ticular thing under construction. And yet it is worthy of remark that it was never applied to cover defects produced by the creep of grease or oil applied to paper until Cohn did it.

The Busch patent, like the Reese patent and the Cohn English patent, has not the element of a border in its simplest form. The envelopes in the Busch and Cohn English patents are produced by the use of transparent paper rendered opaque except the portion left for reading through, be it large or small, and in these there was no purpose to subserve, such as covering ragged edges or irregularities arising from any cause. The Reese patent, although the window is produced by the application of an oily preparation, is absolutely without the concept of a border, although the border has proven to be essential to cover the ragged edges and to give definition to the window. This had not even suggested itself to Regenstein, although counsel for defendant claim now that the application of the border was a thing of ordinary mechanical skill.

It is often difficult, as has been remarked by the authorities, to distinguish between the exercise of inventive faculty and the application of ordinary mechanical skill.

In Stimpson v. Woodman, 10 Wall. 117, 19 L. Ed. 866, it was held that the stamping of the figure upon the surface of a roller for pebbling leather by pressure, where the use previously had been of a smooth roller, required no invention. In Brown et al. v. Piper, 91 U. S. 37, 23 L. Ed. 200, invention was denied to one who applied the principle of an ice cream freezer to the preservation of fish. In Roberts v. Ryer, 91 U. S. 150, 23 L. Ed. 267, it was declared that so changing the proportions of a refrigerator as to utilize the descending instead of the ascending current of cold air was not invention. And in Atlantic Works v. Brady, 107 U. S. 192, 2 Sup. Ct. 225, 27 L. Ed. 438, that the placing of a dredging screw at the stem instead of at the stern of a steamboat lacked in invention.

On the other hand, many instances may be found where very simple concepts have been declared to be the product of inventive genius. Two instances which are fair illustrations are referred to in Potts v. Creager, supra. One was respecting the application to telegraph instruments of a torsional spring such as had been previously used in clocks, doors, and other articles of domestic furniture (Western Electric Company v. La Rue, 139 U. S. 601, 11 Sup. Ct. 670, 35 L. Ed. 294), and the other the substitution of the use of anthracite coal for bituminous in smelting iron ore, inasmuch as it produced a better article of iron at less expense (Crane v. Price, Webster's Pat. Cas. 409). Thus it is that simplicity of device is not necessarily the test of lack of invention or patentability. When a thing has succeeded it often seems very plain and simple, and the wonder is that its suggestion had not come earlier; but the fact remains that no one has ever thought of it, whether skilled or not, and yet its utility is at once recognized when brought to public attention. This of itself is evidence of invention. As is said by Mr. Justice Bradley in Loom Co. v. Higgins, 105 U. S. 580, 591 (26 L. Ed. 1177):

"It may be laid down as a general rule, though perhaps not an invariable one, that if a new combination and arrangement of known elements produce a new and beneficial result, never attained before, it is evidence of invention." 125 C.C.A.-14

[8] Beyond this, the presumption of novelty attending the issuance of letters patent, the general and extensive use to which the new device is applied, and further the use persisted in by one infringing the device are all evidence of the product of inventive faculty and genius. Diamond Rubber Co. v. Consol. Rubber Tire Co., 220 Ú. S. 428, 31 Sup. Ct. 444, 55 L. Ed. 527; A. R. Milner Seating Co. v. Yesbera, 133 Fed. 916, 67 C. C. A. 210; Buchanan v. Perkins Electric Switch Mfg. Co., 135 Fed. 90, 94, 67 C. C. A. 564; Morton v. Llewellyn et al., 164 Fed. 693, 90 C. C. A. 514.

It is an admitted fact that the Transo envelope has grown rapidly into general use. Such is not the case with any other patent on envelopes in any form, except the Callahan patent, which does not anticipate Cohn's concept. Regenstein declares in his testimony that "the ring on a Transo envelope adds in every way to the clean and perfect appearance of the envelope." And he further testifies that "the clean and artistic appearance of the envelope adds to its merchantableness," and that they do not put out any envelopes without the ring. This in the face of his declaration to Cohn by letter of December 10, 1906, that "this feature of a ring is very immaterial, and we never considered it of very much consequence.' He testifies, furthermore, that for the last six years, ending February, 1911, he gave almost exclusively to the promotion of the Transo envelope. But he had previously testified:

"Our envelope is now considered the most perfect transparent envelope in existence and has a sale in this country as well as in foreign countries.

To my knowledge, I am the only manufacturer and have never seen any one-piece transparent envelopes made by any one else in this country."

We are strongly impressed that all this, including the proven and acknowledged utility of this envelope, which is a duplication of the Cohn envelope (first patent), is sufficient to settle any doubt in favor of the presumption of novelty which attends the patent. The Acting Commissioner of Patents, in his final analysis of the claim, says that:

"While the final result is to enhance the appearance by concealing the irregular outline, the result is brought about by mechanical features, namely, the application of the printed border to a portion of the paper to which the oily preparation has been applied."

