the same thing, where the work to be done is in the hands of an officer who performs all of his duties under my direction, and I am charged with the responsibility of seeing that that work is properly performed.

If I am correct in this conclusion, and I see no escape from it, then it is clear that I have the right to direct the Commissioner of Patents in the performance of all administrative or ministerial duties.

The duty now to be performed, as before stated, of issuing a patent to Mr. Sargent is merely ministerial.

The last question presented for my consideration is: Should an order now be made for the issuance and delivery of letters patent to Mr. Sargent for the invention to which he has been adjudged entitled by your Office? There is no doubt that the invention claimed is patentable. In fact, this is conceded by all parties, and has been so determined. The only reason which has been assigned why a patent should not now issue to Mr. Sargent is that a bill in equity has been filed in the supreme court of the District of Columbia, in consequence of which the same questions which have been determined in your Office will be considered and passed upon, and it is possible that by a trial de novo a different conclusion may be arrived at from what has already been reached. This, in my opinion, is not a sufficient reason for withholding the patent. It must be presumed that the questions at issue between the parties have been correctly decided in your Office upon the law and the facts presented.

If the decision made in your Office is erroneous, Mr. Burge has his remedy in the court, but pending that inquiry executive action cannot be stayed. Due regard must always be given to the rights of all parties in interest in any proceeding, but if, after a fair consideration of all the questions affecting them, you are compelled, in obedience to law and the facts presented, to decide in favor of one and against the other, so that your judicial functions are exhausted, it is neither equitable nor just that the party who has established his right to the claim in controversy, should be delayed in the enjoyment of it, so far as it depends upon your action, because it is possible that another tribunal, not appellate, may determine the same question otherwise.

If the filing a bill in equity by parties asserting adverse claims, to retry questions already decided by your Office, could be permitted to stay final action on your part, very few patents for really valuable inventions would, in my. opinion, hereafter be issued, and the injurious results which would necessarily follow would be beyond calculation.

The administration of your Office should be such as to promote rather than discourage the making of useful and important inventions and discoveries.

I am not unmindful of the spirit of absolute fairness to all parties which prompted your action in this case, but I am compelled, upon a full consideration of the questions of law involved and my sense of duty in the premises, to arrive at a different conclusion.

You are, therefore, hereby directed to prepare for issue the letters

patent for an improvement in time-locks to which Mr. Sargent has been adjudged entitled.

I herewith transmit the application and the papers filed therewith.

Very respectfully,

To Hon. ELLIS SPEAR,

Commissioner of Patents.

C. SCHURZ,

Secretary.

DECISIONS

OF THE

UNITED STATES COURTS

IN

PATENT CASES,

1877.

United States Circuit Court-District of Massachusetts.

OLIVER PEARL ET AL vs. THE OCEAN MILLS ET AL.
O. G., vol. xi, p. 2.

In Equity.-Before SHEPLEY, J.-Decided January 2, 1877.

Prior to the invention of Pearl unsuccessful attempts had been made to reduce the weight of the ring-spindle and bobbin in general use, and thus diminish the amount of power required to run them. The patentee effected this desideratum by making the blade shorter than the bobbin, which was provided with a bearing therefor in the center. The bobbin was made light, and a plug or bushing inserted in the upper end to strengthen it. The upper bushing forms no function in the combination of the bobbin and spindle, and the words "the described bobbin," occurring in the claims, must be construed not solely with reference to the words in the specification, but with reference also to the limitations in the context of the claims.

When in the specification of the original patent the inventor describes a new and useful combination of a number of ingredients performing, in combination, certain functions less than he has claimed, he may, in the reissue, claim such combination of the less number which he has described, suggested, or substantially indicated as his invention, but failed to include in his claims.

A reissue need not describe the invention in the exact language of the original, but may contain a more full and exact description of what was there imperfectly described.

Mere change of form or location in a mechanical structure is not the subject of a patent, without showing that some new or materially-improved result is obtained. The greatly-improved result attending a change in the form or location of parts, when viewed in connection with the failure of the many experiments previously made to accomplish similar results by mere structural changes, has a great tendency to prove that they involve some functional difference beyond mere mechanical perfection and adjustment.

BENJAMIN F. THURSTON, D. HALL RICE, and CHARLES E. PRATT for complainants. CHAUNCEY SMITH, JAMES J. STORROW, and WILLIAM W. SWAN for defendants.

SHEPLEY, J.;

OPINION OF THE COURT.

Reissued letters patent No. 6,036 were granted to the complainants September 1, 1874, for an "Improvement in bobbins and spindles for spinning machines."

133

The bill in this case is brought for an alleged infringement of the reissued letters patent.

