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one that was adjudged valid by the court below, is for a supporter having with the other parts “the button composed of the central support and the surrounding rubber portion.” The patentee, however, states in his specification that he prefers that the entire head of the button shall be of rubber. He also states in the specification that when he uses the term “rubber" in the claims he intends to include as an equivalent "any other material adapted to prevent the button from slipping, and having characteristics similar to rubber and adapted to the same use." By this he means to mention as an equivalent any material “having a fibrous, yielding, or elastic surface to which the garment tends to cling," as he elsewhere points out in the specification. In a later patent granted to him for a garment supporter, an article for an analogous use, he refers to the patent in suit, and states that it covers the use of other material than rubber, “including fibrous materials,” and points out that "felt, fiber, cloth, and leather” would supply a surface to the button which would impart the desired characteristics, and form a surface to the button of a "yielding or elastic material.”
It seems obvious that the claim in controversy is not to be limited to a hose supporter the button shank of which is made of rubber or surrounded with a rubber surface, and that it includes one in which the shank is made of or surrounded with any fibrous or yielding material, and that a button made of or covered with felt, fiber, cloth, or leather would, when combined with the other parts, infringe the claim.
As the scope of the claim must be as broad as any structure which would infringe it, the consideration of its patentable novelty is narrowed to the single question whether it was invention to substitute in the old hose supporter, in lieu of the metal button, a button made of rubber, leather, felt, or any other fibrous or yielding material to which the fabric of the stocking would tend to cling.
On first inipression it would seem to have been an obvious thing to select some kind of material for the button that would resist the tendency of a smooth button to slip, although firmly gripped, and yield sufficiently, while resisting the slipping, to obviate the abrasion of the fabric. It was common knowledge that rubber is neither as hard nor as unyielding as metal, bone, or pearl. It was also common knowledge that it has the property of clinging, and its use on shoes, stairway steps, and for mats and floor coverings are familiar instances illustrating its adaptability to prevent slipping. It had also been used for buttons in order that its elasticity would permit the button to yield easily to sudden pressure, and yet not abrade the fabric of the button hole, as in the instance of the collar stud of the Allen patent. But in none of its prior uses had it been employed as the member of a device between which and another member a portion of the fabric was to be clamped. The instances of the prior use of such a material do not necessarily suggest its adaptability to do the work required of a button in a hose or garment supporter more efficiently than one of metal. That its selection was not an obvious thing is persuasively and cogently shown by the fact that during many years numerous inventors were trying to remedy the defects in the old device, and it did not occur to them how simply and satisfactorily this could be done by making the button of rubber or some other elastic or yielding material. Its employment in the device of the patent was a new use, and imparted to the device a remarkable efficiency, as compared with that of the best type of former devices. Without the aid of such an experimental demonstration as was made upon the argument it would be difficult to realize the practical value of the improvement.
We have not overlooked the prior patent showing a device having a pair of jaws faced with springy or elastic material, which are pressed against the intervening fabric to hold it between them, nor the prior patent for a supporter in which an ordinary button of pearl or bone or some hard material is stitched to its place by thread. These patents are of insignificant value as anticipatory references, or as suggesting the adaptability of the material for the new occasion of its use.
It is not necessary to the patentable novelty of a device, which consists in employing a new material for an old one in constructing one of its parts, that the substitution should involve the discovery or utilization of an unknown or unexpected property of the material. This is one of the tests of patentable novelty, but it is not the only one. Whether the feature of novelty is the employment of a new material, or a change of adaptation in other respects, the inquiry always is whether what was done involved the exercise of inventive faculty as distinguished from the ordinary skill of the calling. When the substitution has accomplished a result which those skilled in the art had long and vainly sought to effect, the evidence that it involved something beyond the skill of the calling is so persuasive that it generally resolves the inquiry in favor of patentable novelty. Applying that rule to the present case, we conclude that the patent in suit, as regards the claim in controversy, is not invalid for want of patentable novelty.
A careful examination of the evidence has satisfied us that the invention of Gorton antedated the English patent to Knight. His long delay in making application for the patent creates a strong countervailing presumption, but is reasonably and adequately explained by the surrounding facts and circumstances, and, thus explained, ought not to prevail against the very convincing evidence which has been adduced by the complainants. The Knight patent is evidence that one out of a host of inventors working upon the same problem conceived the practicability of the rubber button. It is not evidence that there was no inventive thought in the conception, and as it was a publication later than the invention of Gorton it is of no value as an anticipatory reference.
Upon the evidence in the record the defense of an abandonment of his invention by Gorton does not merit serious consideration. The decree is affirined, with costs.
MacWILLIAM V. CONNECTICUT WEB CO.
