(Fig. 1) or turning (Figs. 3 and 4) the lap of the lips when moving from the upper track to the downward path.

Neither the utility nor the validity of the patent is questioned; the contentions being that the scope of the claims is limited by the prior art, and that the defendants are not infringers. The patent has never been adjudicated, and the interference proceeding in the Patent Office entitled "Hunt v. McCaslin" dealt with the date of the invention, and not with the question of prior devices. Complainant claims to have conceived the invention in August, 1886, and to have then disclosed it to others. The date of the application in suit is April 8, 1893. The interference proceedings, for reasons sufficient to the Court of Appeals for the District of Columbia, terminated in complainant's favor; and his application was found to anticipate Hunt's date of filing, which was September 10, 1892. That decree is not binding upon the defendants, they not having been parties or privies to the proceeding nor claiming undethe patent issued to Hunt. Edward Barr Co. v. N. Y. & N. H. Automatic Sprinkler Co. (C. C.) 32 Fed. 79; Western Electric Co. v. Williams-Abbott Electric Co. (C. C.) 83 Fed. 842; Wilson v. Consolidated Store Service Co., 88 Fed. 286, 31 C. C. A. 533. The patentee gave testimony tending to show that the date of his invention was prior to the Davidson British patent hereinafter mentioned, and in support of his testimony a sketch made by him of the machine was produced. This showing, however, is not persuasive, and accordingly the Davidson patent must be regarded as a proper citation to acquaint the court with the state of the art.

The desideratum of McCaslin was to produce a practical construction which would enable loading from a running hopper or chute while the buckets move along the track, without spilling or wasting any of the material, and also to prevent collision by the interlocking of loaded buckets in passing from the lower to the ascending track. It is undoubtedly true that complainant's overlapping system prevents spilling between the buckets. But a comparison of the several conveyors of the prior art (especially that of McCaslin's earlier patent, No. 486,809, dated November 22, 1892) with that of the patent in suit leads to the conclusion that the claims of the latter must be strictly construed, and that complainant is not entitled to a range of equivalents sufficiently broad to include defendants' method of accomplishing the same result. The complainant was not a pioneer, and the new features of the patent in suit are narrowed by his earlier patent and by the patent to Davidson. That a prior patent for the same invention was issued to the patentee, of course, would not avoid anticipation. Doig v. Morgan Machine Co., 122 Fed. 460, 59 C. C. A. 616; Underwood v. Gerber, 149 U. S. 224, 13 Sup. Ct. 854, 37 L. Ed. 710.

To construe the claims in suit, the nature of the patent and the state of the art at the time of patenting, or when the invention was discovered, is important. The range of equivalents to which the patentee is entitled depends altogether upon the character and extent of his improvements, and the degree of merit is measured by the value of his contribution to the public. Applying the basic

rules to the facts of the case, a pertinent inquiry is, has the inventor, by the overlapping lip arrangement, projected into an apparatus concededly familiar to the art something possessing novelty? Has he achieved a practical improvement in a device which prior thereto was incapable of successful operation? Evidence was given to show that the apparatus in suit was commercially superior to the earlier patent, and went into extensive public use. This testimony, though important, has not the force to warrant holding that the prior McCaslin patent was impracticable, and that the later device led from failure to success. Whatever novelty exists in the patent in suit is in the nature, as already intimated, of an improvement upon that which was known to the art.

