AMERICAN ROAD-MACH CO v. PENNOCK & SHARP CO(1896)
F. P. Fish, for appellant.
L. L. Bond, for appellees.
Mr. Chief Justice FULLER delivered the opinion of the court.
This was a bill for infringement of claims 4 10, 11, and 13 of letters patent No. 331,920, issued to G. W. Taft, December 8, 1885, for a 'machine for making, repairing, and cleaning roads.'
The defenses were want of petentable novelty, anticipation, and noninfringement. On hearing, the circuit court, held by Judge Butler, entered a decree dismissing the bill. 45 Fed. 252. [164 U.S. 26, 27] The application was filed May 6, 1885, and the specification declared:
Then followed the drawings and the description, omitting a part of which the specification thus continued:
In lieu of connecting the hand-wheel and blade-lifting bar or lever by means of a toothed pinion and rack, said parts may be connected by a strap or chain (one or more), one end whereof connects with the lift bar or lever, while the other end is arranged to wind onto the pinion or hub on the hand-wheel, or onto a sheave geared to the hand-wheel hub.
[The foregoing words in italics were inserted by way of amendment, the disclaimer being preceded by the statement: 'Regarding the first claim for recognition of the state of the art, insert at the end of the descriptive part of specification, page 9, the following clause, viz.']
Of the 15 claims, the first, fourth, fifth, tenth, eleventh, and twelfth were:
The application was examined by the patent office, and the following objections were made:
Thereupon the specification was amended as before pointed out, and applicant further said:
The fourth and fifth claims were amended; the tenth, eleventh, and twelfth canceled, and two others substituted; and the fifteenth was erased.
The fourth, tenth, eleventh, and thirteenth claims of the patent as issued read:
Thus it appears that the patentee acquiesced in the ruling of the patent office that the application of hand-wheels to a roadgrading machine for imparting motion to the devices for raising and depressing the scraper- blade was old, and, for the purpose of obtaining his patent, restricted his claims in this particular to momentum or balance wheels.
And it is with reference to the momentum feature, treated as an element in all the claims, that the case must be disposed of.
Momentum is the quantity of motion in a moving body, and is proportioned to the quantity of matter multiplied into its velocity. [164 U.S. 26, 34] All revolving wheels possess momentum, but momentum wheels, so called, as balance or fly wheels, are wheels whose momentum is utilized in the operation of machinery by a sufficient accumulation of force, through the weight and velocity of the wheel combined, to overcome the effects of temporary loss of power.
The knowledge was common that when a continuous power is applied, but the resistance to be overcome is unequal, a fly or balance wheel will store some of the power expended during the operation, and not needed at one stage, and give it out at another.
This familiar principle is thus expressed in the specification: 'The rims of the hand-wheels are made sufficiently heavy to act as a balance against the weight of the blade-lifting devices, so that the momentum of the wheel will greatly assist the operator in the manipulation of the machine.'
The momentum wheel of the patent is described in appellant's brief as being 'a wheel having such peripheral weight, in relation to the weight of the screper blade to be lifted, that it will continue in rotation after the hand of the operator is removed, so as to enable him to secure a new grasp of the wheel to continue the lifting process.'
Appellant's expert, Mr. Brevoort, puts it thus: 'In the case of the Taft invention, the peripheral momentum was relied upon to continue the blade of a road-scraper in its upward motion, so that the operator could again grasp the wheel to give further rotative force thereto without the blades falling, and without the necessity of locking the wheel to enable him to get another grip thereon.' And the patentee testifies: 'The object of making the wheel with the heavy rim was that there might be sufficient momentum generated in the hand-wheel to make a continuous rotary motion of the wheel when it was desired to raise the blade over an obstacle, like a rock or a 'think-you-ma'am,' or when approaching a cross walk on a street. This we could not do with levers, if the lever had sufficient leverage to give this operation; and by making the rim of these wheels heavy I secured that ability to cause a continuous motion of the hand-wheel. After giving it one [164 U.S. 26, 35] impulse from the hand, I could reach forward, and give it a second, without applying a brake or stop to the wheel, thus keeping up a continuous motion of the hand-wheel until I had raised the blade as high as desired.'
