the use of the plaintiff's process that the problem was solved. While he does not specifically refer to Merrill 842,484 it is reasonable to infer from his statement of his familiarity with known methods that he was aware of Merrill's patent. He asserts positively that the method of the plaintiff's application is new and that it has overcome difficulties theretofore considered insuperable by those familiar with the old filter-press process notwithstanding the most exhaustive. efforts to remove them.

It must be held therefore that the process of the plaintiff's application was not described and that it was not intended to be described or claimed in Merrill 842,484.

In the defendant's brief it is stated:

It cannot be emphasized too strongly that neither the specification nor claims of plaintiff's application specifies the kind of metallurgical treatment, the character of the treating fluid nor the place of its introduction. The description and claims are in broad general terms and the patent if granted would prohibit the use of known filters in ways taught by the prior art.

If the latter statement be true then it should be possible to refer to the known filters and the ways in which they are used, but there is no proof of the statement before the court.

The bill asks for leave to amend the application and claims in such particulars as may be necessary and proper. In the plaintiff's brief only two amendments are suggested. It is claimed that the statement

A' is a corresponding inlet for treating the precipitate in place with liquids, vapors, or gases and which is preferably placed at either or both upper corners of the container and in like manner forms a continuous opening or openings when the containers are placed together in the filter press—

is erroneous in that this inlet is not to be used for the purpose of treating the precipitate for the reason that it opens into the filterplates and not into the container, and that the description of the process shows that the treating material is to be introduced into the container. The description of the process should control and the leave to amend should be granted accordingly.

The other amendment relates to Figures 2 and 4 of the drawings in which the apertunes opening into the filter-plates marked a1 and a2 are shown in alternate filter-plates only. The description shows that these apertures are to be used for the purpose of admitting vapor, liquid, or gas for the purpose of dislodging material deposited on the filter-cloths inside the container. Consequently, these inlets must open into every set of filter-plates; otherwise there can be no such dislodgment. Figs. 6 and 8 show the apertures in each set of filterplates. There seems to be an obvious mistake in drawings 2 and 4 and they should be amended to correct it.

The bill. states the process for which the plaintiff claims the right to a patent as follows:

6. Your orator's said invention, as set forth in said application, consists of the following steps:

(a) Depositing layers of equal permeability and thin enough to be permeable on the filter cloths which form each side of the chamber, as distinguished from completely filling the chamber as in the old filter-press process.

(b) Holding these layers in that condition and position by avoiding the discontinuance of the pressure against them and maintaining continuous pressure. (c) Displacing the metal-bearing liquid held in the layers after simple filtration by putting washing fluid through them from the open space left in the center of the container, as distinguished from the old method of forcing the washing fluid through the solid cake completely filling the chamber.

(d) Mechanically removing the barren layers by forcing them off the filter cloths, then sluicing out the material by a stream of water.

This process is sufficiently described in the application and is what the plaintiff claims in his sixth, seventh, and eighth claims. Those claims should be allowed.

Section 4915 of the Revised Statutes provides in part that the

court

may adjudge that such applicant is entitled according to law to receive a patent for his invention as specified in his claim, or for any part thereof as the facts in the case may appear.

It was held in Durham v. Seymour (C. D., 1895, 307; 71 O. G., 601; 6 App. D. C., 78) that the plaintiff could not under this section have allowed to him claims not made in the Patent Office, but the section as seen from the part just quoted does permit the allowance of any part of the plaintiff's claim and in order that the plaintiff shall have the full benefit of his invention he may, if he so elects, be allowed a claim in substance as follows:

The hereinbefore described method of treating solid or semi-solid material in the containers of pressure-filters consisting in depositing the same under continuous pressure in thin layers upon the filter cloths which form the closure of the filters, so that a space is left between the layers, then subjecting the layers while under continuous pressure to any desired metallurgical treatment.

