MULLER v. LODGE & DAVIS MACHINE TOOL CO., 77 F. 621

LURTON, Circuit Judge. After making the foregoing statement of facts the opinion of the court was delivered by The sliding tool-holder block, A, the dovetailed track of the frame, B, and the screw-spindle, C, of the patent, are all old and well-known forms of lathes. The novelty claimed consists in the attachment consisting of the crosspiece, F, the tool-block screw, G, the nuts, H and H', and means for locking the crosspiece in its place on the track of the frame.

The second claim does not include any-locking device as an element, and the fourth claim includes any device suitable for locking, and does not confine the patentee to the particular device included as an element in other claims of the same patent. The attachment which is claimed as novel is a device known better in the art as a stop or screw gauge. The primary object of all such gauges, and the only purpose expressly referred to by the patent, is to overcome what is called “lost motion.” Lost motion is due to a looseness between the screw-spindle, 0, and the nut, D, which is engaged by the spindle, C.

This looseness is due most generally to the wear oí the thread of the engaged nut or of the thread of the screw-spindle. If there exists such looseness of thread contact, the screw may be slightly turned in one or the other direction without a corresponding movement of the tool block, or the tool block may he slightly moved on the thread of the screw-spindle without any rotation of the screw.

If the object be to cut, a very line and accurate thread, any accidental movement of the block, or nenmovement of the block, holding the cutting tool, is objectionable as likely to result in imperfections in the thread cut, and sometimes in fractures of the tool. To take up this lost motion, and regulate accurately the cutting tool, was the object of several other devices well known to the public before the invention of Muller, and was the object of his invention, as he more than once declares' on the face of his patent.

It would seem that whatever device is found to operate so as to crowd block A upon the thread of the screw-spindle, and hold it rigidly in that position, would take up the lost motion by insuring steady and close contact between the threads of the nut and of the screw, and thus overcoming any looseness.

The operation resulting from so crowding the tool-holding slide upon the threads of the spindle engaged by it is well illustrated by drawings taken from the brief of complainant’s counsel, which are shown below. , The instrumentalities with which this result was to, be accomplished by complainant are fully described in his specifications, and the mode of their operation is set out with unusual definiteness.

But it is said that the defendant’s structure does the same thing in substantially the same way, and therefore infringes. ,The correspondences between the structure of Muller and that of defendant are said by Muller’s counsel to be these: They both have (1) the block, A; (2) the screw-spindle, 0; (3) the crosspiece, F; (4) tool-block screw, G-; (

o) the nut, H; (6) the nut H'; (7) means'for locking the crosspiece in place. These claims of identity of these elements are not borne out as to some of them unless the complainant’s invention is of such a primary character as to entitle him to a very liberal application of the doctrine of mechanical equivalents. The differences Observable are these: First. The block screw, G-, shown in the patent, is swiveled into the block, A, and is a swivel screw, and is not longitudinally movable in said block.

The defendant’s screw, <3, is not a swivel screw, but, on the contrary, is threaded in the tool block, and is longitudinally movable therein. Muller’s screw, (3-, is threaded its entire length. This is not the case with defendant’s screw. It is not threaded at all where it passes through the crosspiece, F. Second. The movable nut, Ef, of the patent, is not found on the defendant’s structure. That which is said to be its equivalent is a fixed head or collar integral with the screw, <3-.

These differences in the two 'structures are such as' that the only operation of Muller’s invention described in his patent cannot be thus accomplished by defendant’s structure. That operation as described by him in the patent is as follows: “The block or slide, A, is moved od. the tracks, B, by turning the spindle, C; but, as this spindle has some lost motion, the cutting tool cannot be adjusted very nicely and accurately, especially in cutting screw threads. To accomplish this I have provided the screw, G, and the nuts, H, H'.

When the tool has been-adjusted by means of the spindle, 0, the crosspiece, F, is locked in place on the tracks by turning the pintle, M, in such a manner that the eccentric disk, L, will push the wedge, J, in between the shank of the crosspiece and the outer surface of the track. If the block, A, is then to be moved slightly in the direction of the arrow, a', the nut, H', is so adjusted that its inner end will be from the corresponding side of the crosspiece the distance the block, A, is to be moved.

