978
REPORTER.
suchrp,ateri!llin the shape of ijqies, like Exhibit A, for exaWPle,or as a around a laces and lace, but <;ontends that thecqmmercial designaarticles tions "laces"l'l,nd ''lace'' are confined to those forms of the fabrics commonly knowll as laces which .liLre sold by the yard.' The strength of this cOntention .lies in the .fact that, when purchasers ask for such articles other than lace by the yard, they designate them as "lace tidies." I do not understand that this fact takes the article out· of the class of laces. It is conceded that a person who wished to buy lace for edges or insertions 01' 1l.0uncings would ask for lace edgings or insertions or 1l.0uncings, as one witness says, to indicate somewhat its width or purpose. In the same way, the purchaser would designate what kind of laces he wished when he called for lace collars, cuffs, or handkerchiefs. If appears that even laee36 or 63 inches in width, one width of which would be sufficient to make a whole dress, would be included under the commercial. term "lace." The importer, however, contends that, if these tapes, rings., and thread are· ppt together in a certain pattern, it is lace when it is made straight to be sold by the yard, but it is not lace when it is made in a curved form or in a square. In view of the fact. that these articles are commonly under the term "laces," and in view of the fact that nearly all of the witnesses testify they are commercially known as "lace tidies," and in view, further, of the testimony of several witnesses that lace collars, cuffs, and other articles by the yard arekll<;lwn commeJ;'dally as "laces," not made to I find that the importer ha,s tll-iled to prove his contention that there is such a universal tradetettn or designation "laces" as would inand exclude the same pattern clude an. article made by when made in other forms. 'The decision of the board of general appraisers is reversed.
RUBBER TIRE WlIEEL 00·.v. COLUM:QIA PNEUMATIC WAGON WHEEl_ CO.' (CIrcu1tCourt, S. D. New York. December 27, 1898.) L·PATENTS-INVENTlON-NEW CO){BINATIONS OF OLD PARTS,
of olq parts which had been used In ,other combinations, but ppt together, ina manner to obtain the combined and harmonious action of, an such parts, and the full benefit of the peculiar advantages of each, prooucinga 'successful result which had not previously been achieved,constitutes patentable invention.
2.
SAME-EVIDENCE OF INVENTION-SUCCESSFUL OPERATION.
The commercial success, and. wide use of a patented device is entitled to consideration where. the question of invention is in doubt; as is also the fact that prior devices, alleged to have been anticipations, were not successful. . The Grant patent, No. 554;675, for a rubber-tired wheel, discloses patentable invention, and. was not anticipated by anything In prior patents, either English or American, though the several parts which constitute the essential features of the Invention were each used in different combinations in previous inventions. WHEEL:
8.
SAME-RuBBER-TIRED
BUBBER TIRE WHEEL CO. V. COLUMBIA PNEUMATIC W. WHEEL CO.
979
This is a suit in equity by the Rubber Tire Wheel COmp.lHy against the Columbia Pneumatic Wagon Wheel Company for infringement of a patent. Paul A.Staley,F. P. Fish, and Kerr, Page & Cooper, for complainant C. W. Stapleton and Frederic H. Betts, for defendant. THOMAS, District Judge. The complainant is the owner of letters patent of the United States, No. 554,675, issued February 18, 1896, to A. W. Grant, for a rubber-tired wheel. The tire manufactured pursuant to this patent, commonly known as the "American" tire, in distinction from the "English" tire, proved so acceptable that it came into general use, and practically excluded all other solid rubber-tired wheels from the American market. It is not necessary to describe at length its complete success. It is sufficient that it commands the trade in its peculiar field. The defendant desired to manufacture a solid rubber tire, and with that view carefully examined all styles of rubber tire, and thereupon adopted, and has since been making and selling, the precise tire made by the complainant pursuant to its patent; .or, if there is any deviation in form, it is so slight as to be observable only upon the nicest scrutiny. The defendant excuses this appropriation upon the ground that the complainant's combination had been so thoroughly anticipated by prior patents as to present in function or result no patentable invention. The complainant correctly states that its tire is composed of three principal parts: (1) A "channel, or retaining seat of iron or steel, fitted into the wheel-rim; (2) a strip of solid rubber, seated in the channel; and (3) two independent retaining wires, passing entirely through this rubber, so as to encircle the wheel, the ends of the respective wires being united, so as to form two independent rings." These essential parts have each peculiarities of form, and relation one to the other. The under side of the rubber is covered with a strip of fibrous material, usually canvas, which (1) strengthens the base, and tends to reinforce the rubber under the action of the wires passing through it, when strains are brought upon such wires, and (2) tends to prevent wear on the bottom of the rubber. The sides or flanges of the channel incline outwardly, forming with its base a tapered or flaring groove or channel. The inner or unexposed sides of the rubber are fitted into and conformed in shape to the channel, to a point obviously inferior to the upper edges of the flanges, at which point the exposed sides, making an obtuse angle with the unexposed sides, incline inwardly and upwardly and away from the flanges, and gradually round and diminish into the tread of the tire, which is formed on the arc of a circle of much smaller diameter than the width of the rim. The result of the flaring flanges is that the rubber, in moving or springing laterally, is not pressed sharply against the edges of the flanges, and thereby injured, as would be the case if the flanges inclined inwardly. The two wires pass through the rubber longitudinally, in openings which are below the edges of the flanges, and on a line with the vertices of the angles made by the unexposed and exposed sides of the tire; and the ends of each wire are fastened to-
i i "
D
:ft"
f,
gefher, teo the rubber wi1thinthe:el1l1rlneI, 'bUt ncitSorlgidly moving and therebt toa ?egree' to,MifQrce oppos-, :'ThIS with of the rubber;;permIts the Itself toi the obsta:Nes 'with whichif'cbmes in contact WA.en ,the wheel is in mlJtion", 'This!lateral the arising fromits\permissfble turniqg'oh wires, or' <>wn elasticity, or ,such' movement, tend to tire fradi,"abrasion by the rim, 'are essential featafesofthe tire.!: : ·'d ' , " cdtnbIiHltlon novel?,.'l)oes[it vroduce previously known III the alit? the pre!:udent, testi' .:' :"i/,;' 'l,i . , " , . , , " fied:
RUBBER TIRE WHEEL CO. V. COLITMBfA PNEUMATIC W. WHEEL CO.
