116 F. 363 | 6th Cir. | 1902
after making the foregoing statement ■of the case, delivered the opinion of the court.
The subject of the controversy is the simple one of solid rubber -tires for vehicles. When Grant entered the field as an inventor of -rubber tires, he found it occupied by an army of patentees who had preceded him, and no less than 80 prior patents have been put in ■evidence as anticipations or as illustrations of the history of the •art. Grant, in part, seems to recognize the crowded character of the field open to him, for he concludes an account of his construction by claiming that, by his mode of construction, he has produced “a rubber tired wheel rim which is capable of more use and which will remain in position better than any other tire which has ■ever been put upon the market.”
The first claim of the Grant patent is for a combination of three ■elements: First. A metallic channel rim, having angularly projecting flanges, shown as b’ in Fig. 2, forming a channel with inclining •sides, into which the rubber fits. Second. A solid rubber tire having an inner portion adapted to fit in the channel rim and an outer
'Metal channel tire seats in great variety of form appear in the earlier patents. In some the sides of the metal channel incline inwards, and thus aid in holding the tire in place, and this method characterizes a class of rubber tired wheels, where retaining bands or wires were not used, as “clincher” tires. In others the sides of the channel rim are perpendicular; in others there were ribs or projections on the inside of such channel sides which served to assist in holding the tire in its seat. In still others the sides are shown to flare outwards to a greater or less degree, as in Grant’s. The exposed portion of a rubber tire is liable to lateral expansion under compression from use, and to project over the sides of a metal channel or tire seat, and to be sheared or cut by such contact. Two ways of avoiding this kind of injurious cutting were taught in the old art, and in some cases both methods were combined. One obvious method was to round the edges of such rims. Another was to make the edges flaring; thus affording a space between the flaring side and the rubber tire into which the expanded tire might crowd itself without projecting over the edge of the metal .seat. Methods for preventing such flaring effects appear very early.in the art. Thus, in the English patent of 1884 to Clark, he says he forms his tire seat with “straight parallel sides slightly widened out at the mouth.” In the United States patent to Owen of 1887, he recognized this cutting from lateral expansion under compression, and shows two or more forms of metal channel in which the edges of the rim are flaring at the top. To further guard against the trouble, he, after referring to this expansion under compression, says in his specifications:
“I reduce the width of the tire outside of the rim or felly, making it either of a flat or concave form, or of other form falling within the semicircle, so that when subjected to pressure the lateral expansion or enlargement will not cause the tire to project beyond the rim.”
This, he says, is plainly shown by Figs. 5 and 6 of his drawings.
In the patents to Elliot, Nos. 440,701 and 440,702, the channel sides are shown to slightly flare. In one of his patents he says:
“By making the metallic tire in this manner, the rubber tire, when compressed by a direct or lateral pressure, and thereby overlying' the metallic edges, will not be cut or injured by said edges.”
In the English patent to Willoughby, of 1892, No. 18,030, very many forms for metallic channel tire seats are shown, two of them showing a slight flaring at top of sides. Examples are also to be seen in Myers, of 1892, No. 468,971, and Beirsmith, of 1890, No. 424,452. In the English patent to Robertson of 1890, the same
Grant describes his rubber tire as having a “peculiar shape.” He says:
It “is formed of substantially tbe same depth as, width. The outer periphery, however, Is formed on the arc of a circle of much smaller diameter than the width of the rim, the exposed sides of the tire being formed, preferably, on the lines, c2, at an angle to each other, and also to the flanges, b’, of the wheel rim. The unexposed portion of the tire, or that portion which is inclosed within the rim, is formed of substantially the same shape as the inner channel of the rim, that is to say, it is tapered from the outside inwardly, so that the sides of the inner or unexposed portion of the tire are also formed on the lines, c2, forming, with the lines, c2, an obtuse angle.”
This obtuse angle or corner he describes as falling below the outer periphery of the flanges, b’, and within the channel between said flanges. The “peculiar shape” is better understood by reproducing Fig. 2- of his drawings:
The purpose of the patentee in adopting this “peculiar shape” for his rubber tire, as explained by himself in his specifications, is as follows:
“By having the sides of the exposed and unexposed portion of the tire formed inclined, and at an angle to each other, as described, the compression of the tire in use is such that all portions of the rubber are retained within the channel or groove, and no portion of the rubber is forced over the side of the flange, which would result in cutting or grooving the tire at the corner or angle, which would eventually cause the tire to break from this point inwardly to the openings, c’.”
