366

FEDEltAL Rji:PORTER.

i GUNN, Trustee, and others' 17. SAVAGE and <i>thers.
(Oirouit Oourt,

:PATENTS FOR INVENTIONS -

March 8,1887.)

DRAWINGS SUPPLYING

OMIssioNS. . , ,, ' ., Where one part of an invention is proper1y described, and the: secqnd part isno,t alluded to in tbewritten or 4escriptive part of tb,e specificll,tion, but is sb,own in the drawings,andtbe secondcIaim IS broad eMUgh to include the seco.nd portion of the invention if it bad been properly described in the specification, the drawings cannot. supply the entire absence of written descrip.tion; enable the second claim to. be so construed as to include the omitted portion 9f the invention, . ,

CLAnlS.,...., Sl'ECIFICATIONS -

In Equity. ..' S. Parker and (}harle8 E; PerTcin8, for plaintiffs. MarCl.i8 H. Holcomb and Oharles E. MitcheU, for defendants. : -;" , ,
... .

.-

J,' This is a billin which is founded upon the alleged ofletters patent No. 314,189 and No. 31,4,192, each dated MarchJ7) 1885, and each Pearce; the first-mentioned being for improvements in dies for forging ox-shoes, and the second beingJ(l;ran improved method of forging ox-shoes. The second patent qies of the first is foitQ;emethod of making sb,oes by the use patent:: ,l\s the decision of thi& depends, in my opinion, nponthe to be placed uponN'().'314,189, it is important to give in full t4esubsumtial part of tbe, specification, wbich is as follows:
SHIPMAN,

,:J'rhe'desi¥o ,of my invention is enab!e. to be qUlqkly. /lond cheaply produced by tnl!anS of dies, to whIch end said InVentIOn consists principally in theconstrtlction of the dies, num bel' of shoes tnay be f6rgedat one heat from a bar. BUbtantiallY' as ahd ,for the purpose hereinafter shown. It consists. further. in the series of dies used for forging I/o substantially as and for the purpose hereinafter set forth. It consists. fin;)Jly. iJ;).combining with the fqrging (}ies, as shown, a trim;ming die adapted to receive, sprue-connected blanks and to trim from each the surplus metal, substantially as and for the purpose hereinafter specified., : ' . . ..Iuthe carrying into l!ffect of my,invention I make use of two forging dies. A and B. which for convenience; arE(:formed within one block of metal, and are arranged side by side,but may, if,d!lSired. b,e formed !3ep.arately The first of said dies, A. has the general ap.d shape of the desired shoe·. C, but is Without. IljelJ,ns for forming the nail groove, while said second die, B, has the exact size and shape desired, and is provided with ,a A·shaped rib, b, which operates' to produce the said nail groove, c. in said' shoe. In practice I/o straight bar of iroIl'lll heated and placed over thedie,.A:, :in substantially a line with the tranverse centers of the calk-recesses. a:and aI, in which position to the action, plain-faced die, and caused to fill the ,caviti,es of ;said die,,;A. The partially forged shoe.·. C, is now placed Over the second die,. ,B, means. of said, upper die is forced into the same and receives the eX'act shape'retpiired, including the nail groove" c. "In order that shoes may be forged directly' from a bar, at each end of each die. A and B. is formed an outward and downward inclined face, a2 and -b 3· respectively. which operates to produce a A-shaped transverse notch, c1, at

GUlSlS

v.

SAVAGE.

367

each end Of the shoe, C, and nearly severs the metal at such point. After the firat. ;snoe, C,· has been. partially completed by action of the die, A, the J1eated bar is moved forward; until the notch, ct , at its ,rear end fits over the correspondingly shaped part thatis formed by the cl1!k-recess, at, and the adja?ent inclined face, a2, and thus operates as a gauge and enables the longitudinal position of the bar to be easily and accurately determined. After shoe, C, has passed through the finishing die, B, it is placed over a female is an opening,d1, that corresponds to the outtrimming die, D, within lineoitbe.. bompleted shoe,and is then operated upon by an,upper male die. E, which forces said shoe through said opening and removes all surplus metal from its. !!dges. In order that said shoe when connected with the bar may more readilY' find a bearing upon said lower trimming die, the ends of the d t · which correspond to the faces, a 2 latter are provided with inclined and b8, of the dies, A and B." The claims are as follows: ,U{l) 'The forging dies deScribed, ea.ch of which j)eyond the end of its tntagho has the metal cut away to form a downward and outward inclining face, a or at, substantially as and for the purpose specified. (2) The dies, A and B. constructed as described, and adapted for·forging an ox-shoe from a straight bar of metlll, substantially as set forth. (3) The series of dies, A, B, 1>; and, E, as described, and adapted for forging and trimming an ox-shoe, substantially The invention which was in fact made by the patentee consisted of two parts: (1) The outward and downward inclined face at each end of each die, A and B, and which is particularly described in the first daim. The defendants do not infringe this claim. (2) Prior to this invention of Pearce, the blank was sul>jected to one or more forging or .bending'operations, before it was placed in the die, which gave it subthe, form of an ox-shoe. By his invention, a straight bar of in. die, A, was subjected to the action of heated irOlrohaving been 'S plairi-facedupper die, and was thereby brought into "a close approximation of the shape desired for making an ox-shoe." This blank was 'then placed in the second die, B, which contained a rib or means for formillgthe nail-groove, and was thereby finished, ready for the trimming <lies, DandE. The diesB, D, and E were each old. A is a new die, whose characteristic, in the language of the plaintiff's expert, is" that there 'are no. abruptturns, and the contours are joined to the bottom of the sinkage byinclirie warped surfaces, so that the plastic metal is easily forced into all partS of the die, thus giving at a single operation a form so nearly perfect that it can be finished by placing it ina finishing die." "It isn't the shape of the die that gives it its peculiarity. The peculiarity of the die consists informing a sinkage of easy-flowing surface especiallyadapted to receive and 'shape soft metal." A vigorous attempt was made to show that a ribless die and the finishing die forfofuling the nail groove, which is always a ribbed die, had been consecutively used by John Deeble, one of the defendants, who offered much evidence to show that. prior to the Pearce invention in suit he had made "one size of ox-shoes by using,after the blank had been partially fonned and bent by the Use of other dies; a ribless die, instead -of subjecting the blank directly-to the ribbed or finishing die. This rib-

