ST. LOUIS CAR-COUPLER CO. V. NATIONAL MALLEABLE CASTINGS CO.

885

adapted to be used in conjunction with the well-known fQrmof triple valve in an air brake as au auxiliary means of venting the train pipe into the brake cylinder. It is arranged within a casing of the brnke cylinder, and is actuated by the triple valve. The clairiie"cannot be expanded to cover inventions not suggested by the specification. The bill is dismissed, with costs.

ST. LOUIS CAR-COUPLER CO.v. NATIONAL MALLEABLE
CASTINGS CO.

(Circult Court of Appeals, Sixth Circuit. No. 527.

March 8, 1898.)

1.

PATENTS-COMBINATiONS-IMPLICATION AS TO Er,EMENTS.

Where all the claims are for combinations only, this implies that all the rest is old, or, at least, that the patentee does not claim the elements separately. The granting of a subsequent patent for a similar machine or device affords a presumption of a patentable difference between the two.

2.

SAME-SUBSEQUEN1' PATENT-PRESUMPTION OF PA'rENTABLE DIFFEHENCE.

8.

SAME-PATENTABILI'I'Y OF COMBINATION.

To sustain a patent for a combination each element of which is old, considered separately, there must be some peculiar combination of these elements, producing new and useful results. The Lorraine and Aubin reissue, No. 10,941 (original, No. 369,195), for an automatic car coupler, which Is intended as an Improvement on couplers of the .Tanney or Master Gar Builders' type, is only sustalnable. If at all, by confining It to the precise form shown In the specifications and delineated In the drawings, and is not infringed by a coupler made in accordance with the Tower patent, No. 541,446. 81 Fed. 700, affirmed.

4.

SAME-AUTOMATIC CAR COUPLERS.

Appeal from the Circuit Court of the United States for the Eastern Division of the Northern District of Ohio.
The complainant below and appellant here Is engaged In the manufacture and sale of an automatic car cou]Jler, generally known as the "St. Louis Coupler," and made under and in accordance with reissued patent No. 10,941, dated .Tune 26, 1888. The original patent was No. 369,195, dated August 30, 1887. Both the original and reissue were to Madison J. Lorraine and Charles T. Aubin. The object of the bill was to restrain an alleged infringement of said reissued patent by' the defendant company, which is engaged in the manufacture and sale of a rival car coupler, under a patent to C. A. Tower of June 18, 1895. and numbered 541,4-16. This patent is for an improvement on the patent issued to the same patentee, .Tu'ne 5, 1894, and that was an improvement on the patent Issued to the same patentee, October 24, 1893, No. 507,511. Upon a final hearing, before Taft, circuit judge, the bill of complainant was dismissed, upon the ground that the Tower device did not infringe the Lorraine and Aubin patent. The opinion of the circuit court is reported in 81 Fed. 706. The defenses were noninfringement, invalidity patent for want of novelty and patentable invention, and that the reissued, patent is void for unlawful extensions of the claims of the original patent. The character of the reissued patent to Lorraine and Aubin is thus stated in the specifications: "Our invention relates to that 'class of car couplings known as 'vertical plane,' and having a pivoted outwardly opening coupling head or clutch and an extended arm or buffer. The object of our invention is to provide a vertical plane coupling free from complicated parts, locking by means of a simple automatic gravity pin, reqUiring no adjusting and made in ,one pieCE!; to provide a vertical plan.e coupling in which, when a couplinghead. Is unlocked and, released, said coupling-head, by reaso;n of its own weight,

win :turn ou{wa:rdly"llnd open, andthtts automatically sefltself In position, to effeCt II coupUngwitb 'ai similar opposing! coupIllig-head, which may either own. or closed.; ", to provide" an Improved, and "simplified means of setting, not to, couple; , to ,$0 construct and arrange the coupling-head that It' will tie unusually stro):),g" and to make a coupling that will perform the work under all circumstances,as well on' the sharpest ctirves as on a tangent, and with the greatest variations In height of the opposing parts,-in fact, to, provide a car conpling that will be simple In construction, automatic In action, and free from springs and superflUOUS and loose parts, thlit will combine strength and durability with simplicIty and perfection of action." illustration, we here set out Figs. 1, 2, 3, 5, 9, and 10, shown in For the drtiWings' 'of 'the pateIit."'l'he drawings shOw but one form ana an'angement of a vertical plane coupler" and the specifications describe only that form, and do not suggest any modIfication:
,rf,

J

.:: ;

6

9

FIg. 1 Is 8' plan of draw·hl;!lld; with coupIlng-head-sometlmes called a "knuckle"-attached and closed. Fig. 2 Is a plan of coupling-head detached froJ;D draW-head.

I'

ST. LOUIS CAR-COUPLER CO. V·. NATIONAL MALLEABLE CASTINGS 00.

