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Opinion of the Court.

sponding to the columns M. It is in fact the McCarty bolster turned upside down, with the plates P, which are only necessary in a floating bolster, omitted. The only object of these. plates, fitted as they are with notches to embrace the columns of the side trusses, is to serve as a guide for the ends of the bolster as they rise and fall upon the springs.

Defendant also exhibited the Naugatuck truck, which appeared to have been used upon the Naugatuck Railroad in the State of Connecticut as early as 1862, and was still in actual use upon the New York, New Haven and Hartford Railroad, the present owner of the Naugatuck. This contains a truck bolster having all the substantial elements of the McCarty combination, including the straight bar and flanges, the bent bar and the intervening columns, although, like the Old Metal Transom, it contained nothing corresponding to the plates P, which, as before observed, are only required in connection with a floating bolster. The ends of this bolster were fitted rigidly to the side trusses. The springs, instead of supporting the ends of the bolster, were placed over the journal bearings, and imparted a limited motion to the carriage. The guide plates are obviously unnecessary in this construction.

The following drawings exhibit the McCarty bolster so far as the combinations of the third and fourth claims are concerned, and the corresponding features of the Naugatuck bolster :

McCarty Truck Bolster.

The Naugatuck:Truck Bolster.

Opinion of the Court.

The invention, then, of McCarty consisted in taking the Naugatuck truck or bolster, turning it into a floating bolster, by adding the guide plate, P, and resting its ends upon the springs in the side trusses, which springs, however, are not made an element of either the third or fourth claims. Even if they had been claimed, they would not of themselves constitute a novel feature, as they are admitted to have been used long before, and are described in several prior patents in connection with bolsters of the old pattern. The wedge-shaped blocks or columns M are unimportant, as angle irons in analogous positions are well known in the art, and are shown in prior patents. In addition to that, it does not appear that defendant used them. The Naugatuck truck was doubtless improved by the changes made by McCarty; but if there were anything more in this than mechanical skill, or the aggrega tion of familiar devices, each operating in its old way to produce an aggregated result, it was invention of such a limited character as to require a narrow construction. The case is not unlike that of the Pennsylvania Railroad v. Locomotive Truck Co., 110 U. S. 490, where a patent for employing a particular car truck, already in use on railroad cars, on the forward end of a locomotive, was held void for the want of novelty, the court referring to the familiar principle that the application of an old process or machine to a similar or analogous subject, with no change in the manner of application, and no result substantially distinct in its nature, will not sustain a patent, even if the new form of result has not before been contemplated.

There is another consideration which leads to the same conclusion. The original application, made by McCarty, contained among other things a broad claim for "a truck bolster provided on its ends with supporting and guiding plates, substantially as and for the purpose set forth." This claim, being obviously too broad in view of the prior patents, was amended so as to read as follows: "A truck bolster provided at its ends with plates which are notched to fit upon vertical parts of the frame so as to serve as guides and supports for said bolster, substantially as set forth." This claim having been apparently

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Opinion of the Court.

rejected, the patentee abandoned his broad claim for a notched plate, and claimed only a plate in combination with the other features of his bolster, which was finally allowed. His acquiescence in the rulings of the Patent Office in this particular indicates very clearly that he should be restricted to the combination claimed, and that the case is not one calling for a liberal construction.

In view of these limitations upon the McCarty patent, was there any infringement in defendant's device? This device contained the bars F and G, and the pillars H of the McCarty patent, but instead of having the flanges Q upon the ends of the lower bar, and the guide plates P, there was substituted a cap shown in the patent to Montz, of which the following is a drawing:

This cap contains a recess, i, for the reception of the ends of the bolster bar, which are thereby maintained in proper position with respect to each other, and is secured to the ends of the bolster bar by means of two bolts passing vertically through them. The cap, which fits between the posts of the side frame and rests upon a spring, is provided at each side with flanges, i', which embrace the outer and inner faces of the posts, and prevent a longitudinal motion of the bolster, while permitting the same to move freely in a vertical direction. Now, as in view of the Naugatuck truck, there was nothing which could be called novel in the third and fourth claims of the McCarty patent, except the guide plates P, which were used to adapt this bolster to the purposes of a floating bolster by resting its ends on springs; and as the cap in question is an obvious de

Opinion of the Court.

parture from the device in this particular, we cannot say that it is an infringement, although it accomplishes practically the same purpose as the flanges Q and plate P of the McCarty patent. Had it been wholly novel to rest the ends of the bolster upon springs, by means of guide plates, it is possible we might have been able to hold this cap to be an infringement; but as the novelty consists, not in resting the ends of bolsters generally upon springs by means of a guide plate, but in so locating the ends of a bolster of a particular construction, we think the employment of a different means of locating it avoids the charge of infringement.

It is further claimed that the defendant is estopped to question the novelty of the McCarty patent and its priority of invention by the interference proceedings in the Patent Office. Aside from the fact that the issues in those proceedings included the truss rods, which are not used by the defendant, the evidence that the defendant was a party in privity to Montz's application for the patent which was awarded to him, or that he made his application in their interest, is too inconclusive to justify us in holding that the company was bound by the result of this proceeding. It practically rests upon Montz's reply to the question why he did not proceed with the interference, that he had no orders from his superior officers of the road. This we think is insufficient, in the absence of affirmative evidence that the company had knowledge of the proceeding, and assented to the action taken by Montz. There is not that certainty to every intent, which Lord Coke held necessary to constitute an estoppel, and as observed by this court in Russell v. Place, 94 U. S. 606, 610, "If upon the face of a record anything is left to conjecture as to what was necessarily involved and decided, there is no estoppel in it when pleaded, and nothing conclusive in it when offered as evidence."

The decree of the court below dismissing the bill is, therefore,


Statement of the Case.




No. 550. Argued and submitted November 19, 1895. - Decided December 2, 1895.

Circuit Courts of Appeals have no jurisdiction over the judgments of terri-
torial courts in capital cases, and in cases of infamous crimes.
This construction of the statute is imperative from its language, and is not
affected by the fact that convictions for minor offences are reviewable on
a second appeal, while convictions for capital and infamous crimes are
not so reviewable.

THIS was a certificate from the United States Circuit Court of Appeals for the Eighth Circuit, which, omitting the formal parts, reads as follows:

"First. At a regular term of the District Court of the Second Judicial District of the Territory of New Mexico, sitting for the trial of causes arising under the Constitution and laws of the United States, held at Albuquerque, in said district, the plaintiff in error, Stephen M. Folsom, was, on the 15th day of March, 1894, indicted by the grand jury in said court for making certain false entries in violation of the provisions of section 5209 of the Revised Statutes of the United States.

"Second. He was thereafter arraigned. He pleaded not guilty. He was tried by the said District Court and a jury, was found guilty of making certain of the false entries charged in said indictments in violation of the provisions of section 5209, and was thereafter, on the 14th day of April, 1894, ordered and adjudged by the said court to be confined at hard labor in the territorial penitentiary at Santa Fé, New Mexico, for the term and period of five years upon each of the seven separate and distinct offences as laid and charged in the fourteen counts of the indictments upon which the jury had theretofore returned a verdict of guilty; and it was further ordered and adjudged by the said court that said term

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