market price at the time and place of delivery and the price as fixed by the contract.

Much correspondence between the parties, and other evidence tending to justify their conduct respectively, was offered in evidence. To some of this defendants objected, and the action of the court in ruling against them has been assigned for error. We do not deem it necessary to pass separately upon these assignments. After a patient examination of the record in view of the latitude of inquiry proper on the issue as made by the parties we are unable to discover in them any prejudicial error.

It is objected that the court erred in refusing to give certain instructions to the jury requested by defendants. They requested the court to charge as follows:

"(1) The plaintiff who sues upon a contract has not launched his case until he has shown that he has tendered the thing which has been contracted for, and if he is unable to show that, he cannot claim any damages for the nonfulfillment of the contract. (2) Before the plaintiff can recover upon the contract of January 14, 1904, it must show that it in all things complied with the same, in the fulfillment of orders sent to it by defendants, and that it tendered to the defendants the lumber called for by the contracts, in the proper proportion respecting the different dimensions called for therein, at the times when it had a right to tender the same."

The learned trial judge instead of giving the requested instructions charged the jury as follows:

"There is nothing said in the contract as to when the shipping instructions were to be sent by the defendants to the plaintiff; but the law implies when a contract of that kind is entered into, whereby one party agrees to sell and obligates himself to ship a certain amount every month if requested, and it is silent as to when the other party should give the directions to ship, that the party will be expected to give shipping instructions or make his purchase within a reasonable time. * The seller was required to have sufficient lumber on hand for shipping purposes so as to fill at least forty car loads a month if ordered. The law does not expect the plaintiff, after entering into a contract like this, to stack up five million feet of lumber and keep it there for an indefinite time until the defendants can find a profitable market; but, on the other hand, the law does not expect, in view of the fact that the contract provides that they shall await shipping instructions, that the defendants must take it out immediately, or that they must order every month between forty and fifty cars."

We held on the former appeal, in effect, that the present contract was dependent and mutual; that it obligated the defendants to give shipping instructions within a reasonable time, and obligated the plaintiff within a like reasonable time thereafter to make the shipments accordingly. It was the duty of the defendants to take the first step in the performance of this executory contract. If they refused or failed to do so by giving the required shipping instructions within a reasonable time they were in default, and thereby discharged plaintiff from its obligation to perform, which was dependent upon defendants taking the initiative. The contract was executory, and the obligations of the parties were mutually dependent. Canal Co. v. Gordon, 6 Wall. 561, 569, 18 L. Ed. 894; Hinckley v. Pittsburgh Steel Co., 121 U. S. 264, 7 Sup. Ct. 875, 30 L. Ed. 967; Roehm v. Horst, 178 U. S. 1, 20 Sup. Ct. 780, 44 L. Ed. 953; The Eliza Lines, 199 U. S. 119, 26 Sup. Ct. 8, 50 L. Ed. 115; Washington County v.

Williams, 111 Fed. 801, 49 C. C. A. 621. The plaintiff's obligation arose only upon the defendants giving the necessary shipping instruc tions, and it was in no default until those instructions were given. In the absence of such instructions no obligation to tender lumber to the defendants arose. Hinckley v. Pittsburgh Steel Co., supra. The requested instructions were not applicable to the case before the court, and were properly refused.

The failure to give other instructions requested by defendants is also complained of as error. Some of these declare that the mere assertion of a purpose not to perform by defendants at some indefinite time in the future in the absence of an unequivocal present refusal to do so would not constitute a breach of contract; that the contract could not be abandoned by defendants prior to the expiration of the time for its complete execution unless the defendants refused to perform; that under certain assumed conditions plaintiff would be estopped from asserting that defendants had broken the contract; that plaintiff might under certain circumstances be entitled to recover for any additional expenses incurred by it, by reason of defendants ordering widths not contemplated by the contract. These and other like declarations were perhaps well enough as abstract propositions of law (as to this we express no opinion); but they had no place in this case. The jury was fully instructed without them. The issue was very simple, namely, which party, plaintiff or defendants, first broke the contract? The result depended exclusively upon the answer to this one question. The learned trial judge in his charge left nothing uncertain on this issue. The charge was full and explicit, to the effect that if defendants failed to give shipping instructions warranted by the contract within a reasonable time it thereby made such a breach of the contract that plaintiff could recover, but if plaintiff failed to comply with proper shipping instructions and to fill defendants' orders within a reasonable time after receiving them then plaintiff could not recover. He appropriately confined the attention of the jury to a consideration of this one question. Abstract propositions of law, when not pertinent and necessary to the case as made, tend rather to confuse than aid a jury in its deliberations. It is better practice to do as was done here-reduce the issue of fact to as limited a compass as is consistent with full instruction to the jury. In this way the most intelligent verdicts are likely to be secured.

