FEDERA.L REPORTEn; WOOD and another v. P A.CKER.
(Oircuit Oourt, D. New Jersey.
July 14. 1883
PATENTS Fon INVEKTIONS-REISSUE.
Heissued letters patent No. 9,368, dated Augnst 31,1880, for an Improved coal cart with a sliding extension chnle, held valid. A mere aO'O'regation of old things is not patentable, and, in the sense of the patent not a combination. In a comhination the elementary parts must be so united that the v will dependently co-operate and produce some new and useful result, and such result must be a product of the combination and n.ot a illere aggregate of several results, each the complete product of the combmed elements. The SUbject-matter of a supposed invention is new, in the sense of the patent law. when it is substantially difl'e.. from what has gone before it, lind this is determined by the character of 'he result, and not the amount of still, ingenuity, or thought exercised; and If the result has been substantiallv di1Ierent from what ha.'! lJeen effected before, the invention is patentable. · 'When the results are produced by mere mechanical skill, or where the change is only in degree and not new, the improvement is not patentable.
SAME-PATENTAnILITY OF CmlBINATION OF OLD
An entire reissue will not be avoided on account of the existence of one void claim.
In Equity. F. C. Lowthorp, Jr., for complainant. James BuchanaJ<, for defendant. Nrxo""" J. This action is brought against the defendant for infringing certain reissued letters patent, No. 9,368, dated August 31, 1880. The Delaware Coal & Ice Company was the owner of the uriginal patent, No. 73,684, and brought suit in this court against the same defendant for their infringement. It was found, upon examination, that although the patentee in his specifications stated the nature of his invention to consist in the funnel-shaped mouth attached to the cart, in combination with the chute and valve, he had failed to make any claim for such combination; and as none of the separate constituents, as set forth in the tnree claims, were new, the court was obliged to hold that the defendant was not shown to have infringed anything claimed in the complainant's patent. Since then the original patent has been surrendered, and a reissue obtained, with quite a different statement of the inventor's claims. They are as follows: (1) The combination of the body of a coal cart with a sliding extension chute, substantially as and for the pmpose set forth; (2) the combination of the body of a coal cart and the outlet, having a gate or valve, with a sliding chute, adapttld to the said outlet, substantially as specified. The answer sets up three defenses: (1) That the reIssue is void because the combination claimed is an expansion of the original; (2) want of novelty in the patent: (3) non-intringement. The second is the only one of these defenses which seems to ltave merit, or which has been the occasion of any serious or extended in-
WOOD V. PACKER.
qtiiry. Do the specifications and claims of the pat'ent as reissued indicate invention on the part of the patentee? The patent is for a combination, the constituents of which are stated in the claims above quoted. There is no difference, in fact, between the claims, except that the second has one element which is not named in the first, towit,the outlet, having a gate or valve, and which is the means of '3ommunication hetween the first and third constituents of the combination. Its aesence gives much force to the argument of the lea,med counsel of the defellliant, that the first claim is void because the parts are aIel, and there is no dependence or co-operation in their action whereby any new result is obtained. A mere aggregation of old things is not patentable, and, in the sense of the patent law, is not a combination. In a combination, the elemental parts must be so united that they will dependently co-operate and ·produce some new and useful result. A coal cart is not novel, nor is the chute for conducting coal from the cart to the place of its destination. These two instrumentalities are aggregated in the first claim; but no mechanism is suggested whereby the coal can be got out of the cart and into the chute. The complainant (Wood) testifies as a witness that it can he accomplished by the use of a man with a shovel. This is probably true; but it is difficult to see how the inventive faculty is put in exercise by any such arrangements. It is not necessary, however, to dwell upon this view of the case, because the entire reissue will not be avoided on account of the existence of one void claim. See Carlton v. Bokee, 17 ,Vall. 463. The constituents of the second claim of the reissue are (1) the cart or wagon; (2) the outlet, 'ivith a gate or valve; and (3) the sliding extension chute. 'fhe patentee was asked whether he thought any of these elements, separaterl from the others, 'i\"aS no\·el, (Com. Ree. 28-9,) and replied, "I do not think they are, but only in combination." The case is then presented here which was considered L¥ the supreme court in Hailes .v. Van TVormer, 20 ,Vall. 368, and in which Justice speaking for the whole court, said: "All the devices of which the alleged combination is made are confessedly old. No claim is made for anyone of them singly as an independent invention. It must be conceded that a new corl1Lination, if it prOlluces new and useful results, is patentable, though all the constituents of the combination were well known and in common use before the comwination was made. But the results mnst be a product of the combination, and not a mere aggregate of several results, each the complete product of one of the combined elemeOlts. * * * Merely bringing cld devices intu juxtaposition and then allowing each to work ont its own eifect, \vithout the production of something novel, is not invention." The question, then, is in regard to the second claim of the complainants' reissue: Is it a patentable combination, producing new and useful results, or is it a mere aggregation of old elements, each working out alone its single individual effect? It is not a question of easy solution, for it requires us to find the
exceedingly delicate line which divides patentability from simple mechanical skill, or to ascertain the difference between real invention and a double use or application of something that has existed before. Mr. Curtis, in section 41 of his treatise on the Law of Patents, in discUl5sing this subject, says:
"The subject-matter of a suppnsed invention is new, in the sense of the patent law. when it is suhstantlally different from what has gone LJefore it; and this substantial difference, in cases where other analogous or similar things have IJeen previously known or used, is one measure of the sulliciency of invention to support a patent.. Our cOllrts have, in truth, withunt always using the same tenns, applieu the same ksts uf the sufiiciency of inventiun which the 'English authurities exhiIJit in uetermining whether allegeu inventions of v:uious kinds possess tile element of novelty; that is to say, in determining this question, the charadeI' of the Tesult, and not the appa1'ent amount of skill, ingenuity, or tllOn,qht exercised, has been exa:'!ined; and if the result has IJeen substantiaPy different from what h:ul been efIeC'ted before, the iuvention lias been prunuunced entitleu to a patent."
