Heap v. Tremont & Suffolk Mills, 205.

• Citation: 82 F. 449
• Decision Date: 21 August 1897
• Docket Number: 205.
• Parties: HEAP v. TREMONT AND SUFFOLK MILLS.
• Court: United States Courts of Appeals. United States Court of Appeals (1st Circuit)

82 F. 449

HEAP v. TREMONT AND SUFFOLK MILLS.

No. 205.

United States Court of Appeals, First Circuit.

August 21, 1897

Edwin H. Brown, for appellant.

William A. Macleod, for appellee.

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

PUTNAM Circuit Judge.

This is a bill in equity, charging infringement, which was dismissed by the circuit court. The complainant appealed, so that the words 'complainant' and 'appellant' mean the moving party in each court, and the words 'defendant' and 'respondent' mean the alleged infringer. The suit relates to claims 1, 2, and 3 of a patent issued January 31 1888, to one Grosselin, of Sedan, in France, for improvements in machines for napping cloth; and the court below held that those claims were so limited by the English patent to William Davis, of July 24, 1823, and the German patent to Moritz Jahr, of September 1, 1878, as well as by the state of the art generally, that the respondent cannot be held to infringe.

The patent covers a lubricating device, and perhaps some other matters, not in issue; and, so far as this suit is concerned it shows a cloth-napping machine which employs a drum having small rolls mounted in bearings upon the periphery thereof. The rolls are covered with card-clothing, and, as the drum is revolved, they are caused to have an independent rotation on their own axes. The napping is effected by the contact of the card-clothed surfaces of the rolls. Machines of the class employing such an arrangement of drum and napping rolls are termed 'planetary machines,' by way of distinguishing them from those which employ a large drum having the card-clothing affixed to the surface thereof. The machine is provided with cone pulleys, whereby the operator may change the speed of the napping rolls through a definite series of variations, so that the energy with which the napping rolls scratch the cloth may be varied quickly and easily, and without stopping the machine. Claims 1, 2, and 3 read as follows:

'(1) In a gig mill, the combination, with a rotary drum consisting of heads, a shaft, and a series of card or teaseling rollers journaled upon said heads, and provided with pulleys at their projecting ends, of a driving belt applied to each set of said pulleys, and devices, substantially as described, for driving said belts with varying speeds and in different directions, as described, whereby the cards are rotated simultaneously each about its own axis and about the axis of the drum, substantially as described.

'(2) In a gig mill, the combination, with a drum composed of heads, a shaft, and the working card or teaseling rollers, D D, of a shaft, I, cones, H H', belt, X/3, pinion, f, gear, d, pulleys, F F', belts, X X', and pulleys, a a, substantially as described.

'(3) In a gig mill, the combination, with a drum composed of teaseling cards or working rollers, D D, heads, and a shaft, of pulleys, a a, at the projecting ends of said rollers, and of greater diameter than the rollers, a driving belt in operative relation to each set of pulleys, and devices, substantially as described, for driving said belts with varying speeds and in different directions, substantially as described.

Outline Drawing of the Machine in Issue.

T, Cloth to be napped.

B, Drum.

D, Napping rollers journaled in drum.

a, Pulleys on napping Rollers.

x, Movable driver passing around pulleys 'a'

and around a pulley 'F'.

C, Driving shaft of machine.

H, Cone pulley on driving shaft.

x/3, Belt transmitting motion from cone pulley 'H.'

H', Cone pulley driven by belt 'x/3' and driving pulley 'F' and movable

driver 'x'.

(Image Omitted)

A convenient representation of the device is shown in the accompanying drawing.

For a proper understanding of some questions to be discussed, claim 5 must be considered, though not directly in issue. It is as follows:

'(5) In a gig mill, the combination of a rotary drum carrying a series of independently rotating teaseling rollers, with a driving shaft provided with a convex parabolic step pulley, a driven shaft provided with a concave parabolic step pulley, a belt connecting the two pulleys, and means, substantially as described, for transmitting motion to the teaseling rollers, substantially as and for the purpose described.'

