US SUPREME COURT DECISIONS

The machine patented to Clayton Potts and Albert Potts by letters patent No. 322,393, issued July 14, 1885, for a new and useful improvement in clay disintegrators, and the machine patented to them by letters patent No. 368,898, issued August 23, 1887, for an improvement upon the prior patent, contained new and useful inventions, and the letters patent therefor are valid, and are infringed by the machines manufactured and sold by the defendants in error.

The cases treating of letters patent for new applications of old devices considered, and as a result of the authorities, it is held that if the new use be so nearly analogous to the former one that the applicability of the device to its new use would occur to a person of ordinary mechanical skill, it is only a case of double use; but if the relations between them be remote, and especially if the use of the old device produce a new result, it may involve an exercise of the inventive faculty -- much depending upon the nature of the changes required to adapt the device to its new use.

This was a bill in equity by C. & A. Potts & Co., an Indiana corporation, against the firm of Jonathan Creager's Sons of Cincinnati, for the infringement of patent No. 322,393, issued July 14, 1885, to Clayton Potts and Albert Potts, for a clay disintegrator, and also of patent No. 368,898, issued August 23, 1887, to the same inventors, for an improvement upon the prior patent. A third patent to George Potts, No. 384,278, was originally included in the bill, but, by stipulation between the parties, all reference to this patent was cancelled, and the bill treated as if formally amended by alleging infringement of the first two patents only.

In the first patent, No. 322,393, the patentees stated the object of their invention to be

"to disintegrate the clay by means of a revolving cylinder, which shall remove successive portions from a mass of clay which is automatically pressed against the cylinder."

This was accomplished by a cylinder containing a series of steel bars, fitted into longitudinal grooves in the periphery of chanrobles.com-red

Page 155 U. S. 598

the cylinder, where they were secured by flush screws at each end, by means of which they were adjusted, so as to present a sharp corner, projecting above the surface of the cylinder. Opposite the cylinder was a strong vibratory plate mounted on a shaft, so as to swing in its bearings, by the aid of an eccentric wheel. The opposed sides of the cylinder and the upper and central portions of the plate formed a trough, one side of which approached and receded from the other at intervals, and which had at the bottom a narrow opening of constant width. In the operation of the machine, the plate was swung back so as to leave as large an opening as possible, and the moist untempered clay was thrown into the trough between the cylinder and the upper portion of the plate. By a rapid revolution of the cylinder, successive portions of the clay were removed from the mass, carried through the narrow opening by means of the scraping bars, and at the same time the upper portion of the plate moved slowly towards the cylinder, thus keeping the mass of clay in close contact with the cylinder, as successive portions were removed.

The only claim alleged to be infringed was the sixth, which reads as follows:

"6. In a clay disintegrator, the combination with cylinder, A, having a series of longitudinal grooves, of the scraping bar, c, and adjustably secured in said grooves for the purpose specified."

In the second patent, No. 368,898, which was for an improvement upon the first, there was substituted in lieu of the swinging plate, shown by the first patent, as cooperating with the revolving cylinder, a plain cylinder set opposite the cutting cylinder, and revolving therewith in close proximity, so that the raw clay might be fed, shredded, and discharged in an even and continuous manner, in readiness to be taken directly to the pug or other mill. The patentees further stated in their specification:

"The machine shown in our letters patent No. 322,393 was provided with a swinging or vibrating plate, to coact with the cutting cylinder in effecting the shredding of the clay which was fed between them. In such machine, the abutting surface

Page 155 U. S. 599

of the vibrating plate furnished a rest or bearing for the clay in presenting the same to the action of the cutter knives. This abutting surface was limited in extent and unchanging in position, so that it became rapidly worn. By substituting the revolving roll for the vibrating plate, this objection is greatly lessened. The roll constantly presents new surfaces to the cutters, so that the wear is even and regular throughout its circuit. If any inequalities exist in the roll at the outset, these become rapidly reduced, so that, by use, the cylinder wears more and more true, and acts thus with constantly better effect. Aside from cheapness in construction, the revolving roller or cylinder machine will work wet or sticky clays with perhaps one-third of the power necessary in treating such clays in the vibratory plate machine. Such plate tends constantly to crowd or squeeze the passing clays, whereas the revolving roll yields continuously, so that clogging is less apt to occur at the same time that the clay is finely and evenly shredded, the cutter cylinder moving, by preference, more rapidly than the companion feed roll in order to accomplish this effect."

"Prior to our invention, it has been very common to employ in clay mills, sugar mills, and the like a set of rolls between which the material passed as the rolls were revolved, but in such machines the operation of the rolls was merely to break up the clogs of clay, and squeeze or crush the same, whereas by our invention, the clay is positively cut into fine shreds or clippings in much better condition to be tempered and molded than by the old forms of disintegrating machines."

The following drawing illustrates the main features of the machine, so far as the same are material to the present case:

image:a

chanrobles.com-red

Page 155 U. S. 600

Defendants were charged with infringing the first and second claims of this patent, which read as follows:

"1, In the supporting frame of a clay disintegrator, a rotating cylinder longitudinally grooved, and carrying cutting bars in and projecting beyond the grooves, in combination with a smooth-faced rotating cylinder adapted to carry and hold the clay against the cylinder having the cutting bars thereon, which latter cut or shred the clay, and pass the same between the cylinders, substantially as set forth."

"2. In clay disintegrators, the combination with the main supporting frame and with a rotating cylinder fixed therein, and having longitudinal cutting bars projecting beyond the face thereof, of a positively revolving companion cylinder fixed opposite thereto in said frame, and having a smooth face or surface, with which said cutting bars directly cooperate to shred or clip the clay as the same is fed by and passed between said cylinders, substantially as described."

The answer denied any patentable novelty in these patents in view of the prior art as shown by numerous earlier patents, to which reference was made, and also denied infringement, alleging that defendants were manufacturing clay pulverizers, under authority of patents granted to Jonathan and Harry M. Creager in 1888.

The case came on for hearing upon pleadings and proofs, and the court directed a decree dismissing the bill. 44 F.6d 0. From this decree, plaintiff appealed to this Court.