Whether there was any novelty in the first claim in letters
patent No. 144,818, issued November 18, 1873, to William Wright for
an improvement in frames for horizontal engines,
quaere.
Inasmuch as the semicircular connecting piece in that patented
machine is described by the inventor as an essential feature of his
invention and is made an element of claims 1 and 2, it must be
regarded as such essential feature, and a device which dispenses
with it does not infringe the patent.
When an invention is not a pioneer invention, the inventor is
held to a rigid construction of his claims.
The second claim in the said patent is void for want of
patentable novelty. The combination of the cylindrical guide with
the trough in that machine is not a patentable invention.
This was a bill in equity for an injunction, and the recovery of
damages for infringement of letters patent No. 144,818, issued
November 18, 1873, to the plaintiff, Wright, for an improvement in
frames for horizontal engines.
In his specification, the patentee stated the object of his
invention to be the
"attainment of both lightness and strength in the construction
of frames for horizontal engines, and at the same time to dispense
with much of the fitting and other costly work demanded by the
ordinary frames of engines of this class."
The following drawing exhibits the material parts of the
invention:
image:a
Page 155 U. S. 48
The patentee further stated that
"the extreme rear end of the frame, and forming part of the
same, is the head,
a, of the steam cylinder, A, and the
portion of the frame which in ordinary engines is devoted to the
usual flat slides consists of a hollow cylinder,
b,
arranged concentrically with the steam cylinder, and serving as a
guide for the cross-head, the guiding cylinder being simply bored
out to receive a cross-head, adapted to it in a manner which need
not here be explained, as it forms no part of my present invention.
There are lateral openings,
ee, in this cylindrical
guiding portion of the frame, in order that access may be had to
the cross-head. . . . A semicircular connecting piece,
d,
merges at one end in the guiding cylinder,
b, and at the
other end in the cylinderhead,
a, thus uniting the two,
the open top of the said connecting piece permitting ready access
to be had to the stuffing box of the cylinderhead."
"This combination in a horizontal engine frame of the guiding
cylinder,
b, cylinderhead,
a, and connection,
d, constitutes an especial feature of my invention. The
cylinder,
b, not only forms the main body of this portion
of the frame, but serves at the same time as a cross-head guide,
which can be readily prepared for service by the same bar which is
used for boring out the cylinder."
"From the front of the guiding cylinder,
b, to the
point,
x, where it meets the base, H, the frame is made in
the form of an inclined concavo-convex trough, D, deep enough to
permit the free movement of the connecting rod, and this trough, .
. . on the line, 1 2, has one side,
m, the upper edge of
which is continued in a plane coinciding with the center of the
cylinder,
b, from the latter to the enlargement,
n, for receiving the bearing of the crankshaft; the
opposite side,
p, of the trough, extending from the
guiding cylinder,
b, with a gradually descending curve to
the base, H, into the upper portion of which it merges."
"A strengthening rib,
q, extends along the upper edge
of the side,
p, of the trough-like connection, D, and is
continued along the upper edge of the base, H, and also along the
upper edge of the side,
m, of the trough, and terminates
at an extension
Page 155 U. S. 49
of the cylinderhead,
a, and in order to add vertical
strength to the frame a central web,
t, extends from the
base, H, to the cylinderhead,
a, this web merging into the
foot,
w, which serves as one of the supports of the
frame."
"In horizontal engines, there is necessarily an excessive
lateral strain on the frame between the cross-head guides and the
crankshaft. This strain is effectually resisted by the
comparatively light, trough-like portion of the frame between the
crankshaft and guiding cylinder."
His claims were as follows:
"1. A horizontal steam engine frame, in which a cylinder,
b, for guiding the cross-head, is combined with the
cylinderhead,
a, and semicircular connecting piece,
d, substantially in the manner described."
"2. The combination, in a horizontal engine frame, of the
guiding cylinder,
b, base, H, and trough-like connection,
D."
"3. A horizontal engine frame, composed of the cylinderhead,
a, guiding cylinder,
b, connecting piece,
d, trough, D, base, H, and web,
t, all combined
substantially in the manner described."
The answer set up the defenses of noninfringement and want of
patentable novelty, by reason of certain prior patents.
Upon a hearing in the circuit court upon pleadings and proofs,
the bill was dismissed upon these grounds, and defendant
appealed.