887

and showing vertical longitudinal section of draw-head through line Xv, yv, of Fig. 10.

to make a coupling, with. ,the left-hand coupling-head closed up aud locked,

Fig. 9 is a side view of two draw-heads, with coupling-heads attached, about

Fig. 10' Is a horizontal 'longitudinal section of two opposing draw-heads, with coupling-heads attached, about to make a coupling, with left-hand couplinghead unlocked and open,lind the coupling-head closed and locked. The same letters of reference refer to the same parts throughout. ' j is theqraw-bilr;' R is the draw-head; B fs the buffer; A is the to the ,draw-head, and 'w.hich. conpling-head, which is, pivoted at its viewed in pOSition shown in Fig. 2 (which shows the knuckle of Fig. 10), has a general U shape; E is pin that pivots coupling-head to draw-head; A1 is the outer arm or'clutch ofU-shaped coupling-head; L is rearward arm of U-shaped coupling-head; H is locking pin (said locking pin can be either oblong,round. or square); * * * F is hole In top of draw-head for reception of locking pin (this is not shown In Fig. 10, but is in Fig. 1); 1<'1 is hole which perforates inner arm of coupling-head for purpose of receiving locking pin, and F2 is a hole in bottom of draw-head for same purpose; G is groove in inner arm of coupling-head for guiding locking pin as hole Fl moves from or towards it; S is recess in arm, L, made to receive rib, S1, which is cast to side of draw-head. The 'outer Or hook arm of the coupling-head is divided so as to . receive a link when coupling with common draw-head. The operation of this coupler, as described in the patent, is as follows:. "Should the, two similarly constructed draW-heads approach each other iu the position shown in Figs. g arid 10, the arm, A1, of the closed coupling-head, encounters the point of the arm, IJ, of the open coupling-head, turning'it partly inward, when the point of the arm, A1, of the open coupling-head, then encounters the concave face of the' bufl'erarm, B, which forces it completely around to the limit of its inward movement. As the,cQupling-head turns inwardly, the projecting knob or pin, D1, being at the coriip:1encement of this movement at the top of the inclined or curved groove, D, the upper side of the groove travels up and across the pin, Dl, anfi by this movement raises the coupling-head up into' a space left at the top to allow for this upward movement. At the sam\l time the coupling-head is turning, and raising the pin, H, which rests on top of the Inner arm, L, is guided in the guide groove, G;towllrds the hole, F, and when it is' over said hoie the' pin;

S88

,":':'

I ...

",;.,

.87 FJlIDERALREPORTER.

E, falls through It and Into the hole, F2, and thus securely holding and lockIng the coupling-head. The rib, 8 1, fitting Into the recess, S, Is intended to give the' coupling-head a solid bearing against draw-head when tlie couplinlf head is locked by the pin, E. For uncoupling, the lever arm. N, or any suitable device, Is used. To uncouple, the arm, N, is raised, and this in turn, through. the chain, M, ralges the pin, E. The coupling-head has then nothing to retain imdsupport it, and as the opposing head draws away from It the action of'gravity draws the coupling-head down i·nto the vacant space. beneath, -and as It falls, by reason of the top of the groove, D, traveling,down and across the knob arpin, D1, the COUpling-head and opens and is 'set into position for anQtl1ercol,lpllng. Should both beads I be closed whe/l desiring to make a coupll11g, the pin, E, is raised, and the automatic actioD of the coupling-head immedil!f/,llyopens and turns It ready for coupling. After $e is open pint E, Is allowed to fall, and rests (in the positi'o.n shown' in Figs. 7 and lOr In',thegroove:a.nd on top of the arm, L, Of ,the coupnng.bead. Should it be to set not to coUple, tbe lever arm," N, is raised'imd pushed or pulled on top of the block, P (Fig. 9), and as ihis keeps the pin, H, In a raised position, the' coupling-head can therefore·not be locked and a coupling cannot be· effected. It is only necessary that one pin be to set to' couple, to uncouple,' or set not to couple."· ' The' claims of the patent said to be Infringed are the 1st, 2d, 3d, 6th, 7tb, 8tb, 10th, 11th, 12th, 18th, 19th, and ,20th, and: are as follows: "(1) The combination of the::> -shaped coupllIJg-h.ea!i pivoted' at Its center; the draw-head, and the automatic locking pin, for tlle, purposes set forth.,(2) The combination of the::> -shaped coupling-head, the draw-bead, the pivot, E, tbe inclined (or curved) groove, D, and..tbe:knobor pin, for the purp'ose of making an aj'ltomatlcally opening (3).. T . .be combln!l.!!on of. the::> -shaped COuPlin.. g-head, the . groove, G, th . draw-bead, tbeloc,king'plll resting on top of the arm, L, wben the coupllng-h dis open,and falling through the holes, F1 .and wben the coupling-head fil closed,.. and the lever arm 'an\!' cllaln, substantially as described." "(6) The combination of the·::>/-shaped COUl>llng-head having .the recess, S, the locking pin engaged with the: rearward iU;J;llot.said coupling-head, and the draw-head having the rib, 8 1, which fits in'the'" recess, S, only when the coupllng"heaq .\, closed for malpng tne. firm and secure when lOCked. "(7) The <iomplnationof I,l turning laterally on Its piVot, aud hllviug, 8;.0 external arm to, and a: like .fellow and a rearward arm Intended to engAge with locklrlg wechanism, WIth adrawhead, carryiqg. a. common gravity' vertically moving locking pin, said automaticpin ;r1dlng dlnictlY upon such,rearward arm when opened, ,an,d IQcklngsuch ,IIitfer arm by dropping throug1;l a l;Iole perforated in the inner arm of, the s,ubstantially (81 Tbe of ,two slmllarly ..draw-heads havl/lg::> -sbaped lllvoted. automa.tIcally openIng COUIlllng.head!!iandthe automatic locklpg pin's, substantially as described, for the purpose of. making an automatic coupljng," "(10) The combination of a coupllng-heOO,. tJie.draw-head, t4e grclOve, G, .the locking pin resting on top of the arm, L, wilen the Is open, and falling through tbe holes, F1 lind F2, When .tM Coupling-head Is closed, and the lever arm and chain, substantially as (11). The combination of the .draw-head, .the pivoted coupling-head,and tbe.lqcking pin, Ba,id locking pin resting upon the inner arm pf the coupllng-head wben Is opened and riding upon said inner arm !Vhen the coupllpg-head .Is turned to be closed, and said inner arm being groo,ved. to.recelve and guide the locking pin. (12) The combination or tne tbe pivoted, anll the locking piu, said locking pin working verticll.lly in, a perforatIon In the draw-bead and resting directly upon the innera.rm' of the coupling-head when tlle'coupling-head Is opened, riding directly upon. said Inner arm when the coupling-head Is turned to be clos"cl, and dropping through li\!}id Inner arm to secure sallI coupllng-head W'hen "(18) 'of the draw-head, the,piyoted coupling-head, and the vertically moving pin. the Inner arm of said coupling-head, when the coupllng-bead, JIJ closed" being held by said pIn, and also Interlocked with the drawchead, lI.t ,polnti,Ietween the location of saId locking pin aud the couplingbead pivot, for" the pUfl?ose described. . (1.9) ,The combination of a coupling-head pivot, and having an external arm intended to gdP: .. .fellow, 8,Il11 an inner I\.fUl Intended to. ,engage willi some