[9] We conclude, therefore, that the combination, consisting of a one-piece envelope, having the window rendered transparent by the application of an oily preparation, together with the border to conceal the irregular outline produced by the use of the oily preparation and to give definition to the window, is the result of inventive faculty and not of mere application of ordinary skill and adaptation. Nor is there anticipation by any prior patent. Infringement as to this patent is conceded.

As it relates to the second patent, there is little more to be said. The one-piece envelope with the transparent window and the plain border being patentable, the one-piece envelope with the transparency and border so modeled as to represent some article of manufacture, or the trade-mark of the manufacturer, employed in connection with printed matter so as to produce a device for advertisement, is, upon

like principles, manifestly the result of invention. The defendant's attempt to vary the concept by printing the name of the manufacturer on the inside of the lower flap of the envelope so that it may be read through the transparent window, of the usual shape, when no inclosure is within the envelope, is an equivalency or a distinction without a difference in principle and is also an infringement.

These considerations lead to an affirmance of the decree, and such will be the order of this court.

(207 Fed. 561)

UNITED TUNNEL IMPROVEMENT CO. v. INTERBOROUGH RAPID TRANSIT CO. et al.

(Circuit Court of Appeals, Second Circuit. June 14, 1913.)

No. 258.

PATENTS (§ 328*)-VALIDITY AND INFRINGEMENT-TUNNEL CONSTRUCTION. The Reno patents, No. 723,307 and No. 754,807, for tunnel structures and process of making same by removing segments from the bottom of the iron or steel shell after it is in place and constructing a reinforced concrete girder beneath, to which the shell is anchored, construed, and held not infringed.

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

Suit in equity by the United Tunnel Improvement Company against the Interborough Rapid Transit Company and the Rapid Transit Subway Construction Company. Decree for defendants, and complainant appeals. Affirmed.

Following are the statement and opinion of Hand, District Judge, in the court below:

This is a suit in equity upon two patents each issued to Jesse W. Reno, the first granted on March 24, 1903, numbered 723,307, and the second granted on March 15, 1904, and numbered 754,807. The complainant is a company organized by Reno for the purpose of holding these patents. Except in so far as the defendant has used them, the patent has never gone into practical operation anywhere nor has the patentee or the complainant ever issued any license upon the patents, which therefore are what are colloquially known as "paper patents." Each patent consists of structure and process claims for tunnels, built in uncertain foundations. The patentee recites in the first invention that his object is to construct tunnels in easily compressible earth by the use of the well-known segmental iron tunnel shell. He presupposes that the tunnel is to be made by the use of the Brunel shield which is driven forward at the end of the tunnel having an open face from which the earth is excavated. In order to keep the earth and water from entering the open face of the tunnel, a bulkhead is placed at a convenient distance to the rear in that part of the tunnel shell already made and air pressure is maintained between the bulkhead and the open face sufficient to overcome the combined head of water and earth upon the open face. All this the patentee presupposes, and in addition that the foundation of the earth about the tunnel shell was comparatively soft and yielding and that the tunnel would be large enough to take the standard cars and locomotives where the speed is to be very high. Under these conditions "the thin shell of the ordinary tunnel construction is not rigid enough to withstand the enormous concentrated weights *For other cases see same topic & § NUMBER in Dec. & Am. Digs. 1907 to date, & Rep'r Indexes

moving rapidly over them. Moreover the vibrations caused by the rapidly moving trains set up a motion in the particles of earth which immediately surround the walls of the tunnel, causing an unstable support for the walls and resulting in cracks and leaks in the tunnel. In my invention I provide a concrete girder of sufficient mass to take up these vibrations before they reach the surrounding earth and of sufficient strength to distribute the load over a large area." His method is to take up the plates on the bottom of the already constructed tunnel between the bulkhead and the shield and to excavate the bottom, to drive longitudinal wooden sheeting in a trench below the tube, to fill the trench with concrete, to lay at the bottom of it steel rods embedded in the concrete, and then to anchor the edges of the shell into the concrete by substantial iron anchors. There is a dispute in the testimony as to whether an alternative form is indicated under which the plates may be replaced over the top of the concrete and the concrete in turn filled up to the level of the ties on the top of the replaced plates. The patentee, speaking of the concrete girder so formed, says: "The concrete girder thus formed and anchored to the cast-iron shell above it will act with the shell as a single member or beam." Also he says that the girder will add to the weight of the tunnel and therefore counteract its buoyancy. The claims in suit are six in number, three for the structure and three for the process. They are Nos. 5, 6, 9, 11, 13, and 15 and read as follows:

"(5) In a tunnel structure, the combination with a cylindrical shell having the shape of a horseshoe arch in cross section of a continuous girder of concrete securely anchored to the springers of said arch.

"(6) In a tunnel structure, the combination with a cylindrical shell of an exterior concrete re-enforcement extending longitudinally beneath said shell and rigidly secured thereto; said concrete re-enforcement having embedded within it longitudinal tension rods."

