84 F. 182 | 6th Cir. | 1897
This is a suit in equity upon a bill tiled in the court below by the Favorite Stove & Range Company, setting up the ownership by complainant of two letters patent issued to Stanhope Boal, one of which is reissue No. 11,462, of date January 8, 1895, for an improvement in stoves; the other being design patent ’No. 23,780, for the ornamentation of stoves, and bearing date November 6,1894, — both of which patents, it is alleged, were assigned to the complainant. The bill charges that the defendant (the appellant here) has infringed both of said patents, in the sale of a stove called in this record the “Western Stewart,” and it prays for an injunction, and an accounting in respect of the profits and damages. The defendant answered, denying the validity of the patents, upon the ground that the inventions lacked patentability; alleging that they had been in prior public use, and that they were anticipated by the prior art; and also denying infringement; but as no question arises in respect to the pleadings, and the case has been contested on the merits, it is unnecessary to go into further detail of the pleadings. The case was brought to a hearing on the pleadings and proofs, and the court, being of opinion that both the patents sued on were valid, and were infringed by the defendant, decreed in favor of the complainant. The defendant has brought this^ decree here for review by appeal.
Reissued patent No. 11,462 relates to the construction of cook stoves having three flues at the rear and bottom of such stoves; that is to say, two flues extending down the back of the oven, and at the outer end of the flue space there, and thence along under the oven next the outside of the stove, until these side flues open into a central return flue, which passes back under the oven, and up the rear thereof, between the side flues above mentioned. Such stoves had long been in use, and the patent is for an improvement upon the old construction. The patentee states the object of his invention thus:
“The object of my invention is to provide a cooking stove with a curved or swelling form of. side plates, to which the oven doors are hinged, so as to increase the capacity of the flues, and also to increase the capacity of the oven, and at the same time adding a beautiful appearance to the stove, without increasing the cost.”
The essential feature of the construction devised by him consisted of an enlargement of the rear and bottom side flues, by swelling out that portion of the side plates of the stove which forms the side wall of the flues, in a circular form, turning inward towards the edges of the plates, and hanging the oven doors considerably back of the side openings of the oven, and upon the curve of the side plates towards the rear. It is claimed that thereby the area of the flues and of the oven is increased, and the appearance of the stove improved, without increased cost in the manufacture. The claims, as shown by the patent, are as follows:
*184 “(1) The combination with a cook stove having the usual draft flues and oven, and provided with two plates forming a flue at the rear of the oven, of a curved side plate, M, joined to the aforesaid flue plates, and forming an extension of the rear flue, substantially as specified. (2) The combination with a cook stove having an oven, and draft flues extending about said oven, and down at the rear thereof at each side, of curved plates, M, forming extensions of the said rear flues, substantially as specified. (3) The combination of a cook stove having an oven, and draft flues extending- about saicl oven, and downward at the rear thereof, and at each side, of the curved iflates, M, forming extensions, U', at the top and bottom of the oven, substantially as specified. (4) The combination with a cook stove having an oven, and draft flues extending about said oven, of the curved side plates, M, R, forming extensions at the sides and rear thereof, substantially as specified.”
We come now to tbe consideration of tbe prior art in tbe construction of tbe flues. It is shown by tbe evidence in tbe record that as early as 1877, and for several years thereafter, Gordon G. Wolfe, of Troy, N. Y., made and sold a large number of stoves having a similar curvature and expansion of tbe side plate along tbe side of the flue extending under tbe bottom of tbe oven. This device of Wolfe, after some modifications, was patented to one Gobelle, of Cleveland. In this patent tbe back flue, it is said, was extended by curving tbe wall of tbe flues adjoining tbe sides. This construction of tbe Wolfe stove is testified to by tbe witness Keep, who was engaged in tbe stove business at Troy at the time; and be is corroborated by Wolfe himself, who was produced as a witness, and also by tbe witness Hagan, a mechanical expert and solicitor of patents, who examined one of Wolfe’s-stoves in 1879, while a suit was pending concerning tbe validity of a patent involved in its construction. Keep also testifies that at about tbe same time, as we understand him, one George Graves made a stove' at Troy called tbe “Señora,” which bad thé front plate of both bottom and rear flues curved and turned in at the edges. How extensively tbe Graves stove went into use does not appear. What tbe object of this peculiarity in tbe form of tbe side plates was, we are not informed; and we cannot say whether it was done to enlarge tbe flue, or to improve tbe looks of tbe stove. It is probable, however, that tbe latter was tbe main purpose, for it is not made to appear that tbe flues of tbe old construction were defective in their capacity. But it is not material. Tbe existence and prior public use of side plates in stoves making up tbe same combination as that shown by tbe patent in suit, of an almost, if not exactly, similar formation, would defeat tbe patent, whether tbe advantages of it were known to tbe manufacturers and users of tbe older stove or not. Much stress is laid upon the advantage gained by tbe widening of tbe oven produced by giving tbe swelling form to tbe side plates. Undoubtedly tbe oven is widened, relatively to tbe bottom plate of tbe stove, by curving in tbe lower edge of tbe side plate, and so relatively to the top and back plates, by tbe like curving of tbe edges of tbe side plate where tbe plates meet. And this result was obvious to tbe most common observer of tbe earlier stoves. It is difficult to find invention in discovering so plain an inference as this. And so of tbe flues. If there bad never been any previous construction of tbe kind, it would be bard to find any sufficient grounds on which to support this patent. No new function .of tbe stove is developed. Tbe results of operating it are tbe same. Tbe parts remain in substance as before. Tbe form of one of them is-changed. The result of that is that tbe top, bottom, and rear plates can be made smaller. If tbe saving thereby made was worth tbe while, it involved no invention to draw in tbe edges of tbe side plates to accomplish it. If tbe swelling form was new, and tbe beauty of tbe stove was there
“A mere carrying' forward, or new or more extended application, of the original thought; a change only in the form, proportions, or degree; the substitution of equivalents, doing substantially the same thing in the same way by substantially the sanie means, with better results,- — Is not such invention as will sustain a patent.”
