WESTERN ELECTRIC MANUF'G CO.
(Circuit Court, D. Connecticut.
December 12, 1881.)
LETTERS PATENT-TELEGRAPH WIRES-OLD PnocEss-NEW USE.
An application of an old process to a new use without substantial alteration or change is Dot patentable. Reissued letters patent Nos. 6,954 and 6,955, dated }l'ebruary 29, 1876, and granted to the Western Electric Manufacturing Company, as assignee of Joseph Olmsted, for an improvement in inSUlating telegraph wires, the invention consisting in the discovery that compression of the paraffine into the pores of the fibrous covering by any well-known mechanical appliance would be advantageous, are void for want of novelty.
In Equity. Wm. D. Baldwin. and George P. Baront, for plaintiff. Wm. B. Wooster, for defendant. : SHIP;\IAN, D. J. This isa bill in equity, founded upon the alleged infringement of two reissued let,ters patent granted to the plaintiff, as assignee of Joseph Olmsted, each for an "improvement in insulating telegraph wires," and dated February 29, 1876, and respectively numbered 6,954 and 6,955, and being reissued in two divisions (one for the process and the other for the product) of a patent granted to said Olmsted on July 23, 1872. The specifications of each reissue are the same, and accurately describe the patented improvement upon the method which was then commonly used for insulating office wire. The entire descriptive part of the two specifications is in these words:
.. The method of insulating now in use consists in oraiding over the wire a fibrous covering, after which it is dipped in wax, for the purpose of filling and closing its pores, and after a subsequent scraping, to remove the surplus wax, it is ready for This method is, however, objectionable, inasmuch as it leaves the covering in a very rough amI soft condition, and fails to secure perfect insulation. In my improved method, after the wire has receiyed its coating I dip it in paraffine 01' wax, after which, instead of scraping off the surplus coating, I pass the whole through a suitable machine, which compresses the covering, and forces the paraffine or wax into the pores, and secures perfect insulation. By so compressing the covering, the paraffine or wax is forced into the pores, and the surface becomes and appears polished. Wire insulated in this manner is entirely impervious to the atmosphere, of greater durability, and less cumbersome than any heretofore made."
The claim of the process patent is for "the method of insulating telegraph wire by first filling the pores of the covering and subsequently compressing this covering, and thereby polishing its surface, substantially as described."
WESTERN ELEOTRIO MANU'FGCO.V.A.NSONIA BRASS & COPPER CO.
The claim of the patent for the product is for "aniusulatedtelegraph wire, the covering Of which has its pores filled and its surface polished, substantially. as described." The defect in the article coated with uncompressed paraffine was a leakage of electricity, which was probably owing to the shrinkage of the paraffine in the interstices of ihe fibrous covering while tne meited paraffine was cooling. The paraffine which was compressed while in a plastic state was thereby forced into the interstices of the fibers and ' . the defect was obviated. The defendants make and sell telegraph wire, which they say in there answer is "covered by braiding over the wire a fibrous after which it is dipped in a preparation for the purpose of filling and closing the pores; after which the same is sand-papered and rubbed, and passed through revolving dies, for the purpose of scraping off the surplus material, and consolidating and smoothing the surface of said rema,ining covering." They further admit that both paraffine and wax are component parts of the material which is used for insulating their wire. I shall spend no time upon the question of infringement, which I think was clearly shown. The utility of the plaintiff's article was also proved. The important question in the case is in regard to be patentability of the improvement, which consisted in compressing the plastic paraffine, by suitable machinery, after the fibrous covering and the paraffine had been applied. The mechanism for compressing was $0 well known that a description was unnecessary. The invention consisted in the discovery that compression of the plastic paraffine into the pores of the fibrous covering, by any well-known mechanical appliances, would be advantageous. It did not consist in the discovery that covering with paraffine or wax would be desirable, for wire covered with ,braided fibrous covering and dipped in wax was in common usc; but the invention simply related to the substitution, in place of a mere scraping off of the rough clots of wax, of a pressing operation for forcing the insulating material into more intimate contact with the fibrous material, and, so far as the product is concerned, the invention related to a wire insulated and polished upon its surface, by means of compression of the waxed covering, as disting'lished from the insulation and surface which was the result of non-compression of the same covering. Dundonald's British patent of 1851, No. 13,698, declares that he employed "bituminous material to cover and thus insulate the con-
