Defendant's first form of chute, gives in transverse horizontal section the form below (one corner only shown).

The second form of alleged infringement produces a corner said by plaintiff to be the following (on each corner):

A

Defendant's chute section has a lid or cover, seen to fit over the projection or ridge A in the two last diagrams, and locking is effected by a cross bar binding the top of the lid (panel) when in closed position. To remove the panel and get at chute interior, the bar is unlocked and removed (it is not hinged), which enables one to lift the panel out of its engagement at the end remote from the locking bar. All defendant's chutes are fastened to the wall by screws, with heads defaced.

The detailed statement, now concluded, seems to us to fully show, the simple, if not elementary, nature of the mechanical or scientific disclosures on which the patents in suit base exactly 100 claims. That mail chutes grew in popularity while the basic patents were alive, that the Postmaster General was glad to have a locked chute, as well as a locked letter box at its bottom, and that these facts combined to make the more elaborate and expensive construction marketable, we do not doubt; the evidence is full to the point; but neither fact proves invention; and it may be added that the now patented devices do not prevent or lessen clogging of chutes. They only provide easier access to the choked region, and facilitate cleaning chute interiors.

This cause does not require us to consider whether there was invention in any detail of the disclosed construction. That particular form (for the claims in suit) is but one embodiment of the concept of the claims, nor does the defendant's apparatus bear any resemblance worth mention to plaintiff's specific disclosures.

Of the first patent, we hold the third claim invalid, because there was no invention in putting an "independently movable" panel, door, lid, or cover on the mail chute of the prior art. The language of Victor, etc., Co. v. Hawthorne, etc., Co., 178 Fed. 455, 101 C. C. A. 439, is thought applicable to this claim.

In so far as claims 5 and 7 of this patent advance as an element of invention a panel "having portions projecting inwardly beyond" the chute walls, they suggest nothing patentable. The claims on their face describe a door or lid that projects slightly into the receptacle it closes. The fact is old to common knowledge, and there is nothing in the specification to require separate consideration.

Claims 4, 6, and 8 present the gist of controversy. Taking No. 6 as typical, the question is whether there was invention in (a) removing the meeting edge of panel and chute from the chute corner, and (b) projecting a part of the panel (substantially as specified and for the purpose stated) inward and beyond the meeting place of door and chute.

[2] The positioning of the meeting edge is just where it was in the chute of the expired patent, and the inner clamp of that patent projected into the chute; there was a vertical crack at the meeting of clamp and flange, and so is there in the construction of the claim. The only novelty shown or claimed is to treat the inner clamp strip as a part of the panel and give it the shape shown in diagram above (23). As pointed out, a general claim for any inward projection is invalid, and, when these more specific claims are examined, we find the old crack or meeting place still existent, and the means (i. e., projection) of minimizing its evils no more than an obvious adaptation of the bevel of the expired patent and common knowledge. That one bevel is vertical and the other horizontal is an immaterial difference. All the elements of these claims are old, and the function suggested for their combination is not reached by new method or means; nor do we think it is attained at all, as letters still stick for the same reasons as prevailed before this form of construction. We find these claims invalid for lack of patentable invention over the prior art. Where all the elements of invention are old but one, and the addition of that one is not invention, even a combination claim is void. Herzog v. Charles Keller Co., 234 Fed. 87, 148 C. C. A. 101.

We may add that, even assuming validity, the defendant's second form plainly avoids infringement.

The fourteenth claim presents no question not covered by the foregoing, while the nineteenth requires us to hold, as we do, that the addition of locking devices generically to a mail chute is not invention; the point needs no more than mention. It is not pretended that there is any similarity between the locks of the parties.

The second patent required us only to point out, that defendant does

not have any "means of securing the chute to the support" other than the screws of an art older than mail chutes: nor has it any means for at once preventing access to its screws and "securing" its "removable panel" (i. e., locking its lid), other than a bar lock, which likewise antedates the special art under consideration.

A mail chute is a long, narrow conduit, built of boxlike sections set on end. To fasten such boxes to a support, and put doors or lids on them, and then lock them, so that no one can either open them or take them down without violence, is doubtless a good thing; but a claim for the means or method of accomplishment must show invention in the mechanism. If in this claim the word "conduit" were substituted for "mail chute," the nature of plaintiff's demand would be plainer. There is no magic in "mail chute"; the mechanical question, and therefore that of invention, is just what it would be as to any other boxlike, sectional conduit for the transmission of solids by gravity, unless the inventive thought has mechanical relation to the peculiar thing transmitted. This claim has not, and the specification does not help it out; therefore it shows no invention.

The decree below is reversed, and the cause remanded, with directions to dismiss the bill for lack of invention in the claims sued on, with costs in both courts.

LEARNED HAND, District Judge. I concur in the foregoing, with the following exceptions: I think claims 4, 6, and 8 of the first patent valid, but infringed only by the defendant's first structure. I do not think claims 21, 39, 40, and 41 of the second patent infringed, and therefore do not pass on their validity. As a result I should give the plaintiff a decree upon claims 4, 6, and 8 of the first patent. The practical result of this would not be substantially different from that reached by the majority of the court.

