FASSETT v.EWART MANUF'G CO. (Oircuit Court of Appeals, Seventh Circuit. May 31, 1894.) No. 145.
PATENTS-DECISION OF PATENT OFFICE-ON INTERFERENCE.
A decision by the patent office in an interference proceeding Is con· elusive between the parties, even if wrong, when no steps have been taken to set it aside. 58 Fed. 360, afIlrmed. The Fassett patent, No. 377,376, for a machine for coupling chain links by an endwise motion, and also by a sidewise motion, being substantially for a combination, with brQader claims, of the machines described In patent No. 347,338, to the same patentee, and in application No. 174,· 962, filed by him, is void. 58 Fed. 360, affirmed. Miller v. Manufacturing Co., 151 U. S. 186, 14 Sup. Ct. 310, followed.
2. SAME-SECOND PATENT TO SAME PATENTEE-MACHINE FOR COUPLING CHAIN
Appeal from the Circuit Court of the United States for the North· ern District of illinois. This was a suit by Nelson B. Fassett against the Ewart Manufacturing Company for infringement of a patent. The circuit court dismissed the bill. 58 Fed. 360. Complainant appealed.
The appellant filed his bill in the court below to restrain the infringement of letters patent 377,376, issued February 7, 1888, for "macbine for coupling chain links." Prior to 1874, outdoor machinery was operated by leather or rubber belting. In that year William B. Ewart invented an attachable link metal belt to overcome the objections found to obtain with respect to leather and rubber belting. The novelty of the invention consisted in the form of the link, it being capable of being made into a chain of any desirable length by atlsembling or coupling the necessary number of links together by a motion, the end bar of one link being forced Into the hook of a companion link by forcing the link sidewise while standing at an acute angle to the link. with which It is being coupled. This Invention was patented on September 1,1874, and its validity sustained in Ewart Manuf'g Co. v. Bridgeport Malleable Iron Co., 31 Fed. 151. About 1881 the complainant invented a detachable chain link, which dilIered from the Ewart link in that it was so constructed that it couId not be coupled with another link by a sidewise motion, but only by an endwise motion. A patent therefor seems to have been Issued to him February 22, 1881, No. 237,967. Prior to 1882 these links were assembled or coupled by hand. During the winter of 1882-3, Mr. Fassett invented and constructed a machine for assembling the links together. and operated the same experimentally in the first half of the year 1883. This machine assembled the links of the chain together by an endwise thrust of the links. In January, 1884, one Eugene L. Howe constructed, and on the 6th day of October, 1884, applied for a patent for, a machine for assembling the links of a drive chain together by a sidewise thrust suitable to assemble the Ewart chain links; which machine was put in operation and publicly used by the appellee in January, 1884, and has been continued to the present time. On the 8th of April, 1884, the complainant, Mr. Fassett, filed a caveat; In the patent office, which he renewed on April 4, 1885, for the term of one year. On the 6th of October, 1884, Mr. Howe filed his application in the patent office for a patent upon his machine. which resulted in the issuance to him, as assignor to the Ewart ManUfacturing Company. the appellee, of letters patent No. 317,790, dated May 12,1885. On the 21st of Au· gust, 1885, the complainant, Fassett, filed in the patent office an application, serial No. 174,961, which resulted in the issuance to him of the patent No. 347,338, dated August 17, 1886. This .patent is known as case A. On the 21st of AQgUst, 1885, Mr. Fassett also filed in the patent office his application, serial No. 174,962, which is known as case B. On the 7th of September, 1886. an interference in the patent office was declared between the Howe patent, No. 317,790, and the Fassett application, case B., which resulted in a decision
FASSETT V. EWART MANUF'G CO.
by the examiner of interferences on February 21, 1889, in favor of Howe, which decision was affirmed by the examiner in chief on October 1, 1889.· and by the (lommissioner of patents, upon a further appeal, on February 21, 1890. By this decision the commissioner awarded to Howe priority in invention of the SUbject-matter covered by the four claims of the Howe patent, and the first five claims of the ]j'assett case. B. This decision has been acquiesced in by the complainant. Case A. was an application for a machine for coupling chain links by an endwise motion. It was an exact reproduction of Fassett's first machine, as shown by his model, with the exception that it is provided with a thrust bar, as in the Howe machine, instead of a sprocket wheel, for push· ing or the chain through the chain channel. This change was made in Mayor June, 1885, after the issuance of the patent to Howe, and its character is thus stated by Mr. Fassett: "The sprocket wheel and ratchet wheel attached together for feeding the assembld links forward through the machine were taken off, and a thrust bar substituted in their place for pushing the links forward In the machine after they were coupled." The further facts touching the character of the invention and claims asserted are sufficiently stated in the report of the decision of this cause by the court below (Fassett v. Manufacturing Co., 58 Fed. 360), to which reference maybe made.
