72 F. 671 | 6th Cir. | 1896
having made the foregoing statement of the case, delivered the opinion of the court.
The controversy between these parties turns upon the question whether patentable invention is shown by the device of the combination covered by the sixth claim of the complainants’ patent. Thai claim is for a combination in a cask support of a shoe having a (-(«leave seat, with a self-adjusting saddle, supported by the seat, both constructed substantially as specified. For while some effort lias been made, upon the employment of the word “saddles” in this claim, to construe it widely enough to include the co-operative relation of this combination with a duplicate thereof by means of other elements not mentioned in the claim, we think it clear that it was not intended by the patentee to make the claim so broad. Nor would its language justify such an extension. The “shoe” is mentioned in the singular number, which balances the effect of the word “saddles” in tSie plural; and, what is quite significant in this regard, the previous claims spread over the various elements in the construction of the entire cask support in combinations and in their relation and cooperation with each other. It is obvious that the duplication of the structure devised for the support of one end of the cask, for the purpose of supporting the other end, would not be invention. Whether ¡he combination shown in this particular claim, when used with a duplicate of itself in combination with other elements not stated, would exhibit a patentable invention or not, we need not determine.
The question for our inquiry is reduced to the one stated; that is to say, whether the combination of the seat and saddle, for the purpose mentioned, shows such invention as entitles the complainant to the monopoly accorded by the patent laws. And we agree with the learned judge who decided the case at the circuit in his conclusion that it does not. Much of the argument of the counsel for the appellant devoted to the purpose of demonstrating the novelty and utility of the device of this claim is founded upon the assumption that w'e are to take into account the co-reiation of this part of the cask support with the other parts, and estimate the invention by the function it performs in combination and co-operation with such other
Since the combination of the sixth claim does not, as we think, produce any new mechanical result, the other cases cited by complainants’ counsel upon the consequences resulting from devices which, do produce them, with old elements modified, have no application. These are: Topliff v. Topliff, 145 U. S. 156, 12 Sup. Ct. 825; The Barbed Wire Patent, 143 U. S. 275, 12 Sup. Ct. 443, 450; Sessions v. Romadka, 145 U. S. 29, 12 Sup. Ct. 799.
Another point deserves attention. In figures 1 and 2 of the drawings, and which are referred to in the specifications, rlie concavity of the seat is prolonged up and down, and the convexity of the corresponding part of the saddle is suited thereto. This would admit of a sliding movement also, so that, in certain positions of the cask, it is said the ball member may slide in the socket until the surfaces of the cask and saddle come to coaptation. We infer that this feature was not deemed material, for the patentee in figure 3 shows his invention in the form of a ball and socket simply, without any modification such as is last mentioned, and in his specifications refers to this as one of the forms of his invention. In both forms the parts are numbered alike, and the claims refer to the number of the figures or their references in the specifications without distinction. In these circumstances, we must hold that the difference is not material, and that either form answers the requirements of the invention. Trimmer Co. v. Stevens, 137 U. S. 423, 435, 11 Sup. Ct. 150; Wells v. Curtis, 13 C. C. A. 494, 66 Fed. 318, 323. It is proper to add that the difference was not adverted to on the hearing; hut, in the brief of the appellant, some parts of the discussion seem to refer to the capacity of the combination for such adaptations as are mentioned in the references of the specifications to the first two figures in the drawings; and for that reason we have given the matter due consideration.
We conclude the decree of the court below dismissing the bill should be affirmed. It is so ordered.