CELLULOID MANUF'G CO. fl. ZYLONITE BRUSH &: COMB 00.
291
conclusion is enforced by the fact that the complainants did not then have any interest in the other of the two patents in suit,-the pat. ent granted to Cohn in February, 1880, and which was purchased by the complainants in October, 1884; but, as has been stated, this question is not here. The defendants have established the truth of the facts alleged in their plea, and they are therefore entitled to judgment.
CELLULOID MANUF'G Co. v. ZYLONITE BRUSH & COMB Co. and others.' (Oircuit Oowrt, S. D. New York, 1886.) 1. PATENTS FOR INVENTIONS-SECOND REISSUE TO REINSTATE ORIGINAL CLAIMS.
The question whether a reissue is valid which is granted merely to reinstate a patentee to an invention he had surrendered in order to obtain a wider monopoly than that covered by the original, decided in the affirmative; following the ruling in Giant Powder 00. v. Safety Nitro-Powder 00., 19 Fed. Rep. 509, where the facts were strictly similar to those in this case. The fact that a second or subsequent reissue is taken in order to reinstate the specification and claims of the original precludes the assumption that the original was invalid or inoperative.
2.
SAME.
By accepting a reissue containing the same claims as the original, the pat· entee declares, in a formal and deliberate manner, that as to the invention which he now claims the original patent was not inoperative or invalid. 4. FIRST REISSUE VOID IF IDENTICAL WITH ORIGINAL. It would not seem doubtful that if the first reissue had been identical with the original in the specification and claim it would have been void. 5. SAME. In such a case the original patent would have been abandoned, and the reissue would have been a nugatory grant, because the statutory conditions did not exist which are precedent to the exercise of the power of granting reissues. 6. SAME-REISSUE WITH ORIGINAL AND ADDITIONAL CLAIMS. Whether,a reissue which reinstates the claims, and inserts additional claims, not contained in the original, is valId even as to the original claims, and the effect of delay in applying for such a reissue, are difficult questions, decided in this case on the rule of comity. '1. COMITY, RULE OF. Whatever conclusion might have been reached by this court if the questions presented had not been considered and determined by another court of coordinate jurisdiction, held, the decision of the latter court was entitled to grea.t· respect, and should be followed. 8. SAME. lt would be unseemly that one rule of property in patents should prevail in one part of the country, and another in other parts. where the same title may be brought into litigation. In such cases the question should be remitted fOI final decision to the court of last resort.
3.
This was a bill for infringement of reissued letters patent to Johu W. Hyatt, Jr., and Isaiah S. Hyatt, assignors, for improvement in treating and moulding pyroxyline. The reissue sued on was the third 1 Edited
by Charles C. Linthicum, Esq., of the Chicaj:(o bar.
_n
_
292
,FEDERAL REPORTER.
of the original, which was granted July 12,1870. The first reissue was granted June 23,1874, the second April 15, 1884, and the third, the one in suit, December 23, 1884. None of the claims of the orig. inal patent were retained in the first reissue; the second reissue con. taiued only one claim of the original; and the two claims of the third reissue, and the specification, so far as it related to these two claims, were the same as the original. These several reissues were set up by plea, and the plea being set down for argument, the questions, were, whether a reissue is valid which is granted merely to reinstate a pat. entee to an invention which he has surrendered in order to obtain a wider monopoly than he had obtained, and, if such a reissue is valid under any circumstances, whether it is so after such a delay as had taken place in this case. Rowland Cox, for complainant. H. M. Ruggles and Thos. ·W. Osborn, for defendants. WALLACE, J. The defendant has interposed a plea to the bill of complaint, and the plea has been set down for argument. The suit is brought upon reissued letters patent granted December 23, 1884, to John IN. Hyatt, Jr., and Isaiah S. Hyatt, assignors, for improvement in treating and moulding pyroxyline. It appears by the plea that the original patent was granted July 12,1870; that an application was made for a reissue May 26,1874, and a reissue was granted June 23, 1874; that an application was made for a second reissue March 10, 1884, which reissue was granted April 15, 1884; and that an application was made for a third reissue November 26, 1884, and a reissue was granted December 23, 1884. The plea sets forth the original patent and the several reissues in full. The original patent contained three claims; the first reissue contained five claims; the second reissue contained three claims; and the last reissue contains two claims. The general nature of the invention was described in the specificatign of the original patent as follows:
"Our invention consists-First, of so preparing pyroxyline that pigments and other substances in a powdered condition can be easily and thoroughly mixed therewith before the pyroxyline is subjected to the action of a solvent.: secondly, of mixing with the pyroxyline so prepared any desirable pigment, coloring malter, or other material, and also any suustance in a powdered state which may be vaporized or liquitied, and converted into a solvent of pyroxyline by the application of heat; and, thirdly, of subjecting the compound so made to heavy pressu!'A while heated, so that the least practicable proportion of solvent may be used in the production of solid collodion and its compounds."
