Paley v. United States

dissenting,

In the majority opinion it is held that the plaintiffs’ patent is invalid because anticipated by the prior art. The prior art cited in the opinion is the Steele patent issued in 1922, and an article by two of the three inventors named in the Steele patent on the subject of “The Cyc-Arc Process of Automatic Electric Welding.”

The Chief Judge and I are of opinion that this patent and this article do not disclose the invention covered by claims 11 and 13 of plaintiffs’ patent, which claims plaintiffs allege the defendant has infringed.

The feature of plaintiffs’ invention which they claim has been infringed was the use of a heat-resisting ferrule or shield around a stud when it is welded to a metal surface through a hole in wood planking. The purpose of this ferrule or shield was to prevent charring of the wood during the welding of the stud to the deck. Plaintiffs’ claim 11 called for a “heat-resisting material” between the inserted fastening member and the sheathing. It is not disputed that the defendant used such a heat-resisting material.

Defendant filed an application for a patent on a method of welding a fastening member to a steel surface to secure planking, and in its application it called for insulating the planking from the welding heat by utilization of the space between the member and the planking. When this came to plaintiffs’ attention, plaintiffs amended their patent application to include such claims. The Patent Office declared *252an interference proceeding to determine the first inventors of tbis method. This interference proceeding was decided in favor of plaintiffs. It held that plaintiffs were the inventors of this method, rather than the defendant. An appeal was taken by the defendant to the Court of Customs and Patent Appeals, which affirmed the decision of the Patent Office Board.

The question now is whether or not the Steele patent and the article on the Cyc-Arc welding anticipate the claims in suit.

The Steele patent covered certain “improvements in or relating to electric welding.” On page 2, lines 51-57, in the specifications, it was stated:

A shield may be provided for protecting the arc from magnetic effects and/or air currents. This may be effected by enclosing the stud-holder and arc in a suitably insulated casing which may be of steel, iron, or other suitable metal, or if desired of refractory material.

This is alleged to have anticipated plaintiffs’ disclosure of a heat-resisting shield around a bolt to prevent the charring of the wood.

Also, in the article on the Cyc-Arc Process of Automatic Electric Welding it was stated:

If the apparatus is properly adjusted and the plates are clean, the only likely trouble is that due to currents of air (such as those in draughty passages), which may cause the welding arc to be blown to one side, if not actually extinguished. In such cases, steps must be taken to shield the stud welder from excessive draughts.

This also is alleged to have disclosed the principle embodied in plaintiffs’ claims.

We do not think either of these publications anticipate plaintiffs’ claims because the shield used by Steele and in the Cyc-Arc process was not for the purpose of preventing the chairing of the wood. Indeed, these publications do not disclose the concept of stud welding in the presence of a wooden deck plank.

The shield called for in the Steele patent was evidently not designed to prevent charring because it was specified that it might be “of steel, iron, or other suitable metal, or *253if desired of refractory material.” Since either iron or steel or a refractory material was specified, Steele evidently did not have in mind a shield which would prevent the charring of the wood, because, had steel or iron been used as a shield, the same heat that was sufficient to weld the bolt to the steel surface would have been sufficient to heat or melt the metal shield, the heat from which of course would have charred the wood. It was only by the use of refractory material that the charring of the wood could be prevented. But Steele did not say that a refractory material had to be used, or that stud welding could be done with wood planks in place on the deck if refractory maternal was used. ■

On the other hand, the plaintiffs specifically called for a “heat-resisting material.” To accomplish the purpose plaintiffs had in mind, iron or steel would have been unsatisfactory.

Furthermore, the article on the Cyc-Arc Process of Automatic Electric Welding clearly shows that Steele was not concerned with the problem of preventing harmful charring of wood. This shows, in the portion quoted above, that his object was to prevent the displacement of the weld by air currents in draughty passages. He had no thought of prevention of the burning of surrounding wood, and the deleterious effects thereof.

It is significant that this Steele patent was cited by the Patent Office in acting upon the Government’s application for a patent, and that it was also mentioned and under consideration in the interference proceeding between the Government’s application and plaintiffs’ application. The Patent Office evidently did not think that it anticipated the plaintiffs’ patent, and of course their decision is presumptively correct. In addition, the Court of Customs and Patent Appeals, the court specifically created for the consideration of such questions, affirmed the decision of the Patent Office. In a case as close as this one, and where the prior art was considered, the presumption of the validity of a patent issued by the Patent Office and passed on by the Court of Customs and Patent Appeals should prevail. The Chief Judge and I are not convinced that the Steele patent and the article referred to so clearly disclosed the invention *254covered by plaintiffs’ claims as to rebut this presumption.

Now it is said that one of the chief benefits to be derived from the shielding of the bolt during the welding process is to prevent the smoke and gasses from the burning wood from permeating the weld and making it porous; and that the plaintiffs did not have this in contemplation when they specified the shield. There are two answers to this: The first is that the defendant did not use the shield for this purpose either. Nor did Steele. And the next answer is that a patent is good for all beneficial uses whether contemplated by the patentee or not.

For these reasons we respectfully dissent.

BINDINGS OF FACT

The court, having considered the evidence, the report of Commissioner Donald E. Lane, and the briefs and argument of counsel, makes findings of fact as follows:

1. This is a patent suit filed under the provisions of the Act of June 25,1910, 36 Stat. 851, as amended by the Act of July 1,1918,40 Stat. 705, now identified as Title 28, U. S. C. 1948 Ed., 1498, to recover compensation for unauthorized use by or for the defendant of methods and structures alleged to infringe United States letters patent Eeissue No. 22,091, issued to Nicholas Bippen.

