ting machine, working at an ordinary rate of speed, so as to permit the machine to be constantly in use. It is obvious that plates or slides reInovable from a frame into which they can be inserted with their gelatine-covered moulds, and by means of which they are presented to the cuttting mechanism, are necessary in an automatic cutting-machine. The invention of this part of the mechanism was a removable plate or slide, with its moulds, in connection with a frame supporting the same when in place, and necessarily permitting the plate to be removable and withdrawn for the purposes of the machine. Inasmuch as the sixth claim of the first reissue was for the plate moulds "as and for the purposes set forth," and the description was of a plate necessarily removable to and from a frame, and the force of such words puts into the combination of specifically named parts "such other parts or devices as the purposes named in the specification render necessary, in order that the parts specifically named may be operative," I think that the plate, with its moulds, of this claim, is the plate removable to and from a frame, thus making the frame a member of the combination. The law being rigorous against the validity of unreasonable reissues with expanded claims, I am not in favor of giving elastic constructions to old claims for the purpose of sustaining a reissue, but I think that the sixth claim of No. 10,807 is a return to, and not a new departure from, an unstretched construction of the sixth claim of No. 8,440, and is also limited to the use of the combination in a cutting-machine. The infringement of the sixth claim was proved, and was not denied by any testimony in the record. It was contended by the plaintiff, upon this hearing, that the third and fourth claims were also infringed. This point was not made upon the trial of the Dick Case, and I think was properly given up. Those claims are confined to the particular cutting mechanism which is made use of in the machine, and which is described in the patent. The Dick machine of 1865 is again relied upon by the defendants as an anticipation of the sixth claim. It had moulds connected with frames, like window frames, moving up and down, which were attached to the machine. These moulds are said to have been brought, by means of a circular motion, over knives fastened to a stationary circular railway. These frames were a very different thing from the removable mould plates of the Hubel machine; they were not removable in any proper sense of that word. In fact, the two machines and their respective subcombinations have very little in common with each other. There is nothing else in this record, or in that of Hubel v. Dick, upon reissue No. 10,437, which is of importance upon the subject of invention or patentable novelty. The testimony in the case upon No. 8,440, which, by stipulation, may be read and considered here, and which is applicable to the sixth claim, was directed to the fact that mould plates having a series of capsule moulds secured thereto at regular intervals were old; but that testimony has become unnecessary in view of the statement in the nature of a disclaimer in the present reissue, which is as follows: "I do not claim broadly any mould plate having a series of capsule moulds, as dishes so arranged, and plates with a handle at the back, have been pre viously described as used simply by moulding certain forms of capsules; but I only claim a mould plate having the moulds secured thereto at regular intervals, when the same is used in combination with the frame of an organized capsule cutting machine, so as to be held therein and removable therefrom." Let there be a decree for the plaintiff against an infringement of the sixth claim of the patent in suit, and for an accounting in respect to the use of that claim. CELLULOID MANUF'G Co. et al. v. AMERICAN ZYLONITE Co. et al. (Circuit Court, S. D. New York. June 26, 1888.) 1. PATENTS FOR INVENTIONS-NOVELTY-CELLULOID COLLARS AND CUFFS. Letters patent No. 200,939, granted to Albert A. Sanborn, Charles O. Kanouse, and Rufus H. Sanborn, March 5, 1878. describe a fabric for collars and cuffs having outer sheets or layers of celluloid and an interlining of textile or fibrous materials. Parkes (English patent No. 2,359, of 1855) made sheets of collodion. (gun-cotton dissolved in alcohol,) and also cemented together sheets of different substances, as alternate sheets of collodion and cloth. But as soon as the solvents were evaporated, the collodion became brittle and flaky, and was useless as a material for collars and cuffs. In the Ray & Taylor United States patent No. 48.239, for a paper collar or cuff enameled with a composition of collodion and gelatine, the surface of collodion is made to adhere to paper by means of an intervening layer of gelatine, but is not substantial, liable to unevenness, and to have air-bubbles, and to be imperfectly attached to the paper, and is not water-proof. Held, that the Sanborn patent is not void for want of novelty. 2. SAME-INVENTION. Such patent being for a new material. and an original invention, and not for a collar, the principle of Gardner v. Herz. 118 U. S. 180, 6 Sup. Ct. Rep. 1027, that a patent cannot be taken for an old article when made for the first time out of an old material, merely because the idea of its suitability has occurred, has no application. 