of its merged condition, if it had been a new thing after it was developed; and so Pitt alone will not serve to invalidate. McMillan makes his hooks or rings out of wire, and extends the hooks themselves to a meeting-point, making a toggle-lever hinge, and pivotally mounts the rings on the edges of the back-plate. The language of Schade's claim 1, if given the broad meaning which could naturally be attributed to the selected words, plainly reads upon McMillan; and yet this is not conclusive of the question of invention, since the language of the claim, by reference to the specification, might fairly imply that the "bent wire arms" of the claim referred to arms bent up laterally and to hinge-leaves of the general type shown rather than those which were mere continuations of the hook in the same plane, like McMillan. Even Lindner, considered by itself or in association with the others, would not necessarily negative invention, since the wire offset of Lindner, shaped like Schade's wire offset, had no function as a spring-pressed lever, and to combine the thought of such a shaped and formed continuous wire with Pitt's thought of spring-actuated toggle-levers might well be considered a patentable combination. We are convinced, however, that Blackmer and Robson furnish the final and unanswerable argument against invention. With a continuous-wire member generally, undistinguishable from Schade and embodying the three functions of a separable retaining-hook, an edge-pivot, and a doubly-bent offset portion operating as a spring-pressed lever, we find that this offset made contact with and passed by and was held in selected position by a resilient abutment located just above the offset. Pitt had disclosed a ring-section provided with an extension which made contact with a resilient abutment located at one side, viz, the opposite member of the same form. It follows that when Schade appeared, the toggle-lever-hinge form of Pitt and the spring-pressed-lever-arm form of Blackmer and Robson were known equivalents, and what Schade did was to substitute one for the other as one of the members of his otherwise unchanged combination. He accomplished no "new result," in any sense of that ambiguous phrase, except that his substituted form was perhaps cheaper to make, stronger, and more smoothly operating in this old combination than the equivalent element which it displaced. The mechanical modification required, considered either from the viewpoint of substituting the Blackmer and Robson continuous wire for the Pitt hook and plate, or substituting the Pitt toggle-lever interlock for the Blackmer and Robson lever and casing interlock, was merely to extend the Blackmer and Robson offsets until they were hinged together. In view of all that was before him in these several patents, we cannot think that this was more than the expected ability of the skilled artisan. (Fare Register Co. v. Ohmer, C. C. A. 6; 238 Fed. Rep., 182, and cases cited at

p. 187; 151 C. C. A., 258; Budd Co. v. New England Co., C. C. A. 6; 240 Fed. Rep., 415, and cases cited on p. 417.)

The remaining claims involved in the appeal fall with claim 1. The decree is reversed, and the case remanded, with instructions to dismiss the bill.

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

WAGNER v. MECCANO LIMITED.

Decided November 16, 1917.

[Nos. 2,977, 3,014.]

248 O. G., 233; 246 Fed. Rep., 603.

1. PATENTS-ANTICIPATION-PUBLICATION.

An inventor's own publication of the device for which he seeks a patent more than two years prior to the application is a disclosure within Revised Statutes, section 4886 (Comp. St., 1916, sec. 9430), and precludes the patenting of his invention.

2. SAME " INVENTION "- -" MECHANICAL SKILL."

The adaptation to metal mechanical toys of previously-disclosed inventions used in wooden toy building-blocks does not amount to "invention," but is a mere exercise of "mechanical skill."

3. SAME-SAME-WHAT CONSTITUTES.

The mere improvement of a well-known device without substantial change in either means or result does not amount to invention.

4. SAME-SAME-SAME.

A device simply uniting two parts of a previously-known device into an integral construction does not amount to invention, particularly where the two parts had previously been joined mechanically.

5. SAME-SAME ANTICIPATION-" MECHANICAL SKILL."

66

Hornby patent, No. 1,079,245, for rectangular plates and so-called sectors" for use in connection with mechanical building toys, consisting of many strips with slotted holes, which could be united to form ingenious devices, as limited by the prior art, Held not to show "invention," disclosing only "mechanical skill."

