Frederick R. Stearns & Co. v. Russell

85 F. 218, 29 C.C.A. 121, 1898 U.S. App. LEXIS 2151

Opinion

TAFT, Circuit Judge,

after stating the case as above, delivered the opinion of the court.

The first issue between the parties is whether the patent before us is to be regarded as a machine merely for lifting and holding pills, or as an element of a larger mechanical combination of parts used in the process of pill-dipping. It seems to be the view of the defendant and appellee that other things required to be used in dipping pills can be implied as elements of the claims, and that thereby the novelty of the invention will become clear from the circumstance that no device of any form embodying the pneumatic principle of complainant’s bar had ever before been used in combination with pills and a gelatine bath. To imply as elements of a claim parts not named therein for the purpose of limiting its scope, so that it may be accorded novelty, is contrary to a well-settled rule of the patent law. It was proposed to limit a claim thus in McCarty v. Railroad Co., 160 U. S. 110, 116, 16 Sup. Ct. 240. The patent there under consideration was for a car truck bolster. Mr. Justice Brown, in delivering judgment for the supreme court, said (page 116):

“There is no suggestion in either of these claims that the ends of the bolster rest upon springs in the side trusses, although they are described in the specification and exhibited in the drawings. It is suggested, however, that this feature may be read into the claims for the purpose of sustaining the patent. While this may be done with a view of showing the connection in which a device is used, and proving that it is an operative device, we know of no principle of law which would authorize us to read into a claim an element which is not present, for the purpose of making out a case of novelty or infringement. The difficulty is that if we once begin to include elements not mentioned in the claim in order to limit such claim, and avoid a defense of anticipation, we should never know where to stop. If, for example, a prior device were produced exhibiting the combination of these claims plus the springs, the patentee might insist upon reading some other element into the claims, such, for instance, as the side frames and all the other operative portions of the mechanism constituting the car truck, to prove that the prior device was not an anticipation. It might also require us to read into the fourth claim the flanges and pillars described in the third. This doctrine is too obviously untenable to require argument.”

But it is said that the claims of the patent in question here do contain a suggestion of such a combination in the opening words, “In pill-dipping mechanism.” We think these words are only used to define the useful purpose to which the patentee intended his device to be devoted, and cannot bear the construction by which all the other substances and parts used in dipping pills may be considered as making up the combination claimed.

There is a still more serious objection to such a view in the fact that the other elements which it is sought to introduce into the claims do not, when taken in connection with the specified device in any proper sense, constitute a mechanism, or arrangement of mechanical parts that can be patented as such. The complainant’s patent is for a pill-holding device, and nothing else. It is a tool for manual use. To the extent that the pump or fan, the flexible tube, the chambered bar, and the tubes or nipples of the bar co-operate to hold the pills upon the tube or nipple ends against the force of gravity, they form a mechanism or machine; but, when considered in relation to the dipping process, this machine is merely a tool exactly as a pin would be a tool used by hand to impale a pill, and to dip it into gelatine. The gelatine and its receptacle are not co-acting parts of a mechanism, of which the bar is also a part. There is no relation between them at all, except as it is initiated and maintained by the voluntary manual and continuously guiding act of the human operator. It is no more proper to describe the dipping bar as a co-element in dipping mechanisms with the pill and the gelatine bath than it is to describe the ax as a co-element of the log and the chopping block in mechanism for splitting wood. Mechanism may be defined to be the arrangement and relation of the parts in a machine, and a machine is defined by Prof. Robinson, in his -work on Patents (section 173), to be “an instrument composed of one or more of the mechanical powers, and capable, when set in motion, of producing, by its own operation, certain predetermined physical effects.” Again, he says (section 175) that “a machine differs from all other mechanical instruments in that its rule of action resides within itself.” Within these definitions, the chambered dipping bar, with its pill seats and the exhaust pump, is a machine for holding pills, and the bar, the chamber, the pump, the hollow pill seats, are parts of the mechanism, forming the machine operating upon the pills. But when the band of the operator is needed to turn the bar over, and to carry it to the bath, and to dip the attached pills into the bath, the function of the bar, so far as it has relation to the bath and the dipping process, is that of a tool. Of course, we do not mean to say that various mechanical steps taken by means of different tools or machines, in operating upon a substance to transform it from one thing to another, may not be the subject of a patent; but in such a case the patent is for a process, and not for a machine. Cochrane v. Deener, 94 U. S. 780, 787, 788; Locomotive Works v. Medart, 158 U. S. 68, 75, 76, 15 Sup. Ct. 745. Whether such a process patent might have been valid for the steps in pill-dipping pointed out in complainant’s specifications, we need not discuss, because the complainant, as a condition of getting the patent in suit, expressly abandoned and withdrew an application for just such a process patent, and he is thereby estopped from contending for any construction of his present patent which would, in effect, secure him the same thing. Sutter v. Robinson, 119 U. S. 530, 541, 7 Sup. Ct. 376; Shepard v. Carrigan, 116 U. S. 593, 6 Sup. Ct. 493; Leggett v. Avery, 101 U. S. 256. What we have to determine in this case, therefore, is whether complainant’s chamber bar was a new invention. First. Was the bar itself new? Second. If not, did its use for holding pills involve the inventive faculty on the part of the complainant, who is conceded to have first conceived such use?

