patented to or described by another, the entire first clause (a) of "third" seems quite unnecessary. However, we have to deal with the statute as it is. The two classes now material are :

Third (a) that it [the invention] had been patented or described in some printed publication prior to his supposed invention or discovery thereof, or (b) more than two years prior to his application for a patent therefor.

Fourth. That he was not the original and first inventor or discoverer of any material and substantial part of the thing patented.

Since an invention is not "patented" and the patent is not "published" until issued, it is apparent that when a patent is pleaded under this third defense and the fourth defense is not involved, its application date is of no importance whatever. It is equally sure that where the tendered issue is whether the patentee was the first inventor (fourth defense) and it appears that another had made the invention, the date of that other's patent, or whether he ever had a patent, or whether the prior description was by printing or without, is immaterial; the date of his invention is the vital thing.

Under the familiar Patent Office rule, the filing of an allowable application is a constructive reduction to practice, and so there must be a presumption that the patentee had made his invention at the date of his filing. The cases where a substantial change in the invention is made pending the application are exceptional, and, of course, he who alleges an exception must prove it. The existence of the presumption is worked out and declared, with perhaps unnecessary care, by the first circuit court of appeals in Automatic Co. v. Pneumatic Co. (C. D., 1909, 498; 139 O. G., 991; 166 Fed. Rep., 288). Hence, it assuredly follows that if a patent in suit was applied for January 15th, and there is nothing to carry the patentee's invention back of that date and if a patent disclosing the same invention was issued to another in July upon an application filed January 1st, this tends to show that the patentee of the patent in suit was not the first inventor. This has been distinctly held not only in Drewson v. Hartje, supra, but by the Seventh Circuit Court of Appeals (Barnes Co. v. Walworth Co., 60 Fed. Rep., 605; 9 C. C. A., 154), by Acheson, C. J. (Westinghouse v. Chartiers Co., C. C.; 43 Fed. Rep., 582, and cases cited on p. 588), and by the Second Circuit Court of Appeals (Sundh Co. v. Interborough Co., 198 Fed. Rep., 94; 117 C. C. A., 280), and it has been expressly recognized and applied by the Supreme Court (Pope Co. v. Gormully Co., C. D., 1892, 353; 59 O. G., 468; 144 U. S.,

1 Since the thing patented is a unit, to which "any material and substantial part of is essential, and since no patent is found to be either anticipated or infringed except by comparison with devices containing every substantial and material part, the special force of the quoted words is not evident.

2 (Duryea v. Rice, 28 App. D. C., 423; Computing Co. v. Standard Co., C. C. A. 6; 195 Fed. Rep., 508; 115 C. C. A., 418; Sundh Co. v. Interborough Co., C. C. A. 2; 198 Fed. Rep., 94; 117 C. C. A., 280.)

(Webster Co. v. Higgins, C. D., 1882, 285; 21 O. G., 2031; 105 U. S., 580.)

238; 12 Sup. Ct., 637), by Mr. Justice Bradley (Kearney v. Lehigh Co., D. C.; 32 Fed. Rep., 320), and by the Second Circuit Court of Appeals (Hillard v. Fisher Co., 159 Fed. Rep., 439; 86 C. C. A., 469; Otis Co. v. Interborough Co., 222 Fed. Rep., 501; 138 C. C. A., 97). Turning to the cases cited contra, Bates v. Coe, in using the language so often quoted (98 U. S., on pp. 33, 34) is speaking solely of "evidence to sustain the second [third] defense," and this restriction has not been observed when it has been quoted as if applicable to all defenses. In Horton Co. v. White Lily Co. (C. C. A. 7) the court was considering two patents to the same inventor, a very different situation. In some, as in Anderson v. Collins (C. C. A. 8), it is carefully recognized that the ruling involves only the third defense. In others, the state of the pleadings does not appear. Some seem to depend upon a distinction between "anticipation" and priority of invention," applying the former name to the third defense and the latter to the fourth, though we do not see why "anticipation" is not properly applicable to both. So far as any of the other cases may be distinctly inconsistent with the proposition of the preceding paragraph, we must think them erroneous.

