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229

ally, to describe it as a leaf which is free all the way to its rear edge of the book-cover. The subject is not changed. At all times it is the leaf, C, and not the book-cover. Moreover, the limitation suggested by the defendant was not required by anything in the prior art. It can hardly be presumed that a rational inventor would place such an unnecessary restriction, voluntarily, upon all already narrow claim. But the subject is not left to ptesumption. The specification repeatedly makes allusions which are wholly inconsistent with defendant's construction; For instance, the patentee says: "The book will preferably be prOVided with a special leaf of considerable strength, and bound or united firmly to the book-covers, B, at the point, a. or at such a point distant from fhe edge of the cover, B, as will provide room enough to receive the index when folded there between. as in Fig. 2." The location of the point of contact of the leaf, C, to the book is not of the essence of the invention. There is no reason for locating it at the one point suggested by defendant. If the index happens to be smaller than the book, and the leaf,C, is attached as defendant says it must be, the leaf will buckle, the index will be hidden and the whole will become inoperative. If the leaf, C, must be fre!" of the cover from the front edge to the rear edge of the cover, it cannot be attached to the cover at all. To construe the claim thus narrowly is to put a premium An infringer wOIlld upon infringement and render the patent escape by simply pasting a narrow strip of the leaf to therear edge of the cover. Even if it be conceded that the language is doubtful it would still be the duty of the court to resolve the doubt in favor of the patent by placing a liberal and reasonable construction upon the claim. The compla4Jant is entitled to the usual decree.

McGILL t1. UNTVERSAL PAPER-FASTENER

Co. etal.

(Oircuit Oourt, N. D. IUilW(.8. July 18, 1891.)

1.

PA.TENTS FOR INVENTIONS-NoVELTy-PAPER-FASTENERS.

Letters patent No. 162,188, issued April 20, 1875, to GeorgeW. McGill, for an improved metallic paper-fastener made by placing two blanks witb semi-circular heads, back to back, and bending a metallic cap over the beads so as to bold them together, the shanks being in close parallel contact, and pointed at the ends, so to make but one hole in tbe paper, is void for want of novelty, it appearing tbat complainant used such caps for two years before he applied for the' patent, and that substantially the same device is shown in a patent issued to one Gilford in May,1870. . Claim 1 of letters patent No. 887,182, granted March 2, 1886, to George W. McGill, describes a paper-fastener made from a blank, which is split lengthwise from both ends, leaving a narrow connecting neck, the parts being then folded over back to back, and a head made by bending over the parts above the neck; and. also haVing one shank shorter than the other, for convenience in separating them after they liro;'l passed through the paper. that this inveQtion was anticipated by: the Pac.ll: & Van Horn patent of November 28,1875, the Lindsay patent of January 25, 1876, and patent No. 199,085, issued to McGill January 8, 1878. ..

8.

SAME-ANTICIPA.TION.

280

.

REPOl\-rER,

vol. 48.

InEquity., Suit by George W. McGill against the UriiversalPaperFastener Company and infringement of a patent. Bill dismissed. J08hoo.P.U8e'Y and Parke Simmons, for complainant. West & Bond" for 4efenclants. '
BLODGETT, J. The bill in this case charges the defendant with the infringement of patent No. 162,183, granted to complainant April 20, 1875, for an "improvement in metallic paper-fastenersI'I and patent No. 337,182, granted to complaitlant March 2,1886, for a "metallic fastener," and seeks an injunction and accounting. In the specifications of the first-mentioned patent the matter of the invention covered thereby is stated as follows:'. ' My in vention relatesto that class ofmetallic fastenings known to thetrade as · McGill's paper-fasteners,' wherein the shanks of the fasteners are flat, and ,in close contact with each other, and make only a single hole in the papers which it isdesigned to connect; the shanks opening from ea(·h other after pallli'inlI through: the papers, and conliniIH$ saht papers between sait! shanks and' the head of the' fastener. ... ... 'It The shanks of the fasteners so are run through the, papers or, oUler articles to be connected. and are separated on the other aide of the same, and thus confine said articles between the said shanks and the head of the fastener." The fasteners described in the pateritare made by cutting two blanks from thin, flexible sheet-llletal of suitaple wid th for the purpose required, which are made pointed at one enu,· and on the other end is a semi-circularipiece, which, on being bent ats,right angle, makes a semi-circular head. These two blanks are placed back to back, so that they present a circular head or top, and over those is turned a concave metal cap, which gives the top or head of the fastener a button-like appearance, and holds the shanks of the two blanks in close parallel contact. mode of making the fastener, as described in the specifications, is to cut a slit in the middle of the metal cap of the proper Ilhape and size to allow the two shanks to be passed through it, so that the heads of the two shanks shall rest in the cap, and then turn the flange of the cap up over these heads. There is but one claim in this patent, which is: "The within-described metallic fastener, formed of the two blanks. ab, ab, and the cap or shell, c, bent and connected together as herein shown and described, the ends of the sbanks, b, b, of the blanks being in close parallel contact, and pointed so as to make only a single hole in the articles it is designed . to conuect, substantially 8S described." , The other patent shows a blank for a metallic fastener cut from thin, flexible sheet-metal, preferably sheet-brass, split from both ends in a manner to leave a neck between the two cuts, so that two pointed shanks project in one direction and two arn1s in the other direction from this neck. .This blank is then folded over in such a way that the shanks are brought back to back, in close parallel contact, the neck holding them in this position. The arms are then bent at right angles in opposite directions,and a metal cap is clo$'ed. over these arms, thus making a