ducting wires of electric telegraphs which are intended to be placed underground. · · ." He further says:
"The encasement of this wire with bitumen may also be effected by covering it with a filamentous material, which has been previously saturated with melted ,bittlmen, and then pressing the wire so covered through a heated die or orifice, so as to melt or soften the bitumen upon the filamentous material, and press the whole of the coating against tbe wire in such a way as to cause it to form one compact, continuous covering of the wire, and thus insure ita insulatiou. "
The same general process of compression is found in Bandorein's British patent No. 933, of 1857, for electric conductors. The specification says:
.. The wire is passed through 8 bath of hot bitumen, and has the superfluouil matter removed by passing through suitable dies or parts to scrape and smooth its surface, and render it of uniform thickness. The first and second ribbons [Which are strips of material to be wound on the wire] are also passed through bituminous or other suitable matter to render them more impervious to electricity. The coated and lapped wire is passed through suitable dies to remove superfluous matter, to smooth down the lapping of the ribbons, and to compress and cause their proper adhesion. tt
It thus appears that the process of compression had been us,ed, for some years before the date of Olmsted's patent, in the manufacture of electric telegraph wire previously covered with cloth and then coated with bitumen or fatty substances, and having been so used, there is no longer patentability in compressing the paraffine covering of a wire coated with fibrous material. The pat.ented process "was simply the application by the patentee of an old process to a new subject, without any exercise of the inventive faculty, and without the development of any idea which can be deemed new or original in the sense of the patent law." Brown v. Piper, 91 U; S. 37. The patentee took the process of Dundonald and of Bandorein, which they had applied to bitumen, and applied it to the wax covering which was in common use, and had been found to be superior for certain classes of wire to any insulated covering which haJ been previously used or suggested. The old process was applied to the new use without substantial alteration or change. The process patent not stating a patentable invention, the product patent is in no better condition. The bill is, dismissed.
(District Court. N. D. Itlirwis December 12, 1881.)
1. STEAMER WITH A TOW-SAILING RUI,ES 20 AND 21.
Where there is ample sea-room to make every maneuver necessary to insure safety, a steamer with a tow is bound by sailing rules 20 and 21 of section 4233 ofthe Hevised Statues-which require a steam-vessel (1) to keep out of the way of a sail-vessel, when the two vessels are proceeding in such directions as to involve risk of collision; (2) when approachin!l; another vessel S(l as to involve risk of collision-to slacken her speed, or, if necessary, atop and I'everse.
In Admiralty. Schuyler et Kremer, for libellants. Richberg et Kniep and McCoy rt Pratt, for respondent. BLODGETT, D. J. This is a libel by the owners of the schooner Grace A.Channon, for damages by a collision between the schooner and the steam-propeller Favorite, on the waters of Lake Michigan, on the night of August 2, 1877, whereby the schooner and her cargo became a total 108s. It is claimed by libellants that the collision occurred by reason of the negligence of those in charge' of the steamer in not keeping out of the way of the schooner, while the respondents, the Kirby-Carpenter Company, owners of the steamer, insist by their answer and proof that the collision was so far contributed to, if not caused, by the negligence of those in charge of the schooner in not keeping her on her course, as to relieve the steamer from liability; and also that the steamer, being encumbered with tows, is notgoverned by rules 20 and 21 of section 4233 of the Revised Statutes of the United States. The undisputed facts material to the issue are that on the night .of the collision, the schooner, in pursuing a voyage from Buffalo to Chicago with a cargo of coal, was between Milwaukee and Racine, along the west coast of Lake Michigan, about nine miles from land, and the steamer was bound from Chicago to Menominee, light, with three barges in tow, also light. The wind was from west to west by north; the night clear. The schooner and steamer each had their proper lights burning, the steamer having two bright white lights burning at her mast-head, to indicate that she was towing other vessels. The sailing rules involved in this controversy are:
Rule 4. "Steam-vessels, when tOWing other vessels, shall carry two bright White mast-head lights vertically, ill addition to their side lights, so as to distinguish them from other vessels," etc.