First. Of the mechanical patent infringement is alleged of the second, third, and fifth claims, which read as follows:

2. The combination, in a stove, of a vertical section, as A B, inclosing the fire-pot, an inturned section, C, arranged over the fire-pot, a reflector, E, arranged above said inturned section, and mica interposed between the fire and reflector, substantially as described.

3. The combination, in a stove, of a vertical section, an inturned section, C, having mica-filled openings, an overhanging section, D, and a reflector set in front of said overhanging section, and with a space between the two, substantially as described. 5. The combination, in a stove, of a vertical section, an inturned section, C, having openings filled with mica, and multiple reflectors, as E' E', arranged to diffuse and spread the rays of light and heat in various directions, substantially as described.

Second. The design patent embodies sustantially the same mechanical combinations covered by the foregoing patent, and infringement is alleged of the three following claims:

2. In a design for a stove, an overhanging top, 3, having an inturned concave recess in front above the cover, as shown.

3. In a design for a stove, the substantially cylindrical fire-pot section, comprising the three mica sections, the lower one flaring, the upper one of sector shape, and the intermediate one substantially straight, as shown.

4. In a design for a stove, the rail ornamented at its ends with rosettes arranged at an oblique angle to the length of the rail, as shown.

The defenses to both patents allege non-infringement and invalidity. Numerous prior patents are introduced to show the prior state of the art and want of novelty, and it is especially urged that the second and fifth claims of the mechanical patent are mere aggregations of old devices and that the third claim is not infringed.

SEAMAN, J., (after stating the facts as above:)

In the mechanical patent, No. 368,770, invention is asserted generally upon the following features: In drawing inwardly the wall of the stove over the fire-pot, putting mica in the inturned wall to permit the passage of heat and light rays, and placing a reflector over the fire in position to catch and reflect the light-rays. These features are all

clearly set forth in the Letters Patent, especially in the second and fifth claims. The defendant contends that each of the elements entering into these claims is an old and well-known feature of stove struc ture, and the evidence of prior patents introduced on its behalf supports that contention. An inturned section above the fire-pot and mica-filled openings appear in several prior patents, notably in the drawings which accompany the following: No. 107,597, for a magazinestove, issued to A. C. Corse September 20, 1870; No. 129,534, to A. C. Corse, July 16, 1872, for a base-burning stove; No. 8,567, to Philip Rollhaus, Jr., August 6, 1875, for a design for a fireplace-heater. Reflectors in various forms are a common structure and appear in several exhibit patents, although none is shown of strictly analogous use. The expert on behalf of the defendant places much stress on the above mentioned Corse patents as anticipatory of all the essential features of the patent in question; but they clearly have no reflector and, in my opinion, do not suggest this combination. The main defense, however, against the second and fifth claims is that they do not present a patentable combination, but are mere aggregations of old ele ments of stove structure. It is clear that if

the result in this case is a mere aggregation of the several functions of the different elements of the combination, each performing its function in the old way— there is nothing upon which to base a claim to invention. (Richards v. Elevator Co., on rehearing, C. D., 1895, 728; 73 O. G., 1710; 159 U. S., 477, 487; 16 Sup. Ct., 53.) Whether these claims fall within such definition was the inquiry which seemed to me upon the argument to present the main, if not the only, difficulty in the case. In Webster Loom Co. v. Higgins (C. D., 1882, 285; 21 O. G., 2031; 105 U. S., 580, 591) Mr. Justice Bradley, speaking for the Court, says:

It may be laid down as a general rule, though perhaps not an invariable one, that if a new combination and arrangement of known elements produce a new and beneficial result never attained before, it is evidence of invention.

