Claims 1 and 2 of letters patent No. 281,640 granted to Moses
Mosler, July 17, 1883, for an improvement in fire-proof safes,
namely,
"1. An angle bar for safe frames, consisting, substantially as
before set forth, of a right-angled iron bar, one of the sides of
which is cut away, leaving a curve facing the uncut side, whereby
said uncut side may be bent to bear upon said curve to form a
rounded corner."
"2. An angle bar for safe frames consisting, substantially as
before set forth, of a right-angled
Page 127 U. S. 355
iron bar, one of the sides of which is cut away, with curved
cuts meeting a right-angled cut, whereby the uncut side may be bent
to form rounded corners,"
and the claim of letters patent No. 283,136 granted to Moses
Mosler, August 14, 1883, for an improvement in bending angle irons,
namely,
"The herein described process of bending angle irons, which
consists in cutting away a portion of one web by a cut which severs
the two webs at their junction, for a distance equal to the arc of
the corner to be bent, and removes sufficient of metal in front of
the single part of the uncut web to permit the same to bend to the
desired angle and to insure the edges of the opening meeting to
form a close joint as the bar is bent, substantially as shown and
described,"
are invalid.
After a patent is granted for an article described as made by
causing it to pass through a certain method of operation to produce
it, the inventor cannot afterwards, on an independent application,
secure a patent for the method or process of producing the
identical article covered by the previous patent, which article was
described in that patent as produced by the method or process
sought to be covered by taking out the second patent.
The claim of letters patent No. 273,585 granted to Moses Mosler
March 6, 1883, for an improvement in fire-proof safes, being for
the combination, in a fire-proof safe, of the frames, the sheet
metal cover, bent around the top sides and lower corners, with
projecting metal bars, and removable bottom plate, substantially as
described, and claim 3 of letters patent No. 281,640, granted to
Moses Mosler, July 17, 1883, for an improvement in fire-proof
safes, namely,
"3. In a safe, the combination of the front and back frames,
formed of single bent angle bars having one side cut away to leave
curved ends, upon which the uncut side is bent to form rounded
corners, and a metal sheet E bent around and secured to said frames
to form the top end sides of the safe, substantially as
described,"
are invalid.
Bill in equity for the infringement of letters patent. Decree
dismissing the bill. Complainant appealed. The case is stated in
the opinion.
MR. JUSTICE BLATCHFORD delivered the opinion of the Court.
This is a suit in equity, brought in the Circuit Court of the
United States for the Southern District of Ohio by the Mosler Safe
and Lock Company, an Ohio corporation, against Mosler,
Page 127 U. S. 356
Bahmann and Co. another Ohio corporation, for the infringement
of three letters patent of the United States, each of them granted
to Moses Mosler, namely, No. 273,585, March 6, 1883, for an
improvement in fire-proof safes, on an application filed February
5, 1883; No. 281,640, July 17, 1883, for an improvement in
fire-proof safes, on an application filed December 27, 1881, and
No. 283, 136, August 14, 1883, for an improvement in bending angle
irons, on an application filed December 11, 1882.
The answer denies that any one of the three patents shows any
invention, and also denies that Mosler was the first and original
inventor, or an inventor at all, of the alleged inventions which
the patents purport to secure, or any of them, and also denies that
any one of the inventions has any utility. It also denies
infringement and sets up various references on the question of
novelty in regard to all three of the patents.
A replication was put in and proofs were taken by both parties,
and on a hearing the court dismissed the bill on the merits, its
opinion, which accompanies the record, being reported in 22 F. 901.
That opinion sets forth sufficiently the nature of the inventions
covered by the three patents and the contents of the specifications
and claims, and we adopt its statement, as follows:
"1. No. 273,585; application filed February 5, 1883; letters
dated March 6, 1883. The object of this invention, as stated in the
specification, is to provide an improved means of constructing the
outer casing, so that the safe may be filled from the bottom. The
front and back frames of the safe are formed from angle bars which
have one side cut away where the bends of the corners are to be
made, and the uncut side bent around to close the joint in the
corner and form a frame with its outer corners rounded. The meeting
joint at the bottom of the frame is overlapped by a short angle
piece, which is screwed or riveted to the frame, uniting the joint.
