The machine patented to Clayton Potts and Albert Potts by
letters patent No. 322,393, issued July 14, 1885, for a new and
useful improvement in clay disintegrators, and the machine patented
to them by letters patent No. 368,898, issued August 23, 1887, for
an improvement upon the prior patent, contained new and useful
inventions, and the letters patent therefor are valid, and are
infringed by the machines manufactured and sold by the defendants
in error.
The cases treating of letters patent for new applications of old
devices considered, and as a result of the authorities, it is
held that if the new use be so nearly analogous to the
former one that the applicability of the device to its new use
would occur to a person of ordinary mechanical skill, it is only a
case of double use; but if the relations between them be remote,
and especially if the use of the old device produce a new result,
it
may involve an exercise of the inventive faculty --
much depending upon the nature of the changes required to adapt the
device to its new use.
This was a bill in equity by C. & A. Potts & Co., an
Indiana corporation, against the firm of Jonathan Creager's Sons of
Cincinnati, for the infringement of patent No. 322,393, issued July
14, 1885, to Clayton Potts and Albert Potts, for a clay
disintegrator, and also of patent No. 368,898, issued August 23,
1887, to the same inventors, for an improvement upon the prior
patent. A third patent to George Potts, No. 384,278, was originally
included in the bill, but, by stipulation between the parties, all
reference to this patent was cancelled, and the bill treated as if
formally amended by alleging infringement of the first two patents
only.
In the first patent, No. 322,393, the patentees stated the
object of their invention to be
"to disintegrate the clay by means of a revolving cylinder,
which shall remove successive portions from a mass of clay which is
automatically pressed against the cylinder."
This was accomplished by a cylinder containing a series of steel
bars, fitted into longitudinal grooves in the periphery of
Page 155 U. S. 598
the cylinder, where they were secured by flush screws at each
end, by means of which they were adjusted, so as to present a sharp
corner, projecting above the surface of the cylinder. Opposite the
cylinder was a strong vibratory plate mounted on a shaft, so as to
swing in its bearings, by the aid of an eccentric wheel. The
opposed sides of the cylinder and the upper and central portions of
the plate formed a trough, one side of which approached and receded
from the other at intervals, and which had at the bottom a narrow
opening of constant width. In the operation of the machine, the
plate was swung back so as to leave as large an opening as
possible, and the moist untempered clay was thrown into the trough
between the cylinder and the upper portion of the plate. By a rapid
revolution of the cylinder, successive portions of the clay were
removed from the mass, carried through the narrow opening by means
of the scraping bars, and at the same time the upper portion of the
plate moved slowly towards the cylinder, thus keeping the mass of
clay in close contact with the cylinder, as successive portions
were removed.
The only claim alleged to be infringed was the sixth, which
reads as follows:
"6. In a clay disintegrator, the combination with cylinder, A,
having a series of longitudinal grooves, of the scraping bar,
c, and adjustably secured in said grooves for the purpose
specified."
In the second patent, No. 368,898, which was for an improvement
upon the first, there was substituted in lieu of the swinging
plate, shown by the first patent, as cooperating with the revolving
cylinder, a plain cylinder set opposite the cutting cylinder, and
revolving therewith in close proximity, so that the raw clay might
be fed, shredded, and discharged in an even and continuous manner,
in readiness to be taken directly to the pug or other mill. The
patentees further stated in their specification:
"The machine shown in our letters patent No. 322,393 was
provided with a swinging or vibrating plate, to coact with the
cutting cylinder in effecting the shredding of the clay which was
fed between them. In such machine, the abutting surface
Page 155 U. S. 599
of the vibrating plate furnished a rest or bearing for the clay
in presenting the same to the action of the cutter knives. This
abutting surface was limited in extent and unchanging in position,
so that it became rapidly worn. By substituting the revolving roll
for the vibrating plate, this objection is greatly lessened. The
roll constantly presents new surfaces to the cutters, so that the
wear is even and regular throughout its circuit. If any
inequalities exist in the roll at the outset, these become rapidly
reduced, so that, by use, the cylinder wears more and more true,
and acts thus with constantly better effect. Aside from cheapness
in construction, the revolving roller or cylinder machine will work
wet or sticky clays with perhaps one-third of the power necessary
in treating such clays in the vibratory plate machine. Such plate
tends constantly to crowd or squeeze the passing clays, whereas the
revolving roll yields continuously, so that clogging is less apt to
occur at the same time that the clay is finely and evenly shredded,
the cutter cylinder moving, by preference, more rapidly than the
companion feed roll in order to accomplish this effect."
