used, this at times will be impossible. Felt introduced a carryingstop which is controlled by the carrying-mechanism, as in the prior art; but added a new feature, which, so far as I am able to perceive, was not in the prior art. It was necessary to release his carrying-stop when the key-mechanism operated. He applied the familiar idea of using the key-mechanism to control a stop-motion detent. The novelty was that he made the key-mechanism control the carrying-stop at this time. His carrying-stop, therefore, apparently is differentiated from any carrying-stop of the prior art by the fact that it has the additional feature of a release by the key-mechanism. The defendant argues that it was obvious to any one skilled in the art that when a stop detent is used in connection with a wheel that is adapted to be operated either by key-mechanism or by carryingmechanism, then the withdrawal of the detent must be controlled by key-mechanism when the wheel is to be operated, by its key-mechanism, and must be controlled by the carrying-mechanism when the wheel is to be operated by the carrying-mechanism. The patentee, after stating in his specification that a carrying-stop which remains in action until near the completion of a revolution of a wheel of lower order will prevent any movement of the numeral wheel by its own key, says:

"Therefore the automatic stop-motion device must be independently released by its own key-mechanism, as well as by the carrying part." etc.

If it was obvious that the carrying-stop must be independently released by the key-mechanism, then there are most serious doubts both upon the question of invention and upon the question of infringement. If Felt and Turck each began to correct this error of overrotation with the obvious requirement that the carrying-stop must be released by the key-mechanism, then, according to my present impression, Turck's device must probably be regarded as substantially different from Felt's. It is by no means clear that the release of carrying-stop by key-mechanism was more than ordinary mechanical skill would have suggested. In the prior art the keymechanism removed the stop which would otherwise block the movement of the wheel. An additional stop was added to the same wheel. Unless removed, this stop would block the wheel when the keymechanism operated. The key-mechanism was made to remove that stop also. Was this so broad an improvement that Felt should be given a monopoly of the use of a positively acting detent to stop the overrotation of a numeral wheel under the action of carryingmechanism?

In Colt's Patent Fire-Arms Mfg. Co. v. Wesson, 127 Fed. 333, in the opinion of the Circuit Court of Appeals for this circuit, it was said:

"The methods of locking and of holding in and out of operative position are innumerable; so that, unless extreme care is used in analyzing patents for inventions relating to that topic, the rule of equivalents, as applicable to alleged infringements, would block the path of invention to an extent which would be unreasonable."

This remark is applicable to this case. To think of preventing exressive rotation of a wheel, of doing this by a stop, whether positive

or frictional, and of removing the stop to permit the operation of parts, are features so common that they cannot be monopolized by any mechanic for the purposes of a particular art. There is ordinarily no more invention in the thought of making a stop positive, as distinguished from frictional, than there is in making it of steel, as distinguished from brass; and, in view of the positive stop of Felt's prior patent, the idea of a positive stop for the wheel, removed by the action of key-mechanism, was old.

Serious questions arise, not only upon the question of invention, but also as to the scope and validity of the claims. The patent is secondary in character. There is a large number of patents dealing directly with the problem of overrotation; and it must not be forgotten that the principal claims of the patent in suit relate not to the general principles of calculating machines, but to a device designed simply for the limited purpose of preventing the mechanical defect of overrotation of a wheel. While the special problem of releasing a carrying-stop detent to permit action of key-mechanism did not confront makers of counting machines, yet such machines are relevant to show the familiar means of controlling stops. In fact, it may be said that the problem of stopping the overrotation of a wheel by a detent, and of releasing the detent to free the wheel, probably ought to be regarded rather as a general problem of machine construction than as a problem in the particular art of counting machines or calculating machines. Mast, Foos & Co. v. Stover Mfg. Co., 177 U. S. 485, 492, 493, 20 Sup. Ct. 708, 44 L. Ed. 856. So far I am rather inclined to the view that Turck was at liberty to provide a positively acting stop against the action of his carryingmechanism; that he was entitled to operate such a stop by his carrying-mechanism and by his key-mechanism; and that, while there doubtless would be infringement if a broad construction could be placed upon several of the claims, yet the claims probably are not valid unless strictly confined to the detailed constructions of Felt.

