"(1) A saw provided with a series of angular teeth having heels higher than their toes, as and for the purpose set forth.

“(2). A saw having a series of angular teeth, C, the points or toes, D, thereof being lower than the heels, E, and having plane breasts, A, as set forth. "(3) A saw having angular teeth, C, provided with plane breasts, A, recesses, F, and heels, E, higher than the points or toes, D, as set forth."

Hazelton in describing the disk says:

"A is a metal disk provided with a central opening, B, by means of which it is mounted upon a shaft, C. The periphery of this disk has a series of teeth, E, of which e is the point or toe, and é the heel. The surface or face of the tooth, being that part included between the point and the heel, is a true circle from the center, B, for a distance of about two-thirds of its length, beginning at the heel and running toward the point, and the remaining portion of the face of the tooth is depressed so that the point of the tooth lies below the true periphery of the cylinder. To make this clear, the face of the tooth from the heel é to the line a is the true circumference of the disk, while the remaining portion from the line to the point e is depressed or inclined so that the point itself is below the circumference of the disk."

The complainant no doubt appreciated the fact that he was not entitled to a patent on a saw having protected point teeth, inasmuch as it appears that he canceled these claims and changed the proposed invention to a saw with protected point teeth and acute angles between the teeth. However, the Scott patent, No. 125,338, which expired in 1889, discloses a saw with the gullet or throat having teeth meeting at an acute angle. In describing his invention Scott says:

"The nature of my invention consists in the construction and arrangement of a 'peanut thrasher and gin,' as will be hereinafter more fully set forth."

In referring to his patent gin he also says:

"From the inclined board, G, the vines and peas fall down on a gin, composed of a series of saws, I I, working between curved or inclined bars, J J, as shown in Figures 3 and 4."

On this point the defendant introduced Mr. Foster, an expert, who, among other things, stated that:

"Considering, however, now the specific utilization of toothed wheels associated with conveying or directing meaus for the purpose of detaching, for example, adhering vegetable fiber from seed, Eli Whitney is unquestionably the pioneer. In my opinion, he discovered what the problems were in this art and solved them."

In addition to what we have said as respects this point, the Ben Hicks patent peanut stemmer, No. 688,519, also shows and describes and claims the saw peanut stemmer. On page 1, lines 9-18, he describes his invention as follows:

"My invention is an improved machine for stemming and cleaning peanuts and green peas; and it consists in the peculiar construction and combination of devices hereinafter fully set forth and pointed out in the claims.

"The object of my invention is to provide a cheap, simple, and easily operated machine which is efficient in cleaning peanuts and green peas, stemming the same, and putting them in the best condition for the market."

On page 1, lines 95-103, he also states:

"The lower side of the trough below the slats, 25, is open. A series of stemming saws, 30, are secured on the shaft, 27, and rotated thereby, and the

upper sides of said stemming saws operate in the spaces between the slats, 25. The said stemming saws are appropriately spaced apart, and their teeth are exceedingly fine, the said saws being similar to the saws used in cotton gins.

Page 2, lines 15-41, he further states:

* Owing to the fineness of the saw teeth and the lightness in weight of the peanuts and pea pods, the peanuts and pea pods are not cut through or in any wise injured by the saws, and the latter are effective only for the purpose of stemming pea pods and peanuts and in feeding the same from the stemming trough, as hereinbefore described."

It is insisted that the Benthall patent was clearly anticipated by the Hazelton patent, No. 243,554. This patent shows a separation saw with a protected point and the edges of the throat meeting at an acute angle, as indicated by Figure 4. It was granted June 28, 1887, and expired on the 28th day of June, 1889. In describing the steel disks in this patent the patentee says:

"The teeth at the peripheries of the steel disks are bent inward in such manner that they will readily pass over any unyielding body, but will seize the fibers of the cotton and strip it from the bolls."

It is significant that when Benthall's application was pending in the Patent Office no claims were allowed by the examiner, saw claims being allowed by the board of examiners in chief on appeal, and it appears that this was done upon the express representation that a cotton gin saw would not stem peanuts. In referring to cotton gin saws the board stated in its decision that they were "incapable of stemming peanuts." It was shown by the testimony in this case that gin saws had been used to stem peanuts, and also by experts that the Hazelton saws would successfully stem peanuts. Bearing upon this point Mr. Pope stated that the saws disclosed by the enlarged photolithographs of the Hazelton patent, No. 313,421, would stem peanuts. Among other things, he said:

*

"Q. I hand you a picture of a different saw 61⁄2 inches in diameter, and also a picture of this sort of saw 10 inches in diameter, and ask you to state, from a practical standpoint, if, in your opinion, saws made in exact accordance with these pictures, and having teeth identical in size and shape with the teeth shown in these pictures, would, or would not, such saws be capable of being used to stem peanuts. A. Yes; or any other circular saw not having sufficient space between each tooth to take in the peanuts and crack them to pieces. Q. About how long have you been acquainted with saw machines for stemming peanuts? A. Let me see; let me see; you have got to give me a little time to study now. This is 1914. About the year 1899 I saw peanuts thrashed off over a barrel, and these same peanuts run through an old cotton gin fed in the same manner as cotton is fed in the gin by hand, and was fairly successful in pulling the stems off of the peanuts that were thrashed off over the flour barrel heads. And the idea was conceived at that time by me that the saw stemming device could be made to operate in a successful and satisfactory manner. That's sufficient, I think."

