92
FEDERAL REPORTER.
that in stepping on them the pressure of the foot on a number ofthem at once will expel the air, and, by causing a vacuum, afford by suction an additional hold to the sole of the shoe, to prevent slipping. This result it is claimed is more effectively attained when the pavement is wet, and ordinarily would be more slippery, because then the suction is more complete. It is perfectly plain that continuous corrugated lines, or large depressions, such as would assist the foothold of shod horses, would have no such effect. The in fhe Eastern district of Pennsylvania having been, as appears from the record and the briefs of the very able counsel who took part in its presentation, thoroughly contested, the complainant is entitled now to the benefit of that adjudication in his favor. The affidavits filed in support of this motion for a preliminary injunction, and the specimens of the pavement put down by the defendant, exhibited in court, leave no doubt in my mind as to the infringement. The complainant, therefore, under all the rules of practice governing such applications, is entitled to the granting of a preliminary injunction as prayed.
BRINKERHOFF '11. ALOE.
(Circuit Oourt, E.
n. Mil/8ouri, E. n.
December 24, 1888.)
1.
PATENTS FOR iNvENTIONS-ANTICIPATION-RECTAL SPECULA.
The first claim of the patent granted to A. W. Brinkerhoff. March 2. 1880, on rectal specula, is for a slide extending the entire length of the tube. Held anticipated by the older art. Where an element of a claim does not depend for its novelty in the material of which it is made, it will be anticipated by a like element; in a like instrument, of different material. The slide employed in the Brtnkerhoff instrument, and covered broadly by the first claim of the patent, is made of metal. The patent makes no mention of any novelty existing in the material of which the slide is composed. Held, that the claim is anticipated by a glass slide in a similar instrument. Aspeculum consisting of a tube with a slide and a closed end was old. Held, that adding I\n incline to the closed end to prevent the impaction of pile tumors did not involve invention. . .
2.
SAME-NoVELTy-MATERIAL.
S.
SAME.
'" SAME-INVENTION.
G.
The third claim of the Brinkerhoff patent covers a speculum composed of a tube with a closed end and a slide, and having an incline at the closed end. Held void for want of invention. SAME-AGGREGATION.
6. '1.
A claim consisting of a number of elements, which do not co-act to produce a new and useful result, is a mere aggregation. and not a patentable combination.
Where several old elements are so combined as to produce a better instrument than was formerly in use, but each of the old elements does only what it formerly did in the instrument from which it was borrowed, and in the old way, l.eld, that the combination is not a patentable one.
BRINKERHOFF V. ALOE.
93
8.
The second claim of the Brinkerhoff patent covers aslotted tube having aD incline and a slide. Held, that the incline acted precisely as it did wben placed in the forward end of a slotted tube not provided with a slide, and tha' therefore the claim covered an aggregation only, and was void.
In Equity.
Lee, Brown « Lee, for complainant. Goo. H. Knight and A. BinBWanger, for defendant.
THAYER, J. This is a bill to restrain the infringement of letters pat'" ent No. 224,991, granted to Alexander W. Brinkerhoff under date of March 2, 1880, for an improvement in "rectal specula." The patentee. in his specification, thus describes his invention: "My speculum is made of metal, and plated in the usual manner, to secure a bright interior and smooth surface. In shape it is conical, and has one side slotted through its entire length of chamber. Into such slot is closely fitted a movable slide, having upon its rear end a handle for actuating it. On the side of the tube opposite the slide is another handle, by which to hold the tube when in use. Around the large end of the tube is a flange or lip, * * * and in the forward end of the chamber is an incline, made necessary in specula having closed ends, * * * to prevent the impaction of pile tumors, enlarged glands, or surplus membrane in the end of the chamber. and thereby enable the operator to Withdraw the instrument with safety and ease." Of the nature of his invention the patentee says: "My invention consists' in the use of a slide extending through the length of one side of the tube. and an incline inside of the forward or small end of the chamber, extending from the bottom of the chamber upward and forward to the under side of the slide when in place. to prevent injury to the membrane while withdrawing the instl'ument." etc. The claims made in the specification are as follows: "(1) A slide in the side of a speculum. extending through its whole length, and used as herein described. (2) The incline in the front end ·of the chamber, in combination with the tube, slot, and slide, Bubstantially as and for the purposes herein set forth. (3) In cylindrical tubular specula having a slotted side and closed end to prevent the entrance offfECes, the incline in the front end of the chamber, extending upward from the bottom aud forward to under side of slide, substantially as described, and for the purposes herein set forth." 1. It is clear that the first claim of this patent covering "a slide in the side of a speculum extending through its whole length," cannot be sustained. Indeed, it is not seriously contended by complainant's counsel that the device covered by that claim is novel. I shall not go into the details of the evidence, therefore, on this branch. of the case, but will content myself with the general statement that the testimony of Dr. Warren B. Outen, Dr; Charles Bernays, and Dr. Charles E. Michel, as well as the testimony of William Grady and Herman Speckler, satisfies me that rectal speculums closed at one end, having a slot in the side extending the full length of the chamber, and fitted with a slide, had been used by the medical fraternity in this country, before the date ofthe alleged invention. While it is true that defendant has not produced any of the spec-
94
FED;EJUL REPORTER.
