somewhat doubtful and certainly unpractical disclosures, we agree with the court below that Spengler's idea of a—

stopper clasping the neck of the bottle by buckling, and to be extracted by buckling in the reverse direction, was a new invention, and not a mere improvement upon Clay.

The decrees appealed from are affirmed, with one bill of costs.

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

RUUD MFG. Co. v. LONG-LANDRETH-SCHNEIDER Co. et al.

Decided April 10, 1918.

255 O. G., 829; 250 Fed. Rep., 860.

1. PATENTS-VALIDITY-INVENTION.

The Ruud patent, No. 853,738, for a storage hot-water heater system, which provided a new method of utilizing the action of the thermostat to turn on and off the supply of fuel, Held to show invention and not to have been anticipated.

Where the inventor's disclosure was fully contained in his original specification, his claims thereunder having been rejected, a substituted claim should not be read as purporting to cover withdrawn suggestions of variant structures, so as to invalidate the same, it appearing that the suggestions were withdrawn where the rejection of claims that were appropriate was acquiesced in.

APPEAL from the District Court of the United States for the Southern District of New York.

Suit by the Ruud Manufacturing Company against the LongLandreth-Schneider Company and others. From a decree for complainant, defendants appeal. Affirmed.

STATEMENT OF THE CASE.

A decree was entered in the district court, finding valid and infringed claim 1 of Patent 853,738 to plaintiff's assignor, Ruud. That claim is as follows:

In a storage water heater system, the combination of a water heater, a reservoir, connections between the same, a valve to control the supply of fuel to said heater, a thermostat in said reservoir, a lost motion connection between said thermostat and valve, and means to cause said valve to remain either entirely closed or completely open.

Mr. Curt B. Mueller and Mr. Dyer Smith for the appellants. Messrs. Mauro, Cameron, Lewis & Massie (Mr. S. T. Cameron, Mr. Wm. B. Kerkam, and Mr. Ralph Lane Scott of counsel) for appellee.

Before WARD, ROGERS, and HOUGH, Circuit Judges.

HOUGH, Cir. J.:

Although at trial there was contest on the question of infringement, even though validity were established, and the findings on that head are assigned for error, defendant's argument in this court has been confined to validity, and that alone shall we consider, merely noting that we regard the matter of infringement as quite clear and properly treated below.

The economic advantage sought by the patent is to use no more gas in a storage water-heater than enough to get the water to a predetermined temperature, then reduce the heating-flame to a pilot-light, and when the temperature falls to the lower predetermined figure turn up the flame again. The general method of doing this is by thermostatic regulation, which in some form is older than the patent. The new result said to be attained in the immediate reduction, and immediate restoration of the heating-flame, and the element in the claim constituting the means of accomplishing this result is the "lost motion connection between the thermostat and valve" controlling the fuel-gas supply. The apparatus to which Ruud applies these words needs no other description than the subjoined patent drawing.

FIG. 2.

. It is contended that the phrase "lost motion " is confusing, and without exact meaning. We think not; the words are defined in lexicons of general acceptance as

any difference of motion between the parts of a machine that communicate motion from one to another

a meaning harmonious with the finding below that a lost-motion connection is shown between gas-valve and thermostat, because the thermostatic action is not transmitted to the valve for a considerable period; i. e., until the spring (18) is passed over its fulcrum or center under tension, whereupon it instantly snaps the hinged arm (17) to one end or the other of the latter's traverse (20 and 21) and by so doing as instantly opens or closes the gas-port. It is obvious that the disclosed device uses no power other than or extraneous to that of the

thermostat. Mechanically we agree with appellants that this part of the apparatus does not differ in principle from the disclosure of Patent 542,708 to Johnson for a "mechanical movement," and indeed in some form the "snap action" resulting from "upsetting" a spring under tension is well known.

(1) Objection to validity may be stated under several heads: (1) The prior art tells so much concerning what Ruud claims that invention is as matter of fact absent. (2) A water-heating apparatus installed in the house of one Barton five years before Ruud filed application is a complete anticipation, (3) The course of the application through the Patent Office proves that the claim in suit was intended to cover just what was done in the Barton house, and the claim is therefore void.

1

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1. By pointing out that storage water-heaters with thermostatic regulation of heat, and devices for translating into quick or snap action slow initiating movements,2 are old, and then combining them on paper, appellants have ingeniously designed a machine which looks as if it would operate as does Ruud's.

Attempted demonstrations of this kind are not uncommon and they always raise the question: If the patentee, whose achievement looks so simple, had not done the thing first, would the alleged infringer be able even to do it on paper? Invention is neither disclosed nor disproved by such methods; it is a question of fact, to be settled by trying to find out how much thought and skill was required to "do the trick" at the time it was done. We find the direct application of the thermostat as a slow initiating force to a snap action instantaneously and directly operating on the fuel-valve an extremely happy thought, simply solving for many purposes a very real problem. The solution of an actual difficulty, simply, cheaply, practically, and along sound mechanical lines, is not a definition of invention, but is a description of many excellent ones.

