ANDERSON FOUNDRY & MACHINE WORKS v. POTTS et al., 108 F. 379

WOODS, Circuit Judge, after making the foregoing statement, delivered the opinion of the court. The decision of the supreme court in Potts & Co. v. Creager is not technically determinative of this case, because the parties are different, and because the claims in issue now and then are not the same. Only the sixth claim of the patent was adjudged valid in that case. The third, only, is now in question. So far as found applicable, the opinion of the Supreme Court will, of course, be followed.

The claims of the patent have all been set out in the statement of the case because of their bearing upon the construction of the one in suit. Each, as will be seen, differs in some important particular from each of the others. Tn tlui first tlie special feature of the combination is the swinging plate. No mention is made of the scraping1 bars, and the revolving' cylinder therefore may be plain or smooth.

The second embraces all that is shown in the specification and drawings, except that nothing is said of the “central cylindrical portion"’ of ihe swinging plate, and nothing of the scraping bars being longitudinal or adjustable.

The third, now in suit, includes a revolving cylinder, having sciaping bars and an inclined plate, both mounted in a frame, and forming opposite sides of a trough for the reception of clay; but the plate is not characterized as swinging; no mention is made of means for swinging it, or of its having a central cylindrical portion; and nothing is said of the scraping bars being longitudinal or adjustable, in the fourth, as in the first, ihe cylinder may be without scraping liars, but the plate, in conformity to the specification, must be swinging, and must have a central cylindrical portion, an upper straight portion, and a lower curved portion, tn the fifth, again, the revolving cylinder may be without bars, but the swinging piale and the means of: swinging are included.

In the sixth the elements of the combination are the cylinder having a series of longitudinal grooves and (he scraping bars adjustably secured in the grooves. In effect, the last claim is simply for the cylinder with scraping bars adjust-ably secured in longitudinal grooves when found “in a clay disinte-grator.'’ What: the other elements or features of the disintegrator should be is manifestly immaterial.

The supreme court said of it: “The only feature of the first patent material to he considered is the cylinder described in the sixth claim as a. cylinder having a series of longitudinal grooves, of the scraping bars, c, adjustably secured in said grooves, for the purpose specified.” That could not have been said if any other than the sixth claim of the patent had been in issue. Tn Wostinghouse v. Brake Co., 170 U. S. 537, 558, 18 Sup. Ct. 707, 717, 12 L.

Ed. 1136, 1144, referring to the words "‘substantially as set forth," the supreme court said, “These words have been uniformly held by us to import into the claim (lie particulars of the specification;” but this, as we conceive, does not justify the contention of the counsel for (he appellee that, (lie shredding cylinder being claimed as a part of a clay disintegrator, “the specification and drawing should be referred to to determine what elements were required to constitute such a machine.” The very fact that the other elements mentioned in (he specification, while expressly embraced in (he other claims, were not mentioned in the sixth claim, demonstrates an intention to cover by that claim any and all forms of disintegrators in the construction of which that cylinder should be used.

Two rollers in combination, it was well known, liad been used before for I lie purpose of grinding clay, as shown in the patent of 1872 to Alexander.

In order, therefore, to protect whatever of invention there was in the cylinder with adjustable longitudinal scraping bars, a claim which should cover it in a disintegrator of any construction, with or without a plaie or swinging plate, was clearly requisite; and to import a plate into the sixth claim by Inference from the specification and drawings would be to deprive the claim, upon the face of the patent, of the scope of wbicb the Supreme Court declared it to be possessed. The true rule seems to be, as stated- in McCarty v. Railroad Co., 160 U. S. 110, 116, 16 Sup. Ct. 240, 242, 40 L.

Ed. 358, 361, that, while • reference may be made to the specification and drawings of a patent -'‘with a view of showing the connection in which a device is used, and proving that it is an operative device,” it is not permissible “to read into a claim an element which is not present for the purpose of making out a case of novelty or infringement.” This is not inconsistent with the expression quoted from the Westinghouse Case, which means only that, when it is necessary to look beyond a claim for the “particulars” of an element embraced in it, which, for example, may be designated only by a letter of the alphabet, the description given in the specification, so far as necessary to support the claim, may be read into it.

Clearly, however, it is not allowable in that way to give identity to claims which in terms are intelligibly different. Claim three in terms includes an “inclined plate,” but not a swinging plate, nor the means for swinging, nor the central cylindrical portion, and only in the absence of these features, one or all, is it distinguishable from the first, second, fourth, and fifth claims respectively.

It is, therefore, simply a claim for the combination in a clay disintegrator (necessarily having a supporting frame) of a revolving cylinder having scraping bars attached, and an inclined plate, so mounted as to form opposite sides of a trough for the reception of clay. In view of the prior art it is difficult to perceive invention in this construction. If it be there, it is because of the scraping bars upon the cylinder.