81'. LOUIS CAR-COUPLER CO. T. NATIONAL MALLEABLJC CASTINGS 00.

889

lockIng mechanIsm, with a draw-head aarrylng a common gravIty ,.ertlcally moving lockIng pIn riding dIrectly and solely upon such Inner arm when the coupling-head Is open and droppIng to lock It when closed, substantially RI described. (20) The combination ot two similarly constructed draw-heads havIng pivoted automatically opening couplIng-heads and the automatic gravity lockIng pIns, substantially as described." In the orIginal patent the coupling-head was described as follows: "A III the coupling-head, whIch Is pIvoted at Its center to the draw-head (saId center being In direct line with prolongation of radius. a, b, of circle, a,. b, c, and said radins beIng at right angle to the line of the draft), and which, viewed In position shown In FIg. 2, has a general'::J shape." The clause In parentheses is omitted In the reIssue. The first. eIght claims of the relssned'patent are SUbstantially the same as those of the original patent. The remaIning claIms are not contained In the orIginal patent. . Tbe Tower device bears·a very close general resemblance to that ot LorraIne and Aubin. Fig. 1 of the Tower patent is tbls:

If,'

'.'),

'!'hIll figure Is A pllln view, snowmg two coupler-heads, one c1ol!led aDl! the ether open, about to close. Figs. 4 and 5, set out below, show the Tower loclDnl' 4evlce,--Fig. 4 when the coupling-head Is closed, and Fig. 5 when open:

1

The draw-head Is.We.ntlcal wltl:l thatot tIle complainant's device. The operation of thIs device '1t!'thus descrIbed In ..the opinion of the circuit court: "In one of the prongs s"!lllgs the coupling-head, and the other prong is used as a buffer bar. The kqlIckle or coupling-head IElformed with an outer arm, b, and an inner (and preferably longet} arm, or tall, c,' which project substantially at right angles to each other,._ and the. re.r side of the tall is formed into a hook, d. In order to hold the position (the position shown in Fig. 4, and at B, In Fig. 1), an angled'Iij>cking and opening piece Is set within the coupler head, and shown most I!'ig.,4 and Fig. 5. The upper and transversely extending member, or arm, of tWs angled pfuce, reaches over the tall of the knuckle. Its dependent block\,orhead, 7, is adapted to fit in front of and to lock the knuckle wheninclose<tpositlon, and Its arm, f, which extends downwardly at the "rear of. the knuckle, and i!\,)!ubstantially upright when the knuckle Is in locked -positiPn. Rasses through a guide hole, g, in the floor of the coupler. When tl¥! the head, 7, of the angled piece, flts between the front sldeDt: t,lJ-e' jmuckle tall and the shoulder, h, on the coupler-head; but the 'the angled piece by a link, or lifting rod, 8, it Is raised above the knuckle, and out of its path of motion. The notCh, I, on the upward side of Its member, e, engages a projecting rib or shoulder, 9, on shoulder acts as a fulcrum,"l.Jl0n whIch the arm, f, acqUIres a radial modon against the, rear side of tqe t!l11 of the knuckle, movIng it outwardly into the open space.' The: end of tJ;l.e arm, t, will then drop upon and be supported by the bottom or floor. of th-e draw-head until the knuckle tail swung back and the opeootlon ot locking again succeeds. In this operation the rear side of the knuckle tall engages the /lrIjl, t, apd moves the angled piece so as to carry the arm back into a v:ertlclj.l position" until its lower end comes into register with the hole, g, and then the; angled piece will drop by gravity, its arm, f, entering the hole, and Hs p,ead,7, adjusting Itself in front of the knuckle tall, and locking the knUCkle., As a security against the jumping of the locking piece the opposIte sides Of the head, 7, are not In parallel vertical planes, but with downward divergent surfaces." 81 Fed. Rep. 712.

,e,

.:

,',j

L

l ...

"ST. LOUIS CAR-COUPLER CO. V. NATIONAL MALLEABLE CASTINGS CO.

891

John W. Munday, Edmund Adcock, and Henry M. Post, for appel· :lant. M. B. Philipp, T. W. Bakewell, and E. A. Angell, for appellee. Before LURTON, Oircuit Judge, and SEVERENS and CLARK, District Judges. LURTON, Circuit Judge, after making the foregoing statement of facts, delivered the opinion of the court. The whole subject of car couplers has long been a fruitful field of invention, and no less than 6,500 patents have been issued for improvements in this single device. The particular type of coupler to which both those in contest belong is that established by the automatic vertical plane coupler patented to Eli H. Janney, April 29, 1873, No. 138,405. This was followed by patent No. 156,024 of October 20, 1874, to the same patentee, for an improvement upon his original device, and another in 1879, and still another in 1882, "and on April 2, 1878, by a reissue of his original patent, being reo dssue }S'o. 8,153. The narrowness of the field for further invention in couplei'St of the type now in question will not escape observation if we examine the devices covered by Janney's patents. For this purpose we reproduce "Figs. 1 and 4 from the drawings of the patent to Janney -of April 29, 1873:

f1!.