(Circuit Court, S. D. New York. November 25, 1902.) 1. EQUITY_EVIDENCE-OBJECTIONS TO ADMISSIBILITY OF DOCUMENTS.
There is no objection to a court's giving a certificate that an abandoned application for a patent, or a certified copy thereof, will be admitted in evidence in a suit in equity, if such certificate is required by the patent office as a prerequisite to the production or certification of the document; it being the duty of the court, under the rule of the supreme court, to receive it in evidence and make it a part of the record notwithstanding
any objection to its relevancy, materiality, or pertinency. In Equity. On motion for a certificate as to documents in the custody of the patent office.
Walter D. Edmonds, for the motion. Herbert & Knight, opposed. LACOMBE, Circuit Judge. It is not quite clear what sort of certificate this court is asked to give. No reference is made to any statute or to any rule or regulation of the patent office requiring a certificate of court as prerequisite to the production for inspection and copy of an abandoned application. For aught that appears, the commissioner of patents has full power in the premises. From the argument in the briefs of counsel for the respective parties, it would seem that the principal matter of dispute between them is as to whether the application is relevant and material to the issues in this suit. The supreme court, however, in Blease v. Garlington, 92 U. S. 1, 23 L. Ed. 521, has indicated that, in the course of taking proofs in equity, all such questions should be reserved for final hearing, and the testimony preserved for the appellate court should the decision at final hearing be adverse to its admission. This court is prepared to sign a certificate to the effect that, in conformity to the rulings of the United States supreme court, it would admit said abandoned application in evidence if it, or a certified copy, were offered, notwithstanding any objections to its relevancy, materiality, or pertinency.
In re GLASS,
(District Court, W. D. Tennessee. July 26, 1902.) 1. BANKRUPTCY-SPECIFICATIONS-OPPOSING DISCHARGE-AMENDMENT.
Specifications opposing a bankrupt's discharge, though entirely de
fective, may be amended at the discretion of the court. & SAME-SIGNATURE.
Specifications opposing a petition for a bankrupt's discharge (form No. 58) must be signed and sworn to by the opposing creditor, and, if there be more than one creditor, by each opposing creditor, and not alone by
the attorney or counsel. & SAME-VERIFICATION.
The verification to specifications opposing a petition for a bankrupt's discharge must be in the form prescribed by the creditor's petition (form No. 3), to wit, that the creditor hereby makes solemn oath that the
1 1. See Bankruptcy, vol. 6, Cent. Dig. $ 716.
statement contained in the foregoing specification of grounds of opposi
tion to the bankrupt's discharge subscribed by him (or them) are true. 4. SAME-SIGNATURE BY CORPORATION.
Where the creditor opposing a bankrupt's discharge is a corporation, the signature to the specifications must be in the form prescribed by the supreme court under Bankr. Act 1867 for the petition of a corporation (form No. 3), to wit: "In witness whereof I have hereunto subscribed my name as president (or other officer or agent) of said corporation and affixed the seal of the same this day of
;"—followed by the signature of the officer and seal of the corporation. 5. SAME-SIGNATURE AND VERIFICATION BY PARTNERSHIP.
Where the opposing creditor to a bankrupt's discharge is a partnership, the verification and signature of the firm to the specifications may be
made by one of the partners authorized to sign the firm name, 6. SAME-VERIFICATION BY ATTORNEYS OR AGENTS.
Specifications in opposition to a bankrupt's discharge cannot be verified by the oaths of attorneys or solicitors or other agents, in the absence of a previous order of court allowing the same, in which event both the order and the oath should state the reasons therefor.
In Bankruptcy. On demurrer to specifications opposing bankrupt's discharge.
Frank P. Smith, for bankrupt.
HAMMOND, J. It is admitted by counsel that the specifications are not in proper form, and leave is asked to amend them. Objection is made that there is nothing by which to amend, the specifications being so entirely defective. There was an old doctrine that amendments could be made only where a good cause of action was defectively stated; but in modern practice, and especially under our liberal federal statutes of amendment, an entirely new cause of action may be stated in a pleading by way of amendment; and there are some very radical and startling rulings to that effect. Some decisions are against this, particularly where the bar of the statute of limitations is involved, or some like effect is the result of allowing the substitution of a new ground of action. Still the modern rule is that of great liberality in quite all cases, and it seems to me that, if the bankrupt has been guilty of any of the offenses for which his discharge may be opposed, the most liberal rule of amendment of the specifications should prevail, and that he should not be allowed to escape by the failure of the creditors to properly plead the grounds of opposition. The ordinary discretion of the court will protect the bankrupt against any injustice in the application of this liberality of amendment. His privilege of discharge from his debts is purely a matter of statutory grace, and not of any common right at all; and he should expect always to be denied a discharge unless he complies strictly with the conditions entitling him to that indulgence by refraining from any wrongdoing denounced by the statute as a bar to a discharge.