"Prior to our invention, it has been very common to employ in
clay mills, sugar mills, and the like a set of rolls between which
the material passed as the rolls were revolved, but in such
machines the operation of the rolls was merely to break up the
clogs of clay, and squeeze or crush the same, whereas by our
invention, the clay is positively cut into fine shreds or clippings
in much better condition to be tempered and molded than by the old
forms of disintegrating machines."
The following drawing illustrates the main features of the
machine, so far as the same are material to the present case:
image:a
Page 155 U. S. 600
Defendants were charged with infringing the first and second
claims of this patent, which read as follows:
"1, In the supporting frame of a clay disintegrator, a rotating
cylinder longitudinally grooved, and carrying cutting bars in and
projecting beyond the grooves, in combination with a smooth-faced
rotating cylinder adapted to carry and hold the clay against the
cylinder having the cutting bars thereon, which latter cut or shred
the clay, and pass the same between the cylinders, substantially as
set forth."
"2. In clay disintegrators, the combination with the main
supporting frame and with a rotating cylinder fixed therein, and
having longitudinal cutting bars projecting beyond the face
thereof, of a positively revolving companion cylinder fixed
opposite thereto in said frame, and having a smooth face or
surface, with which said cutting bars directly cooperate to shred
or clip the clay as the same is fed by and passed between said
cylinders, substantially as described."
The answer denied any patentable novelty in these patents in
view of the prior art as shown by numerous earlier patents, to
which reference was made, and also denied infringement, alleging
that defendants were manufacturing clay pulverizers, under
authority of patents granted to Jonathan and Harry M. Creager in
1888.
The case came on for hearing upon pleadings and proofs, and the
court directed a decree dismissing the bill. 44 F. 680. From this
decree, plaintiff appealed to this Court.
MR. JUSTICE BROWN, after stating the facts in the foregoing
language, delivered the opinion of the Court.
Beds of clay are composed of different strata, and the first
step necessary to be taken in the manufacture of such clay is a
thorough mixing of the strata, and the reduction of the
Page 155 U. S. 601
clay to a suitable condition; otherwise, the product will
contain laminations, will shrink unevenly, and check in burning,
scale or peel off in use, and be less valuable than products made
of clays which are first thoroughly mixed and tempered, and reduced
to a homogeneous mass before being manufactured into the product.
Prior to the Potts invention, various methods seem to have been
employed to secure this result. The clay had been sometimes spaded
up in the autumn, subjected to the action of the frost during the
winter, and then to the operation of the old-fashioned grinding
pit. A mud wheel had also been used. The "soak pit" was another
means used to accomplish the same result; the clay being deposited
in a pit of water, and allowed to remain until the soaking process
had reduced it to the desired condition. These methods were slow
and expensive. Both grinding machines and crushing rolls had been
adopted in comparatively recent years. Their action was simply to
crush the clay, the different strata being pressed together and
made more compact, and the clay discharged from the rolls in cakes
or sheets, a condition that made the tempering very difficult, as
the clay thus treated would not readily receive or absorb the
water.
The object of the Potts inventions was not to crush the clay, as
had been previously done, but to disintegrate and pulverize it,
leaving it in a loose condition, fitted to absorb the water
readily. Their machines consisted substantially of a cylinder
moving at a high speed, having longitudinal bars fixed in its
periphery, with sharp projecting corners, and a fixed abutment in
close proximity thereto -- in the first patent, a swinging plate,
in the second, a smooth cylinder -- and a positive feeding device
by which the clay was forced between the main cylinder and the
abutment. The longitudinal bars thus operated to strike the mass of
clay quick, sharp blows in rapid succession, and cut or shred small
portions therefrom, which were deposited beneath the machine,
thoroughly mixed in their different strata, and with rough, torn,
or ruptured edges -- a condition best adapted to receive or absorb
water, and be easily and thoroughly tempered.
