v. Glazier (C. C.) 31 Fed. 402. After a careful consideration of all the clutches to which our attention has been directed, for the purpose of establishing the defense of want of patentable novelty, we are not only not satisfied that the defense has been made out, but are rather disposed to believe that some of the claims of the Hobart patent (particularly the third, fourth, and fifth) cover a meritorious invention, and that the complainant is entitled to protection as respects the invention described in those claims. We are not satisfied that the sixth claim of the patent, which includes as an element the "guard flange," can or ought to be sustained. It cannot be sustained except by reading into it a feature of construction that is fully covered by other claims, and this we do not feel disposed to do. This claim being rejected as invalid, and no disclaimer having been filed before the suit was brought, under section 973 of the Revised Statutes [U. S. Comp. St. 1901, p. 703], the complainant is not entitled to recover his costs. Metallic Extraction Co. v. Brown, 49 C. C. A. 147, 150, 110 Fed. 665, 668, and cases there cited.

It is accordingly ordered that the decree of the lower court be reversed, and that the cause be remanded to that court, with directions to enter a decree in favor of the complainant, awarding an injunction as prayed for in the bill as respects the claims of the patent above specified.

RUBBER-TIRE WHEEL CO. v. VICTOR RUBBER-TIRE CO.

(Circuit Court of Appeals, Sixth Circuit. June 2, 1903.)

No. 1,169.

1. PATENTS-INVENTION-RUBBER-TIRE WHEELS.

The Grant patent, No. 554,675, for a rubber-tire wheel, is void for lack of patentable invention.

Appeal from the Circuit Court of the United States for the Southern District of Ohio.

Paul A. Staley and Border Bowman, for appellant.
H. A. Toulmin, for appellee.

Before LURTON, SEVERENS, and RICHARDS, Circuit Judges.

LURTON, Circuit Judge. This is a bill to restrain infringement of patent No. 554,675 to A. W. Grant, dated February 18, 1896, for improvements in rubber-tired wheels. The defense was that the invention was void for want of patentable novelty, anticipation, and noninfringement. Upon a final hearing upon pleadings and evidence the bill was dismissed upon the authority of Goodyear Tire & Rubber Co. et al. v. Rubber-Tire Wheel Co. et al., 53 C. C. A. 583, 116 Fed. 363. The parties not being the same, the former opinion would not absolutely preclude this court from renewing the inquiry into the validity of the Grant patent.

But an additional obstacle to a reconsideration of the merits of the question is found in the fact that the Supreme Court has since

denied the appellant's application for a writ of certiorari, although the decree had held the patent void. Rubber-Tire Wheel Co. v. Goodyear Tire & Rubber Co., 187 U. S. 641, 23 Sup. Ct. 842, 47 L. Ed. This fact would seem to somewhat interfere with the freedom of this court, for we should seemingly place ourselves in the attitude of reopening, upon substantially the same evidence, the question of the validity of the Grant patent after the Supreme Court under its revising powers had refused to re-examine the case. In Rawson v. Western Sand Blast Co. (C. C. A.) 118 Fed. 576, the Circuit Court of Appeals for the Seventh Circuit under like circumstances said:

"Though the former case might not prevent a renewed inquiry into the merits of the Evans patent, we are persuaded that the pronouncements therein, in view of the Supreme Court's denial of appellant's application for a writ of certiorari, should in the interest of faith in the stability of judicial decisions be adhered to by us as the law of the patent."

We do not find it necessary, however, to resort to any technical ground for adhering to the former opinion of this court, denying validity to the patent here involved, for we have no reason to doubt the rightness of the conclusion there announced.

Decree affirmed.

DRAKE CASTLE PRESSED STEEL LUG CO. et al. v. BROWNELL & CO. (Circuit Court of Appeals, Sixth Circuit. June 2, 1903.)

No. 1,156.

1. PATENTS-INVENTION-SUBSTITUTION OF MATERIALS.

The substitution of steel or wrought iron for cast iron as the material from which a structure is made does not constitute patentable invention, although such change of material also involves a change in the method of construction and in form, the new article being stamped or swaged from a single sheet of metal, where when made it performs the same functions in substantially the same way, its only advantage over the old structure being attributable to the inherent qualities of the material used. 2. SAME-BOILER LUGS.

