tanner knew how to make, and many of them had made-was preferable for some uses (notably for belting) to perfectly tanned leather. But that discovery, even if it could be patented, has not been claimed. And I may further add in this connection that the greater tensile strength of leather imperfectly tanned (which is the chief merit claimed for complainant's leather when used for belting purposes) was a fact well known to tanners long before the date of complainant's patent. It was well understood among tanners that raw hide had greater tensile strength than leather thoroughly tanned, and hence that a strip of leather with an interior stratum of raw hide between tanned surfaces was necessarily stronger than a strip of leather of the same dimensions tanned through and through. It will be understood, of course, that in deciding this case the court does not impugn the doctrine that the accidental discovery of a new compound or new article of manufacture by a person who did not have or retain sufficient knowledge of the process to reproduce the compound, or explain how it was produced, will not invalidate a patent granted to another person who subsequently makes the same compound or article, and explains the method of production. Ransom v. Mayor, 1 Fish. Pat. Cas. 265; Tilgham v. Proctor, 102 U. S. 711. That doctrine has no application to this case, for the reason that tanners have long known how to make the new article of manufacture described in the patent; and when such article has heretofore been made, its production was not accidental, but intentional.

With reference to the contention of complainant's counsel that the patent in controversy should be upheld on the strength of the decision in Smith v. Vulcanite Co., supra, and that no distinction can be drawn between the two cases, it will suffice to say, that in the case cited the patent was upheld on the ground that a new product had resulted from the described process, that differed from all that had preceded it in degree of usefulness and in kind, and that had new uses and properties. In the case at bar the alleged new product is conclusively shown to be old, and the process by which it is produced is also old. For want of patentable novelty the patent is adjudged to be void, and the bill is accordingly dismissed.

ROYER v. SCHULTZ BELTING Co. et al.

(Circuit Court, E. D. Missouri, E. D. October 14, 1889.)

PATENTS FOR INVENTIONS-EXTENT OF CLAIM-TREATMENT OF HIDES FOR BELTING LEATHER.

The claim of letters patent No. 149.954, issued to Herman Royer, April 21, 1874, was for "the treatment of the prepared raw hide in the manner and for the purposes set forth." The method of treatment described was (1) the removal of the hair from the hide by sweating; (2) drying the hide perfectly hard; (3) inserting it in water for 10 or 15 minutes; (4) fulling or softening it by mechanical means; (5) spreading on it a certain mixture; (6) fulling this mixture into it in a suitable machine; (7) moistening it 4 or 5 times a day; (8) stretching it, and cutting it into suitable pieces. The specification refers to the patentee's "mode of preparing

hides," and says that it is necessary to make use of a preparation substantially as described, in order to render raw hide fit for use. The claim was amended so as to conform to above on suggestion from the patent-office that a claim for preparing raw hides by the fulling and bending operation and the preserving mixture was not patentable. Held, that the claim must be limited to the whole process described, and the patent was not infringed by a variation in the method of making belting leather; as, by liming, instead of sweating, green hides. Following Royer v. Coupe, 38 Fed. Rep. 113.

In Equity.

On bill for infringement of patent.

Broadhead & Haeussler, Wm. M. Eccles, and M. A. Wheaton, for complainant.

C. H. Krum, for defendants.

THAYER, J. The testimony in this case does not sustain the charge of infringement, unless the claim of Royer's patent, No. 149.954, be construed as covering broadly the method of making belting leather out of prepared raw hide, by stuffing the hide, by means of a fulling-machine, with a mixture composed of tallow, wood-tar, and resin. In the case of Royer v. Coupe, 38 Fed. Rep. 113, it was held that the claim did not admit of such a liberal interpretation; that, if the claim was given such a broad scope, the patent would necessarily fall in view of the prior state of the art of tanning, and hence that the claim in question must be limited to the entire process described in the specification, consisting of (8) successive steps, whereby raw or green hides are first denuded of their hair by means of a "sweating process," then "dried hard," and subsequently stuffed in a fulling-machine, with a preserving mixture consisting of tallow, wood-tar, and resin. In that case it was held that the patent was not infringed, unless the process was used in its entirety; and, inasmuch as the defendant in that case removed the hair from green hides by a liming process, instead of by sweating, the bill was dismissed.

