specifications were not changed, it is true, and having been framed to cover headed, as well as headless ends, it explains how they now seem to give countenance to both. But that is of no consequence. It is true, also, that in the public use proceedings, which, as already stated, were instituted in order to defeat Beckert's right to a patent for a headed pin, it was shown that, while Beckert could not carry back his invention beyond June, 1900, pins with heads, substantially the same as are in controversy here were made and sold by the Dodge Needle Company, where Currier was employed, as early as March 1898. This, of course, was fatal to Beckert, but did not help Currier, whose status was not changed by it, nor his rights restored; his patent having been already taken out. It merely made public property of the headed form, which could not thereafter be monopolized by any one. It may have established, as between Currier and Beckert, contrary to the result in the interference proceedings, that Currier was entitled to priority, as to the headed as well as the headless ends. But the trouble is that it came too late to be of any benefit to him, either then or now. If it be said that the patent, as issued, is broad enough to cover both forms, both being spoken of in the specifications, and there being nothing inconsistent in the claims, the patentable feature of the invention, as declared by the examiner, being the compression of the side walls of the needle along with the ends of the pins to form depressions, in which the heads, as such, play no part, it is to be answered that, not only does this overlook the fact that Currier, having been compelled to cancel his claims for headed pins, whether rightly or wrongly, is now estopped from asserting the form which they covered, but, also, going back of this, that the right to a headed pin as a patentable part of the invention is only maintainable on the strength of the application of August 26, 1901, which, in view of the disclaimers which preceded it and the entirely new and enlarged conception of the invention introduced by it, cannot be properly treated as a continuance of the original-the examiner to the contrary notwithstanding-and that, taken as new, as it must be, it is met by the two years' prior public use of headed pins of this character by the Dodge Needle Company, which Dodge and Currier have themselves established, which effectually disposes of it.

This is sufficiently decisive of the case, but the same result is reached by another and independent course. Assuming for the sake of argument, notwithstanding what has just been said, that so far as concerns the proceedings in the Patent Office the inventor, after all, was left with a free hand, the prior art is still to be reckoned with, and cannot, in my judgment, be overcome. Nothing directly anticipating the construction in controversy, it may be, is to be found before the Huke and Weston (1898) patent is reached, the others which are cited, such as the first, second, and third Adams, the Jackman and Flanders, the Mitlacher, and the Treat, being concerned with other structural features which sufficiently distinguish them. All, indeed, are progressively engaged with, and seek to solve the same general problem of securing the pin firmly in place without unduly weakening the needle body, or leaving a roughness or burr at the point of union with the sides, to catch and entangle the fiber of the yarn, and all have necessarily, there

fore, certain more or less common points of resemblance. But in none except the Huke and Weston, and one figure of the Mitlacher, is there a depression of the ends of the pin below the sides of the needle, which at the same time extends to and involves a portion of the circumjacent surface; the ends of the needle coinciding or being flush with and forming a part of the bottom of such depression, the same as in the device in suit. That this structural form, however, does appear in the two mentioned, there can be no question; and, still more to the point, in the Huke and Weston there is a plainly headed pin, the bevel or flange of which extends over and binds upon the walls of the pin hole, the outer extremity at the same time combining with the adjacent parts to make up the bottom of the depression formed in the side of the needle. In configuration and structure this is indistinguishable from the headed form of pin and depression which is now in controversy, which it thus apparently anticipates, for confirmation of which it is not necessary to go further than the argument made to the examiner when the Huke and Weston patent was cited against the original Currier application; the only distinction there attempted, aside from the method of forming the depression, being that, while the Huke and Weston pins had heads which extended over onto and stood in the bottom of the countersinks, the ends of the Currier pins were of uniform size, and stood flush with and formed a part of the bottom of the depression, which could not be said of the other-a distinction which disappears in the present contention.

