CONSTRUCTION OF SPECIFICATIONS AND PATENTS-Continued. 6. DIVERSITY-RESULTS-Distinctly different results perceived and understood by the mere practical use of the devices of different patents constitute a fair and liberal test for diversity of invention. Id. 7. ELECTION IN APPLICATION-BINDING-Patentee, when applicant, having been obliged, in view of certain references cited by the Office, to elect to prosecute one of two features as the essential characteristic of his invention, and electing to show, describe, claim, and insist upon his invention as consisting in one feature having certain functions, is bound by his admission and is not in a subsequent suit in a position to claim that his invention consisted in the feature which he ignored in making his election. Richardson et al. v. American Pin Company, 325. 8. INVENTION-Broadening Scope-Change of FashioN—ADVERTISING-Commercial success of a patented article due to the demand caused by a change of fashion and to extensive and seductive advertising will not serve to broaden the scope of the patent. * Id. 9. PATENTED MACHINE-PRESUMPTION AS TO OPERATIVENESS AND UTILITY— DEFECTIVE Model-Error in DRAWINGS-The very fact that a machine is patented is some evidence of its operativeness as well as of its utility, and where a model is constructed after the design shown in a patent which is not perfectly operative, but can be made so by a slight alteration, the inference is that there was an error in working out the drawings, and not that the patentee deliberately took out a patent for an inoperative device. * Dashiell v. Grosvenor et al., 329. 10. PATENT AS EVIDENCE THAT REQUIREMENTS OF STATUTE HAVE BEEN COMPLIED WITH-Prima facie Letters Patent are evidence that all the requirements of the statute have been fully complied with, and if it be true that the patentee has been at no pecuniary expenditure in realizing the conception of the designs it follows, presumably, that no such expenditure was demanded by the circumstances. The burden of showing the necessity of such expenditure is upon the defendant in any case. *Matthews & Willard Manufacturing Company v. Trenton Lamp Company et al., 346. 11. PATENTABILITY-VALIDITY OF PATENT ON ITS FACE-JUDICIAL NOTICE OF MATTERS OF COMMON KNOWLEDGE-In considering the question of the validity of a patent on its face the court may take judicial notice of facts of common and general knowledge tending to show that the device or process patented is old or lacking in invention, and the court may refresh its recollections of what facts were of common knowledge at the time of the application for the patent by reference to printed matter which is known to be reliable and to have been published prior to the application for the patent. * American Fibre Chamois Company v. Buckskin Fibre Company et al., 357. 12. MECHANICAL PROCESS-PATENTABILITY-A process of reducing fibrous sheets to a soft and pliable condition by first moistening and then pounding the sheets while in a moist condition is not a mere mechanical process or an aggregation of functions within the limitation announced by the Supreme Court in the case of Risdon Iron and Locomotive Works v. Medart (C. D., 1895, 330; 71 O. G., 751; 158 U. S., 68.) The moistening of the sheets and the treatment in a moistened condition is more or less chemical in its character. *Id. 13. ANTICIPATIon-DifferencE-The prior use of a paper with a fiber too close to allow the ink from an ink-roller to pass through it, such paper being impregnated with wax of a character so hard as to rupture or abrade the fibers of the paper when it is removed by a perforating instrument, is not an anticipation of a paper with a fiber so open as to permit the ready passage of ink and impregnated with wax of a character sufficiently soft to permit its CONSTRUCTION OF SPECIFICATIONS AND PATENTS-Continued. removal from the paper without tearing or breaking the fiber of the paper. *A. B. Dick Company v. Henry, 377. 14. SUCCESS-PRESUMPTION-INVENTION-The facts that a patented device was the first successful device and is of the greatest utility and the further faets of long-continued use and public acquiescence confirm the presumption of invention in the patent and entitle it to favorable consideration. *Id. 15. SOLICITOR-The circumstance that a patentee, when an applicant, had no attorney is no reason for adopting any peculiarly liberal construction of his patent. * Gould Coupler Company v. Trojan Car Coupler Company, 414. 