2. The parties have agreed that the issues of infringement and validity of the patent in suit be first determined upon full proofs, findings of fact, and argument of counsel.

3. By judicial change of name, Nicholas Bippen was changed to Nicholas Bippen Aabberly on March 4, 1947. The entire right, title and interest in and to patent Beissue No. 22,091 was assigned by Nicholas Bippen Aabberly to Elliot B. Paley and P. E. Henninger on August 17, 1949. Said Paley and Henninger agreed to hold title as trustees for the benefit of persons named in a Memorandum of Agreement dated August 16,1949. The Agreement, plaintiffs’ exhibit 4, states that Nicholas Bippen Aabberly, John F. McGovern, P. E. Henninger and Elliot B. Paley claim interests in the invention represented by the patent, and that Paley and Henninger are appointed joint trustees to exploit the patent and to execute the provisions of the Agreement. *255Paley and Henninger, as trustees, are the plaintiffs before this court, and are citizens of the United States of America.

4. The patent in suit, Reissue No. 22,091, hereinafter called the Rippen patent, was issued on May 5,1942. The Rippen patent is a reissue of original patent No. 2,238,289, issued April 15, 1941, on an application for patent filed April 21, 1932. The original patent was reissued, upon the request of the patentee, adding certain claims not included in the original. The Rippen reissue patent will expire on April 15,1958. A printed copy of the Rippen patent is plaintiffs’ exhibit 1.

5. The subject of the Rippen patent is “Sheathing System”. The patent specification describes a method of securing perforated sheathing to a metal area by welding metal fastening members to the metal area. The specification discloses that the sheathing may be wooden planking in the form of deck planking, but the patent claims in suit are not limited to wooden sheathing, and are not limited to' ship decks. The accused methods and structures relate to the wooden sheathing of metal decks.

6. There are several methods of securing wooden sheathing in the form of deck planking to metal areas such as metal decks.

One method is known as the through-bolt method. The through-bolt method requires drilling a hole through the metal deck and then utilizing a through bolt and nut in cooperation with a countersunk hole in the planking. The through-bolt method involves problems of deck leakage, plank handling, and also the need for manual labor both below and above the metal deck to install the bolts.

A second method is known as the tap-screw method, and this method requires that a hole be drilled partially through the metal area and that the hole be threaded to receive a bolt or stud extending from the metal area into the planking. The tap-screw method involves problems of threading where the metal deck is relatively thin, and of careful inspection to assure that the threaded holes are adequate and do not adversely affect the strength and continuity of the metal area.

A third method is known as the pad-welding method, and requires the. welding of fasteners or studs to the surface of the metal area by means of manual arc welding. In arc *256welding, an electrode is used to deposit molten metal between the edges of the fasteners or studs and the metal deck surface. The pad-welding method may involve the problem of removing the wooden planking during arc welding, and requires an experienced welder.

A fourth method is known as the stud-welding method, and involves the use of special welding equipment in the form of a welding gun. The stud-welding gun supports a threaded stud endwise to the metal deck, withdraws the stud from contact with the deck to establish an electric arc between the end of the stud and the metal deck, and after a brief and controlled period of time required for the arc to render the end of the stud and a portion of the metal deck surface molten, the gun automatically cuts off the arc and drives the stud against the metal deck. The stud-welding method is widely used not only for securing deck plank fastening studs, but also for securing studs of many kinds and shapes for a wide variety of purposes.

A fifth method is known as the resistance-welding method, and involves the passage of a heavy electric current through a metal stud and the adjacent metal surface. The current heats the metal by resistance to its passage. The resistance method is seldom used with threaded studs since extensive heating of the stud may damage the threads.

In each of the above methods, the openings in the planks are finally sealed with a wooden plug trimmed flush with the deck surface.

7. The method and construction disclosed in the Rippen patent are illustrated therein by several forms of fastening means or members. The means or members are adapted to be welded to the surface of a metal plate by arc welding and are adapted to have wooden sheathing fastened thereto. Rectangular forms of fastening means are shown in Figures 1,2,3,7,8,9 and 10, and circular forms are shown in Figures 4, 5 and 6 of the patent drawings. The patent specification states that the fastening means shown in Figures 1-3, and 7 may be in circular form rather than the rectangular form illustrated. Figure 5 and Figure 7 are reproduced here to facilitate explanation and understanding of the invention claimed by Rippen.

