which he has rightfully resorted with a mere promise by the offender of better conduct in the future. Considering the likelihood that an infringement once practiced will be repeated as long as the wrongdoer believes he is right (as from the pleadings in this case the defendant appears to believe), we think the patentee is entitled to a more effective remedy than a mere promise of that kind. The authorit es abundantly support this conclusion. Celluloid Mfg. Co. v. Arlington Mfg. Co. (C. C.) 34 Fed. 324; White v. Walbridge (C. C.) 46 Fed. 526; Sawyer Spindle Co. v. Turner (C. C.) 55 Fed. 979; Matthews & Willard Mfg. Co. v. National Brass & Iron Works (C. C.) 71 Fed. 518: New York Filter Mfg. Co. v. Chemical Building Co. (C. C.) 93 Fed. 827. Some other questions are argued which, in our opinion, concern the accounting to follow and will be then more appropriately met and disposed of, and which, in consideration of the conclusions already announced, do not require present consideration by us. The decree of the Circuit Court was correct, and it is accordingly affirmed. WILLS v. SCRANTON COLD STORAGE & WAREHOUSE CO. 1. PATENTS No. 6. INVENTION-REFRIGERATOR BUILDING. The Wills reissued patent, No. 12,300 (original No. 742,540), for a refrigerator building the essential feature of which is the use of flaps or other devices for closing the space between the elevator car and the sides of the shaft to prevent the escape of cold air from the refrigerating rooms when the elevator is in use, is manifestly void on its face for lack of invention. 2. SAME-SUIT FOR INFRINGEMENT-PATENT INVALID ON ITS FACE. Where the invalidity of a patent for lack of invention is clear upon its face, the court may so declare it sua sponte, although the question is not raised by the pleadings, and may dismiss a bill for its infringement. [Ed. Note.-For cases in point, see Cent. Dig. vol. 38, Patents, § 551.] Appeal from the Circuit Court of the United States for the Middle District of Pennsylvania. For opinion below, see 147 Fed. 525. Herbert Knight and Edmund Wetmore, for appellant. R. L. Levy, for appellee. Before GRAY and BUFFINGTON, Circuit Judges, and LANNING, District Judge. GRAY, Circuit Judge. This is an appeal from a final decree of the circuit court for the middle district of Pennsylvania, dismissing the bill of the complainant-appellant. The bill claims infringement by the defendant of a certain patent for an improvement in refrigerator buildings, being Reissued Letters Patent No. 12,300, dated January 3, 1905. Defendant, in its answer, sets forth the defense of noninfringement, and upon issue joined, testimony in support of said de 153 FEDERAL REPORTER. fense was duly taken, as set forth in this record. At the argument in the court below, however, it was contended by defendant that the device set forth and described in the letters patent did not, on the face thereof, show patentable invention, and this contention having been sustained, it was upon this ground that the decree dismissing the bill was entered. Refrigerator buildings containing cold storage rooms on their several stories, are not very old in the refrigerating art. tors to carry commodities to the several floors, to be stored, caused an The use of elevaescape of cold air through the spaces in the elevator shaft surrounding the car, when the door communicating therewith was opened. It appears from the evidence and by the statements of the patent itself, that the device most frequently resorted to, to prevent, or at least diminish, the loss of cold air in this way, was to provide a small ante-room, which the shaft of the elevator was introduced. into refrigerated in the same way as the storage rooms, and whatever cold This ante-room was air escaped down the shaft, when the elevator door was opened, escaped from this ante-room. The goods, being held in the ante-room until the door communicating with the elevator shaft was closed, could then be moved into the storage room, through a door which until then had been kept closed. In this method, there was the obvious objection that the temperature of the ante-room was somewhat raised by each opening of the elevator door, so that when the door to the storage room was opened, its temperature was affected by the temperature of the ante-room. There was also, as stated in the specifications, the disadvantage of the warm air coming up the shaft condensing its moisture on the refrigerator pipes, and producing a damp and unwholesome atmosphere. The claimed invention of the patent in suit is the making air tight the space between the car and the shaft in which it travels, thus permitting the elevator shaft to be introduced directly through the cold storage rooms on the several floors, the only effect in the temperature of which, would be that produced by the air confined in the small space of the car itself when the door was opened. This was undoubtedly an advantage in requiring but one handling of the goods to be stored, and the saving of space occupied by an ante-room. stated in the specifications, as follows: This has all been "Heretofore in refrigerating plants and cold storage buildings it has been customary where elevators were employed to convey merchandise from one floor to another to provide