Risdon Iron Locomotive Works v. Medart

• Decision Date: 22 April 1895
• Docket Number: No. 164,164
• Citation: 39 L.Ed. 899,15 S.Ct. 745,158 U.S. 68
• Parties: RISDON IRON & LOCOMOTIVE WORKS v. MEDART et al
• Court: U.S. Supreme Court

158 U.S. 68

15 S.Ct. 745

39 L.Ed. 899

RISDON IRON & LOCOMOTIVE WORKS

v MEDART et al.

No. 164.

April 22, 1895.

Appeal rom the circuit Court of the United States for the Northern District of California.

This was a suit in equity institutedb y Philip and William Medart against the appellant for the infringement of three letters patent granted to Philip Medart, viz.: Patent No. 248,599, dated October 25, 1881, for the manufacture of belt pulleys; patent No. 248,598, also dated October 25, 1881, for a belt pulley; and patent No. 238,702, granted March 8, 1881, also for a belt pulley.

In the first patent, No. 248,599, the patentee stated in his specification that his invention 'relates to that class of belt pulleys formed of a wrought-metal rim and a separate center, usually a spider, and usually made of cast metal. Heretofore considerable difficulty has been encountered in the manufacture of such pulleys, much time, skilled labor, and large and elaborate machinery have been required, and their production has been correspondingly expensive. The object of my invention is to cheapen and simplify their construction, overcome the objections above mentioned, and produce strong and perfect pulleys in a quick and efficient manner. My invention, therefore, consists in an improved process of manufacture, whereby the above results are obtained.'

The drawings accompanying the specification represent the machinery for carrying out the invention, and the pulley at various stages of its manufacture. The specification sets forth in detail the manner in which the machinery is operated, and winds up with the following statement: 'Pulleys thus manufactured are perfectly balanced, faultless in shape, strong, and durable, and can be produced more rapidly and at less expense than the imperfect pulleys heretofore made. The machinery herein shown and referred to has not been described more in detail, as its operation will be clear to those skilled in such matters; and no claim to it is herein made, it being my purpose to secure protection for such apparatus by other applications hereafter to be made.'

The claims, which are four in number, are all for the described improvement in the art of manufacturing belt pulleys, which consist in centering the pulley center or spider, and then grinding the same concentrically with the axis of the pulley, the several claims stating with more or less detail the principal steps in the manufacture.

In his specification to patent No. 248,598 the patentee states that his 'improved pulley belongs to that class of pulleys composed of a separate spider, usually of cast metal, and a wrought-metal rim, which is secured to the spider,' and that his invention 'consists in a pulley which is perfectly true and accurately balanced; that is, a pulley in which the center of gravity and geometrical center or axis coincide.'

In his specification to patent No. 238,702, which was granted about seven months before the other patents, the patentee states that his invention 'relates to certain improvements in belt pulleys, and had for its object—First, the production of a cheap, light, and durable pulley; and, secondly, the production of irregular sizes of pulleys without the necessity of a separate pattern for each size of pulley required. And this invention consists—First, in constructing the usual crown or dish on the rim of wrought-metal rimmed pulleys by bending said rim transversely during the process of manufacture; secondly, the belt pulley having arms formed of wood, preferably of a cylindrical shape, which at their inner ends rest in sockets cast on the hub, and at their outer ends are provided with bracket lugs, to which the pin is secured by rivets or other equivalent means.'

Fig. 1 of the following drawings exhibits a perspective view, and fig. 2 a vertical section, of the patented pulley:

The defendant appeared and demurred to the bill upon the ground that the patents did not show invention upon their faces. The demurrer was argued and overruled, and leave given to answer, and upon a subsequent hearing upon pleadings and proofs it was adjudged that all of the patents were valid; that the defendant had infringed the first, second, and third claims of patent No. 248,599, the two clais of patent No. 248,598, and the first claim of patent No. 238,702,—and defendant was enjoined from further infringing. A final decree was subsequently entered, upon the report of the master, for $1,811.25, from which decree the defendant appealed.

M. A. Wheaton, F. J. Kierce, and E. R. Taylor, for appellant.

William M. Eccles, for appellees.

