XILBOURNE ". W. BINGHAM 00
-697
Prank D. Allen, U. S. Atty., and Ht:n/ry A. Wyman, Asst. U. B. Atty., for collector.
JosiaJI, P. 'Pucker, for petitioners.
Com, Circuit Judge. Whatever may have been the practice under former statutes, lam of the opinion thatllnder the act of June 10, 1890, (26 St. p. 131,) interest or costs can be recovered against the United States, because the suit is, in substance. brought against the United States, and the act makes 110 provision for such payment. Upon this point I can add nothing to the opinions of the attorney general under dates of August 7, 1891, and December 10, 1891. The items of interest and costs may therefore be stricken from the judgment in the case.
KILBOURNE
et al. ". W. No. IS.
PINGRAM
Co.
(o,,"cuit OO'W't of .Appeala, 8ttth
mrcuu.
June 6, 1_)
L
PATENTS FOR INVENTIONS-PROCESS OF MANUFACTURE-WROUGHT METAL
SInI.
I.
SAME-INVENTION.
SUBSTITUTION OF DIFFERENT MA.TERIAL.
cast metal.
'7.Fed. Rep. 57, aftlrmed.
. Appeal from the Circuit Court of the United States for the Northern District of Ohio, Eastern DiviAion. In Equity. Suit by James Kilbourne and the Kilbourne & Jacobs Manufacturing Company against the W. Bingham Company for infringement of patent. The circuit court dismissed the bill, and complainants appeal. Affirmed. Statement by SWAN, District Judge: Appellant Kilbourne is the patentee and owner of, and the corporation appellant the exclusive licensee under, letters patent No. 240,146, issued April 12, 1881, on application filed December 28, 1880, for "certain new and useful improvements in sinks." This suit was bro1;lght to restrain the alleged infringement of that patent. The patentee in his specification states the t;lature of his invention thus: "My inventi()n consists of a sink swaged or struck up from a single sheet of wrougM
iron or steel, without joint, seam, or interior angle.," He theft setsA'Orth in of cast , "Sinks of this kind are neither strong nor durable. They break easily and frequently in shipping or in storing them, and also in placing or setting them PQl!itiQn f()fi ,Ulte,r(rJ;lfy ar-fj ,also to or break if water 8j!Jeu.¥J. jp ,Q.nd., ,in order ,tq gi of strength of metarlDust be used in, their COJl:$tfll<ition, making tbetn cumbersome' and heavy, an'4 increasing' expense of nrJnnfacture: I ' ' , ' ' " · this of his ' , 4;sc?vered ,above ,defects .can. be completely rethe wrought iron or steel, saId sInks being swaged or st1'ntlt' ii'ap: from II: single' sh'eet of !Inch metal, as hereinbefore first speci lied. Such a sink is. of course, stronger than one of cast metal, and is not liable to be fractured or broken by a sudden jar or blow. It is cheaper than a castmetal sink. for the reason that mnch less metal is required in its constrnction. and it can. by the swaging operation.-as, for instance, by being struck up in a drop press.-be made more rapidly and economically. ... ... ... The sink. being. as seen''ih tl1e ,dra.Wings. witbout interior, angle. has practically equal strength at all points. and has no corners where sediment or dirt can gather." I The issue between the parties is confined to the first claim of the patent,,;wbioo:is.thus stated: uHaCVing'dfj$crlbed 'cit whatlclailil and desire to secure by letttlre JIIf ,(1 $lhk, made of a single sheet of wrought steel or Iron. witkout .joint. seam, or interior angle. sql)stantially as set forth." , infringement charged, the value and utility of the 'allegl:lu'in'vention, and that the was the original and first inventor or discoverer of any material substantial part of the thing :-,It gives the names and of numerous persons who knew and used. ,the thing patented priortQ its alleged invention by Kilbourne. 'It'alsd allegestbat the article had been patented and described, prior ,to lWppose!l iHyeptj()n by IGlPoqrne, in some 30 prior American patents and one English patent, and specifies several printed publications circulated in the United States, in which it had been described, alld article had been in public use and on sale in tllis c'ollntry fOf more than two years prior to application. It also vie'fo.f the state of the art of manufacturing sinks, ba:th 10ng1;>efore said alleged invention, the letters tait to any inventio,n,' and that the means claimed as original' by said Kilbourne under his patent were common and well known., M. D. Leggett, for cOmplainants. ,;Bri.¥n H. ,¥.Turk,and,Art!fur von Briesen, for defendant. JACXs01:'l, Circuit 7udge, and SWAN, ,
..