This description indicates sufficiently for present purposes what the invention was essentially. In the specification of the first reissue much additional explanatory matter was inserted for the purpose, obviously, of laying a foundation for more expanded claims than those patent. In the specification of the second reissue this of the additiont.J explanatory matter was mainly omitted, so that the specification read like that of the original patent, with some trifling and
CELLULOID MANUF'G CO. V. ZYLONITE BRUSR &: COMB 00.
293
immaterial changes. The specification of the third reissue is practically identical with that of the original patent, except that it disclaims the invention which was the subject of the first claim in the original. The claims of the original patent were as follows: "Grinding pyroxyline into a pulp, as and for the purposes described. (2) The use of finely communicated camphor gum, mixed with pyroxyline pulp, and rendered a solvent thereof by the application of heat, substantially as described. (3) In conjunction with such use of camphor gum, the employment of pressure, and continuing the same until the mould and contents are cooled, SUbstantially as described."
The claims of the first reissue were as follows: "(1) The combination of pyroxyline with camphor gum, or any equivalent convening agent, in sucb manner that the transforming action of the converting agent is kept latent. substantially as and for the purpose set forth. (2) 'rhe method, substantially as herein described, of developing the latent power of the converting agent by the application of heat to a mixture of pyroxyline and gum camphor, or its equivalent, for the purposes set forth. (3) The method, substantially as herein described, of making solid collodion. by subjecting a mixture of pyroxyline and a latent solvent tp heat and pressure. (4) The method, substantially as herein described, of converting pyroxyline into solid collodion, by the use of solid solvents. (5) The new material herein described, consisting of pyroxyline and gum camphor, or its equivalent, with or without the addition of other substances to increase its body or change its color, the same being capable of being softened by heat and remodeled or formed, as described."
The claims of the second reissue were as follows: "(1; The process of preparing pyroxyline, consisting of grinding the pyroxyline into a pulp, and, after mingling therewith asolvent, subjecting the mixture to heat and pressure, substantially as and for the purpose described. (2) The use of finely comminuted camphor gum mixed with pyroxyline pulp. and rendered a solvent thereof by the application of heat, substantially as described. (3) The treatment of pyroxyline pulp containing camphor mixed therewith, in a finely-divided condition, by subjecting the same to pressure in moulds, and continuing the pressure until the mould and its contents are cooled, substantially as described."
The claims of the reissue in suit are in identical language the second and third claims of the original.patent. The plea raises the questions whether a reissue is valid which is granted merely to reinstate a patentee to an invention or inventions which he has surrendered in order to obtain a wider monopoly than he had obtained; and if such a reissue is valid under any circumstances, whether it is so after such a delay as has taken place here. It will be observed that none of the claims of the original patent were retained in the first reissue; that nearly 10 years expired before that reissue was surrendered, and the application was made for the l3econd reissue; that in the second reissue only one claim was the claim of the original patent, that being the second claim, and identically the second claim of the original; and that in the third (the present) reissue the two claims, and the specification so far as it relates to these claims, are the same as the original patent. Thus it
294
FEDERAL REPORTER.
pears that, after waiting four years, the original patent was sur· rendered upon the assertion of the patentee that it did not properly describe or claim his real invention, and that the omission arose from inadvertence, accident, or mistake, and that his real invention was in fact a broader one than he originally supposed. Then, for 10 years subsequently, the patentee rested upon the assumption that the orig. inal mistake had been rectified, and that he was justly entitled to the broader monopoly of the first reissue. Finally, and now, he asserts that although for 10 years he had supposed that the original error had been corrected, and his invention been properly described and claimed in the first reissue, nevertheless he now finds that the reissue was invalid because the claims were broader than he was lawfully entitled to hold against the public; that the error arose from inadvertence, accident, or mistake; and that, in fact, the invention which he is lawfully entitled to hold had been properly described and claimed in his original patent 14 years before. The patentee may have supposed when he surrendered his original patent that it did not contain as broad claims, or claims for as many different inventions, as he was entitled to; he may have supposed when he surrendered the first reissue that it was invalid because the claims were too broad, and he probably surrendered it for this reason; he may have supposed when he surrendered the second reissue that it contained one claim which was void for want of novelty; but, as a matter of fact, the original patent described and claimed both of the inventions which are now secured to him in all their parts by a correct specifieation, and by claims which were unambiguous and apt. The facts disclosed upon the record preclude the assumption that the original patent was invalid or inoperative to secure to the patentee bis present claims by reason of a defective or insufficient specification, or by reason of his claiming as his own invention more than he had a right to claim as new; or that there was any error in the specifications or claims, so far as they relate to his present rights, whicb arose from inadvertence, accident, or mistake. Such an assumption cannot be 'indulged, but is overthrown by a comparison of the several patents. Each claim of a patent covers a complete inv(mtion, and is, in substance, an independent patent; and as respects the two inventions covered by the claims of the present reissue the specification and claims are identical with those of the original. The original was therefore as operative and valid in all respects as is the last reissue, and, by accepting the present reissue, he has declared, in a deliberate and formal manner, that as respects both of the inventions which he now claims the original patent was not inoperative or invalid. It would not seem doubtful that if the first reissue had been identical with the original in the I:lpecification and claims, that it would have been invalid. The original patent would have been abandoned, (Peck v. Collins, 103 U. S. 660; Rev. St. § 4916,) and the reissue would
SCHULTZ fl. OSTRANDER.
