Lapas attēli

it thereto by a spline in the hub of the wheel entering a longitudinal groove, s, in the shaft.”

He then claims: "(1) In combination with the time-printing wheel and a revoluble impression roller, a lever turning said roller, a rock-shaft moving said roller toward the printing wheel and a plunger operated by the lever and actuating said rock-sbaft, as set forth."

This roller carries on its periphery the impression band of the patent in suit. It carries this band into contact with the time-printing wheels, and it must perform every function of the platen of the patent in suit, operating in substantially the same way to produce precisely the same result, if the single roller of defendant's recorder is the equivalent of and takes the place of the platen specifically described in the patent in suit. In short, if claim 1 of the patent in suit is broad enough to include the single roller carrying the impression band, and does, then we have a case of double patenting. To my mind the fact that the same patentee, two months after applying for the patent in suit, applied for a patent for this single roller carrying on its periphery the impression band and doing the printing by being brought into contact with the time-printing wheels, demonstrates that he had no conception, idea, thought, or intent that the said single roller, carrying the band, was the equivalent of the platen he had described in his application for the patent in suit. It shows conclusively that the patentee himself so differentiated them that it cannot be contended the single roller construction and operation is covered by claim 1 of the patent in suit. If it is so covered, then claim 1 of the patent in suit is void. It is in this element that complainant says his invention resides. As he had. a patent for it July 10, 1894, in combination with other old elements, working in a given old way, to produce an old result, how could he have another valid patent for the same element in combination with other old elements, operating in the old way, to produce the old result?

The complainant's expert repeatedly admits that defendant's recorder does not have the specific form or embodiment of parts or mechanism shown and described in claim 1 of the patent in suit, and that it is only by reading into such claim elements not referred to that an operative recorder is found, or that the claim covers or can be applied to defendant's structure. In short, according to this expert, we must change the reading of claim 1, and strike out the words "a platen actuated by said lever and pressing the band into contact with the timeprinting wheels as set forth,” and substitute the words "means for effecting impressions of the printing mechanism on the record sheet.” He thinks complainant entitled to a construction so broad that defendant's single roller is both the support and guide of the impression band, "band movable longitudinally in either direction," etc., and the “platen actuated by said lever and pressing the band," attached to and supported by and, in part, extended between two rollers without support, except as held “taut” by the mechanism described, “into contact with the time-printing wheels as set forth.” I think such a construction is not warranted, in view of the language of the claim, the specifications, the fact that this is merely an improvement, and the decisions referred to.

152 F.-29


It should be noted that the following elements of claim 1 of the said patent to Dey of July 10, 1894, No. 522,784, are found in claim 1 of the patent in suit, viz.: Elements: (1) Each, time-printing wheel; (2) "revoluble” impression roller which includes band having the numbers, in the one patent, and "a band movable longitudinally,” etc., in the other, being made movable by two rollers; (3) "rock-shaft moving said roller,” etc., in the one and “platen

pressing the band into contact with the time-printing wheels” in the other, the pressing being done by the rock-shaft; (4) "plunger operated by the lever and actuating the rock-shaft" in the one end and “plunger" operating with the lever and rock-shaft to press "the band into contact with the time-printing wheels, as set forth,” in the other. The plunger and rock shaft are both “set forth” and fully described in the description of the elements of claim 1 of the patent in suit. The functions are substantially the same in both patents. And then claim 1 of the patent in suit has the additional element of the "platen," which, as stated, is wholly omitted from defendant's recorder, as well as from patent No. 522,784, to Dey. In patent 522,784, “lever" is designated I; in patent No. 524,102, as g." "Plunger” as g in the one; as i in the other. Rock-shaft as e in the one, and as L in the other. In the patent in suit, we have “movable platen, C, which is attached to the free end of a spring-arm, c', fastened to a rock-shaft, d, pivoted to the plate, A," and "the platen receives its vertical oscillatory motion toward and from the type-wheel by means of a plunger, i, extending through

affixed to the rock-shaft, d, the outer end of the plunger bears,” etc., and “in pushing the free end of the lever the plunger is forced inward and

throws the platen towards the type-wheel.” In the patent of July 10, 1894, No. 522,784, we have "the shaft * * is hollow and in the interior thereof is the longitudinally niovable plunger, g, which is forced outward and caused to abut against the lever, I, by means of the spring, g', pressing against the inner end of the plunger. On the exterior of the shaft

is a

collar, F, which is connected to the plunger, g, by

The result is that by pressing the free end of the lever, I, towards the case, A, the plunger, g, is pushed inward and carries with it the collar, F. This movement of the collar causes the finger, e', to turn the rock-shaft, e, which,

and this action of the shaft causes





to lift the roller, R," etc. Again: "The shaft, l', receives its rocking motion

projecting from the rock-shaft, e, which is actuated by the plunger, g.” And again: "Then by pushing the lever towards the case, A, the plunger, g, is actuated to arrest the movement of the minute-wheel, C, and lift the impression roller, R, to print the time upon the paper mounted on said roller."