981
"I don't mean to say thaf I find the e:x!9.ct form shown in the Grant patent in anyone prior patent, but I findlm the features and ad\Yantages claimed to be obtained in the Grant constructiouin more than one .plfior patent. and the slight chRllges of construction in the Grant patent from the .prior patents are exactly shown and described in other prior patents."
Mr. Benjamin, the expert for the defendant, states: "All the elements of both claims of the patent in suit are disclosed in the patents and publications adduced in the prior art, operating in like manner to produce a like result. * * · No one structure in the prior art as here shOwn is a fac simile in every detail of the structure of the patent in suit."
It is understood from these statements that the defendant claims that all the features and functions specified or existing in the Grant patent are. not disclosed in one 1?atent, but that every feature and function disclosed by theGrant1?afent is to be found in priorstructures and patents. Upon the the complainant's counsel was ullderstood to state to the. court that the. c9mplainant's patent must be sustained, if at all, as a patentable combination of parts. Hence it may be considere.d ill what tires the chief parts forming the present combination existed in conjunction with what other elements, and for the performance of First, as to the tapered channel jvith flaring fla'nges. . Willoughby patent (British), No. 5,924, No. 18,030,9f 1892 (Fig. 30) ; Myers patent, 3); Rodgers No. 589,826, of 1895 (Fig. 1); Elliott patent, No. 446,102, of 1890 (Fig; 3); Owen patent (United States), No. 365,091, of .1887,-all show channels with flanges more or less flaring,or inclin'e,dinwardlyfrbm the base of the channel or rim. Certainly it is not new to set solid rubber within such channels, with flaring flanges. In the Willoughby patent, No. to 18,030, several figures eho.wa channel with the felly, into which is a rubber risiJ;l,g aQove the flanges, "having·annularrecesslilSor projections tl;ierein," on ,Which is superimposed "a metallic jyre)n having recesses or projections corresponding to or .engllging those in the See, also, Willoughby patellt, No.p,924, Meyers, Elliott, and patents, Which show rUQbel,' set i:p.t!). a channel with. flaring. fla,nges. This is a;tso of tile patent of .1877.. without noticing for the moment some Substantial differenceLil betwee)l these rubbel's.and of it ma:ybecon,eluded that applying rubbers to channels with flaring flanges was anticipated by the patente mentioned, as appears. fl,'oPJ, the figures ,a,ccompllnying such· patentlil. The purpose of inventors respecting rubber set in rims with flaring flanges may be ascertained by reference to the specifications patents. In the Owen letters patent, No. 365,091, of Jline21,1887, for tire for velocipede, attention is called to the inclination of the tire to expand laterally under pressure, "so' that it projects beyond the edges of the rim, and is sheared or cut ofl thereby/'and the patentee states: "To avoid this difficulty, I width of the tire outside of. the. rim or felly; making Its sides either of a flat or concave form, or or other form falling within the semicircle,' sbthat,wben ·subjected topressnre, the lateral
982.
R,EPOR'l)ER.
enlargement wiR ijot cause the tire to project beyond the rim. Is plainlysll0:wtlin Figures, 5, 6, and 7."
of does'sbow a channel, with flaring flanges; and within it a refractory": rubber, which is not fitted to, and does not rest directly upon, the base of the channel; but does rest on a supporting inner layer of soft 'elastic rubber,but the unexposed ,sides do partially the flari:J;lg flanges. The sides of the exposed part of the tire make a,n angle with the unexposed sides of rubber, the angle as shown in Figs. 6 and 7 being slightly below the upper edge of the flange. Figs'. 6 and 7 show the rubber in its exposed partin f9rm fP,milar, but llOt iit::ientical, el3:pecially inthe shape of the tread, ,with the form of, cop;t.pl\linant's t,re in its exposed part, such exposed being flatW" 6, and cPllcave in '7. Other figures accompanying to Owen. $how the .exposed portion of the rupber in concave form", titted in connection with an undf1rlying rubber with ;fu\Ages, which in some instances incline inwardly, and in incline outwardly. This tire is similar to.complainant's tire ill:these flanges are shown in Figs. 5, 6, and 7; the in part. against such flaring flange; the m.*g:an anglewitp the unexposed sides at 11 ,point the edge of thefbmges; the sides of tpe exposed portion llr,e i6,at in (l; the tread.is formed on the arc of a circle of dphneter tpan. the width of the .rim. J;.etters patent 424,452, of APrl11, 1890, issued to Biersmith, show (]fig. illl channel ",ith corrugated flanges with flaring edges, although .sides of the rubber are concave. nespecting this figure it stilted ip the ,"By reference to Fig. seeij of cOrrugating the rim c,t,reumfereijtlally tends to ;flare: tl1e upper..or puter edges,E, of the sides, 0, tpcause tlie to extendsllgbtly from the' rubber. tire, thereby preventing an' abrasion o( the same,ittldallowlng the dre to upon the smooth flare; ,of tlie' rim when'compft!$$ed'by contact 'With the ground or pavement."
