MORTON v. A. H. ANDREWS CO., 229 F. 145

KOHLSAAT, Circuit Judge (after stating the facts as above). On March 26, 1896, Morton’s claims 3 and 4 were rejected by the examiner. These claims were amended and placed in interference with Bemis and Hussey. The issue declared was the subject-matter of Morton’s claims 1, 2, and 3, as defined by the examiner. These were awarded to Bemis. Morton thereupon acquiesced in the award, canceled claims 1, 2, and 3, and renumbered his two remaining claims as 1 and 2, being the claims now in issue.

Bemis was granted the following claims in pursuance of said award: “In a truck for use in lumber drying kilns, two parallel side pieces A, A, the wheels having their axles journaled in openings formed in said side pieces, the washers or separators B interposed at intervals of the length of the truck and serving to hold the side pieces at the required distance apart, the said washers B being hollow and having central openings for the passage of a securing bolt, the thickness of the washer at the point at which the bolt 'passes through it being less than at the periphery of the washer, substantially as described and for the purpose specified. “A washer designed for separating the channel steel strip forming the frame of a lumber kiln truck, of the character described, the said washer consisting of a hollow body portion having apertured ends for the'passage .of a securing bolt, the ends being provided with a thickened portion surrounding the central bolt opening and the length of the washer at the point at which the. bolt passes through it being less than at the outer face of the washer, substantially as described.” By reference to the claims in suit it will be seen that they embody the substance of Bemis’ claim 1, with modifications of the grooved wheels and their adjustments.

Bemis claims “the wheels having their axles journaled in openings formed in said side pieces” in combination, etc., confining his claims in the main to a lumber truck having specific arrangements of its spreaders, while Morton places particular stress upon the arrangement of the wheels in his truck. In a general way Bemis may be read upon Morton. Morton, however, claims to have been the first to invent and reduce to practice a bunk car of the kind in suit as a matter of fact. No reason is perceived for in any way limiting the terms of Bemis’ claim 1.

It covers a bunk car — wheels, spreaders, channel irons, and all that is necessary to make a complete bunk car, lacking only the special features of Morton’s truck arrangement, to wit, nonrotatable axles, washers rotatably mounted on the axle at the ends of the hubs (that is abutting on the ends of the rollers contained in the hub), the lower axles with notch-formed shoulders, etc. As before stated, Morton insists that it was not intended to concede to Bemis the channel irons, spreaders, etc., in combination with the flanged wheel adjustments shown by Morton.

In support of this contention Morton asserts (1) that Bemis consented by his conduct to the award of the issue of the interference between him and Hussey of August 1, 1896, of which he had notice; (2) that he never canceled or was asked to cancel his original claims 4 and 5; (3) that he was in fact the first inventor of his truck notwithstanding the cancellation to Bemis; (4) that all Bemis can claim as against Morton is contained in Morton’s claim 3 as amended; (5) that the matter was granted to him in the patent in suit; (6) that Bemis is not in the prior art as to invention.

It is true Morton’s claims in suit were not canceled or even formally discredited in the interference. That he is not entitled to claim a car constructed from channel irons, spreaders, and flanged wheels seems incontrovertible. What he did get was a bunk car constructed substantially in the manner described in the claims in suit, which must depend for novelty upon the features wherein such claims differ from Bemis. The use of channel irons, which are always available, constitutes a great element of convenience, and strength as well.

The art is a simple one, in which advances of a basic nature cannot be looked for. Every new idea tending to improve the usefulness of the device is entitled to serious consideration, and where, as here, efficiency is enhanced, in so simple a construction as a bunk car — a thing which has been in the broadest glare of man’s simplest needs for a long period of time — no act of invention is too slight to- be within the protection of the statute.

Therefore, taking these matters into consideration, together with the presumptions arising from the grant of the patent, we hold the patent to be valid, but entitled to but a narrow range of equivalents. Appellee’s device is shown as Complainant’s Exhibit No. 5 and is termed “defendant’s truck, style 2.” From the evidence it appears to be almost identical with the Morton bunk car in appearance. It has the right and left channel beams related to each other, as shown in the patent. The spreaders are double, instead of in a single piece.

They serve the same purpose in substantially the same way; their outer rims bear against the inner faces of the beams as in the patent. The spreaders are provided with longitudinal central bolts, which clamp or pinch as in Morton; the rims, however, being skeletonized somewhat. It has Morton’s axle openings in the beams. It has the notched axle ends for locking and lowering the axles. The axles are rigidly clamped against endwise displacement or rotation. There are anti-friction rollers, rotatable wheels, loose washers on the axles bearing against the ends of the hubs and of the rollers.

The adjustment of the wheels is practically the same. Without invoking any material degree of the doctrine of equivalents, it appropriates the subject-matter of both-of the claims in suit. From the statement of facts herein, it is evident that appellee’s claim to a shop right or license to manufacture the device of the claims of the patent in suit is without merit. It obtained no such right under its purchase of the assets of A. H. Andrews & Co. The rights of Andrews & Co., if any, in the patent, were not superior to those of a naked license, and were therefore not assignable. Hapgood v. Hewitt, 119 U.

S. 226, 234, 7 Sup. Ct. 193, 30 L. Ed. 369. Appellant was entitled to the relief above indicated, and the dismissal of the bill was error. The decree of the District Court is reversed, with direction to proceed further in accordance herewith.