"(9) In a tunnel construction, the combination of iron segments bolted together in the form of a horseshoe arch; a longitudinal concrete girder joining the end segments of said arch and anchor bolts, securing said end segments to said concrete girder."

"(11) The herein described method of constructing a re-enforced tunnel which consists in driving a segmental tunnel through silt, sand, or easily compressible earth, removing one or more of the lower segments of said segmental tunnel, excavating a trench there beneath and filling said trench with concrete."

"(13) The herein described method of constructing tunnels in easily compressible earth, consisting in first building a tunnel proper of segmental rings then removing certain segments in the floor of said tunnel between the heading and the bulkhead, and then building under the floor a massive concrete girder."

"(15) The herein described process for constructing a re-enforced tunnel consisting in forcing in advance of a bulkhead, maintaining air under pressure between the cutting shield and the bulkhead, excavating material cut by said shield, lining the cut made by the shield with segments adapted to resist the collapsing external pressure, excavating a trench beneath the working chamber, and constructing therein a concrete girder."

The second patent is for a method of building tunnels and proceeds on precisely the same presuppositions as the first.

The girder in question is built in a somewhat different way and is supported upon piles driven into the earth. This may be constructed either by having an iron shell anchored into the concrete girder or by replacing plates, with an opening through which the concrete is poured, making a firm grip around the ribs of the plates. The concrete girder is itself made in the same way except that it is made up of tongued and grooved blocks and that Ibeams take the place of rods. When the tunnel base is opened, piles are driven down into the earth, a row of four for each plate, and upon the tops of these the concrete girder is built. The details of driving the piles and removing the plates are disclosed in the patent but are not material to this suit. Four of the 14 claims are here in suit, all of them method claims, Nos. 6, 7, 8, and 12, as follows:

"(6) The method of tunnel construction consisting in forming a segmental tunnel shell, removing floor segments in the base of said tunnel shell, driving piles from within the tunnel through the openings formed, and securing the tops of said piles to said tunnel shell.

"(7) The herein described method of constructing tunnels which consists in forming a segmental tunnel shell, removing floor segments, driving straight piles through the openings made by the removal of said floor segments from within the tunnel, forming a concrete bed upon the tops of said piles, and securing said bed to the tunnel shell.

"(8) The herein described method of constructing tunnels, which consists in forming a segmental tunnel shell, removing floor segments, driving piles through the openings thus formed, forming a load distributing member upon the tops of said piles, and securing said load distributing members to said tunnel shell."

"(12) The herein described method of constructing tunnels, which consists in forming a segmental tunnel shell, removing segments from the floor of said shell, excavating a trench from beneath, forcing piles down through the openings formed in the bottom of the tunnel shell, filling said trench with concrete, and securing said concrete to said tunnel shell."

The defendant operates a tunnel across the East river from the borough of Manhattan to the borough of Brooklyn, which consists of two iron tubes driven by the familiar Brunel method presupposed in the patent in suit. After the tunnel was substantially completed, the defendants found that it was not all in grade. This was due in part to the sinking of the shield in its progress owing to the insufficient air pressure which let in mud and water, in part to the sinking of the completed shell owing to the settling around it of the earth through which it ran. To restore the grade various experiments were tried, among others those to which the complainant objects. In both tubes on the Brooklyn side to about the water level from a point east was made what is known as the "concrete invert," of which there was built 88 feet in the north tube and 172 feet in the south. All this except 16 feet in the south was built at atmospheric pressure. To do this the engineers removed the lower plate of the tube and substituted a concrete base, so that of the original circumference of the tube the cylinder covered about twothirds and the remaining one-third was covered by the concrete. The details of the structure can be so much more readily comprehended by the diagrams than by words that it is best for an understanding of them to refer to the complainant's exhibit, "Drawing of Sub-base Construction Arched Metal Shell," and to the complainant's exhibit, "Drawing No. 5." It may be wel! here to say, however, that the "invert" contained no longitudinal rods but did contain transverse rods. Whether it was anchored to the shell above is in dispute between the parties and is considered in the opinion.

The other part of the structure which the complainant thinks infringes the first patent was built below the water level and for a distance of 108 feet, and in the north tube considerably nearer the Brooklyn than the Manhattan shore, and like the "concrete invert" can best be understood by reference to the drawings which are exhibits in the case, complainant's Exhibit 22.

The alleged infringement of the second patent arises from the fact that after the tunnel was built the defendant, fearing for its safety while the superincumbent earth was settling around the sides of the shell, opened the bottom and drove down iron piles, two abreast, which they then filled with concrete. The tops of these they anchored in cradles of concrete upon which the tube rested. The cradles were 25 feet and 51 feet apart and had no connection between them. They were fastened to the plates when replaced only by forcing grout through the grout holes left in the plates.

These patents can best be considered separately. I will consider first patent 723,307, next patent 754,807.

Patent 723,307.

There are three structure claims in suit and three method claims. I shall assume with the complainant that claims 5 and 9 indicate a tunnel in which the bottom plates have been permanently removed, while claim 6 indicates