Εικόνες σελίδας
PDF
Ηλεκτρ. έκδοση
[blocks in formation]

2. PATENTS 328 1,057,397 FOR PHOTOGRAPHING AND DEVELOPING APPARATUS HELD VOID FOR INSUFFICIENT DISCLosure.

Beidler patent, No. 1,057,397, for photographing and developing apparatus, held void for insufficient disclosure of mode of operation. 3. PATENTS 328-1,057,397 HELD NOT IN

FRINGED BY PHOTO-COPYING MACHINE MAN-
UFACTURED UNDER No. 1,001,019.

Photo-copying machine known as Photostat, manufactured and sold under Green patent, No. 1,001,019, held not an infringement of Beidler patent, No. 1,057,397, if the latter were valid.

Appeal from the Court of Claims.

[merged small][ocr errors][merged small][merged small][merged small]

*The described mode of operation is substantially as follows:

W is a roll of sensitized paper or film placed immediately below the exposure chamber F of a camera, with its sensitized surface uppermost to receive the desired image, reflected from the mirror H. This film is fed into the chamber between the rolls b, and thence along the floor to the rollers D where it emerges from the camera and is seized by "clips" or clamps N. These clamps are supported and carried by a rack M, and may be moved to and fro (reciprocated) by turning the pinions L on the shaft

Suit by George C. Beidler against the United States to recover damages for infringement of a patent. Decree for defendant (53 Ct. Cl. 636), and complainant ap-K, by means of a crank. peals. Affirmed.

See, also, 40 Sup. Ct. 9, 64 L. Ed. —. Messrs. Charles J. Williamson and Frank S. Appleman, both of Washington, D. C., for

appellant.

The Attorney General, Mr. Frank Davis, Jr., Asst. Atty. Gen., and Messrs. Daniel L. Morris, and Edward G. Curtis, Sp. Asst. Attys. Gen., for the United States.

I, J and J' are shallow pans or "tanks" in which suitable "developing," "fixing," and "washing" solutions or fluids are placed and the whole of the construction to the right of the camera, as we face the print, is inclosed in a light-proof case E, referred to in the patent sometimes as a "compartment" and sometimes as a "chamber." The rack M, and the clamps which hold and support the film, move above the tanks and necessarily above

. Mr. Justice CLARKE delivered the opin- the level of the liquid within them. By turnion of the Court.

[blocks in formation]

ing the pinion L, the rack M is moved outwardly away from the camera, and the clamps draw the film after them until the required length is attained, when it is severed from the roll by a manually operated cutter,

$450

The specification describes the claimed invention as an improvement in photographing. When the film is thus cut to the desired and developing apparatus, and as designed length, obviously only the free end will fall primarily for reproducing writings, drawings, to the surface of the solution in the tank 1, pictures or the like, "novel means being also provided to convey the sensitized film through a series of receptacles containing suitable developing and fixing fluids or though suitable baths, according to requirements."

#448

*The patent is for a machine made up of a combination of elements all of which were old, to produce a result which was old but by a method of co-ordination and operation

and by continuing the outward movement of the rack M, the specification declares, “the film is carried through the several tanks." The "dips" or clamps are set and released automatically and at the limit of the outward movement the film is released and falls into the tank J'. By reversing the turning of the pinions L the rack and clamps are returned inwardly to the camera, so that the operation, just detailed, may be repeated.

For other cases see same topic and KEY-NUMBER in all Key-Numbered Digests and Indexes

(40 Sup.Ct.)

The Court of Claims carries into its findings of fact fourteen patents as illustrative of the prior art, and with this exhibit before us we fully agree with that court that the claim of invention of appellant must be restricted to the disclosed construction and operation of the mechanism for carrying the exposed section of film "through the develop ing and other solutions or liquids" after it leaves the camera.

confessedly necessary to successful operation of the machine, is disclosed in the patent, as it must be to render it valid. R. S. § 4888 (Comp. St. § 9432).