a vestibule or anteroom between the elevator shaft and the cold rooms in order that the cold air in the latter compartment should not escape up or down the elevator shaft while the entrance thereto was open. This escape of the cold air was made possible because the cab did not fit the shaft and the shaft openings with sufficient closeness to prevent a free and extensive movement of air at and around its sides or edges and also because during the rush hours of business the doors between the rooms were often left open. To obviate these difficulties as much as possible, the anteroom was provided as a sort of air lock or buffer, and the space so employed was by reason of the shifting temperature rendered useless for storage and was consequently a loss of space. fering temperatures wet and musty and always unsanitary. My present inThis room was also by reason of the difvention is designed to utilize this space and make it clean and wholesome and, in fact, to absorb the space in the general storage room and make the cab a traveling anteroom, and to this end I make the cab practically air- tight. except the open face or faces or fronts, and provide flexible flaps, which bridge over and between the edges of the cab and the corresponding opening in the elevator shaft and provide a vestibule. The result will be that while the cab is discharging or taking on goods the air in the adjoining room cannot escape through or around it. The room and space heretofore rendered unavailable for storage purposes can thus be utilized. In the employment also of the old form of anteroom as an air-lock or buffer it implied and required a double handling of the goods. It constituted an intermediary room only. This room in connection with my invention I eliminate and dispense with and absorb into the general storage room. Air locks are established by merging the air in the elevator car and each floor when they are thrown together in my present invention, as will be explained." There are six claims of the patent in suit, the first of which is as follows: **(1) A refrigerator-building comprising two or more floors, an elevator shaft, means of access between the floors and said shaft, an elevator-car providing a traveling anteroom operating in said shaft, and means whereby an air-lock is established between said elevator-car and each floor when they are thrown together." The other claims are more specific as to means for closing or bridging the space between the car and the sides of the elevator shaft. The question, however, as to patentability is applicable to them all. It was admitted by the counsel for the appellant, that there was no invention in the means employed to make the space between the elevator shaft and the car air-tight at the different floors. His contention, however, was that the invention lay in the conception or "happy thought" that an ante-room might be dispensed with, and the goods to be refrigerated directly introduced into the cold storage rooms, by simply making the shaft air-tight by any well-known device. This is a forceful, as well as an ingenious, way of stating appellant's case, and might as to some combinations of old elements be applicable and decisive. Here, however, it fails to convince us that patentable invention was involved in the combination of the patent in suit. The essential feature of the combination was making air-tight the shaft of the elevator around the car, so as to prevent the escape of cold air from the floor at which the car was being loaded or unloaded. When the difficulty to be overcome is so obvious a one, as the escape or entrance of air through the open spaces between the elevator car and the shaft through which it travels, into the rooms communicating therewith, it is hard to conceive what invention there can be in making air-tight those open spaces by bridging them with rubber flaps, or any of the other well-known devices for such purposes. It would seem that the conception or thought of doing so, was as obvious as the means employed. To put weather strips on a window or door, to prevent the ingress of cold air or the escape of warm air, does not involve invention, any more in the thought than in the means employed. As pointed out by the learned judge of the court below, the fact that this combination dispensed with the use of the ante-room, and made necessary only one handling of the goods carried, though it may establish the utility essential to patentability, does not of itself prove invention. Neither is the argument for the patentability of the combination advanced by the constant iteration of the appellation "traveling ante-room, as applied to the elevator car. It is still an elevator car, as it was before the spaces between it and the shaft were made airtight. It performs the same function and has the same relation to the cold storage room that it had to the ante-room. It is the packing of the piston, the making air-tight of the shaft in the space around the car, that makes possible the introduction of the elevator directly into the cold storage room. We have carefully considered the cases referred to by appellant's counsel, in which courts have refused to sustain demurrers to the patentability of the device on the face of the letters