*2578. Referring to Rippen Figure 5, numeral 16 indicates a sheathed member in the form of a metal plate. The sheathing is designated 14 and is shown as wood. The means for fastening the sheathing 14 to the plate 16 comprise a tubular metal inner part or thimble 19 welded to the plate 16 by a fillet-type of weld 17, and an outer tapered nut 20 surrounding and threaded on the thimble 19. A wooden plug 15 is provided with an extension 15' for engagement with internal projections 18 of the thimble 19 to secure the plug 15 in place. The disclosed method of applying the Figure 5 fastening means comprises initially tack-welding the inner thimble part 19 to the plate 16 by a series of spaced point welds, and then, after removing the outer part 20, arc-welding the thimble 19 to the plate 16 by a fillet-type weld 17 within the thimble. The fillet-type weld is produced by using a conventional arc-welding electrode in a holder which permits the end of the electrode to be manually inserted in the bore of the thimble 19 until it contacts the plate 16. The electrode is then slightly raised to draw an electric arc between the end of the electrode and the plate 16. The electric arc melts the end of the welding electrode, and deposits molten metal both on the plate 16 and around the thimble 19, thereby forming the fillet indicated in section by numeral 17. The fillet-type weld firmly secures the thimble 19 to the plate 16. After the thimble is so welded, the outer nut 20 is applied to the thimble and screwed into place so that the outer surface of part 20 engages the surface of the tapered bore of the wooden sheath 14 and urges it against the plate 16. The wooden plug 15 is fitted in the hole in the planking 14 above the fastening member 19 to provide continuous sheathing. The Rippen specification states that the wooden sheathing 14 may be removed from the metal surface 16 while the finish welding of the thimble 19 is being executed, and that in such case the only charring of the wooden sheathing would be the inconsequential amount created by the tack-welding. When the Figure 5 fastening member is welded to the deck with the planking in place, the planking may thereafter be removed for additional operations. This is not true of Rippen’s structure illustrated in Figure 7, which will be more particularly described hereinafter. The Rippen specification also *259suggests that in tlie Figure 5 construction a supplemental anticharring means may be incorporated by inserting asbestos or other heat-resistant material between the outer surface of the fastening means and the surface of the hole in the wood planking.

*258

*2599. [Referring to Rippen Figure 7, numeral 33 indicates a sheathed metal plate. The sheathing is designated 34 and is shown as wood. The means for fastening the sheathing 34 to the plate 33 comprise a generally rectangular form of metal fastener 31 having a tapered outer surface 31' opposing and spaced from a tapered portion of a rectangular opening through the sheathing 34. The space between the outer surface of the fastening member 31 and the opposite surface of the opening through sheathing 34 is filled with asbestos or other heat-resistant material 30. The Rippen specification states that the asbestos 30 may be introduced with the fastener 31 or may be stuffed into the space after the fastener has been inserted in the opening. The specification states further that the Figure 7 type of fastening is adapted to installations wherein the sheathing is of extra hard and therefore not readily charrable lumber. The type of weld 32 shown in Figure 7 is the plug-weld type, and the specification states that the fillet-type weld may be used instead. The plug-weld is similar to a fillet-weld except that somewhat more molten metal is deposited in the plug weld to cover the entire metal surface exposed through the central opening of the fastening device. As mentioned above, the Rippen specification suggests that the Figure 7 fastening means may have a circular form rather than the rectangular form illustrated.

10. The Rippen specification states that the sheathing fastening members disclosed are designed to eliminate the charring effect produced by welding heat. It states further that the welding heat is dissipated before reaching the wooden sheathing, and that the fastening means are appreciably spaced from the sheathing at least during the greater part of the welding operations.

11. The Rippen specification teaches that if the sheathing is soft lumber, portions of the sheathing adjoining the fastening means, under certain conditions, may be charred by the welding heat, and that such charring partially or en*260tirely defeats the function of those portions to serve as sheathing retaining mediums. The several examples of sheathing fastening devices disclosed in the Eippen patent are claimed to eliminate detrimental-charring by providing (1) a space or by providing (2) a heat-insulating material to restrict the flow of heat from a welding operation to a charrable wooden sheathing material. Evidence produced at the trial shows that the gaseous products of charring may have an adverse effect on the character and strength of the actual weld and thus weaken the effectiveness of the fastening means or members.

12. The plaintiffs have elected to rely on claims 10, 11, 12 and 13 of the Eippen patent. These claims are tabulated for convenience, as follows:

Qlaim 10

The method of securing an area of through-perforated sheathing to a metal area

comprising the steps of

laying the perforated sheathing on the metal area and

maintaining the same through the remaining steps in the position in which the same is desired to be secured,

inserting in each perforation the selected one of a pair of coacting fastening members,

welding an end of said inserted member to the sheathed metal area as the same is positioned in said perforation by employing a welding heat liable to harmfully affect the sheathing,

insulating the sheathing from the harmfulness of said heat during the welding by the utilization of an intervening space extending throughout at least a substantial portion of the length of the welded member,

and finally securing the position-laid sheathing to the metal area by a coaction of said pair of fastening members to cause a securing effect in at least a portion of the perimeter of said perforation.

Glaim 11

The method of securing an area of through-perforated'sheathing to a metal area

comprising the steps of

laying the perforated sheathing on the metal area and

*261maintaining the same through the remaining steps in the position in which the same is desired to be secured,

inserting in each perforation the selected one of a pair of coacting fastening members, -

placing a heat-resisting material between said inserted member and the walls of the through-Eerforation in said sheathing to insulate the sheathing mm the harmfulness of heat during the welding,

welding an end of said inserted member to the sheathed metal area as the same is positioned in said perforation,

and finally securing the position-laid sheathing’ to the metal area by a coaction of said pair of fastening members to cause a securing effect in at least a portion of the perimeter of said perforation.

Olaim 12

The combination of

a sheathed metallic member,

sheathing thereon having at least one through opening,

a metallic holding member weld-deposited in said opening at one of its ends to said metallic member,

the relative perimeters of said through opening and of said holding member being such that the holding member is spaced from the wall of the through opening throughout at least the major portion of the length of the holding member to obviate charring of said spaced portion of said wall of said through opening during welding,

and means coacting with said holding member and said spaced portion of said wall of said through opening for securing the sheathing to the sheathed member.