The Campbell machine, for making buttons, and the much earlier devices of Walsh, for making' heads for trunk-nails, clearly disclosed the method of lifting, holding, and moving small articles, like pieces of metal, cloth, wood, and paper, from one place to another, by attaching them to the ends of hollow tubes connected with an exhaust chamber, from which the air was withdrawn by a pump fan or other exhausting device. Such devices were part of a larger machine, and discharged their functions automatically and at regular intervals. Although the principle of their action, so far as lifting and holding these articles against the force of gravity was concerned, was exactly the same as that embodied in complainant’s bar, their form was not precisely the same. The same principle was used in another art,— that of the printing press for lifting and delivering paper to the press; and in this art we find the complainant’s dipping bar complete with hardly a variation. It appears satisfactorily that what is called the “tubular carrier” of the paper-delivering device of Sanford G. Cox, patented several years before complainant’s application was filed, is substantially in the same form as complainant’s bar, operates upon exactly the same principle, and if removed from the Cox machine, as it can be easily, will hold, carry, and dip pills in the same way. It appears that no change is necessary whatever in the Cox carrier to make it suited to pill-dipping except it may be a reduction in the size of the tubes or pill seats. Differences between the two bars or carriers are suggested: First, the exhaust chamber of complainant’s bar is connected by a swivel joint to the flexible rubber tube leading to the air exhausting machine. This swivel joint is not in Cox’s carrier. But the tube connected to the chamber of the carrier is flexible, and it is quite manifest that the flexibility of the tube, if sufficiently long, would permit the performance of the same function, — that of enabling the tube to be turned over, which is the office of the swivel joint in complainant’s bar. Again, it is said that the ends of the Cox carrier tubes are not made of a semigiobular form, to form the pill seats, and have rubber rings about them. But it clearly appears that the model made according to the Cox carrier will hoid the pills without such seats, and this, too, with or without the rubber rings, which, of course, were used to make the connection with the paper sheet more close. The very triviality of the differences dwelt upon only emphasizes the substantial identity of the two bars. The Comly carrier for sheets of paper, which is a much earlier device, also quite nearly resembles complainant’s carrier in form and principle of operation; but the resemblance is not so cffise as that of the Cox carrier, and we need not further notice it:

The remaining question is, did it require the inventive faculty to conceive the use of the Cox carrier for pill-dipping, and to apply it to that art? It has long been settled that a mere use or function is not the subject of a patent, and also that “the inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he conceived the idea of the use or not.” Roberts v. Ryer, 91 U. S. 150, 157; Goshen Sweeper Co. v. Bissell Carpet, Sweeper Co., 37 U. S. App. 555, 39 C. C. A. 13, and 72 Fed. 67, and cases there cited. It would seem to follow as a corollary to these two propositions that, -where it requires substantially no change in the old device to adapt it to the new use, such adaptation cannot be the subject of a patent, no matter how remote and unthought of the new use may be, provided no new force or mode of application be necessary in carrying on such use; otherwise, in case the device has been patented, the right of monopoly of the prior patentee is invaded by excluding loin from a use of a machine which, by the rule stated and the authorities cited above, he is entitled exclusively to enjoy. If, however, the adaptation of the old machine to the new use involves a change in its form or operation, it may, by the change's and very newness of the use or function, become either a new machine or an improvement on 1he old machine, and be patentable as such; or the new use of the old machine may result in a new product, which is itself patentable; or the use may he a step in a new and patentable process. The general rule, however,' is stated by Mr. Justice (fray, in delivering the judgment, of the supreme court, in Pennsylvania R. Co. v. Locomotive Engine Safety Truck Co., 110 U. S. 490, 494, 4 Sup. Ct. 220, as follows:

“It is settled by many decisions of this court, which it is unnecessary to quote from or refer to in detail, that the application of an old process or machine to a similar or analogous subject, with no change in the manner of application, and no result substantially distinct in its nature, will not sustain a patent, even if the new form of result lias not before been coniemplated.”

