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We might well take judicial notice of the fact, even if it was not abundantly proven by the testimony, that the art of making sewer or drain pipe, both rectangular and cylindrical in form, out of clay, is very old. It is a part of our common knowledge that sewer and drain pipes have been manufactured out of clay for a long period practically by the same process which the patentee employs in making his so-called "terra-cotta wire conduit-pipe.” The evidence also discloses to our entire satisfaction that at the date of the Lynch patent "a rectangular terra-cotta pipe," having the bore divided into ducts by partitions, was not a new article of manufacture. The several hollow blocks of terracotta which were produced on the hearing, all of which antedate the patent in suit-namely, Exhibits C, D, K, N, R, and s—have all of the essential and characteristic features of the alleged new terra-cotta wire conduit-pipe described in the patent. They are rectangular in form. The interior of each is divided into two or more compartments or ducts, and they might severally be laid in sections, so as to form a continuous pipe or conduit for carrying a wire or a cable composed of wires.
The several exhibits above referred to might be appropriately termed terra-cotta conduit-pipes, as well as hollow blocks of terra-cotta. It is true that these several exhibits were intended to be used as building material rather than as a conduit for carrying wires; but this fact is quite immaterial. If the alleged new article of manufacture was in fact an old article at the date of the patent, as we think it was, in view of the aforesaid exhibits, then it goes without saying that the patentee was not entitled to a patent merely because he suggested the idea of devoting it to a new use. Neither the number of the ducts into which the bore is divided nor the length of the pipe is a material feature of the invention. It is obvious, therefore, that he did not suggest any changes either in the form or the structure of the old article which were necessary to adapt it to the new use, and according to well-established principles he is not entitled to a patent merely for suggesting the application of an old article or device to a new use. (Brown v. Piper, C. D., 1876, 464; 10 O. G., 417; 91 U. 8., 37, 41; Roberts v. Ryer, C. D., 1876, 439; 10 O. G., 201; Id., 150, 157; Knapp v. Mor88, C.D., 1893, 651; 65 0.G., 1593; 150 U.S., 221, 228; 14 Sup. Ct., 81; Aron v. Railway Co., C.D., 1889, 650; 49 O. G., 1365; 132 U. S.; 84, 89; 10 Sup. Ct., 24; Ansonia Brass and Copper Co. v. Electrical Supply Co., C, D., 1892, 313; 58 0. G., 1692; 144 U.S., 11, 17; 12 Sup. Ct., 601.)
Without pursuing the subject at any greater length, it is sufficient to say that we are clearly of the opinion that the patent in suit is void for the reasons which we have indicated.
The decree of the Circuit Court is therefore affirmed.
(U. S. Circuit Court-District of Indiana.]
JOHNSON V. OLSEN.
Decided May 29, 1894.
68 0. G., 1146.
1. JOHNSON-EXCELSIOR-MACHINE-LACK OF PATENTABILITY-VOID.
Letters Patent to Jesse B. Johnson, No. 452,553, issued May 19, 1891, for an improvement in excelsior-machines, examined and Held to be void for want of
patentable novelty and invention. 2. SAME-SAME-LUGS.
The use of lugs to prevent lateral movement being well known, their employment in an excelsior-machine to provent lateral movement of the sliding plate
involves no invention. 3. SAME_WOODEN BEARINGS.
Wooden bearings in excelsior-machines being old, there is no patentability in a wooden bearing in such machine placed therein so that the grain of the wood will run vertically with the line of motion of the journal instead of at right
angles thereto. 4. SAME-SAME-LIMITATION OF CLAIM-REJECTION AND ACQUIESCENCE.
Tho rule that a patentee is estopped from claiming a construction of the claims equivalent to those canceled applies when the canceled claim is narrower, as well as when it is broader than those rejected. (Morgan Envelope Co. V. Albany Perforated Wrapping Paper Co., ante, 238; 67 0. G., 271.)
This was a suit by Jesse B. Johnson against Olaf R. Olsen for infringement of a patent for improvements in excelsior-machines.
Mr. V. H. Lockwood for the complainant.
Mr. C. Bradford for the defendant. BAKER, J.:
This is a suit in equity for an injunction and for the recovery of damages for the infringement of Letters Patent of the United States No. 452,553, issued May 19, 1891, to the coinplainant, on improvements in excelsior-machines. The defendant has interposed as grounds of defense: license, invention of the machine by defendant, abandonment, two years' prior use, that the claims are for aggregations, lack of novelty, and lack of invention. The defendant's contention-and the only one which the court (leems it necessary to pass upon-is that the complainant's patent is void for lack of novelty and lack of invention. The object of the invention is to enable upright excelsior-machines to cut a larger quantity of long, unbroken, hair-like fibers from wood than prior machines had been able to cut and to produce a machine which could be operated more cheaply, while it would last longer and need less repairs. The claims as finally allowed, and the claims originally made and rejected, and afterward canceled by complainant, and also the various amendments which appear in the record of the application on which the patent was granted are as follows:
Jan. 29, '91. In an excelsior machine a framework, driving
mechanism carried thereon, a reciprocating fraine carrying
the lower roll jourDard in boxings npon the uprights,
to such sliding plate
1. In an excelsior machine a framework, driving
sliding plate for holding the upper roll in contact with
recessed the wood, the sliding plate moving vertically upon a bed
plate having lugs to prevent any lateral morement of the Nov. 28.'90. and his teatral part tused as shown
slide and crank and gear mechanism connected to such
stantially as sbown and described.
