for separating the terminal cup from the nest is a pair of semicircular wedges, which enter between the flange of the lowermost cup and the flange of the cup next above it. When the terminal cup is thus separated from the nest of cups, it falls onto a projection or plug in the interior of the drum. The cup is then supported in an inverted position. When the handle 52 is turned to the right it rotates the drum, and therefore turns the cup right side up. The cup, being right side up, then falls away from the plug or projection, and its rim is caught by the projections 80, 80, where it is temporarily supported, as shown in Figure 15. On the return movement of the handle, the semicircular wedges are inserted between the rims of the last two cups, and the terminal cup is disengaged and dropped onto the plug or projection 44. The result is most effective. The apparatus, in coaction with the cups, works admirably, and the requisites of the art to which we referred supra are entirely met.

We hold, therefore, that claims 16, 18, 26, 34, 41, 48, and 49 are valid.

Infringement as affecting defendant's vending-machine.—Claim 16 is ambiguously worded,1 and as matter of phraseology is susceptible of the interpretation, either that "movable with" means (a) as defendants contend, that the wedges and drum are physically-integral and so moved together; of (b) as plaintiff contends, moving at the same time with. Resort to the specification and other claims (particularly 23) still leaves the meaning in too much doubt to resolve the interpretation in favor of plaintiff's contention. We therefore agree with the district judge in the New York suit that this claim is not infringed, and we are inclined to consider that his reasons for his conclusion are sound.

Whether the remaining claims are infringed depends on the significance of the Petsch patent (British No. 15,643 of 1896, and United States No. 593,754). This patent was for an automatic advertiser, and was intended for the delivery of cards or tickets in small pasteboard numbered boxes, which could then be used for the inclosure of advertisements or advertising-matter to be dropped through a slot or opening in the machine. A coin was to be used to release the device. The description in technical detail of the Petsch patent is recited in 226 Fed. Rep., 465. What, in effect, this patent discloses is an equipment mechanism for flat articles, which, of course, do not stick together, and to detach whicn positive separating means are not necessary. The fact that the edges of the upper members of the escapement are wedge-shaped is simply to facilitate their insertion between the boxes of the stack, the movement of these mem

1 Claim 16 reads: "16. The combination, with a cup receiver, of a movable delivery member provided with a cup recess, and means movable with the delivery member for drawing a cup from the receiver into the recess."

bers being only about thirty degrees. No substantial wedging action is possible.

The question is, as said by the district judge, in the Brooklyn suit, whether defendant

has merely used the particular form of wedges also employed by Petsch in order to perform the functions which Luellen accomplished by the use of a wedge of slightly different shape and design.

We think the answer must be in the affirmative, for we are satisfied that, but for Luellen's disclosures, the embodiment in defendant's vending-machine of some ideas which were later found to be similar to those of Petsch, would never have occurred in such manner as to make defendant's device a practical machine for vending paper cups. We are of opinion, therefore, that claims 18, 26, 34, 41, 48, and 49 are infringed by defendant's vender.

We agree with the district court in the New York suit that no claims are infringed by the free dispenser, unless a roader meaning is given to these claims than we think should be accorded. An inspection of this device of defendants is sufficient to exhibit noninfringement; but, if any reference is needed, Wilson and Nealey's United States Patent No. 570,113, for a "cork cabinet," should suffice. It is argued that this patent is in a non-analogous art, on the theory that the ejection or releasing of corks is far removed from the dispensing of paper cups. We appreciate that it is often difficult to draw the line between analogous and non-analogous arts; but where, as here, nested cups were well known, and the problem was to withdraw them one by one, we think that the subsequent art must be charged with knowledge of prior patents dealing with the withdrawal of small resilient or compressible articles, such as corks, from any kind of cabinet, container, or receptacle.

In so far as affects the patent features of the three suits, the decrees must be modified as here indicated.