Olaim 1-3

The combination of

a sheathed metallic member,

sheathing thereon having at least one through opening,

a metallic holding member weld-deposited in said opening at one of its ends to said metallic member,

the relative perimeters of said through opening and of said holding member being such that the holding member is spaced from the wall of the through *262opening throughout at least the major portion of the length of the holding member,

heat-resisting means in said space effective to obviate charring of said spaced portion of said wall of said through opening during welding,

and means coacting with said holding member and said spaced portion of said wall of said through opening for securing the sheathing to the sheathed member.

13. Plaintiffs stated at the trial that the Rippen patent claims concern themselves with the insulation of the deck plank during the welding operation, and that each of the four claims is directed to the concept of insulating the deck plank from the charring effect of the welding. Claims 10 and 11 recite methods of securing sheathing to metal, and claims 12 and 13 recite sheathed structures. Claims 10 and 12 recite the use of a space to prevent welding heat from harmfully affecting or charring the sheathing. Claims 11 and 13 recite the use of heat-resisting material in a space to insulate the sheathing and to obviate charring during welding.

14. In remarks filed in the Rippen reissue application while it was pending in the United States Patent Office, plaintiffs’ attorney stated that reissue claims 10 and 12 are generic, i. e., directed to cover broadly all of the several forms of the invention disclosed. Plaintiffs’ attorney also stated that claims 11 and 13 are “specific to the form of the invention shown in Figure 7 of the drawing.”

15. The accused method and structure used by the defendant are illustrated by a series of sketches identified as defendant’s exhibit 9 herein. Two of said sketches are reproduced here with additional legends to facilitate explanation and an understanding of the method and structure admittedly used by the defendant.

16. The apparatus used by or for the defendant for securing wooden deck planks to the steel decks of ships is known as the Nelson Stud Welding Gun and Equipment. Said equipment includes a portable stud-welding gun, a timing unit, screw-threaded studs, ceramic ferrules, slotted hold-down nuts, and a source of electric current. The stud-welding gun is only partly shown in the accompanying sketch designated *263Sheet 5-A, and its details of construction are not material to this case. When using the gun to weld studs through deck planks, the stud is held in a chuck which raises the stud from contact with the metal deck to draw an electric arc between the end of the stud and the steel deck surface. The duration of the arc cycle for melting the end of the stud and the deck surface opposite thereto is a fraction of a second, such as one-eighth to one-half of a second, depending upon the size of the stud. At the conclusion of the brief arc cycle, the electric *264current is cut off by the timing unit and the gun then automatically drives the molten stud end into the molten metal of the deck plate, thereby completing the weld. Such a weld is known as an end weld. During the stud-welding operation, a ferrule of heat-resistant ceramic material surrounds the lower end of the threaded stud, and is held against the deck plate by a ferrule-holding-tube extending from the stud-welding gun and surrounding the stud check. The stud itself is provided with a suitable quantity of flux material carried in a recess in the end of the stud and released as the arc is drawn between the deck plate and the end of the stud.

*263

*26417. The defendant’s method of securing an area of through perforated sheathing to a metal area includes the main steps of—

a. Placing a section of midrilled wooden planking on the steel deck and drilling and counterboring holes therein, or the placing of pre-drilled wooden planking on the deck;

b. Maintaining the planking in the position in which it is desired to be secured during each of the following steps—

c. Inserting a threaded stud in a hole in the wooden planking, the stud being of smaller diameter than the hole and being held by the chuck of a stud-welding gun;

d. Positioning a ceramic heat-resisting ferrule in the space between the end portion of the stud and a portion of the wall of the drilled hole in said planking, said ferrule being held against said metal deck by a ferrule-holding-tube surrounding the chuck of said stud-welding gun;

e. Energizing the welding gun and timing control unit whereby the gun automatically draws an arc between the end of the stud and the deck plate and then plunges the molten end of the stud into the molten surface of the deck plate to weld the end of the stud to the metal deck plate, and

f. Threading a slotted nut on the threaded stud so that the nut engages the counterbore in the wooden plank and secures the plank to the metal deck.

The defendant’s method also includes the minor steps of—

g. Eemoving residual burrs and any coating from the steel deck by a flat end drill after the drilling and counterboring step;

*265

b. Cleaning the counterbored hole with a blast of air from an air blast nozzle;

i. Removing the deck planking after the threaded studs are welded and testing the welds by bending and straightening the studs;

j. Applying a protective grease to the steel deck before returning the planking to proper position on the deck.;

k. Inserting a lamp wick or hemp grommet and a steel washer over the stud and engaging the counterbore of the planking, and

*2661. Driving a wooden plug into the counterbore to fill the counterbore and complete the sheathing.

18. The structure produced by the defendant’s method is illustrated in reproduced sketch marked “Sheet 8” and includes—

a. a metal deck;

b. wooden planking positioned thereon and having an opening therethrough ;

c. a metal stud positioned in said opening and welded at its end to the metal deck;

d. the diameter of the stud being less than the diameter of the opening, thus providing a space between the stud and the wall of the opening;

e. a heat-resisting ceramic ferrule positioned in said space to effectively prevent charring of the wall of said opening,

f. and a slotted nut coacting with said stud.

