The second claim in reissued letters-patent No. 8914, dated
September 30, 1879, to Frederick W. Weir for an improvement in
railroad frogs (the original patent being No. 215,548, dated May
20, 1879), whether construed by itself or with reference to the
state of the art at the time of the alleged invention, is a claim
for a combination of parts, viz.: (1) two center rails B B' joined
to form the V-shaped point, (2) the outside diverging or wing
rails, (3) the channel irons of a U shape uniting the center rails
together, and also to the outside or wing rails, so that the whole
shall constitute a frog with the characteristics imparted by the
features of this combination, and no invention was required to
divide the U iron, shown in patent No. 173,804 issued to William J.
Morden, February 22, 1876, into two so as to connect the center
rails with the outer rail.
This was a bill in equity to restrain the alleged infringement
of reissued letters patent No. 8914, dated September 30, 1879, for
an improvement in railroad frogs, the original patent, No. 215,548,
dated May 20, 1879, having been issued on an
Page 125 U. S. 99
application filed February 4, 1879, to Frederick C. Weir, the
complainant. In his specification, the patentee describes the
invention generally as follows:
"My invention relates to the class of frogs made by the bending
of the overlapping ends of the rails themselves, and the junction
of the same with the central rail constituting the point by rivets
or bolts through separating pieces, and my invention consists first
in such a formation and connection of the two rails which make up
the angular point as that one of the rails extends unbroken and
uncut directly across the path of the other, and in itself makes a
solid end to the point, with a full-width flange, which is
overlapped by the flange of the other rail, and thus a flange of
double thickness is afforded at a point where strength is
particularly needed, and the cutting away of the flanges (as in the
usual custom) is avoided entirely; second, in an improved manner of
connecting the two rails of the point together and to channel iron
pieces, to which the outer rails are connected."
"One of the objects of this invention is to furnish a firm
lateral support upon each side of the V-shaped rails by means of
channel irons, which at the same time unite and hold the center
rails forming the V to the wing rails firmly, uniting and holding
all the parts in their proper relative position."
The drawings accompanying the specification were as follows:
Page 125 U. S. 100
image:a
Page 125 U. S. 101
The specification explains the drawings as follows:
"In the accompanying drawings, Fig. 4 is a plan of a frog
embodying my improvements. Fig. 5 is a cross-section of the same on
line
x x. Fig. 3 is a plan of the under side of the frog,
showing the continuations of the main point rail with a full-width
flange throughout, also showing the riveted extension of the
flanges of the channel irons beyond the points. It will not be
necessary to describe the devices shown in Figs. 1 and 2, as they
are fully described in division B of this reissue. A A' are the
outer or wing rails of the frog, and B B' are the two rails which
compose the acute angle, or point."
"In place of cutting away both the flanges of the rails B B', so
as to make a joint between the two rails midway between the lines
of the angle of the frog, as is common now, and, I may say, usually
practiced, I continue the flange of the rail B, of full width,
intact clear along the junction of the two rails to the point where
it strikes the flange of the outer rail, as shown in Fig. 3, which
is almost immediately under the point X' of the frog, and I swage
up the flange
b' of rail B' on one side, as shown in Figs.
5 and 3, so that it lies over the flange of rail B, this flange of
rail B' being cut away angularly on the edge to properly meet the
line of the web
b' of the rail B."
"I connect the point rails, B B', together by rivets, C, which,
while they secure these rails together, also secure pieces of
channel iron, D, to said point rails, the channel iron making the
separating medium between the point rails, B B', and wing rails, A
A', and giving a means for attaching said wing rails."
"The adjacent flanges of the channel irons of the point may be
extended beyond the point and riveted, as shown in Fig. 3."
"With channel iron, I attach the wing rails in the manner shown
in Fig. 5, the outer flanges of the iron being notched at
d for the passage, before the outer rails are attached, of
the long rivets, C, the bolts, E, which connect the outer rails,
being placed between the notches
d. "
Page 125 U. S. 102
The claims are as follows:
"1. A frog having one of its point rails extending with a
full-width flange along the junction of the two rails, and the
flange of the other point rail overlying the flange of the
first-mentioned one, substantially as, and for the purpose,
specified."
