this is that the presumption which attends the issue of a patent and of which the patentee is entitled to avail himself is in this case seriously impaired.
Claim 8 of the second patent in suit is not infringed. The complaint in that respect is more on account of a superficial similarity of consruction that bears on the question of unfair competition than because of a supposed infringement. It is conceded that the particular device in defendants’ -structure which looks like that embodied in claim 8 has no function whatever.
3. Embodied in complainant’s bill is also a charge of unfair competition, in that the defendants, by copying the form of his apparatus ■and by using certain phrases and catch words in advertising matter, were deceiving the public into the purchase of their instruments under the belief that they were purchasing those of the complainant. The complainant possessed no trade-mark and no design patent securing ■to himself the exclusive right to the form or dress of his apparatus. ■And we fail, to discover in the record any evidence of fraudulent intent upon the part of the defendants to palm their goods off on the public as the goods of the complainant or as manufactured under his patents. ■The general resemblance was not such as to deceive the class of persons who would náturally be expected to be interested in or to purchase articles, of that character. Moreover, those of the complainant were per'mánently máí'kéd :ás issuing from “The Globe Mfg. Co,, Battle Creek, Michigan, U. S. A.,” -while those of the defendants were- as indelibly
The decree of the Circuit Court is affirmed.