If letters patent be manifestly invalid upon their face, the
question of their validity may be raised on demurrer, and the case
may be determined on the issue so formed.
Letters patent No. 308,095, issued November 18, 1884, to Edward
S. Richards for a grain transferring apparatus, are wholly void
upon their face
for want of patentable novelty and invention.
This was a bill in equity for the infringement of letters patent
No. 308,095, issued November 18, 1884, to the plaintiff, Richards,
for a grain-transferring apparatus.
The purpose of the invention, as stated by the patentee, was
"to provide improved means for transferring and weighing grain
without mixing different lots or loads with each other, thus
preserving the identity of each lot while it is being transferred
from one car to another."
The device in question was substantially one for shifting grain
from one car to another through an elevator, by means of which the
grain is raised from one car to a hopper in the elevator, where it
is weighed and discharged into another car. The device is
illustrated by the following drawings:
image:a
The patentee thus explained the operation of his device:
"The car to be unloaded -- for example, the car, B -- is drawn
upon the track, F, and allowed to stand in such a position that the
door will be directly opposite the chute, J. If the grain is to be
transferred to a car opposite, or about opposite, the car, B -- for
example, to the car D -- I close the door or valve, L, and open the
valve, K. The grain is then shoveled from the car by means of a
steam shovel, or otherwise, into the chute, J, from which it passes
into the elevator leg, through which the buckets move upwards. The
grain is thus elevated and discharged into the hopper of the hopper
scales, located for discharging its contents into the Car, D. That
hopper has its
Page 158 U. S. 300
valve closed while being filled, but when filled, the grain
therein is weighed, and discharged into the car intended to receive
it."
The patentee further explained that if the cars are not opposite
to each other, he closes the valve, K, and opens the valve, L,
through which, by a similar method, the grain is carried, lifted,
and discharged into the other car. The claims of the patent were as
follows:
"1. The combination of a fixed or stationary building, the
tracks, F and G, an elevator apparatus, and elevator hopper scales
having a fixed or stationary hopper provided with a valve or slide
in its bottom, and a discharge spout, P, adapted and arranged for
discharging the grain directly from the said hopper into a car,
substantially as specified, and for the purposes set forth."
"2. The combination of a fixed or stationary building, the
tracks, F and G, two or more elevating apparatus, a series of two
or more elevator hopper scales having fixed or stationary hoppers,
each having a valve or slide in its bottom, the discharge spouts,
PP, adapted and arranged for discharging the grain directly from
said hoppers, respectively, into a correspondingly arranged car, a
horizontal conveyor, the chutes,
Page 158 U. S. 301
JJ, having therein the doors or valves, K and L, and the slides
or doors, OO, all arranged substantially as shown and described,
with relation to each other, and for the purposes set forth."
A demurrer was interposed to the bill, to the effect that the
patent and both claims thereof were wholly void upon their face,
for the want of patentable novelty and invention. This demurrer was
sustained, and the bill dismissed. 40 F. 165. Thereupon plaintiff
appealed to this Court.
The case was argued with No. 311,
Richards v. Michigan
Central Railroad Company, and No. 312,
Richards v. Chicago
& Grand Trunk Railroad Company.
MR. JUSTICE BROWN, after stating the facts in the foregoing
language, delivered the opinion of the Court.
While patent cases are usually disposed of upon bill, answer,
and proof, there is no objection, if the patent be manifestly
invalid upon its face, to the point's being raised on demurrer and
the case's being determined upon the issue so formed. We have
repeatedly held that a patent may be declared invalid for want of
novelty, though no such defense be set up in the answer.
Dunbar
v. Meyers, 94 U. S. 187;
Slawson v. Grand Street Railroad, 107 U.
S. 649;
Brown v. Piper, 91 U. S.
37.
The patent in question is for the combination of (1) a fixed or
stationary building; (2) two railway tracks; (3) an elevating
apparatus; (4) elevator hopper scales having a fixed or stationary
hopper provided with a valve or slide in its bottom; (5) a
discharge spout, arranged for discharging the grain directly from
the hopper into a car.
The second claim has the same combination duplicated, with the
addition of a horizontal conveyor; the chutes, JJ, having therein
doors or valves, and the slides or doors, OO.
Page 158 U. S. 302
It is not claimed that there is any novelty in anyone of the
elements of the above combination. They are all perfectly well
known, and, if not known in the combination described, they are
known in combinations so analogous that the court is at liberty to
judge of itself whether there be any invention in using them in the
exact combination claimed. We do not feel compelled to shut our
eyes to a fact so well known as that elevators have for many years
been used for transferring grain from railway cars to vessels lying
alongside, and that this method involves the use of a railway track
entering a fixed or stationary building, an elevator apparatus,
elevator hopper scales for weighing the grain, and a discharge
spout for discharging the grain into the vessel. There is certainly
no novelty in using two railway tracks instead of one, or in
discharging the grain into a second car instead of a storage bin or
a vessel. Unless the combination accomplishes some new result, the
mere multiplicity of elements does not make it patentable. So long
as each element performs some old and well known function, the
result is not a patentable combination, but an aggregation of
elements. Indeed, the multiplicity of elements may go on
indefinitely without creating a patentable combination unless, by
their collocation, a new result be produced. Thus, nothing would
have been added to the legal aspect of the combination in question
by introducing as new elements the car from which the transfer was
made, the engine that drew such car, the steam shovel, the engine
that operated the shovel and the elevator, as well as the
locomotive which drew the loaded car from the building, though
these are all indispensable features, since each of them is an old
and well known device, and performs a well understood duty.
Suppose, for instance, it were old to run a railroad track into
a station or depot for the reception and discharge of passengers.
It certainly would not be patentable to locate such station between
two railroad tracks for the reception of passengers on both sides,
and to add to the accommodations a ticket office, a newspaper
stand, a restaurant, and cigar stand, or the thousand and one
things that are found in buildings of
Page 158 U. S. 303
that character. It might as well be claimed that the man who
first introduced an elevator into a private house, it having been
previously used in public buildings, was entitled to a patent for a
new combination.
Not a new function or result is suggested by the combination in
question. The cars run into the building on railway tracks, as they
have done ever since railways were invented. The building is fixed
and stationary, as buildings usually are. It is no novelty that it
should contain an elevating device, and that the latter should
raise the grain to the hopper scale, and should discharge it either
into a bin or a vessel or into another car. In principle, it makes
no difference which.
In fact, combination claimed is a pure aggregation, and the
decree of the court dismissing the bill is therefore
Affirmed.