AMERICAN BRAKE SHOE & FOUNDRY CO. v. RAILWAY MATERIALS CO. et al., 152 F. 700

BAKER, Circuit Judge (after stating the facts). Excepting the Pollock patent, which is rather doubtful as an anticipation, it may be taken that the combination of claim 2 was not in any one disclosure of the prior art. The elements, broadly, are the cast-iron body, the hard metal insets, and the wrought-iron strips imbedded in the body back of the insets. The body with insets, the composite shoe, having the advantages referred to by Herron respecting durability, friction, and self-fitting to the car-wheel, was invented and developed by Congdon, Lappin, and others.

The placing of wrought-iron strips within a mold so that they should be imbedded in any iron casting which was desired to be strengthened against fracture and held together after fracture was shown by patents and by oral testimony to be an old and familiar means of accomplishing the aforesaid ends, so old and familiar that a foundry foreman of 27 years' experience testified that it would be employed without hesitation or experiment whenever occasion arose.

That a transverse strain upon any such casting should call upon the tensile strength of the wrought iron and the crush-resisting strength of the cast iron between the wrought-iron strips and the surface where the strain is applied, as dwelt upon by Herron in his specification, is but the physical law of the structure, a law discovered and commonly used long before Herron’s time. The Herron cast shoe is therefore the old Congdon cast shoe re-enforced with the old means of re-enforcing any casting.

That the present patent comes within the exceptions, and that invention was required to extend the well-known strengthening method to the casting of a brake shoe, is argued in this wise: The Congdon composite-face shoe was invented in 1876; use proved that it was weaker than the all-iron shoe; various inventors, McConway in 1878, Curtice in 1880, Sargent in 1887, had recognized the .desirabilit)'- of strengthening the Congdon shoe, and had tried various methods, but not the method of imbedding wrought-iron strips behind the insets; therefore, although the ordinary foundryman would have known how to do what Herron did if the thought had occurred to him, the failure of McConway and others to re-enforce the Congdon casting by this familiar foundry expedient proves that in 1890 the Herron shoe was not an obvious thing, no matter how plain it may seem now in the light of Herron’s disclosure, and that the creative imagination of the inventor had to be brought into play to produce this new use of the wrought-iron strips.

And the teachings of the Barbed Wire Patent, 143 U. S. 275, 12 Sup. Ct. 443, 36 L. Ed. 154, and other cases, are invoked to the effect that he who changes the failure or partial success of others into complete, success is entitled to the award of monopoly. The argument might appeal to us more persuasively on a different record. In this case it appears that Von Waldegg in 1871 had re-enforced the old cast-iron shoe by attaching a wrought-iron strip along the back.

After the Congdon composite-face shoe came into use, McConway strengthened it by a wrought-iron backing plate, and Curtice and Sargent, differing from each other in details, applied wrought-iron strips along the sides of the composite face. These strips were placed in the molds according to the usual foundry practice. Theoretically, the McConway backing plate holds together the cast-iron if that becomes fractured. It lends strength according to its mass.

It cannot be bent in use without bringing into play the tensile strength of the metal in the front part of the plate and the crush-resisting strength of the metal at the back. The Curtice and the Sargent strips act as binders of broken cast iron, and, more prominently than in Her-ron’s shoe, rely on the tensile strength of wrought iron and the crush-resisting strength of cast iron. What new practical result did Herron attain by transferring the wrought-iron strips to the middle of the composite shoe?

His shoe did not capture the market and drive out other re-enforced composite shoes. ' Of appellant’s own output only 3 per cent, is of the Herron type. Nearly all of the great railroad systems of our country are named in the record, and only one adopted the Herron shoe. The superintendent of motive power of that system, in answering the question “Where did you use the Herron shoe?” said, “Where did we use it? We are not using it very extensively at present anywhere.

We have substituted a steel-back shoe for it.” Some smaller roads used the Herron shoe “a short time.” Appellant’s railroad witnesses substantially agree that equally good results are obtained with other rc-enforced shoes. Appellant’s unusual hammer test, the test by pressure being customarily employed, shows that the Herron shoe is stronger than an unre-enforced Congdon shoe. It proves nothing- as to the comparative strengths of the Herron and of other re-enforced composite shoes.

The case standing, then, that Herron is entitled to no credit for the composite cast shoe, or for the method of strengthening castings by imbedding wrought-iron strips, or for the employment of wrought-iron strips to re-enforce composite cast shoes, and that the transference of the strips to the middle of the shoe accomplished no new practical result, the decree is affirmed.