or
SWAltl', Di$tH&t'Judge.Complainants claim the monopoly of and vendingurlder Kilbourne's patent the single article of sinks, "swaged ,or struck up from a single sheet of wrought steel or iron, without joint, , . " c,t,' :. ,',.' \
!QLBOPBNE·".· W·· i!UN(l'HMlQO. I
699
seam or interior angle." ,The conceptions claimed as original, on which
the validity of the. patent is predicated by the argument, are: (1) The mode of construction; (2) the entirety of the material composing the article; (3) the use of the wrought steel or iron in the manufacture oithe sink; (4) the interior form, without joint, seam, or augle. 1. If the first element of this claim were a new process, it is not sufficiently described to meet the requirements of section .4888, Rev. St. U. S., that an inventor shall make and file in the patent office a written description of his invention, and "of the manner and process of making, compounding, and using the same, in such full, Clear, concise, and exact terms as to enable any person skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, constmct, compound and use the same. * * *" Theantiquity of the process, and the fact that the patentee does not expressly or by implication claim it, save the patent from this objection. The art of swaging metals into any required form was venerable anterior to this patent. The drop press, drop hammer, dead stroke hammer, dishing ram, dies, die press, forcers, and stamping machines have long beeu familiar to metal workers as implements by which hollow ware in all its forms and varieties has been manufactured for over half a century, and are regarded in the art as simply equivalent machines or tools for swaging; that is,beating or drawing the ductile metals into desired shapes. The use of one or the other of these agencies is merely a preferential application by the workman of the power required for the work in hand. The variety of manufactures by this process has been limited only by the art of designing, the ductility of metals, and the possibilities of machinery. The inventor of a new design or material for an article of manufacture, or of a new device for the application of the power needed in this art, or the discoverer of a process for the treatment of refractory metals is entitled to the monopoly assured by the patent laws. These would be additions to our knowledge and contributions to the industry evolved from the inventive faculty. The appreciation and utilization of the efficiency of old methods, means, and material for the manufacture of domestic, mechanical, and agricultural wares "does 110t spri.ng from that intuitive faculty of the mind put forth in the search for new results or new methods creating what had not before existed or bringing to light what lay hidden from vision; but, on the other hand, is the suggestion of that common experience which arose spontaneously, and by a necessity of human reasoning, in the minds of those who had become acquainted with the circumstances with which they had to deal." Hal,. lister v. Manufacturing. 00., 113 U. S. 72, 5 Sup. Ct. Rep. 717. It is not enough that the new manufacture, because of the fitness of the material to the purposes of the article, has obviated innumerable objections inherent in prior manufactures and superseded them in the trade. It must possess an advantage and novelty in form or construction beyond the ability of a mechanic of ordinary skill and intelligence, or be the resultant of means or methods devised by the maker. " The law," says Judge WOODRUFF in Smith v. EUiott,9 Blatchf. 403," gives no
monopoly to industry to wise judgment or to mere mechanical skill iD the use of known means, nor to the product of either, if it be not new. These are within the proper field of competition, and open to all. ID general, they will in that competition be justly appreciated, and will coinmandtheir proper remuneration if usefully employed. It is invention of what is new,and not comparath'e superiority or greater excellenoein what was before known, which the law protects,and it is that alone which is secured by patent." The state of the art of metal workingoonclusively disproves Kilbourne's claim ,to a monopoly for the process used in this manufacture, and remits him for his reward to the quality of his wares. He has contributed nothing to its resouroes or machinery:unknown before to the craft. He obtained his patent April 12, 1881.' No model accompanied his specifications. From that date until sometime in 1883 the sum of his achievements in this line of industry was the·abstract conception of the adaptability and fitness of wrought steel and iron to this article of household furniture. He admits that. during this interval he expended thousands of dollars and ruined thousands of plates in endeavoring to make the sink. He says: "I mad.e first small dies and then large ones j had to change and change again the shape of the dies, and almost despaired of success j . but I had spent so much time and money on it that I persevered. and finally succeeded." This confession not only demonstrates that the patentee has failed to disclose the secret of his process, and specify his invention in such a way that others of the same trade would be enabled to do the thing for which the patent was granted, without any new invention or addition of their own;"";"';bas merely "set them a problem to solve," to use the phrase of Baron ALDERSON in Morgan v. Seaward, Webst. Pat. Cas. 174,-but also that the process was a mystery to himself, ,which, for two years after his patent had issued, baffled solution. The result of his experiments has'justified his faith in the adequacy of" the swaging operation" to this manufacture, but the necessity for the experiments proves that the machiner:fofhis success, which is patentable if original, was obviously ahard.l!>ornafterthought, which he had not conceived. But beyond this, there is no language in this patent which can by any latitude of construction be held a claim for the process, beyond the curt references to" the Bwaging operation," and one of its tools, the drop press, which are alluded to as well-known agencies or machinery equal to the manufacture of the article. The argument that,'under the case of Smith v. Vulcanite 00., 93 U. S. 492, the process detailed is made as much a part of the invention as are the materials, of which the product is composed, has no applicability. There, as is said, "the properties of vulcanite were well known; but how to make use of them for artificial sets of teeth remained undiscovered, andapparentlyundisco.verable, until Cummings revealed the mode." The patent was sustained as a combination of process and product, both of which were new, though the materials were old. The process was fully detailed. The distinctions between that case and this are obvious. For the,reasonsstaied, the claim for the process is untenable.
