LEACH V. CHANDLER.
ment was because the decision of the question involved more properly belongs to the circuit court of the Western district of Michigan, and the action of that court should not be forestalled by a decision here on full consideration.
LEAOH V. CHANDLER
July 30, 1885.)
(ail cuit Oourt, D. Indl'an'L
PATENTS FOR INVlCNTIONS-INFRINGEMENT-TABLES FOR TILE-MACHlNRS.
The fourth, fifth, and seventh claims of patent No. 279,259, granted to William F. Leach, on June 12, 1883, for improvement in tables for tile-machmes, construed, and held not infringed by machines made under patent No. 2i3,bo7, issued July 5, 1881, to Elihu Dodds.
In Equity. David A. Leach, for complainant. West &; Bond and Stanton &; Scott, for defendants. WOODS, J. The complainant, as owner of letters patent No. 279,259, granted him on June 12, 18t'3, for improvement in tablos for tilemachines, sues the respondents for infringement of claims 4, 5, and 7 of his patent, and for a cancellation of letters patent No. 243,867, issued July 5, 1881, to Elihu Dodds, who assigned to the defendants; the alleged infringing machines having been made by defendants under and in conformity to the Dodds patent. The bill charges, among other things, tilat the complainant wa,s in truth tile first inventor, and that, in a proceeding of interference, to which the respondents appeared, it was so decided in turn by the examiner, by the examiner in ohief, and by the commissioner of patents. The fourth, fifth, and seventh claims of complainant's patent are of the tenor following:
"(4) In a tile-table, suspended, flexible carriers, H, substantially as herein shown and described, Whereby tiles of different forms and sizes will be firmly supported and safely carried, as S(,t forth. "(5) In a tile-table, the combination, with the bases, E, and the flexible carriel'S, H, of the suspending springs, G, substantially as herein shown and described, whereby the flexible carriers can adjust themselves more freely to the supported tiles as set forth." "(7) In a tile-table, the endless chain of flat bases, E, substantially as herein shown and described."
The claim in the Dodds patent reads as follows:
"The combination in a tile machine of the carrier bars and a flexible bridging strap arranged to receive the tile as it comes from the forming dies."
The specifications of complainant's patent contain the following among other statements:
The object of this invention isto provide suitable means for receiving tiles as they come from the tile-mill, and delivering them uninjured to the off-
bearers; and also to provide suitable means for cutting the tiles accurately into proper lengths without stopping the machines. The invention consists in a tile-table, constructed with a frame provided with a series of rollers, around which passes an endless chain of receivers, having downwardly projecting flanges and connected at their forward ends, leaving their rear ends free. With the receivers are connected spring-supported flexible carriers, to adjust themselves to the form of the tile. To each receiver or base, E, are attached one or more springs, G, as the size of the said receiver may require. To the upper ends of the springs, G, are attached the side edges of the carriers, H, which are made of thin sheet-brass, or other suitable material that has sufficient flexibility to allow it to adj ust itself to the slope of the tile to be carried, so that tiles of different shapes and sizes can be firmly supported and safely carried by the same carriers. If desired, the carriers, H, can be supported by rigid standards, but I prefer to use the springs, G, as they allow the flexible carriers to come in contact with more of the surface of the tiles, and thns carry them more safely. 'rhe carriers, H, can be made of such a length as the length of the tile may require.
It is not found necessary to determine whether the complainant or Dodds was first inventor, because, in view of the prior art, the invention of each, if properly called invention, must, in the judgment of the court, be construed strictly, and when so construed, there is no infringement. The flexible standard, as it seems to the court, constitutes an indispensable part of the complainant's combination. There is, to be sure, a suggestion in the specification that a rigid standard may be used instead; but if that be done, unless it be constructed with a hinge, as shown in the red model put in evidence, the chief value of the improvement will be sacrificed, because upon absolutely rigid standards the carriers, made of tin or brass or other material, would have little or no capability of conforming to the shape of tiles of different sizes. Constructed after the red model, or with flexible supports, the complainant's invention would seem to be ingenious, novel, and useful, but with rigid standards it would, in view of the Penfield patent, No. 98,519, and the Brown patent, No. 112,538, (to go no further,) involve no patentable advance over the prior art. It is claimed, with some emphasis, that the invention of the plaintiff consists in, or, at least, embodies the idea of, a series of carriers; but this, if conceded, does not help the case. A no less complete series is shown in the Penfield patent, and, without the flexible standard, it is impossible, as it seems to the court, to find support for any of the plaintiff's claims. In respect to the seventh claim, it was conceded, upon the argument, that the action cannot be sustained. Bill dismissed for want of merits.
