
    APPEAL FROM THE DECISION OF THE COMMISSIONER OF PATENTS IN THE MATTER OF THE APPLICATION OF J. L. PENNOCK FOR LETTERS-PATENT FOR IMPROVEMENTS IN ROLLING-MILLS AND IN APPLIANCES CONNECTED THEREWITH.
    I. If a chain is attached to a shaft rotated by the same mechanism as the rolls in a rolling-mill, the other end being furnished with grappling-irons by which the heated pile is drawn from the furnace and placed upon a platform suspended from a crane, when it is swung by the crane to the rolls, the whole machinery constitutes the proper subject of a patent. (Wylie and Olin, associate justices, dissenting.)
    II. And a patent is valid which describes such machinery, and contains the following claim, viz: “ In a rolling-mill, the revolving shaft with its drum-chain and grapple, or any equivalent power-driven hauling mechanism, in combination with a crane, arranged and operating in connection with the said mechanism to receive the fagot from the same and deliver it at the rolls.” (Wylie and Olin, associate justices, dissenting.)
    III. Whether the inventive faculty has been exercised, is a question of evidence, and is always to be considered in reference to the condition of the art and the result accomplished; and where the combination is new, and the benefit great, the presumption is strongly in favor of originality.
    The case is sufficiently stated in the opinion of the court.
    
      Howson & Son, for J. L. Pennock, among other observations made the following:
    Tour honors will bear in mind that the applicant set about doing a thing which no one had dared to do before, the removal of a pile from the bed of a furnace to the rolls at one operation, and by one combination of co-operating appliances.
    When your honors remember this, and call to mind the wonderful results as regards the saving of labor, you will agree with us that the applicant is entitled to the claim he asks for.
    It is true that in framing a combination to carry out his bold views the applicant had to call to his aid old materials, but he put them together as they had never been brought together before ; the very novelty of the undertaking demanded a novel combination. Are we to belittle the applicant’s combination because he used old materials in effecting it? As well might an adverse criticism of a novel specimen of architecture be based solely on the antiquity of the bricks which entered into its composition.
    The decisions relating to this subject are all one way, and are too familiar to your honors to demand lengthened quotations. We may, however, be permitted to refer to the case of Clark’s Steam and Fire Extinguishing Company vs. Copeland, 2 Fish., 227, where the judge said: “Old instruments placed in new and different organizations producing different results may be patentable. If the inventor supplies to what is old some new organization, and thus produces a better practical result, he is entitled to protection.” Then there is the well-known case of Forbush vs. Cook, 2 Fish., 688, in which it was declared that “it is decisive that a new mode of operation has been introduced if the practical effect of the new combination is either a new effect or a materially better effect.”
    “The courts have uniformly held that where the combination of known elements produces useful results not before attained, then the person who discovers or applies the combination is an inventor within the meaning of the patent-laws.”
    The recent decision of the United States Supreme Court, in the case of Haines & Treadwell vs. Van Warmer et al., Official Gazette, Vol. 5, No. 4, has a decisive bearing upon the present case. The court said: “ It must be conceded that a new combination, if it produces new and useful results, is patentable, though all the constituents of the combination were well known and in common use before the combination was made; but the result must be a product of the combination, not a mere aggregate of several results, each the complete product of one of the parts. Merely bringing old devices into juxtaposition, and then allowing each to work out its own effect, without the production of something novel, is not invention.”
    The applicant has done something more than combine old devices; Ms invention consists of an old element and a new element combined in one organization for the attainment of one new result.
    But let us suppose for a moment that the crane with its platform is an old device, in order to bring the combination within the category of those referred to by the supreme court, patentability would then depend, in accordance with the above ruling, on two questions: First, is there a new result? and second, does the result depend upon the combination and co-operation of the elements claimed ?
    An affirmative answer of these questions must be decisive of patentability.
    The result is the removal of the pile from the bed of the furnace to the rolls, a duty which neither of the elements can accomplish alone, but by so combining the hauling mechanism with the crane that the latter will receive the pile directly from the former, such a co-operation of the two elements is insured that the extraordinary result above related is brought about, a result which the Supreme Court would consider the best evidence of patentability. Will not the fact that one of the elements of the applicant’s combination is a new element enhance its patentability ?
    