295
have been a nugatory grant because the statutory conditions did not exist which are precedent to the exercise of the power of granting reissues. But it may be urged with force that the original patent was inoperative or invalid to secure to the patentee all that he had really invented, and had described or substantially indicated in the specification of the original, so that he was entitled to a new one, with broader claims, or would have been if he had not delayed in his application unduly; and this being so, that the reissue was not void as an unauthorized exercise of the statutory power, but only invalid to the ex tent of the new and broader claims; and that it was competent for the commissioner to correct the error of law by a new reissue which would reinstate the patentee in what rightfully belonged to him before. Whether this contention is correct, and, if so, whether the error can be corrected after the expiration of so long a period as intervened in this case, are questions of much difficulty. The facts presented by the record are so strictly similar to those in Giant Powder 00. v. Safety Nitro-Powder 00., 19 Fed. Rep. 509, that the decision there is directly and completely in point here against the sufficiency of the plea. Whatever conclusion might have been reached if the question now raised had not been considered and determined by another court of co-ordinate jurisdiction with this, that decision is entitled to great respect, and should be followed now. It would be unseemly that one rule of property in patents should prevail here, and another in other parts of the country, where the same title may be brought into litigation. The question should be remitted for final decision to the court of last resort. The plea is overruled.
SOHULTZ tl. OSTRANDER.!
«(Jircuit Court, E. lJ. Missouri.
April 20, 1886.)
PATENTS FOR INVENTIONS-REISSUE-ENLARGING CLAnr-STEAM-PmrPS.
The first, second, third, and sixth claims of reissued letters patent No. 9,818, granted to M. Schultz for an improvement in steam-pumps, held, unlawful expansions of the original patent, and therefore void.
In Equity. Suit for the infringement of reissued letters patent No. 9,818, granted to M. Schultz for an improvement in steampumps. L. M. Hosea, for complainant. Oharles A. Hawley, for defendant. I
Reported by Benj. F. Rex, Esq., of the St. Louis bar.
296
TREAT, J. Uncler the admissions of counsel that the defendant does not infringe the fourth and fifth claims of the reissued patent sued on, (No. 9,818,) the COlll't is brought sharply to a determination of the question as to whether the other claims in the said reissued patent are expansions of the original patent, and void in law. The struggle seems to be to cover, under reissue, the frame-work employed on the pump, of which there was nothing suggested in the original patent. Hence the court holds that the first, second, third, and sixth claims of said reissued patent are unlawful expansiolls of the original patent, and therefore void. Bill dismissed, with costs.
CALKINS and others v. OSHKOSH CARRIAGE Co. and others. l (Oireuit Oourt, E.
n. WiseonBin.
April,1886.)
1. 2.
PATENTS FOR INVENTIONS-WANT OF NOVELTY.
Letters patent No. 261,829, of August 1, 1882, to Alton J. Calkins, for an improvement in carriage bodies, are void for want of novelty.
The patent was for a carriage body having ..ounded corner posts. with grooves to receive the side and end panels, and tenons to receive side and end rails. and corner irons to hold the rails rigidly to the posts, the whole forming a carriage body ingeniously adjusted and held together without the aid of screws; but aU the elements of the claim were old, and in view of the prior state of the art, held, that it did not require invention to bring them together. Although the adjustment of the different parts of patentee's combination was novel, and the combination, as an entirety, useful, held, that it exhibited only the expected skill of the mechanic's calling, and not the creative work of the inventor.
8.
SAME-MECHANICAL SKILL.