MR. JUSTICE BROWN, after stating the facts in the foregoing
language, delivered the opinion of the Court.
The object of the invention in question was to add both
lightness and strength to the construction of frames for
horizontal, single-crank engines. To attain this, the patentee,
instead of employing the ordinary flat, parallel slides for the
piston and cross-head, makes use of a hollow cylinder, arranged
Page 155 U. S. 50
concentrically with the steam cylinder and serving as a guide
for the cross-head, together with a trough connecting this cylinder
with the base, H, and deep enough to permit the free movement of
the connecting rod. This construction is further strengthened by a
rib extending along the upper edge of one side,
p, of the
trough, D, continued along the upper edge of the base, H, and also
along the upper edge of the other side,
m, of the trough,
and terminating at an extension of the cylinderhead,
a,
and also, to add vertical strength to the frame, a rib or web,
t, was extended from the base, H, to the cylinderhead,
a, merging in a foot,
w, which serves as one of
the supports of the frame. The cylinderhead,
a, the
guiding cylinder,
b, with its connecting piece, the
trough, D, the base, H, and the web,
t, are cast in a
single piece and firmly bolted to the head of the steam cylinder,
A.
(1) The first claim is for a combination of the cylinder,
b, the cylinderhead,
a, and the semicircular
connecting piece,
d, while the third claim includes the
same elements, and, in addition thereto the trough, D, the base, H,
and the web,
t.
In view of the fact, to which we shall hereafter call attention,
that a cylinder had been used long before for guiding the
cross-head of a piston, it is at least open to doubt whether there
was any novelty in the first claim. Such novelty, if there be any
at all, consists in leaving certain lateral openings,
ee,
in the guiding cylinder, and in taking half the top off of such
cylinder as it approaches the steam cylinder, in order to give
convenient access to the cross-head. But in the view we take of the
alleged infringing device, it is unnecessary to express a decided
opinion upon this point.
The connecting piece,
d, which is described in the
specification as a semicircular connecting piece, merging at one
end in the guiding cylinder, and at the other end in the
cylinderhead, thus uniting the two, is not only made an element of
both these claims, but is said to constitute, in connection with
the guiding cylinder and cylinderhead, a special feature of the
invention. This so-called "connecting piece" is distinguished from
the guiding cylinder in that it is only semicircular, and thus
admitting of access to the stuffing box with
Page 155 U. S. 51
perfect freedom throughout a complete half circle. This access
is had not through a mere hole or opening, such as are
ee,
but through such an opening as can be obtained by cutting away the
upper half of the frame at this point.
The device used by the defendant contains a similar cylinder for
guiding the cross-head, and a trough connecting it with the base;
but this cylinder, instead of having its entire interior surface
bored out, so that it may guide the cross-head in the same way that
the piston is guided in the steam cylinder (as in the Wright
patent), merely contains an upper and a lower guide, formed of two
slides or fitting strips, the surfaces of which are bored out, but
no other portion of the cylinder. We do not regard this, however,
as a material departure from the Wright patent, as it constitutes a
mere difference in detail of construction, not affecting in any way
the operation of the cross-head of the cylinder, or changing
materially the efficiency of such cylinder. Nor do we think it
material that in defendant's structure there is no cylinderhead
forming part of, cast with, and constituting a portion of, the
engine frame, since the frame of the defendant's device terminates
in a flange adapted to be bolted to a cylinderhead, and thus, in
fact constituting a part of it.
But the absence of the semicircular connecting piece,
d, is a circumstance worthy of more serious consideration.
In the defendant's engine there is no such semicircular connecting
piece as is described in the Wright patent, but the guiding
cylinder extends backward to a connection with the head of the
steam cylinder, the side of such guiding cylinder, through which
the cross-head operates, containing an opening oval in shape and
narrower at each end than in the center. The equivalent for the
connecting piece, if found at all, must be in this continuation of
the guiding cylinder backward to the steam cylinder. But this
portion of the cylinder is neither scooped out in a semicircular
form nor does it admit of ready access to the cross-head shown at
this point in the Wright patent. Instead of access to the
cross-head being easier at this point than any other, it is in
reality more difficult, as the oval opening is narrower there than
in the center.
