39 F. 788 -

788

01'

FEDERAL. REPORTER, vol.

39.

"A combination, to be must produce a different force, or effect, result, in the combining of forces or processes from that· ttiven by their separate parts. There must be a new produced. If not so, it is only an aggregation of separate

More might be quoted from the authorities to the same point, but I think it sufficiently appears, from the facts in this case, that none of the separate elements in the complainant's combination produce any new result by virtue of such combination. The reservoir supplied the oil or burning fluid, th'e coil-burner produced the flame, and the fire-pot afforded facilities for heating the soldering-iron, or melting solder, in the same mann,er in the older art' as these respective parts do in the complainant's combination. They produce no new result. It is true, as I have already said, it is a more convenient arrangement of those operative parts than is shown in the older art, except what is shown in the Burgess patent; and, waiving the question as to whether the complainant's patent is or is not defeated for want of novelty by reason of the Burgess patent, I think it sufficient to say that I find in the complainant's patent only an aggregation of old parts producing no new result, and hence no patentable combination. The patent in question is in all its essential particulars like the patent invol ved in the case of Preston v. Manard, heard in this court in January, 1882, and which, after a reissue, was before the supreme court, and is reported in 116 U. S. 661, 6 Sup. Ct. Rep. 095. There the patentee had combined a truck, a hose-reel mounted on the truck, a hose, and a standard to hold the hose in position to operate as a lawn-sprinkler; and, while it made a convenieJ;lt arrangement of old operative parts, each part only did in the con1bination what it had done before, and the patent was held void in this court and in the supreme court. because it showed nothing but an aggregation of old parts. The bill is dismissed for want of equity.

CONDE

v. V AU{ENBURGH.

«(}ircuit Court, N. D. New York.·July 15, 1889.)
1.

PA'IE1'''',,!,S FOR INVENTIONS-DESIGN FOR KNIT OVERSHIRT-NOVELTY.

Desigu letters patent No. 14,239. granted to complainant August 25, 1883, for a "design for a knitted overshirt," the claim of which is, "In a knit overshirt, the front and floUar being of a different pattern than the body of the shirt. and the front ornamented by a lacing down the center thereof, substantially as shown," are 'void for want of novelty if the claim be construed as covering every design of that description, and not simply the particular pattern annexed.
SAME-INFRINGEMEl'iIT.

2.

If the claim be limited to the design shown in the drawing, viz., a striped front. striped collar, and unstriped body, defendant's pattern. which presents a different appearance to the eye, though its front and collar are of a different pattern from the body, is not an infringement.

. CONDE

V. VALKENBURGlL

789 Motion for preliminary

In Equity. Bill for infringement of patent. injunction. George W. Hey, for complainant. Esek Cowen, for defendant.

BLATCHFORD, J. This is a motion for a preliminary injunction in a suit in equity brought by Swits Conde against J ..M. Valkenburgh, for the infringement of design letters patent No. 14,239, granted to the plaintiff August 28, 1883, for seven years from that day, for a "designfor a knitted overshirt." The specification says: "'fhe annexed drawing represents a knit overshirt, folded in the usual manner, to expose the front and collar thereof. My design consists. essentially, in the front, A, and collar, C, being of a different pattern than the body, B. The front, A, is further ornamented by a sham lacing, a, running down the center thereof, as shown." The claim is as follows: "In a knit overshirt, the front and collar being of a different pattern than the body of the shirt, and the front ornamented by a lacing down the center thereof, substantially as shown. " The drawing annexed shows a particular pattern to the eye, but the claim is not for that pattern. It is for every pattern or design where the body of the shirt is of one pattern and the front and collar are of another pattern, and the front is ornamented by a lacing down the center. It is doubtful whether so broad a claim is valid, because not a claim for a particular design, in the sense of the statute. Under seetion 4929 of the Revised Statutes the patent in question, if under any head, falls under that of an impression or ornament to be placed on or worked into an article of manufacture. There is no individuality to the eye in impression or ornament unless one part of the article presents a differentappearance from other parts; otherwise there is entire sameness, and with that there can be no impression or ornament or pattern. The claim, to be valid, must be a claim to a particular im pression or ornament, of a particular configuration, or color, or pattern, and it must be so shown or described as to be identified. However this may be, it is shown that the broad claim of this patent is invalid; that shirts of various fabrics, each shirt having a body, a front, and a collar, were old; that shirts in which the front and the collar were of a different pattern from the body were in use before 1883; that before 1883 woolen shirts were made with linen fronts and collars, and cotton shirts with plain bodies and figured collars and fronts; that before 1883 woolen overshirts were made and sold and used in this country, having the front and the collar of a different pattern from the body of the shirt, and the front laced up with a cord; and that before 1883 woolen overshirts were made, sold, and used in the United States, in which the front and the collar were ornamented with various stripes, while the body of the shirt was plain, and the front was laced with a cord. This last arrangement is shown in letters patent of the United States granted to March Brothers, Pierce & Co., as assignees of Joseph G. Barker, February 7, 1882, on

'790

FEDERAL REPORTER,

vol. 39.

an application filed December 12, 1881. for·an, improvement in shirts. The drawing annexed to the patent in suit shows a striped front. and a striped collar, and an unstriped body. This patternhas,a given effect on the eye. Another shirt, having no stripes, may yet have the pattern of its body different from the pattern of its front and collar, and be a different design in fact from that shown in such drllwing, and yet be within the terms of the claim of the patent. The particular shirt complained of as an infringement has no such appearance, to the eye as the one shown in the drawing annexed to the patent, except that its front and collar are of a different pattern from the body; so that, if the claim were to be limited to the design shown in the drawing, and were to be held valid so construed, there would be no infringement. The motion is denied.

BALI, GWVE F AS'.rENING

CO. v.

BALL

&

SOCKET FASTENER

Co.

(Oircuit Oourt, D. MassaclwscUs.

August :20,

,

18im:)

PATENTS FOR INVENTIONs-PmORSTATE OF THE AUT.

The spring-flanged eyelet, combined with the dome-shaped cap having II button-like appearance, claimed in letters patent Nos, 290,057 and 306,021, issued for glove fasteners. is an improvement on former English and American patents, and the prior state of ;the art, as shown by them, does not limit the patentee to the exact form of device described in his patents.

In Equity. On bill for injunction and accounting. W. B. H. Dowse and John R. BMnett, for complainant. T. W: Clarke and F. P. Fish, for defendant.
COLT. J. When this case was heard on motion fo1' injunction, (36 Fed. Rep. 309.) the questions which are now raised were ably argued by counsel and carefully considered by the court. I see no reason upon the additional evidence now before me to change the conclusions then reached. The present hearing only tends to make it clearer to my mind that, under the license which the defendant took of the Kraetzer patents, it has no right to take the position that the Mead fastener, which it makes, is outside of those patents, because an examination shows that the Mead fastE'ner contains certain vital and important elements of the Kraetzer inventions. The defendant is right in saying that it is privileged to make the Mead fastener if it is no infringement of the patents covered by the license, but the difficulty is that the Mead fastener seems clearly to infringe certain claims of the Kraetzer patents.· I have compared the two devices in the opinion 011 motion for an injunction, and I do not think it necessary to go over the same ground again. I have reviewed once more the prior state of the art as bearing on the question of limiting Kraetzer to the precise form of devices described in his patents. In the spring-flanged eyelet, combined with the dome-shaped cap having a button-like appearance, of Kraetzer, there is found a marked