The only feature of the first patent material to be
considered
Page 155 U. S. 602
is the cylinder described in the sixth claim as a cylinder
"having a series of longitudinal grooves, of the scraping bars,
c, adjustably secured in said grooves, for the purpose
specified."
This cylinder is alleged to have been anticipated in devices
shown in eight prior patents, each of which will be briefly
mentioned:
1. A patent of 1865 to Robert Butterworth, for an improvement in
machines for grinding apples, exhibits a cylinder with cutting
knives or blades on its periphery. These knives have serrated or
toothed edges, which form chisel-shaped cutting projections, and
are provided with means for adjustment so as to protrude more or
less beyond the periphery of the cylinder. When the cylinder is
rotated, the apples are cut or ground by the knives between the
cylinder and a plate somewhat similar to the swinging plate of the
first Potts patent, provided with springs adapted to throw the
plate back whenever any stones or hard foreign substances have
passed through the machine. While these knives are set upon the
periphery of the cylinder in much the same way as the scraping bars
of the Potts patents, it is really the only point of resemblance
between the two devices. The Butterworth patent could not possibly
have been used as a clay disintegrator without changes which would
involve more or less invention.
2. A patent granted in 1880, to one Ennis, exhibits a machine
for preparing paper pulp, and consists of a revolving cylinder,
armed with longitudinal knives, and a stationary plate, also armed
with knives, mounted beneath it in close proximity thereto. Rags
fed between the revolving and stationary knives are thus cut in
pieces. The reasons given why the Butterworth patent does not
anticipate the Potts inventions apply with equal force to this.
3. A patent granted in 1866 to one Frost exhibits another
grinding cylinder for paper engines, and consists of a skeleton
cylinder, armed with sharp cutting blades, secured adjustably, so
as to be moved out from the axis of the cylinder, as they wear. The
cylinder is manifestly inapplicable to the disintegration of clay,
and nothing besides the cylinder is shown.
Page 155 U. S. 603
4. A patent to one Van Name, granted in 1884, shows a roller for
grinding mills, provided with blades arranged in longitudinal
grooves around the surface paralelled with the axis. These blades
are made of hardened steel, and of soft iron, hardened paper, or
wood, placed alternately with the steel blades. The surface of the
roller is practically smooth, except that, in use, the soft
material will wear more rapidly than the hard. This results in
maintaining a corrugated roller until the strips are worn out. It
can be of no possible service to the defendant in this
connection.
5. The patent issued in 1869, to one Peabody, for a cotton-seed
huller, also exhibits a rotary cylinder, armed with knives set in
grooves, each having a chisel-shaped cutting edge, and adjustable
for the purpose of increasing or diminishing the cut. It is
evidently not adapted to the working of clay.
6. The same remark may be made of the patent to Mayfield, of
1871, for a grinding mill, such as are adapted for general use
among farmers. It also consists of a cylinder provided with knives
or plane bits set in longitudinal grooves. These knives are also
adjustable.
7. A patent to J. W. Smith, granted in 1881, is for an apparatus
for preparing wheat for grinding, in which a cylinder is employed
similar to that of the Mayfield patent, with a series of plane bits
projecting from the periphery. The plane bits are adjustably bolted
by screws and slots within the cylinder, while their cutting edges
protrude from slots outwardly from the rim of the cylinder. They do
not differ in principle from the knives of Peabody and
Mayfield.
8. A patent to one Rudy, granted in 1875, for an improvement in
clay pulverizers, is the only one which is used in connection with
the preparation or manufacture of clay, and consists of a
pulverizing roller in combination with separate concave springs, or
an elastic bed for supporting the clay while the roller revolves
therein, after which it falls through a sieve, and descends to a
second cylinder, and then to a third. The patent does not describe
distinctly how the rollers are made, but they would seem to be
fluted, and cast in a series of sections. The process employed
seems to have been rather
Page 155 U. S. 604
a grinding than a disintegrating process, and it would seem that
such a machine would be inoperative except, perhaps, where the clay
was dry and of light consistency. The cylinder evidently operates
upon a wholly different principle from that of the Potts
patents.