The defendant’s accused structure also includes the following additional elements—

g. a grommet and washer between the nut and the wooden planking,

h. and a wooden plug in the counterbore to complete the sheathing.

19. Claim 10 of the Eippen patent reads in terms on the accused method. The accused method of securing through-perforated wooden planking to a metal deck includes the steps of laying the planking on the metal deck, maintaining it there through subsequent steps, inserting one of a pair of fastening members in each perforation, welding an end of the fastening member to the metal deck, insulating the planking from the harmfulness of the welding heat by utilizing the intervening space, and securing the planking to the deck by a coaction of the pair of fastening members to cause a securing effect in at least a portion of the perimeter of the perforation. The fact that the accused method also includes additional steps of removing burrs, utilizing a ferrule around the fastening member, temporarily removing planking to test the welds, using washers, and driving a wooden plug, does not prevent claim 10 from finding response in the accused method.

*26720. Claim 11 of the Rippen patent also reads in terms on the accused method. Claim 11 is similar to claim 10, but is more specific in that it recites an additional step of placing a heat-resisting material between the inserted fastening-member and the walls of the through perforation. In the accused method, the use of a ceramic heat-resisting ferrule in the space between the planting and the welding heat responds to the claim 11 terminology. The other steps in claim 11 are foimd in the accused method as set forth in the preceding-finding.

21. Claim 12 of the Rippen patent reads in terms on the accused structure. The accused structure includes in combination a sheathed metallic deck, wooden planking thereon having through openings, metallic holding studs end-welded in an opening to the metallic deck, the stud being of smaller diameter than the opening in the wooden plank to provide an annular space throughout the length of the stud, said space being effective to minimize charring of the wall of said plank opening during welding, and means in the form of a slotted nut coacting with the welded stud and a portion of the opening for securing the planking to the deck. The fact that the accused structure includes additional elements such as a ceramic ferrule (Rippen discloses heat-resistant material), a grommet, a washer, and a wooden plug, does not prevent claim 12 from being clearly readable upon the accused structure.

22. Claim 13 of the Rippen patent also reads in terms on the accused structure. Claim 13 is similar to claim 12, but is more specific in that it recites as an additional element heat-resisting means in the space between the holding member and the wall of the opening through the wooden planking. The accused structure includes such heat-resisting means in the form of a ceramic ferrule surrounding the lower portion of the stud and positioned in the space between the stud and the wall of the opening in the planking. The other elements of the combination recited in claim 13 are found in the accused structure as set forth in the preceding finding.

23. Summarizing the preceding four findings, method claims 10 and 11 read on the accused method, and structure claims 12 and 13 read on the accused structure. Method *268claim 10 and structure claim 12 are broader, respectively, than method claim 11 and structure claim 13, in that claims 10 and 12 do not recite heat-resisting means per se, whereas claims 11 and 13 specifically recite heat-resisting material or means in the space between the holding member and the wall of the opening through the sheathing.

24. Prior patents and publications pertinent to the Rippen claims in suit are—

(a) Neisener British patent 249,788, of 1926;

(b) Steele, et al. IT. S. patent 1,410,421, 1922;

(c) The Cyc-Arc Process of Automatic Electric Welding, by L. J. Steele and H. Martin, published in Journal of the Institution of Electrical Engineers, Vol. 60, No. 305, pages 136-162 inclusive, January 1922, and

(d) Walker 17. S. Patent 1,132,989, 1915.

25. The British Neisener patent 249,788, accepted more than six years before the filing date of the patent in suit, discloses the securing of wooden planking on metal decks by welded studs. Figure 1 of the Neisener patent is reproduced herewith. The Neisener method includes the steps of placing upon the metal deck 2 a wooden plank 1 having counter-bored through openings bored therein, marking on the deck 2 the desired position of stud bolts 3 by means of a center punch inserted in the openings, removing the plank 1 from the deck 2, positioning a stud bolt 3 with its nipple 4 in the center punch marking and electrically welding the stud 3 to the deck by a fillet-type arc weld around the lower end portion of the stud 3, replacing the plank over the stud 3, and applying a nut 5 to the stud 3 to engage a shoulder in the counterbored opening and thus secure the wooden plank 1 to the metal deck 2. Neisener also discloses the use of a white lead coating, pacldng under the nut 5, and a wooden plug 7 to finally fill the counterbore above the nut 5. The Neisener patent does not mention space between the stud 3 and the wall of the opening in the plank 1, nor does it mention the use of heat-resisting material positioned in such a space. Charring of the wooden plank 1 in the Neisener patent method was not a problem, since Neisener disclosed removal of the plank from the deck before welding the stud in position. In the Neisener structure there would be at *270least some space between the outer surface of the threaded stud 3 and the wall surface of the opening in the plank 1 to allow for the replacement of the planks on the decks over any welded studs that might not be precisely vertical to the deck after the welding operation. The Neisener patent does not disclose welding the studs with the planking in position on the deck.

*269

*27026. The United States Letters Patent 1,410,421, granted to L. J. Steele, H. Martin, and A. E. McCarthy on March 21, 1922, more than ten years before the filing date of the patent in suit, discloses an electric welding gun for welding steel studs to metal plates. The welding apparatus described in the Steele, et al. patent is generally similar in operation to the operation of the Nelson Stud Welding Gun admittedly used in the accused method. The apparatus shown in the Steele patent includes electromagnets for securing the stud holder in position during the welding operation. The Steele patent apparatus could be used to weld the Neisener patent stud to the metal deck with or without the wooden planking in position on the deck.

