LAFFERTY MFG. CO. et al. v. ACME RY. SIGNAL & MFG. CO., 138 F. 729

GROSSCUP, Circuit Judge (after stating the facts). Bevington’s device is a shell or case having a base part of metal, circular in form, over which is laid, almost, but not quite, to its circumferential edge or rim, paper or some analogous fabric, light, soft and flexible.

Over this is placed a dome of paper, preferably water proofed; whose edges join the edge of the paper lying over the metal base, the whole being secured together, after the explosive is inserted, by means of an annular flange formed of the outer rim of the metal base turned over upon the outer edge or rim of the paper constituting the cover and the base layer. The torpedo thus formed is held to the rail by a metal strap, the ends of which reach around the edges of the rail. Railroad torpedoes of this general description admittedly are old.

Of the elements of Bevington’s torpedo, the holding strap, the explosive compound, the metal base, and the paper lying over the metal base, are old. [Heckman and Detwiler patents]. The dome shaped cap is old. Clamping flanges are old [Detwiler]. The new thing done by Bevington in the matter of the cap, was to substitute paper for tin or other metal. So that, whatever merit Bevington’s patent has, is to be found in his substitution of paper for tin or other metal, as material for the dome shaped cap. A mere substitution of one material for another, does not constitute invention. Florsheim v. Schilling, 137 U.

S. 64, 11 Sup. Ct. 20, 34 L. Ed. 574; Gardner v. Herz, 118 U. S. 180, 6 Sup. Ct. 1027, 30 L. Ed. 158; Celluloid Mfg. Co. v. Tower (C. C.) 26 Fed. 451. The mere fact that the cost of the

article to the public is thereby cheapened does not give to the substitution of one material for another the quality of patentable invention. Two claims are made, however, to take the substitution of one material for another here shown out of the general rule. The first is, that danger in the manufacture and use of the torpedo is thereby lessened; and the second, that the use of the paper cap, by putting paper against paper in the crimping process that makes the joint, results in the making of a better joint. The first of these claims is the one insisted upon most strongly by counsel for appellee.

But to our minds, it is a claim not proven. AVe are unable to see, in the absence of proof of actual injury, that the one form of torpedo is more dangerous than the other. In the use of each, danger seems to be at a minimum. And the proof of actual injury offered is wholly inconclusive and unsatisfactory. The second claim is the one that seems to have determined the judgment of the Circuit Court. It does not appear to have been, consciously, in the mind of the inventor, for no advantage in that respect is pointed out in the letters patent.

The truth is, that as an element of better joinery, the feature of paper against paper does not, to any considerable extent, seem to have been carried out in the Bevington patent. In that patent, in the crimping for a joint, the paper is not turned up. The contact of paper against paper is only over a little horizontal portion not affected by the crimping. It was not until appellants’ torpedo came into the market that the paper itself was turned up in the crimping process, so as to bring paper against paper throughout the joint made.

AVe do not feel at liberty, under the case here disclosed, tp hold, that a joint that thus finally and adequately utilizes the advantage of crimping paper on paper, is anticipated by a previous joint in which the contact was but partial and inadequate, and, so far as we can see, without any conscious design. The decree of the Circuit Court will be Reversed, and the cause remanded with instructions to the Circuit Court to dismiss the bill for want of equity.