F'1?9

Q2t'

"A'

.·

. c:.·

a'

Fig. 1 represents a top plan view of two opposing couplers about to make a coupling, open, the other closed. Fig. 4 is a transverse sectional elevation,sh<lwing the tail of the coupler-head' lacked within the recess of fue dra.w-bead. It will be seen that this device presents the forkeddrl:1:w-head, which is one element in each of the claims of the Lorraine and Aubin patent here involved. One arm ofthisd:r;aw·hea,d acts as a buffer, and also as a guard to prevellt uncoupling from lateral motion of the cars; to the other a coupling·head or knuekle is piYoted which swings horizontally on the pivot)n opening o!-' closing to conple or uncouple, with a twin an oppos1ngdraw· head. The,draw-head and coupling·head· of Janney's improy'ement of 1879 is shown by Figs. 1 and.2, from the drawings of patent No. 212,703:

//

t.

892

87 FEDEItALREPORTER.

The form,reached by his improvements February 21, 1882, No. 254;093, is show:n by Figs. 1,3, and 5 of the drawings:

'M'"

, ,

I

,",

I,'

'iJj-, ''''l1 ....,

: I'.

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",'

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,

·' , '1'hls eoupIerhi similar in construction to thoEro of Janney's prior · th.at it .has 8;n automatic, vertically moYIng gravltYl.ocking pm. It is gmded 1ll holes·at,the"top and:botthedraw·head, and· h10ves freely ina vertical direction. ''1'he''lockingdevice in all the Janney patents, prior to 1882, is' a ," spi'in!t latch 'engaging the -tail! or finner arm of the, coupler.head. BntJ't'liispatenf df'FebruRTy2111882, is for a locking device whicb consists in a locking pin provided with an inclined face and a'lilioUldel' for holding the pin in a raised position. This pin extends downward through a hole in the top of the draw-head, and drops behind the inner arm of the knuckle-head when open, and in front of it when closed, the inner arm of the knuckle being also provided

ft. LOUIS CAR-COUPLER CO. V. NATIONAL MALLii:ABLE CASTINGS CO.

893

with a double inclined face so as to push the pin up untii the knuckle passes under, Which then drops by gravity in front of the inner arm, alld thus holds it in a locked position. In Figs. 3 and 5, shown above, this locking pin is shown with a spring, b 2 , but it is intended to be used, and is used, without such cification stating, "It may be provided with a spring." spring, the sp In 1887 the Master Car Builders' Association adopted a standard shape of a vertical plane coupler, which was substantially that of the Janney coupler, and fixed upon gau!!es to decide the limits allowed in variation of sizes. Theee gauges fix the dimensions of the coupler-head or knuckle, and the size and contour of space between knuckle and draw·bar. The size and shape of the tail of knuckle, method of locking, point of pivoting knuckle·head, and location of locking pin, were left to discretion of the respective manufacturers of couplers. Couplers built on these lines are known as couplers of the M. C. B. type, and to this type both the contending couplers belong. It follows, from what has already been said, that couplers of. the class to which the Lorraine and Aubin device belong were old, and that the most which can be said for the patent in suit is that it is for an improvement upon other automatic gravity lock· ing couplers, accomplishing the same generll:l result, in much the same way. In summing up the argll ment for the patent in suit, counspl for appellant in their brief say:
"Lorraine and Aubin were the first to embody In a sIngle coupler all the ad· vantages, without any of the disadvantages, of the couplers of the old art." "This [say appellant's counsel] they accomplish by a new combination of old parts. And they were enabled to produce this new combination by reason of having Invented a single new part,-the centrally pivoted::) -shaped knuckle,which waathe key to the solution, and enabled the parts to-go together in such manner tp,atall ot the numerous desirable results or features of advantage could be emoodled without interference with each other." .·.

Continuing, they say:

"The primary combination to which all at thIs Is due, and whIch Is Included In all the claims ot the patent, consists in the union of the following parts in a single coupler: (1) '.rhe Master Car Builders' forked draw-head; (2) The centrany pivoted:> -shaped knuclde; (3) The pivot pin; (4) The automatic, riding, gravity actuated locking pin."

In respect to the defendant's coupler, the same counsel, in conclusion, say that "it embodies this primary combination and in its mode of operation, and produces all of its and embodies all of its advantages, and is therefore an infringement of the principal claims of the patent in suit." It must be ,conceded that, if the patent in suit is such as to en· .title it' tb'a liberal construction and a broad appliclition of the rule .ll.s toequJvalents, the of the defendant 60mpany is an .un· blushing infringement. Brit this was not the view entertained .,by. learned trial after an elaborate review' of the the to and Aubm could only be sustamMby confinmg the preCIse form shown in the specifications and delineated iIi !the drawings of· the

894

.... :", .I

87

FEDERAL REPORTER.