The only description of the mode of operation of appellant's machine, and the statute requires that this must be the best mode known to the patentee (R. S. § 4888), is found in the specification and is as follows:

"In order to draw the film through the several compartments, I provide a mechanism con

#452

sisting of a shaft K, *having toothed wheels L, which mesh with a rack M, the said rack being suitably guided in the compartment E, and betion of the shaft K, in opposite directions. ing alternately reciprocated through the rotaWhen the shaft is turned to the right, the said rack will be projected from the compartment until the inner end thereof is nearly above the shaft K. When the shaft is rotated in the op

In the description of the operation of the machine as we have just given it, there is no provision other than gravity for causing the free end of the film, when it is cut from the roll, to sink into the developing fluid, and the other end of it is held between the clamps, above the surface of the fluid, as it is drawn along from one tank to another. The Court of Claims found that under such conditions of operation all of the film would not be submerged with sufficient rapidity and uniform-posite direction, the said rack will, of course, ity to secure a proper and useful development of the image and this conclusion is not seriously disputed. But the appellant contends that the required submergence may be obtained by oscillating the rack and clamps (and thereby the film) back and forth within the range of a few inches when the film is over the first tank I, with the result that the free end of the film, first sinking into the fluid, is turned under and over and the exposed side of it wholly submerged and thereby developed.

*451

*In reply to this it is contended by the Government that the disclosures of the patent do not contain any suggestion of a short, reciprocating movement of the rack, such as is thus relied upon, and that the drawings provide for a construction of the machine which would be inoperative if such movement were resorted to.

Upon this subject the finding of the Court of Claims is, that the machine can be rendered operative only "by resorting to a new oscillating mode of operation evolved by the claimant for submerging and developing the film," and that such mode of operation is not disclosed in the patent. On the contrary, it is especially found that:

"By the method contemplated and disclosed in the patent, the film with the exposed side up, held at one end by the clamps attached to the rack M and moving in a plane above the pans containing the developing and fixing fluids, is intended, by the outward movement of the rack, to be drawn successively through the developing and fixing fluids, the rack moving in one direction only through its entire course, the end of the film next the knife and away from the clamps falling, when severed by the knife, on the surface of the developer in the first pan and submerging by gravity."

[1, 2] Treating this finding by the court as an interpretation of the patent and therefore as a conclusion of law and subject to review, we are brought to the question whether the short, reciprocating movement of the rack,

be retracted and thrust into the compartment.
It is the purpose of this invention that the said
rack shall carry clips N, which are designed to
said rack is moved outwardly, the film is car-
clamp on the edges of the film Y and as the
ried through the several tanks as indicated.
clips are automatically released and set through
the contact with trips within the casing in the
path of travel of said clips."

The

this language describes a movement of the We agree with the Court of Claims that rack M, carrying the clamps N, in one direction only outwardly and progressively away from the camera-until the movement is completed and the film is released, and that the reciprocating movement referred to in the patent is the return of the mechanism for clamping and carrying the film to its initial position for the purpose of repeating the operation.

There is nothing in the disclosure or in the claims to suggest the arresting of the outward movement of the clamps as soon as the film is severed from the roll and the initiating thereupon of a short oscillating movement of the mechanism to and fro, until the film shall have been immersed in the developing liquid sufficiently to bring out the image photographed. It is very clear that no such operation can be derived from the disclosure in the patent, and we agree with the further finding of the Court of Claims that in order to permit "this new oscillating mode of operation evolved by the claimant" material changes would be required in the construction of the machine, from that disclosed in the description and drawings.

*453

*The statutes, which are the source of all patent rights, provide that a valid patent may be granted for a new and useful machine, or for a new and useful improvement thereof (R. S. § 4886 [Comp. St. § 9430]), but they require that every applicant for a patent shall file a written description of the manner and process of making and using his invention "in such full, clear, concise and

exact" terms as to enable any person skilled | Acts had attached thereto all proceedings prior in the art to which it relates to make and to the appeal to Secretary of Labor, and construct it, and in case of a machine the de- prayed that proceedings thereafter be made a scription must disclose the best mode in part of petition when they became available, which the inventor has contemplated the ap- the courts should give effect in interpreting the petition to the immigration records filed with plication of his discovery. R. S. § 4888. the petition and with the respondent's return.

the decision must be made after a hearing in good faith, however summary, and must find adequate support in the evidence.