, ., "The rim in' cross section' Is a' segment ort'Wo circles united together also, to receive the upper part of the tire (and secured in any manner), and may be termed 'duplex' or 'double' 'rim, the edges of which are brought outward, and In some cases rolled over, that the cutting action of tire of the ordinary air cushioned or pneumatic Is prevented."
In. this patent the eXP9sed portion ithe rubber is .formed on the arc of a circle. The to the complainant's tire fact that at upper edges, and t:l;il\t, ,It 'IS suggested m t1;tf}tthlS 1S. done to allow the upon fllUoe,and tHereby avoid abrasion of the rubcompressed.' .' .... . .' .'fhe BritiSh letters paterlt, 14,812, of July 4, 1891, issued to Lenton, provide: . . . . . . .'
of
The·specification further ,states: ,"According to the construction, of my tire as above set forth, there Is no tendj3nl1Y to overlap the rhn,.theactic}llpfj!Jle superincumbent weight being rather to press the rubber well Into the hollows of the rim, and to prevent it from springing off', as might happen with a tire and rim of spherical section."
'l'hat patent shows a .tire adjusted tlle"segment of two circles united," withoutspacerbetween thesidesca'nd upper edge of the flange,
RUBBER TIRE WHEEL CO. V, COI,UMBIA PNEUMATIC W. WHEEL CO.
983
and (Fig. 5) an angle at the upper edge of the channel; but the tire in outline cross section resembles the "heart" or "pip" shape. , The Elliott letters patent, No. 440,701, state: "In accordance with this invention, a metallic strip is drawn or passed through suitable dies or rolls to present a trough-shaped band or tire having outwardly flaring or divergent sides, the upper edges of which are rolled over. The rubber tire is placed in this trough-shaped band, and fastened by pins or rivets passing through it." Again: "By making the metallic tire in this manner, the rubber tire, when compressed by a direct or lateral pressure, and thereby overlying the metallic edges, b', will not be cut or injured by said edges, while said edges are made sufllciently high to properly re-enforce the rubber tire."
The first claim states: "(1) The metallic band, b, made of trough shape, and havIng the sIdes, b', extending from the bottom plate, and diverging from one another from the plane of the bottom plate, and having their outer edges rolled over, substantially as shown and described, and adapted to receive a,rubber tire, which is secured in said band by transverse fastenIngs," \ltc.
Letters patent (United States) No. 539,826, of May 28, 1895, issued to Rodgers, on which defendant relies to show anticipation, and of whose priority over complainant's actual invention there is some doubt, state: "My Invention relates to that class of tires made of rubber, and held within a flanged or concave rim, and consists in making the rubber tire in two parts, extending peripherally around the rim, the Inner part conforming to the shape of the flanged rim, in cross section, fitting snugly therein, and having a peripheral groove to receive the outer part of the rubber tire fitting therein, in terminating the Inner part of the rubber tire, fitting within the rim, in shoulders at tile outer edges of the rim flanges, and making the outer wearing part of the tire of less diameter than the inner part and than the distance between said flange edges, so that It cannot be pressed outward over said flanges to be cut thereby." Again: "In Figs. 6, 7, and 8 the tire Is shown made in one piece, the Inner part, indicated by B', terminating in shoulders, B8,at the outer edges of the rim flanges, and the semicyUndrical or semielliptical part C' (corresponding to the part C), rising centrally from the periphery of the part B', with its sides sufficiently removed from the rim flanges to prevent the part C' from being crowded over upon and cut by said flanges."