The rubber tire of Owen, before referred to, was primarily a velocipede tire, and was made of two layers of rubber, the outer part being cushioned on an unexposed and softer body of rubber. But the reasons which moved Owen for adopting the form shown in his patent for the crown or exposed portion of his rubber are strikingly like those set forth by Grant, and a comparison of Figs. 5 and 6 from the Owen patent with Fig. 2 of the Grant patent will show substantial unity of design, só far as the crown or exposed portion of the rubber in each is involved. In both the channel rim is flaring, in Grant’s somewhat more so than in Owen’s; but in each there is a space within which the compressed rubber may be
We have gone far enough into the history of the old art, without, by any means, exhausting the subject, to show: First, that it was not new to set solid rubber tires into iron channels with flaring flanges, the widest part of the rubber being below the periphery of the channel sides; second, that it was not new to use solid rubber bands of the “peculiar shape” of that employed by Grant, so far as that shape has any substantial bearing upon the question of novelty here to be considered; and, third, that it was not new to use one or two or more wires for- the purpose of retaining the rubber tightly in the channel seat. Practically, this is conceded by the learned counsel who have argued this case for appellees. But their concession has been accompanied with -such narrow concessions as to the teaching of the old art, and with such wide claims for the concrete results of the combination of these old elements made by Grant, as to make it essential to show something of the old art and of the functions in that art of the elements of Grant’s combination, that we may better understand the contention that the combination of the patent is new, and the result novel and patentable.
While conceding that the individual parts of the Grant claims are old, it is insisted by appellees that these parts have never been before brought into a combination where the parts are so arranged as to co-operate in the production of a new and useful result. It may be conceded that no rubber tired wheel in the old art has been shown which includes each of the identical parts which unite to make Grant’s tire. We find Grant’s channel rim in one, his two or more wire system of attachment in another, his peculiar shaped rubber strip in still another. Again, we may find two of Grant’s parts co-operating in one structure; the third being represented by something not quite the same, but accomplishing separately, possibly not so well, the same function attributed to Grant’s third element. A careful study of the history of the art brings us very decidedly to the conclusion that the most that can be claimed for Grant is that he has selected those old parts which he deemed could be most advantageously employed together, and has produced a rubber tired vehicle wheel which is probably more durable than any one rubber tired wheel theretofore known to the industry. To combine old parts in such manner as to produce a new result by their harmonious co-operation may be patentable; but it is equally true that where the combination is not only of old parts, but of old results, without the addition of any new and distinct function, the combination is not patentable. Hailes v. Van Wormer, 20 Wall. 353, 22 L. Ed. 241; Pickering v. McCullough, 104 U. S. 310-318, 26 L. Ed. 749; Florsheim v. Schilling, 137 U. S. 64-77, 11 Sup. Ct. 20, 34 L. Ed. 574; Knapp v. Morss, 150 U. S. 221-227, 14 Sup. Ct. 81, 37 L. Ed. 1059; Office Specialty Mfg. Co. v. Fenton Metallic Mfg. Co., 174 U. S. 492-498, 19 Sup. Ct. 641, 43 L. Ed. 1058; Steams & Co. v. Russell, 29 C. C. A. 121, 85 Fed. 218;
In Overweight Counterbalance Elevator Co. v. Henry Vogt Mach. Co., cited above, this court, speaking by Judge Severens, said:
“There is no invention in merely selecting and putting together the most desirable parts of different machines in the same art, where each operates in the same way in the new machine as it did in the old, and effects the same result. No principle of the patent law stands on plainer reasons than this. A somewhat leading case on this subject is Hailes v. Van Wormer, 20 Wall. 358, 22 L. Ed. 241, and the principle is illustrated by the decisions of this court in the following cases: Manufacturing Co. v. Robbins, 43 U. S. App. 391, 21 C. C. A. 198, 75 Fed. 17; Stearns v. Bussell, 54 U. S. App. 591, 29 C. C. A. 121, 85 Fed. 218; Campbell Printing Press & Mfg. Co. v. Duplex Printing Press Co. (decided at this term) 41 C. C. A. 351, 101 Fed. 282. It is, of course, conceded that when the assembled old elements effect a new mode of operation, producing a more beneficial result, this rule does not hold. In such case a deeper insight leading to the perception of new results from new co-ordinations of old elements may be exercised in a degree amounting ’ to invention. The distinction is clear, though it may happen, as it constantly does in the application of other principles, that difficulty may be found in cases which hover along the line between the mere assembling of old elements and the putting them into sueh relations that, co-acting, they have a different and more beneficial mode of operation.”