16. MERIT OF INVENTION-The fact that a patented device is meritorious is no reason why the patent should be construed to cover any other construction than that which was evidently in the inventor's mind and expressed in the specification. *Id. 17. 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. *American Soda Fountain Company v. Green et al., 491. 18. CONSTRUCTION OF CLAIMS-LIMITATIONS-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. * Beale et al. v. Spate et al., 493. 19. 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 afterwards 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. *Id. 20. DECEPTIVE SPECIFICATION-VOID PATENT-Where the patentee at the time of his application considered that a dye to be used should be waterproof and that the yielding surface used in polishing must be an inflated aircushion, neither of which facts was disclosed by the specification, Held that the patent is void because of implied purpose to deceive the public. *Electric Boot and Shoe Finishing Company v. Little et al., 555. 21. ESTOPPEL-ACQUIESCING IN REJECTION BY OFFICE-Where the patentee acquiesced in the ruling of the Patent Office that the application of handwheels to a road-grading machine for imparting motion to the devices for raising and depressing the scraper-blade was old, and, for the purpose of obtaining his patent, restricted his claims in this particular to momentum or balance wheels, Held that he is bound by such restriction. *American Road Machine Company et al. v. Pennock & Sharp Company, Limited, 556. 22. PIONEER INVENTION-The mechanism of the patent in suit was original with the inventors for the manufacture of "plaits," and for that purpose their machine is a pioneer invention, notwithstanding the hints of a prior device. It is not an addition to an old structure. Tuttle, trustee, etc., v. Claflin et al., 602. 23. SUFFICIENT DESCRIPTION-SECTION 4888, REVISED STATUTES-In view of the antiquity of the art of swaging, Held that claims 1, 2, 3, 9, and 10 are not void for want of a sufficient description to comply with Revised Statutes, section 4888, though the process is not stated in full. (Kilbourne v. W. Bingham Co., C. D., 1892, 477; 60 O. G., 577; 1 C. C. A., 617; 50 Fed. Rep., 697, followed.) *Strom Manufacturing Company v. Weir Frog Company, 618. 24. ANTICIPATION-NEW USE OF OLD MATERIAL-RESULT SUPERIOR-A patent for the reuse of previously cooled slag, which consists of remelting it with lime, or with silica, or with both, and then converting the mixture into CONSTRUCTION OF SPECIFICATIONS AND PATENTS-Continued. mineral wool, is not anticipated by processes which consist in using slag before it has cooled, for the same purpose, when it appears that the patentee was the first to use successfully previously cooled slag and when it appears that his product is superior to the former product. *Western Mineral Wool and Insulating Fibre Company v. Globe Mineral Wool Company, 622. 25. SAME-RESULT DIFFERENT-Such patents are not anticipated by the use of fresh hot slag to which lime has been added in order to produce a cement. * Id. 26. SPECIFICATION-FAILURE TO DECRIBE INVENTION Clearly-Effect of, on DECISION ON JUDICIAL TRIBUNAL-Where a patent fails to state the inventor's conception of the state of the art, the particular advance which he understood himself to have accomplished, or the parts of his device or its functions, except incidentally and in a crude and incomplete manner, Held that if judicial tribunals misapprehend the scope of the invention the cause will lie in the want of a full and frank disclosure on the face of the patent of what it was, and as this is the fault of the inventor, or in law attributable to him, he must accept the result as one of his own making. *Long et al. v. Pope Manufacturing Company, 637. 27. CLAIMS-INTERPRETATION OF-FUNCTIONS NOT MENTIONED-The fact that an inventor claims only certain functions for his invention does not prevent him from reaping the advantage of any other function within the claim, as properly construed, available without a modification of the machine which involves the use of further inventive faculty, although known to him and omitted in the specification without fraud or not known to him. (Reece Co. v. Globe Co., C. D., 1894, 360; 67 O. G., 1720; 61 Fed. Rep., 958.) *Id. 28. SPECIFYING FUNCTIONS-BROADENING CLAIMS-So much of the mere form given in the specification, drawings, and claim as is necessary to accomplish all the functions expressly enumerated is essential and must be retained. A function afterwards discovered cannot be used