Other patents are shown bearing a greater or less resemblance to
these, but generally used for wholly different purposes, such as
for straw cutters, machines for pressing tobacco, pulp engines,
peat machines, feed boxes for roller mills, and machines for
removing hair from hides. So far as they are used for working clay,
they would appear to differ radically in principle from the Potts
patent. An exhibit much relied upon, known as the "Creager
wood-polishing machine," shows a cylinder, provided on its
periphery with a series of projecting strips or bars of glass, not
differing materially in form from plaintiff's scrapers, and like
them fitted into longitudinal grooves. The machine was used for
polishing boards, which were run between the cylinder and a support
and pressure roller journaled underneath, and connected with an
automatic adjustable contrivance. Had this machine been used for an
analogous purpose, it would evidently have been an anticipation of
the Potts cylinder, since the substitution of steel for glass
strips would not of itself have involved invention. This device was
constructed in 1874, was used for only half an hour, when, by an
accident, several of the scrapers or polishers were broken, and,
before others could be molded, the building took fire and burned
down. That it was not considered a success is evident from the fact
that the machine was never reconstructed, but in 1878, Creager took
out a patent for a similar machine, in which a
smooth or
corrugated roller of wood, glass, bone, ivory, or metal was the
distinctive feature. In short, the machine of 1874 appears to have
been merely an abandoned experiment.
As already stated, the second Potts patent is for the
combination of the cylinder described in the first patent with
another smooth-faced rotating cylinder, adapted to carry and hold
the clay against the first cylinder, which cuts and shreds it as it
passes between them. It seems that the swinging plate,
Page 155 U. S. 605
described in the first patent as coacting with the cutting
cylinder in shredding the clay, was limited in the extent of its
cutting surface, and was unchangeable in position, so that it
became rapidly worn. To obviate this difficulty, a revolving roller
was substituted for the plate. As this roller constantly presented
a new surface to the cutter, the wear was even and regular over its
entire circumference. If any inequalities existed in the roller at
the outset, they became rapidly reduced, so that, by use, the
cylinder constantly wears truer, and thus cuts with better effect.
There was also an advantage in greater cheapness of construction
and in the ability of the roller to work in wet and sticky clays
with much less power than was necessary in treating such clays with
the vibratory plate.
The employment of two parallel cylinders to cooperate in the
performance of a certain task is so common and well known that the
court may take judicial notice of such examples as are found in the
ordinary clothes wringer, fluting rollers, straw cutters, printing
presses, paper manufacturing machines, and grinding mills of
various kinds. Indeed, this combination of two rollers had been
before used for the purpose of grinding and crushing clay, as shown
in a patent to Alexander, granted in 1872, wherein the clay was
passed between double spiral-toothed grinding and crushing rollers,
and then between plain, cylindrical rollers, and in the patent to
Alsip and Drake of June 30, 1885, which exhibits a fluted or
corrugated cylinder in combination with a smooth-faced companion
cylinder, between which the clay is passed and crushed, though not
disintegrated. In view of these devices, it is too clear for
argument that the Pottses would not be entitled to a patent simply
for passing the clay between two grinding or crushing cylinders,
and it is at least open to doubt whether, in view of the first
patent, there is any novelty in substituting a smooth-faced roller
for the swinging plate of the first patent. But as the sixth claim
of the first patent covers only the cylinder, the second patent may
be read in connection with it, to show what the machine was as
completed. The question whether the second patent was anticipated
by the first is not presented by this record.