The complainant claims invention in this single roller construction and combination used by the defendant, and, such being the case, I do not understand how it can be claimed as the equivalent of the platen of claim 1 of the patent in suit. An equivalent must not vary in any manner the idea of means, or affect it in any degree. It is quite true that the equivalent may perform some new or additional


the invention, and still be an equivalent; but it must pere functions of the element for which it is a substitute in y the same way, and I do not think that it is material that ť for which another is substituted has more parts or less e substitution of an equivalent is, however, a mere change nd form involving no inventive skill, but suggested by the tself to every person skilled in the particular art. If the uivalent not only performs the function of the element for stituted, and perhaps more, but introduces into the combina

idea, or new ideas, or a much more extended development of means, then we do not have the substitution of an equiva2 patentable improvement--something different in principle ion. In combination claims this is especially true. 1 Rob. S, 254; Wells v. Curtis, 66 Fed. 318, 13 C. C. A. 494; 20

Cas. Am. Notes, 271. we have in combination certain elements working together erating to produce a given result, they work in accordance in obedience to some law of co-operative action. When we ne element which works and operates differently from the hich it is a substitute we necessarily change the action of all,

the combination operates according to and in obedience to co-operative law, and we have a new combination working rent way to produce a result, and it may be the same result; not obtained in the same way by the co-operation of the same

or their equivalents. Such, in my judgment and opinion, se. It is not enough that the two elements, one of which is o be the equivalent of the other, perform the same function the same place; but they must perform that function by aphe same force to the same object, through the same mode of on. Goodyear Dental Vulcanite Co. v. Davis, 102 U. S. 222, d. 149, which was a patent for a process; Burr v. Duryee, 1 31, 572, 17 L. Ed. 650, 660, 661; Westinghouse v. Power 0., 170 U. S. 568, 569, 18 Sup. Ct. 707, 42 L. Ed. 1136; Curtis nts (4th Ed.) § 310; Machine Co. v. Murphy, 97 U. S. 125, d. 935; Carter Machine Co. v. Hanes (C. C.) 70 Fed. 859, uff Mfg. Co. v. Forgie, 59 Fed. 772, 775, 8 C. C. A. 261, und approving 1 Rob. on Pats. § 247. object or purpose of the patent in suit is to print on the band

slip, by means of the type, and by bringing the two in cone hour and minute of the workman's arrival and departure. ject and purpose of defendant's device is the same. The force ed is applied to the same object, viz., the band, through the n of certain mechanism. If that force is the hand of the workanipulating and pushing the lever, we have the same force. If he platen in the one case, and the roller in the other, each of presses the band against the type because of the force applied by rkman, we do not have the same identical "force," but an equivforce," clearly. Hence we have the same force applied to the object, to accomplish the same purpose or result. The question as: Is this force applied to this object and to accomplish the pur

pose through the same mode of application? But "mode of application” does not mean the mere contact of the band with the type, but the mode of action of the mechanical devices used to bring them together. Is the same law of co-operative action employed in both cases acting through substantially the same means? · In the claim in suit of the complainant's patent, this impression band is carried on two rollers, and must be movable longitudinally. This is the essence of this element of the claim and made so by express words. It is made so movable by two rollers on distinct shafts and arranged in the same horizontal plane which turn in unison and wind the band onto the one roller as it is unwound from the other. This longitudinal movement of the band is impossible in defendant's construction, and is not present. The law of its movement in defendant's construction is circumferential or rotary, and not longitudinal. In the one case the band is rotated with the roller as a whole to bring the required number to the type, and there is no winding and unwinding. The type and band are then brought together by raising the roller into contact with the type-wheel or by dropping the wheel into contact with the roller, and thus the printing is done; while in the other it is not rotated as a whole, but, as one part or end is unwound from one roller, it is carried longitudinally through space underneath the type on the printing wheels by the revolution of another roller, halted long enough to be pressed against such type by an independent platen and receive the impression, and then wound upon the other roller. It is the part suspended in space, away from both rollers, that is pressed against the type and receives the impression therefrom. It is so pressed against the type by independent means, a distinct element of the claim absolutely essential to its operativeness by the action of other laws, by the same force, but applied in a different way, and by different means.