The Drake patent, No. 491,091, for a boiler lug, stamped or swaged from sheet metal, is void on its face for lack of patentable invention; the structure of the patent differing from the cast iron lugs previously used only in the material of which it is made and somewhat in form.

Appeal from the Circuit Court of the United States for the Southern District of Ohio.

This is a bill to restrain infringement of patent No. 491,091 for alleged improvements in supporting lugs used for the support of boilers.

The patentee thus describes his invention: "Prior to my invention boiler lugs have been constructed of cast metal. These lugs are necessarily heavy, and a single lug for a standard boiler, say five feet in diameter, would weigh at least one hundred pounds. In applying them to a boiler, the only way in which a tight joint can be secured is by heading the rivet over from the inside of a boiler. It is of course well known that boiler plate and cast iron have different rates of expansion and contraction, and a suitably tight joint cannot easily be secured or maintained between these metals of diverse na

11. See Patents, vol. 38, Cent. Dig. § 23.

ture. A cast metal lug is provided in the casting with the bolt or rivet appertures, and, necessarily, their position being fixed, the rivet holes in the boiler must be made to correspond. Accuracy of fit between a surface of a lug and the surface of a boiler is difficult to attain where the lug is cast. The further objection to cast boiler lugs arises from the fact that a power riveting machine cannot be used to rivet them on. A strain on these lugs is mainly at the angle between the upright and the horizontal members, the bracket being substantially L shaped. In order to secure the proper strength at this point these lugs are necessarily made heavy. In a patent issued prior to my invention, a boiler lug has been shown having its members reinforced by ribs or flanges upon the interior angle of the lug and along its side margins. Said flanges, however, extend only partially up the sides of the vertical member and part way only along the top surface of the horizontal member of the lug. If a cast lug were provided with side flanges or webs sufficient to secure such additional strength as would permit a material reduction in the weight of a lug, these flanges would have to be so thick that the interior space for riveting would be encroached upon, and if the rivet holes are put too close together they weaken the lug. It is the object of my invention to avoid all of the objection above pointed out; and to this end I construct a boiler lug from sheet metal, preferably sheet steel, by pressing, stamping, or rolling it to produce a lug having the necessary upright and horizontal portions, and in the same operation I turn up the side margins of the blank so as to provide the lug upon its interior angle with marginal ribs or flanges of such width as to properly brace and integrally connect the two portions of the lug." The bill was demurred to upon the ground that the patent did not on its face show a patentable invention. The demurrer was sustained, and the bill dismissed.

Charles K. Offield, Henry S. Towle, and Charles C. Linthicum, for appellants.

R. J. McCarty, for appellee.

Before LURTON and SEVERENS, Circuit Judges, and WANTY, District Judge.

LURTON, Circuit Judge (after stating the facts). A boiler lug is nothing more or less than an L-shaped iron bracket, one member being attachable to the side of a boiler and the other to a wall or floor or other upright support, and its only function is to support the boiler in place.

It is elemental in the patent law that the mere substitution of steel or wrought iron for cast iron is not invention. The advantages and differences of the two forms of iron are too well known to require the skill of an inventor to displace the one for the other, where the conditions are such as to make one preferable to the other. Kilbourne v. Bingham Co., 50 Fed. 697, 1 C. C. A. 617; Strom Mfg. Co. v. Weir Frog Co., 83 Fed. 170, 27 C. C. A. 502; Union Hardware Co. v. Selchow (C. C.) 112 Fed. 1006; Florsheim v. Schilling, 137 U. S. 64, 76, 11 Sup. Ct. 20, 34 L. Ed. 574; Hicks v. Kelsey, 18 Wall. 670, 21 L. Ed. 852.

In Hicks v. Kelsey, cited above, the rule is stated as follows:

"The use of one material instead of another in constructing a known machine is, in most cases, so obviously a matter of mere mechanical judgment, and not of invention, that it cannot be called invention, unless some new and useful result, an increase of efficiency, or a decided saving in the operation, is clearly attained."