-and that by the engagement of a finger with the cam there is in the mount on the first incline an automatic, predetermined shift from high to low speed. This is followed, on the level plane, by a predetermined period of low speed. Then follows, by the mount on the second incline, an automatic, predetermined throwout of the low speed and the automatic throwin of the dog stop at a predetermined, unvarying point. It will thus be seen that the cam and engaging finger produce a continuous, indivisible, mechanical operation by which the machine automatically goes from high to low speed and from low speed to a predetermined, regularly recurrent stop.

In the progress of Goodyear's application through the Patent Office, his claims were rejected on reference to patent No. 710,612, of October 7, 1902, to Richardson, for a shoe-sewing machine. Without describing the mechanism of that machine, it suffices to say it had a high-speed drive, a change from high speed to low under the control of the operator, and thereafter an operative stop at a desired, predetermined position. Goodyear recognized that Richardson embodied his pending claims, and he therefore differentiated his device by showing that Richardson's shift speed was made by the operator while his own was automatic and made by his machine, and narrowed his claims by limitation to automatic action. In that regard the file wrapper shows Goodyear said:

"The first six claims have been amended to specify an automatic arrangement for driving the machinery at the reduced speed. The Richardson structure is not automatic. The shifting from one speed to the other is effected by means of a pedal."

1E. g., claim 1: "A stop motion wherein means are employed for reducing the speed of the machine before stopping it and means for positively driving it at a reduced speed to a predetermined stopping position."

157 C.C.A.-6

Even this amendment, viz. by inserting the limitation automatically, did not satisfy the Office, and to meet its further objection Goodyear added to his claim the limitation "such means being controlled by the machine," saying:

"By including in the claims the specific statement that the speed-shifting means is controlled by the driven member, the driven shaft, or whatever is specified in the claims, the definition of automatic' is made very clear."

The result was to make the claim read as follows, the words in italics being those thus added under stress of the Office's insistence: "A stop motion, wherein means are employed for automatically reducing the speed of the machine before stopping it, such means being controlled by the machine, and means for positively driving it at a reduced speed to a predetermined stopping position."

From this it will be seen that Goodyear's machine was a routine, cyclic one, and that means controlled by the machine automatically stopped it at a predetermined point. The particular machine used by Goodyear shows that his type of stop motion was applicable to a buttonhole sewing machine, and the stop requirements of such a machine illustrate generally the scope, character, and limitations of Goodyear's stop motion. As the machine was operated at high speed -some 1,500 stitches a minute-and as the stitches in the buttonhole were confined to a certain number, it is obvious that mechanically the machine was intended to automatically stop when the required buttonhole stitches were made, and the high speed of the machine mechanically required that at that instant the cycle-ending stop be made by the machine itself. To have allowed the sewing to have gone further would have ruined the buttonhole, and to have the stop made by the operator, if indeed it could be made even by a highly skilled operator at such speed, would have been a backward step in the developed buttonhole sewing art.

It will therefore be seen that in the statements of the specification, in the enforced limitation of the claims, and in the everyday working of the art, the Goodyear disclosure was for a stop that was predetermined, automatic, and machine-controlled. Moreover, as Goodyear's device was never used in practice, and left no impress on the art, there was no occasion for the exercise by the court below of that liberality of claim construction made where a highly meritorious invention might otherwise be shorn of patent protection by the literalism of a claim.

Turning, therefore, from this claim-restricted and unused device. of Goodyear's to the defendant's sewing machine, we have one that does a type of nonuniform work, namely, the stitching of shoe soles, which necessitates the judgment and absolute control of an operator. It is also to be noted that the machine of the defendant has been in wide, general use, without patent challenge, and it was only after a rival manufacturer purchased the dormant Goodyear patent that this belated charge of infringement is made. Without entering into the details of the defendant's machine, we may say that it is used for sewing the soles of shoes; that such soles differ in size; the sewing is done by a skilled operator who slows down the speed as he turns bends and uses stitches of different length at different parts of the

