ClONSoLID'A'l'En, BOLLER-MILL CO.· tI.,·WALEEB.

676

additional' class of non-mailable mattel'; and. that if tile pubUcation iI of an indecent character it falls within the 'prohibition of the statute, although not be obscene, lewd, or It'is not necessary in this case to decide. whichof these views of the sectfonis correct. If it be admitted that the words named do define a further class of nonmailable matter, as is claimed 9Y the district attorney, Ilevertheless the class thus defined includesonlypnblicr.tions of an indecent character, and a letter is not a publication within the meaning Q{this clause. In theC8Se 'of U. B.v. ChaSe, 135 U. S. 255, 10 Sup. Ct. Rep. 756, the question whether the sending a letter from one person to anothflr made it a publication within the meaning of the statute is discussed, end the conclusion reached that "the statute prohibits the conveyance by mail of matter which is a publication before it is mailed, and not such as becomes a publication by reason of . its being mailedj" and therefore that a letter was not included within the words "other publication. case arose under the statute as it was before the amendment of 1888 'Was but the, construction of the phrase, publication," as fOJ)nd in the statute before the alDendlDent, is applicable to it as it now .the amendment. The letter, therefore, set up in the preseptindictment, not. being a publication within the meaning of the stat. not being of an obscene, lewd, or lasciviousobaracter, does not falHvitbin the prohibitionof,tbe statute, and the indictment fails to, Ibow ,the commission of ai;t. offense against its provisions. J)emurrer iI lustained.

CoNSOLIDATED (CCf'CUU

RoLLER-MILl. Co.

f1.

W ALOR.

W. D. PmmyZ1lanfd.

Beptembltr 12, 1890.)

l.PA'l'IilftIII'OB SKILL. The first claim of letters patent No. 228,525, grant'ld June 8, 1880, to WWlam D. for improvements in rolJer grinding-mills. namely" (1) In a roller grindi,ngmill, the cODlbi,nation o.f tbe counter-shaft, prOvlded with pulleys at botb end&; and having saidendll mounted invertlcally and independently adjustable bearings, the rells,C. E, having pUlleys collnected by belts with one end of the counter-sbaft, and thtl rolls, D, F ' independently connected by belts with the other end of the eounter-llhaft,u sh ()wn," doee 'not disclose any patentable'subject-matter. The application ot belting to drive roller grindillg"wills did not .l¢.ginate and his peculiar arrangement resulted at most ttl an improvement in degree merely, and said combination evinced only tbe exercise of ordinary meeb8nieal or engineering skilL .. STATB OJ' ABT. In 'view of the terms of thespiloifioatioll and the prior state of the art, said olalm C()uld, npt be so, 001'lstrul'das to cover a roller-mill manufactured:in accordance with lett.ers patent No. 834,460, granted January 19. 1886, to John T. Obenchain·
.. SAMs-FOREIGN PATENT.

By the Austrianpatent law, thefb;ed longest duration of II patent for an Uon 1815 years, and every patentee wbose prlvilege bas been granted for a shorter pe.lri.00. than tbe.lo,ngest may: c.la.im.its prolongatio.n for one·.o.r m.or.8 years wit.b'in' the fixed longest period, prOVided such prolongati,on be demanded before the privilege bail beCODle extinct. In the origInal grant of an patellt, the allowance of . ,the' ,franchise was for one year·. but on request it was four times extended; from and at the end of.the,1ifth .:real" the franchise wu, to eliPil'e. , 781U'.to

'FEDERAL REPORTER"

vol. 48.'

A, United States patel1t,to the,samepatentee. and for the same invention, was iswed after theA1istrian patent was and during the first year it was in force. lleld, that by the original grant of tlie Austrian patent the patentee was invested with the right,at,his mere option, to have the patent prolonged for the full term of 15 years, and tbat, under section 4887 of the Revised Statutes, the United States patent ran for tbat term, notwithstanding the expiration of the Austrian patent at ,, the end of it 1 fifth year. ' , 4. SAME-DECISION OF FO,REIGN PATENT-OFFICE. .' .. ' Under the Austrian patent law, 'the ministry of commerce, In deciding the ques,·.tion of the length of the term which appertains to every Austrian patent, exercises a judicial function, and on will befollowed here, agreeably to the established rule that the courts, of the United StatEls adopt the construction of a statute of lIo'forei«ncouutry made by the courts of that count17.

