(Circuit Court, S. D. Ohio, W. D. January 3, 1891.)
PATENTS FOR INVENTIONS-CLAY SEPARATOR-INVENTION.
Letters patent No. 322,393, issued July 14,1885, to C. & A. Potts for improvements in disintegrating clay, consisting of the combination with a revolving cylinder of steel bars, fitted into longitudinal grooves in its periphery, so adjusted as to sent sharp corners projectinl' above the surface of the cylinder, and a strong plate mounted on a shaf,t, so as to swing in bearings on the frame, and alternately ap. proach and recede from the cylinder, are void for want of invention, all the elements of the device being old, and their combination being merely the exercise of mechanical skill. Letters patent No. 368,898, issued August 23,1887, to C. & A. Potts for improvements ill disintegrating clay, consisting in the combination, with a rotating cylinder longitudinally grooved, and carrying cutting bars projecting beyond the grooves, of a smooth-faced rotating cylinder, adapted to carry the clay and hold it against the grOllved cylinder, are void for want of invention, all the elements of the device being old, and their combination being merely an exercise of mechanicalskill.
In Equity. O. &: E. W. Bradford, for complainants. Jas. Moore, for respondents.
SAGE, J. This suit is for the infringement of claim 6 of patent No. 322,393, July 14, 1885, and claims 1 and 2 of patent N9. 368,898, August 23, 1887, both issued to C. & A. Potts for improvements in disintegrating clay. The purpose of these improvements is to disintegrate clay by means of a revolving cylinder, against which the clay is automatically pressed, as hereinafter described. 'l'he machine consists of a cylinder mounted on a shaft, having suitable bearings on the frame which supports it, the cylinder being of such length as to nearly fill the space between the sides of the frame. A series of steel bars is fitted into longitudinal grooves in the periphery of the cylinder, where they are held by flush screws at each end, or other suitable means, that they may be so adjusted to present a sharp corner projecting above the surface of the cylinder. Opposite the cylinder a strong plate is mounted on the shaft, so as to swing in bearings on the frame. The central part of this plate is cylindrical in outline, the upper portion presenting a straight surface and the lower portion presenting to the cylindE:r a curved surface, corresponding to the perivhery of the cylinder. This plate is caused to oscillate in its bearings by means of an eccentric wheel. The opposed sides of the cylinder and the upper and central portions of the plate form, together with sheet-metal end-plates which are secured to the frame, a trough, one side of which approaches and recedes from the other at intervals, and which haR at the bottom a narrow opening of constant width. The operation of the machine is as follows: The upper end of the plate being swung back to the position furthest from the cylinder, the moist, untempered clay is thrown into the trough above mentioned. The cylinder revolving rapidly, successive portions are
POTTS V. CREAGER.
remo\l'eq from the mass of clay, and carried through the opening between the platerand the cylinder by the scraping bars. At the same time the upper portion of the plate moves slowly towards the cylinder, thus keeping the mass of clay in close contact with the cylinder as successive portions are removed. The finely divided clay, after passing through the opening between the plate and the cylinder, falls upon the lower curved portion of the plate, and from thence to an incline, which carries it away. Claim 6 is as follows: "In a clay. 4isintegrator. the combination. with cylinder. A, baving a series of longitudinal grooves of the scraping bars, c, adjustably secured in said grooves, for the purpose specified. It In patept No. 368,898 a plain cylinder, set oppositely to the cutting cylinder, and revolving therewith in close proximity, so that the raw in an even and continuous clay may be. fed, shredded, and manner, in readiness to be 14ken directly to the pug or other mill, is substituted fOl',the swinging plate described in patent No. 322,393. This additional cylinder serves as a feeder, continuously pressing the clay towards the .shredding cylinder, whereby an abutment is furnished for the shreddit;lg.cylinder to act upon, which, while being unyielding and un:changing.l18 to location, is at the same time continuously changing as to surface,distributing the wear evenly throughout the circumference of the peripheryofthe feed cylinder,and thus not operating to change or vary the width of the space between the two cylinders as rapidly as had resultedfroplthe wear upon the plate in the old, construction. The two cylinders being arranged in such a manner as to be adjusted towards or from each other, it is only necessary, when the feed cylinder becomes worn to such an extent as to render the space between the ,cylinders too use, to adjust them until the space is reduced to the wide width desired, thus enabling the cylinder to be used for a long time; the wear upon its surface not resulting in changing the character of tht> abutment, as has been the case in the old construction, wherein the abutting portion of th.e plate would soon be worn into a flat condition, not suitabte for practical use, requiring the substitution of a new one at considerabll' expense. The improved construction also obviated the objection of the clay sticking to the feeding device, the feeding cylinder being continuously rotated in one direction. Claims 1 and 2 of this patent are as follows: "(1) In the supporting frame of a clay disintegrator, a rotating cylinder grooved. and carrying cntting lJars in and projecting beyond the grooves, il\. combination with a smootll-faced rotating cylinder, adapted to carry and hold the clay against the cylinder having the cutting bars thereon, which latter cut or shred the clay, and pass the same between the c)"Jinders. substantially as set fortb. (2) In Clay disintegrators. the combination, with the main supporting frame and with the rotating cylinder fixed therein. and hVing longitudinal cutting bars projecting beyond the face thereof, of a positive revolving companion cylinder, fixed opposite thereto in said frame, and having a smooth face or surface, with wbich said cutting-bars directly cooperate to shred or clip the clay:as tbe same is fed by and passed between said cylinders, SUbstantially as described."
