CAMPBELL V. BAYLEY.
463
claimed that -i.he first is an anticipation of the complainant's particular combination.' In regard to the Gabbey patent, it seems to me that while the weight of the contained grain causes the opening and shutting of the valves, and thereby the registration of the amounts, somewhat analogous to the CO'lby invention, yet the machines, as machines, are different. With the patent before the inventor, he would have to exercise almost as much invention to adapt it to the peculiar requirements of a money bank as would an inventor in producing it without the presence of the Gabbey patent. For the foregoing reasons the findings will be for the complainant, against the defendant, George C. Card, and an injunction will issue accordingly.
...... CAMPBELL et aI. v. BAYLEY et aI. (CircuIt Court of Appeals, Seventh Circuit. January 20, 1894.) No. 14. INVENTION-MANUFACTURE.
1.
A devIce, in order to be patentable, must be novel, whether It be deemed to be a manufacture or a machine (Rob. Pat. §§ 182, 185, note), within the meaning of the patent law, and the test of novelty would seem to be essentially the same in the one Instance as in the other. The first claim of letters patent No. 204,882, Issued June 18, 1878, to George G. Campbell, for a catch-basin cover constructed with a slanting front, grate bars, and raised partition, is void for want of Invention.
2.
PATENTS FOR INVENTIONS-'-CATCH-BASIN COVERS.
Appeal from the Circuit Court of the United States for the Eastern District of Wisconsin. Suit by Gardiner Campbell and George G. Campbell against James E. Bayley, Arthur J. Bayley, and Harry F. Bayley for injunction and accounting. Defendants obtained a decree. 45 Fed. 564. Complainants appeal. Suit by the appellants against the appellees for an accounting, and to enjoin infringement of the first claim of letters patent No. 204,882, issued June 18, 1878, to George G. Campbell. one of the appellants, for certain improvements in catch-basin covers. The specification and claims of the pat· are of the following tenor: "My invention has for its object the providing of a catch-basin for the c()rner of streets, which the following description will more fully show: Fig. 1 is a perspectIve view of my invention, and FIg. 2 a sectional view of the same, In the drawings, A Is the body of the catch-basin cover; B, the base of the same; C, C, fianges secured to the base and body for the purpose of holding the stone or other material back to the sIdewalk which may be used In setting the cover; D, strips of metal standing obliquely over the opening, to keep rubbish out of the basin as the water fiows into the same; E, a raised stop or partition in front of the strips, 11, for the pavement to face up against; F, a flange projecting below on the under side of the cover to keep the water from wearing away the mortar between the bricks or stones whIch the basin may be made of; G, an opening, with cover to the same, for access to the basin. This devIce Is calculated to stand' at the <lorner of a street and jut back into the sidewalk, and the front stands slantIng, the bottom part of it projecting to the bottom of the gutter, so that a team in passing, if it hugs too close to the sidewalk, the wheels will strike on the strips of metal, D, and slide down 'off the same, and the base, B, will be under the sIdewalk and pavIng, so that the basin cover will be held firmly
464 ill
FEDERAL
vol. 63.
l'W;hl,tt I claim as new, to secure by letters patent, is: (1), cover constructed wi.th slanting frpnt, with strips, D, base, B;,aD:d' fail!led partition, E, sUbstantially as specified. (2) A catch-basin t»1'erj''Wffli'body, A, 1I.anges, Co C, and'fiange, F, sUbstantially as specified." , ,The>drll.wl:nge referred to are as follows:
The defense relied upon is lack of InveIltion or patentable novelty, and in support thereof the following references are made to the prior art: "No. 32,008, granted to: William H. Short, for an improved inlet to sewers, April 9, 1861. . No. 109.061, granted to Henry Smith, Jr., for sewer catch-basin covers, November. 8, 1870. , No. 124,061, 'granted to Abel G.Hodgman, for water courses across roadways, Febrilary 27, 1872. No. 125,118, granted to William, H ·. Chase and George White, for cover and trap for sewer basins, April 2, 1872. No. 132,757, granted to Edward L., Dyer, foIl' seWeL' basins, November, 5,,1872. No. 134,978, gran,ted to Henry W. Clapp, for grating for sewer iniet, January 21, 1813. 'No. 149,313, granted to Henry W. Clapp, for grating for seWer inlet, April 7, 1874. No. 150,072, granted to Ernest L. Meyer, f(li' sewer basins, April 27, 1814. No. 153,425, granted to Ephraim B. Culver, for removable trays for sewer traps, July 28, 1814. No. 1b"7,444, granted to Daniel H. Fernaid, for manhole cover for sewers, September 7, ,1875. No,' 169,551, granted to Louis, Johnes, Jr., for sinks, NO\Tember 2, 1875. British patent No. 255, of 1874, to Wellington Henry Synge, dated January 20 1874." " , ", ' The of 'the court below is d!pbrted in 45 Fed. 564I
Erwin&Benedict and John G. Elliott, for appellants. H. G. for appellees. ' Before WOODS; Circuit Judge, and BUNN and SEAMAN, DistrictJudges. WOO:J)S, CIrcuit Judge (after the facts). We concur in the opinion of the circuit court. The argument here in behalf of the"appellants rests mainly upon, the proposition,apparently not presented below, that the patent in suit is for a manufacture, and therefore entitled to a more liberal construction or treatment in respect to the question, of aggregation of parts than if the inventi(m were a machine. ,'The distinction is stated in Robinson on pa.tents (section 185,. Ilote), but the defillitiop,s attempted can ,lilar(1ly be deemed for practical application. In many
CAMPBELL 11. BAYLEY.