ula that were,so in use, and has only produced a model of one made in his own shop since this suit was tiled, knownas tha "Reed Speculum," ;yet I consider this fact not sufficient in itself to overcome the positive statements of intelligent and entirely disinterested witnesses, who had occasion to know the fact whereof they speak, that specula with slotted sides fitted with slides were in use, and to some extent were on sale, in this country prior to the date of ·the alleged invention in July, 1878. The Reed instrument, and possibly all the instruments of which the witnesses above named have spoken, had glass slides, instead of metal; but that fact is not important, as the material of which the slide is composed is not claimed as an essential feature of the device. But, even if the foregoing view is erroneous, I am furthermore of the opinion that the tirst claim of the patent was anticipated by "Segala's Tri-Valve Vaginal SpeCUlum," which was produced on the hearing, and was shown to have been in use in this country since 1860; also by the "catheter" which was produced on the trial, and shown' to have been on sale in this country since 1874. The use for which both of the instruments last referred to were designed, are analogous to that in which complainant employs his instrument. Both instruments are tubular, each has a slot in the side extending the full length of the chamber fitted with a metal slide. which is intended to be wholly or partially withdrawn (the same as the slide in the rectal speculum) when the operator has occasion to examine or treat the particular organs for the treatment of which these instruments were constructed. In view of the slides shown in Segala's vag:nal speculum, and in the catheter, and the use made of the same, it mllst be held that there is nothing novel in the slide in complainant's patent. He has, in this particUlar matter, merely appropriated a device long known and used in surgical instruments fitted for theexaminatlon of certain interior membranes or cavities of the bod)', for the improvement of another instrument adapted to the treatment of other interior membranes. Hilton's rectal speculum, an instrument said to have been in use in England as early as 1870, also clearly anticipates the first claim of complainant's patent, and probably the second .and third claims. If Hilton's speculum, as contended, Wa3 described in a printed publication in England as early as 1876, that fact also invalidates the first claim of the patent under consideration, and most likely the second and third claims. Theoriginal printed publication relied upon, said to have been published in London as early as 1876, was not produced at the hearing before the master, but in lieu thereof a volume entitled "Rest & Pain," published in New York in 1879, which purports to be a reprint of the earlier English publication, was produced. Some testimony was offered to the effect that application had been made to the English publishers, and to other book-sellers in London and in this country, for a copy of the original publication, and that they reported the work to be out of print. All of the testimony, however, tending to show that a book entitled "Rest & Pain" was published in London in 1876, and that the work reprinted in this country in 1879 is an accurate copy thereof, is of the nature of hearsay; and as objection was duly taken to the testimony when
BRINKERHOFF t1. ALOE.
95
it was produced before the master, and was insisted upon at the trial, the objection must be sustained, no matter how persuasive the inference may be that there was a foreign publication which described Hilton's speculum. The latter instrument is accordingly ignored as an anticipation of compJainant?s invention. 2. The third claim of the patent is a claim for the "incline" in cylindrical tubular specula having a slotted side and closed end. The particular device attempted to be covered by this claim was anticipated, in my opinion, by a rectal speculum produced by Dr. Mudd, and shown to the satisfaction of the court to have been purchased at an instrument store, and to have been in use in this country before the date of complainant's invention. The instrument in question is tubular. It is conical in form, has a slotted side, a closed end, and, what is of more importance, an incline at the closed end, extending from the bottom of the chambel' upward and forward to the end of the slot. It is true that the angle made by- the incline with the axis of the tube in the latter instrument approaches more nearly to a right angle than the incline in complainant's speculum, nevertheless there is a pronounced "incline;" and moreover, Dr. Mudd testifies that one purpose of the "incline" is to protect the mucous membrane from injury when the speculum is withdrawn. It should be further observed that complainant's specification does not· make the angle at which the incline is -set in his speculum an essential feature of the device. As described in his specification, the utility of the incline consists in preventing the "impaction of pile tumors," etc., and in enabling the operator to withdraw the instrument without injury to the membranes. This is precisely the function of the incline in the speculum produced by Dr. Mudd, and apparently it was set at an angle which.etrectually accomplished that purpose. At all events, no complaint appears to have been made against that speculum on the ground that the incline failed to accomplish the purpose had in view. The Squire's specUlum also shows an incline in the forward or closed end, in: all respectS like that in complainant's instrument; but the testiulOny in the case leaves it somewhat doubtful whether the "incline" in Squire's speculum was placed therein shortly before or shortly after complainant claims to have invented it. For that reason the patent is not affected by the evidence offered by defendant in relation to the Squire's instrument. 3. In view of what has been said it appears that plaintiff's right to relief depends on the second claim for the "incline, * * * in combination with the tube, slot, and slide." This claim is attacked on two grounds: First, that the combination, as a whole, was anticipated by Dr. Hodgen when he caused an incline in the form of a mirror to be set permanently in the forward end oithe old "Reed Speculum," about the year 1876jand, second, that the combination is d-evoid of invention and patentable novelty. I shall concede that the evidence as to what Dr. Hodgen caused to be done with the Reed speculum 12 or 13 years since is, under the circumstances, not of that certain and convincing character which ought to be required to overturn the claims of a duly-issued pat-
