284
FEDERAL REPORTER.
to swing in-J' vertical plane upward to admit the attachment of the plates by the clamp in-the way in which I bave already stated, after which the platen is swung down into place over the plunger and die, where it is beld by a stiiI' spring in the column against a suitable stop. .A rubber shoe being held by the operator upon the die or anvil by his left hand, the plunger carrying the die is forced upward by the lever whose handle is grasped by the righli hand, and the hl'el of the shoe in ascending is first .presented to the prongs of the heel-plate and perforated by saiq prongs, which, passing through the sboe, strike the die and are bent and clinched in the, way I have already described. At this stage. the shoe is attached to the abutment or platen by means of the clamp which holds the beel-plate, and the clamp is thereupon released, thereupon releasing the shoe. " The first and third claims include the guide, F, and the fifth claim includes the holder, F, and means to bring the same in contact with the rear portions of the shoe. Neither the platen, nor the clatnp, nor the spring, nor these three parts of the defendant's machine in combination, are the guide or holder, F. The Richards tnachine has a holder, and the plate, having been secured to it, is brought by the operator into proper relations with the shoe; but the whole mechanism is a simple affair and is very different from the ingenious mechanism belonging to the guide, F, or the holder, F. The same result is accomplished, but in the Richardson machine the guide and holder and the actuating mechanism do thewhole work of holding and gUiding the heel-plate so as to be always in the proper relative position with the shoe. The Richards machine resembles an ordinary press in which the heel-plate is clamped upon one post and is brought into contact with the shoe by means of the plunger which carries the die, and if the shoe is properly held upon the die by the hand of the operator, the shoe and the heel-plate will naturally be in proper relative position. Let there be a temporary injun'ction restraining the defendant from the infringement of 296,623 by the use of any radially-placed inclined planes.
MCCLAIN
'I).
ORTMAYER
et al.
(Ot'rcuit Oourt, N. lJ. Rlinoi8. January 9,1888.)
1.
PATENTS FOR' INVENTIONS-INFRINGEMENT-HoRSE-COLLARS.
In an action for infringement of a patent. the claim charged as infringed was for a hook formed of elastic wire, with a safety-pin integral with the hook 'for attaching it to pads for sweat or horse-collars. Held. that the use of a hook, fastened to a piece of leather, so as to give an axial motion, and the leather fastened to the pad by means of rivets, was no infringement. A patent obtained upon a device, upon which a patent had already been obtained, in combination with another exactly similar but unnecessary device, which it required no invention to dispense with, there being no material difference in the mode of operation and result, presents no patentable novelty, and for that reason is void.
2.
SAME-NoVELTY-COMBINATION.
In Equity.
On bill for injunctIOn.
U'CLAIN tI. ORTMAYER.
285
Bill by plaintiff, Edward L. McClain, to restrain defendants A. Ortmayer & Son and others from the infringement of letters patent owned by plaintiff. Peirce &:: Fisher and JamfJ/ Moore, for complainant. Banning & Banning, for defendants. BLODGETT, J. The bill in this case seeks to restrain the alleged infringement of letters patent No. 259,700, granted to complainant January 20, 1882, for a "pad for horse-collars;" patent No. 267,011, granted to complainant, November 7, 1882, for a "pad for horse-collars;" and patent No. 298,626, granted May 13, 1884, to John Scherling and L. D. Randall & Co., for a "pad fastening for horse-collars," which last letters patent complainant now holds by assignment. All these patents relate to devices for fastening the pad to a horse-collar, the pad being a 'sort of cushion, made of soft cloth, stuffed with hair, to be interposed between the collar and neck of the horse, used mainly for heavy draft harness, the pads themselves are admitted to be old, and these patents have only to do with contrivances for fastening them to the collar. The first patent covers a fastening consisting of two elastic steel hooks, fixed firmly by rivets to the pads, with the hooks so adjusted that one clasps the front roll or wale of the collar, while the other hook clasps the after roll of the collar; the hooks being of elastic material, set so as to firmly grip or clasp the rolls of the collar, and thus keep the pad in place, and,by reason of the elasticity of the springs, the pad, while held properly in place, is readily detachable from the collar. This patent contains two claims, but in'fringement is charged only as to the first, which is in these words: "As attachments to a sweat or other horse-collar pad,. the elastic springs, 8,8, substantially as described, and for the purpose set forth." The second patent shows a device similar in all respects to the first, except that only one elastic hook is used, which is so arranged as to clasp the fore roll of the collar, the hook for grasping the back roll of the collar being dispensed with. This patent contains two claims; infringement is charged as to both. These claims are as follows: (1) "As an attachment to a horse-collar pad, or other harness pad, and as adjustably sinattaching a pad to. a horse-collar, or other part of harness, the gle-roll. or single-curved spring, S, constructed, arranged, attached, and operating substantially in the manner shown or described, and for or with the purposes set forth." (2) "The combination, with a horse-collar pad, of the elastic single-roll. or single-curve spring, S, substantially in the manner shown or described, and for the purposes set forth." The third patent covers a single safety-pin and hook, so constructed that the shaft of the pin is thrust into the soft material of the pad, and its point secured in the safety-lock, while a bow or hook springing from the guard of the pin is clasped over the fore roll of the collar, substantially in the same way shown in the McClain second, or single-hook patent; tha only difference being that in McClain's second patent, the hook is riveted to the pad, while in the Scherling patent the hook is pinnee!