27. The article on the Cyc-Arc Pi’ocess of Automatic Electric Welding was published in 1922, more than ten years before the filing date of the patent in suit. The article is by two of the three inventors named in the Steele patent, and discloses similar stud-welding gun type of apparatus. The article mentions that the stud-welding process was developed to meet the requirements of naval construction, mentions the welding of studs to decks and bulkheads of ships by a portable-type stud welder, and mentions a shield to prevent the welding arc from being blown by air draughts. The Cyc-Arc process and apparatus could be used, like that of the Steele patent, to weld the Neisener patent stud to a metal deck with or without the wooden planking in position on the deck.

28. The United States Letters Patent 1,132,989, granted to Emery L. Walker on March 23,1915, more than seventeen years before the filing date of the patent in suit, discloses the securing of wooden strips to steel surfaces by means of metallic studs. The ends of the studs are electrically welded to the steel surface while the wooden strips are maintained in position on the steel surface,

*27129. The prior patents and publications discussed above indicate that Pippen was not the first to teach the step of maintaining sheathing in position during welding the fastening means, not the first to teach the use of coacting fastening members, not the first to teach end welding of a fastening stud, not the first to provide some space between a portion of the welded member and the wall of a perforation through the sheathing, and not the first to secure the sheathing by coaction of the fastening members and a portion of the perimeter of the perforation.

30. The prior patents and publications discussed above indicate that Nippen was the first to expressly provide a heat-resisting material, other than an air space, between the inserted fastening member and a portion of the wall of the through-perforation in the wood sheathing to insulate the sheathing from the harmfulness of heat during the welding.

31. The evidence shows that the use of heat-resisting material as distinguished from a direct air space between the weld and the wooden planking prevents or limits the harmfulness of the heat during welding of fastening members in perforations in wooden planking. It is also clear that excessive charring of the walls of the perforation in the wooden sheathing has at least two harmful results, first, the weakening of the effectiveness or strength of the counterbore to secure the sheathing to the metal deck, and second, the contamination and weakening of the welded metal itself. The heat-resisting ceramic ferrule used in the accused method and structure concentrates the heat of the arc in the weld area during the brief welding period, reduces oxidation of the molten metal during the arcing period, confines the molten metal to the weld area, prevents harmful charring of the wooden planking through which the stud is welded, and consequently prevents contamination of the weld metal by the products of charring, and protects the eyes of the operator from the arc.

32. The evidence indicates that average wood ignites, burns, and/or chars when exposed to temperatures of the order of 1500 degrees Fahrenheit, and that the temperatures attained in electric arc welding are of the order of 3000 degrees Fahrenheit and above. In welding studs of %6-inch *272diameter by the Nelson Stud Welding Equipment, the time of the arc is of the order of 2%0 of one second. In manual arc welding the Eippen patent fastening devices by fillet or plug welds, the time of the arc is of the order of thirty seconds to three minutes.

33. The original Eippen patent application upon which the patent , in suit is based included, at the time it was filed on April 21,1932, claims specifically reciting heat-insulating means disposed within a space between the sheathing and the sheathing securing means during the welding operation. The original Eippen patent 2,238,289, which issued April 15, 1941, upon said original application, included a claim specifically reciting that space between the sheathing and the sheathing securing means was adapted to receive heat-insulating means during the welding operation. The defendant’s first use of heat-insulating means between the sheathing and the fastening means was in the fall of 1932, subsequent to the filing date of the original Eippen application.

34. The original Eippen patent application while pending in the United States Patent Office was involved in an interference proceeding with an application filed August 21,1933, by Lt. Commander John D. Crecca, an officer of the United States Navy. The subject matter of that interference included claims that are now claims 10 and 12 of the Eippen patent in suit. After the presentation of testimony and exhibits in the interference, the Board of Appeals of the United States Patent Office awarded priority of invention to Eippen. This Patent Office decision with respect to claims which became Eippen claims 10 and 12 here in suit was affirmed by the United States Court of Customs and Patent Appeals, May 29, 1940, Crecca v. Rippen, 112 F. 2d 170.

35. The Eippen patent in suit was the subject of litigation in the U. S. District Court for the District of Massachusetts in Paley, et al. v. Bethlehem, Steel Company. The District Court’s opinion June 19, 1953, granted a decree for Bethlehem Steel Company, and is reported at 114 F. Supp. 579. Judge Wyzanski found there that Eippen reissue claims 10, 11, 12 and 13, the claims in suit here, were not infringed by methods and structures used by the Bethlehem Steel Company. Said Judge did not pass on the validity issue of whether or not *273these claims constitute patentable invention. The District Court opinion was affirmed by the XJ. S. Court of Appeals, First Circuit, in a per curiam decision January 21, 1954, reported at 209 F. 2d 510.

36. The evidence in the present suit includes evidence considered in the Crecca v. Rippen and the Paley, et al. v. Bethlehem Steel Company litigations, and also additional evidence including publications relating to welding, the testimony of plaintiffs’ expert, John L. Wilson, challenging the previous testimony of Bethlehem’s expert, Allen G. Hoga-boom, in the Bethlehem litigation, and the testimony of defendant’s expert, Robert A. Lavender.

