95' FEDERAL REPO!tTER.

THis may be fairly as an allegation that they advertised themselves to the public as afim, and there are no other allegations oHhebill inconsistent with this constrllCtion. This objection; thereto the bill, is not well taken. H0wever the case tna,y'develop in the course of further pleading or uPon trial, I feel constrained to saY,upon the allegations of this bill,: that a case-is unlawful competition in trade by means of a simulated trade.name, and that a case, therefore, is made-for the relief prayed for; and this assignmentol the demurrer is therefore not well taken. Browne, TradeMarks,§ 93. The' demurrer will be overruled as to the first and fifth assignments, and'sustained as to the second assignment thereof.

MacCO:LL v. KNOWLES LOOM WORKS. (Circuit Court Of Appeals, First Clretllt. May 31, 1899.)
1.

PATENTS-CONSTRUCTION OF CLAIMS.

The omission of the patentee to point ol1tor refer In his specification or claJms to the special feature which' he subsequently maintains Is the most ImpOrtant part of his Inventlop Is very significant, anij-should be carefully scrutlnilled.' '
,

2.

" The MacColl patent, No. construed;,: and held, not !,nfrlnged as to' Claim 1, which covers a pattern-chain, which ,bY, its pec\lllar Construction governs the form and position of the

Appeal from Circuit Court' of tJie United States for the District of MltSsacnnsetts. . . This ,was a suit in equity by Jameli! R.MacColl against the Knowles Loom Works for alleged infringemeiIt of a patent for improvements in lappet·looms. The circuit court found that the defendant's loom was not an infringement of thepatent,and accoI'dinglydismissed the bill. 87 Fed. 727. From this decree, the complainant has appealed. James E. Maynadie,r, for appellant. " Frederick P.Fish ahd William K. Richardson (Jolln C. Dewey and Emery, with them on the' brief), for appellee. BeforeOOLT, Circuit Judge, and WEBB and ALDRICH,District Judges. This appeal relates to a patent issued to COLT, Circuit James R. MacOoll for iplprovements in lappet·looms, dated October 27, and 'numbered 570,2'59. Tbe court below held that the defendant dtd nQt infringe, and dismissed"the bill. The controversy mainlytur;ustipon thepr9per construction of the first claim of the patent. claim is tobe construed in. the light of, the specification and drawiiigsof the patent, and of the prior art;l;l;lld, so construed, its meaning seems to us clear and intelligible. The claim reads:
. "(1) In a pattern-chain for lappet-looms, the combination of the bar-links. lvith adjustllblepattern'l!crews 'or pins. 'the varying positions of whlchrellitlvely to,tIiebat·lInks govern theifonn and Dllsltioll of the stantially as described."

MAC COLI, V. KNOWLES LOOM WORKS.

The specification says:

"Heretofore it has not been deemed practicable to apply the pattern screws or pins which serve to govern the position and form of the lappet-pattern to a loosely driven pattern-chain, owing to the apparent looseness and unreliability of the many-jointed construction for such delicate and accurate adjustment as is in the nature of the case required; but the pattern screws or pins have only been applied to the peripl;t.eries or sides of rigid disks or wheels, which are adapted by means of closely-fitting shafts and bearings for revolution in a true circle or in a fixed plane, without liability of looseness or change therein. In this rigid form of construction a· change and substitution of larger or smaller wheels for every change in the number of picks in the lappet-pattern is required, with resulting expense and trouble in keeping account of the necessarily great number of separate wheels; the rigid wheels thus required for forming lappet-patterns of ordinary dimensions being quite large and cumbersome. I have, however, proved that the most perfect and delicate lappetpatterns may be formed in practice by means of an adjustable pattern-chain, with the resulting great advantage that an increase or decrease in the size of the lappet-pattern may be readily produced by the simple insertion or removal of the bar"links of which the chain is composed, thus dispensing with the great number of rigid wheels or disks heretofore required to form an assortment of lappet-patterns, changes therein being almost constantly required to suit the demands of the trade for new styles of lappet ornamentation. My improvement in lappet-looms is adapted for application to ordinary cotton and woolen looms alr'eady in use, whereby the principle of lappet-weaving may be successof a patternfully employed in such looms; and it consists in the chain provided with adjustable pattern screws or pins to govern the form and position of the lappet-pattern, and in the improved construction and arrangement of the lappet mechanism, as hereinafter set forth."

