CAMPBELL PRINTING-PRESS & MFG. CO. v. MIEHLE PRINTING-PRESS & MFG. CO.; MIEHLE PRINTING-PRESS & MFG. CO. v. CAMPBELL PRINTING-PRESS & MFG. CO., 102 F. 159

WOODS, Circuit Judge, after stating the case, delivered the opinion of the court.

A patent for a “mechanical, movement,” according to one of the experts in the case, is “for a mechanism transmitting power or mo-" tion from a driving part to a part to be driven.” Another of the experts says: “A ‘mechanical movement’ Is the combination and arrangement of mechanical parts intended for the translation or transformation of motion. * * * They are mechanisms adapted usually for employment in wholly different classes of machines, * * * [which] happen to require a similar resultant motion or movement of parts. * * * A claim for a mechanical movement in a patent is unrestricted to its use in any particular kind of machine, although for its proper illustration and explanation it may be shown and described in connection with such machine.”- If such a movement is patentable, evidently it must be because in itself, and apart from any form of mechanism, it constitutes “a new and useful art.” Rev.

St. § 4886. Rejecting as surplusage, if not as meaningless, the words, “in a mechanical movement,” in the claim of the first patent, and the corresponding words of the other claims in controversy, they are in the ordinary form of claims for mechanical combinations designed to accomplish the particular' movements described, none of which appear to have been unknown before. There seems to be no controlling reason against considering the claims as if for mechanisms. So, in effect, the experts have treated them.

Saying little or nothing in explanation of the characteristics of different movements, and pointing out no novelty of movement distinguishable from a function of mechanism, they have dwelt upon such differences of construction between devices as that the wrist pin of one is located on the driving pinion, and of another on the end of a pitman or lever, while in the first the slot is in the rack frame, and in the other is on the pinion; differences which an expert for one of the parties declares radical and essential, while the expert for the other party finds in them nothing more than a converse arrangement of parts.

The difference between the “two kinds of rack and pin movement” illustrated by the patents of Miehle and Potter one of the experts has declared to be fundamental, and in a general sense the proposition is perhaps undeniable, but it has not been explained that in either device is there a new kind of movement, or a combination of the parts employed to produce the particular movements described, of which the prior art does not afford parallels either in direct or converse arrangement.

It serves no purpose to emphasize the numerous differences in details of construction and operation between the earlier patents and Miehle’s patent as entireties. A few elements only are involved in the issue presented. It is only with Miehle’s pinion, wrist pin, rack frame, and slot, arranged to operate as stated, that we have to deal, and it is only corresponding parts of earlier patents which can aid in determining the patentability and scope of the combination.

The characteristic feature of the invention, according to counsel, is the use of the wrist pin upon the main pinion and slots on the rack frame to accomplish the reversal of movement of the rack frame while the pinion is wholly disengaged from, and out of mesh with, the rack. There seems, however, to be no justification for the emphasis put upon the disengagement of the pinion from the racks. It is not a feature of the invention. It is not mentioned in the claim, and only indirectly is referred to in the specification.

There was no need for more, because it is manifestly impossible that the rack frame should come under the retarding control of the wrist pin in the slot until released from the pinion, or again should come under the control of the pinion until released from the wrist pin.

The invention, therefore, consists, or at least has its manifestation, in the combination of the racks, pinion, wrist pin, and slots so adjusted, for the purpose of producing a uniform reciprocal movement of the rack frame, as to guide the pinion from the point and moment of disengagement to the point and moment of re-engagement with the racks. .In the means employed there was nothing new except the form of the slot.

The utility or advantage achieved was that each reverse of movement was effected “without losing the amount óf stroke [tjheretofore lost by diminishing the revolutions of the pinion.” Theretofore the reverse was accomplished by a movement through a half circle, while by the use of the Miehle slot the reverse may be completed'by a movement through an arc of any less number of degrees than 180, and thereby a proportionate increase in the length--and in the movement at full speed of the racks is made practicable.

The possibilities of variation in the form and operation of the slot are illustrated by Figure 18 of the patent. In these two things (the form of -the slot and the greater length and movement of the rack frame) are to be found the novelty and utility necessary to support the patent. That there is nothing new and patentable in the mere arrangement and relation of the parts, one to another, seems evident. In the Hoe patent, for instance, the parts are the same, but they are placed in a converse order.

The wrist pin, instead of being on the driving pinion, is on the end of a pitman or lever which is fulcrumed upon a pin or stud on the rack plate, while the slot is on the driving pinion. In form it is not a slot, but rather the equivalent of one, consisting of a recess in the periphery of the pinion or mangle wheel, into which the stud on the end of the pitman engages, and a semicircular guard plate on the pinion, which during the reversing movement, and while the pinion is entirely disengaged from the racks, holds the stud in the recess.

If it be said that the equivalent of a slot is not to be found in that arrangement, then it may be equally well said that there is no slot or its equivalent in the devices of the defendant which are alleged to have been made in infringement of the Miehle patent. The patents of Morse, Potter, Hoe & Tucker, and Birlcbeck all show even more clearly combinations of rack frames, pinions, wrist pins, and slots employed, substantially, in the same manner as in the Miehle device, for the purpose of effecting the reverses necessary to the accomplishment of reciprocal movements.

The essential difference is that in all the older devices the reverse is effected by the passage of the pin through a semicircular slot. The advantages of the crank movement are common to all the forms of construction referred to, but the peculiar advantage of a complete reversal of motion by the movement of a pin through less than a semicircle was left to be achieved by Miehle. For that he was probably entitled to a patent, but it follows that his patent is not infringed by any construction which, retaining the old semicircular slot, does not admit of the shortened movement which characterizes his invention.

The proof is clear that in the defendant’s form of construction the reversing pinion, secured on the face of the driving pinion, and the semicircular racks at the end of the bed, may be omitted without affecting the operation of the device, and it is insisted, not without support in the evidence, that they were introduced solely for the purpose of disguising an intended infringement; but, on the construction of the patent which we are constrained to adopt, infringement is not established, because, conceding that the defendant’s device contains a wrist pin on its pinion and a slot in its rack frame, in subslantially the same relation to each other as the corresponding pails of Miehle’s construction, yet the slot of the defendant, like litóse in the earlier devices, is semicircular, and is incapable of effecting the reversal of movement in the manner characteristic of the tit i« hie invention.

This conclusion is applicable to the claims of the other pa tent in suit, and makes it unnecessary to consider whether they were subject to the narrow construction given them by the court below. The decree in respect to the first, second, and fourth claims of patent No. 1122,809 is affirmed; in respect to the first claim of patent No. 317,663 it is reversed, with direction to dismiss the bill.