iJ;l .1llteraledges ()fthe sUPl1Wting Clai?llj·l,,: 2 1 ,?, 4, aql11 are expansions .of c1;aims of ;original, appareJ;ltJ,y tR, er;l.lbrace the cemented ffisteJ;\iIlg,inthe claim-s,as well,as stitching;or: turning over tp.e edges of the ,metal. If it is true, as argued, that this is, only the introdu.;lti9P of an I;\q\livalent into the daims, it was be assumed that the patentwholly l,mnecessarYi and it D;lay office did not .so consider it. It must be held that thes.e claims were designed to expand the claims of the. original, and take in inventions which are not found in the original, arld are therefore invalid. If it should be conceded that the inventions now claimed were dr-scribed in the original patent, then, as the claims of the reissue are expansions, and more than three years elapsed after the original was granted before the reissue was applied for, the and the delay must be held unreasonable in the absence of any explanatory averments in the bill lVollensak v. Reiher, 115 U. S. 96,5 Sup. Ct. Rep. accounting for 1137. The special demurrers to the bill are sustained. As the principal controversy has been upon the matters raised by these demurrers, costs are allowed to the defendant. The general demurrers are not sustained because, unless the patent is invalid for want of novelty, the fifth and sixth claims are good, and entitle the complainant to a decree for infringement; and the court cannot decide as matter of law upon the face of the patent without the aid of extrinsic evidence that those claims are destitute of inventive novelty.
THOMPSON et al. v. A!I'.ERICAN BANK-No'1'E CO.
(Oircuit Oourt, ,So
PA.TENTS FOR INVENTIONS-S.rAPLE·DRIVING MACHINE-INFRINGEMENT.
Complainants' patent was a combination of an inclined and retreating anvil to sustain the wire of a staple while being bent, and to sustain the staple whilebeing driven, withthe bender·foot and driver, in a wire-stapling machine. The bender·foot boxed the prongs of the staples on all but their inner sides, while the inclined and retreatinj:( anvil filled tbe space between the prongs, retreating. from the crown it was p.riven, and thus the prongs were supported at all points while being dri:ven. Held infringed by a machine in which the anvil was the same in shape and operation except that it did not fill the space between the prongs entirely to the crown, where support was unnecessary.
'In Equity. On bill for infringement of patent. Horace f3arnard, for complainants. . H .. D. Donnelly, for defendant.. WHEEUllR, .J. The pl:ltent in.this ca.se was before. this court in Thornpaon v.Gildersleeve, 34 Fed. apd the validity of th.e thjrq claim It was before this court, on the,same queswas tion ofinfringement that ishere ,now, in Thompson v. Bank-Note Co., 35.
, .', . '"", ' , ' -1 ..' . ,
THOMPSON ". AMERICAN BANK-NOTE CO.
