ADAMS v. BOSTON STORE, 237 F. 371

ALSCHULER, Circuit Judge (after stating the facts as above). If the claims in issue are valid, there has unquestionably been infringement, as charged, in appellee’s sale of the beds. In thus permanently attaching the mold plate, it does not actually form part of the joint, but when the casting imbeds the attaching means the mold plate remains as a matter of necessity rather than of choice. Its contribution to the strength of the joint is negligible.

George Adams testified: “The only purpose of the threaded screw or wire of my patented construction is to hold the mold plate in place until the casting is made” (page 37). And J. M. Adams testified that, where a large post is used, he thinks it preferable to dispense with any mold plate, as the large post gives greater opportunity to use a mandrel, which is a removable mold, and that when using his first patent the cost of the mold plate is saved.

Appellant’s counsel say: “We call attention to the fact that the device of the patent in suit is a joint for metal beds, and not means for securing a mold plate in position in the abstract.” But the cause has been tried and decided upon the theory that the question involved is whether or not George Adams was the first and lawful inventor of the means shown in his patent for holding in place the mold plate for forming the internal abutment for such a frenching or joint, by means of a screw extending through it and impinging on the opposite wall of the post or tubular member; and we will consider and determine the cause on the same theory.

The defense is anticipation and prior use by the Simmons Company.

Evidence was adduced to show that in March, 1906, the Simmons Company made for the Michael Reese Hospital of Chicago several metal beds, part of one of which was brought into court, which showed an inner cast iron mold plate or cup, having two cavities, each opposite a corresponding hole in the post, and a headed screw through the post passing into the mold plate between its two cavities, drawing and holding it in engagement with the post, and a trenching cast upon the post, the liquid metal passing through the two holes and filling the cavities of this mold plate, forming two internal abutments within the post integral with the outer casting.

Other Simmons beds were shown, claimed to have been made in 1907, showing single cavity mold plates held by a screw through the post on the castiñg side into the mold plate. They showed still other beds, which it is claimed they made in the spring of 1908, having joints formed with single cavity cups, with threaded wire extending through them, impinging on the opposite wall of the post, thus holding the mold cups in position for casting in same manner as in the patent in suit.

Witness Bayer, long superintendent of the Simmons brass bed department, testified that in the spring of 1908 he devised the mold plate fastening so used in the last-mentioned beds, and that his company has since then used them quite extensively. Thereupon George and J. M. Adams again testified, carrying back George’s invention to January, 1908, which is earlier than the last stated Simmons use.

The making and sale in March, 1906, of the Michael Reese beds having the double cavity cast mold cups held by a screw as stated, is well established by the evidence.' The use by Simmons in 1907 of the single cavity cup held by a screw through the same side of the post is fairly well shown. But the Simmons use of the cup secured in the manner of the patent, in the spring of 1908, is involved in considerable doubt. The evidence which carries the Adams invention back to January, 1908, appears to be at least as convincing as that which shows this last stated use by Simmons in the spring of 1908.

Much appears in evidence and in argument on the subject of the superiority and advantage of the single over the double cavity mold; but the comparison is made between the unnecessarily heavy, large, and crude cast iron structure of the early Simmons double cavity cup with Seng’s later single cup, neatly formed from thin sheet steel. But the superiority of the latter represents only that natural growth, development, and perfection which involves mechanical skill rather than invention.

If, instead of the large heavy casting of the mold plate for the 1906 bed, there had been employed a double cavity plate pressed from sheet steel, and not larger than necessary for casting a sufficient abutment, we would have the Simmons 1906 mold plate; and the employment thereafter of a plate having a single cavity would not patentably distinguish from the other. Indeed, the alleged novelty of the patent is not to be found in the employment of a single cavity mold cup, as distinguished froip a plurality of' cavities, nor in fact in employing a mold plate at all.

In order to cast within the post an abutment which shall occupy less than the entire diameter of the post, some form of restricting or limiting mold within the post is necessary to prevent the liquid metal from filling the post. The single abutment of the first J. M. Adams patent required and contemplated a single cavity mold in which to cast it. The George Adams application refers to the structure of the J. M. Adams earlier 1909 application, in which there is shown a single cavity mold cup as an essential part of that structure.

And so with respect to the novelty of the patent claimed for the screw passing through the mold plate and impinging against the opposite side of the post, thus holding the plate. George Adams cannot claim generally a mold plate attached to the post and becoming in such sense a part of the abutment through the holding means being imbedded in the frenching or joint when it is cast. The prior J. M. Adams 1909 application claims generally the disclosure of a mold cup attached to the post, and his first three claims allowed are for means generally for securing the mold plate in position within the post.

Other claims show this fastening to be metal clips so bent as to hold the plate in position, so that when the casting is made the clips will be imbedded therein.. But Simmons showed in 1906 the use of a" screw passing through the post and into a screw hole in the plate between the cavities, for drawing and holding the plate in place, and in 1907 showed a similar screw passing through a single cavity mold and likewise drawing and holding it in place.

The lengthening of the screw and passing it through the mold plate until it impinges against the opposite side of the post, thus pushing and holding the mold plate, instead of drawing it by a screw whose head engages the post on the side on which the frenching or joint is to be made, is in our judgment accomplishing the same result in substantially the same way. Some slight advantage is pointed out in the employment of the former over the latter method, but this would not alter the conclusion of substantial identity in function and means.

We fail to discover the quality of invention in the later as compared with the earlier use of the screw for holding the mold plate to the post. Neither do we find novelty in the idea of extending the screw forward from the metal plate, so that, when the casting is made, the screw, being imbedded therein, may afford an element of additional strength. The imbedding within a casting of a piece of metal, such as a screw or wire, is not novel in the art, but is found in structures of various kinds. Besides, in the same J. M.

Adams prior 1909 application there is shown a similar strengthening screw to be likewise imbedded in the casting, and for a similar purpose as claimed in the patent in issue. We are of opinion that the District Court did not err in dismissing the bill for want of equity, and its decree is accordingly affirmed.