Banning & Banning, for appellant. Kerr & Curtis and L. Rill (L. Rill, of counsel), for appellee. Before JENKINS, Circuit Judge, and BAKER, District Judge. JENKINS, Circuit Judge. We are of opinion that this case is ruled by the case of Miller v. Manufacturing Co., 151 U. S. 186, 14 Sup. Ct. 310. There the patentee filed an application for an improvement in cultivators, consisting of a double-acting spring, the function of which was to depress the cultivators when in' -aerted in the ground, and to lift them when raised above the dead point, the lifting power of the spring increasing as the plow beam rose. Two claims were made, one for the double action of the spring, and the other for the increasing lifting power of the spring as it rose. In anticipation of interference with other pending applications, the application was divided, with a view to obtain one patent for the lifting and depressing effect of the spring, and anuther for the lifting power of the spring increasing as the beams rise; the latter being sought upon the original application, and the former based upon a divisional application subsequently filed. The drawings and descriptions of the two applications were alike. The patent was allowed on the divisional application during the time that the original application remained in interference, and a patent was thereafter granted on the latter for the single effect of inereasing the lifting power. The court, upon a review of the authorities, announced the conclusion reached upon the question of law involved, in the following language (page 198, 151 U. S., and page 310, 14 Sup. Ct.):
"The result of the foregoing and other authorities is that no patent can issue for an invention actually covered by a former patent, especially to the same patentee, although the terms of the claims may differ; that the second patent. .although containing a broader claim, more generical In its character tban the specified claims contained in the ptior patent, Is also void; but that, where the second patent covers matter described in the prior patent essentially distinct and separable from the Invention covered thereby, and claims made thereunder, Its validity may be sustained. In the last class of cases, It must -distinctly appear that the invention covered by the latter patent was a sepa· 'rate invention, distinctly different and Independent from that covered by the
vol. 62.> ,
first- patent; , wP1,'4s, it: must: 00 something substanUally dit'l'erent fromthat comprehenp.l;l(i.ip.,'.tb,e .1irstpatent. It must consist, lnsomethlng more than a mere ,tlle breadth or scope· of the ulaimsof each patent, If the case :w.tllin tAe first or second of the above classes, the patent is absolutely void..
The court then I:Qllserved (page 199, 151 U.S.,a.nd page 310, 14 Sup. Ct.), the pateI).t there involved:
"It clearly appears; tl'QIll: a comparison of the two patents,. and their respective specificatiollsand drawings, that the tirst function or object of the patent of 1879, relating to, the 'lifting power of the spring, is· identical with the sole object or function covered by the patent of 1881, and that the improved device' andromblnati.on tor the accomplishment of the lifting operation are identical in botlj. llQ.tents, 'I'he invention covered by the first patent, as stated III the specification,consists in a spring which serves the double. purpose of lifting or holding down the plows at wll1; and it is further stated that one spring may be adapted to <seJ;ve all, or either one, or more, of the offices above enumerll.tlld. The. patent of 1879 thus embraces both the lifting and the depressing efl'ects or operations of the spring. device, While that of 1881 seeks to cover only the increased Ilfting efl'ect of the same device. The first patent clearly includes the second. No substantial distinction can be drawn between the two. which have the same. element in combination,. and the same spring arrangement andai'ijustment to accomplish precisely the same lifting efl'ect, increasing as the beams are raised from their operative' positions. The matter sought to be covered by the second patent is inseparably involved in the matter emb.raced in ·the former patent, and this, under the authorities, renders the second patent void. If two patents in question bad been granted to different parties, it admits ot np questiontha.t the last would have beeubeld an Infringement of the first, for the reason that the Plltent of 1879 just as cleady includes,asa part of the invention, the increased lifting effect of the spring, device, as the beams are raised, as that disclosed in the patent ot 188;1,." ," . .
