"a clamp, shaped to receive a rat-trap plate, and faced with rubber"; and (2) "means for detachably securing said clamp to said plate.' But no right is claimed, or indeed could be, to the broad idea of applying a detachable rubber foot-rest to cover over the teeth of a rat-trap pedal, and that is practically all that we have here. With all the legitimate aid that can be derived for it from the specifications, the device which is so put forward consists of nothing more than a so-called "clamp" (admittedly a misnomer), neither limited nor described (and therefore capable of indefinite extension), except as it is to be faced with rubber and shaped or fashioned to receive a rat-trap pedal plate; and means equally general and indefinite, for detachably securing the device in place. This goes far beyond anything for which the invention covered by the patent is supposed to stand, which admittedly contemplates a detachable foot-rest of very definite character and construction, secured in a specifically prescribed manner, upon which its claim to novelty unquestionably depends.

Neither is the fourth claim materially better. It differs from the other merely in the requirement that the so-called "clamp" shall be metallic and perforated, and that there shall be a rubber facing, extending through the perforations, cast upon it. These are details of construction adding something, it is true, and yet but little, the essential characteristics of the inventions, such as its upper tubular body and downwardly projecting parallel holding plates, arranged to receive and hold between them the outer edges of the rat-trap plates, being entirely omitted. Neither is this to be helped out by identifying the "clamp," which is spoken of, with the structural body, having the several parts referred to, which is described in the specifications. No such term there appears, nor is it appropriately applied to or suggested by anything which does. As already stated, it is a misnomer, if so intended, and there is nothing to warrant our carrying forward into the claim, under the guise of it, whatever may happen to be lacking there.

But no such objections can be made to the remaining claims, which are sufficiently expressive of the invention; and the only question is. whether they have been infringed. The defendant's foot-rest is manufactured according to the Wirtz (1901) patent, and is substantially, in all respects, like that of the complainant, except that it has one, instead of two, holding plates, or, at least, that there is only one which extends below the body of the foot-rest, or is made use of in securing the device in place. Its exact construction is shown by the following diagrams taken from the patent, and is the same to all appearances as if one of the complainant's holding plates had been cut off at the rubber face, a transformation which can be in fact effected in a few minutes with a file. If two parallel holding plates, of equal length below the core or tubular body, both fitting over the rat-trap edge, and conjointly employed in fastening the foot-rest to the pedal plates, are essential to the complainant's invention, the defendants do not infringe. But otherwise they do. Undoubtedly parallel holding plates in the plural-projecting downwards from the tubular core or body of the foot-rest are called for, but there is nothing

which requires that they should be of equal length, or that the foot-rest should be fastened to the pedal by means of both. So far as the former construction is concerned, whether we have regard to the terms of the claims or the function to be performed, it is sufficient if they both receive and hold between them the outer edges of the rat-trap plate, a condition which is fulfilled where one of them, as in the defendant's device, stops at the edge of and just before emerging from under the rubber face. A slot or space extending longitudinally between the two is thereby provided, which is adapted to receive and be fitted over the rat-trap plate to be covered, the holding plate which has not been shortened up in the way suggested being left to extend down a sufficient distance to be fastened to the pedal plate with a bolt. This is the whole principle of the invention, and, upon the most ordinary range of equivalents, must be regarded as structurally the same. It presents the not unusual case of a partial dispensing with one of two similar members, the function of both being equally well performed by the one which remains. Fig. 7.

Fig 2.

In

fringement is not to be escaped by any such expedient, as has been often held.

It is said, however, that the defendant's foot-rest with its single holding plate can be applied in many cases where the complainant's cannot, thus making it much more effective and serviceable; as, for instance, where the pedal plate, to which it is to be attached has an outwardly bulging, longitudinal ridge or boss, as is sometimes provided for the purpose of strengthening it; or, again, where the pedal plates are unusually long; or have simply a plain edge, without any serrations; in which case they do not fit into the slot provided for them in the complainant's device, which is compelled in consequence to ride upon them. Also that the defendant's rest can be clamped in pairs upon the opposite edges of the same pedal plate, giving a cushion tread on both; and that by dispensing with the second holding plate the rubber facing is enabled to be carried down over the edge, and into the interior of the metal shell or core, thus securing an elastic fit for the rat-trap teeth and preventing them from clicking. But assuming all this to be true, the result remains the same. These at the most constitute matters, not of distinction, but merely of advance or improvement, sufficient, it may be, to justify the patent which was granted upon them, but nevertheless leaving the one device dependent upon the other for the general underlying idea, for which it must therefore pay tribute.

