GROSSCUP, Circuit Judge. The fire proof window described in appellants' patent is one made of wire glass, or other fire proof glass, set in a metal frame, which, in turn, is set into a metal casement, the window being so hinged above its center, that when let at rest, it falls automatically into its place in the casement. In this state, and without further accessories, the window, admittedly, existed in the prior art. Voightmann's patent contemplates that the window should not always be kept closed, but on occasion should be kept open; and he accomplishes this by a cord or chain attached at one end to the upper end of the window, and at the other to a hook below the window; in which chain is inserted a fusible link so placed that in case of fire, while the window is open, the link would be exposed to the outside temperature; and, melting on exposure, would part, leaving the window to fall into its casement, thereby presenting, with the surrounding wall, a solid fire wall. Admittedly a window so hinged that it is kept open by a cord or chain attached to its upper edge, and falling when the cord or chain is severed, is old. The fusible link also is old. A fusible. link, so placed that it would melt under heat coming from a chamber outside its own chamber, is old. Such a link was employed to open and close elevator sky lights, and in other connections in the previous art. It is possible that Voightmann was the first to conceive that windows thus constructed would be a valuable adjunct to fire proof buildings. If so, it is the previousness of his conception that constitutes the merit of his so-called invention; for the mechanical embodiment of that conception is old. But it does not follow that a conception is patentable merely because it is first in time. Concept, alone, is not patentable. Concept must be accompanied by mechanical embodiment; and, as the law now stands, the mechanical embodiment, to make the invention patentable, must itself be unanticipated. Now in Voightmann's patent, every mechanical element described is found to have pre-existed; to have pre-existed in the form utilized by Voightmann; to have pre-existed performing the functions performed in Voightmann's device; and performing those functions to the same result. Voightmann possibly has pointed out to the world a wider use of the pre-existing art than was before known. But the discovery of an enlarged use is not, of itself, patentable invention. The decree of the Circuit Court is affirmed S. FRANKLIN & CO. v. ILLINOIS MOULDING CO. et al. 1. PATENTS-REISSUE. No. 1,100. The presumption that new matter found in the specification of a reissue patent was omitted from the original through inadvertence or mistake, arising from the fact of the granting of the reissue, is prima facie only, and merely places the burden of proof upon a defendant contesting the validity of the reissue. 2. SAME-VALIDITY OF REISSUE-MACHINE FOR ORNAMENTING PICTURE FRAMES. The Adams second reissue patent, No. 11,980 (original No. 642,059), for a machine for mounting ornamental composition directly upon circular picture frames, claims 11 to 18, are void as covering a construction not included in the original patent. Appeal from the Circuit Court of the United States for the Northern Division of the Northern District of Illinois. For opinion below, see 128 Fed. 48. The bill is to restrain reissued letters patent, No. 11,980, issued April 8th, 1902, to Frank E. Adams, assignor to Samuel Franklin, for a machine for mounting ornamental composition directly upon circular picture frames. The original letters patent, on which the reissue was based, were No. 642,059 issued January 30th, 1900, to Francis E. Adams. Other patents cited were the following: No. 242,934, June 14, 1881, J. P. Jamison. No. 430,576, June 17, 1890, J. Groble. No. 445,215, Jan. 27, 1891, W. Zoeller. No. 590,200, Sept. 14, 1897, F. A. Brausil. No. 591,520, Oct. 12, 1897, W. Zoeller. British Patent No. 7,163, Apr. 25, 1891, H. Huppertz. The bill was dismissed by the Circuit Court for want of equity, and from this decree the appeal is prosecuted. The further facts are stated in the opinion. William B. Rummler, for appellants. Before JENKINS, GROSSCUP, and BAKER, Circuit Judges. GROSSCUP, Circuit Judge. Prior to Adams' machine, as described in his original letters patent, ornamental work made out of paste pliable to impression, was applied by machinery to picture frames. None of these frames thus ornamented, however, were oval or circular. They were straight frames, and the ornamentation was put on by running the frames between bearings over a feed roller, and under an impression roller-the paste being put on the frame just in front of the rollers. In his original letters patent, Adams sought to apply this kind. of machine made ornamentation to oval, or circular frames. To do this he employed a feed roller, and impression roller, as formerly. But axially with these rollers he put in two bearings, one on the inner, and the other on the outer side of the frame, so that as he conceived the machine would operate, the frames would be guided by these two bearings over the table, and through the rollers at practically right angles to the rollers. The original application having been rejected in the patent office on citation of the Groble and Huppertz patents, Adams inserted in the description of his invention, as an explanation, the following: "A guide or stop only at one side edge, either at the inside, or at the outside of an irregular, or an even ordinary long oval picture frame, would not be sufficient to serve as a guide even in the hands of a skillful workman." But in one of the claims of the application, as thus amended, he included as one of the elements of the combination "a stop adjacent to the wheel, and in line with the axis of the shaft." Thereupon the examiner pointed out that according to the language in the description already quoted, the element of the single stop claimed would be inoperative; and thereupon the claim was stricken out, the explanation in the description remaining; and nowhere, either in the claims, or the description of the patent as it was originally granted, does the suggestion of a single guide or bearing again show itself. Now when we come to the reissue, we find