InEquity. R. Mason, for complainant. ParJ.;inson Parkinson, for dtlfendant. Before and ACHESON, JJ. ACHEsON,J. The bill in this case charges the defendant with the infringement of two patents relating to issued to William D. Gray, and the other to Udolpho H. Odell; butat the final hearing the suit was pressed' only as respects the former patent, and hence the Odell patent may be dismissed from consideration. Theratent to William D. 'Gray is No. 228;525, and was granted June 8, 1880, upon an application,filed May 2, 1879. Gray's inverttion relates to that class of mills in which horizontal grinding-rolls arranged in pairs are employed, and consists, the specification declares, "in the improved arranget'nent of belts and pulleys for communicating motion to the rolls, and in other minor details." The patent contains several claims, but infringement of the first claim only is here charged. That claim is in these words:
"(1) In a rol}er grinding-mill, the combination of the counter-shaft, provided with pulleys at both ends, and having said ends mounted in vertically and independently adjustable bearings. the rolls, C. E. having pulleys connected by belts wi'thone end of the counter-shaft; and the rolls, D, F, indeas pendently connected by belts with the other end of the
" , , ,,'

shown."

TheitnsWersets up, among other defenses, want of novelty and want of patentability Bnd non-infringement. After stating in his specification that drivillg by gearing occasions great noise, and also a jarring of the parts of the trembling of the mill-floor, in turn causing atJ,unevenness in grinding, and a rapid and uneven wear of the rolls, Gray adds-:
"To obviate these difficulties, and produce an even. steady motion, I disc\ud the gearing hitherto employed. and substitute therefol' a system of belting arranged ina peculiar manner, to give the proper direction and speed to the rolls."

And he mentions, as incident to his arrangement of belting, the further advantage that, by simply removing the pulley of any shaft and replacing it, with another of proper size, any desired difference in the speed of the rolls may be obtained, which he states cannot be accomplished, except by a complicated arrangementof intermediate wheels, where gear-

CONSOLIDATED ·ROLl.ER-MILL CO. tI. WALKER.

577

ing is used. The specification, after referringto the accompanying drawings, explains the arrangement of the belts thus: "N reprp,sents the main driving belt. which passes to and around the pnlley, c, of the roll, C, thence downward, and around pulley, b, of the countershaft, B. thence upward. and around pulley, e, of the roll. E, and back to the source of power. imparting to the rolls C and E a motion in one direction. and to the counter-shaft a motion in the rever!le direction. From the pulleYl;l, b,b, on the rear end of the connter-shaft, B. belts, P and R, pass up.· ward and around pulleys, d andf. of the rolls, D and F, as shown in Fig. 2, imparting to said rolls a motion the reverse of that of the rolls, C, Eo In this way the two rolls of each set are caused to revolve towards each other while being all driven from a common source primarily." To fully understand the particular claim of the patent involved in this controversy, {me other paragraph of the specification must be quoted. "In order to adapt the counter-shaft, B. to perform the double purpose of reversing the motion of certain of the rolls, and of acting as a belt-tightener. itis mounted, at opposite sidf'S of the frame or body, A. in boxes swiveled or hung in yokes, L, slidi ng veI'ticaIIy in gUides or boxes, K, and adj usted up and down therein by screw rods or stems, 8; the swivel-boxes permitting a slightly grelltei movement of the shaft. B, at one end than at the other. out interfering with its free rotatlOll, and thereby permitting the tightening of the belt or belts at one side of the machine without disturbing those at the other." Gray's specification, as our quotations therefrom indicate, suggests the idea that he was the first to apply belt-drives to roller grinding-mills. But the fact is otherwise, as the/proofs abundantly Show. Nor was he the first to discard from such mills cog"gearing and frictic;m gears altogether, and substitute therefor belt-driving. Confining our attention here to Mechwart's Austrian patent, granted August 3, 1875, we find therein distinctly set forth. the disadvantages resulting from the use of spur-gearing in roller grinding-mills, viz.: the disagreeable rattling, the rapid wearing away of the gears, and the unequal movement and Unequal wearing away of the rollers, and also the inefficiency of driving by means of frictional contact betw'een the rolls, which latter, it is set forth, is only practical when the chop passes the rollers in very thin layers, and not in coarse particles, and is not applicable when an unequal peripheral speed of the rolls is required. All these disadvantages, it is declared, are avoided by Mechwart's'invention, which consists in driving both co-operating rolls by means of belts, whereby, a1eo, can be obtained an equal and also an unequal peripheral speed, while the diameter of the rolls, as well as the diameter ofthe belt pulleys, can be varied relatively to each other for different objects. Mechwart's drawings show as examples six different arrangements of belting, which he states are intended to illustrate "only some of the different arrangements of the belt-drive for roller-mills, without exhausting the possible variations in its application." Fig. 3, sheet A, !lhows a machine having two pairs of grinding-rolls, the pairs being vertical, and arranged side by side. A shaft, mounted in the machine frame in fixed, bearings, carries two pulleys, one at each side of the machine. Alielt from one of these pulleys passes around a tightening pulley at the upper right-hand· corner of the v.43F.no.9-37
1

