band-wire. It has a V-shaped pinching-angle, and when the strain is applied the sides of the clasp close in and the end of the band-wire is "jammed or wedged therein " precisely as in the complainant's device. Not only does the Griswold patent expressly declare over and over again that this jamming action exists, but the proof of actual tests demonstrates its existence. As Kilmer was the first to introduce this principle into bale-ties, he is entitled to a construction liberal enough to protect his invention. He should have what he has invented-nothing more, nothing less.

The complainant is entitled to a decree upon the second claim of No. 372,375 for an injunction and an accounting, but without costs.

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

PHILADELPHIA NOVELTY MANUFACTURING COMPANY v. WEEKS. Decided April 19, 1894. 68 O. G., 417.

1. HEYSINGER-DEVICE For Filing and BINDING PAPERS-INFRINGEMENT-LIMITATION OF CLAIM.

Letters Patent No. 226,402, dated April 13, 1880, to Isaac W. Heysinger, for a device for filing and binding papers, construed, in view of the art to be limited to the specific structure claimed and Held not infringed by a machine which lacks a part of each device specified in the claims as essential.

2. SAME-SAME-LACK OF INVENTION.

Letters Patent No. 274,941, dated April 3, 1883, to Isaac W. Heysinger, for improvement in machines, for inserting and clinching staples consisting in altering the slots of the guide-clip so as to permit the staple-driver to be inserted both crosswise and lengthwise and so as to give sufficient room to drive a staple with a projecting eye, Held to be void for want of invention.

APPEAL from the Circuit Court of the United States for the Southern District of New York.

STATEMENT OF THE CASE.

This was a suit by the Philadelphia Novelty Manufacturing Company against Albertus A. Weeks for alleged infringement of Letters Patent No. 226,402, dated April 13, 1880, and No. 274,941, dated April 3, 1883, both issued to Isaac W. Heysinger, and relating to what are known as "stapling-machines," being small tools for inserting and clinching wire staples near the edges of superimposed sheets of paper. The Circuit Court dismissed the bill, (52 Fed. Rep., 816.) Complainant appealed. Mr. Augustus B. Stoughton for the appellant.

Mr. Hector T. Fenton for the appellee.

Before WALLACE, LACOMBE, and SHIPMAN, Judges.

LACOMBE, J.:

The apparatus described consists of two separate tools. One of these is a staple-driver, consisting, essentially, of a flat tube containing a

flat blade movable therein, the open end of the tube receiving a staple, crown upward, which is ejected from the tube or staple-case by a blow on the end of the blade or plunger, and thus the staple-legs are inserted or driven through the mass of papers upon which the mouth of the staple-case is superimposed. The other tool is a clinching-base, which clips the paper between a slotted guide-arm and a base containing a clinching-cavity beneath the slot in the guide. The tools are to be used together; but the staple-driver may obviously be used with any clinching base which will clinch the ends of the staples driven upon it, even though such base does not contain any distinguishing feature of complainant's structure. So, too, the clinching-base of the patent may obviously be used with any form of staple-driver which will drive the staples upon the clinching-cavity, even though such staple-driver differs widely from that described in the patent. The first claim covers the clinching-base, the second covers the staple-driver, the third covers both tools in combination. The judge of the Circuit Court found that defendant did not infringe.

It is unnecessary to discuss at length the numerous patents put in evidence or the minute details of varying construction which make up the state of the art. The field of invention was a very narrow one before Heysinger entered it, and whether he contributed anything of patentable novelty is extremely doubtful. Be that as it may, it is manifest that his claims can be sustained, if at all, only for the specific structures which he described and claimed. As to the second claim, we concur with the circuit judge in the conclusion that defendant's staple-driver more closely resembles an earlier patent to Brown (No. 218,277, dated August 5, 1879) than it does Heysinger's. The third claim of Heysinger's patent expressly incorporates as one of the essentials of its combination "a tubular external case longitudinally grooved," and grooved, as the reference to the drawing shows, throughout its entire length. When the patentee was referred by the Patent Office to Brown's patent, he sought to distinguish it from his device by showing that "Brown does not use any external groove at all, his tube being a closed one;" and, to escape the reference, Heysinger expressly inserted in this third claim the statement above quoted as to the longitudinal groove. Defendant's driver, like Brown's, has.no such groove, and it is difficult to understand upon what theory appellant now contends that such difference is immaterial. In fact, his brief does not contain any argument in support of such contention. The first claim of the 1880 patent is for

A paper-filing clip, B D, having the recessed clinching-block J and guide-slot L, or its equivalent, substantially as and for the purpose herein described.

The specification contains the following references to the clip:

Fig. 4 is a perspective view of the spring of the clip part; Fig. 5, a like view of the base of the clip; Fig. 6, the vibrating clamping and guide arm of the same; Fig. 7, a plan of the base of the clip from above. The device consists of

two portions-one the clip or base part, which, as shown in Fig. 1, may be attached, if desired, singly or in pairs, to a base-board. The base part consists of a metallic base, Fig. 5, so cast or formed as to admit of the reception of the clamping-arm, Fig. 6, from beneath, the pins N N upon opposite sides of said clamping-bar thus engaging in the sockets PP, which act as journal-boxes,

said clamping bar being held up to its place by the flat spring E, is afterward slipped into its seat,

which the ends being supported by the shoulders

KK, * * * the center being free to sink beneath the heel O thumb-lever D is depressed.