      Marcus S. Hopkins for the Commissioner:
    The references show that all these devices are old; but it does not appear that they have all of them been employed heretofore in precisely the relation to one another here exhibited. Furnaces have always been built convenient to the rolling and forging machinery, so that a heated mass of metal could be readily transferred from them to be forged or rolled. Cranes have commonly been employed in forging, by the use of trip-hammers, as illustrated in Fig. 2, to swing the heated metal from the furnace to the anvil, under the hammer. Machinery operated by hand, and power-driven hauling mechanism are old, and in common use, for hauling a heated pile out of a furnace to be rolled. Le Technologist, tome 26, p. 47, Eng. Pat. No. 2,761, of 1868; patents of D. N. Williams, March 19, 1867, and Wm. Stephens, August 15, 1871. But in rolling-mills, instead of a crane, a car or truck has usually been employed to receive the heated pile from, the furnace and convey it to the rolls.
    Appellants alleged invention consists in substituting a crane in place of a truck, for this purpose. Instead of resting his platform, for receiving aheated pile, on wheels, and rolling it to the roils, he suspends it on a crane and swings it to them. In other words, he adopts the mode in use for conveying a heated mass of metal from a furnace to an anvil, to convey it from a furnace to a pair of rolls. This the Commissioner holds does not amount to an invention. The combinations of devices in common use, such as exhibited in Figs. 3 and 4, where a truck is employed instead of a erane, he regards as equivalent combinations to that claimed, within the meaning of the law. It has long been established that the novel organization of co-operative elements of machines into a useful mechanism is invention, whether the elements be individually old or new. Buck vs. Hermance, Fish. P. R., p. 251; Evans vs. Eaton, Peters, C. C. R., 343; Barrett vs. Hall, 1 Mass., 474; Pennock vs. Dialogue, 4 Wash., 543; Foote vs. Silsby, 2 Blatch., 270. But there must be substantial novelty, else the alleged new combination will be no more than an equivalent of preceding combinations. Buck vs. Hermance, 1 Blatch., 404. For instance if A, B, and C, in certain relations, form an old combination, and C is a nail having its ordinary functions in the combination, A, B, and D, (D being a screw having its ordinary functions, ) in like relations, would not, I submit, form a new combination in such a sense as to be patentable; notwithstanding, as is well known, a screw holds much better, and in many situations is vastly superior to a nail. Substituted for a nail in such a case, it would no doubt render the effect of the combination better. But the reason such a substitution would not be ground for a patent is, that the combination thereby formed would involve the same idea, and operate upon the same principle and in the same manner as the former, and, therefore, it would be in essence the same thing. So the substitution of a crane for a truck does not effect a new and patentable combination; because the combination, after the substitution, considered as a unit, operates upon the same principle, and in the same manner, and accomplishes the same result as before. If the crane swings the pile by the application of less force than is required to push the car, that is a well-known incident, appertaining to it in all situations, and is not due to this alleged invention. It does the same, whether it carries the heated metal from the furnace to an anvil — as it has been employed to do from time immemorial — or to a pair of rolls. It is, in this case, clearly the mere alternate or equivalent of the truck, and certainly ought not to be monopolized in rolling-mills because adopted to swing heated metal from a furnace to one machine instead of to another.
   Mr. Justice MacArtuur

delivered the opinion of the court:

This is an appeal from the decision of the Commissioner of Patents rejecting one of the claims accompanying the application of Joseph L. Pennock for a patent filed October 23, 1871] The invention relates to an improvement in conveying the heavy heated masses of iron from the bed of a furnace to the rolls of a rolling-mill.

