undergo pressure must be strong enough to withstand the degree of pressure to be applied, and that this would be obvious to any person of ordinary skill who was seeking to apply to crown caps the same kind of protective covering used on caps of other descriptions. The history of the experiments and failures of others is much relied upon to prove invention. It is true that the argument that apparent simplicity in means shows noninvention may be met by the answer that many tried and nobody thought of it; but this avails nothing against prior patents which describe the means and show that, even if there was reinvention at a later time, there was nevertheless no patentable novelty.

As we are of the opinion that the claims in suit are invalid for want of patentable novelty, it is unnecessary to consider the defenses of double patenting and laches.

The decree of the District Court is reversed, and the case is remanded to that court, with instructions to dismiss the bill. The appellant recovers costs in both courts.

HUEBNER-TOLEDO BREWERIES CO. v. MATHEWS GRAVITY

CARRIER CO.

(Circuit Court of Appeals, Sixth Circuit. October 8, 1918.)

1. PATENTS

No. 3125.

~26(1)—INVENTION-ADAPTATION OF OLD DEVICES.

To adapt an old and familiar device to another structure equally old and well known is not to exercise the inventive faculty, but to apply the skill of the mechanic.

A mere carrying forward of the original idea, a change in form, an improvement in degree, without substantial change in either means or result, is not invention.

3. PATENTS~~26(2)—INVENTION-COMBINATION OF OLD ELEMENTS.

The selection and putting together of the most desirable parts of different machines in the same or kindred arts, making a new machine, but in which each part operates in the same way as it operated before, and effects the same result, cannot be invention.

4. PATENTS 36-INVENTION-COMMERCIAL SUCCESS.

Commercial success is never a safe criterion of invention, except in cases of doubtful validity of the patent.

5. PATENTS 328-VALIDITY—GRAVITY CARRIER.

The Mathews & Lister patent, No. 890,917, and the Mathews patent, No. 978,466, each for improvements in gravity carriers, are both void for lack of invention, in view of the prior art.

Appeal from the District Court of the United States, for the Western Division of the Northern District of Ohio; John M. Killits, Judge. Suit in equity by the Mathews Gravity Carrier Company against the Huebner-Toledo Breweries Company. Decree for complainant, and defendant appeals. Reversed.

Russell Wiles, George A. Chritton, and Wm. H. Dyrenforth, all of Chicago, Ill., for appellant.

A. C. Paul, of Minneapolis, Minn., and Wilber Owen, of Toledo, Ohio, for appellee.

For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes

Before WARRINGTON, KNAPPEN, and DENISON, Circuit Judges.

WARRINGTON, Circuit Judge. This suit is based upon alleged infringement of two patents; it is met in the answer, not only by denial, but particularly by allegation that the claims of these grants are "wholly and entirely void, as not involving anything more than ordinary mechanical skill over what is common knowledge in the art," and a great many prior patents are referred to. The patents in suit are (1) No. 890,917, issued June 16, 1908, to Mathews & Lister, assignors to Mathews Gravity Carrier Company, and (2) No. 978,466, issued December 13, 1910, to Mathews, assignor to the same company. That company was a Minnesota corporation, and its rights, so far as this suit is concerned, have passed to the appellee, a Pennsylvania corporation. The patents were each in terms granted for "improvements in gravity carriers," and will be mentioned hereafter, in the order of their dates, as the first patent and the second patent. Claims 2, 4, 5, 6, 7, 8, and 9 of the first, and all the claims of the second, patent are in issue; and both patents, as respects the claims in issue, were held valid and infringed by the court below. The cause was referred for an accounting and damages, and perpetual injunction was issued. By consent the master reported that appellant had purchased from a company named (though not a party to the suit), and had used in its business, "material found by the court in its decree to be an infringement," and stated the amount of appellee's loss of profits thereon. The Breweries Company appeals.

We may as well say at the outset that, if the patents are valid, they are, at least as to some of the claims in issue, infringed. The important feature of the case is found in the issue of validity. This issue in the end is one of fact. It is whether the disclosures of the patents, when compared with the prior art, amount to anything more than the natural developments of the skilled mechanic. The first patent relates, in the language of the specification, "to carriers designed particularly for transporting brick and similar articles of comparatively small dimensions by gravity." Generally speaking, the carrier comprises two parallel side rails, with a series of transverse metal tubular rollers having ball bearings at their ends and having rods extending through their longitudinal centers, and also through the side rails, where they are held by means of lock nuts; the rollers so mounted rotating freely on their respective rods or axles. The carrier is constructed in sections of lengths suitable for removal from one place to another, and the sections are provided with projecting ends adapted to fasten one section to another, and so to form a continuous structure of such length, along such courses, and at such a grade as the convenience of the user may require. Another feature of this patent is that the rollers are provided with flanges or rims at the ends, on which packages of greater width than the length of the rollers may be placed and transported. The specification states: Side guards or other frictional interference with packages moving on the carrier are dispensed with; the packages follow "the line of least resistance" and travel "in the direction of rotation of the

wheels," and may thus be moved from one point to another along the roller surface of the carrier, when maintained at a slight grade. The character and details of the structure will be readily understood by reference to the following drawings which accompany the letters pat