The answer of the defendants denies infringement, and alleges that the patent is void on its face, for the reason that the difference between what the specification describes as old and that which it describes as new is not a difference which constitutes an invention patentable under the law; that the patent is void for want of novelty, because, in view of the state of the art existing at the date of the alleged invention, the device described in the specification is not new in the sense of the patent law, nor substantially different from what was previously known and in public use; that the reissue is void because not for the invention disclosed, and intended to be covered by the original patent.

Before the improvement of Pearl, the ring-spindle and bobbin made by the leading spindle-makers, and as used and understood by manufacturers generally, had an established and approved form, size, and weight, as represented by the Fig. 2 in the drawing of the original patent. The spindle was constructed to rest and revolve at its lower end in a step in the lower rail of the frame. It was supported by the bol. ster in the upper rail of the spinning-frame. Between the step on the lower and the bolster on the upper rail was attached to the spindle the whirl, by means of which and its connections motion was communicated to the spindle. Above the bolster the blade of the spindle projected about six inches, receiving and extending through the bobbin. The usual weight of the spindle was about twelve ounces, the propor. tion of the weight of the blade above and the butt below the top of the bolster being about two and one-quarter ounces for the weight of the blade and nine and three-quarters ounces for the weight of the butt. The wooden bobbin which was used in combination with this spindle was chambered or reamed out, so as to leave a bore or central chamber of greater diameter than the spindle, except at the top and foot of the bobbin, where there were frictional adhesive bushings adjusted to keep the bobbin in the same relation to the spindle and to enable the spindle to carry the bobbin with it in its rotation. This rotation, in practical use in spinning, was at the rate of five or six thousand revolutions per minute. Nearly one-half of the whole power utilized in running the machinery of a cotton-mill was expended in driving the spindles for spinning. Experiments had been made of removing a portion of the metal from the butt end of the spindles below the bolster, in the expectation that by thus reducing the weight of the spindles much less power would be required to drive them. These experiments failed. Tested by the dynamometer, the spindles thus rendered lighter by the removal of some portion of the weight of that part of them below the bolster required more power to drive them than the old and heavier spindles. To overcome the tendency to gyratory motion in the comparatively unsupported blade of the spindle, it appeared requisite that a certain fixed proportional relation should be maintained between the respective

weights of the blade and the butt of the spindle, and, as one of the conditions of economical spinning, involved, necessarily, the use of a bobbin of or about the length of six inches. Before the invention of Pearl no substantial advance had been made in the efforts to modify the form of the spindle in common use so as to effect a material saving of the power requisite to drive it with the required velocity of rotation.

The device of Pearl consists in a combination of a modified form of the ring-spindles with a modified form of the bobbins, having frictional or adhesive bearings, uniting them to the spindles, and carried with it. This modified or improved spindle was shortened in the blade, and, instead of extending as before substantially to the upper end of the bobbin, was only made of sufficient length above the bolster to enable an adhesive bearing, which he provided in the center of the bobbin, to hold the bobbin firmly on the spindle. He correspondingly lightened the lower part of the spindle and whirl below the bolster, without destroying the proper proportional relation of the parts of the spindle to each other, necessary to insure steadiness of rotation. He also modified the form of the bobbin, making it of a light or thin shell, retaining the lower frictional bushing or adhesive bearing at the bottom, and adding a frictional adhesive bushing in the center of the bobbin, the lower and the central bushings sustaining the bobbin on the spindle, in place of the former mode of sustaining it by adhesive bearings at the top and bottom of the bobbin. He added a plug, re-enforce, or bushing also at the top of his bobbin, not having, apparently, any function in combination with the spindle, with which it did not come in contact, but only as one mode of strengthening the bobbin itself.

He describes his invention thus:

My invention relates, first, to certain improvements in the construction of bobbins, having frictional or adhesive bearings, uniting them to the spindle and carried by it, the object of this part of my invention being to make a very light bobbin, and strengthen its various parts so that it will not easily be crushed or broken; second, to an improved construction and combination of both the bobbin and ring-spindle, so that they can be successfully used with greater advantage of length of traverse, speed, and steadiness of rotation than heretofore attained, and at the same time be much lighter, the object of this part of my invention being to greatly diminish the amount of power required to drive the spindle at any given speed, and increase its efficient operation at the same time.

After describing the spindles and bobbius in common use, and reciting the difficulties which had attended the attempts theretofore made to reduce the weight of the entire spindle below a certain standard, he proceeds first to describe the bobbin of his improved construction:

This bobbin is made with a thin and light shell or band of wood, and has a lower adhesive or frictional bearing, k, and a middle one, i, and is also bushed at the upper end by a plug, re-enforce, or bushing, 1, and the bearing k i and bushing 1 are united to, and combined with, the shell of the bobbin, and strengthen it in all directions from being broken. The adhesive or frictional bearings k i are made to sustain the bobbin on the spindle in one position with relation to the latter, and so as to enable the spindle to carry the bobbin with it in its rotation.