252

J'EDERAL REPORTER, vol. 45.

AMERICAN ROAD-MACHINE CO. 11. PENNOCK

&

SHARP CO.l

(Oircu1.tOourt, E. D. PennwZvanf.a. November 11, 1890.)
P",.'tBNTS FOB INVENTIONS-VALIDI1Y-COMBINATION-INVBNTION.

The novelty claimed in plainti1!'s pateilt was the combination with a common form of road-making machine of momentum wheels, adapted to act as a balance against the of the blade-lifting device. Smaller and lighter wheels had been used in a similar combination in road-makinR' machines, and wheels operating by their inertia to store power from the easier part of the operation to be expended during t4emore dlftlcult old, and been in fly-wheels, capstanwheels, street-car hrake-wheels, and old-fashlOned splllnlllg-wheeis. the adoption of the relative weight of the'wheels used in road-scraping machines and the weight of the scraper andattachmentB, so that the momentum of the wheels would be of essential value in the adjustment of the scraper, does not involve invention. Following Hollister v. Mantifacturlng 00., 113 U. S. 59,5 Sup. Ct. Rep. 717; DuBter 00. V'. Levy, 43 Fed. Rep.lI8I.

The suit is foriufringement of claims 4, 10, 11, and 13 ofletters patent NO.,331,920 issued to G. W. Taft for road-making machines. The claims read as follows: (4) The combination with a. diagonal scraper supported in connection with a wheeled carriage and adapted for upward and downward adjustment independently at either of its ends of an operating wheel (or wheels) for effecting such' adjustment, adapted to act as a momentum or fiy wheel as set forth, whereby the peripheral weight of said wheel is utilized to assist in the adjustment of the blade substantially as hereinbefore explained. (10) In a road machine, the combination ,of a scraper-blade adapted for ,upward and downward adjustment at its respective ends, an operating handwheeI(or wheels) connectedtherew,ith for effecting sueh adjustment and a brake '(or' bri£kes) acting againstsai'd wheel to arrest movement thereof, and retain the parts'substantially as set forth. . (11 )In a wheeled road-scraper, the combination of a scraper-blade adapted for upward and downward adjustment at its respective ends by a strap or chain {one or ;more) Ol,1e end whereof connects witMpe lift-bar or lever, whilft the other. end is arranged to wind onto the pinion or bub .on the hand-Wheel or onto a geared to the band-wheel hub. .' (13) In a 'road machine, the combination with an oblique scrapersllspended beneath a carriage or body mounted on front and rear wheels, of means forimparting independent upward and downward adjustment at the respective ends of said scraper prOVided with hand-wheel and pinion devices for imparting movement thereto, and stops or brake devices acting in connection with said band-wheels for retaining the parts at positions of adjustment substantially as described. The defense assails the patent, and denies infringement. Joshua Pusey, for complainant. West &- Bond and M. B. Philipp, for respondent.
BUTLER, J., (after stating the facts as above.) The combinations described contain nothing new unless it is the use of "momentum handwheels." Ordinary hand-wheels in similar combinations, for analogous purposes, are old. This is abundantly shown by the record. I need

'Reported by Mark Wilks COllet, Esq., of the Philadelphia bar.

AMERICAN ROAD-MACHINE CO. ". PENNOCK & SHARP CO.