Although the figure and specification show a channel or rim with flaring flanges, and that the part of the rubber without the flanges is of less diameter than the inner part thereof, so as to prevent cutting the rubber, yet the rubber in form, and the fittingof the same in the rim, is essentially different from the complainant's tire. The patents above enumerated will be compared or contrasted hereafter with the Grant tire. The third essential part of'the complainant's tire relates to the manner of fastening the rubber within the channel. For the purpose of showing anticipation, the defendant calls attention to several earlier patents for rubber tires. It will be recalled that. the complainant's rubber contains two independent and continuons retaining wires, passing through longitudinal openings in the rubber, the tops of said openings being substantially on a line with the angle made by the exposed and unexposed sides, and below the outer peripheries or upper edges of the flanges. The Claypool patent (United States) No. 431,223, of July 1, 1890, presents some similarity. The specification states:
91 FlllDlllRAL RJjlPORTERl ,
or opening, F, and Into of the! tire." Again:' "Instead of u's!ng but one tightening band\ no., it is, evident. :that I may use a;' plurality of , lluchbandlil, as lean' in Fig. '
at'fIght
a the iof. which are Its 'bai'le.l:!:lJ' converge inwardly, by Olle,Wll;e or two passing'through 'olleningsplaced slightl;y above, ' The specification''States:'' ,,", , " "',, """ ,I, .,' ,
"In, practice I prefer to turn the flanges of the rim inward. to form a dovetail channel for the reception of 'the expanded side df'the base portion of; thetl1re;, 'but,JtwUl,be appaf-ent:.that I may employ a rinlwlth a rectangulat, channel, ,and, form the tire ,with lin arched base, to normally rest thereon, andseoUNtbeJ,eame in,plac8Ib\y"me8l1$ofthe ,band,G, as shown in Figs. '1 and B." ", '
, ,(British) 01.1892, to 'Willoughby, show in"Figs.'5a'an1l5c,a rubbel'wH:h a sIngle neal"the base of the Mclin Fig. 8a t\vo 1 openings n!ear:the base «:.If the channel, lffl(l;eacb to' the adjdeent 'sille' than to the other opening; and Willoughby patent, No. 18,030, of 1892, Fig. 30, shows two r <the opening a metallio Of iscoileq i'li,)larts, 'ls)?a!,sed, ofwhich. the specifica, 1
JI ",] unite the' ends of the coil 01.' CQIIS,w,hlch,;wHl also' br,lnlHogether the two eJildsof the, attached rubber; '110 l'tom: tM:cotnblnation intoiil!: hoop, or, I may leame'theends disconnected until the &m blnation IsWd 8.!J)()iUnd the periphery of,! the, wheel:: 'It "Is' to OceUPY,illindi, forelblw drawing the 'ends together, I u-tteithemhb'pl'lloo'liIl a marmer! described in patent No; 466,490, or In some so 1avC1td ,the' ovell,:thesides of the wheel rim..v1:hls, .IUli soone of the' fappl1clitiODs\,of. 'roy In+etltlOO;' '1)8' ,Ian advantage. ",I, ,''! ,i." :(j)J!lolh>u, and the Is prevented blV l the sideBar 't1angesof the Icbannel, and the tension' of, the coil keeps ilie lltre 1 tightlt In:'place.''' <" /J r ' I 'tL [ , :"
ft# 'lhollUn(.t' It tlibber 'tii'eOftr a"
is
the'
sh6wdupUcate openings Rhd metal Wire not. 'Baring rflariges, a rubber.in
Itpllmit m:r Invention to of at any parfellt, nor :tb Any paMietd!it' shape of the' opening in the rubber tire to receive the same. * * · While I consider a fiat strip the
"4'4Q;701',"8t' November 18, 1890 (Fig., 2)1, shows a ,with iij"hichfisseateda r, er' ': ..'c,'lla,itt., ,g,' !S,u".per,iO,1,' boun,d', ap,}; !fs! Ip a 'HHeI'witl{ tHe' 'nper' edge Of the flanges, fashtQ r,eceiVe I ij'fllit' strip) ·'meetal, whose ,ends. pass out .,Ugh, ,the, ",'a,'ll,d f, ,t ,t 'the inner 'Th1s'n{bile ,the bre, withm the chancOurt to b'e'so:retnote'HHUPction'tb'i:be:eomplainant'si ifiirWei'fb,o.ilimell,'ttne'redri. ,: In the leti¥e 9:tta:"H.'J:'ttHe,!ti,tt'll,B',t.O ters :".i",.:';_"I":,!,: ' Elli'6'tUt 'is'said:' 41l0' 7'62pt6 " "'! i, ': .: "".,t'I" ·"1, dop,ot )"".'))1 ';
BUBBER TIRE WHEEL (lQ. V·.
W. WHEEL CO.
985
.best to use, as· It on the tIre to bold down the edges, and prevent It from rO,11111%, yet themetalllc block may be formed to accommodate a strip other than llaL"
is to foreehadow; the complainant's ..The same imm4ildiate diS;pOlilition may ,made of the Beale (British) patent, No. 11,329, of 1883, and Mher siPlilar devices. The letters (United States) No. 539,826, of May 28, 1895, issued to Rodgers, ilIustrlltean the within channel by meane of or two circular openings in. the rubber. The ,specification states: "The tire may be perforated for one wIre, as In Fig. 6, for two, as 'in Fig. 'rhis 7, or fpr a flat metal core, as In Fig. 8." Again: "Theoriter portIon, 0, of the rubber tire, or tread, Is, provIded With a. central base 'and perforation; and through tnisawlre, e, or other suitable form of metal core, Is draw).!, a l1d, the'rubber being compressed therein, ,to. give It the desired power ,ot resist· ance, the ends of the core are joined III any suitable manner to prevent its stretching, therecoll of the' compressed rubber serving to hold 'the .ends of the rUbber tire In snug contact, wlthbut thealdof cement, though latter may be used if desired." " .
The figures indicate clearlY' openings according with this description, but'located. so that abO:u:t one-half .of theopeningls apove tlie outer peripherjof the flanges.", T,he (British) patent, No. of 1890,alao', itis claimed, I!lho;ws a similar means of attaching the rubber co the rim; but, as it does not seem to have received more than pass· ing notice in the briefs of, 9Qnnsel, it need. not be cOl).sidered.iJl detail. These patents show the etllployment of wire or through openings made longitudinally in the rubben, and tbe binding of the eJ;lds of these wires together, to hold the rubber in tl1erim, had . been uli!edbefore the Grant tire waeil).vented. The remaining eleplent of the Q-rant tire is the canvas or 1lbrOUl! strip placed at the base of the tire, to prevent the breaking of. tberub· bel' below that portion of the tiil'e which is between the retaining wires and the rim. A similar use of canvas is. common in rubber appliances, and is found and clearly, described in connection with rubber tires in the British. patent of Timberlake, of December 18, 1890,' British patent of Crowther, No. 9,006, of 1892, and in the United States patent of Lyon"No.418,982, issued in 1890, The func· tionattributed to it in the Granti patent seems to have been antici· pated. To this point an attempt has been made to present with discusi:\ion all patents to which attention is called in the defendant's printed brief, save the DuBois tire, alleged to have been made in Philadelphia, in the years 1891-1893·. In Japo'ary, 1890, letters pat· ent (United States) No. 419,005 were issued to Du Bois for tire for vehicle wheels. The claim is: "(I) A vehicle wheel having a tire wIth side flanges, a tread having should· ers thereon, and an upset annulus surroundIng said tread and within said tire, saId parts being .comblned substantially as described."