thence arounda,pulley ontha roll-shaft, thence around a pulley on the lower and thence back to and,by ,t.his belt'one roll of each paids driven. From the other pulley, on the other side of the machine, a belt is arranged' ina similar D'lanner, 110 as to drive'the other two roBs of the pair. Without fur,ther description :of the Mechwart system, it IS enough to say that his. disclosed roller grinding-mills, single and double, with both verticiU I1nd horizontal, pairs' of rolls arranged sidebysidl;l, driven by exclusively; his machine being equipped with adjusting or tightening pulleys, and having a shaft journaleddirectly into the machine frame, and receiving 'its motion from the prime mover of the mill,:,either direotly'or by belt. But»tw'tling now, to machinery .employed in the.iU'tsgenerally, it it. certainthaUhe use of int,.embangeably with or asa substitute forcog"gearingw8s very old and common before Gray's alleged invention. Itwas,too,anold and familiar expe<Iient to keep the belt adjusted to a 'offIghtness by mearis,bftightening pulleys,. the shaft of whiCh 111;1 revolving sometimes did othl,:irwork'about the machine; and sh,at"iS 'bli'd 1;>een made movable in sp,cp. ,manner as to, tighten belts pass-. big on other shafts. !twas also. old, and very common in machine-shops and factories of various kinds, to provide an individual machille with a counter-shaft, mOUllted directly in. the maphine-frame, the, being driven a belt from the line-shaft and the chine bya the counter-shaft, ',Furthermore, it was no new thing to provide tb.. jourpal boxes Qr, qange:rs in which counter-sbafts are mounted independently adjusting the. ends of,the shaft. In vipw:ofthesfl things, tl;len, we are to discQver any patentable in the claim, ofGray'a patent. The case, it seems to \1,8, falls within,the.8!!tablillhed principle application of old proc8I!8'IIlachine,or device toa like or analogoullpurpose, with n9 change in, the, mode applicatioD" .and no rel\ult differ- . ent in will not. sustain a patent, even if the of result has not before' beenc,ontemplated. Pennsylvania R ·. OJ. v. .LocorrwtivtJ E!S. T.Ch., 110U. S. ,490,4 Sup. at. Rep. 220j Blak6 v. San Francisco, 113 U. S,,619, 5 ..Rep. 692.: ,Moreover, it is quite clear that the of,beltin,g Jp drive r911er grinding-mills, to obviate the t() useQf cog-gearing, llndto secure the advantages set forth iJ;l,Gray's did not originate. with him. Therefore, \'Vere pecu1iara.rrangement is attended with results t4fUl ha.d previously, ,still this ppt sustain the the forward of ano:rigiI1.!U conception, r., filulting.in in degree s,mply, i,lj oRt invention. Burt v. l!lvoryJ 133,U. 394. After the most careful study of ,tQ:esubject,we ,think is unavoidable that forth in Gray's firat claim evincjls onlY the exercise of ordintll:Y: or skill, as the· same '. has been defined I>.y the. supreme court and by so many recent decisions of that v.ManuJ(Lcturing 00·· ,113 U. 59, 5 Sup. Ct. Rep.

