Decree reversed, and case remanded to the circuit court, with direc tions to enter a decree for the plaintiff for the sum of $266,153.86, with interest from October 7, 1884, and costs.

The Chief Justice dissented.

Mr. Justice Matthews did not sit in this case or take any part in the decision.

[Supreme Court of the United States.]

WEIR v. MORDEN ET AL.

1. WEIR-RAILROAD-FROGS.

Decided March 19, 1888,

43 O. G., 753.

Reissued Letters Patent No. 8,914, dated September 30, 1879, granted to Frederic C. Weir, for an improvement in railroad-frogs, adjudged to be invalid as to the second claim for lack of invention.

2. PATENTABLE INVENTION-WHAT IS NOT.

In a prior patent describing a U-shaped trough for the purpose of connecting outer rails, leaving the central rails to be secured by means of a V-shaped recess in the bed of the plate at the wide end of the trough, there was no invention in dividing the trough into two, so as to connect the central rails on each side by means of a separate U-shaped trough with the outer rail exterior to them. APPEAL from the Circuit Court of the United States for the Northern District of Illinois.

STATEMENT OF THE CASE.

This is a bill in equity to restrain the alleged infringement of Reissued Letters Patent No. 8,914, dated September 30, 1879, for an improvement in railroad frogs, the original patent, No. 215,548, dated May 20, 1879, having been issued on an application filed February 4, 1879, to Frederic C. Weir, the complainant. In his specification the patentee describes the invention generally as follows:

My invention relates to the class of frogs made by the bending of the overlapping ends of the rails themselves, and the junction of the same with the central rails constituting the point by rivets or bolts through separating-pieces; and my invention consists, first, in such a formation and connection of the two rails which make up the angular point as that one of the rails extends unbroken and uncut directly across the path of the other, and in itself makes a solid end to the point, with a full-width flange, which is overlapped by the flange of the other rail, and thus a flange of double thickness is afforded at a point where strength is particularly needed, and the cutting away of the flanges (as is the usual custom) is avoided entirely; second, in an improved manner of connecting the two rails of the point together, and to channel iron pieces, to which the outer rails are connected.

One of the objects of this invention is to furnish a firm lateral support upon each side of the V-shaped rails by means of channel-irons, which at the same time unite and hold the center rails forming the V to the wing-rails firmly, uniting and holding all the parts in their proper relative position.

The specification explains the drawings as follows:

In the accompanying drawings, Figure 4 is a plan of a frog embodying my improvements. Fig. 5 is a cross-section of the same on line xx. Fig. 3 is a plan of the under side of the frog, showing the continuations of the main point-rail with a fullwidth flange throughout, also showing the riveted extension of the flanges of the channel-irons beyond the points.

It will not be necessary to describe the devices shown in Figs. 1 and 2, as they are fully described in division B of this reissue.

A A' are the outer or wing rails of the frog, and B B' are the two rails which compose the acute angle or point.

In place of cutting away both the flanges of the rails B B', so as to make a joint between the two rails midway between the lines of the angle of the frog, as is common now, and I may say usually practiced, I continue the flange of the rail B of full width intact clear along the junction of the two rails to the point where it strikes the flange of the outer rail, as shown in Fig. 3, which is almost immediately under the point a' of the frog, and I swage up the flange b' of rail B' on one side, as shown in Figs. 5 and 3, so that it lies over the flange of rail B, this flange of rail B' being cut away angularly on the edge to properly meet the line of the web b" of the rail B. I connect the point-rails B B' together by rivets C, which, while they secure these rails together, also secure pieces of channel-iron D to said point-rails, the channel-iron making the separating medium between the point-rails B B' and wing-rails A A', and giving a means for attaching said wing-rails.

The adjacent flanges of the channel-irons of the point may be extended beyond the point and riveted, as shown in Fig. 3.

With channel-iron I attach the wing-rails in the manner shown in Fig. 5, the outer flanges of the iron being notched at d for the passage, before the outer rails are attached, of the long rivet C, the bolts E, which connect the outer rails, being placed between the notches d.