• .'
  

when ,thus limited the Tower device did not In· .' ' " , " , '.", , '1'liis claim to the "centrally' knuckle," as a "invented" by Lorraineahd Aubin, is not" the subject of ,any separate or distinct chiim'of the patent. The knuckle described is only clainied as oneelem'ent in a c6mbination, and the combination is not infringedUIHess all of the elements of the combination are found in the infringing device. The invention by the pll,tentees isthe combination of t:ile elements men· tioned in the several claims of the paterit. This implies that all the rest .is old, or,at least, that thepateJ;ltee does not, so far as this is con,cerned" clliitQtne separately. The Corn· Planter patent, 23 Wall. 1817 224.·· ' :, ' 'But)'t ca,nnot be admitted that a:J!·sbaped knuckle is new.' If this or form of!he1coupling-head be regarded as as this element from the L·shaped k:t\uckle of Janney" or theS:shape<;lknuckle of or Dowling, n()ttobe coupling·head of the patent t«,> Hien ot July.26, 1881, No. 244;'724, nor Ferguson, No, 361,867, n,or from the silme element in, the Kling patent of April 12, .. u.pbil an application prior' to the apphcatIOn of Lorfiifne'and Aubm. For the purpose of shaw'ing J'RfOr!Jl, of the prior coupling knuckles of the old att,we h re set obt 3 of the drawings of the patent to Hien for an automatic car coupler: '
J, " ' J

'"

,3 ..

ST. LOUIS CAU-COUPLER CO. V. NATIONAL MAI.;LEABLE CASTINGS CO.

895'

The patent to Wineman of January 29, 1884, No. 292,724, also Ilhows thissame::J -shaped coupling knuckle. We here set out Fig. 1 from the drawings of that patent:

89.6

87

REJP03.TElR:

But appellant says that these knuckles from the old art, if :::> shaped, are not centrally pivoted, and therefore do not answer to this element in the device in suit. The expert of appellant says that by "centrally pivoted" is meant a knuckle pivoted opposite the gap between tbellrms of the knuckle. In the original patent of which the patent in suit was a reissue, the coupling-head was described ¥ "pivoted at its·'cehtef-'fu. the <l,raw-head [said center being in direct line with prolongation circle, a, b, c, and said radius beinga:!,rig9t angl,es to the lmeof the draft]. * * *,"'.The words in are omitted from the reissue, but the drawings of the origin,a.lshow the pointof pivoting as described in the original. This drawingttasbeen heretofore set out. This fact will become impC}ttant'lf it shall be found that the central pivoting of this::>.shaped knuckle should be treated as a limitation of the patent in suit. Butjn the Kling patent, as is seen by an inspection of Fig. 2 of that 'patent'shown above, and in Ferguson by Fig. 14, the knuckle 'is n?t only:::> -shaped but centrally pivoted. :r'he most that can be saJ4':of the patent in suit is that. it is an Improy.emen( upon the J)Ulney. The Janney has the bIfurcated draw-head,the rotary coupling-head, and is locked by a pin which drops . by'gravity. The., the coupling-llead, called the uncoupled, projects out into the cavity the arms ottJ;Iedraw-head, so as to be struck by the coupling-head of an oppOsing coupler. Thplil, the Janney, itself a combination, acresu,lt in substantially the same way. The unlocking devices are not here involved, and for the present we shall not refeJ(to them. ",' Now, in what respect is the device in suit to be differentiated from the improved Janney coupler? The great object in securing an automatic coupler was to avoid the necessity of having the trainmen go in between the cars, and with their hands guide the link anddrbp' the pih,a. existed I under the: old method 0t'coupling' with link and 'Ibin, and, led' to great, destruction attendant upon of life and limb. So great has' ,been the the old link and pin methods of, coupling that congress, in 1893, enacted that after January 1, lS98;it should be unlawful for common carriers engag:edin interstllte traffic to permit to be hauled or used on their lines any car used in interstate traffic "not equipaut9ma.tically by, impact, and which ped with cannot ge 1:lnc9upled without tbe nee.essity of men going between the enMil:ltthe, cars." That a coupling by impact,could be made automaticsil'1y(by the Janney,device His method of uncoupling diffeted/tromthat oteitber of the patents in suit.. That operation under.hia.patent was performed by a movement of a level' placed on the side tOP9fthe draW-bead, which necessitated some cars by the l¥anipulating exposure between this lever. This defectlM to many attempt§to improve on his mode of uncoupling'bY't:il¢ useaf sprillgs, levers" "etc., which are the subject of several pafents",discusSQd in Cmrpler Co. v. Pratt, 70 Fed. 622, and Gould Coupler::Oo. v. Trojan Car-Coupler Co., 21
",.J

IT. I.OUIS CAR-COUPLER CO, V. NATIONAL MALLEABLE CASTINGS CO.