patent, and we have not been unmindful, in the consideration of this case, of the admonition so frequently made by courts, that patents should not be declared invalid, upon demurrer or otherwise, upon the face of the patent itself, unless the invalidity so clearly appears that no testimony can change the legal aspect of the case, and that if doubt exists, the complainant is entitled to its benefit. But in cases thus clear on the face of the patent itself, courts may, even where the question is not raised by the pleadings, sua sponte, declare the patent invalid and dismiss the bill. That the power and duty of the court may have this extent, is clearly held by the Supreme Court in Brown v. Piper, 91 U. S. 37, 43–44, 23 L. Ed. 200. Slawson v. Grand St. Ry. Co., 107 U. S. 649, 652, 2 Sup. Ct. 663, 27 L. Ed. 576. In view of the clear and elaborate opinion of the learned judge of the court below ([C. C.] 147 Fed. 525), it is unnecessary to further extend the discussion of the single question involved in this case. The decree below is therefore affirmed. NATIONAL ENAMELING & STAMPING CO. et al. v. NEW ENGLAND ENAMELING CO. (Circuit Court of Appeals, Second Circuit. March 1, 1907.) No. 261. PATENTS-VALIDITY AND INFRINGEMENT ENAMELING METAL WARE. The Claus patent, No. 527,361, for an improvement in enameling metal ware, held void as to claims 1, 2, and 3, and not infringed as to claims 9, 10, 11, and 12. Appeal from the Circuit Court of the United States for the Southern District of New York. Arthur v. Briesen (Louis Marshall, of counsel), for appellants. R. N. Kenyon, Wm. Houston Kenyon, and Steinhardt & Goldman (Walter F. Rogers, of counsel), for appellee. Before WALLACE and COXE, Circuit Judges, and HOLT, District Judge. HOLT, District Judge. This is an appeal by the complainants from a portion of a decree of the Circuit Court rendered in a suit brought to restrain the alleged infringement of United States patent 527,361 dated October 9, 1894, granted to Hubert Claus for an improvement in enam eling metal ware. The patent contains 13 claims. The court below held that claims 1, 2, and 3 were invalid, that claims 4, 5, 6, 7, and 8 were valid and infringed, and that claims, 9, 10, 11, and 12 were not infringed. Claim 13 was not involved in the suit. The defendant formerly appealed from that portion of the decree which held that claims 4, 5, 6, 7, and 8 were valid and infringed, and on a former hearing in this court that portion of the decree was reversed, and a final decree was entered dismissing the bill. 151 Fed. 19. From the portion of the decree below which dismisses the bill of complaint as to claims 1, 2, 3, 9, 10, 11, and 12 the complainant now appeals, and the question upon this appeal is whether the decision of the court below holding that claims 1, 2, and 3 were invalid, and claims 9, 10, 11, and 12 were not infringed, was erroneous in any respect. The decision of this court on the former appeal that claims 4, 5, 6, and 7 were invalid necessarily establishes that claims 1, 2, and 3 are invalid. Claims 4, 5, 6, and 7 are in substance the same as claims 1, 2, and 3, except that the latter claims are more detailed. The decision of the court that the later claims were invalid necessarily established that the broader and more general earlier claims are also invalid. Claims 9, 10, 11, and 12 are process claims. Claim 9 reads as follows: "The process of enameling which consists in coating an article with an alkaline enamel and in applying thereto while still moist a metallic salt or salts, substantially as described.” Claims 10, 11, and 12 are substantially the same, except that, instead of the general term "a metallic salt or salts," is substituted, in claim 10, "sulphate of iron and sulphate of copper," in claim 11 "sulphate of iron," and in claim 12 "sulphate of copper." The process particularly described in the specification for the application of the metallic salts to the enamel is as follows: "The surface to be coated is cleaned and the alkaline enamel applied in a thin layer in any suitable manner. The metallic salts are now applied to the enamel coating by dusting or by sprinkling or the salts may be mixed with the enamel before it is applied to the surface to be coated." It is apparent, however, from the entire patent that Claus preferred the process of applying the metallic salts by dusting or sprinkling them on the moist coat on the article after it was dipped, rather than by mixing it with the enamel before it is applied to the surface to be coated. The only claim in his German patent is for the process of applying the metallic salts by dusting or sprinkling. The court below held, in substance, that the defendants had never applied metallic salts by dusting or sprinkling, and that, if that was to be regarded as the invention, the defendants had never infringed. It also held that, if the claims were to be construed broadly enough to include the mixing of the metallic salts with the enamel before its application to the article to be enameled, the process was not novel. We entirely concur in these views of the court below. The method of obtaining mottles in enameling ware by mixing metallic oxides in the dip was old, and well known in the art. It was described in the |