The claims are as follows:

1. A frog having one of its point rails extending with a full-width flange along the junction of the two rails, and the flange of the other point-rail overlying the flange of the first-mentioned one, substantially as and for the purpose specified.

2. A frog composed substantially of the two center rails B B', joined to form the V-shaped point, united to outside diverging or wing rails by means of two chaunel or U irons, D D, one wing of which channel or U iron is shaped to fit the web of the abutting rails, combined to form the point of the frog, and upon the other side fitting the web of the wing or diverging rail, respectively, and secured by bolts or rivets passing through the webs of the rails and the sides of the channel-bars, substantially as shown.

3. In combination with the point-rails B B', fitted to each other as described, the channel-pieces D, extending and bolted or riveted together beyond the point of the frog, and connecting-rivets C, which extend entirely through the two point-rails and the channel-pieces, substantially as and for the purpose specified.

The only claim involved in this suit is the second, no infringement being alleged of either the first or third. Separate answers were filed by the defendants, respectively, which were, however, in substance the same. The defenses are that the reissued letters patent are null and void as not being for the same invention as set forth and described in the original letters patent, that the defendants do not infringe, and that the alleged invention of the complainant was not a patentable novelty, in view of the state of the art at the time of the alleged invention, as shown in certain prior letters patent specifically mentioned. The answer of Morden, adopted by the others, also sets out the following:

And this defendant, further answering, says, on information and belief, that he is the original and first inventor of a U-shaped plate in combination or connection with a railroad-frog, and that said invention was secured to him by said Letters Patent of the United States No. 173, 804 and No. 205,496, and that by virtue of said letters patent he has the sole and exclusive right to said U shape in a railroad-frog, and that, while the complainant is engaged in the manufacture and sale of railroad-frogs, he uses a Vshaped plate so secured to your defendant, as before stated, and in said manufacture and sale has copied from defendant's invention in substantial and material parts secured to defendant by his letters patent aforesaid and in infrigement of the same; and this defendant, in this connection, would state that prior to the filing of complainant's bill he, the defeudant, filed a bill in this honorable court against said complainant for infringement of his said Letters Patent No. 173,804 and said wrongful acts, and praying relief on account of said wrongful acts by the complainant, which said bill is now pending against him in this court. Some days after this defendant filed his bill as aforesaid, the said complainant filed his bill, seeking thereby, as defendant is advised and states, on information and belief, to harass and aunoy defendant in his said suit and to delay accounting to defendant for said wrongful acts of him, the said complainant.

On final hearing a decree was rendered dismissing the bill for want of equity, to reverse which the present appeal has been taken.

Mr. Edward Boyd, Mr. E. E. Wood, and Mr. C. A. Seward for the appellant.

Mr. C. K. Offield for the appellees.

Mr. Justice MATTHEWS delivered the opinion of the court.

The question of infringement depends upon the proper construction of the second claim. The proof shows that the defendants did not infringe either the first or third. They did not form and connect the two rails, making up the angular point as a part of the frog, so that one of the rails would extend unbroken and uncut directly across the path of the other, and in itself make a solid end to the point with a full-width flange overlapped by the flange of the other rail, thus affording a double thickness and avoiding the cutting away of the flanges, as was customary. If there is an infringement, it cousist in the use of the channelirons of a U shape, uniting the two center rails, forming the V-shaped point of the frog, to each other, and the two thus united to the two diverging rails on each side by means of bolts or rivets passing through the webs of the rails and the sides of the channel-bars. The question was disposed of by the circuit court in favor of the defendants, as fol lows:

The question of fact as to infringement depends upon whether the "two center rails, B B', joined together to form the V-shaped point," mentioned in the second claim, necessarily mean the two center rails which are described in the specification, or does it mean any center rails joined together in any manner to form a V-shaped point? The answer to this question seems to me to be found in the complainant's own specification. He says:

"My invention consists, first, in such a formation and connection of the two rails which make up the angular point as that one of the rails extends unbroken and uncut directly across the path of the other, and in itself makes a solid end to the point with a full-width flange, which is overlapped by the flange of the other rail, and thus a flange of double thickness is afforded at a point where strength is particularly needed, and the cutting away of the flanges (as is the usual custom) is avoided entirely." In his description of the drawings he says:

"A A' are the outer or wing rails of the frog, and B B' are the two rails which compose the acute angle or point.”