The testimony of the mechanical experts regarding the scope of the claims is in conflict. According to the complainant, the merit of the patent, briefly stated, consists in an arrangement by which the buckets are enabled to preserve a certain symmetry or alignment while they are in motion and passing toward and down the descending path, so as to permit loading from a continuous running spout, and prevent spilling of material while loading. To attain this object, the patentee added an extended lip at the ends of the buckets, and devised means for overcoming interference and impingement of the lips which is apt to occur in traversing a circular or tortuous track. That gravity buckets arranged in series and maintained in a normally upright position, whereby they may be automatically emptied of their contents by capsizing at different points, and thereafter readjusted, were familiar to the art, is shown. by an inspection of patent No. 331,961, dated December 8, 1885, to W. Griesser. In this patent the buckets are lipless, and the arrangement such as to permit them to turn upon curves while in motion without interference. The absence of overlapping lips upon the buckets, however, prevented loading from a continuous streaming spout without spilling the material between the buckets. Patents issued to Hunt show a lipless gravity bucket, and a portable mechanism for preventing the material from spilling. In the Hunt patents the buckets must be loaded at certain predetermined points with the aid of a local feeding device. The patents mentioned do not disclose the essential features of the claims in suit, and are material only to indicate the advance made by McCaslin in his earlier patent, No. 486,809. It is upon this patent that the defendants lay special stress to limit the claims in controversy. The specification of the earlier McCaslin patent describes a gravity bucket conveyor wherein each bucket is provided with a single lip overlapping the next succeeding bucket, together with means for shifting the buckets to enable them to pass around the complete cycle without collision. The construction shown in figure 1 of the earlier patent resembles that of figure 3 of the patent in suit. Indeed, a resemblance between the earlier and later McCaslin patents is not denied. The lap of the lip in the earlier patent was not changed, the buckets being turned over by gravity; nor were means provided for preventing collision between the loaded buckets as they passed toward the ascending track. The object of the pat

entee was to make the prior art more practicable, by permitting the buckets to be carried from one point to another, irrespective of the configuration of the tracks, and to prevent spilling of the material at the loading point. To accomplish this object, each bucket was provided with a single lip, and upon the side was placed an upwardly projecting bolt, arranged to engage a bar at the loading point, and prevent the rear end of the bucket from tilting too far while being loaded. As stated, the buckets, in passing down the descending track in succession, made a complete turn, instead of being tilted as in the patent in suit, and on reaching the lower horizontal track the stopping device held them in a tipped position until the danger point of collision was passed, when the bucket righted itself by gravity. The claim is here made that the complainant has progressed the prior art in two important particulars, namely, that by his arrangement of double-lipped buckets, without the use of a special loading device,. the running material will not spill between the buckets; secondly, that by the employment of his method there may be a complete revolution around the track, without interference between the buckets, by simply tilting them in the manner described. The principal features by which the later McCaslin patent is differentiated from the earlier exists in the use of cams for tilting the buckets, and maintaining the overlap by the employment of the guard rail, instead of mounting the buckets on the chain to practically accomplish the same result. The operation for guiding the movement of the buckets down the descending track, as specially set forth in claim 2 in suit, is not thought to be such as to require holding that the defendants' method is a substantial equivalent. Various ways are shown in the specification for changing the overlap; one having cams on the upper and lower track, located near the vertical path; the other (figures 3 and 4) having á single cam, located at the upper track near the downward pathway, which operates to turn the bucket half over. The horizontal guard rail shown in figures 1 and 4 is a feature of claim 3. According to the specification, it performs the special function of preventing the tilting of the buckets in case two adjacent buckets were unequally loaded. The specification states that if there were no such device the buckets would collide at the point where they left the lower horizontal track and passed onto the ascending track. Defendants contend that the functions of the guard rail should be read into claim 2, as an essential element. I am of opinion that the claim must be construed to include such device, as the means by which the result is attained, namely, the establishment of the overlap of safety, is, to a degree, owing to the presence of the guard rail. Westinghouse v. Boyden, 170 U. S. 537, 18 Sup. Ct. 707, 42 L. Ed. 1136; Wellman v. Midland Steel Co. (C. C.) 106 Fed. 226. In the latter case Judge Baker said:

"Where the claim is for a combination, it must be for an operative combination; and if an element essential to make it operative is shown and described in the specification, and is omitted in the claim, it must be read into the claim. Such an interpretation is justified and required by the concluding language, 'substantially as set forth.'"

See, also, Stilwell-Bierce & Smith-Vaile Co. v. Eufaula Cotton Oil Co., 117 Fed. 410, 54 C. C. A. 584.

In the English Davidson patent of February 2, 1892, No. 2,046, there is shown a device for carrying material from one point to another. The carrying trays are pivotally mounted, and have overlapping lips at each end, and dumping cams are located near the two corners. Although material can only be carried upward to a straight track, or downward onto a straight track, yet the carrying trays, which have lips at their ends, are arranged in series; the purpose being to cause the lips to overlap, and prevent the material. from falling between the trays at the loading point. The overlapping and tilting features of the Davidson patent resemble those of the McCaslin patent in suit, though no means are described for preventing interlocking of the trays. In view of the earlier McCaslin patent and the English patent to Davidson, which is considered merely to construe the claims in suit, and not to anticipate, the patentee is simply entitled to the protection of his improvement, and can only invoke the doctrine of equivalents if the method adopted by the defendants is a colorable invasion. Walker on Patents, § 184.