The mere bringing together of old parts and allowing each to work out it’s own old effect without producing some new machine or product is not invention. A combination of old elements, to be patentable, “must produce a different force or effect or result, in the combined forces or processes, from that given by their separate parts. There must be a new result produced by their union; if not, it is only an aggregation of separate elements.” Reckendorfer v. Faber, 92 U. S. 347-357, 23 L. Ed. 719. “In a patentable combination,” said Mr. Justice Matthews, speaking for the court in Pickering v. McCullough, cited above, “of old elements, all of the constituents must so enter into it as that each qualifies every other. * * * It must form either a new machine of a distinct character and function, or produce a new result due to the joint and cooperating action of all the elements, and which is not the mere adding together of separate contributions. Otherwise it is only a mechanical juxtaposition, and not a vital union.” From the settled law as shown by the cases we have cited, it is plain, that to sustain Grant’s patent for a combination of old parts, taken from the same identical art, it must appear either that he has produced a new article of manufacture, or a new machine having a distinct character or functions, or a new result must have been obtained in nibber vehicle tires which is due to the joint and co-operating action of all the old devices. We may dismiss from consideration any inquiry as to whether Grant’s construction constitutes either a new machine or manufacture having distinct characteristics or new functions, for no such claim has been advanced. Has, then, a “new result” been obtained, and is that result due to the mechanical co
“It may be laid down as a general rule, though, perhaps, not an inviolable one, that if a new combination and arrangement of known elements produce a new and beneficial result, never attained before, it is evidence of invention.”
This rule, thus cautiously stated, has been approved in later cases. The Barbed Wire Patent, 143 U. S. 283, 12 Sup. Ct. 443, 36 L. Ed. 154; Muller v. Tool Co., 23 C. C. A. 357, 77 Fed. 621-628. But in both the cases cited there was a new result, and in both capes the only question was whether this new result constituted invention or mere mechanical improvement. Now, if Grant’s construction is an aggregation of well-known parts, each part doing its own appropriate function in substantially the old way, it does not show a patentable invention, even though the sum of all the old results is a tire more serviceable or durable than shown in the old art. Hailes v. Van Wormer, 20 Wall. 353, 22 L. Ed. 241; Office Specialty Mfg. Co. v. Fenton Metallic Mfg. Co., 174 U. S. 492-498, 19 Sup. Ct. 641, 43 L. Ed. 1058; Richards v. Elevator Co., 158 U. S. 299, 15 Sup. Ct. 831, 39 L. Ed. 991; Overweight Counterbalance Elevator Co. v. Henry Vogt Mach. Co., 43 C. C. A. 80, 102 Fed. 949; Smith v. Nichols, 21 Wall. 112, 22 L. Ed. 566.
But it is said that Grant has made a combination of parts never before used together, and that he has so arranged the parts used as to obtain the co-operative action of all the parts, and, by such joint action, has produced a new result in a rubber tire more useful and durable than any theretofore known. The claim that the old parts selected from old combinations do not operate in their new association substantially as they did in the combinations from which Grant took them is the turning point of the case. It cannot be denied but that there is a certain kind of co-operation in the accomplishment of the result aimed at between each of Grant’s elements. The object is to attach a solid band or strip of rubber to the periphery of a vehicle wheel. Now, the channel rim adapted to fit the lower part of the rubber, the rubber adapted to fit within the channel sides, and the fastening bands or wires used to assist in the retention of the rubber band in its position on the periphery of the vehicle wheel, are each contributing to the one common purpose. But that kind of co-operation is not new, for it necessarily existed in every prior structure where a channel rim with flaring sides was found in association with fastening wires as a means of retaining the rubber in its seat. But do they co-operate in any new way or produce any new result by reason of anything which Grant has done? What he set himself to do was to attach a rub
Up to this point, it is to us very evident that each of the old parts selected from the old art produces in its new relation substantially the same result which was characteristic of it in the combination from which it was taken. While there is in some sense a co-operation of all the parts, for even the re-enforcing strip across the bottom of the rubber ring contributed to hold the rubber in its seat by enabling it the better to resist the cutting effect of the wires under a great strain, we are unable as yet to perceive that the parts co-operate in any new way, or that any new function has resulted from the new combination. The apparent function of each of the old parts in the new arrangement is the precise function of the same parts in the old combinations from which they were taken. The combined result is seemingly but the sum of the old- results of the same parts, when used in former structures of the same kind. But the appellees contend that Grant’s channel rim, rubber tire, and retaining wires do, as a consequence of their relation to one another in his combination, perform a new function, or operate in a new way to produce a new result; and‘ that this new mode of operation is novel and beneficial, and constitutes
*375 “If, therefore, the tire should he subjected to a severe lateral strain, such as would be sufficient to tear it apart if all borne on the rubber between the fastening rim at the point where the pressure is applied, * * * the fastening wire on that side, * * * by reason of the compression of the rubber lying between it and the bottom of the channel entirely around the rim, qan rise or yield to the excessive strain applied to the rubber, and thus relieve the latter before It is in danger of being torn apart."
