Co. v. Locke, C. D., 1893, 639; 65 O. G., 1406; 150 U. S., 193; Abraham v. Ordway, 158 U. S., 416; Piatt v. Vattier, 9 Peters, 405; Woodmanse, etc., Co. v. William, 68 Fed. Rep., 489; Owen v. Ladd, 76 Fed. Rep., 992; Weyeth v. Stone, 1 Story, 273; Fosdick v. Lowell Machine Shop, 58 Fed. Rep., 817; Keller v. Stolzenbach, C. D., 1884, 174; 27 O. G., 209; 28 Fed. Rep., 81; Prince's Metallic Paint Co. v. Prince Mfg. Co., 57 Fed. Rep., 938; New York Grape Sugar Co. v. Buffalo Grape Sugar Co., C. D., 1885, 419; 32 O. G., 1356; 24 Fed. Rep., 604; McLaughlin v. Peoples Railway, C. D., 1884, 402; 29 O. G., 277; 21 Fed Rep., 574.) It follows that the bill must be dismissed.

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

NATIONAL FOLDING BOX AND PAPER COMPANY v. STECHER LITHO. GRAPHIC COMPANY et al.

Decided May 26, 1897.

80 O. G., 813.

MUNSON-MANUFACTURE OF PAPER BOXES-INVALID-MECHANICAL SKILL. Letters Patent No 259,416, granted June 13, 1882, to Edward B. Munson and Harvey S. Munson, for an improvement in the manufacture of paper boxes, construed and Held to be invalid, as the changes over the prior art were of that order of mechanical detail which is far removed from inventive skill.

STATEMENT OF THE CASE.

Mr. Walter D. Edmunds for the complainant.

Mr. Frederick F. Church for the defendants.

This appeal is from a decree of the Circuit Court for the Northern District of New York, which dismissed the appellant's bill in equity for an alleged infringement of Letters Patent No. 259,416, dated June 13, 1882, aud issued to Edward B. Munson and Harvey S. Munson, for an improvement in the manufacture of paper boxes.

SHIPMAN, J.:

The record in this case is a voluminous one, but the important points in issue are contained in a narrow compass. The flat sheets or "blauks" of paper or cardboard from which paper boxes are made are cut by dies upon the lines which form the boundary edges and lapping parts and are indented or creased by dies upon the other lines upon which the folding or bending of the sides of the box are to be made. The difficulty which was practically experienced was the tendency of the creas ing dies to be inaccurate and not to crease or even bend or to weaken the material upon the folding-lines.

The improvement is described in the specification as follows:

The lines of ultimate foldings are made by upsetting or embossing the material in such a manner as to avoid weakening the stock, while rendering it capable of

bonding

face either in defining the lines or in folding the parts, and, further, avoids any disfigurement of the face surface of the finished article.

The said apparatus consists of a single die composed of such lengths and shapes of cutting-rule 2 as are necessary to produce the form and direction of cuts desired, or to make the shape of blank required, with which are associated such lengths and shapes of embossing or blunt-edge rules 3 as are required to produce the necessary lines of ultimate foldings. These cutting-rules 2 may be made of a height slightly in excess of that of the embossing-rules, and this is preferable. These rules, of various shapes and lengths, are all set up in a form corresponding to that of the blank to be produced, with proper separating and supporting blocks 4, and the whole are locked in a frame or chase, 10, by wedges, as 11, in a manner similar to that in which printers' forms are made up. Such form or die is then fixed in a suitable press, as a printing-machine, and the platen, coöperating with the bed or diecarrier to make the impression, is furnished with a counter-die, Fig. 4, composed of a packing-sheet, 12, of paper or similar firm material that is fixed upon the face of the platen in such relation to the embossing-rules of the die as will provide recesses 5 for the same to register with. This counter-die may be made up directly upon the platen, but is preferably constructed upon a metal plate or sheet, 13, that is capable of introduction and removal from the platen, while only such narrow pieces of the packing-sheet 12 as are necessary to form the sides or borders of the recesses 5 need be provided, in which case the cutting-rules will cut directly upon the platen or plate 13. It is preferable that the whole surface of the platen shall be covered by the packing-sheet 12, in which the recesses 5 are formed, either by cutting out a suitable channel or indenting it by repeated contact with the die, so that while said recesses perform their functions the cutting-rules will also pass through the packing 12 and have direct contact with the platen or plate 13 in accomplishing the cutting operation.

