The inventions claimed in the third and fourth claims of letters
patent No. 339,913, dated April 13, 1886, issued to Harry C.
McCarty for an improvement in car trucks, if not void for want of
novelty, as the application of an old process or machine to a
similar or analogous subject, with no change in the manner of
application, and no result substantially distinct in its nature,
were inventions of such a limited character as to require a narrow
construction, and, being so construed, the letters patent are not
infringed by the bolsters used by the appellee.
Page 160 U. S. 111
This was a bill in equity for the infringement of two letters
patent issued to McCarty for improvements in car trucks,
viz., patent No. 314,459, dated March 24, 1885, and patent
No. 339,913, dated April 13, 1886. The application for the first
patent was filed June 5, 1884, and for the second patent, August
31, 1883, so that in reality the second patent represents the prior
invention. Upon the hearing in this Court, complainants abandoned
their claims under the first patent, No. 314,459, and asked for a
decree only upon the third and fourth claims of the second patent,
No. 339,913.
The invention covered by this patent consists of a metallic
bolster for car trucks, upon which the whole body of the car is
carried by a swinging pivot, as shown in the following
drawings:
image:a
Figure 1 of these drawings represents a side view of the car
truck between the wheels, the ends of the bolster resting upon the
side irons, A, of this truck. Figure 2 represents the bolster,
Page 160 U. S. 112
formed of a top iron bar, F, and a lower iron bar, G, the bar,
F, being arched and bolted at its ends to the bar, G. Between the
bars are the supporting metallic columns, H, which rest on the bar,
G. The crown or central portion of the bar, F, rests upon these
columns, the bars and columns being firmly bolted together. J
represents the side bearings, which rest on and are bolted to the
bar, F, and have connected with them the ends of the truss rods, K,
which are of inverted arch form. These side bearings and truss
rods, however, are immaterial in the present case. On the under
side of the ends of the bar, G, are screwed the plates, P, whose
sides are notched or grooved, as at
a, to receive the
columns, B, of the side irons, the plates thus forming the end
guides or supports of the upper bolster. The ends of the bar, G,
are turned upwardly, forming the flanges, Q, against which the ends
of the bar, F, abut.
The third and fourth claims, the only ones in issue, were as
follows:
"3. The lower bar, G, having flanges, Q, turned up on its ends,
in combination with the arched upper bar, F, having its ends
bearing against said flanges, the guide plates, P, bolted to the
ends of said bars under the same, the stops or blocks, M, inserted
between bars, F and G, near their ends, and the pillars, H, also
interposed between said bars, as stated."
"4. The upper bolster, composed of the bent bar, F, straight
bar, G, and interposing columns, M, in combination with the plates,
P, secured beneath the bars, F, G at their ends, and notched or
grooved on their sides at
a, to receive the columns, B, of
the side irons, substantially as and for the purpose set
forth."
The answer of the defendants denied that McCarty was the
original inventor of the alleged improvements; averred that said
improvements were not of any advantage to the public, that the
inventions were not patentable, had been described in prior
publications, and had been publicly used elsewhere.
Upon a hearing upon pleadings and proofs, the bill was
dismissed, and complainants appealed to this Court.
Page 160 U. S. 113
MR. JUSTICE BROWN, after stating the facts in the foregoing
language, delivered the opinion of the Court.
The specification of the patent in this case does not, as
specifications ordinarily do, state the peculiar functions of the
patented device, the defects it is designed to remedy, or the
features that distinguish it from other similar devices. This
omission, however, is supplied by the testimony, which shows that
the invention was due to the frequent breaking of wooden bolsters,
of the form in common use, in what were termed the "diamond truck,"
and other forms of car trucks. After some fruitless experiments,
McCarty conceived the idea of using two iron plates, thereby
forming a strong bolster, without the disadvantage found in the use
of wood alone, or wood in connection with the iron plates. This
resulted in the application for patent No. 339,913, for a bolster
partly supported by truss rods. It soon appeared, however, that the
form shown in the drawings of 339,913 possessed the requisite
strength without the truss rods, which were accordingly dispensed
with, and patent No. 314,459 subsequently applied for.