The specification states: "I am aware that it Is old to secure a tread withIn a tire by means of wlrel passed circumferentlally around the said tread, but I am not aware that it Is common secure the tread by upsetting an Allllulua thereou. IU herein described and claimed."
to
".A rubber'tIre haVing ilstrap, Passing through the tire. a certaJn distance from the bottom. the chattnels'from the stock shape, rolled by Jones & Laughlin, of Pittsburgh. Pa., and shown In their list of shapes. These channels were beveled on the The rubber from the molds which we had the channels being made -Came to. us perfectlyal rIght angles to the or tllU'ed. .The . ground and filed .otr til fit the channel. radiUS, pefore: That Is about The edges.were rounded 1:U'ly. every shape by which the fuIldel'lcriptlon of the tire., * *.*. I. triedn I could procm:e't,he least w,elgh.,.t o.f.. rUbb.er, at th.e .same thpe.,securlng enougb . substance to insure wear.· upper .portlon of the rubber was- I can hardly descrIbe. the shape 1:11 IW,j>rds- It meeting Qt circles, where it joined the bevel entering the channel. There was. epoug):l play given to allow the rubber to fiU the channel without pressIng hard against the edges of the flange. * * * Tlle ..rubber was so cQnstructed that it sloped away the of the chan!tel",meetin,g at tl).e I\peXQrpoint without forming a r(}und. * * * The curveS,qf 1;he upper portion of the tlJ;e were brought . dOwn. so that they joined tlje' channel at the joint Where the edges of the channel were rounded,-where the end otthe lunerslde 'of the semicircle came." ,
patehts'alre{ldy discussed; ',There is, however, evidence of a tire of diffesrthlfshape, which,' lJuBois claims to have made, which he thus described: .. '
it rtili *ltHinwardly in'clitiillgllanges, holding an rubber, tprougl1, which passes 1?I\gitllQ.inally a band, similar to that- employed by,rWli8tt' and nothing to the knowledge of the
()QWl?lain.l1nt's
is' said to be a Dli Bois tire.
It shows
The witness thereupon made several f!lketches of this alleged struc· ture, of which No: 2 bears very close reseDlblance to the complainant's tire, to the manner of fastening, for which the strap arrange· ment passing through the rubber is employed, but the location of the angle differs essentially from the'dral descripti'on of the witness. B:0ward,foreman for Du Bois, statesthat the rubber was ground to 1ltthechannel, producing a, chamfered ti're, and that the angle or widest part of rubber tire came a little bit below the top pf the steel channel,wherein', as to' the loc'iition of the angle, he differs from the oral evidence of Du Bois. EVfd..ence similar to that of Howard is given by MacNeal, Davis, Watson, and Haynes, workmen in the Du Bois factory, who put the rubber from one-eighth to three· sixteenths of an inch below the top of the clianIiel.Du Bois and testified to salesto several persons ofthe Jtire in the form described, there is oilier evidenceof)lei'sons to whom the tire was said'."to have been sold, which diminishes seriously the credit of these statements. The tire described is essentially unlike that described in theDu Bois patent, and seems to have escaped both fame and market; and the Du Bois tire, wliatever it was/was a failure. It does not seem just to found an anticipation of the complainant's tire oral evidence whosMl.ccuraCiy must be doubted seriously in reading the statement of Du J;lois himSelf: ,.' . ,_. . . All the patents to which the atteiltionof the court has been called by defendant's argument have been reviewed,andit'remains to sumthe parts and funCtions of· s\Jch parts, and consider whether complainant's tire presents a patentable combination. This inquiry may be premised by the following statement : It is considered that one general result is demanded in a rubber tire, viz. such arrangement
RUBBF;R TIRE WHEEL CO. V. COLUMBIA PNEUMATIC W. WHEEL CO.
987
of parts as will permit its profitable use; in other words the tire must be such that it will wear sufficiently long to be reasonably economical. Hence it must be capable of withstanding strains. To do this, it must have capacity for lateral movement, whereby it may yield rather than persist in overcoming forces brought to bear against it; otherwise, it will be worn or wounded in its tread, or torn from its channel. The wire" through the rubber holds it in its place, and gives it the opportunity for lateral play. But that wire alone is not sufficient, but must be re-enforced, lest it tear or strain the rubber; hence arises the necessity of the unexposed sides and base of the rubber fitting the channel up to the point of the angle, which receives a share of the force, and tends, in connection with the rubber's elasticity, to send the rubber back to its seat. This angle must be below the upper end of the flange, sO that the inferior side of the rubber may impinge against the same; and the flange should flare, to give the rubber opportunity for lateral play, and also lest the rubber be pressed against it ani) cut thereby. Hence only such tires could anticipate the Grant tire as have the following characteristics: (1) A rubber held in the channel by a longitudinal wire, so firmly that it may not escape, yet so freely that it may haVe" the same lateral play through its whole extent; (2) a rubber fitting a channel at the base and sides, whose unexposed sides form an interior obtuse angle with the exposed sides; (3) the location of the vertex of such angle below the upper edges of the rim; (4) flaring flanges. Parts in combination cannot produce the result effected by the Grant tire unless they be such parts, or the equivalents of such parts, and be.adjusted as above stated. Is such a tire described previous to the alleged invention of Grant? The patents considered contain the following elements found in the Grant tire, irrespective of form, adjustment, and presence of other parts: . Beale Claypool Biersmith Elliott Rodgers Walker Lenton Willoughby (No. 5,924) Willoughby (No. 18,030)
Tire.