By this combination of blunt-edged embossing-rules with a female counter-die cut or indented by repeated contact with the embossing die in a sheet of paper or similar firm material upon the face of a platen the patentees claimed that the tendency of the creasing dies to cause an inaccurate or injurious result at the point where the folding-lines were to be made was overcome. The specification said that—

in this manipulation the stock along the lines of folding will be upset or embossed by being stretched and forced into the recesses by the pressure of the embossingrules, thus defining lines upon which the blank may be readily bent to form a box without rupturing or disfiguring the outer or face surface of the material, which embossed lines are stretched and upset in the direction which the paper necessarily takes in being folded, and to exactly the extent required to fold the same at an angle, by reason of the fact that the body of the blank bears upon the face of the packing 12, which supports the material along the border edges of the recesses, while the portions of the blank or material that are embossed are forcibly stretched or pressed into the recesses 5 by the embossing-rules 3, while the cutting-rules cut the lines of severance by passing through the body of the blank.

The patent contained five claims, the first two of which were devoted to a supposed improvement, which consisted in cutting-rules and embossing rules which simultaneously cut and creased the blank; but it is admitted that this type of apparatus was old at the date of the Munson invention. The other three claims are as follows:

3. A counter-die for forming box blanks, consisting of a metal or other hard base and creasing or embossing channels the edges of which are raised above the plane of the hard base, substantially as described.

4. In the manufacture of paper-box blanks, a counter-die adapted to be removed from and adjusted upon the platen of a press, constructed of a sheet of metal or similar material affording a suitably-hard cutting base, to the face of which is secured a covering or packing of paper or equivalent material to receive the embossing-rules of the coacting die, substantially as described.

5. In the manufacture of box-blanks, the combination, with a die consisting essentially of cutting and creasing rules, of a counter-die having a hard cutting-base and embossing channels above said base, whereby the material is simultaneously cut upon some lines and upset or creased upon other lines, which latter are stretched or conformed so as to readily bend in the folding operation, all substantially as described

In the testimony and upon the trial in the Circuit Court great stress was laid by the complainant upon the alleged fact that the improve. ment was a marked advance upon the previous art, because it "stretched" and did not crush the fibers of the blank. It is therefore necessary to look at the state of the art of paper-box making immediately prior to the date of the invention and ascertain the precise extent of the change described in the patent.

The firm of Cornell & Shelton, consisting of Thomas L. Cornell and Edward De F. Shelton, were paper-box manufacturers at Birmingham, Conn., from 1875 to about 1885 or 1886, and then became incorporated under the name of the Cornell & Shelton Company, and continued in the same business until August, 1891. Mr. Cornell is now the vicepresident of the complainant. Charles E. Hauxhurst was in charge of Cornell & Shelton's box-making department from December, 1875, to 1884 and is now in the employment of the complainant. Each of these gentlemen was examined as a witness for the complainant and both were interested for the protection of its property. From 1877 to 1883 Cornell & Shelton made paper boxes by means of a die consisting of cutting-rules and creasing-rules which were associated in a printers' chase and locked therein by means of printers' blocks and furniture. The platen of the press had three, four, or five sheets of manila paper spread over its surface and fastened by the bails of the press. Upon this bed the box-blank was placed, and the creases were made by the pressure of the creasing die as it came down upon and indented the blanks. This packing was too soft. The pressure upon it made a rounding recess or caused it to spread out and break, and consequently the creasing would also be poor, or perhaps would be torn, and fifteen per cent of the manufactured boxes were imperfect. The operation of the packing is thus stated by Mr. Hauxhurst:

On account of the packing being soft lying loose, you might say, on the platenwhat I meant by that is, not being glued to the platen-it would back up, give way by the pressure upon the box-blanks against the platen, would not hold to form a crease sufficient to crease a blank enough to hold or form a box.

That this platen was

provided with a semisoft or compressible material, so that the rules will indent or press into such material

appears both from a rejected application of Mr. Shelton, assignor to Cornell & Shelton, for a patent dated May 20, 1875, which came into