M'GILL tI.

PAPER-FASTENER CO

281

head for the fastener. This metal cap may be round or oblong in shape; may be placed on top of the arms, and its fh,tnge turned down over them; or a slit may be made in the middle of the cap, throuKh which the shanks may be passed, and then the flange of the cap turned upward over the arms. The specifications say: "The fastener is operated by forcing its double shank through the articles to be bound or fastened until the under side of its covered head rests on one side of the same, and then separating the blndes of the shank on the other side of the material and bending them down fiat, in 0ppollite directions, on the same, so as to bind the material between them and the fastener bead. One of the shanks of the fastener is made longer than the other, so that it will project beyond the shorter ohe when both shanks are folded in close parallel contact, to admit of the ready separation of the shanks in applying the fastener, as described. The connecting neck holds the parts of the fastener together, thereby facilitating the capping or covering of the same. !talso binds or locks together the tops pr fold of the fastener shanks, and prevents their parting at that point while the shanks proper are being separated in applying the article to the uses intended." Infringement is. charged only as to the first and second claims of the patent, which are: "(I) Ai. metal fastener blank, split centrally through its length. from both ends in m/lnner to form a connecting neck, a, haVing two shanks, b, b, of dIfferent lengths, projecting in one direction, and two arms, C, c, in the opposite direction, sUblltantially as set forth. (2) As an improved article of manufacture, a metalliC fasteber consisting ofa metal fastener blank split centrally through part of its length from both ends, one of the split ends forming the two shanks, b, b, of different lengths, and the other end the arlDS, C, C, the shanks, b, b,being folded back to back, in close parallel contact, and the arms. c, c, folded over in.· opposite directions at rightangles from the shanks, b, b, and permanently seCured in such position by a metal cap, substantially 8S described." The defenses insisted upon are: (1) That the patents are both void for want of novelty; (2) that defendants do not infringe. The proof shows that the initial step in the art to which these devices belong was a fastener made of thin, flexible metal. pointed at one end, and a portion of the other end bent ata right angle, thus leaving a pointed single shank, which could be thrust:througb the paper and bent sideways, so that the paper was held between the head and bent The proof also shows that in July, 1866, a patent was granted to complainant for a metallic paper-fastener, which was made by bending a strip of thin, flexible metal in such a manner as to form a head, and two shanks project back to back downward from the middle of the head. This is described in the patent as a "T-shaped fal'.'tener;" thus making a fastener with two shanks, instead of one, which could be thrust through one hole in the paper or material to be held together, and the material firmly held between the head and shanks by bending the shanks sideways in opposite directions;· And the proof also shows that for more than two years before complainant applied for patent No. 162,183, ofApril 20, 1875, he hadttlade and put upon the market paper-fasteners made sub-

232

FEDERAL REPOHTER,

voL 48.

