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these circumstances, the new use of old principles does not fall within the rule of a double use. The old use was not intended for nor adapted to the conditions of the new use. It produced, in part only, the results of the new use.
When Van Depoele discarded the elevated wheel and springs of his earlier patent, and broke away from his own towed trolley, and those of Siemens, Finney, Henry, and others, and reversed the underneath trolley of Daft and Edison, and added lateral motion thereto, and went back to the overlooked art of the animal tether, or the limited and impracticable art of railway signals, and, selecting and combining certain elements of these various contrivances, modified and adapted them to a new purpose, and thereby disclosed to the public a practically operative means, such as the whole world of electrical railway inventors had theretofore sought in vain, and which has gone into universal use throughout the country, he made an invention within all the rules applicable to this question. I have been unable, therefore, to adopt the view of counsel for defendant that the art of conducting electricity from a conductor to a translating device on a moving vehicle was sufficient to enable the skilled mechanic to construct the device of said first patent. This well-known art had been already applied in the best forms which Van Depoele and others could devise, before he made his invention. But, when the new problems were presented, it was shown that these devices and the underrunning rails and overhead towed tro). leys were all impracticable, and it then became necessary to aban. don the old forms, and to so reconstruct and combine the earlier devices as to furnish new possibilities of operation, and to produce new, nonanalogous, and unexpected results. The character and extent of these modifications may be further illustrated by a review of the chief advantages resulting therefrom.
The Van Depoele invention provided for the collection of the current from a conductor suspended so high above the ground as to be out of the way of travel across the road. While bridging this distance, it permitted a firm and uniform electrical connection with said conductor. It could be elevated to a great height without the use of a permanent high support on top of the car, and could be depressed to a level with the car. By its universal movement, it was capable, not only of following the ordinary lateral variations in the overhead conductor, but it would automatically maintain contact at sharp curves, and at points where branch switches were used. In this latter respect it is far superior to every other form of device. The substitution of the long arm for other contact devices mounted upon high supports obviated the necessity of permanently and accurately fixing the overhead conductor in position with relation to the track. The upwardly pressed underrunning wheel permits the automatic transfer of the contact device from one branch to another,-a result which was impossible when contact was at the side, and impracticable with an overrunning wheel. The upwardly pressed device further dispenses with the strain upon the conductor of the former overrunning devices; and, the two
being independent of each other, the derailment of one does not damage the other, as was frequently the case with former devices. Finally, a further advantage of the Van Depoele device, shown by diagrams in the brief of counsel for complainant, consists in the capacity of the projecting or trailing swinging arm to follow the necessarily curved line of the conducting wire at street corners, while the car body is necessarily turning at an angle.
I have not thought it necessary to discuss the well-settled principle of invention involved in the adoption of contrivances from another art. This doctrine is fully stated in Potts & Co. v. Creager, 155 U. S. 597, 15 Sup. Ct. 194, and seems alone decisive, in view of the facts presented herein.
In respect of the underlying fundamental object and result of the paper patents for signaling devices, and the Van Depoele device, the transfer was “to a branch of industry but remotely allied to the other, and the effect of such transfer has been to supersede other methods of doing the same work.” Potts & Co. v. Creager, supra. Clearly, this construction required "as acute a perception of the relation between cause and effect," and as forcibly illustrates the "peculiar intuitive genius, which is a characteristic of great inventors, to grasp the idea that a device used in one art may be made available in another, as would be necessary to create the device de novo.”
It is further significant upon the question of invention that prior to Van De Poele's application, in 1887, only 11 patents altogether had been granted for underrunning trolleys; while immediately thereafter the number of such applications was greatly increased, the total number in 1890 reaching 155.
The attempt to break the force of the evidence that Van Depoele planned or constructed the plant at the New Orleans Exhibition has not succeeded. Various witnesses testify to his active connection therewith. That he was present during a period of several days, working on said plant, is proved. Two witnesses swear that they put in said plant, or made changes and improvements in said road, under his instructions. The claims of defendant, based upon cross-examination, are largely argumentative, and are not sufficient to overthrow the positive testimony of the witnesses, or to overcome the presumptions raised by the oath of Van Depoele himself.