Then the nut, H, is turned, whereby the block, A, will be moved in the direction of the arrow, a', until the inner end of the nut, H', rests against the crosspiece, F. In a similar manner the block, A, can be moved in the inverse direction of the arrow, a'. Before the block, A, can be moved by the screw-spindle, G, the crosspiece, F, must be loosened, which is accomplished by turning the pintle, M, in such a manner that the eccentric disk, L, loosens the wedge, I.

It is evident that the adjustment of the block, A, by means of the screw, G, and the nuts, H, H', can only be very minute, as it must remain within the limits of the lost motion of the spindle, O. To facilitate these minute adjustments I have provided the nuts, H, H', with the graduations.” This operation cannot he performed on defendant’s structure, because the inner nut, Ef, cannot be moved so that it will come in contact with the inner surface of the crosspiece, and this crosspiece cannot therefore be clamped between the nut, H, and the fixed head of the screw, G-. This is admitted by complainant’s expert.

But it is urged that this mode of using Muller’s structure is only necessary to facilitate "very minute adjustments,” not ordinarily required, and that, an adjustment within the limits of the lost motion can he effected by the manipulation of the adjusting screw, 0, and either nut. To do this it is said that it is only necessary to turn the nut, II, or H', according as the cutting tool is to be adjusted for cutting inside or outside threads, a distance less than equal to that of the lost motion, and then turn the screw, O, until the nut moved is against the crosspiece.

It is also said that the inventor’s object ■was to make an attachment having a broader purpose than the mere obtaining of the very minute adjustment resulting from the conjoint use of both nuts, and that: this latter purpose or use is also a use of which defendant’s structure is capable. The structure of defendant is undoubtedly adapted to both take up lost motion and adjust the cutting tool accurately, and hold it rigid when so adjusted. The nut, H, of the defendant’s structure, may lie used as a jam to prevent the spindle, G, from being turned accidentally. Complainant’s expert, Arthur L.

Williston, a very fair and clear-headed mechanical engineer, thinks that there is no substantial difference between the function of defendant’s structure in insuring against lost motion or in their mode of operation, though he is of opinion that Muller’s mechanism is capable of accomplishing more accurate results through the conjoint use of both nuts.

He says that the fixed head on a movable spindle, such as II on defendant’s structure, is mechanically the equivalent for the movable nut, II', and the fixed spindle of complainant’s device; that the object in either case is to provide a collar or shoulder which may be accurately adjusted by slightly turning it. In of her words, it is contended that the screw, G.- threaded into the tool block and not threaded where it passes through the crossbridge, F, and provided with a lixed head outside the crosspiece and a movable nut inside, is the mechanical equivalent for the block screw and nuts, H and IT', of Muller.

This may be conceded without determining the question of infringement upon the facts of this case, for it only serves to bring us to a. consideration of the question as to Avhether Muller is entitled to discard any element which he has described and claimed, or to so liberal application of the doctrine of mechanical equivalents, by reason of the meritorious character of his invention. Undoubtedly, it is true that an inventor is entitled to all the uses of which his invention is capable, whether he then knew of all such uses or not.

It is not necessary that he shall state all the beneficial results, effects, uses, or advantages of the mechanism which he has devised. Goshen Sweeper Co. v. Bissell Carpet-Sweeper Co., 19 C. C. A. 13, 72 Fed. 67. The difficulty with complainant lies not in that direction. If complainant’s patent be construed so broadly as to cover a structure performing the function of the defendant’s attachment in the way, and by the mechanical devices, provided, then very serious doubt exists as to whether Muller’s patent can be sustained at all.