The meaus employed in this process consist. of a power-driven hauling mechanism with a chain, one end of which is secured to a shaft parallel with the rolls, and turned by the machinery which turned the rolls; the other end of the chain is furnished with grappliug-hooks for seizing the pile before it leaves the furnace, and between the latter and the rolls there is a swinging crane from which a platform is suspended. When it is required to remove the heated pile to the rolls the hooks attached to the chain are first adjusted over the pile nearest the doorway of the furnace, and then by starting the shaft the chain is caused to draw the pile on to the platform of the crane, which is swung around, and the fagot at once presented to the rolls. The plan and details of the combination are shown in a drawing filed with the specifications. The claim which has been rejected reads as follows:

“In a rolling-mill, the revolving shaft with its drum-chain and grapple, or any equivalent power-driven hauling mechanism, in combination with a crane, arranged and operating in connection with the said mechanism to receive the fagot from the same and deliver it at the rolls.”

Prior to this invention the manner in which the fagot was transferred was by means of a track or carriage which received it when withdrawn from the furnace, and it was then dragged by ten or a dozen men, stationed on each side, to the rolls. The number of men necessary for this purpose would of course depend upon the magnitude of the manufacture. Accompanying the argument of counsel for appellant is a picture illustrating the rolling of armor-plates at the Atlas Works in Sheffield, England, in which a body of forty men are seen dragging the loaded truck toward the rolls; and at the establishment of C. E. Penqock & Co., of which the patentee is one of the partners, it required the assistance of from ten to fifteen men to perform the same operation. But by substituting the crane and platform in place of the truck, two men can easily accomplish the same thing. Perhaps few devices in modern times have introduced a greater saving of time and labor into any branch of the manufacture of metals, and an invention possessing such a principle of economy will undoubtedly supersede, at no distant day, the laborious method of conveying heated masses of iron upon . trucks by the unaided strength of men. I assume that the improvement introduces this advantage to economize, as the proofs appear to be clear, and are neither denied nor impeached. Now, it is a familiar principle that where known elements are combined in a new form, so as to produce a new and useful result, it is an invention, and as such is entitled to the protection of the patent-law. Judged of by this test, can there be any doubt of the patentable merit of this combination? The hard work of a large number of attendants is dispensed with by a cheaper and better power than manual labor. A substantial effect of this kind is peculiarly within the encouragement and favor of the law.

In his written opinion the learned Commissioner remarks that the “applicant has substituted a crane for the truck in this case. But, as is well known, cranes are in common use for conveying heated piles to be forged and rolled;” and again he says, “ I have no doubt the combination is legitimate, so far as the co-operation of the parts is concerned; but it only required the application of mechanical skill to produce it in the present state of the art.”

There is no doubt but that the crane and platform used by the patentee instead of the truck constitutes that part of the combination which produces the beneficial result. And it is equally true that a crane was. well known long before; but there is no proof or reference to show that it had ever been used as an agent for swinging the fagot in a rolling-mill, in combination with a power-driven hauling mechanism and a suspended platform, until Pennock adapted it to that purpose. In the light of the proofs the Commissioner is manifestly mistaken in asserting its prior use in this connection. It had been employed in iron manufactories and even in rolling-mills, but in a different way and for a different purpose. The use of a crane to convey heated iron to trip-hammers is mentioned, and is, indeed suggestive, and yet the hint had never exercised a single mind among the hundreds of ingenious artisans who fill the workshops of Europe and America. In view of this consideration it would seem impossible to say that the invention was not original, or that it only required the ordinary skill of a mechanic to produce it. Inventions, like all other matters of inquiry, are subject to be judged of by practical results. A combination is not less an invention, although all the parts are well known, if the effect is a new or a better result, and it is the highest evidence possible of a patentable combination that it produces an article with a great economy of time and labor. In Furbush vs. Cook, (2 Fisher, 672,) Judge Curtis remarked:

“And it is a decisive evidence, though not the only evidence, that a new mode of operation has been introduced if the practical effect of the new combination is either a new effect or a materially better effect, or as good an effect more economically attained by means of the change made. A new improved or more economical effect attributable to the change made by the patentee in the mode of operating existing machinery proves that the change has introduced a new mode of operation which is the subject-matter of a patent .; and when this is ascertained, it is not a legitimate subject of inquiry at what cost to the patentee it was made, nor does the validity of the patent depend on an opinion formed after the event respecting the ease or difficulty of attaining it.”