Mr. Justice BROWN, after stating the facts in the foregoing language, delivered the opinion of the court.

The three patents involved in this suit are for an improved belt pulley, and for the manufacture of the same. Each of them requires a separate consideration.

1. Patent No. 248,599 is for an improved process of manufacturing that class of belt pulleys formed of a wrought-metal rim and a separate center, usually a spider, and usually made of cast metal. The drawings represent the machinery for carrying out the invention, and the pulley at the various stages of its manufacture. The process of manufacture is set forth in detail in the specification, and consists of the following steps: (1) Centering the pulley center or spider; (2) grinding the ends of the arms concentrically with the axis of the pulley; (3) boring the center; (4) securing the rim to the spider; (5) grinding the face of the rim concentric with the axis of the pulley; (6) grinding or squaring the edges of the rim. This process, it may be observed, is purely a mechanical one.

Does it disclose a patentable invention? That the patent is for a process in manufacture, and not for the mechanism employed, nor for the finished product of such manufacture, is undeniable, and is so expressed upon the face of the specification.

The four claims of the patent make no reference to the mechanism exhibited in the drawings, and described in the specification. All claim an improvement in the art of manufacturing, and set forth in more or less detail the various steps in that process. That certain processes of manufacture are patentable is as clear as that certain others are not, but nowhere is the distinction between them accurately defined. There is somewhat of the same obscurity in the line of demarkation as in that between mechanical skill and invention, or in that between a new article of manufacture, which is universally held to be patentable, and the function of a machine, which it is equally clear is not. It may be said in general that processes of manufacture which involve chemical or other similar elemental action are patentable, though mechanism may be necessary in the application or carrying out of such process, while those which consist solely in the operation of a machine are not. Most processes which have been held to be patentable require the aid of mechanism in their practical application, but, where such mechanism is subsidiary to the chemical action, the fact that the patentee may be entitled to a patent upon his mechanism does not impair his right to a patent for the process, since he would lose the benefit of his real discovery, which might be applied in a dozen different ways, if he were not entitled to such patent. But, if the operation of his device be purely mechanical, no such considerations apply, since the function of the machine is entirely independent of any chemical or other similar action.

A review of some of the principal cases upon the subject of patents for processes may not be out of place in this connection, and will serve to illustrate the distinction between such as are and such as are not patentable.

The leading English cases are those which arose from the patent of September 11, 1828, to Neilson, for the improved application of air to produce heat in fires, forges, and furnaces, where bellows or other blowing apparatus were required. The patent, like many of the early English patents, contained no specific claims, but described a blast or current of air to be passed from the bellows into an air vessel or receptacle, made sufficiently strong to endure the blast, and artificially heated to a red het , or very nearly so.

It was said that the air vessel or receptacle might be conveniently made of iron or other metals, and that its form was immaterial to its effect, and might be adapted to the local circumstances or situation. In Neilson v. Harford, 1 Webst. Pat. Cas. 331, this patent was construed by the court of exchequer, in which the claim was made that the patent was for a principle, and was therefore void. Great difficulty was felt in its proper construction, but after full consideration it was held that the patent did not merely claim a principle, but a machine embodying a principle; and, in delivering the opinion, Baron Parke observed: 'We think the case must be considered as if, the principle being well known, the plaintiff had first invented a mode of applying it by a mechanical apparatus to furnaces; and his invention then consists in this,—by interposing a receptacle for heated air between the blowing apparatus and the furnace. In this receptacle he directs the air to be heated by the application of heat externally to the receptacle, and thus he accomplishes the object of applying the blast, which was before of cold air, in a heated state to the furnace.' In citing this case in support of his opinion in O'Reilly v. Morse, 15 How. 62, 115, Mr. Chief Justice Taney treated it as an invention of a mechanical apparatus by which a current of hot air, instead of cold, could be thrown in. 'The interposition of a heated receptacle, in any form, was the novelty he invented.'

The Neilson patent, however, subsequently came before the house of lords, on appeal from the Scottish court of session, in Iron Co. v. Neilson, 1 Webst. Pat. Cas. 673. The case went off upon other questions, but, in...