. X>UG.!N
v. GREGG'· .
221
DUGAN
(Oircuit.Oov,rt,
S. D.
Nco.t1 Y01'1f, NovelI1\)er 16, 1891.)
t.
. 1/ined booli and index so a.t'!'lWged by uniting one edge of the QOver, leaf of the in. dextothe o·uter edge ot one of the leaves of the book, that.'the index may be withdl'Q'Wn·from between the covers of the book and again retilrnf'd to its place, without turning the pages of the book or losing pl&96, involved a patentable invention, and not a mere mechanical adaptation.
SAME-CON8TBUCTION OF OUIM-INFtlINGEMENT.·
. The claim was for ."the combination, with a·b<Iokprovided with a leaf, 0, free of the book-cover, to its rear edge, " of an index by itp co,VE\r·leaf to loaf,.O. In thespecifteations the patentee says: "The book W.ill pre.ferably be p.roVlded wl.tli a speOialleaf. of considerable strength, and bonnd or united firmly to the bO* cover, B, 'tt the point, A, or at IIuch a point distant from the. edge of the cover, .B, as will prOvide room enough to rccei the index when folded there between." Held, ttJat the claim should be construed to mean that the le"'f,'O, should be fre.eot the boo'k-covllr to the leaf'srllBr edge, and not to the rear edge,; ,and. hence an index connected with a leaf which is united to the .Dook-cover some diatance.frQm the cover's rear edge constitutes an infringement.
In Equity. Suit by George Dugan . fringement of a patent. . Edwin H. Brown, for complainant. Francis Forbes, for defendant.
Thornton F. Gregg for in-
COXE, J., This is an equity suit forth.8 of letters patent No. 383,543, granted to Robert M. Rigby, May 29, 1888. and by him assigned to the complainant. The invention relates generally toa combined book and index where the index is independent of the book, but combined with it SO that both can be referred to at the Same time. The object of the inventor was to connect the two so 88 to facilitate a more ready arid convenient handling thereof. This is accoml'lished by "uniting one edge of one of the leaves of the index to the etige of one of tlle leaves of the book, whereby the index may be confined or withdrawn from between the covers of. the book after reference or other use," The advantage plaimedfor the invention is that at any time the index may be pulled out beyond the bqok by a simple movement of one hand and to its position in the book withoutn6returned by the same cessitating the turning of any of the pages of theb()ok und without losing the place in the book which the reader is consulting. The claim is as follows: '
"In a combined book and index. the combination, wIth a book prOVided with a leaf, C, free of the book-cover. to its tear edge, of an index provide<J with a leaf or cover, F, the free edge of the latter beingftexibly united to the free edge of the leaf, C, wbereby the index is independent, of the book-cover and may be inserted and confined betweentbe book-cover iand tbp leaf, 0, with the front edges of its leaves outermost, SUbstantially as described."
The defenses are non-infringement and lack of novelty and invention, Rigby's contribution to the art was a simple one', and yet he accom" pUshed a useful result in a better way than it had been done before. As defendant's expert puts it: .
FEDERALREP()RTER,
vol. 48.
"I lInd that to facilitate the ready handling of the index it can be with· drawn from between the covel' and Jeaves, or inserted therein without necessarily handling the book or turning 'its leaves."