Page 155 U. S. 606
What, then, did the patentees do? They took the cylinder shown
in the Creager wood-polishing exhibit, removed the glass bars, and
substituted bars of steel, provided it with an abutting surface in
the form of a revolving roller, and used it for a totally distinct
and different purpose. Putting aside, for the purposes of this
discussion, the fact that the Creager cylinder was an abandoned
experiment, did this involve invention? Certainly if this exhibit
does not anticipate, none of the others do. The answer to this
requires the consideration of the often-recurring question, which
has taxed the ingenuity of courts ever since the passage of the
patent acts, as to what invention really is. When a patented device
is a mere improvement upon an existing machine, and the case is not
complicated by other anticipating devices, the solution is
ordinarily free from difficulty. But where the alleged novelty
consists in transferring a device from one branch of industry to
another, the answer depends upon a variety of considerations. In
such cases, we are bound to inquire into the remoteness of
relationship of the two industries, what alternations were
necessary to adapt the device to its new use, and what the value of
such adaptation has been to the new industry. If the new use be
analogous to the former one, the court will undoubtedly be disposed
to construe the patent more strictly, and to require clearer proof
of the exercise of the inventive faculty in adapting it to the new
use, particularly if the device be one of minor importance in its
new field of usefulness. On the other hand, if the transfer be to a
branch of industry but remotely allied to the other, and the effect
of such transfer has been to supersede other methods of doing the
same work, the court will look with a less critical eye upon the
means employed in making the transfer. Doubtless a patentee is
entitled to every use of which his invention is susceptible,
whether such use be known or unknown to him; but the person who has
taken his device, and, by improvements thereon, has adapted it to a
different industry, may also draw to himself the quality of
inventor. If, for instance, a person were to take a coffee mill and
patent it as a mill for grinding spices, the double use would be
too manifest for serious
Page 155 U. S. 607
argument. So too this Court has denied invention to one who
applied the principle of an ice-cream freezer to the preservation
of fish,
Brown v. Piper, 91 U. S. 37; to
another who changed the proportions of a refrigerator in such
manner as to utilize the descending instead of the ascending
current of cold air,
Roberts v. Ryer, 91 U. S.
150; to another who employed an old and well known
method of attaching car trucks to the forward truck of a locomotive
engine,
Pennsylvania Railroad v. Locomotive Truck Co.,
110 U. S. 490, and
to still another who placed a dredging screw at the stem instead of
the stern of a steamboat,
Atlantic Works v. Brady,
107 U. S. 192. In
Tucker v.
Spalding, 13 Wall. 453, the patent covered the use
of movable teeth in saws and saw plates. A prior patent exhibited
cutters of the same general form as the saw teeth of the other
patent, attachable to a circular disk, and removable as in the
other, the purpose of which patent was for the cutting of tongues
and grooves, mortises, etc. The Court held that if what it actually
did was in its nature the same as sawing, and its structure and
action suggested to the mind of an ordinarily skillful mechanic
this double use, to which it could be adapted without material
change, then such adaptation to a new use was not new invention,
and was not patentable.
Upon the other hand, we have recently upheld a patent to one who
took a torsional spring, such as had been previously used in
clocks, doors, and other articles of domestic furniture, and
applied it to telegraph instruments, the application being shown to
be wholly new.
Western Electric Co. v. La Rue,
139 U. S. 601. So
also, in
Crane v. Price, Webster's Pat.Cas. 409, the use
of anthracite coal in smelting iron ore was held to be a good
invention inasmuch as it produced a better article of iron at a
less expense, although bituminous coal had been previously used for
the same purpose.
See also Steiner v. Heald, 6 Exch.
607.
Indeed, it often requires as acute a perception of the relations
between cause and effect, and as much of the peculiar intuitive
genius which is a characteristic of great inventors, to grasp the
idea that a device used in one art may be made
Page 155 U. S. 608
available in another as would be necessary to create the device
de novo. And this is not the less true if, after the thing
has been done, it appears to the ordinary mind so simple as to
excite wonder that it was not thought of before. The apparent
simplicity of a new device often leads an inexperienced person to
think that it would have occurred to anyone familiar with the
subject, but the decisive answer is that, with dozens and perhaps
hundreds of others laboring in the same field, it had never
occurred to anyone before. The practiced eye of an ordinary
mechanic may be safely trusted to see what ought to be apparent to
everyone. As was said by Mr. Justice Bradley in
Loom Company v.