The testimony shows that the result obtained by this combination was beneficial in that it gave an illuminating effect which made the stoves attractive and gave them great popularity in the trade, and it is my opinion that this effect is new as the joint product of the inturned mica-filled section and the reflector. As stated by the complainant's expert:

It is necessary in a coal-burning stove of this kind, particularly when hard coal is used, that the space above the fire-pot be inclosed, so that the chimney will draw the air through the fuel instead of over it. It is therefore necessary that the inturned section, if it permits light and heat rays to pass through it, must have mica placed in the openings of this inturned section, in order that it may be closed, and at the same time transparent to light and heat rays. The inturned section, having mica in it, therefore coöperates with the section inclosing the fire-pot and with the reflector above the inturned section, because it permits the heat and light rays to pass from the fire-pot to the reflector through the inturned section, and still maintains a closed space above the fire-pot. The mica interposed between the fire-pot and reflector serves also to prevent the smoke and dust from the fire-pot coming in contact with

the reflector and obscuring its bright surface, so that the inturned section filled with mica coöperates with the fire-pot and the reflector to prevent the former from destroying the latter.

Although the mica and the reflector each performs its old function, it is not in the old way, for they are so positioned that they coöperate and obtain a result which is joint and not individual. This distinction is the same noted by Judge Acheson in Stutz v. Armstrong, (C. D., 1884, 297; 28 O. G., 367; 20 Fed. Rep., 843, 847,) that—

it is sufficient if all the devices coöperate with respect to the work to be done, and in furtherance thereof, although each device may perform its own particular function only.

In this view the device meets the requirements for a patentable combination, namely—

while every element remains a unit, retaining its own individuality and identity as a complete and operative means, the combination embodies an entirely new idea of means, and thus becomes another unit, whose essential attributes depend on the coöperative union of the elements of which it is composed. (1 Rob. on Pats. sec. 155.)

The testimony regarding the popularity of the structure thus obtained is well worthy of consideration to overcome any doubt which may arise because the device comes close to the line of these definitions, and I do not think this testimony should be excluded as not strictly in rebuttal under the objection interposed by the defendant. The infringement of the second and fifth claims appears to be clearly established, and the complainant is entitled to an injunction thereupon.

The other allegations of infringement are unsupported by the evidence. The third claim of the mechanical patent makes the provision of an air-space between the refiector and the overhanging section D the distinguishing element, and this is not employed in the defendant's stove nor is there any equivalent for it. This omission avoids infringement. The defendant's stove does not conflict with the design patent, if that is assumed to be valid. In its appearance, either generally or in detail, it does not so far resemble the complainant's design as to deceive purchasers or dealers, but, on the contrary, seems to be well distinguished in form and ornamentation.

No proof is furnished under section 4900, Revised Statutes, and there can be no decree for damages or profits as the case now stands. Decree may be prepared for entry in accordance with the views above indicated.

ON rehearing, May 19, 1897.

Messrs. Banning & Banning for the complainant.

Mr. Nelson Davenport for the defendant.

SEAMAN, J.:

Rehearing was granted in this case for the production of further and newly-discovered evidence upon the issue of anticipation. This evidence on behalf of the defendant presents two devices, first a fireplace

heater called the "New Golden Sun," purporting to have been manufactured by James Spear at Philadelphia, put upon the market about 1883, and exhibited in a catalogue dated in 1884; second, a stove called the "Standard Base Burner," manufactured by the Magee Furnace Company, of Boston, and claimed to have been placed upon the market in 1876.