The utility of this combination is brought within this principle of patent-law by the affidavit of James D. Stott, which is made an exhibit to the application. In it he says :

“ So much difficulty was experienced in removing the heavy heated piles from the furnace to the rolls that Mr. JL. Pennock adopted mechanical appliances for effecting this purpose. These consisted of power-driven hauling mechanism for seizing the pile in the furnace and dragging therefrom on to the platform of a crane, which was swung around so as to deliver the pile to the rolls. This mechanism worked admirably and is still in use. Prior to this invention it was the practice to drag the pile from the furnace on to a truck, and then to wheel the truck with its load to the rolls. This mode of removing a heavy pile to the rolls was a most laborious undertaking, and required the assistance of from ten to fifteen men. The invention of Mr. Pennock, however, rendered the operation a very easy one, but t»wo men being required to operate it, and to perform the same duty which required ten to fifteen men to accomplish prior to the use of the invention. I have no interest in this application for patent.”

From this uncontradicted statement, it is clear that this is one of the many instances in which the application of machinery to a useful art has resulted in an extraordinary economy of labor. A machine is made to do the hard work of a dozen men with but little trouble or expense, and the references entirely fail to prove that the combination which accomplishes this result ever existed before. If it required but the ordinary skill of a mechanic to make the discovery, it is certainly wonderful that so great a utility had not previously been introduced. Furnaces, steam engines, turning-rollers, trip-hammers, cranes, and hauling mechanism, were familiar powers to all persons employed in these workshops, and yet none had conceived the happy thought of causing machinery to perforin the drudgery of the men who dragged the truck. This was the conception of Pennock. He took the well-known crane which everybody had neglected and adapted it with a suspended platform to this new function. Even were it true that this required but a small amount of invention, that fact would be no valid objection to granting a patent when the advantages are confessedly so great. As pertinent to this view I cite the lan gauge of the author of the article on patents in the Encyclopaedia Britannica, as follows:

“ A small amount of invention is indeed sufficient to support a patent where the utility to be derived from the result is great. A small step in advance, a slight deviation from known processes, may have been apparently brought about by the exercise of little ingenuity; but if the improvement be manifest, either as saving time or labor, a patent in respect of it will stand. The mere omission of a step from some commonly-practiced process has been held sufficient to support a patent for a new method of manufacture; and how often do we see what appears to be a very trifling degree of novelty attended with very advantageous consequences, sometimes resulting in the entire revolution of a manufacture, or in a lowering of price appreciable in every pound of an article extensively used by the public.”

Now, if the testimony in this case is credible, the improvement is productive of a result in the highest degree useful. The swing of the crane will do more than the drudgery of a dozen laborers; and in an establishment as large as that at Sheffield, England, two men will accomplish more in conducting the enormous, masses of red-hot iron to the rolls than twenty, or perhaps even forty, now do, by dragging it there.

Whether the inventive faculty has been exercised, is mostly a question of evidence, and is always to be considered in reference to the condition of the art, and the results accomplished, and where the combination is confessedly new and the benefit great, the presumptionis strongly in its favor. It is not always safe to consider that there has been no invention because it appears obvious and simple, for simplicity is often the chief merit of a patent. Nor is it material whether Mr. Pennock spent much or little time in elaborating his enterprise. If the thought was original and can be employed with substantial advantage, it becomes a meritorious invention within the meaning of the patent-law.

It will be observed, as already stated, that the crane, with its platform so adjusted in arrangement with the hauling; mechanism as to co-operate in transferring the fagot, is not. only new, but it constitutes the object of the invention and accomplishes the desired purpose. This combination is legitimately covered by the first claim, and a majority of the court are of opinion that the appellant is entitled to have it included within the protection of his patent.

The decision of the Oommissioher is reversed.  