In the case at bar the testimony shows that the sweating process mentioned in the Royer patent is not used by the defendants. It also appears that by the defendants' method of treatment the hides are "limed" and "bated," and that they are also partially tanned. In each of these respects defendants' process varies from the Royer process, and the patent is not infringed, unless this court gives a broader scope to the claim than was s accorded to it in Royer v. Coupe. This the court must decline to do. The specification and claim of Royer's patent is so worded, as was well shown by Judge COLT, as to leave it in a great measure uncertain whether the patentee intended to claim the entire process described, of removing the hair from green hides by sweating, and subsequently drying them, and then stuffing them, by means of a fulling-machine, with a preserving mixture, or whether he intended to claim only those steps of the process by which a particular preserving mixture was worked into the fiber of prepared raw hide, by means of a fulling-machine. The doubt which arises from the language of the specification as to the proper construction of the claim is in itself sufficient to warrant the court in adopting the construction already given to it, after full consideration, in the first circuit, on the ground of comity. But, in addition to that view of the matter,

it is proper to add that Judge COLT states as one of the grounds of his decision, that the file-wrapper in the patent-office shows that when Royer's application for a patent was pending, the patentee modified his original claim, which as drawn, was so worded as to cover the stuffing process with a preserving mixture, and cast the claim in its present form solely in view of a communication from the patent-office to the effect that the whole method described in his specification of making belting leather out of green hides might be patentable, whereas that portion of the process which consisted merely in stuffing prepared raw hide with a preserving mixture such as was described, by means of a fulling-machine, was not patentable. The fact thus adverted to, that Royer cast his claim in its present form in compliance with a suggestion from the patent-office that the whole process by him described was perhaps patentable, while a part of it was not, ought to settle the construction of the claim, no matter what view might otherwise be taken of the same. Admitting the rule to be that a claim in a patent is to be construed with reference to the specification, yet, when the claim, considered with reference to the specification, is ambiguous, special significance should be attached to correspondence between the patentee and the officials of the patent-office, showing how the latter construed it, and what was the extent of the monopoly intended to be granted. This court accordingly adopts the construction given in Royer v. Coupe, holding that Royer's claim must be limited to the whole process described in his specification, and that the patent is not infringed by one who varies the method of making belting leather in a material respect, as by liming green hides to remove the hair, in place of sweating them. The bill is accordingly dismissed.

ROYER v. SCHULTZ BELTING Co. et al.

(Circuit Court, E. D. Missouri, E. D. October 26, 1889.)

PATENTS FOR INVENTIONS-BELT-SHIFTING DEVICE.

The claim of certain letters-patent granted to Herman Royer was, "in combination with the drum of a raw-hide fulling-machine operating to twist the leather alternately in one direction and the other, a shifting device for the purpose of making the operation automatic and continuous." The belt-shifting device had long before been used in combination with the roller of a washing-machine for the same purpose, and could obviously be used in combination with many machines, to impart reverse motion. It appeared that it was first applied to the patentee's machine by a mechanic, who was not shown to have worked under the patentee's direction. Held, that the combination was not patentable, and, if it was, that the patentee was not a sole inventor. Following Royer v. Manufacturing Co., 20 Fed. Rep. 853.

In Equity. On bill for infringement of patents.

Broadhead & Haeussler, William M. Eccles, and M. A. Wheaton, for complainant.

Chester H. Krum, for defendants.

THAYER, J. The patent involved in this case was held to be invalid in the case of Royer v. Manufacturing Co., 20 Fed. Rep. 853. In the case

at bar it is strenuously insisted that the learned judge who decided that case, overlooked the fact that the patent in question was for a combination of a belt-shifting device, with the drum of a raw-hide fulling-machine, and that he erroneously decided the case upon the theory that the patent only covered the shifting device, and was void because that device was old, or because the patentee had merely applied such old device to a new use. There is some language in the decision that no doubt furnishes ground for such contention, but in view of all that was said it appears, I think, that the court in fact held the patent to be void, on the ground that the combination described and claimed was not a patentable combination, in view of the state of the art; and in that view I

concur.

