they are here, and their sole difference lies in that the protuberance of one has a small nut at the end and the other has none, the difference is not of such material character as to afford ground for the grant of a design patent.

We are therefore of opinion the design patent is void for want of patentable novelty.

Let a decree dismissing the bill be drawn.

[U.S. Circuit Court-Northern District of New York.]

EDISON ELECTRIC LIGHT COMPANY v. ELECTRIC ENGINEERING AND SUPPLY COMPANY.

Decided February 27, 1896.

75 O. G.. 186.

BERGMANN-SOCKET FOR INCANDESCENT ELECTRIC LAMPS-LIMITED CONSTRUCTION-NON-INFRINGEMENT.

Letters Patent No. 311,100, granted January 20, 1885, to Sigmund Bergmann, for sockets for incandescent electric lamps, covers simply improvements upon the prior art in matters of detail only and must be confined strictly to what has been described and shown, and with this limited construction the defendant does not infringe.

FINAL hearing in equity.

Mr. Charles S. Mitchell and Mr. Richard N. Dyer for the complainant. Mr. Alfred Wilkinson for the defendant.

STATEMENT OF THE CASE.

The patent, No. 311,100, on which this action is founded was granted to Sigmund Bergmann January 20, 1885, for improvements in sockets for incandescent electric lamps. The improvements relate to sockets designed to receive lamps whose terminals are a screw-threaded ring and a plate on the base of the lamp. The object was to provide a compact socket having few parts, a small amount of insulating material, and a simple circuit-controller.

The specification says, among other things:

A is a disk of insulating material. I prefer to use a non-combustible and non-carbonizable material, such as lava. This is desirable in a socket of this character, because the contacts and terminals are placed close together in a small space, so that there may sometimes be danger of a short circuit between them, and also circuit is continually being made and broken by the socket-key, in some cases causing considerable spark.

The socket, constructed as described, is of a neat appearance, is very compact, has no useless mass of insulating material, being merely a metal skeleton with just enough insulation to separate the terminals, all the circuit connections being carried by the single insulating-disk instead of being divided among two or more insulating portions, as heretofore. The circuit-controller making and breaking circuit

upon the lamp-tip employs fewer parts and is simpler in construction than any heretofore used, while it is very efficient in operation, and the whole may be put together or taken apart with great readiness, the parts being easily separable.

As stated by the patentee, the socket is compact and simple. It is of the usual type and differs from those which preceded it in matters of detail only. No minute or extended description is necessary. The socket will be readily understood by reading the above excerpts in connection with the claims. The claims involved are as follows:

1. In a socket for an electric lamp, the combination of two circuit terminals, one a sleeve adapted to make contact with the band or ring terminal, the other a spring movable into and out of contact with the bottom terminal of the lamp, substantially as set forth.

3. In a socket for an electric lamp, the combination, with a disk of insulating material, of a contact-sleeve for making contact with the band or ring terminal of the lamp, a contact-piece for making contact with the bottom terminal of the lamp, and two terminals for the circuit wires leading to the socket, all said socket contacts and terminals being carried by the said insulating-disk, substantially as set forth.

4. In a socket for an electric lamp having two terminals for making connection with corresponding lamp terminals, the combination of a metal supporting portion and a disk of insulating material carried thereby and carrying all the terminals and contacts of the socket, substantially as set forth.

9. The combination, with a contact-spring, substantially of the form described, of a separate turning-key bearing against said spring, whereby it may be forced upward to make contact, substantially as set forth.

13. In a socket for electric lamps, the insulating-body which supports the terminals or connections, formed of non-combustible material, substantially as set forth.

Claims 1 and 9 relate to the circuit-controller, the others to the insulating disk.

The defense is that these claims, if valid, must be limited to the precise construction shown, and, as so limited, the defendant does not infringe.

