with the second claim of Eickemeyer's, and is therefore void, and no injunction should be decreed, because Eickemeyer's patent expired two years ago. There can be no doubt that the machines used by the defendants do infringe the second claim of the Eickemeyer patent. They have a supporting horn surmounted by a short rest, situated sufficiently far from the body of the machine to give room for the brim, and on which the hat body, in all its parts successively, is supported against the cutting cylinder. This is as clear an infringement as could well be described. The question is, did Brown use any such device for pouncing hats prior to the 15th day of July, 1869? the date of the jurat affixed to Eickemeyer's application for a patent. The application was filed in the patent-office on the 17th of July, and contained the same description of the invention and second claim as they appear in the patent itself. We do not hesitate to say that there is no proof of any such use. The most that can be said is that Brown, according to his testimony, sometimes stretched out a hat body over the long rest of the Nougaret machine, which he used, so as to pounce nearly the whole surface, tip and all. But suppose he did this; it was not the process of pouncing the whole hat body in one operation that was patented by Eickemeyer, but the machine for doing it. Brown never made any such machine. And if he succeeded, as he says, in pouncing hat bodies in one operation on the Nougaret machine, he must have stretched them much out of shape; and, as Judge COLT says, such was not the ordinary use of the machine.

On the Taylor patent several questions arise: First. Was the fifth claim void by reason of being anticipated by the second claim of the Eickemeyer patent? If not, was it void for not being patentable? If not, was it anticipated by Brown? If not, has it been infringed by the defendants? (1) Was it anticipated by the second claim of the Eickemeyer patent? In order to answer this question satisfactorily it will be necessary to examine carefully the purport of the Taylor patent, and what invention, in view of the prior Eickemeyer patent, it was intended to secure to the patentee. The object of the invention is stated as follows:

"The object of my invention is to dispense with feed-rolls and hat-blocks in machines for pouncing hats, to make the cutting or pouncing cylinder selffeeding, to enable the operator to control the speed and direction in which the hats to be pounced pass over the cutting or pouncing surface by the hand with the assistance of a guard and presser pin, and to cause the material to be pounced to move in the same direction as the surface of the self-feeding cutter in contact with it, thereby avoiding the injurious strain to which it is subjected in ordinary hat-pouncing machines with feed-rolls or their equivalents."

The specification then goes on to describe the machine in detail by the aid of the drawings attached to the patent; from which it appears that the short rest of Eickemeyer is used, and the hat body is allowed to be drawn through between the rest and the pouncing cylinder by the force of the latter, being held back and guided by the hand, the hand being protected by a guard, and the guard being furnished with a pin attached to a spring, which pin may be pressed down upon the hat to hold or rev.36F.no.5-21

tard it at the point of pressure, and cause it to move in a circle around the pin as a center, when required for pouncing different parts of the hat body. All these parts are secured by separate claims. The fifth claim is as follows: I claim:

"(5) The combination of the support for the hat and the self-feeding pouncing cylinder, whereby the hat is drawn over the support in the direction of the motion of the pouncing cylinder."

It is manifest that this claim is for the support and the self-feeding pouncing cylinder, independent of the guard and presser pin. It is equally manifest, in view of the Eickemeyer patent, which is not to be repeated if a different construction is admissible, that the claim is not for the combination of a short support and a cutting cylinder generally, (which would clearly be a repetition of Eickemeyer's second claim,) but is for the combination of the support and a self-feeding pouncing cylinder; that is, a machine without feed-rollers, or any other feeding device except the pouncing cylinder itself. Is not this, after all, Eickemeyer's machine without the feed-rollers; and is it not precisely what is contained in Eickemeyer's second claim, except that the latter covers both kinds-self-feeding and non-self-feeding pouncing cylinders? It is not an improvement on Eickemeyer's invention; it is the same thing. Eickemeyer's second claim is for the support and the pouncing cylinder independent of feed-rollers. This was so decided in Thom's Case, before cited. That is, it was for the combination of the support and the pouncing cylinder, whether you used feed-rollers or not. If you did not use them, your machine would be a self-feeding machine, of necessity; for the pouncing cylinder, if not interfered with, will always carry the hat body with it. The very object of the feed-rollers was to counteract this tendency, and thus secure a more effective operation of the cutting or pouncing instrument. If some resistance were not interposed to the force of the revolving cylinder, it would carry the hat body with itself so rapidly that the rough surface would not be cut away, or would be only partially cut away. Hence, in the absence of feed-rollers, the hat body must necessarily be held back by hand. It was partially controlled by the hand even with the feedrollers. Without them, it must be wholly so controlled. So that Taylor's supposed invention, as embodied in his fifth claim, is but one of the necessary forms of Eickemeyer's, as embodied in his second claim; not only one of the necessary forms, but having the same mode of operation involved in the latter. The counsel for the complainant endeavor to meet this view by contending that Taylor's fifth claim is for a process. But there is no pretense of that kind in the patent itself, nor in the language of the claim. The claim is for a machine having a certain necessary mode of operation. The result is that the complainant is entitled to decrees for profits and damages for the infringement by the defendants of the Eickemeyer patent while it continued in force, and the bills must be dismissed so far as regards the Taylor patent, and the injunctions must be dissolved. We think that each party should pay their own costs.

