The fourth claim in the reissued letters patent No. 8388,
granted August 27, 1878, to Augustus Day for an improvement in
track clearers,
viz., "The combination with the draw bar C
and scraper A of the diagonal brace E, as and for the purpose set
forth," would naturally suggest itself to any mechanic, and
involves no patentable novelty.
A claim in letters patent must be held to define what the Patent
Office has determined to be the patentee's invention, and is not to
be enlarged in construction beyond the fair interpretation of its
terms.
In equity for the infringement of letters patent. Decree
dismissing the bill. Complainant appealed. The case is stated in
the opinion.
Page 132 U. S. 99
MR. CHIEF JUSTICE FULLER delivered the opinion of the Court.
Augustus Day filed his bill in equity against the Fair Haven and
Westville Railway Company in the Circuit Court of the United States
for the District of Connecticut, alleging an infringement of the
fourth claim of reissued letter patent No. 8,388, dated August 27,
1878, for an improvement in track clearers.
The defense was that the claim lacked patentable novelty, unless
construed to contain parts not mentioned in it, and, if so
construed, then that there had been no infringement. The circuit
court, Shipman, J., decided that the claim did not cover patentable
novelty,
Day v. Fair Haven &c. Railway, 23 F. 189, and
dismissed the bill accordingly, and from this decree the cause was
brought to this Court by appeal.
So much of the specification as is necessary to be quoted here
states that
"The nature of this invention relates to an improvement in the
construction of railway track cleaning devices and the means of
operating them, being more especially designed to be attached to
horse cars for the purpose of removing snow, ice, mud, and other
obstructions from the rails and immediately at the sides thereof,
and it consists
in the combination of a pair of independently
acting scrapers, pivotally secured to the floor of a car and
resting upon the track, when in operation, wholly by their own
weight, with means for raising and lowering such scrapers
simultaneously; in the combination, with an independently acting
scraper, resting, when in operation, wholly by its own weight upon
the track, of a draw bar in the direct line of draft, and a
supplementary and diagonal draw bar, which at the same time acts as
a brace, the forward ends of both of said draw bars being secured
on the same axial line; in the peculiar construction and
arrangement of a cast shank with relation to the scraper, which is
secured thereto, and the draft irons, which connect it to the
underside of the car; in the pendent guards, which lift the scraper
from the track on meeting with an obstruction on the outside of the
rail, and deflect outwardly
Page 132 U. S. 100
from the track, and in a peculiar crank for operating the shaft
which raises and lowers the pair of scrapers at each end of the
car, as more fully hereinafter set forth."
"In the drawing, A represents my scraper, being a plate of sheet
metal of the form shown, slightly curved in cross-section. The
front end of this scraper is rounded off at its lower edge, as
shown in the drawings, to allow it to pass, without jar or danger
of breaking, over the ends of rails that may be projected above the
plane of the adjacent rails. The lower edge of the rear part of the
wing of the scraper is cut away, as shown, to allow it to pass over
pavement or earth at the side of the track which projects above the
rail, thereby preventing such projecting matter from lifting the
scraper proper from the face of the rail. B is the shank, to which
it is secured by the bolts,
a a. This shank is a casting
in the form shown in Fig. 2. It is formed with a pair of
longitudinal ribs,
b, on top, to receive the end of the
draw bar, C, whose other end is pivoted to a hanger, D, pendent
from the car; or it may be pivoted directly to the sill of the
car."
"The shank is also fitted or cast with diagonal studs,
c, on top of said ribs,
b, to receive the outer
end of a diagonal brace, E, whose other end is pivoted to a hanger,
D', parallel with the hanger, D, but near the longitudinal center
of the car,
both draw bar and diagonal brace being thus pivoted
on the same axial line, so that, when it is desired to raise and
lower the scrapers, the same will be done without disturbing the
vertical position thereof with relation to the track, as would be
done were there but one pivotal point. While the scraper and
the parts to which it is attached are free to move in a vertical
plane, this brace, E, effectually resists any lateral pressure to
which the scraper may be subjected in moving obstructions from the
rail, its own weight being sufficient to keep it down on the rail.