In short, as the ordinary hand-wheels used for the same or analogous purposes in simiilar constructions were old, the claim of patentable novelty rests on the proposition that Mr. Taft was the first to increase their weight, and apply them as momentum wheels in a common device for regulating road-scrapers to secure the well-known result attendant on the use of such wheels.
Was he the first to do this, and, if so, did such increase of weight involve patentability?
The record contains a number of prior patents of road machines in which the vertical adjustment of the scraper-blade is effected by levers on each side of the machine, with connecting mechanism to each end of the blade, the actuation of either lever raising one end of the blade, and of both raising the blade as a whole.
The patent of Read of November 25, 1873, shows a reversible scraper- blade adjustable up and down at either end, adjustable laterally in respect of side projection of its blade, susceptible of being raised quickly at either end or as an entirety, carried by a four-wheeled frame, and directly controlled by levers through suspending cords or bars, the rear ends of the levers being adapted to be held by catches or uprights projecting up from the frame of the machine.
The McCall, Watkins, and Scott patent of March 9, 1875, has a push- bar reversible scraper, with hand-levers and stops for the vertical adjustment of the scraper-blade and hand-wheels for steering.
The Cook patent of September 22, 1885, has a scraper supported by a wheeled frame, and moved by push-bars, and capable of being raised and lowered at either end independently by means of racks connected to the scraper, and pinions, operated by levers, which engage the racks, and move them up and down.
These lever machines were all operative, and these and [164 U.S. 26, 36] other patents were introduced in evidence as showing that wheeled frames, reversible and non-reversible blades, levers of various forms for adjusting either or both ends of the blade, stops for locking the levers in place, stops and various other devices for connecting the levers with the blades, were all well known; but, as this is conceded, we need spend no time upon them.
It should, however, be observed that, broadly considered, a hand- wheel and a lever are substantial equivalents in these devices. The wheel is a continuous lever. The rim enables the operator to lay hold at any point desired, and takes the place of a number of levers. But it is denied that momentum hand-wheels are the equivalents of levers.
Other prior patents adduced illustrate the use of hand-wheels, cranks, and momentum wheels.
Dyson's patent of June 2, 1868, for a 'street scraper,' has a triangular frame, D, having slots in which the bars slip up and down freely, to which the scraper-blades are pivoted. The dirt is gathered up within this triangle, and deposited by the operation of the rear part of a frame, E. The triangular frame, D, is raised by a crank-wheel with a crank connected by cords with two wheels in such manner as to revolve both wheels simultaneously, and the whole scraper is thereby raised and retained by the engagement of the crank with a catch. The experts differ as to whether these wheels can be used as hand-wheels if so desired, as well as by means of the cords as described in the patent.
The Carey patent of June 16, 1874, for an improvement in scrapers, has a scraper or dirt scoop; a rack attached to a lever which carries the scraper; a pinion engaging the rack to raise and lower the scraper; a crank handle, as an equivalent for a hand-wheel, to turn the pinion; and a lock to hold the devices in their adjusted position.
The Taft machine seems to embrace the connecting devices of this patent, but it has a shaft with a hand-wheel instead of with a crank.
April 10, 1883, Edwards & Durkee obtained a patent for an improvement in grading and ditching machines, in which [164 U.S. 26, 37] all the adjustments are made by hand-wheels. This has a plow-beam and a carrying apron or belt, and, 'by arranging the several hand-wheels, as shown and described,' the operator 'can raise and lower either end of the plow-beam independent of the other, and raise or lower the apron as required.'
The patent of Elmer H. Smith of April 29, 1884, for a ditching machine, shows a plow 'consisting of an inclined flat plate,' supported by a wheeled frame, and raised and lowered by means of a hand-wheel and pinion acting upon a rack connected to the lever which carries the blade. The blade is operated by a single hand-wheel, in this resembling the fourth, tenth, and eleventh claims under consideration, which call for 'an operating wheel (or wheels),' although it is testified that 'in no case could the adjustments described in the patent be effected by a single wheel.'
