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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:

A

Jan. 29, '91. In an excelsior machine a framework, driving

mechanism carried thereon, a reciprocating fraine carrying
knives connected to such driving mechanism, a pair of
corrugated rotte a hold the block of wood in place.

the lower roll jourDard in boxings npon the uprights,
Dec. 15, '90. movable vertically uponu precessed bed-plate bolted to the frame
the upper journalled on a uvelle cities plate, and

A
Nov. 28. '90.

to such sliding plate
aprings connected therewith wbone tenslow trolds the
upper roll in contact with the wood, all combined sube
stantially as shown and described.

1. In an excelsior machine a framework, driving
mechanism carried therein, reciprocating knives connected
to the driving mechanism, a pair of corrugated rolls for
holding the block of wood, the upper connected to a
sliding plate, a pair of springs connected to such

sliding plate for holding the upper roll in contact with
Dec. 16. 90.

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

A
sliding plate for lifting the same, all combined sub.

stantially as sbown and described.
Jan. 29, '91. Ag an escelsior machine a framework, driving

mechanismy carried thereon, reciprocating knives connected
to the drithin mechanism, a pair of corrugated rolls for
receiving and holding the block of wood to be operated
upon, the lower on your alled in boxings upon the up-

rights of the frame, then upper one jourpalled in boxings
Dec. 15. '90. Tinding upon a recenicah bed-plate bolted to the frame

upon a sliding plate, springs conected to such sliding
plate for holding the upper roll in contact with the
wood, pinions connected to the shaft of wetu roll, a
vertical shaft connected to and revolvable by be main
shaft provided with worms engaging with gears Ibo
corrugated rolls and so disposed that the upper and
lower rolls revolve in opposite directions for holding
the block of wood and feeding it to the knives, all com.
bined substantially as shown and described.

2. In an excelsior machine a framework, driving
mechanism carried in bearings thereon, a vertically.
reciprocating slide frane carrying scoring and shaving
knives connected to such driving mecbanism, * pair of
corrugated rolls for gripping and feeding the wood to tbo
knives, the lower one journalled in boxings on the frame.
work, the upper one jouroalled in bearings on a sliding

plate, springs connected to such plate for bolding the
Dec. 15.-90. upper roll in contact with the wood, such

o central point rerested and recessed
Nov. 28, '90. sliding plate moving vertically in bed plates let iuto

A

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.

[graphic]

In an excelsior machine the sliding plate
(5) having a rack-bar at its upper end and a slot (11)

at its lower end, secured to the upright (f) of the frame
Nooz 28,990. by to counterpunk belt for had a lower bolt 110%sach

plate sliding upon a bed plate (8) having its central
part set back and lugs (1) upon its upper and lower
ends, and having a boss (28), in combination with springs
(2) connected to the sliding plate, substantially as

shows and described.
Jan 23, 91,5 h In an excelsior mathine a pair of corrugated

rolls ton gripping a block of wood, the lower one
jourpalled to bearings on the framework, the upper one

Journalled in bearings on a plate sliding vertically
Dec. 15.90.a recessed bed-plate bolted to

upon the framework, in combination with springe connected.

A
to such slide for holding the upper roll against the
block of wood, the shafts of such robe provided with
pinions which engage with worms upon vertical rod
driven from the main shaft, whereby the upper and lower
rolls are revolvable in opposite direotions for gripping
the wood and feeding it to the knives, all combined
substantially as shown and described.

5. &In an excelsior machine a framework, plates,
connected to the sides thereof, auxilliary plates ad.
justably connected to such side plates, wooden backings,
connected to lugs, one to the adjustable plate and the
other to the stationary plate, and set with the grain
of the wood vertically and at sach a distance as to
permit the passage of the knives between such wooden
backings, all combined substantially as shown and
described.

6. In an excelsior machine a framework, driving,
mechanism carried thereon, a vertically reciprocating
slide frame carrying scoring and shaving knives con
Dected to such driving mechanism, such slide frame pro
vided with wooden backings, the grain of the wood being
vertical on either side, metal plates connected to the
sides of the framework, and means for adjusting the sapie
to compensate for the wear of the parts during the
operation of the machine, all combined substantially as
shows and described.

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.

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