must prove invention over the best of them, as he undoubtedly must be presumed to know of any machine which fully em bodied his invention.

2. A patentee is entitled to protection for improvements made by him, notwithstanding the prior existence of a device having the same capacity, but differing in structure.

3. Experimental use occurring more than two years prior to the filing of the application is not fatal to a patent, even though the use was for the purpose of satisfying others as to its utility.

Mr. Charles E. Mitchell and Mr. J. L. S. Roberts for the plaintiffs. Mr. B. F. Thurston and Mr. Livingston Scott for the defendant.

LOWELL, J.:

The patent of D. M. Moore, No. 45,344, was granted in December, 1864, upon an application filed October 1, 1864, for an improvement in wrenches. The patented tool is a wrench with a double-faced rachetwheel connected with two pawls, which are controlled by a lever and springs. The springs tend to keep the pawls in contact with both faces of the ratchet, and when the lever is central or out of use the pawls lock both faces of the ratchet-wheel and leave the wrench rigid like the old form of that tool. By moving the lever to the right the pawl on that side is disengaged and the ratchet-wheel is free to move to the right, but is rigid in the other direction, and so, conversely, when the lever is moved to the left the pawl on this side is disengaged.

The claim is for

The combination, in a wrench, of the ratchet-wheel B, containing the socket for seizing the work, with the detents [pawls] b b and lever g, so constructed as to lock the ratchet against rotation in any direction, and also to lock it at will, so that the implement may be worked as a right-hand or left-hand wrench without removing it from the work, substantially as described.

The defendant uses the ratchet-wheel with the spring, pawls, and lever precisely like Moore's in a bit-stock, which is adapted to receive various tools. Upon inspection, I cannot doubt that one was copied from the other. The plaintiffs' expert testifies that this part of the defendant's bit-stock operates like a wrench, and that wrenches are often used to work taps, which are tools for turning screw-threads. These statements are not denied, and if true there is no doubt that the defendant uses the plaintiffs's wrench, with addition, and infringes the patent.

There are, however, two questions of fact which affect the validity of the patent. Three witnesses declare that they used a wrench which would operate as a right or left hand ratchet-wrench or as a rigid one, and they reproduce from memory a model which they say is substantially like it. It is true, and is creditable to them, that they do not undertake to verify the reproduction as precisely like the original. This tool is known in the record as the "Coggeshall wrench," and the original has not been seen for about twenty years. Supposing the model to represent the original, the question is whether Moore made a patentable improvement upon it. The Coggeshall tool had two wheels rigidly united,

with their cogs facing different ways, two pawls with suitable springs, which made the wrench rigid when both were operating, and a rotary cam, by the action of which either pawl might be thrown out of connec tion with its wheel. This wrench could be used in the three modes of Moore's, and is the only wrench before Moore's which had so great a capacity and was at the same time wholly automatic. It had a separate wheel for each set of ratchets instead of a double-faced wheel, and its lever or cam for moving the pawls was much inferior to Moore's because the latter takes fixed positions and is locked in each, while Coggeshall's might be turned too far or might turn back and would need constant attention to keep it in the required place. I have no doubt that these differences would make Moore's invention patentable if Coggeshall's had been patented. Whether, when a patentee has made an original invention which is confessedly an improvement upon all old machines, he is conclusively presumed to have known every lost and forgotten machine in the line of his art, and therefore must prove invention over the best of them, as he undoubtedly must be presumed to know of any machine which fully embodied his invention, I am not prepared to say. The patent may be held good for precisely what Moore invented, which is precisely what the defendant uses.

The other question of fact is whether Moore publicly used his wrench before the 1st day of October, 1862-that is to say, more than two years before he applied for his patent. Moore swears that he invented the tool in 1859 at Philadelphia, where he was then employed, and used one there openly a great many times, and afterward at Hartford, and lastly at Windsor, his home, to which he returned about November, 1861. He was not cross-examined; why, I do not know. Witnesses have been called to give such negative evidence as they might in relation to all the places at which Moore says he used that wrench. He is not corroborated excepting as to the use in Windsor. The patent was issued upon his written statement that he had not made such use as he now swears to, and was sold under an implied obligation to disclose any such defect in his title. If what he now testifies is true, he has committed a fraud on the public and on his assignees, and I do not think I ought to regard his testimony of much weight, except as it is confirmed by others. I think, upon the evidence, I ought to lay out of the case the alleged use in Philadelphia and Hartford.

