71 F. 523 | 2d Cir. | 1896
The complainant, as the owner of letters patent No. 364,081, dated May 31, 1887, issued to Albert J. Bates for an improvement in pneumatic drilling tools, brought its bill in equity against the defendants, and prayed for an injunction against the infringement of said patent by the use of the pneumatic tool described in letters patent No. 472,495, dated April 5, 1892, and issued to Daniel Drawbaugh. Upon the trial, claim 3 only was said to have been infringed. The circuit court found the issues in favor of the complainant, granted an injunction against the surviving partner of the defendant firm, and directed an accounting. From this interlocutory decree the defendant appealed to this court.
Engines operated by steam or air have long been used for a great variety of mechanical purposes requiring a large or a small expenditure of power; as, for example, to turn a shaft, to operate a rock drill, to lift and depress the piston of a pump, and to strike a dental hammer for plugging a tooth. To accomplish these results, the steam or air has been applied by means of pistons which were controlled by valves; and, speaking very generally, a piston chamber, a piston therein, a valve chamber separate from the piston chamber, a valve in the valve chamber, inlet and exhaust ports, and ports extending between the piston chamber and the valve chamber, were means resorted to by which pistons and valves were made to perform the requisite service. Each result required for its production
“(3) In tlie pneumatic drilling tool described, and in combination with the • case having an inlet and exhaust port, the cylinder, D, having a piston chambér and a valve chamber arranged separate from each other, and connected 'by means of ports and air passages, the piston, B, and valve, J, for controlling ■ said piston through the medium of said ports and air passages, substantially as and for the purpose set forth.”
The contention of the defendant is that this claim describes a part of an engine, not limited to be used upon a hand tool or a small tool, or to a tool whose engine has a valve inside the cylinder which contains the piston chamber, or to a tool whose piston has the function of a striker, and is a general claim for a type of engine which ■was familiar to mechanics, and could be modified or changed at will, to perform any particular work, or was for a substitution of an old type for the McCoy type, and therefore not patentable, or, if the claim can be sustained, that it is limited, by its terms and by the prior art, to details not used by the defendant. In order to construe the claim intelligently, the character and . peculiarities of the invention, as disclosed in the specification and in the antecedent Me-. Coy invention, are of importance. The pioneer pneumatic tool of iMcCoy was described in his specification to be “a tool for working in
The next and obvious question is, could not some one of the various types of engines have been adapted, by mere mechanical skill and by known workshop• expedients, to the Bates requirements? The defense of noninvention is, in this case, entirely theoretical. The question relates to an important and complex art, — that of engine building, — in which experience is both valuable and is at hand; but experience has not, apparently, tested itself on the subject. The assertion is that inasmuch as the motive power of steam or air has been employed in many engines, and the means of such employment have been shown in many patents, nothing is necessary for the application of such power to produce a new result, but to select, and perhaps adapt, old and well-known appliances. But as was said by Judge Wheeler, in the circuit court, with respect to the McCoy and Bates tools, “the building, adapting in size, proportion, and relation, and so inclosing such parts as to form a tool of such power, capable of guidance to such work by hand, would seem to involve high and most useful inventive skill, well worthy of a patent upon the tool itself, or improvements of that kind upon it.” While it is true that modern scientific skill has developed an exceedingly great variety of ways in which the agency of steam can be made useful, the element of novelty is generally present in the particular means which produce a new result. And it is not reasonable to infer from the variety of old appliances that the ascertainment of means to properly move and control the movement of a new tool of the delicacy, accuracy, force, and rate of speed required for such an instrument as a dental tool demanded no invention, but required merely a selection by the mechanic from the types of engines at hand in a workshop, or in a volume of drawings. In addition, the history of the tool of this patent shows that the ascertainment of the appropriate means, or of an improvement upon existing means, which should properly move a hand cutter for the carving of marble, also called for an inventive mind. Though marble cutting and engine building were each old arts, no improvement upon the mallet and chisel appeared until the tools of McCoy and Bates came into existence. If the turning of a rock drill into a marble or granite cutter was a thing to be had for the asking, it would seem that the transformation would have been more promptly made.
The strength of the attack upon patentability does not, however, consist in the lack of invention in the improvement of claim 8, as that claim has been construed. The strength of the defense consisted in establishing, the truth of the premise that .the claim was
Upon the question of infringement, the Bates cylinder is surrounded by a case, and the air channels were entirely formed upon the outer surface of the cylinder. In the defendant’s tool, the cylinder has no case, so far as the part which covers the piston is concerned, but has a casing upon the part which covers the valve chamber. In the part which contains the piston chamber, the air channels extend through the solid sides. This modification is immaterial upon the question of infringement. The decree of the circuit court is affirmed, with costs.