x.ILBOUBNE· tl. W. BINGHAM CO.
701
2. The record shows that neither the entirety of the material of which the sink is made, nor the absence of joint, seam, and interior angle, are new features in this class of manufactures. Butlers' trays, plumbers' sinks, .flanged baking pans, bidet pans, and numerous other domestic and mechanical utensils were made by the swaging operation from single sheets of metal, long anterior to the plaintiffs' patent. All of these articles were jointless, seamless, without interior angles, strong, durable, cheap, and light, as compared with like utensils of cast metal; so elastic 8S largely to obviate injury to dishes placed or dropped therein; could be safely and easily handled, shipped, and set in position; subjected without detriment to extremes of heat and cold; were not affected by the of their contents, nonodorous, and easily cleansed. In short, they remedied every objection to cast metal utensils which experience has developed and the specifications of this patent and the proofs of complainants have particularized. Defendant's exhibit bidet pans is a small bathing vessel, stamped or swaged from sheet metal, without joint, seam, or interior angle. These were made by Houges, Taylor & Hodges, in Brooklyn, N. Y., as early as 1854; and also as early by Ketchum, of New York. They were usually from 18 to 20 inches long, inches in depth. The size was 10 or 11 inches wide, and from 6 to limited by the demand, not by difficulty of construction. Defendant's exhibit baking pan is a type of an utensil which has been manufactured and sold at least since 1850, and has been made with and without flanges. Many sizes and varieties of this dish were made, and they were used for different purposes. Sheet tin was the material commonly used, but, where that was not obtainable of sufficient size, sheet iron was substituted. They were formed of a single sheet of metal, without joint, seam, or interior angle, by the wheeling process, which is defined as "simply raising articles of various forms and depths out of one flat piece of material,-copper, iron, brass, or any other material whatever in the form of sheets,"-by means of two co-operating wheels, one of which is adjustable, so arranged that by their pressure the metal forced between them ('.QuId, be given any desired form. The capacity of this process for the manufacture of household utensils of any depth or shape is practically unlimited. The usual depth of its manufactures was from eight to eight and a half inches. Defendant's exhibit butler's tray is another exemplification of these wares. It is in fact a portable sink for use in the dining room, formed of "a single sheet of wrought iron, without joint, seam, or interior angle," by the swaging operation. In shape, material, and manner of construction it is strikingly suggestive of the Kilbourne sink. The proofs are convincing that these were made as early as 1878, if not in 1876. Between the basin of this tray and defendant's flanged baking pan, which is as old as the tray, there is but little difference in shape. They were made in the same manner before the year 1880. They were 20 inches in length and 16 inches in width. As long ago as 1846, British letters patent No. 11,073 were granted to Thomas F. Griffiths for an improvement in the form of dies, and a combination of the processes of shaping sheet I'(letal by stamping and
702 'requ.ired shapesltiJ.d, designs. in -atampingdplate and sheet.,metal in aCcordance with his "A. igreat variety of, articles, it .is ,well known, are now tD8d"b.y stain,ping, and ,by stam.ping, combinedw;ithburnishingtoform, lboththese processes are well He appends to the specifica-tioristh:reeillustrativedrawingsof articles stamped from,single pieces of sheet metal and iron 'plate, of the ,same shape as the sinks made by complainant, and thus verifies his claililithat ," the workman will only have to \fury,his dies; {orceM,and chucks; in order to, makeatticles of other size&' abd forms." December 21, 1869, J. Knapp obtained letters 'phltem for an improvement in sheet metals, flour, grain, and other scoops. consisted" in bowls in one piece of metal, without seams or Joints, by stamping up sheets of metal into the form <Jft!J.!ougbs, with a flange around the top," etc. Letters patent were grl.tute(i <'James Kidd, December 19, 1876" for an improvement in metal .wheelbarrows, which consists in making the tray or body of the barrow Of'8.,isingle sheet of steel, struck up or stamped from 11 plate of steel or 4riy other sufficiently ductile metal, by a dishing ram. On the same day. Eidd took out another patent, for, ardrnprovementindishing metby iwhich plates ofsheet metal be stretched or stamped into a dished or concave form, with any desired outline of the concave,and witli ll.