81 FEDERAL R'EPORTEIL
t!omestic market, "any advantage o.ver another, who Imported the lame merchandise or metals for immediate consumption, and refined them in a smelter not bonded. There can be no doubt that such would be the effect of the decision of the board of J!;eneral appraisers. The owner of the bonded smelter would pay only upon the net weight of the refined product, while his competitor would be obliged to have the duty assessed against the gross weight of the imported article. I am of the opinion that the rate of duty assessed under paragraph 166 of the act of August 27, 1894, must be the same for all, and that rate the one named therein. viz. one cent per pound upon the gross weight of the imported metal. I find nothing in section 21 of the act of congress of August 27.1894, under the regulations prescribed by the secretary of the treasury, as set out in Synopsis 10,585, which authorizes any allowance for wastage, and the consequent assessment of duty only upon the weight of the refined metal withdrawn for consumption. It follows, therefore, that the decision and assessment of the board of general appraisers in this matter must be reversed, and the duty as levied a.nd assessed by the collector of customs at the port of Newark, N. J., affirmed.
GINDORFF et aL v. DEERING et at. (Circuit Court, N. D. IDlnois. March 1, 1897.) 1.
The mere manual transposition of an article which Is being operated upon by a machine, so as to present another part of It to undergo a like operation with that just completed, does not, when superadded to the functions of the machine, constitute a process or method of treatment such as is contemplated by the patent law. Locomotive Works v. Medart, 15 Sup. Ct. 745, 158 U. S. 68, applied.
BAME:-INVENTION-DUPLICATION OF PARTS.
An adaptation, which In a certain sense Is only a duplication of parts which seems simple arid obvious after It is once done, may be· held to constitute patentable Invelltlon, and the need of some such device bad long been recognized and vainly sought·
.. BAME-SERRATORSFOR BICKLE SECTIONS.
The Gindorlr patent, No. 524,965, for a serrator for sickle sections, 1u:la valid and Infringed as to the combination of claim 1, and void for want of patentability as to claims 4 and 5, which purport to cover a process.
& 00. for alleged infringement of a patent. Barton & Brown, for c<mlplainants. Banning & Banning, for defendants.
.. .This was a suit in equity by Matthew Gindorff against Deering
GROSSOUP, District Judge. The bill is to restrain infringement of letters patent No. 524,965. illSUed to Matthew Gindol'ff, August 21, 1894. The defendants challenge the validity of the patent, and de· ny infringement. The invention relates to serrators for sickle tions. The patent describes the previous art as follows:
Heretofore machines for this purpose have been constructed with a chuck adapted to hold In pOsition a sickle section, Ii: ptilr of machine-actuated ham·
GINDORFF T. DEERING.
mers with knife edges, being located one upon eithersl4e ot the section, and adapted to repeatedly strike the beveled edges thereof whlle beIng moved step by step from one end of the edge to the other, whereby II series of parallel Indentations are formed In the beveled edges of the sections, the ends of the raised portion of the edge between the Indentations projecting beyond the ends of the indentations to form teeth, which constitute the cutting edge of the sickle section. The hammer starts from the base end of the edge and travels toward the poInt of the section, and, as the hammer; would meet before the edges were completed If actuated simultaneousl;r, It has been customary to actuate one hammer at a time, thus entirely completing one edge of the section, and then, after the hammer has been returned to Its original position, the second hammer Is started, and completes the other edge.
There had also been previously an arrangement of machinery whereby two Chucks, each adapted to a single sickle section, were placed about three feet apart, and the hammers actuated by mao chinery as described above, and worked simultaneously upon the edges of these sections. The complainant relies upon the first, fourth, and fifth claims, which are as follows:
(1) In a serrator, the combination with a chuck adapted to maintain two sections In position Elide by sIde, of a serrating tool adapted to be moved along the outer edge of one of said sections, a second serrating tool a.dapted to be moved along the outer edge of the other section, and means for simultaneously movIng said serratIng tools from the bases to the tips of the respective sections, or vIce versa, substantially as descrIbed. (4) The method of serrating sickle sections, whIch consIsts In maintaining the sections In position side by side, serrating the outer edges by machIne-actuated serrating tools, transposing the sections, and then serrating In a similar manner the outer edges of the transposed sections, substantIally as described. (5) The method of serrating sickle sections, which consists In maintaIning the sections In position sIde by sIde, simultaneously serrating one edge of each of the sectIons by machlne·actuated serrating tools, transposIng the sections, and then sImultaneously serrating In a simllar manner the unserrated edges of the transposed sections.