OTLEY V. WATKINS et al.

(Circuit Court, N. D. Illinois. October 8, 1888.;

PATENTS FOR INVENTIONS-COMPOSITION PATENTS-INFRINGEMENT.

A patent for a composition of matter is not infringed by another composition into which one of the ingredients, named without restriction in complainant's claim, does not enter, though in the specifications the use of such ingredient is stated to be for a particular case only.

In Equity. On motion for preliminary injunction.
D. T. Duncombe, for plaintiff.

West & Bond, for defendants.

BLODGETT, J., (orally.) This case is now before the court upon a motion on the part of the complainant for a preliminary injunction, and also on motion on the part of the defendant to set aside a restraining order entered in the case on the 19th of July last. The defendants are charged by the bill with the infringement of a patent granted to complainant Otley for a cement for stopping steam and water joints. Upon presentation of the bill, the court granted an ex parte order restraining the defendants from the use of the device covered by the patent. The patent is for a composition of matter, and the specifications set out this composition in the following words:

"The ingredients of which my cement is composed and the proportions of each are: Mineral oil, (also commonly known as Ohio mud,') 1 part; yellow ocher, 1 part; Paris white, 1 part; plumbago, 1 part; brick dust, 1 part; litharge, 1 parts. My method of preparing this cement is to unite the hereinbefore mentioned substances in powder form, and in the proportions set forth, in any convenient vessel, and stir the same until thoroughly mixed, and then add a sufficient quantity of boiled linseed oil to render the mass of the consistency of stiff paste. It may then be put up in cans or other suitable receptacles for use. When it is desirable to use the cement upon rough or uneven surfaces, I work into the mass, before applying, a small quantity of fine cut hemp, the amount of which must be left to the judgment of the person using it. This serves to make the particles adhere together more strongly, and also tends to make the cement adhere more firmly to the part to which it may be applied."

And the claim of the patent is:

"The cement for steam joints herein described, consisting of mineral paint, yellow ocher, Paris white, plumbago, brick dust, litharge, combined with fine cut hemp and boiled linseed oil, as herein set forth and described."

The affidavits filed on behalf of the defendants show that the defendants make a steam-fitting cement, in which they use several other ingredients, or different ingredients, from those used by the complainant, or called for by the patent, and the contention on the part of the complainant is that those other ingredients, such as red lead, barytes, etc., which are used in the defendants' composition, are the equivalents of the elements which are used by the complainant. But the defendants, also, by their affidavits, show that they do not use, and never have used, cut

hemp in any form. That being the case, I do not see how the defendants can be charged or held liable for the infringement of this patent, because, while the patentee, in his specifications, states that fine cut hemp is only occasionally used upon uneven joints or surfaces, yet he makes his claim for the combination of the various ingredients named with fine cut hemp and boiled linseed oil, so that it appears to me the complainant has limited himself to a combination in which cut hemp must be used. The law upon the subject, I think, is very well stated by Mr. Walker, in his work on patents, at section 349:

"Omission of one ingredient of a combination covered by any claim of a patent averts any charge of infringement based on that claim. A combination is an entirety. If one of its elements is omitted, the thing claimed disappears. Every part of the combination claimed is conclusively presumed to be material to the combination, and no evidence to the contrary is admissible in any case of alleged infringement. The patentee makes all the parts of a combination material when he claims them in combination, and not separately."