897

c:c. A. 97, 74 Fed; 794. ,Though defective in pa,rticular, the Janney devices have come into rpost use, although a large numbel,' of patents have been since grWlted covering mechanisms which are supposed to be improvements upon them. That Lorraine and Aubin. were granted a patent for their combination affords a presumption that there is a patentable difference between their device and those of Janney or any of the many improvers who obtained patents between Janney and the application of Lorraine and Aubin. Boyd v. Tool Co., 158 U. S. 260, 15 Sup. Ct. 837. But the same presumption exists also in favor,of the Tower patent. , Confining ourselves for the present to the first claim of the patent in suit, and comparing the combination there.. claimed, of thebifur, cated draw-head, the::::J -shaped knuckle centrally and the automatic gravity locking pin, we·find in Janney, Hien, Wineman, Ferguson, Kling, Dowling, and others of thepripr art the same forked draw-head combined with same form Jlfcoupling knuckle and some form of gravity 10Gking device, performing substa;nti,aJJ.y the functions of the combiJ;l.ation of the first claim of the patent in suit. To distinguish them from the device of complainant, we must read into its claims the description of these elements found in the specifications and drawings of its patent. When. we do so, we find some peculiarities in the form and shape of the knuckle, in its place of pivoting, and .in the mechanism of the locking ,device, not precisely paralleled in anyone of .devices of the prior art, though each element j considered is fOund in. some of them and is old. Lorraine and Aubin are at most but mere improvers upon Janney and upon those devices confessedly but improvements upon Janney. Unless, therefore,their combination, as claimed in the first .claim of their. patent, shaH. develop under examination some peculiar combination of, old elements producing some new and useful result, their patent cannot be sustainedat all. The knuckle of the .old ar(afijluffied many shapes. In Janney it somewhat an L, thqngh the longer limb has some peculiarities of foum distinguishing itfr9ID the letter it most resembles. In others of the old artthjs knuckle has more the shape of an S, as in Dowling, No. 379,S88, and in the to Tower, under which ,the infringing; device iii!, made. In still others, as in Hien, Ferguson, Kling, and Wine,map, th,e kn,uckle has a general:::> shape. . , " In everyone of .the ,old devices the shapeof the knuj;kle is made to depend upon the function it performs as a part. of the locking mechanism. That the tail should be long enough to project into the cavity of the is important only if it is desirable that 'the tail should receive a blow the.,headoi,'th,e opposing knuckle to insure proper rotation andtbenecessary engagement of the tail and locking pin. In Janney's device this would seem to be necesto the sary. The head of the knuckle wilen open is Qpposing head of its twin as that cloEling: woill,dn9.t alWaYS result from the impact. But in Hien, Harrington, Ferguson,
87F.-57

and Dowling the 'hea:dof. is presented to'the head of the Jknl1cklea't' ItS that closing is insured withouti'egardto!#hetMi.' the tail is struck. In these last-mentioneddeyices thepr()jeetillg, long, inner arm was therefore without interference with the unnecessary, an(t might be other functions'6fthe knuckle;' Still another matter determining the shape and form of the' knuckle is the character 'of the locking device. 1J;l Janney the pin is arranged to drop'by gravity in front . of the knuckle: . When unlOcked, his pin is behind the inner arm or tail of the knuckle. To raise the pin and pass· the tail under it, the face of both the pin and the tail of the knuckle are so inclined as thi'lt of the blow ,upon ,the front of the tail forced the pin'lip and under it, SO that by li"ravity the pin drops outside the tail and it locked. Lorraine and AU'binadopted a different mode of To them 'it .seemed desirable that the pin should ride on. the tail of the knuckle until dropped by gravity into a' hole in the tail and thus lockldtJI'<position.This locking device Aubin. A locking dewas, however, not peculiar to vice in which a: is c'arried on the tail of the knuckle until dropped into a;locking posiHoil is seen in the patent to Richard E. Gray, No. 261,702; and in Dc;>wling, No. 379,888, the latter 'only being of tMJa:nney type.' 'Thus, If a gravity pin is to be carried tair 'of the'kD}lCkle, the latter must be so shaped as to furnish a surface 1?-Pdn· whIch it may ride.' In'Dowling, the pin drops in front of 'as but ,in Ldtraine and Aubin it drops tllTtnig'h a hOle. in. the taUMda corresponding'hole in the floor of This reqUired, therefore, greater in DoWliIlg:' ''rhe lieadofDowling's knuckle breadth sW,ings'whim -byjenatsuchaa 'in;cl,illlttion. that Ii' blow thereon from the 'head of, tlJ:e opposing knuckle insureS' rotation and secures lockirig. ,j 'lIls tail p.eed -not, be long enough to project into the between' the 'of draw-head to be struck by:tJ?-e head. The head of'thekn1'1ckle oHhe patenT in fjuit is ndt .so piVoted as to insure rotation under all :by the';opp6singltnuekle. It was'.thel"eof . Thus the character 'Of the; locking adopted9Y, LOrraine, an!! Aubin determined fhl'! shape'9fihis''knuckle and itsplace'Of pivoting; The patent!tself;idoes not ':S:pecHlcally state any' a'dV'antages in a 0 -shaped knuckle, except as tpey are Im,plied from what is said as to the tidvantages Qf pivoting. ,Of this of the patent the specifi:cEJ,tionssllv':: _( , ;,;; , ,
r:,'. t. , "The the Its: center Is threefold: F)J;iilt, I( the }'VAS,otberw{se pivoted: by reason Of Its ,shape, when'tlhhead: wbUld bind with arm Al of its neighcoupled, the arm, 'L; 1<)01'; and prevent' unedupIlng' with 'fndIUty. ·and this It would do especially '0U eurves;. second; I1HiMooupllng-head'Were pIvoted back of Its center 01',:10 the arm, ;L, :11 :.Q..opell qoth b.eadstoeither couple or uncquple. whieb unlleceS&Hryand (l;I.ulty; tl;1lrd, If th¢ coupling-head were pivoted 1ri fts ·forwa.rd' arm, 4:".wb.eli thl!' c()upllng-head was entirelyopen,the arn1, L. would then 'come entlre1y'wlthout the draW-head, ,and there would be
i

ST. LOnS CAR-COUPLER CO. V. NATIONAL

CASTINGS CO.

899

nothing to support the IOGking pin in a raised position, and it would accordingly fall, and when coupling it would be necessary to construct some mechanism to automatically raise said locking pin. which would be complicated and is unnecessary."