Ever since Grant et al. v. Raymond, 6 Pet. 218, 247, 8 L. Ed. 376, it has been consistent- 2. ALIENS 32(9) DECISION EXCLUDING ly held that a correct and adequate descripCHINESE MUST BE BASED ON FAIR HEARING. tion or disclosure of a claimed discovery While the decision by the Secretary of La(which, in the case of a machine, involves bor on the exclusion of a Chinese person is particularly the operation of it) is essential final unless the proceedings were manifestly unfair or show manifest abuse of discretion, to the validity of a patent, for the reason that such a disclosure is necessary in order to give the public the benefit of the invention after the patent shall expire. The source of the power to grant patents, and the consideration for granting them, is the advantage which the public will derive from them, especially after the expiration of the patent monopoly, when the discoveries embodied in them shall become a part of the public stock of knowledge.

3. ALIENS 32(9) - OMISSION FROM RECORD

OF STATEMENT THAT WHITE WITNESS PERSON-
ALLY IDENTIFIED PETITIONER AS NATIVE CIT-
IZEN HELD FATAL.

Where three white citizens had testified that tion to determine his status before he visited petitioner was a native Chinese upon investigaChina, but identified him only from his photoThe application of these requirements of graph, and on his return he was excluded as the law to our conclusion that the only form not being the person he claimed to have been of construction of the machine and the only in the preliminary investigation, the omission method of operation of it which are disclosed from the record sent to the commissioner of in the patent would not produce a sufficiently immigration and, on appeal, to Secretary of uniform and rapid development of the film Labor, of statement that on the later investigation the three white witnesses were conto render it useful, must result in the ap-fronted with petitioner, and there was mutual proval of the judgment of the Court of recognition, rendered the report unfair, so that Claims, that the patent is invalid and void, the Secretary's order for exclusion was not for the reason that it fails to disclose a prac- final. tical and useful invention.

[3] This result renders it unnecessary to consider the further conclusion of the court

*454

below that the use by the *United States of
photo-copying machines of a type known as
"Photostat," manufactured and sold under
warrant of letters patent issued to D. S.
Green No. 1,001,019, would not have consti-
tuted an infringement of appellant's patent
had it proved to be valid. However, for its
bearing on future possible controversy we
add that the construction and relation of the
two appliances, designed to produce the same
result or product, have been fully considered
and that we agree with the conclusion of the
Court of Claims.
Affirmed.

(253 U. S. 454)

4. ALIENS 32(9)

POWER OF SECRETARY OVER CHINESE MUST BE OPENLY ADMINISTERED.

The great power given Secretary of Labor by the Acts of Congress over Chinese immigrants and persons of Chinese descent must be administered, not arbitrarily and secretly, but fairly and openly, under the restraints of the tradition and principles of free government applicable where the fundamental rights of men are involved.

On writ of Certiorari to the United States Circuit Court of Appeals for the Ninth Circuit.

Petition for habeas corpus by Kwock Jan Fat against Edward White, as Commissioner of Immigration at the Port of San Francisco. Judgment of the District Court, sustaining demurrer to the petition, was affirmed by the Circuit Court of Appeals (255 Fed. 323, 166 C. C. A. 493), and petitioner brings certiorDe- ari. Reversed, and cause remanded to the District Court for trial on the merits.

KWOCK JAN FAT v. WHITE, Commissioner of Immigration.

(Argued and Submitted April 30, 1920. cided June 7, 1920.)

[blocks in formation]

TURN SHOULD BE CONSIDERED IN INTERPRET- D. C., for petitioner.

ING THE PETITION.

Mr. Assistant Attorney General Stewart Where petition for habeas corpus for dis- and Mr. Harry S. Ridgely, of Washington, D. charge in proceedings under Chinese Exclusion | C., for respondent.

For other cases see same topic and KEY-NUMBER in all Key-Numbered Digests and Indexes

(40 Sup.Ct.) Mr. Justice CLARKE delivered the opinion of the Court.

