The validity of the first four claims of the Starks and Felland patent is not disputed and their infringement is admitted. As to the other claims the defenses are that they are void for lack of patentability and are not infringed. The contention regarding the fifth claim of No. 423,723 is that, broadly construed, it is anticipated, and, narrowly construed, it is not infringed.

The claim is for the following combination in a transplanting-machine: a frame, rearwardly-extending pivoted parallel supporting-bars, a plow secured between said bars, angle-irons, and a compressor-plate secured to said angle-irons and extending horizontally from the plow.

The advantages which the patentee points out for this combination are mainly due to the compressor-plate. This is secured to the landside of the plow and leaves a smooth perpendicular wall of earth, which stands firmly while the plants are being placed in position.

Two patents are cited against this claim. They are No. 115,688, granted to Bowman and Selby, and No. 194,745, granted to Vivion, for improvements in planters. The principal criticism urged against these patents is that they are for planters and not for transplanters. It is thought that this difference is not material. The law does not permit a party to obtain a patent for an old corn-planter because he uses it for transplanting tobacco-plants, and yet this could be done if complainants' contention is carried to its logical conclusion.

The patents referred to do not anticipate the claim in question; but they require a narrow construction. In view, therefore, of the prior art and of the limitations found in the description and in the claim itself, it is thought that it is not infringed.

I am unable to find that this question is discussed by the experts; but from such light as can be obtained from the record and the obscure drawings of the patent I fail to find in the infringing machine the precise elements of the claim. The defendants' plow is not secured between two parallel support-bars, and it is not provided with a moldboard and compressor-plate operating in the manner and performing the functions attributed to these parts in the Bemis patent. In other words, if the defendants' machine were found in the prior art it would not anticipate this claim. As many reasons could be urged against it as an anticipation as are urged against the Bowman structure.

The defendants urge substantially the same arguments against claims 3, 4, and 6 of No. 423,724 and present the same references. Concededly these claims relate to minor matters of construction. Although to my mind it is doubtful whether they disclose invention, they may be sustained if confined strictly to the mechanism described and shown; but so construed they are not infringed.

I am not at all sure that the lifting mechanism shown in the fifth claim of No. 486,200, by means of which the beam and furrow-opener are raised and lowered, discloses patentable novelty; but, confining the claim strictly to the parts described, I am inclined to think that it cau

be upheld. The apparatus is most conveniently located with reference to the seats of the operators and is admirably designed for prompt manipulation by them.

As to the remaining claims, they are not anticipated, and the combinations covered thereby perform some functions which are not shown by any of the references introduced by the defendants. It is not necessary to broaden these claims, as the defendants concededly use the precise combination shown. When limited to these elements, the claims are valid and are infringed.

The complainants are entitled to a decree for an injunction and an accounting upon the first eight claims of the Starks and Felland patent, but without costs.

[U. S. Circuit Court-Eastern District of New York.]

APPLETON et al. v. ECAUBERT. ECAUBERT v. APPLETON et al. Decided April 19, 1894.

68 O. G., 1025.

1. HOFMANN-Ornamenting WATCHCASE CENTERS-INFRINGEMENT-VALID. Letters Patent No. 435,835, dated September 2, 1890, to Adolph W. Hofmann, for improved method of ornamenting watchcase-centers and other like articles, examined in view of patent to Frederic Ecaubert, No. 434,539, dated August 19, 1890, and Held to be valid.

2. SAME-SAME-WEIGHT OF DECISION OF PATENT OFFICE IN INTERFERENCE PROCEEDINGS.

A Commissioner's decision is entitled to respect and consideration in every controversy, and where the controversy was properly disposed of in the Patent Office the court will not set aside the judgment of the Commissioner where nothing has been presented to it which will justify such action.

FINAL hearing in equity on bill and cross-bill.

Mr. M. B. Philipp and Mr. Melville Church for Appleton et al.
Mr. Francis Forbes for Ecaubert.

STATEMENT OF THE CASE.

On the 31st day of December, 1887, Adolph W. Hofmann, the assignor of Appleton et al., filed in the United States Patent Office an application for patent for improved method of ornamenting watchcase-centers and other like articles, which application was on the 11th day of January, 1889, put in interference with an application of Frederic Ecaubert, filed February 13, 1888, for a similar invention. Testimony was taken at large in the interference, and on the 2d day of August, 1893, final judgment of priority was rendered in favor of Hofmann by the Commissioner of Patents.

While the interference was still pending-undetermined-Ecaubert filed a second application covering the subject-matter at issue in the

interference, which application was allowed to go to patent by the Examiner after the decision in the interference case, and resulted in Letters Patent No. 434,539, dated August 19, 1890.

On September 2, 1890, Patent No. 435,835 issued upon the Hofmann application, and on the 10th of September following Appleton et al., as owners of the Hofmann patent, filed a bill in the Eastern District of New York under section 4918, Revised Statutes, against Ecaubert, as the owner of the Ecaubert patent, praying the cancellation of the latter patent. Ecaubert answered the bill and filed a cross-bill, praying in turn the cancellation of the Hofmann patent.

Subsequently Ecaubert brought suit in the Southern District of New York against Appleton et al. for infringement of his patent.

COXE, J.:

The question which is presented by this controversy is whether Frederic Ecaubert or Adolph W. Hofmann was the first to invent and perfect a method of ornamenting the peripheries of watchcase-centers by holding the surface of an embossing-die in contact with the surface to be ornamented, imparting a reciprocating motion to one of said surfaces, and at the same time moving laterally the point of contact of the die with the surface being ornamented.