This statement in the patent sets out clearly the defect in former pattem-chains, the remedy proposed, and the means by which it is accomplished: (1) Owing to the looseness and unreliability of the many'jointed construction, it had not theretofore been deemed practicable to apply the pattern screws or pins which serve to govern the position and form of the lappet-pattern to a loosely:driven patternchain; (2) such pattern screws or pins have only been applied to the peripheries or sides of rigid disks or wheels; (3) in this rigid form of construction a substitution of larger or smaller wheels for every change in the number of picks is necessary, with resulting expense and trouble; (4) by means of an adjnstable pattern-chain an increase or decrease in the size of the lappet-pattern may be readily produced by the simple insertion or removal of the bar-links of which the chain is composed; (5) the improvement (so far as relates to claim 1) consists in the employment of a pattern-chain provided with adjustable pattern screws or pins to govern the form and position of the lappet-pattern. Lappet-looms have been known in the art for many years. They are simply the ordinary loom for weaving cloth, with lappet attachments for the purpose of ,attaching to the face of the cloth an ornamental which is called a "whip-thread" or "lappet-thread." This carried by a needle, and is woven into the cloth in sOllle pattern, which is called the "lappet-pattern." 'J'he mechanislll consists of a needle-bar, which is held on the lay of the ordinary weaving loom, and moves transversel,Y across the warp threads, so tbat each needle lays a whip-thread on the surface of the cloth as it is being woven. The needle then moves vertically through the warp

984

95 FEDERAL, REPORTER.

threads, so that the whip-thread may be fastened in ,place by the weft-thread thrown across bY,:the shuttle. The longitudinal movements of the needle:bar which form the ,lappetpattern are controlled by a pattern surface connected with the needle-bar. This pattern surface for moving the needle-bar may be carried either' on a wheel called a "pattern-wheel," or on the links of a chain wrapped around a wheel called a "pattern-chain." The equivalency of pattern-chains and pattern-wheels as pattern surfaces was well known prior to invention. We think the prior art on this point is fairly stated by Mr. Appleton, defendant's expert in the Crompton Case (95 Fed. 987):
"For 'many years prior to MacColl, pattern surfaces In the form of wheels and In the form of chains were well-known equivalents of each other for ernlng the form and position of the lappet-patterns produced by lappet-looms, wherein they both performed that function in substantially the same way'. This equivalency is clearly shown in the two British patents to Smith [1842, 1854], one of which employs a wheel and the other a chain for fUlfilling the same function In a lappet-loom. It Is further shown in the United 'States patent to Newton [1873], above referred to, wherein a lappet pattern-wheel and a lappet pattern-chaln are mentioned specifically as alternatives for each other."

In speaking of the swells or projection on the lappet-wheel, the Newton patent (No. 5,365) says:
"The swells may also be arranged on a chain Instea'd of on the rim of a wheel, thereby giving greater scope to the principle of varying the pattern by using stitches of different length."

And, further:

"These swells are arranged with slots and fastened with screws, so as to be adjustable as to height, thereby enabling me to make stitches of unequal length."

In his original application, MacColl sought to have allowed a broad claim for the combination (in a lappet-loom) with the lay and needlebars and frames of a pattern-chain, and means for operating the same to cause the required movement of the needle-bars. This claim was rejected on reference to the Spitzli and other patents, whereupon the specification was amended, and the invention declared to consist "in the employment of a pattern-chain, provided with adjustable pattern screws or pins to govern the form and position of the lappetloom"; and the claim was limited to the "combination of the barlinks, with adjustable pattern screws, or pins, the varying positions of which relatively to the bar-links govern the form and position of the lappet-pattern." The Spitzli patent, dated November 21, 1865, declares:
"This InveJ1t1on consists in a pattern-wheel composed of a s'eries of adjust· able pinlfinilerted into the periphery of a disk," etc. "From the circumference of saidPllttern-wheel, project a series of radiating pins, g, of an equal length, and arrangec}. so that their length from the circumference of the wheel can be regulated at pleasure. 'By Imparting to the pattern-wheel an intermittent rotary fil:6tlon, tb,e pina,' g,are suceessively brought opposite the cam, m, and the position of, the needle-bar changes according to the different lengths of said pins."