In January, 1915, Kwock Jan Fat, the petitioner, intending to leave the United States on a temporary visit to China, filed with the Commissioner of Immigration for the Port of San Francisco an appication, as provided for by law, for a "preinvestigation of his claimed status as an American citizen by birth."

He claimed that he was 18 years of age, was born at Monterey, Cal., was the son of Kwock Tuck Lee, then deceased, who was born in America of Chinese parents and had resided at Monterey for many years; that his mother at the time was living at Monterey; and that there were five children in the family-three girls and two boys.

The Department of Immigration made an elaborate investigation of the case presented by this application, taking the testimony of the petitioner, of his mother, of his brother and one sister and of three white men, of whom the inspector said in his report:

"The three white witnesses are representa

tive men of this town and would have no motive in misstating the facts."

As a result of this inquiry, the original of his application, approved, signed and sealed by the Commissioner of Immigration at San Francisco, was delivered to the petitioner,

*456

(1) That the examining inspector reported to the Commissioner of Immigration as evidence, statements purporting to have been obtained from witnesses under promise that their names would not be disclosed, and that when demand was made for the names of such witnesses for purpose of reply, it was refused, with the result that petitioner did not have a fair hearing.

*457

(2) That the examining inspector did not record an *important part of the testimony of three white witnesses called by petitioner, with the result that it was not before the Commissioner of Immigration or the Secretary of Labor when they decided adversely to him, and thereby he was arbitrarily denied a fair hearing.

A general demurrer to this petition was sustained by the District Court and on appeal to the Circuit Court of Appeals that judg ment was affirmed. The case is here on writ of certiorari.

[1] With the petition were filed all of the ceedings prior to the appeal to the Secretary testimony and papers pertaining to the proof Labor, and since it is prayed that when the copy of the proceedings thereafter had shall become available they may be made a part of the petition, it was proper for the courts below and is proper for this court to interpret the allegations of the petition, giving due effect to the immigration records filed with the petition and with respondent's return. Low Wah Suey v. Backus, 225 U. S.

and with this evidence in his possession, which he was amply justified in believing would secure his readmission into the United | 460, 469, 472, 32 Sup. Ct. 734, 56 L. Ed. 1165. States when he returned, he went to China.

The record shows that during his absence anonymous information reached the San Francisco Immigration Office (in which there had been a change of officials) to the effect that petitioner's name was not Kwock Jan Fat, as claimed, but was Leu Suey Chong and that he had entered the United States in 1909 as the minor son of a merchant, Lew Wing Tong, of Oakland, Cal. Thereupon an investigation was conducted, chiefly by the comparison of photographs, for the purpose of determining the truthfulness of this anonymous suggestion, with the result that when the petitioner returned to San Francisco he was not allowed to land, and a few days thereafter was definitely denied entry to the country by the Commissioner of Immigration. nereafter, this decision of the Commissioner was reconsidered, the case reopened and testimony for and against the petitioner was taken, but the Commissioner adhered to his denial of admission. The only reason given for the decision was "the claimed American citizenship is not established to my satisfaction."

Thereupon an appeal was taken to the Secretary of Labor, who approved the order appealed from.

Promptly thereafter the petition for a writ of habeas corpus in this case was filed, which is based chiefly upon two claims, viz.:

It is not disputed that if petitioner is the son of Kwock Tuck Lee and his wife, Tom Ying Shee, he was born to them when they were permanently domiciled in the United States, is a citizen thereof, and is entitled to admission to the country. United States v. Wong Kim Ark, 169 U. S. 649, 18 Sup. Ct. 456, 42 L. Ed. 890. But while it is conceded that he is certainly the same person who, upon full investigation was found, in March, 1915, by the then Commissioner of Immigration, to be a natural born American citizen, the claim is that that Commissioner was deceived and that petitioner is really Lew Suey Chong, who was admitted to this country in 1909, as

[blocks in formation]

32 Sup. Ct. 359, 363 (56 L. Ed. 606). The deci- statement of the Acting Commissioner that sion must be after a hearing in good faith, the inspector's report objected to was not alhowever summary, Chin Yow V. United lowed to influence his decision, we might not States, 208 U. S. 8, 12, 28 Sup. Ct. 201, 52 L. say that the taking and reporting of the Ed. 369, and it must find adequate support in testimony objected to of witnesses whose the evidence, Zakonaite v. Wolf, 226 U. S. names are not disclosed, rendered the hear272, 274, 33 Sup. Ct. 31, 57 L. Ed. 218. ing so manifestly unfair as to require re

As to the first ground of complaint in the versal, if there were nothing else objectionpetition for habeas corpus.

able in the record.

