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Messrs. Banning & Banning for the complainant.

Mr. George Payson for the defendants.

DRUMMOND, J. :

These two cases depend mainly upon the construction which is to be given to plaintiff's patent of October 6, 1863. The counsel for the respective parties differ as to this construction. According to the view of the plaintiff's counsel the patent should receive a liberal or enlarged construction, while the defendants' counsel insists the construction should be more narrow. The original patentee was James Bing. No controversy is made as to the title of the plaintiff to the patent.

The patent is for an improved shoe for car-brakes, constructed in two parts, a model of which has been introduced in evidence. That part which rubs against the periphery of the wheel of the car and produces the retarding motion is called the "sole." The other part is called the "shoe." In considering the invention we must give effect to the whole of the description contained in the specification and claims. The patentee starts out with declaring that his invention is, first, the construction of the two parts of the shoe in the peculiar manner which is described, so that the part in contact with the wheel can accommodate it. self to the same. He states that the periphery of a car-wheel is beveled, and that the object of his peculiar construction of the shoe and the sole is that the part which comes in contact with the periphery of the wheel may accommodate itself to the same. He claims that his invention consists, secondly, in a peculiar combination of the two parts of the shoe, the clevis by which the shoe is suspended to the truck, and the bolt which secures the clevis to the shoe and the two parts of the shoe to each other. Then he describes the shoe by giving in detail the manner in which the parts are constructed, and their relations to each other and to the periphery of the wheel, and the peculiar manner in which the wheels of the car are constructed and beveled.

One of the main things connected with the construction of these two parts is that the shoe has two lugs, which pass outside of a lug, a, of the sole, and the bolt fastens them together. There is also a lug, d, in the sole, which fits into a sort of mortise or opening in the shoe, so as to enable the oscillating or vibratory motion which he speaks of to take place. After describing the difficulties which exist in fitting the shoe to the periphery of the wheel, he says:

These difficulties are avoided by my invention, inasmuch as the sole B is permitted to have a lateral rocking motion on the shoe, and can at once accommodate itself to the bevel of the wheel or to any variation caused in that bevel by the lateral movement of the axle.

Then he says:

Another improvement in my invention is the peculiarly simple arrangement of the clevis which supports the shoe, the bolt G serving the purpose of connecting the clevis to the shoe and the latter to the sole.

It seems as though the patentee, in thus describing his invention, intends two things. In the first place, to describe the construction of the shoe and sole in such a way that the latter is accommodated to the ordinary beveled periphery of the wheel; and, secondly, a combination of these various parts, consisting of the shoe and the sole, the clevis by which the shoe is suspended to the truck, and the bolt which secures the clevis to the shoe and the two parts of the shoe to each other; and this intention of the patentee seems to have been expressed in the claims. There are two claims. The first is

The shoe A and sole B, both being constructed and adapted to each other substantially as described, so that the sole can have a lateral rocking movement on the shoe, for the purpose specified.

There can be no doubt what was in the mind of the patentee in mak. ing the first claim. If we take out the bolt the rocking motion can be seen in the model by moving the two (the shoe and the sole) one upon the other; but to accomplish that the bolt is somewhat loose and one of the lugs of the sole, a, has to be tapered more or less, all of which he describes.

The question is whether there is necessarily found in the second claim and as an essential part of it, without which it does not exist as a valid claim, and there can be no infringement, the peculiar construction of parts which produce the rocking motion. This claim is

The combination of shoe A, sole B, clevis D, and bolt G, the whole being constructed and arranged substantially as specified.

It will be observed the words are "constructed and arranged," not "adapted,” as in the first claim, and the rocking motion is not a part of the claim unless implied by the language used.

I am inclined to think there may be an infringement, and this may be a valid claim, independent of what is set forth in the specification, as he describes the invention, "firstly" and in the first claim, without its possessing the rocking motion, and therefore that the view which the plaintiff's counsel take of the construction of the patent is correct.

I have already called attention to the manner in which the inventor divides his invention into two parts-first, so that the sole can accommodate itself to the periphery of the wheel, and, secondly, the peculiar combination of the two parts of the shoe, the clevis by which the shoe is suspended upon the truck, and the bolt which secures the clevis to the shoe and the two parts to each other-and also to that part of the specification in which he says that the difficulties which have heretofore existed are avoided because of the shoe having this lateral rocking motion. He then says his invention or device has another improvement, and that consists in what he describes "secondly" as his invention, in the first part of his specification, the peculiarly simple arrangement of the clevis which supports the shoe, the bolt G serving the purpose of connecting the clevis with the shoe and the latter to the sole.

Whether or not the combination of the second claim contains as an

essential element this lateral rocking motion in order to make it a valid claim, and whether it must be found in an infringing machine, is the question. If this rocking motion was all that was in the mind of the inventor, I think it may be asked, with a good deal of significance, what was the necessity of his dividing his invention into two parts, as he did in his specification and also in the claims. He may have had in his mind that the device which he was describing was constructed in the way which he has specified; but still he claims a combination which he describes in his second claim, and I think it may be a valid combination, independent of the lateral rocking motion which he speaks of in the first claim and in various parts of the specification. If it is not so, then all that would be necessary to prevent infringement would be to change slightly the form of the lug a of the sole or to tighten the bolt G. I do not understand that in the various patents that have been put in evidence there is anything which successfully attacks the device invented by the patentee, and which would prevent it from taking effect as the subject of a valid patent. It is true before this invention there were devices by which the two parts of the shoe were separated when that which was applied to the periphery of the wheel was worn out, or so worn that it could be no longer successfully used; but after all that is not the invention of the patentee in this case. His invention is the peculiar construction of the shoe in these two parts, put together and separated in the way described. And while it may be the duty of the court to limit the patentee strictly to the claims which he has set forth, still it is also the duty of the court to give effect to the invention of the patentee, provided the court can see that he has described and claimed it, and so I think the second claim may be infringed, although there may not be in an infiinging machine the lateral rocking motion described in the first claim.

