Stephenson v. The Brooklyn Cross-Town Railroad Company.

the top of the car to the lower margin of the roof, and thereby the cord, pull-straps and bell were adapted to serve a substantially different and useful purpose. I am, however, unable to discover any different purpose accomplished by this change of the location for the cord, pull-straps and bell of a car. The cord, pull-straps and bell all act in precisely the same way when placed at the lower margin of the roof, as when placed in the top of the roof, and the result produced is the same.

Again, it is said that Stephenson duplicated the cord, pull-straps and bell. But, the cord, pull-straps and bell that Stephenson places on one side of his car have no connection with the cord, pull-straps and bell on the opposite side. It is a simple duplicate of an old device, without alteration of its mode of action or change in the result. Neither by duplicating the cord, pull-straps and bell, nor by changing their location from the top of the roof to the lower margin of the roof, nor by both together-and this is all that Stephenson did, according to his own witnesses-was any new result obtained. It is, doubtless, more convenient for some to use the cord, pull-straps and bell when located where Stephenson locates them, but no new result is accomplished by using the device in the new place. The apparatus is the same, and the result obtained by its use is the same, as before. To authorize a patent, the law requires the invention of a new thing. It is not satisfied by inventing a new place for an old thing, without change of result.

I observe, from the testimony, that some of the experts entertain the opinion, that, by placing the cord, pull-straps and bell along the side of a car, a combination is effected with the car, or the sides of the car, which properly forms the subject of a patent. And there are words in this patent that may have been intended to indicate that the invention consists in a combination, one element of which is a street car. But, I am obliged to confess myself unable to understand. how the car, or the sides of the car, can be said to combine with the cord, pull-straps and bell, to produce the result

Stephenson v. The Brooklyn Cross-Town Railroad Company.

sought, namely, the ringing of the bell. If so, then there is a patentable combination between the front door bell and the house wherein it rings, and between the church bell and the church. The cord, pull-straps and bell are placed on a car in order that the bell, when rung, may be within hearing distance of the driver of the car; but, there is no combination between the bell and the car, in the legal sense, according to my understanding of the law.

The last position taken in support of this patent is, that the invention consists in the addition of the pendants to the cord and drawing the cord taut, instead of leaving it slack; and it is said that drawing the cord taut and attaching to it a pendant hanging within easy reach of a seated passenger, turned the old device that was a failure into a success. One difficulty with this position is, that the patent says nothing about drawing the cord taut. No where in the patent is mention made of a taut cord, and in the drawings attached to the patent the cord is not taut, but slack. Nor is it possible to gather from any part of the specification the idea that a taut cord is a necessary feature of the invention. Another difficulty is, that attaching pendants to a cord for the purpose of enabling the cord to be pulled by those who may have occasion to pull it is not a new idea, first conceived by the plaintiff. If to attach a pull-strap to a cord be anything more than duplicating the cord, Stephenson was not the first to conceive such an idea, as the testimony in this case shows.

For these reasons I am unable to sustain the patent under consideration, as being for a new and useful invention made by the plaintiff, and must hold that it affords no ground for an action against the defendants.

The third patent set forth in the bill was issued to John Stephenson, September 7th, 1875, and is numbered 167,585.. The invention described in this patent is therein stated to consist in combining a mirror with the front hood of the car, it being so arranged in connection therewith, and with an opening in the front end of the car, as to give to the driver a clear view of the inside of the car, and through the entrance

Stephenson v. The Brooklyn Cross-Town Railroad Company.