After a careful examination of the prior patents and the evidence construing the claims in suit, I have reached the conclusion. that the defendants' system and mode of operation is essentially different from that of complainant. The defendants' device has the familiar endless chain, the links, the wheels, track with its curves, gravity buckets with overlapping lips, and dumping lugs. It has an essential additional feature, to wit, the links of the chain have outside extensions, on which the buckets are pivoted. In other words, the buckets are not suspended in the chain, as in complainant's device, but on projections from the chain. It has no overlapping arrangement at the so-called danger points, and there is not troublesome interference of one bucket with another. No cams are used, or means for tilting or shifting the buckets to change the overlap. Neither has defendants' apparatus a guard rail.

Defendants' witness Prof. Carhart, who is corroborated by the witness Livermore, testifies:

*

"The defendant gets his buckets around the angle, not by shifting or changing the overlap, but by separating the buckets so that they are further apart than the entire width of one of them. Each bucket swings clear of its neighbor, and is free to change its direction and motion vertically up or down."

The elicited facts show that the primary result of changing the overlap in defendants' mechanism is attained by the sudden downward and forward shifting of the extensions of the chain links, which are connected with the buckets, and which not only cause the lips of the buckets to slightly separate, but cause simultaneous action between the chain and the buckets. This feature is probably more clearly expressed by stating that at the ascending or descending points the buckets, while in motion, are rapidly lifted by the moving action of the link extensions in an upward and forward direction, and one bucket momentarily precedes another, and then,

owing to the movable action of the link extension, rapidly recedes into its normal position; meanwhile continuing in its path toward the loading or unloading point. According to defendants' expert, the connection between the chain and buckets in defendants' apparatus produces a system of nonoverlapping buckets in passing around the curve, while in the apparatus of McCaslin the spacing between the buckets is such that the lips of the buckets constantly overlap, or remain in a position for overlapping, and, in order to change their position, either one or both of the buckets must be tilted from the horizontal position in which they are normally suspended.

The record, as a whole, satisfactorily shows that a difference exists in the mechanism adopted by the defendants. The result of the operation of defendants' device is the same as that of complainant, but the mode of operation is substantially different. Kokomo Fence Co. v. Kitzelman, 189 U. S. 8, 23 Sup. Ct. 521, 47 L. Ed. 689. The elements of claims 2 and 4 are not infringed by the defendants. The bill is therefore dismissed, with costs.

BONSALL v. T. J. HAMILTON MFG. CO. et al.

(Circuit Court, S. D. New York. June 16, 1905.)

1. PATENTS-INFRINGEMENT-WARDROBE TRUNKS.

The Bonsall patents, Nos. 604,346 and 642,075, both relating to wardrobe trunks, were not anticipated, and disclose invention. Claim 3 of the former, and claim 4 of the latter, also held infringed.

2. SAME-NOVELTY-GARMENT HANGERS.

The Bonsall patent, No. 661,947, for a garment hanger for use in wardrobe trunks, is void for lack of patentable novelty.

In Equity.

H. S. Mackaye, for complainant.

D. Walter Brown, for defendants.

HAZEL, District Judge. This action is brought to restrain defendants from infringing three United States letters patent owned by complainant, who was the inventor, as follows: No. 604,346, dated May 17, 1898, for improvement in dress skirt and wardrobe trunk; No. 642,075, dated January 30, 1900, for improvement in receptacle for clothing; and No. 661,947, dated November 20, 1900, for improvement in accessible garment hanger. The defenses are anticipation and denial of infringement. Claim 3 of patent No. 604,346, claim 4 of patent No. 642,075, and claim 1 of patent No. 661,947 are involved. Many prior patents relating to wardrobe trunks are found in the record, but none embody the precise elements of the combination of the patents in suit. The claims involved are narrow, and contention is not made for a broad construction. The first-mentioned patent has five claims, and describes a wardrobe trunk adapted for hanging skirts and other garments