to broaden a claim, and sneh function is available to the patentee only when the patent, construed in the light of the circumstances existing when it is applied for, is broad enough to embrace it. When there is nothing to show that the new function was in the mind of either the inventor or of the Patent Office when the patent issued, it cannot be said that if the patent be narrow on its face it should be broadened out by construction to cover this new function. *Id. 29. PAPER PATENT-NEW FUNCTIONS OF THE INVENTION-BROADENING THE INVENTION-It would establish a very dangerous precedent to give to a mere paper patent which has lain dormant for years a breadth not contemplated on its face by reason of some new function discovered long after its issue and after that function had been availed of in practice by others. Such precedent, if established, would on the whole operate more to entrap honest manufacturers than to advance the useful arts. *Id. CONSTRUCTION OF STATUTES. See Appeal to the Circuit Court of Appeals, 1, 2, 3, 4; Appeal to the Court of Appeals of the District of Columbia, 3, 4, 9; Applications; Assignments, 7, 8, 9; Construction of Specifications and Patents, 23; Designs, 4; Interference, 5, 7, 33; Particular Patents, 2; Technical Terms. DESIGN STATUTE-Meaning of "Expense”-The word "expense" in the statute relating to design patents means a "disbursement of money," and also "the employment and consumption of time and labor." To confine its meaning to the mere expenditure of money would be contrary to the purpose of the statute, which purpose is to secure to those who shall invent and produce a new and original design a monopoly in the design. Matthews & Willard Manufacturing Company v. Trenton Lamp Company et al., 346. CONTRACT ATTACKED FOR FRAUDULENT REPRESENTATIONS. 1. CONTRACTS-FRAUDULENT REPRESENTATIONS-EXTENT OF PATENT RightsB & Sons and L entered into a contract, by which B & Sons took a license under L's patents, existing and to be thereafter granted, for harrows like a sample furnished, and agreed to manufacture certain numbers of harrows in each year, and to pay L certain royalties thereon. After manufacturing the harrows and paying the royalties for some time, B & Sons brought suit against L to set aside the contract on the ground that is was obtained by fraudulent representations on L's part to the effect that his patents covered an entirely new field and involved an entirely new principle. In such suit it appeared that both parties, at the time the contract was made, were familiar with patents and patent litigation, and especially with harrows and the state of the art relating thereto, and were persons of unusual intelligence; that the main point of difference between B & Sons and L was as to whether L had represented himself to be the first to introduce each of two valuable features in harrows, or to be the first to introduce them in combination, one statement being false and the other truc, and the falsity of the former, if made, being easily ascertainable; that B & Sons had been anxious to make the contract, had sought out L, and on seeing the harrow had expressed their satisfaction with it and their desire to obtain a license; that B & Sons had had full opportunity to examine and test a sample harrow, and to investigate the state of the art, before concluding the contract, and that, after the harrows were placed on the market, they sold readily in large numbers, and B & Sons repeatedly expressed their satisfaction with them, and were not molested by attempted infringements. Held that there was no evidence of fraudulent misrepresentations inducing the contract. E. Bement & Sons v. La Dow, 138. 2. SAME RATIFICATION-It further appeared that, if L had made fraudulent misrepresentations, the fact must probably have been disclosed to B & Sons within a few months after the making of the contract, and certainly by circumstances which occurred about two years after the making thereof, but that, instead of rescinding the contract immediately, B & Sons continued to manufacture the harrows, and to assert, in negotiations with a third party, the value of the contract, and sold it to such third party for a large sum. It also appeared that, in an action by L for royalties, B & Sons had set up fraud as a defense, and upon such defense being overruled had obtained a reassignment of the contract, and tendered the same back to L, but without offering to return any of the profits made under the contract. Held that by continuing to treat the contract as existing, after discovering the supposed fraud, and by retaining its fruits, B & Sons ratified such contract. Id. CONTRACT WITH THE GOVERNMENT. See Suits for Infringement Against the United States, 2, 3, 4. CONTRACTS. See Assignments, 4; Interference, 21, 23; Licenses, 1, 4, 5; Use and Sale of Patented Articles. 