APPEAL from the Circuit Court of the United States for the Western District of Pennsylvania. Before DALLAS and WALES, Judges. DALLAS, J.: By the decree appealed from it was adjudged that Letters Patent No. 14,373, granted to George A. Macbeth, assignee of Henry Dietrich, on October 30, 1883, for Designs for lamp-chimneys, is valid, and that it had been infringed by the defendants below, and thereupon a perpetual injunction and the payment by the defendants to the complainants of $250, being the minimum damages provided for in the act of Congress of February 4, 1837, together with the costs of the suit, were ordered. The only assignments of error which have been pressed are as follows: First. The court erred in holding that it was patentable merely to double the number of crimps at the top of a chimney. Second. The court erred in holding that respondents' chimneys infringed. The decree does not embody a finding that it was patentable merely to double the number of crimps at the top of a chimney. and that position is not taken in the opinion of the Circuit Court, nor is it necessary or even pertinent to its conclusion. The argument for the appellant would be of greater force if the patent in suit instead of being for a design was for the mechanism of its construction. It has been made plainly obvious to us and seems to be fully recognized by the trade that the appearance of the patented design is very different from that of any other which had previously existed; and, this being so, the method of its production is irrelevant. The novelty of a design is to be tested, not by investigation of the means employed for its creation, but by ocular comparison of the design itself with the prior designs which were alleged to be substantially the same, and when tried by this test the novelty of the design covered by the patent in suit is made quite apparent. The second assignment presents, conversely, the same question as the first, and for like reason cannot be sustained. The designs of the appellants unquestionably produce the same effect upon the eye as that of the appellee, and therefore the former conflict with the latter. The argument submitted in connection with the third assignment and the ground upon which it is based are stated in the appellant's brief, as follows: * No equitable relief was required at the time of filing of the supplemental bill. For twenty months the defendants had been out of business, and the complainants were not entitled to an injunction. There was therefore no basis of equitable relief. Root v. Railway Company (C. D., 1882, 167; 21 O. G., 1112; 105 U. S., 189) is relied upon as an authority for this contention, but does not support it. In our opinion the point was rightly disposed of by the learned judge below, who said: Nor is there any reason why the injunction should not be made permanent, though respondents have ceased manufacturing in this district. Mr. McCloy, a defendant, and the other officers of the respondent company are still associated in the glass business, and that they are now without the jurisdiction is possibly the more reason why in this protracted litigation there should be a decree and injunction which would avoid further litigation on the same subject-matter between the same parties in another tribunal. The sixth assignment does not set out the particular error intended to be alleged. It therefore does not conform to the eleventh iule of this court, and according to that rule might be wholly disregarded; but we have fully examined the record and considered the argument on behalf of the appellants and are not convinced that any error is disclosed, or has been made to appear. Therefore the decree is affirmed, with costs. [Court of Appeals of the District of Columbia.] GLIDDEN v. NOBLE. GLIDDEN v. BUSELL. Decided March 4, 1895. 71 O. G., 141. PRIORITY-INOPERATIVE INVENTION-PRIORITY CANNOT BE GIVEN to InopeRATIVE INVENTION. Where the machine relied on by one of the parties as establishing priority of invention is inoperative, and that relied on by his contestant is operative and successful, Held that priority should be awarded to him who produced the operative machine. Messrs. Lange & Roberts for the appellants. Messrs. Maynadier & Beach for the appellees. SHEPARD, J.: These are appeals from the decision of the Commissioner of Patents (C. D., 1894, 48, 51; 67 O. G., 675, 676,) in interference proceedings between rival claimants of priority of invention in certain devices and machines for trimming and randing shoe-heels. The real parties at interest are the same in each case, and they have been argued and submitted together upon the evidence in one of the records. The interest of the McKay & Bigelow Heeling Machine Association is represented by the appellant, Glidden, while that of the Union Heel Trimmer Company is represented by appellee Noble and appellee Busell, respectively. The following are the issues in the controversy: 1. In a heel-trimming machine, a rotary heel cutter, a carriage, a support for it, a rand guard attached thereto and shaped to project over the heel-cutter, and a rotary rand-cutter carried by the said carriage, the said parts combined, whereby the 591 PAT 95- -18 position of the rand-guard with its rand cutter and the rotary heel cutter may be changed relatively to expose more or less of the edges of the cutter-blades as the contour of the heel to be trimmed varies.-No. 14, Glidden v. Noble. 1. In a heel-trimming machine, a rotary heel-cutter, a recessed rand-guard, and a rotary rand-cutter having its blades projecting outwardly between the blades of the rotary heel cutter adjacent to the rand-guard, whereby the position of the rand guard with its rand-cutter and the rotary heel-cntter may be changed relatively to expose more or less of the acting edges of the blades of the heel-cutter as the contour of the heel being trimmed varies. 2. In a heel-trimming machine, the combination, with a rotary heel-cutter, of a rotary rand-cutter and a rand or counter guard, both located at the end of the heelcutter and both together made movable in substantially the line of the axis of the said heel-cutter and with relation to the end thereof to uncover more or less of the heel cutter blades as the rear of the heel is being trimmed.