the record upon the cross-examination of Mr. Cornell, and from Mr. Shelton's patent, No. 183,423, dated October 17, 1876, which was for forming the creased lines and printing on the same lines simultaneously. In the summer of 1883 these witnesses were shown by a former employee the Munson method of manufacture. The difference consisted in covering the platen with heavy paper, gluing it to the platen, and cutting a groove in the paper, so that a channel was made for the creasing-lines, and, when adopted, produced a more successful and less uncertain result. It substituted a firm piece of packing for the semisoft packing, cut a channel through it, and securely fastened it; but, inasmuch as the Munson patent makes its channel by cutting or by the old method of indentation, and fixes its packing-sheet upon the face of the platen in any way whatever, the only change from the Cornell & Shelton method which is specified in the Munson patent is that the packing-sheet is of paper or similar firm material. Was the change made by substituting a firm piece of paper for semisoft sheets of paper packing a patentable one? The trial judge was of opinion that the Shelton patent was an anticipation, or, if not, that it left nothing which the Munsons cou'd properly designate as an invention. We have compared the Shelton apparatus as described by witnesses who are upon the complainant's official staff, and cannot discover that any patentable improvement was described in the Munson patent over the preëxisting Shelton apparatus, and would be of the same opinion if the Munson patent had instructed the public that the sheet of paper was to be glued or riveted to the platen. The changes were of that order of mechanical detail which is far removed from inventive skill. After the decision of the Circuit Court had been announced, a new solicitor for the complainant was substituted, who thought that his client was entitled to the benefit of a disclaimer, and applied to the Circuit Court for a rehearing after it should have been filed. This motion was denied. The proposed disclaimer, which has not been filed, is contained in the record and disclaims

the first and second claims, and, in the remaining three claims, any counter-dies in which there are not channels recessed out of "firm" material, so as to "support the blank along their border edges," (thus assisting stretching,) whose channels are not at least three in number and rectangular, or angular, to each or some of each other, (thus insuring pinning down aud holding flat of the blank,) and whose hard base does not operate both as a stopping and cutting base for the cutting-rules (thus preventing crushing on fold-line.)

The proposed disclaimer is not properly in the case, for, as the allowance of the motion for a rehearing on condition that the disclaimer should be filed was a matter of discretion, its rejection is not a subject of appeal. (Roemer v. Bernheim, 132 U. S., 103.) An examination of the proposed disclaimer will, we think, disclose that a strong argument could be made in favor of the proposition that, with the exception of the requirement that the channel should be recessed out of “firm” paper or other material, the limitations or the requirements

(Hailes v.

of the disclaimer point to an invention which would require an amended specification or a supplemental description. Albany Stove Co., C. D., 1883, 338; 24 O. G., 391; 123 U. S., 582.) The decree of the Circuit Court is affirmed, with costs.

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

THOMSON-HOUSTON ELECTRIC COMPANY v. HOOSICK RAILWAY COMPANY.

Decided July 21, 1897.

80 O. G., 967.

1. VAN DEPOELE-TRAVELING Contact FOR ELECTRIC RAILWAYS-VOID-CLAIMED IN PRIOR PATENT TO SAME INVENTOR.

Claims 6, 7, 8, 12, and 16 of Letters Patent No. 495,443, granted April 11, 1893, to the administrators of Charles J. Van Depoele, for a traveling contact for electric railways, construed and Held to be void because the invention covered thereby had been previously claimed by the same inventor in Letters Patent No. 424,695, dated April 1, 1890.

2. TWO PATENTS FOR SAME INVENTION-SCOPE OF CLAIMS-SECOND PATENT VOID. Where two patents are intended to and do secure to the patentee the same general inventions, differing only in the scope of the claims, the second patent is inseparably involved in the matter embraced in the first patent, and is void. (Citing Miller v. Mfg. Co., C. D., 1894, 147; 66 O. G., 845; 151 U. S., 198).

Mr. Frederic H. Betts for the Thomson-Houston Electric Company. Mr. Charles E. Mitchell for the Hoosick Railway Company.

WALLACE, J.:

This is an appeal from an order granting a preliminary injunction restraining the defendant from making, using, or vending the apparatus specified in claims 6, 7, 8, 12, and 16 of Letters Patent No. 495,443, granted April 11, 1893, to the administrators of Charles J. Van Depoele, assignors to the complainant, for a "traveling contact for electric railways." The application for the injunction was resisted upon the ground that the patent as to these claims was void because the inventions covered thereby had been previously patented to the same inventor by Letters Patent No. 424,695, granted April 1, 1890, for a "suspended switch and traveling contact for electric railways." The validity of the claims, notwithstanding a similar defense, had been adjudicated at final hearing in the case of this complainant against the Winchester Avenue Railway Company by the Circuit Court for the District of Connecticut. (C. D., 1895, 785; 73 O. G., 2155; 71 Fed. Rep., 192.) In granting the present injunction the court below followed that adjudication without attempting an independent consideration of the validity of the defense.

The preliminary question arises whether upon this appeal the court should undertake to examine and in a sense to review collaterally the