The specification contains the following:

'The two regulating cones, H H', have each a parabolic generatrix, instead of a rectilinear one, as in ordinary speed cones. The driving cone, H, has a convex parabolic generatrix, as indicated by dotted lines, y y, and the cone, H/1, a concave parabolic generatrix, as indicated by dotted lines, y y, and the cone, H/1, a concave parabolic generatrix, as indicated by dotted lines, y' y'. The sum of the diameters of two corresponding steps of the cones is thus always the same, so that the length of the belt does not change. This arrangement of parabolic cones is very important, because it allows of varying in a regular manner the degree of energy or efficiency of the machine by increasing or decreasing, always by the same amount, in shifting the belt from one set of corresponding steps to another. Two cones with rectilinear generatrices would give very unequal differences. The variation of speed and force with ordinary cone pulleys is in accordance with the law of a geometrical progression, and the result is that the difference between the fourth and fifth steps, for example, is not the same as between the second and third, while in my parabolic cone pulley the variation of speed and force proceeds in accordance with the law of an arithmetical progression.'

This parabolic cone, however, is not functional with reference to the claims in issue here. The device covered by the invention is operative and useful without it, and it is so far from being an essential element that the device may be claimed and patented with it or without it, or in each way. That it has been patented in each way follows from the fact that the parabolic cone is expressly enumerated as an element in claim 5. Being thus enumerated, and not enumerated in the claims in issue, the ordinary rules of construction require us to hold that in this respect the claims in issue are broader than claim 5; and we need give this particular no further consideration.

The specification also contains the following statements:

'This object is obtained by employing teasels or cards arranged, as heretofore, spirally upon small rollers having their bearings in rotating drum heads, so as to revolve with said drum heads about the axis of the latter.'

'The two regulating cones, H H', have each a parabolic generatrix, instead of a rectilinear one, as in ordinary speed cones.'

These admit that the planetary system is old, and that speed cones are also old. Indeed, the speed cone and its equivalents are so common in the mechanic arts, and are of such common knowledge, that their application to any new use necessarily raises a doubt whether such new use can of itself involve invention, and raises also a presumption that any invention resting upon it must be narrow, and one of mere detail, as was held by the circuit court in the case at bar. The belt, X, which gives motion to the rolls, is also old; but it had never been used in connection with a speed cone, or its equivalent, for napping machine built on the planetary system.

The German patent to Jahr is claimed to contain a suggestion of a combination of all the essential elements of the claims in issue, or their equivalents. It is too doubtful in this respect to be accepted, under the rule which requires that such foreign anticipatory matter should be full and clear, stated in Seymour v. Osborne, 11 Wall. 516, 555, and Eames v. Andrews, 133 U.S. 40, 66, 7 Sup.Ct. 1073. Speed cones of their equivalents had also long been applied to cylinders carrying napping materials, but none of the witnesses who testify to this make any claim of their prior use in planetary machines, although one represents the respondent, and each possessed great experience in the art. The Perkins machine for dressing leather and the Daniels machine for dressing sewing thread have the elements of a planetary system, but neither contains devices for varying the speed of the rolls, although, perhaps, such devices could easily have been incorporated into them. The earlier patents of Grosselin, or his correspondents, embracing the device now in issue, or the essential parts thereof, cannot be regarded as anticipatory, and will be spoken of in another connection.

It is probably very true that, by selecting from the various prior machines in this particular art, all the elements of the device in suit could be brought together. But to hold that this fact always defeats novelty would be to shut out every combination of old elements from the protection of the patent laws. Packard v. Lacing-Stud Co., 16 C.C.A. 639, 70 F. 66, 68; Boston & R. Electric St.Ry.Co. v. Bemis Car-Box Co., 25 C.C.A. 420, 80 F. 287, 289. While, therefore, all the elements are old, the novelty of the combination is maintained. There can be no question as to its utility. Although a costly machine, the respondent corporation itself is using 41 of them, including the alleged infringing machines, as against only 36 of other construction. The prior expensive and cumbersome methods are suggested and impliedly admitted by Mr. Thomas, the respondent's superintendent, in connection with the testimony already referred to about the expedients for changing the speed of the old-style napping cylinders. He says:

'Int. With reference to changing the speed by changing the pulleys on the old napping machines, as you have stated, was that an expedient which you had to resort to frequently in the Tremont & Suffolk Mills, with

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