inequitable, atlYlllltage by J;lroader. claim or: a narrower claim? The complainant here seeks to do by a narrower claim (assuming it to be what other complainants have vainly sO)1ght to do by an expandeqcl,l:\im. It cannot.bedollbted that the is as inin tbe one case' as in the other. In both cases the patents, after years of acquiescence, and in the light of subsequent events, are manipulated to grasp devices which the originals could not lay hold of. this to be lnany: v,}olates the spirit ofthe law. As these .views disposf;), case it IS qot necessary to. 90nsider the other d.ef!mses. The bill-.' 'dismissed, with costs· is ., . .. ' ,
PHILADEr,PlltA'NoVELTY MANUF'G (01lrcuit
oou:it-s. D.NeW York. ji;
1.PA:TBNT8 POlt'!NVENTJONS-'-J!lnoIlNT OP: Ct;A'f1f-PRTOlt ART-INPRINGBIIfBNT.
1880; to Isaac'W. Heysingerfor a device for,fiJiyg and binding PAllers·. if sllstainable at aU, must, in villW of tJ!,eprior state of Jbeart; be limited to' structures shown and described; ,Imd. 1's the'f!.rst'claim'18 for a 1l.Iingblip compo!lelJohclamping arm and abase, th'e former:being(pro-vided with'k beel,:which holds tbe arm locked.wbien 'open, the heel ,is 1j,l\41tllere is noinfrin,:rement where this is lacking., chinetor,lDsertlDg viouSly the result of
2. BAIIfE-NoVIWTY+ioMEca&NICAL 'SXILL.
April 8, 1883,.to Wo', for a ma.qli\lohlDg are VOid ,as ooverlng Improvements obmechanical ,skill.
InEquity. Billb'y,ihe Philadelphia Novelty panyagainst AlbertusA. Weeks for infringement ,of patents. hearing. Bill dismissed. Joshua Pusey, forcomplttinant. Hector T. Pinton. for defendant.
COXE, District, Judge. This s'<ltion is, based upon two letters patent. granted to Isaac, W. Hey;singer and by him assigned to the complainant. The first, No. 226;402, is dated April 13, 1880.' and is for a devicefor:filing and papers. The second, No. ,274,941, is dated 3, 1883,and is fora machine for inserting and clinching staples. Both, patents relate to tools for papers together, which are adapted for use upon the: desks of lawyers and conveyancers. The defenses are the usual oues"""':"lack ofn,ovdty and, invention, aggrega· tion and noninfringement. ItisJreely admitted by the complainant that the ,patentee was compelled, by reason of the prior art, to move within narrow limits.; ,Tools yerysimilar to, his, o:perating in substantially the same man.ner and producing the same flesult, were in use at the date of his patents. " The complainant's brief,after considering pre-existing structures; cO,ntains the following:
PHILADELPHIA NOVELTY. MANUF'aCO.
.. Therefore, .the. Heysinger tool. broadly considered., is not new. the improvementsbeing of the specific character described in the specification and pointed out by the claims. whereby certain minor advantages or conveniences are secured which are absent in previous tools of that general class." By this frank admission, which is but a fair statement of the situation as established by the proof, the consideration of the patents is limited to SID;a.U matters of detail which it is said cheapen the patented tool and make it more convenient for handlinK. It is veryc]ear thlltthe claims of the patent of 1880 must benarrow]y construed if. they areto be all. .The first claim c()yers a paper-filing clip with a guide slot for the staple driver and a recessed clinching lflnvil beneath the slot. The clip is .composed of a clamping arm and a base, the .former being provided with a heel,which holds the clamping arm locked when open. The specification also descril1es a pin on the base plate for holding. the papers, but its use is made optional. It is not an .essential ingredient of the claim. The heel, however, cannot fairly be omitted. froUl the claim. It is a part, and an important part, of the: clll:mping arm, expressly made so by the drawings and description. Without the heel the clip will not oper:atein the manner designated. :Moreover, in order to all misUnderstanding, the Pl,lt:ent of 1883 limits the patent of 1880 to a spring clip having a heel from which pofor holding tile -arm,: when open, ina locked sition it is released by pressure on the sloHed end, which then falls with a snap upon the papers and drives them down upon