But these, it is to be observed, are not required to be of ahy particular form, and, unless the description of the specification is to be read into the claim, need not be adjustable, and, instead of being located in longitudinal grooves, may be spiral, as in the English patent to Cooke and others.

If. they' are to be according to the specification, the novelty and patentability of the combination would be established by the opinion of the Supreme Court, if the evidence before us were the same in substance as that in the record before that court; but upon the claim as it reads that opinion seems to have little or no bearing. It is insisted, too, that in important réspects the evidence now adduced is different.

Particular stress is laid upon the patent to Newell, No. 203,364, the English patent, and the proof adduced to show that they are operative and successful machines, doing what is claimed for the Potts device.

The Newell patent was not before the Supreme' Court, and the proof here seems to show that, as claimed for it, it delivers the clay, not in compact sheets, but in a “disintegrated pulpy condition, which readily takes water, and renders further tempering an easy matter.” The specification says of the device that, “instead of making the teeth in the periphery of a series of interlocking ridges or angular rings on the cylindrical surfaces of the rollers, the present invention consists in making shallow teeth in angular sides of the rings, of sufficient depth to effect a hold on the material to be ground, without allowing any of it to pass unground.” The structure of the Newell device is so far different from that of the Potts patent that it could hardly be deemed to be ah anticipation, but it does seem to establish that the Potts machine was not the first “to disintegrate and pulverize,” as distinguished from crushing, the clay.

The English patent and the conflicting testimony of experts concerning it were in the case of Potts & Co. v. Creager, and presumably were considered, but no direct mention of the patent is to be found in the opinion.

The testimony in this case shows it to be a practical device, and that the ribbed roll, which the appellant commenced in August, 1899, to manufacture and use instead of the cylinder with longitudinal bars, is preferable, because it runs without the jar caused by the impact of the straight bars, and delivers the clay in as good or better condition; the centrifugal force produced by the rapid revolution of the roll preventing the spaces between the spiral ribs from being filled up so as to make, as the experts for the appellee declared probable or inevitable, an evenly surfaced cylinder.

If that testimony be accepted as true, — and it does not seem to be controverted, — it is difficult to see how patentable novelty can be conceded to the Potts cylinder and bars. The difference is only in the substitution of longitudinal and adjustable for spiral scraping bars, and in the third claim that difference seems to be eliminated. To say the least, the ribbed roll made in conformity to the English patent cannot be regarded as an infringing equivalent of the revolving cylinder with adjustable scraping bars fixed in longitud teal grooves upon its periphery.

In view of the prior art, and, indeed, upon the face of the patent, it seems entirely probable that the swinging plate was supposed to be the principal feature of the invention, and that the adjustable bars on the cylinder must have beeu adopted only as substitutes for the bars, spiral or straight, and for the spikes, knives, grooves, ridges, and teeth already in well-known use in machines designed for the treatment of day.

While the second claim embraces approximately all that is in the specification, and the first, fourth, and fifth each omit one or more features either of the plate or cylinder, the third and sixth are each made as broad as possible by the introduction of the fewest possible elements consistent with a differentiation of one from the oilier; the sixth being confined to a cylinder (clearly intended to revolve) equipped with adjustable longitudinal bars, and the third to a revolving cylinder with scraping bars on its periphery, and an inclined plate, of the simplest form, so mounted with the cylinder as to form between them a trough for the reception of clay.

Whether the third claim is valid need not he decided. If so, it must be restricted to narrow lines, which make it impossible to say that the sub-stihilion of a plain revolving cylinder for the inclined plate is an infringement. It is true that two parallel and confronting cylinders nee essarily have between them a space somewhat resembling a trough; but there was nothing new in that, and to so place cylinders for the purpose of making a trough between them could not possibly have been made the subject of a patent monopoly.

Besides, a trough for the reception of clay intended to he passed between cylinders was never attempted to he formed in that way, and that it could be done with practical success it is impossible to believe. There must be, and in the Potts machine, when made with two cylinders, there always has been, a hopper, from which the clay descends to the line, or nearly to the line, of passage between the cylinders.

There was propriety in saying that the cylinder and inclined plate of the third claim formed the opposite sides of a trough, but to call the space between opposing cylinders a trough is fanciful and impractical. To put into a dis-integrator an inclined plate, and especially a swinging plate, was an advance — at least an attempt at advance — upon the prior art, but to change the swinging plate to an inclined plate, and then to reject that, and put in its place a revolving cylinder, was simply a return pro tanto to the old art.

If, as contended, the inclined plate of the claim is to be regarded as the swinging plate of the specification having a cylindrical central portion, it becomes only the more evident that, instead of appropriating the invention, the appellant, by using-two opposing cylinders, simply returned to the prior art. The cylinder, substituted for the plate, does not constitute one side of a trough for the reception of clay; and, in so far as it performs the office of the cylindrical central portion of the plate, besides doing it better, it does it by a different method.

The decree below is reversed, with instruction to dismiss the bill.