(surrounding flange or strengthening adge." Farrington & Armstrong's patent of November 18,1873, for improvement in sheet-metal coffil1s, furnishes another anticipation of Kilbourne's use of the single sheet: of ·metat They made these caskets of two pieces of wrought iron, by dishing or the plain .sheets or platt'S of iron by means of dies, into the: required shape .and depth. T. F. Rowland's patent of May 30, 1876, for an improvement in wrought-iron vessels forbuoyEl. etc., consisted in forming a complete hollow, welded vessel, of. two hemispheres, struck up by dies from entire circular plates. These hemispheres were flanged by the same process, so that they could he welded to form the budy or hollow vessel. Under Morris Wells' patent of January 2, 1866, for shel;lt-metal dies, seamless hollow ware was struck up from single sheets of metal by a series of dies. November 4, 1879, Hiram W. Ball received a patent for an improvement in road scrapers, under which the scoops of those implements were constructed of a single piece of steel. "having upturned sides and back, without seams, joint, or interior angle," swaged or formed to the required shape. Of this patent Kilbourne is the assignee. The simiUtude of language and ideas in Ball's and, complainant's specifications, and the fact that Kilbourne is the assignee of the Ball patent, is at least suggestive of his appreciative apprehension of the prior manufacture.. With Ball's patent before him, his ingenuity would not be taxed to discern the efficacy of the swaging operation to strike up a blank sheet of wrought steel or iron seam, joint, or interior angle,"-the into a four-sided vessel Kilbourne sink in short,-with as much facility as it produced Ball's three-sided scoop fromLthe same metals.· William G. Avery obtained 8 patent November 4,1879; for an elevator bucket without joint or seam,
an"
THE JOHN C.F1SHER. '
703
eurved·front·and sides, andftat back. It is useless to multiply examples of manufacturers from single sheets of wrought metals, possessing every , merit and peculiarity claimed for this sink. ,The list might be indefinitely prolonged. The catalogue of patented machines and process for swaging, :ktamping; and striking up ];lOusehold'and miscellaneous utensils' and conveniences which were jointless and seamless, and preserved the entirety of the material of the article, is as voluminous. The instances cited of the application of this art tooommonuses deprive these features ohhis sink to all claim to novelty. While an exact counterpart of Kilbourne's sink in shape, had not been produced in wrought metal,its prototype in form appears in Bignall's cast·iron sink, for which letters patent were issued January 1, 1867, to L. C. and M. C. Bignall. This is without joint, seam, or interior angle, and has a grooved or recessed flange, in its ,upper and outer edge, projecting horizontally, into which the ,upholdinf}; framework or inclosure is fitted. The flat flange ofcomplainanfi'ssink serves the same purpose. The form or pattern, therefore, lacks originality. ' 3. The Use of wrought steel or iron in lieu of cast metal is mere substitution of materials, which, whatever the degree of superiority given to the manufacture thereby,is not patentable. HowhkisB v. Greellwood, 11 How. 248; Hicks v. Kelsey, 18 Wall. 670; Phillips v. Detroit, 111 U. S. 604, 4 Sup. Ct. Rep. 580; Gardner v. HerZ,118 U. S. 180-192,6 Sup. Ct. Rep. 1027; Brown v. District of Columbia, 130 U. S. 87, 9 Sup. Ct. Rep. 437; F'lorsheim v. Schilling, 137 U. S. 64, 11 Sup. Ct. Rep. 20. rfhe decree of the circuit court dismissing the complainant's bill is clearly correct, and is affirmed, with costs.
atrUck up from·8o single piece o{ rnetal,and formed with' 'a flat bottom,
THE
J omt C.
FISHER.
THE TOM
Ross. GRUBBS. April 22, 189B.)
Ross et al. v. (CircuU ClYU1't
oJ
Th1n'd OirCUit.
t.
L COLLISTON-RJVBR STEAMER LA.NDING-BoAT ATWHARP. A large river steamer, which in landing, head ,on, swung her stern around so all to strike a smaller steamer. safely moored at an adjacent private wharf, where she had a right to be, is liable for the damages caused thereby.
'IilSdmiraltya note does not extinguish'the lien of the claim for which it isglven unless such is the understanding of the parties at the time. The Generat Meade, 20 Fed. Rep. 923, followed.
'.
.
,.
Appeal from the District Court of the United States for the Western District of Pennsylvania.