17 F. 650 | U.S. Cir. Ct. | 1883
This action is brought against the defendant for infringing certain reissued letters patent, No. 9,368', dated August 31, 1880. The Delaware Coal & Ice Company was the owner of the original patent, No. 73,684, and brought suit in this court against the same defendant for th.eir infringement. It was found, upon examination, that although the patentee in his specifications stated the nature of his invention to consist in the funnel-shaped mouth attached to the cart, in combination with the chute and valve, he had failed to make any claim for such combination; and as none of the separate constituents, as set forth in the tnree claims, were new, the court was obliged to hold that the defendant was not shown to have infringed anything claimed in the complainant’s patent. Since then the original patent has been surrendered, and a reissue obtained, with quite a different statement of the inventor’s claims. They are as follows: (1) The combination of the body of a coal cart with a sliding extension chute, substantially as and for the purpose set forth; (2) the combination of the body of a coal cart and the outlet, having a gate or valve, with a sliding extension chute, adapted to the said outlet, substantially as specified.
The answer sets up three defenses: (1) That the reissue is void because the combination claimed is an expansion of the original; (2) want of novelty in the patent; (3) non-infringement.
The second is the only one of these defenses which seems to have merit, or which has been the occasion of any serious or extended in
The constituents of the second claim of the reissu'e are (1) the car.t or wagon; (2) the outlet, with a gate or valve; and (3) the sliding extension chute. The patentee was asked whether he thought any of these elements, separated from the others, was novel, (Com. Eec. 28-9,) and replied, “I do not think they are, but only in combination.”
The case is then presented here which was considered by the supreme court in Hailes v. Van Wormer, 20 Wall. 368, and in which Mr. Justice Strong, speaking for the whole court, said:
“All the devices oí which the alleged combination is made are confessedly old. ISTo claim is made for any one of them singly as an independent invention. It must be conceded that a new combination, if it produces new and useful results, is patentable, though all the constituents of the combination were well known and in common use before the combination was made. But the results must be a product of the combination, and not a mere aggregate of several results, each the complete product of one of the combined elements. * * * Merely bringing old devices into juxtaposition and then allowing each to work out its own effect, without the production of something novel, is not invention.”
The question, then, is in regard to the second claim of the complainants’ reissue: Is it a patentable combination, producing new and useful results, or is it a mere aggregation of old elements, each working out alone its single individual effect ?
It is not a question of easy solution, for it requires us to find the
“ The subject-matter of a supposed invention is new, in the sense of the patent law, when it is substantially different from what has gone before it; and this substantial difference, in cases where other analogous or similar things have been previously known or used, is one measure of the sufficiency of invention to support a patent. Our courts have, in truth, without always using the same terms, applied the same tests of the sufficiency of invention which the English authorities exhibit in determining whether alleged inventions of various kinds possess the necessary element of novelty; that is to say, in determining this question, the character of the result, and not the apparent amount of skill, ingenuity, or thought exercised, has been examined; and if the result has been substantially different from what had been effected before, the invention has been pronounced entitled to a patent.”
If all improvements upon existing 'organisms were patentable, there would be no doubt about sustaining at once the complainant’s patent. But sometimes better results are produced by mere mechanical skill, without the exercise of invention. The law does not extend to or cover such cases, (Smith v. Nichols, 21 Wall. 118;) nor where the change is only in degree, and not new, (Guidet v. Brooklin, 105 U. S. 552; McMurray v. Miller, 16 Fed. Rep. 471.)
The complaina'nt’s patent is undoubtedly a great improvement upon everything that went before it. The invention of William Bell .(letters patent No. 14,301, granted February 86, 185.6) was set up by the defendant as an anticipation, and it certainly contains valuable ' suggestions. His dumping wagon, however, could not be used for delivering coal in cellar windows, but only for dumping it into pavement vault-holes, where they happened to exist in front of houses, at a proper distance from the edge of the pavement, and it seems to lack adjustability for doing even this successfully.
The evidence shows that Richard Hammell, a respectable citizen of Chambersburg, was formerly engaged in the coal business in Lam■bertville, New Jersey, and that as early as 1863 he was in the habit of using chutes in delivering coal from a wagon into a cellar. He thinks that he introduced the double or sliding chutes in the fall of. 1865, and continued to use them for 10 years. The narrow end of one passed into the wider end of the other. He used the double chutes when the distance for delivery was too far for the single. When the distance was greater than the single chute, they pushed them one into the other to adjust the length. When the distance was still greater, they had chutes that would reach any house. The longest single chute was 16 feet; by combining tnem they could reach 24 feet, or more, if necessary. When more than one was used, they carried a light trestle to support them in the middle; * * * They had half a dozen such chutes, and when they had occasion put them together.
. Peter 0. Hoff was also in the coal business in Lambertville, in the
A decree must be entered for the complainant, and a reference made for an account.