"2. A frog composed substantially of the two center rails, B B',
joined to form the V-shaped point, united to outside diverging or
wing rails by means of two channel or U irons, D D, one wing of
which channel or U iron is shaped to fit the web of the abutting
rails combined to form the point of the frog, and upon the other
side fitting the web of the wing or diverging rail, respectively,
and secured by bolts or rivets passing through the webs of the
rails and the sides of the channel bars, substantially as
shown."
"3. In combination with the point rails, B B', fitted to each
other as described, the channel pieces, D, extending, and bolted or
riveted together, beyond the point of the frog and connecting
rivets, C, which extend entirely through the two point rails and
the channel pieces, substantially as, and for the purpose,
specified."
The only claim involved in this suit is the second, no
infringement being alleged of either the first or third. Separate
answers were filed by the defendants respectively, which were,
however, in substance the same. The defenses are that the reissued
letters patent are null and void as not being for the same
invention as set forth and described in the original letters
patent; that the defendants do not infringe, and that the alleged
invention of the complainant was not a patentable novelty, in view
of the state of the art at the time of the alleged invention, as
shown in certain prior letters patent specifically mentioned. The
answer of Morden, adopted by the others, also sets out the
following:
"And this defendant, further answering, says on information and
belief that he is the original and first inventor of a U-shaped
plate in combination or connection with a railroad frog, and that
said invention was secured to him by said letters patent of the
United States No. 173,804 and No. 205,496, and that, by virtue of
said letters patent, he has the sole
Page 125 U. S. 103
and exclusive right to said U shape in a railroad frog, and that
while the complainant is engaged in the manufacture and sale of
railroad frogs, he uses a V-shaped plate so secured to your
defendant, as before stated, and in said manufacture and sale has
copied from defendant's invention in substantial and material parts
secured to defendant by his letters patent aforesaid, and in
infringement of the same, and this defendant, in this connection,
would state that prior to the filing of complainant's bill, he (the
defendant) filed a bill in this honorable court against said
complainant for infringement of his said letters patent No.
173,804, and said wrongful acts, and praying relief on account of
said wrongful acts by the complainant, which said bill is now
pending against him in this court. Some days after this defendant
filed his bill as aforesaid, the said complainant filed his bill,
seeking thereby, as defendant is advised and states on information
and belief, to harass and annoy defendant in his said suit, and to
delay accounting to defendant for said wrongful acts of him, the
said complainant."
On final hearing, a decree was rendered dismissing the bill for
want of equity, to reverse which the present appeal has been
taken.
MR. JUSTICE MATTHEWS, after stating the facts as above,
delivered the opinion of the Court.
The question of infringement depends upon the proper
construction of the second claim. The proof shows that the
defendants did not infringe either the first or the third. They did
not form and connect the two rails making up the angular point, as
a part of the frog, so that one of the rails would extend unbroken
and uncut directly across the path of the
Page 125 U. S. 104
other, and in itself make a solid end to the point, with a
full-width flange, overlapped by the flange of the other rail, thus
affording a double thickness, and avoiding the cutting away of the
flanges, as was customary. If there is an infringement, it consists
in the use of the channel irons of a U shape, uniting the two
center rails forming the V-shaped point of the frog to each other,
and the two thus united to the two diverging rails on each side, by
means of bolts or rivets passing through the webs of the rails and
the sides of the channel bars. The question was disposed of by the
circuit court in favor of the defendants, as follows:
"The question of fact as to infringement depends upon whether
the 'two center rails, B B', joined together to form the V-shaped
point' mentioned in the second claim, necessarily mean the two
center rails which are described in the specification, or does it
mean any center rails, joined together in any manner to form a
V-shaped point? The answer to this question seems to me to be found
in the complainant's own specification. He says:"
"My invention consists first in such a formation and connection
of the two rails which make up the angular point as that one of the
rails extends unbroke and uncut directly across the path of the
other, and, in itself, makes a solid end to the point, with a
full-width flange, which is overlapped by the flange of the other
rail, and thus a flange of double thickness is afforded at a point
where strength is particularly needed, and the cutting away of the
flanges (as is the usual custom) is avoided entirely."
"In his description of the drawings, he says: 'A A' are the
outer or wing rails of the frog, and B B' are the two rails which
compose the acute angle or point.' And in his description of the
mode of constructing his device, he says:"
"In place of cutting away both the flanges of the rails B B' so
as to make a joint between the two rails midway between the lines
of the angle of the frog, as is common now, and, I may say, usually
practiced, I continue the flange of the rail B, of full width,
intact clear along the junction of the two rails to the point where
it strikes the flange of the outer rail
Page 125 U. S. 105
as shown in Fig. 3, which is almost immediately under the point
X' of the frog, and I swage up the flange
b' of rail B' on
one side, as shown in Figs. 5 and 3, so that it lies over the
flange of rail B, this flange of rail B' being cut away angularly
on the edge to properly meet the line of the web
b2 of the
rail B."
"It will thus be seen that minute directions are given as to the
construction of the two center rails, B and B', to form a V-shaped
point, and I am of opinion that the two center rails, B and B',
described in the second claim, are the rails constructed and joined
according to the description given in the patent. The language of
the claim is, 'the two center rails, B B', joined to form the
V-shaped point,' -- not any two center rails joined to form a
V-shaped point. The V-shaped point made by extending one rail
unbroken and uncut directly across the path of the other, and
thereby making a solid end to the point, and with the flange of the
rail B' swaged up so as to lie upon or overlap the flange of the
rail B, seems to me to be an essential element of what complainant
supposed he had invented, and therefore the two center rails, B B',
mentioned in the second claim refer to and mean the two center
rails which he has particularly described in his specification. The
proof in the case wholly fails to show that the defendant forms the
V-shaped point in his frog in the manner that complainant forms his
point."
The construction of the second claim contended for by the
appellant is that it embodies separately and distinctly that part
of the invention which, in the general description in the
preliminary part of the specifications, is stated to be "an
improved manner of connecting the two rails of the point together
and to channel iron pieces, to which the outer rails are
connected," without reference to the manner in which the two rails
of the point are formed so as to constitute the first part of the
invention. If this construction be admitted, the second claim would
cover every case of two center rails joined to form the V-shaped
point which were united to outside diverging or wing rails by means
of channel irons of a U shape, bolted or riveted, as therein
described, without reference
Page 125 U. S. 106
to the manner in which the two center rails were combined to
make the angular point, or V shape. In our opinion, the
construction placed upon this claim by the circuit court is right,
and is required by the language of the specifications and claim.
The claim does not on its face profess to cover a mere mode of
connecting, by means of U-shaped channel irons, the intermediate
with the external rails. It is in form a claim for a combination of
parts which together constitute a frog of peculiar
construction.
"The elements of that combination, as stated in the claim, are
first the two center rails, B B', joined to form the V-shaped
point; second, the outside diverging or wing rails; third, the
channel irons of a U shape, uniting the center rails together, and
also to the outside or wing rails, so that the whole shall
constitute a frog with the characteristics imparted by the features
of this combination. This coincides with the statement contained in
the brief of counsel for the appellant, who say, speaking of the
invention as described in the second claim:"
"The elements constituting the invention in controversy are
first, two outside diverging wing and main rails; two inside
V-shaped point rails, the four rails being united and joined
together by two channel irons bolted to these rails by three lines
of rivets or bolts, to-wit, one line of bolts bolting one channel
iron to one wing rail; another line of bolts bolting another
channel iron to the other outside wing rail, and the third line of
bolts passing through the two inside wings of the two channel
plates, and through the webs of the point rails, thereby making one
structure, or machine. In this construction the cut-away rail
forming the point is reinforced on each side by the vertical wings
of the channel irons. The claim is for this frog, or machine, so
constructed -- a frog composed substantially of the elements above
named."
The claim refers specifically to the "two center rails, B B'
joined to form the V-shaped point." This points explicitly to the
drawings, on which the two center rails are designated by the
letters, and also to the mode in which they are shown by the
drawings, and the description in the specification, to be joined,
and excludes the idea of constructing a frog, such as is
Page 125 U. S. 107
intended to be covered by the second claim, of any other center
rails than those thus pointed out and described. The patentee, by
this mode of description and of claim, has made the center rails
formed and connected in the manner described to make up the
V-shaped point an essential part of the invention intended to be
secured by the second claim.
An argument against this construction made by the counsel for
the appellant is based upon the language of the third claim. That
claim is for the channel pieces, D, extending, and bolted or
riveted together, beyond the point of the frog and connecting
rivets, C, which extend entirely through the two point rails and
the channel pieces, "in combination with the point rails, B B',
fitted to each other as described." It is admitted that the
language of that claim limits it to the point rails formed and
connected together so as to make the V-shaped point, according to
the specific manner described in the specification and shown in the
drawings, and that it does not cover center rails of any other
description. This limitation is based upon the words "fitted to
each other as described." It is argued that, as this phrase is
omitted from the second claim, the contrary inference must prevail,
so that that claim may be permitted to extend so as to embrace all
center rails joined to form the V-shaped point, however they may be
fitted to each other. But this variation of language does not seem
to us so significant. The second claim, by the use of the phrase at
its close, "substantially as shown," limits its application quite
as effectually to the particular kind of center rails described in
the specification, and covered by the first claim, and the
reference therein to "the two center rails, B B', joined to form
the V-shaped point," can only mean such point rails as are shown in
the drawings, marked "B B'", and joined to form the V-shaped point
referred to in the drawings, and described in the specification
"substantially as shown."
If this construction of the second claim needed corroboration,
that would be found in the state of the art at the time of the
alleged invention, as shown by the proof in the present case. The
frogs exhibited in evidence as infringements of the complainant's
patent were manufactured by the defendants, as
Page 125 U. S. 108
they claimed, under patent No. 148,264, dated March 3, 1874,
issued to George Thomas and William Miller, under whom they claim,
and also under patent No. 173,804, dated February 22, 1876, issued
to Morden, one of the defendants, as inventor. Morden's patent of
February 22, 1876, showed a connection of the wing rails for use as
frogs by means of a U-iron, or "trough plate," the upturned sides
of which
"are made to conform to the curve of the side rails, as well as
to the form of the neck and base of the rails, and are firmly
secured to the neck of the rails by bolts or rivets."
Instead of holding the V-shaped point in place by the use of
channel irons, he provided a V-shaped recess in the channel or
trough plate, into which the point of the frog was inserted and
held, but, in applying his device to railroad crossings instead of
switches, he used channel or U-shaped irons to connect the points
and wing rails. It is true, as suggested by counsel for the
appellant, that a crossing of railroad tracks is a very different
device from a switch, where the latter is used by means of a frog
to shift the engine and train from one line of tracks to another;
but the use of channel irons is analogous in the two cases, and it
would require no more than ordinary mechanical skill to transfer
the channel irons used upon a crossing to firmly hold the parts in
place to a similar use in a frog to unite firmly, in their
respective positions, the center rails with the exterior rails.
Independently, however, of this use of channel irons on
crossings, we think that the patent to Morden of February 22, 1876,
for an improvement in railroad frogs, considered in itself, leaves
no room for invention in the application of channel irons in
uniting the V-shaped point rails with the exterior rails. In that
patent, the invention consisted in forming a metallic plate into a
U-shaped trough for the purpose of connecting the outer rails,
leaving the V-shaped ends of the point rails to be secured by means
of a V-shaped recess in the bed of the plate at the wide end of the
trough. There seems to be no invention in dividing that trough into
two so as to connect the center rails on each side by means of a
separate channel iron, or U-shaped trough, with the outer rail
exterior to them.
For these reasons the decree of the circuit court is
Affirmed.