Here the specifications indicate that, if the facts be properly pleaded, there may be a bar. Not certainly so, and it may in the end turn out to be only a fraud upon creditors not made a ground for opposing the discharge; but it may be otherwise, and the averments Fed. 550.
are not so entirely destitute of all merit as to invoke even the old rule of amendment relied on by the bankrupt's counsel. Rev. St. $ 954; 1 Enc. Pl. & Prac. 462, 472; Tilton v. Cofield, 93 U. S. 163, 166, 23 L. Ed. 858; Tiernan v. Woodruff, 5 McLean, 135, Fed. Cas. No. 14,027; Bank v. Sherman, 101 U. S. 403, 405, 406, 25 L. Ed. 866; Hunter v. U. S., 5 Pet. 173, 182, 8 L. Ed. 86; Eberly v. Moore, 24 How. 147, 158, 16 L. Ed. 612; Richmond v. Irons, 121 U. S. 27, 43, 47, 7 Sup. Ct. 788, 30 L. Ed. 864; Graffam v. Burgess, 117 U. S. 180, 195, 6 Sup. Ct. 686, 29 L. Ed. 839; Shields v. Barrow, 17 How. 130, 144, 145, 15 L. Ed. 158; Smith v. Woolfolk, 115 U. S. 143, 148, 5 Sup. Ct. 1177, 29 L. Ed. 357; Hardin v. Boyd, 113 U. S. 756, 764, 5 Sup. Ct. 771, 28 L. Ed. 1141. Under the act of 1867 such amendments of the specifications were allowed with liberality. Bump, Bankr. (9th Ed.) 281, 719; In re Hill, 2 Ben. 136, 1 N. B. R. 275, Fed. Cas. No. 6,482; In re Rathbone, 2 Ben. 138, I N. B. R. 294, Fed. Cas. No. 11,580 (where Judge Blatchford allowed them and enlarged the time on the distinct ground that the practice had not become settled); In re Burk, Deady, 425, 3 N. B. R. 296, Fed. Cas. No. 2,156; In re Long, 3 N. B. R. 66, Fed. Cas. No. 8,477; In re Bellis, 4 Ben. 53, 3 N. B. R. 496, Fed. Cas. No. 1,275. But not after issue joined, proofs closed, and case argued. In re Smith (D. C.) 16 Fed. 465, 467; In re Graves (D. C.) 24
The discretion of the court is always available to prevent injustice to the bankrupt in the matter of these amendments. Ubique supra. The practice as to amendments under the existing bankruptcy statute of 1898 is just as liberal as under the former act and in other courts. They were allowed by this court in the first case coming before it. In re Hirsch (D. C.) 96 Fed. 468, 471, 2 Am. Bankr. R. 715, 718; In re Holman (D. C.) 92 Fed. 512, i Am. Bankr. R. 600, 605; In re Hixon (D. C.) 93 Fed. 440, 1 Am. Bankr. R. 610; In re Morgan (D. C.) 101 Fed. 982, 4 Am. Bankr. R. 402; In re Frice (D. C.) 96 Fed. 611, 2 Am. Bankr. R. 674; In re Kaiser (D. C.) 99 Fed. 689, 3 Am. Bankr. R. 767; In re Mudd (D. C.) 105 Fed. 348, 5 Am. Bankr. R. 242 (in which Judge Phillips denied an application to amend the specifications, and states the considerations that should induce such a denial). The doctrine of amendments in the admiralty courts is just as broad, and liberality in their allowance is commended by the highest authority. The Zodiac (D. C.) 5 Fed. 220, 222; I Enc. Pl. & Prac. 256. And even in criminal cases, where the statutes of amendment have the least effect, the practice is not destitute of all power of amendment. Ex parte Bain, 121 U. S. 1, 7 Sup. Ct. 781, 30 L. Ed. 849; i Enc. Pl. & Prac. 688. Thus we can see that to every court the statute of amendments (Rev. St. $ 954) grants the fullest power and discretion. The bankruptcy statute being very liberal to the debtor in the matter of his discharge, confining the grounds of opposition to conduct on his part of a criminal nature or à quasi criminal carelessness and negligence, he should not be allowed to receive the acquittance of the statute because of any embarrassment or obstructions encountered by his creditors in presenting their opposition to his application for it. Only negligence of a culpable character on their part should debar them from the benefit of Rev. St. $ 954, as to amendment of their specifications; and these,