The court also refused to give an instruction in the language as requested by defendants' counsel concerning the measure of damages. This was not error if it gave, in its own language, the correct instruction on that subject. The court told the jury, in effect that, if plaintiff was entitled to recover at all it should recover the difference between the contract price and the market value of the lumber at the time and place of delivery. The proof at the second trial differed from that at the first in this: that it was made to appear that there was a market for the lumber in question at Helena, Ark.-the place of delivery. The rule as given to the jury, just stated, was the true and exhaustive rule, and nothing more need have been said on the subject; but in view of the fact that plaintiff had actually sold its lumber before suit was brought, the court further told the jury that

the duty rested on plaintiff to exercise reasonable diligence in securing the best price the market afforded. Of this the defendants could not complain. It gave them all they were entitled to.

Some other less important questions, called to our attention by the assignment of errors, have been carefully considered. The case has been twice tried, and the dominant and meritorious issue of fact has been twice found in favor of the plaintiff. In view of this fact, hypercritical attacks upon the proceedings below should not be encouraged. Finding no reversible error, the judgment is affirmed.

SCOFIELD et al. v. BROWNE.

(Circuit Court of Appeals, Third Circuit. December 11, 1907.)

No. 35.

1. PATENTS-DESIGNS-EVIDENCE OF PATENTABLE NOVELTY.

The fact that articles when made after a patented design were more salable and in greater demand is evidence that such design possesses the qualities of novelty and attractiveness to the eye, which rendered it patentable.

[Ed. Note. For cases in point, see Cent. Dig. vol. 38, Patents, § 52. Utility, extent of use, and commercial success as evidence of invention, see note to Doig v. Morgan Mach. Co., 59 C. C. A. 620.]

2. SAME-INFRINGEMENT-ORNAMENTAL HEAD FOR BROOCHES.

The Frenot design patent No. 35.922 for a design for an ornamental head for brooches, etc., discloses patentable novelty. Also held valid as against the defense of public use for more than two years and infringed.

Appeal from the Circuit Court of the United States for the District of New Jersey.

Louis M. Sanders, for appellants.

H. V. Osborne, for appellee.

Before DALLAS, GRAY, and BUFFINGTON, Circuit Judges.

DALLAS, Circuit Judge. This is an appeal from a decree for the complainant in a suit founded upon design patent No. 35,922, dated May 27, 1902, issued to Louis D. Frenot, assignor, etc. In the specification as at first presented, the leading or material feature of the design was said to consist "in the representation, in relief, of the face or head of an animal in front view, the mouth being opened to expose the teeth and the long hair at the cheeks being combed outwardly"; and to this was added the statement that "the animal is preferably a lion." The design as thus described was rejected by the Patent Office "as offering nothing patentable, in view of the various lions' heads shown in English heraldry"; and the applicant, to escape the imputation that this child of his invention was related to such fantasies, submitted the substituted specification upon which the patent in suit was allowed and issued, viz.:

"Figure 1 is a front elevation, and Fig. 2 is a side elevation, of an ornamental head for pins, brooches, etc., of my new design. As shown in the drawings, the leading or material feature of my design consists in an ornamental head for brooches, scarf pins, and similar articles, having at its front the

158 F.-20

shape of the forward portion of a carnivorous animal's head, with mouth open to expose the teeth, and long hair at the cheek spread outwardly and displayed as a broad base, the back of the ornamental head being plane. In said drawings, 'a' indicates an ornamental head of my new design, having at its front the configuration of the forward portion of the head of a carnivorous animal, with open mouth, 'b,' displaying teeth, 'c, c.' At the cheeks is long hair, 'd' combed outward and displayed as a base, and beyond this is a background of further diverging ray-like members, 'e.' The back of the ornamental head is plane, as at 'f.' Having thus described the invention, what I claim as new is: The design for an ornamental head for brooches, scarf pins, and similar articles, as herein shown and described."