Page 155 U. S. 52
Now while this semicircular connecting piece may be an
immaterial feature of the Wright invention, and the purpose for
which it is employed accomplished, though less perfectly, by the
extension of the guiding cylinder in the manner indicated in
defendant's device, yet the patentee, having described it in the
specification and declared it to be an essential feature of his
invention, and having made it an element of these two claims, is
not now at liberty to say that it is immaterial, or that a device
which dispenses with it is an infringement, though it accomplish
the same purpose in, perhaps, an equally effective manner.
Vance v.
Campbell, 1 Black 427;
Water Meter Co. v.
Desper, 101 U. S. 332;
Gage v. Herring, 107 U. S. 640,
107 U. S. 648;
Gould v. Rees,
15 Wall. 187;
Brown v. Davis, 116 U.
S. 237,
116 U. S.
249.
If the guiding cylinder of this patent had been a pioneer
invention, it is possible the patentee might have been entitled to
a construction of this claim broad enough to include the
defendant's device, notwithstanding the absence of the semicircular
connecting piece; but as we have already said, the novelty of the
invention is at least open to doubt, and we think the patentee
should be held to a rigid construction of these claims. The opening
in the guiding cylinder, which is supposed to be the equivalent of
the connecting piece,
d, instead of increasing so as to
form a semicircular opening, as in the patent, decreases, so as to
prevent, if anything, ready access to the stuffing box, and under
the circumstances does not constitute a mechanical equivalent for
it. Indeed, the guiding cylinder of the defendant's engine bears a
stronger resemblance to those shown in the prior patents
hereinafter cited than to that of the Wright patent, and hence, if
the prior patents anticipate the Wright cylinder, the defendant's
does not infringe it.
(2) The second claim of the patent is for "the combination, in a
horizontal engine frame, of the guiding cylinder,
b, base,
H, and trough-like connection, D." The guiding cylinder, which is
used in lieu of the ordinary parallel slides, was, however, by no
means a novelty in the construction of engine frames. It is found
in different stages of perfection in several prior
Page 155 U. S. 53
patents,
viz., in a patent issued to Samuel Wright, as
early as 1837, for locomotive engines, and was there used, as the
patentee states, "to subserve the twofold purpose of a [steam] pump
and guide;" in the patent to Gelston Sanford, of February 15, 1859,
in which the invention related to elongating the cylinder, "by
which means it becomes a part of the frame, used for the support of
the crankshaft, and so constructed that, when bored out, it forms a
guide and rest for the cross-head;" in the patent to William
Wright, of August 8, 1865, in which the movement of the piston is
transmitted to the main crank by means of a connecting rod, jointed
to the cross-head, to which the piston is attached and which is
guided in ways or guides, fast to the frame, and in which a
semicircular connecting piece is also shown; in that to John B.
Root, of August 14, 1866, in which the piston also works in two
cylindrical guides attached to the cylinderheads; in that to
Maxwell & Cope, of February 13, 1872; in that to Edward H.
Cutler, of November 26, 1872, and in that to George H. Babcock, of
December 10, 1872.
It is true that none of these patents exhibits distinctly the
trough-like connection, D, of the Wright patent, but that also is
found in the patent to Chilion M. Farrar, of March 19, 1872, in
which it is fully shown in the drawings, though not described in
the specification, and is used in connection with the ordinary flat
guides or parallel slides.
Wright's only invention, then, was in the combination of the
cylindrical guide with the trough shown in the Farrar patent. Did
this accomplish a new and valuable result, it is quite possible
that a patent therefor might have been sustained; but we do not
find this to be the case. The cylindrical guide performs the same
functions as in the prior patents; the trough, in which the
connecting rod works in the Farrar patent, is practically the same
as in the Wright patent, and the combination is a mere aggregation
of their respective functions. If the combination of the trough and
cylindrical guide of the Wright patent gives greater lightness and
strength to the frame than the combination of the trough and the
flat guides of the Farrar patent, it is a mere difference in
degree,
Page 155 U. S. 54
a carrying forward of an old idea, a result, perhaps, somewhat
more perfect than had theretofore been attained, but not rising to
the dignity of invention. We have repeatedly held patents of this
description to be invalid.
Stimpson v.
Woodman, 10 Wall. 117;
Smith v.
Nichols, 21 Wall. 112;
Guidet v. Brooklyn,
105 U. S. 550;
Hall v. MacNeale, 107 U. S. 90.
The decree of the court below dismissing the bill is
therefore
Affirmed.