37. On May 5,1943, the Department of the Navy indicated by letter that it appeared that the Navy had never used any of the methods described and covered in the Bippen reissue patent, and that there appeared to be no need to enter into a licensing agreement with respect thereto. The Department of the Navy was charged by a letter dated October 1, 1949, from the present plaintiffs with violating claims 10-13 of the Bippen reissue patent, and said letter requested just and full compensation for the unauthorized use of the patented invention. The Department of the Navy denied the charge of infringement by a letter dated December 15, 1949, to the present plaintiffs. The plaintiffs have not received any compensation from the Navy with respect to their letter request of October 1,1949.

38. Defendant contends that defendant’s methods and structures are in accordance with the disclosure of the Crecca patent application involved in the Crecca v. Rippen interference, an application which became abandoned after the interference was decided in favor of Bippen. Said Crecca patent application as filed did not disclose the use of insulating or heat-resisting materials per se between the weld and the planking to prevent harmful charring of the planking.

39. Broad claims 10 and 12 of the Bippen patent in suit distinguish from the teachings of the Neisener and Walker patents only in the recital of an intervening space, or the recital of a holding member spaced from the wall of the through opening. The claims do not define the amount of space necessary to insulate the sheathing from the harmfulness of a welding heat or to obviate charring. As set forth in finding *27425, there is some space in the Neisener construction, and as set forth in finding 28 it was well known to weld holding studs while wooden strips are maintained in position on a steel surface. Broad claims 10 and 12 are invalid over the teachings of prior patents.

40. Narrower claims 11 and 13 of the Bippen patent in suit distinguish from claims 10 and 12 by specifically reciting placing a heat-resisting material between the fastening member and the sheathing, or heat-resisting means in the space between the holding member and the sheathing to obviate charring. Claims 11 and 13 are also invalid over the teachings of prior publications and patents.

CONCLUSION OF LAW

Upon the foregoing findings of fact, which are made a part of the judgment herein, the court concludes that as a matter of law the plaintiffs are not entitled to recover, and their petition is therefore dismissed.

delivered the opinion of the court:

The plaintiffs are the owners of patent Beissue No. 22,091 issued to Nicholas Kippen. They claim that the United States, in its construction of ships and in having ships built for it by contractors, has used the methods and the structures covered by the patent. They sue to recover compensation for that use, under the Act of June 25,1910, as amended, the statute, as here pertinent, being section 1498 of Title 28, U. S. C. (1946 Ed.), Supp. III. At the present stage of the case, only the issues of validity and infringement are involved. A trial of these issues has been had before a commissioner of this court, and the court has had the benefit of briefs and oral arguments of the parties, as well as briefs amici curiae presented by two other parties, the two amici supporting the position of the United States.

The patent specification describes a method of fastening sheathing or covering to a metal surface by welding to the metal surface the fasteners which, extending through holes in the sheathing, will hold the sheathing against the metal surface. The use by the Government of which the plaintiff complains is the fastening of wooden planking to the metal decks of ships.

What the Government does is lay the wooden plank on the metal deck, drill a hole through the plank large enough to allow the proposed bolt or stud and a surrounding washer or “ferrule” to pass through the hole, then counter-bore a somewhat larger hole through the upper part of the thickness of the plank, so that the bottom of the counterbore forms a shoulder against which a nut, to be screwed on the bolt or stud, will press. Then the stud which is shorter than the thickness of the plank, and is threaded at the upper end, and at the lower end contains some flux which is necessary for *247welding, is inserted in a welding gun. The gun is a device connected with electric wiring so that when it is switched on by pressing a trigger an electric current passes through the metal deck of the ship and into the stud, if it is pressed against the deck. The gun then withdraws the end of the stud from the deck about one-eighth of an inch, the electric current jumping across this gap forms an arc, creating a heat of about 3,000 degrees, the heat in less than one-half of a second melts the end of the stud and the metal of the deck at the end of the stud; the electric current is switched off, the gun plunges the stud against the deck and the weld is completed. When all the studs necessary for a plank have been thus welded to the deck, the plank is lifted off the studs, grease is smeared on the deck to preserve it and the plank, the plank is replaced on the deck, nuts are screwed on the threaded ends of the studs, which nuts have shoulders wide enough to rest on the bottoms of the counter-bores in the plank and draw the plank down tightly against the deck. Wooden plugs are then driven into the holes to give the plank a smooth and watertight surface. The sketches reproduced in connection with our Finding 15 are intended to illustrate the Government’s method and structure.

The method and structure disclosed by the Bippen patent are illustrated by figures 5 and 7 in our Finding 7. A description of what is shown in figure 5, with the addition of one matter not shown in the figure, but described in the specifications, will be sufficient for our purposes. A tapered or cone-shaped hole is bored in the sheathing plank. In the middle of the hole is set a hollow or tubular stud which we will call a thimble, threaded on the outside so that a nut can ultimately be screwed on it. A hand arc-welding device is then inserted in the thimble. This is a wire or small rod of metal which, when the arcing takes place melts at the end and deposits its metal against the thimble and the metal deck, fastening the two together. In the Bippen method, the thimble is at first merely “tack-welded” to the deck, i. e., it is welded in only two or three spots, presumably enough to hold it , in place in the center of the hole in the plank, and hold it in a vertical position. Then the plank could be removed, if that was thought desirable, or it could be left in place, and the thimble *248could then be thoroughly welded, by again inserting the wire or rod electrode and depositing metal all around the inside of the bottom of the thimble. A tapered or cone-shaped nut would then be screwed on to the thimble, which, as we have seen, is threaded on the outside. The conical nut would draw-down against the cone-shaped hole in the plank, and fasten it to the deck.

