The details of the patented tie are described in the third claim, which is not in controversy in this litigation. While these details may be valuable and show patentable improvements, it is not clear that the improvement of the first two claims, which consists, in substance, in changing a slotted flat plate having an acute angle at one end of the slot into an eye of heavy wire having also an acute angle at one end is a patentable invention; but, assuming that it was a patentable improvement upon the preceding device, we agree with the Circuit Court that the claims are so broad as to be anticipated by the bale-tie of Isaac T. Smith, which is described in Letters Patent No. 159,463, dated February 2, 1875, unless it is important that the clasp should be made of round wire. The Smith tie consisted of a single piece of wrought-iron, malleable iron, or other suitable material having its ends bent over on the top, which thus formed a double hook with a central opening. The ends of the hook are V-shaped recesses or angles. The specification says that

when the bale is pressed and the wire passed around the same the ends of the wire are bent and passed through the central top opening, a, into the V-shaped recesses bb. When the pressure is removed from the bale the bale at once expands, drawing the wires into the V-shaped recesses and pinching them tightly therein, so that they cannot slip out from the same.

The drawings show that the clasp is made of flat iron larger than the wire of which the band is made and that the band is pinched in the Vshaped recesses. The description of the Smith tie applies perfectly well to the description of the Kilmer tie which is contained in claims 1 and 2, unless there is a patentable importance in substituting round wire for the "wrought iron, malleable iron, or other suitable material" of the Smith tie. That the tendency of small wire to be cut or abraded by contact with angular edges is diminished by contact with round surfaces is so obviously the suggestion of a mechanical rather than of an inventive mind that the substitution cannot be considered to be of a patentable character. Besides, round wire had long been a well-known article for the construction of the clasps of bale-ties of a diameter larger than that of the bands. As stated by Judge Coxe, such clasps are shown in the Lowber English patent of 1868, the Trowbridge patent of 1869, the Knipscheer patent of 1878, and the Griswold patent of March, 1883.

The improvement, as described in claims 1 and 2 of the patent, contains no patentable novelty, and the decree of the Circuit Court is affirmed, with costs.

[U. S. Circuit Court-Eastern District of Pennsylvania.]

AMERICAN SODA FOUNTAIN COMPANY v. GREEN et al.

Decided June 11, 1896.

76 O. G., 964.

1. WITTING-SODA-WATER APPARATUS-Valid-ComBINATION.

Letters Patent No. 414,272, granted November 5, 1889, to Theodore I. Witting, for improvements in dispensing apparatus for soda-water, examined and the second claim thereof Held valid, in view of the state of the art, and to be for a legitimate combination.

2. COMBINATION-ELEMENTS IN DIFFERENT STRUCTURES-VALIDITY.

The fact that all the elements of a combination may be found partly in one structure and partly in another is unsafe ground for overturning a patent. 3. SAME-COOPERATION.

When a desired object is attained as a result of the mutual relation and coöperation of the several parts of an application embraced in a claim, said claim is for a combination and not for an aggregation.

Mr. Joshua Pusey for the complainant.

Messrs. Strawbridge & Taylor for the defendants.

ACHESON, J.:

The plaintiff, suing as the assignee of Letters Patent No. 414,272, granted November 5, 1889, to Theodore I. Witting, for improvements in dispensing apparatus for soda-water, etc., charges the defendants with the infringement of the second claim of the patent.

The construction, combination of parts, and method of operation of the apparatus are succinctly and correctly stated in the following extract from the brief of plaintiff's counsel:

The Witting structure consists of a case, generally similar to those in common use, in which is contained an ice-chamber, and immediately below the latter a coldair chamber, which is a receptacle for a horizontally-removable syrup-can with a faucet in the lower part of the front end thereof, all located entirely within the said case. Beneath the bottom of the forward end of this can-receptacle is a recess open in front, and in the roof of this recess is an aperture that registers with an orifice in the faucet, through which, when the faucet is suitably rotated, a quantum of syrup may descend into a glass or tumbler placed in the recess to receive it. In the front of the case, opposite to the faucet end of the can-receptacle, is hinged, at the lower edge, a door, termed a "drop-door" in the patent, in which is journaled a shaft, whose inner end projecting into the receptacle is bifurcated so as to register with, and accurately engage, the flattened end of the faucet when the door is closed, and whose outer end is provided with a handle for conveniently turning the shaft. The mode of operation is as follows: When it is desired to draw syrup from the can, the shaft is suitably rotated—a quarter-turn-and consequently the faucet, whereupon the syrup escapes into the glass slid into the recess. When it is required for any purpose to get at the interior of the receptacle, as, for example, to extract the can in order to replenish the syrup or to insert another filled can, the door is opened and dropped down upon its hinge, the external part of the handle-shaft passing into the aforesaid recess. This permits the lateral or end withdrawal of the When the latter is returned within the receptacle, the door is swung up to

can.

the normal position, thus securely closing the receptacle, and the bifurcated shaft again engages the end of the faucet. The operation requires but an instant, so that the loss, so to say, of cold from entrance of the external air into the can-receptacle is reduced to a minimum.

The second claim of the patent is as follows:

2. The combination of the outer case provided with a recess for containing glasses, drop-doors hinged to said case above said recess and having journaled therein keys or handles for operating the syrup-faucets, and laterally-movable syrup cans and attached faucets located entirely within the case, for the purpose substantially as herein set forth.

Infringement by the defendants is not denied if the claim is valid. Two defenses are insisted on: First, that the alleged combination, in view of the prior art, did not involve invention, and, second, that the claim is for an unpatentable aggregation.

Upon a careful examination of the many prior patents put in evidence for the defense I do not find that any one of them anticipates the subject matter of the second claim of the Witting patent. Indeed, the defendants' expert admits that no one of these anterior patents contains all the elements of Witting's second claim. His language is this:

These several features associated together as specified in this claim, constitute a structure which is new in the sense that no prior structure that I know of contains all the features specified.

This witness, however, states that he finds

most of the features recited in the second claim of the Witting patent in the Lippincott 1887 patent

and that

the features which are not in the Lippincott patent are to be found either in the Adami patent or in the Edwards patent.

But it is unsafe ground upon which to overturn a patent that all the elements of the combination may be found partly in one prior structure and partly in other prior structures. (Dederick v. Cassell, C. D., 1881, 413; 20 O. G., 1233; 9 Fed. Rep., 306, 309.) The suggestion has no controlling weight here. It may be noted that the Edwards patent appertains to a totally different art, that invention relating to a combined latch and lock. The proceedings in the Patent Office resulting in the issue of the patent in suit appear to have been conducted very carefully and intelligently by the officials, and the presumption that the subject-matter of the claim in question is sufficiently new and useful to support the grant has not been successfully rebutted. The fact is not without significance that the defendants, who are old and experienced manufacturers of apparatus for dispensing soda-water, have seen fit to adopt the Witting improvement in preference to other combinations. Upon the whole this defense is not sustained.

The second stated defense must also be overruled. The useful result here accomplished, it seems to me, is the joint effect of the several parts of the apparatus embraced by the second claim. Without their

mutual relation to each other and their coöperation the desired object would not be attained. The specified union of parts is for a common purpose, which is achieved by the coaction of these parts.

The question of what is a patentable combination as distinguished from a mere aggregation of devices has been considered in this circuit in the cases of Hoffman v. Young (C. D., 1880, 628; 18 O. G., 794; 2 Fed. Rep., 74, 77) and National Cash Register Co. v. American Cash Register Co., (C. D., 1893, 160; 62 O. G., 449; 53 Fed. Rep., 367, 371.) The views expressed and enforced by the courts in those cases justify the conclusion I have reached that the second claim of the Witting patent is for a true combination in a patentable sense.

Let a decree be drawn in favor of the plaintiff.

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

BEALE et al. v. SPATE et al.

Decided June 27, 1896.