Flaring Channel. II II II
Wire Connection.
..
Angle.
··
"
·· II II II
II II II II
. . " ..
From the above it will be seen that Biersmith has a flaring rim, and no other resembling parts; but such rim and the rubber are totally different in shape. The same is true of Lenton; and, while the rim in Elliott has a flare, the remaining parts are essentially different in shape and attachment. The same is true of the Myers tire. Beale is no nearer to the Grant tire than a strap connection is to a wire can· nection. Claypool only resembles the Grant tire in its wire connection, which is shown above, below, and on a line with the upper edges of flanges. Rodgers sbows a rim slightly flaring, in wbich is fitted a rubber, whose sides are coterminous with the edges of the
passaClttqilWld 4ltferent J:lOiOe·
iUu."t;I'at§<1, Ifn ihe 'rqe flat :tJlentin velot\l*de$.'1' . .
!1val! rubber, in wltlch an opening or through which wires are form, 'and parts are thoae· emp;loyed in the' Grant tire. It is patents <ltlqld.· perform the function or jPntm parts appear Gl1anHire; In the Walker described in, the specification or Q.i iv:iW!Wed rint,nn: angle, ,and retaining wire. .lthe: edgeslQi, the :flange, and is made by relates to "improvejUl!'
!of' tires bflndia rubber ha'vil1,g 'segmE)J!tsi QfIQ:letal" metitlr:vrirei "Uletali wlrlnrope; .or .any sfrong cord or care I.!p" qedd .· ..t.'s ·. p,. . ,y,.,e .\.. . . . ce.'. c. .... ference, and. at glvep wires qr tbeir shanks projecting from the tndiartibller 'pre tdwiJ:tM thecen'ter 'of its cIrcle. 'rhese l !Welfapped .With' la' \:ll:!tew·thl'end; I lind! shanks liutsfitted. 001'are toM.lnade!, in !the metltl·l1m· of the,' Wbeel; and the shanks PFlssed. tllrough.and,f:aste,l,lelii9N ,crewiflg/ nutlil. Wltb: washers, riveting, ,l,'lenCli1jg, .or other'Y;ise; re""derlng £'llmjng off pf .J:Pe:. tire simply imD'ossible.'p", :"
-,'
o,,:'fon'l
"I,!
j
",'
'
,',
'",'
,
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the free6nm of play that clllU1nel·i$ V"l3haped, ·and hence the are ,flal'ing,but i,tr naSnVl¢r"little similadty In shape or tq!the rim used by .; !'i""!": . " . . ,Tlltt .'V:ilJpqghb,y combination wire connections, in the similar, save ·to thQse usOOiibNJ Ilud,::the figure;skows also a very alignt "Wgle located. sligbtlJl' I !Within .iliha,'t!anges. ,Tpeirim, however, is of the clinger variety; that is, the tlanges incline inwardly, and bind the rubber on each sidel',ri'lSU'ch a tire thwarts the lateral play otherto the the wires, and, although almost imangles appear, made by the sides of the rubbe'r, they are not sufficient to give the immunity resulting from a well-defined angle :whose vertex is within the'flaring rim. Figures 5a and 50 show rhus shaped like the, segment o( a circle, in which are seated spherical rub· be.r;1il held in place by a single wire. The rim is described in the speci· fications as U or V shaped. A V·shaped rim must have flaring flanges, but the rim is quite unlike that employed by Grant, and in the entire absence'l)f the the functions thl'! Grant tire seem to be abs'ent. Indeed, the freedom of actiOirperlliitted by the used by Gf@ntseemS1)o,be'denied the,tire, for the reatlIe rubber is cQ!J;fined by,theIY-shaped channel. iT i T4e Willol1ghby patentiJ;N'p;i 18,Q80, wire con;nection, flaring (see Figa.d36, 30, lUi), rand iIi. mere'coincidence of to be the tQ; the Gran'Mire. But look and all pQ$siple,c<mceI1tiolll;of coincidence of function is.QJl*ljpated at once. T:h:ere is the Jlalting rim; in which is seated a rubber upon which is pIae a steel Quter tire, through which pass the (} openiI\gs and wires. The;angleis far without the upper edges of the riJp,apd .it appears, that :naither function. ascribed to the Grant tire is obtained. . !I
'ltJa QbV,iQUS that the.
'J ,!H
to.
