125 F. 378 | 1st Cir. | 1903
This bill is based on the alleged infringements of two patents for alleged inventions—one to George E. M. Lewis, No. 607,602, issued on July 19, 1898, on an application filed on October 30, 1897; and the other, No. 675,661, issued on June 4, 1901, on an application filed on April 4, 1900, to John Lewis, a brother of George E. M. Lewis, who assigned one-half of his interest to the latter. Patent No. 675,661 covers only improvements on the earlier one. Both relate to machines for cutting “shoe-shank stiffeners” or “shank pieces” from wood veneers.
The litigation with reference to patent No. 607,602 is limited to the third claim as follows:
• “(3) In a machine for cutting shoe-shank stiffeners, the combination with the cutting-block, the knives, and the cam, h, of the reciprocating holder, i, intermediate of the knives, the lever, e', pivoted to the frame, the rods, h', connecting the holder, i, with the lever, e', the roller, o', on the extremity of e', and the spring, g', for pressing the roller, o', against the cam, h', substantially as set forth.”
All the details’ of this clam are of that class of which the common arts have many equivalents. Nothing in the record tends to prove to us, with reference to any of these details, that there is any peculiarity indicating an inventive spirit which distinguishes them from equivalent methods well known in the prior art of obtaining like movements of dfferent parts of machines. -Indeed, the complainant’s expert testifies that “the only new and fundamental and useful parts of this machine” (meaning the patented machine) “are the two obliquely placed cutting knives; their adjuncts, such as the chopping block and holder.” He adds, “I do not consider the means for operating the knives or the feeding mechanism to be new.”
The learned judge who sat in the Circuit Court dismissed the bill, so far as it relates to patent 607,602, on the ground that the supposed invention was anticipated by a machine constructed in 1892 by J. Roak Pulsifer. His opinion (122 Fed. 470) puts this with sufficient detail and clearness to save us the necessity of adding much thereto. There is here no such question as arose in Brooks v. Sacks, 81 Fed. 403, 26 C. C. A. 456, decided by this court on June 10, 1897, with reference to the existence, construction, function, and actual use of the alleged anticipation. 'Bearing in mind what we have cited from the testimony of the complainant’s expert, to the effect that the means for operating the knives or the feeding mechanism in its machine were not new, with which we agree, the Pulsifer machine was mechanically the same as that now in controversy. It was capable of doing exactly the same work, although used by Pulsifer on leather-
We must not overlook the proposition brought to our attention, and discussed in the opinion of the Circuit Court, that machines constructed under patent No. 607,602 have been used to cut out the “waste” between the shanks or stiffeners; thus, in cutting, bringing the thin edge of each bevel against the chopping block, and there supporting it during the process, with a claimed resultant of giving better work. It is enough to say, however, that the patent on its face does not show the slightest indication of this method of operation. Thus, according to the axiomatic rule applied by us in Long v. Pope Mfg. Co., 75 Fed. 835, 839, 21 C. C. A. 533, and in Heap v. Tremont & Suffolk Mills, 82 Fed. 449, 457, 27 C. C. A. 316, this subsequent method of use cannot be availed of to affect the construction of claim 3 for the purpose of saving this case. Moreover, underlying this distinction between cutting out the waste and cutting out the shanks or stiffeners, is the fact that it is a mere question of feed, which can be regulated in any machine so soon as it is perceived that it is desirable so to do. The Circuit Court was right in holding that this proposition of the complainant is ineffective.
This brings us to patent No. 675,661, in which there are several' claims in issue. This patent is for improvements in details on No. 607.602. With reference to all the claims except 15, the complainant submits to us that their characteristics are in “a common drive shaft, straight-edge cutting knives, which approach the material simultaneously, moving obliquely towards each other on their cutting stroke, and cutting out waste pieces between them, and means connecting the knives and drive shaft.” As we have construed patent No. 607.602, the word “simultaneously” introduces nothing novel, and. the only new element is the common drive shaft.
John Lewis testifies that the main difficulty in his brother’s machine of patent No. 607,602, which led to the witness’ common drive shaft,, was the disadvantage of too many connections. While it is perhaps true that sometimes the mere simplification of mechanism by omitting parts may amount to patentable invention, yet this is only under exceptional circumstances; none of which appear in the case before us. The substitution in the arts of a common drive shaft for other
Claim 15 is as follows:
“(15) In a machine for cutting shank-pieces from a strip or ribbon, a main frame, a feed-roller mounted therein, an auxiliary frame' hinged to said main frame having a roller mounted in its outer end, said rollers adapted to cooperate with each other to feed the strip or ribbon to the cutting-knives, and means for holding said rollers in or out of operative position, substantially as described.”
It is impossible to discover in this claim any novel element, unless be in the means for holding the rollers in and out of operative position. The mounting of one roller on a frame auxiliary to that which carries the main roller is certainly so common in the arts that we must take cognizance that it affords nothing new. The means for holding the rollers in and out of operative position referred to in the claim are described at great length and with much detail in the specification. They are simply locking contrivances, which also are so commonly used in the arts for holding in and out of operative position that nothing of that nature can be patentable, unless it contains something peculiar in the devices used therefor. In this respect the patent falls within the underlying principle applied in Bates v. Keith (C. C.) 82 Fed. 100, 103, affirmed by this court in 84 Fed. 1014, 28 C. C. A. 638, in the following language:
“Guides used in connection with sewing machines, and for innumerable other purposes, have been so common in the arts, and have been used from time immemorial for so many purposes, that it would be an' unreasonable state of the law which would deny as a common right to every artisan and manufacturer freedom to procure or frame guides suited for his art, or for his particular subdivision of any art. In this respect it is impossible to draw any essential distinction between the common right and privilege of every person to adapt guides to his own peculiar necessities and the like right to shape gouges or plane irons, or combine them of different shapes, according to the changing necessities or desires of carpentry, or to devise, subdivide, or change the form of boxes, or other packing eases, according to the necessities of each particular trade.”
In like manner, in Nutter v. Brown, 98 Fed. 892, 893, 39 C. C. A. 332, quoting from Consolidated Electric Company v. Holtzer, 67 Fed. 907, 15 C. C. A. 63, we said:
“In Consolidated Electric Company v. Holtzer, 67 Fed. 907, 15 C. C. A. 63, decided by us on April 6, 1895, it was said, at page 908, 67 Fed., and page 64, 15 C. C. A., that ‘the right to improve on prior devices by making solid castings in lieu of constructions of attached parts is so universal in the arts as to have become a common one, so that the burden rests on any one who sets up this improvement in any particular instance as patentable to show special reasons to support his claim.’ So, by parity of reasoning, it is so common in the arts to shift the movable point, when there is a movable point, that the mere statement that it is shifted will not enable the court to pronounce that there has been a substantial advance.”
Following these practical applications of rules for aiding in the determination of what does or does not involve patentable invention, we
The decree of the Circuit Court is affirmed, and the appellee will recover its costs of appeal.