door of the latter, and that without the necessity of his having to turn around for such purposes, thereby enabling him, without withdrawing his attention from the horses, to see when it is necessary to stop, either to receive a passenger or to allow one to get out." The claim is as follows: "The combination of a bonnet provided with a mirror, with an opening, or an opening covered by a transparent medium, in the front end of a street car, substantially as and for the purposes set forth." In support of this patent it is contended, that a new effect is produced by employing a mirror as the plaintiff does, because it enables a person who is outside a building or a room to see through the room outside of which he is, and what is transpiring within the room and beyond the room, in the rear of it. To quote from the expert called by the plaintiff: "By the combination described in the patent the driver can see the interior of a room consisting of a car, and also he can look through such room, and see the space in the rear, and he can do this while himself outside of the room into and through which he can see." But, this is not a statement of any new effect accomplished by a peculiar and novel method of using a mirror. It is simply a description of the common effect of a mirror, the only difference being in the objects reflected by the mirror. A mirror is not applied to a new use when used to reflect a certain object for the first time. Is there any doubt that, to the question, how one could be enabled to see behind him the interior of a car, and also look through such car and see the space in the rear, being himself outside of such car, the answer of any intelligent person would be, "Employ a mirror?" Is there any doubt that every mechanic of ordinary skill, knowing the effect produced by a mirror, and knowing, also, that mirrors had been employed to reflect to the driver of a steam car an image of the train behind him, and being required to devise a method to enable the driver of a street car to do what the plaintiff claims his invention enables the driver to do, would, at the moment and without experiment, say, "Employ a mirror?" It does not seem to me possible that such a problem

Stephenson v. The Brooklyn Cross-Town Railroad Company.

could be presented to the mind of a mechanic of ordinary intelligence, without suggesting just such a use of a mirror as the plaintiff has described.

I am unable to see, therefore, how this patent can be sustained upon the ground that a new effect is accomplished by the plaintiff's invention, or a new function performed by a mirror used as the plaintiff uses one. The most that can be said is, that the occasion was new, and, in view of the evidence, to say that is not entirely easy. The case seems, clearly, to be one of double use.

It is also said that the plaintiff's invention discloses a new combination, first employed by him to accomplish the result described. According to the claim of the patent, the invention consists in combining the bonnet of a car, provided with a mirror, with an opening in the front end of the car, in such a manner that objects within the car and in the rear of the car will be reflected in the mirror. But, no combination between the elements described is effected by this arrangement. Between the bonnet and the mirror there is no cooperation. The only relation which the bonnet bears to the mirror is that of a support. No change in the operation or action of the mirror would result from substituting a different support in place of the bonnet. Any mirror located in the same place would, without the hood, reflect objects visible through an opening in the end of the car, in the same way that the plaintiff's mirror does. Nor is there any combination between the mirror and the opening in the end of the car through which the light passes to the mirror. The mirror does not co-operate with the opening. It simply and of itself reflects the objects before it, in the same way as does any mirror located in any other place. Indeed, the mere statement of the claim that the combination sought to be secured is between a mirror and an opening, and that the result of the combination is a reflection on the mirror of the objects beyond the opening, to my mind sufficiently shows that the patent does not disclose a new and useful combination invented by the plaintiff.

VOL. XIX.-31

Detweiler v. Voege.

These views compel the conclusion that the patent in question is void, and renders it unnecessary to consider the other grounds of defence to this patent, serious as some of them appear to be.

My determination upon the whole case, therefore, is, that the patents set forth in the bill afford no ground of action against the defendants. The bill is, accordingly, dismissed, and with costs.

George Gifford, for the plaintiff.

Francis Rawle, for the defendant.

CYRUS DETWEILER

vs.

AUGUST VOEGE AND OTHERS. IN EQUITY. Two Surrs.

Where the owner of a patent gives express consent to a decree in a suit to which he is a party, directing the sale of machines made according to the patent, without any reservation, such sale will have, as against him, the same effect as if he had himself sold the machines to the purchaser with the right to use them.

(Before BENEDICT, J., Eastern District of New York, July 26th, 1881.)

BENEDICT, J. The first action above mentioned is an action founded upon a patent issued to Edward C. Blakeslee, for an "improvement in machines for threading sheet metal screws," No. 116,922, bearing date July 11th, 1871. The second action above named is founded upon a patent issued to Charles T. Newber and Frank W. Perry, for an "improvement in machines for forming screw threads on sheet metal."