With this construction of the patent it seems to me there cannot be much doubt but that the devices of the defendants in both cases infringe the plaintiff's patent. The variations are not substantial, but are more in form than in substance, so that, on the whole, I find that the plaintiff is entitled to a decree in each.

[Supreme Court of the United States.]

PEARCE v. MULFORD ET AL.

Decided October Term, 1880.

18 O. G., 1223.

1. Reissued Patent No. 5,774 to Shubael Cottle, February 24, 1874, for improvement in chains for necklaces, declared void, the first claim, if not for want of novelty, for want of patentability, and the second for want of novelty.

2. Neither the tubing, nor the open spiral link formed of tubing, nor the process of making either the open or the closed link, nor the junction of closed and open spiral links in a chain was invented by the patentee.

3. All improvement is not invention and entitled to protection as such. Thus to entitle it it must be the product of some exercise of the inventive faculties, and it must involve something more than what is obvious to persons skilled in the art to which it relates.

APPEAL from the circuit court of the United States for the southern district of New York.

Mr. Henry Baldwin, jr., for the appellant.

Mr. B. F. Lee for the appellee.

Mr. Justice STRONG delivered the opinion of the court:

The complainants in the court below are the owners of a patent for an alleged "new and useful improvement in chains for necklaces, &c.," granted to Shubael Cottle on the 24th of February, 1874, and numbered 5,774. The patent is a reissue, the original having been granted on the 3d day of February in the same year. The invention is described in the specification as consisting of "an ornamental chain, whereof the links are connected together by open spiral links finished before being connected together, the connection being made by springing the finished links into each other in the manner described." The patentee, having thus stated wherein his invention consists, proceeded to describe the chain represented in the drawing attached to the specification to illustrate what he claimed to have invented. The description is as follows: A and B represent the links of the chain. The links A are round and closed, as shown in Fig. 1, and are made and polished or colored separately from the other links. The links B, which constitute the peculiar feature of my invention, are formed of one or more coils of tubing of the proper length, so as to form a double spring-link. Into each end of the tube forming the link B is soldered a small shot, as shown in the drawing, which shot gives a finish to the link. The links B may then be colored or polished, and the chain is formed by springing the links into each other. The links A B may be made the one kind round and the other oval, or both may be made round or both oval.

After thus describing this mode of constructing a chain the specification stated some advantages supposed to result from it, and set forth the claims as follows:

1. An ornamental chain for necklaces, &c., formed of alternate closed links A and open spiral links B, substantially as shown and described.

2. The open spiral link B, formed of coils of tubing, substantially as shown and described.

The bill of the complainants is founded upon this patent. It charges an infringement by the defendant, and it prays for an injunction, an account of profits, and damages. The answer admits the manufacture and sale of chains thus made, but it denies the novelty and patentability of the alleged invention.

In view of the evidence found in the record it cannot be questioned that ornamental chains composed of alternate closed links and spiral links, or formed by spiral links alone, had been known and in use long

before Mr. Cottle made his alleged invention. As was said by the circuit judge

Chains formed by split rings, which are sprung into each other or into a solid link, are familiar articles, and there can be no novelty in the mere shape or form of the chain or of the link which is shown in the drawings of the patent.

There is abundant evidence not only that split rings had been long in use, but that other spiral links had been made and used before 1873, when the patentee claims to have made his invention. If, therefore, there be any novelty in the link which is the subject of the second claim, it must consist in the fact that the spiral link is formed of tubing. Tubing itself, as understood in the jeweler's art, is made by compressing a strip of gold around a brass or copper wire and then forcing it through a draw-plate, the holes in which decrease gradually in diameter until the edges of the gold strip are completely united. The copper wire is then eaten out by an acid, and the tubing is complete. Both the product and process have long been well known, and so have been spiral rings formed of gold tubing. The tubing, before the wire is removed, is wound into coils around a mandrel and cut into desired lengths. The coils may then be pressed together by a wire and annealed, the wire having been removed, or the compressing and annealing process may be omitted. Such spirals have a certain degree of elasticity, which enables them to be sprung upon other links, and when thus sprung into other closed or open spirals they will form a chain. The well-known serpent bracelet was such an open spiral, such a double link, and several of them sprung together alternately with closed links would have formed a chain iden. tical in principle with that of the patentee. There certainly is nothing patentable in merely reducing the size of the bracelet so as to adapt it to use in a necklace. The record also contains evidence that other spiral rings or links made of gold tubing, some of them open and some closed by soldering, were made before 1873. It is to be observed that the sec ond claim in the patent is not for any process of making a link, not for making tubing or winding it into spiral forms, not for tying or annealing the coils when they have been wound, but for an open link consisting of one or more coils of tubing of the proper length, so as to form a double spring-link, into each end of which is soldered a small shot to give the link a finish. This is all the description the specification gives of the link. It is not intimated that the coils must be brought into close contact with each other or annealed, and it is simply said the links may be colored or polished. The form of the link, when made of gold tubing, is all that is attempted to be patented. The constituents are not. The patentee has testified that as long as he had known anything about the manufacture of jewelry he had known tubing to be used in the art; that for many years he had known shot put into the ends of such tub. ing, and that for a number of years he had known links formed of tubing with shotted ends. We think, therefore, the evidence sufficiently

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