Boston & R. Elec. St. Ry. Co. v. Bemis Car-Box Co.

• Court: U.S. Court of Appeals — First Circuit
• Citation: Boston & R. Elec. St. Ry. Co. v. Bemis Car-Box Co., 80 F. 287 (1st Cir. 1897)
• Decision Date: 21 April 1897
• Docket Number: 201.
• Parties: BOSTON & R. ELECTRIC ST. RY. CO. v. BEMIS CAR-BOX C0.

80 F. 287

BOSTON & R. ELECTRIC ST. RY. CO. v. BEMIS CAR-BOX C0.

No. 201.

United States Court of Appeals, First Circuit.

April 21, 1897

Francis Rawle, for appellant.

Frederick P. Fish and W. K. Richardson, for appellee.

Before PUTNAM, Circuit Judge, and WEBB and ALDRICH, District Judges.

PUTNAM Circuit Judge.

The controversy in this case is over claim 1 of a patent issued to Sumner A. Bemis, on April 5, 1881, and the claim was sustained and held infringed by the court below. The appeal is from the usual interlocutory decree for an injunction and an account, entered on a hearing of the cause on bill answer, and proofs. The complainant below (now the appellee) assures us that its device has proved in practice completely effective; but we do not find the evidence of this in the record, nor do we find any proofs showing to what extent it has been used, or the patent publicly acquiesced in. Therefore the patent is without the support which might come from a condition of facts favorable to it in these respects (Reece Buttonhole Mach. Co. v. Globe Buttonhole Mach Co., 10 C.C.A. 194, 61 F. 958, 970); and we are left to determine the case from what appears in the records of patent offices, domestic and foreign, from the testimony of experts and from what we can ascertain to be matters of common knowledge and experience.

The appellee's device is shown by the following drawing forming a part of the application for its patent:

(Image Omitted) The inventor to whom appellee's patent issued described his invention as an 'Improved Car Axle Box'; and all he said in his specification relevant to claim 1 was as follows:

'The object of my invention is to provide a cheap and convenient manner of securing the springs in place between the housing and the pedestal, to ease the side movement of the car, and also an effective way or means of excluding the dust and dirt form the axle bearings; and I accomplish these objects by the means illustrated in the accompanying drawings. * * * In the drawings, C represents a car axle; B, the car wheel; E, the axle box; and A, the housing at the inner end of the box, on the inner part of which housing is made a tubular sleeve, 2, tapered on its periphery, as shown clearly in Fig. iii. That part of the housing nearest the car wheel is filled with wood blocking or other suitable material, 8, with a circular space between the blocking, 8, and the sleeve, 2, to receive the sleeve or flange, 1, cast on the outer face of the wheel. A washer, 3, is placed on the sleeve, 2, the hole through the washer being a little smaller than the largest part of said sleeve, 2; and when the axle bearing is in its proper position in the axle box, the end of the sleeve or flange, 1, on the wheel, impinges against the washer, and tends to crowd the latter further upon the sleeve, 2; and when in this position, as there is always contact between the end of the flange on the wheel and the side of the washer, and also contact between the inner rim of the washer and the outer surface of the sleeve, 2, on the housing, of course the dust cannot get past the washer into the axle box.'

Claim 1, in issue here, is as follows:

'The combination, in a car axle box, of the car wheel provided with a flange projecting out from the side of the wheel and around the axle, a tapered sleeve on the box or its housing projecting into the said flange on the wheel, and surrounding the axle, and a washer placed upon said tapered sleeve on the box, and there confined by contact with the end of the flange on the wheel, substantially as described.'

For the purpose of attacking the novelty of this device, and also for the further purpose of limiting its range, the respondent below (now the appellant) introduced many prior patents, both domestic and British. We are unable however, to perceive that any of them contained all the elements found in the appellee's device, or were intended to perform precisely the same function. The elements found in the claim are (1) the projecting flange; (2) the tapered sleeve; (3) the washer; (4) the location of the washer so as to be 'confined by contact'; and (5) some elasticity in the washer, implied from common knowledge, and from the words 'confined by contact,' as well as from the words in the specification 'always contact between the end of the flange on the wheel and the side of the washer.' A combination of all these is not found in any prior device proved in the record, and the novelty of the appellee's device is established to our satisfaction.

As bearing on the question whether the device involved patentable invention, the appellee's expert testified as follows:

'I understand that the purpose of the tapered sleeve on the axle box is to provide a part which will hold a flexible washer thereon, which washer in the patent is indicated

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