May 28, 1878, letters patent No. 204,205, for an 'improvement in track clearers,' were issued to Augustus Day. This was a device 'for effectually clearing street railways from snow and ice, so arranged that the snow will not only be cleared away from the face of the rails, but also from between the rails, and a suitable distance on each side of the track,' it being so spread and packed as not to be left 'in ridges or snowbanks along the street.'
It has a diagonal screper suspended beneath a wheel carriage, and provided with a lifting mechanism consisting of a chain or rope wound upon the shaft by means of a hand-wheel, there being several hand-wheels for effecting the different adjustments of the scraper-blade, which is raised at either end at the will of the operator.
This concurs with the mechanism thus described in the Taft specification: 'In lieu of connecting the hand-wheel and blade-lifting bar or level by means of a toothed pinion and rack, said parts may be connected by a strap or chain (one or more), one end whereof connects with the lift-bar or lever, while the other end is arranged to wind onto the pinion or hub on the hand-wheel, or onto a sheave geared to the hand-wheel hub.'
Day's patent of October 21, 1879, No. 220,812, for 'snow- [164 U.S. 26, 38] plows,' has a diagonal scraper suspended beneath a wheeled carriage, and capable of being raised and lowered by a chain or cord wound upon a shaft turned by a hand-wheel, the shaft having a locking device consisting of a ratchet-wheel and a dog. There is but one hand-wheel, which raises and lowers both ends of the scraper together, while the previous Day patent had two hand-wheels and chains for raising and lowering the two ends of the scraper independently. The substance to be dealt with was snow, and rails and their bed, with some distance on each side, the surface to be cleared, but so as not to incumber the circumjacent highway. In view of the work to be done, light hand-wheels might be sufficient, yet, if momentum as a positive aid were found necessary, their weight could be increased.
The Boone patent of October 21, 1851, shows a windlass with drums for winding up cords to raise weights, with a wheel and pinion and suitable gearing for turning the drums, and a brake stop.
The Lyon patent of August 6, 1878, for improvement 'in combined ship's pump and windlass,' has very heavy momentum hand-wheels for operating either pumps or a winding drum. Apparently these wheels are heavier for the same diameter than the Taft hand-wheels.
The Tyler patent of February 14, 1882, for 'friction brake for steering wheels,' shows a momentum hand-wheel for operating the rudder of a vessel, and a pedal brake for holding the wheel in any desired position. The wheel is not described in the specifications as a momentum wheel, but, as it is such in fact, this is not material.
Appellee's expert Bates testifies that such wheels 'are commonly used as momentum wheels, and have been as long ago as 1871. The operator gives them an impulse, and their momentum carries them on.'
It is not controverted that a heavy wheel, with a crank pin at the side, such as shown, was a common and very well-known form of construction for the specific purpose of applying momentum to a crank.
The wheels employed in landing ferryboats, and the ancient [164 U.S. 26, 39] spinning wheels, instanced by the district judge, readily recur as illustrations of the use of momentum in the continuance of motion. Indeed, it is admitted that all wheels for raising, winding up, and hoisting, if the load is light enough, 'are capable of performing some movement after the hand of the operator has left them,' and the principle does not depend upon the extent of the aid thus given to propulsion.
We find, then, that hand-wheels in the regulation of scraper-blades for ditching, grading, street and road clearing were old, and that this was true of the utilization of momentum when required by the exigencies of the case, as in capstan-wheels, crank-shaft wheels, rudder-regulating wheels, pump-operating wheels, and so on. Every one knew that momentum propelled the capstan-wheel, the rudder-wheel, the pump-wheel, the spinning-wheel, after the hand of the operator was withdrawn.
The law of nature was familiarly understood that any moving body tends to continue in motion with a force proportionate to its speed and weight; and it was well known that the function of fly-wheels and balance- wheels was, in the language of Mr. Brevoort, 'to absorb energy when the machine is moving at a greater speed with the least resistance, and to give it out again when the parts meet with greater resistance.'