mechanismy carried thereon, reciprocating knives connected
rights of the frame, then upper one jourpalled in boxings
upon a sliding plate, springs conected to such sliding
2. In an excelsior machine a framework, driving
plate, springs connected to such plate for bolding the
o central point rerested and recessed
and the framework provided with lugs for preventing the lateral movement of the slide, all combined substantially
as shown and described. Erase and J. Tanescelsior machine the bed plate (8),
insert A. Nov. 28, '90. the central portion set in and its and provided with
lugs, substantially as and for the purpose described
3. Yn In an excelsior machine the bed plate (8). its central portion recessed and let into the upright of the frame, its ends provided with luge, in combination with a sliding plate (5) and an upper corrugated roll journalled tberein, substantially as abown and described.
In an excelsior machine the sliding plate
at its lower end, secured to the upright (f) of the frame
plate sliding upon a bed plate (8) having its central
shows and described.
rolls ton gripping a block of wood, the lower one
Journalled in bearings on a plate sliding vertically
upon the framework, in combination with springe connected.
5. &In an excelsior machine a framework, plates,
6. In an excelsior machine a framework, driving,
An analysis and comparison of the rejected and canceled claim 1 of the application and the original claim 2 of the application, which became claim 1 of the patent, will show that the only material difference between them is in the addition of lugs to the bed-plate and the crank and gear mechanism for operating the sliding plate in the claim allowed. Claim 1 of the application was rejected by the Examiner on the distinct ground that it had been anticipated in former patentsAmerican, English, and German. This decision of the Examiner was acquiesced in by the complainant, and the rejected claim was canceled. The patentee having once presented his claim in that form, and the Patent Office having rejected it, and he having acquiesced in that rejection, is, under the repeated decisions of the Supreme Court, now estopped to claim the benefit of his rejected claim, or such a construction of his present claims as would be equivalent thereto. (Leggett v. Avery, C. D., 1880, 283; 17 O. G., 445; 101 U. S., 256; Shepard v. Oar. rigan, C. D., 1886, 116; 34 O. G., 1157; 116 U. S., 593; 6 Sup. Ct., 493; Crawford v. Heysinger, C. D., 1888, 185; 42 O. G., 197; 123 U. 8., 589; 8 Sap. Ct., 399; Union Metallic Cartridge Co. v. U. 8. Cartridge Co., O. D., 1885, 157; 30 O. G., 771; 112 U.S., 624; 5 Sup. Ct., 475.)
It is true that these were cases where the original claim was broader than the one allowed; but the principle is the same if the rejected claim is narrower. (Morgan Envelope Co. v. Albany Perforated Wrapping Paper Co., ante, 238; 67 0. G., 271; 14 Sup. Ct., 627.) Why the claims 1 to 4, inclusive, of the present patent were allowed after the rejection of claims 1, 3, 5, and 7 of the original application does not appear. The objections made to the claims as originally presented seem to be equally applicable to those allowed. The crank and gear mechanism for operating the sliding plate are old and familiar, and no novelty is shown in their combination or use. The lugs to prevent lateral movement of the sliding plate are made an element in the first four claims of the patent, and it would seem that they constituted the feature which was regarded by the Examiner as distinguishing these four claims from the prior art. The use of lugs to prevent lateral movement has been long known and practiced, and, even if this were not so, their application by the patentee as shown and described in bis patent would not constitute invention. If lugs had not been previously used in excelsior-machines, their use would have been readily suggested to a skillful mechanic familiar with such machines.
If the springs connected with the sliding plate for holding the upper roll in contact with the wood were not the mechanical equivalent of the weights formerly in use to accomplish the same purpose, and I am inclined to think they are still the springs were an essential part of the rejected claims, and, having acquiesced in their rejection, the com. plainant is now estopped to ask for such a construction of his present claims as would give him the benefit of his rejected claims.
Claims 5 and 6 are in all their essential features old and well known, and conceded to be, except that the wooden linings in the slides are arranged with the grain of the wood running vertically with the line of motion. Wooden bearings, wooden linings for bearings, and wooden slides for bearings are all old and well-known devices. Wooden bear. ings for excelsior-machines were known and in use prior to complainant's alleged invention, differing from it in no important particular except that the grain of the wood was placed at right angles with the line of motion. This change, in my opinion, does not constitute inven. tion.
In view of what has already been said I do not deem it necessary to express any opinion upon the other grounds of defense.
The bill will be dismissed for want of equity, at complainant's cost.