(247 Fed. 515)

MINER v. T. H. SYMINGTON CO.

(Circuit Court of Appeals, Second Circuit. November 13, 1917.)

No. 13.

1. PATENTS 19-"INVENTION"-INCREASE IN STRENGTH OF DEVICE. Mere increase in strength of a mechanical structure is not "invention." [Ed. Note.-For other definitions, see Words and Phrases, First and Second Series, Invention.]

2. PATENTS

328-INFRINGEMENT-DRAFT-RIGGING.

The Miner patent, No. 668,655, for a draft-rigging for railway cars, construed in view of the prior art, is limited to the precise construction described and shown. As so construed, held not infringed.

The Miner patent, No. 668,656, for a draft-rigging for locomotive tenders, the essential feature of which is the form of the side plates of such rigging, is void for lack of invention in view of the prior art.

For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes

4. PATENTS

328-INFRINGEMENT-DRAFT-RIGGING.

The O'Connor patent, No. 829,728, for a draft-rigging for railway cars, held not infringed.

5. PATENTS 312(2)-SUIT FOR INFRINGEMENT EVIDENCE.

In a suit for infringement in which the only issues tried are those of validity and infringement, evidence to show that defendant enticed away complainants' workmen, skilled in the making of the patented structures, is irrelevant to the issues.

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

Suit in equity by William H. Miner against the T. H. Symington Company. Decree for complainant, and defendant appeals. Reversed. For opinion below, see 238 Fed. 806.

The action is upon three patents: No. 668,655 issued to plaintiff Miner (Claims 4 and 5). This patent is hereinafter referred to as the first Miner patent. No. 668,656, also issued to the plaintiff Miner (Claim 8). This patent is hereinafter referred to as the second Miner patent. These two Miner patents were applied for and issued on the same days. The first is said to relate to "draft-rigging for railway cars," and the second to "tandem spring draftrigging for locomotive tenders."

"Draft-rigging," or "draft-gear," is a phrase meaning "the whole of the arrangements by which a car is drawn, and which resists concussions."

No. 829,728, issued on the application of O'Connor and owned by plaintiff (Claims 5, 6, and 7), is also in suit. This patent also is described as for "draft-rigging for railway cars." It is proven and hereafter assumed that mechanism of this general type and for the purpose of taking up or minimizing the effect of the jerks and concussions incidental to the operation of railway cars and tenders (so far as their hauling apparatus is concerned) is old, and the art crowded.

All of these patents relate to what is known as "tandem draft-rigging," for which a British patent was issued as early as 1865; and the plaintiff himself has received or acquired about a hundred patents relating generally to this subject.

Of the claims in suit under the first Miner patent, the fourth claim is as follows:

"The combination with the draw-bar, pocket-strap, tandem-arranged springs and followers, of a pair of flanged steel draft-beams, a pair of stop-castings secured thereto, and each furnished with three stops and upper guide-flange, a lower guide-plate for the followers and the draft-rigging to rest upon extending between said draft-beams and secured thereto by bolts passing through the lower flanges thereof, the upper guide-flanges of said stop-castings each tapering from the middle toward both ends to form a fulcrum for the pocketstrap to swing upon, substantially as specified."

The fifth claim only varies from the fourth in specifying that the lower guide plate shall have "a central longitudinal channel for the lower member of the pocket-strap." The single claim of the second Miner patent here in suit is as follows:

"8. In a draft-rigging, the combination with the draw-bar, pocket-strap, tandem-arranged springs and followers at both ends of both springs, of a pair of stop-castings having each three stops for the followers to abut against, the middle stop at its portions above and below the follower-guides being deeper than the end stops to form pivots for the draw-bar and pocket-strap to swing or turn laterally upon, substantially as specified."

Of the O'Connor patent, the fifth claim is as follows:

"In a draft-rigging for railway cars, the combination with the draw-bar, springs and followers, of side plates or stop-castings each consisting of a cast web of substantially uniform thickness throughout, having integral upright bends or convolutions therein forming upright stop-shoulders, and having also For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes

horizontal convolutions therein forming longitudinal strengthening ribs or flanges, said horizontal convolutions extending between but not across said upright convolutions, substantially as specified."

The sixth and seventh claims of this patent merely vary the form of statement chosen for the fifth, the latter being stated as a combination, the sixth and seventh describing with particularity the "draft-rigging side plate or stopcasting," which is the substance of O'Connor's invention. He did not and does not pretend to have invented or devised a complete draft-rigging; he states that he deals particularly in "improvements in the construction of the side plates" of such rigging. The lower court found all the above enumerated or referred to claims valid, and declared infringement of all of them in that the defendant company had manufactured certain draft-rigging apparatus for the New York Central, etc., Railroad upon the order of the latter, and in pursuance of its designs. The defendant took this appeal.

The particular article of manufacture said to infringe all of these claims is a stop-casting made by Symington for the railroad, and pictured below:

The fifth claim, however, of the first Miner patent, is more particularly said to be infringed by defendant's application to the above stop-casting of the supporting plate shown below as passing from one stop-casting to the other and underneath the after end of the pocket-strap: