The claim of letters patent No. 172,346, granted to Herman
Royer, January 18, 1876, for an improvement in machines for
treating rawhides, namely,
"In combination with the drum A of a rawhide fulling machine,
operating to twist the leather alternately in one direction and the
other, a shifting device for the purpose of making the operation
automatic and continuous, substantially as described,"
does not cover any patentable combination, it being a mere
aggregation of parts.
The automatic shifting device was old, as attached to a washing
machine, and there was no modification of its action produced by
attaching it to the fulling machine. Therefore, its application to
that machine did not require the exercise of invention.
In equity for the infringement of letters patent. Decree
dismissing the bill, from which plaintiff 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 District of California by Herman Royer
against Solomon Roth and L. P. Degen to recover for the
infringement of letters patent No. 172,346, granted to the
plaintiff January 18, 1876, on an application filed November 15,
1875, for an improvement in machines for treating rawhides.
The bill states that the invention consisted in
"combining with the drum of a rawhide fulling machine, operating
to twist the hide alternately in one direction and then in the
other, a shifting device, for the purpose of making the operation
automatic and continuous. "
Page 132 U. S. 202
Each defendant put in a separate answer, denying that the
plaintiff was the inventor of such shifting device and alleging
want of novelty, with proper averments.
After a replication to the answers, proofs were taken, the case
was brought to a hearing, and the circuit court dismissed the bill.
The decree states that the plaintiff first conceived of the
combination of an automatic reverser attached to the drum of a
rawhide fulling machine, operating to twist the leather in one
direction and the other, for the purpose of making the operation
automatic and continuous, as described and claimed in the patent;
that at the request of the plaintiff, one Clerc, a mechanic, made
the automatic reverser described in the patent, and in October,
1867, delivered the same to the plaintiff, who attached it to his
fulling machine; that the combination was new with the plaintiff,
and was useful, and his use thereof was secret until he applied for
the patent; that it was not obvious and was not known whether the
new combination could be used successfully for the practical
treatment of rawhide, which was the work for which the combined
machine was intended, until after it had been tested and tried by
the plaintiff; that it was obvious to any skilled mechanic that an
automatic reverser could be applied to the drum of a rawhide
fulling machine so as to make it reverse its motion automatically
at any desired fixed intervals; that the patent does not cover any
patentable invention, and that, for that reason alone, the bill is
dismissed.
The specification says:
"The object of my invention is to provide an improvement in a
rawhide fulling machine, for which letters patent were granted to
me, and it consists in an automatic device by which I am enable to
run the machine in one direction for a sufficient length of time
and then reverse it, this process continuing automatically until
the leather is finished."
The drawings show the machine as operated by belts, but the
specification states that gears or friction couplings could be used
if desired, and the action of the machine still be automatic. The
machine employed for fulling rawhides, or forming them into
leather, has a drum, A, the central shaft of
Page 132 U. S. 203
which has upon its lower end a bevel gear. With this gear two
pinions mesh at opposite sides, one of the pinions being mounted
upon a solid shaft, which passes through the hollow shaft of the
other pinion, and has a driving pulley keyed to it. Another driving
pulley is keyed to the hollow shaft, and a loose pulley runs
between them. When the belt turns one of the keyed pulleys, the
machine will operate in one direction, and when the belt is shifted
to the other keyed pulley, it will operate in the opposite
direction. In order to make such action automatic, there is a belt
shifter, which is a part of, or attached to, a sliding bar. That
bar is operated by a lever, which is hinged or pivoted, and works
in a slot or link upon the bar, so that when turned from side to
side, it will slide the bar in one direction or the other. A weight
is secured to the top of the lever so that as soon as the lever
passes the center, it will fall by its own weight and suddenly
shift the belt. In order to operate this lever, there is another
sliding bar which moves below and parallel with the sliding bar
first mentioned, the second bar having pins upon each side of the
lever, so that when the second bar is moved, it will shift the
lever. The second bar has a nut projecting downward from it, and
there is a screw formed upon a horizontal shaft so as to fit the
nut. A belt from a pulley on the solid shaft extends to a pulley on
the last-named horizontal shaft, and by its action the screw will
be turned in one direction until the lever has passed the center
and fallen over so as to shift the belt to the other pulley, when
the whole mechanism will be moved in an opposite direction until
the screw has again moved the second sliding bar and reversed the
lever. The specification states that the machine is thus made
automatic in its action, and can be left until the work is entirely
finished, and that a frictional coupling or reversing gear might be
used in place of a belt, but would not work as well.