"Fig. 1 is a plan view of a brick carrier embodying our invention. Fig. 2 is a transverse sectional view, one end of a roller being broken away to illustrate the bearing for the same. Fig. 3 is a perspective view showing a portion of a carrier and the bricks thereon." 1

1 Although claim 1 is not in issue, yet the flanged rollers displayed in the drawings will be explained by that claim:

"A gravity carrier comprising side rails, rods connecting said rails at intervals, metal rollers having flanged ends and ways and balls fitting there

It will be observed that the rods with threaded terminals not only pass through the rolls (including the ball-bearing appliances), but also through the side rails, upon the outside of which they are fastened by lock nuts 4. This seems to have rendered it inconvenient to remove a single rod with its accompanying roller, since it required removal of one of the side rails entirely. It was sought to overcome this by the second patent. The chief difference between the two patents is thus stated by counsel for appellee:

"The second patent differs from the first principally in the provision of convenient means for removing a single rod with its accompanying roll without in any way disturbing the adjustment of any other roll. This is accomplished by having the side rails provided with slots or notches in the upper edges, with the rods detachably mounted in such notches, thus making it possible to immediately remove any roll from the carrier without disturbing the other rolls."

The means so provided in the second patent may be seen in Fig. 2 of the drawings accompanying the letters patent. It follows:

4

13

Fig 2. 20 141 18

19

2

"In the drawing, 2 represents the side rails of the carrier, composed preferably of flat steel bars. These bars are provided at intervals in their upper edges with vertical slots or notches 3 adapted to receive rods 4 having threaded ends and provided with lock nuts 5 and 6, the former on the outside of the bars and the latter between them. * * Any roller can be easily removed from the carrier by loosening the lock nuts 5."

We may mention one or two other changes that were made in the de vice of the second patent. One involves the sectional coupling. It is said in the specification of the first patent that the sections are made of any suitable length and "coupled together at their ends"; while in the second patent it is stated that various forms of coupling devices may be provided, but preference is given to "a tongue 19 on the end of

in, cones mounted on said rods and having bearing surfaces, and between which surfaces and said ways said balls are arranged."

And as further explanatory of the elements comprised in the patented device we think it sufficient for present purposes to add a claim that is in issue: "2. A gravity carrier comprising side rails and means connecting them at intervals, and rollers having anti-friction bearings at their ends upon said connecting means and forming a way over which comparatively small articles such as brick may be transported, said rollers being of substantially uniform diameter between their ends and extending above the tops of said rails, substantially as described."

each rail 2 bent outwardly to offset it from the plane of the rail and adapted to fit between a plate 20 and the end of the abutting rail." These parts may be riveted or bolted together. Another change was made through the use of additional braces. Apparently three within each section are disposed at right angles with the side rails and fastened to them, and between these braces are two sets of diagonally crossing braces; the object being to hold the sides of the carrier in "parallel relation with one another." Claims 1 and 4 are copied in the margin further to illustrate the second patent.2

Appellee offered in the court below one section of the Mathews gravity carrier as an exhibit. This exhibit, as we understand, and additional sections of the carrier, were displayed and operated as a unitary structure at the hearing in our court. The exhibit seems to comprise the main features of the two patented devices in suit, except in two or three respects: The rollers have no flanges, but are disposed so that their upper plane is above that of the side rails; thus flanges are rendered unnecessary for transporting "articles of greater length than the width of the carrier"; the flanges were distinct features of the first patent, and of the specification and drawings of the second patent, though they appear to have been given up in the structure exhibited. Further, this exhibit omits lock nuts 4 of the first and 5 and 6 of the second patent, and also the threads upon the end portions of the cross rods passing through the rollers of both patents. The notches of the second patent, it is true, are preserved in the side rails of the exhibit; but instead of lock nuts 5 a metal bar, extending throughout the length of a section and having slots disposed therein so as to engage the ends of the cross rods, is bolted to the outer and upper surface of each side rail. Lock nuts 6 are replaced in function by (a) notches cut into the cross rods near their ends so as to fit into and be held fast by the notches of the side rails, and (b) tubular portions of the ball-bearing devices surrounding the cross rods and extending from the ends of the rollers almost to the side rails; the purpose seems to be to hold the rails in "parallel relation with one another" and also free from the ends of the rollers. This substitution of a slotted metal bar and notched cross rods apparently has the further purpose of facilitating the separate removal of rollers. Whether we have or not rightly. interpreted the objects of these differences between the patents in suit. and the exhibit, the changes serve to characterize methods of progress. which may well be considered in trying under the facts of this case to distinguish between skill and invention. We come now to an inquiry into the state of the art prior to the dates of the patents in suit.

"1. A gravity carrier having side rails composed of flat metal bars having slots or notches in their upper edges, rods detachably mounted in said slots and connecting said rails, and rollers having anti-friction bearings on said rods, substantially as described."

"4. A gravity carrier comprising side rails, diagonally arranged brace bars connecting said rails, cross rods also connecting said rails, the upper edges of said rails being provided with vertical slots or notches and rollers detachably mounted in said notches."