the courtsl;lid (pQ,ge U. S., page 310,14 Sup.Ot.): "',l'bls cqncluj110n is. In no, afl'e,cted ·by· tMreservatlon, attempted to be made. ill the 1879 patent, of idea of a lifting spring which acts with increas'ing force as the <beam rises,' forthe reason that the broad idea be ireserved iseriIbodied in identically the same mechanical device constitutiI).g thelnvention and covered by the first patent, which completely oc<;upielil,a;l.l the ,ground that .was·resented. The spring and its connecting apparatusJs the same in each; and the claims of the first covered the dol'il:l1eautomatic a,ctloJ;l,upward, or downward. There Is nothiJ;lg in the spadllcatlon or olaims to indicate that In the first patent the lifting action is in fl;nY degree sllghter or weallier, llSithe beam rises, than in the second patent. On the contrary, both specificattollscle!U'ly indicate that the spring device acts with increasing force 'in eaQh patenta,s the beam rises. In addition to this, it'distlnctly appears that every clailp of the 1881 patent could have been properly incIudedand made a part of the claims of the 1879 patent. With the exception of the first broad claim of the 1881 patent, each of the other claims includes the spring: device, with. the U1llitlng and qualifying words 'substantlally as described,' aD,d, by yirtue. oqts reference to the specification, the lifting elemept of the spring device is shown to be the same in each patent. There is nothing in either patent, or the specification or claims thereof, to inistrongerllftlng action in the one than in dicate that there is.any the other. It is thus shown that one, and the same mechanical device, which covers the entire inventioJ;l, Is descl'ibedin each of the patents; and the efl'ort to secure a second patent on one part thereof, or on its function, after such part, or its action, had been clearly described and covered by a prior patent, cannot be sustained. , To hold,under these circumstances, th,at the first' and second patents, InrespecttQ thellftlng e1fect of the same spring device, present distinct inventiOns, or that. both are valld for the same invention, would, lnvolve the drawing of distinctioU$ too refined for the practical administration oftlJepatent
And "#it4 ·res.Pecttotheclaimed reservation in the first patent,
THE GIDDING STAR.
Applying the principles thus authoritatively announced to the case in hand, we are unable to avoid the conclusion that the result reached by the court below was correct. So far as respects the Howe patent, and the machines made and used by the defendant thereunder, it is clear that the decisions of the patent office in favor of the Howe patent have been acquiesced in by the complainant for such length of time as to work an abandonment of any claim to the invention therein involved. Gandy v. Marble, 122 U. S. 432, 7 Sup. Ct. 1290. It is clear that the facts of this case bring it fully within the principle announced in Miller v. Manufacturing Co., above referred to. Case C. described the same machine as was involved in cu:,;t> A. It contained an exact reproduction of the 10 figures of case A., and a literal copy of the descriptive part of the specification, and, in addition, two figures (11 and 12), taken from case B., illustrating the operation of the side-thrust motion. In other words. case A. describes a machine for coupling chain links by an endwise a morion. rase B. describes a machine for coupling the sidewise motion, and case C.-being the patent here involvedCOl'el'S machines for assembling chain links by an endwise Illotion and ahw by a: sidewise motion. It is substantially combination of case A. and of case B. The most that can be said for it is that-as asserted by Mr. Fassett himself-the claims in case C. are broader in their purport than those of case A. But it is only a second patent, and a broader patent, upon the principal subject-matter of case A. We are unable to distinguish this from the Miller Case. As was well asserted by the learned counsel for the appellee, in both cases there is a prior patent for the same machine, but with more limited claims; in both all the claims of the second or broader patent might have been predicated upon the earlier patent; in both the validity of the second patent was contested because of a reservation in the earlier patent; and in both the second patent, if valid, would have the effect of prolonging the term of monopoly of the machine for which the earlier patent was granted. We think the matter so clear that further consideI'utioll of the subject is not required. The decree will be affirmed.
THE GUIDING STAR. WILBOUR v. HEGLER et aI. (CirCUit Court of Appeals, Sixth Circuit. May 8, 1804.) No. 111.
CARRIERS-AcCEPTANCE OF GOODs-BILLS OF LADING.
The agent of a steamboat line signed a bill of lading for cotton as shipped "on board the good steamboat called - - , or any other boat in the employ of same line," the name of steamboat being left blank, Held, that the rights of parties under it were not affected by Act Miss. March 16, 1886, making "every bill of lading acknowfedging the receipt" or goods conclusive eVidence, in the hands of bona fide h'olders, that the goods were actually received for transportation, as there was no acknowledgment of the receipt of any cotton, or its shipment on any named boat.