that the clause already quoted from the original patent was repeated; but repeated with an addition that, as this case shows, entirely changed its meaning. The quotation, with the addition, is here repeated, the addition being in brackets: "A guide or stop only at one edge, either at the inside, or the outside of an irregular frame, or even an ordinary long oval picture frame [in which the composition is mounted on a slanting surface] would not be sufficient to serve as a proper guide even in the hands of a skillful workman." The effect of the reissue, it will thus be noted, was to eliminate the original clause wholly from the description of the invention, except as it applied to the mounting of the ornamental composition on frames having a slanting surface. The motive for this modification of the original letters patent, by reissue, is made perfectly plain by the facts disclosed in the record before us. Following Adams' original letters patent, but before his reissue, the appellees discovered the desirability of picture frames, the outer edge, as well as the sides, of which should be ornamented; and to attain this end employed a machine that used but one guide on the inner edge; finding, that except in the mounting of ornamental composition on slanting frames, such a machine would work as well as if two guides were employed. Plainly, to our minds, appellants reissue was intended to antedate this machine of the appellees; and that could be done of course, only by a reissue that would carry the modification back to the date of the original letters patent. But it is said in argument that whatever the evidence in that respect might disclose, the legal conclusion is closed in favor of appellants, because, as argued, it must be presumed that before the reissue was issued, there was before the patent office satisfactory evidence that, but for inadvertence or mistake, the original letters would have taken the form that the reissue now employs. That some such presumption properly attaches itself to the reissued patent we may admit. At most, however, it is a prima facie presumption only. It is not a presumption that debars the appellees from challenging the validity of the reissue by showing facts that would overcome the presumption. The reissue is before us just as it was before the patent office before it was allowed, except that while the burden of proof then was upon the appellants, the burden is now upon the appellees. But, as already indicated, appellees have, in our judgment, fairly met the burden, and made good their case against the reissue. The decree of the Circuit Court is affirmed. BAKER v. CRANE CO. CRANE CO. v. BAKER. (Circuit Court of Appeals, Seventh Circuit. April 11, 1905.) PATENTS-ACCOUNTING FOR INFRINGEMENT-PATENTED IMPROVEMENTS. On an accounting for damages or profits for infringement of a claim of a patent covering an improvement on an existing device, it is incumbent on complaint to show how much of the profit made by defendant on the entire article was due to the patented improvement, or, in case of damages, how much of complainant's loss was due to such improvement. [Ed. Note.-Accounting by infringer of patent for profits, see note to Brickill v. Mayor, etc., of City of New York, 50 C. C. A. 8.] Appeal and Cross-Appeal from the Circuit Court of the United States for the Northern Division of the Northern District of Illinois. Baker secured against Crane Company a decree for an injunction and an accounting, which was affirmed on appeal. Crane Co. v. Baker, 125 Fed. 1, 60 C. C. A. 138. Both parties are now appealing from the decree on accounting. Clifford E. Dunn, for Clara E. Baker. Paul Synnestredt and F. H. W. Clay, for Crane Co. Before JENKINS, GROSSCUP, and BAKER, Circuit Judges. BAKER, Circuit Judge. The decree awards complainant $1,177.05, as being the profits defendant derived from the infringement. The utmost that can be claimed for the evidence and finding respecting defendant's profits is this: Defendant made 4,130 appliances, which embodied claim 1 of the patent, at a cost of 862 cents each, and sold them at an average price of $1.15 each. But the patent was for an improvement upon an existing device for the same purpose, which was made and sold by defendant. What profit was made on the old device? Was the old device utterly useless and unsalable at any profit after the invention was disclosed? How much of the 282 cents, the difference between the cost and selling price of defendant's new appliance, was due to the improvement covered by claim 1? The record fails to show. This was necessary. Seymour v. McCormick, 16 How. 480, 14 L. Ed. 1024; Garretson v. Clark, 111 U. S. 120, 4 Sup. Ct. 291, 28 L. Ed. 371; Keystone Co. v. Adams, 151 U. S. 139, 14 Sup. Ct. 295, 38 L. Ed. 103. Complainant asserts that the court, in addition to or in lieu of defendant's profits, should have allowed damages to the extent of the gains complainant would have made on defendant's sales. The evidence and the finding show that complainant made the device embodying the patented improvements at a cost of $1.03, and sold it for $2.25. Complainant's profits on 4,130 appliances would be $5,038.60. But even assuming, contrary to the master's finding, that complainant, but for the infringement of claim 1, would have made defendant's sales at the very much higher price, there is no basis on which to sustain complainant's contention. The damages for which defendant might be liable are damages for infringement of claim 1. What were the cost and the selling price of the appliance made and sold by complainant, before including the improvements shown in the patent? What additional profit did complainant make by reason of the improvements? How much of the additional profit was due to the improvement covered by claim 1, and how much to claim 2, which was not infringed? In short, what was the commercial value of claim 1 to complainant? Or to any one? There is no evidence. Complainant insists that the court erred in limiting the accounting period. The record contains no warrant for more than nominal damages at any time. We cannot reopen the taking of evidence simply because the complainant has failed to make a case. The decree is reversed, at complainant's costs, with the direction to enter a decree for $1. |