INDIANA NOVELTY MFG. CO. v. CROCKER CHAIR CO., 103 F. 496

GROSSCUP, Circuit Judge, after the foregoing statement of facts, delivered the opinion of the court, as follows: While mere results are not ordinarily patentable, many constructions, and many processes — -simple and obvious enough when looked at after the occurrence — have been held to be patentable inventions, not so much because the patentee exerted inventive thought in his immediate work of construction, as because the step taken lay toward the creation of some new aid to the convenience of mankind — some distinct addition to the equipment of civilized life.

Such, for illustration, was Glidden’s barbed wire fence, and the Goodyear hard rubber, or Vulcanite. The merit, attributed to this class of invention, lies in the end reached, rather than in the means employed. In determining the validity of patents of this character the courts have been liberal in their inclination to overlook the obviousness of the means devised, in their purpose to reward, if possible, the mind that has added something new to the sum of valuable things. The patent under consideration does not fall within this class.

Marble has not introduced into the world a new article, or a new means of making an old article. He did not conceive the wooden bicycle rim, or the desirability of its having a strong, close joint. The rim was already in existence, and the necessity for such a joint was already obvious; and, in the allied arts, the precise joint, in all features of mechanical construction, was already at hand. The cardinal purpose of joints, in whatever use employed, has always been to resist strain.

The principal strains upon the wooden bicycle rim may be stated as follows: The vertical strain arising from the load upon the wheel; strains not necessarily vertical, but in the plane of the wheel, caused by hard, abrupt contact with objects in its path; torsional strains due to the sudden turning of the wheel to maintain equilibrium; and torsional strains, frequently wrenching in - character, caused by the wheel falling into uneven places, such as holes or ruts.

It is, of course, impossible to preconceive every character of strain to which, the rim is exposed; they run in form, both simple and compound, from the straight, steady, vertical strain upon an upright wheel, to the sharp, sudden, transverse strains of a falling wheel, or a wheel caught in a rut. They comprehend, in variety, perhaps, and in intensity, a larger number than any joint in the prior art was expected to resist; and in that respect alone the problem presented difficulty.

This difficulty was sought to be overcome — as many such are— not by the invention of something new,’ but by experimentation in the adaptability of joints already well known. The selection of the joint described in the patent under consideration was the result of tests made of the joints of the prior art. Marble searched the old art for the joint best fitted to meet the required conditions. The lap-joint was discarded because its ends, being nonabutting, were liable, under tension or sudden strain, especially when moistened from mud holes or wet grass, to loosen and slip toward each other.

It was found that the coherence of the glued surfaces of lap-joints, unaided by the shouldering of end against end, was inadequate to the strains imposed.

The joint described in the patent was chosen, chiefly because the ends of the fingers abutting squarely against the ends of the corresponding groove brought to the joint the compactness and strength of shouldering; because the longitudinal fingers inserted into these grooves knit the joint more closely together against torsional strain; and because, perhaps, the glued surfaces, being in the plane of the wheel, exerted against vertical strain a greater coherency than if 'they had been transverse to the plane of the wheel.

But the last consideration is not mentioned in the patent, and would be as inefficient against torsional strains, except for the reinforcement of the timber strength of the fingers, as were the Harrington glued surfaces against vertical strains. The joint, as a whole, as the patent shows, and the nature of the problem required, was chosen, not for any one reason, but for many reasons, among them those already pointed out. . It has already been said that the joint chosen for this new use was itself old. Indisputably, in its precise mechanical construction, it has been in constant use in the allied arts.

Some illustrations have been called to our attention. We have incorporated into the statement of facts but two — the Davis Chair and the Archery Bow — not because they stand alone in the art of joinery, but because they are examples of mány uses of the same general character.

The strains imposed upon Hie joint of the Davis Chair are, of course, different in degree, and in variety, from those upon the rim of a bicycle wheel; but it is apparent that some of them tax the capacity of the glued surfaces to bold together; and that the coherency of these glued surfaces is enhanced by the fact that the strain applied is in the direction of the plane, of the joint. It makes no difference that, ordinarily, the strain of the Davis joint falls upon the shouldering of the inner ends of the interlocking fingers against the ends of the corresponding grooves.

