Don Lee v. Walker (61 F.2d 58, 1932 Aug 16)

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[NOVEL] {1} We agree with appellant's contention that such a computation is not "a new and useful art, machine, manufacture or composition of matter" within the meaning of section 4886, Rev. Stat. (35 USCA ยง 31). Neither is it novel, being merely a special case already covered by a general case, or formula, and also by the method of graphic statics which gives a solution without formula or computation, forces being represented by the length of lines and their direction being parallel to the action of the force, the solution being indicated by the length and direction of the line indicating the resultant force.

[NOVEL] Note: this decision itself is not erroneous, a nice argument on why a patent was not novel (highlighted in yellow). But based on one phrase (highlighted in green below), a series of courts created (without Congressional approval) a ban on patents for undefined "mental steps". It is all the cases (Abrams, Yuan, etc.) citing Don Lee that are erroneous, as discussed in their analyses. What follows is the gist of the Don Lee lack-of-novelty argument, a lengthy argument on novelty, with grossly inadequate reasoning to Constitutionally justify a ban on patents on undefined "mental steps".




Dr. Wm. F. Durand: "I have failed to find anything which to me is distinctly novel in the disclosure of the patent. The disclosure seems to emphasize certain elements of procedure in principle, the selection of a central reference plane is certainly not novel, because, from the various early days of the science of mechanics, we have found that we could take our reference plane anywhere."

"In so far as the matter of reducing the ultimate balance to expression in terms of two forces or two masses is concerned, that certainly is not novel, for, from the beginning of time, with reference to the science of mechanics, we have known that a number of forces may be represented by one, or again, one may be represented by many; it is one of those basic elements of equivalents, if many may be represented by one, one may be represented by many, and the many may be in numbers 2 or more. So that those two basic features, at least, are entirely well known and grounded in the very fundamentals of the science of mechanics."

"He has, of course, shown a method which gives the correct result in the case of the Sharp shaft. It gives the same result as that which would be arrived at by following any of the other methods to which reference has been made or more fundamentally by applying the well-known elementary principles of mechanics of this particular problem."

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In support of the contention of Dr. Durand and of the appellant that the problem of balancing the moving parts of an internal combustion engine is one familiar to the engineering profession, and treated extensively in the text-books and papers of that profession, several such articles were introduced in evidence ... These articles were also referred to by the patentees in their paper No. 8, above mentioned, in connection with their amended application C (July 7, 1925), wherein they attempted to distinguish the claimant's method from those theretofore known.

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Note: an analysis of the infringing device.


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It is clear then that the patentee seeks a monopoly of a formula for determining dynamic forces, and this although those forces were fully recognized and considered by engineers in published text-books long before the appellee applied for his patent. Dr. Jacobsen, testifying for patentee, stated in part as follows: "I have examined and believe I understand the prior patents, the publications and the prior uses referred to herein. I have been present here in the courtroom during the trial. I find that the combination disclosed in the Walker patent differs from all the other references given."

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Of course, in view of the fact that this idea is old and is discussed and solved in the text-books long before the appellee claims to have conceived the idea, the claim of invention and of monopoly thus broadly stated must fall.

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Before closing the discussion upon the nature and scope of the appellee's patent claims, we must consider the prior patents introduced in evidence

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Dr. Durand, after quoting the foregoing excerpt from the Klose patent with reference to couples, states: "The Klose patent discloses a shaft of the type under discussion in the present case applied to a V-8 engine in which the primary and secondary forces are themselves automatically balanced, by appellant."

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The "Dalby method" of balance has already been discussed herein and the testimony of Dr. Durand in reference thereto set out in the notes. The testimony of the patentee, Clinton L. Walker, seems to admit the fact that the "Dalby method" is accurate.

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We conclude that appellee's patent claim No. 1 for a method of computation for determining the position and weights necessary to counterbalance distortion in a Sharp shaft with an eight-cylinder engine V-type motor is not patentable. We agree with appellant's contention that such a computation is not "a new and useful art, machine, manufacture or composition of matter" within the meaning of section 4886, Rev. Stat. (35 USCA Sect. 31). Neither is it novel, being merely a special case already covered by a general case, or formula, and also by the method of graphic statics which gives a solution without formula or computation, forces being represented by the length of lines and their direction being parallel to the action of the force, the solution being indicated by the length and direction of the line indicating the resultant force.

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