'RAILWAY REGISTER MANUF'G CO.
NORTH HUDSON CO. R. CO.
CO. 'V. NORTH HUDSON CO. R. Co. and others.
(Circuit Court, D. New Jersey.
PAT1r,NTB FOR INVENTIONS-AMENDING AND E}[LARGING CLAIMS BEFORE ISSUE.
An inventor may amend or enlarge his claims from time to time before the issue of his patent, in order to embrace everything which was specified at the start. 2. SAME-PATENT No. 233,915, FOR FARE-REGISTER. On examination of the original specifications of patent No. 233,1l15, dated November 2, 1880, for a fare-register, held, that the invention for which the patent was issued was sufficiently described therein, and that the attorneys of the inventor in the patent-office had authority to insert amended claims without having them verified by the oath and signature of the patentee. A combination is patentable only when the several elements of which it is composed produce by their joint action a new and useful result, or an old re-: suit in a cheaper or otherwise more advantageous manner. <4,. SAME-PATENT No. 233,915, FOR FARE-HEGISTEH. , Patent No. 233,915, for a fare-register, granted November 2, 1880, is not void for want of novelty.
Dickerson J: Dickerson, for complainant. Frost cJ: Cae, for defendants.
NIXON, J. This suit is brought to recover damages for the infringement of letters patent No. 233,915, dated November 2,1880, for fareregisters, issued to John B. Benton, assignor to tbe Railway Register Manufacturing Company of Buffalo, New York. The defenses set up in the answer are want of novelty, prior use for more than two years, and non-infringement. I have no doubt that the mechanism used by the defendants infringe the complainant's patent. The complainant's expert (Quimby) properly describes the invention in Benton's patent when he says that it is to set back to the starting point the index hand or pointer of a trip-registering mechanism, which hand or pointer, during the registration of fares by a permanent register, partakes of the motion of a shaft rotated by the permanent register mechanism. '1'he defendants use substantially the same mechanism which is found in the Fowler and Lewis patent, No. 231,161, and embodied in exhibit marked "North Hudson Co. Indicator." The mechanism varies in some details, but the variety arises from the use of mechanical equivalents, and the mode of operation of the two mechanisms is substantially the same. The principal questions left for me to consider are (1) whether, upon the original application made by Benton on the twenty-ninth of December, 1877, the patent.office was authorized to issue the patent on which the suit is brought; and (2) whether the claims of the patent, as finally issued, have been anticipated by other inventors and pat· entees.
The complainant insists that the three claims of the patent sued on are merely the restatement in a better and more formal manner of what is fairly indicated in this fifth claim of the original application, taken in connection with the specifications describing the mechanism by which the claim was made operative. The patentee precedes the three claims with the following disclaimer:
"I disclaim herein, in favor of my application filed July 9, 1880, all the patentable SUbject-matter of my present invention, save that covered by the following three clauses of claims; it being the intention to cover and inclllde in this case only the three combinations of mechanism recited in said claims, while all the other patentable features, parts, or combinations of my invention are intended to be covered by the claims of my said application of July 9, 1880, which is tiled as a division and continuation of this present application."
The claims are all combination claims, and are stated in the patent as follows:
"(1) The combination, substantially as hereinbefore set forth, of a registering wheel or index hand, actuated in one direction in the process of c0unting, and capable of being moved in the other direction, to reset or carry it to zero; a resetting wheel or teeth connected with said registering wheel or index hand; a movable plate or pawl-carrier, inclosed within the register casing, acting upon the said resetting wheel or teeth, and a removable reciprocating push-key to actnate said plate or carrier. "(2) The combination, substantially as hereinbefore set forth, of a turning shaft; a toothed wheel to actuate said shaft; a trip index hand or registering
RAILWAY REGISTER MANUF'G CO. 'lJ. NORTH HUDSON CO. R. 00.
wheel connected with said shaft by a friction clutch or coupling, which compels the said index hand or registering wheel to move with said shaft in the process of counting, while allowing said index hand to be moved upon said shaft to reset it or bring it to zero; resetting teeth or projections connected with said index hand; a movable plate acting upon said projections of the index hand; a pusher or key, movable endwise, to actuate said movable plate in one direction, and a spring to move said plate in the opposite direction, or to return the plate to the position from which it was moved by said pusher· .. (3) The combination, SUbstantially as hereinbefore set forth. of a tri p register; a general register; a prime mover or handle for actuating said registers simultaneously, or nearly SOj and a resetting mechanism for the trip register, consisting of a toothed wheel or projections connected with the trip register, a backward and forward movable plate acting upon said projections, a reciprocating key or pusher to actuate said plate in one direction, and a spring to move the plate in the opposite direction to that imparted by said key, whereby the said trip register is permitted to be moved with the general register, clear of the resetting plate, in the process of counting. while capable of being reset by said plate, by the simple reciprocation of the key or pusher, without disturbing the record of said general register."