The supposed advantages of the::::l -shaped knuckle centrally pivoted, as stated by M. E. Dayton, an expert for complainant, supports the conclusion we reach that both shape and point of pivoting are but incidents of the locking mechanism of the Lorraine and Aubin combination. Mr. Dayton, in stating the advantages of the peculiar form of the Lorraine and Aubin knuckle, said:
"As to the advantages of the :::l-shaped coupling-hook thus mounted in the draw-head, and thus combined with a centrally placed locking pin, he must, in my opinion, be a very poor mechanic to whom these advantages are, not apparent from the described and obvious operation. The pl'imary advantage. is that the rear leg of the :::l-shaped coupling-hook swings far enough forward in opening to bring its front edge into the cavity the draw-head and into the path of an approaching coupling-hook, while, at the same time, its rear edge remains within the chamber of the draw-head in position to act as a support for the uplifted locking pin. At the same time, also, by reason of the changed position of the pivot pin, the front arm of the coupling-hook is opened and moved laterally far enough to admit an opposing similar hook, which is. closed. Still further, at the same time, the whole enlarged and changed coupling-hook is easily embraced within the limits of the inclosed coupling-head. Additionally, the added leg of the:::l which gives the :::l shape to the coupling-hook, gives a rear surface to the latter which may abut broadly against a transverse rear wall of the chamber in the draw-head to give great strength in resistance· of bumping strain SUbstantially in line with the front arm of the hook against which SUch strains are initially applied."

If this knuckle was not shaped as it is, and rotated from its center, it would not perform the double function of projecting out into the recess of the draw-head to be struck by the opposing coupler and at the same time support the pin when unlocked. If either of these functions' be omitted, and some other locking device substituted, as in Janney, or the advantage of the projecting tail be omitted, as in Dowling, then the precise central pivoting of the knuckle, is of no direct advantage. If it be pivoted far enough from the- locking device to prevent adverse leverage, there is no mecMllical reason for central pivoting not due to its peculiar shape and locking .device. The evidence afforded by such practical men as compose the Master Car Builders' Association is of great weight; and it is in evidence that they have recommended that the point of pivoting should be 2-! inches forward of a prolonged radius at right angles to the· line of draft, of a circle of which the gap in the knuckle should form a part. The fact that the rear of the tail lIas a bearing against the real' wall of the chamber in the draw-head is not mentioned in theispecificabuffing blows claimed therein tions, nor is any strength in as a result of such abutment. It is doubtless. of someadvantageof the character indicated, but is one found to it large degree in the Dowling N-o. 379,888. The abutment of Dowling's S-shaped knuckle against the rear wall of the recess in which it is 10cked'Js 'shown by patent shown " ' , Fig. 6 from t1;le drawings of
:."

,

r-(

900

:,:/1

The otthat patent say: "The rear wall of this re. cess curves forward,and·its outer or marginal portion, E, extends to the and,C, and forms a bearing stop for the claw, N." The tall of fuuckle does not proJect transversely across the open recess.of the as in. Lorraine and Aubin, but, if it did, we should then have a ::::> -shaped knuckle centrally pivoted, the rear wall of the chamber serving as a bearing for the tail of the knuckle. As it is, the buffing stmtnsare inpU;I;t sustained by the bearing of the short tail of .an S-shaped knucJ,de again,st the rear wall of the chamber But this advantage of a parallel sided knuckle having in the chamber in the draw-head is a bearing against the rear wall seen in the device to P. Hien, No. 244,895, more Figs. 2 'lui'dS of which have been shown in a former part of this opinion. We reach'theconclnsic;nrfromthese considerations, based upon the history;of! the prior art, that the patent in suit can only be slipported by limiting. its claims to the 'precise, f-orm of the device described in the Specifl.:cations :anddelineated in,theidrawings. .That the combination'hassome merit may be concedl'ld, but it is a merit dependent upon slight ;changes in shape and 1form of old elements, thereby enablihgtihe patentees to combine in a slightly new way old elements for the 'put-poseofdoing substantially what they had been doing iil the 'old artp: :TheBe changes are of so: slight a character, and the improvement: by the new combination so debatable, that if any libel" ality 1inc6ilstruction, or in the appHcationof the doctrine of equivalents, be conceded for the:purposeof including other improvers along the same lines within the scope of 'this patent, it will have the necessary ,effect: of: rendering it void f()r anticipation.Wfhat which infringes.if'later, anticipates if earlirJUrrhe invention is in no sense lime ofprimany·character,Jand'complaitlll.nt uponthisgt'ound is' not entitledcto that .range of eqiUivalentsaocorfied to suchan invention. In McCorffiick v. Talcott,20 How.·462co405, the; court said:
i

't ."If he' 00 original of the or m,achlnl;lcailed the 'divider,' he will. have aright totreat:ll.s ,inllrlngersaU"'wbo maREr dividers operating on the saID.e;pl1nciple. and Perf<lrming the bY,analogous means or . lonsJe.ven,:tpo.U.gh the ',In.fr i.n.ging, mac.l1 inE! may;,be an improv.e. .... ment ot the orIginal, and, patentable as such··. But If the Inven410n claimed be itself but an ImprovetlJetlt bll'a'known 'machhle 'by Ii cMnge of form or combination of parts, the patentee cannot treat another as an Infringer who has improved the original machine by use of a different form or combination performing the same functions. The Inventor of the first improvement cannot

the

ST. LOUIS CAR-COUPLER

cdrV-.

NATIONAL MALLEABLE CASTINGS CO.

lJOl

Invoke the doctrIne of equIvalents to suppress all other improvements which are not mere colorable invasions. of the first."

In Miller v. ManUfacturing 00., 151 U. S. 207, 14 Sup. Ct. 318, Jus· tice Jackson, for the court; said: "The range of equivalents depends upon the extent and nature of the invention/' 'l.'his is also the rule of the English courts in regard to mere improvements. In Proctor v. Bennis, 36 Ch. Div. 740, Lord Justice Cotton said:
"Where there Is no novelty In the result, and where the machIne Is not a new one, but the ('laim Is only for Improvements In a known machine for producing it known result, the patentee must be tied down strictly to the invention which he claIms, and the mode whIch he points out of effecting the improvement."

