Nordberg Mfg. Co. v. Woolery Machine Co.

• Decision Date: 31 October 1935
• Docket Number: No. 5405.,5405.
• Citation: 79 F.2d 685
• Parties: NORDBERG MFG. CO. v. WOOLERY MACHINE CO.
• Court: U.S. Court of Appeals — Seventh Circuit

79 F.2d 685 (1935)

NORDBERG MFG. CO. v. WOOLERY MACHINE CO.

No. 5405.

Circuit Court of Appeals, Seventh Circuit.

October 31, 1935.

Norman S. Parker, of Chicago, Ill., and Leon F. Foley, of Milwaukee, Wis., for appellant.

Andrew E. Carlsen, of Minneapolis, Minn., and Warren G. Wheeler, of Milwaukee, Wis., for appellee.

Before SPARKS and ALCHULER, Circuit Judges, and BRIGGLE, District Judge.

SPARKS, Circuit Judge.

The questions here involved are the validity of claims 1, 2, 8, 10, 14, 16, and 22, and the infringement of claims 8, 14, 16, and 22 of United States patent No. 1,807,367, issued to Woolery on May 26, 1931. The District Court held that all said claims were valid and infringed and were not anticipated. From that ruling this appeal is prosecuted.

The invention relates to bolt tighteners for railway rails. Its primary objects are: (1) To provide a portable power-operated machine that can be quickly and easily mounted on and dismounted from the rails, and which can readily be moved longitudinally on the rails so as to be successively shiftable from one rail joint to another; (2) to provide a machine, of an efficient and practical nature, for selectively tightening or releasing the nut on the bolt, on whichever side of the rail the nut may be; (3) to provide a bolt tightener in which the tightening pressure will be automatically released when it reaches a predetermined degree, so as to insure a uniform holding pressure by each bolt, and in which at the same time the operator may effect an adjustment to eliminate the automatic pressure release and provide a positive power drive which may be employed to twist off a bolt which can not be removed or adequately tightened; (4) to provide an improved construction of a wrench and the supporting and driving mechanism therefor; (5) to provide an efficient power transmitting mechanism, including speed clutches and drives, for conveying and regulating motive power from an engine at one end of the machine to the tool or wrench holders preferably arranged at or near the other end of the machine.

For the purpose of discussion, the claims may be divided into three groups. Claims 1, 2, and 10 which relate generally to a machine for travel and work on a railway will be referred to as the "tumbling claims."¹ They contemplate a protection to the machinery and describe weight distribution and rocker support combinations which facilitate hurried tumbling and removal of the machine from the track in case of an approaching train, and facilitate replacement on the track when the train has passed.

Claims 14 and 16 relate to a rail machine having a tool or rail working mechanism in combination with a pivoted, shiftable frame structure for transversely shifting the tool with respect to the rail. They are referred to as the "tool shifting claims."²

Claims 8 and 22 relate to the mechanism for transmitting power from the engine to the socket wrenches and are designated as "power transmission claims."³

Appellant admits that certain of its devices infringe claims 1, 2, and 10, providing those claims are valid, but denies their validity. It asserts that the only feature of the tumbling device, referred to in the "tumbling claims," is the use of hoop-shaped rockers or guards which permit the device to be tilted off the rail and which may act to protect the structure when it is tilted. It argues that tilting a device by means of rockers, and protecting it by means of a guard when it is tilted on its side is mere mechanical skill and not invention. It further insists that these claims cover the application of spaced rockers to any track working machine, for supporting the machine when tumbled from the tracks. We do not so read these claims. They are restricted, and contemplate a use only in connection with a rail working machine so designed that its center of gravity will be disposed substantially above one rail of the track. Claim 2 adds the feature of the lateral extension or outrigger which as a support contacts the other rail, thus maintaining the machine in a normal operative position. Claims 2 and 10 have additional limitations which relate to the motor and track working mechanism carried by and forming a part of the machine. It is argued, however, by appellant that the motor and track working mechanism limitations of claims 2 and 10 have no cooperative association with the remaining elements, and that they constitute mere aggregation. It can not be denied that the tumbling features of the claims have no advantage, or but very little, in a machine used on a track where no trains are running, but it is clear that there is quite an advantage in their use where trains continue to operate, and the advantage is more apparent in cases where there are blind curves or other obstructions to the workman's view. The rockers also have the further advantage of enabling the operator to replace the machine in proper operative position, and they also protect and guard the mechanism.