Fed. Rep. 203. On account of doubts expressed in other cases, as to whether the device in q.uestion is an infringement of the combination of that claim, the matter has been fully heard and considered again now. Thompson v. Supply Cb., 38 .Fed. Rep. That combination is of an inclined and retreating anvil, so called, to sustain the wire of the staple while being bent, and to support the staple while being driven, with the bender-foot and driver, in a wire-stapling machine, operating substantially as described. By the operation of these parts, wire staples are bent and driven through the material being stapled, without having holes first punched for the prongs of the staples. This had not been done before this invention. The bender-foot and driver, operating as in former machines. are here without question. The presence of the inclined and, retreating anvil of the combination only is denied. The bender-foot boxed the prongs of the staples on all but their inner sides, and prevented their crippling in any other direction. The inclined and retreating anvil of the patent, after supporting the wire for bending by the bender-foot, by filling the space between the prongs, and retreating out of the way of the crown as the staples are driven home by the driver, supports the prongs on their inner sides, and prevents their crippling in that direction. Thus the prongs of staples of very slender wire are steadied in place and driven into the material. This invention underlies the use ·ofthe anvil for this purpose, and covers all forms of it based upon theinv mtion. Railway Co. v. Sayles, 97 U.S. 554. In the machine of Thompson v. Gildersleeve the anvil was in two parts, one far supporting the wire while heing bent and the other for supporting the prongs while being driven. Both were inclined in shape, and (me retreated in one direction after supporting the wire in being benti'and the other retreated in ihe0pposite direction, supporting the prongs as it went,both making room f-or the crown of the staple. Together these two parts constituted the inclined and retreating anvil of the patent, different in form, but accomplishing the same result in the same wav. In the machine of this case now in question, the part of the anvil which supports the wire while being bent is precisely the same in shape and operation. The other part fills the space between the prongs in width, and supports them on their inward sides, and prevents them from crippling in that direction in precisely the same manner, and retreats out of the way of the crown of the staple in the same way. It does not fill the whole space between the pl'ongsof the staple in height to the crown, and does not support the prongs in that place while being driven. Support in that place is not necessary, and this difference appears to be wholly immaterial. All the support against inward crippling of the prongs furnished isby the same means, operating in substantially the same way. This is 'none the less an infringement, because more support is not furnished, especially when all that is useful is furnished. The conclusion reached,ll:ftergoing over the whole ground again, is the same as that reached :before. ' Let there be a decree for a: continuance of the injuriction, and for an accountjwith costs. .'.
et .al. v.
(Oircuit o.ourt, S. lJ. New York.
Banjos made under letters patent issned April 3, 1883, to E. J. Cubley for improvement in banjos, in whicb the parchment rests directly on a rim consisting of a metal sbell, in form like the old wooden rim, but differing from any rim previously made, and producing by such rim distinctive musical l?roperties, do not infringe letters patent issued May 17, 1873, to C. E. DobSon. for an improvement consisting of a ring, either of metal or wood. to ease the wear of the parchment against the rim, and improve the tone of the instriJment; nor do they infringe letters patent issued November 18, 1881, to Henry C. Dobson, whose improvement consists of a metal ring between the parchment and a rim of wood and metal, and which eases the parchment, as does the ring in tbe first patent, and produces a metallic illusical sound.
Bill to restrain infringement of patent.
Arthur S. Brown and Albert Comstock, for complainants. Edward P. Wilder and Howard Henderson, for defendant.
WAT,T,ACE, J. The question in this case is whether banjos made conformably to the patent to Edwin J. Cubley, dated April 3,1883, are an infringement of the patents granted one to Charles E. Dobson, dated May 14, 1873, and one to Henry C. Dobson, granted November 18, 1881, for improvements in banjos. The banjo of the first Dobson patent containsa dome-shaped ring, interposed between the parchment and a wooden rim. The ring maybe of metal or of wood, and serves to ease the wear which the parchment is l'\ubjected to when the rim has an angular edge, and to improve the tone or resonance of the instrument. When the ring is made of metal, it imparts a metallic tone to the instrument. Ifmade of wood,as it may be by the patent, itia doubtful whether the musical properties of the instrument would be improved. Whether the ring is made of metal or wood, the amount of material used will affect these properties. In easing the· wear upon the parchment what is done by the ring was as well accomplished practically by the wooden rims, which were previously used, havipg the edge rounded where it came in contaelt with the parchment. The banjo of the second Dobson patent has a metal ring formed with two downwardly projecting flanges, interposed between the par.chment and a rim composed of. wood and metal. . The ring is curved at the part which comes in contact with the parchment, and therefore serves to ease the wear upon the parchment similarly.with the ring of the first patent. So much of the ring is out of contact with the parChment that it. has a vibratory movement, and the ring thereby imparts a bell-like tone to the instrument; and the further this free portion extends beyond the pointof contact with the parchment the more emphatic will pe the metallic ringing quality of the sound. Not only is thE' ring an element of each of the claims in controversy in both of the Dobson patents, but its peculiar form is essential in each invention in producing peculiar musical properties of the instru.