Higgins, 105 U. S. 580,
105 U. S.
591:
"Now that it has succeeded, it may seem very plain to anyone
that he could have done it as well. This is often the case with
inventions of the greatest merit. It may be laid down as a general
rule, though perhaps not an invariable one, that if a new
combination and arrangement of known elements produce a new and
beneficial result, never attained before, it is evidence of
invention."
As a result of the authorities upon this subject, it may be said
that if the new use be so nearly analogous to the former one that
the applicability of the device to its new use would occur to a
person of ordinary mechanical skill, it is only a case of double
use; but if the relations between them be remote, and especially if
the use of the old device produce a new result, it may at least
involve an exercise of the inventive faculty. Much, however, must
still depend upon the nature of the changes required to adapt the
device to its new use.
Applying this test to the case under consideration, it is
manifest that if the change from the glass bars of the Creager wood
exhibit to the steel bars of the Potts cylinder was a mere change
of material for the more perfect accomplishment of the same work,
it would, within the familiar cases of
Hotchkiss
v. Greenwood, 11 How. 248,
Hicks v.
Kelsey, 18 Wall. 670,
Terhune v. Phillips,
99 U. S. 592, and
Brown v. District of Columbia, 130 U. S.
87, not involve invention. But, not only did the glass
bars prove so brittle in their use for polishing wood that they
broke and were discarded
Page 155 U. S. 609
after a half and hour's trial, but they would undoubtedly have
been wholly worthless for the new use for which the Pottses
required them. Not only did they discard the glass bars and
substitute others of steel, but they substituted them for a purpose
wholly different from that for which they had been employed. Under
such circumstances, we have repeatedly held that a change of
material was invention.
Smith v. Goodyear Dental Vulcanite
Co., 93 U. S. 486;
Goodyear Dental Vulcanite Co. v. Davis, 102 U.
S. 222. None of the cylinders to which our attention has
been called resembled the Potts cylinder so closely as does this.
None of them were used for the purpose of disintegrating, as
distinguished from crushing or grinding, clay. The result appears
to have been a new and valuable one -- so much so that within a
short time thereafter defendants themselves obtained a patent upon
a machine of their own to accomplish it. As we said in
Smith v.
Goodyear Dental Vulcanite Co., 93 U. S.
486, and
Magowan v. New York Belting Co.,
141 U. S. 332,
141 U. S. 343,
where the question of novelty is in doubt, the fact that the device
has gone into general use and displaced other devices employed for
a similar purpose is sufficient to turn the scale in favor of the
invention. Our conclusion is that the patents in question are
valid.
The question of infringement presents less difficulty.
Defendants' machine, in its construction and operation, is
substantially the same as plaintiff's. Instead, however, of casting
the shredding roller with a solid face, forming longitudinal
grooves therein, and fixing the steel bars in the grooves,
defendants cast the cylinder in the form of a skeleton or spider;
the knives being respectively fastened to the several arms
projecting from the hub, one knife to each arm, and forming the
periphery by filling in metal plates between the knives. The
cylinder, when its numerous parts are bolted together, is a perfect
roll with a solid face, having cutting bars projecting from the
slots or grooves thus formed, and adjustably secured therein by
means of bolts passing through them. The operation is the same as
that of the Potts machine, and it accomplishes practically the same
result by practically the same means.
Page 155 U. S. 610
Defendants, in their trade circular advertising their own
machine, state:
"Unlike the ordinary roller process, the action of the
disintegrator is to remove small portions, by cutting from the clay
fed into the hopper on the same principle as shaving and whittling,
and does not roll the clay into sheets, thus making it unfit for
proper manipulation. The past season we have put out many of these
machines in difficult clays, and made it an obligation to work the
clay both wet and dry, and each machine has done its work well and
to the entire satisfaction of the purchasers."
This is a frank and apparently a just tribute to the merits of
the plaintiff's invention, as well as a distinct admission that
their own machine accomplishes the same result.
The decree of the court below is therefore
Reversed, and the case remanded for further proceedings in
conformity with this opinion.