Tested by this rule, we cannot think that the device of the complainant was patentable. Cox’s machine was applied to the lifting of sheets of paper by exhausting the air in the hollow points of contact with the paper. Its subject was the lifting of the paper against the force of gravity, without hooking or sticking devices. The samo principle had been theretofore applied in lifting small articles, like buttons, nail heads, and tlieir component parts. Complainant’s machine is a reproduction of Cox’s, and its use is to lift pills, and bold them against the force of gravity, without hooking or sticking devices. There is no change in the manner of operating "the machine, and the result is not substantially distinct in its nature, because it is in each case the holding of the article against gravity while it is being lifted from one place to another, — in the Cox machine, from the pile of paper to the press; in the complainant's machine, from pill magazine to the hath, and thence to the drier. We cannot think that such a use is not an analogous use, although never until the complainant did it had such a device been applied to holding up pills while being dipped. There would be more ground for maintaining that lhe use was nonanalogous, if it were not Unit small articles quite like pills had been held up in the same manner. It is quite possible that the conception of the machine by the complainant was a real exercise of the inventive faculty on his pari, because he did not know of the Cox or Comly .devices, or of the Campbell and Walsh patents; but, in judicially estimating the amount of invention in a patented device, the court is bound to assume that the history of prior patents and machines, having a hearing on the subject-matter, was known to the patentee.

The case upon which complainant’s counsel most rely is that of Potts & Co. v. Creager, 155 U. S. 597, 15 Sup. Ct. 194. ’in that ease the patentee had taken the cylinder of a wood-polishing machine, containing a series of glass bars, fitted into longitudinal grooves in the periphery of the cylinder, and, discarding the glass bars, had substituted others of steel, and provided the cylinder thus changed with an abutting roller, and then used it, not for wood-polishing, but for disintegrating clay. The supreme court held the patent valid. Mr. Justice Brown delivered the opinion of the court, and, in answer to the question whether these changes involved invention, he said:

“The answer to this requires the consideration of the often-recurring question, which has taxed the ingenuity of courts ever since the passage of the patent acts, as to what Invention really is. When a patented device is a mere improvement upon an existing machine, and the ease is not complicated by other anticipating devices, the solution is ordinarily free from difficulty. But, where the alleged novelty consists in transferring a device from one branch of industry to another, the answer depends upon a variety of considerations. In such eases we are bound to inquire into the remoteness of relationship of the two industries, — what alterations were necessary to adapt the device to its new use, and what the value of such adaptation has been to the new industry. If the new use be analogous to the former one, the court will undoubtedly be disposed to construe the patent more strictly, and to require clearer proof of the exercise of the inventive faculty in adapting it to the new use; particularly if the device be one of minor importance in its new field of usefulness. On the other, hand, if the transfer be to a branch of industry but remotely allied to the other, and the effect of such transfer has been to supersede other methods of doing the same work, the court will look with a less critical eye upon the means employed in making the transfer. Doubtless, a patentee is entitled to every use of which his invention is susceptible, whether such use be known or unknown to him; but the person who has taken his device, and, by improvements thereon, has adapted it to a different industry, may also draw to himself the quality of inventor. If, 'for instance, a person were to take a coffee mill, and patent it as a mill for grinding spices, the double use would'be too manifest for serious argument. So, too, this court has denied invention to one who applied the principle of an ice-cream freezer to the preservation of fish (Brown v. Piper, 91 U. S. 87); to another, who changed the proportions of a refrigerator in such manner as to utilize the descending, instead of the ascending, current of cold air (Roberts v. Ryer, 91 U. S. 150); to another, who employed an old and well-known method of attaching ear trucks to the forward truck of a locomotive engine (Pennsylvania R. Co. v. Locomotive Engine Safety Truck Co., 110 U. S. 490, 4 Sup. Ct. 220); and still another, who placed a dredging screw at the stem instead of the stern of a steamboat (Atlantic Works v. Brady, 107 U. S. 192, 2 Sup. Ct. 225). In Tucker v. Spalding, 13 Wall. 453, the patent Covered the use of movable teeth in saws and saw plates. A prior patent exhibited cutters of the same general form as the saw teeth of the other patent attachable to a circular disk, and removable as in the other, the purpose of which patent was for the cutting of tongues and grooves, mortises, etc. The court held that if what it actually did was in its nature the same as sawing, and its structure and action suggested to the mind of an ordinarily skillful mechanic this double use to which it could be adapted without material change, then such adaptation to a new use was not new invention, and was not patentable. Upon the other hand, we have recently upheld a patent to one who took a torsional spring, such as had -been previously used in clocks, doors, and other articles of domestic furniture, and applied it to telegraph instruments, the application being shown to be wholly new. Electric Co. v. La Rue, 139 U. S. 601, 11 Sup. Ct. 670. So, also, in Crane v. Price, 1 Webst. Pat. Cas. 409, the use of anthracite coal in smelting iron ore was held to be a good invention, inasmuch as it produced a better article of iron at a less expense, although bituminous coal had been previously used for the same purpose. See, also, Steiner v. Heald, 6 Exch. 607. Indeed, it often requires as acute a perception of the relation between cause and effect, and as much of the peculiar intuitive genius which is a characteristic of great inventors, to grasp the idea that a device used in one art may be made available in another, as would be necessary to create the device de novo. And this is not the less true if, after the thing has been done, it appears to the ordinary mind so simple as to excite wonder that it was not thought of before. The apparent simplicity of a new device often' leads an inexperienced person to think that it would have occurred to any one familiar with the subject; but the decisive answer is that, with dozens, and, perhaps, hundreds, of others laboring in the same field, it had never occurred to any one before. The practiced eye of an ordinary mechanic may be safely trusted to see what ought to be apparent to every one. As was said by Mr. Justice Bradley, in Loom Co. v. Higgins, 105 U. S. 580, 591: ‘Now that it has succeeded, it may seem very plain to any one that he could have done it as well. Tills is often the case with inventions of the greatest merit. It may be laid down as a general rale, though, perhaps, not an invariable one, that if a new combination and arrangement of known elements produce a new and beneficial result, never attaihed before, it is evidence of invention.’ As a result of the authorities upon this subject, it may he said that, if the new use be so nearly analogous to the former one that the applicability of the device to its new use would occur to a person of ordinary mechanical skill, it is only a case of double use; but if the relations between them be remote, and especially if the use of the old device produce a new result, it may, at least, involve an exercise of the inventive faculty. Much, however, must still depend upon the nature of the changes required to adapt the device to its new use.”

In the case at bar, it is true that the complainant’s device has been very useful in the art of pill-dipping, and if that alone is to determine whether a use is analogous or nonanalogous, when an old device is used in another art, the complainant’s device must he sustained as patentable. But it will be observed that Mr. Justice Brown, in this very carefully and cautiously worded discussion of the subject, includes, as very large elements to be considered in reaching a conclusion in any case, the changes in the old device required to adapt the old device to the new use, and the remoteness of the new use. Schreiber Co. v. Grimm, 43 U. S. App. 10, 19, 19 C. C. A. 67, and 72 Fed. 671. In the caso he was considering, the changes were marked. The old device would have been wholly inoperative if applied as it was to disintegrating clay. In the case before us, no change was necessary at all, except simple disengagement from other parts of a larger machine, and a mere reduction in size of the holes in the contact tubes. In Potts & Co. v. Creager the old use was polishing wood; the new was disintegrating clay. They were obviously totally different and distinct purposes. Here the old use was lifting and holding paper and small articles, and the new was lifting and holding pills. We are of opinion that, notwithstanding the utility and success of the new application of the device to pill-dipping, the circumstances that no change of form was necessary in the new application, and that the functions or purposes new and old were not wholly different and distinct, hut were substantially the same, make this a different case from Potts & Co. v. Creager, and lead to a different result. In Electric Co. v. La Rue, 139 U. S. 601, 11 Sup. Ct. 670, referred to by Mr. Justice Brown above, the invention was of a combination of parts making up a telegraph instrument, the novel element in which was a torsional spring. Such a spring took the place of elements which required the most delicate adjustment, and were always getting out of order. - The spring had never before been an element in such a combination, and had never before discharged the same function. The case has no likeness to the one before us. In Colgate v. Telegraph Co., 15 Blatchf. 365, Fed. Cas. No. 2,995, it was held that the use by the patentee of an electric wire covered with gutta-percha to insulate it was not a double use though gutta-percha had been used for protecting from abrasion or injury from without a metallic wire which was not used to conduct electricity. Here the new use involved a new force. The wire and the covering each discharged new functions, and the invention was manifestly á different one from that involved in merely covering wire to protect it. The cases of Williames v. McNeely, 64 Fed. 766, and Williames v. Barnard, 41 Fed. 356, cited for appellee, throw little light on the case at bar, because in those cases the patents were sustained on the ground that ingenuity was shown in devising the mechanism needed to apply the principle of the old machine to the new use.