368

FEDERAL REPORTER.

is said to have been used before the blank was completed by the ribbed because the rib frequently broke, unless the blank had been previot!slyprepared by the riblessdie.This may have been true; but if it it is immatEiriaJ, fortheDeeble ribless die different article frapa the fearCf3die, A, and the Deeble method of forging shoes was different from,that of Pea,rce. "By the Deeble process, the heated blank was struck edgewise in a die to give the requisite curve; it was then struckll'f'imotherimpression, Whereby each end of the blank was bent die. " If to form rudimeritary calks, and 'was then placed in the the e;x:isted, the Miller die, which also prlilCededfearce, did not contain,the incline warped surface upon the inside ofthe intaglio. By the Pearce die, A, a straight par of heated iron was brought, without any previous manipulation or bending, into ,the general spape of, an ox-shoe, in readit;less for the, finishing die. The of the art shows np anticipi,l,tlpnof such an effect upon a straight barofiron by!a single die. "The mvention it;l two,dies, A and B, the first new and the second ,old" by :whose co-operative action, and withotlt previous forging, a straightba+ of iron can.. be forged into a finished ox-shoe', 'in readiness forthe"usnal The novel feature was such a construction of die, A, that it forged Ii straight bar into 'such'a sbapethatit waS in completeTeadiness for the finishing die. The ;invention greatly reduced the oost of making forged was not 'only novel and useful, but was the product of an inventive mind. The history of the gradual progress of the art is very instructive upon this point. · The importaht question in the case i$:whether the patent described the second part of the Mtual invention or,omitted it so entirely that the second claim can only be constru,ed to mean the dies, A andJ3, as described, which, description was confined to the 9.ouble inclined face of the first claim. .The only peculiarity of construction which the descriptive part of the specification mentions is the,on,e which the patentee says enables shoes to be forged directly from the bar, and consists in placing at each end of each die, A and B, an inclined face which produced a A-shaped transverse notch at each end of the shoe and nearly severed the metal at such point. This, peculiarity is, clearly pointed out. The only other thing which is said about the construction of dies, A and B, is thatA has the general size and shape of the desired shoe, whereas the second die has the e;x:actsize and shape desired, and has the ,well-known rib for forming the nail-groove. Not a word and not an intimation is given that die, A,contained any peculiarity or any advant,ageby reason of the incline warped surfaces, or that the drawings showed So new feature ofthis kind, or thaUhere was any construction which enabled shoes to be forged directly from a bar, except that of the two inclined ends, and the only knowledge in regard to the novelty of construction of either of the dies ,which can be gained from the descriptive part of the specification is with reference to the peculiarity poillted out in the firstclaiI)1. It is, contended thltt the drawings indicate or show clearly toa skilled mechanic the new feature of the incline warped planes upon the inside

,'GUNN !1. SAV AGE.