253

only cite the patents of No. 204,205, Dyson, No. 78,683, Smith, No. 297,861, EdwaJ;ds & Durkee, No. 275,614, and Cook, No. 326,719. The claim of novelty, rests alone on the introduction of hand-wheels "adjusted [in the patentee's language] to act as momentum or fly wheels." 7his appears very distinctly, not only from the state of the art, but also from the history of the rejection and amendment of claims. In the plaintiff's brief it is said the invention "consists in the tioD of momentum wheels, for the scraper-raising levers of road machines, and in combining with them a brake which will hold the blade in its pqaition." In Court it was conceded that without the peculiar wheels the combination was old. The question whether the introduction of these w,heel$ into the combination is new, alone, therefore need be considered, on this branch of the case. Webster defines "momentum" to be, the "quantity of mO,tion in a moving body; being always proportioned to the quantity of mattel:' multiplied into its velocity ," and a ,fly" wheel, as,one"that equalizes its momentum, or accumulates power for a variable or, intermitti,ng resistance." All revolving wheels possess this quality, proportioned to their weight and velocity; and are capable of use as. "momentum" wheels,-the term signifying those whose momentUm is utiliz,ed in working machinery. It is only necessary that the resistance to their motion be properly adjusted to their force. This wellknown law of physics has long been employed in the mechanic arts. Mr. Taft says in his specifications: "The rims of the wheels must be sufficientlyheavy to act as a balance against the weight of the blade-lifting device, sothat the momentum of the wheel will assist in manipulating the machine." This is an accurate description of "momentum wheels," and their common use. As before stated, these wheels are old; and have long been applied to such purposes, in various devices. The plaintiff's Iilxpert; Mr. Brevoort, says: , Imowntbat in cases where a continuous power was plied but the, resistance. to,)Je o¥ercome is unequal; a heavy fly or balance wheel will some of the power expended during the easier part of the operation, and expend it during the more difficult part of the operation; that part of the power which lsnot needed at one stage is utilized at the other, where it For e'xample. where a crank is used less power is needed to drive'theerank. when it is descending, aided by gravity, than when it is -ascendiJ)g. ,;In.sucb cases' a heavy fly-wheel equalizes the motion by storing some power applied when tbecrank is descending and expending It to,nelp,the cFj\nk in its ascent." . He' Wight have enumerated many similar instaneesof its use. The novelty claimed, as we have seen, does not consist of a new or peculiar wheel, but in the use of the old "momentum wheel" in a common device J foJ" regulating road-scrapers. Mr. Taft substituted this wheel for the smaller one previously used in such devices. Whilejhe, language of the tenth and thirteenth claims does not limit must be implied or the claims dethem to ,invalid on that accpullt. Does the substitution of the heavier .wheel the lightEl,f one emb\'acepatentable novelty? Granting tbntthe wheels ,[orthjs is new, it seems to ,be analogous to mll-pao! t,Aem. Whether rudder-xeg..

254

FEDERAL' REPORTER,

vol. 45.

rlllliting ,wheels.(asseenin rpilant) wlieels(as in .Lyon?g patent) 'street-car, brake-wheels,. crank-shaft wlal&ls, Boonis Patent,) the larger 50 years and whose 'inomentumwas"utilized, they were1employed toiaidinWidrking the at· !tached .machinery. -iItdoes eJlotseem' important,:as tbe,plaintiff 'urges, whether ihe momentum is sufficient to continue thE! work, temporarily, after the propulsive force is withdrawn. The principle applied,and the uses made of it, are the saI'ne, where it is sufficient and where it is not. The insufficiency arises only 'from the disproportioo of the w heel to the resistance. The momentum of the (itself) winds the slackened cable, and Lyon's pUtnp"wheeI continue the work,' as Mr. Bates testifies, after the hand'is reri1oved; and the largerspinriing-wheel (nowdisuged) drove the spindle after the hand was withdrawn.......(While tbislatterwheel· is not mentioned In the record, it isa matter of common knowledge; and may be referred toby way of illustration.)-I1'lallinstances where the momentum of wheels has been utilized in mechanicaliC'ontrivanoes, it has been employed to aid in their propulsion. So Mr. Taft employs itJ The use is not, therefote, new. But it is clear that Mr. Taft was the first to apply such wheels to devices for regulating road-scrapers. The old wheels empltiyed in such devices hadmOlnentum, and differed fr.omhisonly in that they were lighter. As, however. there was no standard for:the size and weight of the old wheels, it is probable that in many instances :eventhis difference did not exist. Those called for in Lyon's patent seem to be heavier' than his. 'the plaintiffdoes not confine himself to wheels I,)f any particular size or weight; but construes his patent to cover all wheels whose momentum can be used in operating the device. Those of the defendant are materially smaller and lighter than the plaintiff uses; yet they are complained of as infringing, because as Mr. Brevoort says, if "gIleat force is applied so as to' obtain a high rate of speed" their momentum can -be utilized. This doubtless· may be said as truly of mll.nyof the old wheels employed in sllchdevices. If sufficient speed is obtained they will store enough to continue motion for a brief period. Thus construed it can be doubted the patent is anticipated. Granting, however, that hewaa first to see the importance of constructing wheels with such relationfo the weight of the scraper and attachments, as would render theit momentum of essential value its adjustment,did this embrace invention? As was said in Duster Co.v. Levy, 43 Rep. 381, what constitutes invention has beeiIso fully and repeatedly discussed that further elaboration would· be waste of time. 'l'wo-thirds probably of all suits brought tc> enforce patents have involved it, and more time has been employed ill itS' consideration than has been expended on any other question of patent law. As iasaid by the supreme court inrHoUi8ter v. Manufacturing 00., 113 U. -S. 59, [j Sup. Ct. Rep. 717 ,a devioo which displays o'nly the expected skill ofthe maker's calling, and involves only the exercise of ordinary facul. ties of reasoning upon materials snppliedby special knowledge and facil· ity of manipulation, from habittl'al intelligent practice, is in no sense a creative work.ofinventive faculty,and'suoh: as the constitution and