The single claim contained in this patent is no doubt a combination claim. “I claim," says the patentee, "in combination with the drum of a raw-hide fulling-machine operating to twist the leather alternately in one direction and the other, a shifting device, for the purpose of making the operation automatic and continuous, substantially as described." In the case at bar the testimony shows without contradiction that long prior to the time that the patentee claims to have combined the beltshifting device with the drum of a fulling-machine, it had been used in combination with the roller of a washing-machine, that was designed to turn first in one direction and then in the other, for the purpose of making that operation automatic. The same proof seems to have been tendered in the case above cited, decided by Judge DRUMMOND. The beltshifting device in question is nothing more than a device to shift a driving-belt from one pulley to another, the two pulleys being located side by side or in close proximity to each other, and being keyed to different driving-shafts. Motion is communicated to the belt-shifter by a belt passing over a pulley keyed to a revolving shaft, and, when thus set in motion, it operates automatically to push the driving-belt of a machine from one pulley to another by a species of mechanism not necessary to be described, because not involved in this case; and in this manner, by giving the driving-shafts to which the pulleys are keyed a bearing on opposite sides of a wheel or roller to be turned, its motion is reversed at intervals. From the brief description here given it is obvious that the belt-shifting device in question is susceptible of being used in combination with a great many machines, for the purpose of imparting reverse motion; and it is admitted to be an old device. Complainant claims to have placed it in combination with the drum of a fulling-machine, to make it revolve in different directions at intervals, and upon this claim his patent is based. Prior to that time, however, Peter F. Clerc combined it with the roller of a washing-machine, to reverse the motion of the roller periodically; and it goes without saying that it might be combined with the driving wheel or shaft of any machine in such manner as to reverse its motion automatically, and that each particular combination could be claimed as patentable, if complainant's patent is valid. The application or adaptation of the belt-shifting device to a fulling-machine appears to the court to have involved merely an exercise of ordiv. 40F.no.3-11

nary mechanical skill, considering the fact that the belt-shifting device was old, and that Clerc had already placed it in combination with the roller of a washing-machine for the purpose of making its action automatic. This view is strongly enforced by the testimony showing how the alleged patentable combination happened to be made. It appears that Royer, the alleged inventor, was referred to Clerc as a person who knew how to make "reversers," as the belt-shifting device was then termed; that he applied to Clerc to make a reverser for his fulling-machine, and gave him a plan of the same, and that Clerc accordingly made one adapted to the fulling-machine in question, and that it worked well the first time it was tried, and was the same device that Clerc had previously applied to a washing-machine. It does not appear that Royer gave Clerc any directions as to the construction of the reverser, or mode of application to a fulling-machine, or that the latter worked under Royer's supervision. Clerc was applied to as a mechanic who knew how to make reversers, and who understood how to adapt them to machines of any description, for the purpose of imparting reverse action automatically. In the light of this testimony it appears to the court that the combination of the belt-shifter with the drum of a fulling-machine was not a patentable combination, and that, if it was, the alleged patentee is not solely entitled to the credit of the invention, but that Clerc was at least a joint inventor. The bill in either event must be dismissed; and it is so ordered.

MCBRIDE v. GRAND DE TOUR PLOW Co. et al.

(Circuit Court, S. D. Iowa. October 18, 1889.)

1. FEDERAL COURTS-JURISDICTION-WAiver.

A corporation of another state, defendant in a suit in a federal court which has jurisdiction of the subject-matter, by appearing, filing answer, and taking testimony, waives its right to insist on the hearing that it can be sued in the district of its residence only.

2. PATENTS FOR INVENTIONS-RIDING PLOWS-NOVELTY.

Letters patent No. 284,036, issued to John H. McBride, for a "riding attachment for plows" were for a combination enabling the driver of a plow, while seated on it, to regulate the width and depth of furrow. It appeared on bill for infringement thereof that prior patents had been granted for similar inventions, but it was not clear that complainant's combination was not new. Held, that the prima facie case of validity of the patent arising from its issue was not overcome.

3. SAME-INFRINGEMENT.

Complainant's patent is not infringed by plows manufactured under letters patent No. 353,234, issued to Charles S. Ruef, November 23, 1886, which attains the same objects, but by a different combination of the parts, as complainant's patent does not apply to the independent parts, they having been previously used.

In Equity. Bill for infringement of patent.

Cole, McVey & Clark, for complainant.

John G. Mannahan, for defendants.