The claim of the patent is as follows:
"In combination with the drum A of a rawhide fulling machine,
operating to twist the leather alternately in one direction and the
other, a shifting device for the purpose of making the operation
automatic and continuous, substantially as described. "
Page 132 U. S. 204
The evidence is conclusive that one Clerc, as early as 1864, in
San Francisco, made an automatic shifting device the same as that
described in the patent, and attached it to a washing machine, and
continued from that time to make such automatic reversers and put
them into use, and that, in 1867 at the request of the plaintiff,
he made the shifting device described in the patent, which the
plaintiff attached to his fulling machine. The only difference
between the shifting device made by Clerc for the washing machines
and that made by him for the plaintiff was that in the washing
machine reverser the screw shaft was driven by two gears, one on
each end of it, while the one described in the patent is driven by
a belt, and that the washing machine was horizontal, while the
plaintiff's machine was upright, in consequence of which the
horizontal machine required a spur gear, while the upright machine
had a bevel gear. But these changes were such as any skillful
mechanic could make. The plaintiff, in giving his order to Clerc to
make the reverser, gave him no directions as to how to construct
it, and only gave him a drawing of the fulling machine to which it
was to be attached.
The operation of the automatic reverser in connection with the
fulling machine is precisely the same as its operation in
connection with the washing machine or with any other machine to
which it can be applied. There is no modification of its action
produced by attaching it to the fulling machine.
The plaintiff testifies that before he had the automatic
reverser, his fulling machine would run in one direction until the
belt was shifted by hand; that if the hides got too hot, he had to
stop the motion and reverse it, and that he had also to stop the
action of the machine when the automatic reverser was attached to
it if the hides got too hot. It also appears from the plaintiff's
testimony that from 1867, when he attached the automatic reverser
to the machine, he was occupied for four years in experimenting
with the machine before he perfected the process of fulling the
hides so that the machine would turn out satisfactory work
regularly and smoothly; that the difficulty was not with the
automatic reverser, because that worked and reversed in the same
manner when first attached in 1867
Page 132 U. S. 205
that it did in 1871; that the difficulty with the machine which
caused these experiments occupying four years was that the hides
would not double backward uniformly; that when they were wedged or
packed, the automatic reversing apparatus would not stop the
machine or reverse it soon enough to prevent injury; that the hides
would double twice, and would tear off from the shaft before the
machinery could be stopped; that the machine would often reverse
before the unwinding was completed, and thus the enlargements of
the two folds or doubles would meet and the hides be torn from the
shaft; that as yet he had not perfected any process for
satisfactorily producing the article now known as fulled rawhide;
that to do so, he varied the condition of the hides as to moisture
until he found that at the right degree of dampness, the hides
would double backward with practical regularity; that he also
several times changed the means by which he fastened the hides to
the shaft; that to make the article in question, the hides had to
be made soft and pliable by being subjected to a severe and long
continued mechanical operation, such as twisting or doubling back
and forth; that to do this, the hides had to be in a certain
condition as to moisture -- neither too dry nor too wet; that he
had therefore to experiment by changing the degree of moisture by
slight variations until be found the proper degree; that he had to
discover some mechanical means by which all parts of every hide
could be subjected to an equal and uniform amount of mechanical
action, so that no hard spots would be left in the hide; that, some
parts of the hide being three times as thick as other parts of the
same hide, it was difficult to discover whether there was a degree
of moisture at which the hides could be successfully treated in the
machine, because it took much more soaking to moisten the thick
parts of the hide than it did the thin; that he finally learned how
to moisten the entire hide uniformly by peculiar ways of folding it
while being moistened, and hanging it so that some parts of the
hide would be longer in water than other parts; that there was also
a great difference in the texture of different parts of a hide;
that no two hides are alike as to thickness and texture, and that
he did not overcome these difficulties until 1871.
Page 132 U. S. 206
It is quite apparent from this recital of the difficulties
encountered by the plaintiff, none of which are alluded to in the
specification of the patent, that if he invented anything
patentable, it consisted in some process of treating the hides so
as to produce the merchantable article of fulled rawhide. But there
is no suggestion of any such invention in the specification or the
claim.
There is no patentable combination of the automatic shifting
device with the drum of the fulling machine. It is a mere
aggregation of parts. The shifting device operates automatically to
reverse the action of the fulling machine in precisely the same way
that it operates when applied to any other machine, and, the
shifting device being old, its application to the fulling machine
did not require the exercise of invention.
Double Pointed Tack
Co. v. Two Rivers Manufacturing Co., 109 U.
S. 117,
109 U. S.
120-121.
The same view was taken of this patent by Judge Drummond in the
case of
Royer v. Chicago Manufacturing Co., 20 F. 853,
decided by him in the Circuit Court of the United States for the
Northern District of Illinois in June, 1884, in which he held that
the invention was not patentable, because it was merely the
application of an old device used in connection with a washing
machine to an analogous use.
The principle has been applied by this Court in various cases.
Pomace Holder Co. v. Ferguson, and cases there collected,
119 U. S. 335,
119 U. S. 338;
Thatcher Heating Co. v. Burtis, 121 U.
S. 286,
121 U. S. 295;
Dreyfus v. Searle, 124 U. S. 60;
Hendy v. Miners' Iron Works, 127 U.
S. 370,
127 U. S.
375.
Decree affirmed.