Let a decree be drawn sustaining the first two claims of the patent, and finding them infringed, and referring the case to a master to take

an account.

BERNARD, COLUMBUS & SUVIO MFG. CO. v. FERNO CO. et al.
(Circuit Court, E. D. New York. February 16, 1905.)

PATENTS-INFRINGEMENT GAS-HEATER.

The Carter patent, No. 573,205, for a gas-heater, construed, and held not infringed.

In Equity. Suit for infringement of letters patent No. 573,205, for a gas-heater, granted to John W. Carter December 15, 1896. On final hearing.

Louis Hicks, for complainants.

Kenneson, Emley & Rubino (George E. Morse, of counsel), for defendants.

THOMAS, District Judge. The bill is filed to enjoin the defendants from infringing letters patent No. 573,205, issued December 15, 1896, and thereafter assigned to the complainants. The defense is noninfringement The invention relates to improvements in gasheaters. The claims are as follows:

"(1) A gas heating-stove consisting of an outer cup-shaped shell, provided with an ascending flue extending upward from its bottom, and open at both ends, and adapted to receive a gas-pipe; an inner cup-shaped shell, disposed in said outer shell, and united therewith at its upper edge, said inner shell being provided with a descending flue closed at its upper end, and surrounding said ascending flue, forming a mixing-space between them; a shallow mixingchamber being formed at the lower part of the stove between said shells, into which chamber said descending flue opens; said outer shell being provided with jet-openings.

"(2) A gas heating-stove consisting of an outer cup-shaped shell, provided with an ascending flue extending upward from its bottom and open at both ends, and adapted to receive a gas-pipe; an inner cup-shaped shell, disposed in said outer shell, and united therewith at its upper edge; said inner shell being provided with a descending flue closed at its upper end, and surrounding said ascending flue, forming a mixing-space between them, a shallow mixingchamber being formed at the lower part of the stove, between said shells, into which chamber said descending flue opens; said outer shell being provided with jet-openings, and a dome-shaped top fitting tightly over said cup-shaped shells."

The elements of claim 1 are (1) an "outer cup-shaped shell, provided with an ascending flue extending upward from its bottom, and open at both ends, and adapted to receive a gas-pipe"; (2) an "inner cup-shaped shell, disposed in said outer shell, and united therewith at its upper edge," "provided with a descending flue closed at its upper end, and surrounding said ascending flue, forming a mixingspace between them." The claim provides for two mixing-chambers one between the inner walls of the descending flue and the outer walls of the ascending flue, and one between the inner and outer shell.

The defendants' structure shows all the parts mentioned in either claim, except as follows: What has been called the "ascending flue" penetrates the outer shell to the inner surface thereof, where it is fastened. It opens into the space betwen the inner and outer shell, but does not ascend into such space. What has been called the "descending flue," in the patent, in the inner shell, is replaced by a

dome-shaped upward extension of the inner shell, slightly over an inch in diameter, and spanning the mouth of the ascending flue. The vertical height of the dome above the shell is less than one-quarter of an inch. The defendants' structure shows no descending flue surrounding the ascending flue, except in the sense that the dome of the inner shell stands above the mouth of the ascending flue. Hence there is but one mixing-chamber in the defendants' device, to wit, that between the outer and inner shell, in which is included the slight space in the dome, and except that the air and gas is mixed in the ascending flue before it reaches the interior surface of the outer shell.