stalltially lik<e'tbose described in his patent of Ji.lly, 1866, over the headS of whicbhadbeen turned a metal eap, thus giving the heads a button-like appearance. It iatrue, he states that he had used this metal cap merely as; ad ornament, and that it performed no such function as it performed in patent 162,183, where the cap held the two shimks of the fastener together. The proof also shows that inM:ay, 1870, a patent was granted to one Gilford fcir a buttoo; where two metal shanks, with the upper ends bentnt right angles,are held together by turning the flange of the middle dippyer them;' and itis obvious, even to superficial inspection,that these shapks; thus 'united by .a. cap, only needed to be pointed to make the tp.stener described In complainant's patent 162,183. The complainant's admission that he had used the mc:tal caps on the heads of lasteners made under the 1866 patent, seems to me sufficient to answer any claim the idea of' capping the heads of the shanks shown in patent'1:62,183. It involved no invention to use a cap for the purpose of holding the two shanks of the 1875 together when the same kind of ca,p had turned over the heao of the 1866 'fastener, even if in the l1itter the cap was merely ornamental. But I doubt if the cap was a merely ornamental appliance to the fastener. The heads of its fasteners were made by merely bending a flat piece of metal into a 'l'"shape, and' would bena'turally loose and easily displact'd, and the cap rhicessarily gave firmness and strength to the structure, and the inference Glhtainly a, natural onethat the statehlent of merely ornamental use in, the exigency of his for the purpose of securing. the issue: of the patent No. 162,183, the application for which was then pending, and .had been reported adversely upon in the. patent-office. With a: metalcap,nsed by complainant himself for over two years on T-shap'M 'paper"fastehers made under his patent of July 24, 1866, and with the Gilford patent of May 24, 1870, showing two button shanks, held together by a metal cap, lam of 'opinion th.ere was no novelty in the fastener covered by the patent No. 162,183, granted April 20, 1875. ;l1'he 'urst Claim of the patent ,of March 2, 1886, is upon the metal blank spl'iFcentrally lengthwise ,from one end to form the shanks of a fastener, one shank the other, and also split centrally froni the other end to fonn arms,leaving a connecting neck between the two slits,thus making a blank which, on being folded over on the line of the slits, brings the two shanks of the fastener closely together, face to face, and on which a head can be formed by bending the arms above the necks in opposite directions at right angles, and covering them with a metal cap. This claim is most clearly anticipated in the Pack & Van Horn patent of November 23, 1875, in the Locks patent of December, 1883, in the Lindsay patent of January 25, 1876, and in tqe complainant's patent No. 199,085, granted January 8, 1878, ,so far as the slitting of the metal is concerned, so as to leave a connecting neck between the 'two shanks; and in complainant's patent No. 56,587, granted July 24, 1866, the drawings show one of the pointed shanks of the T-shaped fastener there described as shorter than the other; and in COID-

is

M'GILL ".UNIVERSAL PAPER-FASTENER CO.

233

plainant's patent, No. 308,368, granted November 25, 1884, he not only shows in his drawings, but particularly describes,s two-shanked fastener, with one shank made shorter than the other, "for convenience in separating the shanks for the purpose of clinching them down." So that it appears clearly from the proof that a blank for a metal fastener with these two features-the eonnecting neck, with one shank shorter than the other-was certainly old at the time the patent No. 337,182 was applied for and obtained. The second claim of this patent, No. 337,182, is for a metallic fastener as a new article of manufacture, made from the blank described in the first claim, and the head covered by a metal cap. As the metal cap in this claim is of the same kind, ,and performs. no. other function, than the capca1led for in complainant's patent,No; 162,183, granted April 20, 1877,not to mention those which he applied to his fasteners of his July, 1866, patent, and is also found ill ,the in his patent of January, 1878, there was. use of such 'cap at the time complainant· applied for' imd obtained. his patent No. 337,182. ., . I ." ' I will add that the proof shows that this complaii:umt has taken out over 100 patents upon metallic fasteners intended to fasten paper or ile'inaterial together, but,'so far as tho'two patents DbW biifore the cOurt are concerned, the two-shank fasteners covered by the'old patent of Ji.1Jy 24, 1866,withthe head coV'ered by a metal cap turned over portions of the top' of thestri p, bent at right angles, so as to form the button-like head,antioipates both the structures now under considlJration. The idea once conceived and illustrated by a capped fastener, and with two fle:ldble shanks arranged to pass through the same hole in the paper or to be held together and clinched by bending the shanks apart from each other, can afterwards be applied in a variety of ways. Thus a T-shaped two-shank fastener could be made by bending thin, flexible metal in many ways, so as to secure to the head; ll.ndthese changes involve no invention, but mere meChanical skill. Improvements they lnay have been, but not inventions. I am therefore clearly of opinion that both these patents are voidfbr want of novelty, and that the bill should be dismissed upon that ground alone, but, if not void for want of novelty, it is very clear to me that the defendant's patent does not infringe either of the complainant's patents now in suit, as it is made of a blank formed substantially like the blank described in the 1866 patent, except that one shank is not made shorter than the other,"and only one of the defendant's shanks is pointed. If it Was pat:. entable to make one shank shorter than the other in a it certainly does not infringe that patent to point one shank, and leave the other square at the end which is to be passed through the paper, thereby giving"Rnopportunity to take hold and separate the shanks by reaSon of the metal being cut away from one. The bill is therefore dismiSsed for want of equity.
<