sole. In the nature of things, there must be operator control, operator skill, and operator volition in defendant's machine. In the nature of things, there can be no fixed number of stitches, no uniformity of speed, and no predetermined place or time of stop. Not only the absence of an automatic, machine-controlled stop in defendant's machine, but the varied character of the work done, precluding the possibility of the use of a predetermined stop, unite to make the defendant's machine of a wholly different type from Goodyear's. The mere fact that defendant's machine goes from high speed to low speed and that the needle stop is made at such low speed does not stamp the stop motion as Goodyear's. He has no claim, and in the nature of things he could have none, for the mechanical step of slowspeeding a machine before dog-stopping it. That is a mechanical practice and truism as old as physics, and which no patentee could monopolize. Of such speed reduction the defendant avails itself to stop its machine without shock, but this it had the right to do. It is also true that its machine is stopped when the needle is out of the fabric, and in that sense the stop is predetermined. But it will be observed that, while the mechanism is such that when the machine does stop the needle shall be in a certain relation, still this fixed condition when the operator chooses to stop it is a wholly different mechanical feature from a machine automatically stopping itself at a predetermined cyclic point. In the one case the automatic, machinecontrolled stop is unchangeable; in the other the optional, humancontrolled stop is variant. In both there is slow speed and a superfabric needle stop, but Goodyear did not disclose or claim a slow speed stop of a needle in a superfabric position. Confining ourselves to the foot brake mechanism of defendant's machine, its working will appear from the accompanying sketch.

Defendant's Machine
Treadle control.

Starting with the machine at such working high speed as the operator desires, he releases his foot treadle, and thereby disengages a clutch through the engagement of which the high-speed driving device drives the main shaft. But even such disengagement of the high-speed clutch does not per se throw in the low-speed clutch; for the operator may allow the machine to run by momentum. To throw in the low-speed clutch, the operator must release the treadle still further. It will thus appear that, while the throwing out of the

high speed is a condition precedent to throwing in the low speed, it is not the causal agency, but the operator is, of throwing in the low speed. It follows, therefore, that the shift from high speed and the shift to low speed in the defendant's machine have no dominant or servient relation to each other as they necessarily have in the Goodyear cam, but that between the two independent speeds stands the personality and dominant volition of the operator.

After full consideration we are of opinion that, passing the question of validity, on which we express no view, the charge of infringement has not been established, and the decree below must be affirmed.

(244 Fed. 458)

PATENTS

BUTTERICK PUB. CO. v. PEERLESS PATTERN CO.
(Circuit Court of Appeals, Second Circuit. May 8, 1917.)

No. 226.

328-INVENTION-PATTErns for GarmMENTS.

The O'Loughlin patent, No. 632,361, for a pattern for garments, having the sheets representing different parts of the garment designated by numbers or other characters, made by perforations, by which they may be transferred to the cloth, held void for lack of invention, in view of the prior art.

Appeal from the District Court of the United States for the Eastern District of New York.

Suit in equity by the Butterick Publishing Company against the Peerless Pattern Company. Decree for defendant, and complainant appeals. Affirmed.

The following is the opinion below, of Veeder, District Judge:

This is a suit by the Butterick Publishing Company against the Peerless Pattern Company for infringement of patent No. 632,361, granted to R. S. O'Loughlin September 5, 1899, for an improved pattern for garments. In the complainant's article of manufacture each one of the series of sheets representing the different parts of a garment is distinguished or identified by a perforated mark or symbol "consisting of a letter, number, arbitrary sign, or other character, or of a combination of words, letters, numerals, arbitrary signs, or other characters." By this means the patentee attains "convenient rapid, and accurate classification of the respective parts of the pattern, the avoidance of errors and confusion peculiar or incident to the system of manufacturing and using patterns for garments heretofore in vogue, and the facilitating of a rapid and accurate cutting of material to be used in making garments, and the proper, rapid, and accurate joining and adjustment of the respective parts thereof in the construction of garments."