465
cases it would be difficult, if not impossible,to determine satisfactorily whether an article is of one class or the other. Broadly speaking every machine is a manufacture, though not every manufacture is a machine. By the general definitions given in section 182 of the work named, the catch-basin cover with which we are dealing is strictly neither one nor the other, and perhaps may as well be called by either name. The section reads as follows: "A manufacture Is an Instrument created by the exercise of mechanical forces, and designed for the production of mechanical effects, but not capable, when set in motion, of attaining by its own operation to any predetermined result. It has no Inherent law which compels it to perform Its functions in a given method. but receives Its rule of action from the external source which furnishes Its motive power. In this absence of 'principle' or 'modus operandi' lies the distinction between a manufacture and a machlne,-the former requiring the constant guidance and control of some separate Intemgent agent, the latter operating under the direction of that intelligence with which it was endowed by Its inventor when he imposed on it Its structural law."
The cover for a catch-basin can hardly be said to be set in motion or to receive its rule of action from an external source of motive power, and certainly not to require the guidance and control of an intelligent agent. On the contrary, it would be more accurate to say that it operates without guidance, under the direction or in accordance with the structural law imposed upon it by its designer. It performs its functions, necessarily, in a given method, and accomplishes predetermined results. But whether, within the meaning of the patent law, a device should be deemed to be a manufacture or a machine, in order to be patentable it must be novel; and by the decided cases the test of novelty would seem to be essentially the same in the one instance as in the other. ''N othing short of invention or discovery will support a patent for a manufacture, any more than for an art, machine, or composition .of matter," said Justice Clifford, in Glue 00. v. Upton, 4 Cliff. 237, Fed. Oas. No. 9,607, and the same expression is repeated in Collar Co. v. Van Deusen, 23 Wall. 530, 563, in context with the following pertinent statement: "Articles of manufacture may be new In the commercial sense when they are not new in ti).e sense of the patent law. New articles of commerce are not patentable as new manufactures, unless it appears in the given case that the production of the new article Involved the exercise of Invention or discovery beyond what was necessary to construct the apparatus for its manufacture or production."
To the same effect are the decisions and discussions in the WoodPaper Patent Case, 23 Wall. 566; Oochrane v. Badische Anilin & Soda Fabrik, 111 U. S. 293, 311, 4 Sup. Ct. 455, and Reckendorfer v. Faber, 92 U. S.347. Nothing could be more certainly a mere manufacture or instrument, as distinguished from a machine, than the l'ubber-tipped pencil which was the subject of the last-cited case. It was so treated by counsel and by the court, and yet the combination was held to be merely an aggregation. In the course of (he opinion it is said: merely Is not patentable.
"An instrument or manufacture which is the result of mechanical skill Mechanical skill is one thing, invention is a dif-
v.63F.no.3-30
FEDERAL REl'ORTll:n,
fel.'W1t;t1l1ng. Perfection ofWOl-'klnanship, much itmaYi increase or diD;l.inish, the is not patentabl/l. skill,with conveniences adis recognized in all the cases. .. .. .. The comblliatlon, to be patentable, must prOduce It different force or effect, or maulHniithe combIned .forces oi-processes. froIil1 that given by thier separate m'ust be a, n,e,w result produ"c,ed by their union. If not so, It ilfonl:r···$p', elements."
propositions are applicable, to "t4e combination of. the lead'alld india rubber,or other erasing substance, in the holder pencil," are applica:ble to the catch-basin cover and t6.the parts of which it ul?' The faatllre claimed for it in argument was the.obliqv.e bars, and",io0ooer todistinguililh those from the bars in the Synge devicet:designed, for a" strictly anal0S't;niS use, 'the, Sl1ggestionwas thlltjn thai structure the ,1:)0,1'1:1 aI'e hinged at the upper end, and, being unattached at the lower end, are capable of being liftm}.'""0a wkJch was" followed 'bYh in to a from the 'bench, that a respecbilike thafM the Patent would 'tnade,W'nhbars hinged at tht} top andunattac,hed D9t belQ'Y., · Itis, evident onslfch dis· Th:e should, ,' ,
,
. .
\
(CIrcuit Court Of 1.
Seventh, Circuit. ,October 1, ,1894.) No.
PATENTS FOR INVENTIQ1'!S""!:";{NFRINGlilMENT-EQUlTY, JURHlDIOTION.
Where. a, suit to restl'aJn. the infringenwnt of it patent to recover damagell therefor is begun about two months and a halt l1efore the patent expires, the expiration of the, patent before any prellminary injunction '11BB been applied fot does not deprive the court ofjurlsdiction of the case to award damages. Where the complaiJ:Ian;t In such suit rights under the pat· ent pending suit, but llt1;er expiration. of the pat.ent,his, assignee is entitled to be complainant, tile an original bill In the nature of It supplemental bill. 58 Fed. 404, , ,
SAME-AsEiIGNMENT AFTIl:;J;t EXPIRATION OF 'l'llE PATENT.
AVpE'al from the Circuit Court of the United States f<or the Dis· :ttlict of Indiana. ' Suit by Isaac C. Walker against the city of Ft Wayne to restrain the alleged infringement of a patent. Nathan O. Ross was substituted al1lplaintiff, and ft1l:td,a supplemental bilt A demurrer there· ,to was sustained (58 Fed. 404), and Ross appeals. On the 21st of April, 1892, Isaac C. W!ilker brought in the court below ,his bill of complaint against the city of Ft. Wayne, Ind., alleging infringe,ment ,of reissued letters patent No. ,6,831). January 4, 1876, in lieu of original letters No. 165,488, granted July 13, 1875" to Robert Bragg, showing adjudications of ,the validity of the patent, and praying a discovery, injunction, and damages. At the ensuing May term of the court, on May 5, 1892, the defendant tiled a plea, which, besides the special matters al-