HENDY
v.
GOLDEN STATE AND MINERS' IRON WORKS.
No. 278.
Supreme Court of United States.
Submitted May 3, 1888. Decided May 14, 1888. APPEAL FROM THE CIRCUIT COURT OF THE UNITED STATES FOR THE DISTRICT OF CALIFORNIA.*374 Mr. John H. Miller and Mr. J.P. Langhorne for appellants.
Mr. M.A. Wheaton for appellee.
MR. JUSTICE BLATCHFORD, after stating the case, delivered the opinion of the court.
Infringement is alleged of only the first claim, namely, "The feeding cylinder I, mounted upon the movable timbers H H, substantially as and for the purpose above described." The specification states, in regard to the subject of the first claim, that the improvement consists "in mounting a feed cylinder upon a movable frame or truck, so that it can be readily shifted from place to place when it is desired to repair the mill." The specification speaks of the timbers H H as being the foundation timbers upon which the feeding cylinder is mounted, and it says that those timbers "are mounted upon rollers, so that the cylinder and frame can be moved about as desired." Therefore, "the movable timbers H H" of the claim are timbers made movable by being mounted upon rollers. The specification also states, that "the cylinder I is made of cast metal, and has its outer surface formed into chambers or depressions, J J, which are separated from each other by longitudinal partitions, K."
It is contended, in defence, that claim 1 of the patent is really a claim only for making the timbers movable, by mounting them upon rollers, so as to be able to move the cylinder and frame about as desired, and that this required no exercise of any inventive faculty. This seems to be the purport of the invention, as stated in the specification. It is the movable character of the frame on which the feed cylinder is mounted, so that the cylinder and frame may be readily shifted from place to place, when repairs are desired, that is designated as *375 the invention. When the mill is in operation, the movable feature is not brought into play. It is only when the mill is out of operation that the movable feature is to be used. The first claim does not appear to cover the functions or operation of the feeding cylinder I, as a part of the mill when in operation; and, interpreting it by its own language as well as by that of the description in the specification, it covers only the mounting upon rollers of the timbers which carry the feeding cylinder. Merely putting rollers under an article, so as to make it movable, when, without the rollers, it would not be movable, does not involve the inventive faculty, and is not patentable. Atlantic Works v. Brady, 107 U.S. 192, 200; Thompson v. Boisselier, 114 U.S. 1, 12, and cases there cited; Yale Lock Mfg. Co. v. Greenleaf, 117 U.S. 554, 559; Pomace Holder Co. v. Ferguson, 119 U.S. 335, 338, and cases there cited.
This defence is one which can be availed of without setting it up in an answer. Dunbar v. Myers, 94 U.S. 187; Slawson v. Grand Street Railroad Co., 107 U.S. 649; Mahn v. Harwood, 112 U.S. 354, 358.
Moreover, there is no patentable combination between the rollers which make the timbers movable and the feeding cylinder I, mounted upon the timbers. The union of parts is merely an aggregation. The feeding cylinder, mounted upon timbers which have rollers, operates no differently from what it does when mounted upon timbers which have no rollers. Hailes v. Van Wormer, 20 Wall. 353, 368; Reckendorfer v. Faber, 92 U.S. 347, 357; Pickering v. McCullough, 104 U.S. 310, 318; Bussey v. Excelsior Mfg. Co., 110 U.S. 131, 146. There is nothing patentable in the aggregation.
The defendants' machine has a smooth cylinder, and not a cylinder with chambers or depressions. The specification of the patent describes the cylinder I as having its outer surface formed into chambers or depressions, separated from each other by longitudinal partitions. The cylinder of claim 1 is "the feeding cylinder I," and, to be such cylinder, must be a cylinder substantially as described, and it is described specifically as having chambers or depressions. The claim cannot *376 be construed to cover a cylinder with a smooth surface, not formed into chambers. Fay v. Cordesman, 109 U.S. 408, 420, 421; Sargent v. Hall Safe & Lock Co., 114 U.S. 63, 86; Shepard v. Carrigan, 116 U.S. 593, 597, 598; White v. Dunbar, 119 U.S. 47, 51, 52 Crawford v. Keysinger, 123 U.S. 589, 606, 607
The decree of the Circuit Court is affirmed.