Moore returned to Windsor in the autumn of 1861, and four witnesses are called to prove that he used and lent to others for use a wrench like that of the patent before October 1, 1862. It is very difficult for witnesses to fix within a month or even a year the exact time of an occurrence of no importance to themselves, to which their attention is called. after the lapse of sixteen or seventeen years. This difficulty, inherent in the subject, must be fully overcome by one who assails a patent. Another question which always arises is whether the use was within the limits of a justifiable test or experiment. I have read the evidence with

great care and am satisfied that Moore did not make a wrench for sale until within two years before his application. As the value of his invention was not for his personal use, as is often the fact with manufacturers who improve a machine used in their particular business, so much as for the sale of the tools or the royalties, I consider this fact very important. The chief witness to prior use, E. F. Spaulding, gives a deposition which is clear and candid; but he had told one of the plaintiffs a very short time before he testified that he had no means of fixing the date and could not fix it. This he very fairly admits, and he does not explain how his memory has been refreshed. Besdies, the evidence of this witness, while it is not wholly consistent with itself upon the other point, yet leaves upon the mind an impression that the use which he testifies to was experimental. Such is the fair result of his evidence at pages 235 to 237 of the record. And so of the only other witness whose means of knowledge were considerable-Edminster. The point which the defendant takes as to the use by Edminster is that Moore permitted him to try the wrench in order to induce him or his father to take an interest in it and help Moore in procuring a patent. The witness so puts it; but I consider it too nice a point to say that the future patentee, when he permits a person to test his tool by a short use with a view to interest him in its being patented, is not testing his tool, but only the mind of the borrower. I do not know that an inventor is bound to satisfy his own mind alone by his experiments. The question to be determined is not only whether the tool will work, but in what modes and with what advantages over old tools; how well it will work and how cheaply; and I am of opinion that he may, in such a case as this, test not only its patentability, but the degree of it, if I may so say-that is, whether it is worth while to patent it. I must not be understood as speaking of a case in which the tool or thing patented has been sold more than two years before the application.

Decree for the complainants.

[United States Circuit Court-Southern District of New York.]

THE EAGLETON MANUFACTURING COMPANY v. THE WEST, BradLEY & CARY MANUFACTURING COMPANY ET AL.

Decided June 9, 1880.

17 O. G., 1504.

1. If a patent was not accompanied by an application, the date of the patent would be deemed the date of the invention; and the application, to be effective evidence to carry the date of the invention back to its own date, must be an application for substantially the same invention for which the patent is granted, without material variation or addition.

2. When the application fails to take the date of the invention back of the date of the patent, and the defendants make out prior knowledge and use by others beyond

any fair or reasonable doubt, as the law requires, the burden is shifted onto the plaintiff to show invention or discovery by the patentee still prior to that.

3. An inventor need not know all the uses to which his invention is capable of being put, but there must be some patentable invention patented before any use of it can be covered by the patent.

4. The proceedings of the Patent Office are presumed to be regular and founded upon proper proceedings; but they must necessarily be founded upon the applications of living persons or their personal representatives, such as the law recognizes, and not upon those of persons who are merely supposed to exist, and should be founded upon the oath of the inventor or his personal representative, in accordance with the statute.

5. An application made and sworn to June 26, 1868, by an inventor who died in February, 1870, amended November 7, 1871, by the introduction of the substantial part of the thing patented, by persons who had been his attorneys, unsupported by the oath of his personal representative, not a valid foundation for a patent. 6. Patent No. 122,001, dated December 19, 1871, issued to J. Joseph Eagleton, Sarah N. Eagleton, administratrix, for an improvement in japanned furniture-springs, granted upon such an application, never had a valid existence.

Mr. Frederic H. Betts and Mr. William D. Shipman for the plaintiff. Mr. William C. Witter and Mr. George Gifford for the defendants.