The fact remains that, in the use of the chair, there are strains that tax the coherency of the glued surfaces. The purpose of the chair joint is to meet these strains, though occasional only, as well as those of a more common character. The strain upon an archery how is in the direct plane of the surface of the joint. It differs from like strains upon the rim of a bicycle wheel only in the fact that in the how the strain is a more cousiant one, — not the result of a sharp, abrupt stroke, — and that the strength of the joint is re-enforced by its wrappings.

But here, as iu the bicycle rim, the strain is borne by the capacif.y of the glued surfaces to hold together.

But counsel for appellant insist that the transference of this old joint into the uses of the bicycle rim is patentable invention, not because the joint is in any part new; nor because, in its later use, it performs a function different from that of its prior uses; but solely because, to use the language of the brief: “Marble was the first to discover the highly important and valuable fact that a glued joint between two pieces of wood is many times stronger against breaking strains applied in the plane of the joint than it is against breaking-strains applied at right angles to the plane of the joint.” We are not convinced that Marble was the first to understand this fact in the art of joinery.

It is one, indeed, that seems obvious to any mind giving it a little thought. It was, it is true, not phrased in so many words by the inventer of the Davis patent, or the designer of the archery bow, or the hundred others who have put together for similar purposes similar joints; nor were all the other principles of physics entering into the strength of such joints specially pointed out. Upon what reasoning may we say that the designers of these prior joints, because they omitted its mention, must have been in ignorance of so obvious a principle?

Would not such reasoning attribute to men, who have worked and thought in the art of joinery for centuries, an obliviousness that is almost incomprehensible? But if omission of specific mention of this so-called principle of physics is proof that the thought was not present with the prior joiners, upon what reasoning shall we accredit its presence to Marble, who, through more than the two hundred lines of his patent, makes no mention of it, either as a discovery, or as a fact.

Pains are taken by Mm to point out that the joint for which he asks a patent is strong and efficient; is simple and cheap of construction; that the meeting ends of the strips shoulder, end to end, so that the arch of the rim is in fact as strong at the joint as elsewhere; 'that the tongued and grooved meeting ends of the rim, extending longitudinally and abutting one against the other, make a strong, firm, and durable rim; and that the joint thus formed is perfectly water tight.

These are all advantages that Marble thought it worth while to specially mention, and some of them, such as the square shouldering of the fingers, end to end, were reiterated; but nowhere is there an allusion to a discovery that a glued joint between two pieces of wood is many times stronger against breaking strains applied in the plane of the joint than it is against breaking strains applied at right angles to the plane of the joint.

If failure to mention this principle of physics by the prior joiners is proof that they were in ignorance of its existence, we can see no reason why a like omission in the Letters Patent under consideration should not be regarded as proof of a like ignorance upon the part of the patentee. The logic applied by counsel to the silence of the prior art results, when applied to the Marble patent, in the complete undoing of the claimed discovery.

We are, on the whole, content to hold that there is no sufficient evidence, either in the patent, or in the record before us, upon which to predicate a finding that this so-called principle of physics relating to the strength of glued surfaces is an original discovery of Marble. Laying aside this claim, then, as untenable, the question recurs, Does the transference of this joint from the older uses into this later use embody patentable invention?

In both the earlier uses and the later the joint performs the same function; in both it is intended to resist strains of many kinds, from many directions, and of many degrees of intensity; in both the resistance is accomplished, partly by the ends of the fingers, and their corresponding recesses shouldering squarely together; partly by the strength that a close knitting of the timber accomplishes; and partly by the glueing of the surfaces in the plane of the joint.

The joint, as a whole, is the old joint, put, perhaps, in its later use, to the test of severe strains; but bringing to these tests no element of resistance not utilized in the older uses. Such a joint is, in no sense, and to no degree, a new mechanical means unless it can be said also that a beam made to resist one hundred pounds of pressure is different from a beam made to resist one thousand, in cases where both, except in dimension, are mechanically, the same. The decree of the Circuit Court must be affirmed.