Claims 1 to 5, inclusive, should not be allowed. While it is held herein that it was the practice always to fill containers with solid material prior to plaintiff's invention and that the deposition in layers upon the filter-cloths inside the containers is new in the art, claims 1 to 4 do not describe any process, for the steps therein described would accomplish nothing if carried out; that is to say, the depositing of the material in layers upon the cloths, knocking it from the cloths and washing it out would be an idle ceremony without the intervening and essential step of treating the material so deposited for the purpose of extracting the metal. This step is stated in the application to be "an element in the process." The inference to be

drawn from the statement by the plaintiff in his bill of the process which he claims seems to indicate that he has abandoned claims 1 to 4 and also claim 5, which does not describe the process as set forth in the bill.

Settle decree on notice.

[U. S. District Court-Northern District of Illinois.]

WIREBOUNDS PATENTS Co. et al. v. CHICAGO MILL & LUMBER CO. Decided May 23, 1916.

238 O. G., 1639; 238 Fed. Rep., 929.

1. PATENTS-VALIDITY AND INFRINGEMENT-WIRE-BOUND Box.

The Inwood and Lavenberg reissue patent, No. 12,725, (original No. 799,854,) for a wire-bound box, is within the invention of the original patent, discloses patentable invention, and as covering a highly useful and successful box, which was the first of its kind, is entitled to a fair range of equivalents; also Held infringed.

2. SAME REISSUES-GROUNDS OF REISSUE.

The statute providing for reissues is not to be so construed as to deny a reissue where by the inadvertent use of a limiting word the original patent does not protect the real invention.

3. SAME-VALIDITY AND INFRINGEMENT-WIRE-BOUND Box.

The Flora patent, No. 907,586, for a wire-bound box, is for an improvement only, and, while valid, is to be narrowly construed; as so construed Held not infringed.

IN EQUITY. Suit by the Wirebounds Patents Company and the Wirebounds Corporation against the Chicago Mill & Lumber Company. On final hearing. Decree for complainants in part.

Messrs. Dyrenforth, Lee, Chritton & Wiles. (Mr. Charles C. Linthicum, Mr. Laurence A. Janney, and Messrs. Dunne & Murphy of counsel) for the plaintiffs.

Mr. W. C. Gilbert (Mr. Arthur M. Hood and Mr. Edward Rector of counsel) for the defendant.

SANBORN, Dis. J.:

Infringement suit, begun January 20, 1914, on the Inwood and Lavenberg reissued Patent No. 12,725, dated November 26, 1907, (original No. 799,854,) applied for October 17, 1904; also on the patent to Ellsworth E. Flora, No. 907,586, dated December 22, 1908, applied for December 4, 1905. Defenses set up are invalidity of the reissue, as broadening the original, invalidity, and non-infringement. The controversy relates to wire-bound boxes made by complicated and elaborate machinery, and the business is a very important and rapidly-growing one. Plaintiffs own twenty-nine patents on box

making machinery and twelve on the boxes or box-blanks. Plaintiffs' thirty-six licensees sold 60,000 boxes in 1906 and 9,652,604 in 1914. They are used mainly for shipping small packages in some 851 different industries.

Defendant is licensee of the Greenstreet Folding Box Machine Company, and there are six other licensees. Competition is quite active. Plaintiffs and the Greenstreet Company are the only makers of wire-bound boxes in this country.

The box material (except cleats) is thin veneer, and utilizes much material which would otherwise be wasted, and which is of inferior quality for many other purposes. The main parts of the box consist of four veneer blanks for the top, bottom, and sides, bound together, eight cleats with wires attached to the blanks and cleats by staples, and of the box ends, which are fastened to the inner surfaces of the cleats. All these parts are turned out by machines. Plaintiffs' expert thus describes the boxes (except ends):

(1) The foldable box blank is wire-bound; that is to say, the different sections of which the blank is composed are united together by binding wires, and in the completed box the ends of these binding wires are connected together, so as to circumferentially bind the whole box together, this being the significance of the wire-bourd characteristic of the box.