WHEELER, J.:

This bill is brought upon Letters Patent No. 122,001, dated December 19, 1871, issued to J. Joseph Eagleton, Sarah N. Eagleton, administra. trix, assignor to Eagleton Manufacturing Company, for an improvement in japanned furniture-springs. The defenses set up in the answer are that Eagleton was not the original and first inventor of the improvement; that the specification is not sufficiently full, clear, and exact to enable persons skilled in the art to practice the invention; that the specification does not contain the whole truth relating to the invention, and that the defendants do not infringe.

The springs which are the subject of the patent are "coiled helical or hour-glass springs," so called, made of steel wire for furniture-seats and beds. It is desirable that such springs should be protected from corrosion, and that they should be strong and elastic. The patent is for springs protected by japan and tempered by the beat used in baking on the japan. It specifies no degree of heat to be used, except that it is to be sufficient to bake and harden the japan. The evidence shows clearly that in coiling the wire of which these springs are made into the shape required it is weakened by the strain on the outside and the compression on the inner portions, and that its strength and elasticity are restored and improved by subjecting them to heat, which need not be great enough to make them limber and to lose their shape, as would be necessary in tempering by the old process; that the best result is produced by heat at about five hundred degrees, and that japan may be baked on them by heat at from two hundred to seven hundred degrees with the facility and rapidity sufficient for manufacturing establishments, and at still lower heats by taking longer time for the operation.

The oath of Eagleton that he believed himself to be the original and

first inventor of the improvement described in his application was made June 26, 1868. He authorized the members of the firm of Munn & Co. to act as his attorneys in presenting the application and making all such alterations and amendments as might be required, and his appli cation was filed July 6, 1868. It was rejected, and he was notified by letter in the care of his attorneys, dated July 10, 1868, of the rejection. He died in February, 1870. The application was renewed as in his name by the attorneys December 29, 1870. The specification was amended by them in his name October 19, 1871, and again rejected; was amended in like manner November 7, 1871, and was finally granted. That steel furniture-springs of this sort, tempered and strengthened in this manner, were known and used by various persons named in the answer before the date of the patent is fully and clearly shown by the evidence and not disputed. If the patent was not accompanied by the application, the date of the patent would be deemed to be the date of the invention, and that evidence would defeat the patent without further proof of still prior invention by Eagleton (Kelleher v. Darling, 14 O. G., 673); and the application, when produced, in order to be effective evidence to carry the date of the invention back to its own date, must be an application for substantially the same invention for which the patent is granted without material variation or addition. Railway Co. v. Sayles, 97 U. S., 554. The date of the application alone would not be sufficient for that purpose. In this view the original application of Eagleton is important. After the preliminary statement that he has made an invention, and referring to the following as a description and to the drawing, stating that it "represents a furniture-spring provided, according to my improvement, with a japan covering," he proceeded:

The nature of this invention relates to improvements in helical furniture-springs such as are used for mattresses, sofas, &c., the object of which is to provide steel springs which will not be so liable to injury from corrosion as those now in use.

It consists in providing steel springs such as are commonly used with a japan outer covering. Steel springs, as is well known, possess in a much higher degree the requisite qualities of strength, flexibility, and elasticity than iron, copper, or brass, and by reason of the susceptibility of steel to be tempered and thereby regulated to any degree of elasticity, it is much more preferable to use; but owing to its great liability to deterioration from corrosion it is but little used for such springs.

To obviate this difficulty I propose to provide steel springs coated with japan, which I find to be of great advantage in resisting the corrosive action of the atmosphere on the steel, and whereby steel springs are made very much more durable than any other. To some extent the same purpose may be accomplished by coating the spring with tin or zinc or other similar metal which will not suffer by corrosion; but the process of coating with such metal requires the use of acids for cleaning and preparing the steel, which, adhering to the steel and being to some extent inclosed within the said coating and maintained in contact with the steel, have an injurious effect thereon. I have, therefore, found that when the springs are protected by japanning they are much more durable and give more satisfactory results, the same being applied by the common japanning process.

Having thus described my invention, I claim as new and desire to secure by letters patent

Japanned furniture-springs, as a new article of manufacture, substantially as and for the purpose described.