to! the'·srirface of the pad. Infrh1gement is oharged of the first clS.iDi of 4his!patent,.whichis: "The desoribed safety-pin and hook, formed of wire, consisting of the bows, b, b, and the part, a, conneotingthe bows with suitable integral devices for attachment to the collars formed upon the ends of the bows, substantially as described. '! '. . The defenses are: (1) That defendants do not infringe either patent. (2) That thetwo last-mentioned patents are void for 'want of novelty. The defendants use a strong, stiff wire hook, fastened to a stiff piece of leather, which is riveted to the pad, and. a.dapted to clasp the front roll only of the collar,; depending for its ready connection with and grip of ·the collar ra.ther upon the yielding nature of the collar than the elasticity 'of the hook. Although there is undoubtedly some elasticity in the wire from which defendants' hook is made; yet it is manifest that the hook is intended to operate by forcing the Collar-roll into the throat of the instead of opening a light flexible spring, and snapping it around the collar-roll, as WQuld be done in applying the spring shown in either of the McClain patents. . As to the first of these patents, I think there can be no doubt that the Brst claim, and for that matter both claims, requires the use of the double springs, 8, 8, one arranged to grasp the front, and the other the back roll of the collar. The claim is for the attachment of these springs, 8, 8, to a horse-collar ·pad. The patentee says in his specifications: "One end of a spring is so curved as to partly encircle the fore wale or small roll of the collar, and to hug it so closely as to keep out of the way of the hanie, and the other end, is so curved as to similarly partly.enoircle and hug tile after wale, .or .body side of the collar, and yet not interfere with the hame." Here he describes two hooks or elastic springs for the purpose of attaching the pad to a horse-collar, and claims this device as his invention. A study of tQe specifications of this patent also shows, I think, very clearly, tha.t the patentee intended to use hooks which should depend mainly for theiroperation on their quality of elasticity. Now, as the defendants use only one hopk, and that not dependent on its elasticity for its effective operation,8s I think a stiff hook of cast or malleable iron would work as well as defendants' wire hook, it is clear to me that they de not infringe the first claim of this patent. It was urged on behalf of defendants upon the argument that this first claim is baldly for the elastic springs, 8,8, and that the words" as attachments to a sweat or other horse<lollar pad" are surplusage, on the ground that an inventor is entitled to all the uses to which his invention is applicable, (Roberts v. Ryf/l', 91 U. 8.157 j) and that this claim, not being for a combination of the springs, " 8, with the collar-pad, is for the springs alone.' This claim may be subject to this construction, but I do not base my opinion upon this view ·of it, as it is palpable to my mind that the claim only covers the· two springs, 8, 8, When used together to fasten a pad toa horse-collar, and that the,use of one spring is not an infringement; In fact the complainarit must, I think, held to have admitted that his first patent required two springs by his subsequent application for a patent on his single-hook
be
)(tCLAIN
t1. ORTMAYER.
281
288
In regard to the Scherling patent, as alread'y stated, it shows a commonand well-known safety-pin,combined with a hook of the same material,and integral with the pin, the material being elastic wire, so that the hook may be secured or fastened to the pad by means of the pin, and the pad then attached to the collar by clasping the hook over the fore roll of the collar. The drawings and specifications show two forms of this device. In Figs. 1, 4, and 5 of the drawings, the safety-pin is shown, and in Figs. 2 and 3 the hook is attacl1ed to the pad by pins inserted in the texture of the pad, with no safety-loop or lock to hold the pin in place. The proof shows that safety-pins, with hooks integral with the pins, are much older in the art than the Scherling patent. They are shown in the English patent of Montelart of February, 1864; in the American patent of Moore of March, 1869j in the American pat-ant of Marston, January, 1872j in the American patent{)f Jenkins, August, 1880j in the American patent of Judd, March,1882; while tbe Canadian patent to McClain, the complainant in this case, of July, 1883, shows a pad fastened to a horse-collar by a wire hook fastened to the pad by inserting therein a pin integral with the hook. The only difference that I can perceive between this patent and the two McClain patents, is that this device, especially in the safety-pin form, gives an axial movement of the hookj but it seems to me that McClain had in view some mode of attaching the hook to the surface of the pad, similar in its action and result to that obtained by the Scherling pin and hook. In both his patents McClain says in substance that he would not deviate from his patent to fasten his springs to a surface piece, and then fasten such surface piece to the surface of the mate.ial of the pad bystitchingj and it will readily be seen that by so doing some flexibility between the pad and hook would be secured, for, the surface of the pad being of cloth, quite a free movement of the hook back and forth would be obtained from the looseness and flexibility of the cloth. But without saying that McClain anticipated Scherling in this particular, I am satisfied that with safetypins and hooks combined as shown in the Jenkins and Judd patents, there was no room for invention in substituting a safety-pin and hook, such as are shown in the Scherling patent, for the single hook or spring shown in the McClain patent of 1882. While McClain says in his single hook patent that he expected in practical operation to fasten his hook to the pad by means of rivets, yet at the same time, as he does not confine himself specifically to that mode of fastening, I apprehend that any mode by which the spring could be fastened to the pad, and secure the result intended to be secured by the patented device, would be allowable and open to McClain. Hence, if in the device covered by his single-hook patent McClain.found that it was better, on the ground of economy, or for any other reason, to fasten the hook, or spring as he calls it, directly to the surface of the material of the pad with a pin, or in any other manner which was pra.ctically useful, he would have had the right to do so under his patent of 1882; while his Canadian patent shows the use of a wire hook and spring fastened into the surface material of the pad by a pin; not a safety-pin, it is true, but by thrusting the pin into the ma-