The evidence in this case makes it clear that, for more than two years before Muller’s invention, devices for taking up lost motion and adjusting the tool holder ñrmly and accurately were well known in mechanics, and were in common use. Some of these attachments for screw-threading lathes accomplished, in substantially the same way, the same results obtained by the defendant’s structure. “That which infringes if later, anticipates if earlier.” Peters v. Manufacturing Co., 21 Fed. 319; Id., 129 U. S. 537, 9 Sup. Ct. 389; Knapp v. Morss, 150 U. S. 221-228, 14 Sup. Ct. 81; Miller v. Manufacturing Co., 151 U.

S. 186, 14 Sup. Ct. 310. Several old devices are exhibited for doing substantially the same work in substantially the same way as that done by the structure in controversy. Three of these devices, being defendant’s Exhibits E,G, and H, have the crosspiece of complainant’s structure, and a locking device for locking it firmly against the track or frame upon which the tool block slides.

One of them, Exhibit 0, has not this crosspiece, but is provided with a latch or hook for fastening it to an old form of lathe known as a “weight rest lathe.” Several of them are provided with a tool-block screw, passing through the crosspiece and threaded into the tool block. This screw-spindle is threaded throughout, and provided with a movable collar or nut by which the screw-spindle may be firmly adjusted. In some of them this movable nut could be transferred from one side of the bridge piece to the other, according as threading was to be done inside or outside.

Exhibit E is provided with a second screw, passing through one end of the bridge piece, and having a fixed head on the outside. This screw is engaged by the crosspiece, and was used as a stop gauge, by screwing tightly against the tool block, and thus crowding it forward upon the threads of the adjusting spindle, C. The block screw of Exhibit G, is provided with nuts H and H'.

Defendant’s expert admits that although Exhibit C. has not the crosspiece nor means for locking, yet it is adapted for fastening or hanging upon an old form of lathe, and that, when fastened, the hook performed the same function as that performed by the crosspiece and means for locking same which are elements of Muller’s fourth claim; and that all of the other elements of. that claim, as well as of the second claim, are found in that device, and that it will do the work of complainant’s device, so far as taking up lost motion, but not’ so accurately.

He admits that in Exhibit G no element of either claim 2 or 4 of Muller’s patent is absent. He admits that the shoulder of the center screw of Exhibit E, which passes through an unthreaded hole, will act as a stop, and will take up the lost motion of the screw-spindle, and that the nut of the other screw, which screw passes through a threaded hole, will act also as a stop, and take up lost motion. Thus, these two screws longitudinally movable are clearly the mechanical equivalent of the screw and nuts, H and H', of the patent, and perform the same function as the two nuts of the patent.

We have carefully examined the evidence touching the common use of these devices before Muller’s invention, and have no reasonable doubt but that these devices, and others similar, were common property, and well known in mechanics for more than two years before Muller made his invention. A mere aggregation of old elements performing no new function, and accomplishing no new results, presents no patentable novelty. Hailes v. Van Wormer, 20 Wall. 353-368; Lock Co. v. Mosler, 127 U. S. 354-361, 8 Sup. Ct. 1148; Knapp v. Morss, 150 U. S. 221-227, 14 Sup.

Ct. 81, But “if a new combination and arrangement of known elements produce a new and beneficial result, never obtained before, it is evidence of invention.-’ Loom Co. v. Higgins, 105 U. S. 580-591. Now, if Muller lias greatly increased the effectiveness of (In- mechanism he claims, his patent may be sustained, although his elements are old and no original result is accomplished, under ihe principle of Loom Co. v. Higgins, cited above; The Barbed-Wire Patent, 143 U. S. 275, 12 Sup. Ct. 443, 450; and Topliff v. Topliff, 145 U. S. 156, 12 Sup. Ct. 825.

The most that can be claimed for his combination is not that he is a pioneer, but that he has arranged old elements in such a way as that by the conjoint: use of the nuts, H and 11', he has much improved the effectiveness and accuracy of the old devices serving the same object.