A sheet metal cover is bent around the top sides and around the
lower rounded corners of the frames. Upon each edge of this cover
at the bottom of the safe and between the angle frames are secured
metal bars which project beyond the edges of the
Page 127 U. S. 357
cover to form rests for the bottom plate. The safe is made with
the customary sheet metal box forming the interior receptacle, and
secured to the cast metal door frame in the usual manner. The top
of the caster frame conforms to the curve of the rounded corners,
and after the bottom plate is pushed into its place, the inner
bolts which secure the caster frame pass through the bottom plate
which they secure and the angle frames. The patentee does not claim
the bent angle frames nor the safe composed of these frames and the
sheet metal cover bent around them (the same being shown and
claimed by him in an application then pending), but limits his
claim to the combination, in a fire-proof safe, of the frames, the
sheet metal cover, bent around the top sides, and lower corners,
with projecting metal bars, and removable bottom plate,
substantially as described."
"2. No. 281,640. This patent differs from No. 273,585 in that a
particular description is given, in the specification, of the cuts
in the side of the angle bar, where the bends are to be made, but
the patentee specifies that the shape of the cut may be varied, it
only being essential that sufficient metal be cut away on one side
of the angle bar to permit the other or uncut side to be bent, the
cut nearest the uncut side being in the form of a curve or curves,
so that when said uncut side is bent to form the corner, it will
bear upon and be supported by the curved end or portion of the cut,
and thus be rounded by a curve similar to the curve of the cut. The
claims are as follows:"
" 1. An angle bar for safe frames, consisting, substantially as
before set forth, of a right-angled iron bar, one of the sides to
which is cut away, leaving a curve facing the uncut side, whereby
said uncut side may be bent to bear upon said curve to form a
rounded corner."
" 2. An angle bar for safe frames, consisting, substantially as
before set forth, of a right-angled iron bar, one of the sides of
which is cut away, with curved cuts meeting a right-angled cut,
whereby the uncut side may be bent to form rounded corners."
" 3. In a safe, the combination of the front and back frames,
formed of single bent angle bars, having one side cut away to leave
curved ends, upon which the uncut side is bent to form rounded
Page 127 U. S. 358
corners, and a metal sheet E bent around and secured to said
frames to form the top and sides of the safe, substantially as
described."
"3. No. 283, 136, dated August 14. 1883, application filed
December 11, 1882. The claim is as follows:"
" The herein-described process of bending angle irons, which
consists in cutting away a portion of one web by a cut which severs
the two webs at their junction, for a distance equal to the arc of
the corner to be bent, and removes sufficient of metal in front of
the single part of the uncut web to permit the same to bend to the
desired angle, and to insure the edges of the opening meeting to
form a close joint as the bar is bent, substantially as shown and
described."
"In the specification the sides of the angle bar are designated
by the letters A and B. A represents the uncut web, and B the cut
web. The outer opening of the cut C is made by lines at angles of
forty-five degrees to the edge of the web, so that when the bar is
bent, the edges of this opening meet each other in a true miter.
The inner opening D, which extends outward within converging curved
lines from the angle of the bar to where it meets the opening C,
extending inward from the edge of B and within converging lines
(the letter X suggesting the shape of the entire opening, excepting
that the outer opening extends nearly to the angle of the bar), has
a dovetailed shape, bounded by curved lines described from points
upon the miter line and the face of the uncut web A. The curved
ends of the web B abut against the uncut side when the bar is bent,
making a close joint. The patentee states in the specification
that"
"the shape of the opening or cut-away portions of web B may be
varied at will, so long as the meeting line or lines be not
extended beyond the space bounded by the rounded corner, and the
edge lines extended to web A."
"The angle bars cut out as described, it is stated in the
specification, may be bent to the proper form by the machine
represented by Fig. 6 in the accompanying drawings."
"In this, E represents a metal block having upwardly projecting
sides screw-tapped to receive clamping screw F. The opposite
corners of the block are rounded to fit the inner curve of the
desired
Page 127 U. S. 359
corner. G is a loose block of iron, between which and the side
of block E the uncut web A is clamped by screw F, the other web B
resting on the block, the cut-away part over the rounded corner. By
force applied to the projecting end of the bar it is bent around
until the severed edges meet in a close joint. The angle bar herein
shown is not claimed here, as it is the subject of a pending
application."
"The safes described in these patents are filled through the
bottom opening with fire-proof cement. The bottom is then secured
in place and the casters attached. The patentee states, in the
specification forming part of letters No. 281,640, that before his
invention, safes were filled from the back, and that his safe 'can
be completely finished before the filling is put in. The filling
adds greatly to the weight. Much labor in handing is therefore
saved.'"
The opinion of the circuit court then proceeds to say:
"For the purposes of this suit, these three patents may be
considered as one, containing all the claims involved. As counsel
for complainant suggests, the claims are for separate and distinct,
but not for independent, inventions, at least so far as the
manufacture of safes is concerned. They might have been all
included in one application had the patentee chosen to so present
them. The first and second claims in letters patent No. 281,640 are
for an angle bar for safe frames, consisting of a right-angled iron
bar, one of the sides of which is cut away (the cuts being curved
and meeting a right-angled cut), leaving a curve facing the uncut
side whereby said uncut side may be bent to form a rounded corner.
The patentee states in the specification that he is aware"
"that it has been proposed to make protecting corner pieces for
safes from angle iron, from one side of which a triangular piece
was cut out to permit the opposite side to bend."
"He also states that 'the shape of the cut to permit the angle
bar to be bent to form rounded corners may be varied without
departing from the principle of my invention,' etc."
"In the drawings accompanying the specification forming part of
letters patent No. 283,136, Fig. 5 represents a template
Page 127 U. S. 360
of cardboard or thin sheet metal, which the patentee states he
uses to determine about the shape and size of the notch or cut
which it is necessary to make to admit of the bar being bent to any
desired angle and to make a corner of any desired curve. The
template is of the shape and size of a section of the angle bar.
One web is severed by a cut at right angles to its edge; the two
webs are then severed at their junction for some distance upon each
side of the cut; then, by bending the web so that the cut edges
will pass each other, the template may be bent to any curve or
angle desired, and the lines of the cuts required to make the
proper shape of opening in angle bars to be bent to the same curve
or angle, marked and fixed upon. Such use of the template as a
pattern is nothing new. It is clearly shown by the testimony that
cutting an opening in one web of an angle bar to permit the bending
of the bar to an angle or curve, was known and used before the date
claimed by complainant's assignor for his invention. Different
shapes of cuts and openings are shown in exhibits put in evidence
by respondents. Unless the precise cuts and shape of opening shown
in the drawing attached to the specification forming part of the
letters patent are patentable, the claims are worthless. But the
patentee shows how, by the use of a pattern of flexible material --
an old method, and familiar as the use of the carpenter's miter-box
-- he determines the lines of the cuts, and the shape of the
opening. In this there is no exercise of the inventive faculty; it
is only what would occur to a mechanic of ordinary skill. Moreover,
if the precise lines of cuts and shape of opening shown in the
drawings were patentable, the patentee does not, as we have seen,
so limit his claim, but seeks to cover variations, which he says
may be made without departing from the principle of his invention.
Claims 1 and 2 in letters patent No. 281,640, and the claim in
letters patent No. 283, 136, are therefore adjudged to be
invalid."
"As to the combination claim, being the only claim in letters
patent No. 273,585, and claim 3 in letters patent No. 281,640, they
are old, excepting only -- and this is not material -- that the
precise lines of cuts and the shape of the opening
Page 127 U. S. 361
of the angle bar are not found in safes of prior manufacture.
The sheet metal cover is old. It is shown in respondent's exhibit
'St. Louis Safe.' The bars C and lower removable plate D claimed in
No. 273,585 are old.
See respondent's Exhibit A, and the
deposition of John Hurst. The safes in the manufacture of which
they were used were square-cornered, as was then the fashion, but
that is not material. When the angle frames were bent, the corners
were round, and then heated and hammered upon both sides of the
corners to make them square. Respondent's testimony also
establishes that fire-proof safes were filled from the bottom as
early as 1879, by the Cincinnati Safe and Lock Company, and in that
year (probably also in 1878) by Hall's Safe and Lock Company. The
complainant was the first to employ the combination claimed in the
manufacture of round-cornered safes, but the change from
square-cornered safes was only a change in form. The combination is
nothing more than an aggregation, and falls by the application of
the rulings in
Hailes v. Van Wormer, 20
Wall. 353,
87 U. S. 368;
Reckendorfer v. Faber, 92 U. S. 347, and
Pickering
v. McCullough, 104 U. S. 310,
104 U. S.
318. The bill is dismissed at complainant's costs."
It is apparent that the claim for the process in No. 283,136 is
merely for the process or method of cutting away and removing the
metal, so as to permit of the bending, and of doing the bending,
and of producing the close joint as the bending takes place, such
process or method being merely the process or method involved in
making the article covered by claims 1 and 2 of No. 281,640. In
other words, claims 1 and 2 of No. 281,640 are each for an article
produced by a described method or process, and the claim of No.
283,136 is for such method or process of producing such article.
The method is a purely mechanical method. No. 281,640 was applied
for more than eleven months before No. 283,136 was applied for, and
was issued 28 days before No. 283,136 was issued. There was no
patentable invention in No. 283,136 when it was applied for, in
view of what was applied for by claims 1 and 2 of No. 281,640.
After a patent is granted for an article described as made by
causing it to pass through a certain method of
Page 127 U. S. 362
operation to produce it, as, in this case, cutting away the
metal in a certain manner and then bending what is left in a
certain manner, the inventor cannot afterwards, on an independent
application, secure a patent for the method or process of cutting
away the metal and then bending it so as to produce the identical
article covered by the previous patent, which article was described
in that patent as produced by the method or process sought to be
covered by taking out the second patent.
The circuit court, in its opinion, said that the use of the
template shown in Fig. 5 of No. 283,136, as a pattern, was not new;
that cutting an opening in one web of an angle bar to permit the
bending of the bar to an angle or curve, was known and used before
the date of the patentee's invention; that different shapes of cuts
and openings were shown in exhibits put in evidence by the
defendant; that the claims in question -- namely claims 1 and 2 of
No. 281,640 and the claim of No. 283,136 -- were invalid unless the
precise cuts and shape of opening shown in the drawings were
patentable; that there was no exercise of the inventive faculty in
using a pattern of flexible material, in an old and familiar
method, to determine the lines of the cuts and the shape of the
opening, and that the patentee had not limited his claims to the
precise lines of cuts and shape of opening shown in the drawings,
but had stated, in the specification of No. 281,640, that the shape
of the cut to permit the angle bar to be bent to form rounded
corners might be varied without departing from the principle of the
invention. We concur in the view that claims 1 and 2 of No. 281,640
and the claim of No. 283,136 are invalid for the reasons thus
given.
As to the claim of No. 273,585, and claim 3 of No. 281,640,
which are claims to combinations, the opinion of the circuit court
states that those claims are old, except in the immaterial point
that the precise lines of cuts and the shape of the opening in the
angle bar are not found in safes of prior manufacture; that the
sheet metal cover is old, being shown in defendant's exhibit "St.
Louis Safe;" that the bars C and lower removable plate D forming
part of the claim of No. 273,585
Page 127 U. S. 363
are old, it being immaterial that the safes in the manufacture
of which they were used were square-cornered, the corners of the
angle frames, when bent, having been round, and having been then
made square by heating and hammering the metal on both sides of the
corners; that fire-proof safes been filled from the bottom as early
as 1879; that although the patentee was the first to employ the
combination claimed in the manufacture of round-cornered safes, the
change from square-cornered safes was only a change in form, and
that the combination was nothing more than an aggregation, and fell
within the rulings of this Court in the cases cited that such an
aggregation was not patentable. We think these views are
correct.
The decree of the circuit court is affirmed.