appellant asks us to ignore the first clause of the claim, which is as follows:

An automatic device for cutting or separating an unsupported freely flowing stream of molten material into unformed molten mass.

Appellant contends that this is a mere statement of a process and has no place in a mechanical apparatus, and should be entirely disregarded when appearing in a claim of an apparatus patent. With this conclusion we cannot agree. While it is true that this clause of itself does not describe an element in the combination, it should not for that reason be ignored. Each of the elements of the combination should be read in the light of this clause and should be modified by it. Such a clause of itself may entirely fail to supply a necessary element in a combination (Morgan Envelope Co. v. A. W. P. Co., C. D., 1894, 238; 67 O. G., 271; 152 U. S., 425; 14 Sup. Ct., 627), yet it may so affect the enumerated elements as to give life and meaning and vitality to them, as they appear in the combination. So in this case the legitimate and fair construction of the claims, particularly in view of the specifications and drawings, requires us to read on each element of this claim the clause which appellant insists is a superfluity. In so doing we are not substituting an operation for an element, nor including as an element the particular article upon which the apparatus is to work. We are merely giving to the modifying clause the same effect that would be given to an adjective or adverb that limits, enlarges, or qualifies the word it modifies.

Whether Brooke, at the time he made his discovery, was not also entitled to a process patent, we need not consider, for it is not before us. Nor are we required to devote time to the question of the patentability of Brooke's discovery, for in appellant's brief we find the following language:

This use of the knife blades for the dual purpose of severing the stream and husbanding it while the molds are changed was new with Brooke, or at least Brooke increased the husbanding to a very material extent; that is, from the slight husbanding of Picard, Schulze-Berge, to a substantial amount-great enough to absorb all glass flowing during the relatively long period of mold shift.

Such a concession (justified by the record) clearly and justly credits to Brooke the discovery of an apparatus that would take care of an unsupported freely flowing stream of molten material," which is the essence of the value of this discovery.

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(3) Appellant further urges that the application for a patent was abandoned in the Patent Office, and this contention is based on plaintiff's failure to prosecute his application within the period fixed in the statute. This contention must be rejected in view of the decision in Western Glass Co. v. Schmertz Glass Co. (185 Fed. Rep., 791; 109 C. C. A., 1). Appellant cites Steward v. American Lava Co. (C. D., 1909, 557; 149 O. G., 602; 215 U. S., 161; 30 Sup. Ct., 46) to

the contrary, but the cases are distinguishable and are not in conflict. Section 4892, Revised Statutes (sec. 9436, Comp. Stat., 1916), under consideration in Steward v. American Lava Co., supra, requires an amended application for the patent to be verified, and makes no exception and grants to the Commissioner no discretion. The Commissioner of Patents in the present case was not outside of his jurisdiction when he acted on appellee's application, filed more than two years prior thereto, for section 4894, Revised Statutes (sec. 9438, Comp. Stat., 1916) expressly reserves to the Commissioner the right to issue patents after such period.

Claims 3, 4, and 5 are especially attacked, because no basis for them is disclosed in the specifications or drawings. It would serve no useful purpose to reproduce here the drawings or to quote at length from the specifications. We have carefully read the specifications and examined the drawings with the criticism in mind, and find ample support for the claims in both the drawings and specifications. Appellant's device so clearly infringes appellee's patent that no discussion of this phase of the case will be indulged in. The decree is affirmed.

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

WONDER MFG. Co. v. BLOCK et al.

Decided May 6, 1918.

253 O. G., 955; 249 Fed. Rep., 748.

1. TRADE-MARKS AND TRADE-NAMES-INFRINGEMENT-WHAT CONSTITUTES. Where plaintiffs had a trade-mark in the word " Wizard," defendant's sale of goods indentical in appearance under the name "Wonder" was an infringement.

2. SAME APPROPRIATION--WORDS SUSCEPTIBLE OF.

The words "Arch Builder" and "Heel Leveler," used in connection with insoles in shoes, are susceptible of exclusive appropriation as trade-marks, since they are used in a secondary sense, for the terms of themselves do not suggest the purpose of correcting defects of the human foot, the first signifying one who builds arches and the second suggesting the shoemaker's trade. 3. PATENTS-REVIEW-INJUNCTION.