It was the common, if not universal, practice under the old equity rules for an answer to recite under one paragraph all the older patents relied upon, and then, under another, to repeat all the names of the patentees with their places of residence. In deference to the simplifying spirit of the new rules, the defendant here pleaded that the patentee was not the first inventor

but that said invention was first made by the applicants of the patents recited in paragraph 9.

In such cases, there is no question of pleading, but the pertinence of the earlier filing date is clear. We should hesitate to reach the other result, even when the fourth defense was not pleaded in terms. Since patenting to another before the invention of the patent in suit necessarily implies denial that the patent in suit was issued to the first inventor, to plead the third defense is usually itself to plead the fourth, and it would be unfortunate that an invalid patent should be held valid only because a good defense had been pleaded by a wrong name. Any amendments that might seem necessary would doubtless be allowed on request, with due regard to the prejudice, if any, thereby caused.

(3) When we consider this prior art, including McMillan and Blackmer and Robson, we are forced to conclude that Schade took no inventive step. His continuous wire, developed into three parts, each part having a function, can be found merged in Pitt's hooks and flat plates, yet there would be ingenious, and, we assume patentable, novelty in observing this continuous wire and developing it out

of its merged condition, if it had been a new thing after it was developed; and so Pitt alone will not serve to invalidate. McMillan makes his hooks or rings out of wire, and extends the hooks themselves to a meeting-point, making a toggle-lever hinge, and pivotally mounts the rings on the edges of the back-plate. The language of Schade's claim 1, if given the broad meaning which could naturally be attributed to the selected words, plainly reads upon McMillan; and yet this is not conclusive of the question of invention, since the language of the claim, by reference to the specification, might fairly imply that the "bent wire arms" of the claim referred to arms bent up laterally and to hinge-leaves of the general type shown rather than those which were mere continuations of the hook in the same plane, like McMillan. Even Lindner, considered by itself or in association with the others, would not necessarily negative invention, since the wire offset of Lindner, shaped like Schade's wire offset, had no function as a spring-pressed lever, and to combine the thought of such a shaped and formed continuous wire with Pitt's thought of spring-actuated toggle-levers might well be considered a patentable combination. We are convinced, however, that Blackmer and Robson furnish the final and unanswerable argument against invention. With a continuous-wire member generally, undistinguishable from Schade and embodying the three functions of a separable retaining-hook, an edge-pivot, and a doubly-bent offset portion operating as a spring-pressed lever, we find that this offset made contact with and passed by and was held in selected position by a resilient abutment located just above the offset. Pitt had disclosed a ring-section provided with an extension which made contact with a resilient abutment located at one side, viz, the opposite member of the same form. It follows that when Schade appeared, the toggle-lever-hinge form of Pitt and the spring-pressed-lever-arm form of Blackmer and Robson were known equivalents, and what Schade did was to substitute one for the other as one of the members of his otherwise unchanged combination. He accomplished no "new result," in any sense of that ambiguous phrase, except that his substituted form was perhaps cheaper to make, stronger, and more smoothly operating in this old combination than the equivalent element which it displaced. The mechanical modification required, considered either from the viewpoint of substituting the Blackmer and Robson continuous wire for the Pitt hook and plate, or substituting the Pitt toggle-lever interlock for the Blackmer and Robson lever and casing interlock, was merely to extend the Blackmer and Robson offsets until they were hinged together. In view of all that was before him in these several patents, we cannot think that this was more than the expected ability of the skilled artisan. (Fare Register Co. v. Ohmer, C. C. A. 6; 238 Fed. Rep., 182, and cases cited at

p. 187; 151 C. C. A., 258; Budd Co. v. New England Co., C. C. A. 6; 240 Fed. Rep., 415, and cases cited on p. 417.)

The remaining claims involved in the appeal fall with claim 1. The decree is reversed, and the case remanded, with instructions to dismiss the bill.

[U. S. Circuit Court of Appeals-Sixth Circuit.]

WAGNER v. MECCANO LIMITED.

Decided November 16, 1917.

[Nos. 2,977, 3,014.]

