Harder v. United States Piling Co.

BAKER, Circuit Judge (after stating the facts as above). In Harder’s statement the only inventional idea was to provide a locking means that should be an integral part of the beams instead of a locking means that was mechanically secured to the beams. He carried out the idea by making the “inturned angle-hook extension” that had theretofore been mechanically secured to one of the flanges of the ordinary I-beam, integral with the flange. He pi-escribed that the engaging flange and the flanged recess should be of corresponding shape so as to form a comparatively tight joint, and also be loose enough to permit the assemblage and separation of the parts with facility. On this disclosure of idea and of means, he claimed a monopoly, first, of all integral locking arrangements of a tongue and groove nature, and then of certain specific forms of the generic invention. He was soon apprised of his mistake by the examiner’s references to Dodge and Behrend, and nothing remained but the possibility of securing claims that might be distinguished from the integral locking arrangements of the prior art. And in this light must the questions of scope of invention and of infringement be considered. As Dodge and Behrend had disclosed the general idea of providing piling sections with integral interlocking means, there was no invention in Harder’s making an old specific form of interlocking means an integral part of an old specific form of I-beam, unless the adaptation resulted in some material advantage beyond that of having in one piece what had before existed in two. A solution of a vexatious problem, a new result, a benefit to mankind that justified the grant of the patent, is claimed, not on anything that Harder stated with reference to the nature and scope of the alleged invention, but on a theory of appellants’ experts: If the Behrend or other metal piling of the older art were cast, it would be too brittle to withstand the blows of the pile driver. If wrought from steel otherwise than by the roller process, it would be too expensive for common use. The old forms could not be successfully rolled. To overcome these' objections was the problem. Harder solved it by showing the forms that are covered by the claims of his patent. If in truth Harder understood the now stated objections, and was the first to conceive and imbody a way of overcoming them, he carefully refrained from saying so. Now a patent is to be sustained, not for what an inventor may have done in fact, but only for what he “particularly points out and distinctly claims” in his open letter. Fastener Co. v. Kraetzer, 150 U. S. 116, 14 Sup. Ct. 48, 37 L. Ed. 1019; Indiana Mfg. Co. v. Crocker Chair Co., 103 Fed. 496, 43 C. C. A. 287; Avery & Son v. J. I. Case Plow Works, 148 Fed. 214, 78 C. C. A. 110. According to appellants’ experts’ theory of invention the important feature was the flat end of the inner interlocking member. The corresponding element of the older structures could not be rolled in connection with the embracing member without warping the beam. ' Though Harder said nothing about this, or whether his form of piling beam should be cast or rolled, it is contended that the invention as now explained was pointed out in the patent with sufficient particularity and claimed with sufficient distinctness because the skilled [467] mechanic already knew that wrought metal was superior to cast metal for piling, that the only wrought mefal of the requisite cheapness was rolled steel, and that in 'rolling steel beams with headed or flanged edges the lateral pressure on one edge must be balanced by a similar pressure on the other edge. This contention leads further, we think,' than appellants intended. In modifying the Behrend piling as pictured in Fig. 9, no invention, but only the skill of appellants’ aforesaid mechanic, was required in opposing the lateral pressure necessary in forming the larger head with a lateral pressure that had the natural effect of flattening the smaller head. So no construction can properly be given to the Harder patent which would cover appellee’s present practice under the Behrend patent. The decree is affirmed.