It is sought to overcome this result, however, by the fact that in the device in suit the ends of the pins are "compressed to form depressions," as it is expressed in the patent; that is to say, that the depressions in the sides of the needle, by which the point of union between the end of the pin and the needle body is carried down and away from contact with the yarn, are made by pressure exerted upon the ends of the pins and the surrounding surface by the dies or punches, instead of being dressed out or cut with a tool, as in the Huke and Weston, the one removing all chance of a burr or roughness, as it is claimed, where the other is altogether likely to produce it, the distinction constituting the virtue and the patentable feature of the invention. But the patent is not for a product-the result of a method or process-but for an article of special mechanical structure, into which the method of manufacture cannot enter as a patentable element. The question is one of structural form, and not how this may happen to be brought about, as to which, if this were not the case, two articles, absolutely indistinguishable in shape, size, construction, and useful qualities, would not conflict, provided one was made by one method, and the other by another, a position which will hardly be contended for. In the present comparison a Huke and Weston needle does not necessarily have a roughness or burr. It may or it may not, according to circumstances. Perhaps it is more likely to have, as well as to be structurally weaker, because it is recessed by means of a tool, instead of being compressed between dies. But this is the most that can be said. And dressing off with a tool is only given as a preferred way, to which the invention is not thus confined. Outside of this, it is in all respects the same as the Currier needle, the headless as well as the

headed form. And the use of compressing dies to force in the heads and surrounding surface to form depressions, which is the only distinction asserted, being in no respect new, it certainly involved no invention, even if the method of manufacture was open for consideration, to substitute it in place of another method in vogue, based upon possibly advantageous results. The Huke and Weston needle being, therefore, a clear anticipation as to headed if not headless pins, the patent for this reason also cannot be construed so as to include them, and the defendant does not infringe.

Let a decree be drawn dismissing the bill on the ground of non-infringement, with costs.

CONSOLIDATED RY. ELECTRIC LIGHTING & EQUIPMENT CO. v. ADAMS & WESTLAKE CO.

(Circuit Court, N. D. Illinois, E. D. March 15, 1907.) ·

No. 27,850.

PATENTS-VALIDITY AND INFRINGEMENT-MECHANISM FOR ELECTRIC LIGHTING OF CARS.

The Kennedy patent, No. 740,982, for mechanism for driving dynamos on railway trucks for the purpose of the electric lighting of cars, the essential new features of which are a removable cradle having therein a block upon which the dynamo is pivotally mounted, and which is adjustable to secure parallel alignment with the car axle, covers a combination which is an advance upon the prior art, and discloses invention; also held valid as against the claim of prior use, and the owner held entitled to an injunction to restrain infringement.

In Equity. On final hearing.

Thomas W. Bakewell, Clarence P. Byrnes, and Edward Rector, for complainant.

Louis K. Gilson, for defendant.

KOHLSAAT, Circuit Judge. Complainant seeks by the bill herein to restrain defendant from infringing claims 1, 2, and 3 of patent No. 740,982, issued to Patrick Kennedy on October 6, 1903, for mechanism for driving dynamos on railway-trucks, held by it under assignment from the patentee. The claims read as follows, viz.:

(1) The combination with a car-truck and a bracket device extended outside of the beams of said truck, of a removable cradle placed between said bracket and an outside cross-beam of the truck, a dynamo within the cradle and adjustably pivoted thereto, a pulley on the armature-shaft of the dynamo, a driving-pulley on an axle of the truck, a driving-belt extended from the driving-pulley to the pulley on the armature-shaft, and means for elastically swinging the dynamo to maintain the tension of the belt, as described.

(2) The combination with a car-truck and a bracket extended outside of the beams of said truck, of a removable cradle placed between said bracket and an outside cross-beam of the truck, a dynamo within the cradle adjustably pivoted at the bottom thereof, a pulley fast on the armature of the dynamo, a driving-pulley on the axle of the truck, a driving-belt extended from the driving-pulley to the pulley on the armature-shaft, and a compression-spring provided to swing the dynamo to maintain the tension of the driving-belt, as described.

153 F.-13

"(3) The combination with a car-truck, of a bracket-support outside of an outer cross-beam of the truck, a cradle having lugs at opposite sides of its top to rest upon the bracket and the adjacent cross-beam to suspend the cradle in the space between them, and a dynamo pivotally supported at its bottom within the cradle, of a pulley on the armature-shaft of the dynamo, a drivingpulley on an axle of the truck, a driving-belt extended from the driving-pulley to the pulley on the armature-shaft, a compression-spring for swinging the dynamo against the tension of the belt to control said tension, and means for adjusting the compression of the spring, as described.”

In substance, they call for a dynamo mounted upon an adjustable pivot and supported within removably attached cradle irons, held in position by lugs resting upon the end truck-beam and the rear crossbar of a bracket-frame provided for that purpose, together with means for keeping the driving belt taut.

The defendant contends that (1) the state of the art considered. complainant's device discloses no invention; (2) that it was proposed and used by the officials of the Pennsylvania Railroad not less than 18 months before complainant's assignor filed his application for a patent, which he did after obtaining knowledge of such device from said use; and (3) that whatever invention there may be in the patent in suit must, by reason of the prior art, be found in matters of mere detail, not found in defendant's device.

