Every element of the combination described in the first and
second claims of letters patent No. 450, 124, issued April 7, 1891,
to Horace J. Hoffman for improvements in storage cases for books is
found in previous devices, and, limiting the patent to the precise
construction shown, none of the defendant's devices can be treated
as infringements.
This was a bill in equity filed in the Supreme Court of the
District of Columbia by the Fenton Metallic Manufacturing Company
against the appellant to recover for the infringement of letters
patent No. 450,124, issued April 7, 1891, to Horace J. Hoffman for
improvements in storage cases for books.
In the specification, the patentee declares that
"the object of my invention is to facilitate the handling, and
prevent the abrasion and injury, of heavy books, etc. It consists
essentially,
Page 174 U. S. 493
of the peculiar arrangement of the guiding and supporting
rollers, and of the peculiarities in the construction of the case
and shelves, hereinafter specifically set forth."
The following drawing of one of the shelves exhibits the
peculiar features of the invention. The drawing explains itself so
perfectly that no excerpt from the specification is necessary to an
understanding of the claims.
image:a
The two claims alleged to have been infringed are as
follows:
"1. In a storage case for books, etc., the combination of a
supporting rack or shelf composed of metallic strips, and having a
reentrant bend or recess in its front edge, and rollers journaled
in said rack, and projecting above and in front of the same, on
each side of said bend or recess, substantially as described."
"2. In a bookshelf, the combination of a supporting frame, a
series of horizontal rollers, the front roller in two separated
sections, the intermediate part of the frame being carried back to
permit the admission of the hand between said roller sections,
substantially as described."
The defendant, the Office Specialty Manufacturing Company, was
the assignee, through mesne assignments, of Jewell and Yawman,
whose application for a patent, filed November 6, 1888, was put in
interference in the patent office with the application of Hoffman,
filed February 12, 1887, and the interference proceedings on behalf
of Jewell and Yawman were
Page 174 U. S. 494
conducted by the parties who subsequently formed the Office
Specialty Manufacturing Company. The Examiner of Interferences, the
Board of Examiners in Chief, and the Commissioner of Patents
successively decided in favor of Hoffman, to whose assignees the
letters patent were subsequently issued. During the pendency of the
interference, the Hoffman application was divided, as permitted by
the rules of the Patent Office, to secure a patent for certain
features not involved in the interference.
Upon a hearing on pleadings and proofs, a decree was entered
adjudging the patent to be valid and the first and second claims
thereof to have been infringed by the defendant, and the case was
sent to the auditor to determine and report the profits and damages
resulting from the infringement.
After certain proceedings taken with respect to several
infringing devices, not necessary to be here set forth, a final
decree was entered in favor of the plaintiff which, so far as
respects the validity of the patent, was affirmed by the court of
appeals, with an allowance for damages, which had been rejected by
the Supreme Court, 12 App.D.C. 201, whereupon the defendant
appealed to this Court.
MR. JUSTICE BROWN delivered the opinion of the Court.
We consider the question of the validity of this patent as the
decisive one in this case. The patent was adjudged to be valid by
the Supreme Court of the District of Columbia, as well as by the
Court of Appeals. It had been held to be invalid by Judge Lacombe,
sitting in the Circuit Court for the Southern District of New York,
upon a motion for a preliminary injunction,
Fenton Metallic
Manufacturing Co. v. Chase, 73 F. 831, and by Judge Wheeler
upon a final hearing of the same case, 84 F. 893.
Page 174 U. S. 495
The elements of Hoffman's combination, as described in the first
claim alleged to be infringed, are (1) a supporting rack or shelf
composed of metallic strips; (2) a reentrant bend or recess in its
front edge for the insertion of the hand; and, (3) rollers
journaled in the rack, and projecting above and in front of the
same, on each side of the recess. In the second claim, the
combination is described as (1) a supporting frame (apparently
including one of wood as well as of metal); (2) a series of
horizontal rollers, the front rollers being in two separated
sections; (3) the intermediate part of the frame being carried back
to permit the admission of the hand between said roller sections.
It may be remarked in passing that none of the decisions in the
Patent Office in the interference proceedings dealt with the
question of prior devices.
The introduction of rollers in bookshelves is undoubtedly a
convenient and valuable device for preventing the abrasion of large
and heavy books which are obliged to be laid flat upon the shelves,
especially when they are subjected to frequent handling, but the
employment of roller shelves at the time Hoffman made his
application for a patent (February 12, 1887) was by no means a
novelty. Indeed, plaintiff's own expert testifies that
"it was common to use what were called roller shelves, the same
consisting of frames or supports, and longitudinal parallel
rollers, which extended the entire length of the shelf, and served
to reduce friction in putting books upon and withdrawing them from
the shelf."
One form of such shelves is shown in complainant's Exhibit
"Office Specialty Manufacturing Company's Catalogue, Fig. 16." This
exhibit shows a shelf frame made of bent steel, firmly riveted
together, containing three continuous rollers, each of the full
length of the shelf, made of steel in tubular form. Continuing, the
witness said:
"The use of such shelves was, and is, however, limited because
of certain defects. For instance, one of the principal defects is
the liability of the person placing the book upon the shelf to have
the fingers pinched between the book and the front roller in
placing the book on the shelf. With light, small books, this, of
course, was not a matter of special importance,
Page 174 U. S. 496
and the shelves can be used with such books; but the class of
books for which such shelves are especially adapted is heavy books,
such as are used in keeping government records, weighing, in many
instances, from ten to twenty-six or even thirty pounds, and quite
large, and with such books, the liability to injure he fingers in
putting them on and taking them from the shelf is very great."
So long before Hoffman's application as the year 1870, Samuel H.