Claims 17 and 18 of the Fet patent in suit involve a distinct subject-matter. These claims call for mechanism whereby all of the carrying-stops are simultaneously released prior to the forward rotation of the numeral wheels for the purpose of rotating them to zero. There is a serious controversy as to the validity of these claims. It is contended that set-back mechanism of this general character was old, and that each claim is for a pure aggregation. Upon the whole, I think it clear that the case is not a proper one for a preliminary injunction.

Petition denied.

FERRY et al. v. WARING HAT MFG. CO.

(Circuit Court, S. D. New York. July 9, 1900.)

1. PATENTS-INFRINGEMENT-HAT RINGS.

The Ferry patent, No. 574,894, for a hat ring, for use in packing hats together in boxes for shipment, construed, and held not anticipated, and to disclose invention, in view of its superior utility and exceptional commercial success. Also held infringed.

In Equity. Final hearing on pleadings and proofs of a suit for infringement of United States letters patent No. 574,894, January 12, 1897 (applied for June 2, 1894), to F. P. Ferry, assignor of one-half to Theodore Clark & Co., for hat-packing ring.

J. Edgar Bull and F. M. Smith, Jr., for complainants.
Chamberlain & Newman, for defendant.

LACOMBE, Circuit Judge. The first impression formed upon reading this patent is that there could be no patentable invention in so simple a modification of earlier forms. But the evidence is most persuasive to the conclusion that, trivial though it seems, the improvement is one which has commercially proved exceptionally successful; and if it were, as defendant contends, a natural development from earlier forms, it is difficult to understand why, in view of the demands of the trade, no one produced it during the interval succeeding the earlier patent of January 6, 1891, unless it were that more than the mere technical skill of the handicraftsman in the art was required for its conception.

The patent relates to what are known as hat-packing rings or stays. The manufacturers of hats ship these articles in tall boxes, each containing several hats. To keep the hats in the box separate, so they will not rub against or mar one another, hat-packing rings are employed. Hat-packing rings of various forms have been employed for years. Any plain strip of pasteboard of suitable width, curved to conform to the contour of the hats, might be employed for the purpose. It is obvious, however, that the sharp or rough edge of a piece of pasteboard would chafe the hats where it was in contact with them. Various expedients had been adopted, prior to this patent, to overcome this difficulty. Strips of paper had been pasted over the raw edges of the cardboard, or they had been bound with flannel or other soft material, or the edges had been broken over, so that they stood at an angle with the body of the strip, forming a flange or broader strip for the hat to

rest on.

The patentee, Ferry, in 1888 applied for a patent, issued January 6, 1891, covering a ring of a general cylindrical shape to contain the hat-crown; the edges of said ring being curled outwardly, so as to present a perfectly smooth, unbroken surface for contact with crown. and brim of the hat. Fig. 3 sufficiently indicates the curved edges of the ring.

In this earlier patent, 444,343, the specification states:

"I am aware that packing-rings have been made with their edges bound with felt or other soft material, so as not to chafe the hats, but my invention contemplates no such construction. I am also aware that a packingsupport for a single hat has been made wherein the top edge has been flanged or curled outwardly in order to afford a nonchafing support for the hat-brim, but this has never, to my knowledge, been done except in the instance of a separable ring; and, moreover, such construction could not be of advantage in packing a nest of hats, since it is essential that both the top and bottom edges of the ring should be so formed that the brim of the hat should not be chafed either on the upper or under surface. I therefore wish to be understood as distinctly disclaiming any flaring or curling of the edges of a hatpacking ring, save the outward curling of both the top and bottom edges of a closed pasteboard ring."