In Equity. , Erwin cf: Beneclict, for complainants. Gotzhausen, Sylvester, Scheiber cf: Sloan, for defendants. DYER, J. This is a suit to restrain the infringement of letters pat. ent No. 261, 829, issued to the complainant Calkins August 1, 1882, upon an application filed May 18, 1882, for an improvement in car· riage bodies, and to recover profits and damages. In the specifications of the patent the patentee describes his invention as follows: "My invention relates to improvements in carriage bodies, and pertains to the peculiar construction of the corner posts, the side frames, and the manner of attaching the panels to the frames and corner pieces. My invention is further explained by reference to the accompanying drawings. * * * A is the corner post; B represents one of the standards, which are inserted at short intervals between the respective corners; C is the upper rail; D is the 1 Edited
by Charles C. Linthicum, Esq., of the Chicago bar.
CALKINS V. OSHKOSH CARRIAGE CO.
lower rail; E are the panels. The corner posts, A, are provided with grooves. F, F, upon their respective edges for the reception of the ends of the panels, E, and recesses, G, G, for the reception of the ends of the rails, e, e. The mils, e, e, and the upper ends of the corner posts, A, are provided with a narrow flange or elevation, H, which projects above the body of the rail, and serves . to retain the seat upon the edge of the box. The thickness of the posts, A, is such that they form a neat ornamental finish to the cover from the outside, while they are flush with the inner surface of the upper rails upon the inside. The ends of the posts, B, are tenoned into the lower and upper rails in the ordinary manner. Both the upper and lower rails, e and D, are provided with groves, I, I, for the reception of the respective upper and lower edges of the panels. whereby the panels are retained without screws at both their sides and ends as shown. The upper and lower rails are con· nected together by the standards, B, thus securing a rigid substantial frame for the body. It is obvious that by thus securing the edges of the panels in grooves, much stronger and more durable joints are formed than heretofore, and the tendency to become separated by action of the atmosphere iii thus avoided. J, J, are corner irons, by which the corner posts and the top and bottoms rails are rigidly retained in contact. '.rhe corner posts may be made of cast·iron instead of wood. if desired."
The patent contains a single claim, which is for "the corner posts, A, provided with recesses, G, G, and grooves, F, F, in combination with rails, C and D, panels, E, and irons, J, J, substantially as and for the purpose specified." The patentee perfected his alleged invention some time in September, 1881. Various questions arise upon the issues made by the pleadings. The defendants deny infringement. They also deny that Calkins was the original inventor of the alleged improvement, and allege that his patent was anticipated by other earlier patents; and that in the state of the art pertaining to carriage bodies his con. structibn, as shown in the drawings and the models in evidence, is devoid of such originality and novelty as entitled him to a patent. The court finds it necessary to consider but one of these questions, namely: Is the complainants' combination a patentable invention? Confessedly, all the several parts constituting the combination are old. Stating concisely the invention here claimed, it cOllsists of a corner post made of a single piece of wood, the outer surface of which is oval or semicircular, so as to give to the carriage body rounded corners. Running the whole length of the corner post on each edge is a groove for the reception of the ends of panels, which constitute the sides and ends of the body. At the top of the post, and extending down some distance parallel with the grooves, but cut into the post deeper than the grooves, are recesses into which the ends of the rails are fitted. These rails, and the upper ends of the corner posts, are constructed with a narrow elevation projecting above the body of the rail, so as to furnish means for retaining the seat on the edge of the box. Grooves extend along the entire length of both the upper and lower rails, into which the upper and lower edge of the panels are fitted, and, as thus constructed, the rails externally overlap the panels at both top and bottom. Standards or ordinary posts are inserted at intervals be-
298"
tween the different four corners, being tenoned into the lower and upper rails in the ordinary way. Then corner irons or straps, such 8S have alwayll been used for a similar purpose, extend around the top and bottom of each corner post, reaching over to the rails to which they are fastened, so as to hold the rails rigidly in contact with the post. The arrangement of the different parts is ingenious, but I do not think, considering the state of the art, that it discloses anything more than the mechanical skill which we constantly see in the workmanship of the shops, and which cannot be called invention without regarding almost every new thing that may be novel, and may possess increased utility, as patentable. As I have said, each of the parts considered separately is old. It is equally true that parts of the combination, as the patentee has described them, and as they appear in the model, are old. It is com· mon knowledge that corner irons as here applied, and the fitting of panels in grooves to avoid the use of nails and screws, are as old as the workmanship of the village carpenter and blacksmith, as it came from their hands before the days of modern machinery. The covering of the top and bottom of the panel with what are called "rails" in the complainants' patent, has been long seen in all varieties of furniture and wood·work. Rounded corners of wagon bodies were not new when the complainant Calkins obtained his patent, and all that I -can see in his improvement is quite an ingenious adjustment of these parts, such as the mechanical skill of one engaged in such work might well suggest. In Atlantic Works v. Brady, 107 