If all improvements upon e:l:;sting organisms were patentable, there would be no doubt about sustaining at once the complainant's patent. But sometimes better results are pronuced by mere mechanical skill, without the exercise of invention. The law does not extend to or cover such cases, (Smith v. Nichols, 21 'Vall. 118;) nor where the change is only in degree, and not new, (Guidet v. Brooklin, 105 U. S. 552; McMurray ".Miller, 16 FED. REP. 471.) The complainant's patent is undoubtedly a great 1I11provement upon everything that went before it. The invention of William Bell (letters patent No. 14,301, grllnted February 26, 1856) was set up by the defennant as an anticipation, and it certainly contains valuable suggestions. His dumping wagon, however, could not be used for delivering coal in cellar windows, but only for dumping it into pavement vault-holes, where they happened to exist in front of houses, at a proper distance from the edge of the pavement, and it seems to lack adjustability for doing even this successfully. Tbe evidence shows that Richard Hammell, a respectable citizen of Chambersburg, was formerly engaged in the coal business in Lambertville, l'i'ew Jersey, and that as early as 18li3 he was in the habit of using chutes in delivering coal from a wagon into a cellar. He thinks tllat he introduced the double or slirling chutes in the fall of 1865, and continued to use them for 10 years. The narrow end of one passed into the wider end of the otber. He usen the double chutes when the distance for deli\'ery was too far for the single. When the distance was greater than the single chute, they pushen them one into the other to arljust the length. When the distance was sWI greater, they had chutes that would reach any house. The longest single chute was 16 feet; by combining toem they conlrl reach 2-1: feet, or more, if necessary. 'Vhen more tban one was used, they carrie,l a light trestle to support them in the middle. '" .... '" They had huH a dozen such chutes, and when they had occasion put them toge! her. Peter C. Hoff was also in the coal lusiness in Lambertville, in the
THE FRANK G. FOWLER,
I!lpring of 1867, and has continued therein ever since. He used chutes of different lengths, made tapering, and growing smaller to the end, which went into the cellar. The lower end would rest on the cellar window, or the place made to put in the coal. He used more than one at a time, but not frequently. He generally had three chutes,-one about 7 feet long, one about 12, and the other about 14 feet. Then if the place to put the coal in was 10 feet from the line of the street, he would use two chutes, would shove the small end of the one into the larger end of the other, with a trestle under where the connection was, and also a prop by the wagon,-being a seat, board, or something similar,-in order to hold it up to let the coal run into the cellar. He used the 14-feet chute and the 7-f!let together in that way, which was about the distance he ever used the chute. But in all these cases the coal was shoveled from the wagon into the chutes, which were not attached to the wagon in any way. This testimony exhibits the state of the art when the complainant appeareJ with his improvement. He has not very largely exercised the inventive faculty in what be has done. His combination is so simple that it seems wonderful that other persons did not think of it. But they did not, and if it has effected any new and useful result the law protects him in its exclusive use. The evidence reveals that by his combination of old instrumentalities a :oad of coal can be emptied from a cart into a cellar without the agency of a man using a shovel. This is a new result, worthy of the notice of the law, anD. jt, is the duty of the court to give to the patentee the benefit of his inventlO11. A decree must be entered for the complainant, and a reference made for an account.
(Circuit Court, S. D. New York. July 19,1883.1
LlExs. \\"here several collisions are caused by the negligence of a tow in f:llfi11in,g' a contract of towage, antl each claimant for damages arrests vess<.» at the same time to ·espond, there is no principle of the maritime law, aOlI no interest of commerce or navigation, which requires that the eider hen or, not gnilty of laches, and not having committed any waiver or abandonment, sllOultl have h:s claim postponed to that of the younger lIenor.
In tl.lis case I find the following facts:
At all times from the day of Novemher, 1880, to the twenty-fourth day of Deeemuer, 1880, uoth included, tha steam-tug Frank G. Fowler was engaged as a tow-uoat in Xrw York harlJor and Long Island sound, and the neighlJoring ,vaters. At and prior to Cle time of the tirst disaster rneiltioned, she was owned uy Esther Pitt, of Staten island, and was rUll by 'V. D. B. Janes, of Iliookl:-':l, as mortgagee in possession, or limIer a contract to purchase. Mr. Janes transacted the yessel"s uusiness at 124 Front street, in the city of New York. Suvsequently, and from avout NovemLer Ii1 See S C. 8 FED. REP. :>31, 340,