This is the inventroniu a nut-shell. 'rhe invehtbr's aim was to provide a simple and inexpensive mode of connecting the index with the book so that the user,;by two simple motions, of one hand, can pull out and open the ind.,e:lt'"and, after ,examining by a similar' operation, to its' place. In' this aim he succeeded. course books, and books combined with were butnothing in the prior art anticipates the combination of the No one before attached the outer edge of the cover of the index to theouteredgeof a leaf of the pook.The qfDral\et, Tebbetts ail:9 Mc:Qi:111a1d, 'if made now fOT"the first time,' would. not infringe.'Phefeature which gives Rlg:by's device its ptifnoipalclaim to, noveltyis wanting hi !ill of these The complainant's expert referring to these prior ",tructures says, and I thllt!n, no one of them ',' is the free, edge of the cover leaf of the index secured to the."fl'ee edge of a 'leaf connected at its inner edge with the book, and no oue of the structures described is capablli' ofoeihg drawn:6tit or pushed'in' without opaning the book to any . extent, and also when so drawn out of having its'leaves turned and'inspected without covering the book, the leaves of the book, while the book can be inspected and its leaves turned without disturbing the leaves of the inde;x." . ....." .·1'heA.Uestion of is)l0r,. 59 o,lear. ':The invent,ion is,' cer7 npt; a great. " It ,IS not,zuanr-,;degre,es ren,lOved. from leal yet 18 l11gemou,s a.rrangement pomtea ol1t in the,patent wouldJ.}othave to th,e slplled workman. To pro-ct.u'9,e:i(requireq ,()( t1"le fl1ent/11 faculties. , It involved invenbon. Magowan Co., 57 o. Q. 845, 12 Sup. Ct, Rep.71. The question ofitlfrl!J.penierit upon the constru'ction of the has apalent, No. 4'32,700, for a for the ind'6!it' the of ihel:>Rc'it. cover of the book. .The by ?,iti1.. bOOk,. with an as In hl$patenf lsconcedM. The leaf to whICh hIS Index 11'\ attached IS ilbtHotli\a into' the book like the other leaves, but is gummed to the ofthe a(apoint a1)out half atf' inch jfr?m the rear edge of the coVer; . If tbEfcHiim'requires 'that the leaf 'Shall be free of the cover all the' to the edge the defendant's 'book does not .. does if the requires only that the leaf sha:1Ybe free of the ¢.o'Ver to. the, leaf's rear edge. The defendant contliat the languagJ;r:elatirig to' the leaf, G, must be construed as follows:gA le<tf, C, free of the book,cover; to the rear edge." The (jomplainant insiste, that the following is the, proper construction. "A leaf, C, 'free, to' its edge,of the book-cover." I am convinced that ·the'latter is the, propel" Col1strllctiou both from a gramm::ttical l\nd equitable point ofview· 'The idea might have been 'more dearly eXpressed" but, therq ia.litt}e' dQubt as ,to the, ThesUbo: ject he is considering is the leaf, C. He parenthetic.-
or
xo'
way
in-
M'GILL V. UNTVERSAL PAPER-FASTENER CO.
229
ally, to describe it as a leaf which is free all the way to its rear edge of the book-cover. The subject is not changed. At all times it is the leaf, C, and not the book-cover. Moreover, the limitation suggested by the defendant was not required by anything in the prior art. It can hardly be presumed that a rational inventor would place such an unnecessary restriction, voluntarily, upon all already narrow claim. But the subject is not left to ptesumption. The specification repeatedly makes allusions which are wholly inconsistent with defendant's construction; For instance, the patentee says: "The book will preferably be prOVided with a special leaf of considerable strength, and bound or united firmly to the book-covers, B, at the point, a. or at such a point distant from fhe edge of the cover, B, as will provide room enough to receive the index when folded there between. as in Fig. 2." The location of the point of contact of the leaf, C, to the book is not of the essence of the invention. There is no reason for locating it at the one point suggested by defendant. If the index happens to be smaller than the book, and the leaf,C, is attached as defendant says it must be, the leaf will buckle, the index will be hidden and the whole will become inoperative. If the leaf, C, must be fre!" of the cover from the front edge to the rear edge of the cover, it cannot be attached to the cover at all. To construe the claim thus narrowly is to put a premium An infringer wOIlld upon infringement and render the patent escape by simply pasting a narrow strip of the leaf to therear edge of the cover. Even if it be conceded that the language is doubtful it would still be the duty of the court to resolve the doubt in favor of the patent by placing a liberal and reasonable construction upon the claim. The compla4Jant is entitled to the usual decree.
McGILL t1. UNTVERSAL PAPER-FASTENER
Co. etal.
(Oircuit Oourt, N. D. IUilW(.8. July 18, 1891.)
1.
PA.TENTS FOR INVENTIONS-NoVELTy-PAPER-FASTENERS.
Letters patent No. 162,188, issued April 20, 1875, to GeorgeW. McGill, for an improved metallic paper-fastener made by placing two blanks witb semi-circular heads, back to back, and bending a metallic cap over the beads so as to bold them together, the shanks being in close parallel contact, and pointed at the ends, so to make but one hole in tbe paper, is void for want of novelty, it appearing tbat complainant used such caps for two years before he applied for the' patent, and that substantially the same device is shown in a patent issued to one Gilford in May,1870. . Claim 1 of letters patent No. 887,182, granted March 2, 1886, to George W. McGill, describes a paper-fastener made from a blank, which is split lengthwise from both ends, leaving a narrow connecting neck, the parts being then folded over back to back, and a head made by bending over the parts above the neck; and. also haVing one shank shorter than the other, for convenience in separating them after they liro;'l passed through the paper. that this inveQtion was anticipated by: the Pac.ll: & Van Horn patent of November 28,1875, the Lindsay patent of January 25, 1876, and patent No. 199,085, issued to McGill January 8, 1878. ..
8.
SAME-ANTICIPA.TION.
