is novel, the claims, in and of themselves, independently of the prior art, affirmatively disclose that a common handle can not make any two or more of those elements coact to produce a unitary result, a combined operation.

Now, in Welin's device it is evident that the controlling-levers C and the fall-board F have no immediate relation with each other. It is also manifest from the face of the patent that these elements are intended to coact through the mediation of the operator. That such coaction produces new and improved results appellant argues from the face of the patent and asserts can be established by evidence; but at this stage of the case it is enough, on the question of fact, to accept the presumption of utility arising from the grant.

(2) There remains the question of law: Can a claim for a mechanism be saved from the doctrine of aggregation, as last defined, where there is no direct coaction between the elements, and where the only coaction comes through the mediation of the operator (or, what seems to us the same, the mediation of the thing or material operated upon)?

In Morgan Envelope Co. v. Albany Paper Co. (C. D., 1894, 238; 67 O. G., 271; 152 U. S., 425; 14 Sup. Ct., 627; 38 L. Ed., 500) the object of one of the patents was—

to so arrange the paper as to prevent more than a given quantity of it from being withdrawn from the roll at a single operation, and so that in the act of withdrawing such given quantity it shall be automatically severed from the roll, leaving pendent from the roll a free end, which shall serve as a means of withdrawing a like quantity by the next user.

This was accomplished by having an oval roll upon an oscillating holder and a cutter fixed in such a relation that when the holder was oscillated by a pull upon the free end of the paper the roll would strike the cutter, whereupon the given quantity would be severed and the holder would return to its initial position. Several claims included the paper roll as an element of the combinations. Against these claims it was contended, first, that unlawful attempts at combinations were disclosed, and, second, that the claims, if valid, were not infringed.

The first defense

said the court

raises the question whether, when a machine is designed to manufacture, distribute, or serve out to users a certain article, the article so dealt with can be said to be a part of the combination of which the machine itself is another part. If this be so, then it would seem to follow that the log which is sawed in the mill; the wheat which is ground by the rollers; the pin which is produced by the patented machine; the paper which is folded and delivered by the printing press, may be claimed as an element of a combination of which the mechanism doing the work is another element. The motion of the hand necessary to turn

the roll and withdraw the paper is analogous to the motive power which operates the machinery in the other instances.

But without expressing an opinion upon this point, we think the facts of this case fail to sustain the charge of infringement.

Other combination claims excluded the paper-roll as an element. Respecting these, the court remarked:

No question is made but that the mechanism by which the paper is served out to the user, involves a patentable novelty.

Now although the court did not explicitly consider the question herein propounded, it may be urged that this paper-roll case argumentatively supports an affirmative answer. For the oscillating paper-holder and the fixed cutter have no direct connection, no immediate relation. It is only through the mediation of the operator that the parts coact to produce the new unitary results. Operator stands as motive power and paper-roll as means of power transmission. So the oscillating holder and the fixed cutter (with their settings to bring them into one organization) can be a lawful combination only because the existence and the proper application of power are necessarily implied. Does not every claim of a mechanical combination say, "These elements, when power is properly applied, will coöperate to produce a new unitary result?" Is not this true of every patentable tool or machine? Utility is a statutory requirement. That tools and machines should be useful presupposes the existence and application of power. Whether the power be mediately or immediately human seems to us indifferent. For electricity, steam, and falling water have useful power only through human intervention, and in a machine are, after all, merely means of expressing the ultimate human power through the operator. And what difference does it make where the power is applied, whether at the beginning or the end or the middle of the group of mechanical parts? In a loom, for instance, is the operative law of the structure changed if the gears or belts, by which is transmitted from part to part the motive power that is applied only at the head of the group, should be omitted and the motive power applied independently to each part in proper time relation? Or if it were found that an intermediate belt between two parts could be omitted because the web of cloth was a sufficient power transmitter at that point?

At this session (Oshkosh Grass Matting Co. v. Waite Grass Carpet Co., 207 Fed. Rep., 937) we are upholding, against the defense of aggregation, in a machine for making grass twine, claims for combinations of

means for forcing the material forwardly, a funnel into which the material is received, compression rolls adapted to receive the material therebetween after said material leaves the funnel, and means, after the material is compressed, for wrapping a twine therearound,

although the compression-rolls, in the middle of the group of eleinents, are incapable, in the machine as organized by the inventor, of coöperating to produce the twine except through the mediation of the twine material.1

In stating the question we expressed our belief that it is immaterial whether the unclaimed mediator between otherwise unrelated elements be the material operated upon or the operator. The paperroll and the grass-twine cases have to do with the material operated upon, as the connecting means. But in Burdett-Rowntree Mfg. Co. v. Standard Plunger Elevator Co. (C. C., 196 Fed. Rep., 43; affirmed by the Court of Appeals for the Third Circuit, 197 Fed. Rep., 743) the intervention of the operator was indispensable to the mechanical elements coöperating to produce the improved result. Improvement of existing automatic electric elevators was the subject-matter; and it consisted of organizing a "one-point control," whereby quicker and safer work was accomplished. The elements were the elevatorcar, the electric motor in the basement of the building, call-bells, floor-bells, and door-signals. Call-bells informed the motor operator at what floors the car was wanted; floor-bells announced that the car had arrived and was waiting for passenger; and door-signals showed the operator that shaft-doors were closed before he started the motor.