In the Bippen device, it was foreseen that charring of the wood of the plank would be a serious problem, especially since the hand welding operation would take from one-half a minute to three minutes for completion. Claims 10 and 12 of the patent, as shown in our Finding 12, purport to solve that problem by leaving a space between the outside of the thimble and the adjacent surface of the hole in the wood. Our commissioner has found that leaving such a space was not original with Bippen, and we think that if it had been original it would not have been invention. In claims 11 and 13 of Bippen the insertion of a heat-resisting material between the thimble and the wood is suggested. Our commissioner has found that this was original with Bippen, and was invention.

Bippen’s interest in the charring of the wood of the sheathing was the result, it seems to us, of the ineptness of the device which he designed. The tapered hole in the sheathing, and the tapered nut to fit the hole, put the tapered nut near the bottom of the hole in the plank, i. e., near the point where the-welding was to take place and the intense heat was generated. If the plank was charred at that point, the nut would meet only weak resistance when it was turned down. Having, by the other parts of his device, created a problem, he offered a solution for it.

But the weakening of the wood by charring was not a problem for those who were using the conventional and much more effective method of fastening the plank down by a nut with a shoulder which rested on the bottom of a counter-bore some inches away from the place where the welding took place and the heat was generated.

■ The problem of the industry was not the problem of the charring and thus weakening of the wood by the heat of the welding process. It was a quite different problem of which *249the plaintiff was completely unaware. If a weld takes place in the open air, and particularly if that air is filled with smoke and gases, such as those from burning wood, the weld is porous and weak. For that reason it is desirable, and in order to obtain the strength whieh is necessary to hold down the planking on a battleship, necessary, that the weld take place in an enclosure shielded from the air and from the impurities which the air may contain.

We have said that Bippen did not insert the insulation in his invention in order to improve the weld. In his claim 11 he said that he put it in “to insulate the sheathing from the harmfulness of heat during the welding”. In his claim IB he said that he put it in “to obviate charring of said spaced portion of said wall of said through opening [in the sheathing] during welding.” And in his claims 10 and 12 he prescribed space instead of insulation, and a relatively small space of course would have had no effect upon the circumstances which weakened the weld.

In the Government’s process as we have described it, we said that there was inserted around the bottom end of the stud a ceramic washer or ferrule. Its principal advantage, probably, is that it prevents air contaminated by the smoke and gases which are inevitable when welding is done in close proximity to wood, from weakening the weld. It also prevents the molten metal and flux from spreading and making an unsightly and perhaps a weaker weld. Experiments made by welding with, and without, the use of the ferrule, show that in neither case is there any charring which would weaken the wood and the hold which the conventional shouldered nut would take upon the counter-bore in the wood.

It is the ceramic washer or ferrule at which this suit is aimed. It is not used to cure the evil at which Bippen’s insulation was aimed, but another evil o'f which he was unaware. It is urged that his unawareness was immaterial, that if his insulation had another effect, beneficial, though unintended by him, his patent would still prevent others from using his device.

This may well be the law of patents. But taking it as the law, it leads to the conclusion that Bippen was not the inventor. In our Finding 27 we speak of an article on the *250Cyc-Arc Process of Automatic Electric Welding, published in 1922, more than 10 years before the filing date of the Bippen patent. This article was by two of the three inventors named in the Steele patent in 1922 for an electric welding gun for welding steel studs to metal plates, which patent we discuss in Finding 26. The patent says:

A shield may be provided for protecting the arc * * * from air currents * * * [this] may be effected by enclosing the stud-holder and arc in a suitably insulated casing which may be * * * if desired of refractory material.

The article also mentions a shield to prevent the welding arc from being blown by air draughts.

It may well be that the inventors in the Steele patent in 1922 were unaware of the particular harmful effect on the weld of welding in open air which contained wood smoke and gases, just as Bippen was unaware that either open air or smoke-filled air had anything to do with the quality of the weld. But the Steele protection of the weld from air currents was a long step nearer the problem of the industry than Bippen’s protection of the wood from charring. The fact that the ferrule is used in all stud welding, whether the welding is done in the presence of wood or not, shows how much nearer Steele’s 1922 idea was to the problem than Bippen’s later idea.

We have grave doubts as to whether one who finds that it is necessary, in order to get a good weld, to put some noncombustible material around the place of the welding to keep out the air, should be told that someone else has a statutory monopoly upon this rather obvious solution of the problem. Patents ought not to be allowed to have the effect of “subtract [ing] from former resources freely available to skilled artisans.” Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corporation, 340 U. S. 147, 152.

Our conclusion is that the claims, here involved, of the plaintiffs’ patent are invalid. In Paley, et al. v. Bethlehem Steel Company, 114 F. Supp. 579, a suit by the plaintiffs against a defendant which used a somewhat different method and structure from those used by the Government in this case, the United States District Court for the District of *251Massachusetts, held that the plaintiffs’ patent had not been infringed. That decision was affirmed by the Court of Appeals, 209 F. 2d 510.

Since we have concluded that the claims, here involved, of the plaintiffs’ patent are invalid, we do not reach the question of infringement.

The plaintiffs’ petition will be dismissed.

It is so ordered.