;234

FEDERAL

,yol. :48.

(01.rcuitOou7'4 D. Mallflachmetts..liovember 10.1891.)

Letters· patent Nil·. il;SUlld. .AugUilt 12, .1879, to tb,e Shaw Stocking Coxq.. pli.1iy, all assignee of Benjamin F. Shawj'f9r improvements in web-holding mechanism ',f9r!,kn,ittJng.mach.in.8ll>,:th"lI,CIRim,b6in g ,.il.mong other thingll; for we,b·holderll with "iiownwardly cll,rved taij-pieces," is not. infringed by a macbine in some respects similar, but baving web-bolders straill:ht tail-pieces. So SUB-AMENDING CUIlol-WAIVBR. ' '. When a broad claim Js.r,ejected ,b, tllepatent,ofllce because ,of anticipation by certain otherpatentB, and! thereupon tbe applicant amends his Ilpeci1lcation and '. )clalm,&nd accepts apai:.ent there,on, he waives the broad invention, and cannot afJ'er.wards, in an action for infrIngelDent, claim that bis invention was really made the anticipating, patei/,tli . -issued. w.ere ; . . . .· , ,I:' '

YOB

FOIl KNITTING-MACHINES.

,

I.

,I ·

I+ederick P. Fish, for complamant·.

," " ' ..,,',

Di'smissed.

PU8f/!}, .for defendant. 'L . .' ..,

.. '., , , ' ' \

!

ThisbiUjJl equity-is :found,ed upon' the' .alleged infringement.of,lAtt,ers 'pllotent.No.. 218,4!30,:.granted August 12, 1879, to the asassigI),oo ,of Berijalnin;F.. Shaw, (ot improvements in UlEl':hanismfor ,For a number of yearlJ Shaw;was mgnged: in uctlqDd)f. knitting seamless a,J;ld his by several patents. The pat,. irI,. for apar:t. of this. and.relaws:to devices for ho)dillg. 4.own. the fabrio during tJil,eo.peration of the needles.. In the,old ciroq1a:r the. J:eqUisite tension. waa 'brought to bear on the Wl;}l:dlYnleanS weightlil hanging upon it, and these .answered the purposQlforplain tubulAr work. In,;the production Qf the heel ofa it.if! UeQeSS8ry to 'rul'Hll)lyapartof the needles'f "MIa the r,est,rewfl,in Under these ,conditions, the weights might on tbe side of the web where the needles at: rejlt"hut..theywoUld not produce the proper tension during the widening'llnd narrow41goperation on the side of the web which is being 'l'o:llleetthia substituted what he calls l' io. place, of the· weights; The web-holder is· made of a thin,.·a,t,strip>ofmetllltdl.nd it has. aturnedd.owo at its forward;·.end,i.ndan ovetbanging.hQOkor finger 00 its upper side. The tail-pief.l(ds, dpwnwardly'cu1'vedormade blunt, so that it may not pene,()f,hpld ihe web as it is moved A>ver the end of the tail, and through the;hqllowne:edle-bed ol'i ;cylinder.. A web-holdel' is. inserted between eaQh paler pf needles. always:remain in the rear tbeneed!tmj·;near.the..iUpperedge of the· web, where .the knitting takes press place, and the projecting fingers, co-operating with upon the edge of the web, and hold it down during the operation of knitting.