The prior art, as well as the proceedings in the patent office, limits the first claim of the MacColl patent to a pattern-chain having "bar·

MAC COLI. V. KNOWLES LOOM WORKS.

985

links with adjustable pattern screws or pins," as described. in the specification. In this pattern-chain each link carries split lugs, in which pattern-screws are clamped by a binding screw, which can be loosened so as to adjust the pattern-screws towards or from the part to be mowd; this adjustability being lengthwise of the links of the chain. The specification says:
"The bar-links, f 1 , f 1 , are provided with the screw-threaded split lugs, h 1 , h 2 , in which are inserted the pattern-screws, P, i 3 , the said screws being clamped in their proper position by means of the tightening screws, j1, which operate to draw the sides of the split lugs together against the sides of the screws; and the pattern to be formed in the woven web by the action of the needles will be governed by the relative positions of the forward ends of the pattern!>crews of the chain, the said forward ends coming successively into engagement with the cams, v and v 1 , which are connected by means of the rods, U, u 1 , with the needle frames, b, b 1 , as before described."

The defendant's chain is wrapped around a sprocket-Wheel in the usual manner. It has screw-holes in the links, into which pins with heads of different size are screwed. If it is desired to change the form and position of the lappet-pattern at any point, the pin cannot be adjusted relative to the bar-link, but the pin has to be removed, and a new pin, having a head of different length, has to be inserted. The operative length of the pin cannot be changed without removal, by turning a screw upon the link, which is the feature of the MacCall device. The pins are not set parallel to the bar-links, as in MacColl, but vertically, as in the old J aggi chain; nor are they adjustable longitudinally. They are not, in other words, the adjustable pins described in the MacColl patent. The pins in the drawing of the MacColl patent show an alternation of relatively long and short pins. From this it is contended that the pattern-chain produces a solid pattern, as distinguished from a line pattern. It is upon this construction of the patent and claim that the complainant largely relies. This point is elaborated with much force and ingenuity by complainant's expert and counsel. But the trouble with this construction is that nothing is said in the specification or claims about solid patterns or line patterns, or relatively long and short projections or pins. The first claim is for adjustable pins, not for relatively long and short pins; and it covers such adjustable pins, whether or not they happen to be relatively long and short. For the first time in the lappet-loom art this distinction between solid and line patterns seems to have been taken, and in face of no intimation of any such distinction to be found in the patent. Mr. Metcalf, complainant's expert, says:
"My present recollection of the matter, however, is that the difference between a line pattern and a solid pattern is not described explicitly in any of the patents which I have discussed in connection with this suit. · · · of the MacCoU patents describes the difference or distinction between a line pattern and a solid pattern."

The whole thing seems to be a mere matter of adjustment. Mr. Livermore, the defendant's expert, well observes:

As

"In the loom of the Spitzli patent or of the French patent, the same as in the loom of the MacColl patent and defendant's loom, each pin or element of the pattern controls the position of the needle-bar at one end of the stitch, and the

986

95 FEDERAL REPORTER.

next pin at the other end; and. it is therefore merely a matter of adjustment lUI to the pins shl\ll be alternately high and low, produCing the solid patterp, ,or progressively increased ill. height or. diminished in height for several s'teps so' as to produce a line patfernat any given point." .

The construction contended for' by complainant is.at variance with the plain and intelligible meaning of the specification and claim of the patent, and we qo not. think the court would be justified in adopting such a view, on any sound or rational theory of interpretation. Line patterns and solid patterns were old in lappet-looms. A like MacColl's for adjustable pins on the construction of a linkS of,a pattern-chain; which re!lults in bolding one adjustment of the pins to make one old form of pattern, to infring-e, and another adjustment of the pins, to make another old form of pattern, not to infringe, would be placing an unjust limitation on the claim, in violation (jl'f ,its plain language and intent. ... . !attach po special significance to the, words, "govern the form an,d of the lappet-pattern,'l in the claim. Th.i,s expression is to all Sl::rewsor pin,s, and can have reference to either solid or line patterns. MacColl, in his no in describing what was old, uses the same descriptive '
it, has not been deemed practicable te apply the pattern screws or pips w1:lich .serve to govern the position and form of the lappet-pattern to a loosely-dri:ve:y.. p!ittern-ehain, * * * but the pattern. screws or pins have onlybeeil to the peripheries or .Sides of rigid disks or wheels."