248 O. G., 233; 246 Fed. Rep., 603.

1. PATENTS-ANTICIPATION-PUBLICATION.

An inventor's own publication of the device for which he seeks a patent more than two years prior to the application is a disclosure within Revised Statutes, section 4886 (Comp. St., 1916, sec. 9430), and precludes the patenting of his invention.

2. SAME " INVENTION "-" MECHANICAL SKILL."

The adaptation to metal mechanical toys of previously-disclosed inventions used in wooden toy building-blocks does not amount to "invention," but is a mere exercise of "mechanical skill."

3. SAME-SAME-WHAT CONSTITUTES.

The mere improvement of a well-known device without substantial change in either means or result does not amount to invention.

4. SAME-SAME-SAME.

A device simply uniting two parts of a previously-known device into an integral construction does not amount to invention, particularly where the two parts had previously been joined mechanically.

5. SAME-SAME-ANTICIPATION-" MECHANICAL SKILL."

66

Hornby patent, No. 1,079,245, for rectangular plates and so-called sectors" for use in connection with mechanical building toys, consisting of many strips with slotted holes, which could be united to form ingenious devices, as limited by the prior art, Held not to show "invention," disclosing only "mechanical skill."

6. COSTS-ALLOWANCE-DEPOSITION.

Equity rule 58 (198 Fed. Rep., xxxiv; 115 C. C. A., xxxiv) declares that by demand served ten days before trial either party may call on the other to admit in writing the execution or genuineness of any document, letter, or other writing, saving all just exceptions, and if such admission be not made within five days after such service the cost of proving the document shall be paid by the person refusing to make such admission, unless the trial court shall find that the refusal was reasonable. Complainant called on defendants to admit in writing the execution and genuineness of documents to be used in evidence. Defendants' counsel refused to make admission, and later they notified complainant's counsel that they would stipulate the matter when the two should meet in the town where one of the depositions was to be taken. Complainant by telegram declined to accept the stipula

tion except on defendants' payment of costs and expenses incurred to date. No response was made to complainant's answer, and at the taking of depositions complainant's counsel stated that as no reply had been received to such telegram the taking of depositions on behalf of complainant would be resumed. Held that despite defendants' contention that complainant was in control of the documents and might have proved them in the ordinary course the allowance to complainant of costs incurred in proving such documents was not an abuse of the trial court's discretion.

7. SAME-EQUITY-ALLOWANCE.

Apart from court rules the taxing of costs in equity cases is within the sound discretion of the trial court.

APPEALS from the District Court of the United States for the Western Division of the Southern District of Ohio; Howard C. Hollister, judge.

Suit by the Meccano Limited against F. A. Wagner, trading as the American Mechanical Toy Company, and the Strobel & Wilken Company, who counterclaimed. From a decree for complainant (234 Fed. Rep., 912) and an order denying a request to dismiss the appeal, remand the record, and on the granting of such request to reopen the case, defendants appeal. Affirmed in part, and in part reversed, and causes remanded, with directions. (See also, 235 Fed. Rep., 890; 149 C. C. A., 202; 239 Fed. Rep., 901; 153 C. C. A., 29.)

Mr. H. A. Toulmin and Mr. H. A. Toulmin, Jr., for the appellants.

Messrs. Healy, Ferris & McAvoy (Mr. Reeve Lewis, Mr. Ralph L. Scott, Mr. Wm. B. Kerkam, and Messrs. Mauro, Cameron, Lewis & Massie of counsel) for the appellee.

Before WARRINGTON and KNAPPEN, Circuit Judges, and SANFORD, District Judge.

WARRINGTON, Cir. J.:

The Meccano Limited, a British corporation, is engaged in the manufacture and sale of outfits which are adapted to ready and repeated assembling of parts into a variety of mechanical toys; and with each main outfit it supplies a manual of instructions and illustrations for use in building the toys. The corporation brought suit in the court below against Francis A. Wagner, trading as the American Mechanical Toy Company, and against the Strobel & Wilken Company, charging defendants with acts of unfair competition consisting, in effect, of sales of outfits substantially identical in parts and in appearance, shape, and dimensions with those of plaintiff, and accompanied by manuals of instructions in which defendants copied, counterfeited, and simulated the appearance and arrangement, illustrations, and language, of plaintiff's manuals, particularly