Morgan Const. Co. v. Donner Steel Co.

HOUGH, Circuit Judge

(after stating the facts as above). If this patent covers any combination or co-ordination of serrated rigid supporting bars, with serrated lifting bars, capable of elevating the thing lifted over a saw tooth in the rigid bars, and leaving that thing at any point or place in the next depression between two teeth, the decision below was right.

We are not able to accord to this invention such wide scope.. Cooling beds generically were old, the shuffle bar mechanism was well known, and the lifting, advancing, and then sinking function of a horizontal surface moved by a circularly actuated shaft had been used in many arts. It is, we think, admitted that merely making depressions, troughs, serrations, or notches in the previously flat bars of the prior art, for the purpose of asáisting straightening of hot forms, would not be invention; and, if not admitted, it is true, in the light of Kellogg, No. 265,265, a patent of 1882, showing a cooling bed of troughs separated by elevations which (in vertical section) are segments of a circle, with means for lifting a round form to the top of the elevation, after which it rolls down into the next trough. This was a straightening device, and the same result is the prominent merit of plaintiff’s escapement and universal beds, which likewise utilize gravity by inclining the bed.

There is not a new element in plaintiff’s combination; hence, to reach validity, there must be found in the co-operation of old elements some novel and useful effect resulting from the combination, and not found in the prior art. Office, etc., Co. v. Fenton, etc., Co., 174 U. S. 492, 19 Sup. Ct. 641, 43 L. Ed. 1058. It is the inventive thought that vitalizes and indeed interprets a patent; in this invention we think that thought is the entire abandonment of gravity as a means of assisting the hot steel form on its way. As the patentee said in testifying;

*224“This patent of mine covers a construction which straightens the bars and keeps them straight during the cooling process, and also keeps them, separated when desired.”

They are kept separate by a lifting process, which ends in a “deposit,” without tumbling or rolling, and, by thus “depositing” what is lifted, a plurality of bars or forms can be advanced step by step across the bed, without jostling against each other. This last is the one use to which the patented device has been put.

Of the claims quoted, the first will undoubtedly, if read literally, cover defendant’s device; but this is not finál. It remains to inquire" whether the alleged infringement displays “substantial identity” with the thing invented. Westinghouse v. Boyden, 170 U. S. 537, 18 Sup. Ct. 707, 42 L. Ed. 1136; Geoghegan v. Ernst, 256 Fed. 670, 168 C. C. A. 64. What was invented usually depends in large part on what was left unrevealed to the skilled man by the prior art, and this is not inconsistent with interpreting patents “so as to uphold the right of the inventor” (Turrill v. Railroad, 68 U. S. [1 Wall.] 491, 17 L. Ed. 668), for the question is fundamental, What right has the inventor, under the circumstances?

The only field left to this inventor is just what he described in his specification—a means for depositing articles lifted from one depression, in another and succeeding depression of a cooling bed, without rolling, tumbling, or jostling. This defendant does not attempt nor accomplish. The difference in the means of the two parties is very small; but plaintiff’s field of invention was also of the smallest.

_ Decree reversed, with costs, and cause remanded, with directions to dismiss the bill for noninfringement, also with costs.