Opinion of the Court.

The difference insisted upon in support of the patent, that the looser lacing of the skein across the band to preserve its form and keep it in condition suitable for dyeing the thread, is clearly a matter of mechanical skill which does not involve invention. It is said by one of complainant's witnesses that such loose lacing, as is insisted upon as a requisite for effective dyeing, is neither shown in the drawings, nor in the specification nor claims, but that it should be read into the patent, because " a man that understands his business must know that it must be laced loosely or that the silk would be spoiled in dyeing," and that, if this were not noticed or not known, it would be taught him by the first experiment. It is perfectly evident that it would readily occur to any one skilled in the art that, as the skeins are increased in size or width of band, the necessity for lacing in order to preserve the form and keep the skein in a condition for dyeing would be correspondingly increased, and that the looser the lacing the more perfect would be the dyeing. Such changes in degree, merely, would not constitute an invention. Estey v. Burdett, 109 U. S. 633.

It is settled that distinct and formal claims are necessary to ascertain the scope of the invention. Merrill v. Yeomans, 94 U. S. 568; Western Electric Co. v. Ansonia Brass & Copper Co., 114 U. S. 447.

If, therefore, the elements of "boiling off," or ungumming the silk, or the dyeing thereof, and of improving the winding facility, were patentable, in view of the prior skeins, they should have been covered by the claims of the patent. James v. Campbell, 104 U. S. 356, and authorities cited above.

The disclaimer takes away nothing from the claims except what is not in condition for dyeing, and no silk thread is in condition for dyeing by simply being cross-reeled and laced. The patent, notwithstanding the disclaimer, is still for an old device of a cross-reeled and laced skein for whatever purpose it may be designed, and is void for want of patentable novelty. The counsel for the appellant, while claiming the benefit of his disclaimer, and insisting that Grant's skein is distinguishable from the earlier anticipating skeins, for the reason that the latter were coated with gum and were not loosely laced, states that

Opinion of the Court.

"Grant's specification addresses its direction wholly to the skeinmaker, never to the dyer. It says: 'My invention relates to a novel manner of winding silk or other thread upon the reels in a reeling machine preparatory to its being dyed.' 'My improvement consists in winding the silk or other thread upon the reel in the form of a wide band.' 'When the required quantity has been wound, I lace the skein or band so as to divide it into a number of parts and hold it in its flat or band-like condition.' Grant had a clear idea of the real nub of his invention. He says: This lacing constitutes the chief point of my invention, and is what preserves the skein in its shape and prevents its becoming entangled in the process of dyeing.' Grant gives no instruction to the dyer or the winder, for the simple reason that in dyeing his skein and afterwards winding it upon bobbins the procedure is identical with the procedure of the old art. All that is novel is found in the skein, and that answers the question, Is Grant's improvement a skein or a process? That answer is: Grant's improvement is a new skein." So that the whole invention must be tested by the simple question whether the looser lacing for the purpose of dyeing, over the more tightly laced skeins for the purpose of preserving their form and winding qualities, while being "boiled off" or ungummed, constitutes a patentable invention. Considering the purpose for which it is now claimed, it cannot be anything more than a mere application of an old process to a new use, which does not rise to the dignity of invention, the looser lacing for the purposes of dyeing being perfectly apparent to any one skilled in the art of silk manufacture, or in the preparation of thread for that purpose. But while it is thus claimed that the Grant specification addresses itself to the direction wholly of the skein-maker, and never to the dyer, the disclaimer undertakes to confine such direction solely to the dyer, rather than to the skein-maker, as the effect of the disclaimer is intended to exclude skeins" which, by reason of being coated with gum or by reason of the manner of its lacing or for any other reason, is not in condition for dyeing for ordinary manufacturing purposes." So that, under the operation of the disclaimer,

Syllabus.

the specification and claims would have to be read as addressed to the dyer rather than to the skein-maker. This would involve a complete change of what was covered by the specification and claims, which must be held controlling.