e

Figure 1 of the drawings is here reproduced:

It is not for us to say that this "most delicate monster" does not "please the eye of the beholder," for the proofs show that it has enhanced the salable S value and enlarged the demand for the trinkets it was intended to adorn. Walker on Patents, § 22. And as to infringement there can be no reasonable The head of the de1.090 item doubt. efendants does not materially differ from that of the patent, being distinguishable from it only by the absence of the ray-like members, "e"; and we cannot suppose that the removal of these appendages was at all likely to be observed by an ordinary purchaser. Gorham Co. v. White, 14 Wall. 511, 20 L. Ed. 731. The two designs are certainly very much alike in general appearance. Each is "an ornamental head," and both, if either, may be regarded as that of “a carnivorous animal"; and each has the mouth open to expose the teeth, and "like the toad, ugly and venomous, wears yet a precious jewel in his head." The only difference worthy of mention, as has been noted, is in what may be called the whisker portion of the face, and it is not possible to believe that the intention of the defendants in creating this difference, was to make a design "so various that the mind of desultory man, studious of change and pleased with novelty, might be indulged."

It has been argued that the patent in suit is invalid, because, as contended, the design patented had been for more than two years in public use when the application was filed; but upon this subject we do not deem it necessary to add anything to what was said by the learned judge of the court below. After independent consideration of the proofs, we agree with him that this defense was not made out, and think that his conclusion in this regard was amply vindicated in his opinion, as follows:

"The alleged invalidity of the patent is based on the contention that the design was in public use more than two years prior to the filing of the application for the patent. The application was filed February 8, 1902. The patent was granted to the complainant as assignee of Louis D. Frenot. Frenot, who was offered as a witness by the complainant, stated on cross-examination

that he thought he sold the design to the complainant in the fall of 1899, and that shortly thereafter the complainant began to manufacture articles from the design and to put them on the market. Indeed, he said he was sure that he turned over his first mold to the complainant in the fall of 1899. The complainant himself also testified that he thought he purchased the mold from Frenot in the fall of 1899. If there is no mistake in this testimony it follows, as a matter of course, that the patent is invalid. But I think these witnesses were mistaken. They were both testifying from memory, and without the aid of books or other memoranda. The complainant was subsequently recalled, and said that after giving his first testimony he had examined his books and found that the first sale of any article made from Frenot's design was on September 22, 1900; that the first pattern of the design was made on July 12, 1900; and that the first work ever done by Frenot for him was on June 2, 1900. Frenot, in his testimony, said that at the time he sold his invention to the complainant he was working for the complainant. Esther Hargreaves was also called as a witness. She is the complainant's bookkeeper, stenographer, and general office clerk. She in all respects corroborates the complainant as to the facts disclosed by his books. I am satisfied that Frenot went to work for the complainant about June 2, 1900, and that the design was made by him after that date. Consequently, the defense of invalidity is not supported by the proofs."

The decree is affirmed.

ARROWSMITH MFG. CO. v. E. T. GILBERT MFG. CO.

(Circuit Court, W. D. New York. December 11, 1907.)

No. 292.

PATENTS-INVENTION-INSTEP SUPPORT.

The Arrowsmith patent, No. 748,553, for an Instep support or arch prop, claims 3 and 4 are void for lack of novelty and patentable invention, in view of the prior art.

In Equity. On final hearing.

Stephen J. Cox, for complainant.

Albert E. Lynch and Victor C. Lynch, for defendant.

HAZEL, District Judge. This suit relates to claims 3 and 4 of patent No. 748,553, issued to James W. Arrowsmith, dated December 29, 1903, for improvement in instep supports or arch props. The third claim, which is broader than the fourth, consists of the following elements: (1) A metallic plate to fit the under surface of the normal arch of the instep; (2) a metallic side portion to fit the side surface of the instep; (3) a nonmetallic or leather cover formed to fit the upper surface of the support; and (4) fastenings connecting the plate and cover located at points near the line of junction of the body and side portions, the covering piece being free from the plate at all other points. The answer denies patentability, novelty, and infringement, and alleges anticipation. Counsel for complainant with commendable frankness admits that the involved claims are narrow, and are limited to the cover fastenings of the device "at points near the line of junction of the body and side portions." It was essential that the leather or nonmetallic cover should be attached to the unyielding metal plate near the line of junction; that being regarded as the point of greatest