American Strawboard Co. v. Elkhart Egg-Case Co.

84 F. 960, 1898 U.S. App. LEXIS 2715

• Court: U.S. Circuit Court for the District of Indiana
• Decided: January 27, 1898
• Docket: No. 112
• Status: Published

Opinion

BAKER, District Judge

(after stating the facts). The patent in suit is for a process in manufacture, and not for the mechanism employed, nor for the finished product of such manufacture. Le Roy v. Tatham, 14 How. 156, 22 How. 132, establishes the doctrine that the application of a newly-discovered principle to known objects, through'known means used in an accustomed manner; and producing a previously known result, constitutes a patentable process. In that case the invention did not consist in the novelty in the machinery, but in bringing a newly-discovered principle into practical application, by which a useful article was produced. Mowry v. Whitney, 14 Wall. 620, decides that the application of a known force to a new object through known means used in their accustomed manner, producing known effects, constitutes a patentable process. Cast-iron car wheels bad never been subjected to an annealing process in connection with slow cooling before the process was discovered or invented by Whitney. A new and previously unknown result was thus obtained. In Foote v. Silsby, Fed. Cas. No. 4,916, 14 How. 218, it is held that the application of a known force to known objects, through known instruments used in a new manner, and producing a useful result, either new or old, constitutes a new and patentable process. Each of these arts constitutes a new operative means. In the first, the force is new; in the second, the object; and in the third, although the instrument is old as a concrete embodiment of one idea of means, its new use, producing a useful result, constitutes a means of an entirely different character in respect of the operation in which it is now employed. Beyond these three, no result of an inventive act can be conceived. Tested by these principles, the process of the complainant’s assignor involved no act of invention, ifo new force is employed. The force employed is mechanical, except the elasticilv of the board which operates to straighten the flexed interlocking points which had been forced out of a right line by mechanical pressure in putting the two sets of strips together. The elasticity of the board is not new, nor was it new with the complainant’s assignor to discover that an elastic substance, when sprung out of its natural position by mechanical force, would, when such force is removed, return to its normal position. The object sought to be obtained was old, namely, the interlocking of two or more strips together by the means here used. Nor was the manner of its use new. It is an old use of elastic substances to flex them to one side by mechanical force, and then to have them return to their normal shape and position when the force is removed, by reason of the elastic force inherent in them. Elasticity is the known law of (heir nature, and the use of it in a known maimer does not constitute an inventive act. Besides, the patentee does not claim the use of the elasticity of the strawboard as a part of his invention. He claims as his invention “the manner of holding the strips while they are being put together.” Every step in the process was old and familiar, except, possibly, the assembling of the two sets of strips at an oblique angle. But it can hardly be contended that the assembling of the strips at an oblique angle, in view of the prior art, would constitute a patentable process. It seems clear enough that the complainant’s assignor could not claim as his invention the assembling of strips at every degree of obliquity less than a right angle. Given the interlocking strips, the method of putting them together so as to avoid the fracture of the interlocking points would he a matter involving mere skill and experience, and not invention. Diagram Pig. 2 in the Shepard patent shows that the strips were assembled obliquely, and not at right angles. That the strips were put together hv hand in the Shepard patent is immaterial, as complainant’s patent discloses no mechanism for use in practicing its process. Shepard, in his patent, clearly describes the method of availing himself of the sidewise bending of the interlocking points, and of their elasticity in springing back into place in assembling his strips, which is the precise object of the complainant’s process. 'McCarren’s patent describes the same thing. He says the flexibility of the material used in the construction of egg-cases permits the interlocking points to spring away from the solid part of the strip until the slot or opening is reached. It is clearly implied that when the interlocking point reaches the slot or opening, having been previously flexed, it springs into place. I am therefore of opinion that the complainant's process discloses no inventiYe act.

But if it were conceded that complainant’s patent disclosed invention, X am of opinion that it is for a mere mechanical process, and hence invalid, under the doctrine announced in Locomotive Works v. Medart, 158 U. S. 68, 15 Sup. Ct. 745, and Glass Co. v. Henderson, 15 C. C. A. 84, 67 Fed. 930, 34 U. S. App. 19. The principle deducible from these cases is that when the process is mechanical, and involves no chemical or other similar elemental action, it is not patentable. Or, as stated in the last above cited case, where the process is mechanical, and there is involved no chemical or other elemental action which is separable or distinguishable from the functions of the several mechanical devices which are employed to effect the result, it is not the subject of a patent. The defendant’s expert testified that the complainant’s process was purely and essentially mechanical, as distinguished from such processes as involved chemical or other elemental changes, of such as operate to change the condition or substance of the matter operated upon, or such as take place through the operation of heat, electricity, or other such elements. This statement was neither explained nor denied by complainant’s expert. I am of opinion that the view of the defendant’s expert is the true one. The cutting of the strips, the forming of the interlocking notches and points in the same, the assembling of the sets of strips one below and one above, obliquely to each other, and then thrusting the upper set of strips down upon the lower ones so as to form a partially collapsed or diamond-shaped cell-case, are all purely mechanical processes. The bending or flexing of the interlocking points in putting the two sets of strips together, is mechanical. The only thing in the whole process which is not purely mechanical is the returning of the interlocking points to their normal position on the removal of the mechanical pressure. This results from the elasticity of the substance. This quality of such substances is as old and well known as the substances themselves. The use of this quality of such substances is old and familiar, and is shown to have been availed of in the process of manufacturing egg-cases before complainant’s assignor applied for his patent. The utilization of this quality of strawboard in the complainant’s process cannot, in my judgment, rescue the patent in suit from the claim that it is purely mechanical.