AMERICAN ROAtHMAOHINE CO. V·. PENNOCK.& SHARP CO.

255

patent laws aim to encourage and reward. Itis something, as the court further says, at page 72, 113 U.S., and page 724, 5 Sup. Ct. Rep., "which springs from an intuitive faculty of the mind put forth in search of new results, or new methods, creating what had not before existed, or bringing to light what lay hidden from vision." In other words it is a new thing produced by the exercise of the creative or inventive faculty, and not by the em,ployment simply of comrn.oi} .reasoning applied to existing and known faets. Patents are constantly overturnedfor want ofinvention wbereitsabsence is not Clearer than in this case. The later volumes of reports are,full of such cases; eight being found in 132 U. S. It is sufficient to cite Bfew of them. Hollistef v. Manufacturing Co., 113 U. 59,,5 Sup. Ct. Rep. 717; Thompson v. .&Iisselitr, 114 U. S. 1,5 Sup. Ct. Rep. 1042; Pe1tn8])lvania R. Co; u>camqtite E. S. 1.'.' 00., 110U. S. 490, 4 Sup: Rep. 220; Busseyv. Manufacturing Co., lio u. S. 131, '4 Rep. '3S:;Weirv.Morden, 125U.S. 98,8 Sup. Ct. Rep. 869; Holland v. Shipley, 127 U. S., 396, 8 Sup. Ct. Rep. 1089; Aron v. Rq,'i'" tOa:'fGb., 132U. S. 84, 10 Sup. Ct. Rep. 24; Da?/ v. Railway Co., 132 10 S\1p. 11; Roemer v. Bernheim, 132 U. S. 103, 10, Sup. Cf. Rep. 12; Watson;v. 'Railway Co., 132 U. S. 161, 10 Sup. Ct. Rep. 45. In this view ofthe law I think it musfbe ,held that Mr. Taft's substitution of the heavier wheel, and consequebt,tltilization of its greatednomentum, did not embrace invention. Any competent mechanic whose attention had been called to the difficulty of operating the device with wh,*L(its tendency:to reverse)"would, I believe, have seen the importance ()f increasing its size and weight, and thus increasing' its resisting forc6-'"-would have seen that this, alone was needed to overoome the tendency,. Mr. Taftdid no more. His discovery was the result of applying common reason to known facts. There does not seem to be like invention about it. It is not sufficient that a patl:lntee has seen and applied what others have overlooked and thus made valuable improvements. Results obbyoommon.reason are often thus overlooked, as in the case of tperevenue stampjinvolvedin Hollister v· Manufactu1'ing Co., above oited. the bnpl'Q,vement of great utility and the means of maki!lg it OVEll'lo.oked, tho\lgh the importance of s.ome such change had been felt: for a long time.! Yet the .court held that it did not emis said in Pearce v. MulJffT'd, 102U. S. 118: "AU improvement is not invention, and entitled: to protection as such. Thus to eptitle, it, it mu!>t be tbeproduct ofsome exercise of the inventive faculties; .and it ,J:nust involve. more than what 'is.obvionsto perskilled in ,tJile:artto which it relates.1' , .,1 llave ,DotoyerlQoltedthe presumption to which patentees are entitled. In ,of tbenumerous instances in which patents are overtUl'qedl: is not entitled. to very great weight; .Ina majorityof :wpere assailed they invalid. For: :reasons ,the bill dismissed.