RUBBER TIRE WHEFlI. CO. V.COLUMBlA
989
The last considered is tb,e;Owen tire. Here are shown (Figs. 5, 6, 7) flarfng flanges"and an obtuse angle, whose vertex is slightly within the flanges. ,Hence it embodies two of.the essential elements of the Grant tire. The third essential-,the connection wire-is absent, and hence the function tlJ,at depends so much upon it is absent. The result of this examinatio,n is: (1) That no previous tire embodied the parts essential to the Grant tire. (2) That no ,previous tire performed both the functions ascribed to the Grant tire. (3) No tire ever had the lateral play ascribed to the Grant, because such .action depends, not only upon the wire connection, but also upon the flaring rim and angle within the flanges, and no previous tire ever combined the three in any relation that made the function possible. (4) Previous tires have been, made with the exprl;'ssed intention of flaring the sides, so that the rubber could not project beyond the rim; but the successful operation of such a tive depends upon a marked oqtuse angle located within the edges of the flanges, and the shape of the.rim and ofthe rubber bave much influence. No previous tire in form. and adjustment of parts has equaled the Grant tire in effecting desired results. ' It maybe observed, further, that, while all parts in the Grant patent, as well as parts not contained in it, existed before, yet no one tire had all ,the parts now present, and, when any of such parts were used, it bore a different relation to its associated parts. It was just for that reason that the earlier tires failed. The mechanism was imperfect, because the parts were in some respects faulty themselves, or misasso· ciated, or both, and impaired the proper alttion of the correct part: or parts. Not a single tire can be selected that did ,not have one or more features that so disturbed the harmonious working of the whole as to make the structure undesirable. In the Grant patent not a single element can be deducted without disturbing the perfect functional action of the whole, as well, as of the several parts. In the Grant tire there is an harmonious and beneficial co-operation of all the parts; in other tires there is an inharmonious action of one or more parts with the others. If Grant has selected old parts,-as he certainly has,-he has selected those not before associated, and has given them a new relation each to the other; and where any two parts have been used before in a similar relation he has so modified such relation as to supply a lacking harmony of action. This, in a sense, is selection, and in the adjustment of parts used there is variance in the form and .location of such parts. But a careful and painstaking study of the Grant patent increases the conviction that the skill and method employed in the.selection and the new adjustment was not only intelligent, but that it resulted in something more than a contrivanceof which any skilled mechanic would be capable. Grant studied the correct principle, and he fashioned and adjusted the parts to allow the principle to operate to the best advantage. A person may assemble certain parts in a watch, and these parts may act one upon another so imperfectly as to impair or destroy correct action. Another may eliminate from the, works the parts that are not only useless, but destructive of proper action, and select and add from other watches parts which, in connection with those already used, under
990
,'.' gl:trilllDERA.L
-perB9:Q gives a new associati?n and relation to ,the parts.
Such last The result 'i8illlbatrone watch presents atn!echanism resulting in perfect action. IS thereri<finventive skill in this, no result, no new harmonious function? It is apparent that the same end has been in the view of previous patentees, viz. to prevent a· cutting of the rubber on the flanges, and to avoid a straining or breaking of the rubber by contact with obstructions and inequalities in the road. The same parts in separation may have beetltised to effect that result; but previous tires have not been profitably durable, and no particular part now used was able then to effect the desited result, because the right parts making up whole were notselectedi and properly adjusted one to the other. But the .present partsd(feffect such result, because they are correct in form and relation, arid; because such parts modify' and assist each action precisely as tliey shOuld. It is illogical to assert that there is nO new result when old parts are so related that they accom· plish what in perfection; has long been sought in vain. A device that effects avaltiable function should not be declared unpatentable or lacking in novelty, because some one had used one of the parts here and an:other there, to secuJ:le'the same result, but has used them so awkwardlyand illy associated'with other parts that the result was not ob· taJnable. Referring now to thecaselil cited by the learned counsel for the defendant,itmay be C0i;isidered whether such neW-combination of parts in: modified relations, resulting in the accomplishment of what had before been sought,bu.t had not been obtained in equal degree, is patentable. In Stephenson"'. RaiIroad'Co., 114 U. 'So 149, 5 Sup. Ct. 777, Id., 14 Fed. 457, thevatent was condemned because "no one of the three elements of the alleged combination performs any new office, or imparts any new powers to 'the OtMl'S, and combined they do not pr<ldttce anynewresulttnorecheaply or otherwise advantageously." Can it be seriously:eaid' that in the Grant patelltno new power is given by the locatibn of the angle, anll that there is Jio .result, new in wires allowing lateral motion to the en· advantage! in the use of tire rUbber;! thedestructi"vetendency, however, being limited by such angle? In Busell TriJiln'ierCo. t. Stevens, 137 ,423,11 Sup. Ct. 150, thecoll1bination wascondemned,becallse there was shown in it only "great industry" iinacquiring 'a thorough knowledge of what and improved others had done in an. attempt to trim'soIes in a mode by the various devices perfected by patents for'that purpose, combining the bestof them, with no good judgment 'in little mecUanicalskilI in their application. . It was said in that case that the new' product "necessarily all the beneficial features of all earlier patents,. and to a. certain extent. improved upon them.$ttch,j[hprovement; however, was an improvement in degree, and was; therefore, not patentable. But in that case it was found that there was no 'substantial difference between the improved cutter and 'one' previously issued, "except in the, configuration of their molded surfaces, and this is not a patentable difference." In the present case the parts, although old, had existed in connection with other parts entirely dissimilar to those here used, and the result or function is accom-
in
a perfect
the
RUBBER rIRE WHEEL CO. V. COLUMBIA. PNEUMATIC W. WHEEL CO.