1. PATENTED ARTICLES-A contract to pay for articles of manufacture containing a patented improvement is an agreement to pay for articles which by reason of the omission of such unnecessary details of construction as the patented article dispensed with are of a simple and less expensive construction, such as the patent sought to secure, even though such manufactured articles are in other respects unlike the patented article. Andrews v. Landers, Frary § Clark, 336. 2. EVIDENCE-Prior Art-Evidence to show the prior state of the art is admissible to explain the latent ambiguity in the language "containing the patented improvement," occurring in a contract between manufacturers and a pat CONTRACTS-Continued. entee, and as bearing upon the situation of the parties and their object in making said contract. * Id. * # 3. CONSTRUCTION OF-Where the parties entered into a contract that a royalty of 40 per cent should be paid on all sales of the machines, and the contract also contained the provision "If the parties of the second part shall sell or lease, or [shall] cause to be sold or leased, for use, or shall cause to be used, in any foreign country [the machines in question], then the royalty to be paid shall he 45 per cent, in lieu of 40 per cent, as hereinbefore provided," Held that this provision is not retroactive, and that therefore a royalty of 45 per cent should be paid only on sales made after the commencement of foreign sales. *National Sewing Machine Company v. Willcox & Gibbs Sewing Machine Company, 484. COÖPERATION. See Combinations, 1. COPY OF RECORD IN PATENT OFFICE. See Assignments, 8, 9. CORPORATIONS. See Licenses, 4, 5. ESTOPPEL-ACTS OF STOCKHOLDERS-The rule that a corporation has a distinct personality of its own and is not responsible for the personal acts of its stockholders will not apply in a case where the vendor of a patent holds almost the entire stock of a defendant corporation and the facts show that he either uses such corporation as a mere cover for the transaction of his business or that there is knowledge and privity of interests between him and another stockholder, and the defendant corporation in such case will be estopped by the acts of said vendor. *National Conduit Manufacturing Company v. Connecticut Pipe Manufacturing Company, 384. CORRESPONDENCE WITH PATENT OFFICE. DISCOURTESY IN-Irrelevant personal reflections on an attorney struck out of the Office letter, and the reply of the attorney thereto returned under Rule 22. Ex parte Oliver, 29. COURT OF APPEALS OF THE DISTRICT OF COLUMBIA. See Appeal to the Court of Appeals of the District of Columbia; Assignments, 4; Interference, 1, 25, 26; Reopening of Cases after Decision by Court of Appeals. CROSS-EXAMINATION. See Testimony, 1. DAMAGES AND PROFITS. See Assignments, 9; Infringement, 13, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34; Marking Articles "Patented;" Suits for Infringement, 1; Use and Sale of Patented Articles, 1, 2; Use of Patented Articles by the United States, 2; Validity of Patent Denied by Patentee. 1. PROFITS IN INFRINGEMENT-IMPROVEment, Effect of-Burden of ProofIf defendants took complainants' device in its original form, the latter are entitled to the pecuniary advantage which the infringers derived from the unauthorized use of the patent. If the infringers added an improvement, they have a right to an apportionment, the burden of proof being upon them to show that a portion of the profits was the result of the improvement. Tuttle, trustee, etc., v. Claflin et al., 602. 2. SAME ESTIMATES-EXPERIMENTS-Estimates only and estimates based upon experiments by the complainants made only in a small way, which include estimates for the expense of an unnecessary feature of a process and which make no allowance for the economies which result from a subdivision of work, such as would be employed in manufacturing for wholesale trade, are unsatisfactory. *Id. 3. ADDITIONAL DELAY TO BE AVOIDED-PROFITS-A court will hesitate to compel a large additional expenditure of time by ordering an accounting in a suit which has been pending for a long time, especially when the manufacture which forms the basis of the suit has ceased and it is likely that further |