There remains the question whether the hearing accorded to the petitioner was unfair and inconsistent with the fundamental principles of justice embraced within the conception of due process of law because an inspector failed to record in its proper place an

After the final decision by the Commissioner of Immigration adverse to petitioner, his counsel requested an opportunity to examine the record on which it was rendered. This request was granted, and promptly, thereafter, demand was made for permission to see the testimony referred to, but not reported, in a designated report of Inspector Wilk-important part of the testimony of three inson. Assistant Commissioner Boyce anwhite witnesses called by the petitioner. swered this request saying:

"The portion of Inspector Wilkinson's report which was withheld from you contained no evidence whatsoever and nothing material to the issue in this case. As a matter of fact this inspector's report in no way influenced my decision and was useful only in locating other material witnesses, whose testimony appears in the record."

This report appears in the record before us and is of a remarkable character. It is dated August 8th and after saying that "only upon the assurance that the identity of the witness would be kept secret" could the information contained in it be obtained, the writer proceeds with much detail to narrate what, if believed, would be evidence of first importance making against the claim of petitioner. The report continues that after his

$459

first visit the inspector *returned to Monterey

and learned from his confidential witness that in the interval he had inquired of "an old Chinese resident," who said that, "Tuck Lee had no son," and adds, "I was unable to ascertain the name of this Chinese person." On the margin of this letter is written August 8, 1917: "Approved. Edward White" (the Immigration Commissioner).

$460

A discussion of what the record shows and of the character of the witnesses involved will be necessary to an appreciation of the importance, in determining the issue presented, of having a full report of what was said. and done by these three witnesses.

When the petitioner, before going to China, applied for a preinvestigation of his claimed status as an American citizen, three white witnesses from Monterey were called in his behalf-two of whom were notable.

Ernest Michaelis, for 26 years a justice of the peace and for many years the official collector of fish licenses, testified, making reference, for purpose of identification, to a photograph of the petitioner. He said he had known the parents of the boy since shortly after he himself went to live at Monterey in 1879; that there were two boys and three girls in the family; that he had seen the petitioner frequently as a little fellow when

he went to collect fish licenses (the boy's father was a fisherman); and had known him he declared positively that he was sure of his ever since; and, referring to the photograph, identity and that he was born in Monterey. He added that the father of the boy was native born and was a voter in that community.

W. E. Parker testified that he had been In this manner, with much detail, state agent for the Wells Fargo Company at Monments of a person who must remain un- terey for 25 years, and was also chief of the known, and in part derived from another per- fire department and city clerk for many years. son who must remain unknown, were com: He said, referring to a photograph of petimunicated by the investigating inspector to tioner, that he had known the parents of the his superior, who was to dispose of the case boy for many years and the boy himself since on the evidence which was furnished him, he was 5 or 6 years old; that he remembered and he, in form at least, approved of this re- two boys and at least one girl, but later he port. This approval is explained by the Act-stated that he recalled that there were three ing Commissioner as referring to the recommendation contained in it that further investigation should be made, and there is confirmation of this explanation in the fact that the record shows that immediately thereafter evidence of the character suggested in the report was taken in affidavits which were open to the inspection of the petitioner. While we would not give the weight to these affidavits which the Commissioner of Immigration and the Secretary of Labor seem to have given to them, nevertheless, when taken with the

girls in the family, and his identification of the petitioner by photograph was very definite. He stated that the father of the boy

*461

was a fisherman and shipped fish fre*quently by express so that he came to know him well and his wife also because she often transacted business for her husband. He recalled that after the fire and earthquake the petitioner was sent to school at San Francisco, but returned to Monterey every few months when he saw him.

« ΠροηγούμενηΣυνέχεια »