U. S. 192, 200, S. C. 2 Sup. Ct. Rep. 225, it was said that it is not the object of the patent laws to grant a monopoly for every trifling device which would naturally and spontaneonsly occur to any skilled mechanic or operator in the ordi. nary progress of manufactures; and in Thompson v. Boisselier, 114 U. S. 11, S. C. 5 Sup. Ct. Rep. 1042, it was further said: "It is not enough that a thing shall be new, in the sense that in the shape or form in which it is produced it shall not have been before known; and that it shall be useful; but it must, under the constitution and the stat. ute, amount to an invention or discovery." Instructive language on this subject is found in the opinion of Mr. Justice MATTHEWS, in Hollisterv. Benedict <t Burnham ivIanuj'g Co., 113 U. S. 59, S. C. 5 Sup. Ct. Rep. 717, where it is said that novelty and increased utility in an improvement upon previous devices do not necessarily make it an invention; and that a device which displays only tue expected skill of the maker's calling, and involves only the exercise of ordinary fac· ulties of reasoning upon materials supplied by special knowledge and of manipulation i"esulting from habitual intelligent practice, is in no sense a creative work of inventive faculty, such as the con· stitution and the patent laws aim to encourage and reward. Such, jnmyopinion, is the character of the improvement made by the patCalkins; and though in some respects the adjustment of the
· CARY
v.
DOMESTIC SPRING-BED 00.
299
different parts of his combination may be novel, and the combination as an entirety may be, and undoubtedly is, useful, it exhibits only the expected skill of the mechanic's calling, and not the creative work of the inventor. For these reasons the bill must be dismissed.
CARY
and another v.
DOMESTIC SPRING-BED
00.1
(Oircuit Oourt, D. New Jersey. July 28,1885.) 1. PATENTS FOR INVENTIONS-PRELIMINARY INJUNCTION.
Where a patent had been sustained after long and ably contested litigation. and against all the defenses ordinarily set up in patent cases, and such decision had been followed by another court, held, on an application for a preliminary injunction, that the question of the validity of the patent was hardly open. In such a case, and where the patent has only a short time to run, the owners are entitled to be protected in their monopoly until the defendants are able to show that the former decisions sustaining the validity of the were wrong.
2. SAME.
In Equity. Samuel A. Duncan and Wm. E. Witter, for the m'otion. Collins cf; Corbin, contra. NIXON, J. This is an application for 8 preliminary injunction, and under the well-established rules and principles governing such applications in this circuit, the motion must prevail. The patent on wbich the suit is brought is for an "improvement in modes of tempering springs." The invention relates to spiral springs in a conical form, used in upholstering sofas, chairs, and in bed bottoms, and consists in subjecting the springs to a tempering process after they have been completed in the usual manner, whereby their strength and elasticity are greatly increased. In the specifications of the patent the inventor (Cary) states that the ordinary furniture spring is made of hard-drawn wire, coiled and forced to the proper shape, and when this is. done the spring is considered finished, without having been subjected to any tempering process other than what is inci. dental to the drawing of the wire. The metal. being greatly condensed and hardened in the process of drawing the wire, a good degree of elasticity is given the wire thereby; but in bending and coiling the wire into the proper shape the metal is unavoidably weakened. The outer portion of the wire coil is drawn or stretched, while the inner portion is crushed or shortened. When straight bars of wire are
lEdited by Charles C. Linthicum, Esg., of 'be Chicago bar.
.300
FEDERAL REPORTEB.
Bubjected to the bending process, the stretching or drawing of the outer, and crushing of the inner, portions are inevitable results. This greatly reduces the elasticity, strength, and durability of the spring. The patentee claims that he has discovered a method of restoring the wire, after being bent or formed into springs, to its normal condition. He does it by subjecting the spring to a degree of heat kuown as "spring-temper heat," which is about dOO degrees, more or less, for about eight minutes. He regards this temperature. as sufficient to so far relax or produce a complete homogeneity of the metal of the spring as to add from 20 to 80 per cent. to the value of the spring consequent on its increased powers of resi8tance. The validity of the complainants' patent was incidentally involved, and perhaps to a limited extent considered, by the supreme court in Eagleton MCLnuf'g Co. v. Cary Manuf'g Co., 111 U. S. 490, S. O. 4 . Sup. Ct. Hep. 593, wherein the question of the priority of invention between Eagleton and Cary was litigated. Nothing, however, was definitely settled in that case except that the Eagleton patent was void. But in 187tl a suit for infringement was brought by the own· ers of the Oary patent, in the circuit court of the United States for the southern district of New York, against Raphael H. Wolff and others, which was long and ably contested, and in which all the defenses ordinarily set up in patent causes seem to have been involved. Judge WHEELER, before whom the case was tried, sustained the pat. ent against all the defenses. He has been followed by Judge ACHESON in this circuit, (Cary v. Lovell Ml1n1{f'g Co., 24 Fed. Rep. 141,) and the question of its validity is hardly open on an application for a preliminary injunction. The patent is prima facie valid. It has been upheld on final hearing after expensive and protracted litigation. It will expire in less than three years, and in the mean time the owners are entitled to be protected in their monopoly until the defendants are able to show that the learned judges who have sustained its validity were mistaken in their judgment. I express no opinion on the merits, but, at this stage of the proceedings, order the injunction.
