J. H. Day Co. v. Mountain City Mill Co.

• Decision Date: 07 November 1918
• Docket Number: 10.
• Citation: 257 F. 561
• Parties: J. H. DAY CO. v. MOUNTAIN CITY MILL CO. et al. [1]
• Court: U.S. District Court — Eastern District of Tennessee

257 F. 561

J. H. DAY CO. v. MOUNTAIN CITY MILL CO. et al. ^[1]

No. 10.

United States District Court, E.D. Tennessee, Southern Division.

November 7, 1918

See also, 225 F. 622.

SANFORD District Judge.

After careful consideration of the evidence, including the affidavits and copies of letters patent admitted, pursuant to stipulation, on the reopening of the proof, and the arguments and briefs of counsel, my conclusions, briefly stated without elaboration are:

1. Ward Patent No. 865,461. This is a patent for an improvement in dough-cutting machines, providing a machine in which crackers and the like may be cut from the dough sheet by a cutter moving in unison with the feed of the sheet through the machine, so that the sheet may be fed continuously through the machine without stopping the machine during the cutting stroke of the dies.

The nine claims of this patent now in suit are, in my opinion completely anticipated by the prior Hovey patent, No 129,411, which disclosed a clay-cutting machine in which a plastic sheet of brick clay is carried upon an endless apron to vertically reciprocating cutters, having in addition to their vertical movement, a traveling movement with the belt.

This Hovey patent was not cited in the Patent Office on Ward's application; although seven of his claims were rejected before amendment, upon reference to the Chambers patent, No. 297,671, on a machine for cutting brick clay; thus indicating the opinion of the office as to the analogy between the dough-cutting and clay-cutting machines.

The mechanism of this Hovey patent is, in my opinion, the mechanical equivalent of that of the Ward patent, operating in substantially the same way to produce substantially the same result; the difference consisting essentially in changing the materials to be operated upon rather than in changing the method of operation. And, upon the whole, I conclude that the substantial transfer of the structure of the Hovey patent from the clay-cutting art to the closely analogous dough-cutting art, both of which relate to the cutting of plastic materials, with only the necessary differences in mechanical detail, did not constitute invention as distinguished from mere mechanical skill, and presents a case of double use merely. Stearns v. Russell (6th Circ.) 85 F. 218, 29 C.C.A. 121; Johnson v. Traction Co. (6th Circ.) 119 F. 885, 56 C.C.A. 415; Weir Frog Co. v. Porter (6th Circ.) 206 F. 670, 124 C.C.A. 470; Ransome Mach. Co. v. United Mach. Co. (2d Circ.) 177 F. 413, 101 C.C.A. 217; Webster v. Dunham Co. (8th Circ.) 181 F. 836, 104 C.C.A. 346; Warner Instrument Co. v. Mfg. Co. (7th Circ.) 185 F. 507, 107 C.C.A. 607; Crown Co. v. Sterling Co. (D.C.) 210 F. 26, 34.

The second claim of the Ward patent is not saved as a combination claim by including with the unpatentable cutter-operating mechanism, a scrap remover, itself old in the art; but discloses merely a nonpatentable aggregation of old elements producing no new or different result in their combined force from that given by their separate operation, that is, an aggregation in which each old element accomplishes merely its own distinctive result without co-operation with the other. Overweight Elevator Co. v. Vogt Mach. Co. (6th Circ.) 102 F. 957, 43 C.C.A. 80; Johnson v. Foos Mfg. Co. (6th Circ.) 141 F. 73, 72 C.C.A. 105; Bullock Elec. Co. v. Gen. Elec. Co. (6th Circ.) 149 F. 409, 79 C.C.A. 229; Clisby v. Reese (7th Circ.) 88 F. 645, 32 C.C.A. 80; Jacobs Mfg. Co. v. Almond Mfg. Co. (2d Circ.) 177 F. 935, 101 C.C.A. 215; Johnson Co. v. Washing Mach. Co. (7th Circ.) 231 F. 988, 146 C.C.A. 184.

Hence without determining the disputed question as to whether the Ward patent disclosed a mechanism which could produce a sufficient unison of...