In referring to the photolithographs of the Hazelton patent, No. 233,554, this witness also said:

.“Q. I hand you a picture of a saw 61⁄2 inches in diameter and a picture of a similar saw 10 inches in diameter, and ask you to state from a practicai standpoint if, in your opinion, saws made in exact accordance with these pictures, and having teeth identical in size and shape of the teeth shown in these

pictures, would, or would not, such saws be capable of being used to stem peanuts. A. Yes; with my knowledge and experience of about 15 years I am positive that such saws would stem peanuts successfully. That's all."

W. E. Slavin, who testified that he was a practical peanut machinery mechanic, in referring to this phase of the question, said:

"Q. I hand you four sheets of paper marked Defendant's Exhibits D3, D4,. D5, and D6. Each of these pieces of paper includes a picture of a saw. I ask you to state from a practical standpoint if saws made exactly in accordance with each of these pictures, whether or not such saws could be used to stem peanuts; that is, could or could not such saws be used in a peanut stemmer? A. I don't see why they wouldn't pull stems. It looks to me like they would pull stems as good as any. Q. Were you referring to one picture or to all four pictures in the previous answer? A. Referring to all of them, but I think these two (witness refers to Exhibits D3 and D4) would be a little better than those two (witness now refers to Exhibits D5 and D6). They will all stem peanuts."

Among other things, Frank Lummis, of the firm of Lummis & Co., peanut cleaners, testified that his firm, prior to 1906, had used a regular cotton gin to stem peanuts. His testimony is as follows:

"Q. Did you use anything in this factory to stem peanuts before you used the machine you have just described? A. We did; the same being a regular cotton gin. Q. Am I correct in understanding that you used a cotton gin to stem peanuts? A. You are. Q. Was this cotton gin modified in any way when it was being used to stem peanuts; that is, was its construction changed or was it not? A. No; the machine was not changed."

[2] It is strenuously insisted by complainant that the ruling of the officials of the Patent Office as experts is conclusive. In the case of Reckendorfer v. Faber, 92 U. S. 347, 23 L. Ed. 719, the court in the first syllabus said:

"The decision of the Commissioner of Patents in the allowance and issue of a patent creates a prima facie right only; and, upon all the questions involved therein, the validity of the patent is subject to examination by the courts."

That the officials of the Patent Office are theoretical experts is undoubtedly true, but it should also be borne in mind that from the very nature of things they must accept the statement contained in the application as being true except in a case where such statement is contradicted. No doubt, if it had been made to appear to the Patent Office officials that cotton gin saws would stem peanuts, the claim of complainant would have been rejected. However, this court is not bound by the findings of the officials of the Patent Office based upon ex parte testimony. A careful examination of the record discloses the fact that no witness with practical experience was produced by the complainant to sustain its contention on this point. The complainant relies upon the opinion expressed by Mr. Brandenburg, an expert, that the saws patented by Hazelton would not stem peanuts, and that a cotton gin is not an analogous machine to a peanut stemmer. The witness Brandenburg, while testifying as an expert, practically admitted his disqualification to testify as such. Among other things, he testified as follows: "Q. In your analysis of the various constructions under consideration you have expressed your opinion as to what would be obvious to the 'mind of the ordinary skilled mechanic.' Do you consider yourself a skilled mechanic?

A. No. Q. You have referred to the patent to Harris, No. 36,293, as having nothing in common with the invention in the Benthall patent, and in your deposition you have referred to 'the inventive mind.' Are you an inventor? A. I do not regard myself as such. Q. Have you ever worked as a mechanic in any shop? A. No. Q. Are you a graduate of a technical school? A. No. Q. Were you ever a member of the examining corps of the United States Patent Office? A. No. Q. In your discussion of the various mechanisms you have referred to cotton gins. Have you ever seen a cotton gin in operation? A. No. Q. Have you ever seen a cotton gin? A. No. Q. Then you have not seen in operation stemming saws identically like that shown in Fig. 3 of the Benthall patent, No. 890,401, in suit? A. No."

The following question and answer is to be found at the close of Brandenburg's testimony:

"Q. Throughout your deposition you have analyzed constructions showing in a number of patents. Have you ever seen in operation any machine built in absolute strict accordance with the exact structure disclosed in any of the patents you have discussed? A. No."