The question is not, as the counsel of the defendants seem to imagine, whether everything which appears in these three claims was incorporated in the fifth claim of the original application; but whether the specifications of that application fairly indicate all that was put into these claims. I do not understand that an inventor, applying for a. patent, and before it is issued, may not amend or enlarge his claims from time to time, in order to embrace everything which was specified at the start. I have examined with care the original specifications of Benton, and am of the opinion that he has substantially shown and described the invention, to cover which the patent of the complainant was issued. If this be the case, his attorneys in the patent-office had the authority to insert the amended claims, without having them verified by the oath and signature of the patentee. 2. It is further insisted by the counsel of the defendants that the claims contain nothing :new, and that the invention has been anticipated. This is probably true, sa far as the elements of the combinations are concerned. By searching the patent-offices of the United States and Great Britain, many patents may be and have been found which contain some one of these elements. They are all old. But have they ever before been put in combination? If not, and a new and useful result has followed such combination, the patent must be sustained. In the recent case of Stephenson v. Railroad Co. 5 Sup. Ct. Rep. 781, the supreme court, speaking by Mr. Justice WOODS, say:
"A combination is patentable only when the several elements of which it is composed produce, by their joint action, a new and useful result, or an old result in a cheaper or otherwistl more advantageous way.""
No matter, then, how old the several elements are, have they been placed in such relation to each other that their joint action produces a. new and useful result? The date of the Benton invention is Febuary 19, 1877, as the uncontradicted testimony of the (1:tse shows. Laying aside all patents
whieh do not antedate that time, none are left that cover the combinations of the complainant's mechanism. Let a decree be entered for the complainant for an injunction and an account.
Co. v. CnoFuT find others.
(Oil'cuit Court, D. New Jersey. August 26, 1885.)
PATENTS FOR INVICNTIONS-AN'l'ICIPATION-PA1'ENT
No. 65,267. Patent No. 65,267, dated May 28,1867, and granted to William Hugh Pierson, for an improved plastic material made from vegetahle fibers, was not anticipated by the English letters patent, granted to Alexander Parkes, upon a specification enrolled in the British office, on April 17, 1856. Continued poverty, sickness, and mental nlienation are sufficient excuses for delay in procuring a patent. AbanUolllllcnt to public lwld not shuwn.
In Equity. Dickerson d; Dickerson, for complainant. John P. Adams, for defendants. NIXON, J. This action is brought against the defendants to recover damages for the infringement of letters patent No. 65,267, dated May 28, 1867, and granted to William Hugh Pierson for an "Improved Plastic Compound," made from vegetable fibers. The patent relates to what is called by the patentee the "Plastic Art," and especially to the production of celluloid. He takes some form of fibrous material known as "cellulose," as, for instance, the ordinary cotton fiber, and converts it into nitro-cellulose, by treating it with nitric, or a mixture of nitric and sulphmic acids. By the action of these acids the cellulose is turned into a material usually called pyroxyline. This pyroxyline is then submitted to the action of solvent!", which may be a mixture of alcohol and ether, or wood spirits, sufficient in quantity to put it into a balf-dissolved or pulpy, but not into a liquid, state. The action of the solvents makes a plastic mass which is capable of being moulded iuto desired forms. To produce different effects, different foreign substances are added; and to render the result suitable for manufacture, it is laid upon a proper surface and submitted to continued pressure, by which it is compacted into a solid mass, now known as celluloid. The complainant insists that the defendants have infringed the first and second claims of the patent, which are as follows: (1) The formation of articles of manufacture resembling stone, wood, whalebone, shell, horn, and other rigid or elastic articles out of celluloid, or semi-soluble pyroxyline, prepared substantially in the manner and for the purposes herein set forth. (2) The combination of plastic, as above described, with vegetable or any other foreign matter, substantially in the manner and for the purpose set forth.