924.) The manual was a prior "printed publication" within the meaning of section 4886, Revised Statutes of the United States, (Comp. St., 1916, sec. 9430), and its effect upon the patent in suit is in principle the same as if the manual had been put out by a stranger. (James v. Campbell, C. D., 1882, 67; 21 O. G., 337; 104 U. S., 356; Schiebel Toy Novelty Co. v. Clark, 217 Fed. Rep., 760; 133 C. C. A., 490; C. C. A. 6.) Further, as pointed out in the opinion below, the rectangular plate in issue finds close analogy in the perforated rectangular blocks shown in the patent to Quackenbush, September 25, 1877, No. 195,689. That patent, it is true, was for an improvement in wooden toy building-blocks associated with wheels, spindles, and the like; but the idea of a change from wood to metal in adapting old elements to other structures in order as here to make them more rigid is well within the scope of mechanical skill, (Wise Soda Apparatus Co. v. Bishop-BabcockBecker, C. D., 1917, 310; 240 O. G., 943; 240 Fed. Rep., 733; 153 C. C. A., 531, and citations, C. C. A. 6); besides, the use of perforated metal parts in the construction of toys was, at the date of the patent in suit, well known to the patentee, Hornby, through his earlier United States patent, January 16, 1906, No. 810,148.

In the next place, the sector-plate in issue cannot be differentiated from the rectangular plate save only in its shape; and this difference is not enough to conceal the obvious identity in functions of the two plates. Since the declared object in effect was to substitute these plates for old and standard parts in order to make the toy structures more rigid, it is perfectly plain that the nature of the old structures themselves would suggest to the skilled mechanic the shape as well as the use of contrivances calculated to strengthen them. Further, the prior art in toy building is replete with shapes and forms adapted to the erection of many varieties of toys; and Burton in his patent, No. 604,708, May 24, 1898, shows sector-blocks for toyarch building; while Annin's patent, No. 305,879, September 30, 1884, discloses a sector-shaped bottom for the tray of his wheelbarrow. Annin's construction it is true was not a toy, but there is striking resemblance between the sector-shaped bottom of his invention and the bottom of a toy wheelbarrow which is represented by one of the drawings accompanying the present patent in suit. And it is worthy of remark, moreover, that on February 4, 1911, more than a year and a half prior to his application for the patent in suit, Hornby applied for design patents on both his sector-plate and rectangular plate, and the respective plates there shown are the same as those represented in the present drawings. Both applications were denied on the grounds in substance that they were devoid of artistic merit, and that they also failed to present anything patentably novel over the state of the art as shown by the Examiner's citations. These

citations, however, do not appear in the present record. Although efforts were made to overcome the objections of the Examiner, yet they failed, and nothing further appears to have been done.

It results that the present patentee has substituted one toy element that was old and another that was plainly its mechanical equivalent, if not itself old, for perforated parts of a previously-existing system of toy building, and with the object above stated. Moreover, the employment of perforations and disposing them involved only the detail of providing openings in the plates that would register with existing perforations contained in "standard parts" of the structures so sought to be strengthened. We cannot think this was anything more than mechanical skill. It may be that firmer toy building was thus obtained; but this was not to accomplish a new result within any accepted meaning of invention. (Lemley v. Dobson-Evans Co., ante, 223; 246 O. G., 1203; 243 Fed. Rep., 391; C. C. A. 6.) Indeed, whether the substituted parts with their adaptation to other and old parts, be considered by themselves or in combination with "one or a plurality of other perforated mechanical elements," for example as stated in claim 10, this was a mere carrying forward of the original idea, a change in form, an improvement in degree, without substantial change in either means or result, and so was not invention. (Market Street Railway Co. v. Rowley, C. D., 1895,. 152; 70 O. G., 632; 155 U. S., 621; 15 Sup. Ct., 224; Railroad Supply Co. v. Elyria Iron Co., C. D., 1917, 420; 239 O. G., 656; 244 U. S., 285; 37 Sup. Ct., 502; Star Hame Mfg. Co. v. United States Hame Co., 227 Fed. Rep., 876; 142 C. C. A., 400, and citations, C. C. A. 6.) This is not to overlook the insistence for appellee that it was invention to convert the rectangular plate with a perforated flange mechanically attached into a single structure. It is, however, settled that simply to unite two parts into an integral construction does not constitute invention. (Howard v. Detroit Stove Works, C. D., 1893, 659; 65 O. G., 1765; 150 U. S., 164; 14 Sup. Ct., 68; Standard Caster & Wheel Co. v. Caster Socket Co., 113 Fed. Rep., 162; 51 C. C. A., 109; C. C. A. 6;) and this principle is especially applicable here, since the two parts so converted into a unitary structure could have no different relation to each other, or to other perforated parts with which they might be combined in toy building, from that which they bore when they were simply mechanically attached. (Gould & Eberhardt v. Cincinnati Shaper Co., 194 Fed. Rep., 680; 115 C. C. A., 74; C. C. A. 6; Sheffield Car Co. v. D'Arcy, 194 Fed. Rep., 686; 116 C. C. A., 322; C. C. A. 6; D'Arcy v. Staples & Hanford Co., 161 Fed. Rep., 733; 88 C. C. A., 606; C. C. A. 6.) It must follow that the patent is void because of the lack of invention.