The most that can be said of this Grant patent is that it is a discovery of a new use for an old device which does not involve patentability. However useful the nature of the new use to which the skein is sought to be confined by the disclaimer, compared with the former uses to which the old skein was applied at the date of the improvement, it forms only an analogous or double use, or one so cognate. and similar to the uses and purposes of the former cross-reeled and laced skein as not to involve anything more than mechanical skill, and does not constitute invention, as is well settled by authorities already referred to.

The advantages claimed for it, and which it no doubt possesses to a considerable degree, cannot be held to change this result, it being well settled that utility cannot control the language of the statute, which limits the benefit of the patent laws to things which are new as well as useful. The fact that the patented article has gone into general use is evidence of its utility, but not conclusive of that and still less of its patentable novelty. McClain v. Ortmayer, 141 U. S. 419, 425, and authorities there cited.

Our conclusion is that there was no error in the decree of the court below, and the same is accordingly

Affirmed.

KREMENTZ v. THE S. COTTLE COMPANY.

APPEAL FROM THE CIRCUIT COURT OF THE UNITED STATES FOR THE SOUTHERN DISTRICT OF NEW YORK.

No. 161. Argued and submitted March 23, 1893. Decided April 10, 1893.

Letters patent No. 298,303, issued May 6, 1884, to George Krementz for a new and improved collar button, protect a patentable invention, which was not anticipated by the invention described in letters patent No. 171,882

Opinion of the Court.

issued to Robert Stokes January 4, 1876, nor by the invention described in letters patent No. 177,253, issued May 9, 1876, to John Keats. When the other facts in the case leave the question of invention in doubt, the fact that the device has gone into general use, and has displaced other devices which had previously been employed for analogous uses, is sufficient to turn the scale in favor of invention.

IN EQUITY to restrain the infringement of letters patent. Decree dismissing the bill, from which plaintiff appealed. The case is stated in the opinion.

Mr. Louis C. Raegener and Mr. Charles E. Mitchell for appellant.

Mr. Edwin H. Brown, for appellee, submitted on his brief. MR. JUSTICE SHIRAS delivered the opinion of the court.

This is an appeal from a decree of the Circuit Court of the United States for the Southern District of New York, dismissing a bill filed to restrain the infringement of letters patent of the United States, No. 298,303, granted May 6, 1884, to George Krementz, of Newark, New Jersey, for a new and improved collar button.

Complainant's evidence, tending to show that the collar button made by the defendants was within the claim of the patent in suit, and constituted an infringement, was not contradicted or disputed, but it was held by the court below that the patent was invalid for want of novelty. 39 Fed. Rep. 323.

In his specification the patentee states that his invention consists in a collar button having a hollow head and stem, the said button being formed and shaped out of a single continuous plate of sheet metal. The method or process of making the button is thus described:

"By means of suitable dies a metal plate is pressed into the shape shown in Figure 2- that is, the plate is provided with a hollow stem, B, the sides of which are pressed together at about the middle, in some suitable manner, to form a head, C, at the end of the stem, as in Figure 3; then the head is pressed toward the base plate or back, D, whereby the head will be upset, and will have the shape shown in Figures 4 and 5. By

Opinion of the Court.

this operation the head is hardened. The base plate or back, D, is then rounded out and finished, and its edge is turned over, as shown in Figure 5."

In the accompanying diagram Figure 1 is a side view of the completed button. Figures 2, 3, 4 and 5 are cross-sectional elevations of the same in the different stages of the operation of making it.

The advantages attributed to the invention are the doing away, with soldered joints, the lightness of the hollow stemn and head as compared with buttons having solid stems and head, and the cheapness arising from the use of less material, with equal or superior strength, which, when gold is used, is quite appreciable.

The learned judge in the court below contented himself with comparing Krementz's invention with two earlier patents, one to Stokes, No. 171,882, granted January 4, 1876, and one to Keats, No. 177,253, granted May 9, 1876, in which patents, he thinks, are to be found the special features claimed by Krementz.