The two last·mentioned claims are process claims. It is my opinion that under the case of Lpcomotive Works v. Medart, 158 U. S. 68, 15 Sup. Ct. 745, these claims cannot be sustained. Except for the described functions of the machine, there is nothing more stated in the patent than the fact of a manual transposition of the sickles after their outer edges have been serrated, so that the inner edges may undergo a like operation. Such transpositions, superadd· ed to the functions of the machine, do not make the treatment a method, or process, or art such as the patent law contemplates. The first claim is for a combination, and depends upon whether the element of the combination described as a "chuck," adapted to main· tain two sections in position side by side, is novel and patentable. Its novelty is not denied. The only serious question is whether it evinces invention or merely mechanical adaptation. It is, in a eel" tain sense, only the duplication of the old chuck, and seems very simple and obvious; but it must be remembered that the simple chuck was in use for many years, and that the need of some device whereby the two edges of the section could be serrated at the same time had been long felt and recognized. If this chuck were obvious to mere mechanical skill, why had not such skill, already caned upon, supplied the need before? I fear that under these circumstances, were I to hold it mere mechanical adaptation, I would be considering
81, 'FEDERAL REPORTER.
ri:J.yselfawiserand better mechanic than those who for years had overlooked this method of accomplishing a desired result. This opinion is re-enforced by the fact that the defendants themselves, immediately on their attention being called to this device, recognized its value and importance, and began negotiations for its acquirement. It seemed, doubtless, to them an important improvement, long needed, but long overlooked. It is original conception, not skill, that supplies a remedy for a defect lonK, but hitherto vainly, looked for. The proof satisfies me that the defendants have used the c()mbination described in the first claim. A decree may therefore be entered in favor of the complainants upon the first claim, and dismissing the bill as to the fourth and fifth.
MONROE v. McGREER.
(Olrcult Court, S. D. Iowa. E. D. August 14, 18G7.) No. 199. L
PATENTS-INTERPRETATION-SPEcu'ICA'rroKR AND CLAIMS.
The claIms, and not the specIfications, L.e the measure ot the patentee's rights.. The specIficatIons may be consulted to explain or restrict the claims, but not to expand them.
The Monroe patent, No. 481,636, for an Improvement In well-boring apparatus, construed, and held not Infringed as to its second clalm.
This was a suit in equity by Daniel L. Monroe against John McGreer for alleged .infringement of a patent for· a well-boring apparatus. On final hearing. John E. Craig and J. Ralph Orwig, for plaintiff. Casey & Stewart, for defendant., WOOLSON, District Judge. Plaintiff is the patentee and owner of letters patent No. 481,636, for improvement in well-boring apparatus, granted August 30, 1892. The charge herein against defendant is based upon infringement of the second claim of such letters. The defense interposed denies that plaintiff first invented the wellboring apparatus claimed in his letters patent; alleges that said apparatus had been in public use by sundry persons for more than two years prior to plaintiff's application for said letters, and names the said persons and places; denies that the said alleged invention covered by letters patent was an invention; denies defendant infringed said letters patent; and specific denial is also made as tl} particular allegations on various points contained in the bill. Evidence has been taken and filed by both parties on the various points in issue, particularly as to the alleged prior public use. etc., of said apparatus by the persons named in the answer and amendments thereto. I do not deem it necessary to enter upon the consideration of this evidence as to prior public use, and the rights of the parties thereunder, as, in my judgment, the case must be decided on the letters patent and the evidence as to the tools or apparatus