NILES TOOL-WORKS. V. BETTS MACHINE CO.
801
NILES TOOL-WORKS V. BETTS MACHINE CO.1
(Oircuit Oourt, D. Delaware. April 1,1886.)
1.
PATENTS FOR INVENTIONS-TURNING AND BORING MILLS.
SAME-USE OF MACIlJNE-EVIDENCE OF UTII,ITY.
S.
SAME-PATENTABLE COMBINATIONS.
A combination is patentable (1) if it produces new and useful results, though all the constituents of the combination were well known and in common use before the combination was made. provided the results are a product of the combination, and not a mere aggregate of several results, each the product of one of the combined elements; (2) if it prorluces a different force, effect, or result in the combined forces or processes from that given by their separate parts, and a new result is produced by their union; (3) if it either forms a new machine of distinct character or formation, or produces a result which is not a mere aggregate of separate contributions, but is due to the joint and co-operating action of all the elements; (4) when the several elements of which it is composed produce, by their joint action, either a new and useful result, or an old result in a cheaper or otherwise more advantageous way.
4.
SAUE.
Where the attention of persons skilled in the art had been directed for many years to the discovery of a more .convenient and contrivance, and patentee was the first to produce It, /teld, that somethmg more than the mere application of mechanical skill was involved in his production.
In Equity.
Stem et Peck, for complainant.
Benjamin Nields, for defendant. WALES, J. The bill prays for an injunction, and an account for profits and damages. Letters patent No. 113,651, dated April 11, 1871, were issued to A. Gray, Jr., for an "improvement in turning and boring mills," and on the fourteenth of April, 1883, were assigned by the said Gray to the complainant. The first claim of the patentee is for "the tool-bar balancing device, consisting of a rope or -chain, U, weight, V, and pulleys, R, R, 'S, T; connected and operating substantially as and for the purpose specified." The nature and objects of the invention are declared to be:
"First. In a peculiar device for balancing the tool-bar in any position within its range, in such a way as to keep the weight up against the feed, and thus prevent the bar being forced up by the work when any slack exists in the feed, and permit of the bar being elevated and depressed freely by hand; this balancing device differing from all others for the same purpose in this: that the bar can be moved to an;r degree of angularity from an upright or other position, and moved with its saddle along the rail horizontally, without .changing the location of the WE'ight which balances the bar." 1 Edited
302
That part of the general description referring to the drawings, and specifying the improvement, is as follows: "A is the bed-plate of the mill; B, B', the hOUSIngs; Cthe rail; and D the horizontally sliding saddle, which is snugly fitted to and slides upon the rail; E is the revolving table, operated in the usual way by the large gear-wheel, F .· driven (through suitable connections) by the cone pully, G, and' back gear,' H. The feeding mechanism for giving a horizontal movement to the saddle, and a vertical or inclined movement to the tool-lmr, does not differ materially from others for the same purpose, the saddle being moved by the screw, I, and the tool-bar, K, by the rod, L; the connection to the bar, K, being made by a worm, friction-clutch, worm-wheel, and pinion gearing into the rack, M, on the bar. The down feed can be stopped by the slackening of the wheel, N, which governs the friction-clutch. Both the cross and down feed are driven by the expansible gearing shown, operated by the shaft, O. The rail. C, is designed to be raised and lowered by power; the side screws, P, P', and connecting driving shaft on the top rail. being provided for this purpose. The swing, Q, in which the bar, K, slides, is constructed, as usual, in such a way that the bar can be swiveled to any desired angle to enable the machine to bore and turn tapering, etc. In order to balanc6 the weight of the tool-bar in any position, whether inclined or vertical. in a way that will possess none of the faults attributable to devices heretofore existing for this purpose, I have provided the following device: Pulleys, R, R', are journaled upon the Q; pulley. S, upon the tool-bar; and pulley, T, upon the end of the rail. A rope, chain, or wire cord, U, fastened at one end upon the rail at Cf · is then passed over the pulley, R, under the pulley, S, over the pulley, R'. and over the pulley, 'r, where it sllpports a weight, V, which must be slightly heavier than half the weight of the bar, K, only. This device suffices to keep the bar up snugly against the force that fepds it down, so that the tool can never drop when' slack exists in the feed.' It also enables the swing, Q, to be moved to a very extreme angle without deranging any of the parts. or materially changing the effect of the weight, V, upon the bar, or even disturbing the weight itself. * * * The tool-bar slides between the gibs, X, on the swing, carrying, of course, the pUlley. S, with it."