6. COSTS-ALLOWANCE-DEPOSITION.

Equity rule 58 (198 Fed. Rep., xxxiv; 115 C. C. A., xxxiv) declares that by demand served ten days before trial either party may call on the other to admit in writing the execution or genuineness of any document, letter, or other writing, saving all just exceptions, and if such admission be not made within five days after such service the cost of proving the document shall be paid by the person refusing to make such admission, unless the trial court shall find that the refusal was reasonable. Complainant called on defendants to admit in writing the execution and genuineness of documents to be used in evidence. Defendants' counsel refused to make admission, and later they notified complainant's counsel that they would stipulate the matter when the two should meet in the town where one of the depositions was to be taken. Complainant by telegram declined to accept the stipula

tion except on defendants' payment of costs and expenses incurred to date. No response was made to complainant's answer, and at the taking of depositions complainant's counsel stated that as no reply had been received to such telegram the taking of depositions on behalf of complainant would be resumed. Held that despite defendants' contention that complainant was in control of the documents and might have proved them in the ordinary course the allowance to complainant of costs incurred in proving such documents was not an abuse of the trial court's discretion.

7. SAME EQUITY-ALLOWANCE.

Apart from court rules the taxing of costs in equity cases is within the sound discretion of the trial court.

APPEALS from the District Court of the United States for the Western Division of the Southern District of Ohio; Howard C. Hollister, judge.

Suit by the Meccano Limited against F. A. Wagner, trading as the American Mechanical Toy Company, and the Strobel & Wilken Company, who counterclaimed. From a decree for complainant (234 Fed. Rep., 912) and an order denying a request to dismiss the appeal, remand the record, and on the granting of such request to reopen the case, defendants appeal. Affirmed in part, and in part reversed, and causes remanded, with directions. (See also, 235 Fed. Rep., 890; 149 C. C. A., 202; 239 Fed. Rep., 901; 153 C. C. A., 29.)

Mr. H. A. Toulmin and Mr. H. A. Toulmin, Jr., for the appellants.

Messrs. Healy, Ferris & McAvoy (Mr. Reeve Lewis, Mr. Ralph L. Scott, Mr. Wm. B. Kerkam, and Messrs. Mauro, Cameron, Lewis & Massie of counsel) for the appellee.

Before WARRINGTON and KNAPPEN, Circuit Judges, and SANFORD, District Judge.

WARRINGTON, Cir. J.:

The Meccano Limited, a British corporation, is engaged in the manufacture and sale of outfits which are adapted to ready and repeated assembling of parts into a variety of mechanical toys; and with each main outfit it supplies a manual of instructions and illustrations for use in building the toys. The corporation brought suit in the court below against Francis A. Wagner, trading as the American Mechanical Toy Company, and against the Strobel & Wilken Company, charging defendants with acts of unfair competition consisting, in effect, of sales of outfits substantially identical in parts and in appearance, shape, and dimensions with those of plaintiff. and accompanied by manuals of instructions in which defendants copied, counterfeited, and simulated the appearance and arrangement, illustrations, and language, of plaintiff's manuals, particularly

those on which copyright registrations had been secured; also with acts of infringement of plaintiff's copyrights, consisting in substance of copying and counterfeiting plaintiff's Meccano Royal Book of Instructions, No. 291,375, June 22, 1911, and Meccano Manual of Instructions, No. 294,670, August 14, 1911; and also with infringement of plaintiff's certain Letters Patent. The defendants answered, admitting that Wagner, under the trade-name mentioned, manufactures outfits known as the "American Model Builder," and that he and his codefendant sell such outfits accompanied by manuals of instructions, alleging that by reason of anticipation and the prior art the patent sued on is void, and denying the allegations of unfair competition and of infringement alike of the copyrights and patent in suit; and by counterclaim they sought damages against plaintiff for alleged unfair competition on its part. The case was heard below on its merits, and decree was rendered in favor of Meccano Limited on all the issues, save only as to one feature of certain of the patent claims, with the usual order of injunction and accounting; and the counterclaim was dismissed. Defendants appealed, and will hereafter be referred to as appellants. Subsequently, and before the statement of evidence had been settled in the court below and so before the transcript had been filed in this court, appellants obtained an order here empowering the court below, if it should deem proper, to reopen the case and to receive further evidence, including an alleged newly discovered anticipation of the patent in suit. Later, appellants moved the trial court to certify to this court a request to dismiss the appeal and remand the record, and, upon the granting of such request, to reopen the case, vacate the injunction and decree, and allow a hearing upon the alleged newly discovered evidence. The trial judge regarded the evidence as insufficient to warrant a change of his previously expressed views of the case, and so denied the motion. Appeal was also taken from this order.