A few days after McCarty applied for his first patent,
viz., September 10, 1883, one William H. Montz made
application for a similar device, upon which a patent was granted,
apparently by mistake of the Patent Office, and an interference
then declared between them. Priority in invention was awarded to
McCarty, February 24, 1886, neither party taking any testimony. In
this connection, there was much evidence tending to show that in
October, 1882, a convention of master car builders was held at
Niagara Falls at which McCarty's model was exhibited and examined
by car builders, among whom was Mr. Lentz, master car builder of
the Lehigh company, defendant in this case. Shortly after this, Mr.
Lentz wrote an official letter in behalf of the defendant
requesting McCarty to send a blueprint of his truck, as shown at
Niagara Falls the week before. A blueprint was accordingly sent to
him on October 24th, which corresponded
Page 160 U. S. 114
with the drawing annexed to patent No. 339,913, soon after which
the defendant company began the manufacture of bolsters for use in
their cars substantially after the form in the blueprint, and in
the following year Montz made application for the patent upon which
the interference was declared between him and McCarty, which
resulted in awarding priority of invention to McCarty. But this
question of priority, if not settled conclusively by the
interference, becomes immaterial in this case, in view of the
anticipating device set up as a defense, which, if sustained, would
probably apply as well to the one patent as to the other.
Freight cars are generally, if not universally, constructed so
as to ride upon two four-wheeled trucks, upon which the cars are
supported by means of devices called bolsters. One of these devices
is attached to the bottom of the car body, and is called a body
bolster. The other is attached to the truck, and is called the
truck bolster. The body bolster rests upon the truck bolster, and
at the point of contact there is a device called the center bearing
plate, which, acting in connection with a king bolt, permits the
truck to conform to inequalities and curvatures in the track,
regardless of the direction of the axis of the car body. Side
supports, shown as J in Fig. 2, are also furnished, to secure
stability of the car upon the truck, and prevent any tendency to
upset by limiting the rocking of the car body. Ordinarily, though,
the weight is carried upon the center bearing plate, that the
swiveling may be done as easily as possible, in order to avoid
friction between the car and the side bearings, especially in
hauling a heavy train around a curve.
Truck bolsters are sometimes set rigidly upon the truck frame.
These, however, were found defective since, in case of inequalities
in the track, the sinking of bad joints, the unevenness of side
tracks and their approaches, and more especially in cases of
derailment, the trucks were subjected to a severe torsional strain,
which racked them, loosened their bolts, and weakened their entire
structure. To obviate this, it had become common to rest the ends
of the bolster upon springs in the side trusses between the wheels,
as shown in Fig. 1, and
Page 160 U. S. 115
also in several prior patents. These are termed "floating
bolsters," the object of which is to relieve the car from shocks
caused by any unevenness of the tracks or roadbed.
Bolsters made of wood, which were formerly used and found to be
sufficient under light loads, especially when trussed, were, when
used to carry the heavy loads of modern cars, which are double, and
even triple, the weight formerly carried, found insufficient, and
have largely given place to bolsters of iron.
The bolster in question consists of two bars of metal, F and G,
placed one upon the other, the lower one, G, being horizontal, and
the upper one, F, arched so as to form the truss. The lower bar is
made longer than the upper, and its ends are turned up into
flanges, Q, so as to form abutments or bearing surfaces for the
ends of the upper bar, and thus to receive the end thrust caused by
the weight imposed upon the bolster. Between the two bars at their
central point are supports or columns, H, H, which rest at their
lower ends upon the lower bar, and hold upon their upper ends the
upper bar, fastening bolts being passed through the bars and the
columns. Similar short columns, M, M, are placed between the bars
at the point where the arch of the upper bar begins. To the
underside of the bolster so formed is bolted a plate, P, which
serves to guide the bolster between the columns of the truck frame,
the sides of this plate being notched, as shown at
a, so
as to fit around the columns of the truck frame. In connection with
this truck bolster, there are truss rods, K, which pass diagonally
through castings placed upon the upper side of the truss, and are
supported upon seats under the lower bar, and provided with the
usual screw threads and nuts for giving them the proper degree of
tension. These truss rods, however, form no part of the third and
fourth claims in dispute.