As defendant Errett did not appeal from the New York decree, we do not discuss the question of contributory infringement.

(3) The final question to be disposed of involves that part of the decree in the Brooklyn suit which provided that defendant should pay one-half of the master's and stenographer's fees upon the accounting. The amount involved is thirty-five dollars. Plaintiff was not successful, and finally abandoned the accounting proceeding. Such costs in equity rest in the discretion of the court, and, while in some instances the courts have considered it proper to require unsuccessful plaintiffs to pay the costs, yet each case must be disposed of upon its own merits, and in this case we fail to find any abuse of discretion in this regard.

The decrees are modified as indicated, and, as modified, are affirmed, without costs.

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

EDWARD E. GOLD AND GOLD CAR HEATING & LIGHTING COMPANY v. NEWTON, COMMISSIONER OF PATENTS, (SUBSTITUTED FOR EWING, COMMISSIONER OF PATENTS.)

Decided November 18, 1918.

256 O. G., 649; 254 Fed. Rep., 824.

1. PATENTABILITY-NEW USE OF OLD DEVICE.

Upon a suit under section 4915, Revised Statutes, against the Commissioner of Patents seeking a patent for an apparatus for heating railwaycars which can be converted at will from a high-pressure to a low-pressure system the court observed that if the language in Potts v. Creager (C. D., 1895, 143; 70 O. G., 494; 155 U. S., 597) can ever be held to justify finding patentable invention in the use of an old device to produce a new result an instance is shown in the use of the device of the Weber patent, No. 403,162, for a heating apparatus, as a convertible system for car-heating, the patent containing no disclosure of such use and the adaptation involving at least an adjustment of two thumb-screws to cause it to operate either at high or low pressure; but under the rule of Morgan v. Daniels (C. D., 1894, 285; 67 O. G., 811; 153 U. S., 120) patent refused in view of the concurring adverse decisions of the Patent Office, the Court of Appeals of the District of Columbia, and the district court.

2. SUIT AGAINST COMMISSIONER OF PATENTS UNDER SECTION 4915, REVISED STATUTES-BURDEN OF PROOF.

In a suit against the Commissioner of Patents to obtain a patent under section 4915, Revised Statutes, the fact of difference among members of the court upon the question of patentability is reason the more for adhering to the rule of Morgan v. Daniels (C. D., 1894, 285; 67 O. G., 811; 153 U. S., 120), especially where the testimony in the case does not materially change the record that was before the Court of Appeals of the District of Columbia, even though the majority of the court is convinced by the arguments that the applicant made a discovery of great value. Further, whether the evidence submitted is new or old, the court should be amply persuaded of plaintiff's merits before granting relief, and where there is disagreement among the members of the court upon the question of invention there appears to be no such certainty of right as should lead not only to the attempted upsetting of a long line of considered decisions but to the granting of a basic patent which would dominate an art that has advanced beyond anything reduced to practice by the applicant at the time he framed his disclosure.

3. SAME-SAME.

"In respect of actions like this, solely against the Commissioner, the jurisdiction still existing under Revised Statutes 4915 is, to say the least, a singularity in law-making. While the statute exists, jurisdiction must be exercised; but we entirely concur with the court below that in order to advise or direct the Commissioner to issue a patent which he has refused and had his refusal approved by the District Court of Appeals, there must be introduced substantially new and persuasive testimony, not adduced before the tribunals with which we are invited to differ."

APPEAL from a decree in equity entered in the District Court for the Southern District of New York, dismissing a bill originally brought by plaintiffs against Hon. Thomas Ewing, then Commissioner of Patents, under the provisions of section 4915, U. S. Revised Statutes, and continued against his successor in office, Mr. Newton.

STATEMENT OF THE CASE.