He then points out the of his own cQn$truction. It is obvic;:nIs:that the wOl1ds,."form and position," in. his first claim, are descriptive of' the same function which he attributes to prior pattern screws'or pins. It is difficult to conceive how At is possible to construe thes,ewords, so far1as·alltYthing.appears in the patent or in the prior art, as having reference solelytosplid patterns. In the construotion of a patent, the omission of to point out or refer in,.his specification or claims to the speCial-feature whiCh he subsequently maintains is the mosti,mportantpartof his invention is:'very significant, and should be carefully' scrutinized.
"If this :feature be an advantage, as now claimed, it is sttaIlge that no allusion is made to it in the specification." Fastener Co. v. Kraetzeri 150 U; S. 111, 116, 14 Sup. Ct. 48.

.Again';'Ui Edge-Setter Co. v. Keith, 139U. S. 530, 539, 11 Sup. Ct.
621, the court said:

"If any separate function had been performed hy this combination, it is somewhat singular that the patentee did not call attention to it in his origlnal application, '01' until after the main feature of his patent was shown to have been anticipated."

In McClain v. Ortmayer, 141 U. S. 419, 424, 12· Sup. Ct. 76, the court held:
"The object of the patent law in requiring the patentee to 'partiCUlarly poInt out and distinctly claim the part, improvement or combination, which he claims as his' invention or discovery,' is not only to secure to him all to which he is entitled, but to apprise the public of What is still open to them. The claim is the measure 'of bis right to relief."

MAC

cor,L

V. CROMPTON LOOM WORKS.

987

To the same effect, see Deering v. Harvester Works, 155 U. S. 286, 296, 15 Sup. CL1l8; White v. Dunbar, 119 U. S. 47, 52, 7 Sup. Ct. 72; Burns v. Meyer, 100 U. S. 671, 672. The decree of the circuit court is affirmed, with costs to the ap-· pellee..
MacCOLL v. CROMPTOX LOOM WORKS. (Circuit Cqurt of Appeals, First Circuit. No. 259. May 31, 1899.)

P ATENTS- LAPPET- LOOMS. The MacColl patents, Nos. 570,259 and 570,260, both for improvements in lappet-looms,· construed, and held not infringed, the former as to claims 1 and 6, and the latter as to claims 1 and 2.

Appeal from the Circuit Court of the United States for the District of Massachusetts. . This was a suit in equity by James R. MacColl against the Crompton Loop;l Works for infringement of letters patent Nos. 570,259 and 570,260, both issued October 27, 1896, to the complainant, far improvements in lappet looms. Olaims 1 and 6 of the former patent and 1 and 2 of the latter were in issue. The circuit court found that there was no infringement of any of these claims, and accordingly dismissed the bill (87 Fed. 731), and from this decree the complainant has appealed. James E. Maynadier, for appellant. Frederick P. Fish and William K. Richardson (John C. Dewey and Frederick L. Emery, on the brief), for appellee. Before OOLT, Circuit Judge, and WEBB and ALDRICH, District Judges.. 001.'1.', Circuit Judge. This appeal was heard at the same time as the suit by this complainant against the Knowles Loom "Yorks. 95 Fed. 982. The Knowles Case limited the charge of infringement to the first claim of MacColl patent, No. 570,259. This suit is brought for infringement of the first and sixth claims of that patent, and claims 1 and 2 of the second MacColl patent, No. 570,260. Both patents were issued the same day, October 27, 1896. The opinion handed down this day in the KnOWleS Case, construing the first claim of patent No. 570,259, and holding that the Knowles pattern chain did not infringe that claim, also applies to this case. The defendant's chain is COIllposed of links of different sizes, which govern the pattern. It has no adjustable pins. The action of the pattern projections is radial, and not longitudinal, as in the MacOoll chain. This chain is more remote from the specific mechanism covered by the first claim of the )IacCollpatent than the Knowles device. In view of our opinion in the Knowles Oase, further consideration of this claim is unnecessary. Claim 6 of the first MacOoll patent relates to a combination of mechanism by means of which one of the needle bars remains inoperative at any desired point in the pattern. whereby discontinuous patterns, such as spots in the cloth, may be made. The lappet pat-