In the specification of the patent in suit the patentee says: “The arm F, is hinged and should in most instances be also pivoted to the top of its post f, although a reasonable amount of looseness in the hinged joint will answer the purpose of the pivot and prevent binding or straining at that point due to the swaying of the vehicle."
The defendant strenuously claims that there is no wonderful invention in a lateral motion thus obtained, especially where a nonpivoted arm would quickly wear into infringement in actual use. But other language in the specification, and the drawings, not only show that the patentee contemplates, describes, illustrates, and claims an arm both hinged and pivoted, but also show that what is meant by said expression is that the great length of the arm, permitting it to
"swing laterally through a distance of several feet," may permit such an amount of lateral motion as will be sufficient "to follow deflections or bends in the conductors."
Counsel for defendant further claims that the invention embraced in the patent in suit was previously disclosed in prior patents to Van Depoele, and patented by him, and that, even “if the broadest form of the invention was not patented therein, nevertheless that the form claimed in the patent in suit was so inseparably involved in the patenting of the invention in the forms described and claimed in prior patents that the right to the patent was exhausted upon the issue of the prior patents, and the broad form was waived, and became abandoned to the public." In support of this contention, counsel for defendant chiefly relies upon the Van Depoele patent, No. 424,695, dated April 1, 1890, for "suspended switches and traveling contact for electric railways.” The main invention therein claimed relates to an improvement in the arrangement of contact switches. In this connection the patentee also claims an improved contact device for use in connection with such switches. The patent states that it is a division of the application which forms the basis of the application of the patent in suit, and that the patentee herein only claims certain details of such invention, especially valuable in connection with switching devices, but not otherwise essential to the operation of the contact device. The drawings and much of the description in the two patents are practically identical. The description in No. 424,695, however, states, as one of the subjects of this invention, the following:
"And while the arm, F, is movable laterally with respect to the vehicle, the spring and weight will constantly tend to restore the arm to its normal central position, and to assist in causing the contact arm to partake of the lateral movement of the vehicle.”
The special characteristic of this construction, which it is claimed is the same as that of the patent in suit, is the weighted spring, which is said to exercise a centralizing tendency on the trolley arm. In the patent in suit certain claims were retained inadvertently, it is said, which cover the weighted spring. This, however, is immaterial, as said claims are not in issue herein. Electrical Accumulator Co. y. Brush Electric Co., 2 C. C. A. 682, 52 Fed. 130, 139. In this device it is not the spring which exerts the tension which maintains the continuous contact of the swinging arm with the overhead conductor. The arm would be held with equal firmness by weight without the spring. The elasticity of the spring serves to modify the jerks or strains to which the arm would otherwise be subjected in case of sudden changes of level or position. The spring of patent No. 424,695 is not a tension spring, except in so far as such tension may inci. dentally assist in imparting a centralizing tendency to the arm. The original application, filed March 12, 1887, claimed a spring and tension device, so arranged as to impart upward pressure. The improved device showed a spring and weight so arranged as to permit lateral motion to the arm, and to "constantly tend to restore the arm to its normal central position, and assist it to partake of the lateral movement of the car," to give it a greater range of action, and to
make it more convenient in operation. This patent, for this specific combination, adapted and claimed only for this specific purpose, applied for October 22, 1888, after the original application had been allowed, but before the patent therton was granted, was earlier in the date of issue. The original application was delayed by interference proceedings in the patent office. Whatever may be the rule as to cases where the application for the generic patent was filed subsequent to the application for the specific patent, I do not think the patentee should be deprived of his broad patent where the application for such patent was made first, and was delayed in the patent office through no fault of the inventor. Such a ruling would be a reproach to the law.
This precise question came up before Commissioner Mitchell, and was decided by him November 27, 1889, in Ex parte Edison, 49 0. G. 1691, 1693. The situation is there stated as follows:
"The examiner rejected this application on the ground that the applicant had applied for and taken out specific patents for improvements upon the invention described in such application, it being admitted that the present application was filed before and was pending contemporaneously with the applications forming the bases of the patents which are treated as a bar, and that there had been no abandonment."