(6, 7) A question of costs remains under the first appeal. A judgment was entered against appellants and in favor of appellee

84150°-19-18

for $470.26, as costs fixed by the court under equity rule 58, (198 Fed. Rep., xxxiv; 115 C. C. A., xxxiv,) to reimburse appellee for expenses incurred in obtaining the depositions of two witnesses. Appellee called on appellants to admit in writing the execution and genuineness of certain documents to be used in evidence in appellee's behalf. Appellants' counsel declined to make any admission within the time prescribed by the rule. Later, however, they notified appellee's counsel by telegram that they would "stipulate the Read incident when we meet in Marietta, Tuesday," where one of the depositions was to be taken. Answer by telegram was made to this, stating that all arrangements had been "made and considerable expense incurred," and declining to accept stipulation except on appellants' payment of full expenses to date. No response was made to this telegram. Counsel for both sides met later at Marietta, Ohio, and obtained the deposition of one of the witnesses; and it is to be inferred from the record that at the close of the deposition counsel for appellee stated, apparently in the presence of opposing counsel, that

as no reply has been received to the telegram just quoted [the last telegram above alluded to], the taking of depositions on behalf of complainant [appellee] is now adjourned to be resumed * at Bloomington, Ill.

* *

It is insisted for appellants that appellee was in possession or control of the documents; that they were provable in the ordinary course of procedure; that certain of the letters had theretofore been proved and introduced into the case, and consequently that rule 58 did not apply. We think the applicable portion of the rule is the last paragraph, and appellants' failure to respond to appellee's offer to accept payment of the expenses then incurred seemingly justified the course pursued by the latter. The decisions relied on by appellants appear to relate to other portions of the rule. Our attention has not been called to a decision construing the last paragraph, and yet similar provisions, and the course pursued under them are familiar to practitioners. It is a general principle, apart from rule 58, that the taxing of costs in equity cases is within the sound discretion of the court (Du Bois v. Kirk, C. D., 1895, 343; 71 O. G., 889; 158 U. S., 58; 15 Sup. Ct., 729), and upon the facts here disclosed we find no abuse of discretion on the part of the trial court in this matter.

As to the evidence offered upon the second appeal, the court seems to have considered it with reference to the facts involved under the first appeal and the opinion rendered thereon; and, as before pointed out, the court concluded that the newly-discovered facts were not sufficient to warrant a change in its previously-expressed views of the case. It is argued that this evidence renders untenable the conclusion upon the issue of unfair competition. It might be conceded that por

tions of the new evidence would require modification of some of the views expressed in the court's opinion on that issue, as, for instance, the origin of parts of the business system said to have been first introduced by Hornby; but this would not affect the soundness of the conclusion reached upon such issue. Appellants do not seem to appreciate the true effect of other features of the evidence upon which the court evidently rested this conclusion. (D. C.; 234 Fed. Rep., at pp. 917 to 919.) And although the two Von Leistner United States patents, the first No. 525,221, August 28, 1894, and the second, No. 543,580, July 30, 1895, constitute part of the new evidence, yet they could affect in material degree only the patent in suit, and so are not important in view of our ruling upon the patent. Hence we cannot say that the evidence considered as a whole does not fairly sustain the conclusion reached below upon the issue of unfair competition.