3. SAME. A sheet of celluloid being of itself unsuitable for collars and cuffs, and there having been no previous knowledge that its combination with an interlining would render it suitable for such purpose, the fabric is not merely a new article of commerce without invention. 4. SAME-INFRINGEMENT. Upon one side of a fabric of two layers of muslin with an intervening layer of paper, furnished by one defendant, the other defendant attached a layer of zylonite, and returned it to the first, with knowledge that it was to be made into collars and cuffs. The latter then cut out the blanks somewhat larger than the finished article, and turned over the fabric at the edges, having cut away the muslin surface so as to make the edge thinner. The edges are secured with paste, and thus two outer sheets of zylonite with an interlining of muslin and paper are produced. Defendants claim that they simply make a collar by turning a hem upon an unpatented fabric. Held, an infringement. Following 30 Fed. Rep. 437. In Equity. Bill by the Celluloid Manufacturing Company and the Celluloid Novelty Company against the American Zylonite Company, the Standard Collar Company, and the Taylor & Tapley Manufacturing Company, to v.35F.no.6-27 restrain the infringement of a patent. The last-named defendant was not served. Frederic H. Betts and J. E. Hindon Hyde, for plaintiffs. SHIPMAN, J. This is a bill in equity to restrain the defendants from the alleged joint infringement of letters patent No. 200,939, granted to Albert A. Sanborn, Charles O. Kanouse, and Rufus H. Sanborn, March 5, 1878, for an improved fabric for collars and cuffs. The novelty of the fabric, and the validity of the patent, were sustained by Judge COXE in the case of Manufacturing Co. v. Chrolithion Collar & Cuff Co., which was tried in this district in 1885. The patent, and the facts which the court found in regard to the state of the art at the date of the invention, are contained in the opinions which were given in that case. 23 Fed. Rep. 397, 25 Fed. Rep. 482. The facts which constitute the alleged infringement in this case are given in the opinion of the court upon a motion for an injunction pendente lite. 30 Fed. Rep. 437. The history of the progressive discovery of the art of making celluloid or zylonite from and after the date of Spill's improvement, in 1869, upon Parkes' previous inventions, is contained in the opinions of this court in Manufacturing Co. v. Zylonite Co., 26 Fed. Rep. 692, 28 Fed. Rep. 195. So much has been heretofore written upon this patent, and upon the patents relative to the manufacture of celluloid, that the duty of explaining at length the character and position of the patent in suit is not imperative; but it is insisted that the record contains pre-existing patents and facts which were not in the Chrolithion Case, and the knowledge of which ought to modify or change the result which Judge CoXE reached. It is therefore necessary to consider with care the points which are claimed to have been presented with new force upon this hearing. The patented article is succinctly described in the claim, as follows: "A fabric for collars and cuffs or other similar articles, having outer sheets or layers of celluloid, and an interlining of textile or fibrous material, substantially as and for the purposes specified." The defendants deny both the novelty and patentability of the fabric and the infringement of the patent. In reply to the question, "In which single one of the defendants' exhibits, patents, or publications do you find, in your opinion, a fabric for collars and cuffs, having outer sheets or layers of celluloid and an interlining of textile or fibrous material?" the very competent expert for the defendant, answered, "Parkes' English patent, No. 2,359, of 1855," and further said that it was the only one which contained the precise thing of the Sanborn patent. The services which Mr. Parkes rendered in the development of pyroxyline were great and important, but they are not contained in the patent of 1855. The object of the second part of this patent was to employ collodion or its compounds for manufacturing purposes. Collodion was and is gun-cotton dissolved in alcohol and ether, and Parkes was endeavoring to utilize it for other than photographic and surgical purposes. He says in the patent that he made sheets or other forms by using as little of the solvent as possible, so as to obtain a stiff, plastic compound, which may be colored or combined with other substances, and this he worked up with any suitable machinery, until well blended or incorporated, when it may be rolled or pressed into sheets or other forms. He further says that he made sheets by pouring the solution upon glass plates, and, if required, several coats of collodion or dissimilar substances could be used to strengthen the sheet, and, also, that he manufactured thick sheets of a compound nature by cementing several sheets together, which may be of dissimilar substances, thus, a sheet of collodion, then a sheet of cloth, then another sheet of collodion; or he saturated felted goods with his preparation of gun-cotton. The use of the word "sheet" by Parkes has been the cause of much of the confusion that seems to exist upon the subject of novelty, inasmuch as it is assumed that this sheet of Parkes was "Parkesine," and furthermore, was substantially the same thing which now instantly presents itself to the mind when the term a sheet of celluloid or of zylonite is employed, whereas Parkes' sheet of 1855 was not the thing which he afterwards manufactured, and