This principle will allow' Muller, not only the purpose claimed by him in his patent, whereby, through the conjoint use of the nuts, IT and II', a very minute adjustment of the tool-carrying block may he obtained for doing work requiring an unusual degree of delicacy, but will also give him the benefit of every suggested conjoint use of these nuts which adds to the effectiveness of his median ism. all hough not claimed as within the purpose of his invention; such as in predetermining the distance between two interior sur faces to be cut, and also when employed for cutting inside threads, by adjusting the outer nut in such maimer as to prevent the cutting-tool, when withdrawn from one side of the work, from striking or injuring the threads at the opposite side, both of which uses axe explained by Muller’s expert.

It. is evident, in view of the state of the art, that Muller's claims 1 and 4 cannot be sustained at all, unless he be confined to (.he precise structure which he has described and claimed by reference letters. This rule will prevent him from invoking the doctrine of mechanical equivalents, and will exclude all forms of devices which operate to perform the same functions, and accomplish (tie same result, though in a less efficient: and accurate way, which omit any of the elements of his combination, or depart from the precise form to which he has confined himself by the reference letters of his claims.

Having described the screw, G-, and the nuts. H and H', he cannot: now claim that the description is immaterial, and that a screw unthreaded in part, or threaded in block A, instead of a fixed or swiveled screw', will answer the same purpose, or that, one nu t on a different screw will answer the purposes of the two nuts upon a screw differently threaded and differently attached to the tool slide. The claims of the patent are for a combination of old elements.

Each claim in issue definitely specifies the elements entering into it, and by reference letters to the specifications carries into the combination the element thus described. The only operation described in the patent involves every one of the elements and their conjoint use, and requires their form and construction to be that specifically shown by the descriptive parts of the patent. Every element becomes, therefore, material, and it is not for the courts to say, when a patentee has thus limited his claim, that any element is immaterial. Water-Meter Co. v. Desper, 101 U. S. 332; Sargent v. Lock Co., 114 U.

S. 63-86, 5 Sup. Ct. 1021; Fay v. Cordesman, 109 U. S. 408-420, 3 Sup. Ct. 236, 244; Hendy v. Iron Works, 127 U. S. 370-375, 8 Sup. Ct. 1275. As observed by Justice Blatchford in Fay v. Cordesman, cited above, “it is the inventor’s province to make his own claim, and bis privilege to restrict it.

If it be a claim to a combination, and be restricted to specified elements, all must be regarded as material, leaving open only the question whether an omitted-part is supplied by an equivalent device or instrumentality.” Although the mere fact that the claims of the Muller patent are expressed by reference to particular parts of his drawings and specifications, this would not necessarily confine and limit him to the literal mode of construction described and exhibited, and deprive him of the benefits of the doctrine of equivalents.

If his invention is of a broad and meritorious character, such as to work a decided advance in the art, it will require something more than the use of reference letters in his claims to limit him to the exact form of device he has described. This question was fully considered, and the views entertained by this court announced, in the case of the McCormick Harvesting Mach. Co. v. C. Aultman & Co., 37 U. S. App. 299-343, 16 C. C. A. 259, and 69 Fed. 371. The doctrine of the cases of Weir v. Morden, 125 U. S. 98, 8 Sup. Ct. 869, and Hendy v. Iron Works, 127 U. S. 370, 8 Sup.

Ct. 1275, is, as we think, applicable only to mere improvements on well-known devices, — a doctrine which is therefore applicable to the case in hand. Upon the evidence in this case concerning the earlier devices employed publicly for more than two years, it is clear that Muller’s invention is a mere improvement of a narrow character upon well-known devices for accomplishing the same purpose. To avoid the defense of anticipation it is necessary that this patent be limited to the precise device which' he has described and claimed by reference letters.

He is therefore not entitled to a liberal application of the doctrine of equivalents which he invokes in this case. Miller v. Manufacturing Co., 151 U. S. 186, 207, 14 Sup. Ct. 310; Wright v. Yuengling, 155 U. S. 47, 15 Sup. Ct. 1; Wells v. Curtis, 31 U. S. App. 123, 13 C. C. A. 494, and 66 Fed. 318. This patent, thus construed and limited, is not infringed by the device of the defendants. They do not use the screw, Gr, nor the nuts H or H'. The decree of the circuit court must therefore be affirmed.