Suit was brought in the district of Mr. Ewing's residence by his consent, (Barrett Co. v. Ewing, C. D., 1917, 353; 243 O. G., 1065; 242 Fed. Rep., 506;) the object of action is to obtain decree that plaintiff Edward E. Gold is entitled to a patent, containing eight claims, of which the first and second are broad and vital, and are as follows:

1. In a car heating apparatus, the combination with a train-pipe and a radiator in the car with an intervening admission valve, and an outlet valve at the discharge from the radiator, of thermostatic means for controlling said valves, and manually operated means for rendering either valve inoperative whereby the heating system is convertible at will into an admission-pipe-pressure system or an atmospheric-pressure system.

2. In a car heating apparatus, the combination with a train-pipe and a radiator in the car with an intervening admission valve, and an outlet valve at the discharge from the radiator, of a single thermostat with connections for controlling either of said valves alone, and manually operated means for determining which valve shall be controlled by said thermostatic means, whereby the heating system is convertible at will into an admission-pipe-pressure system or an atmospheric-pressure system.

Gold filed his application in 1904, since which time the subjectmatter of this suit has been continuously fought over both in the Patent Office and the courts. The contest has been triangular, between the applicant, Edward E. Gold, one Egbert H. Gold, and a succession of Commissioners of Patents.

The questions litigated have been:

(1) Is any patentable invention over the prior art disclosed by the application and defined by (e. g.) the above quoted claims;

(2) If such invention exists, is Edward or Egbert Gold entitled to priority?

The history of litigation down to 1909 is related in Gold v. Gold (C. D., 1910, 269; 150 O. G., 570; 34 App. D. C., 229), where the Commissioner's decision awarding priority to Edward was upheld;-no judgment as to patentability was necessary, and none was made.

Thereupon in 1910 Egbert sued both Edward Gold and the Commissioner under Revised Statutes 4915, (Gold v. Gold, 181 Fed. Rep., 544; affirmed 187 Fed. Rep., 273), and was defeated again, without however touching the matter now before this court.

Meantime the plaintiff Edward was involved in a new interference with one Fulton, while Egbert proceeded ex parte in the Office with his attempt to get a patent that may fairly be called something as near to Edward's disclosure as could be suggested without interfering.

He was met by a reference to Weber's Patent 403,162 and rejected; whereupon, in 1912, he appealed to the Court of Appeals of the District, which held with the Commissioner that "an apparatus built in accordance" with Weber's disclosure is—

1

operable at atmospheric pressure or at practically steam-admission pipe pressure, at will; and that such capability is an inherent characteristic

of Weber. (In re Gold, C. D., 1912, 511; 180 O. G., 606; 38 App. D. C., 544.) To this proceeding Edward Gold was no party;-he was involved in the Fulton interference.

That interference was dissolved on the ground that the single claim in contest was unpatentable over Weber, whereupon Edward amended his specifications by adding what is really an argument for differentiating Weber, and changed the language of his claims. The application took its present shape in 1913, and was later finally rejected; whereupon this plaintiff appealed to the District Court of Appeals, which had already on Egbert's appeal, found in effect that the substantial thing which both the Golds wanted to do, might be done with an apparatus made in accord with Weber's disclosure. The rejection of Edward on Weber, was affirmed in 1916. (In re Gold, C. D., 1917, 155; 239 O. G., 321; 45 App. D. C., 294.)

This present action was then brought, and bill dismissed by L. Hand, J., because although plaintiff had made "a discovery of great value," to be patentable, it must be

incorporated into a machine which as a juxtaposition of related parts is new in the art.

But Weber had shown an apparatus, or machine, that "can be made to work;" therefore especially in an action of this nature, invention could not be so positively asserted as to lead (substantially) to a reversal of repeated findings by authorities both executive and judicial in the District of Columbia. Consequently the bill was dismissed and plaintiffs took this appeal.

Mr. William A. Redding and Mr. Arthur C. Fraser for the appellants.

Mr. L. D. Underwood for the appellee.

Mr. Otto R. Barnett was heard as amicus curiæ.