These claims differ from each other principally in the fact that
the flanges, Q at the ends of the lower bar, G, as well as the
pillars, H, constituting elements in the third claim, are not found
in the fourth, while the fourth describes the plates, P, which are
stated in the third claim to be "bolted to the ends of said bars
under the same," as
"secured beneath the bars,
Page 160 U. S. 116
F, G at their ends, and notched or grooved on their sides at
a, to receive the columns, B, of the side irons,
substantially as and for the purpose set forth."
There is no suggestion in either of these claims that the ends
of the bolster rest upon springs in the side trusses, although they
are so described in the specification and exhibited in the
drawings. It is suggested, however, that this feature may be read
into the claims for the purpose of sustaining the patent. While
this may be done with a view of showing the connection in which a
device is used, and proving that it is an operative device, we know
of no principle of law which would authorize us to read into a
claim an element which is not present, for the purpose of making
out a case of novelty or infringement. The difficulty is that if we
once begin to include elements not mentioned in the claim in order
to limit such claim and avoid a defense of anticipation, we should
never know where to stop. If, for example, a prior device were
produced exhibiting the combination of these claims plus the
springs, the patentee might insist upon reading some other element
into the claims, such, for instance, as the side frames and all the
other operative portions of the mechanism constituting the car
truck, to prove that the prior device was not an anticipation. It
might also require us to read into the fourth claim the flanges and
pillars described in the third. This doctrine is too obviously
untenable to require argument.
The court below dismissed the bill upon the ground that the
patent had been substantially anticipated by prior devices, which
required nothing more than mechanical skill to adapt them to the
purposes of this patent. In this connection, defendant introduced a
device known as the "old metal transom," which appears to have
existed prior to 1882, and probably before the date of the McCarty
invention, which he fixes as in June, 1881, although from his
correspondence with the Patent Office, it appears very doubtful
whether he perfected it before July, 1882. This transom was used
not as a truck bolster, but as a body bolster, and consisted of a
straight bar corresponding to the bar, G, having the flanges, Q at
the end, a bent bar corresponding to F, and interposed columns
corresponding
Page 160 U. S. 117
to the columns, M. It is, in fact the McCarty bolster turned
upside down, with the plates, P, which are only necessary in a
floating bolster, omitted. The only object of these plates, fitted
as they are with notches to embrace the columns of the side
trusses, is to serve as a guide for the ends of the bolster as they
rise and fall upon the springs.
Defendant also exhibited the Naugatuck truck, which appeared to
have been used upon the Naugatuck Railroad in the State of
Connecticut as early as 1862, and was still in actual use upon the
New York, New Haven & Hartford Railroad, the present owner of
the Naugatuck. This contains a truck bolster having all the
substantial elements of the McCarty combination, including the
straight bar and flanges, the bent bar, and the intervening
columns, although, like the old metal transom, it contained nothing
corresponding to the plates, P, which, as before observed, are only
required in connection with a floating bolster. The ends of this
bolster were fitted rigidly to the side trusses. The springs,
instead of supporting the ends of the bolster, were placed over the
journal bearings, and imparted a limited motion to the carriage.
The guide plates are obviously unnecessary in this
construction.
The following drawings exhibit the McCarty bolster, so far as
the combinations of the third and fourth claims are concerned, and
the corresponding features of the Naugatuck bolster:
image:b
Page 160 U. S. 118
The invention, then, of McCarty consisted in taking the
Naugatuck truck or bolster, turning it into a floating bolster, by
adding the guideplate, P, and resting its ends upon the springs in
the side trusses, which springs, however, are not made an element
of either the third or fourth claims. Even if they had been
claimed, they would not, of themselves, constitute a novel feature,
as they are admitted to have been used long before, and are
described in several prior patents in connection with bolsters of
the old pattern. The wedge-shaped blocks or columns, M, are
unimportant, as angle irons in analogous positions are well known
in the art, and are shown in prior patents. In addition to that, it
does not appear that defendant used them. The Naugatuck truck was
doubtless improved by the changes made by McCarty, but if there
were anything more in this than mechanical skill or the aggregation
of familiar devices, each operating in its old way to produce an
aggregated result, it was invention of such a limited character as
to require a narrow construction. The case is not unlike that of
Pennsylvania Railroad v. Locomotive Truck Co.,
110 U. S. 490,
where a patent for employing a particular car truck, already in use
on railroad cars on the forward end of a locomotive, was held void
for the want of novelty, the Court referring to the familiar
principle that the application of an old process or machine to a
similar or analogous subject, with no change in the manner of
application and no result substantially distinct in its nature,
will not sustain a patent even if the new form of result has not
before been contemplated.