(1-5) The opinion below is reported in (D. C.) 234 Fed. Rep., 912, and the facts presented before the first appeal are there considered. We approve the court's conclusions upon the issues joined, except the one in relation to the patent in suit. This patent, No. 1,079,245, was issued by the United States to Frank Hornby, a British subject, November 18, 1913, and on the same day was assigned by him to Meccano Limited. The title selected to indicate the nature and design of the claimed invention is "Perforated Plate," and in the specification the patentee states that he had "invented certain new and useful improvements in perforated plates." He further states:

This invention relates to improved elements, and combinations of such elements with other elements or parts, to be used in the construction of toys or working models of machinery, structures, or similar mechanisms.

The specification also, in effect, states that there was then an existing system for making up toys from

perforated elements, embodying also the use of gear wheels, pulleys, spindles, and the like,1

that the various members were adapted to be assembled and mounted in these perforated parts and connected by bolts and nuts, and that it had been found desirable, in order to secure greater rigidity in the structures and to avoid the use of many small strengthening strips, "to provide perforated flanged plates and angle brackets." And thereupon the specification states:

The present invention relates to certain forms of perforated sheet metal elements for use as aforesaid. In all the forms the plates having perforated flanges, preferably integral, are an essential feature of the invention.

The perforated plates so referred to are illustrated by accompanying drawings; there are two of these plates, Figure 1 showing in perspective a "sector shaped plate," its width tapering toward one end, and Fig. 4 a "rectangular shaped plate." They consist of sheet metal with apparently integral flanges along their sides and at right angles thereto. The body of the rectangular plate has several rows of perforations equally spaced both ways, and each flange a single row, equally spaced and disposed lengthwise of the flange. The body of the sectorplate has a single row of perforations extending lengthwise and in the center of the plate, with a similar row transversely disposed near each of its ends, and each flange has a similar row disposed lengthwise—all uniformly spaced. There are still other drawings representing a number of different toys which may be built up by associating one or both of these plates with perforated metal strips, perforated angle-brackets, clips, wheels, and ropes, and by suitably disposing the parts and fastening them with bolts and nuts. It is to be inferred from the specification and certain of the claims, that the parts thus named, other than the plates, are but a portion of "standard parts" which may be used in combination with the plates. However, no specific parts except only the plates are called for by any of the claims; and hence the standard parts may be safely eliminated from the consideration of the patent except as an undefined class adapted to toy building in combination with the plates. Thus the two plates and their qualities are controlling features as respects the question of patentable invention. There are ten claims, and all are in issue. The

1 The specification does not in terms state the origin of or distinctly describe the "perforated elements" embraced in the existing system so referred to, yet so far as those elements, standard parts, are shown in the drawings or mentioned in the specification, they and the method of assembling them were old in the prior toy-building art. (Hornby U. S. patent, No. 810,148, January 16, 1906; Von Leistner British patent, No. 14,442, November 9, 1895; Jenss British patent, No. 10,040, June 22, 1895; Walters U. S. patent, No. 262,863, August 15, 1882; Lilienthal German patent, No. 46,312, April 8, 1888; Wing U. S. patent, No. 916,243, March 23, 1909; Walther German patent, No. 153,854, June 4, 1903.)