This rule has been since so many times restated and applied that it has become familiar doctrine. Fox v. Perkins, 3 C. C. A. 32, 52 Fed. 205. It has been most frequently quoted in cases of the simple development- of the original thing. But the transferring by Mr. Boal of the same construction from the lower edge of the side plates along the bottom flues to the rear edge alone the rear flues-, if in fact that was new with him, would furnish an apt illustration of a new application of the original thought, such as is spoken of in the case just quoted. Indeed, it would come near 1;o- a mere duplication of the former construction to perform the like service in a connecting flue, such as was found in L. Schreiber & Sons Co. v. Grimm, 19 C. C. A. 67, 72 Fed. 671, and Clark v. Deere & Mansur Co., 25 C. C. A. 619, 80 Fed. 534. The curving of the side plates at the edges may not be identically the same in the Wolfe stove and that of the stoves manufactured by the complainant under the Boal patent, hut a mere change of form, not substantial, and not producing results distinct in their nature, is not invention. But Boal does not define the degree of curvature, and any appreciable degree would fulfill the requirements of his patent. Having this fact in view, and having no doubt that the Wolfe stoves had this formation with respect to the sides of the bottom flues, at least, and that those stoves had been disseminated widely and in public use many years before Boal’s alleged inven!.ion, we think there was error in sustaining his patent.
There is much evidence in the record in regard to the Garland stoves, which the appellee produces, as anticipating the patent in suit. It was proven by the appellee, clearly enough, that the Garland stove, which also possesses the same circular formation near the edges of tlie side plates, was manufactured and on sale prior to the date of Boal’s application for his original patent, and that Boal must have known this. But, after this proof was in, the complain
Patent No. 23,780 relates to a design employed in the form and ornamentation of the complainant’s stove. The form is stated to embody round corners on the front frame plate, the edges of which are flush with the edges of the curved door. The ornamentation consists of scroll work on the outside borders of the larger side members of the stove, and upon the body of the smaller members which lack room for the advantageous representation of such work upon their margins. Another feature of his design consists of an ornamental central portion of the oven door, in imitation of an alligator skin, inclosed in which is the nameplate or panel of the door. The specifications and drawings describe the formation and ornamentation of several parts of the stove, and thereto are appended eight claims, the first of which is for the design of the whole stove. The rest are for the distinct parts referred to in the specifications. The first claim is the only one involved in the controversy. It is not urged that anv of the others are infringed. The art of ornamentation with scroll work is ancient. The classical sculpture and architecture of the old civilization employed it in various styles, and in a variety of their productions; and its use has been continued and enlarged, not only, in the old departments of the arts, but in new and familiar productions in domestic life. Not only the columns, capitals, walls, and ceilings of buildings, and tapestries, old and new, illustrate it, but the counterpanes of beds, the covers of tables, and the borders of the pages and covers of books and magazines are some of many other things seen in almost universal use. Again, it is well known, and matter of common observation, that when the object to be decorated is large enough, and exposes its whole surface, it is regarded as in good taste and effective to dispose such decoration upon its margins, though it would not be so practicable upon smaller surfaces. All these things being so, the field for invention in decorating the plates and legs of stoves with scroll work, if it was open at all, must necessarily be limited. It could not consist, broadly, in displaying scroll work in general upon the margins of the sides and other prominent features of the stove. There must be something peculiar in the formation of the scrolls themselves, or in their relative arrangement, so as to produce a distinct effect, affording a special utility beyond any ordinary work of the kind. It was not possible for Boal to establish a monoply in the ornamentation of stoves with scroll work displayed in a way which was not distinguishable to the general observation from ordinary work of the kind exposed in appropriate places upon such an article. That was a privilege, an advantage, accruing to everybody from the progress of art. it is not necessary to decide whether his