In Bragg v. Fitch, 121 U. S. 478-483, 7 Sup. Ot. !:l81, the' court, speaking of an invention in the light of the prior art, said: "It is one in a series of improvements, all having the same general object and purpose; and that in construing the claims of his patent they must be restricted to the, precise form and arrangement of parts described in his specifications, and to the purpose indicated therein." In Wells v. Curtis, 31 U. So App. 123-158, 13 C. C. A. 494, and 66 Fed. 318, this court had occasion to consider this whole question of the range of equivalents where the invention was but a mere improvement, and reached the conclusion in that case that the inventor, where the step in advance was a slight one, must be held rigidly to the specific form of the device he had described and delineated. When we come to compare the complainant's device with that made in with the Tower patent. we find that, although defendant's has the forked draw-head, it does not have either the ::> -sl'laped knuckle centrally pivoted, nor the automatic gravity lock· ing pin of Lorraine and Aubin. The Tower knuckle has the shape of an S, and is not centrally pivoted, though nearly so. The change in shape'is not merely oolorable, for it in shape and form is' just what it must necessarily be in order to perform its function in co-operation with a locking device which does not necessarily ride on the knuckle, though it may exceptionaJly do so;' If. the tail of the knuckle was filled in to give it the;:) shape of complainant, a different locking device would be necessary. Shaped as it is, an absolute central pivot· ing is not necessary to its operation, and yet it is pivoted near enough to the center to properly rotate the knuckle and avoid adverse leverage. .The locking device is a two-legged· pin or block. The shorter ·leg drops'oy gravity outside the tail, and holds it in a locked position. The longer leg rides ina groove in tbe floor of the cbamber in the draw-bead. When the device is locked, this long leg drops behind the tail, and through a hole in the floor of the draw-head. When tp.e pin is:.raised by,tlJe action of trainmen in lifting the cbain atunder the tail as a result of the radial motached, tbe long leg tion given to It by the'pull of the brakeman upon it; and ejects the tail from tbe chamber, thrusting it out into the opening between the arms'of tl:).e,draw-head, iilJ:lO,sition to be struck by an opposing coupler and relocked. The complainant's opening is the result of the force of gravity, which swings the tail of the knuckle down an inclined plane,where it -remains open until closed again by force. This, as .mted by the circuitjndge; is an automatic opt:ning, while the 9pen-

902

i'·!'

87 P'E;l3ERAl,., REPORT,ER., '

iug in the'defendant'scoupler,;isAhe of tOO raising of the locking block through the interposition of a trainman. These differences between the two devices. tQ,disting:vJsh the defendant's mechanism from that of the compl,inant's' quite as markedly as complainant's is distinguishe4 from the old art. '..If there is a patentable difference between the invention of Lorrairie and Aubin and the many devices prior in to, them for accomplishing the same result,,there is the same patentable difference between the defendant's coupler. and that of' Both are mere improvers. The field was a narrow one for either. There is as much to distinguish Tower from Lorraine and Aubin as there was to distingufsh the latter from J'anney, Dowling, Ferguson,Wineman, Kling, and others who have traveled over the same field. We therefore conclude, tbat although an S-shapeiiknuckle, not pivoted, in combination with a gravity pin which does not normally ride on the tail of the knuckle, performs substantially the same functions as the knuckle and gravity lock of the patent in,suit, yet this, fact is not enough to justify us ip, finding, infringement of a patent so limited as that of Lorraine and Aubin.. Unless. complainant is entitled to a considerable range of equivl;llents, it 'cannot be'said that the elements in the defendant's combination are identical with those in the first claim of the patent in .such a range of equivalents as would bring the defendant'sdev\ce within the scope of the complainant's first chlimwould invalid,ateithis claim upon. the ground of anticipation. The elementsin,cluded in the first claim should all be read into each. of the.other here J Two of the elements, the ::>.rB'haped knuckle centrally pivoted and the gravity pin riditlgdirectlyon the tail of knuckle, in the infringing device, . we the. :(:irst cl.aim. '. The groove, G,. IUl:d the recess, S.,nor, tne shoulder, which are eleiments in ,some of the other claims,are not found in the infringing ,device, nor any equiv,alent for:t],lem, within the limited range of eqnivalents tOjwb.icb .entitled. . ..' . , We hav.e not deemed it necessllJ;'Y ,to go into the question.raised by the criticisms made upon thereisslled patent, nor ,have we deemed it ,a,t all important, in the view. have as to the question of infringement, to consider the.efffctiPf the ,proceedings; in the patent office as limiting the claims. patent. ,The decree Of the circuit eourt must be. affir:m.e(}. the defense oLnoninfringement We expl'es,s no validity of the Tower patent.

OHRIST:ret al.,.;RYGEIA PNEUit'At'lOBICYCLE:sJmDLE co. et aI. , '.. (Olrcult Court, D. Jtlpe

'18:

,; .

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., .

1.

I':"

a

, walIed<\epresslons,adapted t9 rllcelve firmly in place. Ii. ·

PATENTS-INVENTION-BICYCLE SADDLES. Therels ,00. Invention In

.

bicycle ..saddle .top' 'With vertical cushions o\",pads,and Mid them

'

,

.,

Large SlUes and Increasing ,pdPulllrity; cannot be accepted Its certain proofs of novelty and invenUon:NVhell made an<;l SOld J?y

OF PATEI'lTAllILrTyLUARGE SALEiS.

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