96
ent. The second objection to the claim, however, is more formidable. The Reed speculum, before alluded to, shows "the tube, slot, and slide" combined in a manner that does not differ essentially from the form in which the same elements are combined in complainant's combination. To these three elements the patentee added a fourth,-the "incline in the front end of the chamber,"-but the "incline," as before stated, was itself an olp device, which had been used in specula such as was produced by Dr. Mudd. Furthermore, It was used in the old instruments for the same purpose that complainant professes to have invented it; that is to say, to avoid injuring protruding membranes when the speculum was withdrawn. Even if complainant had been the first to use the incline in tubular specula having closed ends, the device was a very obvious one, scarcely rising to the dignity of an invention, considering the function it performed, as is well illustrated by the account which the patentee gives of the manner in which the idea was conceived. He states that he first constructed his speculum as shown in the specification, with a tube, slot, and slide, but without an incline. When he made the first trial of the instrument he discovered the risk of injuring such membranes as happened to protrude through the slot, as others had discovered who made the Mudd instrument. Thereupon heetnployed a jeweler to solder a small piece of metal in the forward end of the chamber, so as to form an incline, and subsequently amended his specification by adding the third claim, which is substantially a claim for the incline as an independent device. But regardless of the obvious nature of the improvement made by adding the incline, the court is of the opinion that the combination so formed was not patentable, because no new result or effect was produced by the united action of the old elements. To sustain a patent on a combination of old devices, it is well settled that a new result must be obtained, which is due to the joint and co-operating action of all the old elements. Either this must be accomplished, or a new machine of distinct character and function must be constructed. Pickering v. McCullough, 104 U. S. 310; Hailes v. Van Wormer, 20 Wall. 353; Tack Co. v. Manufacturing Co., 9 Biss.258, 3 Fed. Rep. 26; Machine Co. v. Young, 14 Blatchf. 46. If several old devices are so put together as to produce even a better machine or instrument than was formerly in use, but each of the old devices does what it had formerly done in the instrument Or machine from which it was borrowed, and in the old way, without uniting with other old devices to perform any joint function, it seems that the combination is not patentable. Hailes v. Van Wormer, 8Wp'fa; Rcckendorjer v. Faber, 92 U.-B. 347.. In the present case the incline, when placed in combination with the "tube, slot, and slide," acted precisely as it did when placed in the forward end of a slotted tube not provided with a slide. Its action was in no sense modified by the new relation in which it was placed, nor did it, in unison with the other elements of the combination, produce a distinctively Dew In accordance these views the bill is dismissed. .
BOBORBT II. BOWARD.
97
HOFIORST 'V. HowARD. 1
(Oirouit Oourt, E. D. New Ym·k. December 1,1888.)
'1.
EQUITy-JURIsDICTION-Loss BY SUBSEQUENT EVENTS.
The jurisdiction of an equity court is not entirely ousted by the happening of an event. subsequent to the commencement ofan action, which precludes the exercise of the power to grant an injunction. Kirk v. Du Boia, 28 Fed. Rep. 460, followed.
PATENTS FOR INVENTIONS-ABATEMENT AND REVIVAL-DEATH OF PARTY.
A suit for alleged infringement of a patent, praying that defendant be required to make discovery of profits, and for an accounting and injunction, may be revived. after the decease of defendant, against his executor.
InEquity. Final hearing on bill of revivor, its answer, and replication. ·W. S. Logan, for complainant· . John L. Demenny, for defendant. LACOMBE, J. This action was brought for an alleged infringement of a patent. The original bill prays that the defendant be required to make disoovery as to the use of said invention and of all gains and profits received by him therefrom, or by means thereof, and that he be required to account to the plaintiff; and an injunction is prayed for against the defendant, his agents, etc. answer of the original defendant is a specific denial. The original defendant having died, his executrix denies complainant's right to have the action revived, for the reason that nO injunetion can issue against the dead defendant, nor against his executrix, who is not alleged to. infringe; and that therefore, as the title of the principal relief-the injunction and discovery-fails, the incident right to an account fails also. Defendant cites Rootv. Railway Co., 105 U. S. 189, and Draper v. Hudson, 1 Holmes, 208 (1873.) The whole subject was discussed in the later case of Kirk v. Du Bois, 28 Fed. Rep. 460, (1886, W. D. Pa.,) and the conclusion reached that Root v. Railway Co. does not go to the extent of holding that jurisdiction is entirely ousted by the subsequent happening of an event which precludes the exercise of the power to grant an injunction. The decision in Kirk v. Du Bois will be followed here. The complainant is entitled to the usual decree that the suit be revived against the executrix, and be put in the same state it was in prior to the death of the deceased. .
lReported by Edward G. Benedict, Esq., of the New York bar.
v.37F.no.8-7