f The defenses are, to the first patent, anticipation .and want of novelty ; ,to the second patent, anticipation, want of: invention, and non-infringement. Respondents rely upon eight prior patents. The first of these is the Butterworth patent of 1865, for an apple-grinding machine or ,cider-mill, in which is employed a cylinder having its periphery armed lwith knives or cutters having serrated or toothed edges, which form a ,series pfcl,1tting projections, with ,chisel-shaped edges. Thes,e cutters are so adjusted as to project beyond the periphery of the cylinder. , ,Secrrnd. The Eunis patent, September, 1865, for a machine for prepaper'pulp, in which lin engine roll is found having on its periphery a'series of cutters set iri grooves in theperipbc:;ry of a cylinder" so asto be in close proximity one to the other. :. ,·fJ!Aird. The Frost patent, April 3, 1866, for an improved construction of pll.pereiigine or pulping machine cylinders, which consists in so apfplying'the grinding plates or knives that they' may moved outwardly 'ftijfil'the circumferenceofthe cylinder as they:wear under the operation 'ofgnnding the pulp, provision being made to hold them firmly in position as adjusted. , Fourth. The Van Name pat¢nt, January 8; 1884, which shows' a constr'uction of the peripheral surface of a roller for grinding-mills, with 'alternating blades of hard, and, soft. material,arranged' in grooves 'around 'the surlace,andparll1lel with the a,cis. The blades or cutting knivescaii 'be: renewed ·frotu time to, tiine,but no provision 'is made ror adjusting ilie projection of their edges from the: cyHnder.' ' . .' .: ( .. ii 'F'ifth. The Peabody patent showing 31'evolv11'lgcylinder around the at equal distances apart, are :arranged knives, each having a .chisel-shaped eutting (tl.1:ilefor the purpose or diminishing the cut. ' . "Sixth. The t, January 10, The 'kriivesof the cutting cylinder are 'arranged tangentially. Thecylinder ls'longitudinally grooved,ll.nd these grooves exteridentirely through the rim of the cylinder, forming slots therain; TMktli'ves project inwardly 'through these slots, and a:readjustably: bolted inside the cylinder, the 'cutting edges of the knives 'projectingoutwardly from the cylinder.' 'I'hese 'bolt!iengage in the knives so 'as to permit tbe adjustment of the tion. The Mayfields call their knives "plane-bits;" half the knives having;smooth, sharp 'edges, the other half corrugated olles. " Seventh. The Smith patent, for an apparatus for preparing wheat for grinding, employing a cylinder similar to the cylinder of the Mayfield yatent, with a series of plane-bits projecting from its periphery. These tpbtoe-bits or knives are adjustably bplted by screws and slots within the while their cutting edges project through slots outwardly through ;the:,rim of the cylinder. . The cylinder, however, instead of having the its entire length, has the long knives made ,up of separate length sections, each,knife being about half the length of the cylinder: ',J 'Eighth. The RUdy patent, March 9-, for clay pulverizer, profluted being:ei'therfine 'oi"ooarse, ah'cl a single reiiucingcylilldlilr, the it
,,: :POTTS tI. CREAiGBR::
platespringB, after which' falls through a sieve'.ilhd then t<Lll.third. I .' The respondent relies, also upon the. <:ylinder showniil'model of, 'Wood-polishing machine as au anticipation. This is a' cylinder provided on ita periphery'with series ofprojecting strips of. glal?s,. ,not different, materially" in .form from the complainants' scrapers, ,and liltt1them longitudinal grooves in the periphery of It appears from the testimony for the respondents that a machine. Cilonstructed like:the model which is in evidence was in suo·, cessIul operation OIl Canal street, in this city, in 1874. It was used for' polishing or, "slicking" boards, which were' run between the cylinder and a support and pressure roller journaled underneath,and connected' with an automatic adjustable contrivance. On behalf (lOhe complainants it is said