The circuit court was of opinion that the use in road machines of wheels made heavier in the adjustment of momentum to resistance was not a new use of momentum wheels in working machinery, and that the difference in weight in hand-wheels performing the service of rotary levers was a difference in degree, and not in kind. And the contention as to infringement confirms this view.
Mr. Bates describes appellee's machine as 'composed of a wheeled frame or carriage, beneath which is suspended a turntable, and to this turntable the scraper-blade it attached. The turntable is suspended by rods from the ends of a bar which extends across the machine, and is capable of vertical motion between uprights. The bar is supported by being pivoted near each end to the lower end of a rack-bar. The rack-bars are moved up and down by pinions on horizontal [164 U.S. 26, 40] shafts, the shafts extending back toward the rear of the machine. At their rear ends are bevel gears which mesh with pinions on cross-shafts, and there is a hand-wheel on each cross-shaft to turn it. There is also a band- wheel on each cross-shaft, which is embraced by a friction band or band- brake. The band is connected to a spring-treadle, so that the operator can loosen it by putting his foot on the treadle. The hand-wheels are small wheels, comparatively similar to those used on car-brakes, and are certainly much too light to act as fly-wheels or momentum-wheels against such a weight as that of the scraper and turntable and attachments. Besides this, the strain on this weight is a constant one, always acting in the same direction upon the hand-wheels. The scraper is moved forward by means similar to ordinary plow-beams, which are connected with the turntable, the turntable being connected with the front of the machine, or rather to the king bolt by a draft-ring and link. There is no device for acting with a thrust upon the scraper-wheel.'
Without subjecting the evidence to critical examination, it is enough that it is admitted that these hand-wheels are smaller and lighter than those of appellant, and that to make out infringement it is requisite to construe the patent in suit as covering all wheels whose momentum can be utilized in operating a road-making machine.
On the one hand, it is contended that appellee's hand-wheels are not momentum wheels at all, and that the continued motion of the blade is due to earth pressure, and not to momentum; while, on the other, this is denied, and it is insisted that these wheels are to be treated as momentum wheels, because they will store up 'a useful amount of energy to make them continue their further movement, when the hand of the operator is taken therefrom,' provided 'the operator shall give to the wheel a rapid and vigorous pull, moving it while his hand is upon it at a greater speed than it afterwards maintains.'
We can hardly doubt that similar manipulation of many of the old wheels would produce the same result, and, if there could be infringement if this were not so, there would be anticipation if it were. [164 U.S. 26, 41] But the decision of the circuit court rested on the want of invention, and in that conclusion we concur.
Did increasing the weight of the hand-wheels in this class of road machines, in order to correct the tendency of smaller wheels to reverse, involve patentable novelty?
We do not think so. The use of hand-wheels as a substitute for straight levers in this class of machinery was old, and, whether the wheels were light or heavy (and heavy wheels were old), they alike performed the service of rotary levers.
The patentee had acquiesced in the rejection of his claim for a road machine with a blade that was elevated or depressed by a hand-wheel operating through suitable gearing, and could not claim the benefit thereof, or of an equivalent construction of the claims allowed. To make the hand-wheels heavier was to increase their capacity, but the same end was accomplished by substantially the same means. The means were old, and their enlargement by a common method to attain a better result in the particular instance merely carried forward the original idea, and was nothing more than would occur to the experienced mechanic.
It appears to us that, it being seen that the tendency to reverse would prove objectionable in the proposed machine, the suggestion that the hand-wheels should be made heavier in order, by greater momentum, to correct that tendency, as it was well known increase in weight, coupled with adequate rotative force, would, sprang naturally from the expected skill of the maker's calling, and that this use of the heavier wheel did not make the mechanism in any proper sense a new thing evolved by the inventive faculty.
The substitution of the heavier wheel was not the product of a creative mental conception, but merely the result of the exercise 'of the ordinary faculties of reasoning upon the materials supplied by a special knowledge, and the facility [164 U.S. 26, 42] of manipulation which results from its habitual and intelligent practice.'