256

FEDERAL REPORTER,. vol.

45.

WIRTt1.

HICKS et al. '

(Circuit Court, S. D. New York. February 28, 1891.)
L

PATBNTS FOB

Letters patent Nos. 260,134, issued June 27, 1882, to Marvin C. Stone, and 311.554, issued February 3, 1885, to Paul E. Wirt, for fountain pens, in whioh the ink is led .to the,nibs by oapillary attraction between the pen and a lip ,which extends into the ink reservoir, were not anticipated by British letters patent No. 2,858. issued October 2,1869, to John Butcher, and letters 'patent No. 14,425,issued 'March 11, 1856, to A. F. and C" M. H. Warren, for pens having' ohannels for guiding a flow of ink by gravity whioh might produce capillary attraction to aid the flow. Said letters patent are infringed, by a pen in which the ink is drawn from the reservoir by oapillary attraction, though in it the pressure whioh SUBtains the ink and rel{ulates its !low, Is asSisted by a disk with holes in it instead of a nozzle. as in the Wirt pen, and though the extension of this disk into the reservoir is different from the lip in the Wirt pen, since these parts, .though different, do the same things in substantially the same way.
'

;PllIN-ANTICIPATION.

S.

Silts-INFRINGEMENT.

8.

SAMB-ApPLICATION-A.MENDMENT BY ATTORNEY.

Where an application for patent is made by the inventor during hls life by at,. torney, the fact that changes were made by the attorney in the specifications and claims without new oaths will not invalidate the patent, since a discretion as to the allowance of such amendments is vested in the

In Equity. Bill for injunction. Walter S. Logan, Jor oomplainant. James A. Whitney, for defendants.
WHEELER, J. This suit is brought upon letters patent No. 260,134, granted June 27, 1882, to. Marvin C. Stone, and No. 311,554, granted February 3, 1885, to the orator, for fountain pens, in which the ink is led to the nibs by capillary attraction between a lip and the pen, and iIi those of the Jatter the ink is brought within reach of theattractioll by an extension of the lip into the reservoir. The defendants' pens are made under George H. Sackett, and letters patent No. 349,'153, granted to him September 28, 1886. These inventions were under consideration on substantially the same evidence in Sackett v. Smith, 42 Fed. Rep. 846, brought against a dealer in the orator's pens; and the question of their order in time was passed upon. The conclusion upon this was that Stone's was first, the orator's next, and Saokfltt's 'last. A careful examination of the evidence now leads to the same result; and the reasons there given for the conclusion are fully concurred in. The novelty of the inventions of the orator's patents is further questioned upon several prior patents, and most closely upon British patent No. 2,858, of October 2, 1869, to John Butcher, and American patent No. 14,425, of March 11, 1856, to A. F. and C. M. H. Warren.Each of these describes channels for guiding a flow of ink by gravity, which might produce capillary attraction to aid the flow, and might not; neither scribes drawing the ink to the nibs by that process. Stone's invention stands first as to that, 'and the oratQr's first for extending the lip into the reservoir. The validity of both of the oratol"spatents is further questioned, because after the applications were filed important changes