It is contended on the part of the complainants that the mixing space between the walls of the ascending and descending flues is not a part of the invention, and that it should be disregarded, or that the defendants' structure is equivalent to the complainants' structure, as defined in the claims. It is thought that this contention is untenable. The diagram accompanying the complainants' letters shows a recess or chamber extending upward from the inner shell, with the ascending tube penetrating the same for about twothirds of the height of such descending flue, with the intention that the gas and air shall pass into this ascending flue, pass out thereof at the upper part of the descending flue, and thereafter pass between the walls of the two flues to the space between the two shells. Nothing corresponding to this figure is found in the defendants' structure. The specification describes the course of the air and gas, and states:

"By the arrangement of the cylindrical portion E', of the shell, E [meaning thereby the descending flue], which acts in the nature of a closed deflector, the gas-and-air mixture is compelled to pass first in outward and then in downward direction through the channel formed by the inner flue, D2 [the ascending flue], of the outer shell and cylindrical portion E' [the descending flue], of the inner shell, so that the gas-and-air mixture is heated up in its course to the jet openings, d [in the outer shell], and the perfect combustion of the gas-and-air mixture in connection with the exterior air thereby obtained."

In the defendants' structure the gas and air at the interior surface of the outer shell pass immediately into the space between the two shells; being aided thereby by deflection from the wall of the interior shell, including the dome thereof. In other words, the ascending flue terminates or is cut off at the inner surface of the outer shell, and there is no mixing in the ascending flue beyond that point, nor between the walls of the ascending and descending flues, because there are no such walls above the outer shell. It is true that in the specification the inventor states that

"The invention consists of a gas heating-stove applied to gas-burners, comprising an interior shell provided with a cylindrical central portion, a hemispherical upper shell provided with a suitable handle, [provided for exclusively in the second claim], and an exterior shell provided with a central flue open at the upper and lower ends, and with openings for the flame, * * as will be fully described hereinafter, and finally pointed out in the claims." He further says:

"My improved gas heating-stove consists, preferably, of three main portions, namely, an exterior hemispherical lower shell, D; an inte

rior smaller shell, E, supported by the latter, and which is provided with a central cylindrical portion, E', which is open at the lower end and closed at the upper end; said closed end serving as a deflector for the gas-and-air mixture supplied to said central cylindrical portion."

The defendants' structure shows no such descending flue as the patent contemplates. It shows no flue ascending into the descending flue, "forming a mixing space between them," but simply uses for the purposes of a mixing-chamber the space between the two shells. Hence the gas is neither mixed in the ascending flue after the same passes inside the outer shell, nor is it mixed in the annular space between the two flues.

It is considered that it would be an unallowable reconstruction and amplification of the claim, as read in connection with the diagram and the definite statement of the course of the gas and air, to hold that the defendants' device involved the parts that the patentee has definitely claimed in his combination. Therefore no infringement has been shown, and the bill should be dismissed.

NATIONAL PHONOGRAPH CO. v. AMERICAN GRAPHOPHONE CO. et al.

(Circuit Court, D. Connecticut. March 30, 1905.)

No. 1,166.

1. PATENTS INJUNCTION-WHEN GRANTED.

Courts must refuse a preliminary injunction, on affidavits alone, against the conjoint use of two patents, one of which has expired by reason that it was originally taken out both at home and abroad, and its life expired with the term of the foreign patent, which was first taken out, and the other and broader of which has not been adjudicated in the courts as to its features of invention, upon a seriously contested hearing on the merits.

2. SAME-DISSOLUTION-DAMAGES.

The neglect to disclose to the court the fact of the expiration of one of the patents sued upon at the time of obtaining the restraining order is sufficient ground for giving actual damages to the defendant for injuries to its business caused thereby.

(Syllabus by the Court.)

In Equity. On motion for preliminary injunction, and counter motions to vacate indemnity bond and for other relief.

Dyer & Dyer, for complainant.

Philip Mauro and C. A. L. Massie, for defendants.

PLATT, District Judge. It is my impression that the license agreement of December 7, 1896, was intended to maintain the status quo ante of the parties thereto, to the extent that their special types of machines should remain distinct. A license under the earlier patent, No. 397,280, was positively refused and deliberately omitted. If I am wrong, it is inexplicable that the defendant failed to take advantage of claims 15, 16, 18, and 20 of patent No. 430,278, under which patent it claims to have held since the date of that contract an absolute right