The question was argued upon substantially the same facts before Commissioner Mitchell on an appeal from the Examiners-in-Chief in interference proceedings, and a decision was reached in favor of Hofmann. That decision is reported in C. D., 1890, 143; 52 OFFICIAL GAZETTE, 2107, (issue of September 30, 1890.) It contains a statement of the salient points of the testimony, and is such a clear and full exposition of the facts and the law that additional statement is unnecessary. I do not think this decision is res judicata, but it is certainly entitled to great weight. (Wire Co. v. Stephenson, 11 Fed. Rep., 155; Shuter v. Davis, C. D., 1883, 330; 24 O. G., 303; 16 Id., 564; Swift v. Jenks, C. D., 1884, 208; 27 O. G., 621; 19 Id., 641; Box Co. v. Rogers, 32 Id., 695; Smith v. Halkyard, C. D., 1883, 264; 23 O. G., 1833; 16 Fed. Rep., 414; Butterworth v. U. S., C. D., 1884, 429; 29 O. G., 615; 112 U. S., 50.)

The Commissioner finds that if Ecaubert conceived of the invention prior to December, 1887, he certainly did not reduce it to practice; that at the time Hofmann made his operative machine the whole matter was in a nebulous and experimental state so far as Ecaubert was concerned. I see no reason to disagree with these conclusions. Though a Commissioner's decision is entitled to respect and consideration in every controversy, particularly is this so when, as in the present cause, it comes from a lawyer of conceded ability, fairness, and diligence. After giving considerable time to the consideration of the questions involved, I cannot resist the conclusion that the controversy. was properly disposed of in the Patent Office, and that nothing has been presented since which will justify the court in setting aside the judgment then pronounced.

10693 PAT- -29

The same argument which convinced the Supreme Court in the telephone cases seems equally persuasive here. Can it be that Ecaubert, familiar with patents, as he undoubtedly was, if he had made an inven. tion of conceded importance in 1879 or in 1885, would have remained inactive and taken no steps to secure the fruits of his genius for eight or even for two years! His excuses for this supineness are wholly inadequate, especially in view of the fact that during this period he took out several patents for comparatively trivial improvements in the same art; but if it be conceded that the idea of the invention was clearly defined in his own mind, he certainly failed to embody it in a perfected machine. Hofmann was the first to do this. He made a simple but successful machine, capable of practical use, and used almost immediately in ornamenting centers for business purposes. With this issue of priority determined in favor of Hofmann, there is nothing patentable left in the Ecaubert patent.

It follows that the complainants are entitled to the relief demanded in the bill.

COXE, J.:

[U. 8. Circuit Court-Southern District of New York.]

ECAUBERT v. APPLETON et al.

The foregoing considerations dispose of this cause also, which is an ordinary action of infringement.

The bill is dismissed.

NOTE.-As these causes have been decided upon the broad ground that if Ecaubert conceived of the invention before December, 1887, he had not succeeded in reducing it to practice until after Hofmann had made an operative machine, it seems unnecessary to pass seriatim upon the questions raised by the motions to strike out. In view of the fact that the actions were practically tried together, all of the testimony complained of seems to have a bearing upon some of the issues presented.

I am of the opinion that the testimony should not be stricken out, and this ruling may be put in any form which counsel for Ecaubert may suggest to enable him to present the questions on appeal.

[U.S. Circuit Court of Appeals-Eighth Circuit.] BROWNING v. COLORADO TELEPHONE COMPANY.

Decided May 21, 1894.

68 O. G., 1145.

1. LYNCH-ELECTRIC-WIRE CONDUIT-VOID-WANT OF NOVELTY.

Letters Patent No. 396,407, to John Lynch, issued Jannary 22, 1889, for electricwire conduit, examined and Held to be void for want of patentable novelty. 2. SAME-SAME.

A rectangular terra-cotta conduit-pipe having partitions made in one integral piece by forcing the material, while plastic, through a die, and burning it, does not distinguish it as a new article, the making of sewer-pipe of clay by the same process being old, and hollow rectangular blocks of terra-cotta divided into ducts by partitions being old, although used as building material rather than as conduits for wire.

APPEAL from the Circuit Court of the United States for the District of Colorado.

Mr. James M. Lewis and Mr. Chester H. Krum for the appellant.

Mr. Frederick P. Fish and Mr. C. W. Waterman (Messrs. W. K. Richardson, Edward O. Wolcott, and Joel F. Vaile, on the brief) for the appellee.

Before CALDWELL and SANBORN, Circuit Judges, and THAYER, District Judge.

THAYER, J.:

This was a suit which was filed by the appellant in the Circuit Court for the District of Colorado to restrain the infringement of Letters Patent No. 396,407, issued to John Lynch, the appellant's intestate, on the 22d day of January, 1889. The defenses interposed were, in the main, anticipation, want of patentable novelty, and non-infringe ment. The Lynch patent must be classified as a patent for "a new article of manufacture." The article described in the specification and drawings is a terra-cotta pipe, rectangular in form, which is made like a piece of ordinary sewer-pipe by forcing the material out of which it is made, while in a plastic state, through a die, and subsequently burning it. It differs from a piece of ordinary sewer or drain pipe only in the respect that the interior or bore of the pipe is divided, according to the illustrations given in the drawings of the patent, into six compartments or ducts by one vertical and two horizontal partitionwalls, which extend the full length of the bore. The walls of these partitions are made somewhat thinner than the exterior wall of the pipe, and they are formed as the material is forced through the die, so as to become an integral part of the pipe. The walls of the partitions are made slightly thinner than the exterior wall, so as to secure a uniform shrinkage, when the pipe is burned, after being molded. The single claim of the patent is for

a rectangular terra-cotta wire conduit-pipe having rectangular partitions, all of uniform thickness and made in one integral piece, substantially as shown and described.