which was known as "Parkesine," and was wrought, like celluloid, into a variety of articles, and had no resemblance to the sheet which is now known by the name of "celluloid." His sheet of dry collodion, after the solvents had evaporated, was a different thing from either Parkesine or the subsequent pyroxyline compounds. As soon as the solvents which help to form a film of collodion upon a plate of glass have evaporated, the collodion crumples up, is full of bubbles, and becomes a distorted, brittle, and useless piece of pyroxyline. The plastic mass which Parkes desired to have remain, after dissolving the gun-cotton in a small portion of the solvent, cannot be successfully rolled into sheets; for as soon as the solvents have evaporated, the residue becomes flaky and without coherence, and breaks to pieces under pressure. The compound sheet which he mentions, whether it is made from his rolled sheets or from his collodion films, is a thick product, which contains between the layers of cloth dry, brittle pyroxyline, and is useless for the purposes which are now under discussion. The defendants also find the patented fabric outlined or prefigured in sundry patents, of which the Ray & Taylor United States patent No. 48,239 is the one upon which they most rely, which is the best of its class, and was not in the Chrolithion Case. The patent is for a paper collar or cuff, when enameled with a composition of collodion and gelatine. The collodion is flowed over glass previously treated with nitric acid, and then left until dry. The gelatine is dissolved in water, and poured over this substance. Sheets of paper, thoroughly moistened, are placed upon the top of the mass, which is caused to adhere to the paper by the gelatine, and, when dry, can be removed with the paper from the glass. The enameled paper is then manufactured into collars and cuffs. The object of the enamel is to resist the action of water or perspiration, and to make a collar which can be quickly cleansed, without being sent to the laundry. Recent specimens of such a fabric were presented in evidence, which had a good appearance, and can occasionally be made for exhibition; but the fabric, or any other fabric merely having a film of collodion upon its surface, is a failure for water-proof or for wearing-apparel purposes. The surface will rumple and crack, its wearing capacities are unsubstantial, it is liable to cover the paper unevenly, to have minute air bubbles, and not to be perfectly attached to the paper. This patent and its predecessors, such as the Granger, the Rollason, and the Berard patents, were a groping after a fabric, having a water-proof covering of collodion, which was never found, because the peculiarities of a dried film of collodion will not make a permanent and substantial surface which can endure wear. Upon the patentability of the invention, the defendants invoke the principle of Gardner v. Herz, 118 U. S. 180, 6 Sup. Ct. Rep. 1027, that a patent cannot be taken for an old article when made for the first time out of an old material, merely beause the idea has occurred that it would be a good thing to make the article out of that material. This patent is not for a collar, but for a new material from which to make a collar, and the decision in Gardner v. Herz has no application if the material, having peculiar, novel, and useful qualities, was the original invention of the patentee. It is next, and with more confidence, urged that it is simply a new article of commerce, and is without invention, because, when a sufficiently thin sheet of collodion was produced in the course of the development of the manufacture of that material, its adaptation to the requirements. of a collar was well known or obvious. This alleged fact is not self-evident, but requires proof, and the testimony does not support the defendants' position. The efforts of inventors had long been ineffectually directed to find an elastic fabric which should make a water-proof collar having continuously the appearance of freshly starched linen, which should preserve its whiteness, smoothness, and neatness without being sent to the laundry, and be capable of continuous, prolonged, and pleasant use. The problem was by no means analogous to that which was the subject of study in the alleged invention which is described in Collar Co. v. Van Dusen, 23 Wall. 563. It was not simply to make a suitably thin sheet of celluloid, and, when the manufacturer's skill had produced the sheet, the invention was accomplished, because neither previous knowledge nor a train of reasoning from known facts showed that such a sheet could be so combined with anything as to produce the required fabric. Experiment proved that the thin sheet was not itself such a fabric, and no existing knowledge declared or pointed out that its combination with an interlining would make a fabric which would not refuse to retain its shape and proper stiffness, both when worn and when not worn, or to endure continuous wear and repeated cleansing and to preserve its untarnished whiteness, and therefore would not be a failure. The patentees conceived the idea that the desired fabric could be furnished by the aid of the new thin sheets of celluloid. It is not probable that they intuitively knew that the thing could be done, but they wrought out and proved the truth of the idea, which they had taken hold of, by patient experiments with their materials; and in that way they created the fabric. |