Commissioner Mitchell said: "The difficulty seems to be owing to the fact that, at least in some cases, such delays attend the efforts of inventors to patent their primary inventions that when conflicting interests are settled, and the patents are ready to issue, they seem to threaten an extension the term of the exclusive use to be enjoyed by the inventor, under patents of earlier date; and the charge is easily made that the so-called “monopoly' is unlawfully prolonged. For this result the inventor is not responsible. * Especially is this so in view of the fact that, if the inventor attempts to delay his improvement patents to await the action of the office upon his basic application, he will encounter laws and regulations providing for the forfeiture of applications which are not duly prosecuted. I therefore reach the conclusion that the view entertained by the examiner is not warranted by law. I conclude that when an applicant is detained in the office to contest priority, or for any other reason not involving his own laches, and meanwhile applies for and takes out patents for improvements upon the invention first applied for, the improvement patents referring to the earlier application, and reserving the right to obtain a patent thereon, such intermediate patents do not debar the right to a patent upon the subject-matter of the earlier application, whenever the office is ready to grant the name."
I concur in this decision so far as its application is necessary in this case.
There is no occasion to decide what the result would be if the application for the primary patent were tiled after the application for the specific patent.
The mere fact that the patentee in good faith thus sought to protect an improved form of his invention, while the application for the broad invention was delayed by interference in the patent office, does not justify the claim that he thereby surrendered to the public the original underlying invention.
Holmes Electric Protective Co. v. Metropolitan Burglar Alarm Co., 33. Fed. 254.
I have examined with great care the exhaustive argument of coun: șel for defendant based upon the decision in Miller v. Manufacturing
('0., 151 U. S. 201, 14 Sup. Ct. 310. Whatever question may arise is to the interpretation to be put upon certain statements in said opin. ion, the questions at issue and the decision thereon do not cover the issues in this case. In that case the original application included one claim for the depressing and lifting action of the spring, and another for the increase in the lifting power of the spring as the beam was elevated. As in the case at bar, the application was divided so as to present these claims separately, the drawings and descriptions of the two applications being alike, and separate patents were granted thereon. The court decided that certain functions of the first and second påtents were identical, and that the invention which the first patent covered—the lifting and depressing springincluded the invention covered by the second patent, which was simply the increased lifting effect. In this sense the court held that the matter in the second patent was inseparably involved in the first patent. The question whether the issuing of a subsidiary patent before a primary patent, without the fault of the inventor, when the primary patent was first applied for, was not before the court, and was not passed upon. The contention of counsel for complainant is chiefly directed to the point that the prior patents to Van Depoele are not for the same invention as that covered by the claims in suit. He shows that the prior patents covered specific forms of improvements upon the generic invention, but contends that they do not cover the generic invention which underlies, not only the specific improve ment patented, but other forms. The defendant, while denying patentable novelty, and urging that, even if there be an invention, it is substantially the same as that covered by the former patents, chiefly relies upon the claim that within the meaning of Miller v. Manufacturing Co., supra, the invention of the later patent "is inseparably involved” in the invention of the earlier one.
In the case at bar, the special combinations described and claimed in the earlier patents were distinct and separate from that of the later generic in. vention. They stated the new problem presented to the inventor in the practical development of his invention, the construction of an improved switching plate device, and the means for its application, which the patentee had a right to protect. While they were dependent for their operation upon the original broad invention of the earlier application, but later patent, they were not otherwise inseparably involved. In Miller v. Manufacturing Co., supra, the function of increasing lifting effect, claimed in the second patent, was inseparably involved in the structure of the first patent, in the sense of identity of structural combination and action. The patentee attempted by a later patent to extend the monopoly of an effect essentially brought into operation in the practical use of the combination specified in the earlier patent. He did not change the elements of said combination, but having originally described and claimed certain mechanical instrumentalities, so combined as to constitute an operative means to accomplish a certain result, he afterwards attempted to claim one of the operations of one of the essential means, which operation was necessarily included in the operation of the earlier combination, and