that, the Butterworth machine' could not perform the work of the complainants' machine, for the reason! that it a yieldingsurlace,and that the moved ,from ,"cider.mill and. placed in a claoydisintegrator, would not' perform the ,office)lOr proLluce the result of :Complainants' cylinder, be--', cause of the "lticky,adhesivecQudition of clay generally used in msk-; ing brick., and, that the knives, with their chisel-shaped while; 'the work ,ot'3Qider-mill, would not be suited to the' shreddiog complainants' machine. Suppose alll this be "I:he qUtlstion remains,is there any patentabledHfer- i ence? The o,f glass ·cylinder tofCreager's wood-polishing, machinC;l are of the £Ihape of the steel scrapers in ,Cllmplain-) ants'. cylinder." tbe ,ci>lllplainants'expert, "they are glass; they wO\i1<i do, our work.OQr scrapers, are steel."Exactly ,butl iathe of steel Jo r gillSB, or, putting that aside, ,the substitu-'i tion of for steel, chistll.tldgeu knives, in adapting all' old, device for a new :use, ,in:\fention? ,' . As the of s,tl;leUor gla'Ss, from Hotchki88 , v. Greenwood, UUq'w. 248, down, incl\:l<!ing H,icks v. Kelsey, 18 Wall_I 670; Terhune v. Phillips, 99 U. S. 592; Gnrdner v. Herz, 118 U. S.192,' 6 Sup, Ct. Rep. and Brawnv. District Qj; Cplumbia, 130 U. S. Ct. Rep. 4S.7,-sE-ttle it, that that ilt oot invention. As to the· adaptation of a new ,use of what is to be found in the prior patents put' in,evidencebytha defendants, the case ofArO'fI,v. Railway Co., 132 U. S: 90, 10Sup,'Ct.lwp. 24iIs'a strong authority against thecomplainants.: and concur ,in the. statement of the' law by , JUdge WALLACE court belpw as follows: ' " . " '; , happ.ensthat old instrumentalities are $0 perfectly adaptl'dfor a ulleforwhichtht>ywet'enot inlendl'd as not to loequil'eallY a!tera-: tioDor.U1odification. lftuese cbange>! involveollly theexel"cise Of ordinary! mee\l41lkal skill,they do not sanction the patent; and,inmost'of the ad.. ) jUdged:cast'8wbere it hasbt'en held, that the application of old devices toa: ne"':usewas. lhel:e w.ere chanlleil of fol'lU, propOl'tion, 01' or. 01 tbia cluU:'acter. wbich wli:renllcllSSary tu accommudiite'them to r
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Now 8.8 to complainants' patent No. 368,898. Every part of the combination there claimed is old. The rotating cylinder, longitudinally grooved, and carrying cutting bars in and projecting beyond the grooves, and the smooth-faced rotating cylinder employed as a feeder, are all found in the prior patents in evidence. Adjustably securing the scraping bars in the grooves is not claimed. If it were, that too is old. But the specification provides that the bars, instead of being replaceable, may be cast in pieces with the cylinder. There is nothing in fact new, excepting the substitution of steel bars for the glass projections 011 the Creager wood-polishing machines, already referred to. But counsel urge that the complainants' machine accomplishes a new result, beyond the reach of any of the prior machines, and that not one of the cylinders shown in anticipation will serve the purpose of disintegrating clay,-all which may, for the sake of the argument, be admitted; and they cite cases to sustain their proposition that prior devices do not anticipate a patent unless they operate in substantially the same way to produce the same result. The cases cited support the conclusions reached therein upon the facts presented, but the claim that novelty and. utility are conclusive of invention is, as a general proposition, misleading, They may be persuasive, and in some cases they are well-nigh oonclusive, but it must be remembered that, without both novelty and utility. the question between invention and skill cannot arise, and that is the question presented in this case. Every year, with the constant advance of skill in all the useful arts, novelty of construction is and ought to be less and less significant as an indication of invention. If any authority be necessary in addition to cases