I deem it iinmaterial that two elements of a claim of one patent'are inserted in one element of the claim of an alleged infringing patent. Bundy Mfg. Co. v. Detroit Time Reg. Co., 94 Fed. 524, 538, 36 C. C.

Such union of the two elements does not avoid infringement, provided they both be there. But both must be found in the alleged composite element; that is, both must be found in the infringing device. It is no answer to say that both are unnecessary, and one may be dispensed with without impairing the claim or patented device. The patentee, by putting it in as an element of the combination, makes it essential. Take it out, and you no longer have the combination of the patent. If invention is involved in joining the two, then, within the cases cited, there is no equivalency. Here claim 2 of the patent in suit has as its second element "a band movable longitudinally in either direction,” etc. These words “movable longitudinally” are not merely descriptive of the band, but show an essential mode of putting the band into the combination, attaching it to, or connecting it with, the other elements to make an operative device or apparatus. Unless so movable, the recorder is wholly inoperative. Such a band defendant does not use. If the two rollers, D, D', are not an essential part of the second element of claim 1 of the patent in suit, then we have simply a band in the combination designed to be put in, printed on and removed like the sheet of paper in a typewriter, and it becomes a fugitive element,


proper element of a patentable claim. Morgan Envelope Co. v. y Co., 152 U. S. 425, 14 Sup. Ct. 627, 38 L. Ed. 500; Stearns v. il, 85 Fed. 218, 225, 29 C. C. A. 121. re claim 2 of the patent in suit has another element, "a platen ted by said lever and pressing the band into contact with the printing wheels as set forth.” Such a platen defendant does not

It has one roller on which a band not movable longitudinally ound, and there is no platen whatever in the sense of the patent, he reason that in defendant's construction and mode of operation printing a platen is wholly unnecessary. . The roller carrying the 1 is all-sufficient. Defendant dispenses wholly with one roller, platen, and much mechanism necessary for the operation of that

It substitutes nothing. Defendant requires no substitute, no ivalent. It, by changes of mechanical means and a different mode operation, a change in the idea of means, makes one roller do the rk of two rollers and a cumbersome and involved platen. Defendant y infringe the Dey patent, No. 522,784, if it be valid; but that quesn is not in this case. No such claim is made in the bill of comaint herein. There is great doubt that John Dey invented the recorder of the tent in suit; but I cannot say it is established beyond a reasonable oubt that F. E. Cable, and not John Dey, was the inventor. The ayment to Cable of $1 in addition to his wages on every machine made

an important circumstance; but he was quiet, and allowed Dey to ake out the patent in his own name, and has been silent since. What thers "understood” is hardly evidence that Cable was the inventor. But it is unnecessary to pursue that feature of the case. I have fully canvassed the prior art, which shows Dey to be but a mere improver in the art, and not entitled to a broad range of equivalents. This is emphasized by the fact his patent is for a mere combination, where the range of equivalents is much narrower than in other cases. 1 Robinson on Patents, SS 254, 255; Carter M. Co. v. Hanes (C. C.) 70 Fed. 859; Duff Mfg. Co. v. Forgie, 59 Fed. 772, 8 C. C, A. 261.

Defendant does not infringe. There will be a decree dismissing the bill of complaint, with costs.



(Circuit Court, N. D. New York, March 27, 1907.) 1. PATENTS_VALIDITY AND INFRINGEMENT-CAR SEATS.

The Aze and Gilfillan (Wheeler, assignee) patent, No. 491,761, for a car seat having a reversible back of the "walk over" type, the essential feature of which is a pair of arms connecting the back to the seat frame, having the one end of the pair pivoted to the end of the frame near the center thereof by pivots arranged in a horizontal plane, and having the other or upper end of the pair pivoted to the end of the back by pivots arranged in a plane substantially at right angles to the plane of the back, in such method of pivoting discloses novelty and patentable invention, and is entitled to a broad range of equivalents. Also held valid as against the claim that the invention was made by another than the patentees and infringed by a seat having at one end a pair of arms exactly like those of

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