(2) The box blank comprises four sections, which are independent of each other, except for the uniting wires, and each of these sections comprises side sheet material and two cleats secured thereto, and in the completed box each of these four side sections has the capacity of movement longitudinally relatively to the adjacent sections, without disrupting the integrity of its own elements, consisting of the sheet material and the two cleats.

(3) The sheet material constituting the sides of the box projects beyond the cleats sufficiently to enable the sheets to overlap each other, so as to constitute a tight box.

(4) The sheets are straight-edged, thus not only contributing to the tight joints, but also tensioning the wires.

(5) The tensioning of the wire thus obtained not only holds the four sides of the box closely and tightly together, but it also has the important effect of utilizing the lateral flexibility of the wire, in permitting the side sections to move relatively to each other, while at the same time utilizing the strength of the wire in resisting any distortion of the box under diagonal strains.

The ultimate strength of the Inwood and Lavenberg box is dependent upon the wires. Owing to the tensioning of the wires at the corners of the box, this strength is utilized to its full capacity. This will be readily understood by reference to an ordinary nailed box. When such a box is subjected to diagonal strains, the tendency is to distort and disrupt the box, either by pulling out the nails or by disrupting the box material at the nail holes. This is avoided in the Inwood and Lavenberg box, because the wires themselves withstand the strains, and the box can be distorted to the breaking point without disrupting the union between the side material and the cleats, because the side sections can slip on each other, leaving the strains to be borne by the wires. Consequently the box can be materially distorted, and nevertheless, after the distorting strain has ceased, the box can resume its original shape and still be an

efficient carrier for its contents. Owing to the tension of the wires at the corners, the box is stiffened in the first instance, so that ordinary strains will be withstood, without any distortion of the box; and then, if the strain is increased sufficiently to distort the box, the wires will hold the box together, and the side sections will slide without disrupting.

The box ends are fastened to the inside of the side and bottom cleats, but not to the top. The two claims in suit, one from each patent, are as follows, the word "step-mitered," in parenthesis, having been included in the original Inwood and Lavenberg patent, but omitted in the reissue:

1. A wire-bound foldable box blank, comprising, in combination, a plurality of straight-edged sheets, wires connecting the sheets in longitudinal series and extending the full length of the series, and cleats formed with rabbeted mutually engageable ends, the wires, sheets, and cleats being stitched together, and the cleats being in end-to-end spaced relation, the whole being constructed and arranged to cause the rabbeted adjacent cleat ends, in the operation of folding the blank, to engage with each other and lock adjacent sheets against relative sliding, and cause one sheet to overlap the end of the adjacent sheet at box corners.

1. A wire-bound foldable box blank, comprising a plurality of straight-edged sheets, wires secured to and connecting said sheets, and (step-mitered) cleats secured to said sheets to terminate short of edges of the latter a distance equal or approximately equal to the thickness of a sheet, whereby, when folded at a right angle, the end of one sheet overlaps the end of an adjacent sheet.

(1) Validity of Inwood and Lavenberg claim.-Aside from the question of reissue, as to this patent, like that in question in the recent ease of Miner v. T. H. Symington & Co., (in this circuit,) (229 Fed. Rep., 730,) there are no new elements in it, and its validity depends entirely upon the arrangement of parts. Such arrangement combines the parts in a new way. The result is beneficial and highly useful. The box is flexible, elastic, strong, light, has proved very successful, and was the first of its kind. If it did not actually create the wire-bound box industry, certainly it was a most important factor. Were the patent merely a paper one, there might be doubt of its validity; but, having been instrumental in founding a large industry, it should be sustained, and is entitled to a fair range of equivalents.

In this construction the particular shape of the four cleats at each end is not vital. In the original patent the claim required them to be step-mitered at the ends, so as to give greater strength to the box, and enable it to keep its square shape. Novelty, however, did not consist in the shape of the cleats, but the bringing together of cleats, sides, top, bottom, ends, and wires to make a practical, efficient, strong, light structure, in which the ends serve to brace it and prevent crushing, rendering the particular shape of the cleat ends where they touch each other less important in preventing per