103 F. 295 | 8th Cir. | 1900
This action was brought by the Falk Manufacturing Company, the appellant, to restrain the infringement of United States letters patent Ao. 545,040, dated August 20,1895, and issued to Albert Hoffman and Herman W. Falk under an application which was filed on March 18, 1895. The defenses principally relied upon by the defendants below, who are the appellees here, are want
The claims of the patent are five in number, and the first of these is as follows:
“We claim as new: * * * (1) An improved molhocl of forming rail joints, consisting in cleaning (lie rail ends to he joined, forming or adjusting a mold upon said rail ends and over the joint, so as to surround the webs and base flanges thereof, heating said mold and rail ends, and pouring molten metal into said mold around and beneath the base flanges of both rails, and uniting said metal directly to the surface of said rail ends by fusion.”
The remaining four claims of the patent are a substantial repetition of the first, the object of all the claims being to cover beyond peradventure, by means of some slight changes in the phraseology of the respective claims, the process of making a rail joint, which is above described. It is apparent, therefore, from an inspection of (lie specification and claims, that the patent in suit is for a special method of joining rail ends hv casting metal around (he ahntting ends or joints. In other words, the patent covers a process, rather than a product, and the essential steps of that process, as described and claimed, consist — First, in cleaning or brightening' the rail ends to he joined; second, in forming or adjusting a mold to the rail ends .so as to embrace and form a chamber around the webs and base flanges of the same; third, in pouring molten metal into said chamber until it is full, and allowing the mold to remain in position until the molten metal sets or hardens. Three of the claims, namely, the first, third, and fifth, also meniion the heating of said mold and rail ends as one of the steps in the process. The defendants insist that this method of making a joint or splicing the rails is not new; that the various steps of the process as detailed in the patent are each old in the foundrymen’s art; and that the method of fusing cast iron to steel or wrought iron, thereby firmly uniting the two metals, which the patentees describe, had been described in earlier patents, and was well known to foundrvmen. How far these claims are justified will he best disclosed by referring to several patents which aré chiefly relied upon to show the state of the art and to sustain the defendants’ contention.
In the year 1831 an English patent (Ho. 6,111) was granted to George Stephenson, the inventor of railroads, for an improved mode of making wheels for railway carriages. The process of making wheels which Stephenson describes in his patent is substantially as follows: The form of a wheel of the required size is first molded in sand in the usual manner. Hollow tubes of thin wrought iron to form the spokes of the wheel are then laid in the mold, radiating from the central cavity or hub, the ends thereof having'first been treated, with a solution of borax to serve as a flux. The outer ends of the spokes are made flaring or trumpet shaped. Melted cast iron is then poured into the central cavity of the mold to form the hub of the wheel and into the outer or circular cavity to form the felly, and the molten metal is allowed to set or harden. The Idly is afterwards
In the year 1851 an English patent (No. 18,500) was granted to R. S. Norris, which clearly foreshadowed the process now employed by the appellant’ for splicing steel rails, even if it is not the identical process. This patent, in the language of the inventor, “relates, firstly, to a method of joining together, fastening, or supporting the bars of railways, various parts of iron bridges, locks, and other erections, and consists in effecting such object by easting molten iron, or other suitable metal, upon or about the said rails or other parts intended to be joined, fastened, or supported.” The drawings attached to the patent disclose a chill mold of metal made in two halves, and so corn structed as to embrace and form a chamber around the webs and base flanges of the rail ends that are to be united. Through an orifice into this chamber molten iron is poured and allowed to set, thereby forming a chair upon the rails “fitting thereon [as the specification declares] exactly at every point.” In one part of the specification the patentee says, “I pour molten iron or other suitable metal into the surrounding space. [to wit, the chamber formed by the mold], and thus effect a perfect union of the two.” He furthermore says, in substance, that in cases where it is deemed necessary to provide for expansion and contraction of the parts to which the molten metal is applied, he interposes a piece of canvas, coated with loam, and lime, between the molten metal and those parts to. be united with which it would otherwise come in contact. In view of this statement it is necessary to infer that, but for the interposition of the strip of canvas coated with loam and lime, the molten metal would form, a chemical union with the parts to be united, and that in most cases where the process was employed such a union was in fact contemplated by the