The accompanying figures make this explanation intelligible:

as the

consists of a thumb-piece, D, clamp L, and heel O, the whole supported when in position by the pins N N. At its forward end, L, the clamp-bar is slotted for the reception of the nose of the driver.

*

In front of this slot is the bifurcation M, (which may be a slot or hole.) The object of this is to embrace the sides of the pin F, (located at I in the base,) and force the papers which may be placed in the clamping-jaws down upon the same, so that they may be held from slipping while others are placed upon them.

This pin

may also, for special purposes, be dispensed with sometimes.

Beneath the slot L, when in place,

is a raised part of the base J, forming a block, upon which the slotted portion L of the clamping-arm rests, and which, together with it, forms the jaws whereby the papers are firmly held together. The clamping-arms, Fig. 6, are so constructed that when the thumb-lever is depressed the heel O will pass sufficiently far beneath the bearing N to hold the slotted portion L raised from the base J until the end M is pressed upon, when it will close with a snap and drive the papers down upon the pin F, Fig. 1. In using two of these clips they are set open, and stand thus until the paper is laid in place, when they are successively closed; or the thumb-pieces D D may be connected by a cross-bar, so that both are actuated simultaneously.

The circuit judge held that this carefully described arrangement of parts, whereby the clip might be set open or "cocked" while the papers were being inserted, thus leaving both hands free for arranging them suitably in place, and whereby, when the papers were so placed, it might be closed with a snap, was an essential part of the device described, and must be read into the claim, as being the "paper-filing clip B D." In this opinion we concur. The specification contains no suggestion that this particular arrangement of parts may be dispensed with, as it does with regard to the pin F; and where a patentee has thus carefully and specifically pointed out the details of a structure, which details, as he shows, discharge a stated function, it is not for the court to declare them immaterial. Defendant has no such arrangement of parts. The upper arm of his clip is held in engagement with the base, or with the intermediate paper, by a spring impinging upwardly upon the thumbpiece and not permitting the thumb-piece to be set back or cocked. It seems probable that, in consequence, defendant's clip is not as convenient in use as the complainant's, but certainly it does not infringe.

So far as the patent of 1883 is concerned, there is nothing to add to the opinion of the judge of the Circuit Court. In view of the state of the art, there was no patentable invention in altering the slots of the guide-clip so as to permit the staple driver to be inserted both crosswise and lengthwise, nor so as to give sufficient room to drive a staple with a projecting eye.

The decree of the Circuit Court is affirmed, with costs.

[U.S. Circuit Court-Eastern District of New York.]

ELECTRIC RAILWAY COMPANY OF THE UNITED STATES v. JAMAICA & BROOKLYN RAILROAD COMPANY.

Decided May 3, 1894.

68 O. G., 769.

1. FIELD-ELECTRIC RAILWAY-LACK OF INVENTION.

Claim 1 of Letters Patent No. 407,188 issued July 16, 1889, to Stephen D. Field, for the combination of a stationary dynamo-electric generator driven by a suitable motor, a circuit of conductors composed in part of an insulated or detached section of the line of rails of the railroad-track, a wheeled vehicle moving upon or along said insulated section of track, an electromagnetic motor mounted upon said vehicle for propelling the same and included in said circuit of conductors, and a circuit-controlling device placed upon said vehicle, examined in view of the prior state of the art and Held to be void for lack of invention, the only improvement therein being the selection of a generator producing a current sufficient to operate the railway.

2. SAME-SAME-CAVEAT-TO SUPERSEDE A SUBSEQUENT PUBLICATION BY ANOTHER MUST BE FOR THE SAME INVENTION.

Where a caveat described a stationary dynamo-electric machine whose wires connected with the rails of a railway, which with the wheels of the cars were to serve as conductors of the current to a secondary dynamo-electric machine placed on the car itself and geared to its axles, and a patent subsequently issued to the caveator, in which, instead of using the rails as conductors and the carwheels as collectors, a third rail and an additional collector were used, Held that the caveat did not describe the same invention patented by the caveator and its date of filing could not be availed of to defeat a subsequent publication by another of the invention embraced in the patent.

3. CANCELLATION OF CLAIMS-ESTOPPEL.

Where a patentee was advised by the Patent Office that his application disclosed, but did not claim, an invention claimed in a pending application by another party, and upon this information added claims for the invention, and the resulting interference was decided in his favor, but subsequently canceled the additional claims because the Patent Office on change of opinion rejected them on reference to a patent and took his patent with his original claims, Held that he was not estopped from insisting on his narrower construction of the original claims in order to avoid anticipation of them as not including the invention in the canceled claims nor met by the patent that caused their rejection and cancellation.

4. ASSIGNMENT-ESTOPPEL.

Where the patents of several parties are assigned to a corporation, which corporation subsequently reassigns to each party his patents in order that he might resume what he had put into the corporation, Held that this was a mere transfer of stock in the corporation and did not estop the corporation from denying the validity of the patents.

THIS was a suit by the Electric Railway Company of the United States against the Jamaica and Brooklyn Railroad Company for infringement of a patent.

Mr. Edmund Wetmore for the complainant.

Messrs. Eaton & Lewis (Dyer & Seely, of counsel) for the defendant.