OONSOLIDATED'ROLLER-MILL

co. ,,;

\tALKER·

(579

. 17; ,Thompsonv.BoisBdier, 114'U. S.1,5Sup; Ct. Rep. 1042; Aron \1. 7 Railway Co., 132 U. S. 84, 10 Sup. Ct. Rep. 24j HiU v. Wooster, 132 U. S. 693,701, 10 Sup. Ct. Rep; 228j Howe Machine 00.\1. National Needle Co., 134 U. S.388, 10 Sup. Ct. Rep. 570. It seems to be proper Jorus to add that: our judgment is with the detEmdant upon the defense of non-infringement' also. To understand' the nature·of the invention intended to be covered by the first claim, resort must be had to the specification, and we there find that the "swivelboxes" are essential to the contemplated greater movement at one end of the than at the other, whereby is effected "the tightening olthe belt or belts at one side of the machine without disturbing those at the other." This is apparent on the face of the paragraph hereinbefore quoted at length; and the expert testimony is direct and convincing that, to th.e practical working of the described device as a belt-tightener, this swiveling feature' is indispensable. Without the swiveled boxes Gray would not adjustable bearings." True,those boxes are not 13xpresslymentioned in the claim, but wE-think they are to be regarded as entering therein by necessary implication, for the reason just stated, as well as by force of the words "as shown." Moreover, the prior state of the art would limit the claim to the specific organization shown and described. Caster Co. v. Spiegel,133 U.S. 360, 369,10 Sup. Ct. Rep. 409. But that organization the defendant does not use. His alleged infringement consists in the use of a roller-mill, manufactured under and in accordance with letters patent No. 334,460, granted January 19,1886, to John T. Obenchain. In the defendant's machine the journal boxes are rigidly supported, so as lobe always horizontal, and incapable of any tilting or swiveling motion; ,and this is essential to the working of the apparatus. , A cpntinuous counter-shaft is not employed, but three coupled base-shaftsj' the outer shafts or sections being each journaled at the outer end in a vertically adjustable non-swiveling box, and the inner end of each being forked and carrying a loosely pivoted ring. These two rings are connected by a tumbling-rod, forked at each end and pivoted to the ri[lgs, thus forming.a universal coupling; and thereby, through the central shaft or tumbling-rod, rotary motion is transmitted from one of the end-shafts or sections to the other, no matter how much they may differ in vertical position. . . Now, for the reasons already given, we are of opinion that such a constmction of Gray's first claim as would embrace the Obenchain device is inadmissible. The foregoing views being decisive of the case, we deem it unneceS(mry for us to consider the other grounds of defense. I am authorized by Judge McKENNAN to state that he concurs in the conclusions announced in the foregoing opinion. .
(October 10,1890.)

,J.. Since the filing of our opinion we have been by the plaintiff's· counsel,with a view to the final determination of the rights of the parties under a contemplated appeal to the supreme court after decree'entered, to consider and pass on the question raised by the

580

I'ED;ERAL REPORTER,

vol. 43.

