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

Statement of the Case.

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 por tions 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 toward 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 coöperating 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

Statement of the Case.

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 moulded 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:

Opinion of the Court.

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 rotat ing 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 coöperate 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 Fed. Rep. 680. From this decree plaintiff appealed to this court.

Mr. Chester Bradford and Mr. Ernest W. Bradford for appellants.

Mr. William Hubbell Fisher for appellees.

MR. JUSTICE BROWN, after stating the case, delivered the opinion of the court.

Beds of clay are composed of different strata; and the first step necessary to be taken in the manufacture of such clay is a thorough mixing of the strata, and the reduction of the

Opinion of the Court.

clay to a suitable condition. Otherwise, the product will contain laminations, will shrink unevenly and check in burning, scale or peel off in use, and be less valuable than products made of clays which are first thoroughly mixed and tempered, and reduced to a homogeneous mass before being manufactured into the product. Prior to the Potts inventions various methods seem to have been employed to secure this result. The clay had been sometimes spaded up in the autumn, subjected to the action of the frost during the winter, and then to the operation of the old-fashioned grinding pit. A mud-wheel had also been used. The "soak pit" was another means used to accomplish the same result -- the clay being deposited in a pit of water and allowed to remain until the soaking process had reduced it to the desired condition. These methods were slow and expensive. Both grinding machines and crushing rolls had been adopted in comparatively recent years. Their action was simply to crush the clay, the different strata being pressed together and made more compact, and the clay discharged from the rolls in cakes or sheets, a condition that made the tempering very difficult, as the clay thus treated would not readily receive or absorb the water.

The object of the Potts inventions was not to crush the clay, as had been previously done, but to disintegrate and pulverize it, leaving it in a loose condition, fitted to absorb the water readily. Their machines consisted substantially of a cylinder moving at a high speed, having longitudinal bars fixed in its periphery with sharp projecting corners, and a fixed abutment in close proximity thereto in the first patent a swinging plate in the second a smooth cylinder- and a positive feeding device by which the clay was forced between the main cylinder and the abutment. The longitudinal bars thus operated to strike the mass of clay quick, sharp blows in rapid succession, and cut or shred small portions therefrom, which were deposited beneath the machine, thoroughly mixed in their different strata, and with rough, torn, or ruptured edges a condition best adapted to receive or absorb water, and be easily and thoroughly tempered. The only feature of the first patent material to be considered