But if the retaining wires were tightened to their full tension when their ends were welded or otherwise united, this capacity “to rise or yield to the excessive strain applied to the rubber” is not shown to exist. The degree, then, of this new capacity is clearly dependent upon the normal tension of the retaining wires. If this element of the proper tension of the retaining wires be eliminated, we have no foundation whatever for supposing that this capacity for lateral movement exists to any beneficial extent "as a result simply of Grant’s combination and arrangement of old elements. If the wire on the side from which a strong shock has come gives or rises, and the rubber turns on the wire and upon the opposite corner of the rubber, as on a pivot, it is because of some capacity of the wire to thus move laterally under strain, due to the fact that it was capable of some further tightening without breaking, and the rubber of some further yielding, by reason of its natural elasticity, without tearing. But, if these capacities of the wire and of the rubber have been practically exhausted by reason of the tension originally put upon them, there can be no beneficial capacity for side movement of either under severe lateral strain. The specifications give no hint of this alleged joint action of all the parts to produce this tipping action, or of the advantage therefrom in preventing the tearing or cutting of the rubber under the wires. If this capacity for side movement be a beneficial function plainly inherent in Grant’s combination and arrangement of old parts in relation to each other, and not a mere “obscure property lurking in some accidental corner of his device,” it was not essential that the patentee should point it out as one of the advantages of his structure. This is because he has invented a machine, structure, or manufacture which includes in its necessary mode of operation the function in question, and, whether the inventor knew or not the full measure of the beneficial functions of his structure, he is entitled to all the uses of his invention. Goshen Sweeper Co. v. Bissell Carpet Sweeper Co., 19 C. C. A. 13-20, 72 Fed. 67; Dowagiac Mfg. Co. v. Superior Drill Co. (decided by this court at present term) 115 Fed. 886; Wells v. Curtis, 13 C. C. A. 494-498, 66 Fed. 318. In Goshen Sweeper Co. v. Bissell Carpet Sweeper Co. and Dowagiac Mfg. Co. v. Superior Drill Co., both cited above, we held the patentees entitled to all the advantages of their devices, whether pointed out or not. But in both cases the advantage or function resulting in the advantage was a property or function plainly inherent in the very structure or device when constructed according to the drawings and specifications of the patent. In both cases the description of the invention was so full that if followed the particular function
Much stress has been laid upon the commercial success of the Grant tire. Aside from the fact already mentioned, that much of the durability of the tire is due to the better quality of rubber used, there is much evidence that this success is to be largely attributed to the power of great capital in buying or crushing out rivals, and to great business push and advertising. There is too much evidence in this record as to consent decrees against rival makers of tires to predicate much upon the mere fact that the Grant tire has met with a large sale. The general use of a patented article is only evidence of value when the novelty or utility of the article is a matter of great doubt, and its evidential value in even such cases is nothing when it can be attributed to something other than novelty. Watch Case Co. v. Robbins, 21 C. C. A. 199, 75 Fed. 17; Lane v. Welds, 39 C. C. A. 528, 99 Fed. 286; McClain v. Ortmayer, 141 U. S. 419, 12 Sup. Ct. 76, 35 L. Ed. 800.
Believing the patent to be void for want of patentable novelty, we need not consider any question of infringement. Reverse the decree and dismiss the bill.