On appeal from an interlocutory injunction in a patent case the appellate court will go no further than to ascertain whether the court below abused its discretion. Therefore where it was not disputed that there was an infringement by defendant the question of the extent of the infringement will not be reviewed.

Though an earlier patent was not set up in the answer or by notice, it is admissible in an infringement suit as evidence of the state of the prior art and to aid in construing the claims of the patent asserted to have been infringed.

+

5. SAME-ACTIONS-EVIDENCE.

Though a prior patent was a mere paper patent and there was no evidence that the invention had ever been used, it is admissible on the question whether a device infringes a subsequently-issued patent.

6. SAME-VALIDITY-ANTICIPATION.

The Block Patent No. 1,127,349, for the support of the anterior metatarsal arch of the foot, Held, in view of the prior art, to have been anticipated and not to show invention, as to claim 1, for a flexible insole having a portion located beneath the anterior metatarsal arch of the foot of the wearer and means for adjusting the thickness of the insole at one or more points along the line of such arch.

7. SAME SCOPE-INFRINGEMENT.

Block Patent No. 1,127,349, claim No. 2 Held limited by the language of the claim, and, as limited, not infringed.

Where a patentee was not the first in the field and there had been earlier similar inventions, the scope of the invention must be deemed limited by the language of the claim to the construction therein specified.

The issuance of a patent creates a prima facie presumption of a patentable difference between the device for which a patent was issued and an earlier patented invention.

10. SAME-INFRINGEMENT.

The Block Patent No. 1,061,353, for an arch-support, claims 1 and 4, which present the combination of an insole member, an insertion, and self-contained means carried by the insole member and insertion, whereby the insertion may be detachably secured at predetermined points, Held not infringed. APPEAL from the District Court of the United States for the Second Division of the Northern District of California; Wm. C. Van - Fleet, judge.

Suit by Alexander E. Block and the Wizard Foot Appliance Company, a corporation, against the Wonder Manufacturing Company, a corporation. From a decree for injunction and order directing an account of profits and damages for infringement of trade-marks and patents, defendant appeals. Remanded with instructions to dissolve the injunction as to certain patents; the decree being otherwise affirmed.

Mr. Charles E. Townsend and Messrs. Dewey, Strong & Townsend. for the appellant.

Mr. Wm. A. Smith and Mr. James Love Hopkins (Mr. N. A. Acker of counsel) for the appellees.

Before GILBERT, Ross, and HUNT, Circuit Judges.

GILBERT, Cir. J.:

This is an appeal from a decree of injunction and an order directing an account of profits and damages for infringement of three trade-marks and four patents, all issued to Alexander Block, and all

relating to insoles for shoes. The trade-marks are the word "Wizard," Certificate No. 110,976, issued June 20, 1916, and the technical trade-marks, "Arch Builder" and "Heel Leveler."

(1, 2) We think that the court below properly disposed of all questions which arise in connection with the use of the trade-marks. The word "Wonder," upon goods identical in appearance with the plaintiff's goods, conveys the same idea as does the word "Wizard," and its use is an infringement. (National Biscuit Co. v. Baker, C. C.; 95 Fed. Rep., 135; Florence Mfg. Co. v. J. C. Dowd & Co., 178 Fed. Rep., 73; 101 C. C. A., 565; Aluminum Cooking U. Co. v. National Aluminum Works, D. C.; 226 Fed. Rep., 815; Daniel O'Donnell v. Riscal Mfg. Co., D. C.; 228 Fed. Rep., 127.) And the terms “Arch Builder" and "Heel Leveler," as used by the plaintiffs, are susceptible of exclusive appropriation, since they are used in a secondary sense. The primary meaning of "arch builder" is one who builds arches. No suggestion is conveyed that the arch referred to is the arch of the foot. The primary meaning of "heel leveler" is perhaps more obscure, but it is more suggestive of the shoemaker's trade than that of the chiropodist. It is only in its application to the plaintiffs' device that its significance becomes apparent.