As early as October 16, 1847, United States letters patent No. 5,331 were issued to William Martin, Jr., and Mark Fisher for what was claimed by them to he an “improvement in the maimer of uniting or welding' cast steel and steel of other kinds or wrought iron with cast iron.” In their specification these inventors say, in substance, that attempts had been made to unite steel and wrought iron with cast iron hy casting the latter while in a molten state upon the steel or wrought-iron surface with which it was to unite; that the process then in use was to brighten the face of‘the steel or wrought iron, and coat it with borax or some other analogous flux, and then lay it in the mold, and pour the molten metal thereon; that the result of such process had not been satisfactory, but, without changing the old process in any other respect, they proposed to overcome such difficulties as had been encountered by simply allowing the molten metal to flow laterally along the brightened steel or wrought-iron surface instead of falling thereon vertically. The alleged invention of Martin and Fisher appears to have consisted in a new method of pouring the molten metal into the mold, and it is noticeable that they claimed at that early date to be able to jiroduce a perfect union between steel and wrought iron and molten cast iron hy simply changing the direction in which the latter flowed into the mold. These same inventors —Martin and Fisher — took out another patent in the year 1849, being letters patent No. 6,054, in which they pointed out the advantages of heating the steel or wrought iron to which cast iron is to be welded or united before allowing the molten cast metal to flow laterally along the surface to which the cast iron is to be a ((ached. For the purpose of raising the steel or wrought-iron plate to the requisite temperature, they filled a cavity in the sand mold with molten iron, placing the plate over the cavity, and when it was sufficiently heated allowed molten cast iron to flow across the upper surface of the plate that had first been brightened and coated with a flux.
In an English patent granted to Robert Richardson in the year 1854 a method of uniting the ends of gas and water pipe is fully described, which, consisted in encircling the ends of the pipe to be joined with a mold and pouring molten cast iron into the chamber formed by the mold, thereby firmly uniting the two pieces of pipe. The patentee, while describing his process of forming a joint by means of molten metal poured around the ends of the pipe, says: “To effect- or facilitate an effectual union of the melted metal with the iron of the pipes, the iron may have borax, tin, or zinc applied to it, or it may be cleaned with a file or an acid at those parts at which the union may he desired.” In view of this statement it is evident that Richardson contemplated that the molten cast metal would become fused to the iron of the pipes if the latter was either treated with borax or other suitable flux, or if the pipes were thoroughly cleaned or brightened where they came in contact with the molten metal.
■Several other patents were offered in evidence by the defendants to show the state of the art and sustain their contention, but from the foregoing review of prior inventions and publications it is evident, we think, that when the patent in suit was issued it was well known to those who were skilled in the art to which the patent appertains that molten cast iron could be made to fuse or unite more or less perfectly with solid steel or "wrought iron by bringing the molten and the solid metals in contact; that, in order to produce such a fusion or union, the surface of the solid metal where fusion was desired must be made clean or bright, so as to lay bare its “sensitive skin”; and that the union of the metals would be facilitated and rendered more perfect by heating the solid metal to a considerable degree, and applying thereto a suitable flux before the molten metal was, allowed to come in contact with it. The -prior art not only disclosed these facts, but it showed that railroad rails had been united by pouring molten iron around the webs and base flanges thereof by the use of a mold made in two sections more than 40 years before the patent in suit was issued. We are unable, therefore, to discover in what respect Hoffman and Falk, by their alleged invention, gave any additional information concerning the means by which molten cast iron could be made to fuse and unite with steel, or in what respect they made a distinct advance in the art of cast welding, to which their patent clearly relates. The process that they describe of uniting the ends of fails by pouring molten iron around the same cannot be differentiated from the process that had been described previously by Horris, unless it be assumed that Horris did not intend that the molten metal should become fused to the ends of the rails under any circumstances; and that assumption, as we have already remarked, is not warranted by the Horris specification, because he points out means by which such a fusion may be avoided when a union by fusion is not desired. The process described by Horris, like that described by Hoffman and
‘Counsel for the appellant, have urged at some length and with apparent confidence that the process of splicing rails described by the patent in suit has proven to be of such great utility, especially in its. application to the rails of street railroads operated by electricity, that it should be upheld even if it does appear, when viewed in the light of the prior art, that it suggests nothing new in the process of cast welding. They further urge that, although the patent describes an old method of welding, yet as it is applied in a new relation, or, in other words, to a use that is not analogous to any former use to which it has been applied, it should be upheld within the doctrine announced in Electric Co. v. La Rue, 139 U. S. 601, 11 Sup. Ct. 670, 35 L. Ed.