It was not new to utilize the revolutions of railway-car axles in generating electricity for car-lighting purposes. Prior to the issuance of patent No. 699,187 to complainant's assignor herein, on May 6, 1902, dynamos had been located between the cross-beams of the trucks, or suspended from the underside of the car. The first method was objectionable because the dynamo was inaccessible, except by raising the whole car body from the trucks, and because the driving-belt was, by reason of the close proximity of the axle pulley to that of the armature, necessarily made very short, and consequent'y liable to be displaced and to operate otherwise unsatisfactorily. The suspended method placed too much strain upon the sustaining appliances, and also was apt to disarrange the relation between the elements of the driving device with reference to each other, by unavoidable changes in the alignment of the truck wheels in making curves and the like. The 1902 patent to Kennedy, last above named, calls for "a support for the dynamo outside of the truck composed of side bars made fast at their inward ends to an inward cross-beam of the truck, extended outward over an outboard of the truck and beyond the latter, and thence shaped to form a cage for the dynamo, then inward and back to the truck; means for attaching the said bars to the truck and means for releasing the dynamo in the tage as described." This was the first car-lighting device hung from a bracket and outside of the truck. Kennedy claims that it was subject to too much vibration, tending to loosen the joints and shake the lubricating oil from the dynamo bearings. He sets out that the device of the patent in suit obviates the above defects, and insists that he was the first to place upon the market a practical substitute for the independent motor for car-lighting purposes. The difference between this 1902 patent and the one in suit consists in (1) the form of the outside sustaining bracket; (2) a cradle readily removable without lifting the car body; (3) an ad

justable block at the bottom of this cradle, upon which the dynamo is pivoted, and which is capable of being moved back and forth to secure parallel alignment with the car axle.

There is nothing new in the bracket of the patent in suit. It is so constructed as to be more unyielding than that in the 1902 patent to rough handling and jolts, by means of braces, edgewise bearing and fastenings, and other well-known devices. Instead of forming a basket, it is carried out beyond the truck much like a bale, consisting of two outward extending arms and a cross-bar, connecting the arms and integral therewith. These, together with the rear cross-beam of the truck, form a square frame in which the cradle is suspended. The lugs of the cradle-irons rest upon the cross-bar of the bracket and the rear beam, respectively; both the forward and rear lugs turning inward, and so adjusted with reference to the opening between the rear cross-bar and cross-beam as to pass between and clear them, permitting the basket and dynamo to drop to the ground. To prevent the cradle-irons from falling out when in use, the lugs of the inward cradleirons are secured to the rear cross-beam of the truck upon which they rest by nutted bolts. The rear lugs on the cross-bar may, as shown by the drawings, also be bolted thereto. Practically the identical cradle, save that the lugs of the cradle-irons do not turn in the same direction, and that the cradle is not necessarily removable, is found in patent No. 685,516 granted to Kennedy October 29, 1901. That patent, however, was for a dash-pot as an equalizer between the tension spring and the dynamo to offset the excessive rocking of the dynamo. The patentee terms the cradle a "stirrip-frame formed of brackets, H, suspended from the truck frame," and says "all these features are wellknown." Thus it appears that the only new features in the device of the patent in suit, as regards the car-lighting art, are the removable cradle. This block is, however, adjustable manually only. It is not automatic. Adjustment is attained by manipulating the end set screws. This adaptability to proper alignment of the dynamo with the car axle is, however, a necessary element in securing reasonably perfect results in generating electricity under the circumstances above considered. It co-operates with the other parts of the device in producing the desired end. No device in the prior art combines all the enumerated elements or accomplishes the same results. The difference is not strongly marked, but it is appreciable. The patent applies to an art which has long attracted attention-one in which slight advances are difficult to attain and much desired. The advance may be but a short one, still no one else has made it. The evidence shows that the device has taken hold of the market and is supplanting its predecessors in the art. Considered apart from all questions of prior use and suggestion, I am of the opinion that claims 1 and 2 of the device of the patent in suit show invention, and that as to those claims the patent should be sustained.

* * *

Whether or not claim 3 is valid depends upon the construction to be given to the words, "having lugs at opposite sides of its top as described." From the file wrapper and contents in evidence it appears that original claim 4 of Kennedy's application was rejected by the examiner upon his 1902 patent, numbered 699,187, in which re