(3) It is said that the decree of the court below as to infringement of Patent No. 1,043,058, for an arch-support, issued November 5, 1912, should be modified, so as to permit the use by the defendant of the arch-support shown in plaintiff's Exhibit 5; the contention being that, in view of the limitations placed upon the scope of plaintiff's patent by the proceedings in the Patent Office and the language of the claim, which covers " a plurality of overlapping pockets," etc., the plaintiffs should be limited to the feature which distinguishes that combination from the prior art, to wit, the overlapping pockets, and, inasmuch as Exhibit 5 shows no overlapping pockets, its use is not an infringement. The contention cannot be considered on this appeal. The decree contains no finding that Exhibit 5 infringes the plaintiffs' patent. It finds only that the defendant has infringed the claim of the plaintiffs' patent. It is not disputed that plaintiffs' Exhibit 3 presents a device which does infringe the patent. This court can consider only the question whether the court below erred in finding that there was infringement, and on the appeal from an interlocutory injunction in a patent case an appellate court will go no further than to ascertain whether or not the court below abused discretion in granting the injunction. (Kings County Raisin & Fruit Co. v. United States Consol. S. R. Co., 182 Fed. Rep., 59; 104 C. C. A., 499; Blount v. Société Anonyme, etc., 53 Fed. Rep., 98; 3 C. C. A., 455; Consolidated Rubber Tire Co. v. Diamond Rubber Co., 157 Fed. Rep., 677; 85 C. C. A., 349; Interurban Ry. & T. Co., v. Westinghouse E. & Mfg. Co., 186 Fed. Rep., 166; 108 C. C. A., 298.)

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The defendant admits its infringement of Patent No. 1,191,655, issued July 18, 1916, for “ combined heel and arch support," and abandons its appeal from the decree as to that patent.

(4) We are of the opinion that the defendant has not infringed Letters Patent No. 1,127,349, issued February 2, 1915, for a "support for the anterior metatarsal arch of the foot." The patent has two claims. The first is for the combination of

a flexible insole having a portion located beneath the anterior metatarsal arch of the foot of the wearer, and means for adjusting the thickness of the insole at one or more points along the line of said anterior metatarsal arch.

The patent to B. Nathan, for an innersole, December 17, 1907, may be referred to as showing the prior art. Nathan's innersole contains a continuous transverse pocket beneath the metatarsal arch, wider at the outer edges than at the center, and removable wedge-shaped fitting members for the pockets. The plantiffs contend that the Nathan patent is to be disregarded, for the reason that it was not set up in the answer or by notice. But that is no objection to its use as evidence of the state of the art, and to aid in the construction of Block's claim. (Grier v. Wilt, C. D., 1887, 259; 38 O. G., 1365; 120 U. S., 412; 7 Sup. Ct., 718; Brown v. Piper, C. D., 1876, 464; 10 O. G., 417; 91 U. S., 37.)

(5, 6) It is contended, also, that the Nathan patent is without probative value, for the reason that it is but a paper patent, and that there is no evidence that the invention has ever been used. But that fact does not affect its value as evidence upon the question of infringement. (Universal Winding Co. v. Willimantic Co., C. C.; C. D., 1897, 625; 80 O. G., 1273; 82 Fed. Rep., 228, affirmed; 92 Fed. Rep., 391; 34 C. C. A., 415; Packard v. Lacing Stud Co., 70 Fed. Rep., 66; 16 C. C. A., 639; E. L. Watrous Mfg. Co. v. American Hardware Mfg. Co., C. C., 161 Fed. Rep., 362.) The Nathan patent presents all the features of claim 1 of the Block patent. It has a flexible insole located beneath the anterior metatarsal arch and means for adjusting the thickness of the insole at one or more points along the line of that arch.

(7-9) Block's second claim presents the combination of

a flexible insole beneath the anterior metatarsal arch, and a series of superimposed and overlapping members forming pockets mounted on the lower face of said insole, and insert members adapted to be removably seated in said pockets, substantially as described.

The defendant's device has a single inclosed transverse pocket beneath the metatarsal arch, and four slits therein to permit the insertion and adjustment of an insert member, so that the same may be placed at any desired point along the line of the arch. It contains no superimposed or overlapping members forming pockets. If the Block invention were of such a character as to be entitled to broad