While affording theoretically a sufficiently broad and easy seat for the hat, this earlier ring was, comparatively speaking, expensive and difficult to manufacture. A considerable proportion of the product was unsalable because defective, and the beads, D, were liable to uncurl, kink, or break and chafe the hat. Moreover, this liability to uncurl or kink made it impracticable to dispose of them, save as completed rings, fastened together at the ends. They could not be nested and shipped in bulk. Freight to any distance, by reason of the bulk of parcel, was prohibitive.

The improvement of the patent in suit is sufficiently indicated in Fig. 2, and the following excerpts from the specification:

"In carrying out my invention, I take a piece of pasteboard, 1, of any suitable width and length, and curl over the opposite edges as shown at 2, 3, to form hollow beads, 4, 5, a surplus from such edges being left to form petticoats, 6, 7, which latter lie closely against the body of the strip. The object of the petticoat portions, 6, 7, is to give stability to the beads, 4, 5, and to prevent them from crawling back, and also give them greater body and flexibility. * ** The hollow beads at one end of the strip are readily inserted within the beads at the other end, since the latter beads yield readily to permit of this, and exert a grasp firm enough to prevent any accidental slipping of an adjustment. The hollow bead affords great advantages, in that it is not stiff or unyielding, but is flexible and resilient [in

earlier devices the edge had been turned over and glued down, sometimes with an extra thickness of material inserted-manifestly an unyielding and nonresilient finish], while its shape is preserved by the petticoats, 6, 7, which, as above set forth, snugly lie against the body of the strip."

To reduce the field of discussion presented on the record, touching infringement, the third claim, only, need be quoted. It reads as follows:

"(3) As a new article of manufacture, a pasteboard hat-packing ring, having closed beads at its edges, and, with the extreme edges of the stock beyond the beads disposed flat against the body of the strip, substantially as described."

Infringement of this claim seems plain, upon a mere inspection of the exhibits. The only question of difference between the parties is as to the "hollowness" of the beads. The beads of the patent, as shown in the drawing, are "hollow," in the full sense of the term. Hollowness is achieved by turning over a mandrel, or otherwise, sufficient material to form a tubular structure. In defendant's rings sufficient material is thus turned over, but it is also collapsed upon itself from the top downward, so that it no longer looks like a "hollow bead," but it is not pasted together or otherwise held rigidly, so that it cannot perform the useful function of end into end insertion, which the evidence shows to be the great commercial advantage of complainant's patent. The superabundance of material, giving a greater bearing surface than would the mere turning over of the material on a knife edge, affords a similar support for the hat, and it also secures the necessary play for insertion of the other end of the ring-a play which would not be secured without such superabundance of material. Of course, if it were pasted down or rigidly secured, it would be merely the device of earlier patents; but since it performs all the functions. of the device of the patent, and in the same way, the difference between the two is verbal only. A web hose is a hollow structure for the transmission of water, although, when water is not flowing through it, it may lie perfectly flat, and be folded upon itself, with no suggestion of a tube about it.

The evidence establishes with a conclusiveness rarely found in patent suits that the advance from Ferry's patent of 1891 to the one in suit has produced a marked saving in the cost of manufacture and in the amount of waste, and has vastly enlarged the output field of the manufacturer. The earlier rings had to be completed as rings before shipment; that is, the ends had to be fastened together, or the edges would uncurl. Then, since freight is regulated to some extent by the size of the package, the manufacturer could supply only his immediate neighborhood. The device of the patent may be "nested" and shipped to remote places, each ring to be there fastened by insertion. when put to use.

A number of patents have been introduced in evidence. It is sufficient to say that none of them anticipate. Some of them would seem to indicate that the improvement of the patent-now that we know of it was to be expected of the skilled workman; but when it appears. that an enormous increase in sales awaited the man who devised it, and that from the issuance of the first Ferry patent, of 1891, to the