By the grouping and arrangement that are said to be merely aggregation, it seems plain that an intimately related whole has in fact been evolved, in which each part has been made more effective to accomplish the common object, and in which this increased efficiency is due to the new relation of each part to the others. The total result is certainly greatly improved in the several particulars already referred to; and, while it is not a tangible product that has been improved, the new method of operation produces a clearly perceptible advance in the art. Elevators with one-point control arrangement of signals and motor are operated more rapidly, more easily, more safely, and more efficiently, and this greatly improved operation seems to be a new and beneficial result produced by a new combination and arrangement of known elements within the meaning of the language used in Loom Co. v. Higgins, (C. D., 1882, 285; 21 O. G., 2031; 105 U. S., 580; 26 L. Ed., 1177.)

Unless an affirmative answer can be given to our question many inventions in which the unitary result would be more apparent than in the automatic-electric-elevator case might be denied the protection of the statute.

It seems to us that the man who first provided a gun with sights made a valuable invention. And although there is no coöperation

1 On this phase of the subject see also: 1 Robinson on Patents, (sec. 155;) Taylor v. Wood, (1 Bann. & A., 270;) Hawes v. Antisdel, (2 Bann. & A., 10;) Stutz v. Armstrong, (C. C., 20 Fed. Rep., 843;) Bowers v. Von Schmidt, (C. C., 63 Fed. Rep., 572, 583 ;) Fuller v. Berger, (120 Fed. Rep., 274; 56 C. C. A., 588; 65 L. R. A., 381;) Diamond Match Co. v. Ruby Match Co., (C. C., 127 Fed. Rep., 341;) Novelty Glass Co. v. Brookfield, (170 Fed. Rep., 946; 95 C. C. A., 516;) Rand, McNally & Co. v. Exchange ScripBook Co., (187 Fed. Rep., 984; 110 C. C. A., 322.)

between the front sight and the rear sight, or between them and the gun, except through the mediation of the marksman, yet truly the elements are brought into one organization and there contribute to a new and useful result. Between the strings and the chin-rest of a violin, the hand-rest of a mandolin, the finger-rest of a banjo, there is no connection except through the player. But it is possible that invention was required to produce the new organizations that made better playing possible. So with the banding-wheel for china decoration, wherein a revolving disk holds the china plate and a fixed rest supports the decorator's hand. So, too, with the lathe and toolrest. In Union Edge Setter Co. v. Keith (C. D., 1891, 340; 50 O. G., 285; 139 U. S., 530; 11 Sup. Ct., 621; 35 L. Ed., 261) the combination of a burnishing-machine and a finger-rest was found to be unpatentable, not in law, but in fact, by reason of the prior art. In the Selden automobile patent (Columbia Motor Car Co. v. Duerr & Co., 184 Fed. Rep., 893; 107 C. C. A., 215) the power of a gasengine is applied to the rear wheels of the vehicle through a clutch and reducing-gears, and the separate power of the operator is applied to the front wheels through a steering-wheel and column. Though there can be no coöperation between the driving mechanism and the steering mechanism except through the hands of the driver no one questioned that the association of elements constituted a true combination.

(3) Our conclusion is that the statute should not be narrowed to exclude improvements of the kind we have illustrated from the past, and that an affirmative answer to our question should be recorded.

As neither ground of demurrer is sustainable, the decree is reversed, and the cause remanded for further proceedings.

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

GENERAL ELECTRIC Co. et al. v. STEINBERGER.

Decided April 7, 1914.

206 O. G., 1161; 214 Fed. Rep., 781.

PATENTS-PERSON ENTITLED TO PATENT-DISK STRAIN-INSULATOR.

The disk strain-insulator having rain-shedding annular corrugations covered by the claims put in interference in the Patent Office between Hewlett and Steinberger, Held to have been independently invented by Hewlett, who, as the inventor first reducing the invention to practice by filing his application, is entitled to the patent therefor.

APPEAL from the District Court of the United States for the Eastern District of New York.

STATEMENT OF THE CASE.

This cause comes here upon appeal from a decree of the District Court, Eastern District of New York. The suit was brought under section 4915, Revised Statutes of the United States, (U. S. Comp. St., 1901, p. 3992,) praying that a patent be issued to complainant for the device covered by claims 9, 10 and 11 of United States Letters Patent No. 904,370 for a disk strain-insulator, granted November 17, 1908, to defendant, Steinberger. The district court decreed that Hewlett was the first inventor and entitled to a patent. The General Electric Company is the assigneee of Hewlett. The opinion of the district judge will be found in 208 Fed. Rep., 699. Affirmed.

Mr. C. H. Wilson for the appellant.

Mr. Charles Neave for the appellees.

Before LACOMBE, COXE, and ROGERS, Circuit Judges.

LACOMBE, Cir. J.:

The facts are very fully set forth in Judge Chatfield's opinion, which may be referred to for any not here recited. A disk strain

insulator, as its name implies, is a disk of insulating material, mounted so that the line of its axis is substantially horizontal. To it from one side comes a current-carrying wire; a similar one leads from it on the other side. These two wires are insulated from each other by a mass of insulating material in the body of the disk; in service the current is carried around the insulator by a shuntwire. The current is powerful, the wires heavy, and the device must be strong; it is thickened about the axis. Generally a plurality of these insulators are coupled together in a series. The general appearance of the disk suggests a pulley with bosses at the axis and various projections from it, which will be referred to later on. A good idea of the structures may be formed from inspection of Figures 4, 5, and 6 of Hewlett's application, here reproduced. Figures from the drawings of Steinberger's patent will appear later on.