The patentee, in the specification preceding his claims, has clearly stated in what his invention consists. He says:

“My invention relates to the manufacture of cell-cases which are made hy locking together from their edges strips of strawboard or other suitable material, for the purpose of transporting' eggs or other articles, and it is in the manner of holding- the strips while they are being put together that the invention consists.”

Thus he explicitly limits his invention to the manner of holding the strips while they are being put together. The complainant’s expert testified, and, in my opinion, correctly, that the diamond-shaped cell-case forms no part of complainant’s patent. He admits that if a person should take strips in each hand, and hold them obliquely, and thus placo them across each other one by one until he had constructed a partially collapsed cell-case haying .‘56 cells, it would not Infringe the complainant's patent. These admissions make it clear that the assembling of two sets of strips, one by one, at an oblique angle, constitutes of itself no part of the manner of holding the strips while they are being put together. Hence others would have the right to pur two sets of strips together at an oblique angle, unless they put them together in sets of two or more strips at a, time. But no process of putting two sets of strips together at an oblique angle is conceivable except by some mechanical device. Nor is it possible to conceive of such a process as something separable and distinguishable from the function or mode of operation of such mechanism. The patent for the process in suit is nothing more than an attempt to secure the function or mode of operation of purely mechanical devices. If the patentee had described clearly and fully the mechanical devices by means of which the two sets of strips were held obliquely while they were being put together, he might have secured a patent for them; but not for the function or mode of operation of such devices. As his process can only be practiced by purely mechanical means, it is the result or function of mechanical devices as certainly as though tie had described and patented the mechanism by which ike result was produced. The funcuon or mode of operation of a mechanical device is not patentable as a process; certainly not where the process is not separable or distinguishable from such function or inode of operation. Besides, the complainant’s patent: fails to disclose any means by which ids process can be reduced to practice. It cannot be claimed that the description of the process would suggest to a person skilled in the art the means intended to be employed in reducing the process into practice. The means of practicing the process must' be described, unless the description of the process itself plainly suggests the means. Tt: may well be doubted whether the process practiced by the defendant is an infringement of that protected under the complainant’s patent. If one of the steps claimed as essential is omitted, and its place is left unsupplied, or if for it. is substituted a step which the patentee intended to avoid, or if the succession of the acts is changed in any material degree, the identity of the invention practiced with the pahmted invention is destroyed, and the former is not an infringement. 3 Rob. Pat. § 925; Arnold v. Phelps, 20 Fed. 315; Hammerschlag v. Garrett, 10 Fed. 479; Cotter v. Copper Co., 13 Fed. 234; Fish Co. v. Roberts, 12 Fed. 627; Russell v. Dodge, 93 U. S. 460. The complainant’s patent discloses no mechanical devices which can be used in the practice of its process. Its process comprises the following steps: The forming of the strips, providing them with suitable interlocking slots or notches, assembling one set of strips in a suitably spaced group, placing the strips of the second set across the first at an oblique angle, and pressing the strips of the second set into the slots or notches of the first set of strips. The first step in the process is (lie forming of the strips of suitable length and width. It does not appear that the complainant’s process can be practiced in any other manner; and it would seem to be an indispensable element in its process. The defendant’s process consists in uniting by suitable mechanism the ends of 14 continuous sheets of strawboard, 7 on each side, simultaneously, and afterwards severing these interlocking ends from the continuous sheets, thus forming an egg-case filler. • The defendant’s process seems to be purely mechanical, and it makes use of continuous sheets of paper, which are not severed into 'strips until the egg:case has been completely formed.

The stipulation- of the parties shows that the defendant is making cell-cases in accordance with claims 2 and 3 of Smith’s patent, No. 507,761, which consists in presenting “two series of continuous sheets,” which are not severed until the cell cases have been completely formed. As it was decided in the interference proceeding that the Williams .invention wás prior to that of Smith, it may be safely assumed that he would not fail to claim all of the Smith invention which he truthfully could. But with Smith’s claims 2 and 3 before him for the construction of cell-cases by presenting two series of continuous sheets, he limited his claims to two sets of strips, thus taking from Smith only his first claim. It thus appears that Williams did not venture to claim in the patent office either that he conceived the idea of uniting two series of continuous sheets, or that his two sets of strips were the same thing as the defendant’s two series of continuous sheets. He ought not now to be permitted to set up a claim which he failed to assert in the patent office. The fact that the defendant was granted claims 2 and 3 is cogent evidence that the Williams invention could not rightfully be enlarged to cover these two claims in the defendant’s patent. But, without definitely deciding the question of infringement, I am of the opinion that the complainant’s patent is invalid. The bill will therefore be dismissed for want of equity, at the complainant’s cost.