Harris had obtained a patent, No. 107,042, for a shelf of three
parallel wooden rollers covered with sheet metal, the specification
of which seems to assume that wooden rollers had theretofore been
used in iron cases for books.
A patent issued in 1876 to John L. Boone, No. 182, 157,
describes his invention as consisting
"in attaching rollers to the front edges of bookshelves, so
that, when a book is withdrawn from or placed upon the shelf, it
will move over the roller, instead of over the edge of the
shelf."
This is to obviate the danger of the book's being abraded by the
sharp corners of the shelf over which it is dragged, especially if
the shelf is higher than the level of the person's head who handles
it.
A patent issued in 1885 to Walter H. Conant shows a similar
arrangement of front rollers to protect the books.
In a patent to Marion T. Wolfe of October 7, 1879, No. 220,265,
there is shown a bookcase in which three series of short rollers,
each inserted in what the patentee calls a "box," are employed as a
support for the books. These boxes run at right angles to the front
of the case, and they are so constructed that the hand may be
introduced between any two series of rollers in order to more
readily grasp the back of the book, without liability of the
fingers' being caught by the edge of the shelf.
A device somewhat similar to that patented to Harris is shown in
a patent issued in 1886 to A. Lemuel Adams wherein a shelf is
provided with a series of parallel short rollers, the front rollers
being supported upon spring arms which are carried forward so as to
permit of the introduction of the hand between them, and thus
facilitate the withdrawal of the book without liability of contact
of the fingers with any portion of
Page 174 U. S. 497
the shelf. When a book is to be placed in position, it is first
rested upon the spring rollers, which by their elasticity assist in
forcing the book upon the fixed rollers, when it is easily passed
by such rollers to its proper place. The extension of the elastic
rollers in front of the shelf would seem to prevent the use of
doors in front of the shelves, and it is clear they do not support
the books when in place.
There was also oral testimony showing that there were in use in
the courthouse in Richmond, Indiana, in the year 1873 and
thereafter, unpatented roller shelves for books consisting of a
wooden shelf having the ordinary hand hole at the front, upon each
side of which there were short rollers similar to Hoffman's, though
some distance from the front edge, which enabled the back of the
book to be readily grasped and easily withdrawn upon the rollers.
The evidence showed that hundreds of these rollers were used, and
one of them, taken from the courthouse in Richmond, was introduced
as an exhibit.
Comparing these several devices with the patent in suit, it is
manifest that every element of the combination described in the
first and second claims is found in one or the other of such
devices. Roller shelves are found in all the patents above
described, as well as in the Richmond shelf, and, if there were any
invention in substituting metal for a wooden frame, it appears to
have been anticipated in the shelf used by the Specialty Company,
known as "Fig. 16," the existence of which before the Hoffman
application for a patent is admitted by plaintiff's expert as well
as by the manager of the plaintiff corporation. It was no novelty
to place rollers at the front edges of the shelves, so as to
project above and in front of the shelves, as this is shown in the
Boone, Conant, and Adams patent, and in the defendant's metallic
shelf, used prior to the Hoffman application. The employment of
semicircular handholes or recesses, for more readily grasping the
books, is such a familiar device in upright partitions for holding
books that scarcely any banking or record office is without them,
and the Court may properly take judicial notice of their use long
prior to this patent.
Brown v. Piper, 91 U. S.
37;
Terhune v.
Page 174 U. S. 498
Phillips, 99 U. S. 592;
King v. Gallun, 109 U. S. 99;
Phillips v. Detroit, 111 U. S. 604,
111 U. S. 606.
If there were any invention in applying them to roller shelves,
Hoffman is not entitled to the credit of it, since they are shown
in the so-called "Richmond shelf." The construction of the Wolfe
and Adams patents is also such as to permit the introduction of the
hand for grasping the book without coming in contact with the edge
of the shelves.
Putting the Hoffman patent in its most favorable light, it is
very little, if anything, more than an aggregation of prior well
known devices, each constituent of which aggregation performs its
own appropriate function in the old way. Where a combination of old
devices produces a new result, such combination is doubtless
patentable, but where the combination is not only of old elements,
but of old results, and no new function is evolved from such
combination, it falls within the rulings of this Court in
Hailes v. Van
Wormer, 20 Wall. 353,
87 U. S. 368;
Reckendorfer v. Faber, 92 U. S. 347,
92 U. S. 356;
Phillips v. City of Detroit, 111 U.
S. 604;
Brinkerhoff v. Aloe, 146 U.
S. 515,
146 U. S. 517;
Palmer v. Village of Corning, 156 U.
S. 342,
156 U. S. 345;
Richards v. Chase Elevator Co., 158 U.
S. 299. Hoffman may have succeeded in producing a shelf
more convenient and more salable than any which preceded it, but he
has done it principally, if not wholly, by the exercise of
mechanical skill.
If there be any invention at all in this patent, it is not to be
found in the combination described in the claims, but by a
reference to the drawing, and in the words "substantially as
described." This would confine the plaintiff to a metallic frame
divided longitudinally into three sections, each fitted with short
rollers, two of which project above and forward of the front bar of
the frame, which is bent inward in front of the middle section to
form the "reentrant bend or recess" for the insertion of the
hand.
But, in whatever light this device be considered, it is evident
that, limiting the patent to the precise construction shown, none
of the defendant's devices can be treated as infringements, since
none of them shows a shelf divided into three sections, and none of
them, except possibly one, the manufacture
Page 174 U. S. 499
of which was stopped, indicate a bend in the front bar of the
frame to form the recess for the insertion of the hand.
The decree of the court below must be
Reversed, and the case remanded to the Court of Appeals with
directions to order the bill to be dismissed.