The draw bar and brace are securely bolted to the shank, and, by
the described arrangement of the ribs and studs, perfect accuracy
in the 'set' of the scraper is secured -- an essential feature of
my invention."
The claims were nine in number, of which the first four are as
follows:
Page 132 U. S. 101
"1. In a railway car, a pair of independently acting scrapers,
pivotally secured to the floor of the same, and resting upon the
track, when in operation, wholly by their own weight, in
combination with means for raising and lowering such scrapers
simultaneously, substantially as and for the purpose set
forth."
"2. In a track cleaning device, the combination, with an
independently acting scraper, resting, when in operation, wholly by
its own weight upon the track, of a draw bar in the direct line of
draft, and a supplementary and diagonal draw bar, which at the same
time acts as a brace, the forward ends of both of said draw bars
being secured on the same axial line, substantially as and for the
purpose set forth."
"3. The construction and arrangement of the shank, B, as
described, with relation to scraper, A, draw bar, C, and diagonal
brace, E, as and for the purposes set forth."
"4. The combination with the draw bar, C, and scraper, A, of the
diagonal brace, E, as and for the purpose set forth."
But it was stipulated that the complainant did not seek to
recover except under the fourth claim.
The original patent, No. 125,547, was granted April 9, 1872, and
the original specification did not contain the words italicized
above, nor the first and second claims.
Upon the hearing, the complainant adduced the evidence of
certain expert witnesses, who testified, on cross-examination, in
substance, that the draw bar, C, performed the office of drawing
the scraper along the track, and was assisted in so doing by the
diagonal brace, E, which brace also performed the office of
preventing the scraper from being removed from the track by the
side thrust; that while the diagonal brace assisted in the direct
draft, yet its most important function was to prevent the lateral
movement of the scraper from the track; that in considering the
office performed by the draw bar, C, and brace, E, that office was
the same if they were attached to any scraper in any way, provided
an attachment was made; that, so far as the fourth claim of the
reissue was concerned, it was not material how the draw bar and
brace were pivoted, except that the pivoting should be on "the same
axial line," so "that when the
Page 132 U. S. 102
scraper is lifted from the track, it shall not be moved
laterally in either direction."
As already stated, the fourth claim is: "The combination with
the draw bar, C, and scraper, A, of the diagonal brace, E, as and
for the purpose set forth."
Inasmuch as the scraper and draw bar were both confessedly old,
and the primary function of the diagonal brace is manifestly to
prevent lateral displacement, the question, assuming that it is the
diagonal brace only which is claimed to be new, is whether the
application of a diagonal brace to a track scraper to prevent
lateral displacement involves patentable novelty, and this question
must be answered in the negative, for we concur with the circuit
court that the employment of a brace to effect that purpose would
naturally suggest itself to any mechanic, and that its use in that
way is within the range of common knowledge and experience.
Considered aside from the method of the combination of the parts
and the manner of pivoting, the contrivance is a well known one of
obvious suggestion, and used here to perform an office exactly
analogous to that in which it has been frequently formerly
used.
But it is contended on behalf of appellant that as the
combination would be inoperative "for the purpose set forth" --
namely, clearing the track of a railway of obstructions, such as
snow, ice, mud, etc. -- unless the bottom of the car were treated
as part of such combination, the peculiar method of pivoting the
draw bar and the diagonal brace must also be included.
The mechanism by which the draw bar and the diagonal brace are
pivoted to the car and fastened to the scraper is not referred to
in this claim, although it is in other claims of the series. As the
claim must be held to define what the Patent Office has determined
to be the patentee's invention, it ought not to be enlarged beyond
the fair interpretation of its terms. It is true that elements of a
combination not mentioned in a claim may sometimes be held
included, in the light of other parts of the specification, which
may be applicable; but here, the claim is so broad that we are not
justified in importing into it an element which would operate to so
enlarge its scope as to cover an invention in no manner indicated
upon its face.
Page 132 U. S. 103
As therefore the diagonal brace, to enable the scraper to be
kept in its place on the track, is the only element of the
combination which is claimed to be new, and that involves no
patentable novelty, the decree must be
Affirmed, and it is so ordered.