[3] It is insisted by complainant that a new combination of old. things may be patentable, and in support thereof cites the cases of Loom Co. v. Higgins, 105 U. S. 580, 26 L. Ed. 1177; Seymour v. Osborne, 11 Wall. 516, 20 L. Ed. 33; "The Barb Wire Fence Patent," 143 U. S. 275, 12 Sup. Ct. 443, 36 L. Ed. 154; Bates v. Coe, 98 U. S. 31, 25 L. Ed. 68; Hobbs v. Beach, 180 U. S. 383, 21 Sup. Ct. 409, 45 L. Ed. 586; National Hollow Brake-Beam v. Interchangeable Brake Beam, 106 Fed. 693, 45 C. C. A. 544.

This rule is well-established, but in the case upon which it relies the combination is new, and the result of the combination of the old elements is also new. In the case at bar there is no co-operation between the elements; the throats having their sides meeting at an angle. A protected point is disclosed in Hazelton's patents, and is therefore not new. Wedge-shaped throats are disclosed in the Hazelton patent, No. 253,554, and the Scott patent, No. 125,338, is also old. There being no co-operation between these functions, we have the result that each must act in the old way; the joint product being aggregation of the old result, which, under the rule, is not patentable.

In the case of Hailes v. Van Wormer, 20 Wall. 353, 22 L. Ed. 241, the Supreme Court, in referring to a patent on a stove claiming in combination fire pot, magazine, and draft opening, in the third syllabus said:

"No one, by bringing together several old devices without producing a new and useful result, the joint product of the elements of the combination and something more than an aggregate of old results, can acquire a right to prevent others from using the same devices, either singly or in other combinations, or, even if a new and useful result is obtained, can prevent others from using some of the devices, omitting others, in combination."

This court, in the case of Ball et al. v. Coker et al., 210 Fed. 278, 127 C. C. A. 126, held a patent invalid as being an aggregation, and in discussing the question Judge Connor said:

**

"The distinction between a 'combination' and an 'aggregation' lies in the presence or absence of mutuality of action. To be patentable the combination of all elements or devices must form either a new machine of a distinct character and function, or produce a result due to the joint and co

operating action of all the elements.
ical juxtaposition, and not a vital union."

*

Otherwise it is only a mechan

However, it is insisted by complainant that the doctrine of "aggregation" does not apply to a single device such as a saw. In the case of Knight v. Rieger (D. C.) 203 Fed. 49, District Judge Rose said:

"He relies on the familiar rule that a new combination of several old things may be patentable. It is not in any wise suggested in the evidence that the projecting tongues of the crypt shelves in complainant's device play any part in ventilating or draining the crypts. That system of ventilation will work just as well whether the shelves are secured in the back wall or not. *

"The crypts are drained and ventilated precisely as they were in the prior art. The shelf is secured in the back wall in the way in which many shelves time out of mind have been secured in all sorts of structures. Under such circumstances what the patentee claims is not a combination but an aggregation.

*

"In view of the admitted state of the prior art, I can find nothing even remotely suggestive of invention in anything which the plaintiff claims to nave done."

The decision of Judge Rose was affirmed by this court. Knight v. Rieger, 212 Fed. 935, 129 C. C. A. 455. The court in its opinion, among other things, said:

As

"In other words, as appears to us, appellant merely brings these two factors into juxtaposition and concurrent use, but does not in fact produce any new or novel combination within the meaning and intent of the patent law. we see the matter, it comes in reality to the question of the relative desirability of different modes of construction neither of which involves any display of inventive genius."

Also in the case of Dodge Manufacturing Co. v. Collins, 106 Fed. 936, 46 C. C. A. 53, this court said:

"The effect of this use of old devices in the construction of the McNeal split wood pulley was to strengthen it, and thus add to its durability; but it did not produce a new effect or result. The doctrine that a combination of old devices in a patent to be sustained must produce a new result is thus stated in Reckendorfer v. Faber, 92 U. S. 347 [23 L. Ed. 719]: The combination, to be patentable, must produce a different force or effect, or result in the combined forces or processes, from that given by their separate parts. There must be a new result produced by their union. If not so, it is only an aggregation of separate elements.'"

This court in the case of Gale Manufacturing Co. v. May, 229 Fed. 575, 143 C. C. A. 613, also announced the same rule. This case is directly in point as respects the saw of the Benthall patent. It appears that the saw is old in the art, and also appears that there is no co-operation function between the protected point and the gullet and the throat, formed by the sides of the teeth meeting at an acute angle. From what we have said we are of opinion that the Benthall saw cannot be the subject-matter of a valid patent.

However, we deem it proper that we should discuss certain other phases of the case which we think are very material in view of the evidence offered in the court below.

It is insisted by the defendant that, if the Benthall patent is sufficiently broad to cover different saws, then the Benthall patent, No. 890,401, filed January 12, 1906, is anticipated by a saw in use by P. D.