The cases in which it has been held that an old machine applied to a new purpose is not a new patentable machine are so numerous that it would take too much space to cite them all. ’ In addition to those already cited may be mentioned Howe v. Abbott, 2 Story, 190, Fed. Cas. No. 6,766; Bean v. Smallwood, 2 Story, 408, Fed. Cas. No. 1,173; Knapp v. Morss, 150 U. S. 221, 14 Sup, Ct. 81; Aron v. Railway Co., 132 U. S. 85, 10 Sup. Ct. 24; Ansonia Brass & Copper Co. v. Electrical Supply Co., 144 U. S. 11, 18, 12 Sup. Ct. 601; Trimmer Co. v. Stevens, 137 U. S. 423, 11 Sup. Ct. 150; Dunbar v. Tack Co., 4 Ban. & A. 518, Fed. Cas. No. 4,127a; Moffitt v. Rogers, 8 Fed. 147; Miller v. Foree, 116 U. S. 22, 6 Sup. Ct. 204; Manufacturing Co. v. Cary, 147 U. S. 623, 13 Sup. Ct. 472; Kay v. Marshall, 2 Webst. Pat. Cas. 36; Harwood v. Railway Co., 11 H. L. Cas. 654. The case of Manufacturing Co. v. Cary had some noints of resemblance to the case before us. The patent there was for a process of restoring the resiliency of furniture springs by heating them to a great heat. The invention was said to- have revolutionized the art, but it was held that the prior use of the same method for tempering wire clock bells and blued hair springs in marine clocks made the patented process only a double use, although the furniture and clock-making arts would not seem to be very nearly allied. Following language used in McClain v. Ortmayer, 141 U. S. 419, 428, 12 Sup. Ct. 76, the court said of the argument founded upon the extent to which the article had gone into use that, “while in -a doubtful case the fact that a patented article had gone into general use is evidence of its utility, it is not conclusive even of that, much less of its patentable novelty.” See, to the same point, Knapp v. Morss, 150 U. S. 221, 14 Sup. Ct. 81.

Prof. Robinson, in his valuable work on Patents (section 269), states the rule which he conceives to be applicable to a case like this as follows :

“Where an invention consists of a specific force applied in a specified manner, but without reference to specific objects, diversity of use may arise from a change of objects, the diversity being double use if the substituted object were already known as capable of substitution, but being a new invention if this susceptibility of that object were first discovered by its use.”

Even judged by this rule, which is certainly more liberal than that laid down in many of the authorities, we cannot see how any other conclusion than that already expressed can be reached in the case at bar. It was. known that pills had the same susceptibility of being held up against the force of gravity by pneumatic pressure that other small articles and that paper sheets had. Of course, pills had not been so lie I cl; but, assuming a knowledge (hat paper, buttons, small pieces of cloth, metal, cardboard, and nail heads could he so lifted, there was nothing about a pill which would lead the ordinary observer to suplióse that it was not equally susceptible to the same operation; hence the use of the same device fdr holding pills was a double use, and not a new invention.

A suggestion has been made that the pill, being rather soft and round, might suggest difficulties in the creation of a partial vacuum behind it, that would be absent in hard bodies, like buttons and nail heads, because the latter would make a closer contact with the cupule or sucker tube; but we cannot think that there is anything of substance in this suggestion. The question of a sufficient vacuum is only a matter of degree, and it was manifest that the difficulty, if any existed, might be obviated by a slight change in the form of the tubes at their ends, and in the power of the suction. The conclusion we have reached makes it unnecessary to consider the question of infringement. The decree of the circuit court is reversed, with directions to dismiss the bill.