answer,as to, th!3 effect of the expiration of two foreign patents,vi:l:., a German. patent and an Austrian patent, granted to William D. Gray upon the term. of his United States patent, and, as the proofs are full, and the question was elaborately argued, we accede to the request. As, German patent, little need be said. It was granted March 5 J 1:879, for tp-e usual term of 15 years, and expired and was canceled in cons,equence of the failure to pay the tax for the seventh year of the term. The case, then, as respects this patent, comes directly within the ruling of the supreme court.in Pold v. Brewing Co., 134 U. S. 381, 10 Sup.Ct. Rep. 577, in which itwas held that, under. section 4887 of the Revised Statutes, a United States. patent runs for the term for which the foreign patent was granted, notwithstanding the lapse or forfeiture of the .foreign patent by the non-observance of a condition subsequent prescribed by the foreign patent law. By the fourth section, cl. 25, of the Austrian patent law, (the imperial decree of August 15, 1852; 1 Abb. Pat. Laws, 15,) in force when Gray's United States patent was granted, "the longest duration of priv. ileges is fixed at fifteen years." Clal;lse 27 provides as follows: "Every patentee whose privilege has been granted for a shorter period than tlW longest may claim its prolongation for one or more years within the fixed longest period, provided they demand such a before the privilege has become extinct. To obtain such a prolongation, a for the same mus.t be delivered in due time, together with the original patent, and the tax in full for the required term of prolongation, or the receipt for the same from a pUblic treasurer." TheAustrian patent to Gray was granted December 17, 1879. The term of thefranchise as originally allowed was for one year, but on request it was four times extended, from year to year, and at the end of the fifth year the franchise was suffered to expire. The seventh section, c1. 42, ofthe Austrian patent law, provides thus: "The ministry of commerce and trades alone decides. the question whether ',a patent, from any legal cause whatever, 'is to be considered as null and void, 'or asextitiCt. .It therefore especially decides the question of the novelty of a discovei'y, invention, or improvement; moreover, the question as to whether , ,it had only been imported from abroad, and was not appropriate fora privilege. incontjlstations l\rlsing between two patentees, the ministry decides the question of the total or partial identity of their privileges." The plaintiff has put in evidence a duly authenticated copy of the official opinion of the Austrian ministry of commerce, dated October 10, 1888, from which we quote: "The imperial and royal ministry of commerce certities herewith: (1) That according to sec. 25 of the imperial decree of August 15, 1H52, No. 184 of the Publication of the Laws of the Realm, the longest term of duration for all patents granted is indiscriminately fixed at 15 years, which longest term of the patentee fulfills the condiduration runs on ,tions mentioned, (sub. 2;)and.that this original term oU5 years appertains to every Austrian patent granted in acCordance with the imperial decree of August 15, 1852, No. 184 oHhe Publication of the Laws of the Realm, without excepti\>ll. ... ... "' ·. (3) That in so far as in the dead of an Austrian grallted;accordins:t(l theabove-w.entjpned law one or more years Ilre

CONSOLIDATED IWLLER-MILL CO. II. WALKER.

581

named in connection with the statement of the grant of the patent, this reference to one or more years has exclusively the purpose of stating that the annuity bas oeen paid in advance for one or more years, and tnat. by such reference the actual term of the patent is by no means touched upon, this term being, as above mentioned, fixed at tbe term of 15 years."
It is, we think, clear that under the Austrian patent law the ministrjr of.commerce,in deciding the question when patents terminate, exerciseiS a judicial function; and, Hso, then its opinion on that subject, cited above, is controlling here, agreeably to the established rule that the courts of the United States adopt the construction of a statuteofa foreign country made by the courts of that country. Cathcart v. Robinson, 5 Pet. 264. And upon that view it would foU.Qw that by the original grant of the Austrian patent to Gray he was really invested with the lawful term of 15 years, although the grant of the franchise purported to be for one year oBly. But, upon an independent consideration of the question, the same practical result, in our opinion, must be reached. In Refrigerating Co. v. Hammond, 129 U. S. 151, 9 Sup. Ct. Rep. 225, it was held that where, under the Canada act, a patent was originally period of five years, but there '\Vas 'an granted January 9, 1877, for extension for a further period of five years, and then a second extension for a like period, the extensions being a matter of right at the option of the patentee, a United Rtates patent granted during the first period of the Canadian patent did not expire before the end of the 15 years. Now that the fact that the Canadian patentee exercised his option, and thus kept the patent in force, was not a controlling circumstance, appears from the declaration of Mr. Justice BLATCHFORD, who, after'reciting the the faets, says: "'fherefore, the Canadian patent does Ilot expire, and it never could have been properly said that it would expire, before Jan)lary 9, 1892." This observation was the subject of special comment ill the opinion of the court, delivered by the same learned justice, in Pohl v. Brewing Co., supra, which established the principle that the duration of a United States patent is not affected by the fact that a prior foreign patent has been suffered to lapse by non-payment of a tax, or for other failure to comply with the requirements of the foreign patent law. . It seems, therefore, to be the logical and necessary conclusion from these two decisions of the (?upreme court, that, if by the foreign law un'der which a patent is granted, the patentee, by virtue of the original grant, is invested with the right, at his mere option, to have the patent tended or prolonged for a fixed term, it is this latter term which limits the United States patent, under section 4887 of the Revised Statutes. Thus is the life of the United States patent definitely fixed when it is granted, and its duration is not left in perplexing uncertainty, ing upon the future exercise of an option in a foreign country, or the observance there of conditions subsequent. We have only to add ,tha.t Gray's right to prolong his Austrian patent for theflll1term of 15 years was as clear as was the right of the Canadian patentee in Rifrigerating CQ. v. Ham'llWnd, supra.