2. The Barton installation seems to us perfectly to justify Ruud's patent rather than show its invalidity. Companies affiliated with the same Johnson whose mechanical-movement patent has been noted put in the heater, which utilized for gas regulation a compressed-air system which the Johnson concern quite widely used for heat regulation. In this instance a thermostat in the water-storage tank gave an impulse to the compressed air (so to speak), which in turn actuated the gas-valve, and we infer that such original impulse consisted in some use of Johnson's mechanical movement; i e., it was a snap action."

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But there was no direct action by thermostat on valve, nor was there any "lost motion" at all, as Ruud applies it. The Barton

1 Page, 521,916; Gordon, 545,916.

2 Fogarty, 115,593 and 115,597; Maxim, 81,922 and 120,302; Johnson, 542,708,

thermostat switched on a wholly extraneous power, from a different source and requiring its own system of generation, i. e., compressed air, and that turned the gas on or off, up or down. If the compressed air for any reason was out of order, the mechanical connection (if there was one) between thermostat and gas-port might be intact; but it was useless. There was no anticipation by that heating apparatus. (2) 3. Ruud's disclosure was fully contained in his original specification. As the claims first submitted showed, he conceived himself entitled to claim broadly any means, if actuated by the thermostat, of fully opening and completely closing the controlling gas-valve. He also suggested, at the end of the specification as it now stands, that his mechanism, instead of acting directly on the gas-valve, might set in motion water under pressure, or electromotive force, wherewith to move the gas-valve, with some advantageous results. All the claims submitted having been rejected on certain prior patents, and properly we think, and the applicant being called on to furnish drawings of his alternatives, he withdrew the suggestions aforesaid and substituted (among others) the claim in suit, which restricts invention to a combination containing the lost-motion element.

It is now said that the claim must be read as asserting itself to cover the withdrawn suggestions of variant structures, which suggestions would clearly have covered the Barton installation; wherefore the claim is void, and Engel v. Sinclair (C. D., 1910, 310; 152 O. G., 489; 34 App. D. C., 212) is relied on. No doctrine is there announced, other than that an amended claim cannot be given a construction which makes it the equivalent of a rejected one. Such is not the case here. The alternative suggestions in the original specification, which would have covered the Barton use, were consonant with the claims first propounded; they could not be covered by the claim in suit. It may be that the matter was withdrawn because Ruud did not care enough for it to furnish drawings; but the fact remains that it was withdrawn when the rejection of claims that were appropriate thereto was acquiesced in. We see nothing in this file-wrapper inconsistent with a proper trimming down of the specification to suit a muchrestricted claim, which these defendants infringe. Decree affirmed, with costs.

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

M. WERK Co. v. GROSBERG et al.

Decided March 15, 1918.

255 O. G., 839; 250 Fed. Rep., 968.

1. TRADE-MARKS AND TRADE-NAMES-INFRINGEMENT-WORDS SUBJECT TO APPRO

PRIATION.

The registration of a trade-mark for unwrapped bars of soap in which the word "Tag" is the principal feature, "to be displayed by stamping

it into or on the goods or by otherwise affixing directly to the goods," does not carry with it the exclusive right to impress a metal tag of any description into a bar of soap, the use of the word "Tag" in connection with a physical tag, which has been long in use, being descriptive and not subject to exclusive appropriation as a trade-mark.

2. SAME-UNFAIR COMPETITION.

The impressing of an oblong rectangular metal tag into the face of a bar of soap near the top center Held not unfair competition with another maker who had previously stamped a small circular tag in the lower righthand corner of its bars, the lettering on both tags and bars being entirely different and distinctive and there being no competent evidence that confusion had in fact arisen.

3. SAME-SAME.

Where a manufacturer has done its legal duty in distinguishing its product from that of a competitor, neither it nor its distributees are responsible for the fact that tricky retailers, not in privity with them, have substituted one product for the other.

APPEAL from the District Court of the United States for the Southern Division of the Eastern District of Michigan; Arthur J. Tuttle, judge.

Suit in equity by the M. Werk Company against Charles Grosberg and John A. Reuter, doing business as Grosberg & Reuter. From an order denying a preliminary injunction, complainant appeals. Affirmed.

Messrs. Hosea & Knight for the appellant.

Messrs. Wilkinson, Routier & Hinkley for the appellees.

Before KNAPPEN and DENISON, Circuit Judges, and KILLITS, District Judge.

KILLITS, Dis. J.:

The only question to be determined here is whether, on the facts about to be discussed, the court below improperly exercised the discretion vested in it to withhold a temporary injunction. Unless an abuse of discretion is found, the appeal herein should be dismissed. (Louisville & N. R. Co. v. Western Union Telegraph Co., 207 Fed. Rep., 1; 124 C. C. A., 573, and cases cited.)

(1) The appellant, whom we will hereafter designate as complainant, for a number of years has manufactured laundry soap, one brand of which it prepared for sale unwrapped. Its factory is located in Cincinnati, in which place for many years the Globe Soap Company has manufactured soap of similar character. The testimony shows that for six years at least prior to the beginning of this action the Globe Soap Company manufactured and put on sale unwrapped its product under all the circumstances which in this action the complainant claims to establish infringement and unfair competition. The action, however, was brought by complainant in the District Court for the Eastern District of Michigan against the firm of Gros