We think there is a definite cooperative association between the rockers and the laterally located center of gravity of the machine proper, and the same may be said with respect to the outrigger which maintains the machine balance on one rail, when in operation, and may be gripped and manipulated to roll the machine off the track and back onto it by one operation. In Sachs v. Hartford Electric Supply Co. (C. C. A.) 47 F.(2d) 743, 748, it is said, "The co-operation of the means necessary to create an invention is to be measured by the purpose to be fulfilled, not by the interaction of the parts. Each factor must indeed be a condition to that result, but the whole may be a mere assemblage; the co-operation between them all may be no more than their necessary presence in a unit which shall answer a single purpose." In Standard Oil Co. v. Southern Pacific R. Co. (C. C.) 48 F. 109, 110, the court said, "It is sufficient if all the devices co-operate with respect to the work to be done, and in furtherance thereof, although each device may perform its own particular function only." In Forbush v. Cook, 9 Fed. Cas. 423, No. 4,931, the court said, "To make a valid claim for a combination, it is not necessary that the several elementary parts of the combination should act simultaneously. If those elementary parts are so arranged that the successive action of each contributes to produce some one practical result, which result, when attained, is the product of the simultaneous or successive action of all the elementary parts, viewed as one entire whole, a valid claim for thus combining those elementary parts may be made."

Appellant also contends that the "tumbling" claims are anticipated by the French patent to Wageor, No. 559,433; the United States patent to Hankinson, No. 1,247,674; and United States patent to Reid, No. 1,478,256. While the Wageor device resembles that of the Woolery patent, he discloses no rocker elements for facilitating removal and replacement of the machine and for protecting the mechanisms when tumbled from the track. While the courts have never refused to consider a foreign patent merely because it was foreign, yet it is to be measured as anticipatory, not by what might have been made out of it, but by what is clearly and definitely expressed in it. Carson v. American Smelting & Refining Co. (C. C. A.) 4 F.(2d) 463, 465. The court in that case said, "An American patent is not anticipated by a prior foreign patent, unless the latter exhibits the invention in such full, clear, and exact terms as to enable any person skilled in the art to practice it without the necessity of making experiments." As applied to the patent in suit, we think Wageor's patent can not be said to anticipate. Wageor was cited in the Patent Office, and regardless of that fact, the "tumbling" claims were allowed. That action by the Patent Office officials is entitled to great weight. Although not absolutely binding, it is to be overcome only by clear proof that the patent officials were mistaken and that the combination lacks patentable novelty. J. A. Mohr & Son v. Alliance Securities Co. (C. C. A.) 14 F. (2d) 799.

The Hankinson patent relates particularly to a vehicle especially adapted for use in playing auto polo; and the Reid patent relates to a device for tilting an automobile for the purpose of painting and repair. In each, the purpose sought to be accomplished and the methods used were quite dissimilar to those of the patent in suit. The problems solved were entirely different, and we think they were in nonanalogous arts. We therefore hold that claims 1, 2, and 10 are valid.

The "tool shifting" claims, 14 and 16, are not limited to any particular rail working mechanism, but call for means for adjusting the main frame of a rail working mechanism with respect to the rail. Claim 14 describes a rail working machine in which a main frame supports a rail working tool or mechanism, and is in turn supported over the rail by a support or outrigger at its front end, and a roller at the rear end. The frame is swingable from its front end so that the rear end is transversely shiftable with respect to the roller, so as to adjust the rail working mechanism laterally with respect to the rail. By turning a hand wheel at the rear, the entire rear end of the machine is shifted laterally so that the nut wrenches can be moved into engagement with the rail bolt nuts at either side of the rail, and when the operation on the nut is completed the wrench may be laterally disengaged from the nut. Claim 16 is similar to claim 14 except that the former provides means for vertically lifting the rear or wrench end of the frame.

As anticipatory of these claims appellant cites the Link-Belt locomotive crane, the Ingersoll-Rand power plants, and United States patents to Armstrong, No. 1,234,115; Billings and Greenleaf, No. 1,322,478; Jacobs, No. 891,700; Kimball and Appleton, No. 370,147; Harbot, No. 1,093,848; Venning, No. 1,231,102; and French...