There is another consideration which leads to the same
conclusion. The original application, made by McCarty, contained,
among other things, a broad claim for "a truck bolster provided on
its ends with supporting and guiding plates, substantially as and
for the purpose set forth." This claim, being obviously too broad
in view of the prior patents, was amended so as to read as
follows:
"A truck bolster provided at its ends with plates which are
notched to fit upon vertical parts of the frame, so as to serve as
guides and supports for said bolster, substantially as set
forth."
This claim having been apparently
Page 160 U. S. 119
rejected, the patentee abandoned his broad claim for a notched
plate and claimed only a plate in combination with the other
features of his bolster, which was finally allowed. His
acquiescence in the rulings of the Patent Office in this particular
indicates very clearly that he should be restricted to the
combination claimed, and that the case is not one calling for a
liberal construction.
In view of these limitations upon the McCarty patent, was there
any infringement in defendant's device? This device contained the
bars, F and G, and the pillars, H, of the McCarty patent, but
instead of having the flanges, Q, upon the ends of the lower bar,
and the guide plates, P, there was substituted a cap shown in the
patent to Montz, of which the following is a drawing:
image:c
This cap contains a recess,
i, for the reception of the
ends of the bolster bar, which are thereby maintained in proper
position with respect to each other, and is secured to the ends of
the bolster bar by means of two bolts passing vertically through
them. The cap, which fits between the posts of the side frame and
rests upon a spring, is provided at each side with flanges,
i', which embrace the outer and inner faces of the posts,
and prevent a longitudinal motion of the bolster while permitting
the same to move freely in a vertical direction. Now as in view of
the Naugatuck truck, there was nothing which could be called novel
in the third and fourth claims of the McCarty patent except the
guide plates, P, which were used to adapt this bolster to the
purposes of a floating bolster by resting its ends on springs, and
as the cap in question is an obvious departure
Page 160 U. S. 120
from the device in this particular, we cannot say that it is an
infringement, although it accomplishes practically the same purpose
as the flanges, Q, and plate, P, of the McCarty patent. Had it been
wholly novel to rest the ends of the bolster upon springs by means
of guide plates, it is possible we might have been able to hold
this cap to be an infringement, but as the novelty consists not in
resting the ends of bolsters generally upon springs by means of a
guide plate, but in so locating the ends of a bolster of a
particular construction, we think the employment of a different
means of locating it avoids the charge of infringement.
It is further claimed that the defendant is estopped to question
the novelty of the McCarty patent and its priority of invention by
the interference proceedings in the Patent Office. Aside from the
fact that the issues in those proceedings included the truss rods,
which are not used by the defendant, the evidence that the
defendant was a party in privity to Montz's application for the
patent, which was awarded to him, or that he made his application
in their interest, is too inconclusive to justify us in holding
that the company was bound by the result of this proceeding. It
practically rests upon Montz's reply, to the question why he did
not proceed with the interference, that he had no orders from his
superior officers of the road. This, we think, is insufficient in
the absence of affirmative evidence that the company had knowledge
of the proceeding and assented to the action taken by Montz. There
is not that certainty to every intent which Lord Coke held
necessary to constitute an estoppel, and, as observed by this Court
in
Russell v. Place, 94 U. S. 606,
94 U. S. 610,
"if upon the face of a record anything is left to conjecture as
to what was necessarily involved and decided, there is no estoppel
in it when pleaded, and nothing conclusive in it when offered as
evidence."
The decree of the court below dismissing the bill is
therefore
Affirmed.