It results that the decree in No. 2,977 must be reversed so far as it adjudges the patent in suit to be valid or is otherwise dependent on that ruling; that the decree in No. 3,014 will be affirmed; that both causes be remanded, with direction to enter in the suit from which these appeals were taken a single decree not inconsistent with this opinion.

[U. S. Circuit Court of Appeals-Sixth Circuit.]

MACBETH-EVANS GLASS Co. v. GENERAL ELECTRIC CO.

Decided November 6, 1917.

248 O. G., 501; 246 Fed. Rep., 695.

1. PATENTS-RIGHT TO PATENT-USE OF INVENTION AS TRADE-SECRET.

The right to preserve a monopoly in an invention by its use as a tradesecret for profit and the right to secure its protection under the patent laws are inconsistent.

2. SAME-SAME-USE OF PROCESS AS TRADE-SECRET.

An inventor of a process who used it in secret for nearly ten years, placing the product on public sale, cannot thereafter, when difficulty is encountered in protecting the secret, obtain a patent, and thus extend his monopoly for the patent term, but will be held to have elected to abandon his right to a patent.

3. SAME-SAME-" ABANDONMENT."

The policy of the patent law is to secure to the public the full benefit of inventions after expiration of the fixed term deemed sufficient to reasonably stimulate invention, and any action of an inventor which would defeat such policy by withholding his invention from the public for an indefinite time for his own profit will operate as an abandonment of his right to a patent, which in every sense material to the patent laws is tantamount to an "abandonment" to the public of the invention itself.

4. SAME-VALIDITY-PROCESS FOR MAKING GLASS.

The Macbeth reissue patent, No. 13,766, (original No. 1,097,600,) for a formula and process for making glass, Held void for abandonment.

APPEAL from the District Court of the United States for the Eastern Division of the Northern District of Ohio; John H. Clarke, judge.

Suit by the Macbeth-Evans Glass Company against the General Electric Company. Decree for defendant, and complainant appeals. Affirmed. (For opinion below see 231 Fed. Rep., 183.)

Mr. Paul Synnestvedt, Mr. Joseph Wilby, Mr. James I. Kay, and Mr. James C. Bradley for the appellant.

Messrs. Squire, Sanders & Dempsey, (Mr. F. P. Fish, Mr. W. K. Richardson, and Mr. William L. Day, of counsel), for the appellee.

Before WARRINGTON, Knappen, and DENISON, Circuit Judges. WARRINGTON, Cir. J.:

This was a suit for infringement of Letters Patent Reissue 13,766, bearing date July 7, 1914, to George A. Macbeth, assignor to Macbeth-Evans Glass Company, a corporation of Pennsylvania. The invention relates to a

method and batch or mixture for making glass for illuminating purposes such as in electric and other shades and globes.

The pleadings present the usual issues of a patent suit, except that a distinct defense was introduced and made the basis of the decision. This was brought about in pursuance of Equity Rule 29 (198 Fed. Rep., xxvi; 115 C. C. A., xxvi), and on motion of defendant below, the General Electric Company, separately to hear and dispose of the defense set up in paragraph 14 of its answer; the facts, for purposes of the motion and hearing, being stated in a written admission of plaintiff below, Macbeth-Evans Glass Company, which was filed with the motion. According to the facts so shown, George A. Macbeth discovered and perfected the formula and process in issue prior to the fall of 1903. About the fall of that year, the appellant company (with which Macbeth was connected as president and stockholder) commenced to use the formula and process "as secret inventions for making illuminating glass," and thereafter continued such use until the application of Macbeth for the original Letters Patent (No. 1,097,600) was filed, May 9, 1913. Throughout this period the products of the formula and process were

put upon the market and sold in this country in large quantities as regular articles of trade and commerce.

In May, 1910, one of the plaintiff company's employees, who had been intrusted with the secrets of the invention set out in the reissued