the pin before referred to. Conceding that the prior art permits a broad construction, the court would hardly be justified in omitting a part which the patentee has taken such pains to describe a!:l an indispensable element of the claim. The defendant does not use the heel. The second claim; is for a detachable' staple driver and the third claim is for a combination ofthe clip of the first claim and the staple driver Here, too, the claims must be limited strictly to the structures shown and described. So limited, the defendant does not infringe. The defendant's staple driver is made in substantial conformity to the tool patented to William J. Brown in ] 879. At least. it is much nearer the Brown device than the Heysinger device. It is unnecessary to refer in detail to the many differences between defendant's device and the dt:vice of the second claim. They are notrfl,dical, and relate to. minor mattera of construction, but they are amply sufficient to differentiate the two in an art already crowded to repletion. Of course, if the first and second claims are not infringed, the third cannot be. Regarding the patent of 1883 but little need be said. The first, third and seventh claims ,are pointed out in the complainant's brief as embodying the substantial features of the patented improvements. I cannot think that these claims cover patentable structures or combinations. As already noted, the field of invention. even in 1880, was a limited one. In 1883 it ,was still further circumscribed. Heysinger and others had, in the meantime, crowded in and left very little space v.521f.no.9-·52
.. , '. of'1880 there was no tob,tn Xbt iPIprovements which are only 9.f. form I;1.S, to ordinary workmen. ,F?r instance, ring swples, four-prong staples and other staples, varying ,in fdrm, were':very old. It wo.s'6bvious that many of these on the anvil could not be driven, thrdugh the oblong' shit M the 1880plltent. ItWo1:ild naturallybbtmiO ton meohanic who had been llccustqmed to drive round bolts through round 'holes to make the holesquarEfi!'be were ,a' square, b'61t ',to 'drive, So one familiar with the proCessor driving staples throti1thp,aper'would Bee at once the impossibility :of'making'a' cruciform, fasteningthi-6ugh an oblong slot. lfhe, Wisped the lltaplesto:ctosS'l;1.t right angles' he "'ould naturally make a:cfo$8"'shllPed: 'I.dot and 'clhichinK base. If 'he wished to use a staple with ring he' would at once 'see 'the necessity of making room tor thEfring to pass!; 'Such changes seem so perfectly obvious that heWhQ': xpade them would require' 'no assistance from the prior art. ' If, hdwe1er,' he nee<lMadvice, he had only to turn to the Magill and other' patentll to' find theinformation<:readyat his hand. Conced· ing that the :patent in hand shows impro,Tements over the patent of 1880, they are n6t improvements whichthe'law recognizes as patentable; they maybe' more theYI>etforni no new function and produce' 110' JIew rtl$ult. bill isdisriiissed,with coatI!!.
! "', '
BERGNlllR' et al.
, 'Design patent No. 2O,S47,lSBuetl November 211, 1890.. to Frederlok Bergner, for an album case: set upright on, lIond;h$vJng QUi ;tll extllrior ",noval,ornamentalfJ;l\me, ,withan is t\1Il"patentee invented neither the album case nor the otlih'mental frame, but merelY'eoneeived the idea of placing ,the ornament, on the ClJ'8tl;alid, th!ljI oonception is I:!<It patentabllil, for,the statute 9nly prov!qes fol:' patentllpndesigns for of and for ornaments to.beplaoed upon or'workedtnto suoh artioles. '
In Equity. Suitby FrooerickBergner and others against Isaac Kaufmann and others for infringement of a patent. Bill dismissed. W. P. Preble, Jr. j fot'orators. , A. fl. Brie8en, for defendants. WHEEi.ER,District 'Judge. This suit is brought upon design patent No. 20,347 I dated November 25, 1890; fbr an album case set on a baseboard in an upright or neatly v rtical position,' having on its exterior all oval, ornamental frame 'withan:open center. The defendants put dimond-shaped such ornamental borders, on similar album cases. This style of album case is not new. The patent therefore must be held to be for an ornament upon the case as an article of manu-