The Spear device is the only one which seems to me to be entitled to serious consideration. The testimony relating to the Magee stove shows an original construction in which the upper mica section was slightly curved or inturned, and above this a section or ring which would be capable of use as a reflector to some extent if properly plated or polished for that object. No exhibit stove is produced by the defendant of this form; but it is asserted by some of the witnesses that this ring was polished and served as a reflector, and one witness states that a stove which was made for exhibition at the Philadelphia Centennial had the ring-section nickel plated. This construction was abandoned after the first season, and the testimony is too indefinite to establish actual provision for use of the feature of reflection which is dominant in the complainant's device. If the feature was present in any degree, it was as a mere incident and not so far developed or recognized as to anticipate the patent in suit, and, on the other hand, the complainant produced a stove of that make, which was identified as one of those named by the defendant's witness as made and sold by the Magee Company and of the pattern referred to, in which the under side of the ring was unpolished, and it was conceded that it could not serve as a reflector. The Spear fireplace device, called the "New Golden Sun," has an arched border or frame, nickel-plated, which serves to reflect the rays of light and heat to a certain extent at the sides, although not at the top. The only witness upon this point is the designer and manufacturer, James Spear, who gives an enthusiastic description of the "dazzling glow" which was produced. A cut of it is shown in bis catalogue of 1884, and the feature of reflection is referred to in the context, but there is no provision of an inturned mica section and reflector serving in any man. ner to reflect the rays of light and heat from the upper surface of the fire-pot, which is the distinguishing feature of the complainant's device and gives it the large measure of success shown in this record. While there is incidental use of the feature of reflection, there was, in my opinion, no such recognition of its benefits as should appear to constitute anticipation in view of the success obtained by the complainant's device. The question of patentable invention is close, but the new testimony is not sufficient, in my view of the case as a whole, to disturb the opinion heretofore reached.

Decree will be entered in favor of the complainant, according to the former opinion.

[U. S. Circuit Court-District of New Jersey.]

PAUL BOYTON COMPANY v. MORRIS CHUTE COMPANY et al.

Decided July 26, 1897.

80 O. G., 1894.

1. NEWBURG-Coaster-ANTICIPATED-INVALID.

Letters Patent No. 411,255, granted September 17, 1889, to John P. Newburg, for improvements in coasters or inclined pleasure-railways consisting of an inclined plane erected adjacent to and terminating in a body of water, and a boat-shaped car or toboggan having runners and guides and spray-deflectors, which will not only slide down the inclined plane, but float and be propelled by momentum upon the water at the foot of the inclined plane, Held to be anticipated and invalid.

2. PATENTABILITY-COMBINATION OF OLD ELEMENTS—AGGREGATION.

A combination of old elements in order to be patentable all the parts must so act that each qualifies every other. It is not enough that these independent parts are conveniently associated in one machine if each performs the same function it did before they were united. They must be so connected that the new result is due to their cooperative action. (Bunching Machine Co. v. Williams, 44 Fed. Rep., 191, and cases there cited; Green v. American Soda Fountain Company, ante, 304; 78 O. G., 1105; 78 Fed. Rep., 119.)

Messrs. Dyrenforth & Dyrenforth for the complainant.

Messrs. Strawbridge & Taylor for the defendants.

KIRKPATRICK, J.:

This suit was brought for the infringement of the complainant's two patents, No. 411,255, dated September 17, 1889, and No. 419,860, dated January 21, 1890. During the progress of the suit the charge of infringement as to Patent No. 419,860 was withdrawn, so that the only matters for the consideration of the court are those connected with Patent No. 411,255.

The invention sought to be protected by this patent, which was taken out by John P. Newburg and is held by the complainant by assignment, is stated in the specification to relate to improvements in coasters or inclined pleasure-railways, and what is claimed to be new is set out as follows:

1. In an inclined pleasure-railway, in combination with an inclined way and track which is located or erected near a body of water, a boat-shaped car or toboggan adapted, when it reaches the foot of the incline, to enter and float forwardly on the water, substantially as described.

2. In combination with an inclined railway which is located with its foot near a body of water, a boat-shaped car or toboggan adapted to move downwardly over said inclined railway and entering the water at its foot to float thercon and be propelled forwardly thereon by the momentum derived from its descent over the inclined railway, substantially as described.

3. In combination with the inclined railway having rails E, the boat-shaped car or toboggan having runners and guide-plates extending below said runners on its bottom, substantially as described.

4. In combination with the boat-shaped car or toboggan, the spray-deflectors tixed to its sides, substantially as described.