COXE, J.:

It is unnecessary to discuss at length the many questions presented by the elaborate record and briefs, for the reason that when subjected to analysis it must be found that Bergmann's claim to invention rests upon two narrow foundations-first, the character of the insulation, and, second, the form of the circuit controller or key. Unless invention can be found in these two features it can be found nowhere.

The use of incombustible insulating material in this art was very old. Soapstone, glass, and plaster-of-paris had been used, and porcelain had been suggested by Gordon in 1880. The patentee says:

I prefer to use a non-combustible and non-carbonizable material, such as lava. The character of the insulation is left optional, the patentee merely expressing a preference for material having the characteristics of lava. He does not claim lava or any other material specifically.

Assuming that he discovered lava as applied to this art and that its substitution for the materials previously used constituted invention, and, assuming, further, that the claims can be limited to lava, it is not

easy to see upon what principle he acquired a monopoly of porcelain, which is the material used by the defendant. Especially is this true when it is remembered that Bergmann did not use porcelain until two years after the date of his patent, although, as above stated, its use was suggested by Gordon five years prior to that date.

An examination of this record must convince the impartial reader that the use of non-combustible insulating material in this and analogous situations was not new with Bergmann and that its advantages were recognized by a number of electricians long prior to the date of his patent.

If the disk claims are construed broadly as covering all kinds of noncombustible insulating materials, they are clearly void, because noncombustible material had been used in similar combinations, and if these claims are limited to lava the defendant does not infringe for the reason that it uses porcelain and not lava.

If the court were dealing with a foundation patent, it is not unlikely that porcelain would be regarded as an equivalent for lava in the same way that soapstone and glass, broadly speaking, might be so regarded; but, as will be seen hereinafter, Bergmann is not entitled to the benefit of the doctrine of equivalents. He was the first to use lava. It would seem from the record that no one cares to dispute his right to its exclusive use. Lava is not the commercially-successful insulating material of to-day; porcelain is. To give Bergmann a monopoly of porcelain and all similar substances because he was the first to adopt a material which no electrician wishes to use at the present time would not only do injustice to the defendant, but to all others who have made or are endeavoring to make improvements in this art.

Circuit-breakers in the sockets of incandescent lamps were old at the date of the patent in suit. One of these was before the court in Schuyler Electric Co. v. Electric Engineering and Supply Co., (C. D., 1895, 703; 73 O. G., 1419; 62 Fed. Rep., 588; 66 Fed. Rep., 313.) It was there held that as early as 1881 a claim for such a device must be limited to the precise mechanism shown and described. Since that date and prior to the date of Bergmann's application key circuit-controllers operating in a great variety of ways were devised by a number of electricians, including Bergmann himself. It is not, of course, pretended that a circuitcontroller located in a lamp socket was new with Bergmann. All that is claimed for his key is that it is simpler and better than those which preceded it. The specification says:

The circuit-controller making and breaking circuit upon the lamp-tip employs fewer parts and is simpler in construction than any heretofore used.

In short, as to both branches of the controversy, it is perfectly obvi ous that Bergmann was in no sense a pioneer. Unquestionably he produced a simple, compact, durable, and efficient socket; but the art did not begin with him and it ought not to be held to end with him. He has originated no new principle of operation. He has produced no

Other inventors

new result. He improved upon existing structures. should be permitted to do the same. With the exception of claim 13, which it would seem is too broad to be upheld upon any rational theory, the claims in question may be sustained if confined to the precise structures described and shown. They cannot, however, be held to suppress improvements which differ from Bergmann as essentially as he differs from the prior art.

When it is remembered that in 1884 and 1885 all experimenters along this line had to deal with a well-known lamp and an almost equally well-known form of socket, which of necessity was required to conform to the changes made from time to time in the lamp-base, it is plain that the area of action was necessarily circumscribed. For years both lamp and socket have been of a conventional type. Admitting that the material of the disk and the details of the key construction were new, is it not manifest that the assembling of these well-known elements in an old form of socket to receive an old key form of lamp did not involve any high order of inventive skill and that the combinations thus formed must be restricted to the mechanism shown?