Now, it is not for the court to inquire for the purposes of this case why this complainant saw fit to make cut hemp an essential ingredient of his patent. His cement may be just as useful, and for certain purposes may be even more so, with the cut hemp omitted, but he has taken his patent for the combination of these chemical ingredients with cut hemp, and hence must stand or fall by that combination. Why he so took it, whether because the patent-office insisted upon his taking his claim in that form, or otherwise, the court is not at present advised. It is enough to say he has so limited himself. The former restraining order is therefore set aside, and the motion for an injunction pendente lite is overruled.

COATS et al. v. MERRICK THREAD Co. et al.

Circuit Court, S. D. New York. September 28, 1888.)

TRADE-MARKS-PATENTED DESIGN-EXPIRATION OF PATENT.

Plaintiffs sell their six-cord sewing thread on spools of light-colored wood, holding 200 yards each, each spool head bearing a smaller circular label of a light gold color with a dark center and margin. On the gold ground are the firm name, and the words "Best Six Cord," and on the center are the number of the thread and the figures and letters “200 yds." in light gold color. Since 1873 they have embossed the number on the wood in the space around the label, under a patent granted in 1870 for seven years, and acquired and exclusively used by them since 1873. Defendants have sold their six-cord thread on spools holding 200 yards, and bearing substantially the same label, with their names substituted; the figures and letters "200 yds. " omitted; a star in the center, and the number at one side, and with similar embossed numbers. Others had used black and gilt labels nearly or quite as early as plaintiffs; and labels on spools of six-cord thread holding 200 yards, with the makers' names in place of plaintiffs' names, were used from 1854 to 1874; and from 1868 to 1878, labels with a like substitution of names, and without the words and figures "Best Six Cord" and "200 yds." were used on spools of other than six-cord thread. Held, that the defendants' label does not amount to a repre

sentation that the thread is that of plaintiffs, and that, after the expiration of the patent, the use of the embossed numbers became common to all, and plaintiffs were not entitled to relief from any misrepresentation as to the origin of the thread incidentally resulting from plaintiffs' prior monopoly.

In Equity. On final hearing.

Frederic H. Betts and Benjamin F. Thurston, for plaintiffs.

W. C. Witter, for defendants.

WHEELER, J. After issue joined and proofs taken, the plaintiffs moved to further amend their bill. The motion was denied, with leave to renew it at the hearing. It has been renewed, and is now granted, to make the case symmetrical. The plaintiffs' firm have for a very long time made six-cord sewing thread, and sold it on spools of light-colored wood, holding 200 yards each; and since about 1842 have used on each spool-head a circular label, smaller than the head, of light gold color around a dark center, having a dark line around near the margin, and the firm name and the words "Best Six Cord" in a circle inside the line on the gold ground, and the number of the thread with the figures and letters "200 yds." in light gold color on the dark ground of the center, leaving the wood of the spool bare around the label. On April 5, 1870, design letters patent No. 3,939 were granted to Hezekiah Conant for embossing the number of the thread in figures on the wood of spools in spaces around the label, to run seven years, and were acquired by the plaintiffs. Since about 1873 they have used these embossed numbers on their spool-heads in connection with the label. The defendants make six-cord sewing thread, and sell it on spools holding 200 yards each, and since 1878 have used substantially such a label with the name of the Merrick Thread Company substituted for that of the plaintiffs, the figures and letters "200 yds." omitted, a star in place of the number in the center, and the number at one side, in connection with similar embossed numbers on the margin of the spool-head. The bill is brought, as it stands amended, for relief against such use of these labels and embossed numbers.

The plaintiffs have no monopoly of six-cord thread, or of the sale of it in lengths of 200 yards on spools. All others have a right to manufacture it, put it up in that form, describe it, and dispose of it. They have an exclusive right to the reputation acquired by their thread, and to have the thread pass current in trade as theirs, and no one has the right to give currency to other thread than theirs as theirs. McLean v. Fleming, 96 U. S. 245; Trade-Mark Cases, 100 U. S. 82. The words "Best Six Cord" are merely descriptive of the quality, and the figures merely denote the size of the thread. These are all the statements that are common to both labels, and these could not be appropriated by the plaintiffs to the exclusion of others for these purposes. Manufacturing Co. v. Trainer, 101 U. S. 51. When the patent expired the use of the embossed numbers for all lawful purposes became free to all. Grant v. Raymond, 6 Pet. 218. These principles are not much controverted, but the plaintiffs insist that their long use of these words and figures, dis