Boring-mills are large and heavy machines, the tool-bar alone weighing from 200 to upwards of 1,000 pounds. Its tendency, of course, is to slide downwards, and it is therefore desirable, if not absolutely necessary, to counterbalance its weight in order to enable the operator to adjust it easily and safely to different kinds of work. Counter-balances for this purpose had been attached to tool-bars by various devices long before the date of Gray's patent, but none, it is contended by the complainant, with such complete, useful, and advantageous results as are secured by the latter. The first and most common contrivance was known as the" drill style," consisting of a. chain or rope run over a couple of pulleys attached to the ceiling above the machine, one end of the chain being hooked to the top of the tool-bar and the other end to a counterbalancing weight. The objections to this mode are that (1) it requires facilities for overhead attachments involving extraneous supports,. and thus. prevents the machine from being a self-contained structure; (2) the pull of the balancing rope or chain can be directly upward only so long as the tool-carriage or saddle remains in one and· the same position on the
#
NIJ,ES TOOL-WORKS V. BETTS
CO.
303,
I
rail, for the pulleys being stationary, as the saddle is pushed alohg i the rail either to the right or to the left, the counterbalancing weight I produces a resistance to its movement; and (3) when the tool-bar is: set at an angle, the pull is no longer in the line of the path of the. bar, but sidewise, and the effect of the counter-balance will be to> draw the bar back into a vertical position, and thus produce a side friction or binding between the tool-bar and the guides in which it' slides. To remedy some of these faults the "trolley style" was designed, in which the chain supporting the counter-balance, instead of passing over a stationary pulley overhead, passes over two pulleys secured in a little traveling carriage, or trolley, which moves on a' track secnred to the ceiling over the boring-machine. The end of the chain is attached to the ceiling instead of to the tool-bar, and a loop of the chain, hanging down from the trolley, carries a pulley which is fastened to the top of the tool-bar. As the saddle slides along on the rail the trolley overhead moves along its track in the same direction, and so keeps the trolley and pulley directly over the tool-bar, in whatever place the latter may be on the rail. This is an improvement on the simple "drill style," (although the trolley does not always promptly follow the movement of the saddle on the rail, and has to be dragged along;) but it does not provide for a direct pull in the line of the axis of the tool-bar whenever the lat,ter is changed from a vertical position. Another contrivance is the "Bradley style," in which the pulleys are carried in a bracket projecting upwards from the swing; but the objections to this mode are so serious that it does not appear to have gone into general use, and seems now to be discarded. Its great disadvantages were that it formed an additional load upon the saddle, causing it to move hard upon the rail, and the counterbalancing weight, being within the frame-work of the boring-mill, was often in the way of the operator. Moreover, the weight was hung upon one side of the swing, and when this was loosened on the saddle, in order to adjust the bar at an angle, the weight was apt to turn the swing over suddenly, and cause serious damage. The defendant in its answer sets up several anticipations, but in the proof relies upon the two just described. It is very clear from the evidence that Gray's improvement is a decided advance beyond all preceding counterbalancing contrivances in boring-mills, not only in providing greater facilities for the prompt· adjustment of the bar in any desired position, but in all its various operations and results. The bar is more safely and easily moved when out of a vertical position and with less friction by this mode than by any other before known; and Mr. Betts, the president of the defendant company, referring to the improvement, frankly admits that "it makes a more complete machine, is easier for the operator, and will make more perfect work, with this device on it." Rec. Ev. 12. The testimony of the experts is, as usual, contradictory. .Mr. Car-
304
michael, a witness for the defendant, who has been in the amp'toy of the Harlan & Hollingsworth Company, at Wilmington, since 1850, and who constructed for them the "trolley style" of counter-balance, cannot perceive any appreciable difference in the force necessary to be used on either machine in elevating the bar when the latter is moved out of a vertical position; but it is a pregnant fact that when the company required an additional boring-mill they preferred one with the Gray improvement, and this is held to be strong evidence of utility. Tyler v. Crane, 7 Fed. Rep. 775. The superiority of Gray's contrivance over all others is, as claimed by the complainant, that (1) it dispenses with all overhead attachments requiring outside supports; (2) the counterbalancing pull is always directly in the line of the axis of the bar, there being no side pull on the bar or swing, and the bar never binds against its gibs; (3) the bar is easily