The defendant's sockets of course resemble the Bergmann socket, as they do all the sockets in use; but they resemble it only in points which are common to all. Those features of construction which were new with Bergmann the defendant does not use. The defendant's sockets are made under patents granted to Jesse L. Hinds in 1891. The insulatingdisk is porcelain instead of lava. The circuit-controller is different in many essential particulars. Bergmann's key is insulated at its tip, moves forward and back in the arc of a circle of about ninety degrees, has a slow break, unless care is used, and is provided with a metal handpiece.

The defendant's key has a porcelain handpiece, the key proper being in the circuit. It operates with a cam action and can be turned in either direction an indefinite number of times. There is no possibility of turning the key the wrong way, as in the patented device, and the circuit is broken by an instantaneous separation of the parts.

The defendant does not have the key-sleeve, and its insulating-disk differs from the disk of the patent in structure and operation.

The Thomson-Houston socket of the defendant does not have the sleeve-terminal of the first claim, but a screw-threaded plug, which, though making mechanical and electrical connection, can in no true sense be termed a sleeve.

Many other points of differences might be pointed out were it necessary to do so, but it is not.

To pursue the discussion further would only lead to inconsequent findings as to matters of detail without useful result. If the broad construction contended for by the complainant were permissible, the defendant would unquestionably infringe; but with the limited construction made necessary by the prior art and by the language of the patent it is equally manifest that the defendant does not infringe.

Upon the whole case the court is satisfied that Bergmann was simply an improver upon the prior art in matters of detail only and that he must be confined strictly to what he had described and shown.

Hinds was also an improver, and in using the socket covered by the Hinds patents the defendant does not trespass on any territory belonging to Bergmann. There are many points of similarity between Hinds and Bergmann, but they are features free to both. The features which were new with Bergmann the defendant does not use.

The bill is dismissed.

[U. S. Circuit Court-Eastern District of New York.]
TAGLIABUE v. SONDERMANN.

Decided May 14, 1895.

75 O. G., 188.

1. TAGLIABUE-SYRINGE-ANTICIPATION.

Letters Patent No. 325,132, granted Angust 25, 1885, to Charles J. Tagliabue, for a syringe in which the piston is made expansible without being removed by having the piston-rod threaded and working in a jam-nut which is held stationary for tightening the screw and expanding the piston by being drawn into and held by a socket in the cylinder-head, is anticipated by a piston-packing for pumps.

2. INFRINGEMENT-ANALOGOUS USE-Syringe-PUMP.

Where the elements of a syringe are found operating together in a pump in the same way as in the syringe and for the same purpose, Held that, a syringe being a kind of pump, the uses of the elements in each are closely analogous. The difference, if any, is only in size, which does not, however, affect the relation or operation of the elements.

Messrs. Welch & Daniels and Mr. John Henry Hull for the complainant. Mr. Arthur v. Briesen for the defendant.

WHEELER, J.:

This suit is brought upon Patent No. 325,132, dated August 25, 1885, and granted to the plaintiff for a syringe in which the piston is made expansible without being removed by having the piston-rod threaded and working in a jam-nut which is held stationary for tightening the screw and expanding the piston by being drawn into and held by a socket in the cylinder-head. The claims are for:

1. In combination with the screw-threaded piston-rod, the expansible piston, and the jam-nut fitted on the piston-rod to act on the piston, the cylinder-head having the axial passage for the piston-rod provided with a socket to receive the jam-nut and hold it stationary in the rotation of the piston-rod, substantially as shown and described.

2. The screw-threaded piston-rod, the expansible piston, and the jam-nut arranged on the piston-rod to act on the piston, and constructed in form of a tapering polygon, in combination with the cylinder-head having the axial passage for the piston-rod, provided with a socket of corresponding form to the jam-nut to receive the latter and hold it stationary in the rotation of the piston-rod, substantially as described.