And in his description of the mode of constructing his device he says:

"In place of cutting away both the flanges of the rails B B', so as to make a joint between the two rails midway between the lines of the angle of the frog, as is common now, and I may say usually practiced, I continue the flange of the rail B of full width intact clear along the junction of the two rails, to the point where it strikes the flange of the outer rail, as shown in Fig. 3, which is almost immediately under the point x' of the frog, and I swage up the flange b' of rail B' on one side as shown in Figs. 5 and 3, so that it lies over the flange of rail B, this flauge of rail B' being cut away angularly on the edge to properly meet the line of the web b" of the rail B." It will thus be seen that minute directions are given as to the construction of the two center rails, B and B', to form a V-shaped point, and I am of opinion that the two center rails, B and B', described in the second claim, are the rails constructed and joined according to the description given in the patent. The language of the claim is "the two center rails, B B', joined to form the V-shaped point;" not any two center rails joined to form a V-shaped point. The V-shaped point made by extending one rail unbroken and uncut directly across the path of the other, and thereby

making a solid end to the point, and with the flange of the rail B' swaged up, so as to lie upon or overlap the flange of the rail B, seems to me to be an essential element of what complainant supposed he had invented, and therefore the two center rails, B B', mentioned in the second claim, refer to and mean the two center rails which he has particularly described in his specification. The proof in the case wholly fails to show that the defendant forms the V-shaped point in his frog in the manner that the complainant forms his point.

The construction of the second claim contended for by the appellant is that it embodies separately and distinctly that part of the invention which in the general description in the preliminary part of the specification is stated to be

an improved manner of connecting the two rails of the point together and to channel-iron pieces, to which the outer rails are connected

without reference to the manner in which the two rails of the point are formed, so as to constitute the first part of the invention. If this construction be admitted, the second claim would cover every case of two center rails joined to form the V-shaped point, which were united to outside diverging or wing rails by means of channel-irons of a U-shape, bolted or riveted, as therein described, without reference to the man. ner in which the two center rails were combined to make the angular point or V shape. In our opinion, the construction placed upon this claim by the circuit court is right, and is required by the language of the specifications and claim. The claim does not on its face profess to cover a mere mode of connecting, by means of U-shaped channelirons, the intermediate with the external rails. It is in form a claim for a combination of parts which together constitute a frog of peculiar construction. The elements of that combination, as stated in the claim, are, first, the two center rails, B B', joined to form the V-shaped point; second, the outside diverging or wing rails; third, the channel-irons of a U shape, uniting the center rails together and also to the outside or wing rails, so that the whole shall constitute a frog with the characteristics imparted by the features of this combination. This coincides with the statement contained in the brief of counsel for the appellant, who say, speaking of the invention as described in the second claim:

The elements constituting the invention in controversy are: First, two outside diverging wing and main rails; two inside V-shaped point rails, the four rails being united and joined together by two channel-irons bolted to these rails by three lines of rivets or bolts, to wit: one line of bolts bolting one channel-iron to one wing rail; another line of bolts bolting another channel-iron to the other outside wing-rail, and the third line of bolts passing through the two inside wings of the two channel-plates and through the webs of the point-rails, thereby making one structure or machine. In this construction the cut-away rail forming the point is re-enforced on each side by the vertical wings of the channel-irons. The claim is for this frog or machine so constructed, a frog composed substantially of the elements above named.

The claim refers specifically to the

two center rails, B B', joined to form the v-shaped point.

This points explicitly to the drawings, on which the two center rails are designated by the letters, and also to the mode in which they are