-No. 15, Glidden v. Busell. The decision of the Examiner of Interferences in each case was in favor of Glidden. These were reversed and the issues determined in favor of Noble and Busell, respectively, by the Board of Examiners in-Chief, whose decisions were affirmed on appeal to the Commissioner in person. For many years before the inventions claimed by the parties herein heel-trimming machines had been in use, but the randing had been done upon a separate machine. There were very many different sizes, lengths, and shapes of heels in course of manufacture. Among these the long, slanting, and deeply-cut "ogee" and "Pompadour" heels occasioned most labor and difficulty in trimming and randing. A machine that would contain in combination the trimming and randing devices, so that heels of all shapes and designs might be trimmed and randed at the same time, was one very much to be desired, and the attention of manufacturers and inventors was early directed thereto. The best of the old trimming devices had one or more knives or cutters fastened to a revolving hub, against which the shoe-heel to be trimmed was held by the operator. A danger to be guarded against was that of injury to the upper of the shoe by coming in contact with the cutter knives and the randknife in the two operations of trimming and randing. In a combination heel-trimmer and rand-cutter two main objects were to be accomplished: First. The trimming blades and the rand-knife were to revolve through or by means of the same shaft, so as not to come in collision while performing their separate functions. Second. A rand-guard for the complete protection of the rand and the upper of the shoe, which, in cooperation with the rand-knife, would have an axial motion also, so as to cover or uncover more or less of each cutter blade as the trimming should progress and the shape and varying length of the heel might demand. In the "ogee" and "Pompadour" shapes the heel is much longer at the rear than in front, and the cut is much deeper as it progresses from the heel-seat to the top lift or point. Consequently the operation of the cutters had to be more and more contracted as the trimming progressed, and the direction of the rand-knife, which followed the line of the rand, had also to be maintained. To the attainment of these ends the efforts of the several rival inventors were directed. James H. Busell's application for a patent was filed December 18, 1886, and therein he says: The main feature of my invention consists in the combination of a rotary cutter with a rand-knife and recessed guard, the blades of the rand knife moving between blades of the cutter, and the rand-knife and recessed guard yielding with relation to the cutter as the heel varies in height, as more fully set forth herein below. The invention is set forth in detail in the following drawings (page 276), and description referring thereto: In the drawings, A is the main cutter for trimming the edge of the heel. D is the rand-knife, E the guide for the corner of the top lift, and F the recessed rand guide or guard; for this part F performs a double function-that is, it is a guide to enter and guide by the rand (or the angle between the heel and upperleather) and also a guard to prevent the heel-seat end of cutter A (and the randknife D, when used) from injuring the upper-leather of the boot or shoe. * In the machine shown in Figs. 1 and 2 of the drawings, cutter A revolves with shaft B and has no lateral motion on that shaft. The guide E for the corner of the top lift may revolve with shaft B, or be held stationary, as will be well understood by all skilled in the art, but must, of course, always stand close up to the side of cutter A, so that the short wall of the guide E will be substantially flush with the cutting-edges of cutter A. (See Busell patent, No. 308,056, November 18, 1884.) The hub f of the recessed rand-guide F is shown as mounted on a sleeve, B2, which loosely fits the outer end of shaft B, so that the rand-guide F and the sleeve B2 may move laterally until they strike the head of screw B3. This sleeve B' is splined to the shaft B, and therefore revolves with it when the rand-knife D is used, for the rand-knife D is made fast to sleeve B' by screws f2, as it must, of course, revolve in order to cut out the rand. The recessed rand-guide F, I have shown as a cup; but it may of course be a segment. It is preferable in practice to make it a complete cup when the rand-knife D is used with it; but when not so used, as is the case in some kinds of heels, it may be a small segment, as will be clear to all skilled in the art. The heel-rest G is supported in any suitable way, too well known to require further description. In Figs. 5 and 6 the cutter A is mounted on shaft B, which is hollowed out to receive a spindle, B', carrying rand-knife D. Spindle B' is kept in the opening in shaft B and compelled to rotate with shaft B by means of a pin, b', passing through slot b in spindle B'. The guide E is mounted on shaft B at one end of the cutter, and the guide E, cutter A, and rand-knife D all rotate together, the blades d of the rand-knife moving back and forth between the blades a in cutter A, according to the variations in the height of the heels. The rand-knife D is clamped against a shoulder on spindle B' by means of a sleeve B2, and a screw, B3, which passes through the sleeve into the end of the spindle. On sleeve B, between the head of screw B and a shoulder on sleeve B', is loosely mounted my recessed rand-guide F, whose hub ƒ is slightly shorter than sleeve B2, so that the rand-guide does not rotate with the rand-knife when the heel-trimmer is in use, as will be clear to all skilled in the art; but the rand-knife and rand-guide yield together to suit variations in the height of the heel, the recessed rand-guide receiving more or less of the heel-seat end of the cutter as the heel varies in height. |