already cited, it may be fODnr! in very recent decisions by the supreme court of the United Sta.tes. See Butler v. Steckel, 53 O. G. 1090, 11 Sup. Ct. Rep. 25. That case was upon a patent for an improvement in bretzel cutters, an improvement in moulds or dies for stamping or cutting out bretzels. Th,e patent was held invalid by JUdge BLODGETT, (27 Fed. Rep. 219,) who says in his opinion, which is quoted with approval by the supreme court: . "It is true, I doubt not, that it rl!l]uired considerable mechanical skill to make a die which would cut out a bretzel from dough so as to imitate a handruade ·b,ret1;el. because the hand-made bretzel is somewhat clumsily shaped, as the are bent, tWisted. and laid upon each other; and it was undoubtedly a matter requiring some study, effort. and experiment to make. the shape of the die correspond with the external formation of the bretzel. This, however, seems to me not to involve invention, but mere mechanical skill, The cutter might be compelled to experiment some,--'-that is, cue several dies; but tpat is not invention. The proof also shows that a large nnmber of persons, before thes.e patentees. had attempted to make a machine which would cut bretzeh" /lond considerable money and time seems to have been expended in t,otproduce such a machine; but the noticeable thing in regard to all tPe$(l efforts was the fact that most of those engaged in them were try_ ing to draw out and twist the dough by machinery, ratherthan to cut or stllmp dough from a flat sheet, while others were endeavoring to out them with di611 set in revolving cylinders; and as soon as the idea of cutting the-
dough from a flat sheet was conceived, the difficulty seeins to have vanished, and \'lUCQeS8 followed the effort, as the only change made was to adapt the old letter dies to the shape of a bretzel."
Justice BlIATCHFORD, speaking for the court, and calling attention to the language of the decision below, that most of the prior unsuccessful attempts to make a machine to cut bretzels were in trying to draw out and twist the dough by machinery, rather than to cut out the form of a bretzel by a single die from a flat sheet, or else were endeavoring to cut bretzels with dies set in revolving cylinders, adds:
"It also appears that those efforts were largl'ly made in attempts to cut out the bretzel by two oppositl' dies, and that as soon as the idea occurred of cutting the dough by a single die from a flat sheet success came at once, by merely changing the shape of the old single die. It also apppars, as suggested by the circuit court, that there was a prejudice against machine-made bretzels." . .
See, also, Florsheim v. Schilling, 5.3 O. G. 1737, 11 Sup. Ct. Rep. 20, (Nov. 10, 1890;) and County of Fonddu Lacv. May, 53 O. G. 1884, 11 , Sup. Ct. Rep. 98, (Dec. 15, 1890.) These cases strongly support the conclusion of the court in this case that the bill must be dismissed, w;ith costs, and it is accordingly so ordered.
THE ALERT." CEBALLOS
(mstni.ct Court, S. D. New York.
Where the owner of the steam-ship A., which bad be6.n libeled by a cargo-owner, caused a steam-ship company to be made co-defendant under the flftr.-nintb admiralty rule, and the evidence upon the trial showed clearly that the libelant was entitled to recover against the A., though it did not clear up the dispute between the co-defendants, held, that, the libelant might take a decree against the A., !lnd the call6 should be continued as between the two defendants, rather than to Bend them to a new Buit.
In Admiralty. North, Ward &- Wagstaff, for libelant. Goodrich, Deady & Goodrich, for the R. D. Benedict, for the steam-ship company.
BROWN, J. The evidence taken in the while that the libelant is entitled to a decree ,against the *ler,t, standing, insufficient to clear up the matters in a,s steamer and the steam-ship into the cause upon the steamer's· petition, and m.ay,
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by Edward G. Benedict, Esq., of thll New, Yo.rkbu,