86\l

of that therefore the drawings supplement any lack oi clearness 'm the written part of the specification; and furnished the requi.. site descriptioil'of the invention. The fact that the drawings show the inV'entionis denied, but Tatn inclined to think that they do, partly from an inspection of the copies which are attached to the ordinary printed copies of the patent and partly from the testimony of the patentee as to the care and exactness which were used by the draughtsman, and shall therefore assume that the plaintiffs are correct in their position, in this regard. . ." The second claim employsgenerallanguage,'but ifthe second feature of the invention is properly designated and described in the specification, the language aptly includes that feature. This question is then pre.part of is d.escribed and the part IS not alluded to m the wntten or descnptlve part of the tioolbutis ShOWll in the .drawings. The second claim is broad enough to iuclddethesecondv()rtionof the invention!, if had been described, hi the specification. Can the drawingssnpply the entire. absence o( written' description; and enable the second claim to be so constriledM :to)ncludethe ,omitted podion ofthe invention? Thestatute seems'tQ,be:climr upon' this point. Section 4888 provides that the inventorJehall' file · the patent-6f1ice a written description of his invention, in "and 9f,the manner and of making, constructing, compounding, and using it in such fun, clear, concise, and exaCt terms as to enable any peraqnskiHed in the art or science to which it appertains or with whiCh 'IV!s' ,most nearly, connected to make, construct, compound,:and use the same." Section 4889 provides that when the nature of the case admits'of1'drawings, .the 'applicant shall furnish one copy, * * * which. shail' bie filed in the patent-office, "and ,a copy of the drawing, to be furnished by the patent-office, shall be attached to the patent as a part of the specification." There must be a written description of the invention. A description, .which is said to be vague and uncertain, may be made clear by the drawings, which are a part of the specification. An imperfect written description will be aided by correct drawings, but when the written desqription is nQt only silent in regard to a feature of the invention, but places tne novelty upon a different and described feature, the drawings willnot help an entire omission, because the necessity of a written description is made nbsolutebfthe statute. Doubtful or ambiguousspecifications can be aided and made plain by drawings, but they cannot Ilupplyan entire absence of description in the specification. Tinktrr v. Wilber, ef.c.,Manvj'g 00.· 1 Fed. Rep. 138; Frazer v. Gates & ScO'lliUe Iron Workll,22 Fed. Rep. 439, 442. i Again, the drawings will not aid the non-description, because, although they may show to an expert the new feature, they do not show that the patentee claimed to be the inventor of that part of the die, when in his specification he had distinctly placed his invention upon another part. IVe8v. Bd/tgfmt, (Sup. Ct. Oct.terhl, 1886,) 7 Sup. Ct. Rep. 436. It fellows that the construction of the second and third claims must v.30F.no.5-24

87<1

FEDERAt. R:EPORTElt.

be that B, are the dies of the first claim, ahtsdo,notinfringe.. This eonc1usion makes it. UDnece$sary the validity of the third claim.. 314,192, being for,the method of making ox-shoes by the dies of the first patent, is also not infringed. The bill is dismissed.

Gr;.oUOESTER

&

GLUE

Co.

11.

LE

PAGE.

Oourt, D.M,,:"acn.u,ett...

VENTIONS·. '

March 8,1887.'

SUIT-PATENTS FOR '

III suit to Tesirain the of a patent, the l'espondent sold out his interest in tlI-e\JusinesswhiQh WIJ,II alleged to infringe, :pending the hear, ing. " '.L'he suitpro'ceeded, without 8nych!i.nge of parties, and a de, cree was entered him,' and In favor of the patElnt. Held, although the decree may have been entered in' pursuance of an agreeU!.ent between his vendee and·tlle complainant his personal co-operation, still, by giving up to his vendee the controlsrld'management of the suit, the respondent must be taken to have authorized lIuchan agreement, andtbe decree in favor of the validityoftbe patent is r6l, q4iudilJata &s between,bim and plainant. , ·. ',.: . 2. PATENTS FQB!NvENTIONS-A:PPLIO:&,TION OF PaoCE,ss-GELATINE AND FtsB:

a

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"

,

IN-

Reissued letters patentNo. 9,29&;isSued,July 18, 1880, to John· Rogers '!" of prichtb.Yo.c91la from fis)1 ,IJ;lVleW of the of the' art, be held valld only for tbe IdentICal thlUg duj· , covered oriilTelited -by the is to say, the' application of the proeessof washing in cool water" extiraQting the gelatine by boiling; and straining and evaporating, as applied to, s,81ted ll11hskins. . tbe process of cleaning the skins in solutions ot bisulphite of soda and Sa!· soda, and of boiling in a solution of borax, followell b18training andevaporating, is not an infringement. ,

GLUE FROM DRIED FISH SitINS."

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In Equity. (husten Bro'1l1n!J, for complainant, . B. F. 'fhwr.a.ton and Francis ForbeB, for defen,dant.
CARPENTER, J. This bill is b1'9ugh,t to restrainillfringement of reissued letters patent No. 9,296 issued Jply,13, 1880, to John S. Rogers for ,process ofexti'acting gelatill 6,or jchthyocollafron,l.salted fish f'lkins. This patent wa!dncontroversy in Gloucester Iffingjass Co. v. Brooks, 19 Fed. Rep. 426, wherein Le Page was one Qf the respondents. In that case the,patentl}.bility of the inven:tion wal'! denied" put the main controversy seems to ha:ve turned upon priority- of invention; it being claimed tbatthesltIl1eprocess describeliin t4e Rogers patent had been first invented by Isaa(l ,Stanwood , to whom a patent was granted May 23,1876, :No.; 177.764, . The description' of, the, Rogers proC613S, as given .in the ,patent now in suit, is set out in full in the opinion in the above case. After that opinion wlJ,sueUvered l fl. ,decree was entered by consentof the parties "that the reissue letters 9,296, dated July 1&, 1880,