This explanation of the utility of the device is followed by a statement of its relation to the prior art: "Heretofore the custom has been to endeavor to identify the separate portions of the patterns by designating each separate piece by a technical name. Hitherto, on account of the difficulty and uncertainty of identification, much confusion has been occasioned, considerable delay experienced, and great quantities of material damaged or destroyed. The difficulty of identifying each particular part by means of its technical name is apparent."

The claims are two in number:

"1. As a new article of manufacture a pattern for garments, comprising a series of sheets representing different parts of a garment capable of being assembled together in a definite manner into a garment, each of the said sheets being provided with a different designating character, device, or symbol constituted by perforations in the body of the said sheets the said characFor other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes

ters, etc., constituting a definite series, whereby designations on the pattern may be readily transferred to the garment material to which the pattern is applied, so that the material itself when cut to the pattern may be assembled into a garment with certainty."

Claim 2, which is limited to the use of serial numbers, is not in issue.

The contents of the file wrapper are instructive. The application was rejected in the first instance for lack of invention and novelty. The examiner said of the original application: "The double use of a system of characters, such as alphabet letters or numerals, is ancient, and common in various arts analogous to applicant's, such as in building material, wherein separate timbers, stones, etc., are numbered in order to identify their places. The new State House in Boston was built with stones quarried 200 miles distant, cut and fitted in the quarry, and numbered by the workmen in order to find their proper places in the general plan. Solomon's Temple, in Jerusalem, was so constructed, according to the record in the books of Kings and Chronicles. From another point of view there is plainly no invention involved in discarding the names for the parts of a pattern mentioned by applicant and substituting therefor these shorter names-the letters or numerals-to identify them." The applicant claimed to differentiate by reason of the fact that he not only numbered the different parts of his structure, but also provided a means whereby this numbering may be transferred to the parts of the ultimate structure and the pattern discarded. In reply, the examiner pointed out that simply perforating the letters, instead of printing them, was a very old device, to be seen in any stencil, as, for example, the patent to Fowler, 148,291. The applicant then asserted that it had not been shown to be old to provide a pattern sheet having two functions: First, the function of serving as a guide to cut out the pattern from the fabric; and, second, the function of providing means for applying identifying marks directly to the fabric cut out to designate the said fabric by the numerals or symbols appearing in the pattern, to the end that the parts of the garment may be readily assembled by reference to a chart of instruction accompanying the pattern. To this the examiner

replied by citing the patent to Rinder, 1,696, to show that it is old to perforate the designating characters in the body of each part of the pattern series, for applicant's purpose of marking the cloth with such character at the same time with the outlines of the pattern, by dusting chalk therethrough. The applicant rejoined that the patent to Rinder does not clearly show that the numerals are perforated in the pattern, and, even if they were so perforated, they do not constitute a definite series whereby the various parts of the pattern may be identified. But the application was finally rejected by the examiner on June 17, 1899, for failure to disclose patentable invention. Briefly restating the grounds, he pointed out that the British patent to Rinder, 1,696, shows a series of patterns having a perforated designated character for the purpose of sifting powder through upon the fabric to be cut out; and the domestic pattern to Slade, 156,382, shows a series of patterns having each a designating character. In view of this state of the art, he held that all the applicant had done was to substitute for the designating character employed by the British patentee a series of designating characters whereby he could assemble in a certain predetermined order the various sections of a garment, and that this was common in the arts.

On appeal to the examiners in chief the decision of the examiner was reversed. Their decision was substantially this: The applicant's device is an improvement on the ordinary patterns of commerce, in which the separate patterns which together make the pattern of a garment have been differentiated from each other by names given to each part pattern. By distinguishing each part of a pattern by a number, letter, or symbol stenciled in it, the identification of each part relatively to the other parts can be transferred to the position of the cloth beneath the part, and also serves to indicate concisely the parts in a table of instructions for guidance in laying the patterns on the cloth and for assembling the cloth parts of the garment. Slade's patent, in which the contour of the parts is relied on, has not the means for identifying each part relatively to the other. Nor in Rinder's patent is there a mark on each part distinguishing it from every other part. What the applicant has done is to apply by the means disclosed by the Rinder patent to separate