iFEDlmALltEPORTER I

vol. 43."

j",(i)ur()OIiclusion'hetedoes notcob6ictitith the dMision in"CG1nmercial U ·. S..176,10S.UB- Ct. Rep. In below Rep. 78) and In the suprltme ItSto the Identity of the Ulllted States patent with the Austrian patent. Upon this branch of the case, then, our j\1dg:ment is favorable to the plain tiff j but, for the reasons expressea ,in our original opinion, the decree must be for the defendant. ' ;Let. it.idecree be draWindismissing the bill of complaint, with costs.,
I

McKENNANj , "\

'I:

J., concurs.

WESTINGHOUSE et' al.

'V., OUABTIERS

VAL.

GAB

00.

(Oircuit,OIYUf"t, W. D. Pen1l.8y1mania.

August 28, 1890.)

,

,'Cllatmsl and 2 of letterspo.tent No. 845;46S,;dated July 18,18861 granted to George VV Jr., assignee of Morris, So, relating, to pIpe joints alld lines poilvOYlng liquids and gases, and, more ,particularly, natural gas, namely: .. (1) " Theootnbination of a pipe-Une composed of sections of pipe connected at the joints ,by qqu.,.pllngs',wl,th. a se,pa, ra"te gas·tight Cham,be,r surroulld.ing a single joint thereof, 3dapted to receivt'l any leakage therefrom, and a vent pipe leading from such ohamberi substantially ali 'and for the purpose set forth;' (2) In combination with a 1$I\1n pipe-line comp08ed'Of sections of,pipes connected at the joints by couplings, indepe'ndent gas-tiglit chambers inclosing, respectively, single joints thereof, and a " vent pipe tll''' pipes leading from such chambers, substantially as and for the pur: fortb;,:'...,....were destitute of patentll'qle novelty,\ and,moreover, do not, upon construction, poyer the deVIce.
I

>

t

PATli:riS 'POB INVENTIONs-l'l'uURAL GAs'LINBS-WANT O'P, NOVELTY.

2,;

,' ,Ill'a suit for iafrinl/;ement, upon We f!illtte whether the plaintiffs' assignor was orlglJ:!.1\1 a,nq first inveq.tor, of the thing alleged ,to be within the claims of the patent in aprl!)!' and stlll pending application of a third person for letters pat' 'ent'lis c.ompet8ntevldence.

"

,

'

!

In EqiUity:. , , Geor.f/t: H. Ohristey and J. Sllowdsn Bell, for plaintiffs. JameS I. Ka'/I! fJeorgt; Harding, and Ftancis T. Chambers, for defendant.
j :

"ACHll:SON,:J. ThisJsa suit in equity by Geor,ge Westinghouse, Jr., and his the Philadelphia Company, against the Chartiers Valley Gas Company, for the infringement of letters patent No. 345,463, dated July 13, 1886, granted to Westinghouse as assignee of Morris S. Verner,the inventor. Verner's invention was made in July, 1884, about the'15th of the month, ,and his application for letters patent was filed August 6,.,1884. ,But in,fact: he had not then reduced the invention to any practioaluse, and!he never did 'so. Pending his application, on Februany ,2], 1885 t he assigned his rights to Westinghouse. The inven.. relates, to')pipe joints and Hqes for conducting liquids and gases, those :usedJior conveying natural gas." The specification recites letters patent No. 301,191, foJ' improvements in