991
plished in the harmonious and profitable action of all the parts, and in respect to the scope for lateral play, while it may have been in view of previous patentees, the previous parts simply precluded it, while the present parts invite and assist it. In Pickering v. McCullough, 104 U. S. 310, 318, Mr. Justice Matthews said: . "In a patentable combination of old elements all the constituents must so center into It as that each qualifies every other. To draw illustration from another branch of the law: they must be joint tenants of the domain of the invention, seised each of every part, 'per my et per tout,' and not mere tenants in common, with separate interests and estates. It must form either a new machine of a distinct character and function, or produce a result due to the joint and co-operating action of all the elements, and which is not the mere adding together of separate contributions; otherwise, It is only a mechanical juxtaposition, and not a vital union."
He was writing concerning'apatent, of which he says: that each operates oUly in the old way. Beyond the separate and well-known results produced by them severally, no one of them contributes to the combined result any new feature; no one of them adds to the combination anything more than Its separate, independent effect: no one of them gives any additional efficiency. to the other, or changes in any way the mode or result of its action." "It is perfectly Clear that all the elements of the combination are old, and
And he quotes from Reckendorfer v. Faber, 92 U. S. 347, 357, where it is said: "The combination, to be patentable, must produce a different force or effect, or result, in the combined forces or processes, to that given by the separate parts. There must be a new result produced by their union. If not so, It Is only an aggregation of separate elements."
Now, apply whatever is found in these holdings to the case at bar. The present combination is made up of several elements. Each one of them has been used before, but in combinations where the parts were warring one upon another, and their action, and the reaction upon each other, instead of distributing strain, so that each p.art received its due proportion, and in co-operation with the other parts sustained the tire, cast upon one or more of the parts a force. that it was not suited to bear, resulting in the tearing or wearing of the tire to an unprofitable degree. Will it be claimed that the same force, or effect, or result is obtained in the use of the angle-and flaring rim in the Owen, or Walker, or Willoughby patents as in the Grant tire? No, because (1) some of the parts were incorrect in shape, (2) some were incorrectly located, (3) some parts were absent that should have been present, (4) some were present that should have been absent. And so with other patents. Is the effect produced by Poach element in the Grant patent confined to its separate, independent effect? Obviously that is not the fact. Do not these elements all enter into the new combination, so that each part qualifies every other? Ob,iously such is the case. Admitting that each part in its former relation tended or was intended to perform the same function, the fact remains that it was associated with parts that rendered the exercise of the function impossible. In what previous patent can it be said justly that any part employed by Grant qualified correctly every other part in the manner in which it does in its present association? There was, of course, qualification, but it was hurtful. If it may be
992
11'1/
$!l{ that·· each; pailtsepulltelYJdliStilpossibly fin' !'
.with one tendencyitoc;perform the. same oOlc,e, yetithe, e.liequtiO,lll' loi the:lfuoction"was destN:Yj'ed or neutralized by lorl:iy adjustment thatcahsEldconflict.. The Grant tire, as comparedwith:arly;lpilfevioustire,Ush6ws decided funcandwhenumy, Qne or similar parts ·are used they al'eilUsedin such changed'ctninectioiflWith other parts that they effect'a qifferentresult, it is thE;!' result the preitn sQw,ecase$ha4 i,nviaw', and, . attained tire failed;! , It is true that in certain particulars there is a dose similarity;n$'in the angle and its location 'in! the Owen W.c}r9, tires. !ilide by 'side, and study the effect of lateral or (lirect pressure upon the rubber, and observe the diffe:rencesln! [Tliesam'e contrasting examination wfthltbeGranttire'willlead,ttJthe conf!tiled desired. It may ,that ,some respects are but the magnitude, of that success i ,aid" :the aourtinresolving doubtful considerations in favor of the patent in suit. Such employment of the ofqolDJ;lJeJ:'cfal to 'aid ;fue'l!olution of doubtful questions is justified (Barbed Wire Patent Cases, 143 U. S. 275, 12 MagQwan,v"ElmkingQo.,141 U. S. 332, 12 Sup. Sup. Qt. Ot,n; nld;, Kre&fuitzv.Cottle Co., 13 Sup. Ct. 719; .& Spring Co., 41 Fed. 894; Topliff v. Topliff, 12 Sup. ct. 825; Seabury & IJohnson v. AmJli:nde, 152 U;S:561 1' 14 Sup. Ct:683 ; Manutacturing 00>1 v. Adams(t5l!n; S.139, It4' Elup.'Ot295) the fact of failure intwhole or' 'pan 'of 'previoffsly,Palented I tires ibf:available (Gandy v. Be1til1lgCo,,141;JJU, S. 587, 12 SUIW 598). t:' ''I':' .' fl'hus, after prolonged exami,nAti&nil\fudy, ancr discusSion, in which I much unnE!tessltr11 repetitiort'''i ''in 'which mllch has been left unnld, qecree should be, in tator of the 'C6rnplaiilaht. The' PIe questions may of the parts'arid fUnctions of the pans' of the' ·"qq! . have .d1erlookeqfeatures in in as 'well as of it has been COlDt»iredor' butltn 'effort ih'Ri$.' been faithfully tlie previous of 'the art; S-o'1ar as the printed arguments and presented! can attention to the same, and to state plainly the grounds of the. reached.
and
= · . (Circuit saRElet of Appeals, et al. Oircult. Feb1=Uary 16, 1899.) 11'l1iREFRIGERATOR ellA.'1'BS.
, P No. 547,185, for $.U Iwprovement crates, products to be shipped, above describes 'a cheap box, to hold which isa rack for ice; the two 1!elngseparated by a diaphragm of sheet metal, havlng'its. edges turned' down' to prevent the water from entering