handled, and perfectly safe for the operator; (4) it is cheap and simple, and permits of the addition of a second toolbar without duplicating the chain that carries the weight. The "Bradley style," it is true, effected the first two of these results with measurable success, but by an arrangement of pulleys entirely different from, and not suggestive of, the Gray device, and in a way that was cumbersome and dangerous to the machine and to the operator. The "trolley style" is also plainly inferior in almost every point touching the movements of the bar, particularly in producing a side strain on the bar when the latter is moved out of a vertical position. The patentee has invented or formed a new combination of pulleys or sheaves on the bar, swing, and rail which was before unknown, which produces admittedly useful and ad vantageous results in a way excelling all former contrivances for the same purposes; and the only question is whether it is of such a novel and useful character in its arrangements, operations, and effects as to merit the protection of letters patent. 'fhe defendant's counsel says: II In this case Mr. Gray simply transferred the two pulleys from the trol· ley to the swing, and dispensed with the trolley and the track; and further simply attached one end of his rope or chain to an arm of the machine instead of attaching it to the wall, or some other object not connected with the machine, and transferred pUlley, T, to an arm carried by the machine. This is simply a substitution of equivalents,-no more, no less; and the device does substantially the same thing, in the same way, by substantially the same means." In support of his contention be cites Smith v. Nichols, 21 Wall. 112, in which a patent for the manufacture of a textile fabric was held to be void because the article manufactured was of superior excellence in degree only, and not in kind; a fabric substantially the same in structure, and possessing virtually the same properties, having been known and used before. But the court, by Mr. Justice CLIFFORD, said in that case: "A patentable invention is a mental result. It must be new, and shown to be of practical utility. Everything witllin the domain of the conception
NILES TOOL-WORKS t1. BETTS MACHINE 00.
805
belongs to him who conceived it. The machine, process, or product is but its material reflex and embodiment. A new idea may be ingrafted upon an old invention, be disti.ct from the conception which preceded it, and be an improvement. In such case it is patentable."
It has also been declared by the supreme court that "the application of an old profJess or machine to a similar or analogous subject. with no change in the manner of applying it, and no result substantially distinct in its nature, will not support a patent, even if the new form of result has not been before contemplated." Penns.l/lvania B. Co. v. Locomotive Ellgine Safety Track Co., 110 U. S. 490; S. C. 4 Sup. Ct. Rep. 220; and to the same effect is Morris v. MeJlfillin, 112 U. S. 244; S. C. 5 Sup. Ct. Rep. 218. But the same court had already declared, and has since reaffirmed, the doctrine that when a patentee has produced new, useful, or improved results by a new combination of old constituents he will be protected. Hailes v. Van Wormer, 20 Wall, 353; Reckendorjer v. Faber, 92 U. S. 347; Pickering v. McCullough, 104 U. S. 310; Stephenson v. Brooklyn R. Co. 114U. S. 157; S. C.5 Sup. Ct. Rep. 777. . The propositions established by these cases are that a combina· tion is patentable (1) if it produces new and useful results, though all the constituents of the combination were well known and in common use before the combination was made, provided the results are a product of the combination, and not a mere aggregate of several results, each the product of one of the combined elements; (2) if it produces a different force, effect, or result in the combined forces or processes from that given by their separate parts, and a new result is produced by their union; (3) if it either forms a new machine of distinct character or formation, or produces a result which is not the mere aggregate of separate contributions, but is due to the joint and co-operating action of all the elements; (4) when the several elements of which it is composed produce, by their joint action, either a new and useful result, or an old result in a cheaper or otherwise more advantageous way. See, also, Merwin, Inv. § 135 et seq. These are hut varied expressions of the same doctrine. Here the patentee has undoubtedly produced, if not a new, an improved, reRult, in a new way, and. in doing so has exercised the faculty of invention. The attention of skilled mechanics and engineers had been directed for many years to the discovery of a more convenient and effective contrivance for counterbalancing in boring-mills, and it was reserved for this man to invent a combination which has wrought beneficial results in many ways. 'l'his is something more than the mere application of mechanical skill to a change form. and not of substance, though it may be difficult to distinguish broadly between skill and invention. Pennsylvania R. Co. v. Locomotive Track Co. and Morris v. 1l1cMillin, supra, are fair illustrations of the application of old contrivances to analogous results without v.27F.no.3-20