76 O. G., 965.

1. SPERRY-STAIR-PAD-NON-INFRINGEMENT.

Letters Patent No. 363,695, issued May 24, 1887, to Timothy S. Sperry, for a stair-pad, examined, construed, and Held not infringed.

2. CONSTRUCTION OF CLAIMS-LIMITATION.

The law is imperative that the language of the description and claims, when clear and unambiguous, must be adhered to, even though the court be of the opinion that the patentee has unnecessarily restricted his claims.

3. SAME LIMITATIONS BY AMENDMENT.

When, in order to obtain an allowance of a claim, it is amended by the insertion of certain limiting words, it cannot afterward be construed to be the same as the original claim. To hold that words inserted with such formality mean nothing is going beyond any reported authority.

Mr. Arthur v. Briesen and Mr. Harry M. Turk for the complainants. Mr. Robert N. Kenyon for the defendants.

STATEMENT OF THE CASE.

This action is based upon Letters Patent No. 363,695, granted to Timothy S. Sperry May 24, 1887, for improvements in stair pads.

The pad is composed of three parts: first, a stiff base of uniform thickness having one edge turned over to fit the edge of the step; second, a flexible covering secured to the edges of the base part, and, third, an elastic body of loose material interposed between the stiff base and flexible covering. The patentee asserts that a pad thus constructed has a stiff seating upon the step; that it forms an elastic support for the carpet; that its elasticity and shape can be easily restored when worn down by use, and that it can be made cheaply.

The stiff base is constructed of suitable material to retain it in the desired flat shape, such as thin wooden or paper boards. The front edge of the base is curved over to fit the front edge of the step and aid in retaining the pad in position. The covering may be of any suitable cloth or netting. The elastic material, which is loosely disposed in the closure between the base and the covering, may be cotton, hair, granulated cork, chaff, shavings, jute, or any other convenient material.

These [says the description] are disposed in a loose, separate, or disintegrated condition, so that when hardened by being trodden they can be “worked” or separated again to restore the necessary softness or elasticity to the pad. When the elastic material becomes deadened or trodden down by wear, it is only necessary to take up the pad, bend it slightly in the direction of the covering part a, shake it well, and pick or liven up the loose material by working it in any suitable way and the elasticity will be restored.

This process of working up the elastic material after it has become deadened by use is made easy by the fact that it is placed loosely in

the case.

The patentee describes the prior art as follows:

The state of the art shows that stair-pads have been made of cotton felt of a soft moderately yielding and elastic character, sufficiently rigid and stiff, however, to form a slab of unequal thickness and retain its shape, and having its front edge curved hook-like to form a lip to hook over the edge of the step; that they have been made up of a layer of cotton or other fiber placed between a netting on one side and a fabric or cloth on the other side, and the whole folded and stitched, and that such pads have been made of granulated cork and pulp combined, forming a composite molded sheet; but my improvement differs from these things in the particulars stated, by which the pad is formed into an elastic case having a stiff inelastic base or seating, and which gives the advantage of allowing the pad formed by such case to be reformed with a proper shape and fullness when worn down.

My improvement is distinguished from all other stair-pads in this, that it is made of an unyielding part, a covering part having a suitable fullness for forming a case, and a filling of loose elastic material, and that as an elastic pad its form can be restored after being worn down by merely shaking and loosening up the case as an entirety to restore the elastic function of the loose confined material. These distinguishing features and their advantages, so far as I know and can find, are not possible in pads formed of single sheets of elastic material folded or molded.

The patent has three claims. They are as follows:

1. As an improved article of manufacture, a stair-pad consisting of a stiff base part, a covering-case part secured to the edges thereof, and a body of elastic material loosely disposed between the base and the covering part, substantially as described.

2. A stair-pad consisting of a stiff base part of uniform thickness, a covering-case part having a suitable fullness attached to the edges of the base, and an interposed body of granulated cork, substantially as described.

3. A stair-pad consisting of a base part of stiff unyielding material of uniform thickness having an edge curved-lip bend d, a fabric cover having a fullness sewed to the edges of said base part, and an interposed body of elastic material, substantially as described.

The defenses are non-infringement and want of patentable novelty.